                    Manual of Patent Examining Procedure 

Introduction 

Foreword 
       
This Manual is published to provide Patent and Trademark Office patent 
examiners,  applicants, attorneys, agents, and representatives of 
applicants with a reference  work on the practices and procedures relative 
to the prosecution of patent  applications before the Patent and Trademark 
Office.  It contains instructions  to examiners, as well as other material 
in the nature of information and interpretation,  and outlines the current 
procedures which the examiners are required or authorized  to follow in 
appropriate cases in the normal examination of a patent application.  The 
Manual does not have the force of law or the force of the Patent Rules  of 
Practice in Title 37, Code of Federal Regulations. 

A separate manual entitled "Trademark Manual of Examining Procedure" is 
published  by the Patent and Trademark Office as a reference work for 
trademark cases. 
Examiners will be governed by the applicable statues, the Rules of 
Practice,  decisions, and orders and instructions issued by the 
Commissioner and the Assistant  Commissioners.  Orders and Notices still 
in force which relate to the subject  matter included in this Manual are 
incorporated in the text.  Orders and Notices,  or portions thereof, 
relating to the examiners' duties and functions which  have been omitted 
or not incorporated in the text may be considered obsolete.  Interference 
procedure not directly involving the Primary Examiner are not  included in 
this Manual and, therefore, Orders and Notices relating thereto  remain in 
force. 

Subsequent changes in practice and other revisions will be incorporated in 
 the form of substitute or additional pages for the Manual. 

Suggestions for improving the form and content of the Manual are always 
welcome.  They should be addressed to: 

              Commissioner of Patents and Trademarks 

              Editor, MPEP 

              Washington, D.C. 20231 





Constitutional Basis 


        The Constitution of the United States provides: 

        "Art. 1, Sec. 8. The Congress shall have power . . . To promote 
the  progress of science and useful arts, by securing for limited times to 
authors  and inventors the exclusive right to their respective writings 
and discoveries." 

Statutes 

        Pursuant to the provision of the Constitution, Congress has over 
the  years passed a number of statutes under which the Patent and 
Trademark Office  is organized and our patent system is established. The 
provisions of the statutes  can in no way be changed or waived by the 
Patent and Trademark Office. 
        Prior to January 1, 1953, the law relating to patents consisted of 
 various sections of the Revised Statutes of 1874, derived from the Patent 
Act  of 1870 and numerous amendatory and additional acts. 

        By an Act of Congress approved July 19, 1952, which came into 
effect  on January 1, 1953, the patent laws were revised and codified into 
substantially  its present form. The patent law is Title 35 of the United 
States Code which  governs all cases in the Patent and Trademark Office. 
In referring to a particular  section of the patent code the citation is 
given, for example, as, 35 U.S.C. 31. 
35 U.S.C. 1.    Establishment. 

        The Patent and Trademark Office shall continue an office in the 
Department  of Commerce, where records, books, drawings, specifications, 
and other papers  and things pertaining to patents and to trademark 
registrations shall be kept  and preserved, except as otherwise provided 
by law. 

Rules of Practice 

        One of the sections of the patent statute, namely, 
35 U.S.C. 6, authorizes the Commissioner of Patents and Trademarks, 
subject  to the approval of the Secretary of Commerce, to establish 
regulations, not  inconsistent with law, for the conduct of proceedings in 
the Patent and Trademark  Office. 

37 CFR 1.351.     Amendments to rules will be published. 

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

35 CFR 1.352.     Publication of notice of proposed amendments. 

        (a) Whenever required by law, and in other cases whenever 
practicable,  notice of proposed amendments in this part will be published 
in the Official  Gazette and in the Federal Register. If not published 
with the notice, copies  of the text will be furnished to any person 
requesting the same. All comments,  suggestions, and briefs received 
within a time  specified in the notice will  be considered before adoption 
of the proposed amendments which may be modified  in the light thereof. 

        (b) Oral hearings may be held at the discretion of the 
Commissioner. 
        These regulations or rules and amendments thereto are published in 
 the Federal Register and in the Official Gazette.  In the Federal 
Register  and in the Code of Federal Regulations these rules are Part 1 of 
Title 37,  Patents, Trademarks, and Copyrights, and the individual rules, 
called sections,  are numbered with the Part number and a decimal point 
prefixed to the rule  number.  A booklet entitled "37 Code of Federal 
Regulations,"  published by  the Office of the Federal Register, contains 
all of the patent rules as well  as trademark rules and copyright rules. 
Persons desiring a copy of the patent  rules should order a complete copy 
of  "Title 37, Code of Federal Regulations"  from the Superintendent of 
Documents. 

        The primary function of the Rules of Practice is to advise the 
public  of the regulations which have been established in accordance with 
the statutes  and which must be followed before the Office. The Rules of 
Practice govern  the examiners, as well as applicants and their attorneys. 
The Rules of Practice  appear in the Manual of Patent Examining Procedure 
as Appendix R. 

Commissioner's Orders and Notices 

        From time to time, the Commissioner of Patents and Trademarks has 
issued  Orders and Notices relating to various specific situations that 
have arisen  in operating the Patent and Trademark Office.  Notices and 
circulars of information  or instructions have also been issued by other 
Office Officials under authority  of the Commissioner. Orders and Notices 
have served various purposes including  directions to the examiners giving 
them instruction, information, interpretations,  and the like. Some may be 
for the information of the public, advising what  the Office will do under 
specified circumstances. 

Decisions 

        In addition to the statutory regulations, the actions taken by the 
 examiner in the examination of   applications for patents are to a great 
extent  governed by decisions on prior cases.  Applicants dissatisfied 
with an examiner's  action may have it reviewed.  In general, that portion 
of the examiner's action  pertaining to objections on formal matters may 
be reviewed by petition to the  Commissioner of Patents and Trademarks 
(see MPEP w 1002) and that portion of the examiner's action pertaining to 
the rejection of claims on the merits, may be reviewed by ap-peal  to the 
Board of Patent Appeals and Interferences (see MPEP w 1201).  The 
distinction  is set forth in 37 CFR 1.181 and 1.191. In citing decisions 
as authority for  his or her actions, the examiner should cite the 
decision in the manner set  forth in MPEP w 707.06. 


Publications Available from Superintendent of Documents 


        Orders should be addressed and remittances made payable to 
Superintendent  of Documents, U. S. Government Printing Office, 
Washington, D. C. 20402. 
        Patent Official Gazette.  The official journal of the Patent and 
Trademark  Office relating to patents. Issued each Tuesday, simultaneously 
with the weekly  issuance of patents, it contains a selected figure of the 
drawings and a claim  of each patent granted, indexes of patents, list of 
patents available for license  or sale, and general information such as 
orders, notices, changes in rules,  and changes in classification. 

        Annual Indexes.  An index of the patents issued each year is 
published  in two volumes, one an alphabetical index of patentees and the 
other an index  by subject matter of inventions. The two parts are sold 
separately.  Price  varies from year to year, depending upon size of the 
publication. An annual  index of Trademarks contains an alphabetical index 
of trademark registrants,  registration numbers, dates published, 
classification of goods for which registered,  and decisions published 
during the calendar year. Price varies from year to  year, depending upon 
size of the publication. 

        Guide for Patent Draftsmen.  Patent and Trademark Office 
requirements  for Patent drawings with illustrations. 

        Manual of Classification.  A looseleaf volume listing the numbers 
and  descriptive titles of the more than 300 classes and 95,000 subclasses 
used  in the subject classification of patents, with an index to the 
classifications. 
 Substitute and additional pages, which are included in the subscription 
service,  are issued from time to time. 

        General Information  Concerning Patents. Contains a vast amount of 
 general information concerning the application for and granting of 
patents,  expressed in nontechnical language for the layman. Multiple 
copies available  from Superintendent of Documents. 

        Manual of Patent Examining Procedure.  A looseleaf manual which 
serves  primarily as a detailed reference work on patent examining 
practice and procedure  for the Patent and Trademark Office's Examining 
Corps including statutes, rules,  treaties, etc.  Subscription service 
includes basic manual, revisions, and  change notices. 

        Patents and Inventions - An information Aid to Inventors. The 
purpose  of this publication is to aid inventors in deciding whether to 
apply for patents,  in obtaining patent protection, and in promoting their 
inventions. 
        Patent Attorneys and Agents Registered to Practice Before the U.S. 
 Patent and Trademark Office.  An alphabetically and a geographically 
arranged  listing of patent attorneys and agents registered to practice 
before the U.  S. Patent and  Trademark Office. 

        Title 37-Code of Federal Regulations.   Compilation of the rules 
of  practice of the U. S. Patent and Trademark Office. 


Publications Available From the Patent and Trademark Office 


        Orders should be addressed to Patent and Trademark Office, 
Washington,  D.C. 20231.  Remittances should be made payable to 
Commissioner of Patents  and Trademarks.  Postage stamps, Superintendent 
of Documents coupons or other  Government coupons are not acceptable in 
payment of Patent and Trademark Office  fees. 

        Q & A About Patents.  Brief nontechnical answers to questions most 
 frequently asked about Patents. 

        Q & A About Plant Patents. Same as above for plant patents. 
        Patents. Copies of the specification and drawings of all patents 
are  available at one dollar and fifty cents each.  When ordering, 
identify the  patent by the patent number, or give full name of the 
inventor and approximate  date of issuance of the patent. 

        Classification Definitions. Contain the changes in classification 
of  patents as well as definitions of new and revised classes and 
subclasses.   Price is based upon size of publication. 

        Weekly Class Sheets.  Lists showing classification of each patent 
in  the weekly issue of the Patent Official Gazette. 



The Patent and Trademark Office does not handle the sale of the Manual, 
distribution  of notices and revisions, or change of address of those on 
the subscription  list.  Correspondence relating to existing subscriptions 
should be sent to  the Superintendent of Documents at the following address: 

Superintendent of Documents             Telephone: (202)512-2267 

Mail List Section 

Washington, D.C. 20402 

Inquiries relating to purchasing the Manual should be directed to: 
Superintendent of Documents                             Telephone: 
(202)512-1800 
United States Government Printing Office 

Washington, D.C. 20402 

Orders for reproduced copies of individual replacement pages or of 
previous  revisions of the Manual should be sent to the following address: 

Commissioner of Patents and Trademarks 

Attention: Certification Branch 

Washington, D.C. 20231 

Previous editions and revisions of the Manual are available on microfilm 
in  the Public Search Room. 

The Manual is available on CD-ROM and on diskette from: 

    U.S. Patent and Trademark Office                Telephone: 
(703)306-2600 
    Office of Electronic Information Products 

    Washington, D.C. 20231 

Employees of the Patent and Trademark Office should direct their requests 
for  the Manual, replacement pages, notices, and revisions to the Patent 
Academy. 
Additions to the text of the Manual are indicated by arrows (><) inserted 
in  the text.   Deletions are indicated by a single asterisk (*) where a 
single  word was deleted and by two asterisks (**) where more than one 
word was deleted.  The use of three or five asterisks in the body of the 
laws and rules indicates  a portion of the law or rule which was not 
reproduced. 

First Edition, November 1949 

Second Edition, November 1953 

Third Edition, November 1961 

Fourth Edition, June 1979 

Fifth Edition, August 1983 

Sixth Edition, January 1995 

        Revision 1, September 1995 

        Revision 2, July 1996 





Contents 

Chapter 



Introduction 

100     Secrecy, Access, National Security, and Foreign Filing 

200     Types, Cross-Noting, and Status of Application 

300     Ownership and Assignment 

400     Representative of Inventor or Owner 

500     Receipt and Handling of Mail and Papers 

600     Parts, Form, and Content of Application 

700     Examination of Applications 

800     Restriction in Applications Filed Under 35 U.S.C. 111; 
        Double Patenting 

900     Prior Art, Classification, Search 

1000    Matters Decided by Various Patent and Trademark Office 
        Officials 

1100    Statutory Invention Registration (SIR) 

1200    Appeal 

1300    Allowance and Issue 

1400    Correction of Patents 

1500    Design Patents 

1600    Plant Patents 

1700    Miscellaneous 

1800    Patent Cooperation Treaty 

1900    Protest 

2000    Duty of Disclosure 

2100    Patentability 

2200    Citation of Prior Art and Reexamination of Patents 

2300    Interference Proceedings Under Public Law 98-622 

2400    Biotechnology 

2500    Maintenance Fees 


Appendix I    Partial List of Trademarks 

Appendix II   List of Decisions Cited 

Appendix L    Patent Laws 

Appendix R    Patent Rules 

Appendix T    Patent Cooperation Treaty 

Appendix AI   PCT Administrative Instructions Under the PCT 

Appendix P    Paris Convention for the Protection of Industrial Property 

Index 




Contents 

101     General 

102     Information as to Status of an Application 

103     Right of Public to Inspect Patent Files and Some 
        Application Files 

104     Power to Inspect Application 

105     Disbarred Attorney Cannot Inspect 

106     Control of Inspection by Assignee 

106.01  Rights of Assignee of Part Interest 

110     Confidential Nature of International Applications 

115     Review of Applications for National Security and Property 
        Rights Issues 

120     Secrecy Orders 

121     Handling of Applications and Other Papers Bearing 
        Security Markings 

130     Examination of Secrecy Order Cases 

140     Foreign Filing Licenses 

150     Statements to DOE and NASA 

151     Content of the Statements 


101   General 


35 U.S.C. 122.      Confidential status of applications. 

Applications for patents shall be kept in confidence by the Patent and 
Trademark  Office and no information concerning the same given without 
authority of the  applicant or owner unless necessary to carry out the 
provisions of any Act  of Congress or in such special circumstances as may 
be determined by the Commissioner. 
18 U.S.C. 2071.       Concealment, removal, or mutilation generally. 
(a)   Whoever willfully and unlawfully conceals, removes, mutilates, 
obliterates,  or destroys, or attempts to do so, or, with intent to do so 
takes and carries  away any record, proceeding, map, book, paper, 
document, or other thing, filed  or deposited with any clerk or officer of 
any court of the United States, or  in any public office, or with any 
judicial or public officer of the United  States, shall be fined not more 
than $2,000 or imprisoned not more than three  years, or both. 

(b)   Whoever, having the custody of any such record, proceeding, map, 
book,  document, paper, or other thing, willfully and unlawfully conceals, 
removes,  mutilates, obliterates, falsifies, or destroys the same, shall 
be fined not  more than $2,000 or imprisoned not more than three years, or 
both; and shall  forfeit his office and be disqualified from holding any 
office under the United  States. As used in this subsection, the term 
``office" does not include the  office held by any person as a retired 
officer of the Armed Forces of the United  States. 

37 CFR 1.14.    Patent application preserved in secrecy. 

(a)   Except as provided in w 1.11(b) pending patent applications are 
preserved  in secrecy. No information will be given by the Office 
respecting the filing  by any particular person of an application for a 
patent, the pendency of any  particular case before it, or the subject 
matter of any particular application,  nor will access be given to or 
copies furnished of any pending application  or papers relating thereto, 
without written authority in that particular application  from the 
applicant or his assignee or attorney or agent of record, unless the 
application has been identified by serial number in a published patent 
document  or the United States of America has been indicated as a 
Designated State in  a published international application, in which case 
status information such  as whether it is pending, abandoned or patented 
may be supplied, or unless  it shall be necessary to the proper conduct of 
business before the Office 


or as provided by this part. Where an application has been patented, the 
patent  number and issue date may also be supplied. 

***** 

        All Patent and Trademark Office employees are legally obligated to 
 preserve pending applications for patents in confidence. 35 U.S.C. 122 
and  18 U.S.C. 2071 impose statutory requirements which cover the handling 
of patent  applications and related documents. Suspension, removal, and 
even criminal  penalties may be imposed for violations of these statutes. 

        In order to provide prompt and orderly service to the public, 
application  files must be readily available to authorized Patent and 
Trademark Office employees  at all times. Accordingly, in carrying or 
transporting applications and related  papers, care must be exercised by 
Patent and Trademark Office employees, especially  in corridors and 
elevators, to ensure that applications and related papers  are always 
under employee surveillance and control. Application files must  not be 
displayed or handled so as to permit perusal or inspection by any 
unauthorized  member of the public. 

        Interoffice mail must be sent in appropriate envelopes. 

        No part of any application or paper related thereto should be 
reproduced  or copied except for official purposes. 

        No patent application or related document may be removed from the 
premises  occupied by the Patent and Trademark Office, except for handling 
as required  by the issue process, unless specifically authorized by the 
Commissioner. If  such authorization is given, the employee having custody 
will be responsible  for maintaining confidentiality and otherwise 
conforming with the requirements  of law. 

        Applications must not be placed in desk drawers or other locations 
 where they might be easily overlooked or are not visible to authorized 
personnel. 
        Whenever an application is removed from the operating area having 
custody  of the file, a charge on the PALM system must be properly and 
promptly made. 
        Papers arriving within the groups must be properly and promptly 
placed  within the appropriate files. If papers are received with faulty 
identifications,  this should be corrected at once. If papers are received 
at a destination for  which they are not intended due to faulty 
identification or routing, appropriate corrective action should be taken 
at  once to ensure the prompt receipt 




thereof at destination. See MPEP w 508.01 and 
w 508.03. 

        All Patent and Trademark Office employees should bear in mind at 
all  times the critical importance of ensuring the confidentiality and 
accessibility  of patent application files and related documents, and in 
addition to the specific  procedures referred to above, should take all 
appropriate action to that end. 
        Examiners, classifiers, and other Patent and Trademark Office 
employees  who assist public searchers by outlining or indicating a field 
of search, should  also bear in mind the critical importance of ensuring 
the confidentiality of  information revealed by a searcher when requesting 
field of search assistance.  See MPEP w 1701. Statutory requirements and 
curbs regarding the use of information  obtained by an employee through 
Government employment are imposed by 15 U.S.C.  15(b) and 18 U.S.C. 1905. 

        Examiners, while holding interviews with attorneys and applicants, 
 should be careful to prevent exposures of files and drawings of other 
applicants. 
        Extreme care should be taken to prevent inadvertent disclosure of 
the  filing date or serial number of any application filed by another 
party. This  applies not only to Office actions but also to notes (usually 
in pencil) in  the file wrapper. 

TELEPHONE AND IN-PERSON REQUESTS FOR INFORMATION CONCERNING PENDING OR 
ABANDONED  APPLICATIONS 

        Normally no information concerning pending or abandoned patent 
applications 
(except reissue applications and reexamination proceedings) may be given 
to  the public without the authorization of the applicant, the assignee of 
record,  or the attorney or agent of record.  See 35 U.S.C. 122 and 37 CFR 
1.14.  Other  exceptions are specified in 37 CFR 1.14. 

        When handling an incoming telephone call or an in-person request 
for  information regarding a pending or abandoned patent application, no 
information  should be disclosed until the identity of the requester can 
be adequately verified  as set forth below. Particular care must be 
exercised when a request is made  for the issue date or patent number 
assigned to a pending patent application. 
 If the issue date is later than the current date (i.e., the date of the 
request),  such information may be given only to the applicant, or the 
assignee of record,  or the attorney or agent of record. 

        The following procedure should be followed before any information 
about  a pending or abandoned patent application is given over the 
telephone: 
(1)   Obtain the caller's full name, the application number, and the 
caller's  telephone number. Ask the caller if there is an attorney or 
agent of record. 
(a)   If there is an attorney or agent of record, ask for his or her 
registration  number. If the registration number is not known, ask for the 
name of the attorney  or agent of record. Inform caller that an attorney 
or agent of record will  be called after verification of his/her identity 
and that information concerning  the application will be released to that 
attorney or agent. 

(b)   If there is no attorney or agent of record, ask the caller why he or 
 she is entitled to information concerning the application. If the caller 
identifies  himself or herself as an applicant or an authorized 
representative of the assignee  of record, ask for the correspondence 
address of record and inform caller that  his or her association with the 
application must be verified before any information  concerning the 
application can be released and that he or she will be called  back. If 
the caller indicates that he or she is not an applicant or an authorized 
representative of the assignee of record, inform caller that no 
information  concerning that application will be released. 

(2)   Then, verify that information concerning the application can be 
released  by checking PALM or the application file. 

(a)   If the caller stated there was an attorney or agent of record, the 
2954  PALM screen should be used to verify the registration number given 
or to obtain  the registration number of an attorney or agent of record. 
Then the 3552 PALM  screen (using the registration number) should be used 
to obtain a telephone  number for an attorney or agent of record. 

(b)   If the caller identified himself or herself as an applicant or an 
authorized  representative of the assignee of record, the 2950 PALM screen 
should be used  to verify the correspondence 




address of record. The 2954 PALM screen 
should be used to determine if there is an attorney or agent of record. If 
 there is an attorney or agent of  record,  their  telephone  number  can 
be  obtained from the 3552 PALM screen. 

(3)   Then, return the call using the telephone number as specified below. 
(a)   If an attorney or agent is of record in the application, information 
 concerning the application should only be released by calling the 
attorney's  or agent's telephone number obtained from the 3552 PALM screen. 

(b)   If the applicant or an authorized representative of the assignee of 
record  requests information, and there is no attorney or agent of record 
and the correspondence  address of record has been verified, information 
concern-ing the application  can be released to the caller using the 
telephone number given by the caller.  If the caller's association with 
the application cannot be verified, no information  concerning the 
application will be released. However, the caller should be  informed that 
the caller's association with the application could not be verified. 
In handling an in-person request, ask the requester to wait while 
verifying  their identification as in (2) above. 


102   Information as to Status of an Application 


        Status information of an application means only the following 
information: 
1.  that the application is abandoned, or 

2.  that the application is pending, or 

3.  that the application was issued as a patent and the patent number, 
issue  date, and classification of such patent. 

PATENTED 

        If an application on which status information is requested has 
matured  into a patent, the fact that the application is patented and the 
patent number,  issue date, and classification relative to the application 
may be given to  anyone. 

PENDING OR ABANDONED, NO REFERENCE 

        If an application is in pending or abandoned status and has not 
been  referred to by number and date in a United States or foreign patent 
or published  application, status information indicating only that the 
application is pending  or abandoned may be given only to Patent and 
Trademark Office employees and  parties of record such as: 

(a)   The applicant. 

(b)   The attorney or agent of record in the application. 

(c)         The assignee of record in the Patent and Trademark Office. 
(d)   Anyone who has and furnishes written authority from a, b, or c. 
A nonsigning inventor (37 CFR 1.47) is entitled to status information only 
 after the application is accepted. See MPEP w 409.03(i). 

REFERENCED APPLICATION 

        If an application has been referred to by number and date in a 
United  States or foreign patent or published application, status 
information may be  given to Patent and Trademark Office employees and to 
anyone who furnishes  the Patent and Trademark Office with a written 
request citing the application  in question by serial number and date of 
filing. The source document (a United  States or foreign patent or 
published application) must be identified in the  written request by the 
country, number, and date of such patent or application. 
REFERENCED APPLICATION, SOURCE 
DOCUMENT NOT PRESENTED 

        If a written request for status information is presented without a 
 copy of the source document, Patent and Trademark Office employees will 
check  to see that the source document and the application in question are 
properly  identified and that the source document refers to the 
application in question  before supplying the status information. Requests 
for information not accompanied  with a copy of the source document may 
require the Office to obtain a copy  of the source document for 
verification before status information can be supplied.  This may 



result in some delay before the desired status information can be 
forwarded  to the requester. 

REFERENCED APPLICATION, SOURCE 
DOCUMENT PRESENTED 

        If a copy of the source document is presented, the Office will 
verify  that the United States application in question is cited therein. 
After checking,  status information may be immediately given and the 
source document copy may  be returned to the requester. In either case, at 
the time the status information  is supplied, the person supplying the 
status information marks the request  "Information furnished," the date, 
and his or her name. The request is then  placed in the file wrapper or 
forwarded to the appropriate area (group art  unit, abandoned files, etc.) 
for inclusion in the file wrapper as part of the  official record of the 
application. The applicant is not consulted. See MPEP  w 203.08. 

STATUS LOCATION INFORMATION FOR 
OFFICE PERSONNEL 

        When it is desired to determine the current location or status of 
an  application, Office personnel should use their PALM terminal. 

        However, inasmuch as all 06 series applications prior to 714,000 
are  not currently in the PALM system, Office personnel requesting 
status/location  information on those applications determined not to be in 
the PALM system will  be requested to contact the File Information Unit at 
308-2733 where the numerical  index records of the above mentioned 
applications are maintained. 


103   Right of Public to Inspect Patent Files and Some Application Files 
[R-2] 

37 CFR 1.11.    Files open to the public. 

(a)   After a patent has been issued or a statutory invention registration 
 has been published, the specification, drawings, and all papers relating 
to  the case in the file of the patent or statutory invention registration 
are  open to inspection by the public, and copies may be obtained upon 
paying the  fee therefor.  See w 2.27 for trademark files. 

(b)   All reissue applications, all applications in which the Office has 
accepted  a request to open the complete application to inspection by the 
public, and  related papers in the application file, are open to 
inspection by the public,  and copies may be furnished upon paying the fee 
therefor. The filing of reissue  applications will be announced in the 
Official Gazette  The announcement shall  include at least the filing 
date, reissue application and original patent numbers,  title, class and 
subclass, name of the inventor, name of the owner of record,  name of the 
attorney or agent of record, and examining group to which the reissue 
application is assigned. 

(c)   All requests for reexamination for which the fee under w 1.20(c) has 
 been paid, will be announced in the Official Gazette. Any reexaminations 
at  the initiative of the Commissioner pursuant to w 1.520 will also be 
announced  in the Official Gazette. The announcement shall include at 
least the date of  the request, if any, the reexamination request control 
number or the Commissioner  initiated order control number, patent number, 
title, class and subclass, name  of the inventor, name of the patent owner 
of record, and the examining group  to which the reexamination is assigned. 

(d)   All papers or copies thereof relating to a reexamination proceeding 
which  have been entered of record in the patent or reexamination file are 
open to  inspection by the general public, and copies may be furnished 
upon paying the  fee therefor. 

(e)   The file of any interference involving a patent, a statutory 
invention  registration, >a reissue application< or an application on 
which a patent has  been issued or which has been published as a statutory 
invention registration,  is open to inspection by the public, and copies 
may be obtained upon paying  the fee therefor, if: (1) the interference 
has terminated, or (2) an award  of priority or judgment has been entered 
as to all parties and all counts. 
37 CFR 1.14.    Patent applications preserved in secrecy. 

***** 

(e)   Any request by a member of the public seeking access to, or copies 
of,  any pending or abandoned application preserved in secrecy pursuant to 
paragraphs 
(a) and (b) of this section, or any papers relating thereto, must 
(1)   Be in the form of a petition and be accompanied by the petition fee 
set  forth in # 1.17(i), or 

(2)   Include written authority granting access to the member of the 
public  in that particular application from the applicant or the 
applicant's assignee  or attorney or agent of record. 

(Note, see w 1.612(a) for access by an interference party to a pending or 
abandoned  application.) 

PETITION FOR ACCESS 

        Any interested party may file a petition, accompanied by the 
petition  fee, to the Commissioner for access to an application. Inasmuch 
as the Post  Office address is necessary for the complete identification 
of the petitioner,  it should always be included complete with Zip Code 
number. Petitions for access  are handled in the Special Program Law Office. 

        The petition may be filed either with proof of service of copy 
upon  the applicant, assignee of record, or attorney or agent of record in 
the application  to which access is sought, or the petition may be filed 
in duplicate, in which  case the duplicate copy will be sent by the Office 
to the applicant, assignee  of record, or attorney or agent of record in 
the application (hereinafter "applicant"). A separate petition, with fee, 
should be filed for each 
application to which access is desired. Each 




petition should show not only why access is desired, but also why 
petitioner  believes he or she is entitled to access. The applicant will 
normally be given  a limited period such as 3 weeks within which to state 
any objection to the  granting of the petition for access and reasons why 
it should by denied.  If  applicant states that he or she has no objection 
to the requested access, the  petition will be granted. If objection is 
raised or applicant does not respond,  the petition will be decided on the 
record. 
A determination will be made whether "special circumstances" are present 
which  warrant a grant of access under 35 U.S.C. 122.  See below when the 
application  is the basis of a claim for benefit of an earlier filing date 
under 35 U.S.C.  120 or the application is incorporated by reference in a 
United States patent. 
ACCESS WHERE PATENT CLAIMS 
35 U.S.C.120 BENEFIT 

        Whenever a patent relies on the filing date of an earlier but 
still  pending application, the public is entitled to see the portion of 
the earlier  application that relates to the common subject matter, and 
also what prosecution,  if any, was had in the earlier application of 
subject matter claimed in the  patent. In re Dreyfus, 137 USPQ 475 (Comm'r 
Pat. 1961). If applicant objects  to the petition for access, he or she 
must submit along with the objection  two sets of a copy of the portion of 
the application that relates to the common  subject matter including all 
materials relating to the prosecution in the application  of the subject 
matter claimed in the patent. Failure to submit these materials  will 
result in the entire application file being made available to petitioner. 
The Office will not attempt to separate the noted materials from the 
remainder  of the application. Compare In re Marsh Engineering Co., 1913 
C.D. 183 (Comm'r  Pat. 1913). 

ACCESS TO PROVISIONAL APPLICATIONS 

        In provisional applications, access or certified copies will only 
be  given to parties with written authority from a named inventor, the 
assignee  of record, or the attorney or agent of record. Since provisional 
applications  do not require an oath or declaration, there may be no power 
of attorney in  the application. If the person requesting a certified copy 
is not a named inventor,  assignee of record, or an attorney or agent of 
record, the requested certified  copy will be supplied to the 
correspondence address of the provisional application. 
ACCESS WHERE APPLICATION 
INCORPORATED BY REFERENCE 
IN A UNITED STATES PATENT 

        The incorporation by reference of an application in a printed 
United  States patent constitutes a special circumstance under 35 
U.S.C.122 warranting  that access of the original disclosure of the 
application be granted.  The  incorporation by reference will be 
interpreted as a waiver of confidentiality  of only the original 
disclosure as filed, and not the entire application file,  In re Gallo, 
231 USPQ 496 (Comm'r Pat. 1986). If applicant objects to access  to the 
entire application file, two copies of the information incorporated  by 
reference must be submitted along with the objection. Failure to provide 
the material within the period provided will result in the entire 
application 
(including prosecution) being made available to petitioner. The Office 
will  not attempt to separate the noted materials from the remainder of 
the application. 
 Compare In re Marsh Engineering Co., 1913 C.D. 183 (Comm'r Pat. 1913). 
APPLICATION AT BOARD OF PATENT 
APPEALS AND INTERFERENCES 

        The Board of Patent Appeals and Interferences also handles all 
petitions  for access to applications involved in an interference **; see 
37 CFR 1.612. 
PUBLISHED DOCUMENTS 

        If a defensive publication, an abstract, or an abbreviature has 
been  published, the entire application is available to the public for 
inspection  and obtaining copies; see MPEPw 711.06. 

REISSUE APPLICATIONS 

        37 CFR 1.11(b) opens all reissue applications filed after March 1, 
 1977 to inspection by the general public. 
37 CFR1.11(b) also provides for announcement of the filings of reissue 
applications  in the Official Gazette. This announcement will give 
interested members of  the public an opportunity to submit to the examiner 
information pertinent to  patentability of the reissue application. 

        37 CFR 1.11(b) is applicable only to those reissue applications 
filed  on or after March 1, 1977. Those reissue applications previously on 
file will  not be automatically open to inspection but a liberal policy 
will be followed  by the Special Program Examiner in granting petitions 
for access to such applications. 


        For those reissue applications filed on or after March 1, 1977, 
the  following procedure will be observed: 

(1)   The filing of reissue applications will be announced in the Official 
 Gazette and will include certain identifying data as specified in 37 CFR 
1.11(b).  Any member of the general public may request access to a 
particular reissue  application filed after March 1, 1977.  Since no 
record of such       request  is intended to be kept, an oral request will 
suffice.  In the Record Room,  only the regular application charge card 
need be completed and submitted. The  charge card will not be made part of 
a pending or abandoned reissue application. 
(2)   The pending reissue application files will be maintained in the 
examining  groups and inspection thereof will be supervised by group 
personnel. Although  no general limit is placed on the amount of time 
spent reviewing the files,  the Office may impose limitations, if 
necessary. No access will be permitted  while the application is actively 
being processed. 

(3)   Where the reissue application has left the examining group for 
administrative  processing, requests for access should be directed to the 
appropriate supervisory  personnel in the division or branch where the 
application is currently located. 
(4)   Requests for copies of papers in the reissue application file must 
be  in writing addressed to the Commissioner of Patents and Trademarks, 
Washington,  D.C. 20231 and may be either mailed or delivered to the 
Office mail room. The  price for a copy of an application as filed is set 
forth in 
37 CFR 1.19(a)(3).  Since no useful purpose is seen for retaining such 
written  request for copies of papers in reissue applications, they should 
be destroyed  after the order has been completed. 

REQUEST FOR REEXAMINATION 

        All requests for reexamination and related patent files are 
available  to the public.  An announcement of the filing of each request 
in which the  entire fee has been paid and of each reexamination ordered 
at the initiative  of the Commissioner under 37 CFR 1.520 will be 
published in the Official Gazette.  Procedures for access and obtaining 
copies are the same as those for reissue  applications indicated above. 
See also MPEP w 2232. 

 37 CFR 1.14.       Patent applications preserved in secrecy. 

***** 

(b)     Except as provided in w 1.11(b) abandoned applications are 
likewise  not open to public inspection, except that if an application 
referred to in  a U.S. patent, or in an application in which the applicant 
has filed an authorization  to open the complete application to the 
public, is abandoned and is available,  it may be inspected or copies 
obtained by any person on written request, without  notice to the applicant. 

***** 

(d)     Any decision of the Board of Patent Appeals and Interferences, or 
any  decision of the Commissioner on petition, not otherwise open to 
public inspection  shall be published or made available for public 
inspection if: (1) The Commissioner  believes the decision involves an 
interpretation of patent laws or regulations  that would be of important 
precedent value; and (2) the applicant, or any party  involved in the 
interference, does not within two months after being notified  of the 
intention to make the decision public, object in writing on the ground 
that the decision discloses a trade secret or other confidential 
information. 
 If a decision discloses such information, the applicant or party shall 
identify  the deletions in the text of the decision considered necessary 
to protect the  information.  If it is considered the entire decision must 
be withheld from  the public to protect such information, the applicant or 
party must explain  why.  Applicants or parties will be given time, not 
less than twenty days,  to request reconsideration and seek court review 
before any portions of decisions  are made public over their objection. See 
# 2.27 for trademark applications. 

***** 

 ABANDONED APPLICATION REFERENCED 
IN U.S. PATENT 

        Under 37 CFR w 1.14(b), an abandoned application referred to in 
the  text of a U.S. patent is open to public inspection. Note that the 
status of  an application referred to in the text of a U.S. patent may 
initially be obtained  under the provisions of 37 CFR w 1.14(a). Under 37 
CFR w 1.14(a), any member  of the public is entitled to know the current 
status (i.e., pending, abandoned,  or patented) of an application 
identified by serial number in a published patent  document or the United 
States has been indicated as a Designated State in the  published 
international application. Note that 37 CFR w 1.14(a) is not limited  to a 
U.S. patent. Status information may be  supplied if the application is 
identified in any published patent document (worldwide). 37 CFR w 1.14(b), 
 however, is limited to a U.S. patent. Access to an abandoned application 
is  available to any member of the public only if the application is 
referenced  in a U.S. patent. 



        An abandoned file reference in a U.S. patent may be ordered by any 
 member of the public through the File Information Unit. Orders for files 
stored  in repositories within the Crystal City (Arlington,Virginia) area 
are normally  filled within 4 to 8 hours.  Orders for files stored at the 
Federal Records  Center in Suitland, Maryland, are normally filled within 
4 to 5 days. An abandoned  file received by a member of the public must be 
returned to the charge counter  in the File Information Unit before 
closing the same day it is received. 
        37 CFR # 1.14(b) allows public inspection of abandoned 
applications  referred to in defensive publications. 

        Access to abandoned patent applications forming a part of a File 
Wrapper  Continuation (FWC) application is governed by 37 CFR w 1.14(b). 
Further, under  37 CFR w 1.62(f) where access is granted to such an 
abandoned application,  access may also be granted to the FWC 
application. 

        37 CFR 1.14(d) makes explicit the conditions under which 
significant  decisions of the Patent and Trademark Office will be made 
available to the  public, and includes reference to decisions of the Board 
of Patent Appeals  and Interferences and the Commissioner. The section is 
applicable to decisions  deemed by the Commissioner to involve an 
interpretation of patent laws or regulation 

that would be of significant precedent value, where such decisions are 
contained  in either pending or abandoned applications or in interference 
files not otherwise  open to the public.  It is applicable whether or not 
the decision is a final  decision of the Patent and Trademark Office. 

        37 CFR 1.14(d) is considered to place a duty on the Patent and 
Trademark  Office to identify significant decisions and to take the steps 
necessary to  inform the public of such decisions, by publication of such 
decisions, in whole  or in part.  It is anticipated, however, that no more 
than a few dozen decisions  per year will be deemed of sufficient 
importance to warrant publication under  the authority of this section. 

37 CFR 1.15.    Requests for identifiable records. 

(a)   Requests for records, not disclosed to the public as part of the 
regular  informational activity of the Patent and Trademark Office and 
which are not  otherwise dealt with in the rules in this part shall be 
made in writing, with  the envelope and the letter clearly marked "Freedom 
of Information Request."  Each such request, so marked, should be 
submitted by mail addressed to the  "Patent and Trademark Office, Freedom 
of Information Request Control Desk,  Box 8, Washington, D.C. 20231," or 
hand delivered to the Office of the Solicitor,  Patent and Trademark 
Office, Arlington, Virginia. The request will be processed  in accordance 
with the procedures set forth in Part 4 of Title 15, Code of  Federal 
Regulations. 

(b)   Any person whose request for records has been initially denied in 
whole  or in part, or has not been timely determined, may submit a written 
appeal  as provided in w 4.8 of Title 15, Code of Federal Regulations. 

(c)   Procedures applicable in the event of service of process or in 
connection  with testimony of employees on official matters and production 
of official  documents of the Patent and Trademark Office in civil legal 
proceedings not  involving the United States shall be those established in 
parts 15 and 15a  of Title 15, Code of Federal Regulations. 

ACCESSIBILITY OF NONFINAL DISCOVERY 
OPINIONS AND ORDERS ISSUED BY THE BOARD OF PATENT APPEALS AND 
INTERFERENCES 

        A number of inquiries have been received from the patent bar and 
other  interested persons relating to discovery practice in interferences 
before the  Board of Patent Appeals and Interferences. The inquiries 
indicate a need for  making available to the public nonfinal Board 
opinions, including concurring  and dissenting opinions, as well as 
orders, made in the adjudication of discovery  matters before the Board. 
While nonfinal opinions need not be made available  to the public [5 
U.S.C. 552(a)(2)], in order to satisfy the need, copies of  non-final 
opinions issued by the Board will be kept in a file in the Service  Branch 
of the Board in the U.S. Patent and Trademark Office (Crystal Gateway  2, 
1225 Jefferson Davis Highway, Room 10C01, Arlington, Virginia). Opinions 
in the file may be reviewed by the public during normal business hours 
(8:30  A.M. to 5:00 P.M.). Copies of opinions may be made by the public on 
reproducing  equipment, or copies may be ordered at the cost set forth in 
37 CFR 1.19(*>b<)(3). 
        In view of the provisions of 35 U.S.C. 122 and 37 CFR 1.14(a), a 
consent  will be obtained by the Office from all parties in an 
interference before an  opinion issued in connection with the interference 
is placed in the file if  the interference file is not otherwise available 
to the public. Preliminary  indications are that the parties and their 
counsel generally consent. 
        In order to obtain optimum dissemination of the information 
contained  in the file, opinions placed therein will be indexed according 
to specific  topics. Copies of the index will be updated from time to time 
as the need occurs.  Specific questions relating to the index and file may 
be directed to the Patent  Interference Examiners. 



        The initial index is as follows: 

INDEX 

1.00    Discovery in general [37 CFR 1.673] 

1.10    Requests and service under 37 CFR 1.673 

1.20    Requests under 37 CFR 1.687(b) 

1.30    Motions for additional discovery under 37 CFR 1.687(c) 

1.31    Related to derivation 

1.32    Related to abandonment, suppression, and concealment 

1.33    Related to inequitable conduct 

1.34    Other 

1.40    Motions under 37 CFR 1.673(c) 


104   Power to Inspect Application [R-1] 


        No person but the applicant (any one of joint applicants), 
applicant's  legal representative, the assignee whose assignment, is of 
record, or the attorney,  agent or associate attorney, or agent of record 
will be permitted to have access  to the file of any pending application, 
except as provided for under 37 CFR  1.11(b) or under the interference 
rules, unless written authority from one  of the above indicated parties, 
identifying the application to be inspected  and the name of the person 
authorized to have access, is made of record, or  upon the written order 
of the Commissioner, which will also become a part of  the record of the case. 

        A nonsigning inventor (37 CFR 1.47) is entitled to access an 
application  only after the application is accepted. See MPEP w 409.03(i). 

        A person acting in a representative capacity under 
37 CFR 1.34(a) may not execute a power to inspect an application. For a 
discussion  of power of attorney in an application, see MPEP w 402. 

        Approval by the primary examiner of a power to inspect is not 
required.  The clerk of the group to which the application is assigned 
ascertains that  the power is properly signed by one of the above 
indicated parties, and if  acceptable, enters it into the file. If the 
power to inspect is unacceptable,  notification of nonentry is written by 
the clerk to the person who signed the  power. 

        When a power to inspect is received while a file is under the 
jurisdiction  of a service branch, such as the Customer Services Division, 
the Service Branch  of the Board of Patent Appeals and Interferences, and 
the Patent Issue Division,  the question of permission to inspect is 
decided by the head of the branch  who, if he or she approves, indicates 
the approval directly on the power. 
        A "power to inspect" is, in effect, the same as a "power to 
inspect  and make copies." 

        Where an applicant relied on his or her application as a means to 
interfere  with a competitor's business or customers, permission to 
inspect the application  may be given the competitor by the Commissioner 
(Ex Parte 
Bonnie-B Co. Inc., 1923 C.D. 42; 313 O.G. 453, (Comm'r Pat. 1922)). Such 
permission  is via petition for access under 37 CFR 1.14(e). 

        An unrestricted power to inspect given by an applicant is, under 
existing  practice, recognized as good until and unless rescinded.  The 
same is true  in the case of one given by the attorney or assignee so long 
as such attorney  or assignee retains his or her connection with the 
application. 

        Permission to inspect given by the Commissioner, however, is not 
of  a continuing nature, since the conditions that justified the permit to 
inspect  when given may not obtain at a later date. 

ACCESS TO PATENT  APPLICATIONS 
>PROVISIONAL AND NONPROVISIONAL< 
AND INTERFERENCE FILES 

        In order to ensure that access to patent applications, other than 
reissue  applications filed after March 1, 1977, and interference files is 
given only  to persons who are entitled thereto or who are specially 
authorized to have  access under 37 CFR 1.14 and to ensure also that the 
file record identifies  any such specially authorized person who has been 
given access to a file, the  following practice will be observed by all 
personnel of the Patent and and  Trademark Office: 

1.  Access, as provided for in the Rules of Practice, will be given on 
oral  request to any applicant, patentee, assignee, or attorney or agent 
of record  in an application or patent only upon proof of identity or upon 
recognition  based on personal acquaintance. 

2.  Where a power of attorney or authorization of agent was given to a 
registered  firm prior to July 2, 1971, access will be given upon oral 
request as in paragraph  1 above to any registered member or employee of 
the firm who has signatory  power for the firm. 



3.  Unregistered employees of attorneys or agents, public stenographers, 
and  all other persons not within the provisions of paragraphs 1 and 2 
above will  be given access only upon presentation of a written 
authorization for access 
(power to inspect) signed by a person specified in paragraph 1 above, 
which  authorization will be entered as a part of the official file. The 
power to  inspect must specifically name the person who is entitled to 
inspect and copy  the application. An associate or representative of the 
named person is not  entitled to access to the application on behalf of 
the authorized person. Further,  the power to inspect must specifically 
identify the application by serial number  and be limited to a single 
application. 

>4.   In provisional applications, access or certified copies will only be 
 given to parties with written authority from a named inventor, the 
assignee  of record, or the attorney or agent of record.  Since 
provisional applications  do not require an oath or declaration, there may 
be no power of attorney in  the application.  If the person requesting a 
certified copy is not a named  inventor, assignee of record, or an 
attorney or agent of record, the requested  certified copy will be 
supplied to the correspondence address of the provisional  application.< 


105   Disbarred Attorney Cannot Inspect 


        Patent and Trademark Office employees are forbidden to hold either 
 oral or written communication with an attorney who has been suspended or 
excluded  from practice regarding an application unless it be one in which 
said attorney  is the applicant. Power to inspect given to such an 
attorney will not be accepted. 

106   Control of Inspection by Assignee 


        The assignee of record of the entire interest in an application 
may  intervene in the prosecution of the case, appointing an attorney of 
his or  her own choice.  (See 37 CFR 3.71.) Such intervention, however, 
does not exclude  the applicant from access to the application to see that 
it is being prosecuted  properly, unless the assignee makes specific 
request to that effect. Even when  such request is made, the applicant may 
be permitted to inspect the case on  sufficient showing why such 
inspection is necessary to conserve his or her  rights, In re The Kellogg 
Switchboard & Supply Company, 1906 C.D. 274 (Comm'r  Pat. 1906). 


106.01      Rights of Assignee of Part Interest 


        While it is only the assignee of record of the entire interest who 
 can intervene in the prosecution of an application or interference to the 
exclusion  of the applicant, an assignee of a part interest or a licensee 
of exclusive  right is entitled to inspect the application. 


110   Confidential Nature of International Applications 



PCT Article 30.       Confidential Nature of the International 
Application. 

(1)(a)      Subject to the provisions of subparagraph (b), the 
International  Bureau and the International Searching Authorities shall 
not allow access by  any person or authority to the international 
application before the international  publication of that application, 
unless requested or authorized by the applicant. 
(b)   The provisions of subparagraph (a) shall not apply to any 
transmittal  to the competent International Searching Authority, to 
transmittals provided  for under Article 13, and to communications 
provided for under Article 20. 
(2)(a)      No national Office shall allow access to the international 
application  by third parties, unless requested or authorized by the 
applicant, before the  earliest of the following dates: 

 (i)            date of the international publication of the international 
 application, 

 (ii)       date of the receipt of the communication of the international 
application  under Article 20, 

 (iii)      date of the receipt of a copy of the international application 
 under Article 22. 

(b)   The provisions of subparagraph (a) shall not prevent any national 
Office  from informing third parties that it has been designated, or from 
publishing  that fact. Such information or publication may, however, 
contain only the following  data: identification of the receiving Office, 
name of the applicant, international  filing date, international 
application number, and title of the invention. 
(c)   The provisions of subparagraph (a) shall not prevent any designated 
Office  from allowing access to the international application for the 
purposes of the  judicial authorities. 

(3)   The provisions of paragraph (2)(a) shall apply to any receiving 
Office  except as far as transmittals provided for under Article 12(1) are 
concerned. 
(4)   For the purposes of this Article, the term " access" covers any 
means  by which third parties may acquire cognizance, including individual 
communication  and general publication, provided, however, that no 
national Office shall generally  publish an international application or 
its translation before the international  publication or, if international 
publication has not taken place by the expiration  of 20 months from the 
priority date, before the expiration of 20 months from  the said priority 
date. 



35 U.S.C. 368.          Secrecy of certain inventions; filing 
international  applications in foreign countries. 

(a)   International applications filed in the Patent and Trademark Office 
shall  be subject to the provisions of chapter 17 of this title. 

(b)   In accordance with article 27(8) of the treaty, the filing of an 
international  application in a country other than the United States on 
the invention made  in this country shall be considered to constitute the 
filing of an application  in a foreign country within the meaning of 
chapter 17 of this title, whether  or not the United States is designated 
in that international application. 
(c)   If a license to file in a foreign country is refused or if an 
international  application is ordered to be kept secret and a permit 
refused, the Patent and  Trademark Office when acting as a Receiving 
Office, International Searching  Authority, or International Preliminary 
Examining Authority, may not disclose  the contents of such application to 
anyone not authorized to receive such disclosure. 
37 CFR 1.14(a) relating to access to international 
applications is found in MPEP w 101. 

        Although most international applications are published soon after 
the  expiration of 18 months from the priority date, PCT Article 21(2)(a), 
such  publication does not open up the Home Copy or Search Copy to the 
public for  inspection. 


115   Review of Applications for National Security and Property Rights 
Issues 

Secrecy Orders 

37 CFR 5.1.   Defense inspection of certain applications. 

(a)   The provisions of this part shall apply to both national and 
international  applications filed in the Patent and Trademark Office and, 
with respect to  inventions made in the United States, to applications 
filed in any foreign  country or any international authority other than 
the United States Receiving  Office. The (1) filing of a national or an 
international application in a foreign  country or with an international 
authority other than the United States Receiving  Office, or (2) 
transmittal of an international application to a foreign agency  or an 
international authority other than the United States Receiving Office  is 
considered to be a foreign filing within the meaning of Chapter 17 of 
Title  35, United States Code. 

(b)   In accordance with the provisions of 35 U.S.C. 181, patent 
applications  containing subject matter the disclosure of which might be 
detrimental to the  national security are made available for inspection by 
defense agencies as  specified in said section. Only applications 
obviously relating to national  security, and applications within fields 
indicated to the Patent and Trademark  Office by the defense agencies as 
so related, are made available. The inspection  will be made only by 
responsible representatives authorized by the agency to  review 
applications. Such representatives are required to sign a dated 
acknowledgement  of access accepting the condition that information 
obtained from the inspection  will be used for no purpose other than the 
administration of 35 U.S.C. 181-188.  Copies of applications may be made 
available to such representatives for inspection  outside the Patent and 
Trademark Office under conditions assuring that the  confidentiality of 
the applications will be maintained, including the conditions  that: (1) 
all copies will be returned to the Patent and Trademark Office promptly 
if no secrecy  imposed, or upon rescission of such order if one is 
imposed,  and (2) no additional copies will be made by the defense 
agencies. A record  of the removal and return of copies made available for 
defense inspection will  be maintained by the Patent and Trademark Office. 
Applications relating to  atomic energy are made available to the 
Department of Energy as specified in  w 1.14 of this chapter. 

All applications filed in the Patent and Trademark Office are screened for 
 subject matter the disclosure of which might impact the national security 
based  on information provided by the Armed Services Patent Advisory Board 
(ASPAB),  the Department of Energy (DOE), and the National Aeronautics and 
Space Administration 
(NASA). Such applications are referred to the appropriate agencies. 
Authority  for this referral can be found in 35 U.S.C. 181 which provides, 
in part: 
Whenever the publication or disclosure of an invention by the granting of 
a  patent, in which the Government does not have a property interest, 
might, in  the opinion of the Commissioner, be detrimental to the national 
security, he  shall make the application for patent in which such 
invention is disclosed  available for inspection to the Atomic Energy 
Commission, the Secretary of  Defense, and the chief officer of any other 
department or agency of the Government  designated by the President as a 
defense agency of the United States. 
If the agency concludes that disclosure of the in- 
vention would be detrimental to the national secu- 
rity, the Commissioner is notified. The Commissioner then issues a Secrecy 
 Order and withholds the grant of a patent for such period as the national 
interest  requires. 

For those applications in which the Government has a property interest, 
responsibility  for notifying the Commissioner of the need for a Secrecy 
Order resides with  the agency having that interest. 

        A second purpose for the screening of all applications is to 
identify  inventions in which DOE or NASA might have property rights. See 
42 U.S.C. 2182  and 42 U.S.C. 2457 and MPEP w 150. 

        A third function of the screening procedure is to process foreign 
filing  license petitions under 37 CFR 5.12(a). See MPEP w 140. 

        Some applications have a label (Form PTO-1305) on the upper right 
hand  corner of the face of the file wrapper. A Notice of Allowance and 
Issue Fee  Due may not be mailed for those applications if the "REV" on 
the label is circled 
(although the Examiner may be given credit for a disposal). Such cases 
must  be forwarded to Licensing and Review to have the security review 




completed before the Notice of Allowance can be mailed. Cases in which 
only  "DOE" and/or "NASA" is circled should be counted for allowance and 
the notice  of allowance mailed before being sent to Licensing and Review 
for processing  under the Atomic Energy and Space Acts. 

        While the initial screening is performed only by designated 
personnel,  all examiners have a responsibility to be alert for obviously 
sensitive subject  matter either in the original disclosure or 
subsequently introduced, for example,  by amendment. Such applications 
should be forwarded to Licensing & Review.  It would be helpful if the 
examiner would identify the significant subject  matter such as by a check 
mark in the margin of the paper. 


120   Secrecy Orders 


37 CFR 5.2.   Secrecy order. 

(a)   When notified by the chief officer of a defense agency that 
publication  or disclosure of the invention by the granting of a patent 
would be detrimental  to the national security, an order that the 
invention be kept secret will be  issued by the Commissioner of Patents 
and Trademarks. 

(b)   The secrecy order is directed to the applicant, his successors, any 
and  all assignees, and their legal representatives; hereinafter 
designated as principals. 
(c)   A copy of the secrecy order will be forwarded to each principal of 
record  in the application and will be accompanied by a receipt, 
identifying the particular  principal, to be signed and returned. 

(d)   The secrecy order is directed to the subject matter of the 
application.  Where any other application in which a secrecy order has not 
been issued discloses  a significant part of the subject matter of the 
application under secrecy order,  the other application and the common 
subject matter should be called to the  attention of the Patent and 
Trademark Office. Such a notice may include any  material such as would be 
urged in a petition to rescind secrecy orders on  either of the applications. 

37 CFR 5.3.   Prosecution of application under secrecy orders; withholding 
 patent. 

 Unless specifically ordered otherwise, action on the application by the 
Office  and prosecution by the applicant will proceed during the time an 
application  is under secrecy order to the point indicated in this section: 

(a)   National applications under secrecy order which come to a final 
rejection  must be appealed or otherwise prosecuted to avoid abandonment. 
Appeals in such  cases must be completed by the applicant but unless 
otherwise specifically  ordered by the Commissioner will not be set for 
hearing until the secrecy order  is removed. 

(b)   An interference will not be declared involving national applications 
 under secrecy order. However, if an applicant whose application is under 
secrecy  order seeks to provoke an interference with an issued patent, a 
notice of that  fact will be placed in the file wrapper of the patent. 
(See w 1.607(d)). 
(c)   When the national application is found to be in condition for 
allowance  except for the secrecy order the applicant and the agency which 
caused the  secrecy order to be issued will be notified. This notice 
(which is not a notice  of allowance under w 1.311 of this chapter) does 
not require response by the  applicant and places the 


national application in a condition of suspension until the secrecy order 
is  removed. When the secrecy order is removed the Patent and Trademark 
Office  will issue a notice of allowance under w 1.311 of this chapter, or 
take such  other action as may then be warranted. 

(d)   International applications under secrecy order will not be mailed, 
delivered  or otherwise transmitted to the international authorities or 
the applicant.  International applications under secrecy order will be 
processed up to the  point where, if it were not for the secrecy order, 
record and search copies  would be transmitted to the international 
authorities or the applicant. 
37 CFR 5.4.   Petition for rescission of secrecy order. 

(a)   A petition for rescission or removal of a secrecy order may be filed 
 by, or on behalf of, any principal affected thereby. Such petition may be 
in  letter form, and it must be in duplicate. The petition must be 
accompanied  by one copy of the application or an order for the same, 
unless a showing is  made that such a copy has already been furnished to 
the department or agency  which caused the secrecy order to be issued. 

(b)   The petition must recite any and all facts that purport to render 
the  order ineffectual or futile if this is the basis of the petition. 
When prior  publications or patents are alleged the petition must give 
complete data as  to such publications or patents and should be 
accompanied by copies thereof. 
(c)   The petition must identify any contract between the Government and 
any  of the principals, under which the subject matter of the application 
or any  significant part thereof was developed, or to which the subject 
matter is otherwise  related. If there is no such contract, the petition 
must so state. 
(d)   Unless based upon facts of public record, the petition must be 
verified. 
37 CFR 5.5.   Permit to disclose or modification of secrecy order. 
(a)   Consent to disclosure, or to the filing of an application abroad, as 
 provided in 35 U.S.C. 182, shall be made by a "permit" or  "modification" 
of  the secrecy order. 

(b)   Petitions for a permit or modification must fully recite the reason 
or  purpose for the proposed disclosure. Where any proposed disclosee is 
known  to be cleared by a defense agency to receive classified 
information, adequate  explanation of such clearance should be made in the 
petition including the  name of the agency or department granting the 
clearance and the date and degree  thereof. The petition must be filed in 
duplicate and be accompanied by one  copy of the application or an order 
for the same, unless a showing is made  that such a copy has already been 
furnished to the department or agency which  caused the secrecy order to 
be issued. 

(c)   In a petition for modification of a secrecy order to permit filing 
abroad,  all countries in which it is proposed to file must be made known, 
as well as  all attorneys, agents and others to whom the material will be 
consigned prior  to being lodged in the foreign patent office. The 
petition should include a  statement vouching for the loyalty and 
integrity of the proposed disclosees  and where their clearance status in 
this or the foreign country is known all  details should be given. 



(d)   Consent to the disclosure of subject matter from one application 
under  secrecy order may be deemed to be consent to the disclosure of 
common subject  matter in other applications under secrecy order so long 
as not taken out of  context in a manner disclosing material beyond the 
modification granted in  the first application. 

(e)   The permit or modification may contain conditions and limitations. 
37 CFR 5.6.   General and group permits. 

        (a)   Organizations requiring consent for disclosure of 
applications  under secrecy order to persons or organizations in 
connection with repeated  routine operation may petition for such consent 
in the form of a general permit.  To be successful such petitions must 
ordinarily recite the security clearance  status of the disclosees as 
sufficient for the highest classification of material  that may be involved. 

  (b)     Where identical disclosees and circumstances are involved, and 
consent  is desired for the disclosure of each of a specific list of 
applications, the  petitions may be joined. 

37 CFR 5.7.   Compensation. 

        Any request for compensation as provided in 35 U.S.C. 183 must not 
 be made to the Patent and Trademark Office but should be made directly to 
the  department or agency which caused the secrecy order to be issued. 
Upon written  request persons having a right to such information will be 
informed as to the  department or agency which caused the secrecy order to 
be issued. 

37 CFR 5.8.   Appeal to Secretary. 

         Appeal to the Secretary of Commerce, as provided by 35 U.S.C. 
181,  from a secrecy order cannot be taken until after a petition for 
rescission  of the secrecy order has been made and denied.  Appeal must be 
taken within  60 days from the date of the denial, and the party 
appealing, as well as the  department or agency which caused the order to 
be issued will be notified of  the time and place of hearing.  The appeal 
will be heard and decided by the  Secretary or such officer or officers as 
he may designate. 

SECRECY ORDER TYPES 

Three types of Secrecy Orders, each of a different scope, are issued as 
follows: 
(1)   Secrecy Order and Permit for Foreign Filing in Certain Countries - 
to  be used for those patent applications that contain technical data 
whose export  is controlled by the guidelines contained in DoD Directive 
5230.25 dated November  6, 1984 which reviews export control under 10 
U.S.C.  140(c) and the Militarily  Critical Technology List (MCTL). 

(2)   Secrecy Order and Permit for Disclosing Classified Information - to 
be  used for those patent applications which contain technical data that 
is properly  classified or classifiable (no Government interest) under a 
security guideline  where the patent application owner has a current DoD 
Security Agreement, DD  Form 441. If the application is classifiable, this 
secrecy order allows disclosure  of the technical information as if it 
were classified as prescribed in the  Industrial Security Manual (ISM). 

(3)   Secrecy Order - to be used for those patent applications that 
contain  technical data properly classifiable under a security guideline 
where the patent  application owner does not have a DoD Security 
Agreement. The order prevents  disclosure of the subject matter to anyone 
without an express written consent  from the Commissioner.  However, quite 
often this type of secrecy order includes  a permit ``Permit A" which 
relaxes the disclosure restrictions as set forth  in the permit. 

The first Secrecy Order is intended to permit the widest utilization of 
the  technical data in the patent application while still controlling any 
publication  or disclosure which would result in an unlawful exportation. 
This type of Secrecy  Order is based on the applicable export controls in 
either the Commodity Control  List (CCL) or the Munitions Lists of the 
International Traffic in Arms Regulation 
(ITAR), and identifies the countries where corresponding patent 
applications  may be filed. Countries with which the United States has 
reciprocal security  agreements are: Australia, Belgium, Canada, Denmark, 
France, Germany, Greece,  Italy, Japan, Luxembourg, Netherlands, Norway, 
Portugal, Spain, Sweden, Turkey  and the United Kingdom. Please note that 
applications subject to a secrecy  order cannot be filed directly with the 
European Patent Office since no reciprocal  security agreement with this 
organization exists. Applications must be filed  in the individual EPO 
member countries identified above. 

        The intent of the second Secrecy Order is to treat classified 
technical  data presented as a patent application in the same manner as 
any other classified  material. Accordingly, this Secrecy Order will 
include a notification of the  classification level of the technical data 
in the application. 

        The third type of Secrecy Order is used where the other types of 
Orders  do not apply, including Orders issued by direction of agencies 
other than the  Department of Defense. 



        A Secrecy Order should not be construed in any way to mean that 
the  Government has adopted or contemplates adoption of the alleged 
invention disclosed  in an application; nor is it any indication of the 
value of such invention. 
RELATED SUBJECT MATTER 

        The Secrecy Orders apply to the subject matter of the invention, 
not  just to the patent application itself. Thus, the Secrecy Order 
restricts disclosure  or publication of the invention in any form. 
Furthermore, other patent applications  already filed or later filed which 
contain any significant part of the subject  matter of the application 
also fall within the scope of the Order and must  be brought to the 
attention of Licensing & Review if such applications are  not already 
under Secrecy Order by the Commissioner. 

        The effects of a Secrecy Order are detailed in the notifying 
letter  and include restrictions on disclosure of the invention and delay 
of any patent  grant until the Order is rescinded. 

CORRESPONDENCE 

        When the Secrecy Order issues, the law specifies that the subject 
matter  or any material information relevant to the application, including 
unpublished  details of the invention, shall not be published or disclosed 
to any person  not aware of the invention prior to the date of the Order, 
including any employee  of the principals except as permitted by the 
Secrecy Order. The law also requires  that all information material to the 
subject matter of the application be kept  in confidence, unless written 
permission to disclose is first obtained from  the Commissioner of Patents 
and Trademarks except as provided by the Secrecy  Order. Therefore, all 
correspondence to be filed in an application which is  subject to a 
secrecy order and which is directly related to the subject matter  covered 
by the secrecy order must be transmitted to the Office in a manner  which 
would preclude disclosure to unauthorized individuals and addressed as 
set forth in 37 CFR 5.33. Use of facsimile transmission is not permitted 
(37  CFR 1.6(d)(6)). 

        Subject matter under Secrecy Order must be safeguarded under 
conditions  that will provide adequate protection and prevent access by 
unauthorized persons. 
        When applicants desire to change the Power of Attorney in an 
application  under Secrecy Order, the name, date of birth and Social 
Security number of  the new attorney(s) should be included in the change 
notice so that Licensing  and Review may conduct the necessary access 
security clearance checks. 
        Applicants should also ensure that the correspondence address (37 
CFR  1.33) of any application under Secrecy Order represents a location 
suitable  for the receipt of security information. 

PCT APPLICATIONS 

        If the Secrecy Order is applied to an international application, 
the  application will not be forwarded to the International Bureau as long 
as the  Secrecy Order remains in effect  If the Secrecy Order remains in 
effect at  the end of the time limit under PCT Rule 22.3, the 
international application  will be considered withdrawn (abandoned) 
because the Record Copy of the international  application was not received 
in time by the International Bureau (37 CFR 5.3(d),  PCT Article 12(3), 
and PCT Rule 22.3).  If the United States of America has  been designated, 
however, it is possible to save the U.S. filing date, by fulfilling  the 
requirements of 35 U.S.C. 371(c) prior to the withdrawal. 

CHANGES IN SECRECY ORDERS 

        Applicants may petition for rescission or modification of the 
Secrecy  Order. For example, if the applicant believes that certain 
existing facts or  circumstances would render the Secrecy Order 
ineffectual, he or she may informally  contact the sponsoring agency to 
discuss these facts or formally petition the  Commissioner to rescind the 
Order. The applicant may also petition the Commissioner  for a permit to 
disclose the invention to another or to modify the Secrecy  Order stating 
fully the reason or purpose for disclosure or modification. An  example of 
such a situation would be a request to file the application in a  foreign 
country. The requirements for petitions are described in 37 CFR 5.4  and 
5.5. The law also provides that if an appeal is necessary, it may be taken 
 to the Secretary of Commerce under the provision of 37 CFR 5.8. Any 
petition  or appeal should be addressed to the Commissioner of Patents and 
Trademarks,  Attention: Licensing and Review, Washington, D.C. 20231. 

IMPROPER OR INADVERTENT DISCLOSURE 

        If, prior to or after the issuance of the Secrecy Order, any 
significant  part of the subject matter or material information relevant 
to the application  has been or is 




revealed to any U.S. citizen in the United States, the principals must 
promptly  inform such person of the Secrecy Order and the penalties for 
improper disclosure.  If such part of the subject matter was or is 
disclosed to any person in a foreign  country or foreign national in the 
U.S., the principals must not inform such  person of the Secrecy Order, 
but instead must promptly furnish to the Commissioner  of Patents and 
Trademarks, Patent and Trademark Office, Attention: Licensing  and Review 
Washington, D.C. 20231 the following information to the extent not 
already furnished: date of disclosure; name and address of the disclosee; 
identification  of such subject matter; and any authorization by a U.S. 
government agency to  export such subject matter. If the subject matter is 
included in any foreign  patent application or patent, this should be 
identified. 

EXPIRATION 

        Under the provision of 35 U.S.C. 181, a Secrecy Order remains in 
effect  for a period of 1 year from its date of issuance. A Secrecy Order 
may be renewed  for additional periods of not more than 1 year upon notice 
by a government  agency that the national interest so requires. The 
applicant is notified of  any such renewal. 

        The expiration of or failure to renew a Secrecy Order does not 
lessen  in any way the responsibility of the principals for the security 
of the subject  matter if it is subject to the provisions of Executive 
Order 12356 or the Atomic  Energy Act of 1954, as amended, 42 U.S.C. 141 
et. seq. and 42 U.S.C. 2181 et.  seq. or other applicable law unless the 
principals have been expressly notified  that the subject patent 
application has been declassified by the proper authorities  and the 
security markings have been authorized to be canceled or removed. 

121   Handling of Applications and Other Papers Bearing Security Markings 

        Under Executive Order for National Security Information (Executive 
 Order 12356, 47 Federal Register, Number 66 page 14875 et seq., April 12, 
1982)  standards are prescribed for the marking, handling, and care of 
official information  which requires safeguarding in the interest of security. 

        Papers marked as prescribed in the Executive Order, and showing 
that  such marking is applied by, or at the direction of, a government 
agency, are  accepted in patent applications. All applications or papers 
in the Patent and  Trademark Office bearing words such as "Secret" or 
"Confidential" must be promptly  referred to Group 220 

for clarification or security treatment. Under no circum- 


stances can any such application, drawing, exhibit, or other paper be 
placed  in public records, such as the patented files, until all security 
markings  have been considered and declassified or otherwise explained. 

        Authorized security markings may be placed on the patent 
application  drawings when filed provided that such markings are outside 
the illustrations  and that they are removed when the material is 
declassified, 37 CFR 1.84(v). 

130   Examination of Secrecy Order Cases        [R-2] 


        All applications in which a Secrecy Order has been imposed are 
examined  in Group *>2200<.  If the Order is imposed subsequent to the 
docketing of an  application in another group, the application will be 
transferred to Group  *>2200<. 

        Secrecy Order cases are examined for patentability as in other 
cases,  but may not be passed to issue; nor will an interference be 
declared where  one or more of the conflicting cases is classified or 
under Secrecy Order.  See MPEP w 2309.06. When requested to do so, by 
examiners outside * Group *>2200<,  examiners in Group *>2200< will 
conduct the interference searches of those  interference files containing 
briefcards from classified or Secrecy Order cases. 
        In case of a final rejection, while such action must be properly 
responded  to, and an appeal, if filed, must be completed by the applicant 
to prevent  abandonment, such appeal will not be set for hearing by the 
Board of Patent  Appeals and Interference until the Secrecy Order is 
removed, unless specifically  ordered by the Commissioner. 

        When a Secrecy Order case is in condition for allowance, a notice 
of  allowability (Form D-10) is issued, thus closing the prosecution. Any 
amendments  received thereafter are not entered or responded to until such 
time as the  Secrecy Order is rescinded. At such time, amendments which 
are free from objection  will be entered; otherwise they are denied entry. 

        Due to the additional administrative burdens associated with 
handling  papers in Secrecy Order cases, the full statutory period for 
response will  ordinarily be set for all Office actions issued on such cases. 



        Sometimes applications bearing security markings but no Secrecy 
Order  come up for examination.  In this case, the examiner should require 
the applicant  to seek 

imposition of a Secrecy Order or authority to cancel the markings. This 
should  preferably be done with the first action and, in any event, prior 
to final  disposition of the application. 


140   Foreign Filing Licenses [R-2] 


35 U.S.C. 184.      Filing of application in foreign country 

Except when authorized by a license obtained from the Commissioner a 
person  shall not file or cause or authorize to be filed in any foreign 
country prior  to six months after filing in the United States an 
application for patent or  for the registration of a utility model, 
industrial design, or model in respect  of an invention made in this 
country.  A license shall not be granted with  respect to an invention 
subject to an order issued by the Commissioner pursuant  to section 181 of 
this title without the concurrence of the head of the **  departments and 
the chief officers of the agencies who caused the order to  be issued. 
The license may be granted retroactively where an application has  been 
filed abroad through error and without deceptive intent and the 
application  does not disclose an invention within the scope of section 
181 of this title. 
The term "application" when used in this chapter includes applications and 
 any modifications, amendments, or supplements thereto, or divisions 
thereof. 
The scope of a license shall permit subsequent modifications, amendments, 
and  supplements containing additional subject matter if the application 
upon which  the request for the license is based is not, or was not, 
required to be made  available for inspection under section 181 of this 
title and if such modifications,  amendments, and supplements do not 
change the general nature of the invention  in a manner which would 
require such application to be made available for inspection  under  such 
section 181. In any case in which a license is not, or was not,  required 
in order to file an application in any foreign country, such subsequent 
modifications, amendments, and supplements may be made, without a license, 
 to the application filed in the foreign country if the United States 
application  was not required to be made available for inspection under 
section 181 and  if such modifications, amendments, and supplements do 
not, or did not, change  the general nature of the invention in a manner 
which would require the United  States application to have been made 
available for inspection under such section  181. 

35 U.S.C. 185.      Patent barred for filing without license 

Notwithstanding any other provisions of law any person, and his 
successors,  assigns, or legal representatives, shall not receive a United 
States patent  for an invention if that person, or his successors, 
assigns, or legal representatives  shall, without procuring the license 
prescribed in section 184 of this title,  have made, or consented to or 
assisted another's making, application in a foreign  country for a patent 
or for the registration of a utility model, industrial  design, or model 
in respect of the invention. A United States patent issued  to such a 
person, his successors, assigns, or legal representatives shall be 
invalid, unless the failure to procure such license was through error and 
without  deceptive intent, and the patent does not disclose subject matter 
within the  scope of section 181 of this title. 

35 U.S.C. 186.      Penalty 

Whoever, during the period or periods of time an invention has been 
ordered  to be kept secret and the grant of a patent thereon withheld 
pursuant to section  181 of this title, shall, with knowledge of such 
order and without due authorization,  willfully publish or disclose or 
authorize or cause to be published or disclosed  the inven- 

tion, or material information with respect thereto, or whoever willfully, 
in  violation of the provisions of section 184 of this title, shall file 
or cause  or authorize to be filed in any foreign country an application 
for patent or  for the registration of a utility model, industrial design, 
or model in respect  of any invention made in the United States, shall, 
upon conviction, be fined  not more than $10,000 or imprisoned for not 
more than two years, or both. 
The amendments made to 35 U.S.C. 184, 185, and 186 by Public Law 100-418 
apply  to all United States patents granted before, on, or after August 
23, 1988,  to all applications for United States patents pending on or 
filed after August  23, 1988, and to all licenses under 35 U.S.C. 184 
granted before, on, or after  August 23, 1988. 

        More specifically, paragraphs (c) and (d) of section 9101 of 
Public  Law 100-418 read as follows: 

"Sec. 9101. INCREASED EFFECTIVENESS OF PATENT LAW 

***** 

(c)   REGULATIONS.-- The Commissioner of Patents and  Trademarks shall 
prescribe  such regulations as may be necessary to implement the 
amendments made by this  section. 

(d)   EFFECTIVE DATE.-- (1) Subject to paragraphs (2), (3), and (4) of 
this  subsection, the amendments made by this section shall apply to all 
United States  patents granted before, on, or after the date of enactment 
of this section,  to all applications for United States patents pending on 
or filed after such  date of enactment, and to all licenses under section 
184 granted before, on,  or after the date of enactment of this section. 

(2)   The amendments made by this section shall not affect any final 
decision  made by a court or the Patent and Trademark Office before the 
date of enactment  of this section with respect to a patent or application 
for patent, if no appeal  from such decision is pending and the time for 
filing an appeal has expired. 
(3)   No United States patent granted before the date of enactment of this 
 section shall abridge or affect the right of any person or his successors 
in  business who made, purchased, or used, prior to such date of 
enactment, anything  protected by the patent, to continue the use of, or 
sell to others to be used  or sold, the specific thing so made, purchased, 
or used, if the patent claims  were invalid or otherwise unenforceable on 
a ground obviated by this section  and the person made, purchased, or used 
the specific thing in reasonable reliance  on such invalidity or 
unenforceability. If a person reasonably relied on such  invalidity or 
unenforceability, the court before which such matter is in question  may 
provide for the continued manufacture, use, or sale of the thing made, 
purchased, or used as specified, or for the manufacture, use, or sale of 
which  substantial preparation was made before the date of enactment of 
this section,  and it may also provide for the continued practice of any 
process practiced,  or for the practice of which substantial preparation 
was made, prior to the  date of enactment of this section, to the extent 
and under such terms as the  court deems equitable for the protection of 
investments made or business commenced  before such date of enactment. 



(4)   The amendments made by this section shall not affect the right of 
any  party in any case pending in court on the date of enactment of this 
section  to have its rights or liabilities -- 

(A)         under any patent before the court, or 

(B)         under any patent granted after such date of enactment which is 
 related to the patent before the court by deriving priority right  under 
section  120 or 121 of title 35, United States Code, from a patent or an 
application  for patent common to both patents, determined on the basis of 
the substantive  law in effect before the date of enactment of this section." 

35 U.S.C. 187.          Nonapplicability to certain persons 

The prohibitions and penalties of this chapter shall not apply to any 
officer  or agent of the United States acting within the scope of his 
authority, nor  to any person acting upon his written instructions or 
permission. 
35 U.S.C. 188.          Rules and regulations, delegation of power 
The Atomic Energy Commission, the Secretary of a defense department, the 
chief  officer of any department or agency of the Government designated by 
the President  as a defense agency of the United States, and the Secretary 
of Commerce, may  separately issue rules and regulations to enable the 
respective department  or agency to carry out the provisions of this 
chapter, and may delegate any  power conferred by this chapter. 

37 CFR 5.11.    License for filing in a foreign country an application on 
an  invention made in the United States or for transmitting an 
international application. 
(a)   A license from the Commissioner of Patents and Trademarks under 35 
U.S.C.  184 is required before filing any application for patent including 
any modifications,  amendments, or supplements thereto or divisions 
thereof or for the registration  of a utility model, industrial design, or 
model, in a foreign patent office  or any foreign patent agency or any 
international agency other than the United  States Receiving Office, if 
the invention was made in the United States and: 
(1)   An application on the invention has been filed in the United States 
less  than six months prior to the date on which the application is to be 
filed,  or 

(2)   No application on the invention has been filed in the United States. 
(b)   The license from the Commissioner of Patents and Trademarks referred 
 to in paragraph (a) would also authorize the export of technical data 
abroad  for purposes related for purposes relating to the preparation, 
filing or possible  filing and prosecution of a foreign patent application 
without separately complying  with the regulations contained in 22 CFR 
Parts 121 - 130 (International Traffic  in Arms Regulations of the 
Department of State), 15 CFR Part 379 (Regulations  of the Office of 
Export Administration, International Trade Administration,  Department of 
Commerce) and 10 CFR Part 810 (Foreign Atomic Energy Programs  of the 
Department of Energy). 

(c)   Where technical data in the form of a patent application, or in any 
form,  is being exported for purposes related to the preparation, filing 
or possible  filing and prosecution of a foreign patent application, 
without the license  from the Commissioner of Patents and Trademarks 
referred to in paragraphs (a)  or (b) of this section, or on an invention 
not made in the United States, the  export regulations contained in 22 CFR 
Parts 121 through 130 (International  Traffic in Arms Regulations of the 
Department of State), 15 CFR Part 379 (Regulations  of the Office of 
Export Administration, International Trade Administration,  Department of 
Commerce) and 10 CFR Part 810 (Foreign Atomic Energy Programs  of the 
Department of Energy) must be complied with unless a license is not 
required because a United States application was on file at the time of 
the  export for at least six months without a secrecy order under w 5.2 
being placed  thereon. The term  exported means export as it is defined in 
22 CFR Parts 121  through 130, 15 CFR Part 379 and 10 CFR Part 810. 

(d)   If a secrecy order has been issued under w 5.2, an application 
cannot  be exported to, or filed in, a foreign country (including an 
international  agency in a foreign country), except in accordance with 
w 5.5. 

(e)   No license pursuant to paragraph (a) of this section is required: 
(1)   If the invention was not made in the United States, or 

(2)   If the corresponding United States application is not subject to a 
secrecy  order under w 5.2, and was filed at least six months prior to the 
date on which  the application is filed in a foreign country , or 

(3)   For subsequent modifications, amendments and supplements containing 
additional  subject matter to, or divisions of, a foreign patent 
application if: 
(i)   a license is not, or was not, required under paragraph (e)(2) of 
this  section for the foreign patent application; 

 (ii)     the corresponding United States application was not required to 
be  made available for inspection under 35 U.S. C. 181 and w 5.1; and 
(iii)     such modifications, amendments, and supplements do not, or did 
not,  change the general nature of the invention in a manner which would 
require  any corresponding United States application to be or have been 
available for  inspection under 35 U.S.C. 181 and w 5.1. 

(f)   A license pursuant to paragraph (a) of this section can be revoked 
at  any time upon written notification by the Patent and Trademark Office. 
An authorization  to file a foreign patent application resulting from the 
passage of six months  from the date of filing of a United States patent 
application may be revoked  by the imposition of a secrecy order. 

37 CFR 5.12.    Petition for license. 

(a)   Filing of an application for patent for inventions made in the 
United  States will be considered to include a petition for license under 
35 U.S.C.  184 for the subject matter of the application. The filing 
receipt will indicate  if a license is granted. If the initial automatic 
petition is not granted,  a subsequent petition may be filed under 
paragraph (b) of this section. 
(b)   Petitions for license should be presented in letter form and must 
include  the required fee (w 1.17(h)).  If expedited handling of the 
petition is also  sought, the petitioner's address, and full instructions 
for delivery of the  requested license when it is to be delivered to other 
than the petitioner. 
37 CFR 5.13.    Petition for license; no corresponding application. 
If no corresponding national or international application has been filed 
in  the United States, the petition for license under w 5.12(b) must be 
accompanied  by the required fee (w 1.17(h)), if expedited handling is 
sought of the petition,  and a legible copy of the material upon which 
license is desired.  This copy  will be retained as a measure of the 
license granted. For assistance in the  identification of the subject 
matter of each license so issued, it is suggested  that the petition be 
submitted in duplicate and provide a title and other description  of the 
material. The duplicate copy of the petition will be returned with the 
license or other action on the petition. 



37 CFR 5.14.    Petition for license; corresponding U.S. application. 
(a)   Where there is a corresponding United States application on file, a 
petition  for license under w 5.12(b) must include the required fee 
(w 1.17(h)), if expedited handling of the petition is also sought , and 
must  identify this application by serial number, filing date, inventor, 
and title,  and a copy of the material upon which the license is desired 
is not required. 
 The subject matter licensed will be measured by the disclosure of the 
United  States application. Where the title is not descriptive, and the 
subject matter  is clearly of no interest from a security standpoint, time 
may be saved by  a short statement in the petition as to the nature of the 
invention. 
(b)   Two or more United States applications should not be referred to in 
the  same petition for license unless they are to be combined in the 
foreign or  international application, in which event the petition should 
so state and  the identification of each United States application should 
be in separate  paragraphs. 

(c)   Where the application to be filed or exported abroad contains matter 
 not disclosed in the United States application or applications, including 
the  case where the combining of two or more United States applications 
introduces  subject matter not disclosed in any of them, a copy of the 
application as it  is to be filed in the foreign country or international 
application which is  to be transmitted to a foreign international or 
national agency for filing  in the Receiving Office, must be furnished 
with the petition. If, however,  all new matter in the foreign or 
international application to be filed is readily  identifiable, the new 
matter may be submitted in detail and the remainder by  reference to the 
pertinent United States application or applications. 
37 CFR 5.15.    Scope of license. 

(a)   Applications or other materials reviewed pursuant to w 5.12 through 
w  5.14, which were not required to be made available for inspection by 
defense  agencies under 35 U.S.C. 181 and w 5.1, will be eligible for a 
license of the  scope provided in this paragraph. This license permits 
subsequent modifications,  amendments, and supplements containing 
additional subject matter to, or divisions  of, a foreign patent 
application, if such changes to the application do not  alter the general 
nature of the invention in a manner which would require the  United States 
application to have been made available for inspection under  35 U.S.C. 
181 and w 5.1. This license also covers the inventions disclosed  in 
foreign applications which had been granted a license under this part 
prior  to April 4, 1984, and which were not subject to security inspection 
under 35  U.S.C. 181 and w 5.1. Grant of this license authorizes the 
export and filing  of an application in a foreign country or the 
transmitting of an international  application to any foreign patent agency 
or international patent agency when  the subject matter of the foreign or 
international application corresponds  to that of the domestic 
application.  This license includes authority: 
(1)   To export and file all duplicate and formal application papers in 
foreign  countries or with international agencies; 

(2)   To make amendments, modifications and supplements, including 
divisions,  changes or supporting matter consisting of the illustration, 
exemplification,  comparison, or explanation of subject matter disclosed 
in the application;  and 

(3)   To take any action in the prosecution of the foreign or 
international  application provided that the adding of subject matter or 
taking of any action  under paragraphs (a)(1) and (2) of this section 
which does not change the general  nature of the invention disclosed in 
the application in a manner which would  require such application to have 
been made available for inspection under 35  U.S.C. 181 and w 5.1 by 
including technical data pertaining to: 

(i)   Defense services or articles designated in the United States 
Munitions  List applicable at the time of foreign filing, the unlicensed 
exportation of  which is prohibited pursuant to the Arms Export Control 
Act, as amended, and  22 CFR Parts 121 through 130; or 

(ii)     Restricted Data, sensitive nuclear technology or technology 
useful  in the production or utilization of special nuclear material or 
atomic energy,  the dissemination of which is subject to restrictions of 
the Atomic Energy  Act of 1954, as amended, and the Nuclear 
Non-Proliferation Act of 1978, as  implemented by the regulations for 
Unclassified Activities in Foreign Atomic  Energy Programs, 10 CFR 810, in 
effect at the time of foreign filing. 
  (b)     Applications or other materials which were required to be made 
available  for inspection under 35 U.S.C. 181 and w 5.1 will be eligible 
for a license  of the scope provided in this paragraph. Grant of this 
license authorizes the  export and filing of an application in a foreign 
country or the transmitting  of an international application to any 
foreign patent agency or international  patent agency.  Further, this 
license includes authority to export and file  all duplicate and formal 
papers in foreign countries or with foreign and international  patent 
agencies and to make amendments, modifications, and supplements to,  file 
divisions of, and take any action in the prosecution of the foreign or 
international application, provided subject matter additional to that 
covered  by the license is not involved. 

(c)   A license granted under w 5.12(b) pursuant to w 5.13 or w 5.14 shall 
 have the scope indicated in paragraph (a) of this section, if it is so 
specified  in the license.  A petition, accompanied by the required fee (w 
1.17(h)), may  also be filed to change a license having the scope 
indicated in paragraph (b)  of this section to a license having the scope 
indicated in paragraph (a) of  this section.  No such petition will be 
granted if the copy of the material  filed pursuant to w 5.13 or any 
corresponding United States application was  required to be made available 
for inspection under 35 U.S.C. 181 and w 5.1. 
 The change in the scope of a license will be effective as of the date of 
the  grant of the petition. 

(d)   In those cases in which no license is required to file the foreign 
application  or transmit the international application, no license is 
required to file papers  in connection with the prosecution of the foreign 
or international application  not involving the disclosure of additional 
subject matter. 

(e)   Any paper filed abroad or transmitted to an international patent 
agency  following the filing of a foreign or international application 
which changes  the general nature of the subject matter disclosed at the 
time of filing in  a manner which would require such application to have 
been made available for  inspection under 35 U.S.C. 181 and w 5.1 or which 
involves the disclosure of  subject matter listed in paragraphs (a)(3)(i) 
or (ii) of this section must  be separately licensed in the same manner as 
a foreign or international application. 
 Further, if no license has been granted under w 5.12(a) on filing the 
corresponding  United States application, any paper filed abroad or with 
an international  patent agency which involves the disclosure of 
additional subject matter must  be licensed in the same manner as a 
foreign or international application. 
(f)   Licenses separately granted in connection with two or more United 
States  applications may be exercised by combining or dividing the 
disclosures, as  desired, provided: 

(1)   Subject matter which changes the general nature of the subject 
matter  disclosed at the time of filing or which involves subject matter 
listed in  paragraphs (a)(3)(i) or (ii) of this section is not introduced, 
and 
(2)   In the case where at least one of the licenses was obtained under w 
5.12(b),  additional subject matter is not introduced. 



(g)   A license does not apply to acts done before the license was 
granted.  See w 5.25 for petitions for retroactive licenses. 

 37 CFR 5.16.       Effect of secrecy order. 

Any license obtained under 35 U.S.C. 184 is ineffective if the subject 
matter  is under a secrecy order, and a secrecy order prohibits the 
exercise of or  any further action under the license unless separately 
specifically authorized  by a modification of the secrecy order in 
accordance with 
w 5.5. 

37 CFR 5.17.            Who may use license. 

Licenses may be used by anyone interested in the export, foreign filing, 
or  international transmittal for or on behalf of the inventor or the 
inventor  's assigns. 

 37 CFR 5.18.       Arms, ammunition, and implements of war. 

(a)   The exportation of technical data relating to arms, ammunition, and 
implements  of war generally is subject to the International Traffic in 
Arms Regulations  of the Department of State (22 CFR Parts 121 through 
128); the articles designated  as arms, ammunition, and implements of war 
are enumerated in the U.S. Munitions  List, 22 CFR 121.01. However, if a 
patent applicant complies with regulations  issued by the Commissioner of 
Patents and Trademarks under 35 U.S.C. 184, no  separate approval from the 
Department of State is required unless the applicant  seeks to export 
technical data exceeding that used to support a patent application  in a 
foreign country. This exemption from Department of State regulations is 
applicable regardless of whether a license from the Commissioner is 
required  by the provisions of ww 5.11 and 5.15 (22 CFR 125.04(b), 
125.20(b)). 
(b)   When a patent application containing subject matter on the Munitions 
 List (22 CFR 121.01) is subject to a secrecy order under w 5.2 and a 
petition  is made under w 5.5 for a modification of the secrecy order to 
permit filing  abroad, a separate request to the Department of State for 
authority to export  classified information is not required (22 CFR 
125.05(d)). 

37 CFR 5.19.            Export of technical data. 

        (a)   Under regulations (15 CFR 770.10(j)) established by the U.S. 
 Department of Commerce, Bureau of Export Administration, Office of Export 
Licensing,  a validated export license is not required in any case to file 
a patent application  or part thereof in a foreign country if the foreign 
filing is in accordance  with the regulations (37 CFR 5.11 through 5.33) 
of the Patent and Trademark  Office. 

        (b)   A validated export license is not required for data 
contained  in a patent application prepared wholly from foreign-origin 
technical data  where such application is being sent to the foreign 
inventor to be executed  and returned to the United States for subsequent 
filing in the U.S. Patent  and Trademark Office (15 CFR 379.3(c)). 

        (c)   Inquiries concerning the export control regulations for the 
foreign  filing of technical data other than patent applications should be 
made to the  Office of Export Administration, International Trade 
Administration, Department  of Commerce, Washington, D.C. 20230. 

        [45 FR 72654, Nov. 3, 1980; para. (a) revised, 58 FR 54504, Oct. 
22,  1993, effective Jan 3, 1994] 

37 CFR 5.20.            Export of technical data relating to sensitive 
nuclear  technology. 

(a)   Under regulations (10 CFR 810.7) established by the United States 
Department  of Energy, an application filed in accordance with the 
regulations (37 CFR  5.11 through 5.33) of the United States Patent and 
Trademark Office and eligible  for foreign filing under 35 U.S.C. 184, is 
considered to be information available  to the public in published form 


and a generally authorized activity for the purposes of the Department of 
Energy  regulations. 

(b)   Inquiries concerning the export of sensitive nuclear technology 
other  than related to the filing or prosecution of a foreign patent 
application should  be made to the Attention: Secretary, United States 
Department of Energy, Office  of International Security Affairs, 
Washington, D.C. 20858. 

37 CFR 5.25.            Petition for retroactive license 

(a)   A petition for a retroactive license under 35 U.S.C. 184 shall be 
presented  in accordance with w 5.13 or w 5.14(a), and shall include: 

(1)   A listing of each of the foreign countries in which the unlicensed 
patent  application material was filed. 

(2)   The dates on which the material was filed in each country, 

(3)   A verified statement (oath or declaration) containing: 

(i)   An averment that the subject matter in question was not under a 
secrecy  order at the time it was filed abroad, and that it is not 
currently under a  secrecy order, 

 (ii)     A showing that the license has been diligently sought after 
discovery  of the proscribed foreign filing, and 

(iii)     An explanation of why the material was filed abroad through 
error  and without deceptive intent without the required license under 
w 5.11 first having been obtained, and 

(4)   The required fee (w 1.17(h)). 

The above explanation must include a showing of facts rather than a mere 
allegation  of action through error and without deceptive intent.  The 
showing of facts  as to the nature of the error should include statements 
by those persons having  personal knowledge of the acts regarding filing 
in a foreign country and should  be accompanied by copies of any necessary 
supporting documents such as letters  of transmittal or instructions for 
filing. The acts which are alleged to constitute  error without deceptive 
intent should cover the period leading up to and including  each of the 
proscribed foreign filings. 

(b)   If a petition for a retroactive license is denied, a time period of 
not  less than thirty days shall be set, during which the petition may be 
renewed.  Failure to renew the petition within the set time period will 
result in a final  denial of the petition.  A final denial of a petition 
stands unless a petition  is filed under w 1.181 within two months of the 
date of the denial.  If the  petition for a retroactive license is denied 
with respect to the invention  of a pending application and no petition 
under w 1.181 has been filed, a final  rejection of the application under 
35 U.S.C. 185 will be made. 

(c)   The granting of a retroactive license does not excuse any violation 
of  the export regulations contained in 22 CFR Parts 121 through 130 
(International  Traffic in Arms Regulations of the Department of State), 
15 CFR Part 379 (Regulations  of Office of Export Administration, 
International Trade Administration, Department  of Commerce) and 10 CFR 
Part 810 (Foreign Atomic Energy Programs of the Department  of Energy) 
which may have occurred because of failure to obtain an appropriate 
license prior to export. 

GENERAL 

37 CFR 5.31.            Effect of modification, rescission or license. 
Any consent, rescission or license under the provisions of this part does 
not  lessen the responsibilities of the principals in respect to any 
Government  contract or the requirements of any other Government agency. 



37 CFR 5.32.            Papers in English language. 

All papers submitted in connection with petitions must be in the English 
language,  or be accompanied by an English translation and a translator's 
certificate  as to the true, faithful and exact character of the translation. 

37 CFR 5.33.            Correspondence. 

All correspondence in connection with this part, including petitions, 
should  be addressed to Commissioner of Patents and Trademarks (Attention 
Licensing  and Review), Washington, D.C. 20231. 

In the interests of national security, the United States government 
imposes  restrictions on the export of technical information. These 
restrictions are  administered by the Departments of Commerce, State, 
and/or Energy depending  on the subject matter involved. For the filing of 
patent applications in foreign  countries, the authority  for export 
control has been delegated to the Commissioner  of Patents and Trademarks. 

        There are two ways in which permission to file a patent 
application  abroad may be obtained: either a petition for a foreign 
filing license may  be granted (37 CFR 5.12) or an applicant may wait 6 
months after filing a patent  application in the PTO (35 U.S.C. 184) at 
which time a license on that subject  matter is no longer required as long 
as no Secrecy Order has been imposed (37  CFR 5.11(e)(2)). 

        There are several means by which a foreign filing license may be 
issued.  First, every U.S. origin application filed in the PTO is 
considered to include  an implicit petition for a foreign filing license. 
The grant of a license is  not immediate or even ensured. If the 
application is not marked by the security  screeners, the petition is 
granted. This is indicated to the applicant by the  presence on the filing 
receipt of the phrase "Foreign Filing License Granted"  and a date. The 
license becomes effective on the date shown. Further, grant  of this 
license is made of record in the application file by means of a similar 
notation on the file jacket of the application below the "Foreign/PCT 
Applications"  data. The scope of this license is quite broad as set forth 
in 37 CFR 5.15(a). 
        Explicit petitions for foreign filing licenses will also be 
accepted  in accordance with 37 CFR 5.12(b). Applicants may be interested 
in such petitions  in cases (1) in which the filing receipt license is not 
granted or (2) in which  the filing receipt has not yet been issued (37 
CFR 5.14(a) or (b)) or (3) in  which there is no corresponding U.S. 
application (37 CFR 5.13) or (4) in which  subject matter additional to 
that already licensed is sought to be licensed 
(37 CFR 5.14(c) and 5.15(e)) or (5) in which expedited handling is 
requested.  The scope of any license granted on these petitions is 
indicated on the license.  If applicants desire expedited processing (turn 
around time of 3 business days  or less starting with the date of receipt 
of the petition in Licensing and  Review) or, if the petition covers 
subject matter corresponding to a U.S. application  in which the filing 
receipt has not yet been issued, a fee is charged (See  37 CFR 1.17(h)). 
There is no fee for other petitions under 37 CFR 5.12(b). 
        Petitions under 37 CFR 5.14(a) or (b) as well as any license 
granted  on the petition are given paper numbers and endorsed on the file 
wrapper. Petitions  under 
37 CFR 5.14(c) are not ordinarily made of record in the file. 

        Applicants granted a license under 37 CFR 5.12(b) having the 
relatively  narrow scope indicated in 37 CFR 5.15(b) may petition under 37 
CFR 5.15(c)  to convert the license to the broad scope of 37 CFR 5.15(a). 
A fee is charged  for such a petition (see 37 CFR 1.17(h)). If the 
petition is granted, the change  in the scope of the license is effective 
as of that day. 

        Finally, a retroactive license may be sought if an unlicensed 
foreign  filing has occurred through error and without deceptive intent. 
However, the  requirements of 37 CFR 5.25 must be fulfilled in order for 
such a petition  to be granted. Note that licenses under 37 CFR 5.25 are 
only made retroactive  with respect to specific acts of foreign filing, 
and therefore the countries,  the actual dates of filing and the 
establishing of the nature of the error  must be provided for each act of 
proscribed foreign filing for which a retroactive  license is sought. 
Also, the required verified statement must be in oath or  declaration form. 

        Upon written notification from the Patent and Trademark Office, 
any  foreign filing license required by 
37 CFR 5.11(a) may be revoked. Ordinarily, revocation indicates that 
additional  review of the licensed subject matter revealed the need for 
referral of the  application to the appropriate defense agencies. 
Revocation of a filing receipt  license (37 CFR 5.12(a)) does not 
necessarily mean that a petition under 37  CFR 5.12(b) for a license of 
narrower scope will not be granted. The revocation  becomes effective on 
the date on which the notice 
is mailed. Foreign filings which occurred prior to 
revocation need not be abandoned or otherwise 




specially treated; however, additional filings without a license are not 
permitted  unless 6 months have elapsed from the filing of any 
corresponding U.S. application.  Papers and other documents needed in 
support of prosecution of foreign applications  may be sent abroad if they 
comply with any pertinent export regulations. Of  course, if and once a 
Secrecy Order is issued, the restrictions thereof must  immediately be 
observed. 

        Only the imposition of a Secrecy Order will cause revocation of 
the  authority which arises from 35 U.S.C. 184 to file a foreign patent 
application  6 months or later after the date of filing of a corresponding 
U.S. patent application. 
        The penalties for failing to obtain any necessary license to file 
a  patent application abroad are set forth in 35 U.S.C. 182, 35 U.S.C. 
185, and  35 U.S.C. 186 and include loss of patenting rights in addition 
to possible  fine or imprisonment. 


150   Statements to DOE and NASA 


37 CFR 1.14.    Patent applications preserved in secrecy 

***** 

(c)   Applications for patents which disclose or which appear to disclose, 
 or which purport to disclose, inventions or discoveries relating to 
atomic  energy are reported to the Department of Energy, which Department 
will be given  access to such applications, but such reporting does not 
constitute a determination  that the subject matter of each application so 
reported is in fact useful or  an invention or discovery or that such 
application in fact discloses subject  matter in categories specified by 
sections 151(c) and 151(d) of the Atomic  Energy Act of 1954, 68 Stat, 
919; 42 U.S.C. 2181(c) and (d). 

***** 

Title 42 United States Code, Section 2182 reads in part: 

No patent for any invention or discovery, useful in the production or 
utilization  of special nuclear material or atomic energy, shall be issued 
unless the applicant  files with the application, or within thirty days 
after request therefor by  the Commissioner of Patents (unless the 
Commission advises the Commissioner  of Patents that its rights have been 
determined and that accordingly no statement  is necessary) a statement 
under oath setting forth the full facts surrounding  the making or 
conception of the invention or discovery described in the application  and 
whether the invention or discovery was made or conceived in the course  of 
or under any contract, subcontract, or arrangement entered into with or 
for the benefit of the Commission, regardless of whether the contract, 
subcontract,  or arrangement involved the expenditure of funds by the 
Commission. The Commissioner  of Patents shall as soon as the application 
is otherwise in condition for allowance  forward copies of the application 
and the statement to the Commission. 
 Similarly, 42 U.S.C. 2457 provides in part: 

(c)   Patent application. No patent may be issued to any applicant other 
than  the Administrator for any invention which appears to the 
Commissioner of Patents  to have significant utility in the conduct of 
aeronautical and space activities  unless the applicant files with the 
Commissioner, with the application or within  thirty days after request 
therefor by the Commissioner, a written statement  executed under oath 
setting forth the full facts concerning the circumstances  under which 
such invention was made and stating the relationship (if any) of  such 
invention to the performance of any work under any contract of the 
Administra- 

tion. Copies of each statement and application to which it relates shall 
be  transmitted forthwith by the Commissioner to the Administrator. 

Property rights statements to DOE or NASA may be filed at any time but 
should  be updated if necessary to accurately reflect property rights at 
the time the  application is allowed. 

        Shortly after filing, an informal request for a property rights 
statement  will be mailed to those applicants whose applications have been 
marked by the  security screeners as being of interest to DOE or NASA. 
While no formal time  period is set, a response by applicants within 45 
days will expedite processing.  If the statement submitted during this 
period is defective, another letter  is sent from Licensing and Review 
detailing the deficiencies and giving applicant  another opportunity to 
respond during this period of informal correspondence. 
        If no response to the initial so called 45-Day Letter  is received 
 or if repeated efforts to correct a defective statement evidence an 
absence  of cooperation on the part of the applicant, a formal request for 
a statement  in accordance with the statutes will be made. A 30-day 
statutory period for  response is then set. There is no provision for an 
extension of this time period.  If no proper and timely statement is 
received, the application will be held  abandoned and the applicant so 
notified. Such 
applications may be revived under the provisions of 
35 U.S.C. 137, In re Rutan, 231 USPQ 864 (Comm'r. Pat. 1986). 

        Any papers pertaining to property rights under section 152 of the 
Atomic  Energy Act, 42 U.S.C. 2182, (DOE), or section 305(c) or the 
National Aeronautics  and Space Act, 42 U.S.C. 2457, (NASA), that have not 
been associated with the  application file, or have not been made of 
record in the file and processed  by the Licensing and Review section, 
must be sent to the Licensing and Review  section immediately. 




151   Content of the Statements 


        The law requires the statement to set forth "the full facts" 
surrounding  the conception and making of the invention. These facts 
should include those  which are unique to that invention. The use of form 
paragraphs or printed forms  which set forth only broad generalized 
statements of fact is not ordinarily  regarded as meeting the requirements 
of these statutes. 

        The word "applicant" in both of these statutes has been construed 
to  mean the inventor or joint inventors in person. Accordingly, in the 
ordinary  situation, the statements must be signed by the inventor or the 
joint inventors,  if available. This construction is consistent with the 
fact that no other person  could normally be more knowledgeable of the 
"full facts concerning the circumstances  under which such invention was 
made," (42 U.S.C. 2457) or, "full facts surrounding  the making or 
conception of the invention or discovery" (42 U.S.C. 2182). If  a petition 
under 37 CFR 1.48 for correction of inventorship is granted during 
pendency of an application in which a property rights statement has been 
filed,  a supplemental statement executed by any added inventor(s) is 
required and  should promptly be filed with the Licensing and Review 
section. 

        In instances where an applicant does not have firsthand knowledge 
whether  the invention involved work under any contract, subcontract, or 
arrangement  with or for the benefit of the Atomic Energy Commission, or 
had any relationship  to any work under any contract of the National 
Aeronautics and Space Administration,  and includes in his statement 
information of this nature derived from others,  his or her statement 
should identify the source of his or her information.  Alternatively, the 
statement by the applicant could be accompanied by a supplemental 
declaration or oath, as to the contractual matters, by the assignee or 
other  person; e.g., an employee thereof, who has the requisite knowledge. 
        When an applicant is deceased or incompetent, or where it is shown 
 to the satisfaction of this Office that he or she refuses to furnish a 
statement  or cannot be reached after diligent efforts, declarations or 
statements under  oath setting forth the information required by the 
statutes may be accepted  from an officer or employee of the assignee who 
has sufficient knowledge of  the facts. The offer of such substitute 
statements should be based on the actual  unavailability of or refusal by 
the applicant, rather than mere inconvenience.  Where it is shown that one 
of the joint inventors is deceased or unavailable,  a statement by all of 
the other inventor(s) may be accepted. 

        The following is an acceptable format for statements to DOE or 
NASA  assuming that no government funds or other considerations were 
involved in  the making or conception of the invention. It is important, 
however, that the  information provided in the statement be an accurate 
reflection of the fact  situation at the time the state- 

ment is made. While the sample below is in the form of a declaration, a 
sworn  oath is equally acceptable. 

        Note that the statement must be in the form of an oath or 
declaration.  Further note that the statement must be signed by all the 
inventors. See also  the notice published in 914 O.G. 1 for further 
information. 

I (We) ___________________ citizens of ____________ residing at 
_________________  declare: That I (we) made and conceived the invention 
described and claimed  in patent application Serial Number __________ 
filed in the United States of  America on _____________ titled _____________. 

(Check and complete either I. or II. below) 

        I. (for Inventors Employed by an Organization) 

        That I (we) made and conceived this invention while employed by 
____________________. 
        That the invention is related to the work I am (we are) employed 
to  perform and was made within the scope of my (our) employment duties; 
That the invention was made during working hours and with the use of 
facilities,  equipment, materials, funds, information and services 
of__________________________. 
        Other relevant facts are: ____________________. 

        That to the best of my (our) knowledge and belief based upon 
information  provided by _________________________________ of 
_______________________ : 
-OR- 

II. (For Self-Employed Inventors) 

That I (we) made and conceived this invention on my (our) own time using 
only  my (our) own facilities, equipment, materials, funds, information 
and services. 
Other relevant facts are _____________________________ 

That to the best of my (our) knowledge and belief: 

 (Check III. and/or IV. below as appropriate) 

III.    The invention or discovery was not made or conceived in the course 
 of, or in connection with, or under the terms of any contract, 
subcontract  or arrangement entered into with or for the benefit of the 
United States Atomic  Energy Commission or its successors Energy Research 
and Development Administration  or the Department of Energy. 



 -AND/OR- 

IV.   The invention was not made under nor is there any relationship of 
the  invention to the performance of any work under any contract of the 
National  Aeronautics and Space Administration. 

The undersigned inventor(s) declare(s) further that all statements made 
herein  of his or her (their) own knowledge are true and that all 
statements made on  information and belief are believed to be true and 
further that these statements  were made with the knowledge that willful 
false statements and the like so  made are punishable by fine or 
imprisonment, or both, under Section 1001 of  Title 18 of the United 
States Code and that such willful false statements may  jeopardize the 
validity of the application or any patent issuing thereon. 
Inventor's Signature _________________ 

Post Office Address___________________ 

Date _________________ 

Inventor's Signature_______________________ 

Post Office Address_______________________ 

Date _________________ 


D D D D D D D D D D D D D D D D D D D D D D D D D D D D D D D 


Contents 

201         Types of Applications 

201.01      Sole 

201.02      Joint 

201.03      Correction of Inventorship in an Application 

201.04      Parent Application 

201.04(a)   Original Application 

201.04(b)   Provisional Application 

201.05      Reissue Application 

201.06      Division Application 

201.06(a)   Division-Continuation Program 

201.06(b)   File Wrapper Continuing Procedure 

201.07      Continuation Application 

201.08      Continuation-in-Part Application 

201.09      Substitute Application 

201.10      Refile 

201.11      Continuity Between Applications: When Entitled to 
            Filing Date 

201.11(a)   Filing of Continuation or Continuation-in-Part 
            Application During Pendency of International 
            Application Designating the United States 

201.12      Assignment Carries Title 

201.13      Right of Priority of Foreign Application 

201.13(a)   Right of Priority Based Upon an Application 
            for an Inventor's Certificate 

201.13(b)   Right of Priority Based Upon an International 
            Application Filed Under the Patent Cooperation 
            Treaty 

201.14      Right of Priority, Formal Requirements 

201.14(a)   Right of Priority, Time for Filing Papers 

201.14(b)   Right of Priority, Papers Required 

201.14(c)   Right of Priority, Practice 

201.14(d)   Proper Identification of Priority Application 

201.15      Right of Priority, Overcoming a Reference 

201.16      Using Certificate of Correction to Perfect Claim for 
            Priority Under 35 U.S.C. 119 >a-d< 

202         Cross-Noting 

202.01      In Specification 

202.02      Notation on File Wrapper **>Regarding Prior 
            U.S. Applications, Including Provisional 
            Applications< 


202.03      Notation on File Wrapper When Priority Is 
            Claimed for Foreign Application 

202.04      In Oath or Declaration 

202.05      In Case of Reissues 

203         Status of Applications 

203.01      New 

203.02      Rejected 

203.03      Amended 

203.04      Allowed or in Issue 

203.05      Abandoned 

203.06      Incomplete 

203.07      Abandonment for Failure to Pay Issue Fee 

203.08      Status Inquiries 

203.08(a)   Congressional and Other Official Inquiries 


201   Types of Applications [R-2] 


35 U.S.C. 111       Application. 

        (a)   IN GENERAL.- 

        (1)   WRITTEN APPLICATION.-An application for patent shall be 
made,  or authorized to be made, by the inventor, except as otherwise 
provided in  this title, in writing to the Commissioner. 

        (2)   CONTENTS.-Such application shall include- 

        (A)   a specification as prescribed by section 112 of this title; 
        (B)   a drawing as prescribed by section 113 of this title; and 
        (C)   an oath by the applicant as prescribed by section 115 of 
this  title. 

        (3)   FEE AND OATH.-The application must be accompanied by the fee 
 required by law. The fee and oath may be submitted after the 
specification  and any required drawing are submitted, within such period 
and under such conditions,  including the payment of a surcharge, as may 
be prescribed by the Commissioner. 

        (4)   FAILURE TO SUBMIT.-Upon failure to submit the fee and oath 
within  such prescribed period, the application shall be regarded as 
abandoned, unless  it is shown to the satisfaction of the Commissioner 
that the delay in submitting  the fee and oath was unavoidable or 
unintentional.  The filing date of an application  shall be the date on 
which the specification and any required drawing are received  in the 
Patent and Trademark Office. 

        (b)   PROVISIONAL APPLICATION.- 

        (1)   AUTHORIZATION.-A provisional application for patent shall be 
 made or authorized to be made by the inventor, except as otherwise 
provided  in this title, in writing to the Commissioner. Such application 
shall include- 
        (A)   a specification as prescribed by the first paragraph of 
section  112 of this title; and 

        (B)   a drawing as prescribed by section 113 of this title. 
        (2)   CLAIM.-A claim, as required by the second through fifth 
paragraphs  of section 112, shall not be required in a provisional 
application. 
        (3)   FEE.-(A) The application must be accompanied by the fee 
required  by law. 

        (B)   The fee may be submitted after the specification and any 
required  drawing are submitted, within such period and under such 
conditions, including  the payment of a surcharge, as may be prescribed by 
the Commissioner. 
        (C)   Upon failure to submit the fee within such prescribed 
period,  the application shall be regarded as abandoned, unless it is 
shown to the satisfaction  of the Commissioner that the delay in 
submitting the fee was unavoidable or  unintentional. 

        (4)   FILING DATE.-The filing date of a provisional application 
shall  be the date on which the specification and any required drawing are 
received  in the Patent and Trademark Office. 

        (5)   ABANDONMENT.-The provisional application shall be regarded 
as  abandoned 12 months after the filing date of such application and 
shall not  be subject to revival thereafter. 

        (6)   OTHER BASIS FOR PROVISIONAL APPLICATION.-Subject to all the 
conditions  in this subsection and section 119(e) of this title, and as 
prescribed by the  Commissioner, an application for patent filed under 
subsection (a) may be treated  as a provisional application for patent. 

        (7)   NO RIGHT OF PRIORITY OR BENEFIT OF EARLIEST FILING DATE.-A 
provisional  application shall not be entitled to the right of priority of 
any other application  under section 119 or 365(a) of this title or to the 
benefit of an earlier filing  date in the United States under section 120, 
121, or 365(c) of this title. 


        (8)   *>APPLICABLE< PROVISIONS.-The provisions of this title 
relating  to applications for patent shall apply to provisional 
applications for patent,  except as otherwise provided, and except that 
provisional applications for  patent shall not be subject to sections 115, 
131, 135, and 157 of this title. 
37 CFR 1.9  Definitions. 

        (a)(1)      A national application as used in this chapter means a 
 U.S. application for patent which was either filed in the Office under 35 
U.S.C. 111, or which entered the national stage from an international 
application  after compliance with 35 U.S.C. 371. 

        (2)   A provisional application as used in this chapter means a 
U.S.  national application for patent filed in the Office under 35 U.S.C. 
111(b). 

        (3)   A nonprovisional application as used in this chapter means a 
 U.S. national application for patent which was either filed in the Office 
under  35 U.S.C. 111(a), or which entered the national stage from an 
international  application after compliance with 35 U.S.C. 371. 

        (b)   An international application as used in this chapter means 
an  international application for patent filed under the Patent 
Cooperation Treaty  prior to entering national processing at the 
Designated Office stage. 
***** 

National Applications (35 U.S.C. 111) vs. National Stage Applications (35 
U.S.C.  371) 

        Nonprovisional and provisional applications are national 
applications.  Treatment of national applications under 35 U.S.C. 111 and 
national stage applications  under 35 U.S.C. 371 are similar but not 
identical. Note the following examples: 
        (1)   Restriction practice under MPEP # 806+ is applied to 
national  applications under 35 U.S.C. 111(a) while unity of invention 
practice under  MPEP Chapter 1800 is applied to national stage 
applications under 
35 U.S.C. 371. 

        (2)   National applications filed under 35 U.S.C. 111(a) without 
an  executed oath or declaration or filing fee are governed by the 
notification  practice set forth in 37 CFR 1.53(d)(1) while national stage 
applications filed  under 35 U.S.C. 371 without an oath or declaration or 
national stage fee are  governed by the notification practice set forth in 
37 CFR 1.494 and 1.495. 
        National patent applications fall under three broad types: (1) 
applications  for patent under 35 U.S.C. 101 relating to a "new and useful 
process, machine,  manufacture, or composition of matter, etc."; (2) 
applications for plant patents  under 35 U.S.C. 161; and (3) applications 
for design patents under 35 U.S.C.  171. The first type of patents are 
sometimes referred to as "utility" patents  or "mechanical" patents when 
being contrasted with plant or design patents.  The specialized procedure 
which pertains to the examination of applications  for design and plant 
patents are treated in detail in Chapters 1500 and 1600,  respectively. 
National applications include original (nonprovisional), provisional, 
plant, design, reissue, divisional, and continuation applications (which 
may  be filed under 
37 CFR 1.53, 37 CFR 1.60, 37 CFR 1.62), and continuation-in-part 
applications 
(which may be filed under 37 CFR 1.53 or 37 CFR 1.62). 


201.01      Sole 


        An application wherein the invention is presented as that of a 
single  person is termed a sole application. 


201.02      Joint 


        A joint application is one in which the invention is presented as 
that  of two or more persons. See MPEP 
# 605.07. 


201.03      Correction of Inventorship in an 

                Application [R-2] 

        Correction of inventorship is permitted by amendment under 35 
U.S.C.  116. If at least one of the correct inventors has been named in an 
application  but it is discovered that correction of inventorship is 
necessary, applicants  are advised to consider abandoning the application 
and the filing of a continuing  application under 
37 CFR 1.53 with the correct inventive entity named. This will eliminate 
the  need for a petition for correction of inventorship under 37 CFR 1.48. 
See 35  U.S.C. 120 and 37 CFR 1.78 regarding claiming the benefit of the 
filing date  of a prior application.  The overlap of inventors required by 
35 U.S.C. 120  is present so long as it exists at anytime during 
copendency of the prior and  continuing applications. 

        As the statute, 35 U.S.C. 116, requires that a showing be made 
that  the inventorship error arose without any deceptive intention, the 
Office policy  as set forth in the notice, Patent and Trademark Office 
Implementation of 37 CFR 1.56, dated September 8, 1988, published in the 
Official Gazette on October 11, 1988 at 1095 O.G. 16, waiving inquiry in 
regard  to the practice of fraud on the Patent and Trademark Office or the 
attempt  thereof is not intended to waive inquiry as to any deceptive 
intention on the  part of the actual inventor(s) as set forth in 
37 CFR 1.48(a). 



37 CFR 1.48 Correction of inventorship 

        (a)   If the correct inventor or inventors are not named in a 
nonprovisional  application through error without any deceptive intention 
on the part of the  actual inventor or inventors, the application may be 
amended to name only the  actual inventor or inventors. Such amendment 
must be diligently made and must  be accompanied by: 

        (1)   a petition including a statement of facts verified by the 
original  named inventor or inventors establishing when the error without 
deceptive intention  was discovered and how it occurred; 

        (2)   an oath or declaration by each actual inventor or inventors 
as  required by # 1.63; 

        (3)   the fee set forth in # 1.17(h); and 

        (4)   the written consent of any assignee. When the application is 
 involved in an interference, the petition shall comply with the 
requirements  of this section and shall be accompanied by a motion under 
# 1.634. 

        (b)   If the correct inventors are named in the nonprovisional 
application  when filed and the prosecution of the application results in 
the amendment  or cancellation of claims so that less than all of the 
originally named inventors  are the actual inventors of the invention 
being claimed in the application,  an amendment shall be filed deleting 
the names of the person or persons who  are not inventors of the invention 
being claimed. The amendment must be diligently  made and shall be 
accompanied by: 

        (1)   A petition including a statement identifying each named 
inventor  who is being deleted and acknowledging that the inventor's 
invention is no  longer being claimed in the application; and 

        (2)   The fee set forth in # 1.17(h). 

        (c)   If a nonprovisional application discloses unclaimed subject 
matter  by an inventor or inventors not named in the application, the 
application may  be amended pursuant to paragraph (a) of this section to 
add claims to the subject  matter and name the correct inventors for the 
application. 

        (d)   If the name or names of an inventor or inventors were 
omitted  in a provisional application through error without any deceptive 
intention  on the part of the actual inventor or inventors, the 
provisional application  may be amended to add the name or names of the 
actual inventor or inventors.  Such amendment must be accompanied by: 

        (1)   a petition including a statement that the error occurred 
without  deceptive intention on the part of the actual inventor or 
inventors, which  statement must be a verified statement if made by a 
person not registered to  practice before the Patent and Trademark Office; 
and 

        (2)   the fee set forth in # 1.17(q). 

        (e)   If a person or persons were named as an inventor or 
inventors  in a provisional application through error without any 
deceptive intention,  an amendment may be filed in the provisional 
application deleting the name  or names of the person or persons who were 
erroneously named. Such amendment  must be accompanied by: 

        (1)   a petition including a statement of facts verified by the 
person  or persons whose name or names are being deleted establishing that 
the error  occurred without deceptive intention; 

        (2)   the fee set forth in # 1.17(q); and 

        (3)   the written consent of any assignee. 
37  CFR 1.48(a) 

        Under 37 CFR 1.48(a), if the correct inventor or inventors are not 
 named in a nonprovisional application for patent, the application can be 
amended  to name only the actual inventor or inventors so long as the 
error in the naming  of the inventor or inventors occurred without any 
deceptive intentions on the  part of the actual inventor or inventors. 37 
CFR 1.48(a) requires that the  amendment be diligently made and be 
accompanied by (1) a petition including  a statement of facts verified by 
the original named inventor or inventors establishing  when the error 
without deceptive intention was discovered and how it occurred; 
(2) an oath or declaration by each actual inventor or inventors as 
required  by 37 CFR 1.63; (3) the fee set forth in 37 CFR 1.17(h); and (4) 
the written  consent of any assignee. Correction will be permitted, if 
diligently requested,  in cases where the person originally named as 
inventor was in fact not the  inventor or the sole inventor of the subject 
matter being claimed. If such  error occurred without any deceptive 
intention on the part of the true inventor,  the Office has the authority 
to substitute the true inventive entity for the  erroneously named 
inventive entity. Instances where corrections can be made  include changes 
from: a mistaken sole inventor to a different but actual sole  inventor, a 
mistakenly identified sole inventor to different, but actual, joint 
inventors; a sole inventor to joint inventors to include the original sole 
 inventor, erroneously identified joint inventors to different but actual 
joint  inventors; erroneously identified joint inventors to a different, 
but actual,  sole inventor. In each instance, however, the Office must be 
assured of the  presence of innocent error, without deceptive intention on 
the part of the  true inventor or inventors, before permitting amendment. 

        The required "statement of the facts verified by all of the 
original  *>named inventor or inventors<" must include at the least, a 
recital of the  circumstances, including the relevant dates, of (1) the 
error in naming the  actual inventor or inventors and (2) the discovery of 
the error. For those  situations where the error in inventorship included 
the execution of an oath  or declaration under 37 CFR 1.63 naming an 
improper inventive entity the verified  statements by the original named 
inventors who had so executed the oath or  declaration must explain 
whether they had reviewed and understood the contents  of the 
specification including the claims as amended by any amendment 
specifically  referred to in the oath or declaration (as set forth in 37 
CFR 1.63) and whether they had reviewed the oath or declaration prior to 
its execution and if so  how the error had occurred in view of such 
reviews. Without such showing of  circumstances, no basis exists for a 
conclusion that the application had been  made in the names of the 
original sole or joint applicant(s) "through error  * without any 
deceptive intention," and no foundation is supplied for a ruling  that the 
amendment to remove the names of those not inventors or include those  to 
be added as inventors was "diligently made." 

        On the matter of diligence, attention is directed to the decision 
of  the CCPA in Van Otteren v. Hafner, 
757 O.G. 1026, 126 USPQ 151 (CCPA 1960). 

        Petitions under 37 CFR 1.48(a) are generally decided by the 
primary  examiner with the following exceptions: 

        -In national applications filed under 35 U.S.C. 111(a), 37 CFR 
1.53(d)(1)  wherein the petition has been filed prior to issuance of the 
filing receipt  in timely response to a Notice to File Missing Parts of 
Application from Application  Division (decided in the Office of Petitions). 

        -When the application is involved in an interference, MPEP # 2334 
(decided  by the Board of Patent Appeals and Interferences). 

        -In national stage applications filed under 35 U.S.C. 371 (decided 
 in the PCT Legal Office). 

        -When accompanied by a petition under 37 CFR 1.183 requesting 
waiver  of a requirement under 37 CFR 1.48(a), generally the verified 
statement of  facts by an original named inventor (decided in the Office 
of Petitions). 
        -Any attempt to effect a second conversion under 
37 CFR 1.48(a) (decided by the Group Director). 

        - All petitions under 37 CFR 1.48 where a question of deceptive 
intent  has been raised (e.g., submission of an executed declaration under 
37 CFR 1.63  where it is known at the time of its execution and/or 
submission that the inventive  entity set forth therein is improper 
(decided in the Office of Petitions). 
        The provisions of 37 CFR 1.312 apply to petitions for correction 
of  inventorship after allowance and before issue. Where the petition is 
dismissed  or is denied, the examiner must determine whether a rejection 
under 35 U.S.C. 102(f) or (g) is appropriate. If so, the application must 
be withdrawn  from issue and the rejection made. 

        When a typographical or transliteration error in the spelling of 
an  inventor's name is discovered, a petition under 37 CFR 1.48(a) is not 
required,  nor is a new oath or declaration under 37 CFR 1.63 needed. The 
Patent and Trademark  Office should simply be notified of the error and 
reference to the notification  paper will be made on the previously filed 
declaration by the Office. 
        When any correction or change is effected, the file should be sent 
 to the Application Division for revision of its records and the change 
should  be noted on the original oath or declaration by writing in red ink 
in the left  column "See Paper No. __ for inventorship changes.''  See 
MPEP # 605.04(g). 
        Where a person is substituted, added, or removed as an inventor 
during  the prosecution of an application before the Patent and Trademark 
Office, problems  may occur upon applicant claiming U.S. priority in a 
foreign filed case. Therefore,  examiners should acknowledge any addition 
or removal of inventors made in accordance  with the practice under 37 CFR 
1.48 and include Form Paragraph 2.14 in the  next communication to 
applicant or his attorney.  (Copy on page 200-*>8<) 
        The grant or denial of the petition may result in the loss of 
inventorship  overlap between a parent application and a continuing 
application and the consequent  inability to claim benefit in the 
continuing application of the parent application's  filing date under 35 
U.S.C. 120.  Intervening references must then be considered. 
        For correction of inventorship in a patent, see 37 CFR 1.324 and 
MPEP  # 1481.  A court order under 35 U.S.C. 256 for correction of the 
inventorship  of a patent should be submitted to the Certificate of 
Correction Branch along  with the Office's certificate of correction form. 
A new 37 CFR 1.63 declaration is not required. 

        In cases when an inventor's name has been changed after the 
application  has been filed, see MPEP 
# 605.04(c). 

        A petition under 37 CFR 1.48 will not be required where an 
application  is to issue with the correct inventorship based on the 
allowed claims even  though the application may have been filed with an 
incorrect inventorship based  on the claims as originally submitted. 

 Applications Filed Under 37 CFR 1.53(b)(1) 

        Applicants should note that it is Office practice to delay the 
issuance  of the filing receipt (which lists the 
inventive entity) in applications filed under 37 CFR 
1.53(b)(1) when a petition under 37 CFR 1.48(a) has been filed until 
decision  thereof. However, Certification Branch will provide a certified 
copy of the  application as filed with the original named inventive entity 
prior to the  issuance of a decision on the petition by the Office of 
Petitions, which copy  may be sufficient for many foreign filed 
applications claiming priority of  the U.S. application's filing date. 

        The original named inventors for applications filed under 37 CFR 
1.53(b)(1)  without an executed oath or declaration are those named when 
filing the application  such as in an accompanying transmittal letter or 
unexecuted oath or declaration.  The application as filed must be executed 
by the original named inventors submitting  a signed oath or declaration 
under 37 CFR 1.63 or if an error was made in the  original naming of the 
inventors, correction is required by way of petition  under 37 CFR 1.48(a) 
or (c). If correction is required, the petition must be  filed no later 
than the maximum period to respond to the "Notice to File Missing  Parts 
of Application, Filing Date Granted" (i.e., 2 months from the filing  date 
of the application or 1 month from the mail date of the Notice, both with 
an additional 4 months available under 
37 CFR 1.136(a) and possibly additional time under 
37 CFR 1.136(b)). Failure to timely execute the application as originally 
filed  or to timely file the petition will result in abandonment of the 
application.  The petition, although decided in the Office of Petitions, 
should be mailed  to the Special Handling Unit of Application Division to 
be matched up with  the application. 

Example 

        Application filed naming A+B under 37 CFR 1.53(b)(1) without an 
executed  declaration under 
37 CFR 1.63.  Claims 1 and 2 are present. B has contributed only to claim 
2. 

        B refuses to execute declaration under #1.63. 

        Cancellation of claim 2 by preliminary amendment, submission of an 
 executed declaration under 37 CFR 1.63 by A only and a petition under 37 
CFR  1.48(b) to delete B in response to the "Notice to File Missing Parts 
of Application"  will result in abandonment of the application. The 
application as filed must  be executed.  37 CFR 1.48(b) is only applicable 
when prosecution (on the merits)  results in canceled claims. 

        A petition under 37 CFR 1.47 on behalf of B or refiling of the 
application  with only claim 1 and naming only A are available remedies. 

Example 

        Application filed naming A as the sole inventor without an 
executed  declaration under 37 CFR 1.63. Claim 1 is presented. 

        A Notice to File Missing Parts is mailed. In response thereto, a 
Preliminary  Amendment, adding claim 2 and a Petition under 37 CFR 1.48(c) 
with a declaration  under 37 CFR 1.63 executed by A and B, requesting 
addition of B as a co-inventor  based on the Preliminary Amendment are 
submitted. 

        The 37 CFR 1.48(c) petition and declaration are an appropriate 
response  to the Notice to File Missing Parts of Application. 

        Declarations under 37 CFR 1.63 by the original named inventors 
should  not be executed or submitted merely to timely complete filing 
requirements  in response to a "Notice to File Missing Parts of 
Application" where an error  in inventorship has been discovered or signed 
by someone who cannot properly  make the averments therein. Additional 
time to respond to the Notice with an  appropriate petition under 37 CFR 
1.48(b) to correct inventorship is available  under 37 CFR 1.136(a) and 
possibly under 37 CFR 1.136(b). 

        Applications that are originally filed under 37 CFR 1.53(b)(1) 
with  "et al." as part of the inventive entity (e.g., Jones et al.) have 
not named  all the inventors as is required to obtain a filing date (37 
CFR 1.41(a)).  A petition under 37 CFR 1.48(a) to change inventorship 
(e.g., Jones + Smith)  is not appropriate. The application as originally 
filed was incomplete and  a notice to that effect will be sent by the 
Application Division. Applicants  may simply respond to that Notice by 
supplying each inventor's name to obtain  a filing date as of the date of 
receipt by the Patent and Trademark Office  of that response or may 
petition to the Office of Petitions. Where the application  as filed 
appears to set forth a complete inventive entity, however, a petition 
under 37 CFR 1.48(a) is required for correction of inventorship since a 
higher  level of scrutiny is appropriate. 

Verified Statement of Facts 

        37 CFR 1.48(a) requires a verified statement of facts from each 
original  named inventor. Verification must be accomplished by an oath 
(such as by a notary) or a declaration which refers  to and incorporates 
the language of either 37 CFR 1.68 or 28 U.S.C. 1746 (MPEP  # 602). 
Statements from others including a registered United  patent attorney  or 
agent need only be over the attorney's or agent's signature. Any statement 
 from a foreign attorney or agent not registered before the U.S. Patent 
and  Trademark Office must be verified. 

        Where a similar inventorship error has occurred in more than one 
application  for which correction is requested (e.g., parent and 
continuation thereof) wherein  petitioner seeks to rely on identical 
verified statements of facts and exhibits,  only one original set need be 
supplied if copies are submitted in all other  applications with a 
reference to the application containing the originals (original  oaths or 
declarations under 37 CFR 1.63 and written consent of assignees along 
with separate petition fees must be filed in each application). 

        On very infrequent occasions, the requirements of 
37 CFR 1.48(a) have been waived upon the filing of a petition and fee 
under  37 CFR 1.183 (along with the petition and fee under 37 CFR 1.48(a)) 
to permit  the filing of a verified statement of facts by less than all 
the original named  inventors. In re Cooper, 230 USPQ 638, 639 (Dep. 
Assist. Comm'r Pat. 1986).  However, such a waiver will not be considered 
unless the facts of record unequivocally  support the correction sought, 
In re 
Hardee, 223 USPQ 1122, 1123 (Comm'r Pat. 1984). As 37 CFR 1.48(a) is 
intended  as a simple procedural remedy and does not represent a 
substantive determination  as to inventorship, issues relating to the 
inventors' or alleged inventors'  actual contributions to conception and 
reduction to practice are not appropriate  for considerations in 
determining whether the record unequivocally supports  the correction sought. 

        Where the named inventors would have no knowledge of how the error 
 occurred and the nature of the error indicates what the correct inventive 
entity  should have been, such as a clerical error made in the patent 
attorney's or  agent's office in transcribing instructions from a client, 
waiver under 37  CFR 1.183 would be appropriate if accompanied by a 
verified statement by the  parties with firsthand knowledge of how the 
error occurred and any supporting  evidence. A statement from the original 
named inventors stating that they have  no knowledge of how the error 
occurred and that they agree with the requested  correction may also be 
required. 

        In those situations where an original named inventor refuses to 
submit  a statement supporting the addition or deletion of another 
inventor and that  original named inventor has assigned his or her entire 
right or interest to  an assignee who has given its consent to the 
requested correction, waiver would  be appropriate upon a showing of such 
refusal and assignment if the Patent  and Trademark Office has issued a 
filing receipt. Waiver would not be granted  if the application had not 
had a filing receipt issued because all the inventors  have not signed an 
oath or declaration. Where no assignment has been executed  by the 
inventors, or if deletion of the refusing inventor is requested waiver 
will >not< be granted absent unequivocal support for the correction 
sought. 
        Absent waiver where an original named inventor refuses to file a 
statement,  an available remedy is to refile the application naming the 
correct inventive  entity. A petition under 37 CFR 1.48(a) would not then 
be required in the newly  filed application as no correction would be 
needed. Benefit of the parent application's  filing date would be 
available under 35 U.S.C. 120 provided there is at least  one inventor 
overlap between the two applications. (Note: a sole-to-sole correction 
would not obtain benefit under 35 U.S.C. 120.) Where the desired 
correction  is deletion of an inventor the application may be refiled 
under the provisions  of 37 CFR 1.60 and 37 CFR 1.62 as an alternative to 
filing under 
37 CFR 1.53(b)(1) and 35 U.S.C. 111(a) where the parent application is a 
complete  application under 
37 CFR 1.51(a)(1) including the grant of any petition under 37 CFR 1.47 
(usually  not the case with initial filings under 37 CFR 1.53(b)(1)). For 
addition of  an inventor the application must be filed under 37 CFR 
1.53(b)(1) and 35 U.S.C. 111(a). 

Oath or Declaration 

        An oath or declaration under 37 CFR 1.63 by each actual inventor 
must  be presented. While each inventor need not execute the same oath or 
declaration,  each oath or declaration executed by an inventor must 
contain a complete listing  of all inventors so as to clearly indicate 
what each inventor believes to be  the appropriate inventive entity. 

        Where an application is filed with an executed 
37 CFR 1.63 declaration naming an inventive entity that is in conflict 
with  another paper filed in the application, such as the transmittal 
letter, the  executed declaration will govern. However, where an executed 
declaration has not been submitted with the application papers and the 
application papers are  in conflict as to the inventorship each party 
identified as an inventor on  filing will be considered to have been named 
as part of the inventive en-tity. 
        While 37 CFR 1.47 does not apply to the requirement for verified 
statements  from each originally named inventor, 37 CFR 1.47 is available 
to meet the requirement  for an oath or declaration under 37 CFR 1.63 as 
for example where A, B, and  C were originally named and 
D who refuses to cooperate is to be added. The verified statements need be 
 supplied only by A, B, and C. In those instances wherein petitions under 
37  CFR 1.48(a) and 
37 CFR 1.47 have been filed prior to issuance of the filing receipt, the 
Patent  and Trademark Office will first issue a decision on the petition 
under 37 CFR  1.48(a) so as to determine the appropriate oath or 
declaration under 37 CFR 1.63 required for the petition under 37 CFR 1.47. 

        The oath or declaration submitted subsequent to 
the filing date of an application filed under 37 CFR 1.53(b)(1) must 
clearly  identify the previously filed specification it is intended to 
execute, see  MPEP 
# 601.01>(a)<. Where a specification is attached to the oath or 
declaration  the oath or declaration must be accompanied by a statement 
that the attached  specification is a copy of the specification and any 
amendments thereto which  were filed in the Office in order to obtain a 
filing date for the application.  Such statement must be a verified 
statement if made by a person not registered  to practice before the 
Office. 

Fee 

        Where waiver under 37 CFR 1.183 is requested in relation to a 
requirement  under 37 CFR 1.48(a) petition fees under both 37 CFR 1.48(a) 
and 37 CFR 1.183  are required. 

        Where a similar error has occurred in more than one application a 
separate  petition fee must be submitted in each application in which 
correction is requested. 
        If the petition fee has not been submitted or authorized the 
petition  will be dismissed and a rejection under 35 U.S.C. 102(f) or (g) 
considered. 
Written Consent of Assignee 

        The written consent of every existing assignee must be submitted. 
37  CFR 1.48(a) does not limit assignees to those who are recorded in the 
Patent  and Trademark Office records. The Office employee deciding the 
petition should  check the file record for any indication of the existence 
of an assignee (e.g.,  a small entity statement from an assignee.) 

        Where no assignee exists petitioner should affirmatively state 
that  fact. If the file record including the petition is silent as to the 
existence  of an assignee it will be presumed that no assignee exists. 
Such presumption  should be set forth in the decision to alert petitioners 
to the requirement. 
        The title of the party signing on behalf of a corporate assignee 
and  the authority to do so should be set forth in the written consent. 
Consent  of a corporate assignee may be signed by an officer (e.g., 
president, vice  president, secretary, or treasurer) of the corporation or 
may include a statement  in oath or declaration form that the person 
signing the consent has authority  to do so. Further, the assignee must 
establish its ownership of the application  in accordance with 37 CFR 3.73. 

Continuing Applications 

        On filing a continuing application under 37 CFR 1.60 or 37 CFR 
1.62,  it should not be assumed that an error in inventorship made in a 
parent application  was in fact corrected therein in response to a 
petition under 37 CFR 1.48(a)  unless a decision from the Patent and 
Trademark Office to that effect was received  by petitioner. For example, 
a petition to add an inventor to a parent application  that was not acted 
on (e.g., filed after final rejection) or was denied will  cause the 
filing of a 37 CFR 1.60 or 37 CFR 1.62 application to be improper  if an 
additional inventor is named. A continuing application naming the 
additional  inventor can be filed under 37 CFR 1.53(b)(1) and 35 U.S.C. 
111(a) with a request  for priority under 
35 U.S.C. 120 without the need for a decision on the petition. 

        Should an error in inventorship in a parent application be 
discovered  when preparing to file a continuing application, the 
continuing application  may be filed with the correct inventive entity 
without the need for a petition  under 37 CFR 1.48(a) in the parent or 
continuing application provided the parent  application is to be abandoned 
on filing the continuing application. The continuing  application must be 
diligently filed either under 35 U.S.C. 111(a) or under  37 CFR 1.60 or 37 
CFR 1.62 where inventors are not to be added and where the parent 
application is a complete application under 37 CFR 1.51(a)(1) and any 
petition under 37 CFR 1.47 has been granted. The continuing application 
may  be filed under 37 CFR 1.60 and 37 CFR 1.62 where inventors are to be 
added  provided a petition under 37 CFR 1.48(a) is submitted in the 
continuing application  on the day the application is filed (later 
submission of the petition will  cause an improper filing) and when the 
parent application is a complete application  under 37 CFR 1.51(a)(1). 
However, since a new oath or declaration would be  required, it is 
preferred to file a newly executed continuing application under  37 CFR 
1.53(b)(1) with the correct inventors. In such a case, no petition under 
37 CFR 1.48 would be required in the continuing application. 

        An inventorship error discovered while prosecuting a continuing 
application  that occurred in both an abandoned parent application and the 
continuing application  can be corrected in both applications by filing a 
single petition in the continuing  application (e.g., A + B named in 
parent, B + C named in continuing application,  actual inventorship is C 
+D thereby eliminating inventorship overlap and resulting  loss of 
priority claim under 35 U.S.C. 120 if error is not corrected in abandoned 
parent application as well as in continuation application). 

W 2.13      Correction of Inventorship Under 37 CFR 1.48(a), Insufficient 
        The petition to correct the inventorship of this nonprovisional 
application  under 37 CFR 1.48(a) is deficient because [1]. 

Examiner Note: 

        1.  This paragraph should only be used in response to requests to 
correct  an error in the naming of the proper inventors in nonprovisional 
applications. 
 If the request is merely to delete an inventor because claims were 
canceled  or amended such that the deleted inventor is no longer an actual 
inventor of  any claim in the application, use paragraph 2.13.01 instead 
of this paragraph. 

        2.  A primary examiner may not decide the petition if: 

        (a)   the petition is also accompanied by a petition under 37 CFR 
1.183  requesting waiver of one of the requirements explicitly set forth 
in 37 CFR  1.48(a) (typically a refusal of one of the original named 
inventors to execute  the required statement of facts) - the petition for 
correction of inventorship  and request for waiver of the rules should be 
forwarded to the Office of Petitions;  or 

        (b)   it represents an attempt to effect a second conversion under 
37 CFR 1.48(a) - the second attempt must be returned to the Group Director 
        3.  Insert one or more of the following reasons in the bracket: 
        "the statement of facts by the originally named inventor or 
inventors  is insufficient." (explanation required, e.g., the statement of 
facts fails  to explain how the inventorship error occurred in view of the 
review of the  specification including the claims and understanding 
thereof by the original  named inventors when executing the oath or 
declaration under  37 CFR 1.63,  which is set forth therein); 

        "an oath or declaration by each actual inventor or inventors has 
not  been submitted"; 

  "it lacks the required fee under 37 CFR 1.17(h)"; 

        "it lacks the written consent of any assignee"; 

        "the amendment has not been diligently filed" (explanation 
required). 
W 2.13.01 Correction of Inventorship Under 37 CFR 1.48(b), Insufficient 
        The petition requesting the deletion of an inventor in this 
nonprovisional  application under 37 CFR 1.48(b) is deficient because [1]. 

Examiner Note: 

        1.  This paragraph should only be used when the inventorship was 
previously  correct but an inventor  is being deleted because claims have 
been amended  or canceled such that he or she is no longer an inventor of 
any remaining claim  in the nonprovisional application. If the 
inventorship is being corrected because  of an error in naming the correct 
inventors, use paragraph 2.13 instead of  this paragraph. 

Potential rejections 

        - A rejection under 35 U.S.C. 102(f) or (g) must be considered if 
the  petition is denied. 

        - The grant or denial of the petition may result in the loss of 
inventorship  overlap between a parent application and a continuing 
application and an inability  to claim benefit in the continuing 
application of the parent applications filing  date under 35 U.S.C. 120. 
Intervening references must then be considered. 
        2. Insert one or more of the following reasons in the bracket: 
                "the petition has not been diligently filed" (explanation 
required); 

                "the petition lacks the statement required under 37 CFR 
1.48(b)(l)"; 

                "it lacks the required fee under 37 CFR 1.17(h)". 
W 2.13.02 Correction of Inventorship Under 37 CFR 1.48(c), Insufficient 
        The petition to correct the inventorship in this nonprovisional 
application  under 37 CFR 1.48(c) requesting addition of an inventor(s) is 
deficient because  [1]. 

Examiner Note: 

        See paragraph 2.13. 

W  2.14       Correction of Inventorship Sufficient 

        In view of the papers filed [1], it has been found that this 
>nonprovisional<  application, as filed, through error and without any 
deceptive intent, improperly  set forth the inventorship, and accordingly, 
this application has been corrected  in compliance with 37 CFR 1.48*>[2]<. 
 The inventorship of this application  has been changed by *>[3]<. 

Examiner Note: 

        >1. This form paragraph is to be used only for 37 CFR 1.48(a) or 
(c)  conversions. 

        2.  In bracket 2, insert "(a)" or "(c)", as appropriate. 

        3.<   In bracket *>3< insert explanation of correction made, 
including  addition or deletion of appropriate names. 



>#    10.10   Petition Under 37 CFR 1.48, Granted 

        In re Application of [1] 

        Appl. No.: [2]      :     DECISION ON PETITION 

        Filed: [3]  :     UNDER 37 CFR 1.48 

        For: [4]        : 

        This is a decision on the petition filed [5] to correct 
inventorship  under 37 CFR 1.48 

        The petition is granted. 

        The inventorship in this application has been corrected to [6]. 


[7] 

Primary Examiner, 

Art Unit [8], 

Patent Examining Group [9] 

[10] 

Examiner Note: 

        1.  Petitions to correct inventorship of a pending application 
under  37 CFR 1.48 are decided by the primary examiner with the exception 
of those  situations set forth in MPEP 201.03. 

        2.  Do not use this paragraph for correction of inventorship in an 
 issued patent. See paragraphs 10.13 to 10.16. 

        3.  If the petition was filed after the payment of the issue fee, 
it  must be accompanied by a petition under 37 CFR 1.312(b) and the 
requisite fee  set forth in 37 CFR 1.17(i). If not, it should be dismissed 
using paragraph  7.99. 

        4.  In bracket 6, insert -add- or -delete- and the name(s) of the 
added  or deleted inventor(s). 

        5.  Print this form paragraph on PTO letterhead. 

        6.  In bracket 10, insert correspondence address of record. 
# 10.11       Petition Under 37 CFR 1.48 Dismissed 

        In re Application of [1 ] 

        Appl. No.: [2]      :     DECISION ON PETITION 

        Filed: [3]  :     UNDER 37 CFR 1.48 

        For: [4] 

        This is a decision on the petition filed [5] to correct 
inventorship  under 37 CFR 1 .48. 

        The petition is dismissed. 

        A petition to correct inventorship as provided by 37 CFR 1.48 
requires 
(1) a petition including a statement of facts verified by the original 
named  inventor or inventors establishing when the error without deceptive 
intention  was discovered and how it occurred, (2) an oath of declaration 
by each actual  inventor or inventors as required by 37 CFR 1.63, (3) the 
fee set forth in  37 CFR 1.17(h), and (4) the written consent of any 
assignee in compliance with  37 CFR 3.73. This petition lacks item(s) [6]. 



[7] 

Primary Examiner, 

Art Unit [8], 

Patent Examining Group [9] 

[10] 

Examiner Note: 

        1.  If each of the four specified items has been submitted but one 
 or more is insufficient, the petition should be denied. See paragraph 
10.12.  However, if the above noted deficiency can be cured by the 
submission of a  renewed petition, a dismissal would be appropriate. 

        2.  Print this form paragraph on PTO letterhead. 

        3.  In bracket 10, insert correspondence address of record. 
# 10.12       Petition Under 37 CFR 1.48, Denied 

In re Application of [1 ] 

Appl. No.: [2]      :     DECISION ON PETITION 

Filed: [3]  :     UNDER 37 CFR 1.48 

For: [4]        : 

        This is a decision on the petition filed [5] to correct 
inventorship  under 37 CFR 1.48. 

        The petition is denied. 

[6] 



[7] 

Primary Examiner, 

Art Unit [8], 

Patent Examining Group [9] 

[10] 

Examiner Note: 

        1.  In bracket 6 a full explanation of the deficiency must be 
provided;  see MPEP 201.03. 

        2.  If the petition lacks one or more of the required parts set 
forth  in 37 CFR 1.48, it should be dismissed using paragraph 10.11 or 
7.99, rather  than be denied. 

        3.  In bracket 10, insert the correspondence address of record. 
        4.  Print this form paragraph on PTO letterhead.< 

        For correction of inventorship in a patent, see 
37 CFR 1.324, MPEP # 1481. 

37 CFR 1.48(b) 

        37 CFR 1.48(b) provides for deleting the names of persons 
originally  properly included as inventors, but whose invention is no 
longer being claimed  in a nonprovisional application. Such a situation 
would arise where claims  have been amended or deleted because they are 
unpatentable or as a result of  a requirement for restriction of the 
application to one invention, or for other  reasons.  A petition under 37 
CFR 1.48(b) to delete an inventor would be appropriate  prior to an action 
by the examining group where it is decided not to pursue  particular 
aspects of an invention attributable to some of the original named 
inventors. However, a petition under 37 CFR 1.48(b) is not an available 
means  to avoid execution of the application as originally filed under 37 
CFR 1.53(b)(1)  situations. Public Law 98-622 and 37 CFR 1.48(b) change 
the result reached  in Ex parte Lyon, 146 USPQ 222, 1965 C. D. 362 (Bd. 
App. 1964). 37 CFR 1.48(b)  requires only a petition and fee with the 
petition including a statement identifying  each named inventor who is 
being deleted and acknowledging that the inventor's  invention is no 
longer being claimed in the application. The amendment would  have to be 
diligently made under 37 CFR 1.48(b). The statement may be signed  by 
applicant's registered attorney or agent who then 
takes full responsibility for ensuring that the inventor is not being 
improperly  deleted from the application. Written consent of any assignee 
is not required  for petitions filed under 37 CFR 1.48(b). 

        When any correction or change is effected, the file should be sent 
 to the Application Division for revision of its records and the change 
should  be noted on the original oath or declaration by writing in red ink 
in the left  column "See Paper No. __ for inventorship changes".  See MPEP 
w 605.04(g). 
37 CFR 1.48(c) 

        37 CFR 1.48(c) provides for the situation where a nonprovisional 
application  discloses unclaimed subject matter by an inventor or 
inventors not named in  the application as filed. In such a situation, the 
nonprovisional application  may be amended pursuant to 37 CFR 1.48(a) to 
add claims to the subject matter  and also to name the correct inventors 
for the application. The claims would  be added by an amendment and, in 
addition, an amendment pursuant to 37 CFR  1.48(a) would be required to 
correct the inventors named in the application.  Any claims added to the 
application must be supported by the disclosure as  filed and cannot add 
new matter. 

37 CFR 1.48(d) 

        37 CFR 1.48(d) provides a procedure for adding the name of an 
inventor  in a provisional application, where the name was originally 
omitted without  deceptive intent.  37 CFR 1.48(d) does not require the 
verified statement of  facts by the original inventor or inventors, the 
oath or declaration by each  actual inventor in compliance with 37 CFR 
1.63, or the consent of any assignee  as required in 37 CFR 1.48(a). 
Instead, the procedure requires the filing of  a petition identifying the 
name or names of the inventors to be added and including  a statement that 
the name or names of the inventors were omitted through error  without 
deceptive intention on the part of the actual inventor(s). The statement 
would be required to be verified if made by a person not registered to 
practice  before the PTO. The statement could be signed by a registered 
practitioner  of record in the application or acting in a representative 
capacity under 37 CFR 1.34(a). The petition fee set forth in 37 CFR 
1.17(q) would also be  required. 

37 CFR 1.48(e) 

        37 CFR 1.48(e) provides a procedure for deleting the name of a 
person  who was erroneously named as an inventor in a provisional 
application. Under  35 U.S.C. 119(e), as contained in Public Law 103-465, 
a later filed application  under 35 U.S.C. 111(a) may claim priority 
benefits based on a copending provisional  application so long as the 
applications have at least one inventor in common.  An error in naming a 
person as an inventor in a provisional application would  not require 
correction by deleting the erroneously named inventor from the 
provisional application since this would have no effect upon the ability 
of  the provisional application to serve as a basis for a priority claim 
under  35 U.S.C. 119(e). However, 37 CFR 1.48(e) sets forth the 
requirements for deleting  the name of a person erroneously named as an 
inventor in a provisional application.  The procedure requires an 
amendment deleting the name of the person who was  erroneously named 
accompanied by: a petition including a statement of facts  verified by the 
person whose name is being deleted establishing that the error  occurred 
without deceptive intention; the fee set forth in 37 CFR 1.17(q);  and the 
written consent of any assignee. 


201.04      Parent Application [R-1] 


        The term "parent" is applied to an earlier application of an 
inventor  disclosing a given invention. Such invention may or may not be 
claimed in the  first application.  Benefit of the filing date of 
copending parent application  may be claimed under 35 U.S.C. 120. >The 
term parent will not be used to describe  a provisional application.< 


201.04(a) Original Application [R-2] 


        "Original" is used in the patent statute and rules to refer to an 
application  which is not a reissue application.  An original application 
may be a *>first<  filing or a continuing application. 


201.04(b) Provisional Application [R-2] 


35 U.S.C. 111       Application. 

*** 

        (b)   PROVISIONAL APPLICATION.- 

        (1)   AUTHORIZATION.-A provisional application for patent shall be 
 made or authorized to be made by the inventor, except as otherwise 
provided  in this title, in writing to the Commissioner. Such application 
shall include- 


        (A)   a specification as prescribed by the first paragraph of 
section  112 of this title; and 

        (B)   a drawing as prescribed by section 113 of this title. 
        (2)   CLAIM.-A claim, as required by the second through fifth 
paragraphs  of section 112, shall not be required in a provisional 
application. 
        (3)   FEE.-(A) The application must be accompanied by the fee 
required  by law. 

        (B)   The fee may be submitted after the specification and any 
required  drawing are submitted, within such period and under such 
conditions, including  the payment of a surcharge, as may be prescribed by 
the Commissioner. 
        (C)   Upon failure to submit the fee within such prescribed 
period,  the application shall be regarded as abandoned, unless it is 
shown to the satisfaction  of the Commissioner that the delay in 
submitting the fee was unavoidable or  unintentional. 

        (4)   FILING DATE.-The filing date of a provisional application 
shall  be the date on which the specification and any required drawing are 
received  in the Patent and Trademark Office. 

        (5)   ABANDONMENT.-The provisional application shall be regarded 
as  abandoned 12 months after the filing date of such application and 
shall not  be subject to revival thereafter. 

        (6)   OTHER BASIS FOR PROVISIONAL APPLICATION.-Subject to all the 
conditions  in this subsection and section 119(e) of this title, and as 
prescribed by the  Commissioner, an application for patent filed under 
subsection (a) may be treated  as a provisional application for patent. 

        (7)   NO RIGHT OF PRIORITY OR BENEFIT OF EARLIEST FILING DATE.-A 
provisional  application shall not be entitled to the right of priority of 
any other application  under section 119 or 365(a) of this title or to the 
benefit of an earlier filing  date in the United States under section 120, 
121, or 365(c) of this title. 
        (8)   *>APPLICABLE< PROVISIONS.-The provisions of this title 
relating  to applications for patent shall apply to provisional 
applications for patent,  except as otherwise provided, and except that 
provisional applications for  patent shall not be subject to sections 115, 
131, 135, and 157 of this title. 
*** 

37 CFR 1.9  Definitions. 

        (a)(1)      A national application as used in this chapter means a 
 U.S. application for patent which was either filed in the Office under 35 
U.S.C.  111, or which entered the national stage from an international 
application  after compliance with 35 U.S.C. 371. 

        (2)   A provisional application as used in this chapter means a 
U.S.  national application for patent filed in the Office under 35 U.S.C. 
111(b). 
  (3)     A nonprovisional application as used in this chapter means a 
U.S.  national application for patent which was either filed in the Office 
under  35 U.S.C. 111(a), or which entered the national stage from 
an international application after compliance with 35 U.S.C. 371. 
***** 

37 CFR 1.53   Serial number, filing date, and completion of 
application. 

***** 

        (b)(2)      The filing date of a provisional application is the 
date  on which: a specification as prescribed by 35 U.S.C. 112, first 
paragraph;  and any drawing required by # 1.81(a), are filed in the Patent 
and Trademark  Office in the name of the actual inventor or inventors as 
required by # 1.41. No amendment, other than to make the provisional 
application comply  with all applicable regulations, may be made to the 
provisional application  after the filing date of the provisional 
application. If all the names of the  actual inventor or inventors are not 
supplied when the specification and any  required drawing are filed, the 
provisional application will not be given a  filing date earlier than the 
date upon which the names are supplied unless  a petition with the fee set 
forth in 
# 1.17(q) is filed which sets forth the reasons the delay in supplying the 
 names should be excused. 

***** 

        One of the provisions of the Uruguay Round Agreements Act which is 
 effective as of June 8, 1995, is the establishment of a domestic priority 
system.  The Act provides a mechanism to enable domestic applicants to 
quickly and inexpensively  file provisional applications.  Under the 
provisions of 35 U.S.C. 119(e), applicants  are entitled to claim the 
benefit of priority in a given application in the  United States. The 
domestic priority period will not count in the measurement  of the 20-year 
patent term.  See 35 U.S.C. 154(a)(3). Thus, domestic applicants  are 
placed on equal footing with foreign applicants with respect to the patent 
 term. 

        The parts of a provisional application that are required are set 
forth  in 37 CFR 1.51(a)(2) and MPEP 
# 601.01 >and # 601.01(b)<. The filing date of a provisional application 
is  the date on which (1) a specification which complies with 35 U.S.C. 
112, first  paragraph, and (2) any drawing required by 37 CFR 1.81(a) are 
filed in the  name of the actual inventor or inventors as required by 37 
CFR 1.41. A provisional  application must also include a cover sheet 
identifying the application as  a provisional application. Otherwise, the 
application will be treated as an  application filed under 37 CFR 
1.53(b)(1). The filing fee is set forth in 37  CFR 1.16(k). 

Note: 

(1)   No claim is required in a provisional application. 

(2)   No oath or declaration is required in a provisional application. 
(3)   Provisional applications will not be examined for patentability, 
placed  in an interference, or made the subject of a statutory invention 
registration. 
        A provisional application will automatically be abandoned 12 
months  after its filing date and will not be subject to revival to 
restore it to pending  status thereafter.  Since a provisional application 
can be pending for no more  than 12 months, if the last day of pendency is 
on a Saturday, Sunday, or Federal  holiday, copendency would require that 
the later filed nonprovisional application be filed prior  to the 
Saturday, Sunday, or Federal holiday. See 37 CFR 1.78(a)(3).  A 
provisional  application is not entitled to claim priority benefits based 
on any other application  under 35 U.S.C. 119, 120, 121, or 365. 

        An application filed under 37 CFR 1.53(b)(1) may be converted to a 
 provisional application provided a petition requesting the conversion is 
submitted  along with the fee as set forth in 37 CFR 1.17(q). The petition 
and fee must  be submitted prior to the earlier of the 


abandonment of the nonprovisional application, the payment of the issue 
fee,  the expiration of 12 months after the filing date of the 
nonprovisional application,  or the filing of a request for statutory 
invention registration. The grant  of any such petition will not entitle 
applicant to a refund of the fees which  were properly paid in the 
application filed under 37 CFR 1.53(b)(1). 
        Design applications may not make a claim for priority of a 
provisional  application under 37 CFR 1.78(a)(3). 



A20104b01.bmp 



A20104b01.end 




201.05      Reissue Application 


        A reissue application is an application for a patent to take the 
place  of an unexpired patent that is defective in some one or more 
particulars. A  detailed treatment of reissues will be found in chapter 1400. 


201.06      Division Application [R-1] 


        A later application for a distinct or independent invention, 
carved  out of a pending application and disclosing and claiming only 
subject matter  disclosed in the earlier or parent application, is known 
as a divisional application  or "division." It may be filed pursuant to 
37 CFR 1.53>(b)(1)<, 37 CFR 1.60 or 37 CFR 1.62. Both must have at least 
one  common applicant. The divisional application should set forth only 
that portion  of the earlier disclosure which is germane to the invention 
as claimed in the  divisional application. >An application claiming the 
benefits of a provisional  application under 35 U.S.C. 119(e) should not 
be called a "division" of the  provisional application since the 
application will have its patent term calculated  from its filing date, 
whereas an application filed under 35 U.S.C. 120, 121,  or 365(c) will 
have its patent term calculated from the date on which the earliest 
application was filed, provided a specific reference is made to the 
earlier  filed application(s). 
35 U.S.C. 154(a)(2) and (a)(3).< 

        In the interest of expediting the processing of newly filed 
divisional  applications, filed as a result of a restriction requirement, 
applicants are  requested to include the appropriate Patent and Trademark 
Office classification  of the divisional application and the status and 
location of the parent application,  on the papers submitted.  The 
appropriate classification for the divisional  application may be found in 
the Office communication of the parent case wherein  the requirement was 
made. It is suggested that this classification designation  be placed in 
the upper right hand corner of the letter of transmittal accompanying 
these divisional applications. 

        Use Form Paragraph 2.01 to remind applicant of possible division 
status. 

W 2.01      Definition of Division 

        This application appears to be a division of ** >Application< No. 
[1]  filed [2]. A later application for a distinct or independent 
invention, carved  out of a pending application and disclosing and 
claiming only subject matter  disclosed in the earlier or parent 
application, is known as a divisional application  or "division". The 
divisional application should set forth only that portion  of the earlier 
disclosure which is germane to the invention as claimed in the  divisional 
application. 

Examiner Note: 

        1.  In bracket 1, insert the ** >application no. (series code and 
serial  number)< of >the< parent application. 

        2.  In bracket 2, insert the filing date of parent application. 
        >3.   An application claiming the benefits of a provisional 
application  under 35 U.S.C. 119(e) should not be called a "division'' of 
the provisional  application since the application will have its patent 
term calculated from  its filing date, whereas an application filed under 
35 U.S.C. 120, 121, or  365(c) will have its term calculated from the date 
on which the earliest application  was filed, provided a specific 
reference is made to the earlier filed application(s),  35 U.S.C. 
154(a)(2) and (a)(3).< 

        A design application may be considered to be a division of a 
utility  application >(but not of a provisional application)<, and is 
entitled to the  filing date thereof if the drawings of the earlier filed 
utility application  show the same article as that in the design 
application sufficiently to comply  with 35 U.S.C. 112, first paragraph. 
However, such a divisional design application  may only be filed under the 
procedure set forth in 
37 CFR 1.53>(b)(1)< not under 37 CFR 1.60 or 
37 CFR 1.62.  See MPEP # 1504.20. 

        While a divisional application may depart from the phraseology 
used  in the parent case there may be no departure therefrom in substance 
or variation  in the disclosure that would amount to "new matter" if 
introduced by amendment  into the parent case.  Compare MPEP # 201.08 and 
# 201.11. 

        For notation to be put on the file wrapper by the examiner in the 
case  of a divisional application, see MPEP # 202.02. 


201.06(a) Division-Continuation Program [R-2] 


37 CFR 1.60.    Continuation or divisional application for 
invention disclosed in a prior >nonprovisional< application 

        (a)   [Reserved] 

        (b)   An applicant may omit signing of the oath or declaration in 
a  continuation or divisional application (filed under the conditions 
specified  in 35 U.S.C.120 or 121 and # 1.78(a)) if: 

  (1)     the prior application was a nonprovisional application and a 
complete  application as set forth in # 1.51(a)(1); 

        (2)   applicant indicates that the application is being filed 
pursuant  to this section and files a true copy of the prior complete 
application as  filed including the specification (with claims), drawings, 
oath or declaration  showing the signature or an indication it was signed, 
and any amendments referred  to in the oath or declaration filed to 
complete the prior application; 
  (3)     the inventors named in the continuation or divisional 
application  are the same or less than all the inventors named in the 
prior application;  and 



        (4)   the application is filed before the patenting, or 
abandonment  of, or termination of proceedings on the prior application. 
The copy of the  prior application must be accompanied by a statement that 
the application papers  filed are a true copy of the prior complete 
application.  Such statement must  be by the applicant or applicant's 
attorney or agent and must be a verified  statement if made by a person 
not registered to practice before the Patent  and Trademark Office. Only 
amendments reducing the number of claims or adding  a reference to the 
prior application (# 1.78(a)) will be entered before calculating  the 
filing fee and granting the filing date. If the continuation or divisional 
 application is filed by less than all the inventors named in the prior 
application,  a statement must accompany the application when filed 
requesting deletion of  the names of the person or persons who are not 
inventors of the invention being  claimed in the continuation or 
divisional application. Except as provided in  paragraph (d) of this 
section, if a true copy of the prior application as filed  is not filed 
with the application or if the statement that the application  papers are 
a true copy is omitted, the application will not be given a filing  date 
earlier than the date upon which the copy and statement are filed, unless 
a petition with the fee set forth in # 1.17(i) is filed which 
satisfactorily  explains the delay in filing these items. 

        (c)   If an application filed pursuant to paragraph (b) of this 
section  is incomplete for reasons other than those specified in paragraph 
>(d)< of  this section, applicant will be notified and given a time period 
within which  to complete the application in order to obtain a filing date 
as of the date  of filing the omitted item provided the omitted item is 
filed before patenting  or abandonment of or termination of proceedings on 
the prior application.   If the omission is not corrected within the time 
period set, the application  will be returned or otherwise disposed of; 
the fee, if submitted, will be refunded  less the handling fee set forth 
in w 1.21(n). 

        (d)   If an application filed pursuant to paragraph (b) of this 
section  is otherwise complete, but does not include the appropriate 
filing fee or a  true copy of the oath or declaration from the prior 
complete application, showing  the signature or an indication it was 
signed, a filing date will be granted  and applicant will be so notified 
and given a period of time within which to  file the fee, or the true copy 
of the oath or declaration and to pay the surcharge  as set forth in w 
1.16(e) in order to prevent abandonment of the application.  The 
notification pursuant to this paragraph may be made simultaneously with 
any notification pursuant to paragraph(c) of this section. 

37 CFR 1.60 PRACTICE 

        The 37 CFR 1.60 practice was developed to provide a procedure for 
filing  a continuation or divisional application where hardships existed 
in obtaining  the signature of the inventor on such an application during 
the pendency of  the prior nonprovisional application. It is suggested 
that the use of the 37  CFR 1.60 practice be limited to such instances in 
view of the additional work  required by the Office to enter preliminary 
amendments. If no hardship exists  in obtaining the signature of the 
inventor, the application should be filed  under 37 CFR 1.53(b)(1) not 
under 37 CFR 1.60. It is pointed out that a continuation  or divisional 
application may be filed under 37 CFR 1.53(b)(1), 37 CFR 1.60,  or 37 CFR 
1.62. 37 CFR 1.60 or 37 CFR 1.62 practice may not be used when filing  an 
application where the immediate prior application was a provisional 
application  under 35 U.S.C. 119(e). 

        37 CFR 1.60 practice permits persons having authority to prosecute 
 a prior copending nonprovisional application to file a continuation or 
divisional  application without requiring the inventor to again execute an 
oath or declaration  under 35 U.S.C. 115, if the continuation or 
divisional application is an exact  copy of the prior nonprovisional 
application as executed and filed. It is not  necessary to file a new oath 
or declaration which includes a reference to the  nonfiling of an 
application for an inventor's certificate in 37 CFR 1.60 applications 
filed after May 1, 1975. Likewise, it is not necessary to have the 
inventor  sign a new oath or declaration merely to include a reference to 
the duty of  disclosure if the parent application was filed prior to 
January 1, 1978, or  to indicate that the inventor has reviewed and 
understands the contents of  the application if the parent application was 
filed prior to October 1, 1983. 
        Where the immediate prior nonprovisional application was not 
signed 
(for example, where it was filed under the former 37 CFR 1.147 or current 
37  CFR 1.60 or 37 CFR 1.62 practice), a copy of the most recent 
nonprovisional  application having a signed oath or declaration in the 
chain of copending prior  nonprovisional applications under 35 U.S.C. 120 
must be used. 

        The basic concept of 37 CFR 1.60 practice is that since the 
inventor  has already made the affirmation required by 35 U.S.C. 115, it 
is not necessary  to make another affirmation in a later application that 
discloses and claims  only the same subject matter. It is for this reason 
that a 37 CFR 1.60 application  must be an exact duplicate of an earlier 
nonprovisional application executed  by the inventor. It is permissible to 
retype pages to provide clean copies. 
37 CFR 1.60 APPLICATION CONTENT 

        As mentioned previously, a 37 CFR 1.60 application must consist of 
 a copy of an executed nonprovisional application as filed (specification, 
claims,  drawings, and oath or declaration). The application must also 
include a clear  indication that a filing under 37 CFR 1.60 is desired. 
The use of transmittal  form PTO/SB/13 is urged 
since it acts as a checklist for both applicant and the Office and 
includes  a specific request for an application under 37 CFR 1.60. If an 
application  is filed under 37 CFR 1.60, all requirements of that rule 
must be met. 
        Although a copy of all original claims in the prior nonprovisional 
 application must appear in the 
37 CFR 1.60 application, some of the claims may be canceled by request in 
the  37 CFR 1.60 application in order to reduce the filing fee (see form 
PTO/SB/13,  item 5).  Any preliminary amendment presenting additional 
claims (claims not  in the prior application as filed) should accompany 
the request for filing  an application under 37 CFR 1.60, but such an 
amendment will not be entered  until after the filing date has been 
granted. Any claims added by amendment  should be numbered consecutively 
beginning with the number next following the  highest numbered original 
claim in the prior executed nonprovisional application.  >The Office of 
Initial Patent Examination should not review preliminary amendments 
(in the transmitted letter or separate paper accompanying the application) 
 for evidence of missing claims in applications filed under 37 CFR 1.60. 
Any  errors in the numbering of claims in preliminary amendment(s) can be 
corrected  in the examining groups.<  Amendments made in the prior 
nonprovisional application  do not carry over into the 37 CFR 1.60 
application. Any preliminary amendment  should accompany the 
37 CFR 1.60 application and be directed to "the accompanying 37 CFR 1.60 
application"  and not to the prior nonprovisional application. Applicants 
should submit preliminary  amendments on filing or promptly thereafter to 
assure examiner consideration  when the 37 CFR 1.60 application is picked 
up for examination. 

        All application copies must comply with 37 CFR 1.52 and must be on 
 paper which permits entry of amendments thereon in ink. 

        A copy of the nonprovisional application must be prepared and 
submitted  by the applicant, or his or her attorney or agent, and include 
a statement  that it is a true copy. The copy of the oath or declaration 
need not show a  copy of the inventor's or notary's signature provided 
that all other data is  shown and an indication is made on the oath or 
declaration that the oath or  declaration has been signed. For example, if 
the inventor's or notary's signature  is not shown on the copy of the oath 
or declaration, the notation "/s/" may  be added to the copy of the oath 
or declaration on the line provided for the  signature to indicate that 
the original oath or declaration was signed. 
        In order to obtain a filing date under 37 CFR 1.60 a copy of all 
pages  of the application, including description, claims, any drawings, 
and the statement  that the application papers are a true copy of the 
prior application are required  to be submitted. If all these items are 
not submitted, remedy is by way of  petition under 37 CFR 1.60(b) and 
payment of the fee under 37 CFR 1.17(i).  Paragraph (d) of 37 CFR 1.60 
which was added effective Jan. 4, 1993, provides  for the filing fee 
and/or true copy of the oath or declaration from the prior  nonprovisional 
application to be filed on a date later than the filing date  with payment 
of the surcharge set forth in 
37 CFR 1.16(e). 

        Claims for priority rights under 35 U.S.C. 119(a)-(d) must be made 
 in 37 CFR 1.60 applications if it is desired to have the foreign priority 
data  appear on the issued patent.  In re Van Esdonk, 187 USPQ 671 (Comm'r 
Pat. 1975).  Reference should be made to certified copies filed in a prior 
application if  reliance thereon is made. 

        If the claims presented by amendment in a 37 CFR 1.60 application 
are  directed to matter shown and described in the prior nonprovisional 
application  but not substantially embraced in the statement of invention 
or claims originally  presented, the applicant should file a supplemental 
oath or declaration under  37 CFR 1.67 as promptly as possible. 

        In view of the fact that 37 CFR 1.60 applications are limited to 
continuations  and divisions, no new matter may be introduced in a 37 CFR 
1.60 application, 35 U.S.C. 132. Continuation-in-part applications may 
only be filed under 37  CFR 1.53(b)(1) or 37 CFR 1.62. 

        A statement to the effect that the submitted copy is believed to 
be  a true copy of the prior nonprovisional application as filed to the 
best of  his or her information and belief is sufficient, if an 
explanation is made  as to why the statement must be based only on belief. 

        If the 37 CFR 1.60 application is being filed by less than all the 
 inventors named in the prior nonprovisional application, a statement must 
accompany  the application, when it is filed, requesting deletion of the 
names of the  person or persons who are not inventors of the invention 
being claimed in the  37 CFR 1.60 application. For example, this situation 
could occur when a divisional application is being filed directed to one 
of the inventions disclosed and  claimed in the prior nonprovisional 
application. No petition under 37 CFR 1.48  for correction of inventorship 
is required when filing under 
37 CFR 1.60 unless there was an error in the omission of a named inventor 
in  the prior nonprovisional application which was not corrected prior to 
the filing  of the 37 CFR 1.60 application. 

        If the inventorship shown on the original oath or declaration has 
been  changed and approved during the prosecution of the prior 
nonprovisional application,  the 37 CFR 1.60 application papers must 
indicate such a change has been made  and approved by providing a copy of 
the petition for correction of inventorship  under 37 CFR 1.48 in order 
that the changed inventorship may be indicated in  the 37 CFR 1.60 
application. The 37 CFR 1.60 application papers should also  include any 
additions or changes in an inventor's citizenship, residence or  post 
office address made and approved in the prior nonprovisional application. 
        If small entity status has been established in a parent 
application,  it is not necessary to again file a verified statement under 
37 CFR 1.27 if  the small entity status is desired in a 37 CFR 1.60 
application. The 37 CFR  1.60 application must, however, include a 
reference to the verified statement  in the parent application if the 
small entity, status is still proper and desired 
(37 CFR 1.28(a)). 

        If the parent application was filed by other than the inventor 
under  37 CFR 1.47, a copy of all the petition papers filed under 37 CFR 
1.47 must  also be filed. 

FORMAL DRAWINGS REQUIRED 

        Formal drawings are required in 37 CFR 1.60 applications as in 
other  applications. A request to transfer drawings from a prior 
nonprovisional application  does not relieve the applicant from the 
obligation to file a copy of the drawings  originally filed in the prior 
nonprovisional application. If informal drawings  are filed with the 
application papers, the examiner should use Form Paragraph  2.02 for 
formal drawing requirement. 

W 2.02      37 CFR 1.60 Drawing Requirement 

        This application, filed under 37 CFR 1.60, lacks formal drawings. 
The  informal drawings filed in this application are acceptable for 
examination  purposes. When the application is allowed, applicant will be 
required * to  submit new formal drawings ** >. In unusual circumstances,< 
the formal drawings  from the abandoned parent application >may be 
transferred by the grant of a  petition under 37 CFR 1.182<. 

Examiner Note: 

        This form paragraph is to be used only when the parent application 
 contains approved formal drawings and has been abandoned. 

        Any drawing corrections requested but not made in the prior 
nonprovisional  application should be repeated in the 37 CFR 1.60 
application if such changes  are still desired. 

        Use Form Paragraph 2.04 for instructions to applicant where 
drawing  corrections have been requested in the parent application. 

W 2.04      Correction of Drawings in 37 CFR 1.60 Cases 

        The drawings in this application are objected to by the 
Draftsperson 
 as informal.  Any drawing corrections requested>,<  but not made in the 
prior  application>, < should be repeated in this application if such 
changes are  still desired.  If the drawings were changed and approved 
during the prosecution  of the prior application, **> a petition may be 
filed under 37 CFR 1.182 requesting  the transfer of such drawings, 
provided the parent application has been abandoned<.  However, a copy of 
the drawings as originally filed must be included in the  37 CFR 1.60 
application papers to indicate the original content. 

Examiner Note: 

        Use form paragraphs 6.39 and 6.40 with this paragraph. 

COPIES OF AFFIDAVITS 

        Affidavits and declarations, such as those under 
37 CFR 1.131 and 37 CFR 1.132 filed during the prosecution of the prior 
nonprovisional  application do not automatically become a part of the 37 
CFR 1.60 application.  Where it is desired to rely on an earlier filed 
affidavit, the applicant should  make such remarks of record in the 
37 CFR 1.60 application and include a copy of the original affidavit filed 
 in the prior nonprovisional application. 

        Use Form Paragraph 2.03 for instructions to applicant concerning 
affidavits  and declarations in the parent application. 

W 2.03      Affidavits and Declarations in Parent Application 

        Applicant refers to an affidavit filed in the parent application. 
Affidavits  and declarations, such as those under 37 CFR 1.131 and 
37 CFR 1.132, filed during the prosecution of the parent application do 
not  automatically become a part of this application. Where it is desired 
to rely  on an earlier filed affidavit, the applicant should make the 
remarks of record  in the later application and include a copy of the 
original affidavit filed  in the parent application. 

 ABANDONMENT OF THE PRIOR 
NONPROVISIONAL APPLICATION 

        Under 37 CFR 1.60 practice the prior nonprovisional application is 
 not automatically abandoned upon filing 
of the 37 CFR 1.60 application. If the prior nonprovisional application is 
 to be expressly abandoned, such a paper must be signed in accordance with 
37  CFR 1.138. A registered attorney or agent not of record acting in a 
representative  capacity under 37 CFR 1.34(a) may also expressly abandon a 
prior nonprovisional  application as of the filing date granted to a 
continuing application when  filing such a continuing application. 

        If the prior nonprovisional application which is to be expressly 
abandoned  has a notice of allowance issued therein, the prior 
nonprovisional application  can become abandoned by the nonpayment of the 
issue fee. However, once an issue  fee has been paid in the prior 
application, even if the payment occurs following  the filing of a 
continuation application under 37 CFR 1.60, a petition to withdraw  the 
prior nonprovisional application from issue must be filed before the prior 
 nonprovisional application can be abandoned (37 CFR 1.313). 

        If the prior nonprovisional application which is to be expressly 
abandoned  is before the Board of Patent Appeals and Interferences, a 
separate notice  should be forwarded by the applicant to such Board, 
giving notice thereof. 
        After a decision by the CAFC in which the rejection of all claims 
is  affirmed, proceedings are terminated on the date of receipt of the 
Court's  certified copy of the decision by the Patent and Trademark 
Office; Continental  Can Company, Inc., et al. v. Schuyler 168 USPQ 625 
(D.D.C. 1970). See MPEP  # 1216.01. 

EXAMINATION 

        The practice relating to making first action rejections final 
applies  also to 37 CFR 1.60 applications; see MPEP 
# 706.07(b). 

        Any preliminary amendment filed with a 37 CFR 1.60 application 
which  is to be entered after granting of the filing date should be 
entered by the  clerical personnel of the examining group where the 
application is finally  assigned to be examined. >Any errors in the 
numbering of claims in preliminary  amendment(s) can be corrected in the 
examining groups.< Accordingly, these  applications should be classified 
and assigned to the proper examining group  by taking into consideration 
the claims that will be before the examiner upon  entry of such a 
preliminary amendment. 

        If the examiner finds that a filing date has been granted 
erroneously  because the application was incomplete; e.g., pages of 
specification missing  or drawing sheets missing, the application should 
be returned to the Application  Division via the Office of **>Petitions<. 

        Form PTO/SB/13 is designed as an aid for use by both applicant and 
 the Patent and Trademark Office and should simplify filing and processing 
of  applications under 37 CFR 1.60. 

        Form PTO/SB/13 Request For Filing A Patent Application Under 37 
CFR  1.60. 



A20106a02.bmp 



20106a02.end 



A20106a03.bmp 



A20106a03.end 




201.06(b) File Wrapper Continuing Procedure [R-2] 


37 CFR 1.62   File wrapper continuing procedure 

        (a)   A continuation, continuation-in-part, or divisional 
application,  which uses the specification, drawings and oath or 
declaration from a prior  nonprovisional application which is complete as 
defined by 
# 1.51(a)(1), and which is to be abandoned, may be filed under this 
section  before the payment of the issue fee, abandonment of, or 
termination of proceedings  on the prior application, or after payment of 
the issue fee if a petition under  # 1.313(b)(5) is granted in the prior 
application. The filing date of an application  filed under this section 
is the date on which a request is filed for an application  under this 
section including identification of the application number and the  names 
of the inventors named in the prior complete application. If the 
continuation,  continuation-in-part, or divisional application is filed by 
less than all the  inventors named in the prior application a statement 
must accompany the application  when filed requesting deletion of the 
names of the person or persons who are  not inventors of the invention 
being claimed in the continuation, continuation-in-part,  or divisional 
application. 

        (b)   The filing fee for a continuation, continuation-in-part, or 
divisional  application under this section is based on the number of 
claims remaining in  the application after entry of any preliminary 
*>amendment< and entry of any  *>amendments< under # 1.116 unentered in 
the prior application which applicant  has requested to be entered in the 
continuing application. 

        (c)   In the case of a continuation-in-part application which adds 
 and claims additional disclosure by amendment, an oath or declaration as 
required  by # 1.63 must also be filed. In those situations where a new 
oath or declaration  is required due to additional subject matter being 
claimed, additional inventors  may be named in the continuing application. 
In a continuation or divisional  application which discloses and claims 
only subject matter disclosed in a prior  application, no additional oath 
or declaration is required and the application  must name as inventors the 
same or less than all the inventors named in the  prior application. 

        (d)   If an application which has been accorded a filing date 
pursuant  to paragraph (a) of this section does not include the 
appropriate basic filing  fee pursuant to paragraph (b) of this section, 
or an oath or declaration by  the applicant in the case of a 
continuation-in-part application pursuant to  paragraph (c) of this 
section, applicant will be so notified and given a period  of time within 
which to file the fee, oath, or declaration and to pay the surcharge  as 
set forth in # 1.16(e) in order to prevent abandonment of the application. 
 The notification pursuant to this paragraph may be made simultaneously 
with  any notification of a defect pursuant to paragraph (a) of this 
section. 
        (e)   An application filed under this section will utilize the 
file  wrapper and contents of the prior application to constitute the new 
continuation,  continuation-in-part, or divisional application but will be 
assigned a new  application number. Changes to the prior application must 
be made in the form  of an amendment to the prior application as it exists 
at the time of filing  the application under this section. No copy of the 
prior application or new  specification is required. The filing of such a 
copy or specification will  be considered improper, and a filing date as 
of the date of deposit of the  request for an application under this 
section will not be granted to the application  unless a petition with the 
fee set forth in # 1.17(i) is filed with instructions  to cancel the copy 
or specification. 

        (f)   The filing of an application under this section will be 
construed  to include a waiver of secrecy by the applicant under 35 U.S.C. 
122 to the  extent that any member of the public who is entitled under the 
provisions of  37 CFR 1.14 to access to, or information concerning either 
the prior application  or any continuing application filed under the 
provisions of this section may  be given similar access to, or similar 
information concerning, the other application(s)  in the file wrapper. 

        (g)   The filing of a request for a continuing application under 
this  section will be considered to be a request to expressly abandon the 
prior application  as of the filing date granted the continuing application. 

        (h)   The applicant is urged to furnish the following information 
relating  to the prior and continuing applications to the best of his or 
her ability: 

                (1)   Title as originally filed and as last amended; 
                (2)   Name of applicant as originally filed and as last 
amended; 
                (3)   Current correspondence address of applicant; 
                (4)   Identification of prior foreign application and any 
priority  claim under 35 U.S.C. 119. 

                (5)   The title of the invention and names of the 
applicants  to be named in the continuing application. 

        (i)   Envelopes containing only application papers and fees for 
filing  under this section should be marked "Box FWC". 

        (j)   If any application filed under this section is found to be 
improper,  the applicant will be notified and given a time period within 
which to correct  the filing error in order to obtain a filing date as of 
the date the filing  error is corrected provided the correction is made 
before the payment of the  issue fee, abandonment of, or termination of 
proceedings on the prior application.  If the filing error is not 
corrected within the time period set, the application  will be returned or 
otherwise disposed of; the fee, if submitted, will be refunded  less the 
handling fee set forth in w 1.21(n). 

        An applicant may file a continuation or division of a pending 
patent  application by simply filing a request therefor under 37 CFR 1.62 
identifying  the Application No. (series code and serial number) of the 
prior complete nonprovisional  application and paying the necessary 
application filing fee. The filing of  a copy of the prior nonprovisional 
application (required under 
37 CFR 1.60) is unnecessary and improper under the procedure set forth in 
37  CFR 1.62. To file a continuation-in-part application, an amendment 
(not a new  specification) adding the additional subject matter and an 
oath or declaration  relating thereto are also required. 

        A request for an FWC application under 37 CFR 1.62 may be signed 
by  a registered practitioner acting in a representative capacity under 37 
CFR  1.34(a). However, correspondence concerning the continuing 
application will  be sent by the Office to the correspondence address as 
it appears on the prior  nonprovisional application until a new power of 
attorney, or change of correspondence  address signed by an attorney or 
agent of record in the prior application,  is filed in the FWC. 



        The "file wrapper continuing" (FWC) procedure is set forth in 37 
CFR  1.62. Under this simplified procedure, any continuing application 
such as a  continuation, continuation-in-part, or divisional application 
may be filed.  The papers in the copending prior nonprovisional 
application, which application  will become automatically expressly 
abandoned will be used and any changes  thereto desired when filing the 
FWC application must be made by amendment.  Under the FWC procedure, a new 
application number is assigned and the specification,  drawings, and other 
papers in the parent application file wrapper are used  as the papers in 
the continuing application. Changes in inventorship may be  made. The 
"file wrapper continuing" (FWC) procedure is available for utility, 
design, plant, and reissue applications to file continuing applications of 
 the same type (utility, design, plant, reissue) as the parent 
application.  An application which claims the benefits of a provisional 
application may not  be filed under the provisions of 37 CFR 1.62. Use of 
the FWC procedure will  automatically result in express abandonment of the 
prior nonprovisional application  as of the filing date accorded the 
continuation, continuation-in-part, or divisional  application. 

        The FWC procedure can be used for any continuation, 
continuation-in-part,  or divisional application provided the applicant 
wishes the copending prior  nonprovisional application to become 
abandoned.  If a continuation or divisional  application is desired 
without abandonment of the parent application, the procedure  under 37 CFR 
1.60 should be used. Applicant also has the option of filing new 
application papers with 
a reexecuted oath or declaration under 37 CFR 1.53(b)(1). 

        Under 37 CFR 1.62, the specification, claims, and drawings, and 
any  amendments in the prior nonprovisional application are used in the 
continuation,  continuation-in-part, or divisional application. A new 
filing fee is required  in accordance with 35 U.S.C. 41 and 
37 CFR 1.16. The only other statutory requirement under 35 U.S.C. 111(a) 
is  a signed oath or declaration.  Since a continuation or divisional 
application  cannot contain new matter, the oath or declaration filed in 
the prior nonprovisional  application would supply all the information 
required under the statute and  rules to have a complete application and 
to obtain a filing date. Accordingly,  the previously filed oath or 
declaration will be considered to be the oath  or declaration of the 37 
CFR 1.62 continuation or division. However, if a continuation-in-part 
application is being filed, or a correction of inventorship is being made, 
 then a new oath or declaration must be signed and filed by the applicant. 
        The original disclosure of an application filed under 
37 CFR 1.62 will be the original parent application, amendments entered in 
 the parent application, and amendments filed on the filing date and 
referred  to in the oath or declaration by the inventor(s). However, the 
filing fee will  be based on the claims in the 37 CFR 1.62 application 
after entry of any unentered  amendments under 37 CFR 1.116 in the prior 
application whose entry has been  requested by the applicant and any 
preliminary amendment which may accompany  the FWC request and filing fee. 
The Certificate of Mailing Procedure under  37 CFR 1.8 does not apply to 
filing a request for a "File Wrapper Continuing"  application since the 
filing of such a request is considered to be a filing  of national 
application papers for the purpose of obtaining an application  filing 
date (37 CFR 1.8(a)(i)). 

        The applicant may file a signed FWC request and the regular filing 
 fee under 37 CFR 1.16 and other necessary papers with the Patent and 
Trademark  Office, either by mail addressed to "Box FWC" or in person with 
the mail room.  An individual check or deposit account authorization 
should accompany each  FWC application, since combined checks delay 
processing. 

        The Correspondence and Mail Division sorts out all "Box FWC" 
envelopes  upon receipt and delivers them to a reader for prompt special 
handling. The  reader applies the "Mail Room" date stamp and marks the 
categories of the fees.  The papers for each FWC application are assigned 
a regular national application  number and placed in a "Jumbo" size file 
wrapper. The Special Handling Branch  reviews the FWC request for accuracy 
and completeness and assigns the filing  date if everything appears to be 
in order. There is no need for any processing  of the FWC application by 
the Classification or Examination Branches of Application  Division since 
there are no papers to be examined and the FWC application is  routed to 
the group assigned the prior nonprovisional application. When the  FWC 
application file wrapper is received in the examining group, the parent 
application is promptly obtained and processed by a clerical staff member. 


        All of the correspondence from the Office in a FWC application 
refers  to the FWC application number and filing date and is processed in 
the same  manner as any other continuation, continuation-in-part or 
divisional application.  The first action final rejection procedures set 
forth in MPEP # 706.07(b) apply  to FWC applications filed under 37 CFR 
1.62. The PALM III system can supply  information to authorized persons as 
to the location of the parent application  file wrapper and ties the 
parent application number to the FWC application  number. 

        The provisions of 37 CFR 1.62 provide that if any application in 
the  file wrapper is available to the public that all applications in the 
file wrapper  will be available to the public. 

        Paragraph (a) of 37 CFR 1.62 sets forth the minimum requirements 
for  obtaining a filing date. Paragraphs (b) and (c) of 37 CFR 1.62 set 
forth the  filing fee and oath or declaration requirements. Paragraph 
1.62(d) relates  to later filing of the filing fee or oath or declaration 
as provided for in  35 U.S.C. 111(a). 

EXTENSIONS OF TIME 

        If an extension of time is necessary to establish continuity 
between  the prior application and the FWC application, the petition for 
extension of  time must be filed as a separate paper directed to the prior 
nonprovisional  application. A general authorization to charge fees to a 
deposit account filed  in the FWC application will not be construed as a 
petition for extension of  time in the prior application. See In re 
Kokaji, 2 USPQ2d 1309 (Comm'r Pat.  1987). Any petition for extension of 
time directed to the prior application  must be accompanied by its own 
certificate of mailing under 37 CFR 1.8 (if  mailed by first class mail) 
or under 37 CFR 1.10 (if mailed by Express Mail),  if the benefits of 
those rules are desired. 

CERTIFIED COPY 

        A certified copy of a continuation-in-part application filed under 
 37 CFR 1.62 will be prepared by the Certification Branch upon request. 
The certified copy will consist of a copy of  the prior complete 
application as >filed, all amendments entered in the prior  application as 
of the< FWC filing date, any amendment filed with the request  for a 
continuation-in-part application under 37 CFR 1.62, any unentered 
amendment  under 
37 CFR 1.116 in the prior application whose entry was requested by the 
applicant  in the FWC application, and the oath or declaration under 37 
CFR 1.63 filed  to complete the FWC application. 

SMALL ENTITY STATUS 

        If small entity status was established in the parent application 
of  an application filed under 37 CFR 1.62, and such status is desired and 
proper  in a 37 CFR 1.62 application, it is not necessary that a new 
statement under  37 CFR 1.27 be filed but rather reference may be made to 
the statement filed  in the parent application. 

PRIORITY CLAIM 

        Claims under 35 U.S.C. 119(a)-(d) and 120 for the benefit of the 
filing  dates of earlier applications in a parent application will 
automatically carry  over to an application filed under 37 CFR 1.62. 
Applicants are encouraged to  repeat and update such claims at the time of 
filing a 37 CFR 1.62 application  so that such claims will not be 
overlooked. The issue clerk should check if  priority data has been 
entered on the file wrapper. 

        Form Paragraph 2.28 may be used to remind applicant to insert 
parent  application data. 

W 2.28      Reference in # 1.62 Continuing Applications 

        This application filed under 37 CFR 1.62 lacks the necessary 
reference  to the prior application. A statement reading "This is a [1] of 
application  no. [2], filed [3]" should be entered following the title of 
the invention  or as the first sentence of the specification. Also, the 
present status of  the parent application(s) should be included. 

Examiner Note: 

        1.  In  bracket 1 insert division, continuation, or 
continuation-in-part. 

        2.  Use only in "file wrapper continuing" applications under 
 37 CFR 1.62. 

        3.  An application which claims the benefits of a provisional 
application  may not be filed under the provisions of 37 CFR 1.62. 



A20106b04.bmp 



A20106b04.end 



A20106b05.bmp 



A20106b05.end 




201.07      Continuation Application [R-1] 


        A continuation is a second application for the same invention 
claimed  in a prior >nonprovisional< application and filed before the 
original becomes  abandoned or patented. The continuation application may 
be filed 
under 37 CFR 1.53>(b)(1)<, 37 CFR 1.60, or 
37 CFR 1.62. The applicant in the *>continuation< 
application must include at least one inventor named in the prior 
>nonprovisional<  application. The disclosure presented in the 
continuation must be the same  as that of the original application; i.e., 
the continuation should not include  anything which would constitute new 
matter if inserted in the original application. 
        >An application claiming the benefits of a provisional application 
 under 35 U.S.C. 119(e) should not be called a "continuation'' of the 
provisional  application since the application will have its patent term 
calculated from  its filing date, whereas an application filed under 
35 U.S.C. 120, 121, or 365(c) will have its patent term calculated from 
the  date on which the earliest application was filed, provided a specific 
reference  is made to the earlier filed application(s), 35 U.S.C. 
154(a)(2) and (a)(3).< 
        At any time before the patenting or abandonment of or termination 
of  proceedings on his or her earlier >nonprovisional< application, an 
applicant  may have recourse to filing a continuation in order to 
introduce into the case  a new set of claims and to establish a right to 
further examination by the  primary examiner. An application under 37 CFR 
1.62, however, must be filed  prior to payment of the issue fee. 

        For notation to be put on the file wrapper by the examiner in the 
case  of a continuation application, see MPEP # 202.02. 

        Use Form Paragraph 2.05 to remind applicant of possible 
continuation  status. 

W 2.05      Possible Status as Continuation 

        This application discloses and claims only subject matter 
disclosed  in prior ** >application no.< [1], filed [2], and names an 
inventor or inventors  named in the prior application. Accordingly, this 
application may constitute  a continuation or division. Should applicant 
desire to obtain the benefit of  the filing date of the prior application, 
attention is directed to 35 U.S.C.  120 and 37 CFR 1.78. 

Examiner Note: 

        >1.<    This paragraph should only be used if it appears that the 
application  may be a continuation but priority has not been claimed. 

        >2.   An application claiming the benefits of a provisional 
application  under 35 U.S.C. 119(e) should not be called a "continuation'' 
of the provisional  application since the application will have its patent 
term calculated from  its filing date, whereas an application filed under 
35 U.S.C. 120, 121, or 365(c) will have its patent term calculated from 
the  date on which the earliest application was filed, provided a specific 
reference  is made to the earlier filed application(s), 35 U.S.C. 
154(a)(2) and (a)(3).< 
        ** 


201.08      Continuation-in-Part Application [R-1] 


        A continuation-in-part is an application filed during the lifetime 
 of an earlier >nonprovisional< application by the same applicant, 
repeating  some substantial portion or all of the earlier >nonprovisional< 
application  and adding matter not disclosed in the said earlier 
*>nonprovisional application<. 
(In re Klein, 1930 C.D. 2; 393 O.G. 519 (Comm'r Pat. 1930)). The 
continuation-in-part  application may be filed under 37 CFR 1.53>(b)(1)< 
or 37 CFR 1.62. An application  under 37 CFR 1.62, however, must be filed 
prior to payment of the issue fee  >or after payment of the issue fee if a 
petition under 37 CFR 1.313(b)(5) is  granted in the prior nonprovisional 
application.< 

        >An application claiming the benefits of a provisional application 
 under 35 U.S.C. 119(e) should not be called a "continuation-in-part'' of 
the  provisional application since the application will have its patent 
term calculated  from its filing date, whereas an application filed under 
35 U.S.C. 120, 121,  or 365(c) will have its patent term calculated from 
the date on which the earliest  application was filed, provided a specific 
reference is made to the earlier  filed application(s), 35 U.S.C. 
154(a)(2) and (a)(3).< 

        The mere filing of a continuation-in-part does not itself create a 
 presumption that the applicant 
acquiesces in any rejections which may be outstanding in the copending 
national  >nonprovisional< application or applications upon which the 
continuation-in-part  application relies for benefit. 

        A continuation-in-part filed by a sole applicant may also derive 
from  an earlier joint application showing a portion only of the subject 
matter of  the later application, subject to the conditions set forth in 
35 U.S.C. 120 and 37 CFR 1.78. Subject to the same conditions, a joint 
continuation-in-part  application may derive from an earlier sole application. 



        Unless the filing date of the earlier >nonprovisional< application 
 is actually needed, for example, in the case of an interference or to 
overcome  a reference, there is no need for the Office to make a 
determination as to  whether the requirement of 35 U.S.C. 120, that the 
earlier >nonprovisional<  application discloses the invention of the 
second application in the manner  provided by the first paragraph of 35 
U.S.C. 112, is met and whether a substantial  portion of all of the 
earlier >nonprovisional< application is repeated in the  second 
application in a continuation-in-part situation. Accordingly, an alleged 
continuation-in-part application should be permitted to claim the benefit 
of  the filing 
date of an earlier >nonprovisional< application if the alleged 
continuation-in-part  application complies with the following formal 
requirements of 35 U.S.C. 120: 
        1.  The first application and the alleged continuation>-in-part< 
application  were filed with at least one common inventor; 

        2.  The alleged *>continuation-in-part< application was "filed 
before  the patenting or abandonment of or termination of proceedings on 
the first  application or an application similarly entitled to the benefit 
of the filing  date of the first application"; and 

        3.  The alleged *>continuation-in-part< application "contains or 
is  amended to contain a specific reference to the earlier filed 
application." 
        For notation to be put on the file wrapper by the examiner in the 
case  of a continuation-in-part application see MPEP # 202.02. See MPEP # 
708 for  order of examination. 

        Use Form Paragraph 2.06 to remind applicant of possible 
continuation-in-part  status. 

W 2.06      Possible Status as Continuation-in-Part 

        This application repeats a substantial portion of prior 
**>application  no.<  [1], filed [2], and adds and claims additional 
disclosure not presented  in the prior application. Since this application 
names an inventor or inventors  named in the prior application, it may 
constitute a continuation-in-part of  the prior application. Should 
applicant desire to obtain the benefit of the  filing date of the prior 
application, attention is directed to 35 U.S.C. 120  and 37 CFR 1.78. 

Examiner Note: 

        >1.<    This paragraph should only be used when it appears that 
the  application may qualify as a continuation-in-part, but no claim has 
been filed. 
        > 2.    An application claiming the benefits of a provisional 
application  under 35 U.S.C. 119(e) should not be called a "continuation'' 
of the provisional  application since the application will have its patent 
term calculated from  its filing date, whereas an application filed under 
35 U.S.C. 120, 121, or 365(c) will have its patent term calculated from 
the  date on which the earliest application was filed, provided a specific 
reference  is made to the earlier filed application(s), 35 U.S.C. 
154(a)(2) and (a)(3).< 

201.09      Substitute Application [R-1] 


        The use of the term "Substitute" to designate any application 
which  is in essence the Duplicate of an application by the same applicant 
abandoned  before the filing of the later case, finds official recognition 
in the decision;  Ex parte Komenak, 1940 C.D. 1; 512 O.G. 739 (Comm'r. Pat 
1940). Current practice  does not require applicant to insert in the 
specification reference to the  earlier case; however, attention should be 
called to the earlier application.  The notation on the file wrapper (see MPEP 
# 202.02) that one case is a "Substitute" for another is printed in the 
heading  of the patent copies. See MPEP # 201.11. 

        As is explained in MPEP # 201.11, a "Substitute" does not obtain 
the  benefit of the filing date of the prior application. 

        Use Form Paragraph 2.07 to remind applicant of possible substitute 
 status. 

W 2.07      Definition of a Substitute 

        Applicant refers to this application as a "substitute" of * 
>application  no.< [1], filed [2].  The use of the term "substitute" to 
designate an application  which is in essence the duplicate of an 
application by the same applicant abandoned  before the filing of the 
later case finds official recognition in the decision,  Ex parte Komenak, 
1940 C.D. 1; 512 O.G. 739 (Comm'r. Pat. 1940). The notation  on the file 
wrapper (See MPEP 
# 202.02) that one case is a "substitute" for another is printed in the 
heading  of the patent copies.  A "substitute" does not obtain the benefit 
of the filing  date of the prior application. ** 


201.10      Refile 


        No official definition has been given the term "Refile," though it 
 is sometimes used as an alternative for the term "Substitute." 

        If the applicant designates his application as "Refile" and the 
examiner  finds that the application is in fact a duplicate of a former 
application by  the same party which was abandoned prior to the filing of 
the second case,  the examiner should require the substitution of the word 
"substitute" for "refile",  since the former term has official 
recognition. The endorsement on the file  wrapper that the case is a 
"substitute" will result in the further endorsement  by the Assignment 
Division of any assignment of the parent case that may have  been made. 

        Use Form Paragraph 2.08 to remind applicant of possible refile 
status. 


W 2.08      Definition of a Refile. 

        It is noted that applicant refers to this application as a 
"refile". 
 No official definition has been given the term "refile", though it is 
sometimes  used as an alternative for the term "substitute".  Since this 
application appears  to be in fact a duplicate of a former application 
which was abandoned prior  to the filing of the second case, the 
substitution of the word "substitute"  for "refile," is required since the 
term "substitute" has official recognition.  ** Applicant is required to 
make appropriate corrections. 


201.11      Continuity Between Applications:  When Entitled to Filing Date 
[R-2] 

        Under certain circumstances an application for patent is entitled 
to  the benefit of the filing date of a prior nonprovisional application 
or provisional  application which has at least one common inventor.  The 
conditions are specified  in 35 U.S.C. 120 and 35 U.S.C. 119(e). 

35 U.S.C. 120     .   Benefit of earlier filing date in the United States. 
        An application for patent for an invention disclosed in the manner 
 provided by the first paragraph of section 112 of this title in an 
application  previously filed in the United States, or as provided by 
section 363 of this  title, which is filed by an inventor or inventors 
named in the previously filed  application shall have the same effect, as 
to such invention, as though filed  on the date of the prior application, 
if filed before the patenting or abandonment  of or termination of 
proceedings on the first application or on an application  similarly 
entitled to the benefit of the filing date of the first application  and 
if it contains or is amended to contain a specific reference to the 
earlier  filed application. 

35 U.S.C. 119.          Benefit of earlier filing date; right of priority. 
 *** 

        (e)(1)      An application for patent filed under section 111(a) 
or  section 363 of this title for an invention disclosed in the manner 
provided  by the first paragraph of section 112 of this title in a 
provisional application  filed under section 111(b) of this title, by an 
inventor or inventors named  in the provisional application, shall have 
the same effect, as to such invention,  as though filed on the date of the 
provisional application filed under section  111(b) of this title, if the 
application for patent filed under section 111(a)  or section 363 of this 
title is filed not later than 12 months after the date  on which the 
provisional application was filed and if it contains or is amended  to 
contain a specific reference to the provisional application. 

        (2)   A provisional application filed under section 111(b) of this 
 title may not be relied upon in any proceeding in the Patent and 
Trademark  Office unless the fee set forth in subparagraph (A) or (C) of 
section 41(a)(1)  of this title has been paid and the provisional 
application was pending on  the filing date of the application for patent 
under section 111(a) or section  363 of this title. 

        There are four conditions for receiving the benefit of an earlier 
filing  date under 35 U.S.C. 120 or under 
35 U.S.C. 119(e). 

        1.  The second application must be an application for a patent for 
 an invention which is also disclosed in the first application (the parent 
or  original nonprovisional application or provisional application); the 
disclosure  of the invention in the first application and in the second 
application must  be sufficient to comply with the requirements of the 
first paragraph of 35  U.S.C. 112. See **>Transco Products, Inc. v. 
Performance Contracting Inc.,  38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994)<. 

        Form Paragraphs 2.09 and 2.10 should be used where the disclosure 
of  the second application is not for an invention disclosed in the first 
application. 
W   2.09        Heading for Conditions for Domestic Priority Under 35 
U.S.C.  119(e) or 120 

        Applicant has not complied with one or more conditions for 
receiving  the benefit of an earlier filing date under 35 U.S.C. [1] as 
follows: 
Examiner Note: 

        1.  In bracket 1 insert either -119(e)- or -120-, or both. 
        2.  One or more of the following form paragraphs 2.10 to 2.12 must 
 follow depending upon the circumstances. 

W 2.10      Disclosure Must Be the Same 

        The second application must be an application for a patent for an 
invention  which is also disclosed in the first application (the parent or 
provisional  application); the disclosure of invention in the parent 
application and in  the second application must be sufficient to comply 
with the requirements of  the first paragraph of 35 U.S.C. 112.  See 
**>Transco Products, Inc. v. Performance  Contracting Inc., 38 F.3d 551, 
32 USPQ2d 1077 (Fed. Cir. 1994)<. 

Examiner Note: 

        This paragraph must be preceded by heading paragraph 2.09. 
        >Form Paragraph 2.29 should be used where the claim(s) of the 
nonprovisional  application lacks support in the disclosure of the 
provisional application. 
W 2.29 Domestic Priority Not Granted 

        Applicant's claim for domestic priority under 35 U.S.C. 119(e) is 
acknowledged.  However, the provisional application upon which priority is 
claimed fails to  provide adequate support under 35 U.S.C. 112 for claim 
[1] of this application. 
 [2]. 

Examiner Note: 

        1.  This form paragraph may be used when there is lack of support 
for  the pending claims in the provisional application. 

        2.  In bracket 2, provide an explanation of lack of support.< 
        2.  The second application must be copending with the first 
application  or with an application similarly entitled to the benefit of 
the filing date  of the first application. With respect to provisional 
applications, the second  application must be filed not later than 12 
months after the date on which  the provisional application was filed in 
order to establish copendency. If  the last day of pendency is on a 
Saturday, Sunday, or Federal holiday, the nonprovisional application  must 
be filed prior thereto, 37 CFR 1.78(a)(3). 

        3.  The second application must contain a specific reference to 
the  prior application(s) in the specification. 

        Form Paragraphs 2.09 and 2.12 are required to be used to indicate 
reference  to the prior application. 

W 2.12      Application Must Contain a Reference to Parent 

        An application in which the benefits of an earlier application are 
 desired must contain a specific reference to the prior application(s) in 
the>first  sentence of the< specification >(37 CFR 1.78)<. 

Examiner Note: 

        This paragraph must be preceded by heading paragraph 2.09. 
        4.  The second application must be filed by an inventor or 
inventors  named in the previously filed application. 

COPENDENCY 

        Copendency is defined in the clause which requires that the second 
 application must be filed before (a) the patenting, or (b) the 
abandonment  of, or (c) the termination of proceedings in the first 
application. Since provisional  applications become abandoned, by 
operation of law, 12 months after filing,  any nonprovisional application 
that claims the benefit of the provisional application  filing date must 
be filed not later than 12 months after the filing date of  the 
provisional application. 

        Use Form Paragraphs 2.09 and 2.11 to indicate copendency is 
required. 
W 2.11      Application Must Be Copending With Parent 

        An application in which the benefits of an earlier application are 
 desired must be copending with the prior application or with an 
application  similarly entitled to the benefit of the filing date of the 
prior application. 
Examiner Note: 

        This paragraph must be preceded by heading paragraph 2.09. 
        If the first application issues as a patent, it is sufficient for 
the  second application to be copending with it if the second application 
is filed  on the same date, or before the date that the patent issues on 
the first application. 
 Thus, the second application may be filed while the first is still 
pending  before the examiner, while it is in issue, or even (for 
applications filed  under 37 CFR 1.53 or 1.60) between the time the issue 
fee is paid and the patent  issues. 

        If the first application is abandoned, the second application must 
 be filed before the abandonment in order for it to be copending with the 
first.  The term "abandoned," refers to abandonment for failure to 
prosecute (MPEP # 711.02), express abandonment (MPEP # 711.01), and 
abandonment for failure to pay the issue fee (MPEP # 712). Provisional 
applications become abandoned, by operation of law, 12 months after filing 
(35 U.S.C. 111(b)(5)). A provisional application may become abandoned at 
an  earlier date for failure to comply with filing requirements such as 
failure  to submit the required fee in a timely manner (35 U.S.C. 
111(b)(3)(c)). If  an abandoned application is revived (MPEP # 711.03(c)) 
or a petition for late  payment of the issue fee (MPEP # 712) is granted 
by the Commissioner, it becomes  reinstated as a pending application and 
the preceding period of abandonment  has no effect. A provisional 
application that has been abandoned may be revived  so as to be pending 
for a period of no longer than 12 months from its filing  date 
(37 CFR 1.139). 

        The expression "termination of proceedings" includes the 
situations  when an application is abandoned or when a patent has been 
issued, and hence  this expression is the broadest of the three. 

        After a decision by the Court of Appeals for the Federal Circuit 
in  which the rejection of all claims is affirmed, proceedings are 
terminated on  the date of receipt of the Court's certified copy of the 
decision by the Patent  and Trademark Office, Continental Can Company, 
Inc. v. Schuyler, 168 USPQ 625 
(D.D.C. 1970). There are several other situations in which proceedings are 
 terminated as is explained in MPEP # 711.02(c). 

        When proceedings in an application are terminated, the application 
 is treated in the same manner as an abandoned application, and the term 
"abandoned  application" may be used broadly to include such applications. 

        The term "continuity" is used to express the relationship of 
copendency  of the same subject matter in two different applications of 
the same inventor.  The second application may be referred to as a 
continuing application when  the first application is not a provisional 
application. Continuing applications  include those applications which are 
called divisions, continuations, and continuations-in-part.  As far as the 
right under the statute is concerned the name used is immaterial,  the 
names being merely expressions developed for convenience. The statute is 
so worded that the first application may contain more than the second, or 
the  second application may contain more than the first, and in either 
case the second application is entitled  to the benefit of the filing date 
of the first as to the common subject matter. 
REFERENCE TO FIRST APPLICATION 

        The third requirement of the statute is that the second (or 
subsequent)  application must contain a specific reference to the first 
application. This  should appear as the first sentence of the 
specification following the title  preferably as a separate paragraph (37 
CFR 1.78(a)). When the nonprovisional  application is entitled under 35 
U.S.C. 120 to an earlier U.S. effective filing  date, a statement such as 
"This is a division (continuation, continuation-in-part)  of Application 
No. ---, filed ---'' should appear as the first sentence of  the 
description, except in the case of design applications where it should 
appear as set forth in MPEP w 1503.01.  When the nonprovisional 
application  is entitled to an earlier U.S. effective filing date of one 
or more provisional  applications under 35 U.S.C. 119(e), a statement such 
as "This application  claims the benefit of U.S. Provisional Application 
No. 60/---, filed ---, and  U.S. Provisional Application No. 60/ ---, 
filed ---.'' should appear as the  first sentence of the description. In 
addition, for an application which is  claiming the benefit under 
35 U.S.C. 120 of a prior application, which in turn claims the benefit of 
a  provisional application under 
35 U.S.C. 119(e), a suitable reference would read, "This application is a 
continuation  of U.S. Application No. 08/---, filed ---, now abandoned, 
which claims the  benefit of U.S. Provisional Application No. 60/---, 
filed ---.'' Status of  nonprovisional parent applications (whether it is 
patented or abandoned) should  also be included. If a parent application 
has become a patent, the expression,  ``Patent No. _ _ " should follow the 
filing date of the parent application.  If a parent application has become 
abandoned, the expression "abandoned" should  follow the filing date of 
the parent application. In the case of design applications,  it should 
appear as set forth in MPEP # 1503.01. In view of this requirement,  the 
right to rely on a prior application may be waived or refused by an 
applicant  by refraining from inserting a reference to the prior 
application in the specification  of the later one.  If the examiner is 
aware of the fact that an application  is a continuing application of a 
prior one, he or she should merely call attention  to this in an Office 
action by using the wording of Form Paragraphs 2.15 or  2.16. 

W 2.15      Reference to Parent Application, 35 U.S.C. 119(e) or  120 
Benefit 
        If applicant desires priority under 35 U.S.C. [1]  based upon a 
>previously  filed copending<* application, specific reference to the 
*>earlier filed< application  must be made in the instant application. 
This should appear as the first sentence  of the specification following 
the title, preferably as a separate paragraph.  *>The status< of 
nonprovisional parent application(s) (whether patented or  abandoned) 
should also be included. If a parent application has become a patent,  the 
expression "now patent no." should follow the filing date of the parent 
application. If a parent application has become abandoned, the expression 
"now  abandoned" should follow the filing date of the parent application. 
Examiner Note: 

        In bracket 1, insert "119(e)" or "120". 

W 2.16      Reference to Copending Application 

        It is noted that this application appears to claim subject matter 
disclosed  in prior copending application no. [1], filed [2]. A reference 
to the prior  application must be inserted as the first sentence of the 
specification of  this application if applicant intends to rely on the 
filing date of the prior  application under 35 U.S.C. 119(e) or **120>.<  See 
37 CFR 1.78(a).  Also, the present status of all nonprovisional 
applications  referenced should be included. 

        If the examiner is aware of a prior application he or she should 
note  it in an Office action, as indicated above, but should not require 
the applicant  to call attention to the prior application. 

        In 37 CFR 1.60 cases, applicant, in the amendment canceling the 
nonelected  claims, should include directions to enter "This is a division 
(continuation)  of application Serial No. .........., filed 
...................." as the first  sentence. Where the applicant has 
inadvertently failed to do this the wording  of Form Paragraph 2.17 should 
be used. Where the 37 CFR 1.60 case is otherwise  ready for allowance, the 
examiner should insert the quoted sentence by examiner's  amendment. 

        Applications are sometimes filed with a division, continuation, or 
 continuation-in-part oath or declaration, in which the oath or 
declaration  refers back to a prior application. If there is no reference 
in the specification,  in such cases, the examiner should merely call 
attention to this fact in his  Office action, utilizing the wording of 
Form Paragraph 2.17. 

W 2.17      Reference in ** Continuing Applications >Under 37 CFR 1.60<. 
        This application filed under 37 CFR 1.60 lacks the necessary 
reference  to the prior application.  A statement reading "This is a [1] 
of application  * no. [2], filed [3]" should be entered following the 
title of the invention  or as the first sentence of the specification. 
Also, the current status of  all non-provisional parent applications 
referenced should be included. 


Examiner Note: 

        1.  In bracket 1, insert either -division- or -continuation-. 
        2.  Use only for 37 CFR 1.60 applications. For File Wrapper 
Continuing  applications under 37 CFR 1.62, use form paragraph 2.28. 

        3.  Do not use if the prior application is a provisional 
application. 
        Where the applicant has inadvertently failed to make a reference 
to  the parent case in an application filed under 37 CFR 1.60 or 1.62 
which is  otherwise ready for issue, the examiner should insert the 
required reference  by examiner's amendment. 

        Sometimes a pending application is one of a series of applications 
 wherein the pending application is not copending with the first filed 
application  but is copending with an intermediate application entitled to 
the benefit of  the filing date of the first application. If applicant 
desires that the pending  application have the benefit of the filing date 
of the first filed application  he or she must, besides making reference 
in the specification to the intermediate  application, also make reference 
in the specification to the first application.  See Hovlid v. Asari, 
134 USPQ 162; 305 F. 2d 747 (9th Cir. 1962) and Sticker Industrial Supply 
Corp.  v. Blaw-Knox Co., 160 USPQ 177 (7th Cir. 1968). 

        There is no limit to the number of prior applications through 
which  a chain of copendency may be traced to obtain the benefit of the 
filing date  of the earliest of a chain of prior copending applications. 
See In re Henriksen,  158 USPQ 224; 853 O.G. 17 (CCPA 1968). 

        A second application which is not copending with the first 
application,  which includes those called substitutes in MPEP # 201.09, is 
not entitled to  the benefit of the filing date of the prior application 
and the bars to the  grant of a patent are computed from the filing date 
of the second application.  An applicant is not required to refer to such 
applications in the specification  of the later filed application, but is 
required to otherwise call the examiner's  attention to the earlier 
application if it or its contents or prosecution are  material as defined 
in 37 CFR 1.56(b). If the examiner is aware of such a prior  abandoned 
application he or she should make a reference to it in an Office  action 
in order that the record of the second application will show this fact. 
        If an applicant refers to a prior non-copending abandoned 
application  in the specification, the manner of referring to it should 
make it evident  that it was abandoned before filing the second. 

        For notations to be placed on the file wrapper in the case of 
continuing  applications see MPEP #202.02 and 
# 1302.09. 

        Effective June 8, 1995, Public Law 103-465 amended 35 U.S.C. 154 
to  change the term of a patent to 20 years measured from the filing date 
of the  earliest U.S. application for which benefit under 35 U.S.C. 
120, 121, or 365(c) is claimed.  The 20-year patent term applies to all 
utility  and plant patents issued on applications filed on or after June 
8, *>1995<. 
 As a result of the 20-year patent term, it is expected, in certain 
circumstances,  that applicants may cancel their claim to priority by 
amending the specification 
(no supplemental declaration is necessary) to delete any references to 
prior  applications.  Upon entry of the amendment, the examiner must 
**>return the  application to Application Division Customer Corrections, 
accompanied by a  completed Application Division Data Base Routing Slip, 
for correction of the  file wrapper label and for updating the PALM data 
base<.  See also MPEP # 707.05  and  # 1302.09. 

SAME INVENTOR OR INVENTORS 

        The statute also requires that the applications claiming benefit 
of  the earlier filing date under 
35 U.S.C. 119(e) or 120 be filed by an inventor or inventors named in the 
previously  filed application or provisional application. 

WHEN NOT ENTITLED TO BENEFIT OF 
FILING DATE 

        Where the first application (a nonprovisional application) is 
found  to be fatally defective because of insufficient disclosure to 
support allowable  claims, a second application filed as a 
"continuation-in-part" of the first  application to supply the deficiency 
is not entitled to the benefit of the  filing date of the first 
application; Hunt Co. v. Mallinckrodt Chemical Works,  83 USPQ 277, 281 
(2d Cir. 1949) and cases cited therein. 

        Any claim in a continuation-in-part application which is directed 
solely  to subject matter adequately disclosed under 35 U.S.C. 112 in the 
parent nonprovisional  application is entitled to the benefit of the 
filing date of the parent nonprovisional  application. However, if a claim 
in a continuation-in-part application recites  a feature which was not 
disclosed or adequately supported by a proper disclosure  under 35 U.S.C. 
112 in the parent nonprovisional application, but which was first 
introduced or adequately supported  in the continuation-in-part 
application such a claim is entitled only to the  filing date of the 
continuation-in-part application; >Transco Products, Inc.  v. Performance 
Contracting Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994);<  In re 
Von Lagenhoven, 458 F.2d 132,136, 173 USPQ 426, 429 (CCPA 1972) and 
Chromalloy  American Corp. v. Alloy Surfaces Co., Inc., 339 F. Supp. 859, 
874, 173 USPQ  295, 306 (D. Del. 1972). 

        By way of further illustration, if the claims of a 
continuation-in-part  application which are only entitled to the 
continuation-in-part filing date,  "read on" such published, publicly used 
or sold, or patented subject matter 
(e.g., as in a genus- species relationship) a rejection under 35 U.S.C. 
102  would be proper. Cases of interest in this regard are as follows:  In 
re Steenbock,  83 F.2d 912, 
30 USPQ 45 (CCPA 1936); In re Ruscetta, 255 F.2d 687, 118 USPQ 101 (CCPA 
1958);  In re Hafner, 410 F.2d 1403, 161 USPQ 783 (CCPA 1969); In re 
Lukach, 442 F.2d  967, 169 USPQ 795 (CCPA 1971); * Ex parte Hageman, 
179 USPQ 747 (Bd. App. 1971) >; Mendenhall v. Cedarapids Inc., 5 F.3d 
1557,  28 USPQ2d 1081 (Fed. Cir. 1993); and In re Chu, 66 F.3d 292, 36 
USPQ2d 1089 
(Fed. Cir. 1995)<. 


201.11(a) Filing of Continuation or Continuation-in-Part Application 
During Pendency of International Application Designating the United States 
[R-1] 

        It is possible to file a U.S. national application under 
35 U.S.C. 111>(a)< and 37 CFR 1.53>(b)(1)< during the pendency (prior to 
the  abandonment) of an international application which designates the 
United States  without completing the requirements for entering the 
national stage under 35  U.S.C. 371(c). The ability to take such action is 
based on provisions of the  United States patent law. 35 U.S.C. 363 
provides that "An international application  designating the United States 
shall have the effect from its international  filing date under article 11 
of the treaty, of a national application for patent  regularly filed in 
the Patent and Trademark Office...". 35 U.S.C. 371(d) indicates  that 
failure to timely comply with the requirements of 35 U.S.C. 371(c) "shall 
be regarded as abandonment by the parties thereof...". It is therefore 
clear  that an international application which designates the United 
States has the  effect of a pending U.S. application from the 
international application filing  date until its abandonment as to the 
United States. The first sentence of 35  U.S.C. 365(c) specifically 
provides that "In accordance with the conditions  and requirements of 
section 120 of this title,... a national application shall  be entitled to 
the benefit of the filing date of a prior international application 
designating the United States." The condition of 35 U.S.C. 120 relating to 
 the time of filing requires the later application to be "filed before the 
patenting  or abandonment of or termination of proceedings on the first 
application...".  The filing of a continuation or continuation-in-part 
application of an international  application may be useful to patent 
applicants where the oath or declaration  required by 35 U.S.C. 371(c)(4) 
cannot be filed as required by 37 CFR 1.494(h)  or 1.495. An applicant 
filing an application under 35 U.S.C. 111>(a)< and 37  CFR 1.53>(b)(1)< 
may obtain additional time to file the oath or declaration  under 37 CFR 
1.53(d)>(1)< and 1.136(a). 

        A continuing application under 35 U.S.C. 365(c) and 120 must be 
filed  before the abandonment or patenting of the prior >nonprovisional< 
application. 
 See 37 CFR 1.494 and 1.495. 


201.12      Assignment Carries Title [R-1] 


        Assignment of an original application carries title to any 
divisional,  continuation, or reissue application stemming from the 
original application  and filed after the date of assignment. See MPEP # 
306. >When the assignment  is in a provisional application, see MPEP 
w 306.01.< 


201.13      Right of Priority of Foreign Application [R-2] 


        Under certain conditions and on fulfilling certain requirements, 
an  application for patent filed in the United States may be entitled to 
the benefit  of the filing date of a prior application filed in a foreign 
country, to overcome  an intervening reference or for similar purposes. 
The conditions are specified  in 35 U.S.C. 119(a)-(d). 

35 U.S.C. 119.          Benefit of earlier filing date **; right *>of< 
priority. 
        (a)   An application for patent for an invention filed in this 
country  by any person who has, or whose legal representatives or assigns 
have, previously  regularly filed an application for a patent for the same 
invention in a foreign  country which affords similar privileges in the 
case of applications filed  in the United States or to citizens of the 
United States, shall have the same effect as the same application would 
have if filed  in this country on the date on which the application for 
patent for the same  invention was first filed in such foreign country, if 
the application in this  country is filed within twelve months from the 
earliest date on which such  foreign application was filed; but no patent 
shall be granted on any application  for patent for an invention which had 
been patented or described in a printed  publication in any country more 
than one year before the date of the actual  filing of the application in 
this country, or which had been in public use  or on sale in this country 
more than one year prior to such filing. 
        (b)   No application for patent shall be entitled to this right of 
 priority unless a claim therefor and a certified copy of the original 
foreign  application, specification, and drawings upon which it is based 
are filed in  the Patent and Trademark Office before the patent is 
granted, or at such time  during the pendency of the application as 
required by the Commissioner not  earlier than six months after the filing 
of the application in this country. 
 Such certification shall be made by the patent office of the foreign 
country  in which filed and show the date of the application and of the 
filing of the  specification and other papers.  The Commissioner may 
require a translation  of the papers filed if not in the English language 
and such other information  as he deems necessary. 

        (c)   In like manner and subject to the same conditions and 
requirements,  the right provided in this section may be based upon a 
subsequent regularly  filed application in the same foreign country 
instead of the first filed foreign  application, provided that any foreign 
application filed prior to such subsequent  application has been 
withdrawn, abandoned, or otherwise disposed of, without  having been laid 
open to public inspection and without leaving any rights outstanding,  and 
has not served, nor thereafter shall serve, as a basis for claiming a 
right  of priority. 

        (d)   Applications for inventors' certificates filed in a foreign 
country  in which applicants have a right to apply, at their discretion, 
either for  a patent or for an inventor's certificate shall be treated in 
this country  in the same manner and have the same effect for purpose of 
the right of priority  under this section as applications for patents, 
subject to the same conditions  and requirements of this section as apply 
to applications for patents, provided  such applicants are entitled to the 
benefits of the Stockholm Revision of the  Paris Convention at the time of 
such filing. 

 *** 

37 CFR 1.55   Claim for foreign priority. 

        (a)   An applicant in a nonprovisional application may claim the 
benefit  of the filing date of one or more prior foreign applications 
under the conditions  specified in 35 U.S.C. 119(a)-(d) and 172.  The 
claim to priority need be in  no special form and may be made by the 
attorney or agent if the foreign application  is referred to in the oath 
or declaration as required by # 1.63.  The claim  for priority and the 
certified copy of the foreign application specified in  35 U.S.C. 119(b) 
must be filed in the case of an interference (# 1.630), when  necessary to 
overcome the date of a reference relied upon by the examiner,  when 
specifically required by the examiner, and in all other cases, before  the 
patent is granted.  If the claim for priority or the certified copy of 
the foreign application is filed after the date the issue fee is paid, it 
must  be accompanied by a petition requesting entry and by the fee set 
forth in #  1.17(i).  If the certified copy filed is not in the English 
language, a translation  need not be filed except in the case of 
interference; or when necessary to  overcome the date of a reference 
relied upon by the examiner; or when specifically  required by the 
examiner, in which event an English language translation must  be filed 
together with a statement that the translation of the certified copy  is 
accurate.  The statement must be a verified statement if made by a person 
not registered to practice before the Patent and Trademark Office. 
***** 

        The period of 12 months specified in this section is 6 months in 
the  case of designs, 35 U.S.C. 172. See MPEP # 1504.10. 

        The conditions, for benefit of the filing date of a prior 
application  filed in a foreign country, may be listed as follows: 

        1.  The foreign application must be one filed in "a foreign 
country  which affords similar privileges in the case of applications 
filed in the United  States or to citizens of the United States." 

        2.  The foreign application must have been filed by the same 
applicant 
(inventor) as the applicant in the United States, or by his or her legal 
representatives  or assigns. 

        3.  The application, or its earliest parent United States 
application  under 35 U.S.C. 120, must have been filed within 12 months 
from the date of  the earliest foreign filing in a "recognized" country as 
explained below. 
        4.  The foreign application must be for the same invention as the 
application  in the United States. 

        5.  In the case where the basis of the claim is an application for 
 an inventor's certificate, the requirements of 37 CFR 1.55(*>b<) must 
also  be met. 

        Applicant may be informed of possible priority rights under 35 
U.S.C.  119(a)-(d) by using the wording of Form Paragraph 2.18. 

W 2.18      Right of Priority Under 35 U.S.C. 119(a)-(d) 

        Applicant is advised of possible benefits under 35 U.S.C. 119 
(a)-(d),  wherein an application for patent filed in the United States may 
be entitled  to the benefit of the filing date of a prior application 
filed in a foreign  country. 

RECOGNIZED COUNTRIES OF 
 FOREIGN FILING 

        The right to rely on a foreign application is known as the right 
of  priority in international patent law and this phrase has been adopted 
in the  U.S. statute.  The right of priority originated in a multilateral 
treaty of  1883, to which the United States adhered in 1887, known as the 
Paris Convention  for the Protection of Industrial 
Property (Paris Convention). The treaty is administered by the World 
Intellectual  Property Organization (WIPO) at Geneva, Switzerland. This 
treaty has been revised  several times, the latest revision in effect 
being written in Stockholm in  July 1967 (copy at Appendix P of this 
Manual). Articles 13-30 of the Stockholm  Revision became effective on 
September 5, 1970. Articles 1-12 of the Stockholm  Revision became 
effective on August 25, 1973. One of the many provisions of  the treaty 
requires each of the adhering countries to accord the right of priority 
to the nationals of the other countries and the first United States 
statute  relating to this subject was enacted to carry out this 
obligation. There is  another treaty between the United States and some 
Latin American countries  which also provides for the right of priority. A 
foreign country may also provide  for this right by reciprocal legislation. 

        **>The United States and Taiwan signed an agreement on priority 
for  patent and trademark applications on April 10, 1996, and< Taiwan ** 
is *>now<  a country for which the right of priority is recognized in the 
United States. 
 **>Applicants seeking patent protection in the United States may avail 
themselves  of the right of priority based on patent applications filed in 
Taiwan, on or  after April 10, 1996.< 

        NOTE: Following is a list of countries with respect to which the 
right  of priority referred to in 35 U.S.C. 119(a)-(d) has been 
recognized. The letter  "I" following the name of the country indicates 
that the basis for priority  in the case of these countries is the Paris 
Convention for the Protection of  Industrial Property (613 O.G. 23, 53 
Stat. 1748).  The letter "P" after the  name of the country indicates the 
basis for priority of these countries is  the Inter-American Convention 
relating to Inventions, Patents, Designs, and  Industrial Models, signed 
at Buenos Aires, August 20, 1910 (207 O.G. 935, 38  Stat. 1811).  The 
letter "L" following the name of the country indicates the  basis for 
priority is reciprocal legislation in the particular country. 
Algeria (I), 
Argentina (I), 
Armenia (I), 
Australia (I), 
Austria (I), 
Bahamas (I), 
Bangladesh (I), 
Barbados (I), 
Belarus (I), 
Belgium (I), 
Benin (I), 
Bolivia (I,P), 
Bosnia and Herzegovina (I), 
Brazil (I, P), 
Bulgaria, (I), 
Burkina Faso (I), 
Burundi (I), 
Cameroon (I), 
Canada (I), 
Central African Republic (I), 
Chad  (I), 
Chile (I), 
China  (I), 
Congo (I), 
Costa Rica (P), 
Cote d'Ivoire (I), 
Croatia (I), 
Cuba (I, P), 
Cyprus (I), 
Czech Republic (I), 
Democratic People's Republic of Korea (I), 
Denmark (I), 
Dominican Republic (I,P), 
Ecuador (P), 
Egypt (I), 
El Salvador (I), 
Estonia (I), 
Finland (I), 
France (I), 
Gabon (I), 
Gambia (I), 
Georgia (I), 
Germany (I), 
Ghana (I), 
Greece (I), 
Guinea (I), 
Guinea -Bissau (I), 
Guatemala (P), 
Guyana (I), 
Haiti (I,P), 
Holy See (I), 
Honduras (I,P), 
Hungary (I), 
Iceland (I),  Indonesia (I), 
Iran (Islamic Republic of) (I), 
Iraq (I), 
Ireland (I), 
Israel (I), 
 Italy (I), 
Japan (I), 
Jordan (I), 
Kazakhstan (I), 
Kenya (I), 
Korea, Republic of (I), 
Kyrgyzstan (I), 
Latvia (I), 
Lebanon (I), 
Lesotho (I), 
Liberia (I), 
Libya (I), 
Liechtenstein (I), 
Lithuania (I), 
Luxembourg (I), 
Madagascar (I), 
Malawi (I), 
Malaysia (I), 
Mali (I), 
Malta (I), 
Mauritania (I), 
Mauritius (I), 
Mexico (I), 
Moldova, Republic of (I), 
Monaco (I), 
Mongolia (I), 
Morocco (I), 
Netherlands (I), 
New Zealand, (I), 
Nicaragua (P), 
Niger (I), 
Nigeria (I), 
Norway (I), 
Paraguay (I,P), 
Peru (I), 
Philippines (I), 
Poland (I), 
Portugal (I), 
Romania (I), 
Russian Federation (I), 
Rwanda (I), 
Saint Kitts and Nevis (I), 
Saint Lucia (I), 
San Marino (I), 
Senegal, Republic of (I), 
Singapore (I), 
Slovakia (I), 
Slovenia (I), 
South Africa (I), 
Spain (I), 
Sri Lanka (I), 
Sudan (I), 
Suriname (I), 
Swaziland (I), 
Sweden (I), 
Switzerland (I), 
Syria (I), 
>Taiwan (L)< 
Tajikistan (I), 
Tanzania, United Republic of (I), 
The former Yugoslav Republic of Macedonia (I), 
Togo (I), 
Trinidad and Tobago (I), 
Tunisia (I), 
Turkey (I), 
Turkmenistan (I), 
Uganda (I), 
Ukraine (I), 
United Kingdom (I), 
Uruguay (I, P), 
Uzbekistan (I), 
Viet Nam (I), 
Yugoslavia (I), 
Zaire (I), 
Zambia (I), 
Zimbabwe (I). 

        Twelve African Countries have joined together to create a common 
patent  office and to promulgate a common law for the protection of 
inventions, trademarks,  and designs. The common patent office is called 
"Organisation Africain de la  Propriete Intellectuelle" (OAPI) and is 
located in Yaounde, Cameroon.  The  English title is "African Intellectual 
Property Organization." The member countries  using the OAPI Patent Office 
are Benin, Cameroon, Central African Republic,  Chad, Congo, Gabon, Cote 
d'Ivoire, Mauritania, Niger, Senegal, Re-public of  Togo, and Burkina 
Faso. Since all these countries adhere to the Paris Convention  for the 
Protection of  Industrial Property, priority under 35 U.S.C. 119(a)-(d) 
may be claimed of  an application filed in the OAPI Patent Office. 

        If any applicant asserts the benefit of the filing date of an 
application  filed in a country not on this list, the examiner should 
inquire of the Office  of Legislation and International Affairs to 
determine if there has been any  change in the status of that country.  It 
should be noted that the right is  based on the country of the foreign 
filing and not upon the citizenship of  the applicant. 

RIGHT OF PRIORITY (35 U.S.C. 119(a)-(d) AND 365) BASED ON A FOREIGN 
APPLICATION  FILED UNDER A BILATERAL OR 
MULTILATERAL TREATY 

        Under Article 4A of the Paris Convention for the Protection of 
Industrial  Property a right of priority may be based either on an 
application filed under  the national law of a foreign country adhering to 
the Convention or on a foreign  application filed under a bilateral or 
multi- lateral treaty concluded between  two or more such countries. 
Examples of such treaties are The Hague Agreement  Concerning the 
International Deposit of Industrial Designs, the Benelux Designs 
Convention, and the Libreville Agreement of September 13, 1962, relating 
to  the creation of an African Intellectual Property Office.  The 
Convention on  the Grant of European Patents and the Patent Cooperation 
Treaty (MPEP # 201.13(b))  are further examples of such treaties. 

The Priority Claim 

        In claiming priority of a foreign application previously filed 
under  such a treaty, certain information must be supplied to the Patent 
and Trademark  Office. In addition to the application number and the date 
of the filing of  the application, the following information is required: 
(1) the name of the  treaty under which the application was filed and (2) 
the name and location  of the national or intergovernmental authority 
which received such application. 
Certification of the Priority Papers 

        Section 119(b) of Title 35 of the United States Code requires the 
applicant  to furnish a certified copy of priority papers. Certification 
by the authority  empowered under a bilateral or multilateral treaty to 
receive applications  which give rise to a right of priority under Article 
4A(2) of the Paris Convention  will be deemed to satisfy the certification 
requirement. 

Identity of Inventors 

        The inventors of the U.S. nonprovisional application and of the 
foreign  application must be the same, for a right of priority does not 
exist in the  case of an application of inventor A in the foreign country 
and inventor B  in the United States, even though the two applications may 
be owned by the  same party. However, the application in the foreign 
country may have been filed  by the assignee, or by the legal 
representative or agent of the inventor which  is permitted in some 
foreign countries, rather than by the inventor himself,  but in such cases 
the name of the inventor is usually given in the foreign  application on a 
paper filed therein. An indication of the identity of inventors  made in 
the oath or declaration accompanying the U.S. nonprovisional application 
by identifying the foreign application and stating that the foreign 
application  had been filed by the assignee, or the legal representative, 
or agent, of the  inventor, or on behalf of the inventor, as the case may 
be, is acceptable.  Joint inventors A and B in a nonprovisional 
application filed in the United  States Patent and Trademark Office may 
properly claim the benefit of an application  filed in a foreign country 
by A and another application filed in a foreign  country by B, i.e., A and 
B may each claim the benefit of their foreign filed  applications. 

Time for Filing U.S. Nonprovisional Application 

        The United States nonprovisional application, or its earliest 
parent  nonprovisional application under 
35 U.S.C. 120, must have been filed within 12 months of the earliest 
foreign  filing. In computing this 12 months, the first day is not 
counted; thus, if  an application was filed in Canada on January 3, 1983, 
the U.S. 
nonprovisional application may be filed on January 3, 1984. The Convention 
 specifies in Article 4C(2) that "the day of filing is not counted in this 
period." 
(This is the usual method of computing periods, for example a 6-month 
period  for reply to an Office action dated January 2 does not expire on 
July 1, but  the reply may be made on July 2.) If the last day of the 12 
months is a Saturday,  Sunday, or Federal holiday within the District of 
Columbia, the U.S. nonprovisional  application is in time if filed on the 
next succeeding business day; thus,  if the foreign application was filed 
on September 4, 1981, the 
U.S. nonprovisional application is in time if filed on September 7, 1982, 
since  September 4, 1982, was a Saturday and September 5, 1982 was a 
Sunday and September  6, 1982 was a Federal holiday. Since January 1, 
1953, the Office has not received  applications on Saturdays and, in view 
of 35 U.S.C. 21, and the Convention  which provides "if the last day of 
the period is an official holiday, or a  day on which the Office is not 
open for the filing of applications in the country  where protection is 
claimed, the period shall be extended until the first following  working 
day" (Article 4C3), if the 12 months expires on Saturday, the U.S. 
application may be filed on the following Monday. Note Ex parte Olah and 
Kuhn,  131 USPQ 41 (Bd. App. 1960). 

Filing of Papers During Unscheduled Closings of the 
Patent and Trademark Office 

        When the Patent and Trademark Office is officially closed by 
Executive  Order of the President or by the Office of Personnel Management 
for an entire  day because of some unscheduled event, such as adverse 
weather conditions,  the Patent and Trademark Office will consider that 
day as a "federal holiday  within the District of Columbia" under 35 
U.S.C. 21. Any action or fee due  that day will be considered timely for 
the purposes of 
35 U.S.C. 119, 133, and 151, if the action is taken or fee paid, on the 
next  succeeding business day on which the Patent and Trademark Office is 
open. 
        When the Patent and Trademark Office is open for business during 
any  part of a business day between 8:30 a.m. and 5:00 p.m., papers are 
due on that  day even though the Office may be officially closed for some 
period of time  during the business day because of an unscheduled event. 
The procedures of  37 CFR 1.10 may be used for filing applications. 

        Information regarding whether or not the Office is officially 
closed  on any particular day may be obtained by calling (703) 305-4357. 

First Foreign Application 

        The 12 months is from earliest foreign filing except as provided 
in  35 U.S.C 119(c). If an inventor has filed an application in France on 
January  4, 1982, and an identical application in the United Kingdom on 
March 3, 1982,  and then files in the United States on February 2, 1983, 
the inventor is not  entitled to the right of priority at all; the 
inventor would not be entitled  to the benefit of the date of the French 
application since this application  was filed more than twelve months 
before the U.S. application, and the inventor  would not be entitled to 
the benefit of the date of the United Kingdom application  since this 
application is not the first one filed. Ahrens v. Gray, 1931 C.D.  9; 402 
O.G. 261 (Bd. App. 1929).  If the first foreign application was filed  in 
a country which is not recognized with respect to the right of priority, 
it is disregarded for this purpose. 

        Public Law 87-333 modified 35 U.S.C. 119(c) to extend the right of 
 priority to "subsequent" foreign applications if one earlier filed had 
been  withdrawn, abandoned, or otherwise disposed of, under certain 
conditions. 
        The United Kingdom and a few other countries have a system of 
"post-dating"  whereby the filing date of an application is changed to a 
later date. This  "post-dating" of the filing date of the application does 
not affect the status  of the application with respect to the right of 
priority; if the original filing  date is more than one year prior to the 
U.S. filing no right of priority can  be based upon the application. See 
In re Clamp, 151 USPQ 423 (Comm'r Pat. 1966). 
        If an applicant has filed two foreign applications in recognized 
countries,  one outside the year and one within the year, and the later 
application discloses  additional subject matter, a claim in the U.S. 
application specifically limited  to the additional disclosure would be 
entitled to the date of the second foreign  application since this would 
be the first foreign application for that subject  matter. 

EFFECT OF RIGHT OF PRIORITY 

        The right to rely on the foreign filing extends to overcoming the 
effects  of intervening references or uses, but there are certain 
restrictions. For  example, the 1 year bar of 35 U.S.C. 102(b) dates from 
the U.S. filing date  and not from the foreign filing date; thus if an 
invention was described in  a printed publication, or was in public use in 
this country, in November 1981,  a foreign application filed in January 
1982, and a U.S. application filed in  December 1982, granting a patent on 
the U.S. application is barred by the printed  publication or public use 
occurring more than one year prior to its actual  filing in the U.S. 

        The right of priority can be based upon an application in a 
foreign  country for a so-called "utility model," called Gebrauchsmuster 
in Germany. 




201.13(a) Right of Priority Based Upon an Application for an Inventor's 
Certificate [R-1] 

        ** 

37 CFR 1.55. Claim for foreign priority 

 ***** 

        ** >(b)       An applicant in a nonprovisional application may 
under  certain circumstances claim priority on the basis of one or more 
applications  for an inventor's certificate in a country granting both 
inventor's certificates  and patents.  To claim the right of priority on 
the basis of an application  for an inventor's certificate in such a 
country under 35 U.S.C. 119(d), the  applicant when submitting a claim for 
such right as specified in paragraph 
(a) of this section, shall include an affidavit or declaration. The 
affidavit  or declaration must include a specific statement that, upon an 
investigation,  he or she is satisfied that to the best of his or her 
knowledge, the applicant,  when filing the application for the inventor's 
certificate, had the option  to file an application for either a patent or 
an inventor's certificate as  to the subject matter of the identified 
claim or claims forming the basis for  the claim of priority.< 

        An inventor's certificate may form the basis for rights of 
priority  under 35 U.S.C. 119>(d)< only when the country in which they are 
filed gives  to applicants, at their discretion, the right to apply, on 
the same invention,  either for a patent or for an inventor's certificate. 
The affidavit or declaration  specified under 37 CFR 1.55(b) is only 
required for the purpose of ascertaining  whether, in the country where 
the application for an inventor's certificate  originated, this option 
generally existed for applicants with respect to the  particular subject 
matter of the invention involved. The requirements of 35 U.S.C. 119>(d)< 
and 37 CFR 1.55(b) are not intended, however, to probe into  the 
eligibility of the particular applicant to exercise the option in the 
particular  priority application involved. 

        It is recognized that certain countries that grant inventors' 
certificates  also provide by law that their own nationals who are 
employed in state enterprises  may only receive inventors' certificates 
and not patents on inventions made  in connection with their employment. 
This will not impair their right to be  granted priority in the United 
States based on the filing of the inventor's  certificate. 

        Accordingly, affidavits or declarations filed pursuant to 37 CFR 
1.55(b)  need only show that in the country in which the original 
inventor's certificate  was filed, applicants generally have the right to 
apply at their own option  either for a patent or an inventor's 
certificate as to the particular subject  matter of the invention. 

        Priority rights on the basis of an inventor's certificate 
application  will be honored only if the applicant had the option or 
discretion to file  for either an inventor's certificate or a patent on 
his or her invention in  his or her home country. Certain countries which 
grant both patents and inventor's  certificates issue only inventor's 
certificates on certain subject matter,  generally pharmaceuticals, 
foodstuffs, and cosmetics. 

        To ensure compliance with the treaty and statute, 
37 CFR 1.55(b) provides that at the time of claiming the benefit of 
priority  for an inventor's certificate, the applicant or his or her 
attorney must submit  an affidavit or declaration stating that the 
applicant when filing his or her  application for the inventor's 
certificate had the option either to file for  a patent or an inventor's 
certificate as to the subject matter forming the  basis for the claim of 
priority. 

Effective Date 

        37 CFR 1.55(b) >originally< went into effect on August 25, 1973, 
which  is the date on which the international treaty entered into force 
with respect  to the United States. The rights of priority based on an 
earlier filed inventor's  certificate shall be granted only with respect 
to U.S. patent applications  where both the earlier application and the 
U.S. patent application were filed  in their respective countries 
following this effective date. 


201.13(b) Right of Priority Based Upon an International Application Filed 
Under the Patent Cooperation Treaty [R-2] 

35 U.S.C. 365.      Right of priority; benefit of the filing date of a 
prior  application 

        (a)   In accordance with the conditions and requirements of 
subsections 
(a) through (d) of section 119 of this title, a national application shall 
 be entitled to the right of priority based on a prior filed international 
application  which designated at least one country other than the United 
States. 
        (b)   In accordance with the conditions and requirements of 
section  119(a) of this title and the treaty and the Regulations, an 
international application  designating the United States shall be entitled 
to the right of priority based  on a prior foreign application, or a prior 
international application designating  at least one country other than the 
United States. 

        (c)   In accordance with the conditions and requirements of 
section  120 of this title, an international application designating the 
United  States shall be entitled to the benefit of the filing date of a 
prior national  application or a prior international application 
designating the United States,  and a national application shall be 
entitled to the benefit of the filing date  of a prior international 
application designating the United States. If any  claim for the benefit 
of an earlier filing date is based on a prior international  application 
which designated but did not originate in the United States, the 
Commissioner may require the filing in the Patent and Trademark Office of 
a  certified copy of such application together with a translation thereof 
into  the English language, if it was filed in another language. 

        35 U.S.C. 365(a) provides that a national application shall be 
entitled  to the right of priority based on a prior international 
application of whatever  origin, which designated any country other than, 
or in addition to, the United  States. Of course, the conditions 
prescribed by section 119(a)-(d) of title  35 U.S.C., which deals with the 
right of priority based on earlier filed foreign  applications, must be 
complied with. 

        35 U.S.C. 365(b) provides that an international application 
designating  the United States shall be entitled to the right of priority 
of a prior foreign  application which may either be another international 
application or a regularly  filed foreign application. The international 
application upon which the claim  of priority is based can either have 
been filed in the United States or a foreign  country; however, it must 
contain the designation of at least one country other  than, or in 
addition to, the United States. 

        As far as the actual place of filing is concerned, for the purpose 
 of 35 U.S.C. 365 (a) and (b) and 35 U.S.C. 119(a)-(d), an international 
application  designating a country is considered to be a national 
application regularly  filed in that country on the international filing 
date irrespective of whether  it was physically filed in that country, in 
another country, or in an intergovernmental  organization acting as 
Receiving Office for a country. 

        An international application which seeks to establish the right of 
 priority will have to comply with the conditions and requirements as 
prescribed  by the Treaty and the PCT Regulations, in order to avoid 
rejection of the claim  to the right of priority. Reference is especially 
made to the requirement of  making a declaration of the claim of priority 
at the time of filing of the  international application (Article 8(1) of 
the Treaty and Rule 4.10 of the  PCT Regulations) and the requirement of 
either filing a certified copy of the  priority document with the 
international application, or submitting a certified  copy of the priority 
document to the International Bureau at a certain time 
(Rule 17 of the PCT Regulations). The submission of the priority document 
to  the International Bureau is only required in those instances where 
priority  is based on an earlier filed foreign national application. 

        Thus, if the priority document is an earlier national application 
and  did not accompany the international application when filed with the 
Receiving  Office, an applicant must submit such document to the 
International Bureau  not later than 16 months after the priority date. 
However, should an applicant  request early processing of his 
international application in accordance with  Article 23(2) of the Treaty, 
the priority document would have to be submitted  to the International 
Bureau at that time (Rule 17.1(a) of the PCT Regulations). 
 If priority is based on an earlier international application, a copy does 
 not have to be filed, either with the Receiving Office or the 
International  Bureau, since the latter is already in possession of such 
international application. 
        The formal requirements for obtaining the right of priority under 
35  U.S.C. 365 differ somewhat from those imposed by 35 U.S.C. 119(a)-(d), 
although  the 1-year bar of 35 U.S.C. 102(b), as required by the last 
clause of section  119(a) is the same. However, the substantive right of 
priority is the same,  in that it is derived from Article 4 of the Paris 
Convention for the Protection  of Industrial Property (Article 8(2) of the 
Treaty). 

        35 U.S.C. 365(c) recognizes the benefit of the filing date of an 
earlier  application under 35 U.S.C. 120.  Any international application 
designating  the United States, whether filed with a Receiving Office in 
this country or  abroad, and even though other countries may have also 
been designated, has  the effect of a regular national application in the 
United States, as of the  international filing date. As such, any later 
filed national application, or  international application designating the 
United States, may claim the benefit  of the filing date of an earlier 
international application designating the  United States, if the 
requirements and conditions of section 120 of title 35 U.S.C. are 
fulfilled. Under the same circumstances, the benefit of the earlier 
filing date of a national application may be obtained in a later filed 
international  application designating the United States. In those 
instances, where the applicant  relies on an international application 
designating, but not originating in,  the United States the Commissioner 
may require submission of a copy of such  application together with an 
English translation, since in some instances,  and for various 
reasons, a copy of that international application or its translation may 
not  otherwise be filed in the Patent and Trademark Office. 

PCT Rule 17   The Priority Document 

17.1    Obligation to Submit Copy of Earlier National Application 
        (a)   Where the priority of an earlier national application is 
claimed  under Article 8 in the international application, a copy of the 
said national  application, certified by the authority with which it was 
filed ("the priority  document"), shall, unless already filed with the 
receiving Office, together  with the international application, be 
submitted by the applicant to the International  Bureau or to the 
receiving Office not later than 16 months after the priority  date or, in 
the case referred to in Article 23(2), not later than at the time  the 
processing or examination is requested. 

        (b)   Where the priority document is issued by the receiving 
Office,  the applicant may, instead of submitting the priority document, 
request the  receiving Office to transmit the priority document to the 
International Bureau.  Such request shall be made not later than the 
expiration of the applicable  time limit referred to under paragraph (a) 
and may be subjected by the receiving  Office to the payment of a fee. 

        (c)   If the requirements of neither of the two preceding 
paragraphs  are complied with, any designated State may disregard the 
priority claim. 
17.2    Availability of Copies 

        (a)   The International Bureau shall, at the specific request of 
the  designated Office, promptly but not before the expiration of the time 
limit  fixed in Rule 17.1(a), furnish a copy of the priority document to 
that Office.  No such Office shall ask the applicant himself to furnish it 
with a copy, except  where it requires the furnishing of a copy of the 
priority document together  with a certified translation thereof.  The 
applicant shall not be required  to furnish a certified translation to the 
designated Office before the expiration  of the applicable time limit 
under Article 22. 

        (b)   The International Bureau shall not make copies of the 
priority  document available to the public prior to the international 
publication of  the international application. 

        >(c)    Where the international application has been published 
under  Article 21, the International Bureau shall furnish a copy of the 
priority document  to any person upon request and subject to reimbursement 
of the cost unless,  prior to that publication: 

        (i)   the international application was withdrawn, 

        (ii)    the relevant priority claim was withdrawn or was 
considered,  under Rule 4.10(b), not to have been made, or 

        (iii)     the relevant declaration under Article 8(1) was 
cancelled  under Rule 4.10(d).< 

*>(d)<      Paragraphs (a) and (b) shall apply also to any earlier 
international  application whose priority is claimed in the subsequent 
international application. 
37 CFR 1.451.       The priority claim and priority document in an 
international  application. 

        (a)   The claim for priority must be made on the Request (PCT Rule 
 4.10) in a manner complying with Sections 110 and 201 of the 
Administrative  Instructions. 

        (b)   Whenever the priority of an earlier United States national 
application  is claimed in an international application, the applicant may 
request in a  letter of transmittal accompanying the international 
application upon filing  with the United States Receiving Office or in a 
separate letter filed in the  Receiving Office not later than 16 months 
after the priority date, that the  Patent and Trademark Office prepare a 
certified copy of the national application  for transmittal to the 
International Bureau (PCT Article 8 and PCT Rule 17).  The fee for 
preparing a certified copy is stated in # 1.19(b)(1). 

        (c)   If a certified copy of the priority document is not 
submitted  together with the international application on filing, or, if 
the priority  application was filed in the United States and a request and 
appropriate payment  for preparation of such a certified copy do not 
accompany the international  application on filing or are not filed within 
16 months of the priority date,  the certified copy of the priority 
document must be furnished by the applicant  to the International Bureau 
or to the United States Receiving Office within  the time limit specified 
in PCT Rule 17.1(a). 


201.14      Right of Priority, Formal Requirements [R-2] 


        Under the statute (35 U.S.C. 119(b)), an applicant who wishes to 
secure  the right of priority must comply with certain formal requirements 
within a  time specified. If these requirements are not complied with the 
right of priority  is lost and cannot thereafter be asserted. 

        The requirements of the statute are (a) that the applicant must 
file  a claim for the right and (b) he or she must also file a certified 
copy of  the original foreign application; these papers must be filed 
within a certain  time limit.  The maximum time limit specified in the 
statute is that the >claim  for priority and the priority< papers must be 
filed before the patent is granted,  but the statute gives the 
Commissioner authority to set this time limit at  an earlier time during 
the pendency of the application. >Where a claim for  priority under 35 
U.S.C. 119(b) has not been made in the parent application,  the claim for 
priority may be made in a FWC application filed under 37 CFR  1.62, 
provided the parent application has been filed within 12 months from  the 
date of the earliest foreign filing.< If the required papers are not filed 
 within the time limit set the right of priority is lost.  A reissue was 
granted  in Brenner v. State of Israel, 862 O.G. 661; 
158 USPQ 584 (D.C. Cir. 1968), where the only ground urged was failure to 
file  a certified copy of the original foreign application to obtain the 
right of  foreign priority under 35 U.S.C. 119 before the patent was 
granted. 
        It should be particularly noted that these papers must be filed in 
 all cases even though they may not be necessary during the pendency of 
the  application to overcome the date of any reference. The statute also 
gives the  Commissioner authority to require a translation of the foreign 
documents if  not in the English language and 
such other information as the Commissioner may deem necessary. 

        37 CFR 1.63 requires that the oath or declaration shall state in 
any  application in which a claim for foreign priority is made pursuant to 
37 CFR  1.55 must identify the foreign application for patent or 
inventors' certificate  on which 


priority is claimed, and any foreign applications having a filing date 
before  that of the application on which priority is claimed, by 
specifying the application  number, country, day, month, and year of its 
filing. 

        The requirements for recitation of foreign applications in the 
oath  or declaration, while serving other purposes as well, are used in 
connection  with the right of priority. 


201.14(a) Right of Priority, Time for Filing Papers [R-1] 


        The time for filing the priority papers required by the statute is 
 specified in 37 CFR 1.55(a). 

37 CFR 1.55   Claim for foreign priority. 

        ** 

        >(a)    An applicant in a nonprovisional application may claim the 
 benefit of the filing date of one or more prior foreign applications 
under  the conditions specified in 35 U.S.C. 119(a)-(d) and 172.  The 
claim to priority  need be in no special form and may be made by the 
attorney or agent if the  foreign application is referred to in the oath 
or declaration as required by  # 1.63.  The claim for priority and the 
certified copy of the foreign application  specified in 35 U.S.C. 119(b) 
must be filed in the case of an interference  # (1.630), when necessary to 
overcome the date of a reference relied upon by  the examiner, when 
specifically required by the examiner, and in all other  cases, before the 
patent is granted.  If the claim for priority or the certified  copy of 
the foreign application is filed after the date the issue fee is paid,  it 
must be accompanied by a petition requesting entry and by the fee set 
forth  in # 1.17(i).  If the certified copy filed is not in the English 
language,  a translation need not be filed except in the case of 
interference; or when  necessary to overcome the date of a reference 
relied upon by the examiner;  or when specifically required by the 
examiner, in which event an English language  translation must be filed 
together with a statement that the translation of  the certified copy is 
accurate.  The statement must be a verified statement  if made by a person 
not registered to practice before the Patent and Trademark  Office.< 

***** 

        It should first be noted that the Commissioner has by rule 
specified  an earlier ultimate date than the date the patent is granted 
for filing a claim  and a certified copy.  The latest time at which the 
papers may be filed without  petition is the date of the payment of the 
issue fee, except that, under certain  circumstances, they are required at 
an earlier date. In all cases, the papers  must be filed before the patent 
issues. These circumstances are specified in  the rule as (1) in the case 
of interferences in which event the papers must  be filed within the time 
specified in the interference rules, (2) when necessary  to overcome the 
date of a reference relied on by the examiner, and (3) when  specifically 
required by the examiner. 

        In view of the shortened periods for prosecution leading to 
allowances,  it is recommended that priority papers be filed as early as 
possible. Although  37 CFR 1.55>(a)< permits the filing of priority papers 
up to and including  the date for payment of the issue fee, it is 
advisable that such papers be  filed promptly after filing the 
application. Frequently, priority papers are  found to be deficient in 
material respects, such as for example, the failure  to include the 
correct certified copy, and there is not sufficient time to  remedy the 
defect. Occasionally, a new oath or declaration may be necessary  where 
the original oath or declaration omits the reference to the foreign filing 
 date for which the benefit is claimed. The early filing of priority 
papers  would thus be advantageous to applicants in that it would afford 
time to explain  any inconsistencies that exist or to supply any 
additional documents that may  be necessary. 

        It is also suggested that a pencil notation of the * >application< 
 number of the corresponding U.S. application be placed on the priority 
papers.  Such notation should be placed directly on the priority papers 
themselves even  where a cover letter is attached bearing the U.S. 
application data. Experience  indicates that cover letters and priority 
papers occasionally become separated,  and without the suggested pencil 
notations on the priority papers, correlating  them with the corresponding 
U.S. application becomes exceedingly difficult,  frequently resulting in 
severe problems for both the Office and applicant.  Adherence to the 
foregoing suggestion for making a pencil notation on the priority 
document of the U.S. application data will result in a substantial 
lessening  of the problem. 

        Priority papers filed after the date of payment of the issue fee 
will  be accepted and acknowledged only if filed before the patent is 
granted and  if a petition with fee 
(*>37 CFR< 1.17(i)) pursuant to 37 CFR 1.55(a) is filed and granted. 

201.14(b) Right of Priority, Papers Required [R-1] 


        The filing of the priority papers under 35 U.S.C. 119>(a)-(d)< 
makes  the record of the file of the 
United States patent complete. The Patent and Trademark Office does not 
normally  examine the papers to determine whether the applicant is in fact 
entitled to  the right of priority and does not grant or refuse the right 
of priority, except  as described in MPEP # 201.15 and in cases of 
interferences. 

        The papers required are the claim for priority and the certified 
copy  of the foreign application. The claim to priority need be in no 
special form,  and may be made by the attorney or agent at the time of 
transmitting the certified  copy if the foreign application is the one 
referred to in the oath or declaration  of the U.S. application. No 
special language is required in making the claim  for priority, and any 
expression which can be reasonably interpreted as claiming  the benefit of 
the foreign application is accepted as the claim for priority.  The claim 
for priority may appear in the oath or declaration with the recitation  of 
the foreign application. 

        The certified copy which must be filed is a copy of the original 
foreign  application with a certification by the patent office of the 
foreign country  in which it was filed.  Certified copies ordinarily 
consist of a copy of the  specification and drawings of the applications 
as filed with a certificate  of the foreign patent office giving certain 
information. "Application" in this  connection is not considered to 
include formal papers such as a petition. A  copy of the foreign patent as 
issued does not comply since the application  as filed is required; 
however, a copy of the printed specification and drawing  of the foreign 
patent is sufficient if the certification indicates that it  corresponds 
to the application as filed.  A French patent stamped "Service  De La 
Propriete Industrielle - Conforme Aux Pieces Deposees A L' Appui de La 
Demande" and additionally bearing a signed seal is also acceptable in lieu 
 of a certified copy of the French application. 

        When the claim to priority and the certified copy of the foreign 
application  are received while the application is pending before the 
examiner, the examiner  should make no examination of the papers except to 
see that they correspond  in number, date and country to the application 
identified in the oath or declaration  and contain no obvious formal 
defects. The subject matter of the application  is not examined to 
determine whether the applicant is actually entitled to  the benefit of 
the foreign filing date on the basis of the disclosure thereof. 
DURING INTERFERENCE 

        If priority papers are filed in an interference, it is not 
necessary  to file an additional certified copy in the application file. 
The examiner-in-chief  will place them in the application file. 

LATER FILED APPLICATIONS, REISSUES 

        Where the benefit of a foreign filing date based on a foreign 
application  is claimed in a later filed application (i.e., continuation, 
continuation-in-part,  division) or in a reissue application and a 
certified copy of the foreign application  as filed, has been filed in a 
parent or related application, it is not necessary  to file an additional 
certified copy in the later application. A reminder of  this provision is 
found in Form Paragraph 2.20. The applicant when making such  claim for 
priority may simply identify the application containing the certified 
copy. In such cases, the examiner should acknowledge the claim on form 
PTOL-326.  Note copy in MPEP # 707. 

        If the applicant fails to call attention to the fact that the 
certified  copy is in the parent or related application and the examiner 
is aware of the  fact that a claim for priority under 35 U.S.C. 
119>(a)-(d)< was made in the  parent application, the examiner should call 
applicant's attention to these  facts in an Office action, so that if a 
patent issues on the later or reissue  application, the priority data will 
appear in the patent. In such cases, the  language of Form Paragraph 2.20 
should be used. 

W 2.20      Priority Papers in Parent Application. 

        Applicant is reminded that in order for a patent issuing on the 
instant  application to obtain the benefit of priority based on priority 
papers filed  in parent ** >application< no. [1] under 35 U.S.C. 119 
>(a)-(d)<,  a claim  for such priority must be made in this application. 
In making such claim,  applicant may simply identify the application 
containing the priority papers. 
        Where the benefit of a foreign filing date, based on a foreign 
application,  is claimed in a later filed application or in a reissue 
application and a certified  copy of the foreign application, as filed, 
has not been filed in a parent or  related application, a claim for 
priority may be made in the later application.  In re Tangsrud, 184 USPQ 
746 (Comm'r. Pat. 1973). When such a claim is made  in the later 
application and a certified copy of the foreign application is  placed 
therein, the examiner should acknowledge the claim on form PTOL-326. 
 Note copy in MPEP # 707. 



WHERE AN ACTUAL MODEL WAS 
ORIGINALLY FILED IN GERMANY 

        The German design statute does not permit an applicant having an 
establishment  or domicile in the Federal Republic of Germany to file 
design patent applications  with the German Patent Office. These German 
applicants can only obtain design  protection by filing papers or an 
actual deposit of a model with the judicial  authority ("Amtsgericht") of 
their principal establishment or domicile. Filing  with the German Patent 
Office is exclusively reserved for applicants who have  neither an 
establishment or domicile in the Federal Republic of Germany. The  deposit 
in an "Amtsgericht" has the same effect as if deposited at the German 
Patent Office and results in a "Geschmacksmuster" which is effective 
throughout  Germany. 

        In implementing the Paris Convention, 35 U.S.C. 119>(a)-(d)< 
requires  that a copy of the original foreign application, specification, 
and drawings  certified by the patent office of the foreign country in 
which filed, shall  be submitted to the Patent and Trademark Office, in 
order for an applicant  to be entitled to the right of priority in the 
United States. 

        Article 4, section A(2) of the Paris Convention however states 
that  "(a)ny filing that is equivalent to a regular national filing under 
the domestic  legislation of any country of the Union . . . shall be 
recognized as giving  rise to the right of priority." Article 4D(3) of the 
Convention further provides  that countries of the Union may require any 
person making a declaration of  priority to produce a copy of the 
previously filed application (description,  drawings, etc.) certified as 
correct by the authority which received this application. 
        As far as the physical production of a copy of the earlier filed 
paper  application is concerned, an applicant should have no difficulty in 
providing  a copy, certified by the authority which received it, if the 
earlier filed  application contained drawings illustrating the design. A 
problem, however,  arises when the only prior "regular national filing" 
consisted of the deposit  of an actual model of the design. 35 U.S.C. 119 
>(a)-(d)< is silent on this  subject. 

        Therefore, the Patent and Trademark Office will receive as 
evidence  of an earlier filed German design application under 35 U.S.C. 
119 >(a)-(d)<,  drawings or acceptable clear photographs of the deposited 
model faithfully  reproducing the design embodied therein together with 
other required information,  certified as being a true copy by an official 
of the court with which the model  was originally deposited. 

        35 U.S.C. 119 >(a)-(d)< also provides for the certification of the 
 earlier filed application by the patent office of the foreign country in 
which  it was filed. Because Article 4D(3) of the Paris Convention which 
35 U.S.C.  119 >(a)-(d)< implements refers to certification ". . . by the 
authority which  received such application . . .", the reference to 
"patent office" in the statute  is construed to extend also to the 
authority which is in charge of the design  register, i.e., the applicable 
German court. As a consequence, an additional  certification by the German 
Patent Office will not be necessary especially  since Article 4D(3) of the 
Paris Convention provides that authentication shall  not be required. 

        Although, as stated above, a "regular national filing" gives rise 
to  the right of priority, the mere submission of a certified copy of the 
earlier  filed foreign application, however, may not be sufficient to 
perfect that right  in this country.  For example, among other things, an 
application filed in  a foreign country must contain a disclosure of the 
invention adequate to satisfy  the requirements of 35 U.S.C. 112, in order 
to form the basis for the right  of priority in a later filed United 
States application. 


201.14(c) Right of Priority, Practice [R-1] 


        Before going into the practice with respect to those instances in 
which  the priority papers are used to overcome a reference, there will 
first be described  the practice when there is no occasion to use the 
papers, which will be in  the majority of cases.  In what follows in this 
section it is assumed that  no reference has been cited which requires the 
priority date to be overcome. 
NO IRREGULARITIES 

        When the papers under 35 U.S.C. 119 >(a)-(d)< are received they 
are  to be endorsed on the contents page of the file as "Letter (or 
amendment) and  foreign application". Assuming that the papers are regular 
in form and that  there are no irregularities in dates, the examiner in 
the next Office action  will advise the applicant that the papers have 
been received on form PTOL-326  or by use of Form Paragraph 2.26. 

W 2.26      Claimed >Foreign< Priority, and Papers Filed 

        Receipt is acknowledged of papers submitted under 35 U.S.C. 119 
>(a)-(d)<,  which papers have been placed of record in the file. 



        Where the priority papers have been filed in another application, 
use  Form Paragraph 2.27. 

W 2.27      Acknowledge >Foreign< Priority Paper in Parent 

        Acknowledgment is made of applicant's claim for >foreign< priority 
 under 35 U.S.C. 119 >(a)-(d)<. The certified copy has been filed in 
parent  application  * no. [1], filed on [2]. 

Examiner Note: 

        >1.<    For problems with foreign priority see form paragraphs 
2.18  to 2.24. 

        >2.   In bracket 1, insert the series code and serial number of 
parent  application.< 

        The examiner will enter the information specified in MPEP # 202.03 
 on the face of the file wrapper. 

        If application is in interference when papers under 
35 U.S.C. 119 >(a)-(d)< are received see MPEP 
# 2333.02. 

PAPERS INCONSISTENT 

        If the certified copy filed does not correspond to the application 
 identified in the application oath or declaration, or if the application 
oath  or declaration does not refer to the particular foreign application, 
the applicant  has not complied with the requirements of the rule relating 
to the oath or  declaration. In such instances, the examiner's letter, 
after acknowledging  receipt of the papers, should require the applicant 
to explain the inconsistency  and to file a new oath or declaration 
stating correctly the facts concerning  foreign applications required by 
37 CFR 1.63 by using Form Paragraph 2.21. 
W 2.21 Oath, Declaration Does Not Contain Reference to Foreign Filing 
        Receipt is acknowledged of papers filed under 35 U.S.C. 
119>(a)-(d)<  based on an application filed in [1] on [2].  Applicant has 
not complied with  the requirements of 37 CFR 1.63(c) since the oath or 
declaration does not acknowledge  the filing of any foreign application. 
A new oath or declaration is required  in the body of which the present 
application should be identified by * >application<  no. and filing date. 

        Other situations requiring some action by the examiner are 
exemplified  by other Form Paragraphs. 

NO CLAIM FOR PRIORITY 

        Where applicant has filed a certified copy but has not made a 
claim  for priority, use Form Paragraph 2.22. 

W 2.22      Certified Copy Filed, But No Claim Made 

        Receipt is acknowledged of a certified copy of the [1] application 
 referred to in the oath or declaration.  If this copy is being filed to 
obtain  the benefits of the foreign filing date under 35 U.S.C. 
119>(a)-(d)<, applicant  should also file a claim for * >such priority as 
required by 
35 U.S.C. 119(b)<. 

        NOTE: Where the applicant's accompanying letter states that the 
certified  copy is filed for priority purposes or for the convention date, 
it is accepted  as a claim for priority. 

 FOREIGN APPLICATIONS ALL MORE THAN 
A YEAR BEFORE EARLIEST EFFECTIVE 
U.S. FILING 

        Where the earlier foreign application was filed more than 12 
months  prior to the U.S. application, use Form Paragraph 2.23. 

W 2.23      Foreign Filing More Than 12 Months 

  Acknowledgement is made of applicant's claim for priority under 35 
U.S.C. 119>(a)-(d)< based upon an application filed in [1] on [2].  A 
claim  for priority under 35 U.S.C. 119>(a)-(d)< cannot be based on said 
application,  since the United States application was filed more than 
twelve months thereafter. 
SOME FOREIGN APPLICATIONS MORE THAN A YEAR BEFORE U.S. FILING 

        For example, where a British provisional specification was filed 
more  than a year before a U.S. application, but the British complete 
application  was filed within the year, and certified copies of both were 
submitted, language  similar to the following should be used: "Receipt is 
acknowledged of papers  filed on September 18, 1979, purporting to comply 
with the requirements of  35 U.S.C. 119>(a)-(d)<.  It is not seen how the 
claim for priority can be based  on the British specification filed 
January 23, 1978, because the instant application  was filed more than one 
year thereafter. However, the printed heading of the  patent will note the 
claimed priority date based on the complete specification;  i.e., November 
1, 1978, for such subject matter as was not disclosed in the  provisional 
specification." 

CERTIFIED COPY NOT THE FIRST FOREIGN 
APPLICATION 

W 2.24      Claimed >Foreign< Priority Date Not the Earliest Date 
        Receipt is acknowledged of papers filed on [1] purporting to 
comply  with the requirements of 35 U.S.C. 119>(a)-(d)< and they have been 
placed of  record in the file. Attention is directed to the fact that the 
date for which  >foreign< priority is claimed is not the date of the first 
filed foreign application  acknowledged in the oath or declaration. 



NO CERTIFIED COPY 

        Where priority is claimed but no certified copy of the foreign 
application  has been filed, use Form Paragraph 2.25. 

W  2.25       Claimed >Foreign< Priority, No Papers Filed 

        Acknowledgment is made of applicant's claim for priority based on 
an  application filed in [1] on [2]. It is noted, however, that applicant 
has not  filed a certified copy of the [3] application as required by 35 
U.S.C. 119>(a)-(d)<. 
        Any unusual situation may be referred to the group director. 
APPLICATION IN ISSUE 

        When priority papers for applications which have been sent to the 
Patent  Issue Division are received, the priority papers should be sent to 
the Patent  Issue Division.  The Patent Issue Division will acknowledge 
receipt of all  such priority papers.  If the issue fee has been paid 
applicant must petition  under 37 CFR 1.55(a). 

RETURN OF PAPERS 

        It is sometimes necessary for the examiner to return papers filed 
under  35 U.S.C. 119>(a)-(d)< either upon request of the applicant, for 
example, to  obtain a translation of the certified copy of the foreign 
application, or because  they fail to meet a basic requirement of the 
statute, such as where all foreign  applications were filed more than a 
year prior to the U.S. filing date. 
        When the papers have not been given a paper number and endorsed on 
 the file wrapper, it is not necessary to secure approval of the 
Commissioner  for their return but they should be sent to the group 
director for cancellation  of the Office stamps. Where the papers have 
been made of record in the file 
(given a paper number and endorsed on the file wrapper), a request for 
permission  to return the papers should be addressed to the Commissioner 
of Patents and  Trademarks and forwarded to the Group Director for 
approval. Where the return  is approved, the written approval should be 
placed in the file wrapper. Any  questions relating to the return of 
papers filed under 35 U.S.C. 119>(a)-(d)<  should be directed to the 
Office of the Assistant Commissioner for Patents. 
FILLING OUT THE FOREIGN PRIORITY 
SECTION OF THE FILE JACKET LABEL (PTO-436L) 

        Where foreign applications are listed on the 37 CFR 1.63 oath or 
declaration,  the Examiner should check that such foreign applications are 
properly listed  on the file jacket, correcting errors of typography or 
format as necessary,  and initialing the "verified" line when the 
information on the file jacket  matches the oath or declaration. See MPEP 
w 202.03. Should there be an error  on the oath or declaration itself, the 
Examiner should require a new oath or  declaration. If a foreign 
application listed on the oath or declaration is  not listed on the file 
jacket, the Examiner should print in black ink the country,  application 
number, and filing date under "Foreign/PCT Applications" on the  file 
jacket. Applications listed on the file jacket but filed in countries  not 
qualifying for benefits under 35 U.S.C. 119>(a)-(d)< should be lined 
through  in red ink. A listing of countries qualifying for benefits under 
35 U.S.C.  119>(a)-(d)< appears at MPEP w 201.13. 

        Below the "Foreign/PCT applications" portion, the "yes" box for 
"Foreign  priority claimed" should be checked only when priority has been 
properly claimed  as provided in 37 CFR 1.55. Otherwise, the Examiner 
should check "no".  Where  a claim is made for one or more listed foreign 
applications and not for one  or more other listed foreign applications, 
the data on the file jacket concerning  the unclaimed applications should 
be lined through in pencil and the "yes"  box checked. 

        The "yes" box for "35 U.S.C. 119 conditions met" should be checked 
 when there are any foreign applications listed that meet all of the 
requirements  of 35 U.S.C. 119>(a)-(d).< In such cases, any listed foreign 
application that  does not meet all of the requirements of 
35 U.S.C. 119>(a)-(d)< should be lined through in pencil. 


201.14(d) Proper Identification of Priority Application [R-2] 


        In order to help overcome problems in determining the proper 
identification  of priority applications for patent documentation and 
printing purposes, the  following tables have been prepared which set out 
for various countries the  forms of acceptable presentation of application 
numbers. 

        The tables should enable applicants, examiners and others to 
extract  from the various formats the minimum required data which 
comprises a proper  citation. 

        Proper identification of priority applications is essential to 
establishing  accurate and complete relationships among various patent 
documents which reflect  the same invention. Knowledge of these 
relationships is essential to search  file management, technology 
documentation and various other purposes. 
        The tables show the forms of presentation of application numbers 
as  used in the records of the source or 


originating patent office. They also show, under the heading "Minimum 
Significant  Part of the Number", the simplified form of presentation 
which should be used  in United States Patent and Trademark Office records. 

        Note particularly that in the simplified format that: 

        (1)   Alpha symbols preceding numerals are eliminated in all cases 
 except Hungary. 

        (2)   A decimal character and numerical subset as part of a number 
 is eliminated in all cases except France. 

        (3)   Use of the dash (-) is reduced, but is still an essential 
element  of application numbers, in the case of Czechoslovakia and Japan. 





**>MINIMUM SIGNIFICANT PART OF AN APPLICATION NUMBER 
PROVIDING UNIQUE IDENTIFICATION OF AN APPLICATION< 

A20114d07.bmp 



A20114d07.end 



A20114d08.bmp 



A20114d08.end 



A20114d09.bmp 



A20114d09.end 



A20114d10.bmp 



A20114d10.end 




201.15      Right of Priority, Overcoming a Reference 


        The only times during ex parte prosecution that the examiner 
considers  the merits of an applicant's claim of priority is when a 
reference is found  with an effective date between the date of the foreign 
filing and the date  of filing in the United States and when an 
interference situation is under  consideration. If at the time of making 
an action the examiner has found such  an intervening reference, he or she 
simply rejects whatever claims may be considered  unpatentable thereover, 
without paying any attention to the priority date (assuming  the papers 
have not yet been filed). The applicant in his or her response may  argue 
the rejection if it is of such a nature that it can be argued, or present 
the foreign papers for the purpose of overcoming the date of the 
reference.  If the applicant argues the reference, the examiner, in the 
next action in  the case, may specifically require the foreign papers to 
be filed in addition  to repeating the rejection if it is still considered 
applicable, or he or she  may merely continue the rejection. 

        Form Paragraph 2.19 may be used in this instance. 

W 2.19      Overcome Rejection by Translation 

        Applicant cannot rely upon the foreign priority papers to overcome 
 the rejection because a certified translation of said papers has not been 
made  of record. See MPEP # 201.15. 

Examiner Note: 

        This paragraph should follow a rejection based on an intervening 
reference. 
        In those cases where the applicant files the foreign papers for 
the  purpose of overcoming the effective date of a reference, a 
translation is required  if the foreign papers are not in the English 
language. When the examiner requires  the filing of the papers, the 
translation should also be required at the same  time. This translation 
must be filed together with a statement that the translation  of the 
certified copy is accurate. This statement must be verified if made  by a 
person not registered to practice before the Patent and Trademark Office. 
When the necessary papers are filed to overcome the date of the reference, 
 the examiner's action, if he or she determines that the applicant is not 
entitled  to the priority date, is to repeat the rejection on the 
reference, stating  the reasons why the applicant is not considered 
entitled to the date.  If it  is determined that the applicant is entitled 
to the date, the rejection is  withdrawn in view of the priority date. 

        If the priority papers are already in the file when the examiner 
finds  a reference with the intervening effective date, the examiner will 
study the  papers, if they are in the English language, to determine if 
the applicant  is entitled to their date. If the applicant is found to be 
entitled to the  date, the reference is simply not used but may be cited 
to applicant on form  PTO-892. If the applicant is found not entitled to 
the date, the unpatentable  claims are rejected on the reference with an 
explanation. If the papers are  not in the English language and there is 
no translation, the examiner may reject  the unpatentable claims and at 
the same time require an English translation  for the purpose of 
determining the applicant's right to rely on the foreign  filing date. 

        The foreign application may have been filed by and in the name of 
the  assignee or legal representative or agent of the inventor, as 
applicant. In  such cases, if the certified copy of the foreign 
application corresponds with  the one identified in the oath or 
declaration as required by 
37 CFR 1.63 and no discrepancies appear, it may be assumed that the 
inventors  are entitled to the claim for priority. If there is 
disagreement as to inventors  on the certified copy, the priority date 
should be refused until the inconsistency  or disagreement is resolved. 

        The most important aspect of the examiner's action pertaining to a 
 right of priority is the determination of the identity of invention 
between  the U.S. and the foreign applications. The foreign application 
may be considered  in the same manner as if it had been filed in this 
country on the same date  that it was filed in the foreign country, and 
the applicant is ordinarily entitled  to any claims based on such foreign 
application that he or she would be entitled  to under our laws and 
practice. The foreign application must be examined for  the question of 
sufficiency of the disclosure under 35 U.S.C. 112, as well  as to 
determine if there is a basis for the claims sought. 

        In applications filed from the United Kingdom there may be 
submitted  a certified copy of the "provisional specification," which may 
also in some  cases be accompanied by a copy of the "complete 
specification." The nature  and function of the United Kingdom provisional 
specification is described in  an article in the Journal of the Patent 
Office Society of November 1936, pages  770-774. According to United 
Kingdom law the provisional specification need  not contain a complete 
disclosure of the invention in the sense of 35 U.S.C. 112, but need only 
describe  the general nature of the invention, and neither claims nor 
drawings are required.  Consequently, in considering such provisional 
specifications, the question  of completeness of disclosure is important. 
If it is found that the United  Kingdom provisional specification is 
insufficient for lack of disclosure, reliance  may then be had on the 
complete specification and its date, if one has been  presented, the 
complete specification then being treated as a different application  and 
disregarded as to the requirement to file within 1 year. 

        In some instances, the specification and drawing of the foreign 
application  may have been filed at a date subsequent to the filing of the 
petition in the  foreign country. Even though the petition is called the 
application and the  filing date of this petition is the filing date of 
the application in a particular  country, the date accorded here is the 
date on which the specification and  drawing were filed. 

        It may occasionally happen that the U.S. application will be found 
 entitled to the filing date of the foreign application with respect to 
some  claims and not with respect to others. Occasionally a sole or joint 
applicant  may rely on two or more different foreign applications and may 
be entitled  to the filing date of one of them with respect to certain 
claims and to another  with respect to other claims. 


201.16      Using Certificate of Correction to Perfect Claim for Priority 
Under 35 U.S.C. 119>(a)-(d)< [R-1] 

        No application for patent shall be entitled to this right of 
priority  unless a claim therefor and a certified copy of the original 
foreign application,  specification and drawings upon which it is based 
are filed in the Patent and  Trademark Office before the patent is granted... 

        The failure to perfect a claim to foreign priority benefit prior 
to  issuance of the patent may be cured by filing a reissue application: 
Brenner  v. State of Israel, 158 USPQ 584 
(D.C. Cir. 1968). 

        However, under certain conditions, this failure may also be cured 
by  filing a Certificate of Correction request under 35 U.S.C. 255 and 37 
CFR 1.323.  For example, in the case of In re Van Esdonk, 187 USPQ 671 
(Comm'r. Pat.1975),  the Commissioner granted a request to issue a 
Certificate of Correction in  order to perfect a claim to foreign priority 
benefits.  In that case, a claim  to foreign priority benefits had not 
been filed in the application prior to  issuance of the patent. However, 
the application was a continuation of an earlier  application in which the 
requirements of 35 U.S.C. 119>(a)-(d)< had been satisfied.  Accordingly, 
the Commissioner held that the "applicants' perfection of a priority 
claim under 35 U.S.C. 119 in the parent application will satisfy the 
statute  with respect to their continuation application." 

        Although In re Van Esdonk involved the patent of a continuation 
application  filed under 37 CFR 1.60, it is proper to apply the holding of 
that case in  similar factual circumstances to any patented application 
having benefits under  35 U.S.C. 120. This is primarily because a claim to 
foreign priority benefits  in a continuing application, where the claim 
has been perfected in the parent  application, constitutes in essence a 
mere affirmation of the applicant's previously  expressed desire to 
receive benefits under 35 U.S.C. 119>(a)-(d)< for subject  matter common 
to the foreign, parent, and continuing applications. 
        In summary, a Certificate of Correction under 
35 U.S.C. 255 and 37 CFR 1.323 may be requested and issued in order to 
perfect  a claim for foreign priority benefit in a patented continuing 
application if  the requirements of 35 U.S.C. 119>(a)-(d)< had been 
satisfied in the parent  application prior to issuance of the patent and 
the requirements of 37 CFR  1.55(a) are met. 

        However, a claim to foreign priority benefits cannot be perfected 
via  a Certificate of Correction if the requirements of 35 U.S.C. 
119>(a)-(d)< had  not been satisfied in the patented application, or its 
parent, prior to issuance  and the requirements of 37 CFR 1.55(a) are not 
met. In this latter circumstance,  the claim to foreign priority benefits 
can be perfected only by way of a reissue  application in accordance with 
the rationale set forth in Brenner v. State  of Israel, supra. 


202   Cross-Noting 



202.01      In Specification [R-1] 


37  CFR 1.78    Claiming benefit of earlier filing date and 
cross references to other applications. 

        ** 

        >(a)(1)       A nonprovisional application may claim an invention 
disclosed  in one or more prior filed copending nonprovisional 
applications or international  applications designating the United States 
of America.  In order for a nonprovisional  application to claim the 
benefit of a prior filed copending nonprovisional  application or 
international application designating the United States of America,  each 
prior application must name as an inventor at least one inventor named  in 
the later filed nonprovisional application and disclose the named 
inventor's invention  claimed in at least one claim of the later filed 
nonprovisional application  in the manner provided by the first paragraph 
of 35 U.S.C. 112. In addition,  each prior application must be: 

        (i)   complete as set forth in # 1.51(a)(1); or 

        (ii)    entitled to a filing date as set forth in # 1.53(b)(1), # 
1.60  or 
 # 1.62 and include the basic filing fee set forth in # 1.16; or 
        (iii)     entitled to a filing date as set forth in # 1.53(b)(1) 
and  have paid therein the processing and retention fee set forth in # 
1.21(l) within  the time period set forth in # 1.53(d)(1). 

        (2)   Any nonprovisional application claiming the benefit of one 
or  more prior filed copending nonprovisional applications or 
international applications  designating the United States of America must 
contain or be amended to contain  in the first sentence of the 
specification following the title a reference  to each such prior 
application, identifying it by application number (consisting  of the 
series code and serial number) or international application number and 
international filing date and indicating the relationship of the 
applications.  Cross-references to other related applications may be made 
when appropriate. 
(See 
# 1.14(b)). < 

***** 

        See also 37 CFR 1.79 and MPEP # 201.11. 

        There is seldom a reason for one application to refer to another 
application  with no common applicant where the applications are not 
assigned to a common  assignee.  Such reference ordinarily should not be 
permitted. 


202.02      Notation on File Wrapper ** Regarding Prior U.S. Applications, 
Including Provisional Applications  [R-2] 

        The heading of a printed patent includes all identifying parent 
data  of continuation-in-part, continuation, divisional, substitute, and 
reissue  applications, as well as any provisional application from which 
priority is  claimed. Therefore, the identifying data of all parent or 
prior applications,  when given in the specification must be inserted by 
the examiner in black ink  on the file wrapper in the case of a DIVISION, 
a CONTINUATION, a CONTINUATION-IN-PART  and, whether given in the 
specification or not, in the case of a SUBSTITUTE  Application. Similarly, 
the application number of any provisional application  from which priority 
is claimed should be printed on the file wrapper. 
        Where parent or prior application data, including provisional 
application  data, is preprinted on the file wrapper, the examiner should 
check that data  for accuracy>, including whether the application is, in 
fact, copending with  the parent application or applications of which 
priority is claimed<. Where  the data is correct, the examiner should 
initial the file wrapper in the provided  space. Should there be error in 
the preprinted >parent< application >data<  **, the application should be 
forwarded to * Application Division >Customer  Corrections< for correction 
or entry of the data >in the PALM data base<, accompanied  by **>a 
completed Application Division Data Base Routing Slip<. Only these  terms 
should be used to specify the relationship between applications because 
of clarity and ease of printing. The status of the parent application, but 
 not a provisional application, should also be indicated if it has been 
patented,  abandoned, or published under either the Defensive Publication 
Program or the  Trial Voluntary Protest Program. Note MPEP # 1302.04(f). 
The "None" boxes must  be marked when no parent or prior application 
information is present on the  file wrappers containing such boxes. This 
should be done no later than the  first action. 

        The inclusion of parent or prior application information in the 
heading  does not necessarily indicate that the claims are entitled to the 
benefit of  the earlier filing date. 

        See MPEP # 306 for work done by the Assignment Division pertaining 
 to these particular types of applications. 

        In the * situation *>in which< there has been no reference to a 
parent  application because the benefit of its filing date is not desired, 
no notation  as to the parent case is made on the face of the file wrapper. 


202.03      Notation on File Wrapper When Priority Is Claimed for Foreign 
Application [R-1] 

        In accordance with MPEP # 201.14(c), the examiner will fill in the 
 spaces concerning foreign applications on the face of the older file 
wrappers. 
        The information to be written on the face of the file wrapper 
consists  of the country, application date (filing date), and if 
available, the application  and patent numbers. In some instances, the 
particular nature of the foreign  application such as "utility model" 
(Germany (Gebrauchsmuster) and Japan) must  be written in parentheses 
before the application number. For example: Application  Number (utility 
model) B62854. 

        At the present time the computer printed file wrapper labels 
include  the prior foreign application information. The examiner should 
check this information  for accuracy. Should there be error, the examiner 
should make 
the appropriate corrections directly on the file wrapper in black ink. The 
 examiner should initial the file wrapper in the "VERIFIED" space provided 
when  the information is correct or has been amended to be correct. 
How-ever, the  examiner must still indicate on the Office action and on 
the file wrapper whether  the conditions of 
35 U.S.C. 119>(a)-(d)< have been met. 

        If the filing dates of several foreign applications are claimed 
(see  MPEP # 201.15, last paragraph) and satisfactory papers have been 
received for  each, information respecting each of the foreign 
applications is to be entered  on the face of the file wrapper. 

        The front page of the patent when it is issued, and the listing in 
 the Official Gazette, will refer to the claim of priority, giving the 
country,  the filing date, and the number of the application in those 
cases in which  the face of the file has been endorsed. 


202.04      In Oath or Declaration 


        As will be noted by reference to MPEP # 201.14, 
37 CFR 1.63 requires that the oath or declaration include certain 
information  concerning applications filed in any foreign country. 


202.05      In Case of Reissues 


        37 CFR 1.179 requires that a notice be placed in the file of an 
original  patent for which an application for reissue has been filed. See 
MPEP # 1431. 

203   Status of Applications [R-1] 



203.01      New [R-1] 


        A "new" application is >a nonprovisional< one that has not yet 
received  an action by the examiner. An amendment filed prior to the first 
Office Action  does not alter the status of a "new" application. 


203.02      Rejected [R-1] 


        * >A nonprovisional< application which, during its prosecution in 
the  examining group and before allowance, contains an unanswered 
examiner's action  is designated as a "rejected" application. Its status 
as a "rejected" application  continues as such until acted upon by the 
applicant in response to the examiner's  action (within the allotted 
response period), or until it becomes abandoned. 

203.03      Amended [R-1] 


        An "amended" or "old" >nonprovisional< application is one that 
having  been acted on by the examiner, has in turn been acted on by the 
applicant in  response to the examiner's action. The applicant's response 
may be confined  to an election, a traverse of the action taken by the 
examiner or may include  an amendment of the application. 


203.04      Allowed or in Issue [R-1] 


        An "allowed" >nonprovisional< application or an application "in 
issue"  is one which, having been examined, is passed to issue as a 
patent, subject  to payment of the issue fee.  Its status as an "allowed" 
case continues from  the date of the notice of allowance until it is 
withdrawn from issue or until  it issues as a patent or becomes abandoned, 
as provided in 37 CFR 1.316. See  MPEP 
# 712. 

        The files of allowed cases are kept in the Patent Issue Division, 
arranged  by Batch Number. 


203.05      Abandoned [R-1] 


        An abandoned application is, inter alia, one which is removed from 
 the Office docket of pending cases (1) through formal abandonment by the 
applicant 
(acquiesced in by the assignee if there is one) or by the attorney or 
agent  of record, assignee if there is one) or by the attorney or agent of 
record, 
(2) through failure of applicant to take appropriate action at some stage 
in  the prosecution of ** >a nonprovisional application,< (3) for failure 
to pay  the issue fee (MPEP ## 203.07, 711 to 711.05, 712) >, or (4) no 
later than  12 months after the filing date of a provisional application 
(see MPEP # 601.01 and 35 U.S.C. 111 (b) (5)).< 


203.06      Incomplete 


        An application lacking some of the essential parts and not 
accepted  for filing is termed an incomplete application. (MPEP ## 506 and 
506.01). 

203.07      Abandonment for Failure to Pay Issue Fee 


        An allowed application in which the Issue Fee is not paid within 3 
 months after the Notice of Allowance in accordance with 35 U.S.C. 151 is 
abandoned  for that reason (37 CFR 1.316(a)). The issue fee may, however, 
be accepted by the Commissioner  if on petition it is shown that the delay 
in payment was unavoidable and payment  of the fee for delayed payment of 
the issue fee under 
37 CFR 1.17(l), in which case the patent will issue as though no 
abandonment  had occurred (MPEP # 712). (37 CFR 1.316(b)). The issue fee 
may also be accepted  if on petition it is shown that the delay in payment 
was unintentional and  upon payment of the fee for delayed payment of the 
issue fee under 37 CFR 1.17(m), 
(37 CFR 1.316(c)). 


203.08      Status Inquiries [R-2] 


NEW APPLICATION 

        Current examining procedures now provide for the routine mailing 
from  the examining groups of Form PTOL-*>37< in every case of allowance 
of an application. 
 Thus, the mailing of a form PTOL-*>37< in addition to a formal Notice of 
Allowance 
(PTOL-85) in all allowed cases would seem to obviate the need for status 
inquiries  even as a precautionary measure where the applicant may believe 
his or her  new application may have been passed to issue on the first 
examination. However,  as an exception, a status inquiry would be 
appropriate where a Notice of Allowance  is not received within three 
months from receipt of ** form PTOL-*>37<. 
        Current examining procedures also aim to minimize the spread in 
dates  among the various examiner dockets of each art unit and group with 
respect  to actions on new applications. Accordingly, the dates of the 
"oldest new applications"  appearing in the Official Gazette are fairly 
reliable guides as to the expected  time frames of when the examiners 
reach the cases for action. 

        Therefore, it should be rarely necessary to query the status of a 
new  application. 

AMENDED APPLICATIONS 

        Amended cases are expected to be taken up by the examiner and an 
action  completed within two months of the date the examiner receives the 
case. Accordingly,  a status inquiry is not in order after response by the 
attorney until five  or 6 months have elapsed with no response from the 
Office. A postcard receipt  for responses to Office actions, adequately 
and specifically identifying the  papers filed, will be considered prima 
facie proof of receipt of such papers.  Where such proof indicates the 
timely filing of a response, the submission  of a copy of the post card 
with a copy of the response will ordinarily obviate  the need for a 
petition to revive. Proof of receipt of a timely response to  a final 
action will obviate the need for a petition to revive only if the response 
 was in compliance with 37 CFR 1.113. 

IN GENERAL 

        Status replies will be made by the Office clerical support force 
and  will only indicate whether the application is awaiting action by the 
examiner  or the applicant's response to an Office action. In the latter 
instance the  mailing date of the Office action will also be given. 

        Inquiries as to the status of applications, by persons entitled to 
 the information, should be answered promptly. Simple letters of inquiry 
regarding  the status of applications will be transmitted from the 
Correspondence and  Mail Division, to the examining groups for direct 
action. Such letters will  be stamped "Status Letters." 

        If the correspondent is not entitled to the information, in view 
of  37 CFR 1.14, he or she should be so informed. For Congressional and 
other official  inquiries, see MPEP # 203.08(a). 

        The original letter of inquiry regarding a pending or abandoned 
application  should be made of record in the application and assigned a 
paper number. The  reply to an inquiry which includes a self-addressed, 
postage-paid postcard  should be made on the post card without placing it 
in an envelope. The file  record should also reflect, either on the 
original letter or in a separate  paper, the nature of the reply to the 
inquiry and the date on which the reply  was made. 

        In cases of allowed applications, a memorandum should be pinned to 
 the inquiry with a statement of date it was forwarded to the Publishing 
Division.  The memorandum and inquiry should then be sent to the 
Publishing Division.  This Division will notify the inquirer of the date 
of the notice of allowance  and the status of the application with respect 
to payment of the issue fee  and abandonment for failure to pay the issue 
fee. 

        In those instances where the letter of inquiry goes beyond mere 
matters  of inquiry, it should not be marked as a "status letter". Such 
letters must  be entered in the application file as a permanent part of 
the record. The inquiry  should be answered by the examiner, however, and 
in a manner consistent with  the provisions of 37 CFR 1.14. 



        Another type of inquiry is to be distinguished from ordinary 
status  letters. When a U.S. application is referred to in a foreign 
patent (for priority  purposes, for example), inquiries as to the status 
of said application (abandoned,  pending, patented) should be forwarded to 
the Application Processing Division 
(MPEP # 102). 

        Telephone inquiries regarding the status of applications, by 
persons  entitled to the information, should be directed to the group 
clerical personnel  and not to the examiners. In as much as the official 
records and applications  are located in the clerical section of the 
examining groups, the clerical personnel  can readily provide status 
information without contacting the examiners. 

203.08(a) Congressional and Other Official Inquiries 


        Correspondence and inquiries from the White House, Members of 
Congress,  embassies, and heads of Executive departments and agencies 
normally are cleared  through the Office of the Assistant Commissioner for 
External Affairs. 
        When persons from the designated official sources request services 
 from the Office, or information regard-ing the business of the Office, 
they  should, under long-standing instructions, be referred, at least 
initially,  to the Office of the Assistant Commissioner for External 
Affairs. 
        This procedure is used so that there will be uniformity in the 
handling  of contacts from the indicated sources, and also so that 
compliance with directives  of the Department of Commerce is attained. 

        Inquiries referred to in this section, particularly correspondence 
 from Congress or the White House, should immediately be transmitted to 
the  Office of the Assistant Commissioner for External Affairs by 
messenger, and  the Office of the Assistant Commissioner for External 
Affairs should be notified  by phone that such correspondence has been 
received. 



Contents 

301             Assignability of Patents and Applications 

301.01          Accessibility of Assignment Records 

302             Recording of Assignment Documents 

302.01          Assignment Document Must be Original or True Copy 
                for Recording 

302.02          Translation of Assignment Document 

302.03          Identifying Patent or Application 

302.04          Foreign Assignee May Designate Domestic 
                Representative 

302.05          Address of Assignee 

302.06          Fee for Recording 

302.07          Assignment Document Must be Accompanied by a 
                Cover Sheet 

302.08          Mailing Address for Submitting Assignment 
                Documents 

303             Assignment Documents Not Endorsed on Pending 
                Applications 

306             Assignment of Division, Continuation, Substitute, and 
                Continuation-in-Part in Relation to Parent Case 

>306.01         Assignment of an Application Claiming the Benefits 
                of a Provisional Application< 

307             Issue to Assignee 

309             Restrictions Upon Employees of Patent and Trademark 
                Office 

310             Government License Rights to Contractor-Owned 
                Inventions Made Under  Federally Sponsored 
                Research and  Development 

311             Filing of Notice of Arbitration Awards 

313             Recording of Licenses, Security Interests, and Other 
                Documents Other Than Assignments 

314             Certificates of Change of Name or of Merger 

315             Indexing Against a Recorded Certificate 

317             Handling of Documents in the Assignment  Division 
317.01          Recording Date 

317.02          Correction of Returned Documents and Cover Sheets 
317.03          Effect of Recording 

318             Documents Not to be Placed in Files 

319             Examining Group May Request Report on Title 

320             Title Reports 

323             Procedures for Correcting Errors in Recorded 
                Assignment  Document 

323.01          Correction of Error in Recorded Cover Sheet 

324             Establishing Right of Assignee to Take Action 


301   Assignability of Patents and Applications [R-1] 


35 U.S.C. 261.          Ownership; assignment. 

Subject to the provisions of this title, patents shall have the attributes 
 of personal property. 

Applications for patent, patents, or any interest therein, shall be 
assignable  in law by an instrument in writing. The applicant, patentee, 
or his assigns  or legal representatives may in like manner grant and 
convey an exclusive right  under his application for patent, or patents, 
to the whole or any specified  part of the United States. 

A certificate of acknowledgment under the hand and official seal of a 
person  authorized to administer oaths within the United States, or, in a 
foreign country,  of a diplomatic or consular officer of the United States 
or an officer authorized  to administer oaths whose authority is proved by 
a certificate of a diplomatic  or consular officer of the United States, 
or apostille of an official designated  by a foreign country which, by 
treaty or convention, accords like effect to  apostilles of designated 
officials in the United States, shall be prima facie  evidence of the 
execution of an assignment, grant, or conveyance of a patent  or 
application for patent. 

An assignment, grant, or conveyance shall be void as against any 
subsequent  purchaser or mortgagee for valuable consideration, without 
notice, unless it  is recorded in the Patent and Trademark Office within 
three months from its  date or prior to the date of such subsequent 
purchase or mortgage. 
35 U.S.C. 262.          Joint owners. 

        **>In the absence of any agreement to the contrary, each of the 
joint  owners of a patent may make, use, offer to sell, or sell the 
patented invention  within the United States, or import the patented 
invention into the United  States, without the consent of and without 
accounting to the other owners.< 
37 CFR 3.1.   Definitions. 

For purposes of this part, the following definitions shall apply: 
Application means a national application for patent, an international 
application  that designates the United States of America, or an 
application to register  a trademark unless otherwise indicated. 

Assignment means a transfer by a party of all or part of its right, title 
and  interest in a patent or patent application, or a transfer of its 
entire right,  title and interest in a registered mark or a mark for which 
an application  to register has been filed. 

Document means a document which a party requests to be recorded in the 
Office  pursuant to w 3.11 and which affects some interest in an 
application, patent,  or registration. 

Office means the Patent and Trademark Office. 

Recorded document  means a document which has been recorded in the Office 
pursuant  to w 3.11. 

Registration means a trademark registration issued by the Office. 

301.01      Accessibility of Assignment Records [R-1] 


37 CFR 1.12.    Assignment records open to public inspection. 

(a)(1)      Separate assignment records are maintained in the Patent and 
Trademark  Office for patents and trademarks. The assignment records, 
relating to original  or reissue patents, including digests and indexes, 
for assignments recorded  on or after May 1, 1957, and assignment records 
relating to pending or abandoned  trademark applications and to trade- 
mark registrations, for assignments recorded  on or after January 1, 1955, 
are open to public inspection at the Patent and  Trademark Office, and 
copies of those assignment records may be obtained upon  request and 
payment of the fee set forth in ww 1.19 and 2.6 of this chapter. 
(2)   All records of assignments of patents recorded before May 1, 1957, 
and  all records of trademark assignments recorded before January 1, 1955, 
are maintained  by the National Archives and Records Administration 
(NARA). The records are  open to public inspection. Certified and 
uncertified copies of those assignment  records are provided by NARA upon 
requests and payment of the fees required  by NARA. 



(b)   Assignment records, digests, and indexes, relating to any pending or 
 abandoned patent application are not available to the public. Copies of 
any  such assignment records and information with respect thereto shall be 
obtainable  only upon written authority of the applicant or applicant's 
assignee or attorney  or agent or upon a showing that the person seeking 
such information is a bona  fide prospective or actual purchaser, 
mortgagee, or licensee of such application,  unless it shall be necessary 
to the proper conduct of business before the Office  or as provided by 
these rules. 

        **>(c)      Any request by a member of the public seeking copies 
of  any assignment records of any pending or abandoned patent application 
preserved  in secrecy under # 1.14, or any information with respect 
thereto, must 
        (1)   Be in the form of a petition accompanied by the petition fee 
 set forth in # 1.17(i), or 

        (2)   Include written authority granting access to the member of 
the  public to the particular assignment records from the applicant or 
applicant's  assignee or attorney or agent of record.< 

  (d)     An order for a copy of an assignment or other document should 
identify  the reel and frame number where the assignment or document is 
recorded.  If  a document is identified without specifying its correct 
reel and frame, an  extra charge as set forth in w 1.21(j) will be made 
for the 
 time consumed in making a search for such assignment. 

Assignment documents relating to patents, registrations of trademarks, and 
 applications for registration of trademarks are open to public 
inspection. 
The Office will not open only certain parts of an assignment document to 
public  inspection. If such a document contains two or more items, any one 
of which,  if alone, would be open to such inspection, then the entire 
document will be  open. Thus, if  a document covers either a trademark or 
a patent in addition  to one or more patent applications, it will be 
available to the public ab initio;  and if it covers a number of patent 
applications, it will be so available as  soon as any one of them is 
patented. Documents relating only to one or more  pending applications for 
patent will not be open to public inspection. 
If the application on which a patent was granted is a division or 
continuation  of an earlier case, the assignment records of that earlier 
case will be open  to public inspection; similar situations involving 
continuation-in-part applications  will be considered on their individual 
merits upon petition to the Office of  Petitions in the Office of the 
Assistant Commissioner for Patents. 
Assignment records relating to reissue applications are open to public 
inspection. 
Requests for abstracts of title for assignments of patents recorded after 
May  1, 1957, are provided by the Office upon request and payment of fee 
required  in 37 CFR 1.19. Requests for copies of pre-1957 records for 
patents should  be directed to the National Archives and Records 
Administration (NARA). Since  these records are maintained by NARA, it is 
more expeditious to request copies  directly from NARA, rather than from 
the Office, which would then have to route  the requests to NARA. Payment 
of the fees required by NARA should accompany  all requests for copies. 

All assignment records from 1837 to April 30, 1957, for patents are now 
maintained  and are open for public inspection in the National Archives 
Research Room located  at the Washington National Records Center Building, 
4205 Suitland Road, Suitland,  Maryland 20746. 
Assignment documents recorded before 1837 are maintained at the National 
Archives  and Records Administration, 841 South Pickett Street, 
Alexandria, Virginia  22304. 


302   Recording of Assignment Documents 


37 CFR 3.11.    Documents which will be recorded. 

Assignments of applications, patents, and registrations, accompanied by 
completed  cover sheets as specified in ww 3.28 and 3.31, will be recorded 
in the Office.  Other documents, accompanied by completed cover sheets as 
specified in ww 3.28  and 3.31, affecting title to applications, patents, 
or registrations, will  be recorded as provided in this part or at the 
discretion of the Commissioner. 
Effective September 4, 1992, a Part 3 has been added to 37 CFR to set 
forth  Office rules on recording assignments and other documents and the 
rights of  an as- 
signee. 


302.01      Assignment Document Must Be Original or True Copy for 
Recording 

 37 CFR 3.24.     Formal requirements for documents and cover sheets. 
The document and cover sheet must be legible. Either the original document 
 or a true copy of the original document, may be submitted for recording. 
Only  one side of each page shall be used.  The paper used should be 
flexible, strong,  white, non-shiny, durable, and preferably no larger 
than 21.6x33.1 cm. (8 1/2  x 14 inches) with a 2.5 cm. (one-inch) margin 
on all sides. 

The Patent and Trademark Office will accept and record only an original, 
or  a true copy of an original assignment or other document.  See MPEP w 
317. 
Certification shall be  made by the person submitting 
a copy of an original document that the document 




submitted is a true copy of the original. The certification is not 
required  to be in oath or declaration form. 


302.02      Translation of Assignment Document 


37 CFR 3.26.    English language requirement. 

The Office will accept and record non-English language documents only if 
accompanied  by a verified English translation signed by the individual 
making the translation. 
The assignment document, if not in the English language, will not be 
recorded  unless accompanied by a verified English translation signed by 
the translator. 

302.03      Identifying Patent or Application [R-1] 


37 CFR 3.21.    Identification of patents and patent applications. 
        **>An assignment relating to a patent must identify the patent by 
the  patent number. An assignment relating to a national patent 
application must  identify the national patent application by the 
application number (consisting  of the series code and the serial number, 
e.g., 07/123,456).  An assignment  relating to an international patent 
application which designates the United  States of America must identify 
the international application by the international  application number 
(e.g., PCT/US90/01234). If an assignment of a patent application  filed under 
# 1.53(b)(1) or  # 1.62 is executed concurrently with, or subsequent to, 
the  execution of  the patent application, but before the patent 
application is  filed, it must identify the patent application by its date 
of execution, name  of each inventor, and title of the invention so that 
there can be no mistake  as to the patent application intended. If an 
assignment of a provisional application  is executed before the 
provisional application is filed, it must identify the  provisional 
application by the name of each inventor and title of the invention  so 
that there can be no mistake as to the provisional application intended.< 
The patent or patent application to which an assignment relates must be 
identified  by patent number or application number unless the assignment 
is executed concurrently  with or subsequent to the execution of the 
application but before the application  is filed. Then, the application 
must be identified by the date of execution,  the names(s) of the 
inventors, and the title of the invention. >If an assignment  of a 
provisional application is executed before the provisional application  is 
filed, it must identify the provisional application by names(s) of the 
inventors  and the title of the invention.< 

The Office makes every effort to provide applicants with the application 
numbers  for newly filed patent applications as soon as possible. It is 
suggested, however,  that an assignment be written to allow entry of the 
identifying number after  the execution of the assignment. An example of 
acceptable wording is: 
``I hereby authorize and request my attorney, (Insert name), of (Insert 
address),  to insert here in parentheses (Application number             , 
filed 
    ) the filing date and application number of said application when 
known." 


302.04      Foreign Assignee May Designate Domestic Representative 

35 U.S.C. 293       Nonresident patentee; service and notice. 

Every patentee not residing in the United States may file in the Patent 
and  Trademark Office a written designation stating the name and address 
of a person  residing within the United States on whom may be served 
process or notice of  proceedings affecting the patent or rights 
thereunder. If the person designated  cannot be found at the address given 
in the last designation, or if no person  has been designated, the United 
States District Court for the District of Columbia  shall have 
jurisdiction and summons shall be served by publication or otherwise  as 
the court directs. The court shall have the same jurisdiction to take any 
action respecting the patent or rights thereunder that it would have if 
the  patentee were personally within the jurisdiction of the court. 

37 CFR 3.61.    Domestic representative. 

If the assignee of a trademark application or registration is not 
domiciled  in the United States, the assignee must designate, in writing 
to the Office,  a domestic representative.  An assignee of a patent 
application or patent may  designate a domestic representative if the 
assignee is not residing in the  United States. The designation shall 
state the name and address of a person  residing within the United States 
on whom may be served process or notice of  proceedings affecting the 
application, patent or registration or rights thereunder. 
An assignee not domiciled in the United States may, by  written document 
signed  by such assignee, designate a domestic representative. The 
designation of domestic  representative should always be a paper separate 
from any assignment document,  in order that the paper of designation can 
be retained in the appropriate application  or patent file. Also, there 
should be a separate paper of designation of representative  for each 
patent or application, so that a designation paper can be placed in  each 
file. The designation of a domestic representative should be directed  to 
the Office of the Solicitor for processing. 


302.05      Address of Assignee 


The address of the assignee may be recited in the assignment document and 
must  be given in the required cover sheet.  See MPEP w 302.07. 


302.06      Fee for Recording 


37 CFR 3.41.    Recording fees. 

All requests to record documents must be accompanied by the appropriate 
fee.  A fee is required for each application, patent and registration 
against which  the document is recorded as identified in the cover sheet. 
The recording fee  is set in w 1.21(h) of this chapter for patents and in 
w 2.6(q) of this chapter  for trademarks. 



The recording fee set forth in 37 CFR 1.21(h) is charged for each patent 
application  and patent identified in the required cover sheet. 


302.07      Assignment Document Must Be Accompanied by a Cover Sheet 

37 CFR 3.28.    Requests for recording. 

Each document submitted to the Office for recording must be accompanied by 
 at least one cover sheet as specified in w 3.31 referring either to those 
patent  applications and patents, or to those trademark applications and 
registrations,  against which the document is to be recorded. If a 
document to be recorded  includes interests in, or transactions involving, 
both patents and trademarks,  separate patent and trademark cover sheets 
must be submitted. Only one set  of documents and cover sheets to be 
recorded should be filed. If a document  to be recorded is not accompanied 
by a completed cover sheet, the document  and any incomplete cover sheet 
will be returned pursuant to w 3.51 for proper  completion of a cover 
sheet and resubmission of the document and a completed  cover sheet. 

37 CFR 3.31.    Cover sheet content. 

(a)   Each patent or trademark cover sheet required by w 3.28 must 
contain: 
(1)   The name of the party conveying the interest; 

(2)   The name and address of the party receiving the interest; 

(3)   A description of the interest conveyed or transaction to be 
recorded; 
(4)   Each application number, patent number or registration number 
against  which the document is to be recorded, or an indication that the 
document is  filed together with a patent application; 

(5)   The name and address of the party to whom correspondence concerning 
the  request to record the document should be mailed; 

(6)   The number of applications, patents or registrations identified in 
the  cover sheet and the total fee; 

(7)   The date the document was executed; 

(6)   The number of applications, patents or registrations identified in 
the  cover sheet and the total fee; 

(7)   The date the document was executed; 

(8)   An indication that the assignee of a trademark application or 
registration  who is not domiciled in the United States has designated a 
domestic representative 
(see w 3.61); and 

 (9)    A statement by the party submitting the document that to the best 
of  the person's knowledge and belief, the information contained on the 
cover sheet  is true and correct and any copy submitted is a true copy of 
the original document;  and 

(10)    The signature of the party submitting the document. 

(b)   A cover sheet may not refer to both patents and trademarks. 
Each assignment document submitted to the Office for recording must be 
accompanied  by a cover sheet as required by 37 CFR 3.28.  The patent 
cover sheet must contain: 
(1)   the name of the party conveying the interest; 

(2)   the name and address of the party receiving the interest; 

(3)   a description of the interest conveyed or transaction to be 
recorded; 
(4)   each patent application number or patent number against which the 
document  is to be recorded, or an indication that the document is filed 
together with  a patent application; 

(5)   the name and address of the party to whom correspondence concerning 
the  request to record the document should be mailed; 

(6)   the number of patent applications and patents identified in the 
cover  sheet and the total fee; 

(7)   the date the document was executed; 

(8)   a statement by the party submitting the document that to the best of 
 the person's knowledge and belief, the information contained on the cover 
sheet  is true and correct and any copy submitted is a true copy of the 
original document;  and 

(9)   the signature of the party submitting the document. 

The  term  ``party"  as used in 37 CFR 3.31 means the person whose name 
appears  on the documents to be recorded, that person's attorney or 
registered agent,  or an appropriate official where a corporation's or 
other organization's name  appears on the document. 

Examples of the type of descriptions of the interest conveyed or 
transaction  to be recorded that can be identified are: (1) assignment, 
(2) security agreement, 
(3) merger, (4) change of name, (5) license, (6) foreclosure, (7) lien and 
(8) contract. 

A patent cover sheet may not refer to trademark 
applications or registrations. 


302.08      Mailing Address for Submitting Assignment Documents 


37 CFR 3.27.    Mailing address for submitting documents to be recorded. 
Documents and cover sheets to be recorded should be addressed to the 
Commissioner  of Patents and Trademarks, Box Assignments, Washington, DC 
20231, unless they  are filed together with new applications or with a 
petition under w 3.81(b). 
37 CFR 3.27 has been added to set out how documents submitted for 
recording  should be addressed to the Office. To ensure prompt and proper 
processing,  documents and their cover sheets should be addressed to the 
Commissioner of  Patents and Trademarks, Box Assignments, Washington, DC 
20231, unless they  are filed together with new applications or with a 
petition under 
37 CFR 3.81(b). Petitions under 37 CFR 3.81(b) should 



be addressed to the Commissioner of Patents and Trademarks, Box DAC, 
Washington,  DC 20231. New applications and other petitions should be 
addressed to the Commissioner  of Patents and Trademarks, Washington, DC 
20231. 


303   Assignment Documents Not Endorsed on Pending Applications 


Certified copies of patent applications as filed, do not include an 
indication  of assignment documents. Applicants desiring an indication of 
assignment documents  of record should request separately certified copies 
of assignment documents  and submit the fees required by 
37 CFR 1.19. 

When the determination of the assignment condition of an application is 
significant,  as when applications of 


different inventors contain conflicting claims, it is necessary for the 
examining  group to submit the application to the Assignment Search Branch 
for a title  report. See MPEP w 319 and w 320. 


306   Assignment of Division, Continuation, Substitute, and 
Continuation-in-Part in Relation to Parent Case 

In the case of a division or continuation, a prior assignment recorded 
against  the original application is applied to the division or 
continuation application  because the assignment recorded against the 
original application gives the  assignee rights to the subject matter 
common to both applications. 
In the case of a substitute or continuation-in-part, a prior assignment of 
 the original application is not applied to the substitute or 
continuation-in-part  application because the assignment recorded against 
the original application  gives the assignee rights to only the subject 
matter common to both applications.  Substitute or continuation-in-part 
applications require a new assignment if  they are to be issued to an 
assignee. 

The front page of the printed patent includes all identifying parent data 
of  continuation-in-part, continuation, divisional, and reissue 
applications.   It should be noted, however, that inclusion of this 
information does not necessarily  indicate that the claims are entitled to 
the benefit of the earlier filing  date. 


>306.01       Assignment of an Application Claiming the Benefits of a 
Provisional Application [R-1] 

An application claiming the priority benefits of a provisional application 
 under 35 U.S.C. 119(e) should not be called a continuation, division, or 
continuation-in-part  even though the claim for priority from a 
provisional application would make  it appear to be one of these types of 
continuing applications. The benefit  of an earlier filing date for 
continuations, divisions, and continuations-in-part  may be claimed under 
the provisions of 35 U.S.C. 120 while the benefit of an  earlier filing 
date of a provisional application may be claimed under the provisions  of 
35 U.S.C. 119(e). 

As set forth in MPEP # 306, assignments recorded against an original 
application  gives the assignee rights to the subject matter common to 
both applications. 
 Therefore, a prior assignment in a parent application carries over into 
continuation  and division applications since all subject matter contained 
in the continuation  or division application was included in the parent. 
Continuations-in-part  require new assignments due to the additional 
material included therein. 
If an application which claims the earlier filing date of a provisional 
application  under 35 U.S.C. 119(e) includes only subject matter which 
formed a part of  the provisional application, an assignment recorded 
against the provisional  application will be effective in the later 
application, similar to the practice  with respect to continuations and 
divisions filed under 35 U.S.C. 120.  If  an application claiming the 
earlier filing date of a provisional application  includes subject matter 
that is not common with subject matter of the provisional  application, 
new assignment papers must be submitted in the later application,  similar 
to the practice with respect to continuations-in-part filed under 35 
U.S.C. 120.< 


307   Issue to Assignee 


35 U.S.C. 152.          Issue of patent to assignee. 

Patents may be granted to the assignee of the inventor of record in the 
Patent  and Trademark Office, upon the application made and the 
specification sworn  to by the inventor, except as otherwise provided in 
this title. 

37 CFR 3.81.    Issue of patent to assignee. 

(a)   For a patent application, if an assignment of the entire right, 
title  and interest is recorded before the issue fee is paid, the patent 
may issue  in the name of the assignee. If the assignee holds an undivided 
part interest,  the patent may issue jointly to the inventor and the 
assignee.  At  the time the issue fee is paid, the name of the assignee 
must be provided if  the patent is to issue solely or jointly to that 
assignee. 

 (b)    If the assignment is submitted for recording after the date of 
payment  of the issue fee, but prior to issuance of the patent, the 
assignee may petition  that the patent issue to the assignee. Any such 
petition must be accompanied  by the fee set forth in w 1.17(i)(1) of this 
chapter. 

Normally, for the patent to issue to an assignee, the assignment must be 
recorded  in the Patent and Trademark Office at a date not later than the 
day on which  the issue fee is paid.  If the assignment is submitted for 
recording after  the day on which the issue fee is paid, the patent may 
issue to an assignee  upon granting a petition filed under 37 CFR 3.81. 

Only the first appearing name of an assignee will be printed on the patent 
 where multiple names for the same party are identified on the Issue Fee 
Transmittal  form, PTOL-85B.  Such multiple names may occur when both a 
legal name and an  ``also known as" or  ``doing business as" name is also 
included.  This printing  practice will not, however, affect the existing 
practice of recording assignments  with the Office in the Assignment 
Division.  The assignee entry on form PTO-85B  should still be completed 
to indicate the assignment data as recorded in the  Office. For example, 
the assignment filed in the Office and, therefore, the  PTOL-85B assignee 
entry might read ``Smith Company doing business as (d.b.a.)  Jones 
Company." The assignee entry on the printed patent will read ``Smith 
Company." 

Irrespective of whether the assignee participates in the prosecution of 
the  application, the patent issues to the assignee if so indicated on the 
Issue  Fee Transmittal form PTOL-85B. Unless an assignee's name and 
address are identified  in item 5 of the Issue Fee Transmittal form 
PTOL-85B, the patent will issue  to the applicant. Assignment data printed 
on the patent will be based solely  on the information so supplied. 

A request for a certificate of correction under 37 CFR 1.323 (see MPEP # 
1481  and # 1485) arising from incomplete or erroneous assignee's name 
furnished  in item 5 of PTOL-85B will not be granted unless a petition 
under 37 CFR 1.183  has been granted.  Any such petition under 37 CFR 
1.183 should be directed  to the Office of Petitions and should include: 
(1) the petition fee required  by 37 CFR 1.17(h); (2) a request that 37 
CFR 3.81(a) be waived to permit the  correct name of the assignee to be 
provided after issuance of the patent; (3)  a statement (verified if made 
by other than a registered attorney or agent)  that the failure to include 
the correct assignee name on the PTOL-85B was inadvertent;  and (4) a copy 
of the Notice of Recordation of Assignment Document. 

309   Restrictions Upon Employees of Patent and Trademark Office 


35 U.S.C. 4.    Restrictions on officers and employees as to interests in 
patents. 
Officers and employees of the Patent and Trademark Office shall be 
incapable,  during the period of their appointments and for one year 
thereafter, of applying  for a patent and of acquiring, directly or 
indirectly, except by inheritance  or bequest, any patent or any right or 
interest in any patent, issued or to  be issued by the Office. In patents 
applied for thereafter they shall not be  entitled to any priority date 
earlier than one year after the termination of  their appointment. 


310   Government License Rights to Contractor-Owned Inventions Made Under 
Federally Sponsored Research and Development 

Where a Government contractor retains U.S. domestic patent rights, the 
contractor  is required to include the following statement at the 
beginning of the application  and any patents issued thereon: 

``The U.S. Government has a paid-up license in this invention and the 
right  in limited circumstances to require the patent owner to license 
others on reasonable  terms as provided for by the terms of (contract No. 
or Grant No.) awarded  by (Agency)." 

If reference is made in the first sentence of the application to prior 
copending  applications of the applicant, such prior applications must be 
referred to  in the first sentence of the specification (37 CFR 1.78(a) 
and MPEP w 201.11),  and in this case the required ``Government License 
Rights" statement should  follow immediately as the second paragraph of 
the specification. 

If there is no reference to an earlier application, the required 
``Government  License Rights" statement should appear as the first 
paragraph of the specification. 

311   Filing of Notice of Arbitration Awards 


35 U.S.C. 294.          Voluntary arbitration. 

 (a)    A contract involving a patent or any right under a patent may 
contain  a provision requiring arbitration of any dispute relating to 
patent validity  or infringement arising under the contract. In the 
absence of such a provision,  the parties to an existing patent validity 
or infringement dispute may agree  in writing to settle such dispute by 
arbitration. Any such provision or agreement  shall be valid, irrevocable, 
and enforceable, except for any grounds that exist  at law or in equity 
for revocation of a contract. 



(b)   Arbitration of such disputes, awards by arbitrators and confirmation 
 of awards shall be governed by title 9, United States Code, to the ex- 
tent  such title is not inconsistent with this section. In 

any such arbitration proceeding, the defenses provided for under section 
282  of this title shall be considered by the arbitrator if raised by any 
party  to the proceeding. 

(c)   An award by an arbitrator shall be final and binding between the 
parties  to the arbitration but shall have no force or effect on any other 
person.   The parties to an arbitration may agree that in the event a 
patent which is  the subject matter of an award is subsequently determined 
to be invalid or  unenforceable in a judgment rendered by a court of 
competent jurisdiction from  which no appeal can or has been taken, such 
award may be modified by any court  of competent jurisdiction upon 
application by any party to the arbitration.  Any such modification shall 
govern the rights and obligations between such  parties from the date of 
such modification. 

(d)   When an award is made by an arbitrator, the patentee, his assignee 
or  licensee shall give notice thereof in writing to the Commissioner. 
There shall  be a separate notice prepared for each patent involved in 
such proceeding.  Such notice shall set forth the names and addresses of 
the parties, the name  of the inventor, and the name of the patent owner, 
shall designate the number  of the patent, and shall contain a copy of the 
award. If an award is modified  by a court, the party requesting such 
modification shall give notice of such  modification to the Commissioner. 
The Commissioner shall, upon receipt of either  notice, enter the  same in 
the record of the prosecution of such patent. If  the required notice is 
not filed with the Commissioner, any  party to the proceeding  may provide 
such notice to the Commissioner. 

(e)   The award shall be unenforceable until the notice required by 
subsection 
(d) is received by the Commissioner. 

37 CFR 1.335.       Filing of notice of arbitration awards. 

(a)   Written notice of any award by an arbitrator pursuant to 
35 U.S.C. 294 must be filed in the Patent and Trademark Office by the 
patentee,  or the patentee's assignee or licensee. If the award involves 
more than one  patent a separate notice must be filed for placement in the 
file of each patent.  The notice must set forth the patent number, the 
names of the inventor and  patent owner, and the names and addresses of 
the parties to the arbitration.  The notice must also include a copy of 
the award. 

(b)   If an award by an arbitrator pursuant to 35 U.S.C. 294 is modified 
by  a court, the party requesting the modification must file in the Patent 
and  Trademark Office, a notice of the modification for placement in the 
file of  each patent to which the modification applies. The notice must 
set forth the  patent number, the names of the inventor and patent owner, 
and the names and  addresses of the parties to the arbitration. The notice 
must also include a  copy of the court's order modifying the award. 

(c)   Any award by an arbitrator pursuant to 35 U.S.C. 294 shall be 
unenforceable  until any notices required by paragraph (a) or (b) of this 
section are filed  in the Patent and Trademark Office. If any required 
notice is not filed by  the party designated in paragraph (a) or (b) of 
this section, any party to  the arbitration proceeding may file such a notice. 

The written notices required by this section should be directed to the 
attention  of the Office of the Solicitor, which Office will be 
responsible for processing  such notices. 


313   Recording of Licenses, Security Interests, And Other Documents Other 
Than Assignments 

In addition to assignments, other documents affecting title to a patent or 
 application will be recorded in the Assignment Division of the Patent and 
Trademark  Office. Documents not affecting title may be recorded at the 
discretion of  the Commissioner. (37 CFR 3.11). 

Thus, some documents which relate to patents or applications will be 
recorded,  although they do not constitute a transfer or change of title. 
Typical of these  documents which are accepted for recording are license 
agreements and agreements  which convey a security interest. Such 
documents are recorded in the public  interest in order to give third 
parties notification of equitable interests  or other matters relevant to 
the ownership of a patent or application. 
Any document returned unrecorded, which the sender nevertheless believes 
represents  an unusual case which justifies recordation, may be submitted 
to the Office  of Petitions in the Office of the Assistant Commissioner 
for Patents with a  petition under 37 CFR 1.181 
requesting recordation of the document. 

The recordation of a document is not a determination of the effect of the 
document  on the chain of title. The determination of what, if any, effect 
a document  has on title will be made by the Office at such times as 
ownership must be  established to permit action to be taken by the Office 
in connection with a  patent or an application. See MPEP w 324. 


314   Certificates of Change of Name or of Merger 


Certificates issued by appropriate authorities showing a change of name of 
 a business or a merger of businesses are recordable.  Although a mere 
change  of name does not constitute a change in legal entity, it is 
properly a link  in the chain of title. Documents of merger are also 
proper links in the chain  of title. They may represent a change of entity 
as well as a change of name. 

315   Indexing Against a Recorded Certificate 


A certificate of change of name or merger does not have to include in it 
the  patent number(s) or application number(s) to which it pertains, but 
the patent  number(s) or application number(s) must be furnished on the 
cover sheet. 


Other patent numbers or application numbers may be submitted later to be 
indexed  against the recorded certificate of change of name or  merger, 
which will be  done for a fee for each additional patent or application 
identified on the  coversheet. (This procedure of indexing does not apply 
to assignments since  the applications and patents assigned must be 
identified in the assignment;  37 CFR 3.21). 


317   Handling of Documents in the Assignment Division 


All documents and cover sheets submitted for recording are examined for 
formal  requirements in the Assignment Division in order to separate 
documents which  are recordable from those which are not recordable. 

Documents and cover sheets which are considered not to be recordable are 
returned  to the sender by the Assignment Division with an explanation. If 
the sender  disagrees or  believes that the document represents an unusual 
case which justifies  recordation, the sender may present the question to 
the Commissioner by way  of petition under 37 CFR 1.181, filed with the 
Office of Petitions in the Office  of the Assistant Commissioner for Patents. 

After an assignment and cover sheet have been recorded, they will be 
returned  to the name and address indicated on the cover sheet to receive 
correspondence,  showing the reel and frame number. 


317.01      Recording Date 


37 CFR 3.51.    Recording date. 

The date of recording of a document is the date the document  meeting the 
requirements  for recording set forth in this Part is  filed in the 
Office. A document which  does not comply with the identification 
requirements of w 3.21 will not be  recorded. Documents not meeting the 
other requirements for recording, for example,  a document submitted 
without a completed cover sheet or without the required  fee, will be 
returned for correction to the sender where a correspondence address  is 
available.  The returned  papers, stamped with the original date of 
receipt  by the Office, will be accompanied by a letter which will 
indicate that if  the returned papers are corrected and resubmitted to the 
Office within the  time specified in the letter, the Office will consider 
the original date of  filing of the papers as the date of recording of the 
document. The certification  procedure under either w 1.8 or w 1.10 of 
this Chapter may be used for resubmissions  of returned papers to have the 
benefit of the date of deposit in the United  States Postal Service. If 
the returned papers are not corrected and resubmitted  within the 
specified  period, the date of filing of the corrected papers will  be 
considered to be the date of recording of the document. The specified 
period  to resubmit the returned papers will not be extended. 

The date of recording of a document is the date the document meeting the 
requirements  for recording set forth in the regulations is filed in the 
Office.  A document  which does not comply with the identification 
requirements of 37 CFR 3.21 will  not be recorded.  Documents 

not meeting the other requirements for recording, for example, a document 
submitted  without a completed cover sheet or without the required fee, 
will be returned 
 for correction to the sender where a correspondence address is available. 

317.02      Correction of Returned Documents and Cover Sheets 


Assignment documents and cover sheets which are returned by Assignment 
Division  will be stamped with the original date of receipt by the Office 
and will be  accompanied by a letter which will indicate that if the 
returned papers are  corrected and resubmitted to the Office within the 
time specified in the letter,  the Office will consider the original date 
of filing of the papers as the date  of recording of the document.  See 37 
CFR 3.51.  The certification procedure  under either 37 CFR 1.8 or 1.10 
may be used for resubmissions of returned papers  to obtain the benefit of 
the date of deposit in the United States Postal Service. 
 If the returned papers are not corrected and resubmitted within the 
specified  period, the date of filing of the corrected papers will be 
considered to be  the date of recording of the document. The specified 
period to resubmit the  returned papers will not be extended. 


317.03      Effect of Recording 


37 CFR 3.54.    Effect of recording. 

The recording of a document pursuant to w 3.11 is not a deter- mination by 
 the Office of the validity of the document or the effect that document 
has  on the title to an application, a patent, or a registration.  When 
necessary,  the Office will determine what effect a document has, 
including whether a party  has the authority to take an action in a matter 
pending before the Office. 
37 CFR 3.56.    Conditional assignments. 

Assignments which are made conditional on the performance of certain acts 
or  events, such as the payment of money or other condition subsequent, if 
recorded  in the Office, are regarded as absolute assignments for Office 
purposes until  canceled with the written consent of all parties or by the 
decree of a court  of competent jurisdiction. The Office does not 
determine whether such conditions  have been fulfilled. 



The recording of a document is not a determination by the Office of the 
validity  of the document or the effect that document has on the title to 
an application  or patent.  When necessary, the Office will determine what 
effect a document has, including whether a party has the authority to take 
 an action in a matter pending before the Office.  See MPEP w 324. 
37 CFR 3.56 provides that an assignment, which at the time of its 
execution  is conditional on a given act or event, will be treated by the 
Office as an  absolute assignment. This rule serves as notification as to 
how a conditional  assignment will be treated by the Office in any 
proceeding requiring a determination  of the owner of an application, 
patent, or registration. Since the Office will  not determine whether a 
condition has been fulfilled, the Office will treat  the submission of 
such an assignment for recordation as signifying that the  act or event 
has occurred.  A security agreement which does not convey the  right, 
title, and interest of a patent property is not a conditional assignment. 

318   Documents Not to be Placed in Files 


Assignment documents submitted for recording should not be placed directly 
 in application or patent files, but should be forwarded to Assignment 
Division  for recording. 


319   Examining Group May Request Report on Title 


If the Examining Group requires a title report, the group may forward the 
file  to the Assignment Search Branch with a request that the Assignment 
Search Branch  furnish a title report based upon the records of the 
Assignment Division. The  Assignment Search Branch will furnish a report 
as to the owner of record relating  to the particular file. 


320   Title Reports 


The ``title report" is a form which can be used under certain 
circumstances  by the Assignment Search Branch to report to someone within 
the Office the  name of the owner of an application or patent as shown by 
the Assignment Division  records on the date the title report is made. For 
example, a title report is  requested by the Reexamination Preprocessing 
Unit when a request for reexamination  is filed. Title reports are for 
internal Office use only, and are not available  for order by applicants 
or attorneys except as provided by 37 CFR 1.171. 
Note: The public can request a certified abstract of title. The fee for 
this  service is set forth at 37 CFR 


1.19(b)(4). See MPEP w 301.01 for a discussion of which assignment records 
 are publicly available. 

It is not normally necessary for title to be ascertained by an examiner by 
 means of the ``title report" form, since such information is not required 
to  examine the application. However, a title report is required if an 
applicant  orders a title report in accordance with 37 CFR 1.171.  See 
also MPEP w 303. 
For applicants, the normal method of establishing title is to file in the 
Assignment  Division of the 
Office all assignment documents which convey title.  After that is done, a 
 person may verify or declare that he or she is the owner on the basis of 
the  records of the Office. 


323   Procedures for Correcting Errors in Recorded Assignment Document 

An error in a recorded assignment document will be  corrected by 
Assignment  Division only when the following criteria are met: 

A new assignment document signed by the same party or parties is submitted 
 for recording. The new document must; 

(a)   acknowledge and correct the error in the original assignment 
document, 
(b)   confirm title in the proper assignee, and 

(c)   identify the incorrectly recorded assignment document by reel and 
frame  number. 

A new recording fee is required (see MPEP w 302.06): 

If the correction pertains to the name of a corporation or other 
organization  or individual, a verified statement setting forth how the 
error occurred is  required. 

If a patent or patent application is incorrectly included in a merger or 
change  of name (see MPEP 
w 314), it can be corrected by the party conveying the interest by lining 
out  the incorrect patent or application number on the original recorded 
document  and having the party conveying the interest initial and date the 
deletion.  This document would then be recorded as a correction document 
and given a new  reel and frame number and recording date. The recording 
fee set forth in 37  CFR 1.21(h) is charged for each patent application 
and patent against which  the cor- 




rected document is being recorded.  If the patent or patent application 
number  is included in a list of properties which have been incorporated 
into the merger  or change of name document and this appears on the 
official microfilm records of the Patent and Trademark Office, the party 
conveying  the interest must then submit a verified statement attesting to 
the error,  stating the reel and frame number where the error appeared and 
requesting that  the incorrect number be deleted. 

Office policy regarding recordation of assignment documents is directed 
toward  maintaining a complete history of claimed interests in property 
and, therefore,  recorded assignment documents will not be expunged even 
if subsequently found  to be invalid.  See In re Ratny, 24 USPQ 2d 1713 
(Comm'r 
Pat. 1992). 


323.01      Correction of Error in Recorded Cover Sheet 


37 CFR 3.34.    Correction of cover sheet errors. 

 (a)            An error in a cover sheet recorded pursuant to w 3.11 will 
 be corrected only if: 

(1)   The error is apparent when the cover sheet is compared with the 
recorded  document to which it pertains, and 

(2)   A corrected cover sheet is filed for recordation. 

(b)   The corrected cover sheet must be accompanied by the originally 
recorded  document or a copy of the originally recorded document and by 
the recording  fee as set forth in w  3.41. 

Any alleged error in a recorded cover sheet will only be corrected if the 
error  is apparent from a comparison with the recorded assignment 
document. The corrected  cover sheet should be directed to Assignment 
Division. 


324   Establishing Right of Assignee to Take Action [R-2] 


37 CFR 3.73.      Establishing right of assignee to prosecute. 

(a)     The inventor is presumed to be the owner of a patent application, 
and  any patent that may issue therefrom, unless there is an assignment. 
The original  applicant is presumed to be the owner of a trademark 
application unless there  is an assignment. 

(b)   When the assignee of the entire right, title and interest seeks to 
take  action in a matter before the Office with respect to a patent 
application,  trademark application, patent, registration, or 
reexamination proceeding, the 
 assignee  must establish  its  ownership  of  the  property  to  the 
satisfaction 
 of the Commissioner. Ownership is established by submitting to the Office 
 documentary evidence of a chain of title from the original owner to the 
assignee  or by specifying (e.g. reel and frame number, etc.) where such 
evidence is  recorded in the Office. Documents submitted to establish 
ownership may be required  to be recorded as a condition to permitting the 
assignee to take action in  a matter pending before the Office.  In 
addition, the assignee of a patent  application or patent must submit a 
statement specifying that the evidentiary 
 documents  have  been   reviewed  and  certifying   that, to  the best of 
 assignee's knowledge and belief, title is in the assignee seeking to take 
the  action. 

When the assignee of the entire right, title, and interest first seeks to 
take  action in a matter before the Office with respect to a patent 
application,  patent, or reexamination proceeding, the assignee must 
establish its ownership  of the property to the satisfaction of the 
Commissioner. 37 CFR 3.73(b). The  assignee's ownership may be established 
either 

(1)   by submitting to the Office copies of the documentary evidence of a 
chain  of title from the original inventor to the assignee, or 

(2)   by specifying, by reel and frame number, for example, where such 
documentary  evidence is recorded in the Office. 

In addition to the establishment of ownership, there is a further 
requirement  that the assignee submit a statement specifying that the 
evidentiary documents  have been reviewed and certifying that, to the best 
of the assignee's knowledge  and belief, title is in the assignee seeking 
to take action. Once 37 CFR 3.73(b)  is complied with by an assignee, that 
assignee may continue to take action  in that application, patent, or 
reexamination proceeding without filing a 37  CFR 3.73(b) statement each 
time, provided that ownership has not changed. 
When an assignee files a continuation or divisional  application (under 37 
 CFR 1.53, 1.60, or 1.62), reference may be made to a statement filed 
under  37 CFR 3.73(b) in the parent application or a copy of that 
statement may be  filed. A newly executed statement under 37 CFR 3.73(b) 
must be filed when a  continuation-in-part 
application is filed by an assignee. 

The statement by the assignee must be signed by a person having authority 
to  do so.  For example, the statement under 37 CFR 3.73(b) may be signed 
on behalf  of the assignee in the following two manners if the assignee is 
an organization 
(e.g., corporation, partnership, university, government agency, etc.). 
(1)   The statement may be signed by a person in the organization having 
apparent  authority to sign on behalf of the organization. An officer 
(president, vice-president,  secretary, or treasurer) is presumed to have 
authority to sign on behalf of  the organization. The signature of the 
chairman of the board of directors is acceptable, but not the signature of 
an individual director. Modifications  of these basic titles are accept- 




able, such as vice-president for sales, executive vice-president, 
assistant  treasurer, vice-chairman of the board of directors. A person 
having a title 
(manager, director, administrator, general counsel) that does not clearly 
set  forth that person as an officer of the assignee is not presumed to be 
an officer  of the assignee or to have authority to sign the statement on 
behalf of the  assignee. A power of attorney from the inventors in an 
organization to a practitioner  to prosecute a patent application does not 
make the practitioner an official  of an assignee or empower the 
practitioner to sign the statement on behalf  of the assignee. 

(2)   The statement may be signed by any person, if the  statement 
includes  an averment that the person is empowered to sign the statement 
on behalf of  the assignee.  If not signed by a registered practitioner, 
the statement including  the averment must be in oath or declaration form. 
 Where a statement does not  comply with (1) or (2) above, evidence of the 
person's authority to sign will  be required. 

Examples of situations where ownership must be established and the 
statement  under 37 CFR 3.73(b) must be submitted are when the assignee: 
signs a request  for status of an application or gives a power to inspect 
an ap-plication (MPEP  w 102); acquiesces to express abandon- 
ment of an application (MPEP w 711); appoints its own 

legal representative (37 CFR 3.71 and MPEP w 402.07); signs a terminal 
disclaimer 
(MPEP w 1490); consents to the filing of a reissue application (MPEP w 
1410.01);  consents to the correction of inventorship (MPEP w 201.03 or 
1481); files an  application under 37 CFR 1.47(b) (MPEP w 409.03(b)) or 37 
CFR 1.475; signs  an Issue Fee Transmittal (PTOL-85B) (MPEP w 1306); or 
signs a 
response to an Office action. 

Examples of situations where ownership need not be established and a 
statement  under 37 CFR 3.73(b) is not required to be submitted are when 
the assignee: 
 signs a small entity statement (MPEP w 509.03); signs an affidavit or 
declaration  of common ownership of two inventions (MPEP w *>706.02(k)<); 
signs a NASA or  DOE property rights statement (MPEP w 151); signs an 
affidavit under 37 CFR  1.131 where the inventor is unavailable (MPEP 
w 715.04); signs a certificate under 37 CFR 1.8 (MPEP 
w 512); or files a request for reexamination of a patent under 37 CFR 
1.510 
 (MPEP w 2210). 

Form PTO/SB/ 96 may be used for an acceptable certification under 37 CFR 
3.73(b). 
>Form PTO-1595, Recordation Form Cover Sheet, may be used as the cover 
sheet  for recording documents relating to patent(s) and/or patent 
application(s)  in the Office.< 



A32400001.bmp 



A32400001.end 



A32400002.bmp 



A32400002.end 



A32400003.bmp 



A32400003.end 


Contents 

401         Patent and Trademark Office Cannot Aid in Selection of 
            Attorney 

402         Power of Attorney 

402.01      Exceptions as to Registration 

402.02      Appointment of Associate Attorney or Agent 

402.05      Revocation 

402.06      Attorney or Agent Withdraws 

402.07      Assignee Can Revoke Power of Attorney of Applicant 

402.08      Application in Interference 

402.09      International Application 

402.10      Appointment/Revocation by Less Than All Applicants 
            or Owners 

403         Correspondence - With Whom Held 

403.01      Correspondence Held With Associate Attorney 

403.02      Two Attorneys for Same Application 

404         Conflicting Parties Having Same Attorney 

405         Attorney Not of Record 

406         Death of Attorney 

407         Disbarred Attorney 

408         Telephoning Attorney 

409         Death, Insanity, or Unavailability of Inventor 

409.01      Death of Inventor 

409.01(a)   Prosecution by Administrator or Executor 

409.01(b)   Proof of Authority of Administrator or Executor 

409.01(c)   After Administrator or Executor Has Been 
            Discharged 

409.01(d)   Exception in Some Foreign Countries 

409.01(e)   If Applicant of Assigned Application Dies 

409.01(f)   Intervention of Executor Not Compulsory 

409.02      Insanity or Other Legal Incapacity 

409.03      Unavailability of Inventor 

409.03(a)   At Least One Joint Inventor Available 

409.03(b)   No Inventor Available 

409.03(c)   Legal Representatives of Deceased Inventor Not 
            Available 

409.03(d)   Proof of Unavailability or Refusal 

409.03(e)   Statement of Last Known Address 

409.03(f)   Proof of Proprietary Interest 

409.03(g)   Proof of Irreparable Damage 

409.03(h)   Acceptance of a 37 CFR 1.47 Application 

409.03(i)   Rights of the Nonsigning Inventor 

409.03(j)   Action Following Acceptance of a 37 CFR 1.47 
            Application 


401   Patent and Trademark Office Cannot Aid in Selection of Attorney 

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

An applicant for patent may file and prosecute his or her own case, or he 
or  she may be represented by a registered attorney, registered agent, or 
other  individual authorized to practice before the Patent and Trademark 
Office in  patent cases. See ww 10.6 and 10.9 of this subchapter. The 
Patent and Trademark  Office cannot aid in the selection of a registered 
attorney or agent. 
If patentable subject matter appears to be disclosed in a pro se 
application  and it is apparent that the applicant is unfamiliar with the 
proper preparation  and prosecution of patent applications, the examiner 
may suggest to the applicant  that it may be desirable to employ a 
registered patent attorney or agent. It  is suggested that Form Paragraph 
17.01 be incorporated in an Office action  if the use of an attorney or 
agent is considered desirable and if patentable  subject matter exists in 
the application. 

W 17.01       Employ Services of Attorney or Agent 

An examination of this application reveals that applicant is unfamiliar 
with  patent prosecuting procedure. While an inventor may prosecute the 
application,  lack of skill in this field usually acts as a liability in 
affording the maximum  protection for the invention disclosed. Applicant 
is advised to secure the  services of a registered patent attorney or 
agent to prosecute the application,  since the value of a patent is 
largely dependent upon skillful preparation  and prosecution. The Office 
cannot aid in selecting an attorney or agent. 
Applicant is advised of the availability of the publication "Attorneys and 
 Agents Registered to Practice Before the U.S. Patent and Trademark 
Office."  This publication is for sale by the Superintendent of Documents, 
U.S. Government  Printing Office, Washington, D.C. 20402. 

Examiner Note: 

The examiner should not suggest that applicant employ an attorney or agent 
 if the application appears to contain no patentable subject matter. 

402   Power of Attorney 


37 CFR 1.34.    Recognition for representation. 

(a)   When a registered attorney or agent acting in a representative 
capacity  appears in person or signs a paper in practice before the Patent 
and Trademark  Office in a patent case, his or her personal appearance or 
signature shall  constitute a representation to the Patent and Trademark 
Office that under the  provisions of this Subchapter and the law, he or 
she is authorized to represent  the particular party in whose behalf he or 
she acts. In filing such a paper,  the registered attorney or agent should 
specify his or her registration number  with his or her signature. Further 
proof of authority to act in a representative  capacity may be required. 

(b)   When an attorney or agent shall have filed his or her power of 
attorney,  or authorization, duly executed by the person or persons 
entitled to prosecute  an application or a patent involved in a 
reexamination proceeding, he or she  is a principal attorney of record in 
the case. A principal attorney or agent,  so appointed, may appoint an 
associate attorney or agent who shall also then  be of record. 

The Patent and Trademark Office will continue to give effect to powers of 
attorney  and authorizations of agent naming firms filed, in patent 
applications before  July 2, 1971, and in all divisions and continuations 
thereof not requiring  execution by the applicant. Powers of attorney or 
authorizations of agent naming  firms of attorneys or agents filed in 
patent applications after July 2, 1971,  will not be recognized. However, 
the Patent and Trademark 
Office will construe any such powers or authorizations filed after July 2, 
 1971, as a direction to consider the address of the firm as the 
correspondence  address for the application. 

The privilege afforded by 37 CFR 1.34(a) as to recognition of registered 
attorneys  and agents not of record will apply to all applications and 
reexamination proceedings  whether filed before or after July 2, 1971. 
Attention is called to the replacement  of 37 CFR 1.34(a) that a 
paper filed by a registered patent attorney or agent in an application in 
which  he or she is not of record should 
include both his or her signature and number. 

Powers of attorney and authorizations of agent under 
37 CFR 1.34(b) naming one or more registered individuals may be made. 
Acceptance of papers filed in patent applications and reexamination 
proceedings  by registered attorneys and agents upon a representation that 
the attorney  or agent is authorized to act in a representative capacity 
is for the purpose  of facilitating responses on behalf of applicants in 
patent applications and,  further, to obviate the need for filing powers 
of attorney or authorizations  of agent in individual applications or 
patents when there has been a change  in composition of law firms or 
corporate patent staffs. Interviews with a registered  attorney or agent 
not of record will, in view of 35 U.S.C. 122, be conducted  only on the 
basis of information and files supplied by the attorney or agent.  A 
person acting in a representative 
capacity may not sign a power of attorney or a document granting access to 
 an application. 

Usually a power of attorney is made a part of the 
application oath or declaration. In order that this power may be valid, 
the  attorney or agent appointed must be registered. A power of attorney 
or authorization  given to a registered Canadian patent agent, to be 
valid, must be given by  the applicants, all of whom are located in 
Canada. See 37 CFR 10.6(c). 
When an application for patent is filed accompanied by a power of attorney 
 or authorization of agent to a person not registered to practice before 
the  United States Patent and Trademark Office, the Application Division 
will send  the official filing receipt directly to the 
applicant, together with an explanatory letter. A copy of the letter will 
be  sent to the person named in the power or authorization and a copy 
placed in  the file without being given a paper number. The name of the 
unregistered person  will not be placed on the face of the file, and the 
examiner will communicate  only with the applicant 
directly unless and until the applicant appoints a recognized 
practitioner.  An associate power of attorney or 
authorization from the unregistered person will not be recognized or 
accepted. 
In the event of a need to file a change in the power of attorney in a 
plurality  of applications or patents of a common assignee or inventive 
entity, a single,  original paper may be used provided that a reproduction 
of this original paper  is supplied in each of the affected applications 
or patents. The copy of the  original paper must identify in which 
application or patent the original paper  is located and authorize the 
public to inspect and copy the original paper  in the event one of the 
applications containing a copy matures into or is a  patent, and the 
application containing the original paper is pending or has become 
abandoned.  See MPEP w 601.03. For a representative of a requester of 
reexamination see  MPEP 
w 2213. 

37 CFR 10.18.       Signature and certificate of practitioner. 

(a)   Every paper filed by a practitioner representing an applicant or 
party  to a proceeding in the Office must bear the signature of, and be 
personally  signed by, such practitioner, except those papers which are 
required to be  signed by the applicant or party. The signature of 
practitioner to a paper  filed by him or her, constitutes a certificate that: 

(1)   The paper has been read by the practitioner; 

(2)   The paper's filing is authorized; 

(3)   To the best of his or her knowledge, information, and belief, there 
is  good ground to support the paper, including any allegation of improper 
conduct  contained or alleged therein; and 

(4)   It is not interposed for delay. 

(b)   Any practitioner knowingly violating the provisions of this section 
is  subject to disciplinary action. See w 10.23(c)(15). 

37 CFR 10.18 emphasizes every paper filed by a practitioner must be 
personally  signed by the practitioner except those required to be signed 
by the applicant,  and that there must be a reasonable basis to support every 
allegation of improper conduct made by a registered practitioner in any 
Office  proceeding. Although 37 CFR 10.18 is limited to papers filed in 
Office proceedings,  this is not intended to imply that disciplinary 
action never will be taken  against a registered practitioner under 
37 CFR 10.23(c)(18) and 10.131 for a groundless allegation of improper 
conduct  in a court proceeding. 

 37 CFR 10.11.      Removing names from registers. 

(a)   Registered attorneys and agents shall notify the Director of any 
change  of address. Any notification to the Director of any change of 
address shall  be separate from any notice of change of address filed in 
individual applications. 
(b)   A letter may be addressed to any individual on the register, at the 
address  of which separate notice was last received by the Director, for 
the purpose  of ascertaining whether such individual desires to remain on 
the register.  The name of any individual failing to reply and give any 
information requested  by the Director within a time limit specified will 
be removed from the register  and names of individuals so removed will be 
published in the Official Gazette.  The name of any individual so removed 
may be reinstated on the register as  may be appropriate and upon payment 
of the fee set forth in w 1.21(a)(3) of  this subchapter. 

See also MPEP w 1702. 


402.01      Exceptions as to Registration 


37 CFR 10.9.    Limited recognition in patent cases. 

(a)    Any individual not registered under w 10.6 may, upon a showing of 
circumstances  which render it necessary or justifiable, be given limited 
recognition by the  Director to prosecute as attorney or agent a specified 
application or specified  applications, but limited recognition under this 
paragraph shall not extend  further than the application or applications 
specified. 

(b)   When registration of a resident alien under paragraphs (a) or (b) of 
 w 10.6 is not appropriate, the resident alien may be given limited 
recognition  as may be appropriate under paragraph (a) of this section. 

Sometimes in a joint application one of the co-inventors gives to the 
other  the power of attorney in the case. Such power will be recognized 
even though  the one to whom it is given is not registered. 

If a request for special recognition accompanies the application, the 
Application  Division will forward the file to the Director of Enrollment 
and Discipline. 

402.02      Appointment of Associate Attorney or Agent 


The principal attorney or agent may appoint an associate attorney or agent 
 as provided in 37 CFR 1.34. The associate attorney may not appoint 
another  attorney. See also MPEP w 406. 


402.05      Revocation 


37 CFR 1.36.    Revocation of power of attorney or authorization; 
withdrawal  of attorney or agent. 

A power of attorney or authorization of agent may be revoked at any stage 
in  the proceedings of a case, and an attorney or agent may withdraw, upon 
application  to and approval by the Commissioner. An attorney or agent, 
except an associate  attorney or agent whose address is the same as that 
of the principal attorney  or agent, will be notified of the revocation of 
the power of attorney or authorization,  and the applicant or patent owner 
will be notified of the withdrawal of the  attorney or agent. An 
assignment will not itself operate as a revocation of  a power or 
authorization previously given, but the assignee of the entire interest 
may revoke previous powers and be represented by an attorney or agent of 
the  assignee's own selection. See w 1.613(d) for withdrawal of an 
attorney or agent  of record in an interference. 

Upon revocation of the power of attorney, appropriate notification is sent 
 by the clerk of the examining group. 

Revocation of the power of the principal attorney revokes powers granted 
by  him or her to other attorneys. 

Revocation of the power of attorney becomes effective on the date that the 
 revocation is RECEIVED 
in the Office (in contradistinction to the date of 
ACCEPTANCE). 


402.06      Attorney or Agent Withdraws [R-2] 


See 37 CFR 1.36 in MPEP w 402.05. See also 37 CFR 10.40. 

In the event that a notice of withdrawal is filed by the attorney or agent 
 of record, the file will be forwarded to the Group Director of the 
examining  group where the application is assigned where appropriate 
procedure will be  followed pertaining to the withdrawal. The withdrawal 
is effective when approved  rather than when received. 

To expedite the handling of requests for permission to withdraw as 
attorney,  under 37 CFR 1.36, **>Form PTO/SB/83 may be used.< Because the 
Office does  not recognize law firms, each attorney of record must sign 
the notice of withdrawal,  or the notice of withdrawal must contain a 
clear indication of one attorney  signing on behalf of another. 

The Commissioner of Patents and Trademarks usually requires that there be 
at  least 30 days between approval of withdrawal and the later of the 
expiration  date of a time response period or the expiration date of the 
period which can  be obtained by a petition and fee for extension of time 
under 
37 CFR 1.136(a). This is so that the applicant will have sufficient time 
to  obtain other representation or take other action. If a period has been 
set  for response and the period may be extended without a showing of 
cause pursuant  to 37 CFR 1.136(a) by filing a petition for extension of 
time and fee, the  practitioner will not be required to seek such 
extension of time for withdrawal  to be approved. In such a situation, 
however, withdrawal will not be approved  unless at least 30 days would 
remain between the date of approval and the last  date on which such a 
petition for extension of time and fee could properly  be filed. 

For withdrawal during reexamination proceedings, see MPEP w 2223. 


A40206001.bmp 



A402060001.end 




402.07      Assignee Can Revoke Power of Attorney of Applicant 


The assignee of record of the entire interest can revoke the power of 
attorney  of the applicant unless an 
"irrevocable" right to prosecute the case had been given as in some 
government  owned applications. 

37 CFR 3.71.    Prosecution by assignee. 

The assignee of record of the entire right, title, and interest in an 
application  for patent is entitled to conduct the prosecution of the 
patent application  to the exclusion of the named inventor or previous 
assignee. The assignee of  a registered trademark or a trademark for which 
an application to register  has been filed is entitled to conduct the 
prosecution of the trademark application  or registration to the exclusion 
of the original applicant or previous assignee. 
See 37 CFR 1.36 in MPEP w 402.05. 

A power of attorney by the assignee of the entire interest revokes all 
powers  given by the applicant and prior assignees if the assignee 
establishes their  right to take action as provided in 37 CFR 3.73(b). See 
MPEP w 324. Ordinarily,  the applicant will still have access to the 
application (MPEP w 106). 

402.08      Application in Interference 


While an application is involved in interference, no power of attorney of 
any  kind should be entered in such application by the clerk of the group. 
If a power of attorney or revocation is received for an application which 
is  in interference, it should be forwarded to the Interference Service 
Branch  because all parties to the interference must be notified. 


402.09      International Application 


37 CFR 1.455.       Representation in international applications. 
(a)   Applicants of international applications may be represented by 
attorneys  or agents registered to practice before the Patent and 
Trademark Office or  by an applicant appointed as a common representative 
(PCT Art. 49, Rules 4.8  and 90 and w 10.10). If applicants have not 
appointed an attorney or agent  or one of the applicants to represent 
them, and there is more than one applicant,  the applicant first named in 
the request and who is entitled to file in the  U.S. Receiving Office 
shall be considered to be the common representative of  all the 
applicants. An attorney or agent having the right to practice before  a 
national office with which an international application is filed and for 
which the United States is an International Searching Authority or 
International  Preliminary Examining Authority may be appointed to 
represent the applicants  in the international application before that 
authority. An attorney or agent  may appoint an associate attorney or 
agent who shall also then be of record 
(PCT Rule 90.1(d)). The appointment of an attorney or agent, or of a 
common  representative, revokes any earlier appointment unless otherwise 
indicated 
(PCT Rule 90.6(b) and (c)). 

(b)   Appointment of an agent, attorney, or common representative (PCT 
Rule  4.8) must be effected either in the Request form, signed by all 
applicants,  or in a separate power of attorney submitted either to the 
United States Receiving  Office or to the International Bureau. 

(c)   Powers of attorney and revocation thereof should be submitted to the 
 United States Receiving Office until the issuance of the international 
search  report. 

(d)   The addressee for correspondence will be as indicated in Section 108 
 of the Administrative Instructions. 

For representation in international applications, see MPEP w 1807. 

402.10      Appointment/Revocation by Less Than All Applicants or Owners 

Papers giving or revoking a power of attorney in an application generally 
require  signature by all the applicants or owners of the application. 
Papers revoking  a power of attorney in an application (or giving a power 
of attorney) will  not be accepted by the Office when signed by less than 
all of the applicants  or owners of the application unless they are 
accompanied by a petition and  fee under 
37 CFR 1.182 giving good and sufficient reasons as to why such papers 
should  be accepted. The petition should be directed to the Office of 
Petitions. The  acceptance of such papers by petition under 37 CFR 1.182 
will result in more  than one attorney, agent, applicant, or owner 
prosecuting the application at  the same time. Therefore, each of these 
parties must sign all subsequent responses  submitted to the Office. See 
In re Goldstein, 16 USPQ2d 1963 (Dep. Assist.  Comm'r Pat. 1988). In 
applications accepted under 37 CFR 1.47, such a petition  under 
37 CFR 1.182 submitted by a previously nonsigning inventor who has now 
joined  in the application will not be granted. See MPEP w 409.03(i). Upon 
accepting  papers appointing and/or revoking a power of attorney that are 
signed by less  than all of the applicants or owners, the Office will 
indicate to applicants  who must sign subsequent responses. An indication 
will be placed on the file  wrapper as to the number of signatures 
necessary for accepting subsequent responses  and the paper number(s) 
where the split powers of attorney appear. Dual correspondence  will still 
not be permitted. Accordingly, when the acceptance of such papers  results 
in an attorney or agent and at least one applicant or owner prosecuting  the 



application, correspondence will be mailed to the attorney or agent. When 
the  acceptance of such papers results in more than one attorney or agent 
prosecuting  the application, the correspondence address will continue to 
be that of the  attorney or agent first named in the application, unless 
all parties agree.  Each attorney or agent signing subsequent papers must 
indicate whom he or she  represents. 

The following are examples of who must sign responses when there is more 
than  one person responsible for prosecuting the application: 

(a)   If co-inventor A has given a power of attorney and co-inventor B has 
 not, responses must be signed by the attorney of A and by co-inventor B. 
(b)   If co-inventors A and B have each appointed their own attorney, 
responses  must be signed by both attorneys. 


403   Correspondence - With Whom Held [R-1] 


37 CFR 1.33.    Correspondence respecting patent applications, 
reexamination  proceedings, and other proceedings. 

(a)   The residence and post office address of the applicant must appear 
in  the oath or declaration if not stated elsewhere in the application. 
The applicant  may also specify and an attorney or agent of record may 
specify a correspondence  address to which communications about the 
application are to be directed. All  notices, official letters, and other 
communications in the case will be directed  to the correspondence address 
or, if no such correspondence address is specified,  to an attorney or 
agent of record (see w 1.34(b)), or, if no attorney or agent  is of 
record, to the applicant, or to any assignee of record of the entire 
interest if the applicant or such assignee so requests, or to an assignee 
of  an undivided part if the applicant so requests, at the post office 
address  of which the Office has been notified in the case. Amendments and 
other papers  filed in the application must be signed: (1) By the 
applicant, or (2) if there  is an assignee of record of an undivided part 
interest, by the applicant and  such assignee, or (3) if there is an 
assignee of record of the entire interest,  by such assignee, or (4) by an 
attorney or agent of record, or (5) by a registered  attorney or agent not 
of record who acts in a representative capacity under  the provisions of w 
1.34(a). Double correspondence with an applicant and his  attorney or 
agent, or with more than one attorney or agent, will not be undertaken. 
If more than one attorney or agent be made of record and a correspondence 
address  has not been specified, correspondence will be held with the one 
last made  of record. 

(b)   An applicant who has not made of record a registered attorney or 
agent  may be required to state whether he received assistance in the 
preparation  or prosecution of his application, for which any compensation 
or consideration  was given or charged, and if so, to disclose the name or 
names of the person  or persons providing such assistance. This includes 
the preparation for the  applicant of the specification and amendments or 
other papers to be filed in  the Patent and Trademark Office, as well as 
other assistance in such matters,  but does not include merely making 
drawings by draftsmen or stenographic services  in typing papers. 

 (c)    All notices, official letters, and other communications for the 
patent  owner or owners in a reexamination proceeding will be directed to 
the attorney  or agent of record (see w 1.34(b)) in the patent file at the 
address listed  on the register of patent attorneys and agents maintained 
pursuant to ww 10.5  and 10.11 or, if no attorney or agent is of record, 
to the patent owner or  owners at the address or addresses of record. 
Amendments and other papers filed  in a reexamination proceeding on behalf 
of the patent owner must be signed  by the patent owner, or if there is 
more than one owner by all the owners,  or by an attorney or agent of 
record in the patent file, or by a registered  attorney or agent not of 
record who acts in a representative capacity under  the provisions of w 
1.34(a). Double correspondence with the patent owner or  owners and the 
patent owner's attorney or agent, or with more than one attorney  or 
agent, will not be undertaken. If more than one attorney or agent is of 
record and a correspondence address has not been specified, correspondence 
 will be held with the last attorney or agent made of record. 

 (d)    A ``correspondence address" or change thereto may be filed with 
the  Patent and Trademark Office during the enforceable life of the 
patent. The  "correspondence address" will be used in any correspondence 
relating to maintenance  fees unless a separate "fee address" has been 
specified. See w 1.363 for "fee  address" used solely for maintenance fee 
purposes. 

37 CFR 1.33(a) provides for an applicant to supply an address to receive 
correspondence  from the Patent and Trademark Office in addition to his or 
her residence address,  so that the Patent and Trademark Office may 
direct mail to any address of applicant's selection, such as a corporate 
patent  department, a firm of attorneys or agents, or an individual 
attorney, agent,  or other person. 

37 CFR 1.33 states that when an attorney has been duly appointed to 
prosecute  an application correspondence will be held with the attorney 
unless some other  correspondence address has been given. Double 
correspondence with an applicant  and his or her attorney, or with two 
representatives, will not be undertaken.  See MPEP # 403.01, # 403.02, and 
# 714.01(d). 

If double correspondence is attempted, Form Paragraph 4.01 should be 
included  in the next Office action. 

W 4.01      Dual Correspondence 

Applicant has appointed an attorney or agent to conduct all business 
before  the Patent and Trademark Office. Double correspondence with an 
applicant and  applicant's attorney or agent will not be undertaken. 
Accordingly, applicant  is required to conduct all future correspondence 
with this Office through the  attorney or agent of record. See 37 CFR 1.33. 

>Examiner Note: 

1.  The first time a response is received directly from applicant, include 
 this paragraph in the Office action and send a copy of the action to the 
applicant.  See MPEP # 403 and # 714.01. 

2.  Should applicant file additional responses, do not send copies of 
subsequent  Office actions to the applicant. 



3.  Status letters from the applicant may be acknowledged in isolated 
instances.< 
In a joint application with no attorney or agent, the applicant whose name 
 first appears in the papers receives the correspondence, unless other 
instructions  are given. All applicants must sign the responses. See MPEP 
w 714.01(a). If the assignee of the entire interest is prosecuting the 
application 
(MPEP w 402.07), the assignee may specify a correspondence address. 
37 CFR 1.33(c) relates to which address communications for the patent 
owner  will be sent in reexamination proceedings. See also MPEP w 2224. 

Powers of attorney to firms filed in executed applications filed after 
July  2, 1971, are not recognized by the Patent and Trademark Office. 
However, the  firm's address will be considered to be the correspondence 
address. The address  should appear as follows: 

John Doe (inventor) 

In care of Able, Baker, and Charlie (firm) 

1234 Jefferson Davis Highway 

Arlington, Virginia 22202 

See MPEP w 601.03. 

PATENT APPLICATION FILED WITHOUT 
CORRESPONDENCE ADDRESS 

Effective February 27, 1983, in accordance with the provisions of 35 
U.S.C.  111 and 37 CFR 1.53(b), a filing date is granted to an application 
for patent,  which includes at least a specification containing a 
description pursuant to  37 CFR 1.71 and at least one claim pursuant to 37 
CFR 1.75, and any drawing  referred to in the specification or required by 
37 CFR 1.81(a), which is filed  in the Patent and Trademark Office and 
which names the actual inventor or inventors  pursuant to 37 CFR 1.41(a). 
If an application which has been accorded a filing  date does not include 
the appropriate filing fee or oath or declaration, the  applicant will be 
so notified and given a period of time within which to file  the missing 
parts to complete the application and to pay the surcharge as set  forth in 
37 CFR 1.16(e) in order to prevent abandonment of the application. 
In order for the Office to so notify the applicant, a correspondence 
address  must also be provided by the applicant. The address may be 
different from the  Post Office address of the applicant. For example, the 
address of the applicant's  registered attorney or agent may be used as 
the correspondence address. If  the applicant fails to provide the Office 
with a correspondence address, the  Office will be unable to provide the 
applicant with notification to complete  the application and to pay the 
surcharge as set forth in 37 CFR 1.16(e). In  such a case, the applicant 
will be considered to have constructive notice as  of the filing date that 
the application must be completed and the applicant  will have 2 months 
from the filing date in which to do so before abandonment  occurs. 

The periods of time within which the applicant must complete the 
application  may be extended under the provisions of 37 CFR 1.136. 
Applications which are  not completed in a timely manner will be abandoned. 


403.01      Correspondence Held With Associate Attorney 


Where the attorneys bear relation of principal attorney and associate 
attorney,  the correspondence will be had with the associate attorney 
unless the principal  attorney directs otherwise, Ex parte Eggan, 1911 
C.D. 213; 172 O.G. 1091 (Comm'r  Pat. 1911). 


403.02      Two Attorneys for Same Application 


If the applicant simultaneously appoints two principal attorneys, he or 
she  should indicate with whom correspondence is to be conducted. If one 
is a local  Washington metropolitan area attorney and the applicant fails 
to indicate either  attorney, correspondence will be conducted with the 
local attorney. 
If, after one attorney is appointed, a second attorney is later appointed 
without  revocation of the power of the first attorney, the name of the 
second attorney  is entered on the face of the file (Ex parte Eggan, 1911 
C.D. 213; 172 O.G. 1091 (Comm'r Pat. 1911)), with notation that the Office 
letters are  to be sent to him. This applies also to associate attorneys. 


404   Conflicting Parties Having Same Attorney 


See 37 CFR 10.66. 


405   Attorney Not of Record 


Papers may be filed in patent applications by registered attorneys or 
agents  not of record under 37 CFR 1.34(a). Filing of such papers is 
considered to  be a representation that the attorney or agent is 
authorized to act in a representative capacity on behalf of applicant. 
However, interviews with  a registered attorney or agent not of record 
will be conducted only on the  basis of information and files supplied by 
the attorney or agent in view of 35 U.S.C. 122. Powers of attorney and 
documents granting access may not be  signed by an attorney or agent not 
of record. 


406   Death of Attorney [R-1] 


SOLE ATTORNEY 

If notification is received from the applicant or assignee of the death of 
 the sole principal attorney and the application is up for action by the 
examiner,  correspondence is held with the applicant or assignee who 
originally appointed  the deceased attorney. 

If notification is received from the office of the deceased attorney and 
the  application is up for action, the examiner when preparing the Office 
action  should add Form Paragraph 4.02. 

W 4.02      Death of Attorney, Notice Received From Attorney's Office 
In view of the notification of the death of the attorney of record, the 
power  of attorney is terminated. A new attorney may be appointed. 

>Examiner Note: 

As the power of attorney has been terminated, Office correspondence is 
sent  to the applicant or the assignee who originally appointed 
the deceased attorney or agent.< 

 If notification of the death of the sole principal attorney is received 
from  the Office of Enrollment and Discipline or some other source, there 
will be  no paper of record in the file wrapper to indicate that the 
attorney is deceased.  Correspondence therefore continues to be held with 
the office of the deceased  attorney but a copy of the Office action is 
also mailed to the person who originally  appointed the attorney. In such 
an Office action where the application is not  ready for allowance, the 
examiner should add Form Paragraph 4.03. 

W 4.03      Death of Attorney, Notice From Other Source 

Notice of the death of the attorney of record has come to the attention of 
 this Office. Since the power of attorney is therefore terminated, a copy 
of  this action is being mailed to the [1]. 

Examiner Note: 

In bracket 1, insert-applicant-or-assignee-if the assignee 
originally appointed the deceased attorney. 

If notification of the death of the sole principal attorney is received 
from  the Office of Enrollment and Discipline or some other source and the 
application  is ready for allowance, the examiner prepares the application 
for allowance  and writes a letter to the office of the deceased attorney 
with a copy to the  person who originally appointed the deceased attorney 
including the wording  of Form Paragraph 4.04 

W 4.04      Death of Attorney, Case is Ready for Allowance 

Notice of the death of the attorney of record has come to the attention of 
 this Office. Since the power of attorney is thus terminated, and this 
application  is now ready for allowance, the Notice of Allowance will be 
mailed to the office  of the deceased attorney in the absence of a new 
power of attorney. 
Examiner Note: 

A copy should also be mailed to the applicant or the assignee who 
originally  appointed the attorney. 

Note MPEP # 405. 

The power of a principal attorney will be revoked or terminated by his or 
her  death. Such a revocation or termination of the power of the principal 
attorney  will also terminate the power of those appointed by him or her. 
Thus, a principal  attorney may appoint an associate attorney but such a 
power terminates with  that of the principal. The principal attorney may 
not appoint a "substitute"  and any attempt by the principal to appoint a 
"substitute" attorney whose power  is intended to survive his or her own 
will not be recognized by the Office. 

407   Disbarred Attorney [R-2] 


See MPEP # 105. 

>Form Paragraphs 4.06, 4.07, and 4.08 should be used where power of 
attorney  is given to an attorney/agent who has been suspended from 
practice before the  office. 

W 4.06      Attorney/Agent Suspended (Sole Practitioner, Sole Inventor) 
The instant application contains a power of attorney to [1] who has been 
[2]  from practice before the Patent and Trademark Office (Office). The 
Office does  not communicate with the attorneys or agents who have been 
suspended or excluded  from practice. Accordingly, the Office action is 
being mailed to you as the  inventor. 

Applicant may, of course, file a new power of attorney in the application 
to  have a registered attorney or agent represent you before 

the Office. In the absence of an attorney or agent of record, all 
amendments  and other papers filed in the application must be signed: (1) 
by you; or (2)  if there is an assignee of record of an undivided part 
interest, by such assignee;  or (3) if there is an assignee of the entire 
interest, by such assignee; or 
(4) by a registered patent attorney or agent, 



not of record, who acts in a representative capacity under the provision 
of  37 CFR 1.34, i.e., who is not of record in the application. 

Applicant may obtain a list of registered patent attorneys and agents 
located  in your area by writing to the Commissioner of Patents and 
Trademarks, Box  OED, Washington, DC 20231, or by calling the Office of 
Enrollment and Disciple  at (703) 308-5316. 

Examiner Note: 

1.  In bracket 1, insert name of suspended or excluded practitioner. 
2.  In bracket 2, insert either -suspended- or -excluded-. 

3.  This form paragraph should be used when a suspended or excluded 
practitioner  is the only practitioner of record and there is only a 
single inventor. Use  form paragraph 4.07 if there are joint inventors. 

4.  The Office action is to be mailed only to the inventor at his/her 
current  address of record. 

W 4.07      Attorney/Agent Suspended (Sole Practitioner, Joint Inventors) 
The instant application contains a power of attorney to [1] who has been 
[2]  from practice before the Patent and Trademark Office (Office). The 
Office does  not communicate with attorneys or agents who have been 
suspended or excluded  from practice. Accordingly, the Office action is 
being mailed to the address  of the inventor first named in the application. 

Applicant may, of course, file a new power of attorney in the application 
to  have a registered attorney or agent represent them before the Office. 
In the  absence of an attorney or agent of record, all amendments and 
other papers  filed in the application must be signed: (1) by all named 
applicants unless  one named applicant has been given a power of attorney 
to sign on behalf of  the remaining applicants, and the power of attorney 
is of record in the application;  or (2) if there is an assignee of record 
of an undivided part interest, by  all named applicants retaining an 
interest and such assignee; or (3) if there  is an assignee of the entire 
interest, by such assignee; or (4) by a registered  patent attorney or 
agent not of record who acts in a representative capacity  under the 
provisions of 37 CFR 1.34(a). The Office will not hold telephone 
interviews with or send communications to a registered patent attorney or 
agent,  acting in a representative capacity under 37 CFR 1.34, i.e., who 
is not of  record in the application. 

Applicant may obtain a list of registered patent attorneys and agents 
located  in your area by writing to the Commissioner of Patents and 
Trademarks, Box  OED, Washington, DC 20231, or by calling the Office of 
Enrollment and Discipline  at (703) 308-5316. 

Examiner Note: 

1. In bracket 1, insert the name of the suspended or excluded 
practitioner. 
2. In bracket 2, insert either -suspended- or -excluded-. 

3. This form paragraph should be used when the suspended or excluded 
practitioner  is the only practitioner of record and there are joint 
inventors. Use form  paragraph 4.06 if there is a single inventor. 

4. The Office action is to be mailed only to the inventor first named in 
the  declaration at his or her current post office address of record. 

W 4.08      Attorney/Agent Suspended (Plural Practitioners) 

The present application was filed containing a power of attorney to [1] 
and  [2]. A correspondence address was supplied for [3]. No address was 
supplied  for [4]. 

[5] was [6] from practice before the Patent and Trademark Office (Office). 
 The Office does not communicate with attorneys or agents who have been 
suspended  or excluded from practice. 

As a correspondence address, other than to [7], is not of record, this 
Office  action is being mailed to [8] at his/her last known address as 
listed on the  register of patent attorneys and agents. To ensure that a 
copy of this Office  action is received in a timely manner to allow for a 
timely response, a copy  of the Office action is being mailed directly to 
the address of the inventor  first named in the declaration or oath. Any 
response by applicant(s) should  be by way of the remaining 
practitioner(s) of record and should include a new  correspondence address . 

Examiner Note: 

1. In brackets 1, 3, 5, and 7 insert the name of the suspended or excluded 
 practitioner. 

2. In brackets 2, 4, and 8 insert the name of the first named unsuspended 
(unexcluded)  registered practitioner of record. 

3. In bracket 6, insert either -suspended- or -excluded-. 

4. This form paragraph should be used when there is at least one 
registered  practitioner still of record who has not been suspended or 

excluded from practice. Use one of form paragraphs 4.06 or 4.07 if there 
are  no remaining registered attorneys or agents of record. 

5. The Office action is to be mailed both to the first named registered 
attorney  or agent of record (who is not suspended or excluded) at the 
address currently  listed in the Attorney's Roster, and to the inventor 
first named in the declaration  at his or her current post office address 
of record. < 


408   Telephoning Attorney [R-2] 


Present Office policy places great emphasis on telephone interviews 
initiated  by the examiner. For this reason, it is not necessary for an 
attorney to request  a telephone interview. Examiners are not required to 
note or acknowledge requests  for telephone calls or state reasons why 
such proposed telephone interviews  would not be considered effective to 
advance prosecution. However, it is desirable  for an attorney to call the 
examiner 
if the attorney feels the call will be beneficial to advance prosecution 
of the case. See MPEP # 713.01 and # 713.05. 

SPECIFIC TELEPHONE INTERVIEW 
SITUATIONS 

Restriction of invention (MPEP w 812.01). 

Multiplicity (MPEP w *>2173.05(n)<). 

Many attorneys have offices or representatives in the Washington area and 
it  sometimes expedites business to interview them concerning an 
application. When  the 
examiner believes the progress of the application would be advanced 
thereby,  he or she may call the attorney in 
the case by telephone and ask the attorney to come to the Office. 
Registered attorneys or agents not of record in a patent application and 
acting  in a representative capacity under 37 CFR 1.34(a) should not be 
telephoned  for restriction 
requirements, approval of examiner's amendments, or given any information 
relative  to such patent application by telephone unless the telephone 
number of such  attorney or agent appears in a paper signed by the 
applicant or an attorney  or agent of record. 

Examiners should place all long distance telephone calls through the FTS 
(Federal  Telecommunications System), even though collect calls may have 
been authorized  by the attorney. 

To facilitate any telephone calls that may become necessary, it is 
strongly  recommended that amendments, letters of transmittal, and powers 
of attorney  include the complete telephone number, with area code and 
extension, of the  person with whom the interview should be held, 
preferably near the signature. 
In new applications, the telephone number may appear on the letter of 
transmittal  or in the power of attorney, oath, or declaration, next to 
the attorney's name  and address. 


409   Death, Insanity, or Unavailability of Inventor 


If the inventor is dead, insane, or otherwise legally incapacitated, 
refuses  to execute an application, or cannot be found, an application may 
be made by  someone other than the inventor, as specified in 37 CFR 
1.42-1.47, and 1.423,  MPEP w 409.01 - w 409.03(j). 


409.01      Death of Inventor 


Unless a power of attorney is coupled with an interest (i.e., an attorney 
is  assignee or part- 
assignee), the death of the inventor (or one of the joint inventors) 
terminates  the power of attorney and a new power from the heirs, 
administrators, executors,  or assignees is necessary if the attorney is 
to remain of record (but see MPEP  # 409.01(f)). See also 37 CFR 1.422. 


409.01(a) Prosecution by Administrator or Executor 


35 U.S.C. 117     .   Death or incapacity of inventor 

Legal representatives of deceased inventors and of those under legal 
incapacity  may make application for patent upon compliance with the 
requirements and on  the same terms and conditions applicable to the inventor. 

37 CFR 1.42.    When the inventor is dead. 

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

One who has reason to believe that he or she will be appointed legal 
representative  of a deceased inventor may apply for a patent as legal 
representative in accordance  with 37 CFR 1.42. Proof of the applicant's 
authority as legal representative  may be filed after the filing date of 
the application. If another person is  appointed legal representative and 
the application has been accorded a filing  date, an oath or declaration 
executed by the properly appointed legal representative  must be submitted 
as soon as possible. The foregoing applies to the legal representative  of 
a deceased sole or deceased joint inventor. 

Application may be made by the heirs of the inventor, as such, if there is 
 no will or the will did not appoint an executor and if accompanied by a 
certificate  from the court that they are all the heirs and that the 
estate was under the  sum required by state law for the appointment of an 
administrator. 
If the court papers are in a language other than English, an English 
translation  of such papers is required. The translation need not be sworn 
or affirmed. 

409.01(b) Proof of Authority of Administrator or Executor [R-2] 


37 CFR 1.44.    Proof of authority. 

In the cases mentioned in ww 1.42 and 1.43, proof of the power or 
authority  of the legal representative must be recorded in the Patent and 
Trademark Office  or filed in the application before the grant of a patent. 

Whenever because of the death of an inventor the right of applying for and 
 obtaining a patent for an invention devolves upon an executor or 
administrator,  or whenever an executor or administrator desires to 
intervene prior to the  granting of a patent, proof of the authority of 
such executor or administrator  should in all cases be made of record in 
the Patent and Trademark Office by filing in the  application or recording 
in the assignment records a certificate of the clerk  of a competent court 
or the register of wills that his or her appointment is  still in full 
force and effect. Such certificate shall be signed by an officer  and 
authenticated by the seal of the court by which the same was issued. The 
authority of other legal representatives of the inventor must be similarly 
 established. If the certificate is not in the English language, an 
English  translation is also required. 

Should such certificate of appointment be found to be insufficient for any 
 reason, there may be required to be filed or recorded a certified and 
properly  authenticated copy of the letters testamentary or of the letters 
of administration  so that the scope of authority of the persons who seek 
to intervene may be  a matter of record in this Office. 

All applications filed by an executor or administrator are initially 
referred  to the Assignment Division to ascertain whether proper authority 
has been recorded  or "filed in the application" (37 CFR 1.44) and for 
suitable endorsement on  the file. If the authority is insufficient, a 
notation is made under "other"  on a form PTO-152. When a reply is 
received to such a notation and also in  cases where the executor or 
administrator intervenes (after filing) the case  should be sent 
immediately to the Assignment Division. 

In any case in which the Chief of the Assignment Division reports that the 
 authority of the executor or administrator of record in the case is 
insufficient,  the examiner will require the filing in the application or 
the recording in  the Assignment Division of a certificate of such 
appointment or a certified  copy of letters testamentary or of letters of 
administration in such case before  finally passing the case to issue. 
>Form paragraph 4.05 should be used to notify  applicant that proof of 
authority of the legal representative must be submitted. 
W 4.05      Representative For Dead Or Insane Inventor 

Proof of authority of the legal representative under 37 CFR 1.44 has been 
omitted  and must be provided.< 

In the case of foreign executors or administrators, a consular officer of 
the  United States or a notary public from a member country to the Hague 
Convention  Abolishing the Requirement of Legalization for Foreign Public 
Documents must  authenticate the signature of the foreign officer 
attesting to the papers submitted  as proof of authority. If documents are 
authenticated by a notary public in  a member country, an apostille must 
be used. See MPEP w 602.04. Unusual situations  may be referred to the ** 
Special Program *>Law Office<. 


409.01(c) After Administrator or Executor Has Been Discharged 


When an administrator or executor has performed his or her functions and 
has  been discharged and it is desired to make an application for an 
invention of  the deceased, it is necessary for the administrator or 
executor to take out  new letters of administration in order that he or 
she may file a new application  of the deceased inventor. 


409.01(d) Exception in Some Foreign Countries 


The terms ``Executor" and ``Administrator" do not find an exact 
counterpart  in all foreign countries and the procedure is governed by the 
necessity of  construing those terms to fit the circumstances of the case. 
Hence, the person  or persons having authority corresponding to that of 
executor or administrator  are permitted to make application as, for 
example, the heirs in the Federal  Republic of Germany where no existing 
executor or administrator has been or  will be appointed. The authority of 
such persons must be proved by an appropriate  certificate. If the 
certificate is not in the English language, an English  translation 
thereof is also required. 


409.01(e) If Applicant of Assigned Application Dies 


Where an applicant, carrying on the prosecution of an application after 
assignment,  dies, the administrator may carry on the prosecution on 
filing letters of administration  unless and until the assignee intervenes 
(MPEP 
w 402.07). 


409.01(f) Intervention of Executor Not Compulsory [R-1] 


When an inventor dies after filing an application, the executor or 
administrator  should intervene, but the 
allowance of the application will not be withheld nor the application 
withdrawn  from issue if the executor or administrator does not intervene. 



This practice is applicable to an application which has been placed in 
condition  for allowance or passed to issue prior to notification of the 
death of the  inventor. See MPEP w 409.01. 

> When a joint inventor of a pro se application dies after filing the 
application,  the living joint inventors must submit proof that the joint 
inventor is dead.  Upon submission of such proof, only the signatures of 
the living joint inventors  are required on the papers filed with the PTO 
if the legal representative of  the deceased inventor does not intervene. 
If the legal representative of the  deceased inventor wishes to intervene, 
proof of authority complying with 37  CFR 1.44 must be submitted. Once the 
legal representative of the deceased inventor  inter- venes in the pro se 
application, the signatures of the living joint  inventors and the legal 
representative are required on the papers filed with  the PTO. < 


409.02      Insanity or Other Legal Incapacity 


37 CFR 1.43.    When the inventor is insane or legally incapacitated. 
In case an inventor is insane or otherwise legally incapacitated, the 
legal  representative (guardian, conservator, etc.) of such inventor may 
make the  necessary oath or declaration, and apply for and obtain the 
patent. 
Where no legal representative has been appointed, one must be appointed by 
 a court of competent jurisdiction for the purpose of execution of the 
oath  or declaration of the application. MPEP w 409.01(b) is also 
applicable in case  of insanity or other legal incapacity of an 
inventor. 


409.03      Unavailability of Inventor [R-2] 


37 CFR 1.47.    Filing when an inventor refuses to sign or cannot be 
reached. 
(a)   If a joint inventor refuses to join in an application for patent or 
cannot  be found or reached after diligent effort, the application may be 
made by the  other inventor on behalf of himself or herself and the 
omitted inventor. The  oath or declaration in such an application must be 
accompanied by a petition  including proof of the pertinent facts and by 
the required fee (w 1.17(h))  and must state the last known address of the 
omitted inventor. The Patent and  Trademark Office shall forward notice of 
the filing of the application to the  omitted inventor at said address. 
Should such notice be returned to the Office  undelivered, or should the 
address of the omitted inventor be unknown, notice  of the filing of the 
application shall be published in the Official Gazette.  The omitted 
inventor may subsequently join in the application on filing an  oath or 
declaration of the character required by w 1.63. A patent may be granted 
to the inventor making the application, upon a showing satisfactory to the 
 Commissioner, subject to the same rights which the omitted inventor would 
have  had if he or she had been joined. 

(b)   Whenever an inventor refuses to execute an application for patent, 
or  cannot be found or reached after diligent effort, a person to whom the 
inventor  has assigned or agreed in writing to assign the invention or who 
otherwise  shows sufficient proprietary interest in the matter justifying 
such action  may make application for patent on behalf of and as agent for 
the inventor.  The oath or declaration in such an application must be 
accompanied by a petition  including proof of the pertinent facts and a 
showing that such action is necessary  to preserve the rights of the 
parties or to prevent irreparable damage, and  by the required fee (w 
1.17(h)) and must state the last known address of the  inventor. The 
assignment, written agreement to assign or other evidence of  proprietary 
interest, or a verified copy thereof, must be filed in the Patent  and 
Trademark Office. The Office shall forward notice of the filing of the 
application to the inventor at the address stated in the application. 
Should  such notice be returned to the Office undelivered, or should the 
address of  the inventor be unknown, notice of the filing of the 
application shall be published  in the Official Gazette. The inventor may 
subsequently join in the application  on filing an oath or declaration of 
the character required by w 1.63. A patent  may be granted to the inventor 
upon a showing satisfactory to the Commissioner. 
35 U.S.C. 116.          Inventors 

When an invention is made by two or more persons jointly, they shall apply 
 for patent jointly and each make the required oath, except as otherwise 
provided  in this title. Inventors may apply for a patent jointly even 
though (1) they  did not physically work together or at the same time, (2) 
each did not make  the same type or amount of contribution, or (3) each 
did not make a contribution  to the subject matter of every claim of the 
patent. 

If a joint inventor refuses to join in an application for patent or cannot 
 be found or reached after diligent effort, the application may be made by 
the  other inventor on behalf of himself and the omitted inventor. The 
Commissioner,  on proof of the pertinent facts and after such notice to 
the omitted inventor  as he prescribes, may grant a patent to the inventor 

making the application, subject to the same rights which the omitted 
inventor  would have had if he had been joined. The omitted inventor may 
subsequently  join in the application. 

Whenever through error a person is named in an application for patent as 
the  inventor, or through an error an inventor is not named in an 
application and  such error arose without any deceptive intention on his 
part, the Commissioner  may permit the application to be amended 
accordingly, under such terms as he  prescribes. 

35 U.S.C. 118     .   Filing by other than inventor 

Whenever an inventor refuses to execute an application for patent, or 
cannot  be found or reached after diligent effort, a person to whom the 
inventor has  assigned or agreed in writing to assign the invention or who 
otherwise shows  sufficient proprietary interest in the matter justifying 
such action, may make  application for patent on behalf of and as agent 
for the inventor on proof  of the pertinent facts and a showing that such 
action is necessary to preserve  the rights of the parties or to prevent 
irreparable damage; and the Commissioner  may grant a patent to such 
inventor upon such notice to him as the Commissioner  deems sufficient, 
and on compliance with such regulations as he prescribes. 
Application papers submitted pursuant to 37 CFR 1.47 are forwarded by the 
Application  Division to the **Special Program *>Law Office< for 
determination  whether the papers are proper, complete, and acceptable 
under 37 CFR 1.47. 
A bona fide attempt must be made to comply with the provisions of 37 CFR 
1.47  at the time the oath or declaration is first submitted. If the oath 
or declaration,  and evidence submitted with the oath or declaration, are 
not found acceptable,  the 37 CFR 1.47 applicant will be notified by the 
**Special Program *>Law Office<  of the reasons why the papers are not 
acceptable. The 37 CFR 1.47 applicant  may request reconsideration and 
file supplemental evidence in a case where  a bona fide attempt was made 
to comply with 37 CFR 1.47 from the outset. 

409.03(a) At Least One Joint Inventor Available [R-2] 


37 CFR 1.47(a) and 35 U.S.C. 116, second paragraph, requires all available 
 joint inventors to file an application ``on behalf of" themselves and on 
behalf  of a joint inventor who ``cannot be found or reached after 
diligent effort"  or who refuses to "join in an application." 

In addition to other requirements of law (35 U.S.C. 111 >(a)< and 115), an 
 application deposited in the Patent and Trademark Office pursuant to 37 
CFR  1.47(a) must meet the following requirements: 

(1)   All the available joint inventors must (i) make oath or declaration 
on  their own behalf as required by 
37 CFR 1.63 or 1.175 (see MPEP w 602, w 605.01, and 
w 1401.08) and (ii) make oath or declaration on behalf of the nonsigning 
joint  inventor as required by 37 CFR 1.64. 

(2)   The application must be accompanied by proof that the nonsigning 
inventor 
(i) cannot be found or reached after diligent effort or (ii) refuses to 
execute  the application papers. See MPEP w 409.03(d). 

(3)   The last known address of the nonsigning joint inventor must be 
stated.  See MPEP w 409.03(e). 


409.03(b) No Inventor Available [R-2] 


Filing under 37 CFR 1.47(b) and 35 U.S.C. 118 is permitted only where no 
inventor  is available to make application and allows a ``person" with a 
demonstrated  proprietary interest to make application ``on behalf of and 
as agent for" an  inventor who "cannot be found or reached after diligent 
effort" or who refuses  to sign the application oath or declaration. The 
word ``person" has been construed  by the Patent and Trademark Office to 
include juristic entities, such as a  corporation. Where 
37 CFR 1.47(a) is available, application cannot be made under 37 CFR 
1.47(b). 

In addition to other requirements of law (35 U.S.C. 111 >(a)< and 115), an 
 application deposited pursuant to 37 CFR 1.47(b) must meet the following 
requirements: 
(1)   The 37 CFR 1.47(b) applicant must make the oath required by 37 CFR 
1.63  and 1.64 or 1.175. Where a corporation is the 37 CFR 1.47(b) 
applicant, an  officer >(President, Vice-President, Secretary, or 
Treasurer)< thereof should  normally sign the necessary oath or 
declaration. A corporation may authorize  any person, including an 
attorney or agent registered to practice before the  Patent and Trademark 
Office, to sign the application oath or declaration on  its behalf. Where 
an oath or declaration is signed by a registered attorney  or agent on 
behalf of a corporation, either proof of the attorney's or agent's 
authority in the form of a statement signed by an appropriate corporate 
officer  must be submitted, or the attorney or agent may simply state that 
he or she  is authorized to sign on behalf of the corporation. Where the 
oath or declaration  is being signed on behalf of an assignee, see MPEP w 
324. An inventor may not  authorize another individual to act as his or 
her agent to sign the application  oath or declaration on his or her 
behalf, Staeger v. Commissioner, 189 USPQ  272 (D.D.C. 1976); In re 
Striker, 182 USPQ 507 (Comm'r Pat. 1973). Where an  application is 
executed by one other than the inventor, the declaration required  by 37 
CFR 1.63 must state the citizenship, post office address, and residence 
of the non-signing inventor and must also state the post office address of 
 the person signing on behalf of the non-signing inventor. Also, the title 
or  position of the person signing must be stated if signing on behalf of 
a corporation  under 37 CFR 1.47(b). 

(2)   The 37 CFR 1.47(b) applicant must state his or her relationship to 
the  inventor as required by 37 CFR 1.64. 

(3)   The application must be accompanied by proof that the inventor (i) 
cannot  be found or reached after a diligent effort or (ii) refuses to 
execute the  application papers. See MPEP w 409.03(d). 

(4)   The last known address of the inventor must be stated. See MPEP w 
409.03(e). 


(5)   The 37 CFR 1.47(b) applicant must make out a prima facie case (i) 
that  the invention has been assigned to him or her or (ii) that the 
inventor has  agreed in writing to assign the invention to him or her or 
(iii) otherwise  demonstrate a proprietary interest in the subject matter 
of the application.  See MPEP w 409.03(f). 

(6)   The 37 CFR 1.47(b) applicant must prove that the filing of the 
application  is necessary (i) to preserve the rights of the parties or 
(ii) to prevent irreparable  damage. See MPEP w 409.03(g). 


409.03(c) Legal Representatives of Deceased Inventor Not Available [R-2] 

37 CFR 1.47 should not be considered an alternative to 37 CFR 1.42 or 35 
U.S.C.  117; since the language 
``*>cannot< be found or reached after diligent effort" has no reasonable 
application  to a deceased inventor, In re Application Papers Filed 
September 10, 1954,  108 USPQ 340 (Comm'r Pat. 1955). See 37 CFR 1.42 and MPEP 
w 409.01. However, 37 CFR 1.47 does apply where a known legal 
representative  of a deceased inventor cannot be found or reached after 
diligent effort, or  refuses to make application. In such cases, the last 
known address of the legal  representative must be given (see MPEP w 
409.03(e)), and proof of the power  or authority of the legal 
representative must be established before the grant  of a patent, 37 CFR 
1.44. Also, in hardship situations where time or circumstances  do not 
permit appointment of a legal representative to make application, 37  CFR 
1.47 may apply, In re Schwarz, 147 USPQ 394 (Comm'r Pat. 1960). In such 
situations, however, subsequent joinder of a properly authorized legal 
representative  will normally be required before the grant of a 
patent. 


409.03(d) Proof of Unavailability or Refusal 


Where inability to find or reach a nonsigning inventor ``after diligent 
effort"  is the reason for filing under 
37 CFR 1.47, an affidavit or declaration of facts should be submitted that 
 fully describes the exact facts which are relied on to establish that a 
diligent  effort was made. 

The fact that a nonsigning inventor is on vacation or out of town and is 
therefore  temporarily unavailable to sign the declaration is not an 
acceptable reason  for filing under 37 CFR 1.47. Such a petition will be 
dismissed as inappropriate. 
The affidavit or declaration of facts must be signed, where at all 
possible,  by a person having firsthand knowledge of the facts recited 
therein. Statements  based on hearsay will not normally be accepted. 
Copies of documentary evidence  such as certified mail return receipt, 
cover letter of instructions, telegrams,  etc., that support a finding 
that the nonsigning inventor could not be found  or reached should be made 
part of the affidavit or declaration. It is important  that the affidavit 
or declaration contain statements of fact as opposed to  conclusions. 

In cases where priority under 35 U.S.C. 119 is to be claimed, the 37 CFR 
1.47  applicant should explain what efforts, if any, were made during the 
Convention  year to prepare the application and obtain the inventor's 
signature thereon.  The period allowed by the Convention year should ``be 
sufficient for the preparation  and deposit of an application . . . (in 
the United States) in the form required  by the rules." Ex parte Sassin, 
1906 C.D. 205 (Comm'r Pat. 1906). Accordingly,  37 CFR 1.47 may not be 
used ``to save the parties from the consequences of  their delay." Ex 
parte Sassin, supra. Attention is directed 

to the material in MPEP w 608.01 entitled, ``Filing of Non-English 
Language  Applications", for guidance in those instances where a foreign 
language specification  attached to a declaration executed by all named 
inventors is received from  abroad by counsel in this country. In those 
instances where the nonsigning  inventor later becomes available, joinder 
papers are best submitted as soon  as possible, preferably before the 37 
CFR 1.47 application is formally accepted.  Such joinder papers should be 
filed with a brief explanatory letter requesting  that they be 
incorporated with the earlier 37 CFR 1.47 application papers.  The later 
submission of joinder papers is not prejudicial to an earlier filing  date 
under 
37 CFR 1.47 if acceptance of the application under that rule would 
otherwise  be warranted. 

Where a refusal of the inventor to sign the application papers is alleged, 
 the circumstances of this refusal must be specified in an affidavit or 
declaration  by the person to whom the refusal was made. Statements by a 
party not present  when an oral refusal is made will not be accepted. 

Before a refusal can be alleged, it must be demonstrated that a bona fide 
attempt  was made to present a copy of the application papers 
(specification, including  claims, drawings, and oath or declaration) to 
the nonsigning inventor for signature. 


When there is an express oral refusal, that fact along with the time and 
place  of the refusal must be stated in the affidavit or declaration. When 
there is  an express written refusal, a copy of the document evidencing 
that refusal  must be made part of the affidavit or declaration. 

When it is concluded by the 37 CFR 1.47 applicant that a nonsigning 
inventor's  conduct constitutes a refusal, all facts upon which that 
conclusion is based  should be stated in an affidavit or declaration. If 
there is documentary evidence  to support facts alleged in the affidavit 
or declaration, such evidence should  be submitted. Whenever a nonsigning 
inventor gives a reason for refusing to  sign the application oath or 
declaration, that reason should be stated in the  affidavit or declaration. 


409.03(e) Statement of Last Known Address 


An application filed pursuant to 37 CFR 1.47 must state the last known 
address  of the nonsigning inventor. 

 That address should be the last known address at which the inventor 
customarily  receives mail. See MPEP 
w 605.03. Ordinarily, the last known address will be the last known 
residence  of the nonsigning inventor. A post office box is insufficient. 

Inasmuch as a nonsigning inventor is notified that an application pursuant 
 to 37 CFR 1.47 has been filed on his or her behalf, other addresses at 
which  the nonsigning inventor may be reached should also be given. 


409.03(f) Proof of Proprietary Interest [R-2] 


When an application is deposited pursuant to 37 CFR 1.47(b), the 37 CFR 
1.47(b)  applicant must prove that, as of the date the application is 
deposited in the  Patent and Trademark Office, (1) the invention has been 
assigned to the applicant,  or (2) the inventor has agreed in writing to 
assign the invention to the applicant,  or (3) the applicant otherwise has 
sufficient proprietary interest in the subject  matter to justify the 
filing of the application. 

If the application has been assigned, a copy of the assignment (in the 
English  language) must be submitted. The assignment must clearly indicate 
that the  invention described in the 37 CFR 1.47(b) application was 
assigned to the 37  CFR 1.47(b) applicant prior to the date the 
application is deposited in the  Patent and Trademark Office. A statement 
under 37 CFR 3.73(b) by the assignee  must also be submitted (see MPEP w 
324). An assignment of an application and  any ``reissue, division, or 
continuation of said application" does not itself  establish an assignment 
of a continuation-in-part application, In re Gray,  115 USPQ 80 (Comm'r 
Pat. 1956). An assignment to a 37 CFR 1.47(b) applicant  for the sole 
purpose of obtaining a filing date for a 37 CFR 1.47(b) application  is 
not considered an assignment within the meaning of 35 U.S.C. 118 and 37 
CFR 1.47(b). 

When an inventor has agreed in writing to assign an invention described in 
 an application deposited pursuant to 37 CFR 1.47(b), a copy of that 
agreement  should be submitted. If an agreement to assign is dependent on 
certain specified  conditions being met, it must be established by 
affidavit or declaration that  those conditions have been met. A typical 
agreement to assign is an employment  agreement where an employee 
(nonsigning inventor) agrees to assign to his or  her employer (37 CFR 
1.47(b) applicant) all inventions made during employment.  When such an 
agreement is relied on, it must be established by the affidavit  or 
declaration of a person having firsthand knowledge of the facts that the 
invention was made by the employee while employed by the 
37 CFR 1.47(b) applicant. 

If the invention has not been assigned, or if there is no written 
agreement  to assign, the 37 CFR 1.47(b) applicant must demonstrate that 
he or she otherwise  has a sufficient proprietary interest in the matter. 

A proprietary interest obtained otherwise than by assignment or agreement 
to  assign may be demonstrated by an appropriate legal memorandum to the 
effect  that a court of competent jurisdiction (federal, state, or 
foreign) would *>by< 
 the weight of authority in that jurisdiction award title of the invention 
 to the 37 CFR 1.47(b) applicant. The facts in support of any conclusion 
that  a court would award title to the 37 CFR 1.47(b) applicant should be 
made of  record by way of an affidavit or declaration of the person having 
firsthand  knowledge of same. The legal memorandum should be prepared and 
signed by an  attorney at law familiar with the law of the jurisdiction 
involved. A copy 
(in the English language) of a statute (if other than the United States 
statute)  or a court decision (if other than a reported decision of a 
federal court or  a decision reported in the United States Patents 
Quarterly) relied on to demonstrate  a proprietary interest should be made 
of record. 




409.03(g) Proof of Irreparable Damage 


Irreparable damage may be established by showing that a filing date is 
necessary  to (1) avoid an imminent statutory bar (35 U.S.C. 102) or (2) 
make a claim  for priority (35 U.S.C. 119, 120, and 121). If a statutory 
bar is involved,  the act or publication which is believed to constitute 
the bar should be identified.  If a claim for priority is involved, the 
prior application or applications  should be identified. A diligent effort 
to prepare the application and obtain  the inventor's signature to the 
oath or declaration must be made (see MPEP  w 409.03(d)) even if the 
application is being filed to avoid a bar or to claim  priority. 

Preservation of the rights of the parties may be demonstrated by a showing 
 that the inventor may reasonably be expected to enter into competition 
with the 37 CFR 1.47(b) applicant, or  that a firm plan for 
commercialization of the subject matter of the application  has been adopted. 


409.03(h) Acceptance of a 37 CFR 1.47 Application [R-2] 


A filing date is assigned to an application deposited pursuant to 37 CFR 
1.47  provided the requirements of 37 CFR 1.53(b) >(1)< are complied with. 
A filing  receipt will be sent to the applicant when the application is 
found acceptable  by the **Special Program *> Law Office.< 

When papers deposited pursuant to 37 CFR 1.47 are found acceptable, the ** 
 Special Program *>Law Office< enters a memorandum or letter to that 
effect  in the file, and the Application Division is authorized to mail a 
filing receipt.**>  The Patent and Trademark Office will notify the 
nonsigning inventor(s) of the  filing of an application under 37 CFR 1.47 
by sending a letter to the last  known address of the nonsigning 
inventor(s) and by publishing a notice in the  Official Gazette.< 


409.03(i) Rights of the Nonsigning Inventor [R-2] 


The nonsigning inventor (also referred to as an 
"inventor designee") may protest his or her designation as an inventor. 
The  nonsigning inventor is entitled to inspect any paper in the 
application as  of the date the ** Special Program *>Law Office< 
authorizes the Application  Division to accept the application, order 
copies thereof at the price set forth  in 37 CFR 1.19, and make his or her 
position of record in the file wrapper  of the application. Alternatively, 
the nonsigning inventor may arrange to do  any of the preceding through a 
registered patent attorney or agent. 
While the Patent and Trademark Office will grant the nonsigning inventor 
access  to the application, inter partes proceedings will not be 
instituted in 37 CFR  1.47 case>.<   In re Hough, 108 USPQ 89 (Comm'r Pat. 
1955). A nonsigning inventor  is not entitled to a hearing (Cogar v. 
Schuyler, 173 USPQ 389 (D.C. Cir. 1972))  >,< and is not entitled to 
prosecute the application. 

A nonsigning inventor may join in a 37 CFR 1.47 application. To join in 
the  application, the nonsigning inventor must file an appropriate 37 CFR 
1.63 oath  or declaration. Even if the nonsigning inventor joins in the 
application, he  or she cannot revoke or give a power of attorney without 
agreement of the 37  CFR 1.47 applicant. 

The rights of a nonsigning inventor are protected by the fact that the 
patent  resulting from an application filed under 37 CFR 1.47(b) and 35 
U.S.C. 118  must issue to the inventor, and an application filed under 37 
CFR 1.47(a) and  35 U.S.C. 116, the inventor has the same rights that he 
or she would have if  he or she had joined in the application, In re 
Hough, 108 USPQ 89 (Comm'r Pat.  1955). 

If a nonsigning inventor feels that he or she is the sole inventor of an 
invention  claimed in a 37 CFR 1.47 application naming him or her as a 
joint inventor,  the nonsigning inventor may file his or her own 
application and request that  his or her application be placed in 
interference with the 37 CFR 1.47 application.  If the claims 
in both the nonsigning inventor's application and the 
37 CFR 1.47 application are otherwise found allowable, an interference may 
 be declared. 


409.03(j) Action Following Acceptance of a 37 CFR 1.47 Application [R-2] 

After an application deposited pursuant to 37 CFR 1.47 is found acceptable 
 by the **Special Program*>Law Office<, the examiner will act on the 
application  in the usual manner**>. Papers< filed by an inventor who did 
not originally  join in the application, and papers relating to its 37 CFR 
1.47 status, will  be **>placed in< the file wrapper **. 



In the event joinder papers are filed, **>the oath or declaration under 37 
 CFR 1.63 will be placed in the application file. 

When the examiner determines that a 37 CFR 1.47 application, or a file 
wrapper  continuing application (37 CFR 1.62) thereof, is allowable, he or 
she must  check the file jacket to make sure that the phrase "Rule 47" 
appears under  the filing date. If the phrase "Rule 47" does not appear 
under the filing date,  the examiner must write in black ink the phrase 
"Rule 47" under the filing  date. The examiner will then prepare the 
application for allowance in accordance  with MPEP Chapter 1300. It will 
not be necessary to forward the application  to the Special Program Law 
Office. 

Patents granted on applications accepted under 
37 CFR 1.47 will have an indication on the face of the patent that the 
application  was filed under 37 CFR 1.47, regardless of whether proper 
joinder of the previously  nonsigning inventor has been made.< 





Contents 

501         Papers Received by Correspondence and Mail Division 

502         Depositing Correspondence 

502.01      Correspondence Transmitted by Facsimile 

502.02      Correspondence Signature Requirements 

503         Serial Number and Filing Receipt 

504         Assignment of Application for Examination 

505         "Office Date" Stamp of Receipt 

506         Completeness of Original Application 

506.01      Return of Incomplete Application 

506.02      Review of Refusal To Accord Filing Date 

507         Drafting Division 

508         Distribution 

508.01      Papers Sent to Wrong Group 

508.02      Papers Received After Patenting or Abandonment 

508.03      Unmatched Papers 

509         Payment of Fees 

509.01      Deposit Accounts 

509.02      Small Entity Status - Definitions 

509.03      Claiming Small Entity Status 

510         Patent and Trademark Office Business Hours 

511         Postal Service Emergency Contingency Plan 

512         Certificate of Mailing or Transmission 

513         Deposit as Express Mail With U.S. Postal Service 


501   Papers Received by Correspondence and Mail Division [R-1] 


37 CFR 1.1.   All communications to be addressed to Commissioner of 
Patents  and Trademarks. 

**>(a) All letters and other communications intended for the Patent and 
Trademark  Office must be addressed to "Commissioner of Patents and 
Trademarks," Washington,  D.C. 20231. When appropriate, a letter should 
also be marked for the attention  of a particular officer or individual. 

(b)   Letters and other communications relating to international 
applications  during the international stage and prior to the assignment 
of a national serial  number should be additionally marked "Box PCT." 

(c)   Requests for reexamination should be additionally marked "Box 
Reexam." 

(d)   Payments of maintenance fees in patents and other communications 
relating thereto should be additionally marked "Box M. Fee." 
(e)   Communications relating to interferences and applications or patents 
 involved in an interference should be additionally marked "BOX 
INTERFERENCE." 
(f)   All applications for extension of patent term and any communications 
 relating thereto intended for the Patent and Trademark Office should be 
additionally  marked "Box Patent Ext." When appropriate, the communication 
should also be  marked to the attention of a particular individual, as 
where a decision has  been rendered. 

(g)   All communications relating to pending litigation which are required 
 by the Federal Rules of Civil or Appellate Procedure or by a rule or 
order  of a court to be served on the Solicitor shall be hand-delivered to 
the Office  of the Solicitor or shall be mailed to: Office of the 
Solicitor, P.O. Box 15667,  Arlington, Virginia 22215 or such other 
address as may be designated in writing  in the litigation. All other 
communications to the Office of the Solicitor  should be addressed to: Box 
8, Commissioner of Patents and Trademarks, Washington,  D.C. 20231. Any 
communication which does not involve pending litigation which  is received 
at P.O. Box 15667 will not be filed in the Office but will be returned. 
See ww 1.302(c) and 2.145(b)(3) for filing notice of appeal to the U.S. 
Court  of Appeals for the Federal Circuit. 

(h)   In applications under section 1(b) of the Trademark Act, 15 U.S.C. 
1051(b),  all statements of use filed under section 1(d) of the Act, and 
requests for  extensions of time therefor, should be additionally marked 
"Box ITU." 
(i)   The filing of all provisional applications and any communications 
relating thereto should be additionally marked "Box Provisional  Patent 
Application." 

NOTE. - Sections 1.1 to 1.26 are applicable to trademark cases as well as 
to  national and international patent cases except for provisions 
specifically  directed to patent cases. See w 1..9 for definitions of 
"national application"  and "international application."< 

37 CFR 1.4.   Nature of correspondence and signature requirements. 
(a)   Correspondence with the Patent and Trademark Office comprises: 
(1)         Correspondence relating to services and facilities of the 
Office,  such as general inquiries, requests for publications supplied by 
the Office,  orders for printed copies of patents or trademark 
registrations, orders for  copies of records, transmission of assignments 
for recording, and the like,  and 

(2)   Correspondence in and relating to a particular application or other 
proceeding  in the Office. See particularly the rules relating to the 
filing, processing,  or other proceedings of national applications in 
Subpart B, ww 1.31 to 1.378;  of international applications in 
Subpart C, ww 1.401 to 1.499; of reexamination of patents in Subpart D, ww 
 1.501 to 1.570; of interferences in Subpart E; ww 1.601 to 1.690; of 
extension  of patent term in Subpart F, ww 1.710 to 1.785; and of 
trademark applications  ww 2.11 to 2.189. 

(b)   Since each application file should be complete in itself, a separate 
 copy of every paper to be filed in an application should be furnished for 
each  application to which the paper pertains, even though the contents of 
the papers  filed in two or more applications may be identical. 

(c)   Since different matters may be considered by different branches or 
sections  of the Patent and Trademark Office, each distinct subject, 
inquiry or order  should be contained in a separate letter to avoid 
confusion and delay in answering  letters dealing with different subjects. 

(d)   Each piece of correspondence, except as provided for in paragraphs 
(e)  and (f) of this section, filed in a patent or trademark application, 
reexamination  proceeding, patent or trademark interference proceeding, 
patent file or trademark  registration file, trademark opposition 
proceeding, trademark cancellation  proceeding, or trademark concurrent 
use proceeding, which requires a person's  signature, must either: 

(1)         Be an original, that is, have an original signature personally 
 signed in permanent ink by that person; or 

(2)         Be a copy, such as a photocopy or facsimile transmission 
(w 1.6(d)), of an original. In the event that a copy of the original is 
filed,  the original should be retained as evidence of authenticity. If a 
question  of authenticity arises, the Patent and Trademark Office may 
require submission  of the original. 



(e)   Correspondence requiring person's signature and relating to 
registration  practice before the Patent and Trademark Office in patent 
cases, enrollment  and disciplinary investigations, or disciplinary 
proceedings must be submitted  with an original signature personally 
signed in permanent ink by that person. 
(f)   When a document that is required by statute to be certified must be 
filed,  a copy, including a photocopy or facsimile transmission, of the 
certification  is not acceptable. 

**>In addition to the Office of the Solicitor, as specified in 37 CFR 
1.1(g),  the Office will now have three separate addresses. The addresses 
are as follows. 
1)    FOR PATENT APPLICATIONS AND PATENT- 
        RELATED PAPERS 

Correspondence in patent-related matters under the direction of the 
Assistant  Commissioner for Patents should be addressed to: 

Assistant Commissioner for Patents 

Washington, D.C.  20231 

This change will affect correspondence such as: patent applications, 
responses  to notices of informality, requests for extension of time, 
notices of appeal,  briefs in support of an appeal, requests for oral 
hearing, extensions of term  of patent, requests for publication of 
Statutory Invention Registration (SIR),  requests for reexamination, 
statutory disclaimers, petitions to the Assistant  Commissioner for 
Patents, submission of information disclosure statements,  petitions to 
institute a public use proceeding, petitions to revive abandoned  patent 
applications, and other correspondence related to patent applications  and 
patents which is processed by organizations reporting to the Assistant 
Commissioner for Patents. 

2)  FOR TRADEMARK APPLICATIONS AND 
        TRADEMARK-RELATED PAPERS 

Correspondence in trademark-related matters under the direction of the 
Assistant  Commissioner for Trademarks should be addressed to: 

Assistant Commissioner for Trademarks 

2900 Crystal Drive 

Arlington, VA 22202-3513 

        This change will affect all trademark applications and other 
trademark-related  mail, except for trademark documents sent to the 
Assignment Branch for recordation  and requests for certified and 
uncertified copies of trademark documents. See  Change of Address for 
Trademark Applications and Trademark Related Papers,  1163 OG 80 (June 28, 
1994). 

3)    FOR ALL OTHER CORRESPONDENCE 

Unless otherwise specified, correspondence that does not fall into one of 
the  categories designated above should be addressed to: 

Commissioner of Patents and Trademarks 

Washington, D.C.  20231 

This change will affect such correspondence as: communications with the 
Board  of Patent Appeals and Interferences after jurisdiction of the 
application has  been transferred to the Board, patent services including 
certificates of correction,  patent copy sales, assignments, library 
services, requests for lists of patents  and SIRs in a subclass, requests 
for the status of maintenance fee payments,  as well as patent 
practitioner enrollment matters including admission to examination, 
registration to practice, certificates of good standing, and financial 
service  matters including establishing a deposit account. 

        All correspondence with the PTO, except for communications 
relating  to pending litigation as specified in 37 CFR 1.1(g), may 
continue to be filed  directly at the Attorney's Window located in Room 
1B03 of Crystal Plaza 2,  2011 Jefferson Davis Highway, Arlington, VA. 

        Those who correspond with the PTO are requested not to mix 
correspondence  which will have to be directed to different areas (e.g., 
Patents and Trademarks)  of the Office in a single envelope. At the 
present time, use of the wrong mailing  address will not affect the filing 
date assigned to any application or correspondence  received in the PTO, 
except as specified in 37 CFR 1.1(g). 

        The Office is currently preparing a notice of proposed rulemaking 
to  formally change the address for patent-related correspondence. 37 CFR 
1.1,  1.8, 1.10, and 1.51 have been waived to the extent that a 
certificate of mailing  under 37 CFR 1.8 or 1.10, for patent applications 
and related patent documents,  may be addressed either to the Commissioner 
of Patents and Trademarks, Washington,  D.C.  20231, or to the Assistant 
Commissioner for Patents, Washington, D.C. 
 20231. See "Waiver of Certificate of Mailing Requirement under 37 CFR 
1.10",  1174 OG 92 (May 16, 1995).< 

All mailed communications are received by the Incoming-Mail Section of the 
 Correspondence and Mail Division, which opens and distributes all 
official  mail. 

Special boxes have been established to allow the forwarding of particular 
types  of mail to appropriate areas of the Office as quickly as possible. 
A list of  these boxes is published weekly in the Official Gazette. Only 
the specified type of document  for a particular box should be placed in 
an envelope addressed to that box. 
If any documents other than the specified type identified for each 
department  are addressed to that department, they will be significantly 
delayed in reaching  the appropriate area for which they were intended. 


502   Depositing Correspondence [R-2] 


37 CFR 1.5.   Identification of application, patent or registration. 
(a)   No correspondence relating to an application should be filed prior 
to  when notification of the application number is received from the 
Patent and  Trademark Office. When a letter directed to the Patent and 
Trademark Office  concerns a previously filed application for a patent, it 
must identify on the  top page in a conspicuous location, the application 
number (consisting of the  series code and the serial number; e.g., 
07/123,456), or the serial number  and filing date assigned to that 
application by the Patent and Trademark Office,  or the international 
application number of the international application. Any  correspondence 
not containing such identification will be returned to the sender  where a 
return address is available. The returned correspondence will be 
accompanied  with a cover letter which will indicate to the sender that if 
the returned  correspondence is resubmitted to the Patent and Trademark 
Office within two  weeks of the mail date on the cover letter, the 
original date of receipt of  the correspondence will be considered by the 
Patent and Trademark Office as  the date of receipt of the correspondence. 
Applicants may use either the Certificate  of Mailing or Transmission 
procedure under w 1.8 or the Express Mail procedure  under w 1.10 for 
resubmissions of returned correspondence if they desire to  have the 
benefit of the date of deposit in the United States Postal Service.  If 
the returned correspondence is not resubmitted within the two-week period, 
 the date of receipt of the resubmission will be considered to be the date 
of  receipt of the correspondence. The two-week period to resubmit the 
returned  correspondence will not be extended. If for some reason, 
returned correspondence  is resubmitted with proper identification later 
than two weeks after the return  mailing by the Patent and Trademark 
Office, the resubmitted correspondence  will be accepted but given its 
date of receipt. In addition to the application  number, all letters 
directed to the Patent and Trademark Office concerning  applications for 
patents should also state "PATENT APPLICATION," the name of  the 
applicant, the title of the invention, the date of filing the same, and, 
if known, the group art unit or other unit within the Patent and Trademark 
 Office responsible for considering the letter and the name of the 
examiner  or other person to which it has been assigned. 

(b)   When the letter concerns a patent other than for purposes of paying 
a  maintenance fee, it should state the number and date of issue of the 
patent,  the name of the patentee, and the title of the invention. For 
letters concerning  payment of a maintenance fee in a patent, see the 
provisions of w 1.366(c). 
(c)   A letter relating to a trademark application should identify it as 
such  and by the name of the applicant and the serial number and filing 
date of the  application. A letter relating to a registered trademark 
should identify it  by the name of the registrant and by the number and 
date of the certificate. 
(d)   A letter relating to a reexamination proceeding should identify it 
as  such by the number of the patent undergoing reexamination, the 
reexamination  request control number assigned to such proceeding, and, if 
known, the group  art unit and name of the examiner to which it has been 
assigned. 

(e)   When a paper concerns an interference, it should state the names of 
the  parties and the number of the interference. The name of the 
examiner-in-chief  assigned to the interference (w 1.610) and the name of 
the party filing the  paper should appear conspicuously on the first page 
of the paper. 

37 CFR 1.6.   Receipt of correspondence. 

(a)   Date of receipt and Express Mail date of deposit. Correspondence 
received  in the Patent and Trademark Office is stamped with the date of 
receipt except  as follows: 

(1)         No correspondence is received in the Patent and Trademark 
Office  on Saturdays, Sundays, or Federal holidays within the District of 
Columbia. 
(2)         Correspondence filed in accordance with w 1.10 will be stamped 
 with the date of deposit as ``Express Mail" with the United States Postal 
Service  unless the date of deposit is a Saturday, Sunday, or Federal 
holiday within  the District of Columbia in which case the date stamped 
will be the next succeeding  day which is not a Saturday, Sunday, or 
Federal holiday within the District  of Columbia. 

(3)         Correspondence transmitted by facsimile to the Patent and 
Trademark  Office will be stamped with the date on which the complete 
transmission is  received in the Patent and Trademark Office unless that 
date is a Saturday,  Sunday, or Federal holiday within the District of 
Columbia, in which case the  date stamped will be the next succeeding day 
which is not a Saturday, Sunday,  or Federal holiday within the District 
of Columbia. 

(b)   Correspondence to be filed in an interference proceeding which 
consists  of a preliminary statement under w 1.621; a transcript of a 
deposition under  w 1.676 or of interrogatories, cross-interrogatories, or 
recorded answers under  w 1.684(c); or an evidentiary record and exhibits 
under w 1. 653. 

(c)   Correspondence delivered by hand. In addition to being mailed, 
correspondence  may be delivered by hand during hours the Office is open 
to receive correspondence. 
(d)   Facsimile transmission. Except in the cases enumerated below, 
correspondence,  including authorizations to charge a deposit account, may 
be transmitted by  facsimile. The receipt date accorded to the 
correspondence will be the date  on which the complete transmission is 
received in the Patent and Trademark  Office, unless that date is a 
Saturday, Sunday, or Federal holiday within the  District of Columbia. See 
w 1.6(a)(3). To facilitate proper processing, each  transmission session 
should be limited to correspondence to be filed in a single  application 
or other proceeding before the Patent and Trademark Office. The 
application number of a patent or trademark application, the control 
number  of a reexamination proceeding, the interference number of an 
interference proceeding,  the patent number of a patent, or the 
registration number of a trademark should  be entered as a part of the 
sender's identification on a facsimile cover sheet.  Facsimile 
transmissions are not permitted and, if submitted, will not be accorded  a 
date of receipt in the following situations: 

(1)         Correspondence as specified in w 1.4(e), requiring an original 
 signature; 

(2)         Certificate of documents as specified in # 1.4(f); 

(3)         Correspondence which cannot receive the benefit of the 
certificate  of mailing or transmission as specified in ww 1.8(a)(2)(i)(A) 
through (D) and 
(F); 1.8(a)(2)(ii)(A) and (D); and 1.8(a)(2)(iii)(A); 

(4)         Drawings submitted under ww 1.81, 1.83 through 1.85, 1.152, 
1.165,  1.174, 1.437, 2.51, 2.52, or 2.72; 

(5)         A request for reexamination under w 1.510; 

(6)         Correspondence to be filed in a patent application subject to 
a  secrecy order under ww 5.1 through 5.8 of this chapter and directly 
related  to the secrecy order content of the application; 

(7)         Requests for cancellation or amendment of a registration under 
 section 7(e) of the Trademark Act, 15 U.S.C. 1057(e); and certificates of 
registration  surrendered for cancellation or amendment under section 7(e) 
of the Trademark  Act, 15 U.S.C. 1057(e); 

(8)         Correspondence to be filed with the Trademark Trial and Appeal 
 Board, except the notice of ex parte appeal; 

(9)         Correspondence to be filed in an interference proceeding which 
 consists of a preliminary statement under w 1.621; a transcript of a 
deposition  under w 1.676 or of interrogatories, cross-interrogatories, or 
recorded answers  under w 1.684(c); or an evidentiary record and exhibits 
under w 1. 653. 
(e)   Interruptions in U.S. Postal Service. 

If interruptions or emergencies in the United States Postal Service which 
have  been so designated by the Commissioner occur, the Patent and 
Trademark Office  will consider as filed on a particular date in the 
Office any correspondence  which is: 

(1)         Promptly filed after the ending of the designated interruption 
 or emergency; and 

(2)         Accompanied by a statement indicating that such correspondence 
 would have been filed on that particular date if it were not for the 
designated  interruption or emergency in the United States Postal Service. 
Such statement  must be a verified statement if made by a person other 
than a practitioner  as defined in w 10.1(r) of this chapter. 

Applications (provisional and nonprovisional), amendments, and other 
papers  may be sent to the Patent and Trademark Office by mail (see MPEP w 
501), by  facsimile (see MPEP # 502.01) or they may be deposited in the 
Correspondence  and Mail Division. 

The Patent and Trademark Office ZIP Code designation "20231" should be 
used  when writing the Patent and Trademark Office for any matter. In 
addition, the  sender's own ZIP Code designation should be given. 

Documents sent to the Office by private courier should be addressed as 
follows: 
Patent and Trademark Office 
Correspondence and Mail Division 
Crystal Plaza Building 2, Room 1A03 
2011 South Clark Place 
Arlington, VA 22202 

All correspondence related to a national patent application already filed 
with  the Patent and Trademark Office must include the identification of 
the serial  number and either the series code or the filing date assigned 
to the application  by the Office. Any correspondence not containing the 
proper identification  set forth in 
37 CFR 1.5(a) must be sent by the group with a signed note to the 
Correspondence  Branch of the Mail Room for return to the sender. Each 
paper should be inspected  to assure that the papers being returned 
contain either a mail room date stamp  or a group date stamp. A minor 
error in the identification of the application  can be corrected by the 
group provided the correct identification can be quickly  discovered. 
Examples of minor errors are transposed numbers, typographical  errors, 
and listing the parent application number. The failure to give any  serial 
number is not a minor error. The Office often experiences difficulty  in 
matching incoming papers with the application file to which they pertain 
because insufficient or erroneous information is given. This applies 
especially  to amendments, powers of attorney, changes of address, status 
letters, petitions  for extension of time, and other petitions. 

Frequently, there are errors in the serial number or in the group art unit 
 number, or the incoming paper uses the old group art unit number where an 
application  has been transferred and acted on by a different examining 
group. 
Where the group art unit number is entirely omitted, the routine 
operations  of the Correspondence and Mail Division must be interrupted 
solely for the  purpose of determining the location of the application so 
that the communication  can be properly routed. Under these circumstances, 
the efficiency of the Correspondence  and Mail Division is impaired and 
the incoming paper is delayed in reaching  its proper destination. Where 
such papers are not essential to compliance with  a statutory period or 
time limit for response, they may be returned for completion  to identify 
the location of the files. 

It would be of great assistance to the Office if all incoming papers 
pertaining  to a filed application carried the following items: 

1.  Application number (checked for accuracy). 

2.  Group art unit number (copied from filing receipt or most recent 
Office  Action). 

3.  Filing date. 

4.  Name of the examiner who prepared the most recent Office Action. 
5.  Title of invention. 



Applicants may be reminded of this provision by including Form Paragraph 
5.01. 
W 5.01      Proper Heading for Incoming Papers. 

It would be of great assistance to the Office if all incoming papers 
pertaining  to a filed application carried the following items: 

1.  Application number (checked for accuracy, including series code and 
serial  no.). 

2.  Group art unit number (copied from ** most recent Office 
communication). 
3.  Filing date. 

4.  Name of the examiner who prepared the most recent Office action. 
5.  Title of invention. 


During pre-examination processing, drawings are temporarily separated from 
 the rest of the application papers. To facilitate the matching of 
drawings  with the application, it would be helpful if the applicant`s 
name, docket number,  and the title of the invention were put on the back 
of the drawings. This may  be done by writing lightly on the drawings or 
by using gummed labels. 
When the Office receives formal or substitute drawings for patent 
applications,  a cover letter identifying the drawings by application 
number should accompany  them. The application number should be placed on 
each sheet of drawings in  accordance with 37 CFR 1.84(c). It is possible 
to associate the drawings with  the files when this information is missing. 

Identifying indicia should include the application number or the title of 
the  invention, inventor's name, docket number (if any), and the name and 
telephone  number of a person to call. This information should be placed 
on the back of  each sheet of drawings with a minimum distance of 1.5 cm 
(5/8-inch) down from  the top of the page. 

Except for the later filing of the oath or declaration and/or filing fee 
accompanied  by the surcharge, under 
37 CFR 1.16(e), which must be filed within the time set in the request 
therefor,  it is requested that the submission of additional or 
supplemental papers on  a newly filed application be deferred until a 
filing receipt has been received.  It also would be appreciated if the 
filing of additional papers relating to  an allowed application were 
deferred until a notice of allowance (PTOL-85)  is received. 

Patent and Trademark documents which have no particular time or sequence 
requirements  should be filed with materials submitted in response to the 
statutory or regulatory  requirements. Examples are certified copies of 
foreign documents to support  priority in patent applications, changes of 
power of attorney, or changes in  mailing address following first action. 

All letters relating to a reexamination proceeding should identify the 
proceeding  involved by patent number and reexamination request control 
number. 
ISSUE BATCH NUMBER 

All papers filed by applicant in the Office after receiving the Notice of 
Allowance  and before the time the Issue Fee Receipt is received should 
include the Issue  Batch Number. The Issue Batch Number is printed on the 
Notice of Allowance  form under the heading "Batch No.". The Issue Batch 
Number consists of a capital  letter followed by two digits, for example; 
"A03", "D18", "F42", "J79."  Use  of the Issue Batch Numbers is important 
since the allowed applications are  filed by these numbers. 

Any paper filed after receiving the Issue Fee Receipt should include the 
indicated  patent number rather than the Issue Batch Number. At this time 
in the processing,  the Issue Batch Number is no longer useful since the 
application has been removed  from the batch at the time the patent number 
was assigned. 

If the above suggestions are adopted, the processing of both new and 
allowed  applications could proceed more efficiently and promptly through 
the Patent  and Trademark Office. 

HAND-DELIVERY OF PAPERS 

Any paper which relates to a pending application may be personally 
delivered  to an examining group. However, the examining group will accept 
the paper only  if: (1) the paper is accompanied by some form of receipt 
which can be handed  back to the person delivering the paper; and (2) the 
examining group being  asked to receive the paper is responsible for 
acting on the paper. Patent applications,  including those filed under 37 
CFR 1.60 and 1.62, may be delivered in person  to the Mail Room, but not 
to the examining groups. 

The receipt accompanying a hand-delivered paper may take the form of a 
card  identifying the paper. The identifying data on the card should be so 
complete  as to leave no uncertainty as to the paper filed. For example, 
the card should  contain the applicant's name(s), application no., the 
filing date, and a description  of the paper being filed. If more than one 
paper is being filed for the same  application, the card should contain a 
description of each paper or item. 


Under this procedure, the paper and receipt will be date stamped with the 
group  date stamp. Group personnel receiving a paper will check it against 
the receipt  to make sure that the paper is accurately described on the 
receipt and that  the receipt does not list papers which are not being 
filed. The receipt will  be handed back to the person hand-delivering the 
paper. The paper will be correlated  with the application and made an 
official paper in the file, thereby avoiding  the necessity of processing 
and forwarding the paper to the examining group  via the Mail Room. 

If duplicate copies of a request for an extension of time under 37 CFR 
1.136(b)  are hand-delivered to an examining group, both copies are dated, 
either stamped  approved or indicated as being denied, and signed. The 
duplicate copy is returned  to the delivering person regardless of whether 
the request was signed by a  registered attorney or agent, either of 
record or acting in a representative  capacity, the applicant, or the 
assignee of record of the entire interest. 
The examining group will accept and date stamp a paper, other than an 
application,  even though the paper is accompanied by a check or the paper 
contains an authorization  to charge a Deposit Account. However, in such 
an instance, the paper will be  hand-carried by group personnel to the 
Office of Finance for processing and  then made an official paper in the file. 

All such papers, together with the cash, checks, or money orders, shall be 
 hand-carried to the Cashier's Window, Room 2-1BO1, between the hours of 
10:00-11:00  a.m. and 2:00-3:00 p.m. 

EXPRESS MAIL SERVICE 

There are two types of Express Mail delivery offered by the U.S. Postal 
Service  - "Post Office to Addressee" and "Post Office to Post Office." 
The only type  of service which can be used for Express Mail directed to 
the Patent and Trademark  Office is "Post Office to Addressee." This 
service provides for the use of  a mailing label which clearly indicates 
the date on which a particular paper  or fee was deposited. 

The address that should be used for Express Mail sent to the Patent and 
Trademark  Office is: 

"Commissioner of Patents and Trademarks 

Washington, D.C. 20231." 

        Alternatively, patent-related mail under the direction of the 
Assistant  Commissioner for Patents and trademark-related mail under the 
direction of  the Assistant Commissioner for Trademarks, should be 
addressed in accordance  with MPEP w 501. 

"Post Office to Post Office" Express Mail does not provide for delivery 
but  instead is retained at the postal facility of the addressee for 
pickup. The  Postal Service does not notify the addressee that this type 
of Express Mail  has been received and is awaiting pickup. If not picked 
up, this mail is held  for 15 days and then returned to the sender. 

Therefore, since the Patent and Trademark Office does not have resources 
for  picking up any mail, including Express Mail, the"Post Office to Post 
Office"  Express Mail will not reach the Patent and Trademark Office. 

See MPEP w 513 for the use of Express Mail under the Certificate of 
Mailing  procedure of 37 CFR 1.10. 


502.01      Correspondence Transmitted by Facsimile [R-1] 


37 CFR 1.6.   Receipt of correspondence. 

***** 

(d)   Facsimile transmission. Except in the cases enumerated below, 
correspondence,  including authorizations to charge a deposit account, may 
be transmitted by  facsimile. The receipt date accorded to the 
correspondence will be the date  on which the complete transmission is 
received in the Patent and Trademark  Office, unless that date is a 
Saturday, Sunday, or Federal holiday within the  District of Columbia. See 
w 1.6(a)(3). To facilitate proper processing, each  transmission session 
should be limited to correspondence to be filed in a single  application 
or other proceeding before the Patent and Trademark Office. The 
application number of a patent or trademark application, the control 
number  of a reexamination proceeding, the interference number of an 
interference proceeding,  the patent number of a patent, or the 
registration number of a trademark should  be entered as a part of the 
sender's identification on a facsimile cover sheet.  Facsimile 
transmissions are not permitted and, if submitted, will not be accorded  a 
date of receipt in the following situations: 

(1)         Correspondence as specified in w 1.4(e), requiring an original 
 signature; 

(2)         Certificate of documents as specified in # 1.4(f); 

(3)         Correspondence which cannot receive the benefit of the 
certificate  of mailing or transmission as specified in #w 1.8(a)(2)(i)(A) 
through (D) and 
(F); 1.8(a)(2)(ii)(A) and (D); and 1.8(a)(2)(iii)(A); 

(4)         Drawings submitted under ww 1.81, 1.83 through 1.85, 1.152, 
1.165,  1.174, 1.437, 2.51, 2.52, or 2.72; 

(5)         A request for reexamination under w 1.510; 

(6)         Correspondence to be filed in a patent application subject to 
a  secrecy order under ww 5.1 through 5.8 of this chapter and directly 
related  to the secrecy order content of the application; 

(7)         Requests for cancellation or amendment of a registration under 
 section 7(e) of the Trademark Act, 15 U.S.C. 1057(e); and certificates of 
registration  surrendered for cancellation or amendment under section 7(e) 
of the Trademark  Act, 15 U.S.C. 1057(e); 

(8)         Correspondence to be filed with the Trademark Trial and Appeal 
 Board, except the notice of ex parte appeal; 

(9)         Correspondence to be filed in an interference proceeding which 
 consists of a preliminary statement under w 1.621; a transcript of a 
deposition  under w 1.676 or of interrogatories, cross-interrogatories, or 
recorded answers  under w 1.684(c); or an evidentiary record and exhibits 
under w 1.653. 
***** 

The date of receipt accorded to any correspondence permitted to be sent by 
 facsimile transmission is the date the complete transmission is received 
by  an Office facsimile unit, unless the transmission is completed on a 
Saturday,  Sunday, or Federal holiday within the District of Columbia. 
Correspondence  for which transmission was completed on a Saturday, 
Sunday, or Federal holiday  within the District of Columbia, will be 
accorded a receipt date of the next  succeeding day which is not a 
Saturday, Sunday, or Federal holiday within the  District of Columbia. For 
example, a facsimile transmission to the Office from  California starting 
on a Friday at 8:45 p.m. Pacific time and taking 20 minutes,  would be 
completed at 9:05 p.m. Pacific time. The complete transmission would  be 
received in the Office around 12:05 a.m. Eastern time on Saturday. The 
receipt  date accorded to the correspondence is the date of the following 
business day,  which in this case, would be Monday (assuming that Monday 
was not a Federal  holiday within the District of Columbia). 

37 CFR 1.6(d) specifies the types of correspondence which may be 
transmitted  by facsimile. These would include amendments, declarations, 
petitions, issue  fee transmittals and authorizations to charge deposit 
accounts. The situations  where transmissions by facsimile are prohibited 
are identified in 37 CFR 1.6(d)(1)-(9).  Prohibitions cover situations 
where originals are required as specified in  37 CFR 1.4 (e) and (f), and 
situations where accepting a facsimile transmission  would be unduly 
burdensome on the Office. As a courtesy, the Office will attempt  to 
notify senders whenever correspondence is sent to the Office by facsimile 
transmission that falls within one of these prohibitions. Senders are 
cautioned  against submitting correspondence by facsimile transmission 
which is not permitted  under 37 CFR 1.6(d) since such correspondence will 
not be accorded a receipt  date. 

The following list itemizes types of correspondence which may not be filed 
 by facsimile transmission, and, if submitted by facsimile, will not be 
accorded  a date of receipt: 

Correspondence Relative to Patents and Patent 
Applications Where Filing by Facsimile 
Transmission is Not Permitted 

(1)   A document that is required by statute to be certified; 

(2)   A national patent application specification and drawing 
>(provisional  or nonprovisional)< or other correspondence for the purpose 
of obtaining an  application filing date; 

(3)   Drawings submitted under 37 CFR 1.81, 1.83-1.85, 1.152, 1.165, 
1.174,  or 1.437; 

(4)   Correspondence in an interference which an Administrative Patent 
Judge  orders to be filed by hand or "Express Mail"; 

(5)   Agreements between parties to an interference under 35 U.S.C. 
135(c); 
(6)   Correspondence to be filed in an interference proceeding which 
consists  of a preliminary statement under 37 CFR 1.621; a transcript of a 
deposition  under 
37 CFR 1.676 or of interrogatories, cross-interrogatories, or recorded 
answers  under 37 CFR 1.684(c); or an evidentiary record and exhibits 
under 37 CFR 1.653; 
(7)   Correspondence to be filed in a patent application subject to a 
secrecy  order under 37 CFR 5.1-5.8 of this chapter and directly related 
to the secrecy  order content of the application; 

(8)   An international application for patent; 

(9)   A copy of the international application and the basic national fee 
necessary  to enter the national stage, as specified in 37 CFR 1.494(b) or 
37 CFR 1.495(b); 


(10)    A request for reexamination under 37 CFR 1.510. 

Under 37 CFR 1.6(d)(4), drawings submitted under 
37 CFR 1.81, 1.83-1.85, 1.152, 1.165, 1.174, or 1.437 may not be filed by 
facsimile  in patent applications. However, applicants may submit by 
facsimile transmission  proposed drawing corrections for approval by the 
Office. 

See MPEP # 1834.01 for a discussion concerning facsimile transmissions in 
PCT  applications. 



502.02      Correspondence Signature Requirements [R-1] 


37 CFR 1.4.   Nature of correspondence and signature requirements. 
***** 

(d)   Each piece of correspondence, except as provided for in paragraphs 
(e)  and (f) of this section, filed in a patent or trademark application, 
reexamination  proceeding, patent or trademark interference proceeding, 
patent file or trademark  registration file, trademark opposition 
proceeding, trademark cancellation  proceeding, or trademark concurrent 
use proceeding, which requires a person's  signature, must either: 

(1)         Be an original, that is, have an original signature personally 
 signed in permanent ink by that person; or 

(2)         Be a copy, such as a photocopy or facsimile transmission 
(w 1.6(d)), of an original. In the event that a copy of the original is 
filed,  the original should be retained as evidence of authenticity. If a 
question  of authenticity arises, the Patent and Trademark Office may 
require submission  of the original. 

(e)   Correspondence requiring person's signature and relating to 
registration  practice before the Patent and Trademark Office in patent 
cases, enrollment  and disciplinary investigations, or disciplinary 
proceedings must be submitted  with an original signature personally 
signed in permanent ink by that person. 
(f)   When a document that is required by statute to be certified must be 
filed,  a copy, including a photocopy or facsimile transmission, of the 
certification  is not acceptable. 

Correspondence filed in the Office, which requires a person's signature, 
may  be an original, or a copy thereof. The word original, as used herein, 
is defined  as correspondence which is personally signed in permanent ink 
by the person  whose signature appears thereon. Where copies of 
correspondence are acceptable,  photocopies or facsimile transmissions may 
be filed  For example, a photocopy  or facsimile transmission of an 
original of an amendment, declaration >(e.g.,  under 37 CFR 1.63 or 
1.67)<, petition, issue fee transmittal form, authorization  to charge a 
deposit account, etc., may be submitted in a patent application.  Where 
copies are permitted, second and further generation copies (i.e., copy  of 
a copy) are acceptable. >For example, a client may fax a paper to an 
attorney  and the attorney may then fax the paper to the office, provided 
the paper is  eligible to be faxed (see MPEP w 502.1).< The original, if 
not submitted to  the Office, should be retained as evidence of proper 
execution in the event  that questions arise as to the authenticity of the 
signature reproduced on  the photocopy or facsimile-transmitted 
correspondence. If a question of authenticity  arises, the Office may 
require submission of the original. 

When a document that is required by statute to be certified must be filed 
(such  as a certified copy of a foreign patent application, pursuant to 35 
U.S.C.  119 or a certified copy of an international application, pursuant 
to 35 U.S.C.  365) a copy of the certification, including a photocopy or 
facsimile transmission,  will not be acceptable. The requirement for an 
original certification does  not apply to certifications such as required 
under 
37 CFR 1.8, 1.10, 1.60, 1.97(e) and 3.73(b), since these certifications 
are  not required by statute. 


503   Serial Number and Filing Receipt [R-2] 


37 CFR 1.54.    Parts of application to be filed together; filing receipt. 
(a)   It is desirable that all parts of the complete application be 
deposited  in the Office together; otherwise a letter must accompany each 
part, accurately  and clearly connecting it with the other parts of the 
application. See w 1.53  with regard to completion of an application. 

(b)   Applicant will be informed of the application serial number and 
filing  date by a filing receipt. 

Application numbers consisting of a series code and a serial number are 
assigned  in the Correspondence and Mail Division immediately after mail 
has been opened. 
If a self-addressed postcard is submitted with a patent application, that 
postcard  will be stamped with both the receipt date and serial number 
prior to returning  it to the addressee. 

The identifying data on the postcard should include: (1) applicant's 
name(s); 
(2) title of invention; (3) number of pages of specification, claims (for 
nonprovisional  applications), and sheets of drawing; (4) whether oath or 
declaration included; 
(5) provisional application cover sheet; and (6) amount and manner of 
paying  the fee. 

A return postcard should be attached to each patent application for which 
a  receipt is desired. 

It is important that the return postcard itemize all of the components of 
the  application. If the postcard does not itemize each of the components 
of the  application, it will not serve as evidence that any component 
which was not  itemized was received by the Office. 

It should be recognized that the identification of an application by 
serial  number does not necessarily signify that the Patent and Trademark 
Office has  accepted the application as complete (37 CFR 1.53(a)). 

A nonprovisional application is entitled to a filing date as of the date 
of  the identification of all of the inventors and receipt of the 
specification,  including claims, and any required drawing. However, the 
filing receipt will  not be mailed until the oath or declaration and basic 
filing fee have also been received. The oath or declaration and filing fee 
 may be filed later than the remaining application papers, but if so, they 
must  be accompanied by the required surcharge. If the oath or 
declaration, and/or  filing fee, and appropriate surcharge are not timely 
filed, the application  will be abandoned and no filing receipt will be 
mailed. Otherwise, the filing  receipt will be mailed upon the timely 
receipt of the oath or declaration,  and/or filing fee and surcharge. 

A provisional application is entitled to a filing date as of the date of 
the  identification of all the inventors as required by 37 CFR 1.41 and 
receipt  of the specification and any required drawing(s), and a cover 
sheet identifying  the application as a provisional application. See 
37 CFR 1.53(b)(2). 

In the Application Division, each application which meets the requirements 
 is given a filing date. It is important, when referring to application 
files,  to identify them by their filing dates as well as by application 
numbers. 
The Application Division mails a filing receipt to the attorney or agent, 
if  any, otherwise to the applicant, for each complete application filed, 
giving  the serial number, filing date, and group to which assigned. See 
MPEP w 506. 
Attorney docket numbers must be limited to a maximum of 12 characters to 
prevent  truncation. The Patent Application Location and Monitoring (PALM) 
system data  base allows a maximum of 12 characters for the attorney 
docket numbers. Spaces,  slashes, and hyphens will no longer be included 
in the entered docket number  on the official filing receipt. In an 
application where CASE or NAVY-CASE appears  before the first character in 
the docket number, only the characters after  CASE or NAVY-CASE will be 
entered on the official filing receipt. 
In the Application Division, the application papers are placed in a file 
wrapper  and certain data placed thereon. 

Applications which are entitled to a filing date and are filed, whether by 
 regular mail or ``Express Mail" under 37 CFR 1.10, by hand-delivery or 
otherwise,  will not be returned to applicant even if requested. See 37 
CFR 1.59. Accordingly,  applicants must be careful not to file 
applications which are not intended  to be filed; e.g., duplicates of 
applications already filed. Since 37 CFR 1.26(a)  precludes refund of an 
application filing fee when applicant desires to withdraw  an application, 
any request by applicant not to process or charge an application  filing 
fee because the application was not intended to be filed must be in  the 
form of a petition under 37 CFR 1.183 requesting suspension of the rules 
to the extent that the filing fee not be processed or charged. Any such 
petition  must include the fee set forth in 37 CFR 1.17(h) and must be 
accompanied by  an express abandonment of the application in accordance 
with 37 CFR 1.138. 
 In order for such a petition to be granted, it must ordinarily be filed 
and  acted upon prior to the date on which the application filing fee is 
processed  or charged by the Office with regard to the application. 

RETURN POSTCARD 

If a receipt of any paper filed in the Patent and Trademark Office is 
desired,  it may be obtained by enclosing with the paper a self-addressed 
postcard identifying  the paper. The Patent and Trademark Office will 
stamp the receipt date on the  card and place it in the outgoing mail. 

The identifying data on the card should be so complete as to clearly 
identify  the paper for which receipt is requested. For example, the card 
should identify  the applicant's name(s), serial number, filing date, 
interference number, etc.,  and the paper(s) should be identified by 
specifying the type thereof, namely  affidavit, amendment, appeal, 
components of applications, brief, drawings,  fees, motions, supplemental 
oath or declaration, petition, etc. 

Upon return of a postcard receipt from the PTO, the receipt should be 
promptly  reviewed by the person who filed the papers to ensure that each 
itemized paper  was received by the PTO. If the postcard receipt has been 
annotated to indicate  that a particular paper was not received, the 
postcard receipt will not serve  as prima facie evidence of receipt of 
that paper in the PTO. Likewise, the  postcard receipt will not serve as 
prima facie evidence of receipt of papers  which are not adequately 
itemized. For example, merely listing on the postcard  ``a complete 
application" or ``patent application" will not serve as a proper  receipt 
for each of the required components of an application if one of the 
components is found to be missing by the PTO.  Instead, each separate 
component;  e.g., the number of pages of specification, number of claims 
(nonprovisional  applications), number of sheets of drawings, cover sheet 
(provisional applications),  etc. should be itemized on the postcard. 

The person receiving the paper(s) in the Patent and Trademark Office 
should  check the listing on the postcard against the papers being filed 
to be sure  they are properly identified and that all the items listed are 
present. If  any of the items listed are not being filed, those items 
should be crossed  off and the card initialed by the person receiving the 
papers. 

A postcard receipt which itemizes and properly identifies the papers which 
 are being filed serves as prima facie evidence of receipt in the PTO of 
all  the items listed thereon on the date stamped thereon by the PTO. 

** 


504   Assignment of Application for Examination [R-1] 


The Application Division assigns * >a nonprovisional< application to the 
examining  group to which it appears to belong. >Provisional applications 
will not be  examined.< 


505   "Office Date" Stamp of Receipt [R-1] 


37 CFR 1.6.   Receipt of correspondence. 

(a)   Date of receipt and Express Mail date of deposit. Correspondence 
received  in the Patent and Trademark Office is stamped with the date of 
receipt except  as follows: 

(1)         No correspondence is received in the Patent and Trademark 
Office  on Saturdays, Sundays, or Federal holidays within the District of 
Columbia. 
(2)         Correspondence filed in accordance with w 1.10 will be stamped 
 with the date of deposit as ``Express Mail" with the United States Postal 
Service  unless the date of deposit is a Saturday, Sunday, or Federal 
holiday within  the District of Columbia in which case the date stamped 
will be the next succeeding  day which is not a Saturday, Sunday, or 
Federal holiday within the District  of Columbia. 

(3)         Correspondence transmitted by facsimile to the Patent and 
Trademark  Office will be stamped with the date on which the complete 
transmission is  received in the Patent and Trademark Office unless that 
date is a Saturday,  Sunday, or Federal holiday within the District of 
Columbia, in which case the  date stamped will be the next succeeding day 
which is not a Saturday, Sunday,  or Federal holiday within the District 
of Columbia. 

***** 

The Office stamps papers and fees with the date of their receipt in the 
Patent  and Trademark Office. The stamp is referred to as the "Office 
Date" stamp. 
When the last day for taking any action or paying any fee in the U.S. 
Patent  and Trademark Office falls on a Saturday, Sunday, or a Federal 
holiday within  the District of Columbia, the action or the fee is 
considered timely if the  action is taken or the fee is paid on the next 
succeeding business day. 
>WARNING: Since a provisional application can be pending for no more than 
twelve  months, the last day of pendency may occur on a Saturday, Sunday, 
or Federal  holiday within the District of Columbia which for copendency 
would require  the nonprovisional application to be filed prior to the 
Saturday, Sunday, or  Federal holiday. See 37 CFR 1.78(a)(3).< 

If an application includes the necessary components for a filing date (see 
 37 CFR 1.41(a) and 1.53(b) and MPEP w 506), the "Office Date" stamp 
establishes  the "filing date." Applications will not be accepted and 
stamped in the examining  groups. They must be date stamped in the Mail Room. 


506   Completeness of Original Application [R-2] 


37 CFR 1.53.    Serial number, filing date, and completion of application. 
(a) Any application for a patent received in the Patent and Trademark 
Office  will be assigned an application number for identification 
purposes. 
(b)(1) The filing date of an application for patent filed under this 
section,  except for a provisional application, is the date on which: a 
specification  containing a description pursuant to # 1.71 and at least 
one claim pursuant  to # 1.75; and any drawing required by 
# 1.81(a), are filed in the Patent and Trademark Office in the name of the 
 actual inventor or inventors as required by # 1.41. No new matter may be 
introduced  into an application after its filing date 
# 1.118). If all the names of the actual inventor or inventors are not 
supplied  when the specification and any required drawing are filed, the 
application  will not be given a filing date earlier than the date upon 
which the names  are supplied unless a petition with the fee set forth in 
# 1.17(i) is filed  which sets forth the reasons the delay in supplying 
the names should be excused.  A continuation or divisional application 
(filed under the conditions specified  in 35 U.S.C. 120 or 121 and # 
1.78(a)) may be filed under this section, # 1.60  or # 1.62. A 
continuation-in-part application may be filed under this section  or # 
1.62. 

(2)   The filing date of a provisional application is the date on which: a 
 specification as prescribed by 35 U.S.C. 112, first paragraph; and any 
drawing  required by # 1.81(a), are filed in the Patent and Trademark 
Office in the  name of the actual inventor or inventors as required by # 
1.41. No amendment,  other than to make the provisional application comply 
with all applicable regulations,  may be made to the provisional 
application after the filing date of the provisional  application. If all 
the names of the actual inventor or inventors are not supplied  when the 
specification and any required drawing are filed, the provisional 
application will not be given a filing date  earlier than the date upon 
which the names are supplied unless a petition with  the fee set forth in 
# 1.17(q) is filed which sets forth the reasons the delay  in supplying 
the names should be excused. 

(i)   A provisional application must also include a cover sheet 
identifying  the application as a provisional application. Otherwise, the 
application will  be treated as an application filed under 
# 1.53(b)(1). 

(ii)    An application for patent filed under # 1.53(b)(1) may be treated 
as  a provisional application and be accorded the original filing date 
provided  that a petition requesting the conversion, with the fee set 
forth in # 1.17(q),  is filed prior to the earlier of the abandonment of 
the # 1.53(b)(1) application,  the payment of the issue fee, the 
expiration of 12 months after the filing  date of the 
# 1.53(b)(1) application, or the filing of a request for a statutory 
invention  registration under # 1.293. The grant of any such petition will 
not entitle  applicant to a refund of the fees which were properly paid in 
the application  filed under # 1.53(b)(1). 

(iii)     A provisional application shall not be entitled to the right of 
priority  under # 1.55 or 35 U.S.C. 119 or 365(a) or to the benefit of an 
earlier filing  date under # 1.78 or 35 U.S.C. 120, 121 or 365(c) of any 
other application.  No claim for priority under # 1.78(a)(3) may >be made 
in a design application  based on a provisional application. No request 
under # 1.293 for a statutory  invention registration may be filed in a 
provisional application.  The requirements  of ## 1.821 - 1.825 regarding 
application disclosures containing nucleotide  and/or amino acid sequences 
are not mandatory for provisional applications.< 
(c)   If any application is filed without the specification, drawing or 
name,  or names, of the actual inventor or inventors required by paragraph 
(b)(1)  or (b)(2) of this section, applicant will be so notified and given 
a time period  within which to submit the omitted specification, drawing, 
name, or names,  of the actual inventor, or inventors, in order to obtain 
a filing date as of  the date of filing of such submission. A copy of the 
"Notice of Incomplete  Application" form notifying the applicant should 
accompany any response thereto  submitted to the Office. If the omission 
is not corrected within the time period  set, the application will be 
returned or otherwise disposed of; the fee, if  submitted, will be 
refunded less the handling fee set forth in # 1.21(n). Any  request for 
review of a refusal to accord an application a filing date must  be by way 
of a petition accompanied by the fee set forth in # 1.17(i), if the 
application was filed under # 1.53(b)(1), or by the fee set forth in # 
1.17(q),  if the application was filed under # 1.53(b)(2). 

(d)(1) If an application which has been accorded a filing date pursuant to 
 paragraph (b)(1) of this section does not include the appropriate filing 
fee  or an oath or declaration by the applicant, applicant will be so 
notified,  if a correspondence address has been provided and given a 
period of time within  which to file the fee, oath, or declaration and to 
pay the surcharge as set  forth in # 1.16(e) in order to prevent 
abandonment of the application. A copy  of the "Notice to File Missing 
Parts" form mailed to applicant should accompany  any response thereto 
submitted to the Office. If the required filing fee is  not timely paid, 
or if the processing and retention fee set forth in # 1.21(l)  is not paid 
within one year of the date of mailing of the notification required  by 
this paragraph, the application will be disposed of. No copies will be 
provided  or certified by the Office of an application which has been 
disposed of or  in which neither the required basic filing fee nor the 
processing and retention  fee has been paid. The notification pursuant to 
this paragraph may be made  simultaneously with any notification pursuant 
to paragraph (c) of this section.  If no correspondence address is 
included in the application, applicant has  two months from the filing 
date to file the basic filing fee, oath or declaration  and to pay the 
surcharge as set forth in # 1.16(e) in order to prevent abandonment  of 
the application; or, if no basic filing fee has been paid, one year from 
the filing date to pay the processing and retention fee set forth in # 
1.21(l)  to prevent disposal of the application. 

(2)   If a provisional application which has been accorded a filing date 
pursuant  to paragraph (b)(2) of this section does not include the 
appropriate filing  fee or the cover sheet required by # 1.51(a)(2), 
applicant will be so notified  if a correspondence address has been 
provided and given a period of time within  which to file the fee, cover 
sheet and to pay the surcharge as set forth in  # 1.16(l) in order to 
prevent abandonment of the application. A copy of the  "Notice to File 
Missing Parts" form mailed to applicant should accompany any  response 
thereto submitted to the Office. If the required filing fee is not  timely 
paid, the application will be disposed of. No copies will be provided  or 
certified by the Office of an application which has been disposed of or 
in which the required basic filing fee has not been paid. The notification 
 pursuant to this paragraph may be made simultaneously with any 
notification  pursuant to paragraph (c) of this section. If no 
correspondence address is  included in the application, applicant has two 
months from the filing date  to file the basic filing fee, cover sheet and 
to pay the surcharge as set forth  in # 1.16(l) in order to prevent 
abandonment of the application. 

(e)(1) An application for a patent filed under paragraph (b)(1) of this 
section  will not be placed upon the files for examination until all its 
required parts,  complying with the rules relating thereto, are received, 
except that certain  minor informalities may be waived subject to 
subsequent correction whenever  required. 

(2)   A provisional application for a patent filed under paragraph (b)(2) 
of  this section will not be placed upon the files for examination and 
will become  abandoned no later than twelve months after its filing date 
pursuant to 35  U.S.C. 111(b)(1). 

INCOMPLETE NONPROVISIONAL 
APPLICATIONS 

If the nonprovisional application papers do not identify all the inventors 
 or include at least a specification containing a description and at least 
one  claim and **>a< drawing, **>if necessary under< 
35 U.S.C. 113 **>(first sentence)<, or if the submitted application papers 
 are too informal to be given a filing date, the case is held in the 
Application  Division as an incomplete application and the applicant is 
informed of the  shortcomings of the papers. No filing date is granted 
until the incompleteness  is corrected. 

Form PTO-1123, Notice of Incomplete Application Papers, is prepared and 
mailed  by the Application Division when nonprovisional application papers 
are deemed  incomplete under 35 U.S.C. 111(a). 

Such incompleteness may consist of the omission of any one of the 
following  parts of an application. The component parts of a 
nonprovisional application  necessary to obtain a filing date are: 

An identification of the names of all of the inventors. 

A specification, 35 U.S.C. 112. 

A claim, 35 U.S.C. 112. 

A drawing, if **>necessary under< 35 U.S.C. 113 **>(first sentence)<. 
See 37 CFR 1.53(b)(1). 

Even though an application purports to include the component parts 
necessary  to obtain a filing date, the application will still be held to 
be incomplete  and a filing date will be refused if the component parts 
contain more than  minor informalities resulting in the application not 
being acceptable for examination.  See 37 CFR 1.53(c). ** If the documents 
purporting to be a specification are  so obviously informal and incoherent 
that they would clearly not constitute  a specification as required by 37 
CFR 1.71 and 35 U.S.C. 112, the application  would not be acceptable for 
examination and would not be accorded a filing  date until corrections are 
made. The filing date of the application would be  the date the 
corrections were made. 

Filing dates are accorded to nonprovisional applications filed without the 
 basic filing fee and without the oath or declaration. In such cases, a 
notice  is mailed by the Application Division requiring that at least the 
basic filing  fee and the oath or declaration be filed, accompanied by a 
surcharge (w 1.16(e)).  In those cases where the basic filing fee is paid, 
but additional fees are  required, a notice is mailed by the examining 
group, requiring that the balance  of the fee be paid. See 37 CFR 1.53(d)(1). 

Occasionally, nonprovisional applications which have already been signed 
by  the inventors contain informal claims that the attorney or agent feels 
should  not be present in the application upon filing. However, since 
alteration after  execution by the inventor and before filing is 
prohibited, such applications  must be filed by the attorney or agent in 
the form in which they were executed  by the inventors. A nonprovisional 
application may be filed with a preliminary  amendment which is limited to 
the cancellation of claims. This will diminish  the number of claims to be 
considered for calculation of the filing fee. Any  other changes to the 
application should be the subject of a separate amendment  which may be 
entered after the filing fee has been calculated and the filing  date 
granted. If a preliminary amendment which cancels claims does not 
accompany  the application at the time the application is filed, the 
notification of insufficient  fee will inform the inventor, attorney, or 
agent of the possibility of correcting  the insufficient payment by either 
(1) paying the additional required fee amount,  or (2) filing an amendment 
which cancels claims to where the remaining claims  are covered by the fee 
submitted upon filing. However, no refund will be made  once the fee for 
claims is properly paid, even though claims are later canceled. 
In the past, the Application Division has reviewed the claimed subject 
matter  of newly filed nonprovisional applications to determine whether a 
filing date  should be granted. Such applications included those drawn to 
perpetual motion  devices and methods of doing business and applications 
for reissue signed by  assignees or filed more than 2 years after the 
grant of the patent which appear  to contain broadened reissue claims. 

Under the current practice, a filing date is normally granted in such 
cases  if the nonprovisional application is otherwise sufficient and then 
forwarded  to the examiner for consideration and decision during the 
regular course of  examination. 

INCOMPLETE PROVISIONAL APPLICATIONS 

If the provisional application papers ** do not identify all the inventors 
 or include at least a specification containing a description and **>a< 
drawing,  **>if necessary under< 35 U.S.C. 113 **>(first sentence)< or if 
the submitted  application papers are too informal to be given a filing 
date, the case is  held in the Application Division as an incomplete 
application and the applicant  is informed of the shortcomings of the 
papers. No filing date is granted until  the incompleteness is corrected. 

Such incompleteness may consist of the omission of any one of the 
following  parts of an application. The component parts of a provisional 
application necessary  to obtain a filing date are: 

** 

An identification of the names of all of the inventors. 

A specification, 35 U.S.C. 112, first paragraph. 

A drawing, if **>necessary under< 35 U.S.C. 113 **>(first sentence)<. 
Even though an application purports to include the component parts 
necessary  to obtain a filing date, the application will still be held to 
be incomplete  and a filing date will be refused if the component parts 
contain more than  minor informalities resulting in the application not 
being acceptable. See  37 CFR 1.53(c). ** If the documents purporting to 
be a specification are so  obviously informal and incoherent that they 
would clearly not constitute a  specification as required by 37 CFR 1.71 
and 35 U.S.C. 112, the application  would not be acceptable and would not 
be accorded a filing date until corrections  are made. The filing date of 
the application would be the date the corrections  were made. If all the 
names of the actual inventor or inventors are not supplied  when the 
specification and any required drawing are filed, the provisional 
application will not be given a filing date earlier than the date upon 
which  the names are supplied unless a petition with the fee set forth in 
w 1.17(q)  is filed which sets forth the reasons the delay in supplying 
the names should  be excused. A provisional application will not be 
examined. However, a provisional  application which does not include a 
cover sheet identifying the application  as a provisional application will 
be treated as an application filed under  37 CFR 1.53(b)(1). 

>NOTE: An application that does not include a cover sheet identifying the 
application  as a provisional application will be treated as a 
nonprovisional application. 
 See 37 CFR 1.53(b)(2)(i).< 

NOTE: No amendment, other than to make the provisional application comply 
with  all the applicable regulations, may be made to the provisional 
application  after the filing date of the provisional application. See 37 
CFR 1.53(b)(2). 
INFORMAL APPLICATIONS 

An application is informal if it is typed on both sides of the paper, or 
is  not permanent, legible, or reproducible. If such informalities are 
timely corrected,  the application is given the filing date on which the 
original informal papers  were filed. 

The Application Division accords a filing date, as of the date indicated 
by  the "Office Date" stamp (see MPEP # 505), to application papers which 
include  the names of all of the inventors, a specification containing a 
description  and at least one claim (nonprovisional applications), and 
*>a< drawing **>,  if necessary under< 35 U.S.C. 113 **>(first sentence)< 
but are informal because  they do not comply with the rules or notices. In 
such applications, the Application  Division prepares form PTO-152, Notice 
of Informal Application, indicating  the informality and places it in the 
file wrapper. The examining group mails  the letter to applicant. Failure 
to correct the informality within the specified  time results in 
abandonment of the application. 

The letter of transmittal accompanying the filing of continuing 
applications  should include such additional information as the 
identification by application  number of a provisional or parent 
application, its status, and location (if  known) in the Patent and 
Trademark Office. The supplying of this information  will simplify the 
processing of these applications. 


506.01      Return of Incomplete Application 


If a request is made, the parts of an incomplete application which has not 
 been assigned a filing date may be returned by the Application Division. 
They  may be used by the applicant as part of a later complete application 
if the  missing parts are later supplied. See 37 CFR 1.53. 


506.02      Review of Refusal To Accord Filing Date [R-2] 


The filing date of the provisional or nonprovisional application is the 
date  of receipt in the Office of the application which identifies the 
names of all  the inventors and includes a specification containing 
description pursuant  to 37 CFR 1.71 and at least one claim 
(nonprovisional applications) pursuant  to 37 CFR 1.75, and >any< drawings 
required by 37 CFR 1.81(a) **. See 37 CFR  1.41(a) and 1.53(b)(1) and (b)(2). 

If any of these items are missing, applicant will be notified to file them 
 and the filing date will be the date of receipt of the missing part(s). 
If  the oath or declaration for a nonprovisional application was executed 
and filed  with the application, a supplemental oath or declaration by the 
inventor is  required in some circumstances; e.g., where the missing item 
is the claim,  ** specification, or a ** drawing. The supplemental 
declaration must identify  the missing item and indicate, as appropriate, 
that it accurately claims, describes,  or illustrates applicant's 
invention. See MPEP # *>601.01(d)-(f)< where the application is filed 
without all the figures of the drawing. An error in inventorship does not 
raise a filing date issue, unless  no inventors is named or the 
application is originally filed under 37 CFR 1.53(b)  with "et al." as 
part of the inventive entity (e.g., Jones et al.). 
Any review of the refusal to grant a filing date as of the date of deposit 
 of the application would be by way of petition, accompanied by the 
petition  fee (37 CFR 1.17(*>i<)). Petitioner should provide any arguments 
that he or  she has that the items noted were not missing or that a filing 
date should  be assigned in the absence of such items if they are believed 
to be unnecessary.  If petitioner alleges that no defect exists, a request 
for refund of the petition  fee may be included in the petition. 

For applications properly filed under 37 CFR 1.10, the filing date is the 
date  that the application was deposited as "Express Mail" in the U.S. 
Postal Service,  unless it was deposited on a Saturday, Sunday, or Federal 
holiday within the  District of Columbia, in which case the filing date is 
the next succeeding  day which is not a Saturday, Sunday, or Federal 
holiday within the District  of Columbia. If the proper procedures were 
not followed, the application will  receive a filing date as of the date 
it was received in the Office. Any review  of these matters would be by 
way of petition, accompanied by the petition fee 
(37 CFR 1.17(*>i<)), providing whatever arguments and evidence petitioner 
has  that the application is entitled to a filing date as of the date it 
was mailed  via "Express Mail." 

Any petition under this section should be marked to the attention of the 
Special  Program Law Office. 


507   Drafting Division [R-1] 


The drawing >in a nonprovisional application< is inspected by the Drafting 
 Division for formal compliance with the rules. If the drawing is 
satisfactory,  it is stamped "approved." If the drawing contains defects 
which are not so  serious as to warrant holding the application to be 
incomplete, the Draftsman  checks the appropriate notation on the "Notice 
of Informal Patent Drawing"  form PTO-948. 

See MPEP w 608.02(a) and (b) for handling of drawings so informal as to 
render  examination of the >nonprovisional< application impractical. 


508   Distribution [R-1] 


The Micrographics Division prepares permanent prints made of the drawings 
of  all complete applications and secures the prints in the file wrappers. 
The  drawings and files are then assembled and >nonprovisional 
applications are<  forwarded to the examining operation. 

When a new or substitute drawing is received, a print is made and 
forwarded  to the group to be placed in the file as an official paper. 

As to the procedure to be followed when a model is filed, see MPEP w 
608.03  and w 608.03(a). 


508.01      Papers Sent to Wrong Group 


If drawings, amendments, or other papers are delivered to the wrong group, 
 the current group assignment should be obtained from PALM and be placed 
on  the paper and then forwarded to the appropriate group. The assignment 
indicated  by PALM may be verified by calling the group indicated before 
forwarding the  paper. 


508.02      Papers Received After Patenting or Abandonment [R-2] 


After an application is patented or abandoned, any incoming communication 
which  is not to become part of the record ** >will be returned to the 
sender by the  examining group.< 


508.03      Unmatched Papers [R-1] 


Unmatched papers >for nonprovisional applications< within a group should 
be  frequently reviewed to determine which should be sent to the Paper 
Correlating  Office (PCO). 

Item 1 below treats the papers in the "Serial number too high" category. 
Items  2-6 below are directed to all other unmatched papers not in the 
"Serial number  too high" category. 

1.  Unmatched papers in the "Serial No. Too High" 
category 

This collection of papers being held by the group should be reviewed at 
least  once a week. Any paper having a serial number which clearly should 
have already  been received by the group should be removed from this 
collection. Where the  group does not have a corresponding application for 
any of these papers, inquiry  should be made of the Application Division 
to determine the group of record. If another group number is indicated, 
the paper should be  forwarded to that group. If the Application Division 
does not yield a new group  number for the indicated Serial No., the paper 
should be sent to the PCO. 
2.  Unmatched papers having a serial number 

It can be assumed that either the group number or the serial number on 
these  papers is incorrect. Inquiry should be made of the Application 
Division and  PALM to determine the group of record and the procedure set 
out in item 1 above  followed. An exception to this practice should be 
made where the paper has  thereon the name of an examiner in the group. In 
these situations, a careful  check of the group records and files as well 
as consultation with the indicated  examiner should be made to determine 
the correct serial number. If this does  not yield a new serial number, 
the paper should be sent to the PCO. 
3.  Unmatched papers relating to cases abandoned from 
group 

The file should be ordered from Files Repository. If the file is not 
received  therefrom, the paper should be forwarded to the PCO. 

4.  Papers for applications which have been sent to the 
Patent Issue Division 

All papers for applications which PALM indicates to be located in any of 
the  locations 7400 through 7650 should be forwarded to the Publishing 
Division. 
The instructions of this section (4) apply to all files in Issue including 
 those which have been assigned a Patent Number and Issue Date. Papers 
requiring  examiner review and action will be returned to the examining 
group after Publishing  Division personnel have matched the paper to the 
appropriate file. 
5.  Papers for applications which have been sent to the 
Record Room 

If PALM indicates that the application for a paper is in the Record Room 
(location  code 9210), the paper should be forwarded to the Paper 
Correlating Office for  response. 

6.  Unmatched papers for cases which are known to be pending in the group 
but  cannot be located 

Generally, these are applications which PALM indicates are present in the 
group,  but the file is not available. These papers should be retained in 
the group  for processing. 

Each paper sent to the PCO must have a PCO Transmittal Form stapled 
thereto.  Each form attached to a paper should be filled out as completely 
as possible.  Transmittal Forms attached to papers in categories 1 and 2 
must have an indication  of the information obtained from both Application 
Division and PALM. The PALM  information should be inserted in the large 
space at the bottom of the Form.  This will help eliminate duplication of 
effort by PCO personnel. Papers received  without transmittal forms or 
with incompletely filled out transmittal forms  may be returned to the 
originating group. 


509   Payment of Fees [R-2] 


The latest fee schedule can be obtained by contacting the Public Service 
Center  at (703) 308-4357. 

37 CFR 1.22.            Fees payable in advance. 

(a)   Patent and trademark fees and charges payable to the Patent and 
Trademark  Office are required to be paid in advance, that is, at the time 
of requesting  any action by the Office for which a fee or charge is 
payable with the exception  that under w 1.53 applications for patent may 
be assigned a filing date without  payment of the basic filing fee. 

(b)   All patent and trademark fees paid to the Patent and Trademark 
Office  should be itemized in each individual application, patent or other 
proceeding  in such a manner that it is clear for which purpose the fees 
are paid. 
37 CFR 1.23.            Method of payment. 

All payments of money required for Patent and Trademark Office fees, 
including  fees for the processing of international applications (w 
1.445), should be  made in U.S. specie, Treasury notes, national bank 
notes, post office money  orders, or by certified check. If sent in any 
other form, the Office may delay  or cancel the credit until collection is 
made. Money orders and checks must  be made payable to the Commissioner of 
Patents and Trademarks. Remittances  from foreign countries must be 
payable and immediately negotiable in the United  States for the full 
amount of the fee required. Money sent by mail to the Patent  and 
Trademark Office will be at the risk of the sender; letters containing 
money should be registered. 

37 CFR 1.24.            Coupons. 

Coupons in denominations of three dollars, for the purchase of patents, 
designs,  defensive publications, statutory invention registrations, and 
trademark registrations  are sold by the Patent and Trademark Office for 
the convenience of the general  public; these coupons may not be used for 
any other purpose. The three-dollar  coupons are sold individually and in 
books of 50 for $150.00. These coupons  are good until used; they may be 
transferred but cannot be redeemed. 
37 CFR 1.26.            Refunds. 

(a)   Money paid >by actual mistake or< in excess will be refunded, but a 
mere  change of purpose after the payment of money, as when a party 
desires to withdraw  an application, an appeal, or a request for oral 
hearing, will not entitle  a party to demand such a return. Amounts of 
twenty five dollars or less will  not be returned unless specifically 
requested within a reasonable time, nor  will the payer be notified of 
such amount; amounts over twenty five dollars  may be returned by check 
or, if requested, by credit to a deposit account. 
(b)   [Reserved] 

(c)   If the Commissioner decides not to institute a reexamination 
proceeding,  a refund of $1,690 will be made to the requester of the 
proceeding. Reexamination  requesters should indicate whether any refund 
should be made by check or by  credit to a deposit account. 

>Where the Office has notified an applicant, in writing, that a fee is due 
 and has specified a particular dollar amount for that fee, if the 
applicant  timely submits the specified fee amount in response to the 
notice, the applicant  should be considered to have complied with the 
notice so as to avoid abandonment  of the application. If the fee paid by 
the applicant is insufficient, either  because the notice specified an 
incorrect dollar amount for the fee or because  of a fee increase 
effective after the mailing of the notice and before payment  of the fee 
by the applicant, the applicant should be notified in writing by  the 
Office of the fee insufficiency and given a new time period in which to 
submit the remaining balance. The written notification of the fee 
insufficiency  should set forth the reason (i.e., the fee amount indicated 
by the Office in  the earlier notice was incorrect or the fees have 
increased since the earlier  notice was mailed) why applicant is being 
required to submit an additional  fee.< 


509.01      Deposit Accounts [R-1] 


37 CFR 1.25.            Deposit accounts. 

(a)   For the convenience of attorneys, and the general public in paying 
any  fees due, in ordering services offered by the Office, copies of 
records, etc.  deposit accounts may be established in the Patent and 
Trademark Office upon  payment of the fee for establishing a deposit 
account (w 1.21(b)(1)). A minimum  deposit of $1,000 is required for 
paying any fees due or in ordering any services  offered by the Office. 
However, a minimum deposit of $300 may be paid to establish  a restricted 
subscription deposit account used exclusively for subscription  order of 
patent copies as issued. At the end of each month, a deposit account 
statement will be rendered. A remittance must be made promptly upon 
receipt  of the statement to cover the value of items or services charged 
to the account  and thus restore the account to its established normal 
deposit. An amount sufficient  to cover all fees, services, copies, etc., 
requested must always be on deposit.  Charges to accounts with 
insufficient funds will not be accepted. A service  charge (# 1.21(b)(2)) 
will be assessed for each month that the balance at the  end of the month 
is below $1,000. For restricted subscription deposit accounts,  a service 
charge (w 1.21(b)(3)) will be assessed for each month that the balance  at 
the end of the month is below $300. 

(b)   Filing, issue, appeal, international-type search report, 
international  application processing, petition, and post-issuance fees 
may be charged against  these accounts if sufficient funds are on deposit 
to cover such fees. A general  authorization to charge all fees, or only 
certain fees, set forth in ww 1.16  to 1.18 to a deposit account 
containing sufficient funds may be filed in an  individual application, 
either for the entire pendency of the application or  with respect to a 
particular paper filed. An authorization to charge to a deposit  account 
the fee for a request for reexamination pursuant to w 1.510 and any  other 
fees required in a reexamination proceeding in a patent may also be filed 
with the request for reexamination. An authorization to charge a fee to a 
deposit  account will not be considered payment of the fee on the date the 
authorization  to charge the fee is effective as to the particular fee to 
be charged unless  sufficient funds are present in the account to cover 
the fee. 

An overdrawn account will be immediately suspended and no charges will be 
accepted  against it until a proper balance is restored, together with a 
payment of $10 
(37 CFR 1.21(b)(1)) to cover the work done by the Patent and Trademark 
Office  incident to suspending and reinstating the account and dealing 
with charges  which may have been made in the meantime. 

For applications filed prior to February 27, 1983, if the Office discovers 
 that a filing fee for an application was charged to an account with 
insufficient  funds, or to an overdrawn account, the filing date of the 
application will  be withdrawn. 

For applications filed after February 27, 1983, if there is an 
authorization  to charge the filing fee to a deposit account which is 
overdrawn or has insufficient  funds, a surcharge (37 CFR 1.16(e)) is 
required in addition to payment of the  filing fee. Failure to timely pay 
the filing fee and surcharge will result  in abandonment of the application. 

It is expected, however, that reasonable precautions will be taken in all 
cases  to avoid overdrafts, and if an account is suspended repeatedly it 
will be necessary  to close it. 

Similarly, because of the burden placed on the Patent and Trademark Office 
 incident to the operation of deposit accounts, a charge of ten dollars 
(37  CFR 1.21(b)(1)) will be made for opening each new account. 

 DEPOSIT ACCOUNT AUTHORIZATIONS 

The rules of practice were amended effective Oct. 1, 1982, at 37 CFR 
1.25(b)  to state that: "A general authorization to charge all fees, or 
only certain  fees, set forth in 37 CFR 1.16 to 1.18 to a deposit account 
containing sufficient  funds may be filed in an individual application, 
either for the entire pendency  of the application or with respect to a 
particular paper filed." A general  authorization does not apply to 
document supply fees under 37 CFR 1.19, such  as those required for 
certified copies, to post-issuance fees under 37 CFR  1.20, such as those 
required for maintenance fees; * to miscellaneous fees  and charges under 
37 CFR 1.21, such as assignment recording fees>, or as a  basis for a 
petition, such as a petition for an extension of time (see MPEP  w 
201.06(b), Extensions of Time)<. 

Many applications filed prior to Oct. 1, 1982, contain broad language 
authorizing  any additional fees which might have been due to be charged 
to a deposit account.  The Patent and Trademark Office does not interpret 
such broad authorizations,  filed prior to Oct. 1, 1982, to include 
authorization to charge to a deposit  account the issue fee or other fees 
in 37 CFR 1.16, 1.17, and 1.18 ex-cept  those associated with the paper 
containing the broad authorization. However,  such a broad authorization 
filed in an application on or after Oct. 1, 1982,  will be interpreted as 
authorization to charge the issue fee; as well as any  other fee set forth 
in 37 CFR 1.16, 1.17, or 1.18. Fees under 37 CFR 1.19,  1.20, and 1.21 
will not be charged as a result of a general authorization under 
 37 CFR 1.25. 

It is recommended that authorizations to charge fees to deposit accounts 
include  reference to the particular fees or fee sections of the rules 
which applicant  intends to authorize. For example, if filing and 
processing fees under 37 CFR  1.16 and 1.17 only are intended to be 
included in the authorization, and not  the issue fee under 37 CFR 1.18, 
the authorization could read: "The Commissioner  is hereby authorized to 
charge any fees under 37 CFR 1.16 and 1.17 which may  be required during 
the entire pendency of the application to Deposit Account  No.---." Such 
an authorization would clearly exclude issue fees under 37 CFR  1.18 while 
including all the filing and processing fees listed in 37 CFR 1.16  and 
1.17. Similarly, if it were intended to authorize the charging of fees 
relating only to a specific paper, the authorization could read "The 
Commissioner  is hereby authorized to charge any fees under 37 CFR 1.16 
and 1.17 which may  be required by this paper to Deposit Account No.---." 
Such authorizations would  cover situations in which a check to cover a 
filing and processing fee under  37 CFR 1.16 and 1.17 was omitted or was 
for an amount less than the amount  required. 

It is extremely important that the authorization be clear and unambiguous. 
 If applicants file authorizations which are ambiguous and deviate from 
the  usual forms of authorizations, the Office may not interpret the 
authorizations  in the manner applicants intend. In such cases, applicants 
could be subject  to further expenses, petitions, etc. in order to correct 
fees which were not  charged as intended due to an ambiguous authorization. 

When statutory fees are to be charged to a deposit account, the processing 
 of the application can be facilitated by submitting the applicant's 
transmittal  letter or other correspondence specifying the account to be 
charged in triplicate.  Submission of these documents in triplicate will 
eliminate the need for the  mail room to photocopy the document and will 
thereby reduce the processing  time of incoming mail. 


509.02      Small Entity Status - Definitions [R-2] 


Public Law 97-247, enacted August 27, 1982, provides that effective Oct. 
1,  1982, funds available under the Act to the Patent and Trademark Office 
"shall  be used to reduce by 50 per centum the payment of fees under 
section 41 (a)  and (b) of title 35, United States Code, by independent 
inventors and nonprofit  organizations as defined in regulations 
established by the Commissioner of  Patents and Trademarks, and by small 
business concerns as defined in Section  3 of the Small Business Act and 
by regulations established by the Small Business  Administration."  The 
fees which are reduced include patent application filing  fees (37 CFR 
1.16), extension of time, revival, and appeal fees (37 CFR 1.17),  patent 
issue fees (37 CFR 1.18), statutory disclaimer fee (37 CFR 1.20(d)),  and 
maintenance fees on patents (37 CFR 1.20). Other fees, established under 
section 41 (c) or (d) of Title 37, United States Code, are not reduced for 
 small entities since such a reduction is not permitted or authorized by 
Public  Law 97-247. 

Fees which are not reduced include petition and processing fees (other 
than  revival), 37 CFR 1.17(h)-(k), document supply fees, 37 CFR 1.19, 
certificate  of correction fees, 37 CFR 1.20(a), request for reexamination 
fees, 37 CFR  1.20(c), miscellaneous fees and charges, 37 CFR 1.21, and 
international application  fees, 
37 CFR 1.445. 

Public Law 97-247 gave the Commissioner authority to establish regulations 
 defining independent inventors and nonprofit organizations. These 
definitions  have been established as 37 CFR 1.9 (c) and (e). The Small 
Business Administration  was given authority to establish the definition 
of a small business concern.  This definition is published in 37 CFR 
1.9(d). A small entity for purposes  of paying reduced fees is defined in 
37 CFR 1.9(f) as an independent inventor,  a small business concern, or a 
nonprofit organization. 

37 CFR 1.9.         Definitions. 

(a)(1) A national application as used in this chapter means a U.S. 
application  for patent which was either filed in the Office under 35 
U.S.C. 111, or which  entered the national stage from an international 
application after compliance  with 35 U.S.C. 371. 

(2) A provisional application as used in this chapter means a U.S. 
national  application for patent filed in the Office under 35 U.S.C. 
111(b). 
(3) A nonprovisional application as used in this chapter means a U.S. 
national  application for patent which was either filed in the Office 
under 35 U.S.C.  111(a), or which entered the national stage from an 
international application  after compliance with 35 U.S.C. 371. 

(b)   An international application as used in this chapter means an 
international  application for patent filed under the Patent Cooperation 
Treaty prior to entering  national processing at the Designated Office stage. 

(c)   An independent inventor as used in this chapter means any inventor 
who 
(1) has not assigned, granted, conveyed, or licensed, and (2) is under no 
obligation  under contract or law to assign, grant, convey, or license, 
any rights in the  invention to any person who could not likewise be 
classified as an independent  inventor if that person had made the 
invention, or to any concern which would  not qualify as a small business 
concern or a nonprofit organization under this  section. 

(d)   A small business concern as used in this chapter means any business 
concern  as defined by the regulations of the Small Business 
Administration in 13 CFR  121.1301 through 121.1305, which define a small 
business concern as one whose  number of employees, including those of its 
affiliates, does not exceed 500  persons and which has not assigned, 
granted, conveyed, or licensed, and is  under no obligation under contract 
or law to assign, grant, convey, or license,  any rights in the invention 
to any person who could not be classified as an  independent inventor if 
that person had made the invention, or to any concern  which would not 
qualify as a small business concern or a nonprofit organization  under 
this section. Questions related to size standards for a small business 
concern may be directed to: Small Business Administration, Size Standards 
Staff,  409 Third Street, SW, Washington, DC 20416. 

(e)   A nonprofit organization as used in this chapter means (1) a 
university  or other institution of higher education located in any 
country; (2) an organization  of the type described in section 501(c)(3) 
of the Internal Revenue Code of  1954 (26 U.S.C. 501(c)(3)) and exempt 
from taxation under section 501(a) of  the Internal Revenue Code (26 
U.S.C. 501(a)); (3) any nonprofit scientific  or educational organization 
qualified under a nonprofit organization statute  of a state of this 
country (35 U.S.C. 201(i)); or (4) any non-profit organization  located in 
a foreign country which would qualify as a nonprofit organization  under 
paragraphs (e) (2) or (3) of this section if it were located in this 
country. 

(f)   A small entity as used in this chapter means an independent 
inventor,  a small business concern, or a non-profit organization. 

(g)   For definitions in interferences see w 1.601. 

INDEPENDENT INVENTOR 

37 CFR 1.9(c) defines an independent inventor as any inventor who (1) has 
not  assigned, granted, conveyed, or licensed, and (2) is under no 
obligation under  contract or law to assign, grant, convey, or license any 
rights in the invention  to any person who could not likewise be 
classified as an independent inventor  if that person had made the 
invention, or to any concern which would not qualify  as a small business 
concern or a nonprofit organization. The "rights in the  invention" are 
the rights in the United States. Once an individual sole inventor,  or one 
of several joint inventors, has assigned, granted, conveyed, or licensed, 
or comes under an obligation to assign, grant, convey, or license, any 
rights  to the invention to anyone who could not likewise obtain status as 
a small  entity, the inventor(s) will no longer be entitled to pay fees in 
the amounts  established for an independent inventor (37 CFR 1.9(c)). 

Rights in the invention include ** the right to exclude others from 
making,  using, >offering for sale,< or selling the invention >throughout 
the United  States or importing the invention into the United States<. 
Therefore, for example,  status as a small entity is lost by an inventor 
who has transferred or has  an obligation to transfer a shop right to an 
employer who could not qualify  as a small entity. 

37 CFR 1.9(c) permits an individual inventor to make an assignment, grant, 
 conveyance, or license of partial rights in the invention to another 
individual  or individuals who could qualify as an independent inventor or 
inventors if  they had made the invention. In addition, 
37 CFR 1.9(c) permits an individual inventor to make an assignment, grant, 
 conveyance, or license of partial rights in the invention to a small 
business  concern or nonprofit organization. Under the circumstances 
described in the  previous two sentences, the individual inventor could 
still qualify as an independent  inventor. However, if the independent 
inventor assigned, granted, conveyed,  or licensed, or came under an 
obligation to assign, grant, convey, or license,  any rights to the 
invention to any individual or organization which could not  qualify as a 
small entity (37 CFR 1.9(f)), then the inventor would no longer qualify as 
an independent  inventor. 

SMALL BUSINESS CONCERN 

37 CFR 1.9(d) provides that, in order to be a small business, the number 
of  employees of the concern, including those of its affiliates, may not 
exceed  500 per-sons. Concerns are affiliates of each other when either, 
directly or  indirectly, one concern controls or has the power to control 
the other, or  a third party or parties controls or has the power to 
control both. For discussion  and example of what constitutes "control", 
see the regulations of the Small  Business Administration. The number of 
employees of a business concern is determined  by *>averaging< the number 
of persons of the concern and its affiliates employed  on a full-time, 
part-time, or temporary basis during ** >each of the pay periods  for the 
preceding completed twelve (12) calendar months.< 

The definition also requires a small business for this purpose to be one 
"which  has not assigned, granted, conveyed, or licensed, and is under no 
obligation  under contract or law to assign, grant, convey, or license, 
any rights in the  invention to any person who could not be classified as 
an independent inventor  if that person had made the invention, or to any 
concern which would not qualify  as a small business concern or a 
nonprofit organization under this section." 
NONPROFIT ORGANIZATIONS 

37 CFR 1.9(e) defines a nonprofit organization by utilizing and broadening 
 the definition contained in 
35 U.S.C. 201(i). The term "university or other institution of higher 
education"  as used in 37 CFR 1.9(e) means an educational institution 
which (1) admits  as regular students only persons having a certificate of 
graduation from a  school providing secondary education, or the recognized 
equivalent of such  a certificate, (2) is legally authorized within the 
jurisdiction in which it  operates to provide a program of education 
beyond secondary education, (3)  provides an educational program for which 
it awards a bachelor's degree or  provides not less than a 2-year program 
which is acceptable for full credit  toward such a degree, (4) is a public 
or other nonprofit institution, and (5)  is accredited by a nationally 
recognized accrediting agency or association.  The definition of 
"university or other institution of higher education" as  set forth herein 
essentially follows the definition of "institution of higher  education" 
contained in 20 U.S.C. 1141(a). Institutions which are strictly  research 
facilities, manufacturing facilities, service organizations, etc.,  are 
not intended to be included within the term "other institution of higher 
education" even though such institutions may perform an educational 
function  or publish the results of their work. 

Nonprofit organizations also include organizations of the type described 
in  section 501(c)(3) of the Internal Revenue Code of 1954 (26 U.S.C. 
501(c)(3))  and which are exempt from taxation under 26 U.S.C. 501(a). 
Organizations described  in 26 U.S.C. 501(c)(3) include corporations, and 
any community chest, fund,  or foundation, organized and operated 
exclusively for religious, charitable,  scientific, testing for public 
safety, literary, or educational purposes, or  to foster national or 
international amateur sports competition (but only if  no part of its 
activities involve the provision of athletic facilities or equipment),  or 
for the prevention of cruelty to children or animals, no part of the net 
earnings of which inures to the benefit of any private shareholder or 
individual,  no substantial part of the activities of which is carrying on 
propaganda, or  otherwise attempting to influence legislation and which 
does not participate  in, or intervene in (including the publishing or 
distributing of statements),  any political campaign on behalf of any 
candidate for public office. 
LOCATION OF SMALL ENTITY 

Small entities may claim reduced fees regardless of the country in which 
they  are located. There is no restriction requiring that the independent 
inventor,  small business concern, or nonprofit organization be located in 
the United  States. The same definitions apply to all applicants equally 
in accordance  with the Paris Convention for the Protection of Industrial 
Property. 
TRANSFER OF RIGHTS 

With regard to transfer of rights in the invention, the rights in question 
 are those in the United States to be covered by the application or 
patent.  Transfer of rights to a Japanese patent, for example, would not 
affect small  entity status if no rights in the United States patent were 
likewise transferred. 
The payment of reduced fees under 35 U.S.C. 41 is limited to those 
situations  in which all of the rights in the invention are owned by small 
entities; i.e.,  independent inventors, small business concerns, or 
nonprofit organizations. To do otherwise would be clearly contrary to the 
intended purpose  of the legislation which contains no indication that 
fees are to be reduced  in circumstances where rights are owned by 
non-small entities. For example,  a non-small entity is not permitted to 
transfer patent rights to a small business  concern which would pay the 
reduced fees and grant **>a< license to the entity. 
If rights transferred to a non-small entity are later returned to a small 
entity  so that all rights are held by small entities, reduced fees may be 
claimed. 
The term "license" in the definitions includes nonexclusive as well as 
exclusive  licenses and royalty free as well as royalty generating 
licenses. Implied licenses  to use and resell patented articles purchased 
from a small entity, however,  will not preclude the proper claiming of 
small entity status. Likewise, an  order by an applicant to a firm to 
build a prototype machine or product for  the applicant's own use is not 
considered to constitute a license for purposes  of the definitions. 

RIGHTS HELD BY GOVERNMENT 
ORGANIZATIONS 

Also, although the Federal government agencies do not qualify as nonprofit 
 organizations for paying reduced fees under the rules, a license to a 
Federal  agency resulting from a funding agreement with the agency 
pursuant to 35 U.S.C.  202(c)(4) will not preclude the proper claiming of 
small entity status. 
Public Law 96-517 added a new chapter 38 of Title 35 of the United States 
Code  entitled "Patent Rights in Inventions Made With Federal Assistance." 
Under 
 the  provisions of  the statute, each funding agreement between a Federal 
 agency and  an  individual, small business firm, or  nonprofit 
organization 
  must   provide, inter alia, that  ". . . the Federal agency shall have a 
 nonexclusive, nontransferable, irrevocable,  paid-up license to practice 
or  have practiced for or  on  behalf  of  the United  States any  subject 
 invention  . . ." See 35 U.S.C. 202(c)(4). 

Under the provisions of 37 CFR 1.9 and 1.27, an independent inventor, 
small  business concern, or nonprofit organization cannot qualify for 
reduced patent  fees if it has assigned, granted, conveyed, or licensed or 
is under an obligation  under contract or law to assign, grant, convey, or 
license any rights in the  invention to other than an individual who could 
be classified as an independent  inventor if that person had made the 
invention, a small business concern, or  a nonprofit organization. The 
Federal agencies do not qualify as nonprofit  organizations for paying 
reduced patent fees under the rules. Applying this  construction to the 
licensing of an invention to a Federal agency by an independent  inventor, 
small business concern, or nonprofit organization pursuant to a funding 
agreement under 35 U.S.C. 202(c)(4) would preclude their qualifying for 
paying  reduced fees. This, however, would frustrate the intent of Public 
Law 97-247  and Public Law 96-517 when taken together. 

Government organizations as such, whether domestic or foreign, cannot 
qualify  as nonprofit organizations as defined in 37 CFR 1.9(e). Thus, for 
example,  a government research facility or other government-owned 
corporation could  not qualify. 37 CFR 1.9(e) was based upon 35 U.S.C. 
201(i), as established  by Public Law 96-517. The limitation to "an 
organization of the type described  in section 501(c)(3) of the Internal 
Revenue Code of 1954 (26 U.S.C. 501(c)(3))  and exempt from taxation under 
section 501(a) of the Internal Revenue Code 
(26 U.S.C. 501(a))" would by its nature exclude the U.S. government and 
its  agencies and facilities, including research facilities and government 
corporations.  State and foreign governments and governmental agencies and 
facilities would  be similarly excluded. 37 CFR 1.9(e) is not intended to 
include within the  definition of a nonprofit organization government 
organizations of any kind  located in any country. A university or other 
institution of higher education  located in any country would qualify, 
however, as a "nonprofit organization"  under 
37 CFR 1.9(e) even though it has some government affiliation since such 
institutions  are specifically included. 

A wholly owned subsidiary of a nonprofit organization or of a university 
is  considered a part of the nonprofit organization or university and is 
not precluded  from qualifying for small entity status. 


509.03      Claiming Small Entity Status [R-2] 


37 CFR 1.27.    Statement of status as small entity. 

(a)   Any person seeking to establish status as a small entity 
(w 1.9(f) of this part) for purposes of paying fees in an application or a 
 patent must file a verified statement in the application or patent prior 
to  or with the first fee paid as a small entity. Such a verified 
statement need  only be filed once in an application or patent and remains 
in effect until  changed. 

(b)   Any verified statement filed pursuant to paragraph (a) of this 
section  on behalf of an independent inventor must be signed by the 
independent inventor  except as provided in w 1.42, w 1.43, or 
w 1.47 of this part, and must aver that the inventor qualifies as an 
independent  inventor in accordance with w 1.9(c) of this part. Where 
there are joint inventors in an application, each inventor must file a 
verified  statement establishing status as an independent inventor in 
order to qualify  as a small entity. Where any rights have been assigned, 
granted, conveyed,  or licensed, or there is an obligation to assign, 
grant, convey, or license,  any rights to a small business concern, a 
nonprofit organization, or any other  individual, a verified statement 
must be filed by the individual, the owner  of the small business concern, 
or an official of the small business concern  or nonprofit organization 
empowered to act on behalf of the small business  concern or nonprofit 
organization averring to their status. For purposes of  a verified 
statement under this paragraph, a license to a Federal agency resulting 
from a funding agreement with that agency pursuant to 35 U.S.C. 202(c)(4) 
does  not constitute a license as set forth in w 1.9 of this part. 

(c)   Any verified statement filed pursuant to paragraph (a) of this 
section  on behalf of a small business concern must (1) be signed by the 
owner or an  official of the small business concern empowered to act on 
behalf of the concern; 
(2) aver that the concern qualifies as a small business concern as defined 
 in w 1.9(d); and (3) aver that exclusive rights to the invention have 
been  conveyed to and remain with the small business concern, or if the 
rights are  not exclusive, that all other rights belong to small entities 
as defined in  w 1.9. Where the rights of the small business concern as a 
small entity are  not exclusive, a verified statement must also be filed 
by the other small entities  having rights averring to their status as 
such. For purposes of a verified  statement under this paragraph, a 
license to a Federal agency resulting from  a funding agreement with that 
agency pursuant to 35 U.S.C. 202(c)(4) does not  constitute a license as 
set forth in w 1.9 of this part. 

(d)   Any verified statement filed pursuant to paragraph (a) of this 
section  on behalf of a nonprofit organization must (1) be signed by an 
official of  the nonprofit organization empowered to act on behalf of the 
organization; 
(2) aver that the organization qualifies as a nonprofit organization as 
defined  in w 1.9(e) of this part specifying under which one of w 
1.9(e)(1), (2), (3),  or (4) of this part the organization qualifies; and 
(3) aver that exclusive  rights to the invention have been conveyed to and 
remain with the organization  or if the rights are not exclusive, that all 
other rights belong to small entities  as defined in w 1.9 of this part. 
Where the rights of the nonprofit organization  as a small entity are not 
exclusive, a verified statement must also be filed  by the other small 
entities having rights averring to their status as such.  For purposes of 
a verified statement under this paragraph, a license to a Federal  agency 
resulting from a funding agreement with that agency pursuant to 35 U.S.C. 
202(c)(4) does not constitute a conveyance of rights as set forth in this 
paragraph. 
37 CFR 1.27 provides in paragraph (a) that any person seeking to establish 
 status as a small entity, as defined in 37 CFR 1.9(f) for the purpose of 
paying  reduced fees, must file a statement to that effect prior to or 
with the payment  of the first fee paid as a small entity. 
37 CFR 1.27(b) provides specifically for inventors filing statements 
claiming  status as independent inventors. 

37 CFR 1.27(c) provides for claiming status as a small business concern. 
37 CFR 1.27(d) provides for claiming status as a nonprofit organization. 
Under  37 CFR 1.27, as long as all of the rights remain in small entities, 
the fees  established for a small entity can be paid. This includes 
circumstances where  the rights were divided between an independent 
inventor, a small business concern,  and a nonprofit organization, or any 
combination thereof. 

The statement claiming small entity status must be a verified statement; 
i.e.,  an oath or declaration. It is not required that a new verified 
statement be  filed with each fee paid, but rather, once a statement is 
filed in an application  or patent, small entity status remains in the 
application or patent until the  Office is notified of a change in status. 
Notification of change in status  is required by 37 CFR 1.28(b). 

Status as a small entity may be established in a provisional application 
by  complying with 37 CFR 1.27. 

A nonprovisional application claiming benefit under 35 U.S.C. 119(e), 120, 
 121, or 365(c) of a prior application may rely on a verified statement 
filed  in the prior application if the nonprovisional application includes 
a reference  to the verified statement in the prior application, or 
includes a copy of the  verified statement in the prior application, and 
status as a small entity is  still proper and desired. 

The rules do not authorize a patent attorney to sign a verified statement 
establishing  status as a small entity on behalf of a client. The client 
has to sign the  verified statement. Paragraph (b) of 37 CFR 1.27 requires 
that any verified  statement filed on behalf of an independent inventor 
must be signed by the  independent inventor except as provided in 37 CFR 
1.42, 1.43, or 1.47. Paragraphs 
(c) and (d) of 37 CFR 1.27 require that any verified statement filed on 
behalf  of a small business concern or nonprofit organization must be 
signed by an  official of the concern or nonprofit organization empowered 
to act on behalf  of the concern or organization. 

The term "official" is intended to include any officer, employee, or 
part-owner  empowered to act on behalf of a small business concern or 
nonprofit organization.  For example, an officer or employee of a 
corporation empowered to act for the  corporation by its board of 
directors would be qualified to sign such a verified  statement. The 
intent of paragraphs (b)-(d) of 37 CFR 1.27 is that the verified 
statement be signed by the person in the best position to know the facts 
as  to whether or not status as a small entity can be properly established 
insofar  as the attorney's responsibilities and duty to investigate are 
concerned. 
37 CFR 1.28.            Effect on fees of failure to establish status, or 
change  status, as a small entity. 

(a)The failure to establish status as a small entity 
(## 1.9(f) and 1.27 of this part) in any application or patent prior to 
paying,  or at the time of paying, any fee precludes payment of the fee in 
the amount  established for small entities. A refund pursuant to 
# 1.26 of this part, based on establishment of small entity status, of a 
portion  of fees timely paid in full prior to establishing status as a 
small entity  may only be obtained if a verified statement under # 1.27 
and a request for  a refund of the excess amount are filed within two 
months of the date of the  timely payment of the full fee. The two-month 
time period is not extendable  under # 1.136. Status as a small entity is 
waived for any fee by the failure  to establish the status prior to 
paying, at the time of paying, or within two  months of the date of 
payment of, the fee. Status as a small entity must be  specifically 
established in each application or patent in which the status  is 
available and desired. Status as a small entity in one application or 
patent  does not affect any other application or patent, including 
applications or  patents which are directly or indirectly dependent upon 
the application or  patent in which the status has been established. A 
nonprovisional application  claiming benefit under 35 U.S.C. 119(e), 120, 
121, or 365(c) of a prior application  may rely on a verified statement 
filed in the prior application if the nonprovisional  application includes 
a reference to the verified statement in the prior application  or 
includes a copy of the verified statement in the prior application and 
status  as a small entity is still proper and desired. Once status as a 
small entity  has been established in an application or patent, the status 
remains in that  application or patent without the filing of a further 
verified statement pursuant  to # 1.27 of this part unless the Office is 
notified of a change in status. 

(b)   Once status as a small entity has been established in an application 
 or patent, fees as a small entity may thereafter be paid in that 
application  or patent without regard to a change in status until the 
issue fee is due or  any maintenance fee is due. Notification of any 
change in status resulting  in loss of entitlement to small entity status 
must be filed in the application  or patent prior to paying, or at the 
time of paying, the earliest of the issue  fee or any maintenance fee due 
after the date on which status as a small entity  is no longer appropriate 
pursuant to w 1.9 of this part. The notification of  change in status may 
be signed by the applicant, any person authorized to sign  on behalf of 
the assignee, or an attorney or agent of record or acting in a 
representative capacity pursuant to w 1.34(a) of this part. 

(c)   If status as a small entity is established in good faith, and fees 
as  a small entity are paid in good faith, in any application or patent, 
and it  is later discovered that such status as a small entity was 
established in error  or that through error the Office was not notified of 
a change in status as  required by paragraph (b) of this section, the 
error will be excused (1) if  any deficiency between the amount paid and 
the amount due is paid within three  months after the date the error 
occurred or (2) if any deficiency between the  amount paid and the amount 
due is paid more than three months after the date  the error occurred and 
the payment is accompanied by a statement explaining  how the error in 
good faith occurred and how and when the error was discovered.  The 
statement must be a verified statement if made by a person not registered 
to practice before the Patent and Trademark Office. The deficiency is 
based  on the amount of the fee, for other than a small entity, in effect 
at the time  the deficiency is paid in full. 

(d)(1) Any attempt to fraudulently (i) establish status as a small entity 
or 
(ii) pay fees as a small entity shall be considered as a fraud practiced 
or  attempted on the Office. 

(2)   Improperly and with intent to deceive (i) establishing status as a 
small  entity or (ii) paying fees as a small entity shall be considered as 
a fraud  practiced or attempted on the Office. 

37 CFR 1.28 provides guidance to the effect of failure to establish or 
notify  the Office of any change from small entity status. 37 CFR 1.28(a) 
provides  that once status as a small entity has been established in an 
application or  patent, the status remains in that application or patent 
without the filing  of a further verified statement pursuant to 37 CFR 
1.27, unless the Office  is notified of a change in status. Under 37 CFR 
1.28(a), status as a small  entity in one application or patent does not 
affect any other application or  patent, including applications or patents 
which are directly or indirectly  dependent upon the application or patent 
in which the status has been established.  A nonprovisional application 
claiming the benefit under 35 U.S.C. 119(e), 120,  121, or 365(c) of a 
prior application may rely on a verified statement filed  in the prior 
application if the nonprovisional application includes a reference  to the 
verified statement in the prior application, or includes a copy of the 
verified statement in the prior application, and status as a small entity 
is  still proper and desired. 37 CFR 1.28(b) requires that notification of 
any  change in status resulting in loss of entitlement to small entity 
status be  filed in the application or patent prior to paying, or at the 
time of paying,  the earliest of the issue fee or any maintenance fee due 
after the date on  which status as a small entity is no longer 
appropriate. Notification is not  required if rights to an invention are 
transferred from one small entity to  another small entity but small 
entity status is not lost thereby. This means  that only four checks are 
required during the pendency and term of a patent  after initial 
establishment of small entity status if such establishment was  made prior 
to payment of the issue fee. 

The Office will ordinarily require verified statements claiming small 
entity  status only from parties holding rights in the invention. For 
example, if an  in- dependent inventor has transferred all rights in the 
invention to a small  business concern, the Office will not require a 
verified statement from the  inventor as well as from the small business 
concern. A verified 
statement from the independent inventor, however, will be required in the 
situation  where all rights in the invention have been transferred to an 
individual who  files the verified statement form entitled "Verified 
Statement (Declaration)  By a Non-Inventor Supporting A Claim by Another 
For Small Entity Status." The  language of this latter form clearly shows 
that it is meant to be filed in  addition to another verified statement form. 

No confirming statement is required where there has been no change in 
small  entity status. Paragraph (c) of 37 CFR 1.28 requires a verified 
statement explaining  how error in good faith establishing small entity 
status and paying fees as  a small entity occurred only in situations 
where the error is not corrected  within 3-months of the date on which the 
error occurred. This will reduce paperwork  and provides a 3-month grace 
period to correct errors with no explanations  required for correction 
during that 3-month period. 

37 CFR 1.28 also provides guidance as to the effect of improperly 
establishing  status as a small entity. The intent of the reduced fees for 
small entities  is to soften the impact of the fee increases under w 41(a) 
and (b) of Title  35, United States Code, as such sections are amended by 
Public Law 97-247,  upon those who are least able to absorb the increased 
fees without overall  damage to their ability to participate in the patent 
system through the filing,  issuing, and maintaining of patents. 
Accordingly, any attempt to improperly  establish status as a small entity 
will be viewed as a serious matter by the  Office and 37 CFR 1.28(d) 
indicates that any attempt to fraudulently establish  status as a small 
entity or pay fees as a small entity will be considered as  a fraud 
practiced or attempted on the Office. In addition, improperly and with 
intent to deceive establishing status as a small entity or paying fees as 
a  small entity will be considered as a fraud practiced or attempted on 
the Office.  Normally, the Office will not question a claim to status as a 
small entity.  However, if the Office must resolve such an issue in a 
question arising before  it, the Office will look to the actual or 
practical status of the individual  or organization claiming status as a 
small entity rather than the professed  or apparent status. 

Request for refunds, along with the verified statements, should be 
addressed  to the >Assistant< Commissioner *>for< Patents **, Washington, 
D.C. 20231,  and directed to the attention of the Refund Section, 
Accounting Division, Office  of Finance. 

The Patent and Trademark Office does not give advisory opinions as to 
whether  or not a specific individual or organization qualifies for status 
as a small  entity. In establishing reduced fees for independent 
inventors, small business  concerns, and nonprofit organizations, the 
Congressional consideration of the  legislation which became Public Law 
97-247 indicated an intent that the Patent  and Trademark Office rely 
exclusively on a self-certification that a patent  applicant qualifies as 
an independent inventor, small business concern, or  nonprofit 
organization. In addition, it was also stated during Congressional 
consideration of the legislation that no additional resources would be 
required  to administer the system whereby fees would be reduced for small 
entities. 
In view of the intent expressed during Congressional consideration of the 
legislation,  it would be inappropriate for the Patent and Trademark 
Office to give advisory  opinions as to entitlement to small entity 
status. Accordingly, any person  seeking to establish status as a small 
entity for purposes of paying the fee  in an application or patent must 
file the verified statement required by 37  CFR 1.27 and in so doing is 
self-certifying entitlement to small entity status. 
Small entity status must not be established unless the person or persons 
signing  the verified statement can unequivocally make the required 
self-certification.  Any appropriately signed and filed verified statement 
will be considered by  the Patent and Trademark Office to be a 
self-certification. 

If a verified statement claiming small entity status is filed in a 
language  other than English, it must be accompanied by a verified English 
translation 
(37 CFR 1.69(b)). A non-English language verified statement claiming small 
 entity status will not be given any effect until the verified English 
translation  is filed and the full fees will be due until then. 

When small entity status has been established in error and small entity 
fees  have been paid in error, the matter is to be addressed under 37 CFR 
1.28(c).  Although the Office has noted that it will no longer conduct 
inquiries under  37 CFR 1.28(c)(2), 1098 OG 502 (January 3, 1989), a 
verified statement and  payment of fee deficiencies (current fee level at 
the time of a complete submission  minus the small entity fee paid in 
error) under 
37 CFR 1.28(c)(2) are still required. A verified statement by applicant's 
attorney,  an inventor or on behalf of the assignee (37 CFR 3.73(b) does 
not apply) will  be presumed to have been submitted on behalf of a party 
with sufficient knowledge  regarding the matters to be averred to. Any 
paper under 37 CFR 1.28(c) should  be addressed 

to the attention of the Special Program Law Office, Office of Petitions. 
A maintenance fee improperly paid as a small entity will be treated as a 
matter  under 37 CFR 1.28(c) and will not be considered to involve 
expiration of the  patent under 37 CFR 1.378. 



A50903001.bmp 



A50903001.end 



A50903002.bmp 



A50903002.end 



A50903003.bmp 



A50903003.end 



A50903004.bmp 



A50903004.end 




510   Patent and Trademark Office Business Hours [R-1] 


Filing of Papers During Unscheduled Closings of the 
 Patent and Trademark Office 

 The Patent and Trademark Office working hours are 8:30 a.m. to 5:00 p.m., 
 Monday through Friday, excluding Federal holidays in the District of 
Columbia.  Outside these hours, only Patent and Trademark Office employees 
are authorized  to be in areas of the Patent and Trademark Office other 
than the Public Search  Rooms. 

The hours for the Public Search Room are 8:00 a.m. to 8:00 p.m., and the 
hours  for the Trademark Search Room are 8:00 a.m. to 6:00 p.m., Monday 
through Friday,  excluding Federal holidays in the District of Columbia. 

During working hours, all applicants, attorneys, and other members of the 
public  should announce their presence to the Office personnel in the area 
of their  visit. In the examining groups, visitors should inform the group 
receptionist  of their presence before visiting other areas of the group. 

When the Patent and Trademark Office is officially closed by Executive 
Order  of the President or by the Office of Personnel Management for an 
entire day  because of some unscheduled event, such as adverse weather 
conditions, the  Patent and Trademark Office will consider that one day as 
a ``federal holiday  within the District of Columbia" under 35 U.S.C. 21. 
Any action or fee due  that day will be considered timely for the purposes of 
35 U.S.C. 119, 133, and 151 if the action is taken or fee paid on the next 
 succeeding business day on which the Patent and Trademark Office is open. 
When the Patent and Trademark Office is open for business during any part 
of  a business day between 8:30 a.m. and 5:00 p.m., papers are due on that 
day  even though the Office may be officially closed for some period of 
time during  the business day because of an unscheduled event. The 
procedures of 37 CFR  1.10 may be used for filing applications. 

Information regarding whether or not the Office is officially closed on 
any  particular day may be obtained by calling (703) 305-4357. 

>WARNING: Since a provisional application can be pending for no more than 
twelve  months, the last day of pendency may occur on a Saturday, Sunday, 
or Federal  holiday within the District of Columbia which for copendency 
would require  the nonprovisional application to be filed prior to the 
Saturday, Sunday, or  Federal holiday. See 37 CFR 1.78(a)(3).< 

REGULATIONS FOR THE PUBLIC USE OF 
 RECORDS IN THE PUBLIC SEARCH ROOM 
FOR PATENTS OF THE PATENT AND 
TRADEMARK OFFICE 

The Patent and Trademark Office has established Procedures and Regulations 
 for using the facilities of the Public Search Room for Patents. The 
procedures  for the Search Room include the requirement that users obtain 
and show, prior  to entering the Search Room facilities, a User Pass. This 
pass can be obtained  at the receptionist's desk in the lobby of Building 
3. User Passes will be  issued to persons not under prohibition from using 
the search facilities who  sign an application form and acknowledge 
receipt of a copy of the noted Regulations.  User Passes are 
nontransferable and are valid until reissue or revocation for  cause. 
Office employees must show their building pass in order to enter the 
Public Search Room. 

The procedures also include the requirement that persons entering and 
exiting  the Search Room use designated lanes. Persons exiting the Search 
Room will  automatically pass electronic sensing equipment designed to 
detect any marked  documents or materials being removed from the Search 
Room. The sensing equipment  is capable of detecting marked documents and 
materials in briefcases and parcels  and under clothing. The equipment 
does not use X-ray or other high energy radiation  and is, therefore, 
completely safe and harmless to persons, photographic film,  magnetic 
tape, and electronic or mechanical devices such as wrist watches.  New 
patents are marked for sensing before being placed in the Classified 
files. 
Whenever a marked document is transported past the sensing equipment, 
Patent  and Trademark Office officials and the security guards will be 
alerted to the  removal of the document, and a gate on the exit lane will 
lock. Persons triggering  the alarm will be asked to cooperate in 
identifying the source for the alarm. 
 Failure to cooperate when the alarm is triggered could result in 
detention  of the person, seizure of any briefcase or the like, or other 
legal measures  deemed necessary and appropriate in the specific case. 

The regulations for the Search Room are reprinted in a Regulation 
brochure.  It is available in the Search Room. In order to maintain an 
environment conductive  to search, the Regulations will be strictly enforced. 

Although these procedures and regulations may cause some inconvenience, it 
 is hoped that with understanding and cooperation they will result in 
improvement  in search facilities which will benefit all participants in 
the U.S. patent  system. 

Persons violating the regulations may be denied the use of the facilities 
in  the Public Search Room for Patents, and may further be subjected to 
prosecution  under the Criminal Code. Additionally, the name of any person 
violating these  regulations who is registered to practice before the 
Patent and Trademark Office  may be forwarded to the Office of Enrollment 
and Discipline for appropriate  action under 37 CFR Part 10. 

USE OF PATENT EXAMINING 
GROUP FACILITIES 

The primary function of the Patent and Trademark Office is the examination 
 of >nonprovisional< applications for patents and the issuance of valid 
patents  based upon a search and consideration of the best available prior 
art. This  can be accomplished only through maintaining strict search file 
integrity within  the patent examining group facilities. 

Therefore, the regulations appearing below were established for those 
authorized  members of the public using the facilities of the patent 
examining groups. 
Although these regulations may cause some inconvenience, it is believed 
that  with the cooperation and understanding of the public, a more 
efficient and  reliable examination system within the patent examining 
groups will result. 
A copy of the following "Regulations for Users of the Patent Examining 
Group  Facilities," is posted in each of the Patent Examining Groups and 
the Public  Search Room for Patents: 

REGULATIONS FOR USERS OF THE PATENT 
EXAMINING GROUP SEARCH FACILITIES 

1.  Group facilities are defined as those areas in Crystal City where the 
Examining  Groups are located. 

2.  The use of the Group facilities for search purposes by members of the 
public  is strictly limited to the search of materials not available in 
the Public  Search Room for Patents or the Scientific Library and when it 
does not conflict  with the regular business of Patent and Trademark 
personnel and only between  the hours of 8:45 a.m. and 4:45 p.m. on 
regular business days. 

3.  Authorized Officials, under these Regulations, include Supervisory 
Patent  Examiners and Examining Group Directors. 

4.  Under applicable statutes and regulations, including 40 U.S.C. 486(c); 
 41 CFR Subpart 101-20.3; and appropriate Sections of Department 
Organization  Orders 30-3A and 30-3B of the Department of Commerce, the 
Regulations appearing  below are established for those members of the 
public using the Group Facilities. 
A.  All persons using these facilities are subject to the Regulations 
Governing  Conduct on Federal Property, as specified in 41 CFR Subpart 
101-20.3. 
B.  All posted Official Notices are to be complied with. 

C.  A valid User Pass must be prominently displayed when searching in the 
Group  Facilities. User Passes are nontransferable and must be surrendered 
upon request  to authorized officials. 

D.  All persons holding User Passes must register with the Group 
Receptionist,  unless otherwise directed, in each Examining Group where 
they search and must  sign a log (e.g., indicating time-in, time-out, 
name, User Pass number, class(es)  and subclass(es) searched). 

E.  No patents, records, or other documents of the Patent and Trademark 
Office  shall be removed from the Group Facilities except by express 
written authorization  by an authorized official in the Examining Group 
where the material resides.  Such authorization will not be given for U.S. 
patents and other material readily  available through the Scientific Library. 

F.  Smoking is not permitted except in designated areas. 

G.  No food or beverages in any form are to be consumed except in 
designated  areas. 

H.  Loud talking, use of radios, and any other form of activity which may 
disturb  other members of the public or Patent and Trademark Office 
personnel are forbidden. 
I.  Children brought into the Group Facilities must not be allowed to 
disturb  others. 

J.  The presence or use of equipment such as dictation equipment, 
reproducing  machines, typewriters, and photographic equipment is 
prohibited without prior permission from an authorized  official in the 
Examining Group where the use is intended and then is permitted  where its 
use does not conflict with Regulation H. 

K.  Patents and other documents must not be removed from their shoes for 
any  reason other than for cursory study thereof while kept in close 
proximate association  with the shoe and must not be moved out of their 
normal sequence. 

L.  All patent shoes must be promptly replaced in their proper location in 
 the shoe case. 

M.  All textbooks, journals, and the like must be returned to their proper 
 location. 

N.  The reserving of seats and/or working areas is prohibited. 

O.  All packages, briefcases, or other personal effects brought into the 
Group  Facilities are subject to search by authorized officials upon 
request and must  be removed when leaving the Group Facilities. 

P.  All verbal requests for compliance with these regulations or other 
posted  Patent and Trademark Office Notices pertaining to activity in the 
Group Facilities,  when made by authorized officials, must be promptly 
complied with. 
5.  Persons violating these regulations may be denied the use of the 
facilities  in the Examining Groups and Public Search Room for Patents, 
and may further  be subject to prosecution under the Criminal Code. 
Additionally, the name of  any person violating these regulations who is 
registered to practice before  the Patent and Trademark Office may be 
forwarded to the Office of Enrollment  and Discipline for appropriate 
action under 
37 CFR Part 10. 

If any individual is observed in violation of any of the regulations, 
immediate  compliance should be courteously requested. If a verbal request 
is not complied  with, a note should be made of the individual's name and 
User's Pass number,  if possible (the User's Pass is required to be 
prominently displayed) and report  the incident to the Supervisory Primary 
Examiner, Supervisory Applications  Examiner, or other appropriate 
supervisor who will take further action. 
In addition, if any individual in a search area appears to be a stranger 
and  is not wearing a User's Pass, some identification, such as a Building 
or User's  Pass, should be requested. If the individual refuses, notify a 
supervisor.  Consequently, all Office employees are expected to carry 
their Building Pass  with them at all times, especially when searching 
outside of their assigned  groups. 

Supervisors, when aware of violations of the posted regulations, should 
prepare  a memorandum detailing the facts of the incident and forward this 
memorandum  to the Deputy Assistant Commissioner for Patents via their 
Group Director.  Supervisory Patent Examiners and Group Directors are 
authorized to demand surrender  of User Passes on-the-spot. If the 
Supervisory Patent Examiner exercises this  function, the Group Director 
should be immediately notified, followed up by  a memorandum as previously 
set forth. 


511   Postal Service Emergency Contingency Plan [R-1] 


35 U.S.C. 21.     Filing date and day for taking action. 

(a)   The Commissioner may by rule prescribe that any paper or fee 
required  to be filed in the Patent and Trademark Office will be 
considered filed in  the Office on the date on which it was deposited with 
the United States Postal  Service or would have been deposited with the 
United States Postal Service  but for postal service interruptions or 
emergencies designated by the Commissioner. 
***** 

37 CFR 1.6.   Receipt of letters and papers. 

***** 

(e)   Interruptions in U.S. Postal Service. 

If interruptions or emergencies in the United States Postal Service which 
have  been so designated by the Commissioner occur, the Patent and 
Trademark Office  will consider as filed on a particular date in the 
Office any correspondence  which is: 

(1)         Promptly filed after the ending of the designated interruption 
 or emergency; and 

(2)         Accompanied by a statement indicating that such correspondence 
 would have been filed on that particular date if it were not for the 
designated  interruption or emergency in the United States Postal Service. 
Such statement  must be a verified statement if made by a person other 
than a practitioner  as defined in w 10.1(r) of this chapter. 

37 CFR 1.6(e) provides a procedure under which correspondence (papers and 
fees)  which could not be filed on a particular date because of an 
interruption or  emergency in the United States Postal Service which is so 
designated by the  Commissioner, may be promptly filed after the ending of 
such a designated interruption  or emergency and be considered as having 
been filed on that particular date.  Authority for such a practice is 
found in 
35 U.S.C. 21(a), as amended by Pub. L. 97-247. 

The U.S. Patent and Trademark Office is establishing the following 
contingency  plan for filing correspondence in the Office in the event of 
a designated interruption  or emergency in the mail service in the United 
States. Upon determination by  the Commissioner of Patents and Trademarks 
that such an emergency exists, a  notice activating the plan will be 
issued by the Commissioner. The activating  notice will be published in 
the Wall Street Journal and made available by telephone  at area code 703, 
557-INFO. Also, certain publications, patent bar groups,  and other 
organizations closely associated with the patent system, will be 
notified. Termination of the program will be similarly announced. Where 
the  postal emergency is not nationwide, the Commissioner will designate 
the areas  of the United States in which the procedures outlined below 
will be in effect. 

U.S. Department of Commerce District Offices will be designated, on an 
emergency  basis, as receiving stations for filing correspondence in the 
U.S. Patent and  Trademark Office. 

Upon determination that an emergency exists, the following procedures may 
be  followed: All correspondence should be enclosed in a sealed envelope 
addressed  to the Patent and Trademark Office and deposited in one of the 
District Offices.  Such papers will be considered as received in the U.S. 
Patent and Trademark  Office on the day of deposit. The District Office 
will date stamp each envelope  and the accompanying receipt card which 
completely identifies the deposited  papers. The receipt card will be 
returned to the depositor. Applicants or their  representatives should 
assure the legibility of the date stamp. 

District Office deposits should be limited to checks in payment of issue 
fees,  new application papers wherein priority dates or statutory bars may 
be involved,  amendments where the 6-month statutory period for response 
is about to expire,  trademark oppositions, Section 8 affidavits, 
trademark renewals, and to other  papers for which the patent and 
trademark statutes do not provide a remedy  for failure to obtain a 
particular date. 

Where papers originate from overseas, it is suggested that the papers be 
mailed  to a registered agent in Canada, with a request that the papers be 
forwarded  by courier to the nearest District Office in the United States. 

In regard to pending applications, if the time for taking any action or 
paying  any fee expires during the period that the Commissioner declares 
to be an emergency,  the time will be extended until 1-month after the end 
of the emergency period,  provided that such extension does not exceed the 
maximum period for response  provided for in the statutes. 

Since this extension of time will be automatic, there will be no record in 
 the individual files to indicate that a response filed during the 
extended  period is in fact timely. In order to provide a complete record, 
applicants  or their representatives should file a paper referring to this 
notice in each  case in which a response is filed during the extended period. 

The addresses of the Department of Commerce District Offices, subject to 
subsequent  changes, are as follows: 

ALABAMA 

Birmingham  -  Room 302, 2015 2nd Avenue North, 3rd floor, Berry Bldg. 
35203,  Area Code 205 Tel 731-1331. 

ALASKA 

Anchorage  -  222 West 7th Ave., >#23,< 99513- *>7575<, Area Code 907 Tel 
271-*>5136<. 
ARIZONA 

Phoenix  -  **>Phoenix Plaza, Suite 970, 2901 N. Central Avenue, 85012, 
Area  Code 602 Tel 640-2513<. 

ARKANSAS 

Little Rock  -   ** >Suite 700, 425 W. Capital Avenue, 72201, Area Code 
501  Tel 324-5794<. 

CALIFORNIA 

Los Angeles  -  Room *>9200<, 11000 Wilshire Boulevard *>90024<, Area Code 
 **>310 Tel 235-7104<. 

**>Newport Beach - Suite 305, 3300 Irvine Avenue, 92660, Area Code 714 Tel 
 660-1688<. 

San Diego  - Suite *>230<, 6363 Greenwich Drive 92122, Area Code 619 Tel 
557-5395. 
San Francisco  -  14th Fl., 250 Montgomery St. 94104, Area Code 415 Tel 
705-*>2300<. 

>Santa Clara - 5201 Great American Pkwy., #456, 95054, Area Code 408 Tel 
748-7450.< 

COLORADO 

Denver  -  Rm. 680, 1625 Broadway, ** 80202, Area Code 303 Tel 
844-*>6622<. 

CONNECTICUT 

Hartford  - Room 610-B, Federal Office Building, 450 Main Street 06103, 
Area  Code 203 Tel 240-3530. 

FLORIDA 

** 

Clearwater  - 128 North Osceola Avenue 34615, Area Code 813 Tel 461-0011. 
Orlando -  **>Eola Park Centre, Suite 695, 200 E. 
Robinson St. 32801, Area Code 407 Tel 648-6756<. 

Tallahassee - ** Rm. *>366G<, 107 W. Gaines St. 32399-2000, Area Code 904 
Tel  488-6469. 

GEORGIA 

Atlanta - Suite 310, 4360 Chamblee-Dunwoody Rd., 30341, Area Code 404 Tel 
452-910*>1<. 
Savannah   - 120 Barnard Street, A-107  31401, Area Code 912 Tel 
**>652-4204<. 
HAWAII 

Honolulu  - P.O. Box 50026, 300 Ala Moana Boulevard 96850, Area Code 808 
Tel  541-1782. 

IDAHO 

Boise  - 2nd Fl., Hall of Mirrors, 700 W. State St., 83720, Area Code 208 
Tel  334-3857. 

ILLINOIS 

** 

Rockford - 515 North Court Street, P.O. Box 1747 61110-0247, Area Code 815 
 Tel 987-8123. 

>Wheaton - c/o Illinois Institute of Technology, 201 E. Loop Road, 60187, 
Area  Code 312 Tel 353-4332.< 

INDIANA 

Indianapolis - **>Penwood One, Suite 106, 11405 N. Pennsylvania Street, 
46032,  Area Code 317 Tel 582-2300.< 

IOWA 

Des Moines - 817 Federal Building, 210 Walnut Street 50309, Area Code 515 
Tel  284-4222. 

KANSAS 

Wichita  - 151 North *>V<olutsia, 67214-4695, Area Code 316 Tel 269-6160. 
KENTUCKY 

Louisville  - **>Marmaduke Building, 3rd Floor, 520 South 4th Street, 
40202,  Area Code 502 Tel 582-5066.< 

LOUISIANA 

New Orleans  -  **>Hale Boggs Federal Building, 501 Magazine Street, Room 
1043,  < 70130, Area Code 504 Tel 589-6546. 

MAINE 

Augusta  - **>187 State Street,< Area Code 207 Tel 622-8249. 

** 

MASSACHUSETTS 

Boston  - World Trade Center, Suite 307 **>164 Northern Ave.,< 02210, Area 
 Code 617 Tel **>424-5990<. 

MICHIGAN 

Detroit  - 1140 McNamara Bldg. 477 Michigan Avenue, 48226, Area Code 313 
Tel  226-3650. 

Grand Rapids -  300 Monroe N.W., Rm. 409 49503, Area Code 616 Tel 
456-2411. 
MINNESOTA 

Minneapolis  - 108 Federal Building, 110 South Fourth Street 55401, Area 
Code  612 Tel 348-1638. 

MISSISSIPPI 

Jackson  - **>201 West Capitol St., 310 Millsaps Bldg. 39201-2005<, Area 
Code  601 Tel 965-4388. 

MISSOURI 

St. Louis  - **>8182 Maryland Avenue, Suite 303<, 63105, Area Code 314 Tel 
 425-3302-4. 

Kansas City  - Room 635, 601 East 12th Street 64106, Area Code 816 Tel 
**>426-3141<. 
NEBRASKA 

Omaha  - 11133 O Street 68137, Area Code 402 Tel 221-3664. 

NEVADA 

Reno  - 1755 E. Plumb Lane, #152, 89502, Area  Code 702 Tel 784-5203. 
NEW JERSEY 

Trenton  - 3131 Princeton Pike Bldg., 6, Suite 100, 08648, Area Code 609 
Tel  989-*>2395<. 

NEW MEXICO 

** 

>Sante Fe (Dallas Tx, District) - Attn: c/o New Mexico Dept. of Economic 
Development,  1100 St. Francis Dr., 87503, Area Code 505 Tel 827-0350.< 

NEW YORK 

Buffalo  -  1312 Federal Building, 111 West Huron Street 14202, Area Code 
716  Tel 846-4191. 

New York  -  Room 3718, Federal Office Building, 26 Federal Plaza, 10278, 
Area  Code 212 Tel 264-0634. 

NORTH CAROLINA 

Greensboro  -  Suite 400, **>400< West Market Street, 27401, Area Code 
*>910<  Tel 333-5345. 

OHIO 

Cincinnati  - 9504 Federal Office Building,  550 Main Street 45202, Area 
Code  513 Tel 684-2944. 

Cleveland  - **>Bank One Center, 600 Superior Ave., Suite 700< 44114, Area 
 Code 216 Tel 522-4750. 

OKLAHOMA 

Oklahoma City - 6601 Broadway Extension, Suite 200  *>73116<, Area Code 
405  Tel 231-5302. 

Tulsa  - 440 S. Houston St. 74127, Area Code 918 Tel 581-7650. 

OREGON 

Portland  - One World Trade Center, 121 S.W. Salmon, Suite 242, 97204, 
Area  Code 503 Tel *>326-3001<. 

PENNSYLVANIA 

Philadelphia  - Suite 202, **>600 American Ave.<, King Of Prussia 19406, 
Area  Code 215 Tel 962-*>4990<. 

Pittsburgh - 2002 Federal Building, 1000  Liberty Avenue 15222, Area Code 
412  Tel 644-2850. 

PUERTO RICO 

San Juan (Hato Rey)  -  Room G-55-Federal Building, Chardon Ave. 00918, 
Area  Code 809 Tel 766-5555. 

RHODE ISLAND 

Providence - 7 Jackson Walkway 02903, Area Code 401 Tel 528-5104. 
SOUTH CAROLINA 

Charleston  - **>c/o Trident Technical College, PO Box 118067, 66 Columbus 
 St., 29423, Area Code 803 Tel 727-4051.< 

Columbia  - Strom Thurmond Fed. Bldg., Suite  172, 1835 Assembly Street 
29201,  Area Code 803 Tel 765-5345. 

TENNESSEE 

Memphis  - 22 N. Front St., Suite 200, 3810*>3<, Area Code 901 Tel 
*>544-4137<. 
Nashville -  Suite *>114<, Parkway Towers, 404 James Robertson Pkwy., 
37219-1505,  Area Code 615 Tel 736-5161. 

TEXAS 

Dallas -  **>2050 N. Stemmons Fwy, Suite 170, 75258, Area Code 214 Tel 
767-0542.< 
Houston  - **>#1 Allen Ctr. 500 Dallas, Suite 1160,< 77002, Area Code 713 
Tel  229-2578. 

UTAH 

Salt Lake City  - 324 South State St., Suite 105, 84111, Area Code 801 Tel 
 524-5116. 

VIRGINIA 

Richmond  - **>700 Centre, 704 E. Franklin St., Suite 550, 23219,<, Area 
Code  804 Tel 771-2246. 

 WASHINGTON 

Seattle  - 3131 Elliott Ave., Suite 290, 98121, Area Code 206 Tel 
553-561*>5<. 
WEST VIRGINIA 

Charleston  - 405 Capitol Street>, Suite 807,< 25301, Area Code 304 Tel 
347-5408. 
WISCONSIN 

Milwaukee  - *>596< Federal Bldg., 517 East Wisconsin Avenue 53202, Area 
Code  414 Tel 291-3470. 


512   Certificate of Mailing or Transmission [R-2] 


37 CFR 1.8.   Certificate of mailing or transmission. 

(a)   Except in the cases enumerated in paragraph (a)(2) of this 
section,correspondence  required to be filed in the Patent and Trademark 
Office within a set period  of time will be considered as being timely 
filed if the procedure described  in this section is followed. The actual 
date of receipt will be used for all  other purposes. 

(1)         Correspondence will be considered as being timely filed if: 
(i)   The correspondence is mailed or transmitted prior to expiration of 
the  set period of time by being: 

(A)   Deposited with the U.S. Postal Service with sufficient postage as 
first  class mail addressed to the Commissioner of Patents and Trademarks, 
Washington,  DC 20231; or 

(B)   Transmitted by facsimile to the Patent and Trademark Office in 
accordance  with # 1.6(d); and 

(ii)    The correspondence includes a certificate for each piece of 
correspondence  stating the date of deposit or transmission. The person 
signing the certificate  should have reasonable basis to expect that the 
correspondence would be mailed  or transmitted on or before the date 
indicated. 

(2)         The procedure described in paragraph (a)(1) of this section 
does  not apply to, and no benefit will be given to a certificate of 
Mailing or Transmission  on, the following: 

(i)   Relative to Patents and Patent Applications- 

(A)   The filing of a national patent application specification and 
drawing  or other correspondence for the purpose of obtaining an 
application filing  date; 

(B)   The filing of correspondence in an interference which an 
examiner-in-chief  orders to be filed by hand or ``Express Mail"; 

(C)   The filing of agreements between parties to an interference under 35 
 U.S.C. 135(c); 

(D)   The filing of an international application for patent; 

(E)   The filing of correspondence in an international application before 
the  U.S. Receiving Office, the U.S. International Searching Authority, or 
the U.S.  International Preliminary Examining Authority; 

(F)   The filing of a copy of the international application and the basic 
national  fee necessary to enter the national stage, as specified in ## 
1.494(b) or 1.495(b). 

(ii)    Relative to Trademark Registrations and Trademark Applications- 
(A)   The filing of a trademark application; 

(B)   The filing of an affidavit showing that a mark is still in use or 
containing  an excuse for non-use under section 8(a) or (b) or section 
12(c) of the Trademark  Act, 15 U.S.C. 1058(a), 1058(b), 1062(c); 

(C)   The filing of an application for renewal of a registration under 
section  9 of the Trademark Act, 15 U.S.C. 1059; 

(D)   The filing of a petition to cancel a registration of a mark under 
section  14, subsection (1) or (2) of the Trademark Act, 15 U.S.C. 1064; 

(E)   In an application under section 1(b) of the Trademark Act, 
15 U.S.C. 1051(b), the filing of an amendment to allege use in commerce 
under  section 1(c) of the Trademark Act, 15 U.S.C. 1051(c); or the filing 
of a statement  of use under section 1(d)(1) of the Trademark Act, 15 
U.S.C. 1051(d)(1). 
(F)   In an application under section 1(b) of the Trademark Act, 15 U.S.C. 
 1051(b), the filing of a request under section 1(d)(2), for an extension 
of  time to file a statement of use under section 1(d)(1) of the Trademark 
Act,  15 U.S.C. 1051(d)(1). 

(iii)     Relative to Disciplinary Proceedings- 

(A)   Correspondence filed in connection with a disciplinary proceeding 
under  part 10 of this chapter. 

(B)   Reserved 

(b)   In the event that correspondence is considered timely filed by being 
 mailed or transmitted in accordance with paragraph (a) of this section, 
but  not received in the Patent and Trademark Office, and the application 
is held  to be abandoned or the proceeding dismissed, terminated, or 
decided with prejudice,  the correspondence will be considered timely if 
the party who forwarded such  correspondence: 

(1)         Informs the Office of the previous mailing or transmission of 
the  correspondence promptly after becoming aware that the Office has no 
evidence  of receipt of the correspondence, 

(2)         Supplies an additional copy of the previously mailed or 
transmitted  correspondence and certificate, and 

(3)         Includes a statement which attests on a personal knowledge 
basis  or to the satisfaction of the Commissioner to the previous timely 
mailing or  transmission. Such statement must be a verified statement if 
made by a person  other than a practitioner as defined in # 101(r) of this 
chapter. If the correspondence  was sent by facsimile transmission, a copy 
of the sending unit's report confirming  transmission may be used to 
support this statement. 

(c)   The Office may require additional evidence to determine if the 
correspondence  was timely filed. 

A suggested format for a Certificate of Mailing and a Certificate of 
Transmission  under 37 CFR 1.8 to be included with the correspondence is 
reproduced below. 
Certificate of Mailing 

I hereby certify that this correspondence is being deposited with the 
United  States Postal Service with sufficient postage as first class mail 
in an envelope  addressed to: 



Assistant Commissioner for Patents 
Washington, D.C. 20231 


on ___________. 

(Date) 


Typed or printed name of person signing this certificate 


___________________________________________ 


Signature________________________________________ 

Certificate of Transmission 

I hereby certify that this correspondence is being facsimile transmitted 
to  the Patent and Trademark Office (Fax No. (703)___-____) 


on____________. 

(Date) 

Typed or printed name of person signing this certificate 


___________________________________________ 


Signature________________________________________ 

W 5.02      Format of Certificate of Mailing or Transmission 

The following are suggested formats for either a Certificate of Mailing or 
 Certificate of Transmission under 37 CFR 1.8(a). The certification may be 
included  with all correspondence concerning this application or 
proceeding to establish  a date of mailing or transmission under the 
Rules. Proper use of this procedure  will result in such communication 
being considered as timely if the established  date is within the required 
period for response. The Certificate should be  signed by the individual 
actually depositing or transmitting the correspondence  or by an 
individual who, upon information and belief, expects the correspondence 
to be mailed or transmitted in the normal course of business by another no 
 later than the date indicated. 

Certificate of Mailing 

I hereby certify that this correspondence is being deposited with the 
United  States Postal Service with sufficient postage as first class mail 
in an envelope  addressed to: 

Assistant Commissioner for Patents 
Washington, D.C. 20231 


on ___________. 

(Date) 

Typed or printed name of person signing this certificate 


___________________________________________ 


Signature________________________________________ 

Certificate of Transmission 

I hereby certify that this correspondence is being facsimile transmitted 
to  the Patent and Trademark Office Fax No. (703)___-____ 


on____________. 

(Date) 

Typed or printed name of person signing this certificate 


___________________________________________ 


Signature________________________________________ 

Please refer to 37 CFR 1.6(d) and 1.8(a)(2) for filing limitations 
concerning  facsimile transmissions and mailing, respectively. 


For a Pro Se inventor, Form Paragraph 17.11 **>may be used in place of< 
Form  Paragraph 5.02. 

W 17.11       Suggestion of Certificate of Mailing, Pro Se 

It is called to applicant's attention that if a communication is mailed 
before  the response time has expired applicant may submit the response 
with a "Certificate  of Mailing" in accordance with 37 CFR 1.8(a) which 
merely asserts that the  response is being mailed on a given date. So 
mailed, before the period of response  has expired, the response is 
considered timely. A suggested format for a certificate  follows. 

>Certificate of Mailing 

I hereby certify that this correspondence is being deposited with the 
United  States Postal Service with sufficient postage as first class mail 
in an envelope  addressed to: 

Assistant Commissioner for Patents 
Washington, D.C. 20231 


on ___________. 

(Date) 

Typed or printed name of person signing this certificate 


___________________________________________ 


Signature________________________________________< 

** 

Under 37 CFR 1.8, a person may state on certain papers directed to the 
Office 
(exceptions are stated in 
37 CFR 1.8), the date on which the paper will be deposited in the United 
States  Postal Service or transmitted by facsimile. If the date stated is 
within the  period for response, the response in most instances will be 
considered to be  timely. This is true even if the paper does not actually 
reach the Office until  after the end of the period for response. The 
Certificate of Mailing procedure  does not apply to papers mailed in a 
foreign country. 

The Certificate of Transmission procedure, however, also applies to papers 
 transmitted to the Office from a foreign country provided that the 
correspondence  being transmitted is not prohibited from being transmitted 
by facsimile and is not  otherwise precluded from receiving the benefits 
under 37 CFR 1.8. 

It should be noted, however, that the Office will continue its normal 
practice  of stamping the date of receipt (Mail Room Stamp) on all papers 
received through  the mail or by facsimile except those filed under 37 CFR 
1.10 (See MPEP w 513).  The date stamped will also be the date which is 
entered on Office records and  from which any subsequent periods are 
calculated. For example, 37 CFR 1.192  gives an appellant 2 months from 
the date of the appeal to file an appeal brief.  For example, if the last 
day to respond to a final rejection was November 10,  1976, and applicant 
deposited a Notice of Appeal with fee in the U.S. mail  on November 10, 
1976, and so certified, that appeal is timely even if it was  not received 
in the Patent and Trademark Office until November 17, 1976. Since  the 
date of receipt will be used to calculate the time at which the brief is 
due, the brief was due on January 17, 1977. This is 2 months after the 
Mail  Room date. 

Procedure by Applicant 

(A)   The certification requires a signature. Specifically, if the 
certification  appears on a paper that requires a signature, two 
signatures are required,  one for the paper and one for the certification. 
Although not specifically  required by 37 CFR1.8, it is preferred that the 
certificate be signed by the  applicant, assignee, or registered practitioner. 

(B)   When possible, the certification should appear on a portion of the 
paper  being submitted. However, if there is insufficient space to make 
the certification  on the same paper, the certification should be on a 
separate sheet securely  attached to the paper. 

(C)   When the certification is presented on a separate sheet, that sheet 
must 
(1) be signed and (2) fully identify and be securely attached to the paper 
 it accompanies. The required identification should include the serial 
number  and filing date of the application as well as the type of paper 
being filed,  e.g., response to rejection or refusal, Notice of Appeal, 
etc. An unsigned  certification will not be considered acceptable. 

Moreover, without the proper identifying data, a certification presented 
on  a separate sheet will not be considered acceptable if there is any 
question  or doubt concerning the connection between the sheet and the 
paper filed. 
If the sheet should become detached from the paper and thereafter not 
associated  with the appropriate file, evidence that this sheet was 
received in the Office  can be supported by submitting a copy of a 
postcard receipt specifically identifying  this sheet and the paper and by 
submitting a copy of the sheet as originally  mailed. Attention is 
directed to MPEP w 503 relative to the use of postcards  as receipts. 

(D)   In situations wherein the correspondence includes papers for more 
than  one application (e.g., a single envelope containing separate papers 
responding  to Office actions in different applications) or papers for 
various parts of  the Office (e.g., a patent issue fee transmittal form 
PTO-858 and an assignment),  each paper must have its own certification as 
a part thereof or attached thereto. 
Although Form PTOL-858, Issue Fee Transmittal Form, may contain a 
Certificate  of Mailing thereon, a separate Certificate of Mailing is 
required for all papers  included with this form, including formal 
drawings, since papers are separated  and flow to different areas of the 
Office. Checks submitted with the papers  do not require a separate 
certification. 

(E)   In situations wherein the correspondence includes several papers 
directed  to the same area of the Office for the same application (for 
example, a proposed  response under 37 CFR 1.116 and a Notice of Appeal), 
each paper should have  its own certification as a part thereof or 
attached thereto. 

Alternatively, the correspondence may be submitted with a cover or 
transmittal  letter which itemizes the papers and on which is placed the 
certificate under  37 CFR 1.8. 

Use of Stamped Certification 

Some practitioners place the certification language on the first page of a 
 paper with an inked stamp. Such a practice is encouraged because the 
certification  is not only readily visible but also forms an integral part 
of the paper. 
Office Procedure 

Mail Room 

The Mail Room will continue to date stamp the actual date of receipt of 
all  papers received by mail in the Office. No attempt will be made to 
retain the envelopes in which the papers  are received or to indicate on 
the papers the postal cancellation date (postmark). 
However, the benefits of 37 CFR 1.8 or 1.10 apply only to documents 
delivered  to the Office by the U.S. Postal service. A number of instances 
have been uncovered  where individuals are certifying that documents were 
deposited with the U.S.  Postal Service when, in fact, the documents were 
hand-carried or delivered  to the Office via commercial couriers; e.g., 
``Federal Express," ``DHL," ``Purolator,"  ``Air Borne," ``UPS," etc. In 
those instances where documents include a Certificate  of Mailing under 37 
CFR 1.8 or 1.10 but were delivered to the Office by other  than the U.S. 
Postal Service, Mail Room personnel are placing a notice indicating  that 
fact on the correspondence involved to alert Office personnel that the 
benefits of 37 CFR 1.8 or 1.10 do not apply. 

Processing Areas 

When papers are received in an examining group, the date of receipt in the 
 group is stamped on the papers. 

The date indicated on the Certificate of Mailing or of Transmission will 
be  used by the Office only to determine if the paper was deposited in the 
United  States Postal Service or transmitted by facsimile within the 
period for response.  If the paper was actually received in the Office 
within the period for response,  there is no need to refer to the Certificate. 

When papers are received in an examining group, the date of receipt in the 
 group should be stamped on the papers as at present. 

If, however, the paper was received in the Patent and Trademark Office 
after  the end of the period for response, the paper should be inspected 
to determine  if a Certificate of Mailing or of Transmission has been 
included. Where no  such Certificate is found, the paper is untimely since 
applicant did not respond  within the period for response. This may result 
in abandonment of the application  or other loss of rights. 

In those instances where a Certificate of Mailing or of Transmission does 
appear  in the paper or a cover letter thereto, a check should be made to 
determine  whether the indicated date of deposit or transmission is within 
the period  for response. If the date indicated in the Certificate is 
after the end of  the period for response, the paper is untimely and no 
notation of the date  need be made. Where the date indicated on the 
Certificate is within the period  for response, the paper should be 
considered to be timely filed. A notation  should be made adjacent to the 
Office stamp indicating the date of receipt 
(Mail Room Stamp) which notes the date stated on the Certificate. This 
notation  should be "C of Mail" or ``C of Fax'' followed by the date. A 
paper with a  certificate dated November 10, 1976, would be noted next to 
the Mail Room Stamp  "(C of Mail. 11/10/76)." This notation should also 
appear on the "Contents"  portion of the file wrapper. 

If the period set for taking an action in the Patent and Trademark Office 
ends  on a Saturday, Sunday, or Federal holiday within the District of 
Columbia (37  CFR 1.7), the action will be considered to be timely if 
deposited in the United  States mail or transmitted by facsimile and 
certified under 37 CFR 1.8(a) on  the next succeeding day which is not a 
Saturday, Sunday, or a Federal holiday. 
It should be noted that the filing of a paper for the purpose of obtaining 
 a continuation or division application under 37 CFR 1.60 or 1.62 is 
excluded  from the Certificate practice under 37 CFR 1.8(a)(2)(i)A since 
it is considered  to be the filing of a national patent application. 

All Certificates of Mailing or Transmission filed in applications should 
be  placed in the file wrappers directly below the papers to which they 
refer. 
Group personnel receiving a hand-delivered paper from other than U.S. 
Postal  Service personnel should inspect the paper to ensure that the 
benefits of 37  CFR 1.8 or 1.10 are not accorded in error. If the paper 
contains a certificate  of mailing under 37 CFR 1.8 or 1.10, the words 
``HAND DELIVERED" should be  written adjacent to the group date stamp. 

Applicant should be notified in the next Office action when a paper 
containing  a Certificate of Mailing has been denied the benefits under 37 
CFR 1.8 or 1.10  by including, for example, form paragraph 5.05 

W 5.05      Benefit of Certificate of Mailing Denied 

        The [1]  filed [2] is not entitled to the benefits of 37 CFR [3] 
since  it was not delivered to the Patent and Trademark Office by the U.S. 
Postal  Service. Therefore, the date of receipt in the Patent and 
Trademark Office  has been used to determine the timeliness of the paper. 

>Examiner Note: 

This form paragraph is to be used in those situations where correspondence 
 contains a Certificate of Mailing under 37 CFR 1.8 or a Certificate of 
Mailing  by "Express Mail" under 37 CFR 1.10 but the correspondence was 
not actually  deposited with the U.S. Postal Service.< 

Misuse of a Certificate of Mailing under 37 CFR 1.8 or 1.10 which appears 
to  be more than a one-time, inadvertent error should be brought to the 
attention  of the Office of Enrollment and Discipline. 

Original Mailed Paper Not Delivered 

Paragraphs (b) and (c) of 37 CFR 1.8 concern the situation where a paper 
containing  a Certificate was timely deposited in the U.S. mail or 
transmitted by facsimile,  but never received by the Patent and Trademark 
Office. In the examining groups,  all submissions under these paragraphs 
should be considered and the sufficiency  thereof determined by the Group 
Director. 


513   Deposit as Express Mail With U.S. Postal Service [R-1] 


35 U.S.C. 21.     Filing date and day for taking action. 

(a)   The Commissioner may by rule prescribe that any paper or fee 
required  to be filed in the Patent and Trademark Office will be 
considered filed in  the Office on the date on which it was deposited with 
the United States Postal  Service or would have been deposited with the 
United States Postal Service  but for postal service interruptions or 
emergencies designated by the Commissioner. 
37 CFR 1.10.            Filing of papers and fees by "Express Mail" with 
certificate. 
(a)   Any paper or fee to be filed in the Patent and Trademark Office can 
be  filed utilizing the "Express Mail Post Office to Addressee" service of 
the  United States Postal Service and be considered as having been filed 
in the  Office on the date the paper or fee is shown to have been 
deposited as "Express  Mail" with the United States Postal Service unless 
the date of deposit is a  Saturday, Sunday, or Federal holiday within the 
District of Columbia. 
(b)   Any paper or fee filed by "Express Mail" must have the number of the 
 "Express Mail" mailing label placed thereon prior to mailing, be 
addressed  to the Commissioner of Patents and Trademarks, Washington, D.C. 
20231, and  any such paper or fee must also include a certificate of 
mailing by "Express  Mail" which states the date of mailing by "Express 
Mail" and is signed by the  person mailing the paper or fee. 

(c)   The Patent and Trademark Office will accept the certificate of 
mailing  by "Express Mail" and accord the paper or fee the certificate 
date under 35  U.S.C. 21(a) (unless the certificate date is a Saturday, 
Sunday, or Federal  holiday within the District of Columbia - see w 
1.6(a)) without further proof  of the date on which the mailing by 
"Express Mail" occurred unless a question  is present regarding the date 
of mailing. If more than a reasonable time has  elapsed between the 
certificate date and the Patent and Trademark Office receipt  date or if 
other questions regarding the date of mailing are present, the person 
mailing the paper or fee may be required to file a copy of the "Express 
Mail"  receipt showing the actual date of mailing and a statement from the 
person  who mailed the paper or fee averring to the fact that the mailing 
occurred  on the date certified. Such statement must be a verified 
statement if made  by a person not registered to practice before the 
Patent and Trademark Office. 
37 CFR 1.10 provides a procedure for assigning the date on which any paper 
 or fee is deposited as "Express Mail" with the United States Postal 
Service  as the filing date of the paper or fee in the Patent and 
Trademark Office unless  it was mailed on a Saturday, Sunday, or a Federal 
holiday within the District  of Columbia, in which case the filing date 
will be the next succeeding day  which is not a Saturday, Sunday, or a 
Federal holiday within the District of  Columbia. Authority for the 
Commissioner to establish such a procedure is provided  in section 21(a) 
of Title 35, United States Code, as amended by Pub. L. 97-247  for any 
paper or fee required to be filed in the Patent and Trademark Office. 
This procedure covers the filing of all documents, including patent and 
trademark  applications, and fees since they are required to be filed in 
the Patent and  Trademark Office for processing. 

The procedure, in 37 CFR 1.10(a), requires the use of the "Express Mail 
Post  Office to Addressee" service of the United States Postal Service. 
This service  provides for the use of a mailing label on which the Post 
Office clearly indicates  the date on which it was deposited. 37 CFR 
1.10(b) requires: (1) That the number  of the "Express Mail" mailing label 
be placed on each paper or fee and (2)  that a certificate of mailing by 
"Express Mail," signed by the person mailing  the paper or fee, be 
included on each paper or fee and state the date of deposit  as "Express 
Mail" in the United States Postal Service. Each certificate must  have an 
original signature of the person actually mailing the paper or fee 
(i.e., the person who actually deposits the paper or fee with the U.S. 
Postal  Service). The Office has encountered instances in which the 
Certificate of  Mailing by Express Mail was signed by an attorney and the 
deposit was made  by the attorney's secretary or another member of the 
attorney's staff. This  is improper under the provisions of 37 CFR 1.10. 
This section differs in that  regard from 37 CFR 1.8. 

The requirement that each paper or fee have the number of the "Express 
Mail"  mailing label and the certificate of mailing by "Express Mail" 
included thereon  is necessary so that the Patent and Trademark Office can 
verify when each paper  or fee was filed if questions relating thereto 
arise. The number and certificate  must be placed on each separate paper 
and each fee transmittal either directly on the  document or by a separate 
paper firmly and securely attached thereto. In situations  wherein the 
correspondence includes several papers directed to the same application 
(for example, the specification, drawings, and declaration for a new 
application),  the correspondence may be submitted with a cover or 
transmittal letter which  itemizes the papers and on which is placed the 
certificate under 37 CFR 1.10.  It is not necessary that the number and 
certificate be placed on each page  of a particular paper or fee 
transmittal. Merely placing the number and certificate  in one prominent 
location on each separate paper or fee transmittal will be  sufficient. 

Where there is a discrepancy between the certificate date and the 
``Date-In"  on the Express Mail label, the Office will use the Date-In 
placed on the label  by the Postal Service as the date of deposit for the 
correspondence. Therefore,  care should be exercised so as not to deposit 
an Express Mail package in an  Express Mail receptacle or mailbox after 
the last pickup for a given day. The  question as to the treatment of such 
a situation was covered in the final rule-making  published on January 20, 
1983 at 48 Fed. Reg. 2696-2714 and on February 10,  1983, at 1027 Off. 
Gaz. Pat. Office. The following comment appears therein. 
``Comment: One person questions what treatment will be accorded a paper 
placed  in an Express Mail box receptacle after the box has been cleared 
for the last  time on a given day." 

``Reply: The paper will be considered to be deposited as of the date of 
receipt  indicated on the Express Mail mailing label by the Postal Service 
clerk." 
The certificate of mailing procedure of 37 CFR 1.8(a) continues to be 
available  in addition to the procedure under 37 CFR 1.10. 

The "Express Mail" service is seen to be preferable to other types of 
postal  services because a readily legible mailing date is provided to 
both the applicant  and the Patent and Trademark Office on the "Express 
Mail" label. Also, the  labels are of uniform size and can therefore be 
kept on file relatively easily  by the Office, if such is determined to be 
necessary or desirable. Registered  mail and certified mail, on the other 
hand, provide only a postmark for the  mailing date when such mail arrives 
in the Patent and Trademark Office and  such postmarks are often 
illegible. Also, such mail arrives in various size  envelopes which do not 
easily lend themselves to being filed so that the postmark  may be 
retained. Administrative burdens including lack of certainty of mailing 
date and storage are considered greater for registered or certified mail 
than  for "Express Mail." 

In those cases where the procedure has not been properly followed, e.g., 
the  certificate is illegible, improperly worded, unsigned, or does not 
provide  the "Express Mail" label number, the date stamped on the will be 
the date of  actual receipt in the Office. If the filing date of an 
application is involved,  applicants may wish to file a petition, 
accompanied by the petition fee (37  CFR 1.17(h)) presenting whatever 
arguments and evidence he or she may have  that the application is 
entitled to a filing date as of the date it was sent  by "Express Mail." 

>The Office is currently preparing a notice of proposed rulemaking to 
formally  change the address for patent-related correspondence. Section 
1.10 of Title  37 of the Code of Federal Regulations has been waived to 
the extent that a  certificate of mailing under 37 CFR 1.10, for patent 
applications and related  documents, may be addressed either to the 
Commissioner of Patents and Trademarks,  Washington, D.C. 20231, or to the 
Assistant Commissioner for Patents, Washington,  D.C. 20231. See MPEP w 501.< 



Contents 

601         Content of Provisional and Nonprovisional 
            Applications 

601.01      Complete Application 

>601.01(a)  Nonprovisional Applications Filed Under 
            35 U.S.C. 111(a) 

601.01(b)   Provisional Applications Filed Under 
            35 U.S.C. 111(b) 

601.01(c)   Conversion to a Provisional Application 

601.01(d)   Application Filed Without All Pages of Specification 

601.01(e)   Nonprovisional Application Filed Without 
            at Least One Claim 

601.01(f)   Applications Filed Without Drawings 

601.01(g)   Applications Filed Without All Figures 
            of Drawings 

601.01(h)   Forms< 

601.02      Power of Attorney or Authorization of Agent 

601.03      Change of Correspondence Address 

601.04      National Stage Requirements of the United States as 
            a Designated Office 

602         Original Oath or Declaration 

602.01      Oath Cannot Be Amended 

602.02      New Oath or Substitute for Original 

602.03      Defective Oath or Declaration 

602.04      Foreign Executed Oath 

602.04(a)   Foreign Executed Oath Is Ribboned to Other 
            Application Papers 

602.05      Oath or Declaration - Date of Execution 

602.05(a)   Oath or Declaration in Division and Continuation Cases 
602.06      Non-English Oath or Declaration 

602.07      Oath or Declaration Filed in United States as a 
            Designated Office 

603         Supplemental Oath or Declaration 

603.01      Supplemental Oath or Declaration Filed After 
             Allowance 
604         Administration or Execution of Oath 

604.01      Seal 

604.02      Venue 

** 

604.03(a)   Notarial Powers of Some Military Officers 

604.04      Consul 

604.04(a)   Consul - Omission of Certificate 

604.06      By Attorney in Case 

605         Applicant 

605.01      Applicant's Citizenship 

605.02      Applicant's Residence 

605.03      Applicant's Post Office Address 

605.04(a)   Applicant's Signature and Name 

605.04(b)   One Full Given Name Required 

605.04(c)   Inventor Changes Name 

605.04(d)   Applicant Unable to Write 

605.04(e)   May Use Title With Signature 

605.04(f)   Signature on Joint Applications - Order of Names 

605.04(g)   Correction of Inventorship 

605.05      Administrator, Executor, or Other Legal Representative 
605.07      Joint Inventors 

606         Title of Invention 

606.01      Examiner May Require Change in Title 

607         Filing Fee 

607.02      Returnability of Fees 

608         Disclosure 

608.01      Specification 

608.01(a)   Arrangement of Application 

608.01(b)   Abstract of the Disclosure 

608.01(c)   Background of the Invention 

608.01(d)   Brief Summary of Invention 

608.01(e)   Reservation Clauses Not Permitted 

608.01(f)   Brief Description of Drawings 

608.01(g)   Detailed Description of Invention 

608.01(h)   Mode of Operation of Invention 

608.01(i)   Claims 

608.01(j)   Numbering of Claims 

608.01(k)   Statutory Requirement of Claims 

608.01(l)   Original Claims 

608.01(m)   Form of Claims 

608.01(n)   Dependent Claims 

608.01(o)   Basis for Claim Terminology in Description 

608.01(p)   Completeness 

608.01(q)   Substitute or Rewritten Specification 

608.01(r)   Derogatory Remarks About Prior Art in Specification 

608.01(s)   Restoration of Cancelled Matter 

608.01(t)   Use in Subsequent Application 

608.01(u)   Use of Formerly Filed Incomplete Application 

608.01(v)   Trademarks and Names Used in Trade 

608.02      Drawing 

608.02(a)   New Drawing -When Required 

608.02(b)   Informal Drawings 

608.02(c)   Drawing Print Kept in File Wrapper 

608.02(d)   Complete Illustration in Drawings 

608.02(e)   Examiner Determines Completeness of Drawings 

608.02(f)   Modifications in Drawings 

608.02(g)   Illustration of Prior Art 

608.02(h)   Additional, Duplicate, or Substitute Drawings 

608.02(i)   Transfer of Drawings From Prior Applications 

608.02(m)   Drawing Prints 

608.02(n)   Duplicate Prints in Patentability Report Cases 

608.02(o)   Dates Entered on Drawing 

608.02(p)   Correction of Drawings 

608.02(q)   Conditions Precedent to Amendment of Drawing 

608.02(r)   Separate Letter to Draftsman 

608.02(t)   Cancellation of Figures 

608.02(v)   Drawing Changes Which Require Sketches 

608.02(w)   Drawing Changes Which May Be Made Without 
            Applicant's Sketch 

608.02(x)   Disposition of Orders for Amendment of Drawing 

608.02(y)   Return of Drawing 

608.02(z)   Allowable Applications Needing Drawing 
            Corrections or Formal Drawings 

608.03      Models, Exhibits, Specimens 

608.03(a)   Handling of Models, Exhibits, and Specimens 

608.04      New Matter 

608.04(a)   Matter Not in Original Specification, Claims, or Drawings 
608.04(b)   New Matter by Preliminary Amendment 

608.04(c)   Review of Examiner's Holding of New Matter 

608.05      Deposit of Computer Program Listings 

609         Information Disclosure Statement 


601   Content of Provisional and Nonprovisional Applications [R-2] 

35 U.S.C. 111     Application 

        (a) IN GENERAL.- 

        (1)   WRITTEN APPLICATION.-An application for patent shall be 
made,  or authorized to be made, by the inventor, except as otherwise 
provided in  this title, in writing to the Commissioner. 

        (2)   CONTENTS.-Such application shall include- 

(A)   a specification as prescribed by section 112 of this title; 
(B)   a drawing as prescribed by section 113 of this title; and 

(C)   an oath by the applicant as prescribed by section 115 of this title. 
        (3)   FEE AND OATH.-The application must be accompanied by the fee 
 required by law. The fee and oath may be submitted after the 
specification  and any required drawing are submitted, within such period 
and under such conditions,  including the payment of a surcharge, as may 
be prescribed by the Commissioner. 

        (4)   FAILURE TO SUBMIT.-Upon failure to submit the fee and oath 
within  such prescribed period, the application shall be regarded as 
abandoned, unless  it is shown to the satisfaction of the Commissioner 
that the delay in submitting  the fee and oath was unavoidable or 
unintentional. The filing date of an application  shall be the date on 
which the specification and any required drawing are received  in the 
Patent and Trademark Office. 

        (b)   PROVISIONAL APPLICATION.- 

        (1)   AUTHORIZATION.-A provisional application for patent shall be 
 made or authorized to be made by the inventor, except as otherwise 
provided  in this title, in writing to the Commissioner. Such application 
shall include- 
(A)   a specification as prescribed by the first paragraph of section 112 
of  this title; and 

(B)   a drawing as prescribed by section 113 of this title. 

        (2)   CLAIM.-A claim, as required by the second through fifth 
paragraphs  of section 112, shall not be required in a provisional 
application. 
        (3)   FEE.-(A) The application must be accompanied by the fee 
required  by law. 

(B)   The fee may be submitted after the specification and any required 
drawing  are submitted, within such period and under such conditions, 
including the  payment of a surcharge, as may be prescribed by the 
Commissioner. 
(C)   Upon failure to submit the fee within such prescribed period, the 
application  shall be regarded as abandoned, unless it is shown to the 
satisfaction of the  Commissioner that the delay in submitting the fee was 
unavoidable or unintentional. 
        (4)   FILING DATE.-The filing date of a provisional applica- tion 
shall be the date on which the specification and any required draw- ing 
are received in the Patent and Trademark Office. 

        (5)   ABANDONMENT.-The provisional application shall be regarded 
as  abandoned 12 months after the filing date of such application and 
shall not  be subject to revival thereafter. 

        (6)   OTHER BASIS FOR PROVISIONAL APPLICATION.-Subject to all the 
conditions  in this subsection and section 119(e) of this title, and as 
prescribed by the  Commissioner, an application for patent filed under 
subsection (a) may be treated  as a provisional application for patent. 

        (7)   NO RIGHT OF PRIORITY OR BENEFIT OF EARLIEST FILING DATE.-A 
provisional  application shall not be entitled to the right of priority of 
any other application  under section 119 or 365(a) of this title or to the 
benefit of an earlier filing  date in the United States under section 120, 
121, or 365(c) of this title. 
        (8)   * >APPLICABLE< PROVISIONS.-The provisions of 
this title relating to applications for patent shall apply to provi- 
sional applications for patent, except as otherwise provided, and ex- cept 
that provisional applications for patent shall not be subject to sections 
115, 131, 135, and 157 of this title. 

37 CFR 1.51.    General requisites of an application. 

        (a)   Applications for patents must be made to the Commissioner of 
Patents and Trademarks. 

        (1)   A complete application filed under # 1.53(b)(1) comprises: 
        (i)   A specification, including a claim or claims, see ## 1.71 to 
 1.77; 

        (ii)    An oath or declaration, see ## 1.63 and 1.68; 

        (iii) Drawings, when necessary, see ## 1.81 to 1.85; and 
        (iv)    The prescribed filing fee, see # 1.16. 

        (2)   A complete provisional application filed under # 1.53(b)(2) 
comprises: 
        (i)   A cover sheet identifying: 

        (A)   The application as a provisional application, 

        (B)   The name or names of the inventor or inventors, (see # 
1.41), 
        (C)   The residence of each named inventor, 

        (D)   The title of the invention, 

        (E)   The name and registration number of the attorney or agent 
(if  applicable), 

        (F)   The docket number used by the person filing the application 
to  identify the application (if applicable), 

        (G)   The correspondence address, and 

        (I)   The name of the U.S. Government agency and Government 
contract  number (if the invention was made by an agency of the U.S. 
Government or under  a contract with an agency of the U.S. Government); 

        (ii)    A specification as prescribed by 35 U.S.C. 112, first 
paragraph,  see # 1.71; 

        (iii) Drawings, when necessary, see ## 1.81 to 1.85; and 

        (iv)    The prescribed filing fee, see # 1.16. 

        (b)   Applicants are encouraged to file an information disclosure 
statement  in nonprovisional applications. See ## 1.97 and 1.98. No 
information disclosure  statement may be filed in a provisional application. 

        (c)   Applicants may desire and are permitted to file with, or in, 
 the application or authorization to charge, at any time during the 
pendency 


of the application, any fees required under any of ## 1.16 to 1.18 to a 
deposit  account established and maintained in accordance with # 1.25. 

GUIDELINES FOR DRAFTING 
A NONPROVISIONAL  PATENT 
APPLICATION UNDER 35 U.S.C. 111(a) 

        The following guidelines illustrate the preferred 
layout and content of patent applications filed under 
35 U.S.C. 111(a).  These guidelines are suggested for the applicant's use. 
Arrangement and Contents of the Specification 

        The following order of arrangement is preferable in framing the 
specification  and, except for the title of the invention, each of the 
lettered items should  be preceded by the headings indicated. 

        (a)   Title of the Invention. 

        (b)   Cross-References to Related Applications (if any). 

        (c)   Statement as to Rights to Inventions Made Under Federally 
Sponsored  Research and Development (if any). 

        (d)   Background of the Invention. 

        1.  Field of the Invention. 

        2.  Description of Related Art Including Information Disclosed 
Under  37 CFR 1.97 and 37 CFR 1.98. 

        (e)   Summary of the Invention. 

        (f)   Brief Description of the Drawing. 

        (g)   Description of the Preferred Embodiment(s). 

        (h)   Claim(s). 

        (i)   Abstract of the Disclosure (on a separate page). 

Content 

        (a)   Title of the Invention: (See 37 CFR 1.72(a).) The title of 
the  invention should be placed at the top of the first page of the 
specification.  It should be brief but technically accurate and 
descriptive preferably from  two to seven words. 

        (b)   Cross-References to Related Applications: (See 
37 CFR 1.78 and MPEP # 201.11.) 

        (c)   Statement as to Rights to Inventions Made Under Federally 
Sponsored  Research and Development (if any): (See MPEP # 310). 

        (d)   Background of the Invention: The specification should set 
forth  the Background of the Invention in two parts: 

        (1)   Field of the Invention: A statement of the field of art to 
which  the invention pertains. This statement may include a paraphrasing 
of the applicable  U.S. patent classification definitions. The statement 
should be directed to  the subject matter of the claimed invention. This 
item may also be titled "Technical  Field". 

        (2)   Description of the Related Art Including Information 
Disclosed  Under 37 CFR 1.97 and 1.98:  A paragraph(s) describing to the 
extent practical  the information known to the applicant, including 
references to specific documents  where appropriate. Where applicable, the 
problems involved in the information  disclosed which are solved by the 
applicant's invention, should be indicated.  This item may also be titled 
"Background Information". 

        (e)   Summary of the Invention: A brief summary or general 
statement  of the invention as set forth in 37 CFR 1.73. The summary is 
separate and distinct  from the abstract and is directed toward the 
invention rather than the disclosure  as a whole. The summary may point 
out the advantages of the invention or how  it solves problems previously 
existent in the art (and preferably indicated  in the Background of the 
Invention). In chemical cases the summary should point  out in general 
terms the utility of the invention. If possible, the nature  and gist of 
the invention or the inventive concept should be set forth. Objects  of 
the invention should be treated briefly and only to the extent that they 
contribute to an understanding of the invention. This item may also be 
titled  "Disclosure of Invention." 

        (f)   Brief Description of the Drawing(s): A reference to and 
brief  description of each Figure in the drawing(s) as set forth in 37 CFR 
1.74. 
        (g)   Description of the Preferred Embodiment(s): A description of 
 the preferred embodiment(s) of the invention as required in 37 CFR 1.71. 
The  description should be as short and specific as is necessary to 
adequately and  accurately describe the invention. This item may also be 
titled "Best Mode  for Carrying Out the Invention". 

        Where elements or groups of elements, compounds, and processes, 
which  are conventional and generally widely known in the field to which 
the invention  pertains, form a part of the invention described and their 
exact nature or  type is not necessary for an understanding and use of the 
invention by a person  skilled in the art, they should not be described in 
detail. However, where  particularly complicated subject matter is 
involved or where 
the elements, compounds, or processes may not be commonly or widely known 
in  the field, the specification should refer to another patent or readily 
available  publication which adequately describes the subject matter. 

        (h)   Claim(s): (See 37 CFR 1.75) A claim may be typed with the 
various  elements subdivided in paragraph form. There may be plural 
indentations to  further segregate subcombinations or related steps. 

        Reference characters corresponding to elements recited in the 
detailed  description and the drawings may be used in conjunction with the 
recitation  of the same ele-ment or group of elements in the claims. The 
reference characters,  however, should be enclosed within parentheses so 
as to avoid confusion with  other numbers or characters which may appear 
in the claims. The use of reference  characters is to be considered as 
having no 
effect on the scope of the claims. 

        Claims should preferably be arranged in order of scope so that the 
 first claim presented is the broadest. Where separate species are 
claimed,  the claims of like species should be grouped together where 
possible and physically  separated by drawing a line between claims or 
groups of claims. (Both of these  provisions may not be practical or 
possible where several species claims depend  from the same generic 
claim.) Similarly, product and process claims should  be separately 
grouped. Such arrangements are for the purpose of facilitating 
classification and examination. 

        The form of claim required in 37 CFR 1.75(e) is particularly 
adapted  for the description of improvement-type inventions. Such a claim 
is to be considered  a combination claim and should be drafted with this 
thought in mind. 
        In drafting claims in accordance with 37 CFR 1.75(e), the preamble 
 is to be considered to positively and clearly include all the elements or 
steps  recited therein as a part of the claimed combination. 

        (i)   Abstract of the Disclosure: (See 37 CFR 1.72(b) and MPEP # 
608.01(b).) 
 Oath or Declaration 

        (See 37 CFR 1.63, 1.68, and 1.69.) Where one or more previously 
filed  foreign applications are cited or mentioned in the oath or 
declaration, complete  identifying data, including the application or 
serial number as well as the  country and date of filing, should be provided. 

GUIDELINES FOR DRAFTING 
A PROVISIONAL APPLICATION 
UNDER 35 U.S.C. 111(b) 

        A provisional application should preferably conform to the 
arrangement  guidelines for nonprovisional applications. The specification 
must, however,  comply with the first paragraph of 35 U.S.C. 112 and refer 
to drawings, where  necessary for an understanding of the invention. 
Unlike an application filed  under 35 U.S.C. 111(a), a provisional 
application does not need claims. Furthermore,  no oath or declaration is 
required. See MPEP # 201.04(b). 

        A cover sheet providing identifying information is required for a 
complete  provisional application. In accordance with 37 CFR 1.51(a)(2)(i) 
the cover  sheet must state that it is for a provisional application, it 
must identify  and give the residence of the inventor or inventors, and it 
must give a title  of the invention. The cover sheet must also give the 
name and registration  number of the attorney or agent (if applicable), 
the docket number used by  the person filing the application (if 
applicable) and the correspondence address.  If there is a governmental 
interest, the cover sheet must include a statement  as to rights to 
inventions made under Federally sponsored research and development 
(See MPEP # 310). 
37 CFR 1.51(a)(2)(i)(H) requires the name of the Government agency and the 
 contract number, if the invention was developed by or while under 
contract  with an agency of the U.S. Government. 

        Unlike applications filed under 35 U.S.C. 111(a), provisional 
applications  should not include an information disclosure statement. 
Since no substantive  examination is made, such statements are 
unnecessary. The Office will not accept  an information disclosure 
statement in a provisional application. Any such  statement received, will 
be returned or disposed of at the convenience of the  Office. 

        This cover sheet information enables the Office to prepare a 
proper  filing receipt and provides the Application Processing Division 
with most of  the information needed to process the provisional 
application. See MPEP # 201.04(b)  for a sample cover sheet. 

THE APPLICATION 

        The specification must be filed in or translated into the English 
language  and must be legibly typewritten, written, or printed in 
permanent ink or its equivalent in quality.   See 37  CFR 1.52 and MPEP # 
608.01. 

        The parts of the application may be included in a single document. 
        Determination of completeness of an application is covered in MPEP 
 # 506 and # 601.01  > - # 601.01(g)<. 

        The elements of the application are secured together in a file 
wrapper,  bearing appropriate identifying data including the application 
number and filing  date (MPEP # 717). 

Note 

        Provisional applications, MPEP # 201.04(b). 

        Division applications, MPEP # 201.06. 

        Continuation applications, MPEP # 201.07. 

        Reissue applications, MPEP # 1401. 

        Design applications, MPEP Chapter 1500. 

        Plant applications, MPEP Chapter 1600. 

        Reexamination, MPEP Chapter 2200. 

        A model, exhibit, or specimen is not required as part of the 
application  as filed, although it may be required in the prosecution of 
the application 
(37 CFR 1.91-1.93, MPEP # 608.03). 

37 CFR 1.59.    Papers of application with filing date not returned. 
        Papers in an application which has received a filing date pursuant 
 to # 1.53 will not be returned for any purpose whatever. If applicants 
have  not preserved copies of the papers, the Office will furnish copies 
at the usual  cost of any application in which either the required basic 
filing fee (# 1.16)  or the processing and retention fee (# 1.21(l)) has 
been paid. See # 1.618  for return of unauthorized and improper papers in 
interferences. 

        See, however, MPEP # 201.14(c) and # 604.04(a). 

        All applicants are requested to include a preliminary 
classification  on newly filed patent applications. The preliminary 
classification, preferably  class and subclass designations, should be 
identified in the upper right-hand  corner of the letter of transmittal 
accompanying the application papers, for  example "Proposed Class 2, 
subclass 129." 


601.01      Complete Application [R-2] 


37 CFR 1.53.    Serial number, filing date, and completion of application. 
        (a)   Any application for a patent received in the Patent and 
Trademark  Office will be assigned an application number for 
identification purposes. 
        (b)(1)      The filing date of an application for patent filed 
under  this section, except for a provisional application, is the date on 
which: a  specification containing a description pursuant to # 1.71 and at 
least one  claim pursuant to # 1.75; and any drawing required by # 
1.81(a), are filed  in the Patent and Trademark Office in the name of the 
actual inventor or inventors  as required by # 1.41. No new matter may be 
introduced into an application  after its filing date (# 1.118). If all 
the names of the actual inventor or  inventors are not supplied when the 
specification and any required drawing  are filed, the application will 
not be given a filing date earlier than the  date upon which the names are 
supplied unless a petition with the fee set forth  in # 1.17(i) is filed 
which sets forth the reasons the delay in supplying the  names should be 
excused. A continuation or divisional application (filed under  the 
conditions specified in 35 U.S.C. 120 or 121 and # 1.78(a)) may be filed 
under this section, # 1.60 or # 1.62. A continuation-in-part application 
may  be filed under this section or 
# 1.62. 

        (2)   The filing date of a provisional application is the date on 
which:  a specification as prescribed by 35 U.S.C. 112, first paragraph; 
and any drawing  required by # 1.81(a), are filed in the Patent and 
Trademark Office in the  name of the actual inventor or inventors as 
required by 
# 1.41. No amendment, other than to make the provisional application 
comply  with all applicable regulations, may be made to the provisional 
application  after the filing date of the provisional application. If all 
the names of the  actual inventor or inventors are not supplied when the 
specification and any  required drawing are filed, the provisional 
application will not be given a  filing date earlier than the date upon 
which the names are supplied unless a petition with the fee set forth in # 
1.17(q) is filed which sets forth the reasons the delay in sup- plying the 
names should be excused. 

        (i)   A provisional application must also include a cover sheet 
identifying  the application as a provisional application. Otherwise, the 
application will  be treated as an application filed under # 1.53(b)(1). 

        (ii)    An application for patent filed under # 1.53(b)(1) may be 
treated  as a provisional application and be accorded the original filing 
date provided  that a petition requesting the conversion, with the fee set 
forth in # 1.17(q),  is filed prior to the earlier of the abandonment of the 
# 1.53(b)(1) application, the payment of the issue fee, the expiration of 
12  months after the filing date of the # 1.53(b)(1) application, or the 
filing  of a request for a statutory invention registration under # 1.293. 
The grant  of any such petition will not entitle applicant to a refund of 
the fees which were properly paid in the application filed under 
# 1.53(b)(1). 

        (iii)     A provisional application shall not be entitled to the 
right 
of priority under # 1.55 or 35 U.S.C. 119 or 365(a) or to the benefit of 
an earlier filing date under # 1.78 or 35 U.S.C. 120, 121 or 365(c) of any 
other application. No claim for priority under # 1.78(a)(3) may be made in 
a design application based on a provisional application. No request under 
# 1.293 for a statutory invention registration 
may be filed in a provisional application. The requirements of 
## 1.821-1.825 regarding application disclosures containing nucleo- tide 
and/or amino acid sequences are not mandatory for provi- 
sional applications. 

        (c)   If any application is filed without the specification, 
drawing or name, or names, of the actual inventor or inventors required by 
paragraph 
(b)(1) or (b)(2) of this section, applicant will be so notified and given 
a  time period within which to submit the omitted specifica- 
tion, drawing, name, or names, of the actual inventor, or inventors, in 
order to obtain a filing date as of the date of filing of such submis- 
sion. A copy of the "Notice of Incomplete Application" form noti- 
fying the applicant should accompany any response thereto submitted to the 
Office. If the omission is not corrected within the time period set, the 
application will be returned or otherwise disposed of; the fee, if 
submitted, will be refunded less the handling fee set forth in 
# 1.21(n). Any request for review of a refusal to accord an applica- tion 
a filing date must be by way of a petition accompanied by the fee set 
forth in # 1.17(i), if the application was filed under # 1.53(b)(1), or by 
the fee set forth in # 1.17(q), if the application was filed under # 
1.53(b)(2). 

        (d)(1)      If an application which has been accorded a filing 
date  pursuant to paragraph (b)(1) of this section does not include the 
appropriate  filing fee or an oath or declaration by the applicant, 
applicant will be so  notified, if a correspondence address has been 
provided and given a period  of time within which to file the fee, oath, 
or declaration and to pay the surcharge as set forth in # 1.16(e) in order 
 to prevent abandonment of the application. A copy of the "Notice to File 
Missing Parts" form mailed to applicant should accompany any response 
thereto submitted to the Office. If the required filing fee 
is not timely paid, or if the processing and retention fee set forth in # 
1.21(l) is not paid  within one year of the date of mailing of the 
notification  required by this paragraph, the application will be dis- 
posed of. No copies will be provided or certified by the Office 
of an application which has been disposed of or in which neither 
the required basic filing fee nor the processing and retention fee has 
been paid. The notification pursuant to this paragraph may 
be made simultaneously with any notification pursuant to para- 
graph (c) of this section. If no correspondence address is included in the 
application, applicant has two months from the filing date 
to file the basic filing fee, oath or declaration and to pay the sur- 
charge as set forth in # 1.16(e) in order to prevent abandonment 
of the application; or, if no basic filing fee has been paid, one year 
from the filing date to pay the processing and retention fee set forth in 
# 1.21(l) to prevent disposal of the application. 

        (2)   If a provisional application which has been accorded a fil- 
ing date pursuant to paragraph (b)(2) of this section does not include the 
appropriate filing fee or the cover sheet required by # 1.51(a)(2), 
applicant  will be so notified if a correspondence address has been 
provided and given  a period of time within which to file the fee, cover 
sheet and to pay the surcharge  as set forth in # 1.16(l) in order to pre- 
vent abandonment of the application.  A copy of the "Notice to File 
Missing  Parts" form mailed to applicant should accompany any re- 
sponse thereto submitted to the Office. If the required filing fee is not 
timely paid, the application will be disposed of.  No copies will be 
provided or certified by the Office of an application which has been 
disposed of or in which the required basic filing fee has not been paid. 
The notification pursuant to this paragraph may be made simultaneously 
with  any notification pursuant to paragraph (c) of 
this section.  If no correspondence address is included in the applica- 
tion, applicant has two months from the filing date to file the basic 
filing fee, cover sheet and to pay the surcharge as set forth in # 1.16(l) 
in order to prevent abandonment  of the application. 

        (e)(1) An application for a patent filed under paragraph (b)(1) of 
this section will not be placed upon the files for examination until all 
its required parts, complying with the rules relating thereto, are 
received,  except that certain minor informalities may be waived sub- 
ject to subsequent correction whenever required. 

        (2)   A provisional application for a patent filed under para- 
graph (b)(2) of this section will not be placed upon the files for 
examination  and will become abandoned no later than twelve months after 
its filing date  pursuant to 35 U.S.C. 111(b)(1). 

        37 CFR 1.53 relates to application numbers, filing dates, and 
completion  of applications. 37 CFR 1.53(a) indicates that an application 
number is assigned  to any filed application for identification purposes, 
even if the application  is incomplete or informal. The remaining sections 
of 37 CFR 1.53 treat nonprovisional  applications filed under 35 U.S.C. 
111(a) separately from provisional applications  filed under 35 U.S.C. 111(b). 


** >601.01(a)     Nonprovisional Applications Filed Under 35 U.S.C. 111(a) 
[R-2]< 

        37 CFR 1.53(b)(1) provides that a filing date is assigned to a 
nonprovisional  application as of the date a specification containing a 
description and claim  and any * >necessary< drawing and the names of all 
inventors are filed in the  Patent and Trademark Office.  Failure to meet 
any of the requirements in 37  CFR 1.53(b)(1) will result in the 
application being denied a filing date.   The filing date to be accorded 
such an application is the date on which all  of the requirements of 37 
CFR 1.53(b)(1) are met.  Although the filing fee  and oath or declaration 
can be submitted later, no amendments can be made to  the specification or 
drawings which will introduce new matter.  This practice  is authorized by 
35 U.S.C. 111 as amended by Pub. L. 97-247.   37 CFR 1.53(c)  provides for 
notifying applicant of any application incomplete because the 
specification or drawing is missing and giving the applicant a time period 
 to correct any omission.  Applicant will also be notified if all the 
inventors  are not named, such as by the use of "et al."  If the omission 
is not corrected  within the time period given, the application will be 
returned or otherwise  disposed of and a handling fee set forth in 37 CFR 
1.21(n) will be retained  from any refund of a filing fee. 37 CFR 
1.53(d)(1) provides that, where a filing  date has been assigned to a 
filed specification and drawing, the applicant  will be notified if a 
correspondence address has been provided and be given  a period of time in 
which to file the missing fee, oath, or declaration and  to pay the 
surcharge due in order to prevent abandonment of the application. 
 The time period usually set is 1 month from the date of notification by 
the  Patent and Trademark Office, but in no case less than 2 months after 
the date  of filing of the application.  This time period is subject to 
the provisions  of 37 CFR 1.136(a). 

        If the required basic filing fee is not timely paid, or the 
processing  and retention fee set forth in 37 CFR 1.21(l) is not paid 
within 1 year of the date of mailing of the notification,  the application 
will be disposed of.  No copies will be provided or certified  by the 
Office of an ap-plication which has been disposed of or in which neither 
the required basic filing fee nor the processing and reten- tion fee has 
been  paid.  The notification under 37 CFR 1.53(d)(1) may be made 
simultaneously  with any notification pursuant to paragraph (c) of 37 CFR 
1.53.  If no correspondence  address is included in the application, 
applicant has 2 months from the filing  date to file the fee, oath or 
declaration and to pay the surcharge as set forth  in 37 CFR 1.16(e) in 
order to prevent abandonment 
of the application or one year from the filing date to pay the processing 
and  retention fee set forth in 37 CFR 1.21(l) to prevent disposal of the 
application. 
 37 CFR 1.53(e)(1) indicates that a patent application will not be 
forwarded  for examination on the merits until all required parts have 
been received. 
 37 CFR 1.53(f) indicates that international applications filed under the 
Patent  Cooperation Treaty which designate the United States of America 
are considered  to have a United States filing date under PCT Article 
11(3), except as provided  in 35 U.S.C. 102(e), on the date the 
requirements of 
PCT Article 11(1) (i) to (iii) are met. 

        Effective February 27, 1983, in accordance with the provisions of 
35  U.S.C. 111 and 37 CFR 1.53(b)(1), a filing date is granted to an 
application  for patent, which includes at least a specification 
containing a description  pursuant to 37 CFR 1.71 and at least one claim 
pursuant to 37 CFR 1.75, and  any drawing referred to in the specification 
or required by 37 CFR 1.81(a),  which is filed in the Patent and Trademark 
Office and which names the actual  inventor or inventors pursuant to 37 
CFR 1.41(a). If an application which has  been accorded a filing date does 
not include the appropriate filing fee or  oath or declaration, applicant 
will be so notified and given a period of time  within which to file the 
missing parts to complete the application and to pay  the surcharge as set 
forth in 
37 CFR 1.16(e) in order to prevent abandonment of the application. 
        Applicants should submit a copy of the notice(s) to file missing 
parts  and the notice(s) of incomplete applications with the response 
submitted to  the Patent and Trademark Office. Applicants should also 
include the application  serial number on all correspondence to the 
Office. These measures will aid  the Office in matching papers to 
applications, thereby expediting the processing  of applications. 

        In order for the Office to so notify the applicant, a 
correspondence  address must also be provided in the application. The 
address may be different  from the Post 
Office address of the applicant. For example, the address of applicant's 
registered  attorney or agent may be used as the correspondence address. 
If applicant  fails to provide the Office with a correspondence address, the 
Office will be unable to provide applicant with notification to complete 
the  application and to pay the surcharge as set forth in 37 CFR 1.16(e). 
 In such  a case, applicant will be considered to have constructive notice 
as of the  filing date that the application must be completed within 
2 months from the filing date before abandonment occurs per 37 CFR 
1.53(d)(1). 
  This time period may be extended pursuant to 37 CFR 1.136. 

        The oath or declaration filed in response to such a notice under 
37  CFR 1.53(d)(1) must be executed by the inventors named on filing 
unless a petition  for correction of inventorship complying with 37 CFR 
1.48 is filed within the  time period set. 

        The oath or declaration filed in response to such a notice must 
identify  the specification and any amendment filed with the specification 
which is intended  to be part of the original disclosure.  If an amendment 
is filed with the oath  or declaration filed after the filing date of the 
application, it may be identified  in the oath or declaration but may not 
include new matter.  No new matter may  be included after the filing date 
of the application. See MPEP # 608.04(b). 
  If the oath or declaration improperly refers to an amendment containing 
new  matter, a supplemental oath or declaration will be required pursuant 
to 37  CFR 1.67(b), deleting the reference to the amend-ment containing 
new matter. 
 If an amendment is filed on the same day that the application filed under 
 37 CFR 1.53(b)(1) is filed and is referred to in the original oath or 
declaration  filed with or after the application, it constitutes a part of 
the original  application papers and the question of new matter is not 
considered. Similarly,  if the application papers are altered prior to 
execution of the oath or declaration  and the filing of the application, 
new matter is not a consideration since  the alteration is considered as 
part of the original disclosure. 

        An amendment which adds additional disclosure filed with a request 
 for a continuation-in-part application under 37 CFR 1.62 is automatically 
considered  a part of the original disclosure of the application by virtue 
of the rule. Therefore,  the oath or declaration filed in such an 
application must identify the amendment  adding additional disclosure as 
one of the papers which the in-ventor(s) has  "reviewed and understands" 
in order to comply with 37 CFR 1.63. If the original  oath or declaration 
submitted in a continuation-in-part application filed under  37 CFR 1.62 
does not contain a reference to the amendment filed with the request  for 
an application under 37 CFR 1.62, the examiner must require a supplemental 
 oath or declaration referring to the amendment. 

        37 CFR 1.63 requires that an oath or declaration identify the 
specification  to which it is directed.  The declaration form suggested by 
the Office includes  spaces for filling in the names of the inventors, 
title of invention, application  number, filing date, foreign priority 
application information and United States  priority application 
information. While this information should be provided,  it is not 
essential that all of these spaces be filled in in order to adequately 
identify the specification in compliance with 37 CFR 1.63(a)(2). 

        The following combinations of information supplied in an oath or 
declaration  filed on the application filing date with a specification are 
acceptable as  minimums for identifying a specification and compliance 
with any one of the  items below will be accepted as complying with 
identification requirement of  37 CFR 1.63: 

        (1)   name of inventor(s), and reference to an attached 
specification  which is both attached to the oath or declaration at the 
time of execution  and submitted with the oath or declaration on filing; 

        (2)   name of inventor(s), and attorney docket number which was on 
 the specification as filed; or 

        (3)   name of inventor(s), and title which was on the 
specification  as filed. 

        Filing dates are now granted on applications filed without an oath 
 or declaration in compliance with 
37 CFR 1.63, the oath or declaration being filed later with a surcharge. 
The  following combinations of information supplied in an oath or 
declaration filed  after the filed date are acceptable as minimums for 
identifying a specification  and compliance with any one of the items 
below will be accepted as complying  with the identification requirement 
of 37 CFR 1.63: 

        (1)   name of inventor(s), and application number (consisting of 
the  series code and the serial number; e.g., 08/123,456); 

        (2)   name of inventor(s), serial number and filing date; 
        (3)   name of inventor(s) and attorney docket number which was on 
the  specification as filed; 

        (4)   name of inventor(s), title which was on the specification as 
 filed and filing date; 

        (5)   name of inventor(s), title which was on the specification as 
 filed and reference to an attached specification which is both attached 
to  the oath or declaration at the time of execution and submitted with 
the oath  or declaration; or 

        (6)   name of inventor(s), title which was on the specification as 
 filed and accompanied by a cover letter accurately identifying the 
application  for which it was intended by either the application number 
(consisting of the  series code and the serial number; e.g., 08/123,456), 
or serial number and  filing date. Absent any statement(s) to contrary, it 
will be presumed that  the application filed in the PTO is the application 
which the inventor(s) executed  by signing the oath or declaration. 

        Any specification that is filed attached to an oath or declaration 
 on a date later than the application filing date will not be compared 
with  the specification submitted on filing. Absent any statement(s) to 
the contrary,  the "attached" specification will be presumed to be a copy 
of the specification  and any amendments thereto  which were filed in the 
Office in order to obtain  a filing date for the application. 

        Any variance from the above guidelines will only be considered 
upon  the filing of a petition for waiver of the rules under 37CFR 1.183 
accompanied  by a petition fee (37 CFR 1.17(h)). 

        Further an oath or declaration attached to a cover letter 
referencing  an incorrect application may not become associated with the 
correct application  and, therefore, could result in the abandonment of 
the correct application. 
        Supplemental oaths or declarations in accordance with 37 CFR 1.67 
will  be required in applications in which the oaths or declarations are 
not in compliance  with the other requirements of 37 CFR 1.63 but contain 
sufficient information  to identify the specifications to which they apply 
as detailed above. 
        A copy, such as a photocopy or facsimile transmission, of an 
originally  executed oath or declaration is acceptable and may be filed 
(see MPEP # 502.01).  In the event that a copy of the original is filed, 
the original 
should be retained as evidence of authenticity.  If a question of 
authenticity  arises, the Patent and Trademark Office may require 
submission of the original. 
 See 37 CFR 1.4(d)(2). 

        See MPEP # 1896 for the identification requirements for a 
declaration  filed in a U.S. national stage application filed under 35 
U.S.C. 371. 
        The periods of time within which applicant must complete the 
application  may be extended under the provisions of 37 CFR 1.136. 
Applications which are  not completed in a timely manner will be abandoned. 


** >601.01(b)     Provisional Applications Filed Under 35 U.S.C. 111(b) 
[R-2]< 

        A provisional application will be given a filing date in 
accordance  with 37 CFR 1.53(b)(2) as of the date the written description, 
any necessary  drawings and the names of all inventors are filed in the 
Office. The filing  date requirements for a provisional application set 
forth in paragraph (b)(2)  parallel the requirements set forth in 
paragraph (b)(1), except that no claim  is required. Amendments, other 
than those required to make the provisional  application comply with 
applicable regulations, are not permitted after the  filing date of the 
provisional application. 

        When the specification, drawing, or name or names of the actual 
inventors  are omitted, 37 CFR 1.53(c) requires that the applicant be 
notified and given  a time period in which to submit the missing element 
to complete the filing.  The filing date will become the date of the 
completed submission. If the omission  is not provided within the 
prescribed time, the application will be returned  or otherwise disposed 
of and any fee submitted will be refunded less the handling  fee set forth 
in 37 CFR 1.21(n). 

        37 CFR 1.53(b)(2)(i) requires all provisional applications be 
filed  with a cover sheet identifying the application as a provisional 
application.  The Office will treat an application as having been filed 
under paragraph (b)(1),  unless the application is clearly identified as a 
provisional application.  A provisional application, which is identified 
as such, but which does not  have a complete cover sheet as required by 37 
CFR 1.51(b)(2)(i) will be treated  as a provisional application. However, 
the complete cover sheet and a surcharge  will be required to be submitted 
at a later date in conformance with 37 CFR  1.53(d)(2). 

        When the provisional application does not have a complete cover 
sheet  or the appropriate fee, the applicant will be notified pursuant to 
37 CFR 1.53(d)(2)  and given a time period in which to provide the 
necessary fee or cover sheet  and to pay the surcharge as set forth in 
37 CFR 1.16(l) in order to prevent abandonment of 
the application. The time period will usually be set at 
1 month from the date of notification, but in no case less than 2 months 
from  the filing date of the application. This time period is subject to 
the provisions  of 37 CFR 1.136(a).  If the filing fee is not timely paid, 
the provisional  application will be disposed of. In this case, no copies 
will be provided or  certified by the Office.  If no correspondence 
address has been provided, applicant  has 2 months from the filing date to 
file the basic filing fee, cover sheet,  and to pay the surcharge as set 
forth in 
37 CFR 1.16(l) in order to prevent abandonment of the provisional 
application. 
        Section 1.53(c) requires that any request for review of a refusal 
to  accord an application a filing date be made by way of a petition 
accompanied  by the fee set forth in 37 CFR 1.17(q) (see MPEP # 506.02). 


** >601.01(c)     Conversion to a Provisional Application [R-2]< 


        An application filed under 37 CFR 1.53(b)(1) may be converted to a 
 provisional application in accordance with the procedure described in 37 
CFR  1.53(b)(2)(ii). The procedure requires the filing of a petition 
requesting  the conversion and the petition fee set forth in 
37 CFR 1.17(q). Filing of the petition in the application is required 
prior  to the abandonment of the 37 CFR 1.53(b)(1)application, the payment 
of the  issue fee, the expiration of 12 months after the filing date of 
the 37 CFR 1.53 (b)(1) application, or the filing of a request for a 
statutory  invention registration under 37 CFR 1.293, whichever event is 
earlier. The  grant of any such petition does not entitle applicant to a 
refund of the fees  properly paid in the application filed under 37 CFR 
1.53(b)(1). 


>601.01(d)  Application Filed Without All Pages of Specification [R-2] 

        The Initial Application Examination Division reviews application 
papers  to determine whether all of the pages of specification are present 
in the application.  If the application  is filed without all of the 
page(s) of the specification, but containing something  that can be 
construed as a written description, at least one drawing figure,  if 
necessary under 35 U.S.C. 113 (first sentence), the names of all the 
inventors,  and, in a nonprovisional application, at least one claim, the 
Initial Application  Examination Division will mail a "Notice of Omitted 
Items" indicating that  the application papers so deposited have been 
accorded a filing date, but are  lacking some page(s) of the specification. 

        The mailing of a "Notice of Omitted Items" will permit the 
applicant  to either:  (1) promptly establish prior receipt in the PTO of 
the page(s)  at issue (generally by way of a date-stamped postcard receipt 
(MPEP # 503));  or (2) promptly submit the omitted page(s) in a 
nonprovisional application  and accept the date of such submission as the 
application filing date.  An  applicant asserting that the page(s) was in 
fact deposited in the PTO with  the application papers must, within 2 
months from the date of the "Notice of  Omitted Item(s)", file a petition 
under 37 CFR 1.53(c) with the petition fee  set forth in 37 CFR 1.17(i) 
(37 CFR 1.17(q) for a provisional application),  along with evidence of 
such deposit (37 CFR 1.181(f)).   The petition fee will  be refunded if it 
is determined that the page(s) was in fact received by the  PTO with the 
application papers deposited on filing.  An applicant desiring  to submit 
the omitted page(s) in a nonprovisional application and accept the  date 
of such submission as the application filing date must, within 2 months 
from the date of the "Notice of Omitted Item(s)", file any omitted page(s) 
 with an oath or declaration in compliance with 37 CFR 1.63 and 1.64 
referring  to such page(s) and a petition under 37 CFR 1.182 with the 
petition fee set  forth in 37 CFR 1.17(h), requesting the later filing 
date (37 CFR 1.181(f). 


        An applicant willing to accept the application as deposited in the 
 PTO need not respond to the "Notice of Omitted Items," and the failure to 
file  a petition under 37 CFR 1.53(c) or 37 CFR 1.182 (and the required 
petition  fee) as discussed above within 2 months of the date of the 
"Notice of Omitted  Item(s)" (37 CFR 1.181(f)) will be treated as 
constructive acceptance by applicant  of the application as deposited in 
the PTO.  Amendment of the specification  is required in a nonprovisional 
application to renumber the pages consecutively  and cancel any incomplete 
sentences caused by the absence of the omitted page(s).  Such amendment 
should be by way of preliminary amendment submitted prior to  the first 
Office action to avoid delays in the prosecution of the application. 
        If the application does not contain anything that can be construed 
 as a written description, the Initial Application Examination Division 
will  mail a Notice of Incomplete Application (PTO-1123) indicating that 
the application  lacks the specification required by 35 U.S.C. 112. 
Applicant may file a petition  under 37 CFR 1.53(c) with the petition fee 
set forth in 37 CFR 1.17(i) (37 CFR  1.17(q) for a provisional 
application), asserting that:  (1) the missing specification  was 
submitted; or (2) the application papers as deposited contain an adequate 
written description under 35 U.S.C. 112.  The petition under 37 CFR 
1.53(c)  must be accompanied by sufficient evidence (37 CFR 1.181(b)) to 
establish applicant's  entitlement to the requested filing date (e.g., a 
date-stamped postcard receipt 
(MPEP # 503) to establish prior receipt in the PTO of the missing 
specification). 
 Alternatively, applicant may submit the omitted specification, including 
at  least one claim in a nonprovisional application, accompanied by an 
oath or  declaration in compliance with 37 CFR 1.63 and 1.64 referring to 
the specification  being submitted and accept the date of such submission 
as the application filing  date. 

        Original claims form part of the original disclosure and provide 
their  own written description. See In re 
Anderson, 471 F.2d 1237, 176 USPQ 331 (CCPA 1973).  As such, an 
application  that contains at least one claim, but does not contain 
anything which can be  construed as a written description of such 
claim(s), would be unusual. 
        In instances in which a "Notice of Incomplete Application" has 
been  mailed, further action by applicant is necessary for the application 
to be  accorded a filing date.  As such, the application will be retained 
in the Initial  Application Examination Division to await such action. 
Unless applicant either  completes the application or files a petition 
under 37 CFR 1.53(c) with the  petition fee set forth in 37 CFR 1.17(i) or 
1.17(q), within the period set  in the "Notice of Incomplete Application," 
the application will be processed  as an incomplete application under 37 
CFR 1.53(c). 

        In instances in which a "Notice of Omitted Items" has been mailed, 
 the application will be retained in the Initial Application Examination 
Division  for a period of 2 months from the mailing date of "Notice of 
Omitted Items"  to permit applicant to either:  (1) establish prior 
receipt in the PTO of the  page(s) or drawing(s) at issue; or (2) promptly 
submit the omitted page(s)  or drawing(s) in a nonprovisional application 
and accept the date of such submission as the application filing date.  As 
an applicant may,  but is not required to, respond to such a "Notice of 
Omitted Items," extensions  of time under 37 CFR 1.136 will not be 
applicable to this two-month time period. 
        Unless applicant timely files a petition under 37 CFR 1.53(c) or 
1.182  with the required petition fee, the application will maintain the 
filing date  as of the date of de- posit of the application papers in the 
PTO, and the original  application papers (i.e., the original disclosure 
of the invention) will include  only those application papers present in 
the PTO on the date of deposit.  Nonprovisional  applications that are 
complete under 37 CFR 1.51(a)(1) will then be forwarded  to the 
appropriate examining group for examination of the application. 
Provisional  applications that are complete under 37 CFR 1.51(a)(2) will 
then be forwarded  to Files Repository.  The current practice for treating 
applications that are  not complete under 37 CFR 1.51(a) will remain 
unchanged (37 CFR 1.53(d)). 
        Any petition under 37 CFR 1.53(c) or 1.182 not filed within the 
two-month  period set in the "Notice of Omitted Item(s)" may be dismissed 
as untimely. 
 37 CFR 1.181(f).  Under the adopted procedure, the PTO may strictly 
adhere  to the two-month period set forth in 37 CFR 1.181(f), and dismiss 
as untimely  any petition not filed within the two-month period. This 
strict adherence to  the two-month period set forth in 
37 CFR 1.181(f) is justified as such applications will now be forwarded 
for  examination at the end of the two-month period.  It is further 
justified in  instances in which applicant seeks to submit the omitted 
page(s) or drawing(s)  in a nonprovisional and request the date of such 
submission as the application  filing date as:  (1) according the 
application a filing date later than the  date of deposit may affect the 
date of expiration of any patent issuing on  the application due to the 
changes to 35 U.S.C. 154 contained in Public Law  103-465, # 532, 108 
Stat. 4809 (1994); and (2) the filing of a continuation-in-part 
application is a sufficiently equivalent mechanism for adding additional 
subject  matter to avoid the loss of patent rights. 

        The submission of omitted page(s) or drawing(s) in a 
nonprovisional  application and acceptance of the date of such submission 
as the application  filing date is tantamount to simply filing a new 
application.  Thus, applicants  should consider filing a new application 
as an alternative to submitting a  petition under 37 CFR 1.182 (with the 
petition fee under 37 CFR 1.17(h)) with  any omitted page(s) or 
drawing(s), which is a cost effective alternative in  instances in which a 
nonprovisional application is deposited without filing  fees.  Likewise, 
in view of the relatively low filing fee for provisional applications, 
and the PTO's desire to minimize the processing of provisional 
applications,  the PTO will not grant petitions under 37 CFR 1.182 to 
accept omitted page(s)  or drawing(s) and accord an application filing 
date as of the date of such  submission in provisional applications.  The 
applicant should simply file a  new completed provisional application.< 


>601.01(e)  Nonprovisional Application Filed Without At Least One Claim 
[R-2] 

        35 U.S.C. 111(a)(2) requires that an application for patent 
include,  inter alia, ``a specification as prescribed by section 112 of 
this title,"  and 35 U.S.C. 111(a)(4) provides that the ``filing date of 
an application shall  be the date on which the specification and any 
required drawing are received  in the Patent and Trademark Office."  35 
U.S.C. 112, first paragraph, provides,  in part, that ``[t]he 
specification shall contain a written description of  the invention," and 
35 U.S.C. 112, second paragraph, provides that ``[t]he  specification 
shall conclude with one or more claims particularly pointing  out and 
distinctly claiming the subject matter which the applicant regards  as his 
invention."  Also, the Court of Appeals for the Federal Circuit stated  in 
Litton Systems, Inc. v. Whirlpool Corp.: 

Both statute, 35 U.S.C. 111 [(a)], and federal regulations, 37 CFR 1.51 
[(a)(1)],  make clear the requirement that an application for a patent 
must include .  . . a specification and claims. . . .  The omission of any 
one of these component  parts makes a patent application incomplete and 
thus not entitled to a filing  date. 

728 F.2d 1423, 1437, 221 USPQ 97, 105 (Fed. Cir. 1984)(citing Gearon v. 
United  States, 121 F.Supp 652, 654, 101 USPQ 460, 461 (Ct. Cl. 1954), 
cert. denied,  348 U.S. 942, 104 USPQ 409 (1955))(emphasis in the original). 

        Therefore, in an application filed under 35 U.S.C. 111(a), a claim 
 is a statutory requirement for according a filing date to the 
application. 
 35 U.S.C. 162 and 171 make 35 U.S.C. 112 applicable to plant and design 
applications,  and 35 U.S.C. 162 specifically requires the specification 
in a plant patent  application to contain a claim.  35 U.S.C. 111(b)(2), 
however, provides that  "[a] claim, as required by the second through 
fifth paragraphs of section 112, shall not be required in a provisional 
application." 
 Thus, with the exception of provisional applications filed under 35 
U.S.C.  111(b), any ap-plication filed without at least one claim is 
incomplete and  not entitled to a filing date. 

        If a nonprovisional application does not contain at least one 
claim,  a ``Notice of Incomplete Application" will be mailed to the 
applicant(s) indicating  that no filing date has been granted and setting 
a period for submitting a  claim.  The filing date will be the date of 
receipt of at least one claim.  See In re Mattson, 208 USPQ 168 (Comm'r 
Pat. 1980).  An oath or declaration  in compliance with 37 CFR 1.63 and 
1.64 referring to the claim being submitted  is also required. 

        As 37 CFR 1.53(b)(2)(ii) permits the conversion of an application 
filed  under 35 U.S.C. 111(a) to an application under 35 U.S.C. 111(b), an 
applicant  in an application, other than for a design patent, filed under 
35 U.S.C. 111(a)  on or after June 8, 1995, without at least one claim has 
the alternative of  filing a petition under 37 CFR 1.53(b)(2)(ii) to 
convert such application into  an application under 35 U.S.C. 111(b), 
which does not require a claim to be  entitled to its date of deposit as a 
filing date.  Such a petition, however,  must be filed prior to the 
expiration of 12 months after the date of deposit  of the application 
under 35 U.S.C. 111(a), and comply with the other requirements  of 37 CFR 
1.53(b)(2)(ii).  See MPEP # 601.01(c). 

        The treatment of an application subsequent to the mailing of a 
"Notice  of Incomplete Application" is discussed in MPEP # 601.01(d).< 


>601.01(f)  Applications Filed Without Drawings [R-2] 


        35 U.S.C. 111(a)(2)(B) and 35 U.S.C. 111(b)(2)(B) each provide, in 
 part, that an ``application shall include . . . a drawing as prescribed 
by  section 113 of this title" and 35 U.S.C. 111(a)(4) and 35 U.S.C. 
111(b)(4)  each provide, in part, that the ``filing date . . . shall be 
the date on which  . . . any required drawing are received in the Patent 
and Trademark Office." 
 35 U.S.C. 113 (first sentence) in turn provides that an ``applicant shall 
 furnish a drawing where necessary for the understanding of the subject 
matter  sought to be patented." 

        Applications filed without drawings are initially inspected to 
determine  whether a drawing is referred to in the specification, and if 
not, whether  a drawing is necessary for the understanding of the 
invention.  35 U.S.C. 113 
(first sentence). 

        It has been PTO practice to treat an application that contains at 
least  one process or method claim as an application for which a drawing 
is not necessary  for an understanding of the invention under 35 U.S.C. 
113 (first sentence). 
 The same practice has been followed in composition applications. Other 
situations  in which drawings are usually not considered necessary for the 
understanding  of the invention under 35 U.S.C. 113 (first sentence) are: 

I.  Coated articles or products:  where the invention resides solely in 
coating  or impregnating a conventional sheet (e.g., paper or cloth, or an 
article of  known and conventional character with a particular 
composition), unless significant  details of structure or arrangement are 
involved in the article claims; 
II.   Articles made from a particular material or composition:  where the 
invention  consists in making an article of a particular material or 
composition, unless  significant details of structure or arrangement are 
involved in the article  claims; 

III.    Laminated structures:  where the claimed invention involves only 
laminations  of sheets (and coatings) of specified material unless 
significant details of  structure or arrangement (other than the mere 
order of the layers) are involved  in the article claims; or 

IV.         Articles, apparatus, or systems where sole distinguishing 
feature  is presence of a particular material:  where the invention 
resides solely in  the use of a particular material in an otherwise old 
article, apparatus or  system recited broadly in the claims, for example: 

a.  A hydraulic system distinguished solely by the use therein of a 
particular  hydraulic fluid; 

b.  Packaged sutures wherein the structure and arrangement of the package 
are  conventional and the only distinguishing feature is the use of a 
particular  material. 

        A nonprovisional application having at least one claim, or a 
provisional  application having at least some disclosure, directed to the 
subject matter  discussed above for which a drawing is usually not 
considered essential for  a filing date, not describing drawing figures in 
the specification, and filed  without drawings will simply be processed 
for examination, so long as the application  contains something that can 
be construed as a written description and the names  of all the inventors. 
 A nonprovisional application having at least one claim,  or a provisional 
application having at least some disclosure, directed to the subject 
matter discussed above for which a drawing is usually  not considered 
essential for a filing date, describing drawing figure(s) in  the 
specification, but filed without drawings will be treated as an applica- 
tion filed without all of the drawing figures referred to in the 
specification  as discussed in MPEP # 601.01(g), so long as the 
application contains something  that can be construed as a written 
description and the names of all the inventors. 
 In a situation in which the appropriate examining group determines that 
drawings  are necessary under 35 U.S.C. 113 (first sentence) the filing 
date issue will  be reconsidered by the PTO.  The application will be 
returned to Initial Application  Examination Division for mailing of a 
"Notice of Incomplete Application." 
        If a nonprovisional application does not have at least one claim 
directed  to the subject matter discussed above for which a drawing is 
usually not considered  essential for a filing date, or a provisional 
application does not have at  least some disclosure directed to the 
subject matter discussed above for which  a drawing is usually not 
considered essential for a filing date, and is filed  without drawings, 
the Initial Application Examination Division will mail a  "Notice of 
Incomplete Application" indicating that the application lacks drawings 
and that 35 U.S.C. 113 (first sentence) requires a drawing where necessary 
 for the understanding of the subject matter sought to be patented. 
        Applicant may file a petition under 37 CFR 1.53(c) with the 
petition  fee set forth in 37 CFR 1.17(i) (37 CFR 1.17(q) for a 
provisional application),  asserting that (1) the drawing(s) at issue was 
submitted, or (2) the drawing(s)  is not necessary under 35 U.S.C. 113 
(first sentence) for a filing date.  The  petition must be accompanied by 
sufficient evidence to establish applicant's  entitlement to the requested 
filing date (e.g., a date-stamped postcard receipt 
(MPEP # 503) to establish prior receipt in the PTO of the drawing(s) at 
issue). 
 Alternatively, applicant may submit drawing(s) accompanied by an oath or 
declaration  in compliance with 
37 CFR 1.63 and 1.64 referring to the drawing(s) being submitted and 
accept  the date of such submission as the application filing date. 

        In design applications, the Initial Application Examination 
Division  will mail a ``Notice of Incomplete Application" indicating that 
the application  lacks the drawings required under 35 U.S.C. 113 (first 
sentence).  The applicant  may:  (1) promptly file a petition under 
37 CFR 1.53(c) with the petition fee set forth in 37 CFR 1.17(i), 
asserting  that the missing drawing(s) was submitted; or (2) promptly 
submit drawing(s)  accompanied by an oath or declaration in compliance 
with 37 CFR 1.63 and 1.64  and accept the date of such submission as the 
application filing date.  37  CFR 1.154(a) provides that the claim in a 
design application ``shall be in  formal terms to the ornamental design 
for the article (specifying name) as  shown, or as shown and described." 
As such, petitions under 37 CFR 1.53(c)  asserting that drawings are 
unnecessary under 35 U.S.C. 113 (first sentence)  for a filing date in a 
design application will not be found persuasive. 
        The treatment of an application subsequent to the mailing of a 
``Notice  of Incomplete Application" is discussed in MPEP # 601.01(d).< 


>601.01(g)  Applications Filed Without All Figures of Drawings [R-2] 

        The Initial Application Examination Division reviews application 
papers  to determine whether all of the figures of the drawings that are 
mentioned  in the specification are present in the application.  If the 
application is  filed without all of the drawing figure(s) referred to in 
the specification,  and the application contains something that can be 
construed as a written description,  at least one drawing, if necessary 
under 35 U.S.C. 113 (first sentence), the  names of all the inventors, 
and, in a nonprovisional application, at least  one claim, the Initial 
Application Examination Division will mail a ``Notice  of Omitted Item(s)" 
indicating that the application papers so deposited have  been accorded a 
filing date, but are lacking some of the figures of drawings  described in 
the specification. 

        The mailing of a ``Notice of Omitted Item(s)" will permit the 
applicant  to either:  (1) promptly establish prior receipt in the PTO of 
the drawing(s)  at issue (generally by way of a date-stamped postcard 
receipt (MPEP # 503));  or (2) promptly submit the omitted drawing(s) in a 
nonprovisional application  and accept the date of such submission as the 
application filing date.  An  applicant asserting that the drawing(s) was 
in fact deposited in the PTO with  the application papers must, within 2 
months from the date of the ``Notice  of Omitted Item(s)," file a petition 
under 37 CFR 1.53(c) with the petition  fee set forth in 37 CFR 1.17(i) 
and 37 CFR 1.17(q) for a provisional application),  along with evidence of 
such deposit (37 CFR 1.181(f)).  The petition fee will  be refunded if it 
is determined that the drawing(s) was in fact received by  the PTO with 
the application papers deposited on filing.  An applicant desiring  to 
submit the omitted drawings in a nonprovisional application and accept the 
 date of such submission as the application filing date must, within 2 
months  from the date of the ``Notice of Omitted Item(s)", file any 
omitted drawing(s)  with an oath or declaration in compliance with 37 CFR 
1.63 and 1.64 referring  to such drawing(s) and a petition under 37 CFR 
1.182 with the petition fee  set forth in 37 CFR 1.17(h), requesting the 
later filing date (37 CFR 1.181(f)). 


        An applicant willing to accept the application as deposited in the 
 PTO need not respond to the ``Notice of Omitted Item(s)," and the failure 
to  file a petition under 37 CFR 1.53(c) or 37 CFR 1.182 with the required 
petition  fee as discussed above within 2 months of the date of the 
``Notice of Omitted  Item(s)" (37 CFR 1.181(f)) will be treated as 
constructive acceptance by applicant  of the application as deposited in 
the PTO.  Amendment of the specification  is required in a nonprovisional 
application to cancel all references to the  omitted drawing, both in the 
brief and detailed descriptions of the drawings  and including any 
reference numerals shown only in the omitted drawings. In  addition, a 
separate letter is required in a nonprovisional application to  renumber 
the drawing figures consecutively (showing the proposed changes in  red 
ink), if necessary, and amendment of the specification is required to 
correct  the references to the drawing figures to correspond with any 
relabelled drawing  figures, both in the brief and detailed descriptions 
of the drawings.  Such  amendment and correction to the drawing figures, 
if necessary, should be by  way of prelim- 

inary amendment submitted prior to the first Office action to avoid delays 
 in the prosecution of the application. 

        The treatment of an application subsequent to the mailing of a 
``Notice  of Omitted Item(s)" is discussed in MPEP # 601.01(d).< 


>601.01(h)  Forms [R-2]< 


        The following forms used by Application Branch to notify 
applicants  of defects are reproduced on the following pages.  "Notice to 
File Missing  Parts of Application - Filing Date Granted" Form PTO-1533; 
"Notice to File  Missing Parts of Application - No Filing Date," Form 
PTO-1532; "Notice of Informal  Application" Form PTO-152; "Notice of 
Incomplete Application," Form PTO-1123;  and "Notice of Incomplete 
Application Filed Pursuant to 37 CFR 1.60," Form  PTO-1534; ``Notice to 
File Missing Parts of Application Filed Under 37 CFR  1.60 Filing Date 
Granted'' Form PTO-1607; ``Notice to File Missing Parts of  Application 
Filed Under 37 CFR 1.60, No Filing Date," >Form< PTO-1608; ``Notice  of 
Improper FWC Filing under 37 CFR 1.62, No Filing Date Granted,'' >Form< 
PTO-457 >; ``Notice of Omitted Item(s)," Form PTO-1669; "Notice of Omitted 
 Item(s) in a Provisional Application Filed Under 37 CFR 1.53(b)(2)," Form 
PTO-1672.< 


A60101h01.bmp 



A60101h01.end 



A60101h02.bmp 



A60101h02.end 



A60101003.bmp 



A60101003.end 



A601010A3.bmp 



A601010A3.end 



A601010B3.bmp 



A601010B3.end 



A601010C3.bmp 



A601010C3.end 



A601010D3.bmp 



A601010D3.end 



A601010E3.bmp 



A601010E3.end 



A601010F3.bmp 



A601010F3.end 



A601010G3.bmp 



A601010G3.end 




601.02      Power of Attorney or Authorization of Agent 


        The attorney's or agent's full post office address (including ZIP 
code  number) must be given in every power of attorney or authority of 
agent. The  telephone number of the attorney or agent should also be 
included in the power. The prompt delivery of communications will thereby 
be facilitated. 
        Usually a power of attorney or authorization of agent is 
incorporated  in the oath or declaration form. (See MPEP # 402.) 


601.03      Change of Correspondence Address [R-1] 


        Where an attorney or agent of record (or applicant, if he or she 
is  prosecuting the application pro se) changes his or her correspondence 
address,  he or she is responsible for promptly notifying the Patent and 
Trademark Office  of the new correspondence address (including ZIP Code 
number).The notification  should also include his or her telephone number. 

        A separate notification must be filed in each application for 
which  a person is intended to receive communications from the Office. In 
those instances  where a change in the correspondence address of a 
registered attorney or agent  is necessary in a plurality of applications, 
the notification filed in each  application may be a reproduction of a 
properly executed, original notification.  The original notice * >may< 
either be sent to the Office of Enrollment and  Discipline as notification 
to the Attorney's Roster of the change of address,  or * >may<  be filed 
in one of the applications affected, provided that the  notice includes an 
authorization for the public to inspect and copy the original  notice in 
the event one of the applications containing a copy matures into  a patent 
and the application containing the original paper is either pending  or 
has become abandoned. >Alternatively, the paper containing the original 
signature may be retained by applicant. See MPEP # 502.02.< The copies 
submitted  in each affected application must identify where the original 
paper is located. 
        See MPEP # 711.03(c) for treatment of petitions to revive 
applications  abandoned as a consequence of failure to timely receive an 
Office action addressed  to the old correspondence address. 

        The required notification of change of correspondence address need 
 take no particular form. However, it should be provided in a manner 
calling  attention to the fact that a change of address is being made. 
Thus, the mere  inclusion, in a paper being filed for another purpose, of 
an address which  is different from the previously provided correspondence 
address, without mention  of the fact that an address change is being made 
would not ordinarily be recognized  or deemed as instructions to change 
the correspondence address on the file  record. 

        The obligation (see 37 CFR 10.11) of a registered attorney or 
agent  to notify the Attorney's Roster by letter of any change of his or 
her address  for entry on the register is separate from the obligation to 
file a notice  of change of address filed in individual applications. See 
MPEP # 402. 

601.04      National Stage Requirements of the United States as a 
Designated Office [R-1] 

        See MPEP Chapter 1800, especially MPEP 
# ** >1893.01< for requirements for entry into the national stage before 
the  Designated Office or Elected Office under the Patent Cooperation 
Treaty (PCT). 

602   Original Oath or Declaration [R-1] 


35 U.S.C. 25.     Declaration in lieu of oath. 

        (a)     The Commissioner may by rule prescribe that any document 
to  be filed in the Patent and Trademark Office and which is required by 
any law,  rule, or other regulation to be under oath may be subscribed to 
by a written  declaration in such form as the Commissioner may prescribe, 
such declaration  to be in lieu of the oath otherwise required. 

        (b)   Whenever such written declaration is used, the document must 
 warn the declarant that willful false statements and the like are 
punishable  by fine or imprisonment, or both (18 U.S.C. 1001). 

35 U.S.C. 26.     Effect of defective execution. 

        Any document to be filed in the Patent and Trademark Office and 
which  is required by any law, rule, or other regulation to be executed in 
a specified  manner may be provisionally accepted by the Commissioner 
despite a defective  execution, provided a properly executed document  is 
submitted within such  time as may be prescribed. 

35 U.S.C. 115.      Oath of the applicant. 

        The applicant shall make oath that he believes himself to be the 
original  and first inventor of the process, machine, manufacture, or 
composition of  matter, or improvement thereof, for which he solicits a 
patent; and shall state  of what country he is a citizen. Such oath may be 
made before any person within  the United States authorized by law to 
administer oaths, or, when made in a  foreign country, before any 
diplomatic or consular officer of the United States  authorized to 
administer oaths, or before any officer having an official seal and 
authorized to  administer oaths in the foreign country in which the 
applicant may be, whose  authority is proved by certificate of a 
diplomatic or consular officer of the  United States, or apostille of an 
official designated by a foreign country  which, by treaty or convention, 
accords like effect to apostilles of designated  officials in the United 
States. Such oath is valid if it complies with the  laws of the state or 
country where made. When the application is made as provided  in the title 
by a person other than the inventor, the oath may be so varied  in form 
that it can be made by him. 

37 CFR 1.63.    Oath or declaration. 

        ** >(a)       An oath or declaration filed under # 1.51(a)(1)(ii) 
as  a part of a nonprovisional application must: 

        (1)   Be executed in accordance with either # 1.66 or  # 1.68; 
        (2)   Identify the specification to which it is directed; 
        (3)   Identify each inventor and the residence and country of 
citizenship  of each inventor; and 

        (4)   State whether the inventor is a sole or joint inventor of 
the  invention claimed.< 

        (b)   In addition to meeting the requirements of paragraph (a), 
the  oath or declaration must state that the person making the oath or 
declaration, 
        (1)   Has reviewed and understands the contents of the 
specification,  including the claims, as amended by any amendment 
specifically referred to  in the oath or declaration; 

        (2)   Believes the named inventor or inventors to be the original 
and  first inventor or inventors of the subject matter which is claimed 
and for  which a patent is sought; and 

        (3)   Acknowledges the duty to disclose to the Office all 
information  known to the person to be material to patentability as 
defined in 
w 1.56. 

        (c) In addition to meeting the requirements of paragraphs (a) and 
(b)  of this section, the oath or declaration in any application in which 
a claim  for foreign priority is made pursuant to w 1.55 must identify the 
foreign application  for patent or inventor's certificate on which 
priority is claimed, and any  foreign application having a filing date 
before that of the application on  which priority is claimed,  by 
specifying the application number, country,  day, month and year of its 
filing. 

        (d)   In any continuation-in-part application filed under the 
conditions  specified in 35 U.S.C. 120 which discloses and claims subject 
matter in addition  to that disclosed in the prior copending application, 
the oath or declaration  must also state that the person making the oath 
or declaration acknowledges  the duty to disclose to the Office all 
information known to the person to be  material to patentability as 
defined in 
w 1.56, which became available between the filing date of the prior 
application  and the national or PCT international filing date of the 
continuation-in-part  application. 

37 CFR 1.68.    Declaration in lieu of oath. 

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

18 U.S.C. 1001.       Statements or entries generally. 

        Whoever, in any matter within the jurisdiction of any department 
or  agency of the United States knowingly and willfully falsifies, 
conceals, or  covers up by any trick, scheme, or device a material fact, 
or makes any false,  fictitious or fraudulent statements or 
representations, or makes or uses any  false writing or document knowing 
the same to contain any false, fictitious  or fraudulent statement or 
entry, shall be fined not more than $10,000 or imprisoned  not more than 
five years, or both. 

  STATUTORY DECLARATIONS 

        Patent and Trademark Office personnel are authorized to accept a 
statutory  declaration under 28 U.S.C. 1746 filed in the Patent and 
Trademark Office in  lieu of an "oath" or  declaration under 35 U.S.C. 25 
and 37 CFR 1.68, provided  that the statutory declaration otherwise 
complies with the requirements of  law. 

        Section 1746 of Title 28 of the United States Code provides: 
        Whenever, under any law of the United States or under any rule, 
regulation,  order, or requirement made pursuant to  law, any matter is 
required to be supported,  evidenced, established, or proved by sworn 
declaration, verification, certificate,  statement, oath or affidavit, in 
writing of the person making the same (other  than a deposition, or an 
oath of office, or an oath required to be taken before  a specified 
official other than a notary public), such matter may, with like  force 
and effect, be supported, evidenced, established, or proved by the unsworn 
 declaration, certificate, verification, or statement, in writing of such 
person  which is subscribed by him, as true under penalty of perjury, and 
dated, in  substantially the following form: 

        [1]   If executed without the United States: 

         "I declare (or certify, verify, or state) under penalty of 
perjury  under the laws of the United States of America that the foregoing 
is true and  correct. Executed on (date). 

        (Signature)." 

        [2]   If executed within the United States its territories, 
possessions,  or commonwealths: 

        "I declare (or certify, verify, or state) under penalty of perjury 
 that the foregoing is true and correct. Executed on (date). 

        (Signature)." 



        Oaths and declarations submitted in applications filed after May 
1,  1975 must make reference to applications for inventor's certificates 
on which  priority is claimed and any filed prior to the filing date of an 
application  on which priority is claimed. 

        A 37 CFR 1.68 declaration need not be ribboned to the other 
papers,  even if signed in a country foreign to the United States. When a 
declaration  is used, it is unnecessary to appear before any official in 
connection with  the making of the declaration. It must, however, since it 
is an integral part  of the application, be maintained together therewith. 

        By statute, 35 U.S.C. 25, the Commissioner has been empowered to 
prescribe  instances when a written declaration may be accepted in lieu of 
the oath for 
 "any document to be filed in the Patent and Trademark Office". 

        The filing of a written declaration is acceptable in lieu of an 
original  application oath that is informal. 

        If all foreign applications have been filed within 
12 months of the U.S. filing date, applicant is required only to recite 
the  first such foreign application of which priority is claimed, and it 
should  be clear that the foreign application referred to is the first 
filed foreign  application. The applicant is required to recite all 
foreign applications filed  prior to the application on which priority is 
claimed.  It is required to give  the foreign serial number and name of 
the country or office in which filed,  as well as the filing date of the 
first filed foreign application. 
        In the oath, the jurat must be filled out, and the word  "sole" 
or 
 "only"  must appear if there is but one inventor, and  "joint" if two or 
more  inventors. 

        When joint inventors execute separate oaths or declarations, each 
oath  or declaration should make reference to the fact that the affiant is 
a joint  inventor together with each of the other inventors indicating 
them by name.  This may be done by stating that he or she does verily 
believe himself or herself  to be the original, first and joint inventor 
together with  "A or A & B, etc." 
 as the facts may be. 

        A seal is usually impressed on an oath. See MPEP w 604 and w 
604.01 and 37 CFR 1.66.  However, oaths executed in many states  including 
Alabama, Louisiana, Maryland, Massachusetts, New Jersey, New York,  Rhode 
Island, South Carolina, and Virginia need not be impressed with a seal. 
        If a claim is presented for matter not originally claimed or 
embraced  in the original statement of invention in the specification a 
supplemental  oath or declaration is required, 37 CFR 1.67, MPEP  w 603. 

        >A provisional application does not require an oath or declaration 
 to be complete. See 37 CFR 1.51(a)(2).< 

        The following form paragraphs may be used to indicate errors in 
the  oath or declaration. 

W 6.05      Oath or Declaration Defective 

        The oath or declaration is defective. A new oath or declaration in 
 compliance with 37 CFR 1.67(a) identifying this application by 
* >Application< Number and filing date is required. See MPEP 
>##<  602.01 and 602.02. 

        The oath or declaration is defective because: 

Examiner Note: 

        1. One or more of the appropriate paragraphs 6.05.>0<1 to 6.05.17 
must  follow this paragraph. 

        2. If none of the paragraphs apply, then an appropriate 
explanation  of the defect should be given immediately following this 
paragraph. 
W 6.05.>0<4   Sole or Joint Designation Omitted 

        It does not state whether the inventor is a sole or joint inventor 
 of the invention claimed. 

Examiner Note: 

        This paragraph must be preceded by paragraph 6.05. 

W 6.05.>0<5   "Reviewed and Understands" Statement Omitted 

        It does not state that the person making the oath or declaration 
has  reviewed and understands the contents of the specification, including 
claims,  as amended by any amendment specifically referred to in the oath 
or declaration. 
Examiner Note: 

        This paragraph must be preceded by paragraph 6.05. 

W 6.05.>0<6   Original and First Omitted 

        It does not state that the person making the oath or declaration 
believes  the named inventor or inventors to be  the original and first 
inventor or inventors  of the subject matter which is claimed and for 
which a patent is sought. 
Examiner Note: 

        This paragraph must be preceded by paragraph 6.05. 

W 6.05.>0<7   Duty of Disclosure Omitted 

        It does not state that the person making the oath or declaration 
acknowledges  the duty to disclose to the Office all information known to 
the person to be  material to patentability as defined in 37 CFR 1.56. 

Examiner Note: 

        This paragraph must be preceded by paragraph 6.05. 

W 6.05.>0<8   Identification of Foreign Applications Omitted 

        It does not identify the foreign application for patent or 
inventor's  certificate on which priority is claimed pursuant to 37 CFR 
1.55, and any foreign  application having a >filing< date before that of 
the application on which  priority is claimed, by specifying the 
application number, country, day, month  and year of filing. 

Examiner Note: 

        This paragraph must be preceded by paragraph 6.05. 

W 6.05.>0<9   Duty to Disclose in C-I-P Omitted 

        It does not state that the person making the oath or declaration 
in  a continuation-in-part application filed under the conditions 
specified in  35 U.S.C. 120 which discloses and claims subject matter in 
addition to that  disclosed in the prior copending application, 
acknowledges the duty to disclose  to the Office all information known to 
the person to be material to patentability  as defined in 37 CFR 1.56 
which became available between the filing date of  the prior application 
and the national or PCT international filing date of  the 
continuation-in-part application. 


Examiner Note: 

        This paragraph must be preceded by paragraph 6.05. 

W 6.05.15 Not in Permanent Ink 

        The[1] is not in permanent ink, or its equivalent in quality, as 
required  under 37 CFR 1.52(a). 

Examiner Note: 

        1. In bracket 1, insert either signature or oath/declaration. 
        2. This paragraph must be preceded by paragraph 6.05. 

        3. If other portions of the disclosure are not in permanent ink, 
use  paragraph 6.32. 

W 6.05.16 Non-Initialed Alterations 

        Non-initialed alterations have been made to the oath or 
declaration 
(see 37 CFR 1.52(c) and 1.57). 

Examiner Note: 

        This paragraph must be preceded by paragraph 6.05. 

W 6.05.17 Declaration Clause Omitted 

        The clause regarding  "willful false statements ...." required by 
37  CFR 1.68 has been omitted. 

Examiner Note: 

        This paragraph must be preceded by paragraph 6.05. 



A60200004.bmp 



A60200004.end 




602.01      Oath Cannot Be Amended [R-1] 


        The wording of an oath or declaration cannot be amended altered or 
 changed in any manner after it has been signed. If the wording is not 
correct  or if all of the required affirmations have not been made, or if 
it has not  been properly subscribed to, a new oath or declaration must be 
required.  However,  in some cases, a deficiency in the oath or 
declaration can be corrected by  a supplemental paper and a new oath or 
declaration is not necessary. 
        For example, if the oath does not set forth evidence that the 
notary  was acting within his or her jurisdiction at the time he or she 
administered  the oath, a certificate of the notary that the oath was 
taken within his or  her jurisdiction will correct the deficiency. See 
MPEP w 602 and w 604.02. 
        Applicant may be so advised by using Form Paragraph 6.03. 
W 6.03      Oath, Declaration Cannot Be Amended 

        A new oath or declaration is required because [1]. The wording of 
an  oath or declaration cannot be amended. If the wording is not correct 
or if  all of the required affirmations have not been made or if it has 
not been properly  subscribed to, a new oath or declaration is required. 
The new oath or declaration  must properly identify the application of 
which it is to form a part, preferably  by *>application< number and 
filing date in the body of the oath or declaration. 
 See MPEP w 602.01 and w 602.02. 

Examiner Note: 

        1.  This paragraph is intended primarily for use in pro se 
applications. 
        2.  Use Paragraph 6.05 and one or more of paragraphs 6.05.>0< 1 to 
 6.05.17 for a defective oath or declaration in a case where there is a 
power  of attorney. 


602.02      New Oath or Substitute for Original 


        In requiring a new oath or declaration, the examiner should always 
 give the reason for the requirement and call attention to the fact that 
the  application of which it is to form a part must be properly identified 
in the  body of the new oath or declaration, preferably by giving the 
serial number  and the date of filing. 

        Where neither the original oath or declaration, nor the substitute 
 oath or declaration is complete in itself, but the two taken together 
give  all the required data, no further oath or declaration is needed. 


602.03      Defective Oath or Declaration [R-1] 


        In the first Office action the examiner must point out every 
deficiency  in a declaration or oath and require that the same be 
remedied. Applicant may  be informed of deficiencies in the declaration or 
oath by Form Paragraphs 6.05  and 6.05.1 - 6.05.17. 

W 6.05      Oath or Declaration Defective 

        The oath or declaration is defective. A new oath or declaration in 
 compliance with 37 CFR 1.67(a) identifying this application by 
*>application<  number and filing date is required. See MPEP >##< 602.01 
and 602.02. 
        The oath or declaration is defective because: 

Examiner Note: 

        1. One or more of the appropriate paragraphs 6.05.>0<1  to 6.05.17 
 must follow this paragraph. 

        2. If none of the paragraphs apply, than an appropriate 
explanation  of the defect should be given immediately following this 
paragraph. 
        However, when an application is otherwise ready for issue, an 
examiner  with full signatory authority may waive the following minor 
deficiencies: 
        Minor deficiencies in the body of the oath or declaration where 
the  deficiencies are self-evidently cured in the rest of the oath or 
declaration,  as in an oath or declaration of plural inventors couched in 
plural terms except  for use of  "sole inventors"  is asserted; In re 
Searles, 164 USPQ 623. 
        If  the above is waived, the examiner with full signatory 
authority  should write in the margin of the declaration or oath a 
notation such as  "Reference  to the sole inventor rather than joint 
inventors waived; Application ready  for issue." and his or her initials 
and the date. 

        Of course, requirements of the statute; e.g., that the applicant 
state  his or her citizenship or believes himself or herself to be the 
original and  first inventor or that the oath be administered before a 
person authorized  to administer oaths or that a declaration pursuant to 
35 U.S.C. 25 or 28 U.S.C.  1746 contain the language required therein, 
cannot be waived. 

        If the defect cannot be waived, Form Paragraph 6.46 should be used 
 when the application is allowable. 

W 6.46      *>Application< Allowed, Substitute Declaration Needed 
        Applicant is now required to submit a substitute declaration or 
oath  to correct the deficiencies set forth [1]. The substitute oath or 
declaration  must be filed within the THREE MONTH shortened statutory 
period set for response  in the "Notice Of Allowability"  (PTOL-37). 
Extensions of time may be obtained  under the provisions of 37 CFR 
1.136(a). Failure to timely file the substitute  declaration (or oath) 
will result in ABANDONMENT of the application. The transmittal  letter 
accompanying the declaration (or oath) should indicate the following  in 
the upper right hand corner: Issue Batch Number, date of the "Notice of 
Allowance,'' and *>application< number. 

Examiner Note: 

        In the bracket, insert appropriate information, e.g., 



in this communication -or- 

in the Office action mailed _____________ -or- 

in the PTO-152 attached to >Paper No.< _______________ . 


602.04      Foreign Executed Oath 


        An oath executed in a foreign country must be properly 
authenticated.  See MPEP w 604 and 37 CFR 1.66. 

        Where the authority of the foreign officer is not certified, Form 
Paragraphs  6.05 and 6.05.13 may be used. 

W 6.05.13 Authority of Foreign Officer Not Certified 

        It does not include an apostille, a consular certificate, or the 
position  of authority of the officer signing an apostille or consular 
certificate, see  37 CFR 1.66(a). 

Examiner Note: 

        This paragraph must be preceded by paragraph 6.05. 


602.04(a) Foreign Executed Oath Is Ribboned to Other Application Papers 
[R-1] 

37 CFR 1.66. Officers authorized to administer oaths. 

***** 

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

        Where the papers are not properly ribboned, use Form Paragraphs 
6.05  and 6.05.14. 

W 6.05      Oath or Declaration Defective 

        The oath or declaration is defective. A new oath or declaration in 
 compliance with 37 CFR 1.67(a) identifying this application by * 
>Application<  Number and filing date is required. See MPEP 
>##< 602.01 and 602.02. 

        The oath or declaration is defective because: 

Examiner Note: 

        1. One or more of the appropriate paragraphs 6.05.1 to 6.05.17 
must  follow this paragraph. 

        2. If none of the paragraphs apply, then an appropriate 
explanation  of the defect should be given immediately following this 
paragraph. 
W 6.05.14 No Ribbon Properly Attached 

        It does not have a ribbon properly attached. 

Examiner Note: 

        This paragraph must be preceded by paragraph 6.05. 

   U.S. Accession to Hague Convention Abolishing the Requirement of 
Legalization  for Foreign 
Public Documents 

        On Oct. 15, 1981, the Hague ``Convention Abolishing the 
Requirement  of Legalization for Foreign Public Documents" entered into 
force between the  United States and thirty-eight foreign countries that 
are parties to the Convention.  The Convention applies to any document 
submitted to the United States Patent  and Trademark Office for filing or 
recording, which is sworn to or acknowledged  by a notary public in any 
one of the member countries. The Convention abolishes  the certification 
of the authority of the notary public in a member country  by a diplomatic 
or consular officer of the United States and substitutes certification  by 
a special certificate, or apostille, executed by an officer of the member 
country. Accordingly, the Office will accept for filing or recording a 
document  sworn to or  acknowledged before a notary public in a member 
country if the  document bears, or has appended to it, an apostille 
certifying the notary's  authority. The requirement for a diplomatic or 
consular certificate, specified  in 37 CFR 1.66, will not apply to a 
document sworn to or acknowledged before  a notary public in a member 
country if an apostille is used. 

        The member countries that are parties to the Convention are: 
Antigua         Hungary       Panama 

                        & Barbuda 

Argentina Israel        Portugal 

Austria         Italy       Seychelles 

Bahamas         Japan     Spain 

Belgium         Lesotho       Suriname 

Botswana  Liechtenstein       Swaziland 

Brunei      Luxembourg      Switzerland 

Cyprus      Malawi  The Russian 

                        Federation 

Fiji            Malta     Tonga 

Finland       Marshall Islands      Turkey 

France      Mauritius     U.K. of 

                        Great Britain 

                        and 

                        N. Ireland 

Germany       Netherlands United States 

Fed Rep. of 

Greece      Norway  Yugoslavia 

        The Convention prescribes the following form for the apostille: 


E60300005.bmp 

Model of Certificate 

        The certificate will be in the form of a square with sides at 
least  9 centimeters long. 



E60300005.end 

        Note that a declaration in lieu of application oath 
(37 CFR 1.68) need not be ribboned to the other papers.  It must, however, 
 be maintained together therewith. 


602.05      Oath or Declaration - Date of Execution [R-1] 


        **>The Office no longer checks the date of execution of the oath 
or  declaration and the Office will no longer require a newly executed 
oath or  declaration based on an oath or declaration being stale (that is 
when the date  of execution is more than 3 months prior to the filing date 
of the application).  However, applicants are reminded that they have a 
continuing duty of disclosure  under 37 CFR 1.56.< 


602.05(a) Oath or Declaration in Division and Continuation Cases 

        Where the date of filing the application is not the date that 
determines  the statutory 12-month period, as in divisional and 
continuation cases, it  is immaterial, so far as concerns the 
acceptability of the oath or declaration,  how long a time intervenes 
between the execution of the oath or declaration  and the filing of the 
application. 

        When a divisional application is identical with the original 
application  as filed, signing and execution of the oath or declaration in 
the divisional  case may be omitted. (See 37 CFR  1.60 and 1.62, MPEP w 
201.06(a).) 

602.06      Non-English Oath or Declaration 


37 CFR 1.69.    Foreign language oaths and declarations. 

        (a)   Whenever an individual making an oath or declaration cannot 
understand  English, the oath or declaration must be in a language that 
such individual  can understand and shall state that such individual 
understands the content  of any documents to which the oath or declaration 
relates. 

        (b)   Unless the text of any oath or declaration in a language 
other  than English is a form provided or approved by the Patent and 
Trademark Office,  it must be accompanied by a verified English 
translation, except that in the  case of an oath or declaration filed 
under w1.63 the translation may be filed  in the Office no later than two 
months from the date applicant is notified  to file the translation. 



        37 CFR 1.69 requires that oaths and declarations be in a language 
which  is understood by the individual making the oath or declaration; 
i.e., a language  which the individual comprehends. If the individual 
comprehends the English  language, he or she should preferably use it.  If 
the individual cannot comprehend  the English language, any oath or 
declaration must be in a language which the  individual can comprehend. If 
an individual uses a language other than English  for an oath or 
declaration, the oath or declaration must include a statement  that the 
individual understands the content of any documents to which the oath  or 
declaration relates. If the documents are in a language the individual 
cannot  comprehend, the documents may be explained to him or her so that 
he or she  is able to understand them. 

        The Office will accept a single non-English language oath  or 
declaration  where there are joint inventors, of which only some 
understand English but  all understand the non-English language of the 
oath or declaration. 

602.07      Oath or Declaration Filed in United States as a Designated 
Office [R-1] 

        See MPEP # * >1893.01.< 


603   Supplemental Oath or Declaration [R-1] 


37 CFR 1.67.    Supplemental oath or declaration. 

        (a)   A supplemental oath or declaration meeting the requirements 
of  # 1.63 may be required to be filed to correct any deficiencies or 
inaccuracies  present in an earlier filed oath or declaration. 


        ** >(b)       A supplemental oath or declaration meeting the 
requirements  of # 1.63 must be filed when a claim is presented for matter 
originally shown  or described but not substantially embraced in the 
statement of invention or  claims originally presented or when an oath or 
declaration submitted in accordance  with # 1.53(d)(1) after the filing of 
the specification and any required drawings  specifically and improperly 
refers to an amendment which includes new matter. 
 No new matter may be introduced into a nonprovisional application after 
its  filing date even if a supplemental oath or declaration is filed.  In 
proper  cases, the oath or declaration here required may be made on 
information and  belief by an applicant other than inventor.< 

        (c)   A supplemental oath or declaration meeting the requirements 
of  w 1.63 must also be filed if the application was altered after  the 
oath or  declaration was signed or if the oath or declaration was signed: 
(1) In blank; 
(2) Without review thereof by the person making the oath or declaration; 
or 
(3) Without review of the specification, including the claims, as required 
 by # 1.63(b)(1). 

        37 CFR 1.67 requires in the supplemental oath or declaration 
substantially  all the data called for in 37 CFR 1.63 for the original 
oath or declaration.  As to the purpose to be served by the supplemental 
oath or declaration, the  examiner should bear in mind that it cannot be 
availed of to introduce new  matter into an application. 

        >When an inventor who executed the original declaration is 
refusing  or cannot be found to execute a required supplemental 
declaration, it is possible  that the requirement may be suspended or 
waived in accordance with 37 CFR 1.183.< 
        A new oath may be required by using Form Paragraph 6.06. 

W 6.06      New Oath for Subject Matter not Originally Claimed 

        This application presents a claim for subject matter not 
originally  claimed or embraced in the statement of the invention. [1].  A 
supplemental  oath or declaration is required under 37 CFR 1.67. The new 
oath or declaration  must properly identify the application of which 
it is to form a part, preferably by * >application< number and filing date 
in the  body of the oath or declaration. See MPEP >##< 602.01 and 602.02. 

Examiner Note: 

        Explain new claimed matter in bracket 1. The brief summary of the 
invention must be commensurate with the claimed invention and 
may be required to be modified. See MPEP >##< 1302>and< 608.01(d), and 37 
CFR  1.73. 


603.01      Supplemental Oath or Declaration Filed After Allowance 

        Since the decision in Cutter Co. v. Metropolitan Electric Mfg. 
Co.,  275 F. 158 (CA 2 1921), many supplemental oaths and declarations 
covering the  claims in the case have been filed after the case is 
allowed. Such oaths and  declarations may be filed as a matter of right 
and when received they will  be placed in the file by the Office of 
Publications, but their receipt will  not be acknowledged to the party 
filing them. They should not be filed or considered  as amendments under 
37 CFR 1.312, since they make no change in the wording  of the papers on 
file. See MPEP # 714.16. 


604   Administration or Execution of Oath 


37 CFR 1.66.    Officers authorized to administer oaths. 

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

        See MPEP # 602.04(a) for foreign executed oath. 


604.01      Seal [R-1] 


        When the person before whom the oath or affirmation is made in 
this  country is not provided with a seal, his or her official character 
shall be  established by competent evidence, as by a certificate from a 
clerk of a court  of record or other proper officer having a seal, except 
as noted in MPEP #  604.03(a), in which situations no seal is necessary. 
When the issue concerns  the authority of the person administering the 
oath, the examiner should require  proof of authority. Depending on the 
jurisdiction, the  seal  may be either  embossed or rubber stamped. The 
latter should not be confused with a stamped  legend indicating only the 
date of expiration of the notary's commission. 
        See also MPEP # 602.04(a) on foreign executed oath and seal.  In 
some  jurisdictions, the seal of the notary is not required but the 
official title  of the officer must be on the oath. This applies to 
Alabama, California (certain  notaries), Louisiana, Maryland, 
Massachusetts, New Jersey, New York, Ohio,  Puerto Rico, Rhode Island, 
South Carolina, and Virginia. 


W 6.05      Oath or Declaration Defective 

        The oath or declaration is defective. A new oath or declaration in 
 compliance with 37 CFR 1.67(a) identifying this application by its * 
>application<  number and filing date is required. See MPEP >##< 602.01 
and  602.02. 

        The oath or declaration is defective because: 

Examiner Note: 

        1. One or more of the appropriate paragraphs 6.05.>0<1 to 6.05.17 
must  follow this paragraph. 

        2. If none of the paragraphs apply, then an appropriate 
explanation  of the defect should be given immediately following this 
paragraph. 
W 6.05.11 Notary Signature 

        It does not include the notary's signature, or the notary's 
signature  is in the wrong place. 

Examiner Note: 

        This paragraph must be preceded by paragraph 6.05. 

W 6.05.12 Notary Seal and Venue Omitted 

        It does not include the notary's seal and venue. 

Examiner Note: 

        This paragraph must be preceded by paragraph 6.05. 


604.02      Venue [R-2] 


        That portion of an oath or affidavit indicating where the oath is 
taken  is known as the venue. Where the county and state in the venue 
agree with the  county and state in the seal, no problem arises.  If the 
venue and seal do  not correspond in county and state, the jurisdiction of 
the notary must be  determined from statements by the notary appearing on 
the oath ** .  Venue  and notary jurisdiction must correspond or the oath 
is improper.  The oath  should show on its face that it was taken within 
the jurisdiction of the certifying  officer or notary. This may be given 
either in the venue or in the body of  the jurat.  Otherwise, a new oath 
or declaration, or a certificate of the notary  that the oath was taken 
within his or her jurisdiction, must be required, Ex  parte Delavoye, 1906 
C.D. 320; 124 O.G. 626; Ex parte Irwin, 1928 C.D. 13;  367 O.G. 701. 

        Form Paragraph 6.07 may be used where the venue is not shown. 
W 6.07      Lack of Venue 

        The oath lacks the statement of venue. Applicant is required to 
furnish  either a new oath or declaration in proper form, identifying the 
application  by application number and filing date, or a certificate by 
the officer before  whom the original oath was taken stating that the oath 
was executed within  the jurisdiction of the officer before whom the oath 
was taken when the oath  was administered. The new oath or declaration 
must properly identify the application  of which it is to form a part, 
preferably by application number and filing  date in the body of the oath 
or declaration. See MPEP # 602.01 and # 602.02. 
        Where the seal and venue differ the appropriate statement on the 
"Notice  of Informal Patent Application"  form PTO-152 should be checked. 

** 


604.03(a) Notarial Powers of Some Military Officers 


  Public Law 506 (81st Congress, Second Session) Article 136: (a) The 
following  persons on active duty in the armed forces . . . shall have the 
general powers  of a notary public and  of a consul of the United States, 
in the performance  of all notarial acts to be executed by members of any 
of the armed forces,  wherever they may be, and by other persons subject 
to this code [Uniform Code  of Military Justice] outside the continental 
limits of the United States: 
        (2)   All law specialists; 

        (3)   All summary courts-martial; 

        (4)   All adjutants, assistant adjutants, acting adjutants, and 
personnel  adjutants; 

        (5)   All commanding officers of the Navy and Coast Guard; 
        (6)   All staff judge advocates and legal officers, and acting or 
assistant  staff judge advocates and legal officers; and 

        (7)   All other persons designated by regulations of the armed 
forces  or by statute. 

        (8)   The signature without seal of any such person acting as 
notary,  together with the title of his office, shall be prima facie 
evidence of his  authority. 


604.04      Consul 


        On Oct. 15, 1981, the  "Hague Convention Abolishing the 
Requirement  of Legalization for Foreign Public Documents" entered into 
force between the  United States and 28 foreign countries that are parties 
to the Convention.  See MPEP # 604.04(a). 

        When the oath is made in a foreign country not a member of the 
Hague  Convention Abolishing the Requirement of Legalization for Foreign 
Public Documents,  the authority of any officer other than a diplomatic or 
consular officer of  the United States authorized to administer oaths must 
be proved by certificate  of a diplomatic or consular officer of the 
United  States. See 37 CFR 1.66,  MPEP # 604. This proof may be through an 
intermediary; e.g., the consul may  certify as to the authority and 
jurisdiction of another official who, in turn, may certify as to the 
authority and jurisdiction of the  officer before whom the oath is taken. 


604.04(a) Consul - Omission of Certificate [R-2] 


        Where the oath is taken before an officer in a foreign country 
other  than a diplomatic or consular officer of the United States and 
whose authority  is not authenticated or accompanied with an apostille 
certifying the notary's  authority (see MPEP # 602.04(a)), the application 
is nevertheless accepted  for purposes of examination. The examiner, in 
the first Office action, should  note this informality and require 
authentication of the oath by an appropriate  diplomatic or consular 
officer, the filing of proper apostille, or a declaration 
(37 CFR 1.68). 

        Form Paragraph 6.08 may be used to notify applicant. 

W 6.08      Consul-Omission of Certificate 

        The oath is objected to as being informal. It lacks authentication 
 by a diplomatic or consular officer of the United States; 37 CFR 1.66(a). 
This  informality can be overcome either by forwarding the original oath 
to the appropriate  officer for authentication or by filing a declaration 
 (37 CFR 1.68), if applicant wishes to preserve the original filing date. 
If authentication is desired, applicant should request return of the oath 
for this purpose. Such request must be accompanied by an order for a copy 
of the oath to be retained in the file until the properly authenticated 
oath is returned. After the oath has  been authenticated, 
 it should be returned promptly to the Patent and Trademark Office. ** See 
MPEP ## 602.01 and 602.02. 

        At the time of the next Office action, the request for return of 
the  oath, together with the application file and the copy of the oath, is 
submitted  to the Group Director.  If the request is approved by the Group 
Director, the  oath will be returned to the applicant by the examining 
group.  A copy of the  original oath will be retained in the file. 


604.06      By Attorney in Case 


        The language of 37 CFR 1.66 and 35 U.S.C. 115 is such that an 
attorney  in the case is not barred from administering the oath as notary. 
The Office  presumes that an attorney acting as notary  is cognizant of 
the extent of his  or her  authority and jurisdiction and will not 
knowingly jeopardize his or  her client's rights by performing an illegal 
act.  If such practice is permissible  under the law of the jurisdiction 
where the oath is administered, then the  oath is a valid oath. 

        The law of the District of Columbia prohibits the administering of 
 oaths by the attorney in the case.  If the oath is known to be void 
because  of being administered by the attorney in a jurisdiction where the 
law holds  this to be invalid, the proper action is to require a new oath 
or declaration  and refer the file to the  Office of Enrollment and 
Discipline. (Riegger v.  Beierl, 1910 C.D. 12; 150 O.G. 826).   See 37 CFR 
1.66 and MPEP # 604. 

605   Applicant [R-1] 


37 CFR 1.41.    Applicant for patent. 

        (a) A patent must be applied for in the name of the actual 
inventor  or inventors. Full names must be stated, including the family 
name and at least  one given name without abbreviation together with any 
other given name or initial. 
        (b) Unless the contrary is indicated the word  "applicant"  when 
used  in these sections refers to the inventor or joint inventors who are 
applying  for a patent, or to the person mentioned in ww 1.42, 1.43, or 
1.47 who is applying  for a patent in place of the inventor. 

  (c) Any person authorized by the applicant may file an application for 
patent  on behalf of the inventor or inventors, but an oath or declaration 
for the  application (w 1.63) can only be made in accordance with w 1.64. 

  (d) A showing may be required from the person filing the application 
that  the filing was authorized where such authorization comes into 
question. 
37 CFR 1.45.     Joint inventors. 

        (a) Joint inventors must apply for a patent jointly and each must 
make  the required oath or declaration; neither of them alone, nor less 
than the  entire number, can apply for a patent for an invention invented 
by them jointly,  except as provided in # 1.47. 

        (b) Inventors may apply for a patent jointly even though 

        (2) Each inventor did not make the same type or amount of 
contribution,  or 

        (3) Each inventor did not make a contribution to the subject 
matter  of every claim of the application. 

        * >(c)      If multiple inventors are named in a nonprovisional 
application,  each named inventor must have made a contribution, 
individually or jointly,  to the subject matter of at least one claim of 
the application and the application  will be considered to be a joint 
application under 35 U.S.C. 116. If multiple  inventors are named in a 
provisional application, each named inventor must  have made a 
contribution, individually or jointly, to the subject matter disclosed  in 
the provisional application and the provisional application will be 
considered  to be a joint application under 35 U.S.C. 116.< 

        The rules (37 CFR 1.41(a) and 1.53(b)) clearly require that the 
name(s)  of the inventor(s) be identified in the application papers in 
order to accord  the application a filing date. Therefore, particular care 
should be exercised  when filing an application without an executed oath 
or declaration to ensure  that the names of all inventors are identified 
somewhere in the application. *>In a nonprovisional application,<  good 
practice is to submit an oath or declaration form (whether signed or 
unsigned)  identifying the names of all inventors in every application 
being filed. 
        >An error in inventorship does not raise a filing date issue, 
unless  no inventors is named or the application is originally filed under 
37 CFR 1.53(b)  with "et al." as part of the inventive entity (e.g., Jones 
et al.).<   If all  of the inventors are not named in the application 
papers; e.g., Jones et al.,  a "Notice of Incomplete Application" will be 
mailed to the applicant(s) indicating  that no filing date has been 
granted and setting a period for submitting all  of the names. The filing 
date will be the date of receipt of the names of all  the inventors unless 
a petition is filed which sets forth the reasons the delay  in supplying 
the names should be excused. 

        For correction of inventorship, see MPEP # 201.03. 

37 CFR 1.46.    Assigned inventions and patents. 

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

        This section concerns filing by the actual inventor. If the 
application  is filed by another, see MPEP # 409.03. 

  NOTE 

        Assignments of application by inventor, see MPEP 
# 301. Inventor dead or insane, see MPEP # 409. 


605.01      Applicant's Citizenship [R-1] 


        The statute (35 U.S.C. 115) requires an applicant >, in a 
nonprovisional  application< to state his or her citizenship.  Where an 
applicant is not a  citizen of any country, a statement to this effect is 
accepted as satisfying  the statutory requirement, but a statement as to 
citizenship applied for or  first papers taken out looking to future 
citizenship in this (or any other)  country does not meet the requirement. 

        Form Paragraphs 6.05 and 6.05.>0<3 may be used to notify applicant 
 that the applicant's citizenship is omitted. 

W 6.05      Oath or Declaration Defective 

        The oath or declaration is defective. A new oath or declaration in 
 compliance with 37 CFR 1.67(a) identifying this application by * 
>application<  number and filing date is required. See MPEP >##< 602.01 
and 602.02. 
        The oath or declaration is defective because: 

Examiner Note: 

        1. One or more of the appropriate paragraphs 6.05.>0<1 to 6.05.17 
must  follow this paragraph. 

        2. If none of the paragraphs apply, then an appropriate 
explanation  of the defect should be given immediately following this 
paragraph. 
W 6.05.>0<3   Citizenship Omitted 

        It does not identify the citizenship of each inventor. 

Examiner Note: 

        This paragraph must be preceded by paragraph 6.05. 


605.02      Applicant's Residence [R-2] 


        Applicant's place of residence, that is, the city and either state 
 or foreign country, is required to be included in the oath or declaration 
in  a nonprovisional application,  for compliance with 37 CFR 1.63.  In 
the case  of an applicant who is in one of the U.S. Armed Services, a 
statement to that  effect is sufficient as to residence. For change of 
residence, see MPEP # 717.02(b). 
 Applicant's residence must be included on the cover sheet for a 
provisional  application. 

        If the residence is not included in the oath or declaration as 
filed,  the Application Branch will normally so indicate on a form 
PTO-152, "Notice  of Informal Patent Application," so as to require a new 
declaration when the  form is sent out with an Office action.  If the 
examiner notes that the residence  has not been included in the oath or 
declaration, Form Paragraph 6.05.02 should  be used to notify the 
applicant if no post office address has been supplied  in the declaration. 

W 6.05.02 Residence Omitted 

        It does not identify the city and >either< state or foreign 
country  of residence of each inventor. 

Examiner Note: 

        1.  This paragraph must be preceded by paragraph 6.09. 

        2.  If the post office address appears in the declaration.  DO NOT 
 use this paragraph; use paragraph 6.09. 

        If the post office address has been provided somewhere in the 
application  papers, but no residence is included, Form Paragraph 6.09 
should be used. 
W 6.09      Residence Omitted from Declaration 

        Applicant's residence has been omitted from the declaration. The 
city and either state or foreign * >country< of applicant's post office 
address provided in the declaration will be presumed to be 
the city and either state or foreign >country< of  residence. If the above 
is incorrect, applicant should submit a statement as to place of residence 
no later than at the time of payment of the issue fee. 

Examiner Note: 

        1.  If both the post office address and residence are incomplete, 
 not uniform or omitted, use  paragraphs 6.05 and 6.05.02. 

        2.  Paragraph 6.09.01 should be used to notify applicant if only 
the post office address is incomplete or omitted. 


605.03      Applicant's Post Office Address [R-1] 


        Each applicant's post office address >, in a nonprovisional 
application,<  must be supplied on the oath or declaration, 37 CFR 
1.33(a), if not stated  elsewhere in the application. Applicant's post 
office address means that address  at which he or she customarily receives 
his or her mail. Either applicant's  home or business address is 
acceptable as the post office address. The post  office address should 
include the ZIP Code designation. 

        When a township is listed in the applicant's address, a county 
name  must also be given. 

        The object of requiring each applicant's post office address is to 
 enable the Office to communicate directly with the applicant if desired; 
hence,  the address of the attorney with instruction to send 
communications to applicant  in care of the attorney is not sufficient. 

        In  situations where an inventor does not execute the oath or 
declaration  and the inventor is not deceased, such as in an application 
filed under 37  CFR 1.47, the inventor's most recent home address must be 
given to enable the  Office to communicate directly with the inventor as 
necessary. 

        Where having given complete data as to residence, the applicant 
identifies  his or her post office address only by street and number, it 
is assumed that  the city and either state or foreign country of residence 
are the city and 
state of his or her post office address and no requirement for submission 
of  the post office address will be made. 

        The "Notice of Informal Patent Application" attachment form 
PTO-152  or Form Paragraph 6.09.01 is used to notify applicant that the 
post office  address is incomplete or omitted.  Note 37 CFR 1.33(a). 

W 6.09.>0<1   Post Office Address Omitted 

        Applicant has not given a post office address anywhere in the 
application  papers as required by 37 CFR 1.33(a).  A statement over 
applicant's signature  providing a complete post office address is required. 

>Examiner Note: 

        If both the post office address and residence are incomplete, not 
uniform  or omitted, use form paragraphs 6.05 and 6.05.02< 


605.04(a) Applicant's Signature and Name [R-1] 


37 CFR 1.64.    Person making oath or declaration. 

        (a)   The oath or declaration must be made by all of the actual 
inventors  except as provided for in ww 1.42, 1.43, or 1.47. 

        (b)   If the person making the oath or declaration is not the 
inventor 
 (ww 1.42, 1.43, or 1.47), the oath or declaration shall state the 
relationship  of the person to the inventor and, upon information and 
belief, the facts which  the inventor is required to state. 

  EXECUTION OF OATHS OR DECLARATIONS OF  PATENT APPLICATIONS 

        United States patent applications which have not been  prepared 
and  executed in accordance with the requirements of Title 35 of the 
United States  Code and Title 37 of the Code of Federal Regulations may be 
abandoned.  Although  the statute and the rules have been in existence for 
many years, the Office  continues to receive a number of applications 
which have been improperly executed  and/or filed. Since the improper 
execution and/or filing of patent applications  can ultimately result in a 
loss of rights, it is appropriate to emphasize the  importance of proper 
execution and filing. 

        It is improper for an applicant to sign an oath or declaration 
which  is not attached to or does not identify a specification and/or 
claims. 
        Attached does not necessarily mean that all the papers must be 
literally  fastened. It is sufficient that the specification, including 
the claims, and  the oath or declaration are physically located together 
at the time of execution.  Physical connection is not required. >Copies 
of declarations are accepted.  See MPEP # 502.01 and 
# 502.02.< 

        The provisions of 35 U.S.C. 363 for filing an international 
application  under the Patent Cooperation Treaty (PCT) which designates 
the United States  and thereby has the effect of a regularly filed United 
States national application, except as provided in 35 U.S.C. 102(e), are 
somewhat different  than the provisions of 35 U.S.C. 111.  The oath or 
declaration requirements  for an international application before the 
Patent and Trademark Office are  set forth in 35 U.S.C. 371(c)(4) and 37 
CFR 1.497. 

        37 CFR 1.52(c) states that "(any interlineation, erasure, 
cancellation  or other alteration of the application papers filed should 
be made before the  signing of any accompanying oath or declaration 
pursuant to # 1.63 referring  to those application papers and should be 
dated and initialed or signed by  the applicant on the same sheet of 
paper. Application papers containing alterations made after the signing of 
 an oath or declaration referring to those application papers must be 
supported  by a supplemental oath or declaration under w 1.67(c)." 

        In summary, it is emphasized that the application filed must be 
the  application executed by the applicant and it is improper for anyone, 
including  counsel, to alter, rewrite, or partly fill in any part of the 
application,  including the oath or declaration, after execution of the 
oath or declaration  by the applicant. This provision should particularly 
be brought to the attention  of foreign applicants by their United States 
counsel since the United States  law and practice in this area may differ 
from that in other countries. 
        Any changes made in ink in the application or oath prior to 
signing  should be initialed and dated by the applicants prior to 
execution of the oath  or declaration.  The Office will not consider 
whether non-initialed and/or  nondated alterations were made before or 
after signing of the oath or declaration  but will require a new oath or 
declaration. Form Paragraph 6.02.>0<1 may be  used to call non-initialed 
and/or non-dated alterations to applicant's attention. 
W 6.02.>0<1   Non-Initialed and/or Non-Dated Alterations in Application 
Papers 
        The application is objected to because of alterations which have 
not been initialed and/or dated as required by 37 CFR 1.52(c).  A prop- 
erly executed oath or declaration which complies with 37 CFR 
1.67(a) and identifies the application by *>application< number and filing 
date is required. 

        The signing and execution by the applicant of oaths or 
declarations  in certain applications may be omitted, MPEP # 201.06 and # 
201.07. 
        NOTE: For  the signature on a response, see MPEP 
# 714.01 (a) to (e). 


605.04(b) One Full Given Name Required [R-1] 


        All applications which disclose the full first and last names with 
 middle initial or name, if any, of the applicant at any place in the 
application  papers will be received and considered as a sufficient 
compliance with 37 CFR 1.41. 

        When a full given name of the applicant does not ap-pear either in 
 the signature or elsewhere in the papers the examiner will, in the first 
Office  action, require an amendment over applicant's signature supplying 
the omission,  and will not pass the application to issue until the 
omission has been supplied  unless a statement has been filed over the 
applicant's own signature setting  forth that his or her name as signed 
contains at least one given name without  abbreviation or what is in fact 
his or her full given name. 

        No affidavit should be required. 

        The requirement should be made only when all of the given names in 
 the signature, or elsewhere in the papers, appear as mere initials or as 
what  can be only an abbreviation of a name. 

        Form Paragraph 6.10 may be used. 

W 6.10      Full Given Name Does Not Appear 

        It appears that at least one full given name of applicant [1] is 
not present either in the signature or elsewhere in the papers. 
This application will not be passed to issue until the omitted name has 
been supplied or unless a statement has been supplied over 
the applicant's signature setting forth that the name as signed 
is the actual full name of applicant [2].  See MPEP >#< 605.04. 

        One given name without abbreviation, together with any other given 
 name or initial, must appear somewhere in the papers as filed. Otherwise, 
appropriate  amendment is required. For example, if the applicant's full 
name is "John Paul  Doe," either  "John P. Doe"  or  "J. Paul Doe"  is 
acceptable. 

        In an application where the name is typewritten with a middle name 
 or initial, but the signature is without such middle name or initial, the 
typewritten  version of the name will be used.  A request to have the name 
changed to the  signed version or any other corrections in the name of the 
inventor(s) will  not be entertained, unless accompanied by a petition 
under 37 CFR 1.182 together  with an appropriate petition fee. The 
petition should be directed to the attention  of the Office of the 
Assistant Commissioner for Patents. Upon granting of the  petition, the 
file should be sent to the Application Branch for correction  of its 
records. If the application is assigned, it will be forwarded by the 
Application Branch  to the Assignment Branch for a change in the 
Assignment  record. 


605.04(c) Inventor Changes Name 


        In cases where an inventor's name has been changed after the 
application  has been filed and the inventor desires to change his or her 
name on the application,  he or she must submit a petition under 37 CFR 
1.182.  The petition should be  directed to the attention of the Office of 
the Assistant Commissioner for Patents.  The petition must include an 
appropriate petition fee and an affidavit signed  with both names and 
setting forth the procedure whereby the change of name was effected, or a 
certified copy of the court order. 
        If the petition is granted, the file should be sent to the 
Application  Processing Division for change of name on the file wrapper 
and in the PALM  data base. If the ap- 


plication is assigned, it will be forwarded by the Application Branch to 
the  Assignment Branch for a change in the assignment record. 


605.04(d) Applicant Unable to Write 


        If the applicant is unable to write, his or her mark as affixed to 
 the oath or declaration must be attested to by a witness.  In  the case 
of  the oath, the notary's signature to the jurat is sufficient to 
authenticate  the mark. 


605.04(e) May Use Title With Signature 


        It is permissible for an applicant to use a title of nobility or 
other  title, such as ``Dr'', in connection with his signature. The title 
will not  appear in the printed patent. 


605.04(f) Signature on Joint Applications - Order of Names 


        The order of names of joint patentees in the heading of the patent 
 is taken from the order in which the typewritten names appear in the 
original  oath or declaration.  Care should therefore be exercised in 
selecting the preferred  order of the typewritten names of the joint 
inventors, before filing, as requests  for subsequent shifting of the 
names would entail changing numerous records  in the Office. Since the 
particular order in which the names appear is of no  consequence insofar 
as the legal rights of the joint applicants are concerned,  no changes 
will be made except when a petition under 37 CFR 1.182 is granted.  The 
petition should be directed to the attention of the Office of the 
Assistant  Commissioner for Patents. The petition to change the order of 
names must be  signed by either the attorney or agent of record or all the 
applicants. It  is suggested that all typewritten and signed names 
appearing in the application  papers should be in the same order as the 
typewritten names in the oath or  declaration. 

        In those instances where the joint applicants file separate oaths 
or  declarations, the order of names is taken from the order in which the 
several  oaths or declarations appear in the application papers unless a 
different order  is requested at the time of filing. 


605.04(g) Correction of Inventorship 


        When a petition is granted approving a correction or a change in 
the  order of the names of the inventors, or inventors are added or 
deleted under  37 CFR 1.48, the change should be noted in red ink in the 
left margin of the  original oath or declaration. The notation should read 
"See Paper No. ____  for inventorship changes."  The file should be sent 
to the Application Processing Division for correction on the file wrapper 
label and the PALM data base regarding  the inventorship. A brief 
explanation on an "Application Branch Data Base Routing  Slip" (available 
from the examining group clerical staff) should accompany  the application 
file to the Application Branch. 


605.05      Administrator, Executor, or Other Legal Representative 

        In an application filed by a legal representative of the inventor, 
 the specification should not be written in the first person. 

        For prosecution by administrator or executor, see MPEP # 
409.01(a). 
        For   prosecution  by  heirs,  see  MPEP # 409.01(a)  and # 
409.01(d). 
        For prosecution by representative of legally incapacitated 
inventor,  see MPEP # 409.02. 

        For  prosecution  by  other  than  inventor,  see  MPEP # 409.03. 

605.07      Joint Inventors [R-2] 


35 U.S.C. 116       Inventors 

        When an invention is made by two or more persons jointly, they 
shall apply for patent jointly and each make the required 
oath, except as otherwise provided in this title.  Inventors may apply for 
a patent jointly even though (1) they did not physically work 
together or at the same time, (2) each did not make the same type or 
amount of  contribution, or (3) each did not make a contribution to the 
subject matter of every claim of the patent. 

        35 U.S.C. 116, as amended by Public Law 98-622, recognizes the 
realities  of modern team research.  A research project may include many 
inventions. Some  inventions may have contributions made by individuals 
who are not involved  in other, related inventions. 

        35 U.S.C. 116 allows inventors to apply for a patent jointly even 
though 
        (i)   they did not physically work together or at the same time, 
        (ii)    each did not make the same type or amount of contribution, 
 or 

        (iii)     each did not make a contribution to the subject matter 
of  every claim of the patent. Items (i) and (ii) adopt the rationale 
stated in  decisions such as Monsanto 

Co. v. Kamp, 269 F. Supp. 818, 154 USPQ 259 (D.D.C. 1967). 

        Item (iii) adopts the rationale of cases such as SAB Industrie AB 
v.  Bendix Corp., 199 USPQ 95 (E.D. Va. 1978). 

        With regard to item (i), see Kimberly-Clark Corp. v. Procter & 
Gamble  Distributing Co. Inc., 972 F.2d 911, 
23 USPQ2d 1921 (Fed. Cir. 1992) (Some quantum of collaboration or 
connection  is required in order for persons to be "joint" inventors under 
35 U.S.C. 116,  and thus individuals who are completely ignorant of what 
each other has done  until years after their individual independent 
efforts cannot be considered  joint inventors). 

        Like other patent applications, jointly filed applications are 
subject  to the requirements of 35 U.S.C. 121 that an application be 
directed to only  a single invention.  If more than one invention is 
included in the application,  the examiner may require the application to 
be restricted to one of the inventions.  In such a case, a  "divisional" 
application complying with 35 U.S.C. 120 would  be entitled to the benefit 
of the earlier filing date of the original application. 
        It is possible that different claims of an application or patent 
may  have different dates of inventions even 
though the patent covers only one independent and distinct invention 
within  the meaning of 35 U.S.C. 121.  When necessary, the Patent and 
Trademark Office  or a court may inquire of the patent applicant or owner 
concerning the inventors  and the invention dates for the subject matter 
of the various claims. 
Guidelines 

37 CFR 1.45.    Joint inventors. 

***** 

        (b)   Inventors may apply for a patent jointly even though 
        (1)   They did not physically work together or at the same time, 
        (2)   Each inventor did not make the same type or amount of 
contribution,  or 

        (3)   Each inventor did not make a contribution to the subject 
matter  of every claim of the application. 

        (c)   If multiple inventors are named in a nonprovisional appli- 
cation, each named inventor must have made a contribution, individ- ually 
or jointly, to the subject matter of at least one claim of the application 
 and the application will be considered to be a joint application under 35 
U.S.C.  116.  If multiple inventors are named 
in a provisional application, each named inventor must have made 
a contribution, individually or jointly, to the subject matter disclosed 
in the provisional application and the provisional application will be 
considered to be a joint application under 35 U.S.C. 116. 

        Since provisional applications may be filed without claims, 37 CFR 
 1.45(c) states that each inventor named in a joint provisional 
application  must have made a contribution to the subject matter disclosed 
in the application. 
        The significant features resulting from the amendments to 35 
U.S.C.  116 by Public Law 98-622 are the following: 

        (1)   The joint inventors do not have to separately  "sign the 
application," 
 but only need apply for the patent jointly and make the required oath by 
signing  the same; this is a clarification, but not a change in current 
practice. 
        (2)   Inventors may apply for a patent jointly even though "they 
did  not work together or at the same time," thereby clarifying (a) that 
it is not  necessary that the inventors physically work together on a 
project, and (b)  that one inventor may "take a step at one time, the 
other an approach at different  times." (Monsanto Co. v. Kamp, 269 F. 
Supp. 818, 154 USPQ 259 (D.D.C. 1967)). 
        (3)   Inventors may apply for a patent jointly even though  "each 
did  not make the same type or amount of contribution,"  thereby 
clarifying the  "fact that each of the inventors play a different role and 
that the contribution  of one may not be as great as that of another does 
not detract from the fact  that the invention is joint, if each makes some 
original contribution, though  partial, to the final solution of the 
problem." Monsanto Co. v. Kamp supra. 
        (4)   Inventors may apply for a patent jointly even though  "each 
did  not make a contribution to the subject matter of every claim of the 
patent." 

        (5)   Inventors may apply for a patent jointly as long as each 
inventor  made a contribution; i.e., was an inventor or joint inventor, of 
the subject  matter of at least one claim of the patent; there is no 
requirement that all  the inventors be joint inventors of the subject 
matter of any one claim. 
        (6)   If an application by joint inventors includes more than one 
independent  and distinct invention, restriction may be required with the 
possible result  of a necessity to change the inventorship named in the 
application if the elected invention was not the invention of all the 
originally  named inventors. 

        (7)   The amendment to 35 U.S.C. 116 increases the likelihood that 
 different claims of an application or patent may have different dates of 
invention;  when necessary the Office or court may inquire of the patent 
applicant or owner  concerning the inventors and the invention dates for 
the subject matter of  the various claims. 

        ** 

        Pending nonprovisional applications will be permitted to be 
amended  by complying with 37 CFR 1.48 to add claims to inventions by 
inventors not  named when the application was filed as long as such 
inventions were disclosed  in the application as filed since 37 CFR 1.48 
permits correction of inventorship  where the "correct inventor or 
inventors are not named in an application for  patent through error 
without any deceptive intention on the part of the actual  inventor or 
inventors."  This is specially covered in 37 CFR 1.48(c). 
        Under 35 U.S.C. 116, an examiner may reject claims under 35 U.S.C. 
 102(f) only in circumstances where a named inventor is not the inventor 
of  at least one claim in the application; no rejection under 35 U.S.C. 
102(f)  is appropriate if a named inventor made a contribution to the 
invention defined  in any claim of the application. 

        Under 35 U.S.C. 116, considered in conjunction with 
35 U.S.C. 103>(c)< ** a rejection may be appropriate under 35 U.S.C. 
102(f)/103  where the subject matter; i.e., prior art, and the claimed 
invention was not  owned by, or subject to an obligation of assignment to, 
the same person at  the time the invention was made. 

        Applicants are responsible for correcting, and are required to 
correct,  the inventorship in compliance with 
37 CFR 1.48 when the application is amended to change the claims so that 
one 
(or more) of the named inventors is no longer an inventor of the subject 
matter  of a claim remaining in the application. 

        In requiring restriction in an application filed by joint 
inventors,  the examiner should remind applicants of the necessity to 
correct the inventorship  pursuant to 37 CFR 1.48 if an invention is 
elected and the claims to the invention  of one or more inventors are 
cancelled. 

        The examiner should not inquire of the patent applicant concerning 
 the inventors and the invention dates for the subject matter of the 
various  claims until it becomes necessary to do so in order to properly 
examine the  application. 

        If an application is filed with joint inventors, the examiner 
should  assume that the subject matter of the various claims was commonly 
owned at  the time the inventions covered therein were made, unless there 
is evidence  to the contrary.  If inventors of subject matter, not 
commonly owned at the  time of the later invention, file a joint 
application, applicants have an obligation  pursuant to 37 CFR 1.56 to 
point out the inventor and invention dates of each  claim and the lack of 
common ownership at the time the later invention was  made in order that 
the examiner may consider the applicability of 35 U.S.C.  102(f)/103 or 35 
U.S.C. 102(g)/103. The examiner should assume, unless there  is evidence 
to the contrary, that applicants are complying with their duty  of 
disclosure. It should be pointed out that 35 U.S.C. 119 benefit may be 
claimed  to any foreign application as long as the U.S. named inventor was 
the inventor  of the foreign application invention and 35 U.S.C. 119 
requirements are met.  Where two or more foreign applications are combined 
to take advantage of the  changes to 35 U.S.C. 103 or 
35 U.S.C. 116, benefit as to each  foreign application may be claimed if 
each  complies with 35 U.S.C. 119 and the U.S. application inventors are 
the inventors  of the subject matter of the foreign applications.  For 
example: 


        If Foreign Applicant A invents X and files a foreign application; 
Applicant  B invents Y and files a separate  foreign application.  A+B 
combine inventions  X+Y and file U.S. application to X+Y and claim 35 
U.S.C. 119 benefit for both  Foreign Applications* >.< * 35 U.S.C. 119 
Benefit will be Accorded for each  Foreign Application if 
35 U.S.C. 119 requirements are met. 


606   Title of Invention 


37 CFR 1.72.    Title and abstract. 

        (a) The title of the invention, which should be as short and 
specific  as possible, should appear as a heading on the first page of the 
specification,  if it does not otherwise appear at the beginning of the 
application. 
***** 


606.01      Examiner May Require Change in Title [R-2] 


        Where the title is not descriptive of the invention claimed, the 
examiner  should require the substitution of a new title that is clearly 
indicative of  the invention to which the claims are directed.  Form 
Paragraph 6.11 may be  used. 

W 6.11      Title of Invention Is Not Descriptive 

        The title of the invention is not descriptive. A new title is 
required  that is clearly indicative of the invention to which the claims 
are directed. 
Examiner Note: 

        If a title is suggested by the Examiner, add after *>form 
paragraph  6.11:"<The following title is suggested:>____________."< 

        This may result in slightly longer titles, but the loss in brevity 
 of title will be more than offset by the gain in its informative value in 
indexing,  classifying, searching, etc.  If a satisfactory title is not 
supplied by the  applicant, the examiner may change the title by 
examiner's amendment or by  initialing, at the time of allowance. 

        If a change in title is the only change being made by the examiner 
 at the time of allowance, a separate examiner's amendment need not be 
prepared. 
 The change in title will be incorporated in the notice of allowance. This 
 will be accomplished by placing an  "X"  in the designated box on the 
notice  of allowance form and entering thereunder the title as changed by 
the examiner  who should initial the face of the file wrapper. 

        However, if an examiner's amendment must be prepared for other 
reasons,  any change in title will be incorporated therein. 

        Inasmuch as the words "improved," "improvement of," and 
"improvement  in" are not considered as part of the title of an invention, 
the Patent and  Trademark Office does not include these words at the 
beginning of the title  of the  invention. 


607   Filing Fee [R-1] 


        Patent application filing fees are set in accordance with 35 
U.S.C.41  and are listed in 37 CFR 1.16. 

        See MPEP # 608.01(n) for multiple dependent claims. 

        When filing * >a nonprovisional< application, a basic fee entitles 
 applicant to present 20 claims including not more than 3 claims in 
independent  form.  If claims in excess of the above are included at the 
time of filing,  an additional fee  is required for each independent claim 
in excess of three,  and a  fee is required for each claim in excess of 20 
claims (whether independent  or dependent). Fees for a proper multiple 
dependent claim are calculated based  on the number of claims to which the 
multiple dependent claim refers, 37 CFR  1.75(c), and a separate fee is 
required in each application containing a proper  multiple dependent 
claim. For an improper multiple dependent claim, the fee  charged is that 
charged for a single dependent claim. 

        Upon submission of an amendment (whether entered or not) affecting 
 the claims, payment of fees for those claims in excess of the number 
previously  paid for is required. 

        The Application Branch has been authorized to accept all 
applications,  otherwise acceptable, if the basic fee is submitted, and to 
require payment  of the deficiency within a stated period upon 
notification of the deficiency. 
        Amendments before the first action, or not filed in response to an 
 Office action, presenting additional claims in excess of the number 
already  paid for, not accompanied by the full additional fee due, will 
not be entered  in whole or in part and applicant will be so advised. 
Such amendments filed  in reply to an Office action will be regarded as 
not responsive thereto and  the practice set forth in MPEP # 714.03 will 
be followed. 

        The additional fees, if any, due with an amendment are calculated 
on  the basis of the claims (total and independent) which would be 
present, if  the amendment were entered. The amendment of a claim, unless 
it changes a dependent  claim to an independent claim or adds to the 
number of claims referred to in  a multiple dependent claim, and the 
replacement of a claim by a claim of the  same type, unless it is a 
multiple dependent claim which refers to more prior  claims, do not 
require any additional fees. 

        For purposes of determining the fee due the Patent and Trademark 
Office,  a claim will be treated as dependent if it contains reference to 
one or more  other claims in the application.  A claim determined to be 
dependent by this  test will be entered if the fee paid reflects this 
determination. 
        Any claim which is in dependent form but which is so worded that 
it,  in fact, is not a proper dependent claim, as for example it does not 
include  every limitation of the claim on which it depends, will be 
required to be cancelled 
 as not being a proper dependent claim; and cancelation of any further 
claim  depending on such a dependent claim will be similarly  required. 
The applicant  may thereupon amend the claims to place them in proper 
dependent form, or may  redraft them as independent claims, upon payment 
of any necessary additional  fee. 

        After a requirement for restriction, nonelected claims will be 
included  in determining the fees due in 
connection with a subsequent amendment unless such claims are cancelled. 
        An amendment canceling claims accompanying the papers constituting 
 the application will be effective to diminish the number of claims to be 
considered  in calculating the filing fees to be paid. 

        The additional fees, if any, due with an amendment are required 
prior  to any consideration of the amendment by the examiner. 

        Money paid in connection with the filing of a proposed amendment 
will  not be refunded by reason of the nonentry of the amendment. However, 
unentered  claims will not be counted when calculating the fee due in 
subsequent amendments. 
        Amendments affecting the claims cannot serve as the basis for 
granting  any refund. 

        See MPEP # 1415 for reissue application fees. 


607.02      Returnability of Fees [R-1] 


>37 CFR 1.26.     Refunds. 

        (a)   Money paid by actual mistake or in excess will be refunded, 
but  a mere change of purpose after the payment of money, as when a party 
desires  to withdraw an application, an appeal, or a request for oral 
hearing, will  not entitle a party to demand such a return. Amounts of 
twenty-five dollars  or  less will not be returned unless specifically 
requested within a reasonable  time, nor will the payer be notified of 
such amount; amounts over twenty-five  dollars may be returned by check 
or, if requested, by credit to a deposit account. 
        (b)   [Reserved] 

        (c)   If the Commissioner decides not to institute a reexamination 
 proceeding, a refund of $1,690 will be made to the requester of the 

proceeding. Reexamination requesters should indicate whether 
any refund should be made by check or by credit to a deposit account. 
        Since 37 CFR 1.26(a) precludes refund of an application filing fee 
 when applicant desires to withdraw an application, any request by 
applicant  not to process or charge an application filing fee because the 
application  was not intended to be filed must be in the form of a 
petition under 37 CFR  1.183 requesting suspension of the rules to the 
extent that the filing fee  not be processed or charged.  Any such 
petition must include the fee set forth  in 37 CFR 1.17(h) and must be 
accompanied by an 
express abandonment of the application in accordance with 37 CFR 1.138. In 
 order for such a petition to be granted, it must ordinarily be filed and 
acted  upon prior to the date on which the application filing fee is 
processed or  charged by the Office with regard to the 
application.< 

        All questions pertaining to the return of fees are 
referred to the Refund Section of the Accounting Division of the Office of 
 Finance. No opinions should be expressed to attorneys or applicants as to 
whether  or not fees are returnable in particular cases. Such questions 
may also be  treated, to the extent appropriate, in decisions on petition 
decided by various  Patent and Trademark Office officials. 


608   Disclosure 


        In return for a patent, the inventor gives as consideration a 
complete  revelation or disclosure of the invention for which protection 
is sought. All  amendments or claims must find basis in the original 
disclosure, or they involve  new matter. Applicant may rely for disclosure 
upon the specification with original  claims and drawings, as filed.  See 
37 CFR  1.118 and MPEP w 608.04. 
        If during the course of examination of a patent application, an 
examiner  notes the use of language that could be deemed offensive to any 
race, religion,  sex, ethnic group, or nationality, he or she should 
object to the use of the  language as failing to comply with the Rules of 
Practice.  37 CFR 1.3 proscribes  the presentation of papers which are 
lacking in decorum and courtesy. There  is a further basis for objection 
in that the inclusion of such proscribed language  in a Federal Government 
publication would not be in the public interest. Also,  the inclusion in 
application drawings of any depictions or caricatures that  might 
reasonably be considered offensive to any group should be similarly 
objected  to, on like authority. 

        The examiner should not pass the application to issue until such 
language  or drawings have been deleted, or questions relating to the 
propriety thereof  fully resolved. 

        For design application practice, see MPEP # 1504. 


608.01      Specification [R-2] 


35 U.S.C. 22.     Printing of papers filed. 

        The Commissioner may require papers filed in the Patent and 
Trademark  Office to be printed or typewritten. 

37 CFR 1.71.    Detailed description and specification of the 
 invention. 

        (a)   The specification must include a written description of the 
invention  or discovery and of the manner and process of making and using 
the same, and  is required to be in such full, clear, concise, and exact 
terms as to enable  any person skilled in the art or science to which the 
invention or discovery  appertains, or with which it is most nearly 
connected, to make and use the  same. 

        (b)   The specification must set forth the precise invention for 
which a patent is solicited, in such manner as to distinguish it from 
other inventions and from what is old. It must describe completely a 
specific  embodiment of the process, machine, manufacture, composi- 
tion of matter or improvement invented, and must explain the mode of 
operation or principle whenever applicable. The best mode con- 
templated by the inventor of carrying out his invention must be set forth. 
        (c)   In the case of an improvement, the specification must par- 
ticularly point out the part or parts of the process, machine, manu- 
facture, or composition of matter to which the improvement relates, and 
the description should be confined to the specific improvement and to such 
parts as necessarily cooperate with it or as may be neces- sary to a 
complete understanding or description of it. 

        (d)   A copyright or mask work notice may be placed in a design or 
utility patent application adjacent to copyright and mask work material 
contained therein. The notice may appear at any appro- 
priate portion of the patent application disclosure. For notices in 
drawings,  see # 1.84(o).  The content of the notice must be limited to 
only those elements required by law.  For example,  "E 1983 John Doe" (17 
U.S.C.  401) and "M John Doe"  (17 U.S.C. 909) would be prop- 
erly limited and, under current statutes, legally sufficient notices of 
copyright and mask work, respectively. Inclusion of a copyright or mask 
work notice will be permitted only if the authorization lan- guage set 
forth in paragraph (e) of this section is included at the beginning 
(preferably as the first paragraph) of the specification. 

        (e)   The authorization shall read as follows: 

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

        Certain cross notes to other related applications may be made. 
References  to foreign applications or to applications identified only by 
the attorney's  docket num-ber should be required to be cancelled. See 37 
CFR 1.78 and MPEP  # 202.01. 

37 CFR 1.52.    Language, paper, writing, margins. 

        (a)   The application, any amendments or corrections thereto, and 
the  oath or declaration must be in the English language except as 
provided for  in # 1.69 and paragraph (d) of this section, or be 
accompanied by a verified  translation of the application and a 
translation of any corrections or amendments  into the English language. 
All pa- 
pers which are to become apart of the permanent records of the 
Patent and Trademark Office must be legibly written, typed, or print- ed 
in permanent ink or its equivalent in quality. All of the applica- tion 
papers must be presented in a form having sufficient clarity 
and contrast between the paper and the writing, typing, or printing 
thereon  to permit the direct production of readily legible copies in 
any number by use of photographic, electrostatic, photo-offset, and 
microfilming  processes.  If the papers are not of the required quality, 
substitute typewritten  or printed papers of suitable quality may be required. 

        (b)   The application papers (specification, including claims, 
abstract, oath or declaration, and papers as provided for in ## 1.42, 
1.43, 1.47, etc.) and also papers subsequently filed, must be plainly 
written  on but one side of the paper. The size of all sheets of paper 
should be 8 to 8 1/2 by 10 1/2  to 13 inches (20.3 to 21.6 cm. by 26.6 to 
33.0 cm.) A margin of at least approximately 1 inch (2.5 cm.) 
must be reserved on the left-hand of each page. The top of each 
page of the application, including claims must have a margin of 
at least approximately  3/4  inch (2 cm.). The lines must not be 
crowded too closely together; typewritten lines should be 1 1/2  or double 
spaced. The pages of the application including claims and abstract should 
be numbered consecutively, starting with 1, the 
numbers being centrally located above or preferably, below, the text. 
        (c)   Any interlineation, erasure, cancellation or other 
alteration of the application papers filed should be made before the 
signing of any accompanying oath or declaration pursuant to # 1.63 
referring to those application papers and should be dated and initialed or 
signed by the applicant on the same sheet of paper. Application 
papers containing alterations made after the signing of an oath or 
declaration 
 referring to those application papers must be supported 
by a supplemental oath or declaration under # 1.67(c). After the 
signing of the oath or declaration referring to the application 
papers, amendments may only be made in the manner provided by 
## 1.121 and 1.123 through 1.125. 

        (d)   An application  may be filed in a language other tha 
English. A verified English translation of the non-English 
language application and the fee set forth in # 1.17(k) are required to be 
filed with the application or within such time as may be set by the Office. 

37 CFR 1.58.    Chemical and mathematical formulas and tables. 

        (a)   The specification, including the claims, may contain 
chemical  and mathematical formulas, but shall not contain drawings or 
flow diagrams.  The description portion of the specification may contain 
tables; claims may  contain tables only if necessary to conform to 
35 U.S.C. 112 or if otherwise found to be desirable. 

        (b)   All tables and chemical and mathematical formulas in the 
specification,  including claims, and amendments thereto, must be 
on paper which is flexible, strong, white, smooth, nonshiny, and 
durable, in order to permit use as camera copy when printing any 
patent which may issue.  A good grade of bond paper is acceptable; 
watermarks  should not be prominent. India ink or its equivalent, or 
solid black typewriter should be used to secure perfectly black solid lines. 

        (c)   To facilitate camera copying when printing, the width of 
formulas  and tables as presented should be limited normally to 5 
inches (12.7 cm.) so that it may appear as a single column in the printed 
patent.  If it is not possible to limit the width of a formula or table to 
5 inches (12.7 cm.), it is permissible to present the formula or table 
with a maximum width of 10 3/4  inches (27.3 cm.) and to place it sideways 
on the sheet.  Typewritten characters used in such formulas and  tables 
must be from a block (nonscript) type font or lettering 
style having capital letters which are at least 0.08 inch (2.1 mm.) high 
(elite type).  Hand lettering must be neat, clean, and have a minimum 
character height of 0.08 inch (2.1 mm.).  A space at least 
1/4  inch (6.4 mm.) high should be provided between complex 
formulas and tables and the text.  Tables should have the lines and 
columns  of data closely spaced to conserve space, consistent with 
high degree of legibility. 

        In order that specifications may be expeditiously handled by the 
Office,  page numbers should be placed at the center of the top or bottom 
of each page.  It is a common practice and  a commendable one, to 
consecutively number all the lines or every fifth line  of each page.  A 
top margin of at least 3/4 inch should be reserved on each  page to 
prevent possible mutilation of  text when the papers are punched for 
insertion in a file wrapper. 

        Applicants should make every effort to file patent applications in 
 a form that is clear and reproducible. The Office may accept for filing 
date  purposes papers of reduced quality but will require that acceptable 
copies  be supplied for further processing. Typed, mimeographed, 
xeroprinted, multigraphed  or non-smearing carbon copy forms of 
reproduction are acceptable. 

        Legibility includes ability to be photocopied and 
photomicrographed  so that suitable reprints can be made. This requires a 
high contrast, with  black lines and a white background. Gray lines and/or 
a gray background sharply  reduce photo reproduction quality. Legibility 
of some application papers may  become impaired due to abrasion or aging 
of the printed material during examination  and ordinary handling of the 
file. It may be necessary to require that legible  and permanent copies be 
furnished at later stages after filing, particularly  when preparing for 
issue. 

        Some of the patent application papers received by the Patent and 
Trademark  Office are copies of the original, ribbon copy. These are 
acceptable if, in  the opinion of the Office, they are legible and permanent. 

        The paper used must have a surface such that amendments may be 
written  thereon in ink.  So-called  "Easily Erasable" paper having a 
special coating  so that erasures can be made more easily may not provide 
a "permanent" copy  37 CFR 1.52(a). If a light pressure of an ordinary 
(pencil) eraser removes  the imprint, the examiner should, as soon as this 
becomes evident, notify applicant  by use of Form Paragraph 6.32 that it 
will be necessary for applicant to order  a copy of the specification and 
claims to be made by the Patent and Trademark  Office at the applicant's 
expense for incorporation in the file. It is not  necessary to return this 
copy to applicant for signature. 

W 6.32      Application on Easily Erasable Paper 

        The application papers are objected to because they are not a 
permanent  copy as required by 37 CFR 1.52(a). Reference is made to [1]. 

        Applicant is required either (1) to submit permanent copies of the 
 identified parts or (2) to order a photocopy of the above identified 
parts  to be made by the Patent and Trademark Office at applicant's 
expense for incorporation  in the file. See MPEP # 608.01. 

Examiner Note: 

        In the  "bracket"  identify, 1) all of the specification; 2) pages 
 of 
the specification; 3) claims; 4) oath, declaration; 5) etc. 



        See In re Benson, 1959 C.D. 5; 744 O.G. 353.  Reproductions 
prepared  by heat-sensitive, hectographic, or spirit duplication processes 
are also not  satisfactory. 

        The specification is sometimes in such faulty English that a new 
specification  is necessary, but new specifications encumber the record 
and require additional  reading, and hence should not be required or 
accepted unless it is clear to  the examiner that acceptance of a 
substitute specification would facilitate  processing of the application. 
See 37 CFR 1.125. 

        Form Paragraph 7.29 may be used where the disclosure contains 
informalities. 
W 7.29      Disclosure Objected to, Minor Informalities 

        The disclosure is objected to because of the following 
informalities:  [1] Appropriate correction is required. 

Examiner Note: 

        Use this paragraph to point out minor informalities such as 
spelling  errors, inconsistent terminology, numbering of elements, etc., 
which should  be corrected. See form paragraphs 6.28 to 6.32 for specific 
informalities. 

        The specification does not require a date. 

        If a newly filed application obviously fails to disclose an 
invention  with the clarity required by 35 U.S.C. 112, revision of the 
application should  be required. See MPEP # 702.01. 

        As the specification is never returned to applicant under any 
circumstances,  the applicant should retain a line for line copy thereof, 
each line, preferably,  having been consecutively numbered on each page. 
In amending, the attorney  or the applicant requests insertions, 
cancellations, or alterations, giving  the page and the line. 

        37 CFR 1.52(c) relating to interlineations and other alterations 
is  strictly enforced. See In re Swanberg, 
 129 USPQ 364. 

        Form Paragraphs 6.29-6.31 should be used where appropriate. 
W 6.29      Specification, Spacing of Lines 

        The spacing of the lines of the specification is such as to make 
reading  and entry of amendments difficult. New application papers with 
lines double  spaced on good quality paper are required. 

W 6.30      Numerous Grammatical Errors 

        The specification is replete with grammatical and idiomatic errors 
 too numerous to mention specifically. The specification should be revised 
carefully.  Examples of such errors are: [1]. 

W 6.31      Lengthy Specification, Jumbo Case 

        The lengthy specification has not been checked to the extent 
necessary  to determine the presence of all possible minor errors. 
Applicant's cooperation  is requested in correcting any errors of which 
applicant may become aware in  the specification. 

 Examiner Note: 

        This paragraph is applicable in so-called  "Jumbo cases." 
USE OF METRIC SYSTEM OF MEASUREMENTS 
IN PATENT APPLICATIONS 

        In order to minimize the necessity in the future for converting 
dimensions  given in the English system of measurements to the metric 
system of measurements  when using printed patents as research and prior 
art search documents, all  patent applicants should use the metric (S.I.) 
units followed by the equivalent  English units when describing their 
inventions in the specifications of patent  applications. 

        The initials S.I. stand for "Systeme International 
d' Unites," the French name for the International System of Units, a 
modernized  metric system adopted in 1960 by the International General 
Conference of Weights  and Measures based on precise unit measurements 
made possible by modern technology. 
FILING OF NON-ENGLISH LANGUAGE 
APPLICATIONS 

37 CFR 1.52.    Language, Paper, Writing, Margins. 

***** 

        (d)   An application may be filed in a language other than 
English. 
 A verified English translation of the non-English language application 
and  the fee set forth in # 1.17(k) are required to be filed with the 
application  or within such time as may be set by the Office. 

        The Patent and Trademark Office will accord a filing date to an 
application  meeting the requirements of 
35 U.S.C. 111(a), or a provisional application in accordance with 35 
U.S.C.  111(b), even though some or all of the application papers, 
including the written  description and the claims, is in a language other 
than English and hence does  not comply with 37 CFR 1.52. 

        A verified English translation of the non-English language papers, 
 the filing fee, the oath or declaration (if necessary) and fee set forth 
in  37 CFR 1.17(k) should either accompany the application papers or be 
filed in  the Office within the time set by the Office. 

        A subsequently filed verified English translation must contain the 
 complete identifying data for the application in order to permit prompt 
association  with the papers initially filed. Accordingly, it is strongly 
recom- mended  that the original application papers be accompanied by a 
cover letter and a  self-addressed return postcard, each containing the 
following identifying data  in English: (a) applicant's name(s); (b) title 
of invention; (c) number of  pages of specification, claims, and sheets of 
drawings; (d) whether  oath or  declaration was filed and (e) amount and 
manner of paying the filing fee. 
        The translation must be a literal translation verified as such by 
the  translator and must be accompanied by a signed request from the 
applicant,  his or her attorney or agent, asking that the verified English 
translation  be used as the copy for examination purposes in the Office. 
If the verified  English translation does not conform to idiomatic English 
and United States  practice, it should be accompanied by a preliminary 
amendment making the necessary  changes without the introduction of new 
matter prohibited by 35 U.S.C. 132. 
  In the event the verified literal translation is not timely filed in the 
 Office, the application will be regarded as abandoned. 

        It should be recognized that this practice is intended for 
emergency  situations to prevent loss of valuable rights and should not be 
routinely used  for filing applications.  There are at least two reasons 
why this should not  be used on a routine basis.  First, there are obvious 
dangers to applicant  and the public if he or she fails to obtain a 
correct literal translation. 
 Second, the filing of a large number of applications under the procedure 
will  create significant administrative burdens on the Office. 

ILLUSTRATIONS IN THE SPECIFICATION 

        Graphical illustrations, diagrammatic views, flowcharts,  and 
diagrams  in the descriptive portion of the specification do not come 
within the purview  of 37 CFR 1.58(a), which permits tables and chemical 
formulas in the specification  in lieu of formal drawings.  The examiner 
should object to such descriptive  illustrations in the specification and 
request formal drawings in accordance  with 37 CFR 1.81 when an 
application contains graphs in the specification. 
        Since the December 7, 1976, issue of patents, all tables and 
mathematical  equations and chemical formulas, or portions thereof, have 
been reproduced  for printing by a computer process developed by the Data Base 
Contractor.  Those portions of chemical formulas which cannot be 
reproduced  by the process, such as dotted, curved, broken and 
wedge-shaped lines, must  be drawn by hand on the photocomposed page. 
There are, however, some chemical  structures which cannot be reproduced 
because they are either too complex or  involve too many lines which 
cannot be generated by the computer process.   The camera copy process, 
which is used to insert these types of structures  onto the printed patent 
page, is both time consuming and costly to the Office. 
 Because of the reduction factor and failure to comply with the guidelines 
 set forth in 37 CFR 1.58 (a) and (b), the reproduction of these 
structures  is often poor. 

        Therefore, the specification, including any claims, may contain 
chemical  formulas and mathematical equations, but should not contain 
drawings or flow  diagrams or diagrammatic views of chemical structures. 
The description portion  of the specification may contain tables; claims 
may contain tables  only if  necessary to conform to 35 U.S.C. 112. 

        ** >See MPEP # 601.01(d) for treatment of applications filed 
without  all pages of the specification.< 


608.01(a) Arrangement of Application [R-1] 


37 CFR 1.77.    Arrangement of application elements. 

        The elements of the application should appear in the following 
order: 
        (a)   Title of the invention; or an introductory portion stating 
the  name, citizenship, and residence of the applicant, and the title of 
the invention  may be used. 

        (b)   (Reserved). 

        (c)(1) Cross-reference to related applications, if any. 

        (2)   Reference to a "microfiche appendix" if any. (See 
 # 1.96(b)). The total number of microfiche and total number of frames 
should  be specified. 

        (d)   Brief summary of the invention. 

        (e)   Brief description of the several views of the drawing, if 
there  are drawings. 

        (f)   Detailed description. 

        (g)   Claim or claims. 

        (h)   Abstract of the disclosure. 

        (i)   Signed oath or declaration. 

        (j)   Drawings. 

NOTE 

        Design patent specification, MPEP # 1503.01. 

        Plant patent specification, MPEP # 1605. 

        Reissue patent specification, MPEP # 1411. 

        The following order of arrangement is preferable in framing the 
>nonprovisional<  specification and, except for the title of the 
invention, each of the lettered  items should be preceded by the headings 
indicated.  >It is recommended that  provisional applications follow the 
same general format, although claims are  not required.< 

        (a)   Title of the Invention. 

        (b)   Cross-References to Related Applications (if any). 

        (c)   Background of the Invention. 

        1.  Field of the Invention. 

        2.  Description of the related art including information disclosed 
 under 37 CFR 1.97and 1.98. 

        (d)   Summary of the Invention. 

        (e)   Brief Description of the Drawings. 

        (f)   Description of the Preferred Embodiment(s). 

        (g)   Claim(s). 

        (h)   Abstract of the Disclosure. 

        Applicant (typically a pro se) may be advised of the proper 
arrangement  by using Form Paragraph 6.01 or 6.02. 

W 6.01      Arrangement of Specification 

        The following guidelines illustrate the preferred layout and 
content  for patent applications. These guidelines are suggested for the 
applicant's  use. 

Arrangement of the Specification 

        The following order or arrangement is preferred in framing the 
specification  and, except for the title of the invention, each of the 
lettered items should  be preceded by the headings indicated below: 

        (a)   Title of the Invention. 

        (b)   Cross-References to Related Applications (if any). 

        (c)   Statement as to rights to inventions made under 
Federally-sponsored  research and development (if any). 

        (d)   Background of the Invention. 

        1.  Field of the Invention. 

        2.  Description of Related Art including information disclosed 
under  37 CFR **  1.97 and 1.98. 

        (e)   Summary of the Invention. 

        (f)   Brief Description of the Drawing>(s)<. 

        (g)   Description of the Preferred Embodiment(s). 

        (h)   Claim(s). 

        (i)   Abstract of the Disclosure. 

Examiner Note: 

        In this paragraph an introductory sentence will be necessary. 
        This paragraph intended primarily for use in Pro Se applications. 
W 6.02      Content of Specification 

Content of Specification 

        (a)   Title of the Invention. (See 37 CFR * 1.72(a)). The title of 
the invention should be placed at the top of the first page of the 
specification. 
 It should be brief but technically accurate and descriptive, preferably 
from two to seven words. 
        (b)   Cross-References to Related Applications: See 37 CFR 1.78 
and  >MPEP<  # 201.11 *. 

        (c)   Statement as to rights to inventions made under Federally 
sponsored  research and development (if any): See >MPEP<  # 310 *. 

        (d)   Background of the Invention: The specification should set 
forth the Background of the Invention in two parts: 

        (1)   Field of the Invention: A statement of the field of art to 
 which the invention pertains. This statement may include a para- phrasing 
of the applicable U.S. patent classification definitions 
or the subject matter of the claimed invention. This item may also be 
titled  "Technical Field." 

        (2)   Description of the Related Art: A description of the related 
 art known to the applicant and including, if applicable, references to 
specific  * related >art< and problems involved in the prior art which are 
solved by  the applicant's invention. This item may also be titled 
"Background Art". 

        (e)   Summary>of the Invention<:A brief summary or gen- 
eral statement of the invention as set forth in 37 CFR * 1.73. 
The summary is separate and distinct from the abstract and is di- rected 
toward the invention rather than the disclosure as a whole. The summary 
may point out the advantages of the invention or how 
it solves problems previously existent in the prior art (and prefer- ably 
indicated in the Background of the Invention).  In chemical 
cases it should point out in general terms the utility of the invention. 
If possible, the nature and gist of the invention or the inventive con- 
cept should be set forth. Objects of the invention should be 
treated briefly and only to the extent that they contribute to an 
understanding  of the invention. 

        (f)   Brief Description of the Drawing(s): A reference to and 
brief description of the drawings(s) as set forth in 37 CFR * 1.74. 
        (g)   Description of the Preferred Embodiment(s): A descrip- tion 
of the preferred embodiment(s) of the invention as required 
in 37 CFR *  1.71. The description should be as short and specific as is 
necessary to describe the invention adequately and accurately. 
 This item may also be titled  "Best Mode for Carrying Out 
the Invention." Where elements or groups of elements, compounds, 
 and processes, which are conventional and generally widely known in the 
field of the invention described and their exact nature or type is not 
necessary for an understanding and use of the invention by 
a person skilled in the art, they should not be described in detail. 
However,  where particularly complicated subject matter is involved 
or where the elements, compounds, or processes may not be com- 
monly or widely known in the field, the *>specification< should 
refer to another patent or readily available publication which ade- 
quately describes the subject matter. 

        (h)   Claim(s): (See 37 CFR 1.75) A claim may be typed with the 
various elements subdivided in paragraph form. There may be 
plural indentations to further segregate subcombinations or related steps. 
        (i)   Abstract>of the Disclosure<: A brief narrative of the 
disclosure as a whole in a single paragraph of 250 words or less. 

Examiner Note: 

        In this paragraph an introductory sentence will be necessary. 
        This paragraph is intended primarily for use in Pro Se applica- 
tions. See also  "pro se"  form paragraphs in Chapter 1700 of 
the Manual of Patent Examining Form Paragraphs. 


608.01(b) Abstract of the Disclosure [R-2] 


37 CFR 1.72   Title and abstract. 

***** 

  (b)     A brief abstract of the technical disclosure in the 
specification  must be set forth on a separate sheet, preferably following 
the claims under  the heading  Abstract of the Disclosure . The purpose of 
the abstract is to  enable the Patent and Trademark Office and the public 
generally to determine  quickly from a cursory inspection the nature and 
gist of the technical disclosure.  The abstract shall not be used for 
interpreting the scope of the claims. 
        In all cases which lack an abstract, the examiner in the first 
Office  action should require the submission of an abstract directed to 
the technical  disclosure in the specification. See Form Paragraph 6.12 
(below). Applicants  may use either "Abstract" or "Abstract of the 
Disclosure" as a heading. 
        If the abstract contained in the application does not comply with 
the  guidelines, the examiner should point out the defect to the applicant 
in the  first Office action, or at the earliest point in the prosecution 
that the defect  is noted, and require compliance with the guidelines. 
Since the abstract of  the disclosure has been interpreted to be a part of 
the specification for the  purpose of 
compliance with paragraph 1 of 35 U.S.C. 112 (In re 
Armbruster, 512 F2d 676, 185 USPQ 152 (CCPA, 1975)), it would ordinarily 
be  preferable that the applicant make the necessary changes to the 
abstract to  bring it into compliance with the guidelines. See Form 
Paragraphs 6.13-6.16 
(below). 

        Responses to such actions requiring either a new 
abstract or amendment to bring the abstract into compliance with the 
guidelines  should be treated under 
37 CFR 1.111(b) practice like any other formal matter.  Any submission of 
a  new abstract or amendment to an existing abstract should be carefully 
reviewed  for introduction of new matter, 35 U.S.C. 132, MPEP 
# 608.04. 

        Upon passing the case to issue, the examiner should see that the 
abstract  is an adequate and clear statement of the contents of the 
disclosure and generally  in line with the guidelines. The abstract shall 
be changed by 
the examiner's amendment in those instances where deemed necessary. This 
authority  and responsibility of the examiner shall not be abridged by the 
desirability  of having the applicant make the necessary corrections.  For 
example, if the  application is otherwise in condition for allowance 
except that the abstract  does not comply with the guidelines, the 
examiner generally should make any necessary revisions  by examiner's 
amendment rather than issuing an Ex parte Quayle action requiring 
applicant to make the necessary revisions. 

        Under current practice, in all instances where the application 
contains  an abstract when sent to issue, the abstract will be printed on 
the patent. 
GUIDELINES FOR THE PREPARATION OF 
PATENT ABSTRACTS 

Background 

        The Rules of Practice in Patent Cases require that each 
application  for patent include an abstract of the disclosure, 37 CFR 
1.72(b). 
        The content of a patent abstract should be such as to enable the 
reader  thereof, regardless of his or her degree of familiarity with 
patent documents,  to ascertain quickly the character of the subject 
matter covered by the technical  disclosure and should include that which 
is new in the art to which the invention  pertains. 

        The abstract is not intended nor designated for use in 
interpreting  the scope or meaning of the claims, 
37 CFR 1.72(b). 

Content 

        A patent abstract is a concise statement of the technical 
disclosure  of the patent and should include that which is new in the art 
to which the  invention pertains. 

        If the patent is of a basic nature, the entire technical 
disclosure  may be new in the art, and the abstract should be *>directed 
to the entire  disclosure. 

        If the patent< is in the nature of an improvement in old 
apparatus,  process, product, or composition, the abstract should include 
the technical  disclosure of the improvement. 

        In certain patents, particularly those for compounds and 
compositions,  wherein the process for making and/or the use thereof are 
not obvious, the  abstract should set forth a process for making and/or a 
use thereof. 
        If the new technical disclosure involves modifications or 
alternatives,  the abstract should mention by way of example the preferred 
modification or  alternative. 

        The abstract should not refer to purported merits or speculative 
applications  of the invention and should not compare the invention with 
the prior art. 
        Where applicable, the abstract should include the following: (1) 
if  a machine or apparatus, its organization and operation; (2) if an 
article,  its method of making; (3) if a chemical compound, its identity 
and use; (4)  if a mixture, its ingredients; (5) if a process, the steps. 
Extensive mechanical  and design details of apparatus should not be given. 

        With regard particularly to chemical patents, for compounds or 
compositions,  the general nature of the compound or composition should be 
given as well as  the use thereof; e.g., "The compounds are of the class 
of alkyl benzene sulfonyl  ureas, useful as oral anti-diabetics." 
Exemplification of a species could be  illustrative of members of the 
class. For processes, the type reaction, reagents  and process conditions 
should be stated, generally illustrated by a single  example unless 
variations are necessary. 

 Language and Format 

        The abstract should be in narrative form and generally limited to 
a  single paragraph within the range of 50 to 250 words. The abstract 
should not  exceed 25 lines of text. Abstracts exceeding 25 lines of text 
should be checked  to see that it does not exceed 250 words in length 
since the space provided  for the abstract on the computer tape by the 
printer is limited.  If the abstract  cannot be placed on the computer 
tape because of its excessive length, the  application will be returned to 
the examiner for preparation of a shorter abstract.  The form and legal 
phraseology often used in patent claims, such as  "means" 
 and  "said",  should be avoided.  The abstract should sufficiently 
describe  the disclosure to assist readers in deciding whether there is a 
need for consulting  the full patent text for details. 

        The language should be clear and concise and should not repeat 
information  given in the title. It should avoid using phrases which can 
be implied, such  as,  "This disclosure concerns," "The disclosure defined 
by this invention,"  "This disclosure describes,"  etc. 

Responsibility 

        Preparation of the abstract is the responsibility of the 
applicant.  Background knowledge of the art and an appreciation of the 
applicant's contribution  to the art are most important in the preparation 
of the abstract. The review  of the abstract, for compliance with these 
guidelines, with any necessary editing  and revision on allowance of the 
application is the responsibility of the examiner. 
Sample Abstracts 

        (1)   A heart valve which has an annular valve body defining an 
orifice and a plurality of struts forming a pair of cages on oppo- site 
sides of the orifice. A spherical closure member is captively held within 
the cages and is moved by blood flow between open and closed positions  in 
check valve fashion. A slight leak or backflow is provided in the closed 
position by making the orifice slightly larger 
than the closure member.  Blood flow is maximized in the open posi- tion 
of the valve by providing an inwardly convex contour on the 
orifice-defining  surfaces of the body.  An annular rib is formed in 
a channel around the periphery of the valve body to anchor a suture 
 ring used to secure the valve within a heart. 

        (2)   A method for sealing whereby heat is applied to seal, 
overlapping  closure panels of a folding box made from paperboard having 
an extremely thin  coating of moisture-proofing thermoplastic material on 
opposite surfaces. Heated  air is directed at the surfaces 
to be bonded, the temperature of the air at the point of impact on the 
surfaces  being above the char point of the board. The duration of 
application of heat  is made so brief, by a corresponding high rate of 
advance of the boxes through  the air stream, that the coating on the 
reverse side of the panels remains  substantially non-tacky. The bond 
is formed immediately after heating within a period of time for any one 
surface  point less than the total time of exposure to heated air of that 
point.  Under  such conditions the heat applied to soften the thermo- 
plastic coating is dissipated after completion of the bond by absorp- tion 
into the board acting as a heat sink without the need for cooling devices. 
        (3)   Amides are produced by reacting an ester of a carboxylic 
acid with an amine, using as catalyst an alkoxide of an alkali metal.  The 
 ester is first heated to at least 75_C. under a pressure of no more than 
500 mm. of mercury to remove moisture and acid gases which would prevent 
the  reaction, and then converted to an amide without heating 
to initiate the reaction. 

W 6.12      Abstract Missing (Background) 

        This application does not contain an abstract of the disclosure as 
required by 37 CFR 1.72(b). An abstract on a separate sheet is required. 
Examiner Note: 

        For pro se applicant consider form paragraphs 6.14 - 6.16. 
W 6.13      Abstract Objected to: Minor Informalities 

        The abstract of the disclosure is objected to because [1]. 
Correction  is required. See MPEP 608.01(b). 

Examiner Note: 

        In bracket 1, indicate the informalities that should be corrected. 
 Use this paragraph for minor informalities such as the inclusion of legal 
phraseology, undue length, etc. 

W 6.14      Abstract of the Disclosure: Content 

        Applicant is reminded of the proper content of an abstract of the 
disclosure. 

        A patent abstract is a concise statement of the technical 
disclosure  of the patent and should include that which is new in the art 
to which the  invention pertains.  If the patent is of a basic nature, the 
entire technical  disclosure may be new in the art, and the abstract 
should be directed to the  entire disclosure.  If the patent is in the 
nature of an improvement in an  old apparatus, process, product or 
composition, the abstract should include  the technical disclosure of the 
improvement.  In certain patents, particularly  those for compounds and 
compositions, wherein the process for making and/or  the use thereof are 
not obvious, the abstract should set forth a process for  making and/or 
use thereof.  If the new technical disclosure involves modifications  or 
alternatives, the abstract should mention by way of example the preferred 
modification or alternative. 

        The abstract should not refer to purported merits or speculative 
applications  of the invention and should not compare the invention with 
the prior art. 
        Where applicable, the abstract should include the following: (1) 
if a machine or apparatus, its organization and operation; (2) if an 
article,  its method of making; (3) if a chemical compound, its identity 
and use; (4) if a mixture, its ingredients; (5) if a process, the steps. 
Exten- sive mechanical and design details of apparatus should not be 
given. 
Examiner Note: 

        See paragraph 6.16. 

W 6.15      Abstract of the Disclosure, Chemical Cases 

        Applicant is reminded of the proper content of an abstract of the 
disclosure. 
        In chemical patent abstracts, compounds or compositions, the 
general  nature of the compound or composition should be given as well as 
its use, e.g., 
 "The compounds are of the class of alkyl benzene sulfonyl ureas, useful 
as  oral anti-diabetics."  Exemplification of a species could be 
illustrative of  members of the class. For processes, the type reaction, 
reagents and process  conditions should be stated, generally illustrated 
by a single example unless  variations are necessary. Complete revision of 
the content of the abstract  is required on a separate sheet. 

W 6.16      Abstract of the Disclosure, Language 

        Applicant is reminded of the proper language and format of an 
abstract  of the disclosure. 

        The abstract should be in narrative form and generally limited to 
a single paragraph on a separate sheet within the range of 50 to 250 
words.  It is important that the abstract not exceed 250 words in length 
since the  space provided for the abstract on the computer tape used 
by the printer is limited. The form and legal phraseology often used in 
patent  claims, such as  "means"  and  "said" , should be avoided. The 
abstract should  describe the disclosure sufficiently to assist readers in 
deciding whether  there is a need for consulting the full patent text 
for details. 

        The language should be clear and concise and should not repeat 
information  given in the title. It should avoid using phrases which can 
be implied, such as,  "The disclosure concerns, "   "The disclosure de- 
fined  by this invention," "The disclosure describes,"  etc. 

Examiner Note: 

        See also paragraph 6.14. 


608.01(c) Background of the Invention 


        The Background of the Invention ordinarily comprises two parts: 
        (1)   Field of the Invention: A statement of the field of art to 
which  the invention pertains. This statement may include a paraphrasing 
of the applicable  U.S. patent classification definitions. The statement 
should be directed to the subject  matter of the claimed invention. 

        (2)   Description of the related art including information 
disclosed  under 37 CFR 1.97 and 1.98:  A paragraph(s) describing to the 
extent practical  the state of the prior art or other information 
disclosed known to the applicant, including references to specific prior 
art or other information  where appropriate. Where applicable, the 
problems involved in the prior art  or other information disclosed which 
are solved by the applicant's invention  should be indicated.  See also 
MPEP # 608.01(a),  # 608.01(p) and # 707.05(b). 


608.01(d) Brief Summary of Invention [R-1] 


37 CFR 1.73.    Summary of the invention. 

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

        Since the purpose of the brief summary of invention is to apprise 
the  public, and more especially those interested in the particular art to 
which  the invention relates, of the nature of the invention, the summary 
should be  directed to the specific invention being claimed, in 
contradistinction to mere  generalities which would be equally applicable 
to numerous preceding patents.  That is, the subject matter of the 
invention should be described in one or  more clear, concise sentences or 
paragraphs. Stereotyped general statements  that would fit one case as 
well as another serve no useful purpose and may  well be required to be 
cancelled as surplusage, and, in the absence of any  illuminating 
statement, replaced by statements that are directly in point as 
applicable exclusively to the case in hand. 

        The brief summary, if properly written to set out the exact 
nature,  operation, and purpose of the invention, will be of material 
assistance in  aiding ready understanding of the patent in future 
searches.  ** The brief  summary should be more than a mere statement of 
the objects of the invention,  which statement is also permissible under 
37 CFR 1.73. 

        The brief summary of invention should be consistent with the 
subject  matter of the claims. Note final review of application and 
preparation for  issue, MPEP # 1302. 


608.01(e) Reservation Clauses Not Permitted 


37 CFR 1.79.    Reservation clauses not permitted. 

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


608.01(f) Brief Description of Drawings [R-2] 


37 CFR 1.74.    Reference to drawings. 

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

        ** >The Initial Application Examination Division will review the 
specification,  including the brief description, to determine whether all 
of the figures of  drawings described in the specification are present. 
If the specification  describes a figure which is not present in the 
drawings, the application will  be treated as an application filed without 
all figures of drawings in accordance  with MPEP # 601.01(g), unless the 
application lacks any drawings, in which  case the application will be 
treated as an application filed without drawings  in accordance with MPEP 
# 601.01(f).< 

        The examiner should see to it that the figures are correctly 
described  in the brief description of the drawing, that all section lines 
used are referred  to, and that all needed section lines are used. 

        The specification must contain or be amended to contain proper 
reference  to the existence of drawings executed in color as required by 
37 CFR 1.84. 
37 CFR 1.84.    Standards for drawings. 

        (a)   Drawings.  There are two acceptable categories for 
presenting  drawings in utility patent applications: 

        (1)   Black ink.  Black and white drawings are normally required 
India  ink, or its equivalent that secures solid black lines, must be used 
for drawings,  or 

        (2)   Color.  On rare occasions, color drawing may be necessary as 
 the only practical medium by which to disclose the subject matter sought 
to  be patented in a utility patent application or the subject matter of a 
statutory  invention registration.  The Patent and Trademark Office will 
accept color  drawings in utility patent applications and statutory 
invention registrations  only after granting a petition filed under this 
paragraph explaining why the  color drawings are necessary.  Any such 
petition must include the following: 
        (i)   The appropriate fee set forth in # 1.17(h); 

        (ii)    Three (3) sets of color drawings; and 

        (iii)     The specification must contain the following language as 
the first paragraph in that portion of the specification relating to the 
brief description of the drawing: 

        ``The file of this patent contains at least one drawing executed 
in  color: Copies of this patent with color drawing(s) will be provided by 
the  Patent and Trademark Office upon request and payment of the necessary 
fee.'' 
        If the language is not in the specification, a proposed amendment 
to  insert the language must accompany the petition. 


608.01(g) Detailed Description of Invention 


        A detailed description of the invention and drawings follows the 
general  statement of invention and brief description of the drawings. 
This detailed  description, required by 37 CFR 1.71, MPEP w 608.01, must 
be in such particularity  as to enable any person skilled in the pertinent 
art or science to make and  use the invention without involving extensive 
experimentation. An applicant  is ordinarily permitted to use his or her 
own terminology, as long as it can  be understood. Necessary grammatical 
corrections, however, should be required  by the examiner, but it must be 
remembered that an examination is not made  for the purpose of securing 
grammatical perfection. 

        The reference characters must be properly applied, no single 
reference  character being used for two different parts or for a given 
part and a modification  of such part.  In the latter case, the reference 
character, applied to the  given part, with a prime affixed may 
advantageously be applied to the modification.  Every feature specified in 
the claims must be illustrated, but there should  be no superfluous 
illustrations. 

        The description is a dictionary for the claims and should provide 
clear  support or antecedent basis for all terms used in the claims. See 
37 CFR 1.75,  MPEP 
# 608.01(i), w 608.01(o), and w 1302.01. 

        NOTE. - Completeness, MPEP # 608.01(p). 

USE OF SYMBOL "Phi" IN PATENT 
APPLICATION 

        The Greek letter ``Phi'' has long been used as a symbol in 
equations  in all technical disciplines. It further has special uses which 
include the  indication of an electrical phase or clocking signal as well 
as an angular  measurement. The recognized symbols for the upper and lower 
case Greek Phi  characters, however, do not appear on most typewriters. 
This apparently has  led to the use of a symbol composed by first striking 
a zero key and then backspacing  and striking the "cancel" or "slash" key 
to result in,an approximation of accepted  symbols for the Greek character 
Phi. In other instances, the symbol is composed  using the upper or lower 
case letter "O" with the "cancel" or "slash" superimposed  thereon by 
backspacing, or it is simply handwritten in a variety of styles. 
 These expedients result in confusion because of the variety of type sizes 
 and styles available on modern type-writers. 

        In recent years, the growth of data processing has seen the 
increasing  use of this symbol ("O") as the 
standard representation of zero.  The "slashed" or cancelled" zero  is 
used  to indicate zero and avoid confusion with the upper case letter  "O" 
 in both  text and drawings. 

        Thus, when the symbol  ``#" in one of its many variations, as 
discussed  above, appears in patent applications being prepared for 
printing, confusion  as to the intended meaning of the symbol arises. 
Those (such as examiners,  attorneys, and applicants) working in the art 
can usually determine the intended  meaning of this symbol because of 
their knowledge of the subject matter involved,  but editors preparing 
these applications for printing have no such specialized  knowledge and 
confusion arises as to which symbol to print. The result, at  the very 
least, is delay until the intended meaning of the symbol can be 
ascertained. 
        Since the Office does not have the resources to conduct a 
technical  editorial review of each application before printing, and in 
order to eliminate  the problem of printing delays associated with the 
usage of these symbols,  any question about the intended symbol will be 
resolved by the editorial staff  of the Office of Publications by printing 
the symbol # whenever that symbol  is used  by the applicant. Any 
Certificate of Correction necessitated by the  above practice will be at 
the patentee's expense (37 CFR  1.323) because the  intended symbol  was 
not accurately presented by the Greek upper or lower case  Phi letters 
(#,#) in the patent application. 


608.01(h) Mode of Operation of Invention [R-1] 



        The best mode contemplated by the inventor of carrying out his or 
her  invention must be set forth in the description. see 35 U.S.C. 112. 
There is  no statutory requirement for the disclosure of a specific 
example. A patent  specification is not intended nor required to be a 
production specification,  In re Gay, 309 F2d 768, 135 USPQ 311 (CCPA 
1962). The absence of a specific working example is not  necessarily 
evidence that the best mode has not been disclosed, nor is the  presence 
of one evidence that it has, In re Honn, 364 F2d 454, 
150 USPQ, 652 (CCPA 1966). In determining the adequacy of a best mode 
disclosure,  only evidence of concealment (accidental or intentional) is 
to be considered.  That evidence must tend to show that the quality of an 
applicant's best mode  disclosure is so poor as to effectively result in 
concealment; In re Sherwood, 204 USPQ 537 (CCPA 1980). 

        The question of whether an inventor has or has not disclosed what 
he  or she feels is his or her best mode is a question separate and 
distinct from  the question of sufficiency of the disclosure, In re Gay, 
135 USPQ 311 (CCPA  1962); In re Glass, 181 USPQ 31 (CCPA 1974). See 
35 U.S.C. 112 and 37 CFR 1.71(b). Sylgab Steel & Wire Corp. v. 
Imoco-Gateway  Corp., 357 F. Supp. 657, 
178 USPQ 22 (N.D. Ill. 1973); H. K. Porter Co., Inc. v. Gates Rubber Co., 
187  USPQ 692, 708, (D. Colo. 1975). 

        If the best mode contemplated by the inventor at the time of 
filing  the application is not disclosed, such defect cannot be cured by 
submitting  an amendment seeking to put into the specification something 
required to be  there when the application was originally filed, In re Hay, 
534 F2d 917, 189 USPQ 790 (CCPA 1976). Any proposed amendment of this type 
 should be treated as new matter. 

        Patents have been held invalid in cases where the patentee did not 
 disclose the best mode known to him.  See Flick-Reedy Corp. v. Hydro-Line 
Manufacturing  Co., 
351 F.2d 546, 146 USPQ 694 (CA 7 1965), cert. denied, 
383 U.S. 958, 148 USPQ 771 (1966); Indiana General 
Corp. v. Krystinel Corp., 297 F. Supp. 427 161 USPQ 82 (S.D. N.Y. 1969), 
affirmed,  421 F.2d 1033, 164 USPQ 
321 (CA 2 1970); Dale Electronics, Inc. v. R.C.L. Electronics, Inc., 488 
F.2d  382, 180 USPQ 235 (CA 1 1973); Union 
Carbide Corp. v. Borg-Warner Corp., 550 F.2d 355, 
193 USPQ 1 (CA 6 1977); Reynolds Metals Co. v. 
Acorn Building Components Inc., 548 F.2d 155, 163, 192 USPQ 737 (CA 6 
1977). 
        NOTE. - Completeness, >see< MPEP # 608.01(p) >and # 2165 to # 
2165.04<. 

608.01(i) Claims [R-1] 


>37 CFR 1.75.     Claims< 

        (a)   The specification must conclude with a claim particularly 
pointing  out and distinctly claiming the subject matter which the 
applicant regards  as his invention or discovery. 

        (b)   More than one claim may be presented provided they differ 
substantially  from each other and are not unduly multiplied. 

        (c)   One or more claims may be presented in dependent form, 
referring  back to and further limiting another claim or claims in the 
same application. Any dependent claim which refers to more than one other 
claim 
("multiple dependent claim" ) shall refer to such other 
 claims in the alternative only. A multiple dependent claim shall not 
serve as a basis for any other multiple dependent claim. For 
fee calculation purposes under # 1.16, a multiple dependent claim will be 
considered to be that number of claims to which direct refer- ence is made 
therein. For fee calculation purposes, also, any claim depending  from a 
multiple dependent claim will be considered 
to be that number of claims to which direct reference is made in that 
multiple  dependent claim. In addition to the other filing fees, any 
 original application which is filed with, or is amended to include, 
multiple dependent claims must have paid therein the fee set forth in # 
1.16(d). Claims in dependent form shall be construed to in- 
clude all the limitations of the claim incorporated by reference 
into the dependent claim. A multiple dependent claim shall be con- strued 
to incorporate by reference all the limitations of each 
of the particular claims in relation to which it is being considered. 
        (d)(1)      The claim or claims must conform to the invention as 
set forth in the remainder of the specification and the terms and 
phrases used in the claims must find clear support or antecedent 
basis in the description so that the meaning of the terms in the 
claims may be ascertainable by reference to the description (See 
# 1.58(a).) 

        (2)   See ## 1.141 to 1.146 as to claiming different inventions in 
one application. 

        (e)   Where the nature of the case admits, as in the case of an 
improvement,  any independent claim should contain in the following order, 
(1) a preamble  comprising a general description of all the elements or 
steps of the claimed  combination which are conventional 
or known, (2) a phrase such as  "wherein the improvement comprises," and 
(3)  those elements, steps and/or relationships which constitute 
that portion of the claimed combination which the applicant con- 
siders as the new or improved portion. 

        (f)   If there are several claims, they shall be numbered consec- 
utively in Arabic numerals. 

        (g)   All dependent claims should be grouped together with 

NOTE 

        Numbering of Claims, MPEP # 608.01(j). 

        Form of Claims, MPEP # 608.01(m). 

        Dependent claims, MPEP # 608.01(n). 

        Examination of claims, MPEP # 706. 

        Claims in excess of fee, MPEP # 714.10. 


608.01(j) Numbering of Claims [R-1] 


37 CFR 1.126    .Numbering of claims. 

        The original numbering of the claims must be preserved 
throughout the prosecution. When claims are canceled the remaining  claims 
must not be renumbered. When claims are added, except 
when presented in accordance with # 1.121(b), they must be numbered  by 
the applicant consecutively beginning with the number 
next following the highest numbered claim previously presented 
(whether entered or not). When the application is ready for allowance, the 
examiner, if necessary, will renumber the claims consecutively  in the 
order in which they appear or in such order as may 
have been requested by applicant. 

        In a single claim case, the claim is not numbered. 

        Form Paragraph 6.17 may be used to notify applicant. 

W 6.17      Numbering of Claims, 37 CFR 1.126 

        The numbering of claims is not in accordance with 37 CFR 
1.126. The original numbering of the claims must be preserved throughout 
the  prosecution. When claims are canceled, the remaining claims must not 
be renumbered. When claims are added, except when presented in accordance 
with 37 CFR * 1.121(b), they must 
be numbered consecutively beginning with the number next following the 
highest numbered claims previously presented (whether entered or not). 

        Misnumbered claims [1] have been renumbered [2], respectively. 

608.01(k) Statutory Requirement of Claims 


        35 U.S.C. 112 requires that the applicant shall particularly point 
 out and distinctly claim the subject matter which he or she regards as 
his  or her invention. The portion of the application in which he or she 
does this  forms the claim or claims. This is an important part of the 
application, as  it is the definition of that for which protection is granted. 


608.01(l) Original Claims 


        In establishing a disclosure, applicant may rely not only on the 
description  and drawing as filed but also on the original claims if their 
content justifies  it. 

        Where subject matter not shown in the drawing or described in the 
description  is claimed in the case as filed, and such original claim 
itself constitutes  a clear disclosure of this  subject matter, then the 
claim should be treated  on its merits, and requirement made to amend the 
drawing and description to  show this subject matter.  The claim should 
not be attacked either by objection  or rejection because this subject 
matter is lacking in the drawing and description.  It is the drawing and 
description that are defective; not the claim. 
        It is, of course, to be understood that this disclosure in the 
claim  must be sufficiently specific and detailed to support the necessary 
amendment  of the drawing and description. 


608.01(m) Form of Claims [R-1] 


        While there is no set statutory form for claims, the present 
Office  practice is to insist that each claim must be the object of a 
sentence starting  with ``I (or we) claim'', ``The invention claimed is'' 
(or the equivalent). 
 If, at the time of allowance, the quoted terminology is not present, it 
is  inserted by the clerk. Each claim begins with a capital letter and 
ends with  a period. Periods may not be used elsewhere in the claims 
except for abbreviations.  >See Fressola v. Manbeck, (D.D.C. 1995).< 
A claim may be typed with the various elements subdivided in paragraph 
form. 
        There may be plural indentations to further segregate 
subcombinations  or related steps. In general, the printed patent copies 
will follow the format  used but printing difficulties or expense may 
prevent the duplication of unduly  complex claim formats. 

        Reference characters corresponding to elements recited in the 
detailed  description and the drawings may be used in conjunction with the 
recitation  of the same element or group of elements in the claims. The 
reference characters,  however, should be enclosed within parentheses so 
as to avoid confusion with  other numbers or characters which may appear 
in the claims. The use of reference  characters is to be considered as 
having no effect on the scope of the claims. 
        Many of the difficulties encountered in the prosecution of patent 
applications  after final rejection may be 
alleviated if each applicant includes, at the time of filing or no later 
than  the first response, claims varying from the broadest to which he or 
she believes  he or she is entitled to the most detailed that he or she is 
willing to accept. 
        Claims should preferably be arranged in order of scope so that the 
 first claim presented is the broadest. Where separate species are 
claimed,  the claims of like species should be grouped together where 
possible and physically  separated by drawing a line between claims or 
groups of claims. (Both of these  provisions may not be practical or 
possible where several species claims depend  from the same generic 
claim.) Similarly, product and process claims should  be separately 
grouped. Such arrangements are for the purpose of facilitating 
classification and examination. 

        The form of claim required in 37 CFR 1.75(e) is particularly 
adapted  for the description of improvement-type inventions. It is to be 
considered  a combination claim. The preamble of this form of claim is 
considered to positively  and clearly include all the elements or steps 
recited therein as a part of  the claimed combination. 

        For rejections not based on prior art, see MPEP 
# 706.03. 

        >Amendments to the claims must be in compliance with 37 CFR 1.121. 
 Form paragraphs 6.33 and 6.34 may be used to inform applicant of 
non-entry  of amendments to the claims. 

# 6.33      Amendment to the Claims, 37 CFR 1.121 

        The amendment to the claims has not been entered because 
it requests the addition of more than 5 words in any one claim.  See 37 
CFR 1.121(c) below: 

(c)   A particular claim may be amended in the manner indicated for the 
application  in paragraph (a) of this section to the extent of corrections 
in spelling,  punctuation, and typographical errors. Additional amendments 
in this manner  will 
be admitted provided the changes are limited to (1) dele- 
tions and/or (2) the addition of no more than five words in any one claim. 
 Any amendments submitted with instructions 
to amend particular claims but failing to conform to the provisions of 
paragraphs 
(b) and (c) of this section may be considered nonresponsive and treated 
accordingly. 
        The amendment to the claims should be made in accordance 
with 37 CFR 1.121(b) which states: 

(b)   Except as otherwise provided herein, a particular claim may be 
amended  only by directions to cancel or by rewriting such claim with 
underlining below  the word or words added and brackets around the word or 
words deleted.  The  rewriting of 
a claim in this form will be construed as directing the cancella- tion of 
the original claim; however, the original claim num- 
ber followed by the parenthetical word "amended" must be 
used for the rewritten claim. If a previously rewritten claim 
is rewritten, underlining and bracketing will be applied 
in refer-ence to the previously rewritten claim with the paren-thetical 
expression  "twice amended", "three times amend- 
ed", etc., following the original claim number. 

        Applicant is given a ONE MONTH TIME LIMIT from 
 the date of this letter, or until the expiration of the period 
for response set in the last office action, whichever is longer, 
 to complete the response. NO EXTENSION OF THIS 
TIME LIMIT MAY BE GRANTED UNDER EITHER 
37 CFR 1.136(a) OR (b), but the period for response set 
in the last Office action may be extended up to a maximum 
of SIX MONTHS. 

# 6.34      Amendment to the Claims, Brackets or Underlining Cannot be 
Used 
        The claims of this application contain underlining or brackets 
that  are intended to appear in the printed patent or are properly part of 
the claimed  material. The brackets or underlining are not intended to 
indicate amendments  or changes in the claims.  Under these conditions, 
proposed amendments to the  claims may not be made by underlining words 
added or by bracketing words that  are to be deleted.  Accordingly, the 
proposed amendments to the claims have  not been entered.  See 37 CFR 
1.121(d). 

        Applicant is given a  ONE MONTH TIME LIMIT from  the date of this 
letter,  or until the expiration of the period for response set in the 
last office action,  whichever is longer, to complete the response .  NO 
EXTENSION OF THIS TIME  LIMIT MAY BE GRANTED UNDER EITHER 37 CFR 1.136(a) 
OR (b), but the period for  response set in the last Office action may be 
extended up to a maximum of SIX  MONTHS.< 


608.01(n) Dependent Claims [R-1] 


        37 CFR 1.75(c) reads as follows for applications filed prior to 
January  24, 1978: 

        (c)   When more than one claim is presented, they may be placed in 
dependent form in which a claim may refer back to and further re- strict a 
single preceding claim. Claims in dependent form shall 
be construed to include all the limitations of the claim incorporated by 
reference into the dependent claim. 

MULTIPLE DEPENDENT CLAIMS 

        37 CFR 1.75(c) reads as follows for applications 
filed on and after January 24, 1978. 

 37 CFR 1.75. Claim(s). 

***** 

        (c)   one or more claims may be presented in dependent form, 
referring  back to and further limiting another claim or claims in the 
same application. Any dependent claim which refers to more than 
one other claim (multiple dependent claim) shall refer to such 
other claims in the alternative only.  A multiple dependent claim shall 
not serve as a basis for any other multiple dependent claim. For 
fee calculation purposes under # 1.16, a multiple dependent claim will be 
considered to be that number of claims to which direct refer- ence is made 
therein. For fee calculation purposes, also, any claim depending  from a 
multiple dependent claim will be considered to be 
that number of claims to which direct reference is made in that multi- ple 
dependent claim. In addition to the other filing fees, any origi- nal 
application which is filed with, or is amended to include, multi- ple 
dependent claims must have paid therein the fee set forth in 
# 1.16(d). Claims in dependent form shall be construed to include all the 
limitations of the claim incorporated by reference into the dependent 
claim.  A multiple dependent claim shall be construed to incorporate by 
reference  all the limitations of each of the particular claims in 
relation to which it  is being considered. 

***** 

        Generally, a multiple dependent claim is a dependent claim which 
refers  back in the alternative to more than one preceding independent or 
dependent  claim. 

        The second paragraph of 35 U.S.C. 112 has been revised in view of 
the  multiple dependent claim practice introduced by the Patent 
Cooperation Treaty.  Thus, 
35 U.S.C. 112 authorizes multiple dependent claims in applications filed 
on  and after January 24, 1978, as long as they are in the alternative 
form (e.g.,  "A machine according to claims 3 or 4, further comprising --- 
"). Cumulative claiming (e.g.,``A machine according to claims 3 and 4, 
further  comprising ---'' ) is not permitted.  A multiple dependent claim 
may refer in the alternative to only one  set of claims. A claim such as 
``A device as in claims 1, 2, 3, or 4, made  by a process of claims 
5, 6, 7, or 8" is improper.  Section 112 allows reference to only a 
particular  claim. Furthermore, a multiple dependent claim may not serve 
as a basis for  any other multiple dependent claim, either directly or 
indirectly. These limitations  help to avoid undue confusion in 
determining how many prior claims are actually  referred to in a multiple 
dependent claim. 

        A multiple dependent claim which depends from another multiple 
dependent  claim should be objected to by using Form Paragraph 7.45. 

W 7.45      Improper Multiple Dependent Claims 

        Claim [1] objected to under 37 CFR 1.75(c) as being in improper 
form  because a multiple dependent claim [2]. See MPEP >#<  608.01(n). 
Accordingly,  [3] has not been further treated on the merits. 

Examiner's Note: 

        1.  In bracket 2, insert "should refer to other claims in the 
alternative  only" and/or, ``cannot depend from any other multiple 
dependent claim 4.'' 
        2.  Use this paragraph rather than 35 U.S.C. 112, fifth paragraph. 
        3.  In bracket 3, insert  "the claim has or these claims have." 
        Assume each claim example given below is from a different 
application. 
ACCEPTABLE MULTIPLE DEPENDENT 
CLAIM WORDING 

Claim 5.        A gadget according to claims 3 or 4, further comprising 
--- 
Claim 5.        A gadget as in any one of the preceding claims, in which 
--- 
Claim 3.        A gadget as in either claim 1 or claim 2, further 
comprising  --- 

Claim 4.        A gadget as in claim 2 or 3, further comprising - 
Claim 16. A gadget as in claims 1, 7, 12, or 15, further comprising --- 
Claim 5.        A gadget as in any of the preceding claims, in which --- 
Claim 8.        A gadget as in one of claims 4-7, in 
which --- 

Claim 5.        A gadget as in any preceding claim, in 
which --- 

Claim 10. A gadget as in any of claims 1-3 or 7-9, in which --- 

Claim 11. A gadget as in any one of claims 1, 2, or 7-10 inclusive, in 
which  --- 

UNACCEPTABLE MULTIPLE DEPENDENT CLAIM WORDING 

A. Claim does not refer back in the alternative only 

Claim 5.        A gadget according to claim 3 and 4, further comprising 
--- 
Claim 9.        A gadget according to claims 1-3, in 
which --- 

Claim 9.        A gadget as in claims 1 or 2 and 7 or 8, 
which --- 

Claim 6.        A gadget as in the preceding claims in 
which --- 

Claim 6.        A gadget as in claims 1, 2, 3, 4 and/or 5, in which --- 
Claim 10. A gadget as in claims 1-3 or 7-9, in 
which --- 

B. Claim does not refer to a preceding claim 

Claim 3.        A gadget as in any of the following claims, in which --- 
Claim 5.        A gadget as in either claim 6 or claim 8, in which --- 
C. Reference to two sets of claims to different features 

Claim 9. A gadget as in claim 1 or 4 made by the process of claims 5, 6, 
7,  or 8, in which --- 

D. (Reference back to another multiple dependent claim) 

Claim 8. A gadget as in claim 5 (claim 5 is a multiple 
dependent claim) or claim 7, in which --- 

        35 U.S.C. 112 indicates that the limitations or elements of each 
claim  incorporated by reference into a multiple dependent claim must be 
considered  separately. Thus, a multiple dependent claim, as such, does 
not contain all  the limitations of all the alternative claims to which it 
refers, but rather  contains in any one embodiment only those limitations 
of the particular claim  referred to for the embodiment under 
consideration. Hence, a multiple dependent  claim must be considered in 
the same manner as a plurality of single dependent  claims. 

Restriction Practice 

        For restriction purposes, each embodiment of a multiple dependent 
claim  is considered in the same manner as a single dependent claim. 
Therefore, restriction  may be required between the embodiments of a 
multiple dependent claim. Also, some  embodiments of a multiple dependent 
claim may be held withdrawn while other  embodiments are considered on 
their merits. 

Handling of Multiple Dependent Claims 
by the Application Branch 

        The Application Division is responsible for verifying whether 
multiple  dependent claims filed with the application are in proper 
alternative form,  that they depend only upon prior independent or single 
dependent claims and  also for calculating the amount of the filing fee. A 
new form, PTO-1360, has  been designed to be used in conjunction with the 
current fee calculation form  PTO-875. 

Handling of Multiple Dependent Claims 
by the Examining Group Clerical Staff 

        The examining group clerical staff is responsible for verifying 
compliance  with the statute and rules of multiple dependent claims added 
by amendment  and for calculating the amount of any additional fees 
required.  This calculation  should be performed on form PTO-1360. 

        There is no need for a group clerk to check the accuracy of the 
initial  filing fee since this has already been verified by the 
Application Branch when  granting the filing date. 

        If a multiple dependent claim (or claims) is added in an amendment 
 without the proper fee, either by adding references to prior claims or by 
adding  a new multiple dependent claim, the amendment should not be 
entered until the  fee has been received.  In view of the requirements for 
multiple dependent  claims, no amendment containing new claims or changing 
the dependency of claims  should be entered before checking whether the 
paid fees cover the costs of  the amended claims. The applicant, or his or 
her attorney or agent, should  be contacted to pay the additional fee. 
Where a letter is written in an insufficient  fee situation, a copy of the 
multiple dependent claim fee calculation, form  PTO-1360, should be 
included for applicant's information. 

        If an application filed prior to October 1, 1982, is amended on or 
 after October 1, 1982, to include a proper multiple dependent claim for 
the  first time, the fee set forth in w 1.16(d) must be paid. 

        If such an application contained a proper multiple dependent claim 
 prior to October 1, 1982, the fee set forth in w 1.16(d) does not apply. 
        Where the group clerk notes that the reference to the prior claims 
 is improper in an added or amended multiple dependent claim, a notation 
should  be made in the left margin next to the claim itself and the number 
1, which  is inserted in the "Dep. Claim" column of that amendment on form 
PTO-1360,  should be circled in order to call this matter to the 
examiner's attention. 
Handling of Multiple Dependent Claims by 
the Examiner 

        Should any multiple dependent claim be in an application filed 
prior  to January 24, 1978 or include a claim association or claim 
structure that  violates any of the prohibitions, the claim should be 
objected to as not being  in proper form as required by 37 CFR 1.75 in the 
next Office action. Such an  improper claim need not be further treated on 
the merits. 

        Public Law 94-131, the implementing legislation for the Patent 
Cooperation  Treaty amended 35 U.S.C. 112 to state that "a claim in 
dependent form shall  contain a reference to a claim previously set 
forth."  The requirement to refer  to a previous claim had existed only in 
37 CFR 1.75(c) before. 

        The following procedures are to be followed by examiners when 
faced  with claims which refer to numerically succeeding claims: 

        If any series of dependent claims contains a claim with an 
improper  reference to a numerically following claim which cannot be 
understood, the  claim referring to a following claim should normally be 
objected to and not  treated on the merits. 

        However, in situations where a claim refers to a numerically 
following  claim and the dependency is clear, both as presented and as it 
will be renumbered  at issue, all claims should be examined on the merits 
and no objection as to  form need be made. In such cases, the examiner 
will renumber the claims into  proper order at the time the application is 
allowed. (See example B, below.) 
        Any unusual problems should be brought to the supervisor's 
attention. 
Example  A 

        (Claims 4 and 6 should be objected to as not being understood and 
should  not be treated on the merits.) 

        1.  Independent 

        2.  Dependent on claim 5 

        3.  Dependent on claim 2 

        4.   ". . . as in any preceding claim" 

        5.  Independent 

        6.  Dependent on claim 4 

Example  B 

        NOTE: Parenthetical numerals represent the claim numbering for 
issue  should all claims be allowed. 

        (All claims should be examined.) 

        1.  (1) Independent 

        2.  (5) Dependent on claim 5 (4) 

        3.  (2) Dependent on claim 1 (1) 

        4.  (3) Dependent on claim 3 (2) 

        5.  (4) Dependent on either claim 1 (1) or claim 3 (2) 

        The following practice is followed by patent exam- 
iners when making reference to a dependent claim - 
either singular or multiple: 

        1.  When identifying a singular dependent claim which does not 
include  a reference to a multiple dependent claim, either directly or 
indirectly, reference  should be made only to the number of the dependent 
claim. 

        2.  When identifying the embodiments included within a multiple 
dependent  claim, or a singular dependent claim which includes a reference 
to a multiple  dependent claim, either directly or indirectly, each 
embodiment should be identified  by using the number of the claims 
involved, starting with the highest, to the  extent necessary to 
specifically identify each embodiment. 

        3.  When all embodiments included within a multiple dependent 
claim  or a singular dependent claim which includes a reference to a 
multiple dependent  claim, either directly or indirectly, are subject to a 
common rejection, objection,  or requirement, reference may be made only 
to the number of the dependent claim. 
        The following table illustrates the current practice where each 
embodiment  of each claim must be treated on an individual basis: 


1       Independent   1       1 

2       Depends from 1      2/1       2 

3       Depends from 2          3/2/1     3 

4       Depends from 2 or 3       4/2/1       4/2 

                                4/3/2/1       4/3 

5       Depends from 3      5/3/2/1   5 

6       Depends from 2, 3, or 5       6/2/1   6/2 

                                6/3/2/1       6/3 

                                6/5/3/2/1 6/5 

7       Depends from 6      7/6/2/1   7/6/2 

                                7/6/3/2/1   7/6/3 

                                7/6/5/3/2/1   7/6/5 



        When all embodiments in a multiple dependent claim situation 
(claims  4, 6, and 7 above) are subject to a common rejection, objection, 
or requirements,  reference may be made to the number of the individual 
dependent claim only.  For example, if 4/2 and 4/3 were subject to a 
common ground of rejection, reference  should be made only to claim 4 in 
the statement of that rejection. 
        The provisions of 35 U.S.C.132 require that each 
office action make it explicitly clear what rejection, objection and/or 
requirement  is applied to each claim embodiment. 

Calculation of Fees When Multiple Dependent Claims Are Presented, Use of 
Form  PTO-1360 

        To assist in the computation of the fees for multiple dependent 
claims,  a separate ``Multiple Dependent Claim Fee Calculation Sheet,'' 
form PTO-1360,  has been designed for use with the current ``Patent 
Application Fee Determination  Record'', form PTO-875. Form PTO-1360 will 
be placed in the file wrapper by  the Application Branch where multiple 
dependent claims are in the application  as filed. If multiple dependent 
claims are not included upon filing, but are  later added by amendment, 
the examining group clerical staff will place the  form in the file 
wrapper. If there are multiple dependent claims in the application,  the 
total number of independent and dependent claims for fee purposes will  be 
calculated on form PTO-1360 and the total number of claims and number of 
independent claims is then placed on form PTO-875 for final fee 
calculation  purposes. 

Calculating Fees for Multiple Dependent Claims 

Proper Multiple Dependent Claim 

        35 U.S.C. 41(a), provides that claims in proper multiple dependent 
 form may not be considered as single dependent claims for the purpose of 
calculating  fees. Thus, a multiple dependent claim is considered to be 
that number of dependent  claims to which it refers. Any proper claim 
depending directly or indirectly from a multiple dependent claim is also 
considered as the number of de-pendent claims as referred to in the 
multiple  dependent claim from which it depends. 

Improper Multiple Dependent Claim 

        If any multiple dependent claim is improper, Application Branch 
may  indicate that fact by placing an encircled numeral ``1'' in the "Dep. 
Claims"  column of form PTO-1360. The fee for any improper multiple 
dependent claim,  whether it is defective for either not being in the 
alternative form or for  being directly or indirectly dependent on a prior 
multiple dependent claim,  will only be one, since only an objection to 
the form of such a claim will  normally be made. This procedure also 
greatly simplifies the calculation of  fees. Any claim depending from an 
improper multiple dependent claim will also  be considered to be improper 
and be counted as one dependent claim. 
Fee calculation example 

Claim No.   Ind.        Dep. 

 1.             Independent   1 

 2.             Dependent on claim 1      1 

 3.             Dependent on claim 2      1 

 4.             Dependent on claim 2 or 3   2 

 5.             Dependent on claim 4      2 

 6.             Dependent on claim 5      2 

 7.             Dependent on claim 4, 5 or 6 

 8.             Dependent on claim 7 

 9.             Independent   1 

10.             Dependent on claim 1 or 9   2 

11.             Dependent on claims 1 and 9 

  ___________ 

                Total     2   13 

Comments on Fee Calculation Example 

Claim 1  - This is an independent claim; therefore, a numeral  "1" is 
placed  opposite claim number 1 in the "Ind." column. 

Claim 2  -  Since this is a claim dependent on a single independent claim, 
 a numeral "1" is placed opposite claim number 2 of the "Dep." column. 
Claim 3   -  Claim 3 is also a single dependent claim, so a numeral "1" is 
 placed in the "Dep." column. 

Claim 4  -  Claim 4 is a proper multiple dependent claim. It refers 
directly  to two claims in the alternative, namely, claim 2 or 3. 
Therefore, a numeral  "2" to indicate direct reference to two claims is 
placed in the "Dep." column  opposite claim number 4. 

Claim 5  -  This claim is a singularly dependent claim depending from a 
multiple  dependent claim. For fee calculation purposes, such a claim is 
counted as being  that number of claims to which direct reference is made 
in the multiple dependent  claim from which it depends. In this case, the 
multiple dependent claim number  4 it depends from counts as 2 claims; 
therefore, claim 5 also counts as 2 claims.  Accordingly, a numeral  "2" 
is placed opposite claim number 5 in the  "Dep." 
 column. 

Claim 6  -  Claim 6 depends indirectly from a multiple dependent claim 4. 
 Since claim 4 counts as 2 claims, claim 6 also counts as 2 dependent 
claims. 
 Consequently, a numeral  "2"  is placed in the  "Dep."  column after 
claim  6. 

Claim 7  -  This claim is a multiple dependent claim since it refers to 
claims  4, 5, or 6.  However, as can be seen by looking at the  "2'  in 
the  "Dep.' 
 column opposite claim 4, claim 7 depends from a multiple dependent claim. 
 This practice is improper under 35 U.S.C. 112 and 37 CFR 1.75(c). 
Following  the procedure for calculating fees for improper multiple 
dependent claims,  a numeral  "1"  is placed in the "Dep." column with a 
circle drawn around it  to alert the examiner that the claim is improper. 

Claim 8  -  Claim 8 is improper since it depends from an improper claim. 
If  the base claim is in error, this error cannot be corrected by adding 
additional  claims depending therefrom. Therefore, a numeral "1" with a 
circle around it  is placed in the "Dep." column. 

Claim 9  -  Here again we have an independent claim which is always 
indicated  with a numeral "1" in the "Ind." column opposite the claim 
number. 
Claim 10  -  This claim refers to two independent claims in the 
alternative.  A numeral "2" is, therefore, placed in the "Dep." column 
opposite claim 10. 
Claim 11  -  Claim 11 is a dependent claim which refers to two claims in 
the  conjunctive ( "1" and "9" ) rather than in the alternative ( "1" or 
"9" ).  This form is improper under 35 U.S.C. 112 and 37 CFR 1.75(c). 
Accordingly,  since claim 11 is improper, an encircled number "1" is 
placed in the "Dep."  column opposite Claim 11. 

Calculation of Filing Fee Involving 
Dependent Claims 

        After the number of  "Ind." and "Dep." claims are noted on form 
PTO-1360,  each column is added. In this example, there are 2 independent 
claims and 13  dependent claims or a total of 15 claims. The number of 
independent and total claims  can then be placed on form PTO-875 and the 
fee calculated. 

TREATMENT OF IMPROPER DEPENDENT CLAIMS 

        The initial determination, for fee purposes, as to whether a claim 
 is dependent must be made by persons other than examiners; it is 
necessary,  at that time, to accept as dependent virtually every claim 
which refers to  another claim, without determining whether there is 
actually a true dependent  relationship. The initial acceptance of a claim 
as a dependent claim does not,  however, preclude a subsequent holding by 
the examiner that a claim is not  a proper dependent claim. Any claim 
which is in dependent form but which is  so worded that it, in fact is 
not, as, for example, it does not include every  limitation of the claim 
on which it depends, will be required to be cancelled  as not being a 
proper dependent claim; and cancelation of any further claim  depending on 
such a de- 

pendent claim will be similarly required. The applicant may thereupon 
amend  the claims to place them in proper dependent form, or may redraft 
them as independent  claims, upon payment of any necessary additional fee. 

INFRINGEMENT TEST 

        The test as to whether a claim is a proper dependent claim is that 
 it shall include every limitation of the claim from which it depends (35 
U.S.C.  112, fourth paragraph) or in other words that it shall not 
conceivably be infringed  by anything which would not also infringe the 
basic claim. 

        A dependent claim does not lack compliance with 
35 U.S.C. 112, fourth paragraph, simply because there is a question as to 
(1)  the significance of the further limitation added by the dependent 
claim, or 
(2) whether the further limitation in fact changes the scope of the 
dependent  claim from that of the claim from which it depends. The test 
for a proper dependent  claim under the fourth paragraph of 35 U.S.C. 112 
is whether the dependent  claim includes every limitation of the claim 
from which it depends. The test  is not one of whether the claims differ 
in scope. 

        Thus, for example, if claim 1 recites the combination of elements 
A,  B, C, and D, a claim reciting the structure of claim 1 in which D was 
omitted  or replaced by E would not be a proper dependent claim, even 
though it placed  further limitations on the remaining elements or added 
still other elements. 
        Examiners are reminded that a dependent claim is directed to a 
combination  including everything recited in the base claim and what is 
recited in the dependent  claim. It is this combination that must be 
compared with the prior art, exactly  as if it were presented as one 
independent claim. 

        The fact that a dependent claim which is otherwise proper might 
relate  to a separate invention which would require a separate search or 
be separately  classified from the claim on which it depends would not 
render it an improper  dependent claim, although it might result in a 
requirement for restriction. 
        The fact that the independent and dependent claims are in 
different  statutory classes does not, in itself, render the latter 
improper. Thus, if  claim 1 recites a specific product, a claim for the 
method of making the product  of claim 1 in a particular manner would be a 
proper dependent claim since it  could not be infringed without infringing 
claim 1. Similarly, if claim 1 recites  a method of making a product, a 
claim for a product made by the method of claim  1 could be a proper 
dependent claim. On the other hand, if claim 1 recites  a method of making 
a specified product, a claim to the product set forth in  claim 1 would 
not be a proper dependent claim if the product might be made  in other 
ways. Note, that since 37 CFR 1.75(c) requires the dependent claim  to 
further limit a preceding claim, this rule does not apply to 
product-by-process  claims. 

CLAIM FORM AND ARRANGEMENT 

        A singular dependent claim 2 could read as follows: 

        2. The product of claim 1 in which . . . 

        A series of singular dependent claims is permissible in which a 
dependent  claim refers to a preceding claim which, in turn, refers to 
another preceding  claim. 

        A claim which depends from a dependent claim should not be 
separated  therefrom by any claim which does not also depend from said 
"dependent claim."  It should be kept in mind that a dependent claim may 
refer back to any preceding  independent claim. These are are the only 
restrictions with respect to the  sequence of claims and, in general, 
applicant's sequence should not be changed.  See MPEP w 608.01(j). 
Applicant may be so advised by using Form Paragraph 6.18. 
W 6.18      Series of Singular Dependent Claims 

        A series of singular dependent claims is permissible in which a 
dependent  claim refers to a preceding claim which, in turn, refers to 
another preceding  claim. 

        A claim which depends from a dependent claim should not be 
separated  by any claim which does not also depend from said dependent 
claim. It should  be kept in mind that a dependent claim may refer to any 
preceding independent  claim. In general, applicant's sequence will not be 
changed. See w 608.01(n)  MPEP. 

        During prosecution, the order of claims may change and be in 
conflict  with the requirement that dependent claims refer to a preceding 
claim. Accordingly,  the numbering of dependent claims and the numbers of 
preceding claims referred  to in dependent claims should be carefully 
checked when claims are renumbered  upon allowance. 

REJECTION AND OBJECTION 

        If the base claim has been cancelled, a claim which is directly or 
 indirectly dependent thereon should be rejected as incomplete. If the 
base  claim is rejected, the dependent claim should be objected to rather 
than rejected,  if it is otherwise allowable. 

        Form Paragraph 7.43 can be used to state the objection. 

W 7.43      Objection to Claims, Allowable Subject Matter 

        Claim [1] objected to as being dependent upon a rejected base 
claim,  but would be allowable if rewritten in independent form including 
all of the  limitations of the base claim and any intervening claims. 


608.01(o) Basis for Claim Terminology in Description 


        The meaning of every term used in any of the claims should be 
apparent  from the descriptive portion of the specification with clear 
disclosure as  to its import; and in mechanical cases, it should be 
identified in the descriptive  portion of the specification by reference 
to the drawing, designating the part  or parts therein to which the term 
applies. A term used in the claims may be  given a special meaning in the 
description. No term may be given a meaning  repugnant to the usual 
meaning of the term. 

        Usually the terminology of the original claims follows the 
nomenclature  of the specification, but sometimes in amending the claims 
or in adding new  claims, new terms are introduced that do not appear in 
the specification. The  use of a confusing variety of terms for the same 
thing should not be permitted. 
        New claims and amendments to the claims already in the case should 
 be scrutinized not only for new matter but also for new terminology. 
While  an applicant is not limited to the nomenclature used in the 
application as  filed, yet, whenever by amendment of his claims, he or she 
departs therefrom,  he or she should make appropriate amendment of the 
specification so as to have  therein clear support or antecedent basis for 
the new terms appearing in the  claims. This is necessary in order to 
insure certainty in construing the claims  in the light of the 
specification, Ex parte Kotler 1901 C.D. 62; 95 O.G. 2684.  See 37 CFR 
1.75, MPEP w 608.01(i) and w 1302.01. 

        The specification should be objected to if it does not provide 
proper  antecedent basis for the claims by using Form Paragraph 7.44. 

W 7.44      Claimed Subject Matter Not in Specification 

        The specification is objected to as failing to provide proper 
antecedent  basis for the claimed subject matter. See 37 CFR 1.75(d)(1) 
and MPEP # 608.01(o).  Correction of the following is required: [1]. 


608.01(p) Completeness [R-2] 


        Newly filed applications obviously failing to disclose an 
invention  with the clarity required are discussed in MPEP w 702.01. 

        A disclosure in an application, to be complete, must contain such 
description  and details as to enable any person skilled in the art or 
science to which  the invention pertains to make and use the invention as 
of its filing date,  In re Glass, 492 F.2d 1228; 181 USPQ 31 (CCPA 1974). 

        While the prior art setting may be mentioned in general terms, the 
 essential novelty, the essence of the invention, must be described in 
such  details, including proportions and techniques, where necessary, as 
to enable  those persons skilled in the art to make and utilize the 
invention. 
        Specific operative embodiments or examples of the invention must 
be  set forth. Examples and description should be of sufficient scope as 
to justify  the scope of the claims. Markush claims must be provided with 
support in the  disclosure for each member of the Markush group. Where the 
constitution and  formula of a chemical compound is stated only as a 
probability or speculation,  the disclosure is not sufficient to support 
claims identifying the compound  by such composition or formula. 

        A complete disclosure should include a statement of utility. This 
usually  presents no problem in mechanical cases. In chemical cases, 
varying degrees of specificity are required. 
        A disclosure involving a new chemical compound or composition must 
 teach persons skilled in the art how to make the compound or composition. 
Incomplete  teachings may not be completed by reference to subsequently 
filed applications. 
        For "Guidelines for Examination of Applications for Compliance 
with  the Utility Requirement of 35 U.S.C. 101'', see MPEP w 706.03(a)(1). 
        For "Overview of Legal Precedent Governing Utility Requirement'', 
see  MPEP w 2107. 

        For a discussion of the utility requirement under 
35 U.S.C. 112, first paragraph, in drug cases, see MPEP 
w 2164.07(a)(4). 

        For ``Procedural Considerations Related to Utility Rejections", 
see  MPEP w 2107.01. 

        For ``Special Considerations for Asserted Therapeutic or 
Pharmacological  Utilities", see MPEP w 2107.02. 

 INCORPORATION BY REFERENCE 

        The Commissioner has considerable discretion in determining what 
may  or may not be incorporated by ref- 
erence in a patent application. General Electric Co. v. Brenner, 407 F.2d 
1258,  159 USPQ 335 (D.C. Cir. 1968). The following is the manner in which 
the Commissioner  has elected to exercise that discretion. Section 1 
provides the guidance for  incorporation by reference in applications 
which are to issue as U.S. patents.  Section 2 provides guidance for 
incorporation by reference in benefit applications;  i.e., those domestic 
(35 U.S.C. 120) or foreign (35 U.S.C. 119) applications  relied on to 
establish an earlier effective filing date. 

1.  Review of Applications Which Are To Issue As Patents. 

        An application as filed must be complete in itself 
in order to comply with 35 U.S.C. 112.  Material nev- 
ertheless may be incorporated by reference, Ex parte Schwarze, 151 USPQ 
426 
(Bd. App. 1966). An application for a patent when filed may incorporate 
``essential  material" by reference to (1) a U.S. patent or (2) ** >a 
pending< U.S. application  **, subject to the conditions set forth below. 
``Essential material" is defined  as that which is necessary to (1) 
describe the claimed invention, (2) provide  an enabling disclosure of the 
claimed invention, or (3) describe the best mode 
(35 U.S.C. 112). In any application which is to issue as a U.S. patent, 
essential  material may not be incorporated by reference to (1) patents or 
applications  published by foreign countries or a regional patent office, 
(2) non-patent  publications, (3) a U.S. patent or application which 
itself incorporates ``essential  material" by reference, or (4) a foreign 
application. See In re Fouche, 439  F.2d 1237, 169 USPQ 429 (CCPA 1971). 

        Nonessential subject matter may be incorporated by reference to 
(1)  patents or applications published by the United States or foreign 
countries  or regional patent 
offices, (2) prior filed, commonly owned U.S. applications, or (3) 
non-patent  publications. Nonessential subject matter is subject matter 
referred to for  purposes of indicating the background of the invention or 
illustrating the  state of the art. 

        Mere reference to another application, patent, or publication is 
not  an incorporation of anything therein into the application containing 
such reference  for the purpose of the disclosure required by 35 U.S.C. 
112, first paragraph. 
 In re de Seversky, 474 F.2d 671, 177 USPQ 144, (CCPA 1973).  In addition 
to  other requirements for an application, the referencing application 
should include  an identification of the referenced patent, application, 
or publication. Particular  attention should be directed to specific 
portions of the referenced document  where the subject matter being 
incorporated may be found. Guidelines for situations  where applicant is 
permitted to fill in a number for Serial No. __________  left blank in the 
application as filed can be found in In re Fouche, 439 F.2d  1237, 169 
USPQ 429 (CCPA 1971) (Abandoned applications less than 20 years old  can 
be incorporated by reference to same extent as copending applications; 
both types are open to public upon referencing application issuing as a 
patent). 
 Complete Disclosure Filed 

        If an application is filed with a complete disclosure, essential 
material  may be canceled by amendment and may be substituted by reference 
to a U.S.  patent or >an earlier filed< pending >U.S.< application **. The 
amendment must  be accompanied by an affidavit or declaration signed by 
the applicant, or a  practitioner representing the applicant, stating that 
the material cancelled  from the application is the same material that has 
been incorporated by reference. 
** 

        If an application >as filed< incorporates essential material by 
reference  to a U.S. patent or a pending and commonly owned * U.S. 
application **, applicant  may be required prior to examination to furnish 
the Office with a copy of the  referenced material together with an 
affidavit or declaration executed by the  applicant, or a practitioner 
representing the applicant, stating that the copy  consists of the same 
material incorporated by reference in the referencing  application. 
However, if a copy of a printed U.S. patent is furnished, no affidavit  or 
declaration is required. 

** 

        >Prior to allowance of an application that incorporates essential 
material  by reference to a pending U.S. application, the examiner shall 
determine if  the referenced application has issued as a patent.  If the 
referenced application  has issued as a patent, the examiner shall enter 
the U.S. Patent No. of the  referenced application in the specification of 
the referencing application 
(see MPEP w 1302.04).  If the referenced application has not issued as a 
patent,<  applicant will be required to amend the disclosure of the 
referencing application  to include the material incorporated by 
reference. The amendment must be accompanied  by an affidavit or 
declaration executed by the applicant, or a practitioner  representing the 
applicant, stating the amendatory material consists of the  same material 
incorporated by reference in the referencing application. 
Improper Incorporation 

        The filing date of any application wherein essential material is 
improperly  incorporated by reference to a foreign application or patent 
or to a publication  will not be affected because of the reference. In 
such a case, the applicant  will be required to amend the specification to 
include the material incorporated  by reference. The following form 
paragraphs may be used. 

W 6.19      Incorporation by Reference, Foreign Patent or Application 
        The incorporation of essential material by reference to a foreign 
application  or foreign patent or to a publication inserted in the 
specification is improper.  Applicant is required to amend the disclosure 
to include the material incorporated  by reference. The amendment must be 
accompanied by an affidavit or declaration  executed by the applicant, or 
a practitioner representing the applicant, stating  that the amendatory 
material consists of the same material incorporated by  reference in the 
referencing application. In re Hawkins, 486 F. 2d 569, 179  USPQ 157 (CCPA 
1973); In re Hawkins, 486 F. 2d 579, 179 USPQ 163 (CCPA 1973);  In re 
Hawkins, 486 F. 2d 577, 179 USPQ 167 (CCPA 1973). 

W 6.19.>0<1   Improper Incorporation by Reference 

        The attempt to incorporate subject matter into this application by 
 reference to [1] is improper because [2]. 

Examiner Note: 

        1.  In bracket 1, identify the document such as application or 
patent  number or other identification. 

        2.  In bracket 2, give reason why it is improper. 

        The amendment must be accompanied by an affidavit or declaration 
executed  by the applicant, or a practitioner representing the applicant, 
stating that  the amendatory material consists of the same material 
incorporated by reference  in the referencing application. In 
re Hawkins, 486 F.2d 569, 179 USPQ 157 (CCPA 1973); 
In re Hawkins, 486 F.2d 579, 179 USPQ 163 (CCPA 1973); In re Hawkins, 486 
F.2d  577, 179 USPQ 167, (CCPA 1973). 

        Reliance on a commonly assigned copending application by a 
different  inventor may ordinarily be made for the purpose of completing 
the disclosure.  See In re Fried, 329 F.2d 323, 141 USPQ 27, (CCPA 1964), 
and General Electric  Co. v. Brenner, 407 F.2d 1258, 159 USPQ 335 (D.C. 
Cir 1968). 

        Since a disclosure must be complete as of the filing date, 
subsequent  publications or subsequently filed applications cannot be 
relied on to establish  a constructive reduction to practice or an 
enabling disclosure as of the filing  date. In re Glass, 492 F.2d 1228, 
181 USPQ 
31 (CCPA 1974); In re Scarbrough, 500 F.2d 560, 182 USPQ 298 (CCPA 1974); 
White  Consolidated Industries, Inc. v. Vega Servo-Control, Inc., 713 F.2d 
788, 218  USPQ 961 (Fed. Cir. 1983). 

2.  Review of Applications Which Are Relied on To 
Establish an Earlier Effective Filing Date. 

        The limitations on the material which may be incorporated by 
reference  in U.S. patent applications which are to issue as U.S. patents 
do not apply  to applications relied on only to establish an earlier 
effective filing date  under 35 U.S.C. 119 or 35 U.S.C. 120. The reason 
for incorporation by reference  practice with respect to applications 
which are to issue as U.S. patents is  to provide the public with a patent 
disclosure which minimizes the public's  burden to search for and obtain 
copies of documents incorporated by reference which may not be readily 
available. Through  the Office's incorporation by reference policy, the 
Office ensures that reasonably  complete disclosures are published as U.S. 
patents 

        The same policy concern does not apply where the sole purpose for 
which  an applicant relies on an earlier U.S. or foreign application is to 
establish  an earlier filing date. Incorporation by reference in the 
earlier application  of (1) patents or applications published by foreign 
countries or regional patent  offices, (2) nonpatent publications, (3) a 
U.S. patent or application which  itself incorporates ``essential 
material" by reference, or (4) a foreign application,  is not critical in 
the case of a ``benefit" application. 

        When an applicant, or a patent owner in a reexamination or 
interference,  claims the benefit of the filing date of an earlier 
application which incorporates  material by reference, the applicant or 
patent owner may be required to supply  copies of the material 
incorporated by reference. For example, an applicant  may claim the 
benefit of the filing date of a foreign application which itself 
incorporates by reference another earlier filed foreign application. If 
necessary,  due to an intervening reference, applicant should be required 
to supply a copy  of the earlier filed foreign application, along with an 
English language translation.  A review can then be made of the foreign 
application and all material incorporated  by reference to determine 
whether the foreign application discloses the invention  sought to be 
patented in the manner required by the first paragraph of 35 U.S.C.  112 
so that benefit may be accorded, In re Gosteli, 872 F.2d 1008, 10 USPQ2d 
1614 (Fed. Cir. 1989). 

* SIMULATED OR PREDICTED TEST RESULTS  OR PROPHETIC EXAMPLES 

        Simulated or predicted test results and prophetical examples 
(paper  examples) are permitted in patent applications. Working examples 
correspond  to work actually performed and may describe tests which have 
actually been  conducted and results that were achieved. Paper examples 
describe the manner  and process of making an embodiment of the invention 
which has not actually  been conducted. Paper examples should not be 
represented as work actually done.  No results should be represented as 
actual results unless they have actually  been achieved. Paper examples 
should not be described using the past tense. 
        NOTE.  For problems arising from the designation of materials by 
trademarks  and trade names, see MPEP 
# 608.01(v). 


608.01(q) Substitute or Rewritten Specification [R-1] 


37 CFR 1.125.     Substitute specification. 

        If the number or nature of the amendments shall render it 
difficult  to consider the case, or to arrange the papers for printing or 
copying, the  examiner may require the entire specification, including the 
claims, or any  part thereof, to be rewritten. A substitute specification 
may not be accepted  unless it has been required by the examiner or unless 
it is clear to the examiner  that acceptance of a substitute specification 
would facilitate processing of  the application. Any substitute 
specification filed must be accompanied by  a statement that the 
substitute specification includes no new matter. Such  statement must be a 
verified statement if made by a person not registered to  practice before 
the Office. 

        The specification is sometimes in such faulty English that a new 
specification  is necessary; in such instances, a new specification should 
be required. 
        Form Paragraph 6.28 may be used in where the specification is in 
faulty  English. 

W 6.28      Idiomatic English 

        A substitute specification in proper idiomatic English and in 
compliance  with 37 CFR 1.52 (a) and (b) is required. The substitute 
specification filed  must be accompanied by a statement that it contains 
no new matter. Such statement  must be a verified statement if made by a 
person not registered to practice  before the Office. 

        Form Paragraph 6.28.>0<1 may be used to require a substitute 
specification  for reasons other than faulty 
English. 

W 6.28.>0<1   Substitute Specification 

        A substitute specification is required because [1]. The substitute 
 specification filed must be accompanied by a statement that it contains 
no  new matter. Such statement must be a verified statement if made by a 
person  not registered to practice before the Office. 

Examiner Note: 

        1.In bracket 1, insert clear and concise examples of why a new 
specification  is required. 

        2.  A new specification is required if the number or nature of the 
 amendments render it difficult to consider the *>application< or to 
arrange  the papers for printing or copying, 37 CFR 1.125. 

        3.  See also form paragraph 13.01 for partial rewritten 
specification. 
        Under current practice, substitute specifications may be 
voluntarily  filed by the applicant if desired. A substitute specification 
will normally  be accepted by the Office even if it has not been required 
by the examiner.  Substitute specifications will be accepted if applicant 
submits therewith a marked-up copy which shows the portions of the 
original specification  which are being added and deleted and a statement 
that the substitute specification  includes no new matter and that the 
substitute specification includes the same  changes as are indicated in 
the marked-up copy of the original specification  showing additions and 
deletions. Such statement must be a verified statement  if made by a 
person not registered to practice before the Office. Additions  should be 
clearly indicated in the marked-up copy such as by underlining, and 
deletions should be indicated between brackets. Examiners may also require 
 a substitute specification where it is considered to be necessary. 
        However, any substitute page of the specification, or entire 
specification,  filed must be accompanied by * a statement indicating that 
no new matter was  included. The statement must be verified if made by a 
person not registered  to practice before the Office. There is no 
obligation on the examiner to make  a detailed comparison between the old 
and the new specifications for determining  whether or not new matter has 
been added. If, however, an examiner becomes  aware that new matter is 
present, objection thereto should be made. 
        The filing of a substitute specification rather than amending the 
original  application has the advantage for applicants of eliminating the 
need to prepare  an amendment of the specification. If word processing 
equipment is used by  applicants, substitute specifications can be easily 
prepared. The Office receives  the advantage of saving the time needed to 
enter amendments in the specification  and a reduction in the number of 
printing errors. 

        A substitute specification should normally be entered. See MPEP w 
714.20. 
        New matter in amendment, see MPEP w 608.04. 

        Application prepared for issue, see MPEP w 1302.02. 


608.01(r) Derogatory Remarks About Prior Art Specification 


        The applicant may refer to the general state of the art and the 
advance  thereover made by his or her invention, but he or she is not 
permitted to make  derogatory remarks concerning the inventions of others. 
Derogatory remarks  are statements disparaging the products or processes 
of any particular person  other than the applicant, or statements as to 
the merits or validity of applications  or patents of another person. Mere 
comparison with the prior art are not considered  to be disparaging, per se. 


608.01(s) Restoration of Cancelled Matter 


        Cancelled text in the specification or a cancelled claim can be 
restored  only by presenting the cancelled matter as a new insertion. See 
37 CFR 1.124,  MPEP 
w 714.24. 


608.01(t) Use in Subsequent Application 


        A reservation for a future application of subject matter disclosed 
 but not claimed in a pending application 


will not be permitted in the pending application, 37 CFR 1.79, MPEP w 
608.01(e). 
        No part of a specification can normally be transferred to another 
application.  Drawings may be transferred to another application only upon 
the granting of  a petition filed under the provisions of 37 CFR 1.182. 


608.01(u) Use of Formerly Filed Incomplete Application 



        Parts of an incomplete application which have been retained by the 
 Office may be used as part of a complete application if the missing parts 
are  later supplied. See MPEP # 506 and # 506.01. 


608.01(v) Trademarks and Names Used in Trade [R-2] 


        The expressions "trademarks" and "names used in trade" as used 
below  have the following meanings: 

        Trademark: a word, letter, symbol, or device adopted by one 
manufacturer  or merchant and used to identify and distinguish his or her 
product from those  of others.  It is a proprietary word pointing 
distinctly to the product of  one producer. 

        Names Used in Trade: a nonproprietary name by which an article or 
product  is known and called among traders or workers in the art, although 
it may not  be so known by the public, generally. Names used in trade do 
not point to the  product of one producer, but they identify a single 
article or product irrespective  of producer. 

        Names used in trade are permissible in patent applications if: 
        (1)   Their meanings are established by an accompanying definition 
 which is sufficiently precise and definite to be made a part of a claim, 
or 
        (2)   In this country, their meanings are well-known and 
satisfactorily  defined in the literature. 

        Condition (1) or (2) must be met at the time of filing of the 
complete  application. 

TRADEMARKS 

        The relationship between a trademark and the product it identifies 
 is sometimes indefinite, uncertain, and arbitrary. The formula or 
characteristics  of the product may change from time to time and yet it 
may continue to be sold  under the same trademark. In patent 
specifications, every element or ingredient  of the product should be set 
forth in positive, exact, intelligible language,  so that there will be no 
uncertainty as to what is meant. 
Arbitrary trademarks which are liable to mean different things at the 
pleasure  of manufacturers do not constitute such language; Ex Parte 
Kattwinkle, 12 USPQ  11 (Bd. Apps. 1931). 

        However, if the product to which the trademark refers is ** set 
forth  in such language that its identity is clear, the examiners are 
authorized to  permit the use of the trademark if it is distinguished from 
common descriptive  nouns by capitalization. If the trademark has a fixed 
and definite meaning,  it constitutes sufficient identification unless 
some physical or chemical characteristic  of the article or material is 
involved in the invention. In that event, as  also in those cases where 
the trademark has no fixed and definite meaning,  identification by 
scientific or other explanatory language is necessary; In  re 
Gebauer-Fuelnegg, 50 USPQ 125 (CCPA 1941). 

        The matter of sufficiency of disclosure must be decided on an 
individual  case-by-case basis, In re 
Metcalfe and Lowe, 161 USPQ 789; 869 O.G. 691 (CCPA 1969). 

        Where the identification of a trademark is intro- duced by 
amendment,  it must be restricted to the characteristics of the product 
known at the time  the application was filed to avoid any question of new 
matter. 

        If proper identification of the product sold under a trademark, or 
 a product referred to only by a name used in trade, is omitted from the 
specification  and such identification is deemed necessary under the 
principles set forth  above, the examiner should hold the disclosure 
insufficient and reject on the  ground of insufficient disclosure any 
claims based on the identification of  the product merely by trademark or 
by the name used in trade. If the product  cannot be otherwise defined, an 
amendment defining the process of its manufacture  may be permitted. Such 
amendments must be supported by satisfactory showings  establishing that 
the specific nature or process of manufacture of the product  as set forth 
in the amendment was known at the time of filing of the application. 
        Although the use of trademarks having definite meanings is 
permissible  in patent applications, the proprietary nature of the marks 
should be respected.  Trademarks should be identified by capitalizing 
**>each letter of the mark<.  Every effort should be made to prevent their 
use in any manner which might  adversely affect their validity as trademarks. 

        Form Paragraph 6.20 may be used. 

W 6.20      Trademarks and Their Use. 

        The use of the trademark [1] has been noted in this application. 
It  should be capitalized wherever it appears and be accompanied by the 
generic  terminology. 

        Although the use of trademarks is permissible in patent 
applications,  the proprietary nature of the marks should be respected and 
every effort made  to prevent their use in any manner which might 
adversely affect their validity  as trademarks. 

Examiner Note: 

        Capitalize each letter of  the word in the bracket. 

        The examiner should not permit the use of language such as "the 
product  X (a descriptive name) commonly known as Y (trademark)" since 
such language  does not bring out the fact that the latter is a trademark. 
Language such as  "the product X (a descriptive name) sold under the 
trademark Y" is permissible. 
        The use of a trademark in the title of an application should be 
avoided  as well as the use of a trademark coupled with the word "type"; 
i.e., "Band-Aid  type bandage." 

        >In the event that the proprietary trademark is a ``device" 
depicted  in a drawing, either the brief description of the drawing or the 
detailed description  of the drawing should specify that the "device" is a 
registered trademark of  Company X.< 

        The owner of a trademark may be identified in the specification. 
        Group directors should reply to all trademark misuse complaint 
letters  and forward a copy to the editor of this manual. 

        See Appendix I for a partial listing of trademarks and the 
particular  goods to which they apply. 


INCLUSION OF COPYRIGHT OR MASK WORK 
 NOTICE IN PATENTS 

37 CFR 1.71   Detailed description ... 

***** 

        (d)   A copyright or mask work notice may be placed in a design or 
 utility patent application adjacent to copyright and mask work material 
contained  therein. The notice may appear at any appropriate portion of 
the patent application  disclosure. For notices in drawings, see 1.84(s). 
The content of the notice  must be limited to only those elements required 
by law. For example, ``#1983  John Doe'' (17 U.S.C. 401) and ``M John 
Doe'' (17 U.S.C. 909) would be properly  limited and, under current 
statutes, legally sufficient notices of copyright  and mask work, 
respectively. Inclusion of a copyright or mask work notice will  be 
permitted only if the authorization language set forth in paragraph (e) 
of this section is included at the beginning (preferably as the first 
paragraph)  of the specification. 

        (e)   The authorization shall read as follows: 

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

***** 

37 CFR 1.84   Standards for drawings 

***** 

        (s) Copyright or Mask Work Notice.  A copyright or mask work 
notice  may appear in the drawing, but must be placed within the sight of 
the drawing  immediately below the figure representing the copyright or 
mask work material  and be limited to letters having a print size of .32 
cm. to .64 cm. (1/8 to  1/4 inches) high. The content of the notice must 
be limited to only those elements  provided for by law. For example, 
``#1983 John Doe'' (17 U.S.C. 401) and ``M  John Doe'' (17 U.S.C. 909) 
would be properly limited and, under current statutes,  legally sufficient 
notices of copyright and mask work, respectively. Inclusion  of a 
copyright or mask work notice will be permitted only if the authorization 
language set forth in # 1.71(e) is included at the beginning (preferably 
as  the first paragraph) of the specification. 

***** 

        The Patent and Trademark Office will permit the inclusion of a 
copyright  or mask work notice in a design or utility patent application, 
and thereby  any patent issuing therefrom,which discloses material on 
which copyright or  mask work protection has previously been established, 
under the following conditions: 
        (1)   The copyright or mask work notice must be placed adjacent to 
 the copyright or mask work material. Therefore, the notice may appear at 
any  appropriate portion of the patent application disclosure, including 
the drawing.  However, if appearing in the drawing, the notice must comply 
with 37 CFR 1.84(s).  If placed on a drawing in conformance with these 
provisions, the notice will  not be objected to as extraneous matter under 
37 CFR 1.84. 

        (2)   The content of the notice must be limited to only those 
elements  required by law. For example, "#1983 John Doe"(17 U.S.C. 401) 
and "M John Doe"(35  U.S.C. 909) would be properly limited, and under 
current statutes, legally  sufficient notices of copyright and mask work 
respectively. 

        (3)   Inclusion of a copyright or mask work notice will be 
permitted  only if the following authorization in 


37 CFR 1.71(e) is included at the beginning (preferably as the first 
paragraph)  of the specification to be printed for the patent: 

A portion of the disclosure of this patent document contains material 
which  is subject to [copyright or mask work] protection. The [copyright 
or mask work]  owner has no objection to the facsimile reproduction by any 
one of the patent  disclosure, as it appears in the Patent and Trademark 
Office patent files or  records, but otherwise reserves all [copyright or 
mask work] rights whatsoever. 
        (4)   Inclusion of a copyright or mask work notice after a Notice 
of  Allowance has been mailed will be permitted only if the criteria of 37 
CFR  1.312 have been satisfied. 

        The inclusion of a copyright or mask work notice in a design or 
utility  patent application, and thereby any patent issuing therefrom, 
under the conditions  set forth above will serve to protect the rights of 
the author/inventor, as  well as the public, and will serve to promote the 
mission and goals of the  Patent and Trademark Office. Therefore, the 
inclusion of a copyright or mask  work notice which complies with these 
conditions will be permitted. However,  any departure from these 
conditions may result in a refusal to permit the desired  inclusion. If 
the authorization required under condition (3) above does not  include the 
specific language "(t)he [copyright or mask work] owner has no  objection 
to the facsimile reproduction by anyone of the patent document or  the 
patent disclosure, as it appears in the Patent and Trademark Office patent 
 files or records,..." the notice will be objected to as improper by the 
examiner  of the application. If the examiner maintains the objection upon 
reconsideration, a petition may be filed in accordance with 37 CFR 1.181. 


608.02      Drawing [R-2] 


35 U.S.C. 113.      Drawings. 

        The applicant shall furnish a drawing where necessary for the 
understanding  of the subject matter to be patented. When the nature of 
such subject matter  admits of illustration by a drawing and the applicant 
has not furnished such  a drawing, the Commissioner may require its 
submission within a time period  of not less than two months from the 
sending of a notice thereof. Drawings  submitted after the filing date of 
the application may not be used (i) to overcome  any insufficiency of the 
specification due to lack of an enabling disclosure  or otherwise 
inadequate disclosure therein, or (ii) to supplement the original 
disclosure thereof for the purpose of interpretation of the scope of any 
claim. 
37 CFR 1.81.    Drawings required in patent application. 

        (a)   The applicant for a patent is required to furnish a drawing 
of  his or her invention where necessary for the understanding of the 
subject matter  sought to be patented; this drawing , or a high quality 
copy thereof, must  be filed with the application. Since corrections are 
the responsibility of  the applicant, the original drawing(s) should be 
retained by the applicant  for any necessary future correction. 

        (b)   Drawings may include illustrations which facilitate an 
understanding  of the invention (for example, flow sheets in cases of 
processes, and diagrammatic  views). 

  (c)     Whenever the nature of the subject matter sought to be patented 
admits  of illustration by a drawing without its being necessary for the 
understanding  of the subject matter and the applicant has not furnished 
such a drawing, the  examiner will require its submission within a time 
period of not less than  two months from the date of the sending of a 
notice thereof. 

        (d)   Drawings submitted after the filing date of the application 
may  not be used to overcome any insufficiency of the specification due to 
lack  of an enabling disclosure or otherwise inadequate disclosure 
therein, or to  supplement the original disclosure thereof for the purpose 
of interpretation  of the scope of any claim. 

37 CFR 1.84.    Standards for drawings. 

        (a)   Drawings. There are two acceptable categories for presenting 
 drawings in utility patent applications: 

        (1)   Black ink. Black and white drawings are normally required. 
India  ink, or its equivalent that secures solid black lines, must be used 
for drawings,  or 

        (2)   Color. On rare occasions, color drawings may be necessary as 
 the only practical medium by which to disclose the subject matter sought 
to  be patented in a utility patent application or the subject matter of a 
statutory  invention registration. The Patent and Trademark Office will 
accept color drawings  in utility patent applications and statutory 
invention registrations only after  granting a petition filed under this 
paragraph explaining why the color drawings  are necessary. Any such 
petition must include the following: 

        (i)   The appropriate fee set forth in w 1.17(h); 

        (ii)    Three (3) sets of color drawings; and 

        (iii)     The specification must contain the following language as 
 the first paragraph in that portion of the specification relating to the 
brief  description of the drawing: 

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

        If the language is not in the specification, a proposed amendment 
to  insert the language must accompany the petition. 

        (b)   Photographs. 

        (1)   Black and white. Photographs are not ordinarily permitted in 
 utility and design patent applications. However, the Office will accept 
photographs  in utility and design patent applications only after granting 
a petition filed  under this paragraph which requests that photographs be 
accepted. Any such  petition must include the following: 

        (i)   The appropriate fee set forth in w 1.17(h); and 

        (ii)    Three (3) sets of photographs. 

        Photographs must either be developed on double weight photographic 
 paper or be permanently mounted on bristol board. The photographs must be 
of  sufficient quality so that all details in the drawing are reproducible 
in the  printed patent. 

        (2)   Color. Color photographs will be accepted in utility patent 
applications  if the conditions for accepting color drawings have been 
satisfied. See paragraph 
(a)(2) of this section. 

        (c)   Identification of drawings. Identifying indicia, if 
provided,  should include the application number or the title of the 
invention, inventor's  name, docket number (if any), and the name and 
telephone number of a person  to call if the Office is unable to match the 
drawings to the proper application. 
 This information should be placed on the back of each sheet of drawings a 
 minimum distance of 1.5 cm. (5/8 inch) down from the top of the page. 
        (d)   Graphic forms in drawings. Chemical or mathematical 
formulae,  tables, and waveforms may be submitted as drawings and are 
subject to the same  requirements as drawings. Each chemical or 
mathematical formula must be labeled  as a separate figure, using brackets 
when necessary, to show that information  is properly integrated. Each 
group of waveforms must be presented as a single  figure, using a common 
vertical axis with time extending along the horizontal  axis. Each 
individual waveform discussed in the specification must be identified 
with a separate letter designation adjacent to the vertical axis. 
        (e)   Type of paper. Drawings submitted to the Office must be made 
 on paper which is flexible, strong, white, smooth, nonshiny, and durable. 
All  sheets must be free from cracks, creases, and folds. Only one side of 
the sheet  shall be used for the drawing. Each sheet must be reasonably 
free from erasures  and must be free from alterations, overwritings, and 
interlineations. Photographs  must either be developed on double weight 
photographic paper or be permanently  mounted on bristol board. See 
paragraph (b) of this section for other requirements  for photographs. 

        (f)   Size of paper. All drawing sheets in an application must be 
the  same size. One of the shorter sides of the sheet is regarded as its 
top. The  size of the sheets on which drawings are made must be: 

        (1)   21.6 cm. by 35.6 cm. (8 1/2 by 14 inches), 

        (2)   21.6 cm. by 33.1 cm. (8 1/2 by 13 inches), 

        (3)   21.6 cm. by 27.9 cm. (8 1/2 by 11 inches), or 

        (4)   21.0 cm. by 29.7 cm. (DIN size A4). 

        (g)   Margins. The sheets must not contain frames around the 
sight;  i.e., the usable surface. The following margins are required: 

        (1)   On 21.6 cm. by 35.6 cm. (8 1/2 by 14 inch) drawing sheets, 
each  sheet must include a top margin of 5.1 cm. (2 inches), and bottom 
and side  margins of .64 cm. (1/4 inch) from the edges, thereby leaving a 
sight no greater  than 20.3 cm. by 29.8 cm. (8 by 11 3/4 inches). 



        (2)   On 21.6 cm. by 33.1 cm. (8 1/2 by 13 inch) drawing sheets, 
each  sheet must include a top margin of 2.5 cm. (1 inch) and bottom and 
side margins  of .64 cm. (1/4 inch) from the edges, thereby leaving a 
sight no greater than  20.3 cm. by 29.8 cm. (8 by 11 3/4 inches). 

        (3)   On 21.6 cm. by 27.9 cm. (8 1/2 by 11 inch) drawing sheets, 
each  sheet must include a top margin of 2.5 cm. (1 inch) and bottom and 
side margins  of .64 cm. (1/4 inch) from the edges, thereby leaving a 
sight no greater than  20.3 cm. by 24.8 cm. (8 by 9 3/4 inches). 

        (4)   On 21.0 cm. by 29.7 cm. (DIN size A4) drawing sheets, each 
sheet  must include a top margin of at least 2.5 cm., a left side margin 
of 2.5 cm.,  a right side margin of 1.5 cm., and a bottom margin of 1.0 
cm., thereby leaving  a sight no greater than 17.0 cm. by 26.2 cm. 

        (h)   Views. The drawing must contain as many views as necessary 
to  show the invention. The views may be plan, elevation, section, or 
perspective  views. Detail views of portions of elements, on a larger 
scale if necessary,  may also be used. All views of the drawing must be 
grouped together and arranged  on the sheet(s) without wasting space, 
preferably in an upright position, clearly  separated from one another, 
and must not be included in the sheets containing  the specifications, 
claims, or abstract. Views must not be connected by projection  lines and 
must not contain center lines. Waveforms of electrical signals may  be 
connected by dashed lines to show the relative timing of the waveforms. 
        (1)   Exploded views. Exploded views, with the separated parts 
embraced  by a bracket, to show the relationship or order of assembly of 
various parts  are permissible. When an exploded view is shown in a figure 
which is on the  same sheet as another figure, the exploded view should be 
placed in brackets. 
        (2)   Partial views.  When necessary, a view of a large machine or 
 device in its entirety may be broken into partial views on a single 
sheet,  or extended over several sheets if there is no loss in facility of 
understanding  the view. Partial views drawn on separate sheets must 
always be capable of  being linked edge to edge so that no partial view 
contains parts of another  partial view. A smaller scale view should be 
included showing the whole formed  by the partial views and indicating the 
positions of the parts shown. When  a portion of a view is enlarged for 
magnification purposes, the view and the  enlarged view must each be 
labeled as separate views. 

        (i)   Where views on two or more sheets form, in effect, a single 
complete  view, the views on the several sheets must be so arranged that 
the complete  figure can be assembled without concealing any part of any 
of the views appearing  on the various sheets. 

        (ii)    A very long view may be divided into several parts placed 
one  above the other on a single sheet. However, the relationship between 
the different  parts must be clear and unambiguous. 

        (3)   Sectional views. The plane upon which a sectional view is 
taken  should be indicated on the view from which the section is cut by a 
broken line.  The ends of the broken line should be designated by Arabic 
or Roman numerals  corresponding to the view number of the sectional view, 
and should have arrows  to indicate the direction of sight. Hatching must 
be used to indicate section  portions of an object, and must be made by 
regularly spaced oblique parallel  lines spaced sufficiently apart to 
enable the lines to be distinguished without  difficulty. Hatching should 
not impede the clear reading of the reference characters  and lead lines. 
If it is not possible to place reference characters outside  the hatched 
area, the hatching may be broken off wherever reference characters  are 
inserted. Hatching must be at a substantial angle to the surrounding axes 
or principal lines, preferably 45_.  A cross section must be set out and 
drawn  to show all of the materials as they are shown in the view from 
which the cross  section was taken. The parts in cross section must show 
proper material(s)  by hatching with regularly spaced parallel oblique 
strokes, the space between  strokes being chosen on the basis of the total 
area to be hatched. The various  parts of a cross section of the same item 
should be hatched in the same manner  and should accurately and 
graphically indicate the nature of the material(s)  that is illustrated in 
cross section. The hatching of juxtaposed different  elements must be 
angled in a different way. In the case of large areas, hatching  may be 
confined to an edging drawn around the entire inside of the outline  of 
the area to be hatched.  Different types of hatching should have different 
 conventional meanings as regards the nature of a material seen in cross 
section. 
        (4)   Alternate position.  A moved position may be shown by a 
broken  line superimposed upon a suitable view if this can be done without 
crowding;  otherwise, a separate view must be used for this purpose. 

  (5)     Modified forms. Modified forms of construction must be shown in 
separate  views. 

        (i)   Arrangement of views. One view must not be placed upon 
another  or within the outline of another. All views on the same sheet 
should stand  in the same direction and, if possible, stand so that they 
can be read with  the sheet held in an upright position. If views wider 
than the width of the  sheet are necessary for the clearest illustration 
of the invention, the sheet  may be turned on its side so that the top of 
the sheet, with the appropriate  top margin to be used as the heading 
space, is on the right- hand side. Words  must appear in a horizontal, 
left-to-right fashion when the page is either  upright or turned so that 
the top becomes the right side, except for graphs  utilizing standard 
scientific convention to denote the axis of abscissas (of  X) and the axis 
of ordinates (of Y). 

        (j)   View for Official Gazette. One of the views should be 
suitable  for publication in the Official Gazette as the illustration of 
the invention. 
        (k)   Scale. 

        (1)   The scale to which a drawing is made must be large enough to 
 show the mechanism without crowding when the drawing is reduced in size 
to  two-thirds in reproduction. Views of portions of the mechanism on a 
larger  scale should be used when necessary to show details clearly. Two 
or more sheets  may be used if one does not give sufficient room. The 
number of sheets should  be kept to a minimum. 

        (2)   When approved by the examiner, the scale of the drawing may 
be  graphically represented. Indications such as ``actual size" or ``scale 
1/2"  on the drawings, are not permitted, since these lose their meaning 
with reproduction  in a different format. 

        (3)   Elements of the same view must be in proportion to each 
other,  unless a difference in proportion is indispensable for the clarity 
of the view. 
Instead of showing elements in different proportion, a supplementary view 
may  be added giving a larger-scale illustration of the element of the 
initial view.  The enlarged element shown in the second view should be 
surrounded by a finely  drawn or ``dot-dash" circle in the first view 
indicating its location without  obscuring the view. 

        (l)   Character of lines, numbers, and letters.  All drawings must 
 be made by a process which will give them satisfactory reproduction 
characteristics.  Every line, number, and letter must be durable, clean, 
black (except for color  drawings), sufficiently dense and dark, and 
uniformly thick and well-defined.  The weight of all lines and letters 
must be heavy enough to permit adequate  reproduction. This requirement 
applies to all lines however fine, to shading,  and to lines representing 
cut surfaces in sectional views. Lines and strokes  of different 
thicknesses may be used in the same drawing where different thicknesses 
have a different meaning. 

        (m)   Shading.  The use of shading in views is encouraged if it 
aids in understanding the invention and if it does not reduce legibility. 
Shading  is used to indicate the surface or shape of spherical, 
cylindrical, and conical  elements of an object. Flat parts may also be 
lightly shaded. 
Such shading is preferred in the case of parts shown in perspective, but 
not for cross sections.  See paragraph (h)(3) of this section. Spaced 
lines  for shading are preferred. These lines must be thin, as few in 
number as practicable,  and they must contrast with the rest of the 
drawings.  As a substitute for  shading, heavy lines on the shade side of 
objects can be used except where  they superimpose on each other or 
obscure reference characters.  Light should  come from the upper left 
corner at an angle of 45_.  Surface delineations should  preferably be 
shown by proper shading. Solid black shading areas are not permitted, 
except when used to represent bar graphs or color. 

        (n)   Symbols. Graphical drawing symbols may be used for con- 
ventional elements when appropriate. The elements for which such symbols 
and  labeled representations are used must be adequately identified in the 
specification.  Known devices should be illustrated 
by symbols which have a universally recognized conventional meaning and 
are  generally accepted in the art. Other symbols which are not 
universally recognized  may be used, subject to approval by the Office, 
if they are not likely to be confused with existing conventional symbols, 
and  if they are readily identifiable. 

        (o)   Legends.  Suitable descriptive legends may be used, or may 
be required by the Examiner, where necessary for understanding of 
the drawing, subject to approval by the Office.  They should contain as 
few  words as possible. 

        (p)   Numbers, letters, and reference characters. 

        (1)   Reference characters (numerals are preferred), sheet 
numbers, and view numbers must be plain and legible, and must not 
be used in association with brackets or inverted commas, or enclosed 
within  outlines, e.g., encircled. They must be oriented in the same 
direction as the  view so as to avoid having to rotate the sheet. 
Reference characters should  be arranged to follow the profile of the 
object depicted. 

        (2)   The English alphabet must be used for letters, except where 
another  alphabet is customarily used, such as the Greek alphabet to 
indicate angles,  wavelengths, and mathematical formulas. 

        (3)   Numbers, letters, and reference characters must measure at 
least  .32 cm. (1/8 inch) in height. They should not be placed in the 
drawing so as  to interfere with its comprehension. Therefore, they should 
not cross or mingle  with the lines. They should not be placed upon 
hatched or shaded surfaces.  When necessary, such as indicating a surface 
or cross section, a reference  character may be underlined and a blank 
space may be left in the hatching or  shading where the character occurs 
so that it appears distinct. 

        (4)   The same part of an invention appearing in more than one 
view  of the drawing must always be designated by the same reference 
character, and  the same reference character must never be used to 
designate different parts. 

        (5)   Reference characters not mentioned in the description shall 
not  appear in the drawings. Reference characters mentioned in the 
description must  appear in the drawings. 

        (q)   Lead lines. Lead lines are those lines between the reference 
 characters and the details referred to. Such lines may be straight or 
curved  and should be as short as possible. They must originate in the 
immediate proximity  of the reference character and extend to the feature 
indicated. Lead lines  must not cross each other.  Lead lines are required 
for each reference character  except for those which indicate the surface 
or cross section on which they  are placed. Such a reference character 
must be underlined to make it clear  that a lead line has not been left 
out by mistake. Lead lines must be executed  in the same way as lines in 
the drawing. See paragraph (l) of this section. 

        (r)   Arrows. Arrows may be used at the ends of lines, provided 
that  their meaning is clear, as follows: 

        (1)   On a lead line, a freestanding arrow to indicate the entire 
section  towards which it points; 

        (2)   On a lead line, an arrow touching a line to indicate the 
surface  shown by the line looking along the direction of the arrow; or 

        (3)   To show the direction of movement. 

        (s)   Copyright or Mask Work Notice.  A copyright or mask work 
notice may appear in the drawing, but must be placed within 
the sight of the drawing immediately below the figure representing the 
copyright or mask work material and be limited to letters hav- ing a print 
size of .32 cm. to .64 cm. (1/8 to 1/4 inches) high. The content of the 
notice must be limited to only those elements provided for by law. For 
example, `` e1983 John Doe" (17 U.S.C. 401) and ``*M* John Doe" (17 
U.S.C. 909) would be properly limited and, under current statutes, legally 
 sufficient notices of copyright and mask work, re- 
spectively. Inclusion of a copyright or mask work notice will be per- 
mitted only if the authorization language set forth in # 1.71(e) is in- 
cluded at the beginning (preferably as the first paragraph) of 
the specification. 

        (t)   Numbering of sheets of drawings. The sheets of drawings 
should  be numbered in consecutive Arabic numerals, starting with 
1, within the sight as defined in paragraph (g) of this section. 
These numbers, if present, must be placed in the middle of the top of the 
sheet, but not in the margin. The numbers can be placed on 
the right-hand side if the drawing extends too close to the middle of the 
top edge of the usable surface. The drawing sheet numbering must be clear 
and larger than the numbers used as reference charac- ters to avoid 
confusion. The number of each sheet should be shown 
by two Arabic numerals placed on either side of an oblique line, with the 
first being the sheet number and the second being the total num- ber of 
sheets of drawings, with no other marking. 

        (u)   Numbering of views. 

        (1)   The different views must be numbered in consecutive Arabic 
numerals,  starting with 1, independent of the numbering of the sheets 
and, if possible,  in the order in which they appear on the drawing 
sheet(s). Partial views intended  to form one complete view, on one or 
several sheets, must be identified by  the same number followed by a 
capital letter. View numbers must be preceded  by the abbreviation ``FIG." 
 Where only a single view is used in an application  to illustrate the 
claimed invention, it must not be numbered and the abbreviation  ``FIG." 
must not appear. 

        (2)   Numbers and letters identifying the views must be simple and 
 clear and must not be used in association with brackets, circles, or 
inverted  commas. The view numbers must be larger than the numbers used 
for reference  characters. 

        (v)   Security markings. Authorized security markings may be 
placed  on the drawings provided they are outside the sight, preferably 
centered in  the top margin. 

        (w)   Corrections. Any corrections on drawings submitted to the 
Office  must be durable and permanent. 

        (x)   Holes. The drawing sheets may be provided with two holes in 
the  top margin. The holes should be equally spaced from the respective 
side edges,  and their center lines should be spaced 7.0 cm. (2 3/4 
inches) apart.  (See  w 1.152 for design drawings, w 1.165 for plant 
drawings, and w 1.174 for reissue  drawings.) 

        Drawings in compliance with 37 CFR 1.84 prior to its revision will 
 be acceptable and in compliance with 
37 CFR 1.84, as revised, effective Oct. 1, 1993. 

        Drawings on paper are acceptable although bristol board is 
preferred.  Corrections thereto must be made in the form of replacement 
sheets since the  Office does not release drawings for correction.  See 37 
CFR 1.85. 
        Good quality copies made on office copiers are acceptable if the 
lines  are uniformly thick, black, and solid. Facsimile copies of drawings 
however,  are not acceptable (37 CFR 1.6(d)(4)). 

        Drawings are currently accepted in four different size formats. It 
 is, however, required that all drawings in a particular application be 
the  same size for ease of handling and reproduction. 

        Design patent drawings, 37 CFR 1.152, MPEP 
# 1503.02. 

        Plant patent drawings, 37 CFR 1.165, MPEP # 1606. 

        Reissue application drawings, MPEP #608.02(k) and # 1413. 
        Correction of drawings, MPEP # 608.02(p). Prints, preparation and 
distribution,  MPEP # 508 and # 608.02(m). Prints, return of drawings, 
MPEP # 608.02(y). 
        For pencil notations of classification and name or initials of 
assistant  examiner to be placed on drawings, see MPEP # 717.03. 

        The filing of a divisional or continuation case under the 
provisions  of 37 CFR 1.60 (unexecuted case) does not obviate the need for 
formal drawings.  See MPEP 
# 608.02(b). 

DEFINITIONS 

        A number of different terms are used when referring to drawings in 
 patent applications. The following definitions are used in this Manual. 
        Original drawings: The drawing submitted with the application when 
 filed. It may be either a formal or an informal drawing. 

        Substitute drawing: A drawing filed later than the filing date of 
an  application. Usually submitted to replace an original informal 
drawing. 
        Formal drawing: A drawing in a form that complies with 37 CFR 
1.84.  Formal drawings are stamped "approved" by the Draftsman. 

        Informal drawing: A drawing which does not comply with the form 
requirements  of 37 CFR 1.84. Drawings may be informal because they are 
not on the proper  size sheets, the quality of the lines is poor, or for 
other reasons such as  the size of reference elements.  Such objections 
are made by the Draftsman  on form PTO-948. 

        Drawing print: This term is used for the white paper print 
prepared  by the Micrographics Branch of the 
Office Services Divisions of all original drawings. The drawing prints 
contain  the notation "Print of Drawing as originally filed'' near the 
top. Drawing  prints should be placed on the top on the right-hand flap of 
the application  file wrapper. 

        Interference print: This term is used to designate the copy 
prepared  of the original drawings filed in file cabinets separate from 
the file wrappers  and are used to make interference searches. 

        The following Form Paragraphs should be used when notifying 
applicants  of drawing corrections. 

W 6.38      Acknowledgment of Proposed Drawing Correction 

        The proposed drawing correction and/or the proposed substitute 
sheets  of drawings, filed on [1] have been [2]. 

Examiner Note: 

        1.  In bracket 2, insert either approved or disapproved. 

  2.    If approved, form paragraph 6.39 and one or more of paragraphs 
6.40  or 6.41 or 6.44 must follow. 

        3 If disapproved, an explanation must be provided. 

W 6.39      PTO No Longer Makes Drawing Changes 

        The Patent and Trademark Office no longer makes drawing changes. 
1017  O.G.4. It is applicant's responsibility to ensure that the drawings 
are corrected.  Corrections must be made in accordance with the 
instructions below. 
Examiner Note: 

        This paragraph is to be used whenever the applicant has filed a 
request  for the Office to make drawing changes. Form paragraph 6.40 must 
follow. 
W 6.40      Information on How To Effect Drawing Changes 

INFORMATION ON HOW TO EFFECT 
DRAWING CHANGES 

1.  Correction of Informalities -- 37 CFR 1.85; 1097 OG 36 

        New formal drawings must be filed with the changes 
incorporated therein.  The art unit number, application 
number (including series code) and number of drawing 
sheets should be written on the  reverse side of the drawings.  Applicant 
may  delay filing of the new drawings until after receipt of the "Notice 
of Allowability" (PTOL-37).  If delayed,  the new drawing MUST be 
filed within the THREE MONTH shortened statutory 
period set for response in the "Notice of Allowa- 
bility" (PTOL-37) to avoid extension of time fees. 
Extensions of time may be obtained under the provisions 
of 37 CFR 1.136(a) for filing the corrected drawings 
(but not for the payment of the issue fee). The drawing 
 should be filed as a separate paper with a transmittal 
letter addressed to the Official Draftsperson. 

2.  Corrections other than Informalities Noted by Drafts- 
        person on form PTO-948. 

        All changes to the drawings, other than informalities noted by the 
 Draftsperson, MUST be made in the same manner as above except that, 
normally,  a highlighted (pref- 
erably red ink) sketch of the changes to be incorporated 
into the new drawings MUST be approved by the Exam- 
iner before the application will be allowed.  No changes 
ill be permitted to be made, other than correction of in- 
formalities, unless the Examiner has approved the pro- 
posed changes. 

Timing of Corrections 

        Applicant is required to submit acceptable corrected 
drawings within the three month shortened statutory 
period set in the "Notice of Allowability" (PTOL-37). 
Within that three month period, two weeks should 
be allowed for review of the new drawings by the Office.  If a correction 
is  determined to be unacceptable by the Office, 
ap-plicant must arrange to have an acceptable correction re- 
submitted within the original three month period to 
avoid the necessity of obtaining an extension of time with 
extension fees. Therefore, applicant should file corrected 
drawings as soon as possible. 

        Failure to take corrective action within the set (or ex- 
tended) period will result in ABANDONMENT of the ap- 
plication. 

W 6.41      Reminder That PTO No Longer Makes Drawing Changes 

        Applicant is reminded that the Patent and Trademark Office no 
longer makes drawing changes and that it is applicant's responsibil- ity 
to ensure that the drawings are corrected in accordance with 
the instructions set forth in paper no. [1], mailed on [2]. 

Examiner Note: 

        This paragraph is to be used when the applicant has been prev- 
iously provided with information on how to effect drawing changes 
(i.e., either by way of form paragraph 6.40 or a PTO-948 has 
been previously sent). 

W 6.42      Reminder That Applicant Must Make Drawing Changes 

        Applicant is reminded that in order to avoid an abandonment of 
this  application, the drawings must be corrected in accordance with the 
instructions  set forth in paper no. [1] mailed on [2]. 

Examiner Note: 

        This paragraph is to be used when allowing the application and 
when  applicant has previously been provided with information on how to 
effect drawing  changes (i.e., by way of form paragraph 6.40 or a PTO- 948 
has been previously  sent). 

W 6.43      Drawings Contain Informalities, Application Allowed 

        The drawings filed on [1] are acceptable subject to correction of 
the  informalities indicated on the attached ``Notice of Draftperson's 
Patent Drawing  Review" (PTO-948). In order to avoid abandonment of this 
application, correction  is required. 

Examiner Note: 

        Use this paragraph when allowing the application, particularly at 
time of first action issue.  Form paragraph 6.40 or 6.41 must follow. 
W 6.44      Drawing Informalities Previously Indicated 

        In order to avoid abandonment, the drawing informalities noted in 
paper no. [1], mailed on [2], must now be corrected. Correction can only 
be effected in the manner set forth in the above noted paper. 

Examiner Note: 

  Use this paragraph when allowing the application and applicant has 
previously  been informed of informalities in the drawings. 

W 6.47      Examiner's Amendment Involving Drawing Changes 

        The following changes to the drawings have been approved by the 
examiner and agreed upon by applicant: [1]. In order to avoid abandonment 
of the application, applicant must make these agreed 
upon drawing changes. 

Examiner Note: 

        1.  In bracket 1, Insert the agreed upon drawing changes. 
        2.  Form paragraphs 6.39 and 6.40 must follow. 

 DRAWING SYMBOLS 

        37 CFR 1.84(n) indicates that graphic drawing symbols and other 
labeled  representations may be used for conventional elements where 
appropriate, subject  to approval by the Office.  Also, suitable legends 
may be used, or may be required,  in proper cases. 

        The publications listed below have been reviewed by the Office and 
 the symbols therein are considered to be generally acceptable in patent 
drawings.  Although the Office will not ``approve" all of the listed 
symbols as a group because their use and clarity must be decided on a 
case-by-case basis,  these publications may be used as guides when 
selecting graphic symbols. Overly  specific symbols should be avoided. 
Symbols with unclear meanings should be  labeled for clarification. 

        These publications are available from the American National 
Standards  Institute Inc., 11 West 42nd Street, New York, New York 10036. 

        The publications reviewed are the following: 

        Y32.2-1970 Graphic Symbols for Electrical & Electronics Diagrams 
        Y32.10-1967 Graphic Symbols for Fluid Power Diagrams 

        Y32.11-1961 Graphic Symbols for Process Flow Diagrams in the 
Petroleum  & Chemical Industries 

        Y32.14-1962  Graphic Symbols for Logic Diagrams 

        Z32.2.3-1949 (R1953) Graphic Symbols for Pipe Fittings, Valves and 
 Piping 

        Z32.2.4-1949 (R1953) Graphic Symbols for Heating, Ventilating & 
Air  Conditioning 

        Z32.2.6-1950 Graphic Symbols for Heat-Power Apparatus 

        The following symbols should be used to indicate various materials 
 where the material is an important feature of the invention.  The use of 
conventional  features is very helpful in making prior art searches. 

B60802006.bmp 



B60802006.end 



** >See MPEP # 601.01(f) for treatment of applications filed without 
drawings  and MPEP # 601.01(g) for treatment of applications filed without 
all figures  of drawings.< 

ILLUSTRATION SUBSEQUENTLY REQUIRED 

        The acceptance of an application without a drawing does not 
preclude  the examiner from requiring an 
illustration in the form of a drawing under 37 CFR 1.81(c) or 37 CFR 
1.83(c).  In requiring such a drawing, the examiner should clearly 
indicate that the  requirement is made under 37 CFR 1.81(c) or 37 CFR 
1.83(c) and be careful not  to state that he or she is doing so ``because 
it is necessary for the understanding  of the invention," as that might 
give rise to an erroneous impression as to  the completeness of the 
application as filed. Examiners making such requirements  are to 
specifically require, as a part of the applicant's next response, at 
least an ink sketch or permanent print of any drawing proposed in response 
 to the requirement, even though no allowable subject matter is yet 
indicated.  This will afford the examiner an early opportunity to 
determine the sufficiency  of the illustration and the absence of new 
matter.  See 37 CFR 1.118 and 37  CFR 1.81(d). The description should of 
course be amended to contain reference  to the new illustration. This may 
obviate further correspondence where an amendment  places the case in 
condition for allowance, except for the formal requirement  relating to 
the drawing.  In the event of a final determination that there  is nothing 
patentable in the case, a formal drawing will not be required. 
BLACK AND WHITE PHOTOGRAPHS 

37 CFR 1.84.    Standards for drawings. 

***** 

        (b)   Photographs. 

        (1)   Black and white. Photographs are not ordinarily permitted in 
 utility and design patent applications. However, the Office will accept 
photographs  in utility and design patent applications only after granting 
a petition filed  under this paragraph which requests that photographs be 
accepted. Any such  petition must include the following: 

        (i)   The appropriate fee set forth in w 1.17(h); and 

        (ii)    Three (3) sets of photographs. 

        Photographs must either be developed on double weight photographic 
 paper or be permanently mounted on bristol board. The photographs must be 
of  sufficient quality so that all details in the drawing are reproducible 
in the  printed patent. 

        (2)   Color. Color photographs will be accepted in utility patent 
applications  if the conditions for accepting color drawings have been 
satisfied. See paragraph 
(a)(2) of this section. 

***** 

        Photographs are not normally considered to be proper drawings. 
Photographs  are acceptable for a filing date and are generally considered 
to be informal  drawings. Photographs may be acceptable as formal drawings 
when a petition  filed under the provisions of 37 CFR 1.84 (b) is granted. 
The petition must  be accompanied by the fee set forth in 37 CFR 1.17 (h) 
and three (3) sets of  the photographs in question. Photolithographs of 
photo- graphs are never acceptable. 
 See In re Taggart et al., 1957 C.D. 6,725 O.G. 397 and In re Myers, 1959 
C.D.  2, 
738 O.G. 947. 

PETITIONABLE SUBJECT MATTER 

        The Patent and Trademark Office is willing to accept photographs 
or  photomicrographs (not photolithographs or other reproductions of 
photographs  made by using screens) printed on sensitized paper in lieu of 
India ink drawings,  to illustrate inventions which are incapable of being 
accurately or adequately  depicted by India ink drawings; e.g., 
crystalline structures, metallurgical  microstructures, textile fabrics, 
grain structures and ornamental effects.  The photographs or 
photomicrographs must show the invention more clearly than  they can be 
done by India ink drawings and otherwise comply with the rules  concerning 
such drawings. 

        Such photographs to be acceptable must be made on photographic 
paper  having the following characteristics which are generally recognized 
in the  photographic trade: double weight paper with a surface described 
as smooth;  tint, white, or be photographs mounted on proper size bristol 
board. 
        See MPEP w 1503.02 for discussion of photographs used in design 
patent  applications. 

COLOR DRAWINGS OR COLOR PHOTOGRAPHS 

37 CFR 1.84.    Standards for drawings. 

        (a)   Drawings. There are two acceptable categories for presenting 
 drawings in utility patent applications: 

***** 

        (2)   Color.   On rare occasions, color drawings may be necessary 
as  the only practical medium by which to disclose the subject matter 
sought to  be patented in a utility patent application or the subject 
matter of a statutory  invention registration. The Patent and Trademark 
Office will accept color drawings  in utility patent applications and 
statutory invention registrations only after  granting a petition filed 
under this paragraph explaining why the color drawings  are necessary. Any 
such petition must include the following: 

        (i)   The appropriate fee set forth in # 1.17(h); 

        (ii)    Three (3) sets of color drawings; and 

        (iii)     The specification must contain the following language as 
 the first paragraph in that portion of the specification relating to the 
brief  description of the drawing: 

        ``The file of this patent contains at least one drawing executed 
in  color.  Copies of this patent with color drawing(s) will be provided 
by the  Patent and Trademark Office upon request and payment of the 
necessary fee.'' 
        If the language is not in the specification, a proposed amendment 
to  insert the language must accompany the petition. 

        (b)   Photographs. 

***** 

        (2)   Color. Color photographs will be accepted in utility patent 
applications  if the conditions for accepting color drawings have been 
satisfied. See paragraph 
(a)(2) of this section. 

***** 

        Limited use of color drawings in utility patent applications is 
provided  for in 37 CFR 1.84(a)(2) and (b)(2). Unless a petition is filed 
and granted,  the Draftsman will not approve color drawings or color 
photo- graphs in a utility  or design patent application. The examiner 
must object to the color drawings  or color photographs as being improper 
and require applicant either to cancel  the drawings or to provide 
substitute black and white drawings. 

        Under 37 CFR 1.84(a)(2) and (b)(2), the applicant must file a 
petition  with fee requesting acceptance of the color drawings or color 
photographs.  The petition is decided in the Office of the Group Director. 

        Where color drawings or color photographs are filed in a 
continuing  application, applicant must renew the petition under 37 CFR 
1.84(a)(2) and 
(b)(2) even though a similar petition was filed in the prior application. 
Until  the renewed petition is granted, the examiner must object to the 
color drawings  or color photographs as being improper. 

        In light of the substantial administrative and economic burden 
associated  with printing a utility patent with color drawings or color 
photographs, the  patent copies which are printed at issuance of the 
patent will depict the drawings  in black and white only.  However, a set 
of color drawings or color photographs  will be attached to the Letters 
Patent. Moreover, copies of the patent with  color drawings or color 
photographs attached thereto will be provided by the  Patent and Trademark 
Office upon special request and payment of the fee necessary  to recover 
the actual costs associated therewith. 

        Accordingly, the petition must also be accompanied by a proposed 
amendment  to insert the following language as the first paragraph in the 
portion of the  specification containing a brief description of the drawings: 

        The file of this patent contains at least one drawing executed in 
color. 
 Copies of this patent with color drawing(s) will be provided by the 
Patent  and Trademark Office upon request and payment of the necessary 
fee. 
        It is anticipated that such a petition will be granted only when 
the  Patent and Trademark Office has determined that a color drawing or 
color photograph  is the only practical medium by which to disclose in a 
printed utility patent  the subject matter to be patented. 

        It is emphasized that a decision to grant the petition should not 
be  regarded as an indication that color drawings or color photographs are 
necessary  to comply with a statutory requirement. In this latter respect, 
clearly it  is desirable to file any desired color drawings or color 
photographs as part  of the original application papers in order to avoid 
issues concerning statutory  defects (e.g., lack of enablement under 35 
U.S.C. 112 or news matter under  35 U.S.C. 132). The filing of the 
petition, however, may be deferred until  acceptable formal drawings are 
required by the examiner. 

NOTIFYING APPLICANT 

        If the original drawings are informal but may be admitted for 
examination  purposes, the draftsman indicates on a 2-part form, PTO-948, 
what the informalities  are and that new corrected drawings are required. 
In either case, the informal  drawings are accepted as satisfying the 
requirements of 37 CFR 1.51. 
        The examiners are directed to advise the applicants by way of form 
 PTO-948 (see MPEP # 707.07(a)) in the first Office action of the 
conditions  which the draftsman considers to render the drawing informal. 

        Drawing corrections should be made when the application is in 
issue  unless the examiner requires correction at an earlier date. 

        If the examiner discovers a defect in the content of the drawing, 
the  applicant should be notified by using a Form Paragraph, where 
appropriate. 
W 6.21      New Drawings, Competent Draftperson 

        New formal drawings are required in this application because [1]. 
Applicant  is advised to employ the services of a competent patent 
draftperson outside  the Office, as the Patent and Trademark Office no 
longer prepares new drawings. 
W 6.22      Drawings Objected To 

        The drawings are objected to because [1]. Correction is required. 
Examiner Note: 

        Follow with paragraph 6.27, if appropriate. 

W 6.23      Subject Matter Admits of Illustration 

        The subject matter of this application admits of illustration by a 
 drawing to facilitate understanding of the invention. Applicant is 
required  to furnish a drawing under 37 CFR 1.81. 

Examiner Note: 

        When requiring drawings before examination, use PTOL-90 form and 
set  a two-month time period. 

W 6.24.       Informal Drawings 

        This application has been filed with informal drawings which are 
acceptable  for examination purposes only. Formal drawings will be 
required when the application  is allowed. 

W 6.24.01 Photographs and Color Drawings, Petition Required 

        The drawings are considered to be informal because they fail to 
comply  with 37 CFR # 1.84 (a)(1) which requires black and white drawings 
using India  ink or its equivalent. 

        Photographs and color drawings are acceptable only for examination 
 purposes unless a petition filed under 37 CFR 1.84 (a)(2) or (b)(1) is 
granted  permitting their use as formal drawings.  In the event applicant 
wishes to  use the drawings currently on file as formal drawings, a 
petition must be filed  for acceptance of the photographs or color 
drawings as formal drawings. Any  such petition must be accompanied by the 
appropriate fee as set forth in 37  CFR 1.17 (h), three sets of drawings 
or photographs, as appropriate, and, if  filed under the provisions of 37 
CFR 1.84 (a)(2), an amendment to the first  paragraph of the brief 
description of the drawings section of the specification  which states: 

        ``The file of this patent contains at least one drawing executed 
in  color.  Copies of this patent with color drawing(s) will be provided 
by the  Patent and Trademark Office upon request and payment of the 
necessary fee.'' 
        Color photographs will be accepted if the conditions for accepting 
 color drawings have been satisfied. 

Examiner Note: 

        This form paragraph should be used after form paragraph 6.24 only 
if  the application contains photographs or color drawings as the drawings 
required  by 37 CFR 1.81. 

W 6.26      Informal Drawings Do Not Permit Examination 

        The informal drawings are not of sufficient quality to permit 
examination.  Accordingly, new drawings are required in response to this 
Office action. 
Examiner Note: 

        Use PTOL-90 form and set a 2-month time period. 

W 6.27      Correction Held in Abeyance 

        Applicant is required to submit a proposed drawing correction in 
response  to this Office action.  However, execution of the noted defect 
will be deferred  until the application is allowed by the examiner. 

DRAWING REQUIREMENTS 

        The first sentence of 35 U.S.C. 113 requires a drawing to be 
submitted  upon filing where such drawing is necessary for the 
understanding of the invention.  In this situation, the lack of a drawing 
renders the application incomplete  and, as such, the application cannot 
be given a filing date until the drawing  is received. The second sentence 
of 35 U.S.C. 113 deals with the situation  wherein a drawing is not 
necessary for the understanding of the invention,  but the case admits of 
illustration and no drawing was submitted on filing.  The lack of the 
drawing in this situation does not render the application incomplete  but 
rather is treated much in the same manner as an informality. The examiner 
should require such drawings in almost all such instances. Such drawings 
could  be required during the processing of the application but do not 
have to be 

furnished at the time the application is filed. The applicant is allowed 
at  least 2 months from the date of the letter requiring drawings to 
submit them. 
Handling of Drawing Requirements Under the First 
 Sentence of 35 U.S.C. 113 

        The ** >Initial Application Examination Division< will make the 
initial  decision in all new applications as to whether a drawing is 
"necessary" under  the first sentence of 35 U.S.C. 113.  A drawing will be 
considered necessary  under the first sentence of 35 U.S.C. 113 in all 
cases where the drawing is  referred to in the specification and one or 
more  figures have been omitted. 
        The determination under 35 U.S.C. 113 (first sentence) as to when 
a  drawing is necessary will be handled in the ** >Initial Application 
Examination  Division< according to the following procedure. The ** 
>Initial Application  Examination Division< will make the initial 
determination whether or not drawings  are required for the understanding 
of the subject matter of the invention.  Mechanical and electrical cases 
which lack a drawing, but in which one appears  to be needed for an 
understanding of the invention, will be referred to the  Classification 
and Routing Unit of the ** >Initial Application Examination  Division< for 
advice.  If the Classification and Routing Unit cannot reach  a prompt and 
decisive response, the application will be referred to the supervisory 
primary examiner for a determination. When drawings are required, the 
application  is treated as incomplete and the applicant is so informed by 
the ** >Initial  Application Examination Division<.  The filing date will 
not be granted and applicant will be notified to complete the application 
(37  CFR 1.53).  However, the practice with respect to chemical cases is 
that, unless  a drawing or drawing figure is specifically referred to in 
the specification  of the application, the application will initially be 
considered by the **>Initial  Application Examination Division< formality 
examiner as being complete and  will be given a filing date. Only in those 
chemical cases wherein there is  a reference in the specification to a 
drawing and no drawing was present on  filing will a chemical application 
initially be held incomplete and denied  a filing date.   If a drawing is 
later furnished, a filing date may be granted  as of the date of receipt 
of such drawing. 

        If an examiner feels that a filing date should not have been 
granted  in an application because it does not contain drawings, the 
matter should be  brought to the attention of the supervisory primary 
examiner (SPE) for review.  If the SPE decides that drawings are required 
to understand the subject matter  of the invention, the SPE should return 
the application to the Application  Branch with a typed, signed, and dated 
memorandum requesting cancellation of  the filing date and identifying the 
subject matter required to be illustrated. 

608.02(a) New Drawing - When Required [R-1] 



        Utility and design patent applications should be taken up for the 
first  Office action without a request for formal drawings unless the 
informal drawings  are so unclear that they do not facilitate an 
understanding of the invention  as to permit examination of the 
application. If at the time of the initial  assignment of an application 
to an examiner's docket, or if at the time the  application is taken up 
for action, the supervisory primary examiner believes  the informal 
drawings to be of such a condition as to not permit reasonable 
examination of the application, applicant should be required to 
immediately  submit formal drawings. However, if the informal drawings do 
not permit examination  and the supervisory primary examiner believes the 
drawings are of such a character  as to render the application defective 
under 35 U.S.C. 112, examination should  begin immediately with a 
requirement for formal drawings and a rejection of  the claims as not 
being in compliance with 35 U.S.C. 112, first paragraph,  being made. 

        Formal drawings should be required when the application is 
allowed. 
        Forms PTOL-326 and 37 now provide items for requiring formal 
drawings. 
        Form Paragraph 6.45 may also be used to inform applicant that 
formal  drawings are required. 

W 6.45      Application Allowed, Formal Drawings Needed 

        Formal drawings are now required and must be filed within the 
**>THREE  MONTH< shortened statutory period set for response in the 
"Notice of Allowability'' 
(PTOL-37).  Extensions of time may be obtained under the provisions of 37 
CFR  1.136(a). Failure to timely submit the drawings will result in 
ABANDONMENT  of the application.  The drawings should be submitted as a 
separate paper with  a transmittal letter which is addressed to the 
Official *>Draftperson<. The  art unit number, *>application< number, and 
number of drawing sheets should  be written on the reverse side of the 
drawings. 

Handling of Drawing Requirements Under 
the Second Sentence of 35 U.S.C. 113 

        35 U.S.C. 113 deals with the situation wherein the drawing is not 
necessary  for the understanding of the invention, but the subject matter 
admits of illustration  by a drawing and the applicant has not furnished a 
drawing. The lack of the  drawing in this situation does not render the 
application incomplete but rather  is treated as an informality. A filing 
date will be accorded with the original  presentation of the papers, 
despite the absence of drawings. In these situations,  a drawing or 
further illustration will normally be required by the examiner.  This 
should be done prior to examination in a separate letter. The examiner 
should require additional drawings, where appropriate, as early as 
possible  since the possession of the additional drawings would facilitate 
the examination  process. A letter requiring drawings may contain wording 
similar to the following: 
        The examiner has decided that the subject matter of this 
application  admits of illustration by a drawing and that a drawing would 
facilitate the  understanding of the subject mat-ter disclosed. (Continue 
with a specific mention  of those items of which drawings are desired.) 
Applicant is required to furnish  a drawing under 37 CFR 1.81 
(Incorporate in Office action or send a separate  letter setting a 2-month 
period for response.) 

        The applicant should be given at least 2 months from the date of a 
 requirement to submit drawings made in a separate letter. If the 
requirement  for drawings is included in an Office action, the time for 
supplying the additional  drawings will be the same as the time for 
response to the Office action. 

RECEIPT OF DRAWING AFTER 
THE FILING DATE 

        If new matter is noticed by the examiner in a substitute or 
additional  drawing, the drawing should not be entered. It should be 
objected to as containing  new matter. A new drawing without such new 
matter may be required if the examiner  feels a drawing is needed under 37 
CFR 1.81 or 1.83. The examiner's decision  would be reviewable by petition 
to the Commissioner under 37 CFR 1.181. The  decision on such a petition 
would be handled by the group director. 
UNTIMELY FILED DRAWINGS 

        If a drawing is not timely received in response to a letter from 
the  examiner who requires a drawing, the application becomes abandoned 
for failure  to respond. 

        For the handling of additional, duplicate, or substitute drawing, 
see  MPEP w 608.02(h). 


608.02(b) Informal Drawings [R-1] 


37 CFR 1.85.    Corrections to drawings. 

         (a)    The requirements of w 1.84 relating to drawings will be 
strictly  enforced. A drawing not executed in conformity thereto, if 
suitable for reproduction,  may be admitted for examination but in such 
case a new drawing must be furnished. 
        (b)   The Patent and Trademark Office will not release drawings in 
 applications having a filing date after January 1, 1989, or any drawings 
from  any applications after January 1, 1991, for purposes of correction. 
If corrections  are necessary, new corrected drawings must be submitted 
within the time set  by the Office. 

        (c)   When corrected drawings are required to be submitted at the 
time  of allowance, the applicant is required to submit acceptable 
drawings within  three months from the mailing of the "Notice of 
Allowability." Within that  three-month period, two weeks should be 
allowed for review of the drawings  by the Drafting Branch. If the Office 
finds that correction is necessary, the  applicant must submit a new 
corrected drawing to the Office within the original  three-month period to 
avoid the necessity of obtaining an extension of time  and paying the 
extension fee.  Therefore, the applicant should file corrected  drawings 
as soon as possible following the receipt of the Notice of Allowability. 
The provisions with respect to obtaining an extension of time relates only 
 to the late filing of corrected drawings. The time limit for payment of 
the  issue fee is a fixed three-month period which cannot be extended as 
set forth  in 35 U.S.C. 151. 

        In instances where the drawing is such that the prosecution can be 
 carried on without the corrections, applicant is informed of the reasons 
why  the drawing is objected to on Form PTO-948 or in an examiner's 
action, and  that the drawing is admitted for examination purposes only 
(see MPEP # 707.07(a)). 
 To be fully responsive, an amendment must include a request for drawing 
corrections  when the application is allowed or an appeal is filed. See 37 
CFR 1.111(b). 
INFORMAL DRAWINGS 

        To expedite filing, applicants sometimes submit applications with 
informal  drawings. Such applications are accepted by Application Branch 
for filing only,  provided the informal drawings are readable and 
reproducible. Applicant is  notified on Form PTO-948 or in an Office 
action that formal drawings, in compliance  with 37 CFR 1.84 will be 
required when the application is allowed. Form Paragraph  6.24 may be used 
for this purpose. 

W 6.24      Informal Drawings 

        This application has been filed with informal drawings which are 
acceptable  for examination purposes only. Formal drawings will be 
required when the application  is allowed. 

        This form paragraph may be followed by Form Paragraph 6.24.>0<1 if 
 applicable. 

        Alternatively, the examiner may check the appropriate box on the 
Office  Action Summary, PTOL-326. 

HANDLING OF NEW DRAWINGS 

        In those situations where an application is filed with informal 
drawings,  applicants are requested to wait until they receive their 
"Notice of *>Draftperson's<  Patent Drawing Review" form, PTO-948 or the 
first Office action utilizing form  PTOL-326 or PTOL-37 from the group art 
unit before submitting the formal drawings.  The letter of transmittal 
accompanying the formal drawings should identify  the group art unit 
indicated on form PTO-948 or form PTOL-326. If the informal  notification 
appears on form PTOL-37, the date of the mailing of the Notice  of 
Allowance and Issue Fee as well as the Issue Batch Number must be given. 
 Also, each sheet of the drawing should include the serial number and 
group  art unit in the upper right margin. In the past, some drawings have 
been misdirected  because the group art unit indicated on the filing 
receipt was used rather  than that indicated on the informal notice forms. 

        The draftsman is the judge of drawings, as to the execution of the 
 same, and the arrangement of the views thereon, while the examiner is the 
judge  as to the sufficiency of the showing.  The drawings received with 
an application  are inspected by the *>draftperson<. If the drawing is 
satisfactory, he or  she stamps on each sheet "Approved by Draftsman" and 
checks the approved box  on Form PTO-948.   See also MPEP # 608.02. 


RECEIPT OF SUBSTITUTE DRAWINGS 

        If substitute drawings are timely filed, the clerk should 
immediately  send the new substitute drawings with the file wrapper to the 
*>Draftperson<  for approval as to form. 

        If the application is allowed on the first action, the examiner 
should  require formal drawings using form PTOL-37. 

COMPARISON OF SUBSTITUTE DRAWINGS 

        In utility applications, the examination will normally be 
conducted  using any informal drawings presented.  The sufficiency of 
disclosure, as concerns  the subject matter claimed, will be made by the 
examiner utilizing the informal  drawings. IT IS APPLICANT'S 
RESPONSIBILITY TO SEE THAT NO NEW MATTER IS ADDED  when submitting 
substitute drawings since they will not normally be reviewed  by an 
examiner. Of course, if the examiner notices new matter in the substitute 
drawings, appropriate action to have the new matter deleted should be 
undertaken. 

608.02(c) Drawing Print Kept in File Wrapper 


        The drawing prints must always be kept on top of the papers on the 
 right side of the file wrapper so as to be visible upon opening the 
wrapper  and to permit them to be easily detached. 

        Applications may be sent to issue or to the Files Repository 
without  the original drawing, if any, if the drawing cannot be located. 
For an application  sent to issue with missing drawings, see MPEP # 
608.02(z). For abandoned applications  sent to the Files Repository, a 
notation should be made on the Contents portion  of the file wrapper that 
the drawings were missing. 

        Upon initial processing, the original drawings are placed in the 
center  portion of the application file wrapper underneath the application 
papers by  the Micrographics Branch. The formal drawings should be 
retained in this position. 

608.02(d) Complete Illustration in Drawings [R-1] 


37 CFR 1.83.    Content of drawing. 

        (a)   The drawing must show every feature of the invention 
specified  in the claims. However, conventional features disclosed in the 
description  and claims, where their detailed illustration is not 
essential for a proper  understanding of the invention, should be 
illustrated in the drawing in the  form of a graphical drawing symbol or a 
labeled representation (e.g. a labeled  rectangular box). 

        (b)   When the invention consists of an improvement on an old 
machine  the drawing must when possible exhibit, in one or more views, the 
improved  portion itself, disconnected from the old structure, and also in 
another view,  so much only of the old structure as will suffice to show 
the connection of  the invention therewith. 

        (c)   Where the drawings do not comply with the requirements of 
paragraphs 
(a) and (b) of this section, the examiner shall require such additional 
illustration  within a time period of not less than two months from the 
date of the sending  of a notice thereof. Such corrections are subject to 
the requirements of w  1.81(d). 

        Any structural detail that is of sufficient importance to be 
described  should be shown in the drawing. (Ex parte Good, 1911 C.D. 43; 
164 O.G. 739.) 
        Form Paragraph 6.36 should be used to require 
illustration. 

 W  6.36        Drawings Do Not Show Claimed Subject Matter 

        The drawings are objected to under 37 CFR 1.83(a). The drawings 
must  show every feature of the invention specified in the claims. 
Therefore, the  [1] must be shown or the feature ** cancelled from the 
claim. No new matter  should be entered. 

Examiner Note: 

        In bracket 1, insert the features that *>must< be shown. 

        See also MPEP w 608.02(a). 


608.02(e) Examiner Determines Completeness of Drawings 


        The examiner should see to it that the figures are correctly 
described  in the brief description of the specification and that the 
reference characters  are properly applied, no single reference character 
being used for two different  parts or for a given part and a modification 
of such part, but there should  be no superfluous illustrations. 


608.02(f) Modifications in Drawings 


        Modifications may not be shown in broken lines on figures which 
show  in solid lines another form of the invention. Ex parte Badger, 1901 
C.D. 195;  97 O.G. 1596. 

        All modifications described must be illustrated, or the text 
cancelled. 
(Ex parte Peck, 1901 C.D. 136; 96 O.G. 2409.) This requirement does not 
apply  to a mere reference to minor variations nor to well-known and 
conventional  parts. 



608.02(g) Illustration of Prior Art [R-1] 


        Figures showing the prior art are usually unnecessary and should 
be  cancelled, Ex parte Elliott, 1904 C.D. 103; 109 O.G. 1337. However, 
where needed  to understand applicant's invention, they may be retained if 
designated by  a legend such as "Prior Art." 

        If the prior art figure is not labeled, the * >form< paragraph 
>6.36.01<  may be used. 

># 6.36.01 Illustration of "Prior Art"< 

        Figure [1] should be designated by a legend such as Prior Art in 
order 
 to clarify what is applicant's invention. (See MPEP w 608.02(g)). 

608.02(h) Additional, Duplicate, or Substitute Drawings 


        When an amendment is filed stating that at the same time 
substitute  or additional sheets of drawings are filed and such drawings 
have not been  transmitted to the examining group, the docket clerk in the 
examining group  should call the Application Branch before entering the 
amendment to ascertain  if the drawing was not received.  In the next 
communication of the examiner,  the applicant is notified if the drawings 
have been received and whether or  not the substitute or additional 
drawings have been entered in the application. 
        Additional and substitute drawings, together with the file 
wrapper,  are routed through the Drafting Branch where any defects in 
execution will  be noted. If there are none, they will be stamped, 
"APPROVED BY DRAFTSMAN." 
  When such drawings are considered by the examiner, it should be kept in 
mind  that the "APPROVED" stamp applies only to the size and quality of 
paper, lines  rough and blurred, and other details of execution. The 
additional or substitute  drawing sheets should be entered by the 
application clerk after approval by  both the draftsman and the examiner. 

        The examiner should not overlook such factors as new matter, the 
necessity  for the additional sheets and consistency with other sheets. 
Clerks will routinely  enter  all additional and substitute sheets on the 
file wrapper.  Additional  and substitute sheets of drawings are also 
indicated on the face of the file  wrapper under the heading  "Parts of 
application separately filed." If the  examiner decides that the sheets 
should not be entered, applicant is so informed,  giving the reasons. The 
entries made by the clerk will be marked "(N.E.)." 
        Form Paragraph 6.37 may be used to acknowledge corrected or 
substituted  drawings. 

W 6.37      Acknowledgment of Corrected or Substituted Drawings 

        The corrected or substitute drawings have been received on [1]. 
These  drawings are [2]. 

Examiner Note: 

        1.  In bracket 2, insert either - acceptable - or - not 
acceptable-. 
        2.  If not acceptable, an explanation must be provided. 

        3.  If not acceptable because of informalities noted on the 
PTO-948,  use form paragraph 6.43. 

        Alternatively, PTOL-326 Office Action Summary, includes a block 
for  acknowledgment of corrected or substitute drawings. 

        If an additional sheet of drawing is considered unnecessary and 
the  original drawing requires alterations which are taken care of in the 
proffered  additional sheet, the latter may be used in lieu of the usual 
sketch required  in making the correction of the original drawing. 

        For return of drawing, see MPEP # 608.02(y). 


608.02(i) Transfer of Drawings From Prior Applications 


        Transfer of drawings from a first pending application to another 
will  be made only upon the granting of a petition filed under 37 CFR 
1.182 which  must set forth a hardship situation requiring such transfer 
of drawings. 

608.02(m) Drawing Prints 


        Preparation and distribution of drawing prints is discussed in 
MPEP  w 508. 

        Prints are made of the drawings of an acceptable application. 
These  prints are marked "Prints of drawing as originally filed" and are 
entered in  the application, given a paper number, and kept on top of the 
papers on the  right side of the file wrapper, see MPEP # 717.01(b). 

        All prints and inked sketches subsequently filed to be part of the 
 record are endorsed with the date of their receipt in the Office and 
given  their appropriate paper number. 

        The print being thus an official paper in the record should not be 
 marked or in any way altered. The original drawing, of course, should not 
be  marked up by the examiner. Where, as in an electrical wiring case, it 
is desirable  to identify the various circuits by different colors, or in 
any more or less  complex case, it is advantageous to apply legends, 
arrows, or other indicia,  an additional print for such use should be made 
or ordered by the examiner and placed unofficially  in the file. 

        Prints remain in the file at all times except as provided in MPEP 
#  608.02(c). 

INTERFERENCE PRINTS 

        A print is prepared of each drawing in all applications having a 
filing  date. This interference print is in addition to the drawing print 
on white  paper. 

        Primary examiners should place the classification and the name of 
the  examiner on the interference print. 

        The interference prints are located above the drawing prints on 
the  right-hand portion of the file wrapper when initially received in the 
examining  group. 

        After the application has been classified and assigned to an 
examiner,  the interference prints should be removed and placed in the 
drawing cabinets. 
        If an application has several sheets of drawings, the interference 
 prints should be stapled together at their bottom edges before being 
filed.  If the number of sheets of prints is too large to be stapled, a 
fastener should  be placed through the holes at the top. 

        The time when the interference prints are removed from the drawing 
 cabinets is determined by the group director. 

        The drawings filed by applicant remain in the file wrapper. 

608.02(n) Duplicate Prints in Patentability Report Cases 


        In patentability report cases having drawings, the examiner to 
whom  the case is assigned should normally obtain a duplicate set of the 
interference  prints of the drawing for filing in the group to which the 
case is referred. 
        When a case that has had patentability report prosecution is 
passed  for issue or becomes abandoned, notification of this fact is given 
by the group  having jurisdiction of the case to each group that submitted 
a patentability  report. The examiner of each such reporting group notes 
the date of allowance  or abandonment on his or her duplicate set of 
prints.  At such time as these  prints become of no value to the reporting 
group, they may be destroyed. 

608.02(o) Dates Entered on Drawing 


        The Incoming Mail Section (mail room) stamp and the "Corrected" 
stamp  applied by the Drafting Branch are impressed on the back of the 
drawings. If  the drawings are filed in the Examining Group, the group 
receipt date stamp  should be applied to the back of the drawing near the top. 

        Approval of the Drafting Branch is indicated by a legend 
associated  with the "O.G. Fig. Cl. . . . Sub. . . . " stamp on the front 
of each sheet. 

608.02(p) Correction of Drawings 


37 CFR 1.123.     Amendments to the drawing. 

        No change in the drawing may be made except with permission of the 
 Office.  Permissible changes in the construction shown in any drawing may 
be  made only by the submission of a substitute drawing by applicant.  A 
sketch  in permanent ink showing proposed changes, to become part of the 
record, must  be filed for approval by the examiner and should be a 
separate paper. 
        NOTE.-Correction is deferrable, see MPEP 
# 608.02(b); correction at allowance and issue, see MPEP # 608.02(w) and 
MPEP  # 1302.05. 

        A cancelled figure may be reinstated. An amendment should be made 
to  the specification adding the brief description if a cancelled figure 
is reinstated. 

608.02(q) Conditions Precedent to Amendment of Drawing [R-1] 


        No alterations will be permitted unless required by an examiner's 
letter  in each case or proposed in writing by applicant or his or her 
attorney or  agent. In either case, the alterations or corrections as 
indicated in the sketches  filed with the request of the applicant or his 
or her attorney or agent must  be given written approval by the examiner 
before the drawing is corrected. 
Correction of Informalities 
(Draftsman's Objections on PTO-948) 

        Form Paragraph 6.40 (reproduced in MPEP 
# 608.02) ** >,< the back page of PTOL-948, and the back page of PTOL-37, 
the  "Notice of Allowability" provide detailed information on how to 
effect drawing  changes. 

        In order to correct any informalities in the drawings, applicants 
MUST  comply with (a) below. Failure to do so will result in ABANDONMENT 
of the application. 
        (a)   File new drawings with the changes incorporated therein. 
Applicant  may delay filing of the new drawings until the application is 
allowed by the  examiner. If delayed, the new drawings MUST be filed 
within the period set for response in the "NOTICE OF ALLOWABILITY" 
(PTOL-37). The drawings  should be filed as a separate paper with a 
transmittal letter addressed to  the Official Draftsman which indicates 
the following in the upper right-hand  corner: 

        Date of the Notice of Allowability 

        Issue Batch Number 

        Serial Number 

Corrections Other Than Informalities Noted by the Draftsman on the PTO-948 
        All changes to the drawings, other than informalities noted by the 
 Draftsman, MUST be made in the same manner as above except that, 
normally,  a sketch of the changes to be incorporated into the new 
drawings MUST be approved  by the examiner before the application will be 
allowed. No changes will be  permitted to be made, other than correction 
of informalities, unless the examiner  has approved the proposed changes. 


608.02(r) Separate Letter to Draftsman 


        Any proposal by the applicant for amendment of the drawing to cure 
 defects must be embodied in a separate letter. Otherwise the case, unless 
in  other respects ready for issue, cannot be corrected, and applicant 
must be  so advised in the next action by the examiner. 

        NOTE:-Changes which may require sketches, MPEP # 608.02(v). 

608.02(t) Cancellation of Figures 


        Cancellation of one or more figures which do not occupy entire 
sheets  of the drawings is done by the clerk in the examining group who 
encloses a  figure and its legend with a red ink line. No portion of the 
figure itself  should be crossed by the red line.  The words "CANCEL per'' 
and the date of  the amendment directing the cancellation or the date that 
substitute sheets  are filed should be written in red ink within the red 
line. Cancellation of  an entire sheet of drawings is done by stamping the 
words "CANCEL per" in the  top right corner of the drawing.  Cancelled 
drawing sheets should be placed  at the bottom of the papers on the right 
fold of the file wrapper. 
        When the cancellation of some of the figures from one sheet of 
drawings  has left the remaining figures with an inartistic arrangement, 
the draftsmen  should be consulted as to whether the remaining figures 
should be transferred  to other sheets already in the case or shown in 
additional drawings. Cancellation  of a figure may necessitate renumbering 
of the remaining figures. 


608.02(v) Drawing Changes Which Require Sketches 


        When changes are to be made in the drawing itself, other than mere 
 changes in reference characters, designations of figures, or inking over 
lines  pale and rough, a print or pen-and-ink sketch must be filed showing 
such changes  in red ink or with the changes otherwise highlighted. 
Ordinarily, broken lines  may be changed to full without a sketch. 

        Sketches filed by an applicant and used for correction of the 
drawing  will not be returned. All such sketches must be in ink or 
permanent prints. 

608.02(w) Drawing Changes Which May Be Made Without Applicant's Sketch 

        Where an application is ready for issue except for a slight defect 
 in the drawing not involving change in structure, the examiner will 
prepare  a letter indicating the change to be made and note in pencil on 
the drawing  the addition or alteration to be made. 

        The correction must be made at applicant's expense. 

        As a guide to the examiner, the following corrections are 
illustrative  of those that may be made by penciling in the change on the 
drawing without  a sketch: 

(1)   Adding two or three reference characters or exponents. 

(2)         Changing one or two numerals or figure ordinals. Garrett v. 
Cox,  110 USPQ 52, 54 (CCPA 1956) 

(3)   Removing superfluous matter. 

(4)   Adding or reversing directional arrows. 

(5)   Changing Roman Numerals to Arabic Numerals to agree with 
specification. 
(6)   Adding section lines or brackets, where easily executed. 

(7)   Changing lead lines. 

(8)   Correcting misspelled legends. 


608.02(x) Disposition of Orders for Amendment of Drawing 


        Where the correction of the drawing is approved by the examiner, 
the  application and drawing are forwarded to the Office of Publications 
along with the Notice of Allowance. 
CORRECTION NOT APPROVED 

        Where the correction is not approved, for example, because the 
proposed  changes are erroneous, or involve new matter or (although 
otherwise proper)  do not include all necessary corrections, the case and 
request for correction  of drawing are not approved. The examiner's 
reasons for not approving the corrections  to the drawing should be set 
forth in the next Office action. 


608.02(y) Return of Drawing 


        If there is a formal drawing in the case, non-entered drawings 
(except  those originally filed) that have been finally denied admission 
will be returned  to the applicant only at applicant's request. 

        A request for return of nonentered drawings must be filed within a 
 reasonable time; otherwise, the drawing may be disposed of at the 
discretion  of the Commissioner. 

        When a drawing is to be returned, the file, the examiner's letter 
stating  that the drawing is being returned, and the drawing are taken to 
the Drafting  Branch where the letter will be stamped and the drawing 
returned. The letter  is mailed by the examining group. 

        Before drawings are returned, prints are made and put in the 
application  file. 


608.02(z) Allowable Applications Needing Drawing Corrections or Formal 
Drawings [R-1] 

        Allowable applications can be turned in for counting and 
forwarding  to the Office of Publications without the drawings having been 
corrected. When  sending allowed applications to the Office of 
Publications which require drawing  corrections, use yellow tag form 
PTO-1364.  The approved formal drawings requiring  correction should be 
placed as the top papers in the center fold of the file  wrapper. The 
drawing correction instructions should be stapled to the inside  left flap 
of the file wrapper over the area having the search information.  Care 
should be taken to make certain that the corrections have been approved 
by the examiner. Such approval should be made by the examiner prior to 
counting  the allowance of the application. 

        The yellow tag procedure normally should be used only where 
drawing  corrections are involved. The yellow tag procedure must be used 
where the draftsman  has objected to the drawing because of an informality 
such as improper shading  or pale lines and has indicated that this can be 
corrected. 

        The yellow tag procedure should not normally be used in other 
situations  where corrected drawings have been filed but have not been 
approved by the  draftsman unless the examiner is quite sure that the 
draftsman will approve  the new drawings or in the situation where the 
application was examined utilizing  an informal drawing and the request 
for formal drawings was not made until  the Notice of Allowability was 
mailed. The yellow tag procedure should not  be used in design 
applications where the drawings have not been approved by  the draftsman 
because of shading problems which can arise. If the substitute  drawings 
are not approved by the draftsman, the application should be promptly 
taken up for action by the examiner. 

E60803007.bmp 



E60803007.end 

APPLICATIONS HAVING LOST DRAWINGS 

        A yellow tag is to be attached to the file wrapper and a "Drawing 
Missing"  memo is to be stapled to the front of the file wrapper. The 
Notice of Allowability  is verified and printed using PALM III, and the 
Notice is mailed to the applicant. 
        The application is then forwarded to Licensing and Review or the 
Allowed  Files and Assembly Branch of the Office of Publications, as 
appropriate, using  the PALM III transaction code after the application 
has been revised for issue. 
  UTILITY PATENT APPLICATIONS 
RECEIVING FORMAL DRAWINGS AFTER 
THE NOTICE OF ALLOWABILITY 

        Where substitute drawings are received in utility patent 
applications  examined with informal drawings and the Notice of 
Allowability was mailed prior to the receipt of the substitute drawings, 
the clerk should enter the substitute drawings into the application and 
forward  the application to the 
Allowed Files and Assembly Branch of the Office of Pub- 
lications via Licensing and Review, if appropriate, using 
the yellow tag procedure.  Submission to the examiner is 
not necessary unless an amendment accompanies the 
drawings which changes the specification, such as where 
the description of figures is added or cancelled. 

 BORROWING FILES FROM 
DRAFTING BRANCH 

        Allowed files requiring drawing corrections are sent to the 
draftsman  from the Office of Publications. At times, examiners have a 
need to borrow  these applications. When borrowing applications, examining 
corps personnel  must submit a request to the Office of Publications. 

37 CFR 1.312 AMENDMENTS 

        In handling 37 CFR 1.312 amendments, the examining corps should 
process  drawings cancelled in the normal manner. If there are corrections 
to the drawing,  approval, if appropriate, is indicated by the examiner on 
form PTOL-271 in  conjunction with form paragraph 6.48; the paragraph sets 
the appropriate period  for effecting the approved drawing change. 

W 6.48      Drawing Changes in * >37 CFR 1.312< Amendment 

        Applicant is hereby given one month from the date of this letter 
or  until the expiration of the period set in the "Notice of Allowance" 
(PTOL-85)  or Notice of Allowability (PTOL-37), whichever is longer, to 
file corrected  drawings. 

Examiner Note: 

        Use with 312 amendment notice where there is a drawing correction 
proposal  or request *. 

        Formal drawings may be required in an allowed application by using 
 Form Paragraph 6.25 in an Office action or by checking the appropriate 
box  on Form letter PTOL-37. 

W 6.25      Formal Drawings Required, Application Allowed 

        The application having been allowed, formal drawings are required 
in  response to this Office action. 

>Examiner Note: 

        Use this form paragraph only with the Notice of 
Allowability/Examiner's  Amendment.<. 


608.03      Models, Exhibits, Specimens 


35 U.S.C. 114.      Models, specimens. 

        The Commissioner may require the applicant to furnish a model of 
convenient  size to exhibit advantageously the several parts of his 
invention. 
        When the invention relates to a composition of matter, the 
Commissioner  may require the applicant to furnish specimens or 
ingredients for the purpose  of inspection or experiment. 

37 CFR 1.91.    Models not generally required as part of application or 
patent. 
        Models were once required in all cases admitting a model, as a 
part  of the application, and these models became a part of the record of 
the patent.  Such models are no longer generally required (the description 
of the invention  in the specification, and the drawings, must be 
sufficiently full and complete,  and capable of being understood, to 
disclose the invention without the aid  of a model), and will not be 
admitted unless specifically called for. 
37 CFR 1.92.    Model or exhibit may be required. 

        A model, working model, or other physical exhibit, may be required 
 if deemed necessary for any purpose on examination of the application. 
        With the exception of cases involving perpetual motion, a model is 
 not ordinarily required by the Office to demonstrate the operativeness of 
a  device. If operativeness of a device is questioned, the applicant must 
estab-lish  it to the satisfaction of the examiner, but he or she may 
choose his or her  own way of so doing. 

        A physical exhibit, not to be part of the case, is generally not 
refused  except when bulky or dangerous. 

37 CFR 1.93.    Specimens. 

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


608.03(a) Handling of Models, Exhibits, and Specimens 



        All models and exhibits received in the Patent and Trademark 
Office  should be taken to the examining group assigned the related 
application for  examination. The receipt of all models and exhibits must 
be properly recorded  on the "Contents" portion of the application file 
wrapper. 

        A label indicating the application serial number, filing date, and 
 attorney's name and address should be attached to the model or exhibit so 
that  is is clearly identified and easily returned after prosecution of 
the application  is closed, if return is requested. 

        If the model or exhibit is too large to be kept in the examining 
group  during prosecution of the application, it should not be accepted. 

37 CFR 1.94.    Return of models, exhibits or specimens. 

        Models, exhibits, or specimens in applications which have be- come 
abandoned, and also in other applications on conclusion of 
the prosecution, may be returned to the applicant upon demand and at his 
expense,  unless it be deemed necessary that they be preserved 
in the Office. Such physical exhibits in contested cases may be re- turned 
to the parties at their expense. If not claimed within a reasonable time, 
they may be disposed of at the discretion of the Commissioner. 
        When a model is to be returned, a letter should be written to 
applicant  by the examining group stating that it is being returned under 
separate cover,  and the model should be forwarded with a copy of the 
letter and an address  label to the Outgoing-Incoming Mail Branch for 
wrapping and return. 
        NOTE. - Disposition of exhibits which are part of the record, MPEP 
 # 715.07(d). 

        Models, exhibits, and specimens may be presented to the Office for 
 purposes of interview and taken away by the attorney at the end of the 
interview.  See MPEP # 713.08. 

        NOTE.-Plant specimens, MPEP # 1607, 37 CFR 1.166. 

37 CFR 1.95.    Copies of exhibits. 

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


608.04      New Matter [R-1] 


37 CFR 1.118.     Amendment of disclosure. 

        (a) No amendment shall introduce new matter into the disclosure of 
 an application after filing date of the application (# 1.53(b)). All 
amendments  to the specification, including the claims, and the drawings 
filed after the  filing date of the application must conform to at least 
one of them as it was  at the time of the filing of the application. 
Matter not found in either, involving  a departure from or an addition to 
the original disclosure, cannot be added  to the application after its 
filing date even though supported by an oath or  declaration in accordance 
with # 1.63 or 
# 1.67 filed after the filing date of the application. 

        (b) If it is determined that an amendment filed after the filing 
date  of the application introduces new matter, claims containing new 
matter will  be rejected and deletion of the new matter in the 
specification and drawings  will be required even if the amendment is 
accompanied by an oath or declaration  in accordance with # 1.63 or # 1.67. 

        In establishing a disclosure, applicant may rely not only on the 
specification  and drawing, as filed but also on the original claims if 
their content justifies  it. Note MPEP # 608.01(l). 

        While amendments to the specification and claims involving new 
matter  are ordinarily entered, such matter is required to be cancelled 
from the descriptive  portion of the specification, and the claims 
affected are rejected under 35  U.S.C. 112, first paragraph. 

        When new matter is introduced into the specification, the 
amendment  should be objected to under 
35 U.S.C. 132 (35 U.S.C. 251 if a reissue application) and a requirement 
made  to cancel the new matter - clearly identified by the examiner.  If 
the new  matter has been entered into the claims or affects the scope of 
the claims,  the claims affected should be rejected under 35 U.S.C. 112, 
first paragraph,  because the new matter is not described in the 
application as originally filed. 
        A "new matter" amendment of the drawing is ordinarily not entered; 
 neither is an additional or substitute sheet containing "new matter" even 
though  stamped APPROVED by the Draftsman and provisionally entered by the 
clerk. 
 See MPEP # 608.02(h). 

        The examiner's holding of new matter may be petitionable or 
appealable,  MPEP # 608.04(c). 

        NOTE-New matter in reissue application, MPEP 
# 1411.02. New matter in substitute specification, MPEP # 714.20. 
        >NOTE-No amendment is permitted in a provisional application after 
 it receives a filing date.< 


608.04(a) Matter Not in Original Specification, Claims, or Drawings 

        Matter not in the original specification, claims, or drawings is 
usually  new matter. Depending on circumstances such as the adequacy of 
the original  disclosure, the addition of inherent characteristics such as 
chemical or physical  properties, a new structural formula or a new use 
may be new matter. See Ex  parte Vander Wal, et al., 1956 C.D. 11; 705 
O.G. 5 (physical properties), Ex parte Fox, 1960 C.D. 28; 761 O.G. 906 
(new formula) 
and Ex parte Ayers, et al., 108 USPQ 444 (new use). 
For rejection of claim involving new matter, see MPEP 
# 706.03(o). 

        NOTE-Completeness of disclosure, MPEP 
# 608.01(p); Trademarks and tradenames, MPEP 
# 608.01(v). 


608.04(b) New Matter by Preliminary Amendment 


        An amendment is sometimes filed along with the filing of the 
application.  Such amendment does not enjoy the status as part of the 
original disclosure  in an application filed under 37 CFR 1.53 unless it 
is referred to in the oath or declaration filed therewith.  Once an oath 
or declaration is submitted  in an application filed under 
37 CFR 1.53 identifying the papers which the inventor(s) has "reviewed and 
 understands" as required by 37 CFR 1.63, the original disclosure of the 
application  is defined and cannot be altered merely by filing of a 
subsequent oath or declaration  referring to different papers.  If the 
application is filed without an executed  oath or declaration pursuant to 
37 CFR 1.53(b), the original oath or declaration  submitted later than the 
filing date must refer to the preliminary amendment  filed along with the 
application in order to comply with 37 CFR 1.63. 
        An amendment which adds additional disclosure filed with a request 
 for a continuation-in-part application under 37 CFR 1.62 is automatically 
considered  a part of the original disclosure of the application by virtue 
of the rule.  Therefore, the oath or declaration filed in such an 
application must identify  the amendment adding additional disclosure as 
one of the papers which the inventor(s)  has ``reviewed and understands'' 
in order to comply with 37 CFR 1.63. If the  original oath or declaration 
submitted in a continuation-in-part application  filed under 37 CFR 1.62 
does not contain a reference to the amendment filed  with the request for 
an application under 37 CFR 1.62, the examiner must require  a 
supplemental oath or declaration referring to the amendment. 


608.04(c) Review of Examiner's Holding of New Matter 


        Where the new matter is confined to amendments to the 
specification,  review of the examiner's requirement for cancelation is by 
way of petition.  But where the alleged new matter is introduced into or 
affects the claims,  thus necessitating their rejection on this ground, 
the question becomes an  appealable one, and should not be considered on 
petition even though that new  matter has been introduced into the 
specification also. 37 CFR 1.181 and 1.191  afford the explanation of this 
seemingly inconsistent practice as affecting  new matter in the specification. 


608.05      Deposit of Computer Program Listings 


37 CFR 1.96.    Submission of computer program listings. 

        Descriptions of the operation and general content of computer 
program  listings should appear in the description portion of the 
specification. A computer  program listing for the purpose of these rules 
is defined as a printout that  lists in appropriate sequence the 
instructions, routines, and other contents  of a program for a computer. 
The program listing may be either in machine or  machine-independent 
(object or source) language which will cause a computer  to perform a 
desired procedure or task such as solve a problem, regulate the  flow of 
work in a computer, or control or monitor events. Computer program 
listings may be submitted in patent applications in the following forms: 
        (a)   Material which will be printed in the patent. If the 
computer  program listing is contained on 10 printout pages or less, it 
must be submitted  either as drawings or as part of the specification. 

                (1)   Drawings. The listing may be submitted in the manner 
 and complying with the requirements for drawings as provided in # 1.84. 
At  least one figure numeral is required on each sheet of drawing. 

                (2)     Specification. (i) The listing may be submitted as 
 part of the specification in accordance with the provisions of w 1.52, at 
the  end of the description but before the claims. 

                (ii)    The listing may be submitted as part of the 
specification  in the form of computer printout sheets (commonly 14 by 11 
inches in size)  for use as camera ready copy when a patent is 
subsequently printed. Such computer  printout sheets must be original 
copies from the computer with dark solid black  letters not less than 0.21 
cm high, on white, unshaded and unlined paper, the  printing on each sheet 
must be limited to an area 9 inches high by 13 inches  wide, and the 
sheets should be submitted in a protective cover. When printed  in 
patents, such 
computer printout sheets will appear at the end of the description but 
before  the claims and will usually be reduced about 1/2 in size with two 
printout  sheets being printed as one patent specification page. Any 
amendments must  be made by way of submission of a substitute sheet if the 
copy is to be used  for camera ready copy. 

        (b)   As an appendix which will not be printed. If a computer 
program  listing printout is 11 or more pages long, applicants may submit 
such listing  in the form of microfiche, referred to in the specification (see 
# 1.77(c)(2)). Such microfiche filed with a patent application is to be 
referred  to as a microfiche appendix.  The microfiche appendix will not 
be part of the  printed patent. Reference in the application to the 
microfiche appendix should  be made at the beginning of the specification 
at the location indicated in  # 1.77(c)(2).  Any amendments thereto must 
be made by way of revised microfiche.  All computer program listings 
submitted on paper will be printed as part of  the patent. 

                (1)   Availability of appendix.  Such computer program 
listings  on microfiche will be available to the public for inspection, 
and microfiche  copies thereof will be available for purchase with the 
file wrapper and contents,  after a patent based on such an application is 
granted or the application is  otherwise made publicly available. 

                (2)   Submission requirements. Computer-generated 
information  submitted as an appendix to an application for patent shall 
be in the form  of microfiche in accordance with the standards set forth 
in the following American  National (ANSI) or National Micrographics 
Association (NMA) Standards (Note:  As new editions of these standards are 
published, the latest shall apply): 
        ANSI PH 1.28-1976-Specifications for Photographic Film for 
Archival  records, Silver-Gelatin Type, on Cellulose Ester Base. 

        ANSI PH 1.41-1976 Specifications for Photographic Film for 
Archival  Records, Silver-Gelatin Type, on Polyester Base. 

        NMA-MSI (1971) Quality Standards for Computer Output Microfilm. 
        ANS1/NMA MS2 (1978) Format and Coding Standards for Computer 
Output  Microfilm. 

        NMA MS5 (ANSI PH 5.9-1975) Microfiche of Documents. 

        ANSI PH 2.19 (1959)-Diffuse Transmission Density. 

except as modified or clarified below: 

                (i)   Either Computer-Output-Microfilm (COM) output or 
copies  of photographed paper copy may be submitted. In the former case, 
NMA standards  MS1 and MS2 apply; in the latter case, standard MS5 applies. 

                (ii)    Film submitted shall be first generation (camera 
film)  negative appearing microfiche (with emulsion on the back side of 
the film when  viewed with the images right reading). 

                (iii)     Reduction ratio of microfiche submitted should 
be  24:1 or a similar ratio where variation from said ratio is required in 
order  to fit the documents into the image area of the microfiche format 
used. 
                (iv)    Film submitted shall have a thickness of at least 
.005  inches (0.13 mm) and not more than .009 inches (0.23 mm) for either 
cellulose  acetate base or polyester base type. 

                (v)   Both microfiche formats A1 (98 frames, 14 columns x 
7 rows) and A3 (63 frames, 9 columns x 7 rows) which are described in NMA 
standard  MS2 (A1 is also described in MS5) are acceptable for use in 
preparation of  microfiche submitted. 

                (vi)    At least the left-most 1/3 (50 mm x 12 mm) of the 
header  or title area of each microfiche submitted shall be clear or 
positive appearing  so that the Patent and Trademark Office can apply 
serial number and filing  date thereto in an eye-readable form. The middle 
portion of the header shall  be used by applicant to apply an eye-readable 
application identification such  as the title and/or the first inventor's 
name. The attorney's docket number  may be included. The final right-hand 
portion of the microfiche shall contain  sequence information for the 
microfiche, such as 1 of 4, 2 of 4, etc. 
                (vii)     Additional requirements which apply specifically 
 to microfiche of filmed paper copy: 

                        (A)   The first frame of each microfiche submitted 
 shall contain a standard test target which contains five NBS Micro-copy 
Resolution  Test Charts (No. 1010A), one in the center and one in each 
corner. See illustration  on page 2 of NMA Recommended Practice MS104, 
Inspection and Quality Control  of First Generation Silver Halide 
Microfilm. See also paragraph 7 of NMA-MS5. 
                        (B)   The second frame of each microfiche 
submitted  must contain a fully descriptive title and the inventor's name 
as filed. 
                        (C)   The pages or lines appearing on the 
microfiche  frames should be consecutively numbered. 

                        (D)   Pagination of the microfiche frames shall be 
 from left to right and from top to bottom. 

                        (E)   At a reduction of 24:1 resolution of the 
original  microfilm shall be at least 120 lines per mm (5.0 target) so 
that reproduction  copies may be expected to comply with provisions of 
paragraph 7.1.4 of NMA  Standard MS5. 

                        (F)   Background density of negative appearing 
camera  master microfiche of filmed paper documents shall be within the 
range of 0.9  to 1.2 and line density should be no greater than 0.08. The 
density shall be  visual diffuse density as measured using the method 
described in ANSI Standard  PH 2.19. 

                (G)   An index, when included, should appear in the last 
frame 
(lower right hand corner when data is right-reading) of each microfiche. 
See  NMA-MS5, paragraph 6.6. 

                (viii)      Microfiche generated by Computer Output 
Microfilm 
(COM). 

                        (A)   Background density of negative-appearing 
COM-generated  camera master microfiche shall be within the range of 1.5 
to 2.0 and line density  should be no greater than 0.2. The density shall 
be visual diffuse density  as described in ANSI PH2.19. 

                        (B)   The first frame of each microfiche submitted 
 should contain a resolution test frame in conformance with NMA standard 
MS1. 
                        (C)   The second frame of each microfiche 
submitted  must contain a fully descriptive title and the inventor's name 
as filed. 
                        (D)   The pages or lines appearing on the 
microfiche  frames should be consecutively numbered. 

                        (E)   It is preferred that pagination of the 
microfiche  frames be from left to right and top to bottom but the 
alternative, i.e., from  top to bottom and from left to right, is also 
acceptable. 

                        (F)   An index, when included, should appear on 
the  last frame (lower right hand corner when data is right reading) of 
each microfiche. 
                        (G)   Amendment of microfiche must be made by way 
of  replacement microfiche. 

        Special procedures for presentation of computer program listings 
in  the form of microfiche in U.S. national patent applications are set 
forth in  37 CFR 1.96. Use of microfiche is desirable in view of the 
number of computer  program listings being submitted as part of the 
dis-closure in patent applications.  Such listings are often several 
hundred pages in length. By filing and publishing  such computer program 
listings on microfiche rather than on paper, substantial  cost savings can 
result to the applicants, the public, and the Patent and Trademark Office. 

BACKGROUND 

        A computer program listing, as used in these rules, means the 
printout  that lists, in proper sequence, the instructions, routines, and 
other contents  of a program for a computer. The listing may be either in 
machine or machine-independent 
(object or source) programming language which will cause a computer to 
perform  a desired task, such as solving a problem, regulating the flow of 
work in computer,  or controlling or monitoring events. The general 
description of the computer  program listing will appear in the 
specification while computer program listing  may appear either directly 
or as a microfiche as appendix to the specification  and be incorporated 
into the specification by reference. 

DISCUSSION OF THE BACKGROUND 
AND MAJOR ISSUES INVOLVED 

        The provisions of 37 CFR 1.52 and 1.84 for submitting 
specifications  and drawings on paper have been found suitable for most 
patent applications.  However, when lengthy computer program listings must 
be disclosed in a patent  application in order to provide a complete 
disclosure, use of paper copies  can become burdensome. 

        The cost of printing long computer programs in patent documents is 
 also very expensive to the Patent and Trademark Office. 

        In the past, all disclosures forming part of a patent 
application were presented on paper with the exception of microorganisms. 
Under  37 CFR 1.96, several different methods for submitting computer 
program listings,  including the use of microfiche, are set forth. 

        Relatively short computer program listings (10 pages or less) must 
 be submitted on paper and will be printed as part of the patent. If the 
computer  program listing is 
11 or more pages in length, it may be submitted on either paper or 
microfiche,  although microfiche is preferred. 

        Copies of publicly available computer program listings are 
available  from the Patent and Trademark Office on paper and on microfiche 
at the cost  set forth in 
37 CFR 1.19(a)(5) and (6). 

OTHER INFORMATION 

        The micrographic standards referred to in 37 CFR 1.96(b)(2) may be 
 obtained from either the National 
Micrographic Association, 8719 Colesville Road, Silver Spring, Maryland, 
20910  or the American National Standards Institute, 1430 Broadway, New 
York, New  York 10018. 

        The effect of 37 CFR 1.96 is that if a computer program listing 
(printout)  is 11 or more pages long, the applicant may submit such 
listing in the form  of microfiche. Relatively short computer program 
listings (10 pages or fewer)  must be submitted on paper and will be 
printed as part of the patent, as in  the past. When the computer program 
listing is 11 or more pages in length,  it may be submitted on either 
paper or microfiche, although microfiche is preferred.  A microfiche filed 
with a patent application will be referred to as a "Microfiche  Appendix," 
and will be identified as such on the front page of the patent but  will 
not be part of the printed patent. "Microfiche Appendix," denotes the 
total microfiche, whether only one or two or more. One microfiche is 
equivalent  to a maximum of either 63 (9x7) or 98 (14x7) frames (pages), 
or less. 
        The face of the file jacket will bear a label to denote that a 
Microfiche  Appendix is included in the application. A statement must be 
included in the  specification to the effect that a microfiche appendix is 
included in the application.  The specification entry must appear at the 
beginning of the specification immediately  following any cross-reference 
to related applications, 37 CFR 1.77(c)(2).   The patent front page and 
the Official 
Gazette entry will both contain information as to the number of microfiche 
 and frames of computer program listings appearing in the microfiche 
appendix. 
        When an application containing microfiche is received in the 
Correspondence  and Mail Division, a special pocket will be affixed to the 
center section of  the inside of the file wrapper underneath all papers, 
and the microfiche inserted  therein. The application file will then 
proceed on its normal course, and when  it reaches the Application Branch, 
a label which sticks up above the file wrapper  will be placed at the 
center section of the face of the wrapper. When the application  file 
reaches the Micrographics Division, the Microfiche Appendix label will  be 
placed on the face of the file wrapper. When the Allowed Files and 
Assembly  Branch of the Office of Publications receives the application 
file, the person  placing the patent number on the face of the file, upon 
seeing the Microfiche  Appendix label, will give the file to the 
Supervisor who will call Micrographics  Division and give the serial 
number and patent number, and request copies of  the microfiche. 
Micrographics Division personnel will then put the patent number  on the 
microfiche(s), making certain each microfiche is the most recent, and 
numbering each correctly; e.g., 1 of 1, 1 of 2, etc.  Upon completion, two 
 copies will be produced and provided to Allowed and Assembly Branch Files 
-  one for the grant head and one for the file wrapper. 

        At the time of assembly, the Microfiche Appendix will be placed 
inside  the grant head behind the patent grant for eyeletting, ribboning, 
and mailing  to the patentee/attorney. During the signing of the grant 
heads by the Attesting  Officer, the patent will be checked to assure 
proper assembly prior to mailing. 

609   Information Disclosure Statement [R-2] 


37 CFR 1.97.    Filing of information disclosure statement. 

        (a)   In order to have information considered by the Office during 
 the pendency of a patent application, an information disclosure statement 
in  compliance with w 1.98 should be filed in accordance with this 
section. 
  (b)     An information disclosure statement shall be considered by the 
Office  if filed: 

        (1)   Within three months of the filing date of a national 
application; 
        (2)   Within three months of the date of entry of the national 
stage  as set forth in w 1.491 in an international application; or 

        (3)   Before the mailing date of a first Office action on the 
merits, 

whichever event occurs last. 

         (c)    An information disclosure statement shall be considered by 
 the Office if filed after the period specified in paragraph (b) of this 
section,  but before the mailing date of either: 

        (1) A final action under # 1.113 or 

        (2)    A notice of allowance under #1.311, 

whichever occurs first, provided the statement is accompanied by either a 
certification  as specified in paragraph (e) of this section or the fee 
set forth in # 1.17(p). 
        (d)   An information disclosure statement shall be considered by 
the  Office if filed after the mailing date of either: 

        (1)   A final action under # 1.113 or 

        (2)   A notice of allowance under # 1.311, 

whichever occurs first, but before payment of the issue fee, provided the 
statement  is accompanied by: 

        (i)   A certification as specified in paragraph (e) of this 
section, 
        (ii)    A petition requesting consideration of the information 
disclosure  statement, and 

  (iii)       The petition fee set forth in # 1.17(i)(1). 

  (e)     A certification under this section must state either: 

        (1)   That each item of information contained in the information 
disclosure  statement was cited in a communication from a foreign patent 
office in a counterpart  foreign application not more than three months 
prior to the filing of the statement,  or 

        (2)   That no item of information contained in the information 
disclosure  statement was cited in a communication from a foreign patent 
office in a counterpart  foreign application or, to the knowledge of the 
person signing the certification  after making reasonable inquiry, was 
known to any individual designated in  # 1.56(c) more than three months 
prior to the filing of the statement. 
        (f)   No extensions of time for filing an information disclosure 
statement  are permitted under # 1.136. If a bona fide attempt is made to 
comply with  #1.98, but part of the required content is inadvertently 
omitted, additional  time may be given to enable full compliance. 

        (g)   An information disclosure statement filed in accordance with 
 this section shall not be construed as a representation that a search has 
been  made. 

        (h)   The filing of an information disclosure statement shall not 
be construed to be an admission that the information cited in the 
statement  is, or is considered to be, material to patentability as defined 
in # 1.56(b). 

        (i)   Information disclosure statements, filed before the grant of 
 a patent, which do not comply with this section and # 1.98 will be placed 
in  the file, but will not be considered by the Office. 

37 CFR 1.98.    Content of information disclosure statement. 

        (a)   Any information disclosure statement filed under # 1.97 
shall  include: 

        (1)   A list of all patents, publications or other information 
submitted  for consideration by the Office; 

        (2)   A legible copy of : 

        (i)   Each U.S. and foreign patent; 

        (ii)    Each publication or that portion which caused it to be 
listed;  and 

        (iii)     All other information or that portion which caused it to 
 be listed, except that no copy of a U.S. patent application need be 
included;  and 

        (3)   A concise explanation of the relevance, as it is presently 
understood  by the individual designated in # 1.56(c) most knowledgeable 
about the content  of the information, of each patent, publication, or 
other information listed  that is not in the English language. The concise 
explanation may be either  separate from the specification or incorporated 
therein. 

        (b)   Each U.S. patent listed in an information disclosure state- 
ment shall be identified by patentee, patent number and issue date. Each 
foreign patent or published foreign patent application shall 
be identified by the country or patent office which issued the patent or 
published the application, an appropriate document number, and 
the publication date indicated on the patent or published applica- tion. 
Each publication shall be identified by author (if any), title, rele- vant 
pages of the publication, date and place of publication. 
        (c)   When the disclosures of two or more patents or publica- 
tions listed in an information disclosure statement are substan- 
tively cumulative, a copy of one of the patents or publications may be 
submitted  without copies of the other patents or publications provided 
that a statement  is made that these other patents or publications are 
cumulative. If a written  English-language translation of a non-English 
language document, or portion  thereof, is within the possession, custody 
or control of, or is readily available  to any individual designated in # 
1.56(c), a copy of the translation shall accompany the statement. 
        (d)   A copy of any patent, publication or other information 
listed  in an information disclosure statement is not required to be 
provided if it  was previously cited by or submitted to the Office in a 
prior application,  provided that the prior application is properly 
identified in the statement  and relied upon for an earlier filing date 
under 35 U.S.C. 120. 

        Information Disclosure Statements are not permitted in provisional 
 applications filed under 35 U.S.C. 111(b).  Since no substantive 
examination  is given in provisional applications, a disclosure of 
information is unnecessary.  Any such statement filed in a provisional 
application will be returned or destroyed at the option of the Office.  In 
 applications filed under 35 U.S.C. 111(a), applicants and other 
individuals  substantively involved with the preparation and/or 
prosecution of the application  have a duty to submit to the Office 
information which is material to patentability  as defined in 37 CFR 1.56. 
 These individuals also may want the Office to consider  information for a 
variety of other reasons; e.g., without first determining  whether the 
information meets any particular standard of materiality, or because 
another patent office considered the information to be relevant in a 
counterpart  or related patent application filed in another country, or to 
make sure that  the examiner has an opportunity to consider the same 
information that was considered  by the individuals that were 
substantively involved with the preparation or  prosecution of a patent 
application. 

        An information disclosure statement filed in accordance with the 
provisions  of 37 CFR 1.97 and 1.98 provides the procedure available to an 
applicant to  submit information to the Office so that the information 
will be considered  by the examiner assigned to the application. 

The requirements for the content of a statement have been simplified in 
the  new rules which became effective on March 16, 1992, to encourage 
individuals  associated in a substantive way with the filing and 
prosecution of a patent  application to submit information to the Office 
so the examiner can determine  its relevance to the claimed invention. The 
procedures for submitting an information  disclosure statement under the 
new rules are designed to encourage individuals  to submit information to 
the Office promptly. 

        In order to have information considered by the 
Office during the pendency of a patent application, an information 
disclosure  statement in compliance with 
37 CFR 1.98 as to content must be filed in accordance with the procedural 
requirements  of 37 CFR 1.97. The requirements as to content are discussed 
in A below. The  requirements based on the time of filing the statement 
are discussed in B below.  Examiner handling of information disclosure 
statements is discussed in C below. 

        The Office has set forth the minimum requirements for information 
to  be considered in 37 CFR 1.97 and 1.98. Once the minimum requirements 
are met,  the examiner has an obligation to consider the information. 
These rules provide  certainty for the public by defining the requirements 
for submitting information  to the Office so that the Office will consider 
information before a patent is granted.  Information submitted to the 
Office that does not comply with the requirements  of 37 CFR 1.97 and 1.98 
will not be considered by the Office but will be placed  in the 
application file. 

        The filing of an information disclosure statement shall not be 
construed  as a representation that a search has been made. 37 CFR 
1.97(g).  There is  no requirement that an applicant for a patent make a 
patentability search.  Further, the filing of an information disclosure 
statement shall not be construed  to be an admission that the information 
cited in the statement is, or is considered  to be, material to 
patentability as defined in 37 CFR 1.56(b).   37 CFR 1.97(h). 
 See MPEP # * >2129< regarding admissions by applicant. 

        Multiple information disclosure statements may be filed in a 
single  application, and they will be considered, provided each is in 
compliance with  the appropriate requirements. Use of form PTO-1449, 
``Information Disclosure  Citation," is encouraged as a means to provide 
the required list of information.  See C(2) below. 

        Information which is cited or submitted to the Office in the 
parent  application of a file wrapper continuing application under 37 CFR 
1.62 will  be part of the file before the examiner and need not be 
resubmitted in the  continuing application to have the information 
considered and listed on the  patent.  Likewise, the examiner will 
consider information cited or submitted  to the Office in a parent 
application when examining a continuation or continuation-in-part 
application (See MPEP # 2001.06(b)) which is  not a file wrapper 
continuing application, and a list of the information need  not be 
submitted in the continuing application unless applicant desires the 
information to be printed on the patent. 

        The examiner will consider the documents cited in the 
international  search report in a PCT national stage application, when the 
Form PCT/DO/EO/903  indicates that both the international search report 
and the copies of the documents  are present in the national stage file. 
In such a case, the examiner should  consider the documents from the 
international search report and indicate by  a statement in the first 
Office action that the information has been considered.  There is no 
requirement that the examiner list the documents on a PTO-892 form. 
A. CONTENT 

        An information disclosure statement must comply with the 
provisions  of 37 CFR 1.98 as to content in order to be considered by the 
Office. Each  information disclosure statement must comply with the 
applicable provisions  of A(1), A(2), and A(3) below. 

A (1)     Each information disclosure statement must include a list of all 
 patents, publications, or other information submitted for consideration 
by  the Office. 

        37 CFR 1.98(b) requires that each U.S. patent listed in an 
information  disclosure statement be identified by patentee, patent 
number, and issue date.  Each foreign patent or published foreign patent 
application must be identified  by the country or patent office which 
issued the patent or published the application,  an appropriate document 
number, and the publication date indicated on the patent  or published 
application. Each publication must be identified by author (if  any), 
title, relevant pages of the publication, date and place of publication. 
The date of publication supplied must include at least the month and year 
of  publication, except that the year of publication (without the month) 
will be  accepted if the applicant points out in the information 
disclosure statement that the year  of publication is sufficiently earlier 
than the effective U.S. filing date  and any foreign priority date so that 
the particular month of publication is  not in issue. The place of 
publication refers to the name of the journal, magazine,  or other 
publication in which the information being submitted was published. 
        To comply with this requirement, the list may not be incorporated 
into  the specification but must be submitted in a separate paper. A 
separate list  is required so that it is easy to confirm that applicant 
intends to submit  an information disclosure statement and because it 
provides a readily available  checklist for the examiner to indicate which 
identified documents have been  considered. A copy of a separate list will 
also provide a simple means of communication  to applicant to indicate the 
listed documents that have been considered and  those listed documents 
that have not been considered. Use of form PTO-1449,  Information 
Disclosure Citation, is encouraged.  See C(2) below. 

A (2)     In addition to the list, each information disclosure statement 
must  also include a legible copy of: 

        (i)   Each U.S. and foreign patent; 

        (ii)    Each publication or that portion which caused it to be 
listed;  and 

        (iii)     All other information or that portion which caused it to 
 be listed, except that no copy of a U.S. patent application need be 
included. 
        There are exceptions to this general rule that a copy must be 
provided.  First, 37 CFR 1.98(d) states that a copy of any patent, 
publication, or other  information listed in an information disclosure 
statement is not required to  be provided if it was previously cited by or 
submitted to the Office in a prior  application, provided that the prior 
application is properly identified in  the statement and relied on for an 
earlier filing date under 35 U.S.C. 120.  The examiner will consider 
information cited or submitted to the Office in  a prior application 
relied on under 35 U.S.C. 120. This exception to the requirement  for 
copies of information does not apply to information which was cited in  an 
international application under the Patent Cooperation Treaty. If the 
information  cited or submitted in the prior application was not in 
English, a concise explanation  of the relevance of the information to the 
new application is not required  unless the relevance of the information 
differs from its relevance as explained  in the prior application. See 
A(3) below. 

        Second, 37 CFR 1.98(c) states that when the disclosures of two or 
more  patents or publications listed in an information disclosure 
statement are substantively  cumulative, a copy of one of the patents or 
publications may be submitted without  copies of the other patents or 
publications provided that a statement is made  that these other patents 
or publications are cumulative. The examiner will  then consider only the 
patent or publication of which a copy is submitted and  will so indicate 
on the list or form PTO-1449 submitted; e.g., by crossing  out the listing 
of the cumulative information. 

        37 CFR 1.98(c) further states that if a written English  language 
translation  of a non-English language document, or thereof, is within the 
possession, custody  or control  of, or is readily available to any 
individual designated in 37  CFR 1.56(c), a copy of the translation shall 
accompany the statement. Translations  are not required to be filed unless 
they have been reduced to writing and are  actually translations of what 
is contained in the non-English language information.  If no translation 
is submitted, the examiner will consider the information  in view of the 
concise explanation and insofar as it is understood on its face;  e.g., 
drawings, chemical formulas, English language abstracts, in the same 
manner that non-English language information  in Office search files is 
considered by examiners in conducting searches. 
A (3) Each information disclosure statement must further include a concise 
 explanation of the relevance, as it is presently understood by the 
individual  designated in 37 CFR 1.56(c) most knowledgeable about the 
content of the information  of each patent, publication, or other 
information listed that is not in the  English language. The concise 
explanation may be either separate from the specification  or incorporated 
therein. 

        The requirement for a concise explanation of relevance is limited 
to  information that is not in the English language. The explanation 
required is  limited to the relevance as understood by the individual 
designated in 37 CFR  1.56(c) most knowledgeable about the content of the 
information at the time  the information is submitted to the Office. If a 
translation of the information  into English is submitted with the foreign 
language information, no concise  explanation is required. An 
English-language equivalent application may be  submitted to fulfill this 
requirement if it is, in fact, a translation of a  foreign language 
application being listed in an information disclosure statement.  There is 
no requirement for the translation to be verified. Submission of an 
English language abstract of a reference which does not deal with its 
relevance  to the invention will not fulfill the requirement for a concise 
explanation.  Where the information listed is not in the English language, 
but was cited  in a search report or other action by a foreign patent 
office in a counterpart  foreign application, the requirement for a 
concise explanation of relevance  can be satisfied by submitting an 
English-language version of the search report  or action which indicates 
the degree of relevance found by the foreign office.  This may be an 
explanation of which portion of the reference is particularly  relevant, 
to which claims it applies, or merely an "X", "Y", or "A" indication  on a 
search report. The requirement for a concise explanation of non-English 
language information would not be satisfied by a statement that a 
reference  was cited in the prosecution of a United States application 
which is not relied  on under 35 U.S.C.120. 

        If information cited or submitted in a prior application relied on 
 under 35 U.S.C. 120 was not in English, a concise explanation of the 
relevance  of the information to the new application is not required 
unless the relevance  of the information differs from its relevance as 
explained in the prior application. 

        The concise explanation may indicate that a particular figure or 
paragraph  of the patent or publication is relevant to the claimed 
invention. It might  be a simple statement pointing to similarities 
between the item of information  and the claimed invention. It is 
permissible but not necessary to discuss differences  between the cited 
information and the claims. 

        Applicants may, if they wish, provide a concise explanation of why 
 English-language information is being submitted and how it is understood 
to  be relevant. Concise explanations are helpful to the Office, 
particularly where  documents are lengthy and complex and applicant is 
aware of a section that  is highly relevant to patentability or where a 
large number of documents are  submitted and applicant is aware that one 
or more are highly relevant to patentability. 
B. TIME FOR FILING 

        The procedure and requirements for submitting an information 
disclosure  statement are linked to four stages in the processing of a 
patent application: 
(1) within 3 months of filing, or before first Office action, whichever is 
 later; (2) after the period in (1), but before final Office action or a 
Notice  of Allowance, whichever is earlier; (3) after the period in (2) 
but on or before  the date the issue fee is paid; and (4) after the period 
in (3) and up to the time the patent application can be effectively 
withdrawn from issue.  The procedures and requirements apply to 
applications filed under 35 U.S.C.  111 (utility), 161 (plants), 171 
(designs), and 251 (reissue), as well as international  applications 
entering the national stage under 35 U.S.C. 371. 

        The requirements based on the time when the information disclosure 
statement is filed are summarized as follows. 
  Time when IDS is filed                  37 CFR 1.97 
             Requirements 


        (1)   Within 3 months of filing or  None (always 

                before first Office action on            considered). 
                the merits, whichever is later. 

        (2)   After (1) but before final        Certification or 

                action or notice of allowance.      1.17(p) fee. 

        (3)   After final action or notice  Certification, 

                of allowance and before pay-    petition, and 

                ment of issue fee petition fee. 

B (1) Statement filed BEFORE first action on the merits or within three 
(3)  months of actual filing date (37 CFR 1.97(b)). 

        An information disclosure statement will be considered by the 
examiner  if filed: 

        (i) within 3 months of the filing date of a national 
 application; 

        (ii) within 3 months of the date of entry of the national stage as 
 set forth in 37 CFR 1.491 in an international application; or 

        (iii) before the mailing date of a first Office action on the 
merits, 
whichever event occurs last. A statement filed within this period requires 
 neither a fee nor a certification of prompt filing. 

        The term "national application" includes continuing applications 
(continuations,  divisions, continuations-in-part) so 3 months will be 
measured from the actual filing date of an application as opposed to the 
effective filing date of a  continuing application. 

        All information disclosure statements that comply with the content 
 requirements of 37 CFR 1.98 and are filed within three months of the 
filing  date will be considered by the examiner, regardless of whatever 
else has occurred  in the examination process up to that point in time. 
Thus, in the rare instance  that a final Office action or a notice of 
allowance is prepared and mailed  prior to a date which is 3 months from 
the filing date, any information contained  in a complete information 
disclosure statement filed within that 3-month window  will be considered 
by the examiner. 

        Likewise, an information disclosure statement will be considered 
if  it is filed later than 3 months after the filing date but before the 
mailing  date of a first Office action on the merits.  An action on the 
merits means  an action which treats the patentability of the claims in an 
application, as  opposed to only formal or procedural requirements. An 
action on the merits  would, for example, contain a rejection or 
indication of allowability of a  claim or claims rather than just a 
restriction requirement 
(37 CFR 1.142) or just a requirement for additional fees to have a claim 
considered 
(37 CFR 1.16(d)).  Thus, if an application was filed on January 1 and the 
first  Office action on the merits was not mailed until 6 months later on 
July 1,  the examiner would be required to consider any proper information 
disclosure  statement filed prior to July 1. 

        An information disclosure statement will be considered to have 
been  filed on the day it was received in the Office, or on an earlier 
date of mailing  if accompanied by a properly executed certificate of 
mailing or facsimile transmission  under 37 CFR 1.8, or Express Mail 
certificate under 37 CFR 1.10.  An Office  action is mailed on the date 
indicated in the Office action. 

B (2)       Statement filed after B(1), but BEFORE mailing of final action 
 or notice of allowance (37 CFR 1.97(c)). 

        An information disclosure statement will be considered by the 
examiner  if filed after the period specified in B(1) above, but before 
(not on the same  day as) the mailing date of either 

        a final action under 37 CFR 1.113; e.g., final rejection or notice 
 of allowability, or 

        a notice of allowance under 37 CFR 1.311, 

whichever occurs first, provided: (1) the statement is accompanied by 
either  a certification as specified in 
37 CFR 1.97(e) or (2) the fee set forth in 37 CFR 1.17(p). If a final 
action  or notice of allowance is mailed in an application and later 
withdrawn, the  application will be considered as not having had a final 
action or notice of  allowance mailed for purposes of considering an 
information disclosure statement. 
        An Ex parte Quayle action is not a final action under 
37 CFR 1.113 as referred to in 37 CFR 1.97.  Therefore, an information 
disclosure  statement filed after an 
Ex parte Quayle action, but before mailing of a notice of allowance, must 
comply  with the provisions of 37 CFR 1.97(c) rather than those of 37 CFR 
1.97 (d).  However, where an Ex parte Quayle action is issued after a 
final rejection  which has not been withdrawn, any information disclosure 
statement filed after  the Ex parte Quayle action must comply with the 
provisions of 37 CFR 1.97(d). 

        (i)   If information submitted during the period set forth in 37 
CFR  1.97(c) with a certification is used in a new ground of rejection on 
unamended  claims, the next Office action will not be made final since in 
this situation  it is clear that applicant has submitted the information 
to the Office promptly  after it has become known and the information is 
being submitted prior to a  final determination on patentability by the 
Office. The information submitted  with a certification can be used in a 
new ground of rejection and the next  Office action made final, however, 
if the new ground of rejection was necessitated  by amendment of the 
application by applicant. Where the information is submitted  during this 
period with a fee, the examiner may use the information submitted;  e.g., 
printed publication or evidence of public use, and make the next Office 
action final whether or not the claims have been amended, provided that no 
 other new ground of rejection which was not necessitated by amendment to 
the  claims is introduced by the examiner.  See MPEP # 706.07(a). If a new 
ground  of rejection is introduced that is neither necessitated by an 
amendment to  the claims nor based on the information submitted with the 
fee set forth in  37 CFR 1.17(p), the Office action shall not be made final. 

        (ii)    A certification under 37 CFR 1.97(e) must state either 
        (a) that each item of information contained in the information 
disclosure  statement was cited in a communication from a foreign patent 
office in a counterpart foreign application  not more than three months 
prior to the filing of the statement, or 
        (b)   that no item of information contained in the information 
disclosure  statement was cited in a communication from a foreign patent 
office in a counterpart  foreign application or, to the knowledge of the 
person signing the certification  after making reasonable inquiry, was 
known to any individual designated in  37 CFR 1.56(c), more than three 
months prior to the filing of the statement. 

        A certification can contain either of two statements.  One 
statement  is that each item of information in an information disclosure 
statement was cited in a communication, such as a search  report, from a 
patent office outside the U.S. in a counterpart foreign application not 
more than 3 months prior to the filing date of the statement. Under this 
certification, it does not matter whether any individual with a duty of 
disclosure  actually knew about any of the information cited before 
receiving the search  report. The date on the communication by the foreign 
patent office begins the  3-month period in the same manner as the mailing 
of an Office action starts  a 3-month shortened statutory period for 
response.  If the communication contains  two dates, the mailing date of 
the communication is the one which begins the  3-month period. The date 
which begins the 3-month period is not the date the  communication was 
received by a foreign associate or the date it was received  by a U.S. 
registered practitioner. Likewise,the statement will be considered  to 
have been filed on the date the statement was received in the Office, or 
on an earlier date of mailing or transmission if accompanied by a properly 
 executed certificate of mailing or facsimile transmission under 
37 CFR 1.8, or Express Mail certificate under 37 CFR 1.10. 

        The term counterpart foreign patent application means that a claim 
 for priority has been made in either the U.S. application or a foreign 
application  based on the other, or that the disclosures of the U.S. and 
foreign patent  applications are substantively identical (e.g., an 
application filed in the  European Patent Office claiming the same U.K. 
priority as claimed in the U.S.  application). 

        Communications from foreign patent offices in foreign applications 
 sometimes include a list of the family of patents corresponding to a 
particular  patent being cited in the communication. The family of patents 
may include  a United States patent or other patent in the English 
language. Some applicants  submit information disclosure statements to the 
PTO which list and include  copies of both the particular patent cited in 
the foreign patent office communication  and the related United States or 
other English language patent from the family  list. Since this is to be 
encouraged, the United States or other 
English language patent will be construed as being cited by the foreign 
patent  office for purposes of a certification under 37 CFR 1.97(e)(1). 
The examiner  should consider the United States or other English language 
patent if 37 CFR  1.97 and 1.98 are complied with. 

        If an information disclosure statement includes a copy of a dated 
communication  from a foreign patent office which clearly shows that the 
statement is being submitted within 3 months  of the date on the 
communication, the copy will be accepted as the required  communication. 
It will be assumed, in the absence of evidence to the contrary,  that the 
communication was for a counterpart foreign application. 

        In the alternative, a certification can be made if no item of 
information  contained in the information disclosure statement was cited 
in a communication  from a foreign patent office in a counterpart foreign 
application and, to the  knowledge of the person signing the certification 
after making reasonable inquiry,  neither was it known to any individual 
having a duty to disclose more than  3-months prior to the filing of the 
statement. 

        The phrase "after making reasonable inquiry" makes it clear that 
the  individual making the certification has a duty to make reasonable 
inquiry regarding  the facts that are being certified. The certification 
can be made by a registered  practitioner who represents a foreign client 
and who relies on statements made  by the foreign client as to the date 
the information first became known. A  registered practitioner who 
receives information from a client without being  informed whether the 
information was known for more than 3 months, however,  cannot make the 
certification without making reasonable inquiry. For example,  if an 
inventor gave a publication to the attorney prosecuting an application 
with the intent that it be cited to the Office, the attorney should 
inquire  as to when that inventor became aware of the publication and 
should not submit  a certification under 37 CFR 1.97(e)(2) to the 
Office until a satisfactory response is received. The certification can be 
 based on present, good faith knowledge about when information became 
known without a search of files being made. 
        Certification need not be in the form of an oath or a declaration 
under  37 CFR 1.68.  Certification by a registered practitioner or any 
other individual  that the statement was filed within the 3-month period 
of either first citation  by a foreign patent office or first discovery of 
the information will be accepted  as dispositive of compliance with this 
provision in the absence of evidence  to the contrary.  For example, a 
certification could read as follows: 
        "I hereby certify that each item of information contained in this 
Information  Disclosure Statement was cited in a communication from a 
foreign patent office  in a counterpart foreign application not more than 
3 months prior to the filing  of this statement.", or 

        "I hereby certify that no item of information in the Information 
Disclosure  Statement filed herewith was cited in a communication from a 
foreign patent  office in a counterpart foreign application or, to my 
knowledge after making  reasonable inquiry, was known to any individual 
designated in 37 CFR 1.56(c)  more than 3 months prior to the filing of 
this Information Disclosure Statement." 
        An information disclosure statement may include two lists and two 
certifications,  similar to the above examples, in situations where some 
of the information  listed was cited in a communication from a foreign 
patent office not more than  3 months prior to filing the statement and 
some was not, but was not known  more than 3 months prior to filing the 
statement. 

        A copy of the foreign search report need not be submitted with the 
 certification, but an individual may wish to submit an English-language 
version  of the search report to satisfy the requirement for a concise 
explanation where  non-English language information is cited. The time at 
which information was  known to any individual designated in 37 CFR 
1.56(c) is the time when the information  was discovered in association 
with the application even if awareness of the  materiality came later. The 
Office wishes to encourage prompt evaluation of  the relevance of 
information and to have a date certain for determining if  a certification 
can properly be made. 
A statement on information and belief would not be sufficient. Examiners 
should  not remind or otherwise make any comment about an individual's 
duty of candor  and good faith, but questions about the adequacy of any 
certification received  in writing by the Office should be directed to the 
Office of the Assistant  Commissioner for Patents. 

B(3) Statement Filed After B(2), but Prior to Payment of 
Issue Fee (37 CFR 1.97(d)). 

        An information disclosure statement will be considered by the 
examiner  if filed on or after the mailing date of either a final action 
under 37 CFR  1.113 or a notice of allowance under 37 CFR 1.311, whichever 
occurs first,  but before or simultaneous with payment of the issue fee, 
provided the statement  is accompanied by: 

        (i) a certification as specified in 37 CFR 1.97(e) (see the 
discussion  in B(2)(ii) above), 

        (ii) a petition requesting consideration of the information 
disclosure  statement, and 

        (iii) the petition fee set forth in 37 CFR 1.17(i)(1). 

        These requirements are appropriate in view of the late stage of 
prosecution  when the information is being submitted; i.e., after the 
examiner has reached  a final determination on the patentability of the 
claims presented for examination.  The petition should be directed to the 
Group Director of the examining group  handling the application. The 
petition need do nothing more than request consideration  of the 
information being submitted. Payment of the petition fee (37 CFR 
1.17(i)(1))  and submission of the appropriate certification 37 CFR 
1.97(e)) are the essential  elements for having information considered at 
this advanced stage of prosecution,  assuming the content requirements of 
37 CFR 1.98 are satisfied. 

        The requirements of 37 CFR 1.97 provide for consideration by the 
Office  of information which is submitted within a reasonable time; i.e., 
within 3  months after an individual designated in 37 CFR 1.56(c) becomes 
aware of the  information or within 3 months of the information being 
cited in a communication  from a foreign patent office in a counterpart 
foreign application. This undertaking  by the Office to consider 
information would be available throughout the pendency  of the application 
until the point where the patent issue fee was paid. If  an applicant 
chose not to comply, or could not comply, with the requirements  of 37 CFR 
1.97(d), a continuing application could be filed to have the information 
considered by the examiner. The parent application could be permitted to 
become abandoned by not paying the issue fee required in the Notice of 
Allowance,  for example, or by the filing of a file wrapper continuing 
application under 37 CFR 1.62. It would not be proper to make final a 
first Office action in  the continuing application if the information 
submitted is used in a new ground  of rejection. 

B(4)      Statement Filed After Payment of Issue Fee. 

        After the issue fee has been paid on an application, it is 
impractical  for the Office to attempt to consider newly submitted 
information. Information  disclosure statements filed after payment of the 
issue fee in an application  will not be considered but will merely be 
placed in the application file.   See C below.  The application may be 
withdrawn from issue at this point, however,  pursuant to 37 CFR 
1.313(b)(5) so that the information can be considered in  a continuing 
application. In this situation, a file wrapper continuing application 
under 37 CFR 1.62 could be filed even though the issue fee had already 
been  paid.  The Office will consider the filing of a petition under 37 
CFR 1.313(b)(5)  as sufficient grounds to waive the requirement that an 
application under 37  CFR 1.62 be filed before payment of the issue fee. 
Alternatively, for example,  a petition pursuant to 37 CFR 1.313(b)(3) 
could be filed if applicant states  that one or more claims are 
unpatentable. This statement that one or more claims  are unpatentable 
over the information must be unequivocal.  A statement that  a serious 
question as to patentability of a claim has been raised, for example, 
would not be acceptable to withdraw an application from issue under 37 CFR 
 1.313(b)(3). >Form Paragraph 13.09 may be used. 

W 13.09        Information Disclosure Statement, Issue Fee Paid 

        Applicant's Information Disclosure Statement of [1] was filed 
after  the issue fee was paid.  Information Disclosure Statements filed 
after payment  of the issue fee will not be considered, but will be placed 
in the file.  However,  the application may be withdrawn from issue in 
order to file a File Wrapper  Continuing application upon the grant of a 
petition filed under the provisions  of 37 CFR 1.313(b)(5). 
Alternatively, the other provisions of 37 CFR 1.313  may apply, e.g., a 
petition to withdraw the application from issue under the  provisions of 
37 CFR 1.313(b)(3) may be filed together with an unequivocal  statement by 
the applicant that one or more claims are unpatentable over the 
information contained in the Statement.  The Information Disclosure 
Statement  would then be considered upon withdrawal of the application 
from issue under  37 CFR 1.313(b)(3). 

Examiner Note: 

        1.  For Information Disclosure (Prior Art) Statements submitted 
after  the issue fee has been paid, use this paragraph on form PTOL-90. 

        2.  In bracket 1, insert the filing date of the IDS.< 

        If an application has been withdrawn from issue under one of the 
provisions  of 37 CFR 1.313(b)(1)-(4), it will be treated as though no 
notice of allowance  had been mailed and the issue fee had not yet been 
paid with 
regard to the time for filing information disclosure 
statements. Petitions under 37 CFR 1.313(b) should be 
directed to the Office of Petitions in the Office of the 
Assistant Commissioner for Patents. 

B(5)    Extensions of Time (37 CFR 1.97(f)) 

        No extensions of time for filing an information disclosure 
statement  are permitted under 37 CFR 1.136(a) or (b). If a bona fide 
attempt is made  to comply with the content requirements of 37 CFR 1.98, 
but part of the required  content is inadvertently omitted, additional 
time may be given to enable full  compliance. 

C.  EXAMINER HANDLING OF INFORMATION DISCLOSURE STATEMENTS 

        Information disclosure statements will be reviewed for compliance 
with  the requirements of 37 CFR 1.97 and 1.98 as discussed in A and B 
above. Applicant  will be notified of compliance and noncompliance with 
the rules as discussed  below. 

C(1)    Noncomplying  Statements 

        Pursuant to 37 CFR 1.97(i), submitted information, filed before 
the  grant of a patent, which does not comply with 37 CFR 1.97 and 1.98 
will be  placed in the file, but will not be considered by the Office. 
Information submitted  after the grant of a patent must comply with 
37 CFR 1.501. 

        (i)   If an information disclosure statement does not comply with 
the  requirements based on the time of filing the statement as discussed 
in B above,  including the requirements for fees and/or certification, the 
statement will  be placed in the application file, but none of the 
information will be considered  by the examiner. The examiner may use Form 
Paragraph 6.49 which is reproduced  below to inform applicant that the 
information has not been considered. Applicant  may then file a new 
information disclosure statement or correct the deficiency  in the 
previously filed statement, but the date that 
the new statement or correction is filed will be the date of the statement 
 for purposes of determining compliance with the requirements based on the 
time  of filing the statement (37 CFR 1.97). 

        The examiner should write ``not considered" on an information 
disclosure  statement where none of the information listed complies with 
the requirements;  e.g., no copies of listed items submitted.  If none of 
the information listed  on a PTO-1449 form is considered, a diagonal line 
should also be drawn in pencil  across the form and the form placed on the 
right side of the application file  to instruct the printer not to list 
the information on the face of the patent  if the application goes to 
issue.  The paper containing the disclosure statement  or list will be 
placed in the record in the application file. The examiner  will inform 
applicant that the information has not been considered and the  reasons 
why by using form paragraph 6.49.  If the improper citation appears  as 
part of another paper; e.g., an amendment, which may be properly entered 
and considered, the portion of the paper which is proper for consideration 
 will be considered. 

W 6.49      Information Disclosure Statement Not Considered 

        The information disclosure statement filed [1] fails to comply 
with  the provisions of MPEP # 609 because [2]. It has been placed in the 
application  file, but the information referred to therein has not been 
considered as to  the merits. >Applicant is advised that the date of any 
re-submission of any  item of information contained in this information 
disclosure statement or the  submission of any missing element(s) will be 
the date of submission for purposes  of determining compliance with the 
requirements based on the time of filing  the statement, including all 
certification requirements.  See MPEP # 609 WC(1).< 
Examiner Note: 

        See MPEP # 609 for situations where >the< use of this >form< 
paragraph  would be appropriate. 

        (ii)    If an information disclosure statement complies with the 
requirements  based on the time of filing the statement as discussed in B 
above, including  the requirements for fees/or certification, but part of 
the content requirements  as discussed in A above has been inadvertently 
omitted, the examiner may set  a one-month time period to correct the 
omission. Form paragraph 6.51 may be  used for this purpose. 

W 6.51      Time Limit for Completing Information Disclosure Statement 
        The information disclosure statement filed on [1] does not comply 
with  the requirements of 37 CFR 1.98 because [2]. Since the submission 
appears to  be bona fide, but through an apparent oversight or 
inadvertence failed to comply  with the necessary requirements, applicant 
is required to complete the statement  within a time limit of one month 
from the date of this letter. NO EXTENSION  OF THIS TIME LIMIT MAY BE 
GRANTED UNDER EITHER 37 CFR 1.136(a) OR (b). Failure  to comply with this 
notice will result in the information disclosure statement  being placed 
in the application file with the non-complying information not  being 
considered. 

Examiner Note: 

        This practice does not apply where there has been a deliberate 
omission  of some necessary part of an information disclosure statement or 
where the  requirements based on the time of filing the statement as set 
forth in 37 CFR  1.97 have not been complied with. 

        If a statement fails to comply with requirements as discussed in 
this  section for an item of information, that item of information in the 
statement  will not be considered and a line should be drawn through the 
citation to show  that it has not been considered.  However, other items 
of information that  do comply with all the requirements will be 
considered by the examiner. 
        If information is listed in the specification rather than in a 
separate  paper, or if the other content requirements as discussed in A 
above are not  complied with, the examiner will notify applicant in the 
next Office action  that the information has not been considered. It 
should be noted, however,  that no copy of a U.S. patent application is 
required to be submitted.  See  A(2)(iii) above. Where a U.S. patent 
application is properly cited on a separate  list, the examiner should 
obtain access to that file within the Office. 
C (2)     Complying Statements 

        The information contained in information disclosure statements 
which  comply with both the content requirements as discussed in A above 
and the requirements  based on the time of filing the statement as 
discussed in B above will be considered  by the examiner. 

        Applicants, patent owners, reexamination requesters, protestors, 
and  others are encouraged to use form PTO-1449), "Information Disclosure 
Citation,"  when preparing an information disclosure statement.  A copy of 
this form is  reproduced in this section to indicate how the form should 
be completed.  This  form will enable persons to comply with the 
requirement to list each item of  information being submitted and to 
provide the Office with a uniform listing  of citations and with a ready 
way to indicate that information has been considered.  Examiners must 
consider all citations submitted in conformance with the rules 

and this section and their initials when placed adjacent to the considered 
 citations on the list or in the boxes provided on a form PTO-1449 
provides a clear record of which citations  have been considered by the 
Office. The examiner must also fill in his or her  name and the date the 
information was considered in blocks at the bottom of  the PTO-1449 form. 
If the citations are submitted on a list other than on a  form PTO-1449, 
the examiner may write "all considered" and his or her initials  to 
indicate that all citations have been considered.  If any of the citations 
 are considered, a copy of the submitted list or form PTO-1449, as 
reviewed  by the examiner, will be returned to the applicant with the next 
communication.  Those citations not considered by the examiner will have a 
line drawn through  the citation and any citations considered will have 
the examiner's initials adjacent thereto. The original copy of the list or 
form PTO-1449 will be entered  into the application file. The copy 
returned to applicant will serve both as  acknowledgement of receipt of 
the information disclosure statement and as an  indication as to which 
references were considered by the examiner. Forms PTO-326  and PTOL-37 
include a box to indicate the attachment of form PTO-1449. 
        Information which complies with requirements as discussed in this 
section  but which is in a non-English language will be considered in view 
of the concise  explanation submitted (A(3) above) and insofar as it is 
understood on its face;  e.g., drawings, chemical formulas, in the same 
manner that non-English language  information in Office search files is 
considered by examiners in conducting  searches. The examiner need not 
have the information translated unless it appears  to be necessary to do 
so. The examiner will indicate that the non-English language  information 
has been considered in the same manner as consideration is indicated  for 
information submitted in English. The examiner should not require that  a 
translation be filed by applicant. The examiner should not make any 
comment  such as that the non-English language information has only been 
considered  to the extent understood, since this fact is inherent. 

        Since information is required to be submitted in a separate paper 
listing  the citations rather than in the specification, there is no need 
to mark "All  checked''  or  "Checked'' in the margin of a specification 
containing citations. 

        If a statement fails to comply with requirements as discussed in 
this  section for an item of information, a line should be drawn through 
the citation  to show that it has not been considered. The other items of 
information listed  that do comply with the rules and this section will be 
considered by the examiner  and will be appropriately initialed. 

C (3)       Documents Submitted As Part of Applicant's Response to Office 
Action 
        Occasionally, documents are submitted and relied on by an 
applicant  when responding to an Office action. These documents may be 
relied on by an  applicant, for example, to show that an element recited 
in the claim is operative  or that a term used in the claim has a 
recognized meaning in the art.  Documents  may be in any form but are 
typically in the form of an affidavit, declaration,  patent, or printed 
publication. 

        To the extent that a document is submitted as evidence directed to 
 an issue of patentability raised in an Office action, and the evidence is 
timely  presented, applicant need not satisfy the requirements of 37 CFR 
1.97 and 1.98  in order to have the examiner consider the information 
contained in the document  relied on by applicant. In other words, 
compliance with the information disclosure  rules is not a threshold 
requirement to have information considered when submitted  by applicant to 
support an argument being made in a response to an Office action. 
        At the same time, the document supplied and relied on by applicant 
 as evidence need not be processed as an item of information that was 
cited  in an information disclosure statement. The record should reflect 
whether the  evidence was considered, but listing on a form (e.g., PTO-892 
or PTO-1449)  and appropriate marking of the form by the examiner is not 
required. 
        For example, if applicant submits and relies on three patents as 
evidence  in response to the first Office action and also lists those 
patents on a PTO-1449  along with two journal articles, but does not file 
a certification or $200 fee, it would be appropriate for the examiner to 
indicate that the teachings  relied on by applicant in the three patents 
have been considered,  but  to  line through the citation of all five 
documents on the PTO-1449 and to inform applicant  that the information 
disclosure statement did not comply with 37 CFR 1.97(c). 
D. INFORMATION PRINTED ON PATENT 

        A citation listed on form PTO-1449 and considered by the examiner 
in  accordance with this section will be printed on the patent. A citation 
listed  in a separate paper, equivalent to but not on form PTO-1449, and 
considered by the examiner  in accordance with this section will be 
printed on the patent if the list is  on a separate sheet which is clearly 
identified as an information disclosure  statement and the list lends 
itself to easy capture of the necessary information  by the Office 
printing contractor; i.e., each item of information is listed  on a single 
line, the lines are at least double-spaced from each other, the 
information is uniform in format for each listed item, and the list 
includes  a column for the examiner's initials to indicate that the 
information was considered.  If a U.S. patent application serial number is 
listed on a PTO-1449 form or its equivalent  and the examiner considers 
the information and initials the form, the serial  number will be printed 
on the patent. 

        Applicants may wish to list U.S. patent application serial numbers 
 on other than a form PTO-1449 format to avoid the serial numbers of 
pending  applications being published on the patent. If a citation is not 
printed on  the patent but has been considered by the examiner in 
accordance with this  section, the patented file will reflect that fact as 
noted in C(2) above. 
A60900008.bmp 
A60900008.end 

Contents 

701         Statutory Authority for Examination 

702         Requisites of the Application 

702.01      Obviously Informal Cases 

703         ``General Information Concerning Patents" 

704         Search 

705         Patentability Reports 

705.01      Instructions re Patentability Reports 

705.01(a)   Nature of P.R., Its Use and Disposal 

705.01(b)   Sequence of Examination 

705.01(c)   Counting and Recording P.R.'s 

705.01(d)   Duplicate Prints of Drawings 

705.01(e)   Limitation as to Use 

705.01(f)   Interviews With Applicants 

706         Rejection of Claims 

706.01      Contrasted With Objections 

706.02      Rejections on Prior Art 

706.02(a)   Rejections Under 35 U.S.C. 102(a), (b), or (e); Printed 
            Publication or Patent 

706.02(b)   Overcoming a 35 U.S.C. 102 Rejection Based on a 
            Printed Publication or Patent 

706.02(c)   Rejections Under 35 U.S.C. 102(a) or (b); Knowledge 
            by Others or Public Use or Sale 

706.02(d)   Rejections Under 35 U.S.C. 102(c) 

706.02(e)   Rejections Under 35 U.S.C. 102(d) 

706.02(f)   Provisional Rejections Under 35 U.S.C. 102(e); 
            Reference is a Copending U.S. Application 

706.02(g)   Rejections Under 35 U.S.C. 102(f) 

706.02(h)   Rejections Under 35 U.S.C. 102(g) 

706.02(i)   Form Paragraphs for Use in Rejections Under 
            35 U.S.C. 102 

706.02(j)   Contents of a 35 U.S.C. 103 Rejection 

706.02(k)   Provisional Rejection (Obviousness) Under 
            35 U.S.C. 102(e)/103 

706.02(l)   Rejections Under 35 U.S.C. 102(f)/103 and 35 U.S.C. 
            102(g)/103; ** 35 U.S.C. 103>(c)< 

706.02(m)   Form Paragraphs for Use in Rejections 
            Under 35 U.S.C. 103 

>706.02(n)  Biotechnology Process Applications; 
            35 U.S.C. 103(b)< 

706.03      Rejections Not Based on Prior Art 

706.03(a)   Rejections under 35 U.S.C. 101 

706.03(a)(1)    Guidelines For Examination of Applications for 
                Compliance With the Utility Requirement of 
                35 U.S.C. 101 

706.03(b)   Barred by Atomic Energy Act 

706.03(c)   Rejections under 35 U.S.C. 112, First Paragraph 

706.03(d)   Rejections Under 35 U.S.C. 112, Second Paragraph 

706.03(k)   Duplicate Claims 

706.03(m)   Nonelected Inventions 

706.03(o)   New Matter 

706.03(s)   Foreign Filing Without License 

706.03(u)   Disclaimer 

706.03(v)   After Interference or Public Use Proceeding 

706.03(w)   Res Judicata 

706.03(x)   Reissue 

706.04      Rejection of Previously Allowed Claims 

706.05      Rejection After Allowance of Application 

706.06      Rejection of Claims Copied From Patent 

706.07      Final Rejection 

706.07(a)   Final Rejection, When Proper on Second Action 

706.07(b)   Final Rejection, When Proper on First Action 

706.07(c)   Final Rejection, Premature 

706.07(d)   Final Rejection, Withdrawal of, Premature 

706.07(e)   Withdrawal of Final Rejection, General 

706.07(f)   Time for Response to Final Rejection 

706.07(g)   Transitional After-Final Practice 

707         Examiner's Letter or Action 

707.01      Primary Examiner Indicates Action for New Assistant 

707.02(a)   Cases Up for Third Action and 5-Year Cases 

707.05      Citation of References 

707.05(a)   Copies of Cited References 

707.05(b)   Citation of Related Art by Applicants 

707.05(c)   Order of Listing 

707.05(d)   Reference Cited in Subsequent Actions 

707.05(e)   Data Used in Citing References 

707.05(f)   Effective Dates of Declassified Printed Matter 

707.05(g)   Incorrect Citation of References 

707.06      Citation of Decisions, Orders, Memorandums, and 
             Notices 
707.07      Completeness and Clarity of Examiner's Action 

707.07(a)   Complete Action on Formal Matters 

707.07(b)   Requiring New Oath 

707.07(c)   Draftsman's Requirement 

707.07(d)   Language To Be Used In Rejecting Claims 

707.07(e)   Note All Outstanding Requirements 

707.07(f)   Answer All Material Traversed 

707.07(g)   Piecemeal Examination 

707.07(h)   Notify of Inaccuracies in Amendment 

707.07(i)   Each Claim To Be Mentioned in Each Letter 

707.07(j)   State When Claims Are Allowable 

707.07(k)   Numbering Paragraphs 

707.07(l)   Comment on Examples 

707.08      Reviewing and Initialing by Assistant Examiner 

707.09      Signing by Primary or Other Authorized Examiner 

707.10      Entry 

707.11      Date 

707.12      Mailing 

707.13      Returned Office Action 

708         Order of Examination 

708.01      List of Special Cases 

708.02      Petition To Make Special 

708.03      Examiner Tenders Resignation 

709         Suspension of Action 

709.01      Overlapping Applications by Same Applicant or Owned 
            by Same Assignee 

710         Period for Response 

710.01      Statutory Period 

710.01(a)   Statutory Period, How Computed 

710.02      Shortened Statutory Period and Time Limit Action Computed 
710.02(b)   Shortened Statutory Period: Situations in Which Used 

710.02(c)   Time-Limit Actions: Situations in Which Used 

710.02(d)   Difference Between Shortened Statutory and Time- 
            Limit Periods 

710.02(e)   Extension of Time 

710.04      Two Periods Running 

710.04(a)   Copying Patent Claims 

710.05      Period Ending on Saturday, Sunday, or a Federal Holiday 
710.06      Situations When Response Period is Reset or Restarted 
711         Abandonment 

711.01      Express or Formal Abandonment 

711.02      Failure To Take Required Action During Statutory Period 
711.02(a)   Insufficiency of Response 

711.02(b)   Special Situations Involving Abandonment 

711.02(c)   Termination of Proceedings 

711.03      Reconsideration of Holding of Abandonment; Revival 

711.03(a)   Holding Based on Insufficiency of Response 

711.03(b)   Holding Based on Failure To Respond Within Period 

711.03(c)   Petitions Relating to Abandonment 

711.03(d)   Examiner's Statement on Petition To Set Aside 
            Examiner's Holding 

711.03(e)   Petitions Relating to Revival of Abandoned Provisional 
            Applications 

711.04      Disposition of Abandoned Applications 

711.04(a)   Pulling and Forwarding Abandoned Applications 

711.04(b)   Ordering of Patented and Abandoned Files 

711.04(c)   Notifying Applicants of Abandonment 

711.05      Letter of Abandonment Received After Application is Allowed 
711.06      Abstracts, Abbreviatures, and Defensive Publications 

711.06(a)   Citation and Use of Abstracts, Abbreviatures, and 
            Defensive Publications as References 

712         Abandonment for Failure To Pay Issue Fee 

713         Interviews 

713.01      General Policy, How Conducted 

713.02      Interviews Prior to First Official Action 

713.03      Interview for "Sounding Out" Examiner Not Permitted 

713.04      Substance of Interview Must Be Made of Record 

713.05      Interviews Prohibited or Granted, Special Situations 

713.06      No Inter Partes Questions Discussed  Ex Parte 

713.07      Exposure of Other Cases 

713.08      Demonstration, Exhibits, Models 

713.09      Finally Rejected Application 

713.10      Interview Preceding Filing Amendment Under 
            37 CFR 1.312 

714         Amendments, Applicant's Action 

714.01      Signatures to Amendments 

714.01(a)   Unsigned or Improperly Signed Amendment 

714.01(c)   Signed by Attorney Not of Record 

714.01(d)   Amendment Signed by Applicant But Not by Attorney 
            of Record 

714.02      Must Be Fully Responsive 

714.03      Amendments Not Fully Responsive Action To Be Taken 

714.04      Claims Presented in Amendment With No Attempt To Point 
            Out Patentable Novelty 

714.05      Examiner Should Immediately Inspect 

714.06      Amendments Sent to Wrong Group 

714.07      Amendments Not in Permanent Ink 

714.08      Telegraphic Amendment 

714.09      Amendments Before First Office Action 

714.10      Claims Added in Excess of Filing Fee 

714.11      Amendment Filed During Interference Proceedings 

714.12      Amendments After Final Rejection or Action 

714.13      Amendments After Final Rejection or Action, Procedure 
            Followed 

714.14      Amendments After Allowance of All Claims 

714.15      Amendment Received in Examining Group After Mailing 
            of Notice of Allowance 

714.16      Amendment After Notice of Allowance, 37 CFR 1.312 

714.16(a)   Amendments Under 37 CFR 1.312, Copied Patent Claims 

714.16(b)   Amendments Under 37 CFR 1.312, Filed With a 
            Motion Under 37 CFR 1.633 

714.16(c)   Amendments Under 37 CFR 1.312, Additional Claims 

714.16(d)   Amendments Under 37 CFR 1.312, Handling 

714.16(e)   Amendments Under 37 CFR 1.312, Entry in Part 

714.17      Amendment Filed After the Period for Response Has Expired 
714.18      Entry of Amendments 

714.19      List of Amendments, Entry Denied 

714.20      List of Amendments Entered in Part 

714.21      Amendments Inadvertently Entered, No Legal Effect 

714.22      Entry of Amendments, Directions for 

714.23      Entry of Amendments, Directions for, Defective 

714.24      Amendment of Amendments 

714.25      Discourtesy of Applicant or Attorney 

715         Swearing Back of Reference-Affidavit or Declaration 
            Under 37 CFR 1.131 

715.01      37 CFR 1.131 Affidavits versus 37 CFR 1.132 Affidavits 
715.01(a)   Reference is a Joint Patent to Applicant and Another 

715.01(b)   Reference and Application Have Common Assignee 

715.01(c)   Reference is Publication of Applicant's Own Invention 
715.02      How Much of the Claimed Invention Must Be Shown, 
            Including the General Rule as to Generic Claims 

715.03      Genus-Species, Practice Relative to Cases Where 
            Predictability Is In Question 

715.04      Who May Make Affidavit or Declaration; Formal 
            Requirements of Affidavits and Declarations 

715.05      Patent Claiming Same Invention 

715.07      Facts and Documentary Evidence 

715.07(a)   Diligence 

715.07(b)   Interference Testimony Sometimes Used 

715.07(c)   Acts Relied Upon Must Have Been Carried Out in This 
            Country or a NAFTA or WTO Member Country 

715.07(d)   Disposition of Exhibits 

715.08      Passed Upon by Primary Examiner 

715.09      Seasonable Presentation 

715.10      Review of Affidavit or Declaration for Evidence of Prior 
            Public Use or Sale or Failure to Disclose Best Mode 

716         Affidavits or Declarations Traversing Rejections, 
            37 CFR 1.132 

716.01      Generally Applicable Criteria 

716.01(a)   Objective Evidence of Nonobviousness 

716.01(b)   Nexus Requirement and Evidence of Nonobviousness 

716.01(c)   Probative Value of Objective Evidence 

716.01(d)   Weighing Objective Evidence 

716.02      Allegations of Unexpected Results 

716.02(a)   Evidence Must Show Unexpected Results 

716.02(b)   Burden on Applicant 

716.02(c)   Weighing Evidence of Expected and Unexpected Results 

716.02(d)   Unexpected Results Commensurate in Scope With 
            Claimed Invention 

716.02(e)   Comparison with Closest Prior Art 

716.02(f)   Advantages Disclosed or Inherent 

716.02(g)   Declaration or Affidavit Form 

716.03      Commercial Success 

716.03(a)   Commercial Success Commensurate in Scope With Claimed 
            Invention 

716.03(b)   Commercial Success Derived From Claimed Invention 

716.04      Long-Felt Need and Failure of Others 

716.05      Skepticism of Experts 

716.06      Copying 

716.07      Inoperability of References 

716.08      Utility and Operability of Applicant's Disclosure 

716.09      Sufficiency of Disclosure 

716.10      Attribution 

717         File Wrapper 

717.01      Papers in File Wrapper 

717.01(a)   Arrangement of Papers in File Wrapper 

717.01(b)   Prints 

717.02      Data Entered on File Wrapper 

717.02(b)   Name or Residence of Inventor or Title Changed 

717.03      Classification During Examination 

717.04      Index of Claims 

717.05      Field of Search 

717.06      Foreign Filing Dates 

717.07      Related Applications 

720         Public Use Proceedings 

720.01      Preliminary Handling 

720.02      Examiner Determination of Prima Facie Showing 

720.03      Preliminary Hearing 

720.04      Public Use Proceeding Testimony 

720.05      Final Decision 

724         Trade Secret, Proprietary, and Protective Order Materials 
724.01      Completeness of the Patent File Wrapper 

724.02      Method of Submitting Trade Secret, Proprietary, 
            and/or Protective Order Materials 

724.03      Types of Trade Secret, Proprietary, and/or Protective 
            Order Materials Submitted Under MPEP # 724.02 

724.04      Office Treatment and Handling of Materials 
            Submitted Under MPEP # 724.02 

724.04(a)   Materials Submitted in an Application Covered by 
            35 U.S.C. 122 

724.04(b)   Materials Submitted in Reissue Applications Open to 
            the Public Under 37 CFR 1.11(b) 

724.04(c)   Materials Submitted in Reexamination Files Open to 
            the Public Under 37 CFR 1.11(d) 

724.05      Petition To Expunge Materials Submitted Under 
            MPEP # 724.02 


701   Statutory Authority for Examination  [R-1] 


>35 U.S.C. 131.       Examination of application. 

        The Commissioner shall cause an examination to be made of the 
application  and the alleged new invention; and if on such examination it 
appears that the  applicant is entitled to a patent under the law, the 
Commissioner shall issue  a patent therefor. 

        The main conditions precedent to the grant of a patent to an 
applicant  are set forth in 35 U.S.C. 101, 102, 103. 

35 U.S.C. 101.          Inventions patentable. 

        Whoever  invents or discovers any new and useful process, machine, 
 manufacture, or composition of matter, or any new and useful improvement 
thereof,  may obtain a patent therefor, subject to the conditions and 
requirements of  this title. 

        Form Paragraph 7.04 copies 35 U.S.C. 101. 

35 U.S.C. 100.          Definitions. 

        When used in this title unless the context otherwise indicates  - 
        (a)   The term "invention" means invention or discovery. 

        (b)   The term " process"  means process, art or method, and 
includes  a new use of a known process, machine, manufacture, composition 
of matter,  or  material. 

        (c)   The terms "United States" and "this country" mean the United 
 States of America, its territories and possessions. 

        (d)   The word "patentee" includes not only the patentee to whom 
the  patent was issued but also the successors in title to the patentee.< 

702   Requisites of the Application [R-1] 


        >When a new application is assigned in the examining group, the 
examiner  should review the contents of the application to determine if 
the application  meets the requirements of 35 U.S.C. 111(a). Any matters 
affecting the filing  date or abandonment of the application, such as lack 
of an oath or declaration,  filing fee, or claims should be checked before 
the application is placed in  the storage racks to await the first action. 

        The examiner should be careful to see that the application meets 
all  the requisites set forth in MPEP Chapter 600 both as to formal 
matters and  as to the completeness and clarity of the disclosure. If all 
of the requisites  are not met, applicant may be called upon for necessary 
amendments. Such amendments,  however, must not include new matter.< 


702.01      Obviously Informal Cases [R-2] 


        When an application is reached for its first action and it is then 
 discovered to be impractical to give a complete action on the merits 
because  of an informal or insufficient disclosure, the following 
procedure may be followed: 
(1)   A reasonable search should be made of the invention so far as it can 
 be understood from the disclosure, objects of invention and claims and 
any  apparently pertinent art cited.  In the rare case in which the 
disclosure is  so incomprehensible as to preclude a reasonable search the 
action should clearly  inform applicant that no search was made; 

(2)   Informalities noted by the Application Division and deficiencies in 
the  drawing should be pointed out by means of attachments to the 
examiner's letter 
(see MPEP # 707.07(a)); 

(3)   A requirement should be made that the specification be revised to 
conform  to idiomatic English and United States practice; 

(4)   The claims should be rejected as failing to define the invention in 
the  manner required by 35 U.S.C. 112 if they are informal. A blanket 
rejection  is usually sufficient. 

        The examiner should * attempt to point out the * points of 
informality  in the specification and claims. The burden is on the 
applicant to revise the  application to render it in proper form for a 
complete examination. 
        If a number of obviously informal claims are filed in an 
application,  such claims should be treated as being a single claim for 
fee and examination  purposes. 

        It is obviously to applicant's advantage to file the application 
with  an adequate disclosure and with claims which conform to the U.S. 
Patent and  Trademark Office usages and requirements. This should be done 
whenever possible.  If, however, due to the pressure of a Convention 
deadline or other reasons,  this is not possible, applicants are urged to 
submit promptly, preferably within 3 months after filing, a preliminary 
amendment which corrects the obvious informalities.  The informalities 
should be corrected to the extent that the disclosure is  readily 
understood and the claims to be initially examined are in proper form, 
particularly as to dependency, and otherwise clearly define the invention. 
 "New matter" must be excluded from these amendments since preliminary 
amendments  do not enjoy original disclosure status, MPEP # 608.04(b). 

        Whenever, upon examination, it is found that the terms or phrases 
or  modes of characterization used to describe the invention are not 
sufficiently  consonant with the art to which the invention pertains, or 
with which it is  most nearly connected, to enable the examiner to make 
the examination specified  in 37 CFR 1.104, the examiner should make a 
reasonable search of the invention  so far as it can be understood from 
the disclosure. The action of the examiner  may be limited to a citation 
of what appears to be the most pertinent prior  art found and a request 
that applicant correlate the terminology of the specification  with 
art-accepted terminology before further action is made. 

        Use Form Paragraph 7.01 where the terminology is such that a 
proper  search cannot be made. 

W 7.01      Use of Terminology, Cannot Be Examined 

        A preliminary examination of this application reveals that it 
includes  terminology which is so different from that  which is generally 
accepted in  the art to which this invention pertains that it is 
impractical to make a proper  search of the prior art. 

        For example: [1] 

        Applicant is required to provide a clarification of these matters 
or  correlation with art-accepted terminology so that a proper comparison 
with  the prior art can be made. Applicant should be careful not to 
introduce any  new matter into the disclosure (i.e., matter which is not 
supported by the  disclosure as originally filed). 

        A shortened statutory period for  response to this  action is set 
to  expire THIRTY DAYS from the date of this letter. 

Examiner Note: 

        1.  Use this or paragraph 7.02 when a proper search cannot be 
made. 
        2.  In bracket 1, fill in an appropriate indication of the 
terminology,  properties, units of data, etc., that are the problem as 
well as the pages  of specification involved. 

        3.  For the procedure to be followed when only the drawing is 
informal,  see MPEP ## 608.02(a) and 608.02(b). 

        Use Form Paragraph 7.02 where the application is so 
incomprehensible  that a reasonable search cannot be made. 

W 7.02      Disclosure is Incomprehensible 

        The disclosure is objected to under 37 CFR 1.71, as being so 
incomprehensible  as to preclude a reasonable search of the prior art by 
the examiner. For example,  the following items are not understood: [1]. 

        Applicant is required to submit an amendment which clarifies the 
disclosure  so that the examiner may make a proper comparison of the 
invention with the  prior art. 

        Applicant should be careful not to introduce any new matter into 
the  disclosure (i.e., matter which is not supported by the disclosure as 
originally  filed). 

        A shortened statutory period for  response to this  action is set 
to  expire THIRTY DAYS from the date of this letter. 

Examiner Note: 

        1 Use this paragraph when a search cannot be made. 

        2.  In bracket 1, indicate the page numbers and features which are 
 not understood. 

        3.  See form paragraphs 6.28 and 6.30 for improper idiomatic 
English. 
        Use Form Paragraph 7.03 where the invention cannot be understood 
because  of illegible handwritten pages. 

W 7.03      Pages Are Illegible 

        The examiner cannot understand the invention because certain 
portions  of the disclosure are illegible. The illegible portion(s) con- 
sist of [1]. 
        Applicant is required to submit an appropriate amendment 
rectifying  this deficiency.  In the alternative, a substitute 
specification, preferably  in typed, double spaced format, may be filed. 
The filing of a substitute specification  requires the submission of a 
hand-corrected copy of the portions of the original  specification which 
are being added or deleted with additions being underlined  and deletions 
being bracketed.  In addition, a statement that the substitute 
specification contains no new matter and that the substitute specification 
 includes the same changes as are indicated in the hand corrected original 
specification  is required. Such statement must be a verified statement if 
made by a person  not registered to practice before the Office.  See MPEP 
# 714.20. 

        A shortened statutory period for  response to this  action is set 
to  expire THIRTY DAYS from the date of this letter. 

Examiner Note: 

        1.  In bracket 1, identify the portions of the specification which 
 are illegible. 

        2.  This form paragraph is to be used only when the invention 
cannot  be understood because of the illegible material; see MPEP 
# 702.01. 

        3.  See Chapter 1700 for handwritten specifications filed by pro 
se  applicants. 

        4.  Use form paragraph 7.02 when the disclosure is incompre- hensible. 

        For the procedure to be followed when only the drawing is 
informal,  see MPEP # 608.02(a) and # 608.02(b). 


703   "General Information Concerning Patents" [R-1] 


        >The pamphlet "General Information Concerning Patents" for use by 
applicants  contemplating the filing or prosecution of their own 
applications, may be purchased  from the Superintendent of Documents, U.S. 
Government Printing Office, Washington,  D.C. 20402.< 


704   Search [R-1] 


        >After reading the specification and claims, the examiner searches 
 the prior art. 

        The  subject  of  searching  is  more  fully  treated  in MPEP 
Chapter  900. See MPEP # 904 through 
# 904.02. The invention should be thoroughly understood before a search is 
 undertaken. However, informal cases, or those which can only be 
imperfectly  understood when they come up for action in their regular turn 
are also given  a search, in order to avoid piecemeal prosecution. 

PREVIOUS EXAMINER'S SEARCH 

        When an examiner is assigned to act on an application which has 
received  one or more actions by some other examiner, full faith and 
credit should be  given to the search and action of the previous examiner 
unless there is a clear  error in the previous action or knowledge of 
other prior art. In general the  second examiner should not take an 
entirely new approach to the case or attempt  to reorient the point of 
view of the previous examiner, or make a new search  in the mere hope of 
finding something.  See MPEP # 717.05.< 


705   Patentability Reports [R-1] 


        >Where an application, properly assigned to one examining group, 
is  found to contain one or more claims, per se, classifiable in one or 
more other  groups, which claims are not divisible inter se or from the 
claims which govern  classification of the application in the first group, 
the application may be referred to the other group or groups concerned for 
 a report as to the patentability of certain designated claims. This 
report  is known as a Patentability Report (P.R.) and is signed by the 
primary examiner  in the reporting group. 

        The report, if legibly written, need not be typed. 

        Note that the Patentability Report practice is suspended, except 
in  extraordinary circumstances. See MPEP # 705.01(e).< 


705.01      Instructions re Patentability Reports [R-1] 


        >When an application comes up for any action and the primary 
examiners  involved (i.e., from both the requesting and the requested 
group) agree that  a Patentability Report is necessary, and if the Group 
Director of the requesting  group approves, the application is forwarded 
to the proper group with a memorandum  attached, for instance, "For 
Patentability Report from group -- as to claims  --."< 


705.01(a) Nature of P.R., Its Use and Disposal  [R-1] 


        >The primary examiner in the group from which the Patentability 
Report  is requested, if he or she approves the request, will direct the 
preparation  of the Patentability Report. This Patentability Report is 
written or typed  on a memorandum form and will include the citation of 
all pertinent references  and a complete action on all claims involved. 
The field of search covered should  be endorsed on the file wrapper by the 
examiner making the report. When an  examiner to whom a case has been 
forwarded for a Patentability Report is of  the opinion that final action 
is in order as to the referred claims, he or  she should so state. The 
Patentability Report when signed by the primary examiner  in the reporting 
group will be returned to the group to which the application  is regularly 
assigned and placed in the file wrapper. 

        The examiner preparing the Patentability Report will be entitled 
to  receive an explanation of the disclosure from the examiner to whom the 
case  is assigned to avoid duplication of work. 

        If the primary examiner in a reporting group is of the opinion 
that  a Patentability Report is not in order, he or she should so advise 
the primary  examiner in the forwarding group. 

DISAGREEMENT AS TO CLASSIFICATION 

        Conflict of opinion as to classification may be 
referred to a patent classifier for decision. 

        If the primary examiner in the group having jurisdiction of the 
case  agrees with the Patentability Report, he or she  should incorporate 
the substance  thereof in his or her action, which action will be complete 
as to all claims.  The Patentability Report in such a case is not given a 
paper number but is  allowed to remain in the file until the case is 
finally disposed of by allowance  or abandonment, at which time it should 
be removed. 

DISAGREEMENT ON PATENTABILITY REPORT 

        If the primary examiner does not agree with the Patentability 
Report  or any portion thereof, he or she may consult with the primary 
examiner responsible  for the report. If agreement as to the resulting 
action cannot be reached,  the primary examiner having jurisdiction of the 
case need not rely on the Patentability  Report but may make his or her 
own action on the referred claims, in which  case the Patentability Report 
should be removed from the file. 

APPEAL TAKEN 

        When an appeal is taken from the rejection of claims, all of which 
 are examinable in the group preparing a Patentability Report, and the 
application  is otherwise allowable, formal transfer of the case to said 
group should be  made for the purpose of appeal only. The receiving group 
will take jurisdiction  of the application and prepare the examiner's 
answer. At the time of allowance,  the application may be sent to issue by 
said group with its classification  determined by the controlling claims 
remaining in the case.< 


705.01(b) Sequence of Examination [R-1] 


        >In the event that the supervisory primary examiners concerned in 
a  P.R. case cannot agree as to the order of examination by their groups, 
the  supervisory primary examiner having jurisdiction of the case will 
direct that  a complete search be made of the art relevant to his or her 
claims prior to  referring the case to another group for report. The group 
to which the case  is referred will be advised of the results of this search. 

        If the supervisory primary examiners are of the opinion that a 
different  sequence of search is expedient, the order of search should be 
correspondingly  modified.< 


705.01(c) Counting and Recording P.R.'s   [R-1] 


        >The forwarding of the application for a Patentability Report is 
not  to be treated as a transfer by the forwarding group. When the P.R. is 
completed  and the application is ready for return to the forwarding 
group, it is not  counted either as a receipt or action by transfer. 
Credit, however, is given  for the time spent.  See MPEP # 1705. 

        The date status of the application in the reporting group will be 
determined  on the basis of the dates in the group of original 
jurisdiction. To ensure  orderly progress in the reported dates, a timely 
reminder should be furnished  to the group making the P.R.< 


705.01(d) Duplicate Prints of Drawings [R-1] 


        >In Patentability Report cases having drawings, the examiner to 
whom  the case is assigned will furnish to the group to which the case is 
referred,  prints of such sheets of the drawings as are applicable, for 
interference search  purposes. That this has been done may be indicated by 
a pencil notation on  the file wrapper. 

        When a case that has had Patentability Report prosecution is 
passed  for issue or becomes abandoned, NOTIFICATION of this fact will AT 
ONCE be given  by the group having jurisdiction of the case to each group 
that submitted a  Patentability Report. The examiner of each such 
reporting group will note the  date of allowance or abandonment on  the 
duplicate set of prints. At such time  as these prints become of no value 
to the reporting group, they may be destroyed.< 

705.01(e) Limitation as to Use [R-1] 


        >The above outlined Patentability Report practice is not 
obligatory  and should be resorted to only where it will save total 
examiner time or result  in improved quality of action due to specialized 
knowledge.  A saving of total  examiner time that is required to give a 
complete examination of an application  is of primary importance. 
Patentability Report practice is based on the proposition  that when 
plural, indivisible inventions are claimed, in some instances either  less 
time is required for examination, or the results are of better quality, 
when specialists on each character of claimed invention treat the claims 
directed  to their specialty. However, in many instances a single examiner 
can give a  complete examination of as good quality on all claims, and in 
less total examiner  time than would be consumed by the use of the 
Patentability Report practice. 
        Where claims are directed to the same character of invention but 
differ  in scope only, prosecution by Patentability Report is never 
proper. 
        Exemplary situation where Patentability Reports are ordinarily not 
 proper are as follows: 

(1)   Where the claims are related as a manufacturing process and a 
product  defined by the process of manufacture. The examiner having 
jurisdiction of  the process can usually give a complete, adequate 
examination in less total  examiner time than would be consumed by the use 
of a Patentability Report. 
(2)   Where the claims are related as product and a process which involves 
 merely the fact that a product having certain characteristics is made. 
The  examiner having jurisdiction of the product can usually make a 
complete and  adequate examination. 

(3)   Where the claims are related as a combination distinguished solely 
by  the characteristics of a subcombination and such subcombination, per 
se. The  examiner having jurisdiction of the subcombination can usually 
make a complete  and adequate examination. 

        Where it can be shown that a Patentability Report will save total 
examiner  time, one is permitted with the approval of the group director 
of the group  to which the application is assigned. The "Approved" stamp 
should be impressed  on the memorandum requesting the Patentability Report.< 


705.01(f) Interviews With Applicants [R-1] 


        >In situations where an interview is held on an application in 
which  a Patentability Report has been adopted, the reporting group may be 
called  on for assistance at the interview when it concerns claims treated 
by them.  See MPEP w 713 to w 713.10 regarding interviews in general.< 


706 Rejection of Claims [R-1] 


    >Although this part of the Manual explains the procedure in rejecting 
claims,  the examiner should never overlook the importance of his or her 
role in allowing  claims which properly define the invention. 

37 CFR 1.106.       Rejection of Claims 

        (a)   If the invention is not considered patentable, or not 
considered  patentable as claimed, the claims, or those considered 
unpatentable will be  rejected. 

        (b)   In rejecting claims for want of novelty or for obviousness, 
the  examiner must cite the best references at his command. When a 
reference is complex or shows or describes inventions other than that 
claimed  by the applicant, the particular part relied on must be 
designated as nearly  as practicable. The pertinence of each reference, if 
not apparent, must be  clearly explained and each rejected claim specified. 

        (c)   In rejecting claims the examiner may rely upon admissions by 
 the applicant, or the patent owner in a reexamination proceeding, as to 
any  matter affecting patentability and, insofar as rejections in 
applications are  concerned, may also rely upon facts within his or her 
knowledge pursuant to  w 1.107. 

        (d)   Subject matter which is developed by another person which 
qualifies  as prior art only under 35 U.S.C. 102(f) or (g) may be used as 
prior art under  35 U.S.C. 103 against a claimed invention unless the 
entire rights to the subject  matter and the claimed invention were 
commonly owned by the same person or  organization or subject to an 
obligation of assignment to the same person or  organization at the time 
the claimed invention was made. 

        (e)   The claims in any original application naming an inventor 
will  be rejected as being precluded by a waiver in a published statutory 
invention  registration naming that inventor if the same subject matter is 
claimed in  the application and the statutory invention registration.  The 
claims in any  reissue application naming an inventor will be rejected as 
being precluded  by a waiver in a published statutory invention 
registration naming that inventor  if the reissue application seeks to 
claim subject matter (1) which was not  covered by claims issued in the 
patent prior to the date of publication of  the statutory invention 
registration and (2) which was the same subject matter  waived in the 
statutory invention registration. 

UNIFORM APPLICATION OF THE 
PATENTABILITY STANDARD 

        The standards of patentability applied in the examination of 
claims  must be the same throughout the Office. In every art, whether it 
be considered  "complex," "newly developed," "crowded," or "competitive," 
all of the requirements  for patentability (e.g., novelty, usefulness and 
unobviousness, as provided  in 35 U.S.C. 101, 102, and 103) must be met 
before a claim is allowed. The  mere fact that a claim recites in detail 
all of the features of an invention 
(i.e., is a "picture" claim) is never, in itself, justification for the 
allowance  of such a claim. 

        An application should not be allowed , unless and until issues 
pertinent  to patentability have been raised and resolved in the course of 
examination  and prosecution, since otherwise the resultant patent would 
not justify the  statutory presumption of validity (35 U.S.C. 282), nor 
would it "strictly adhere"  to the requirements laid down by Congress in 
the 1952 Act as interpreted by  the Supreme Court.  The standard to be 
applied in all cases is the "preponderance  of the evidence" test. In 
other words, an examiner should reject a claim if,  in view of the prior 
art and evidence of record, it is more likely than not  that the claim is 
unpatentable. 

DEFECTS IN FORM OR OMISSION OF 
A LIMITATION; CLAIMS  OTHERWISE 
ALLOWABLE 

        When an application discloses patentable subject matter and it is 
apparent  from the claims and the applicant's arguments that the claims 
are intended  to be directed to such patentable subject matter, but the 
claims in their present  form cannot be allowed because of defects in form 
or omission of a limitation,  the examiner should not stop with a bare 
objection or rejection of the claims.  The examiner's action should be 
constructive in nature and when possible should  offer a definite 
suggestion for correction. 

PATENTABLE SUBJECT MATTER DISCLOSED BUT NOT CLAIMED 

        If the examiner is satisfied after the search has been completed 
that  patentable subject matter has been disclosed and the record 
indicates that  the applicant intends to claim such subject matter, he or 
she may note in the  Office action that certain aspects or features of the 
patentable invention  have not been claimed and that if properly claimed 
such claims may be given  favorable consideration. 

RECONSIDERATION OF CLAIMS AFTER 
RESPONSE BY APPLICANT 

 37 CFR 1.112.      Reconsideration. 

        After response by applicant or patent owner (# 1.111), the 
application  or patent under reexamination will be reconsidered and again 
examined. The  applicant or patent owner will be notified if claims are 
rejected, or objections  or requirements made, in the same manner as after 
the first examination. Applicant  or patent owner may respond to such 
Office action in the same manner provided  in # 1.111, with or without 
amendment.  Any amendments after the second Office  action must ordinarily 
be restricted to the rejection or to the objections  or requirements made. 
The application or patent under reexamination will be  again considered, 
and so on repeatedly, unless the examiner has indicated that  the action 
is final. 

     See 37 CFR 1.112 for reexamination and reconsideration of a patent 
under  reexamination after responses by the patent owner. 

REJECTIONS IN STATUTORY INVENTION REGISTRATIONS 

     See MPEP Chapter 1100 for rejection of claims in an application for a 
 Statutory Invention Registration.< 


706.01      Contrasted With Objections [R-1] 


        >The refusal to grant claims because the subject matter as claimed 
 is considered unpatentable is called a "rejection."  The term "rejected" 
must  be applied to such claims in the examiner's letter. If the form of 
the claim 
(as distinguished from its substance) is improper, an "objection" is made. 
 An example of a matter of form as to which objection is made is 
dependency  of a claim on a rejected claim, if the dependent claim is 
otherwise allowable.  See MPEP # 608.01(n). The practical difference 
between a rejection and an objection  is that a rejection, involving the 
merits of the claim, is subject to review  by the Board of Patent Appeals 
and Interferences, while an objection, if persisted,  may be reviewed only 
by way of petition to the Commissioner. 

        Similarly, the Board will not hear or decide issues pertaining to 
objections  and formal matters which are not properly before the Board. 
These formal matters  should not be combined in appeals to the Board.< 


706.02      Rejection on Prior Art [R-2] 


35 U.S.C. 102.      Conditions for patentability; novelty and loss of 
right  to patent. 

 A person shall be entitled to a patent unless -- 

        (a)   the invention was known or used by others in this country, 
or  patented or described in a printed publication in this or a foreign 
country,  before the invention thereof by the applicant for a patent, or 

        (b)   the invention was patented or described in a printed 
publication  in this or a foreign country or in public use or on sale in 
this country, more  than one year prior to the date of application for 
patent in the United States,  or 

         (c)    he has abandoned the invention, or 

         (d)    the invention was first patented or  caused to be 
patented,  or was the subject of an inventor's certificate, by the 
applicant or his legal  representatives or assigns in a foreign country 
prior to the date of the application  for patent in this country on an 
application for patent or inventor's certificate  filed more than twelve 
months before the filing of the application in the United  States, or 

  (e)     the invention was described in a patent granted on an 
application  for patent by another filed in the United States before the 
invention thereof  by the applicant for patent, or on an international 
application by another  who has fulfilled the requirements of paragraphs 
(1), (2), and (4) of section  371(c) of this title before the invention 
thereof by the applicant for patent,  or 

        (f)   he did not himself invent the subject matter sought to be 
patented,  or 

        (g)   before the applicant's invention thereof the invention was 
made  in this country by another who had not abandoned, suppressed, or 
concealed  it. In determining priority of invention there shall be 
considered not only  the respective dates of conception and reduction to 
practice of the invention,  but also the reasonable diligence of one who 
was first to conceive and last  to reduce to practice, from a time prior 
to conception by the other. 


35 U.S.C. 103.          Conditions for patentability; non-obvious subject 
 matter. 

        >(a)<A patent may not be obtained though the invention is not 
identically  disclosed or described as set forth in section 102 of this 
title, if the differences  between the subject matter sought to be 
patented and the prior art are such  that the subject matter as a whole 
would have been obvious at the time the  invention was made to a person 
having ordinary skill in the art to which said  subject matter pertains. 
Patentability shall not be negatived by the manner  in which the invention 
was made. 

        >(b)(1) Notwithstanding subsection (a), and  upon timely  election 
 by the applicant for patent to proceed under this subsection, a 
biotechnological  process using or resulting in a composition of matter 
that is novel under section  102 and nonobvious under subsection (a) of 
this section shall be considered  nonobvious if-- 

        (A) claims to the process and the composition of matter are 
contained  in either the same application for patent or in separate 
applications having  the same effective filing date; and 

        (B) the composition of matter, and the process at the time it was 
invented,  were owned by the same person or subject to an obligation of 
assignment to  the same person. 

        (2) A patent issued on a process under paragraph (1)-- 

        (A) shall also contain the claims to the composition of matter 
used  in or made by that process, or 

        (B) shall, if such composition of matter is claimed in another 
patent,  be set to expire on the same date as such other patent, 
notwithstanding section  154 

        (3) For purposes of paragraph (1), the term `biotechnological 
process'  means-- 

        (A) a process of genetically altering or otherwise inducing a 
single-  or multi-celled organism to-- 

                (i) express an exogenous nucleotide sequence, 

                (ii) inhibit, eliminate, augment, or alter expression of 
an  endogenous nucleotide sequence or 

                (iii) express a specific physiological characteristic not 
naturally 
 associated with said organism; 

        (B) cell fusion procedures yielding a cell line that expresses a 
specific  protein, such as a monoclonal antibody; and 

        (C) a method of using a product produced by a process defined by 
subparagraph 
(A) or (B), or a combination of subparagraphs (A) and (B).< 

        >(c)<Subject matter developed by another person, which qualifies 
as  prior art only under subsection (f) or (g) of section 102 of this 
title, shall  not preclude patentability under this section where the 
subject matter and  the claimed invention were, at the time the invention 
was made, owned by the  same person or subject to an obligation of 
assignment to the same person. 
        By far the most frequent ground of rejection is on the ground of 
unpatentability  in view of the prior art, that is, that the claimed 
subject matter is either  not novel under 35 U.S.C. 102, or else it is 
obvious under 35 U.S.C. 103. The language to be  used in rejecting claims 
should be unequivocal. See MPEP # 707.07(d). 
CHOICE OF PRIOR ART; BEST AVAILABLE 

        Prior art rejections should ordinarily be confined strictly to the 
 best available art. Exceptions may properly be made, e.g., (1) where the 
propriety  of a 35 U.S.C. 102 or 103 rejection depends on a particular 
interpretation  of a claim; (2) where a claim is met only in terms by a 
reference which does  not disclose the inventive concept involved; or (3) 
where the most pertinent  reference seems likely to be antedated by a 37 
CFR 1.131 affidavit or declaration.  Such rejections should be backed up 
by the best other art rejections available.  Merely cumulative rejections, 
i.e., those which would clearly fall if the primaryrejection  were not 
sustained, should be avoided. 

        See also MPEP # 707.05. 

REEXAMINATION 

        For scope of rejections in reexamination proceedings see MPEP # 
2258. 



DISTINCTION BETWEEN 35 U.S.C. 102 AND 103 

        The distinction between rejections based on 
35 U.S.C. 102 and those based on 35 U.S.C. 103 should be kept in mind. 
Under  the former, the claim is anticipated by the reference. No question 
of obviousness is present. In other words, for anticipation under 
35 U.S.C. 102, the reference must teach every aspect of the claimed 
invention  either explicitly or impliedly. Any feature not directly taught 
must be inherently  present.  Whereas, in a rejection based on 35 U.S.C. 
103, the reference teachings  must somehow be modified in order to meet 
the claims.  The modification must  be one which would have been obvious 
to one of ordinary skill in the art at  the time the invention was made. 
See MPEP 
# 2131 - # 2146 for guidance on patentability determinations under 35 
U.S.C.  102 and 103. 

DETERMINING THE EFFECTIVE FILING 
DATE OF THE APPLICATION 

(1)   If the application is a continuation or divisional of one or more 
earlier  U.S. applications and if the requirements of 35 U.S.C. 120 have 
been satisfied,  the effective filing date is the same as the earliest 
filing date in the line  of continuation or divisional applications. 

(2)   If the application is a continuation-in-part of an earlier U.S. 
application,  any claims in the new application not supported by the 
specification and claims  of the parent application have an effective 
filing date equal to the filing  date of the new application. Any claims 
which are fully supported under 35  U.S.C. 112 by the earlier parent 
application have the effective filing date  of that earlier parent 
application. 

(3)   If the application claims foreign priority under 
35 U.S.C. 119(a)-(d), the effective filing date is the filing date of the 
U.S.  application, unless situation 1 or 2 as set forth above applies. The 
filing  date of the foreign priority document is not the effective filing 
date, although  the filing date of the foreign priority document may be 
used to overcome certain  references.  See MPEP # 706.02(b) and # 2136.05. 

(4)   If the application is entitled to priority under 
35 U.S.C. 119(e) from a provisional application, the effective filing date 
 is the filing date of the provisional application. 


706.02(a) Rejections Under 35 U.S.C. 102(a), (b), or (e); Printed 
Publication or Patent [R-1] 

        >Once the examiner conducts a search and finds a printed 
publication  or patent which discloses the claimed invention, the examiner 
should determine  whether the rejection should be made under 35 U.S.C. 
102(a), (b), or (e). 
        In order to determine which section of 35 U.S.C. 102 applies, the 
effective  filing date of the application must be determined and compared 
with the date  of the reference. See MPEP # 706.02 regarding determination 
of effective filing  date of the application. 

DETERMINING THE REFERENCE ISSUE 
OR PUBLICATION DATE 

        The examiner must also determine the issue or publication date of 
the  reference so that a proper comparison between the application and 
reference  dates can be made. Where the last day of the year dated from 
the date of publication  falls on a Saturday, Sunday or Federal holiday, 
the publication is not a statutory  bar under 
35 U.S.C. 102(b) if the application was filed on the next succeeding 
business  day. Ex parte Olah and Kuhn, 131 USPQ 41 (Bd. App. 1960). It 
should also be noted that a magazine is effective  as a printed 
publication under 35 U.S.C. 102(b) as of the date it reached the 
addressee and not the date it was placed in the mail. Protein Foundation 
Inc.  v. Brenner, 260 F. Supp. 519, 151 USPQ 561 (D.D.C. 1966). See MPEP # 
707.05(f)  for more information. For foreign patents see MPEP # 901.05. 
See MPEP # 2124,  # 2126, and # 2128 - # 2128.02 for case law holdings in 
regard to reference  date determination. 

DETERMINING WHETHER TO APPLY 
35 U.S.C. 102(a), (b), or (e) 

        First, the examiner should consider whether the reference 
qualifies  as prior art under 35 U.S.C. 102(b) because this section 
results in a statutory  bar to obtaining a patent.  If the publication or 
issue date of the reference  is more than 1 year prior to the effective 
filing date of the application (MPEP  # 706.02), the reference qualifies 
as prior art under 35 U.S.C. 102(b). 
        If the publication or issue date of the reference is too recent 
for  35 U.S.C. 102(b) to apply, then the examiner should consider 35 
U.S.C. 102(e). 
 For section 102(e) to apply: 

(1)   The reference must be a U.S. Patent with a filing date earlier than 
the  effective filing date of the application. Note that, for purposes of 
35 U.S.C.  102(e), the filing date of the reference patent which has 
issued on an application  entitled to priority from a provisional 
application under 35 U.S.C. 119(e)  is the filing date of the provisional 
application, except for a patent granted  on an international application 
(PCT) in which applicant has fulfilled the  requirements of paragraphs 
(1), (2) and (4) of 35 U.S.C. 371.  The filing date  of a patent granted 
on such a 35 U.S.C. 371 application is the date on which  paragraphs (1), 
(2) and (4) of 35 U.S.C. 371 have been fulfilled; and 
(2)   The inventive entity of the application must be different than that 
of  the reference. Note that, where there are joint inventors, only one 
inventor  need be different for the inventive entities to be different and 
a rejection  under 35 U.S.C. 102(e) is applicable even if there are some 
common inventors. 


        If 35 U.S.C. 102(e) does not apply, then the examiner should 
consider  35 U.S.C. 102(a).  For section 102(a) to apply, the reference 
must have a publication  date earlier in time than the effective filing 
date of the application, and  must not be applicant's own work.< 


706.02(b) Overcoming a 35 U.S.C. 102 Rejection Based on a Printed 
Publication or Patent [R-2] 

Rejection based on 35 U.S.C. 102(b) 

        The rejection can be overcome by: 

(1)   Persuasively arguing that the claims are patentably distinguishable 
from  the prior art; or 

(2)   Amending the claims to patentably distinguish over the prior art. 
Rejection based on 35 U.S.C. 102(e) 

        The rejection can be overcome by: 

(1)   Persuasively arguing that the claims are patentably distinguishable 
from  the prior art; 

(2)   Amending the claims to patentably distinguish over the prior art; 
(3)   Filing an affidavit or declaration under 37 CFR 1.132 showing that 
the  reference invention is not by "another." See MPEP # 715.01(a), # 
715.01(c),  and 
# *>716.10<; 

(4)   Filing an affidavit or declaration under 37 CFR 1.131 showing prior 
invention,  if the reference is not a U.S. patent or application claiming 
the same patentable  invention as defined in 37 CFR 1.601(n). See MPEP 
# 715 for more information on 37 CFR 1.131 affidavits.  When the claims of 
 the reference and the application are directed to the same invention or 
are  obvious variants, an affidavit or declaration under 37 CFR 1.131 is 
not an  acceptable method of overcoming the rejection unless a petition 
under 37 CFR  1.183 is granted in a common ownership situation.  See MPEP 
# 715. Under these  circumstances, the examiner must determine whether a 
double patenting rejection  or interference is appropriate.  If there is a 
common assignee or inventor  between the application and patent, a double 
patenting rejection must be made. 
 See MPEP # 804.  If there is no common assignee or inventor and the 
rejection  under 35 U.S.C. 102(e) is the only possible rejection, the 
examiner must determine  whether an interference should be declared.  See 
MPEP Chapter 2300 for more  information regarding interferences; or 

(5)   Perfecting a claim to priority under 35 U.S.C. 119(a)-(d).  The 
foreign  priority filing date must antedate the reference and be 
perfected. The filing  date of the priority document is not perfected 
unless applicant has filed a  certified priority document in the 
application (and an English language translation, if the document is not 
in English) (see  37 CFR 1.55) and the examiner has established that the 
priority document satisfies  the enablement and description requirements 
of 35 U.S.C. 112, first paragraph; 
(6)   Perfecting priority under 35 U.S.C. 119(e) by amending the 
specification  of the application to contain a specific reference to a 
provisional application  in accordance with 37 CFR 1.78(a)(4). 

Rejection based on 35 U.S.C. 102(a) 

        The rejection can be overcome by: 

(1)   Persuasively arguing that the claims are patentably distinguishable 
from  the prior art; 

(2)   Amending the claims to patentably distinguish over the prior art; 
(3)   Filing an affidavit or declaration under 37 CFR 1.131.  See MPEP # 
715  for information on the requirements of 37 CFR 1.131 affidavits. 

(4)   Filing an affidavit or declaration under 37 CFR 1.132 showing that 
the  reference invention is not 
by "another." See MPEP # 715.01(a), # 715.01(c), and 
# 716.10; 

(5)   Perfecting a claim to priority under 35 U.S.C. 119(a)-(d) as 
explained  in reference to 35 U.S.C. 102(e) above; 

(6)   Perfecting priority under 35 U.S.C. 119(e) by amending the 
specification  of the application to contain a specific reference to a 
provisional application  in accordance with 37 CFR 1.78(a)(4). 


706.02(c) Rejections under 35 U.S.C. 102(a) or (b); Knowledge by Others or 
Public Use or Sale [R-2] 

        An applicant may make an admission, or submit evidence of sale of 
the  invention or knowledge of the invention by others, or the examiner 
may have  personal knowledge that the invention was sold by applicant or 
known by others  in this country.  The language "in this country" means in 
the United States  only and does not include other WTO or NAFTA member 
countries. In these cases  the examiner must determine if 35 U.S.C. 102(a) 
or 102(b) applies. See MPEP  # 2133.03 for a discussion of case law 
treating the "public use" and "on sale"  statutory bars. 

        If the activity is by an entity other than the inventors or 
assignee,  such as sale by another, manufacture by another or disclosure 
of the invention  by applicant to another then both 35 U.S.C. 102(a) and 
(b) may be applicable.  If the evidence only points to knowledge within 
the year prior to the effective  filing date then 35 U.S.C. 102(a) 
applies. However, no rejection under 35 U.S.C.  102(a) should be made if 
there is evidence that applicant made the invention  and only disclosed it 
to others within the year prior to the effective filing  date. 

        * 35 U.S.C. 102(b) is applicable if the activity ** occurred more 
than  1 year prior to the effective filing date of the application **. See 
MPEP #  2133.03 for a discussion of "on sale" and "public use" bars under 
35 U.S.C.  102(b). 

        Note that as an aid to resolving public use or on sale issues, as 
well  as to other related matters of 35 U.S.C. 102(b) activity, an 
applicant may  be required to answer specific questions posed by the 
examiner and to explain  or supplement any evidence of record. 35 U.S.C. 132, 
37 CFR 1.104(b). Regarding reissues see 37 CFR 1.175(b).  Information 
sought  should be restricted to that which is reasonably necessary for the 
examiner  to render a decision on patentability. 

        A 1- or 2-month time period should be set by the examiner for any 
response  to the requirement, unless the requirement is part of an Office 
action having  a shortened statutory period, in which case the period for 
response to the  Office Action will also apply to the requirement.  If 
applicant fails to respond  in a timely fashion to 
a requirement for information, the application will be 
regarded as abandoned, 35 U.S.C. 133. See MPEP 
# 2133.03. 

        If there is not enough information on which to base a public use 
or  on sale rejection, the examiner should make a requirement for more 
information.  Form paragraph *>7.104< can be used. 

W*>7.104< Requirement for information, public use or sale. 

        An issue of public use or on sale activity has been raised in this 
 application.  In order for the examiner to properly consider 
patentability  of the claimed invention under 35 U.S.C. 102(b), additional 
information regarding  this issue is required as follows: [1]. 

        Applicant is reminded that failure to fully respond to this 
requirement  for information will result in a holding of abandonment. 

Examiner Note: 

        1.  Information sought should be restricted to that which is 
reasonably  necessary for the examiner to render a decision on 
patentability.  See MPEP  # 2133.03. 

        2.  A one or two month time period should be set by the examiner 
for  response to the requirement unless it is part of an Office action 
having an  SSP, in which case the period for response will apply also to 
the requirement. 
        3.  If sufficient evidence already exists to establish a prima 
facie  case of public use or on sale, use form paragraph 7.16 to make a 
rejection  under 35 U.S.C. 102(b). See MPEP # 2133.03. 


706.02(d) Rejections Under 35 U.S.C. 102(c) [R-1] 


        >Under 35 U.S.C. 102(c), abandonment of the "invention" (as 
distinguished  from abandonment of an application) results in loss of 
right to a patent.   See MPEP # 2134 for case law which sets forth the 
criteria for abandonment under 35  U.S.C. 102(c).< 


706.02(e) Rejections Under 35 U.S.C. 102(d) [R-1] 


        >35 U.S.C. 102(d) establishes four conditions which, if all are 
present,  establish a statutory bar against the granting of a patent in 
this country: 
(1)   The foreign application must be filed more than 12 months before the 
 effective filing date of the United States application. See MPEP # 706.02 
regarding  determination of the effective filing date of the application. 

(2)   The foreign and United States applications must be filed by the same 
 applicant, his or her legal representatives or assigns. 

(3)   The foreign application must have actually issued as a patent or 
inventor's  certificate (e.g., granted by sealing  of the papers in Great 
Britain) before  the filing in the United States. It need not be published 
but the patent rights  granted must be enforceable. 

(4)   The same invention must be involved. 

        If such a foreign patent or inventor's certificate is discovered 
by  the examiner, the rejection is made under 
35 U.S.C. 102(d) on the ground of statutory bar. 

See MPEP # 2135.01 for case law which further clarifies each of the four 
requirements  of 35 U.S.C. 102(d). 

SEARCHING FOR 35 U.S.C. 102(d) PRIOR ART 

        The examiner should only undertake a search for an issued foreign 
patent  for use as 35 U.S.C. 102(d) prior art if there is a reasonable 
possibility  that a foreign patent covering the same subject matter as the 
U.S. application  has been granted to the same inventive entity before the 
U.S. effective filing  date, i.e., the time period between foreign and 
U.S. filings is greater than  the usual time it takes for a patent to 
issue in the foreign country.  Normally,  the probability of the 
inventor's foreign patent issuing before the U.S. filing  date is so 
slight as to make such a search unproductive.  However, it should  be kept 
in mind that the average pendency varies greatly between foreign 
countries. 
 In Belgium, for instance, a patent may be granted in just a month after 
its  filing, while in Japan the patent may not issue for a decade. 
The search for a granted patent can be accomplished on an electronic 
database  either by the examiner or by the staff of the Scientific and 
Technical Information  Center.  See MPEP # 901.06 (a) STIC SERVICES (2) 
for more information on online  searching.  The document must be a patent 
or inventor's certificate and not  merely a published or laid open 
application.< 


706.02(f) Provisional Rejections Under 35 U.S.C. 102(e); Reference is a 
Copending U.S. Patent Application [R-1] 

        >If a copending U.S. patent application discloses subject matter 
which  would anticipate the claims in another pending U.S. application 
which has a  different inventive entity, the examiner should determine 
whether a provisional  35 U.S.C. 102(e) rejection can be made. 

        1.  Copending U.S. applications; at least one common inventor or 
are  commonly assigned. 

        If (1) at least one common inventor exists between the 
applications  or the applications are commonly assigned and (2) the 
effective filing dates  are different, then a provisional rejection of the 
later filed application  should be made. The provisional rejection is 
appropriate because if the earlier  filed application becomes a patent it 
would constitute actual prior art under  35 U.S.C. 102.  Since neither 
application is published at the time of the provisional  rejection, the 
rejection must be made under 35 U.S.C. 102(e). 

        A provisional rejection under 35 U.S.C. 102(e) can be overcome in 
the  same manner that a 35 U.S.C. 102(e) rejection can be overcome.  See 
MPEP #  706.02(b).  The provisional rejection can also be overcome by 
abandoning the  applications and filing a new application containing the 
subject matter of  both. 

        Form paragraph 7.15.01 should be used when making a provisional 
rejection  under 35 U.S.C. 102(e). 

W 7.15.01 Provisional Rejection, 35 U.S.C. 102(e) - Common Assignee or At 
Least  One Common Inventor 

        Claim[1] provisionally rejected under 35 U.S.C. 102(e) as being 
anticipated  by copending application no. [2] which has a common [3] with 
the instant application. 
        Based upon the earlier effective U.S. filing date of the copending 
 application, it would constitute prior art under 35 U.S.C. 102(e) if 
patented. 
 This provisional rejection under 35 U.S.C. 102(e) is based upon a 
presumption  of future patenting of the copending applica- 
tion.  [4]. 

        This provisional rejection under 35 U.S.C. 102(e) might be 
overcome  either by a showing under 37 CFR 1.132 that any invention 
disclosed but not  claimed in the copending application was derived from 
the inventor of this  application and is thus not the invention "by 
another," or by an appropriate  showing under 37 CFR 1.131. 

        This rejection may not be overcome by the filing of a terminal 
disclaimer. 
 See In re Bartfeld, 17 USPQ2d 1885 (Fed. Cir. 1991). 

Examiner Note: 

        1.  This paragraph is used to provisionally reject over a 
copending  application with an earlier filing date that discloses the 
claimed invention.  The copending application must have either a common 
assignee or at least one  common inventor. 

        2.  If the claims are obvious over the invention disclosed in the 
other  copending application, use paragraph 7.21.01. 

        3.  In bracket 3, insert either  "assignee"  or  "inventor." 
        4.  In bracket 4, an appropriate explanation may be provided in 
support  of the Examiner's position on anticipation, if necessary. 

        5.  If the claims of the copending application conflict with the 
claims  of the instant application, a provisional double patenting 
rejection should  also be given using paragraphs 8.30 and 8.32. 

        6.  If evidence is additionally of record to show that either 
invention  is prior art unto the other under 35 U.S.C. 102(f) or (g), a 
rejection using  paragraphs 7.13 and/or 7.14 should also be made. 

        2.  Copending applications; no common inventor or assignee 
        If there is no common assignee or common inventor, the 
confidential  status of applications under 35 U.S.C. 122 must be 
maintained and no rejection  can be made relying on the earlier filed 
application as prior art under 35 U.S.C. 102(e). If the filing dates of 
the applications are within 6 months  of each other (3 months for simple 
subject matter) then interference may be  proper. See MPEP Chapter 2300. 
Otherwise, the application with the earliest  effective U.S. filing date 
must be allowed to issue. After the allowed application  is published, it 
can be used as a reference in a rejection under 35 U.S.C.  102(e) in the 
still pending application.< 


706.02(g) Rejections Under 35 U.S.C. 102(f)  [R-1] 


        >35 U.S.C. 102(f) bars the issuance of a patent where an applicant 
 did not invent the subject matter being claimed and sought to be 
patented. 
 See also, 35 U.S.C. 101, which requires that whoever invents or discovers 
 is the party who may obtain a patent for the particular invention or 
discovery. 
 The examiner must presume the applicants are the proper inventors unless 
there  is proof that another made the invention and that applicant derived 
the invention  from the true inventor. 

        See MPEP # 2137 - # 2137.02 for more information on the 
substantive  requirements of rejections under 
35 U.S.C. 102(f).< 


706.02(h) Rejections Under 35 U.S.C. 102(g) [R-1] 


        >35 U.S.C. 102(g) bars the issuance of a patent where another made 
 the invention in the United States before applicant and had not 
abandoned,  suppressed, or concealed it.  This section of 35 U.S.C. 102 
forms a basis for  interference practice.  See MPEP Chapter 2300 for more 
information on interference  procedure. See MPEP # 2138 - # 2138.07 for 
more information on the requirements  of 35 U.S.C. 102(g).< 


706.02(i) Form paragraphs for Use in Rejections Under 35 U.S.C. 102 
                          [R-2] 



        The following form paragraphs should be used in making the 
appropriate  rejections. 

        Note that the particular of the refence relied upon to support the 
 rejection should be identified. 

W 7.07      Statement of Statutory Basis,  35 U.S.C. 102 

        The following is a quotation of the appropriate paragraphs of 35 
U.S.C. 102 that form the basis for the rejections under this section made 
in this Office action: 

        A person shall be entitled to a patent unless- 

Examiner Note: 

        1.  The statute is no longer being *>recited< in all Office 
actions. It is only required in first actions on the merits and final 
rejections. Where  the statute is not being cited in an action on the 
merits, use paragraph *>7.103<. 
        2.  Paragraphs 7.07 to 7.14 are to be used ONLY ONCE in a given 
Office  action. 

W 7.08 102(a), Activity by Another Before Invention by Applicant 

        (a)   the invention was known or used by others in this country, 
or  patented or described in a printed publication in this or a foreign 
country,  before the invention thereof by the applicant for a patent. 

Examiner Note: 

        This paragraph must be preceded by paragraph 7.07. 

W 7.09      102(b), Activity More Than One Year Prior to filing 

        (b)   the invention was patented or described in a printed 
publication  in this or a foreign country or in public use or on sale in 
this country, more  than one year prior to the date of application for 
patent in the United States. 
Examiner Note: 

        This paragraph must be preceded by paragraph 7.07, and may be 
preceded  by paragraph 7.08. 

W 7.10      102(c), Invention Abandoned 

        (c)   he has abandoned the invention. 

Examiner Note: 

        This paragraph must be preceded by paragraph 7.07, and may be 
preceded  by one or more of paragraphs 7.08 and 7.09. 

W 7.11      102(d), Foreign Patenting 

        (d)   the invention was first patented or caused to be patented, 
or  was the subject of an inventor's certificate, by the applicant or his 
legal  representatives or assigns in a foreign country prior to the date 
of the application  for patent in this country on an application for 
patent or inventor's certificate  filed more than twelve months before the 
filing of the application in the United  States. 

Examiner Note: 

        This paragraph must be preceded by paragraph 7.07, and may be 
preceded  by one or more of paragraphs 7.08 to 7.10. 

W 7.12      102(e), Patent to Another With Earlier Filing Date 

        (e)   the invention was described in a patent granted on an 
application  for patent by another filed in the United States before the 

invention thereof by the applicant for patent, or on an international 
application  by another who has fulfilled the requirements of paragraphs 
(1), (2), and (4)  of section 371(c) of this title before the invention 
thereof by the applicant  for patent. 

Examiner Note: 

        This paragraph must be preceded by paragraph 7.07, and may be 
preceded  by one or more of paragraphs 7.08 to 7.11. 

W 7.13      102(f), Applicant not the Inventor 

        (f) he did not himself invent the subject matter sought to be 
patented. 
Examiner Note: 

        This paragraph must be preceded by paragraph 7.07, and may be 
preceded  by one or more of paragraphs 7.08 to 7.12. 

W 7.14      102(g), Priority of Invention 

        (g)   before the applicant's invention thereof the invention was 
made  in this country by another who had not abandoned, suppressed, or 
concealed  it. In determining priority of invention there shall be 
considered not only  the respective dates of conception and reduction to 
practice of the invention,  but also the reasonable diligence of one who 
was first to conceive and last  to reduce to practice, from a time prior 
to conception by the other. 
Examiner Note: 

        This paragraph must be preceded by paragraph 7.07 and may be 
preceded  by one or more of paragraphs 7.08 to 7.12. 

W 7.15      Rejection, 35 U.S.C. 102(a), (b) Patent or Publication, and 
(g) 
        Claim [1] rejected under 35 U.S.C. 102 ([2]) as being [3] by [4]. 
* 
Examiner Note: 

        1.  In bracket 2, insert the appropriate paragraph letter or 
letters  of 35 U.S.C>.< 102 in parentheses. If paragraph (e) of 35 U.S.C. 
102 is applicable,  use form paragraph 7.15.02. 

        2.  In bracket 3, insert either ** "clearly anticipated" >or 
"anticipated"  with an explanation at the end of the paragraph<. 

        3.  In bracket 4, insert the prior art relied upon. 

        ** 

        *>4.< This rejection must be preceded either by paragraph 7.07 and 
 paragraphs 7.08, 7.09, and 7.14 as appropriate, or by paragraph *>7.103<. 
        *>5.< If 35 U.S.C. 102(e) is also being applied, this paragraph 
must  be followed by either form paragraph 7.15.02 or 7.15.03. 

W 7.15.01 Provisional Rejection, 35 U.S.C. 102(e) - Common Assignee or At 
Least  One Common Inventor 

        Claim[1] provisionally rejected under 35 U.S.C. 102(e) as being 
anticipated  by copending application no. [2] which has a common [3] with 
the instant application. 
        Based upon the earlier effective U.S. filing date of the copending 
 application, it would constitute prior art under 35 U.S.C. 102(e) if 
patented. 
 This provisional rejection under 35 U.S.C. 102(e) is based upon a 
presumption  of future patenting of the copending application.  [4]. 

        This provisional rejection under Section 102(e) might be overcome 
either  by a showing under 37 CFR 1.132 that any invention disclosed but 
not claimed  in the copending application was derived from the inventor of 
this application  and is thus not the invention "by another," or by an 
appropriate showing under  37 CFR 1.131. 

        This rejection may not be overcome by the filing of a terminal 
disclaimer. 
 See In re Bartfeld, 17 USPQ2d 1885 (Fed. Cir. 1991). 

Examiner Note: 

        1.  This paragraph is used to provisionally reject over a 
copending  application with an earlier filing date that discloses the 
claimed invention.  The copending application must have either a common 
assignee or at least one  common inventor. 

        2 If the claims are obvious over the invention disclosed in the 
other  copending application, use paragraph 7.21.01. 

        3.  In bracket 3, insert either "assignee"  or "inventor." 
        4.  In bracket 4, an appropriate explanation may be provided in 
support  of the Examiner's position on anticipation, if necessary. 

        5.  If the claims of the copending application conflict with the 
claims  of the instant application, a provisional double patenting 
rejection should  also be given using paragraphs 8.30 and 8.32. 

        6.  If evidence is additionally of record to show that either 
invention  is prior art unto the other under 35 U.S.C. 102(f) or (g), a 
rejection using  paragraphs 7.13 and/or 7.14 should also be made. 

W 7.15.02 Rejection, 35 U.S.C. 102(e), Common Assignee or Inventor(s) 
        Claim[1] rejected under 35 U.S.C. 102(e) as being anticipated by 
[2]. 
        The applied reference has a common [3] with the instant 
application. 
 Based upon the earlier effective U.S. filing date of the reference, 
 it constitutes prior art under 35 U.S.C. 102(e). This rejection under 
 35 U.S.C. 102(e) might be overcome either by a showing under 37 CFR 1.132 
 that any invention disclosed but not claimed in the reference was derived 
from  the inventor of this application and is thus not the invention "by 
another,"  or by an appropriate showing under 37 CFR 1.131. 

Examiner Note: 

        1.  This paragraph is used to reject over a patent with an earlier 
 filing date that discloses but does not claim the same invention. The 
patent  must have either a common assignee or a common inventor. 

        2.  In bracket 3, insert either "assignee"  or "inventor." 
W 7.15.03 Rejection, 35 U.S.C. 102(e), No Common Assignee or Inventor(s) 
        Claim[1] rejected under 35 U.S.C. 102(e) as being *>[2]< by 
*>[3]<. 
Examiner Note: 

        >1.< This paragraph is used to reject over a patent with an 
earlier  filing date that discloses but does not claim the same invention. 
The patent  must have neither a common assignee nor a common inventor. 

        >In bracket 2, insert either "clearly anticipated" or 
"anticipated"  with an explanation at the end of the paragraph. 

        In bracket 3, insert the prior art relied upon.< 

W 7.16      Rejection, 35 U.S.C. 102(b), Public use or on Sale 

        Claim[1] rejected under 35 U.S.C. 102(b) based upon a public use 
or  sale of the invention.  [2]. 

Examiner Note: 

        1.  This paragraph must be preceded either by paragraphs 7.07 and 
7.09  or by paragraph *>7.103.< 

        2.  A full explanation of the evidence establishing a public use 
or  sale must be provided in bracket 2. 

W 7.17      Rejection, 35 U.S.C. 102(c), Abandonment of Invention 
        Claim[1] rejected under 35 U.S.C. 102(c) because the invention has 
 been abandoned. [2]. 

Examiner Note: 

        1.  This paragraph must be preceded either by paragraph 7.07  and 
7.10  or by paragraph *>7.103.< 

        2.  In bracket 2, insert a full explanation of the evidence 
establishing  abandonment of the invention.  See MPEP w 2134. 

W 7.18      Rejection, 35 U.S.C. 102(d), Foreign Patenting 

        Claim [1] rejected under 35 U.S.C. 102(d) as being barred by 
applicant's  [2].  [3]. 

Examiner Note: 

        1.  This paragraph must be preceded either by paragraphs 7.07 and 
7.11  or by paragraph *>7.103.< 

        2.  In bracket 3, insert an explanation of this rejection which 
must  include appropriate dates and how they make the foreign patent 
available under  35 U.S.C. 102(d). 

        3.  Refer to MPEP w 2135 for applicable 102(d) prior art. 
W 7.19      Rejection, 35 U.S.C. 102(f), Applicant not the Inventor 
Claim [1] rejected under 35 U.S.C. 102(f) because the applicant did not 
invent  the claimed subject matter.  [2]. 

Examiner Note: 

        1.  This paragraph must be preceded either by paragraphs 7.07 and 
7.13  or by paragraph *>7.103.< 

        2.  In bracket 2, insert an explanation of the supporting evidence 
        establishing that applicant was not the inventor. 


706.02(j) Contents of a 35 U.S.C. 103  Rejection [R-2] 


        35 U.S.C. 103 authorizes a rejection where to meet the claim, it 
is  necessary to modify a single reference or to combine it with one or 
more other  references. After indicating that the rejection is under 35 
U.S.C. 103, the  examiner should set forth in the Office action (1) the 
relevant teachings of  the prior art relied upon, preferably with 
reference to the relevant column  or page number(s) and line number(s) 
where appropriate, (2) the difference  or differences in the claim over 
the applied reference(s), (3) the proposed  modification of the applied 
reference(s) necessary to arrive at the claimed  subject matter, and (4) 
an explanation why  **>one of ordinary skill in the  art at the time the 
invention was made would have been motivated to make the  proposed 
modification<. 

        To establish a prima facie case of obviousness, three basic 
criteria  must be met.  First, there must be some suggestion or 
motivation, either in  the references themselves or in the knowledge 
generally available to one of  ordinary skill in the art, to modify the 
reference or to combine reference  teachings.  Second, there must be a 
reasonable expectation of success.  Finally,  the prior art reference (or 
references when combined) must teach or suggest  all the claim 
limitations.  The teaching or suggestion to make the claimed  combination 
and the reasonable expectation of success must both be found in  the prior 
art, and not based on applicant's disclosure. In re Vaeck, 947 F.2d  488, 
20 USPQ2d 1438 (Fed. Cir. 1991).  See MPEP # 2143 - # 2143.03 for 
decisions  pertinent to each of these criteria. 

        The initial burden is on the examiner to provide some suggestion 
of  the desirability of doing what the inventor has done. "To support the 
conclusion  that the claimed invention is directed to obvious subject 
matter, either the references must expressly or impliedly suggest the 
claimed invention or the  examiner must present a convincing line of 
reasoning as to why the artisan  would have found the claimed invention to 
have been obvious in light of the  teachings of the references." Ex parte 
Clapp, 227 USPQ 972, 973 (Bd. Pat. App.  & Inter. 1985).  See MPEP # 2144 
- # 2144.09 for examples of reasoning supporting  obviousness rejections. 

        Where a reference is relied on to support a rejection, whether or 
not  in a minor capacity, that reference should be positively included in 
the statement  of the rejection. See In re Hoch, ** 428 F.2d 1341, 166 
USPQ 406, *>n.< 3 (>CCPA<1970). 
        It is important for an examiner to properly communicate the basis 
for  a rejection so that the issues can be identified early and the 
applicant can  be given fair opportunity to respond. Furthermore, if an 
initially re- jected  application issues as a patent, the rationale behind 
an earlier rejection may  be important in interpreting the scope of the 
patent claims. Since issued patents  are presumed valid (35 U.S.C. 282) 
and constitute a property right (35 U.S.C.  261), the written record must 
be clear as to the basis for the grant.  Since  patent examiners cannot 
normally be compelled to testify in legal proceedings  regarding their 
mental processes (see MPEP # 1701.01), it is important that  the written 
record clearly explain the rationale for decisions made during 
prosecution of the application. 

        See MPEP # 2141 - # 2144.09 generally for guidance on 
patentability  determinations under 35 U.S.C. 103, including a discussion 
of the requirements  of Graham v. John Deere, 383 U.S. 1, 148 USPQ 459 
(1966).  See MPEP # 2145  for consideration of applicant's rebuttal 
arguments. See MPEP # 706.02(l) for  a discussion of  ** 35 U.S.C. 103>(c)<. 


706.02(k) Provisional Rejection (Obviousness) Under 35 U.S.C. 102(e)/103 
[R-2] 

        Where two applications of different inventive entities are 
copending  and the filing dates differ, a provisional rejection under 35 
U.S.C. 102(e)/103  should be made in the later filed application if the 
applications have a common  assignee or a common inventor. Otherwise the 
confidential status of applications  under 35 U.S.C. 
122 must be maintained. Such a rejection alerts the applicant that he or 
she  can expect an actual rejection on the same ground if one of the 
applications  issues and also lets applicant know that action must be 
taken to avoid the  rejection. 

        This gives applicant the opportunity to analyze the propriety of 
the  rejection and possibly avoid the loss of rights to desired subject 
matter. 
 Provisional rejections of the obviousness type under 35 U.S.C. 102(e)/103 
 are rejections applied to copending applications having different 
effective  filing dates wherein each application has a common assignee or 
a common inventor.  The earlier filed application, if patented, would 
constitute prior art under  35 U.S.C. 102(e). The rejection can be 
overcome by: 

(1)   arguing patentability over the earlier filed application, 

(2)   combining the subject matter of the copending applications into a 
single  application claiming benefit under 35 U.S.C. 120 of the prior 
applications  and abandoning the copending applications, 

(3)   filing an affidavit or declaration under 37 CFR 1.132 showing that 
any  unclaimed invention disclosed in the copending application was 
derived from  the inventor of the other application and is thus not invention 
"by another" (see MPEP # 715.01(a), # 715.01(c), and 
# 716.10), or 

(4)   filing an affidavit or declaration under 37 CFR 1.131 showing a date 
 of invention prior to the effective U.S. filing date of the copending 
application. 
 Where the applications are claiming the same patentable invention, an 
affidavit  or declaration under 37 CFR 1.131 may be used to overcome a 
rejection under  35 U.S.C. 102 or 103 only if a petition under 37 CFR 
1.183 has been granted  in a common ownership situation.  See MPEP # 715. 

        If a provisional rejection is made and the copending applications 
are  combined into a single application and the resulting single 
application is  subject to a restriction requirement, the divisional 
application would not  be subject to provisional or actual rejection under 
35 U.S.C. 102(e)/103 since  the provisions of 35 U.S.C. 121 preclude the 
use of a patent issuing therefrom  as a reference against the other 
application.  Additionally, the resulting  continuation-in-part is 
entitled to 35 U.S.C. 120 benefit of each of the prior  applications. 
This is illustrated in Example 2, below. 

        The examples below are instructive as to the application of 35 
U.S.C.  102(e)/103: 

Example 1 

Assumption: Employees A and B work for C, each with knowledge of the 
other's  work, and with obligation to assign inventions to C while 
employed. 
C70602k01.bmp 



C70602k01.end 

In situation (2.) above, the result is a provisional rejection by the 
examiner  under 35 U.S.C. 102(e)/103.  The rejection is provisional since 
the subject  matter and the prior art are pending applications. 

Example 2 

Assumption: Employees A and B work for C, each with knowledge of the 
other's  work, and with obligation to assign inventions to C while 
employed 
C70602k02.bmp 



C70602k02.end 



Statement of Principle: 

        The disclosure of an earlier filed patent application which issues 
 as a patent continues to be prior art under 35 U.S.C. 102(e) against a 
later  invented and filed application of another inventor even though the 
patent and  the later invention were owned by, or subject to, an 
obligation of assignment  to the same person at the time the later 
invention was made. 

Examination of Applications of Different Inventive Entities Where Common 
Ownership  Is Established 

        See MPEP # 706.02(l) for examination of applications of different 
inventive  entities where common ownership has not been established. 

        Once the examiner checks the applications and it is established 
from  the record that common ownership existed at the time the later 
invention was  made, he or she should: 

(1)   examine the applications as to all grounds except 35 U.S.C. 102(f) 
and 
(g) as they apply through 
 35 U.S.C. 103, 

(2)   examine the applications for double patenting, including double 
patenting  of the obviousness type, and make a provisional double 
patenting rejection,  if appropriate (See In re Mott, >539 F.2d 1291,< 190 
USPQ 536 (CCPA 1976)), 
(3)   examine the later filed application under 35 U.S.C. 102(e) as it 
applies  through 35 U.S.C. 103 and make a provisional rejection under 35 
U.S.C. 102(e)/35 
U.S.C.103 in the later filed application, if appropriate, and 

(4)   permit the applicant of the later filed application to file an 
affidavit  or declaration under 37 CFR 1.131, along with a petition under 
37 CFR 1.183  if thesame patentable invention is being claimed (see MPEP 
715.05), or an  affidavit or declaration under 37 CFR 1.132 showing the 
invention is not "by  another," to overcome the provisional or actual 35 
U.S.C. 102(e)/35 U.S.C.  103 rejection, if appropriate, and a terminal 
disclaimer to overcome the provisional  or actual rejection on double 
patenting of the obviousness type. 

        The practice of rejecting claims on the ground of double patenting 
 in commonly owned applications of different inventive entities is in 
accordance  with existing case law and prevents an organization from 
obtaining two or more  patents with different expiration dates covering 
nearly identical subject matter.  See MPEP Chapter 800 for guidance on 
double patenting issues.  In accordance  with established patent law 
doctrines, double patenting rejections can be overcome  in certain 
circumstances by disclaiming, pursuant to the existing provisions  of 37 
CFR 1.321, the terminal portion of the term of the later patent and 
including  in the disclaimer a provision that the patent shall be 
enforceable only for  and during the period the patent is commonly owned 
with the application or  patent which formed the basis for the rejection, 
thereby eliminating the problem  of extending patent life. 



The example below is illustrative: 

ASSUMPTION: Employees A and B work for C, each with knowledge of the 
other's  work, and with obligation to assign inventions to C while 
employed: 
C70602k03.bmp 



C70602k03.end 





Examination of Continuing Application Commonly Owned With Abandoned Parent 
 Application to Which Benefit Is Claimed Under 35 U.S.C. 120 

        An application claiming the benefit of a prior filed copending 
national  or international application under 35 U.S.C. 120 must name as an 
inventor at  least one inventor named in the prior filed application. The 
prior filed application  must also disclose the named inventor's invention 
claimed in at least one claim  of the later filed application in the 
manner provided by the first paragraph  of 35 U.S.C. 112. This practice 
contrasts with the practice in effect prior  to November 8, 1984 (the date 
of enactment of Public Law 98-622) where the  inventorship entity in each 
of the applications was required to be the same  for benefit under 35 
U.S.C. 120. 

        So long as the applications have at least one inventor in common 
and  the other requirements are met, the Office will permit a claim for 35 
U.S.C.  120 benefit without any additional submissions or notifications 
from applicants  regarding inventorship differences. 

        In addition to the normal examination conducted by the examiner, 
he  or she must examine the earlier filed application to determine if the 
earlier  and later applications have at least one inventor in common and 
that the other  35 U.S.C. 120 requirements are met. The claim for 35 
U.S.C. 120 benefit will  be permitted without examination of the earlier 
application for disclosure  and support of at least one claim of the later 
filed application under 35 U.S.C.  112, first paragraph unless it becomes 
necessary to do so, for example, because  of an intervening reference. 

Examination of Commonly Owned Pending Applications Having Different 
Inventive  Entities Claiming Benefit Under 35 U.S.C. 120 

        See MPEP # 706.02(l) for examination of applications of different 
inventive  entities where common ownership is not established. 

        Commonly owned applications of different inventive entities may be 
 rejected on the ground of double patenting. Despite the fact that a later 
filed  application claims 35 U.S.C. 120 benefit to an earlier application, 
a double  patenting rejection may also be appropriate so long as at least 
one inventor  is common to each application. The rejection based on a 
pending application  would be a provisional rejection since no patent has 
issued. 

        If the applications are commonly owned, a rejection of the 
applications  on the ground of double patenting can be overcome by an 
appropriate terminal  disclaimer as long as the identical invention is not 
being claimed. See In  re Robeson, 331 F.2d 610, 141 USPQ 485 (CCPA 1964) 
and In re Kaye, 332 F.2d  816, 141 USPQ 829 (CCPA 1964). 

The following example is illustrative: 

        ASSUMPTION: Employees A and B work for C, each with knowledge of 
the  other's work, and with obligation to assign inventions to C while 
employed. 
C70602k04.bmp 



C70602k04.end 



706.02(l) Rejections Under 35 U.S.C. 102(f)/103 and 35 U.S.C. 102(g)/103; 
** 35 U.S.C. 103>(c)< [R-2] 

37 CFR 1.106. Rejection of Claims 

        (a)   If the invention is not considered patentable, or not 
considered  patentable as claimed, the claims, or those considered 
unpatentable will be  rejected. 

        (b)   In rejecting claims for want of novelty or for obviousness, 
the  examiner must cite the best references at his command.  When a 
reference is  complex or shows or describes inventions other than that 
claimed by the applicant,  the particular part relied on must be 
designated as nearly as practicable.  The pertinence of each reference, if 
not apparent, must be clearly explained  and each rejected claim specified. 

        (c)   In rejecting claims the examiner may rely upon admissions by 
 the applicant, or the patent owner in a reexamination proceeding, as to 
any  matter affecting patentability and, insofar as rejections in 
applications are  concerned, may also rely upon facts within his or her 
knowledge pursuant to  w 1.107. 

        (d)   Subject matter which is developed by another person which 
qualifies  as prior art only under 35 U.S.C. 102(f) or (g) may be used as 
prior art under  35 U.S.C. 103 against a claimed invention unless the 
entire rights to the subject  matter and the claimed invention were 
commonly owned by the same person or  organization or subject to an 
obligation of assignment to the same person or  organization at the time 
the claimed invention was made. 

        (e)   The claims in any original application naming an inventor 
will  be rejected as being precluded by a waiver in a published statutory 
invention  registration naming that inventor if the same subject matter is 
claimed in  the application and the statutory invention registration.  The 
claims in any  reissue application naming an inventor will be rejected as 
being precluded  by a waiver in a published statutory invention 
registration naming that inventor  if the reissue application seeks to 
claim subject matter (1) which was not  covered by claims issued in the 
patent prior to the date of publication of  the statutory invention 
registration and (2) which was the same subject matter  waived in the 
statutory invention registration. 

        37 CFR 1.106 basically reiterates the requirements of ** 35 U.S.C. 
 103>(c)< which provides that subject matter developed by another which 
qualifies  as "prior art" only under subsections 35 U.S.C. 102(f) or 35 
U.S.C. 102(g)  is not to be considered when determining whether an 
invention sought to be  patented is obvious under 35 U.S.C. 103, provided 
the subject matter and the  claimed invention were commonly owned at the 
time the invention was made. Note  that if the prior art is published and 
the inventive entity is not identical  then 35 U.S.C. 102(e)/103 will 
apply and the prior art will not be disqualified  under 35 U.S.C. 103>(c)< **. 

        The subject matter that is disqualified as prior art under 35 
U.S.C.  103 is strictly limited to subject matter that qualifies as prior 
art only  under 35 U.S.C. 102(f) or 
35 U.S.C. 102(g). If the subject matter qualifies as prior art under any 
other  subsection (e.g., subsection 
35 U.S.C. 102(a), 35 U.S.C. 102(b), or 35 U.S.C. 102(e)) it will not be 
disqualified  as prior art under 35 U.S.C. 103>(c)< **. 

        It is important to recognize that ** 35 U.S.C. 103>(c)< applies 
only  to consideration of prior art for purposes of obviousness under 35 
U.S.C. 103. 
 It does not apply to or affect subject matter which qualifies as prior 
art  under 35 U.S.C. 102. A patent applicant urging that subject matter is 
disqualified  has the burden of establishing that it was commonly owned at 
the time the claimed  invention was made. Absent proper evidence of common 
ownership at the time  the later invention was made, the appropriate 
rejection under 35 U.S.C. 102(f)  or 
35 U.S.C. 102(g) as it applies through 35 U.S.C. 103 should be made. 
  Information learned from or transmitted to persons outside the 
organization  is not disqualified as prior art. The term "subject matter" 
will be construed  broadly, in the same manner the term is construed in 
the remainder of 35 U.S.C.  103. The term "another" as used in 
35 U.S.C. 103 means any inventive entity other than the inventor and would 
 include the inventor and any other persons. The term "developed" is to be 
read  broadly and is not limited by the manner in which the development 
occurred.  The term "commonly owned" means wholly owned by the same 
person, persons, or  organization at the time the invention was made. 

        Inventors of subject matter not commonly owned at the time of the 
invention,  but currently commonly owned, may file as joint inventors in a 
single application. 
 However, the claims in such an application are not protected from a 35 
U.S.C.  102(f)/103 or 35 U.S.C. 102(g)/103 rejection. Applicants in such 
cases have  an obligation pursuant to 37 CFR 1.56 to point out the 
inventor and invention  dates of each claim and the lack of common 
ownership at the time the later  invention was made to enable the examiner 
to consider the applicability of  a 35 U.S.C. 102(f)/103 or 35 U.S.C. 
102(g)/103 rejection. The examiner will  assume, unless there is evidence 
to the contrary, that applicants are complying  with their duty of disclosure. 

        Foreign applicants will sometimes combine the subject matter of 
two  or more related applications with different inventors into a single 
U.S. application  naming joint inventors.  The examiner will make the 
assumption, absent contrary evidence,  that the applicants are complying 
with their duty of disclosure if no information  is  provided relative to 
invention dates and common  ownership at the time  the later invention was 
made.  Such a claim for 35 U.S.C. 119(a)-(d) benefit  based upon the 
foreign filed applications is appropriate and 35 U.S.C. 119(a)-(d) 
benefit can be accorded based upon each of the foreign filed applications. 
        1. Definition of Common Ownership 

        In order to be disqualified as prior art under 
35 U.S.C. 103>(c)< **, the subject matter which would otherwise be prior 
art  to the claimed invention and the claimed invention must be commonly 
owned at  the time the claimed invention was made. 

        The term "commonly owned" is intended to mean that the subject 
matter  which would otherwise be prior art to the claimed invention and 
the claimed  invention are entirely or wholly owned by the same person, 
persons, or organization  at the time the claimed invention was made. If 
the person, persons, or organization  owned less than 100 percent of the 
subject matter which would otherwise be  prior art to the claimed 
invention, or less than 100 percent of the claimed  invention, then common 
ownership would not exist. Common ownership requires  that the person, 
persons, or organization own 100 percent of the subject matter  and 100 
percent of the claimed invention. As long as principal ownership rights 
to either the subject matter or the claimed invention reside in different 
persons  or organizations common ownership does not exist. A license of 
the claimed  invention to another by the owner where basic ownership 
rights are retained  would not defeat ownership. 

        The requirement for common ownership at the time the claimed 
invention  was made is intended to preclude obtaining ownership of subject 
matter after  the claimed invention was made in order to disqualify that 
subject matter as  prior art against the claimed invention. 

        The question of whether common ownership exists at the time the 
claimed  invention was made is to be determined on the facts of the 
particular case  in question. Actual ownership of the subject matter and 
the claimed invention  by the same individual or organization or a legal 
obligation to assign both  the subject matter and the claimed invention to 
the same individual or organization  must be in existence at the time the 
claimed invention was made in order for  the subject matter to be 
disqualified as prior art. A moral or unenforceable  obligation would not 
evidence common ownership. 

        Under 35 U.S.C. 103>(c)<**, an applicant's admission that subject 
matter  was developed prior to applicant's invention would not make the 
subject matter  prior art to applicant if the subject matter qualifies as 
prior art only under  sections 35 U.S.C. 102(f) or 35 U.S.C. 102(g), and 
if the subject matter and  the claimed invention were commonly owned at 
the time the invention was made.  See In re Fout, 675 F.2d 297, 213 USPQ 
532 (CCPA 1982), for a decision involving  an applicants' admission which 
was used as prior art against their application.  If the subject matter 
and invention were not commonly owned, an admission that  the subject 
matter is prior art would be usable under 35 U.S.C. 103. 
        The burden of establishing that subject matter is disqualified as 
prior  art under **>35 U.S.C. 103(c)< is intended to be placed and reside 
upon the  person or persons urging that the subject matter is 
disqualified. For example,  a patent applicant urging that subject matter 
is disqualified as prior art  under 35 U.S.C. 103>(c)<**,  would have the 
burden of establishing that it  was commonly owned at the time the claimed 
invention was made. The patentee  in litigation would likewise properly 
bear the same burden placed upon the  applicant before the Patent and 
Trademark Office. To place the burden upon  the patent examiner or the 
defendant in litigation would not be appropriate  since evidence as to 
common ownership at the time the claimed invention was  made might not be 
available to the patent examiner or the defendant in litigation,  but such 
evidence, if it exists, should be readily available to the patent 
applicant or the patentee. 

        In view of 35 U.S.C. 103>(c)<**, the Commissioner has reinstituted 
 in appropriate circumstances the practice of rejecting claims in commonly 
owned  applications of different inventive entities on the grounds of 
double patenting.  Such rejections can be overcome in appropriate 
circumstances by the filing  of terminal disclaimers. This practice has 
been judicially authorized. See  In re Bowers, 359 F.2d 886, 149 USPQ 57 
(CCPA 1966). The use of double patenting  rejections which then could be 
overcome by terminal disclaimers preclude patent  protection from being 
improperly extended while still permitting inventors  and their assignees 
to obtain the legitimate benefits from their contributions. 
        The following examples are provided for illustration only: 
- Ownership of both inventions must be 100% the same 

- Parent Company owns 100% of Subsidiaries A and B 

- inventions of A and B are commonly owned. 

- Parent Company owns 100% of Subsidiary A and 90% of subsidiary  B 
- inventions of A and B not commonly owned. 

- If same person owns subject matter and invention at time invention was 
made,  license to another may be made without the subject matter becoming 
prior art. 
- Different Government inventors retaining certain rights (e.g. foreign 
filing  rights) in separate inventions owned by Government precludes 
common ownership  of inventions. 

- Joint Venture 

Situation 

* Company A and Company B form Joint Venture Company C. Employees of A 
while  working for C with an obligation to assign inventions to C, invent 
invention  #1, Employees of B while working for C with an obligation to 
assign inventions  to C, invent invention #2, with knowledge of #1. 

        Question:  Are #1 and #2 commonly owned at the time the later 
invention  was made so as to preclude a rejection under 35 U.S.C. 102(f) 
or (g) in view  of 35 U.S.C. 103? 

        Answer:  Yes-An official of company C can sign an affidavit that C 
 owned both inventions. 

        The examiner must examine the application as to all grounds except 
 35 U.S.C. 102(f) and (g) as they apply through 35 U.S.C. 103 only if the 
application  file(s) establishes common ownership at the time the later 
invention was made.  Thus, it is necessary to look to the time at which 
common ownership exists.  If common ownership does not exist at the time 
the later invention was made,  the earlier invention is not disqualified 
as potential prior art under  35  U.S.C. 102>(f)< and (g) as they apply 
through 35 U.S.C. 103.  An invention  is *>"<made" when conception is 
complete as defined in Mergenthaler v. Scudder,  II App. D.C. 264, 1897 
C.D. 724 (D.C. Cir. 1897); In re Tansel, 253 F.2d 241,  117 USPQ 188 (CCPA 
1958). Common ownership at the time the invention was made  for purposes 
of obviating a 35 U.S.C. 102(f)/35 U.S.C. 103 or 35 U.S.C. 102(g)/35 
U.S.C. 103 rejection may be established irrespective of whether the 
invention  was made in the United States or abroad. The provisions of 35 
U.S.C. 104, however,  will continue to apply to other proceedings in the 
Patent and Trademark Office,  e.g. in an interference proceeding, with 
regard to establishing a date of invention  by knowledge or use thereof, 
or other activity with respect thereto, in a foreign  country. The foreign 
filing date will continue to be used for interference  purposes under 35 
U.S.C. 119(a)-(d) and 35 U.S.C. 365. 

        2.  Evidence Required to Establish Common Ownership 

        It is important to recognize just what constitutes sufficient 
evidence  to establish common ownership at the time the invention was 
made.  The common  ownership must be shown to exist at the time the later 
invention was made. 
 A statement of present common ownership is not sufficient. In re Onda, 
229  USPQ 235 (Comm'r Pat. 1985). 

  **>NATURE OF THE SHOWING< 

37 CFR 1.104. Nature of examination; examiner's action. 

***** 

        (e)   Co-pending applications will be considered by the examiner 
to  be owned by, or subject to an obligation of assignment to, the same 
person  if: (1) the application files refer to assignments recorded in the 
Patent and  Trademark Office in accordance with part 3 of this chapter 
which convey the  entire rights in the applications to the same person or 
organization; or (2)  copies of unrecorded assignments which convey the 
entire rights in the applications  to the same person or organization are 
filed in each of the applications; or 
(3) an affidavit or declaration by the common owner is filed which states 
that  there is common ownership and states facts which explain why the 
affiant or  declarant believes there is common ownership; or (4) other 
evidence is submitted  which establishes common ownership of the 
applications. In circumstances where  the common owner is a corporation or 
other organization, an affidavit or declaration  may be signed by an 
official of the corporation or organization empowered to  act on behalf of 
the corporation or organization. 

    37 CFR 1.104 specifies the nature of the showing necessary before the 
examiner  would consider copending applications to be owned by, or subject 
to an obligation  of assignment to, the same person for purposes of 35 
U.S.C. 102(f)/103, 35 U.S.C. 102(g)/103 and 37 CFR 1.106(d). If common 
ownership  does not exist at the time the later invention was made, the 
earlier invention  is not disqualified as potential prior art under 35 
U.S.C. 102(f) and (g) as  they apply through 35 U.S.C. 103. 

        The rule permits the necessary showing to be made in different 
alternative  ways. The necessary showing will be considered by the 
examiner to be present  if the application files refer to assignments 
which are recorded in the Patent  and Trademark Office in accordance with 
37 CFR Part 3 as long as the assignments  conveyed the entire rights in 
the applications to the same person or organization. 
        A second alternative which can be used, if assignments have not 
been  recorded, permits the examiner to consider copies of unrecorded 
assignments  filed in each of the applications by the applicants as long 
as the unrecorded  assignments convey the entire rights in the 
applications to the same person  or organization. The submission of copies 
of assignment agreements that were  filed in the Office and that were 
executed at the time the application was  filed would not be sufficient to 
disqualify the earlier invention as potential  prior art against the later 
invention unless the assignment document itself  contained language which 
indicate the relevant dates involved and established  that the inventions 
were commonly owned at the time the later invention was  made. Absent 
specific language in the assignment document which would establish  that 
the inventions claimed in the applications were commonly owned at the 
time the later invention was made, the attorney/applicants would have to 
supply  additional evidence or showings establishing common ownership at 
the time the  later invention was made. This additional evidence or 
showing might take the  form of an affidavit or declaration by the common 
owner which refers to the  assignment and further avers that the inventors 
of the subject matter of the  applications were all under an obligation to 
assign the inventions to the common  owner at the time the later invention 
was made, e.g., by virtue of employment agreements>.< The affidavit or 
declaration might also include copies  of the employment agreements 
although the submission of the copies of the employment  agreements would 
not be essential as long as unqualified averments are made  that the 
inventions were commonly owned at the time the later invention was  made. 

        A third alternative permits an affidavit or declaration to be 
filed  by the common owner stating that there is common ownership and 
stating facts  which explain why the affiant or declarant believes there 
is common ownership.  Under this alternative, sufficient facts will have 
to be presented in order  to enable the examiner to conclude that a prima 
facie case of common ownership  exists. It is expected that the most 
common form of submission to establish  common ownership at the time the 
later invention was made will be verified  statements, i.e., oaths or 
declarations from the common owner. It should be  emphasized that such 
oaths or declarations must be executed by the common owner  or someone 
empowered to act on behalf of the common owner. ** 

        The fourth alternative permits other evidence to be used which 
would  establish common ownership of the applications; e.g., a court 
decision determining  the 
owner. 

>SHOWING BY AFFIDAVIT OR DECLARATION; WHO MAY SIGN ON BEHALF OF AN 
ORGANIZATION< 

        The terms ``person" and ``organization" in the rule would include 
circumstances  where the ownership resided in more than one person and/or 
organization as  long as the applications are owned jointly by the same 
owners. Paragraph (e)  also provides that where the common owner is a 
corporation or other organization  an affidavit or declaration averring 
common ownership may be signed by an official  of the corporation or 
organization who is empowered to act on behalf of the  corporation or 
organization. >The requirements of 37 CFR 3.73(b) do not apply.<  A mere 
power of attorney to prosecute a patent application will not make an 
individual an official of the corporation or organization or empower the 
individual  to act on behalf of the corporation or organization for 
purposes of averring  common ownership. However, such an affidavit could 
be made by a patent attorney,  patent agent, or other individual if the 
attorney, agent, or other individual  has been appointed in writing by the 
corporation or organization as an official  of the corporation or 
organization specifically empowered to make affidavits  or declarations on 
its behalf averring to common ownership. In circumstances  where such a 
written appointment has been given to a patent attorney, patent  agent, or 
other individual, that person could then make affidavits or declarations 
averring to common ownership as long as the affidavit  or declaration 
referred to an attached copy of the written appointment and  averred that 
the authority is still in effect. Under this practice the original  signed 
copy of the written appointment would be retained by the affiant or 
declarant unless the Patent and Trademark Office specifically required it 
to  be filed. Unless some question arose as to the authority of the 
individual  to make the averment as to common ownership, the Patent and 
Trademark Office  would ordinarily not need to require the original signed 
copy of the written  appointment. While this practice should simplify the 
establishing of common  ownership by necessitating only one original 
signed written appointment, corporations  and other organizations must 
exercise care that the written appointment is  only given to those persons 
who are in a position to know that common ownership  does in fact exist 
and can therefore properly make affirmative representations  to that 
effect to the Patent and Trademark 
Office. 

        3. Examination of Applications of Different Inventive Entities 
Where  Common Ownership is not Established 

        See MPEP w 706.02(k) for examination of applications of different 
inventive  entities where common ownership is established. 

        Where the applications do not establish common ownership, the 
examiner  will: 

(a)   assume that the applications are not commonly owned; 

(b)   examine the applications on all grounds other than any conflict 
between  the applications; 

(c)   consider the applicability of 35 U.S.C. 102(f) /103 or 35 U.S.C. 
102(g)/103  if one application refers to the other or if one inventor is 
common to both  applications. If there is no cross-reference or common 
inventor between the  applications it would be inappropriate for the 
examiner to refer to one application  in the other in view of 35 U.S.C. 122; 

(d)   consider interference if appropriate; and 

(e)   suspend the later filed application if it is otherwise allowable 
until  the earlier filed application is abandoned or issues as a patent 
and then reject  the later filed application under 35 U.S.C. 102(e)/103, 
if appropriate. 

706.02(m) Form Paragraphs for Use in Rejections Under 35 U.S.C. 103 [R-2] 

        The following form paragraphs should be used in making the 
appropriate  rejections under 35 U.S.C. 103. 

W   7.20        Statement of Statutory Basis, 35 U.S.C. 103>(a)< 

        The following is a quotation of 35 U.S.C. 103>(a)< which forms the 
 basis for all obviousness rejections set forth in this Office action: 
        >(a)<A patent may not be obtained though the invention is not 
identically  disclosed or described as set forth in section 102 of this 
title, if the differences  between the subject matter sought to be 
patented and the prior art are such  that the subject matter as a whole 
would have been obvious at the time the  invention was made to a person 
having ordinary skill in the art to which said  subject matter pertains. 
Patentability shall not be negatived by the manner  in which the invention 
was made. 

        ** 

Examiner Note: 

        1.  The statute is not to be *>recited< in all Office actions. It 
is  only required in first actions on the merits employing 35 U.S.C. 103 
and final  rejections. Where the statute is being applied, but is not 
cited in an action  on the merits, use paragraph *>7.103.< 

        2 This paragraph should only be used ONCE in a given Office 
action. 
        3.  This paragraph must precede paragraphs 7.20.01 - 7.22 when 
this  paragraph is used to cite the statute in first actions and final 
rejections. 
W 7.20.01 >103(a)< Rejection Using Art Disqualified Under 102(f) *>or< (g) 
        Applicant has provided evidence in this file showing that the 
invention  was owned by, or subject to an obligation of assignment to, the 
same entity  as [1] at the time this invention was made.  Accordingly, [2] 
is disqualified  as prior art through 35 U.S.C. 102(f) or (g) in any 
rejection under 35 U.S.C.  103>(a)< in this application. However, this 
applied art additionally qualifies  as prior art under section [3] of 35 
U.S.C. 102 and accordingly is not disqualified  as prior art under 35 
U.S.C. 103>(a)<. 

        Applicant may overcome the applied art either by a showing under 
37  CFR 1.132 that the invention disclosed therein was derived from the 
invention  of this application, and is therefore, not the invention "by 
another", or by  antedating the applied art under 37 CFR 1.131. 

Examiner Note: 

        1.  This paragraph must be included following paragraph 7.20 in 
all  actions containing rejections under 35 U.S.C. 103>(a)< using art that 
is disqualified  under 103>(a)< through 102 (f) or (g), but which 
qualifies under another section  of 35 U.S.C. 102. 

        2.  In brackets 1 and 2, identify the commonly owned applied art 
(patent  or co-pending application). 

        3 In bracket 3, insert "(a)" or "(e)" as appropriate. 

 W  7.20.02   Joint Inventors, Common Ownership Presumed 

        This application currently names joint inventors. In considering 
patentability  of the claims under 35 U.S.C. 103>(a)<, the examiner 
presumes that the subject matter of the various claims was commonly owned 
at  the time any inventions covered therein were made absent any evidence 
to the  contrary. Applicant is advised of the obligations under 37 CFR 
1.56 to point  out the inventor and invention dates of each claim that was 
not commonly owned  at the time a later invention was made in order for 
the examiner to consider  the applicability of potential 35 U.S.C. 102(f) 
or (g) prior art under 35 U.S.C.  103>(a)<. 

Examiner Note: 

        This paragraph must be used in all applications with joint 
inventors 
(unless the claims are clearly restricted to only one claimed invention, 
e.g.,  only a single claim is presented in the application). 

W 7.21      Rejection, 35 U.S.C. 103>(a)< 

        Claim [1] rejected under 35 U.S.C. 103>(a)< as being unpatentable 
over  [2]. [3]>.< 

Examiner Note: 

        1.  This paragraph must be preceded by either paragraph 7.20 or by 
 paragraph *>7.103.< 

        2.  In bracket 3, an explanation of the rejection applying the 
Graham  >et al< v. Deere test must be provided. 

        3.  If this rejection relies upon art that is disqualified under 
35  U.S.C. 102(f) or (g) based upon common ownership of the invention, 
paragraph  7.20.01 must follow this paragraph. 

        4.  If this rejection is a provisional 35 U.S.C. 103>(a)< 
rejection  based upon a copending application that would comprise prior 
art under 35 U.S.C.  102(e) if patented, use paragraph 7.21.01 instead of 
this paragraph. 
W 7.21.01 Provisional Rejection, 35 U.S.C. 103>(a)<, Common 
Assignee or At Least One Common Inventor Only 

        Claim [1] provisionally rejected under 35 U.S.C. 103>(a)< as being 
 obvious over copending application no. [2] which has a common [3] with 
the  instant application. Based upon the earlier effective U.S. filing 
date of the  copending application, it would constitute prior art under 
35 U.S.C. 102(e) if patented. This provisional rejection under 
35 U.S.C. 103>(a)< is based upon a presumption of future patenting of the 
conflicting  application. [4]. 

        This provisional rejection might be overcome either by a showing 
under  37 CFR 1.132 that any invention disclosed but not claimed in the 
copending  application was derived from the inventor of this application 
and is thus not  the invention "by another", or by a showing of a date of 
invention prior to  the effective U.S. filing date of the copending 
application under 37 CFR 1.131. 
Examiner Note: 

        1.  This paragraph is used to provisionally reject claims not 
patentably  distinct from the disclosure in a copending application having 
an earlier U.S.  filing date and also having either a common assignee or 
at least one common  inventor. 

        2.  If the claimed invention is fully disclosed in the copending 
application,  use paragraph 7.15.01. 

        3.  In bracket 3, insert either "assignee" or "inventor". 
        4.  In bracket 4, insert explanation of obviousness. 

        5.  If the claimed invention is also claimed in the copending 
application,  a provisional obviousness double patenting rejection should 
additionally be  made using paragraph 8.33 and 8.37. 

        6.  If evidence of record indicates that the copending application 
 is also prior art under 35 U.S.C. 102(f) or (g) and the copending 
application  has not been disqualified as prior art in a 35 U.S.C. 
103>(a)< rejection based upon common ownership, a rejection should 
additionally  be made under 35 U.S.C. 103>(a)< using paragraph 7.21 (e.g., 
applicant has  named the prior inventor in response to a requirement made 
using paragraph  8.28). 

W 7.21.02 Rejection, 35 U.S.C. 103>(a)<, Common Assignee or At Least One 
Common  Inventor 

        Claim[1] rejected under 35 U.S.C. 103>(a)< as being obvious over 
[2]. 
        The applied reference has a common [3] with the instant 
application.  Based upon the earlier effective U.S. filing date of the 
reference, it constitutes  prior art under 35 U.S.C. 102(e). This 
rejection under 
35 U.S.C. 103>(a)< might be overcome either by a showing under 37 CFR 
1.132  that any invention disclosed but not claimed in the reference was 
derived from  the inventor of this application and is thus not the 
invention "by another",  or by a showing of a date of invention for the 
instant application of any unclaimed  subject matter prior to the 
effective U.S. filing date of the reference under  37 CFR 1.131. [4]. 

Examiner Note: 

        1.  This paragraph is used to reject over a patent with an earlier 
 filing date that discloses the claimed invention. The patent must have 
either  a common assignee or at least one common inventor. 

        2.  In bracket 3, insert either "assignee" or "inventor." 
        3 In bracket 4, insert explanation of obviousness. 

W 7.22      Rejection, 35 U.S.C. 103>(a)<, Further in View of 

        Claim [1] rejected under 35 U.S.C. 103>(a)< as being unpatentable 
over  [2] as applied to claim [3] above, and further in view of [4]. 
[5]>.< 
 Examiner Note: 

        1.  This paragraph must be preceded by paragraph 7.21. 

        2.  An explanation of the rejection applying the Graham >et al< v. 
 Deere test must be provided in bracket 5. 

W 7.23      Graham v. Deere, Test for Obviousness 

        The factual inquires set forth in Graham >et al< v. John Deere 
Co.,  148 USPQ 459, that are applied for establishing a background for 
determining  obviousness under 35 U.S.C. 103>(a)< are summarized as follows: 

        1.  Determining the scope and contents of the prior art*>.< 
        2.  Ascertaining the differences between the prior art and the 
claims  at issue**>.< 

        3.  Resolving the level of ordinary skill in the pertinent art. 
        4.  Considering objective evidence present in the application 
indicating  obviousness or unobviousness. 

Examiner Note: 

        This paragraph may be used, if appropriate, in response to an 
argument  of the use of Graham >et al< v. Deere. 

# 7.27      Rejection 35 U.S.C. 102 or 103>(a)< 

        Claim [1] rejected under 35 U.S.C. 102 ([2]) as anticipated by or, 
 in the alternative, under 35 U.S.C. 103>(a)< as obvious over [3]. [4]>.< 
Examiner Note: 

        1.  This paragraph is NOT intended to be commonly used as a 
substitute  for a rejection under 35 U.S.C. 102. In other words, a single 
rejection under  either 35 U.S.C. 102 or 35 U.S.C. 103>(a)< should be made 
whenever possible  using appropriate form paragraphs 7.15 to 7.19, 7.21 
and 7.22. Examples of circumstances where this paragraph may be used are 
as follows: 

        a>.<    When the interpretation of the claim(s) is or may be in 
dispute,  i.e. given one interpretation, a rejection under 35 U.S.C. 102 
is appropriate  and given another interpretation, a rejection under 
35 U.S.C. 103>(a)< is appropriate.  See MPEP w 2111-w 2117 for guidelines 
on  claim interpretation. 

        b.  When the reference discloses all the limitations of a claim 
except  a property or function, and the examiner cannot determine whether 
or not the  reference inherently possesses properties which anticipate or 
render obvious  the claimed invention but has basis for shifting the 
burden of proof to applicant  as in In re Fitzgerald et al, 
619 F.2d 67, 205 USPQ 594 (CCPA 1980).  See MPEP w 2112-w 2112.02>.< 
        c.  When the reference teaches a small genus which places a 
claimed  species in the possession of the public as in In re Schaumann, 
572 F.2d 312,  197 USPQ 5 (CCPA 1978), and the species would have been 
obvious even if the  genus were not sufficiently small to justify a 
rejection under 35 U.S.C. 102.  See MPEP # 2131.02 and # 2144.03 for more 
information on anticipation and obviousness  of species by a disclosure of 
a genus. 

        d.  When the reference teaches a product that appears to be the 
same  as, or an obvious variant of, the product set forth in a 
product-by-process  claim although produced by a different process. See In 
re Marosi, 218 USPQ  289 (Fed. Cir. 1983) and In re Thorpe, 227 USPQ 964 
(Fed. Cir. 1985).  See  also MPEP w 2113>.< 

        e.  When the reference teaches all claim limitations except a 
means  plus function limitation and the examiner is not certain whether 
the element  disclosed in the reference is an equivalent to the claimed 
element and therefore  anticipatory, or whether the prior art element is 
an obvious variant of the  claimed element.  See MPEP # 2183 -# 2184. 

        f.  When the ranges disclosed in the reference and claimed by 
applicant  overlap in scope but the reference does not contain a specific 
example within  the claimed range.  See the concurring opinion in Ex parte 
Lee, 31 USPQ 2d  1105 (Bd. Pat. App. & Inter. 1993). See MPEP 
w 2131.03. 

        2.  If the interpretation of the claim(s) renders the claim(s) 
indefinite,  a rejection under 35 U.S.C. 112, 2nd paragraph, may be 
appropriate. 
        3.  In bracket 2, insert the appropriate paragraph letter(s) in 
parenthesis. 
        4.  In bracket 4, a full explanation should be provided. 

        5.  This paragraph must be preceded by 7.07, one or more of 
paragraphs  7.08 to 7.14 as appropriate, and paragraph 7.20 or paragraph 
*>7.103.< 

>706.02(n)  Biotechnology Process Applications; 35 U.S.C. 103(b) [R-2] 

35 U.S.C. 103.  Conditions for patentability; non-obvious subject matter. 
***** 

        (b)(1) Notwithstanding subsection (a), and  upon timely  election 
by  the applicant for patent to proceed under this subsection, a 
biotechnological  process using or resulting in a composition of matter 
that is novel under section  102 and nonobvious under subsection (a) of 
this section shall be considered  nonobvious if-- 

        (A) claims to the process and the composition of matter are 
contained  in either the same application for patent or in separate 
applications having  the same effective filing date; and 

        (B) the composition of matter, and the process at the time it was 
invented,  were owned by the same person or subject to an obligation of 
assignment to  the same person. 

        (2) A patent issued on a process under paragraph (1)-- 

        (A) shall also contain the claims to the composition of matter 
used  in or made by that process, or 

        (B) shall, if such composition of matter is claimed in another 
patent,  be set to expire on the same date as such other patent, 
notwithstanding section  154 

        (3) For purposes of paragraph (1), the term `biotechnological 
process'  means-- 

        (A) a process of genetically altering or otherwise inducing a 
single-  or multi-celled organism to-- 

                (i) express an exogenous nucleotide sequence, 

                (ii) inhibit, eliminate, augment, or alter expression of 
an  endogenous nucleotide sequence or 

                (iii) express a specific physiological characteristic not 
naturally 
 associated with said organism; 

        (B) cell fusion procedures yielding a cell line that expresses a 
specific  protein, such as a monoclonal antibody; and 

        (C) a method of using a product produced by a process defined by 
subparagraph 
(A) or (B), or a combination of subparagraphs (A) and (B). 

***** 

        35 U.S.C. 103(b) is applicable to biotechnological processes only. 
 35 U.S.C. 103(b) precludes a rejection of process claims which involve 
the  use or making of certain nonobvious biotechnological compositions of 
matter  under 35 U.S.C. 103(a). 

        35 U.S.C. 103(b) requires that: 

        1.  the biotechnological process and composition of matter be 
contained  in either the same application or in separate applications have 
the same effective  filing date; 

        2.  both the biotechnological process and composition of matter be 
 owned or subject to an assignment to the same person at the time the 
process  was invented; 

        3.  a patent issued on the process also contain the claims to the 
composition  of matter used in or made by the process, or, if the process 
and composition  of matter are in different patents, the patents expire on 
the same date; 
        4.  the biotechnological process falls within the definition set 
forth  in 35 U.S.C. 103(b); and 

        5.  a timely election be made to proceed under the provisions of 
35  U.S.C. 103(b). 

        An election to proceed under 35 U.S.C. 103(b) shall be made by way 
 of petition under 37 CFR 1.182.  The petition must establish that all the 
requirements  set forth in 35 U.S.C. 103(b) have been satisfied. 

        An election will normally be considered timely if it is made no 
later  than the earlier of either (1) the payment of the issue fee, or (2) 
the filing  of an appeal brief in an application which contains a 
composition of matter  claim which has not been rejected under 35 U.S.C. 
102 or 103. 

        In an application where at least one composition of matter claim 
has  not been rejected under 35 U.S.C.  102 or 103, a 35 U.S.C. 103(b) 
election  may be made by submitting the petition and an amendment 
requesting entry of  process claims which correspond to the composition of 
matter claim. 
        For applications pending on or after November 1, 1995, in which 
the  issue fee has been paid prior to March 26, 1996, the timeliness 
requirement  for an election under 35 U.S.C. 103(b) will be considered 
satisfied if the  conditions of 37 CFR 1.312(b) are met.  However, if a 
patent is granted on  an application entitled to the benefit of 35 U.S.C. 
103(b) without an election  having been made as a result of error without 
deceptive intent, patentees may  file a reissue application to permit 
consideration of process claims which  qualify for 35 U.S.C. 103(b) 
treatment. 

        See MPEP  2116.01 for a discussion of the Federal Circuit's 
decisions  in In re Ochiai, 71 F.3d 1565, 37 USPQ 1127 (Fed. Cir. 1995) 
and In re Brouwer,  77 F.3d 422, 37 USPQ2d 1663 (Fed. Cir. 1996) which 
address the general issue  of whether an otherwise conventional process 
could be patented if it were limited  to making or using a nonobvious 
product.  In view of the Federal Circuit's  decisions in Ochiai and 
Brouwer, an applicant's need to rely upon 35 U.S.C.  103(b) should be 
rare.  See also 1184 O G  86 (Comm'r Pat. 1996). See 35 U.S.C.  282 for 
the effect of a determination of nonobviousness under 35 U.S.C. 103(b)(1) 
on the presumption of validity.< 


706.03      Rejections Not Based on Prior Art [R-2] 


        The primary object of the examination of an application is to 
determine  whether or not the claims define a patentable advance over the 
prior art. This  consideration should not be relegated to a secondary 
position while undue emphasis  is given to nonprior art or "technical" 
rejections. Effort in examining should  be concentrated on truly essential 
matters, minimizing or eliminating effort  on technical rejections which 
are not really critical. Where a major technical  rejection is proper 
(e.g., lack of proper disclosure, undue breadth, utility,  etc.) such 
rejection should be stated with a full development of the reasons  rather 
than by a mere conclusion coupled with some sterotyped expression. 
        Rejections based on nonstatutory subject matter are explained in 
MPEP  # 706.03(a), # 2105, # 2106 - 
# 2106.02, and # 2107 - # 2107.02. Rejections based on subject matter 
barred  by the Atomic Energy Act are explained in MPEP # 706.03(b). 
Rejections based  on duplicate claims are addressed in MPEP # 706.03(k), 
and double patenting  rejections are addressed in MPEP 
# 804. See MPEP # 706.03(o) for rejections based on new matter. Foreign 
filing  without a license is discussed in MPEP # *>706.03(s)<. Disclaimer, 
after interference  or public use proceeding, res judicata, and reissue 
are explained in MPEP #  706.03(u) to # 706.03(x). Rejections based on 35 
U.S.C. 112 are discussed in  MPEP # 2161 - # 2174. IF THE LANGUAGE IN THE 
FORM PARAGRAPHS ARE INCORPORATED IN  THE LETTER TO STATE THE REJECTION, 
THERE WILL BE LESS CHANCE OF A MISUNDERSTANDING  AS TO THE GROUNDS OF 
REJECTION. 


706.03(a) Rejections under 35 U.S.C. 101 [R-1] 


        >Patents are not granted for all new and useful inventions and 
discoveries.  The subject matter of the invention or discovery must come 
within the boundaries  set forth by 35 U.S.C. 101, which permits patents 
to be granted only for ``any  new and useful process, machine, 
manufacture, or composition of matter, or  any new and useful improvement 
thereof." 

        The term "process" as defined in 35 U.S.C. 100, means process, art 
 or method, and includes a new use of 

a known process, machine, manufacture, composition of matter, or material. 
        See MPEP # 2105 for patentability of microorganisms and MPEP # 
2106  - # 2106.02 for patentability of mathematical algorithms or computer 
programs. 
LACK OF UTILITY 

        A rejection on the ground of lack of utility includes the more 
specific  grounds of inoperativeness, involving perpetual motion, 
frivolous, fraudulent,  and against public policy. The statutory basis for 
this rejection is 35 U.S.C. 101. See MPEP # 706.03(a)(1) for guidelines 
governing rejections  for lack of utility. See MPEP # 2107 - # 2107.02 for 
legal precedent governing  the utility requirement. 

        Decisions have determined the limits of the statutory classes. 
Examples  of subject matter not patentable under the Statute follow: 

PRINTED MATTER 

        For example, a mere arrangement of printed matter, though 
seemingly  a "manufacture," is rejected as not being within the statutory 
classes. See  In re Miller, 
164 USPQ 46, 57 CCPA 809 (1969); Ex parte Gwinn, 
112 USPQ 439 (Bd. App. 1955); and In re Jones, 
153 USPQ 77, 54 CCPA 1218 (1967). 

NATURALLY OCCURRING ARTICLE 

        Similarly, a thing occurring in nature, which is substantially 
unaltered,  is not a "manufacture." A shrimp with the head and digestive 
tract removed  is an example. Ex parte Grayson, 51 USPQ 413 (Bd. App. 
1941). 

SCIENTIFIC PRINCIPLE 

        A scientific principle, divorced from any tangible structure, can 
be  rejected as not within the statutory classes.  O'Reilly v. Morse, 15 
Howard  62. 

        This subject matter is further limited by the Atomic Energy Act 
explained  in MPEP # 706.03(b). Use Form Paragraphs 7.04 through 7.05.03 
to reject under 35 U.S.C. 101. 

W 7.04       Statement of Statutory Basis, 35 U.S.C. 101: 

35 U.S.C. 101 reads as follows: 

"Whoever invents or discovers any new and useful process, machine, 
manufacture,  or composition of matter or any new and useful improvement 
thereof, may obtain  a patent therefore, subject to the conditions and 
requirements of this title". 
Examiner Note: 

        This paragraph must precede the first use of 35 U.S.C. 101 in all 
first  actions on the merits and final rejections. 

W 7.05      Rejection, 35 U.S.C. 101, "Heading" only (Utility, 
Non-Statutory,  Inoperative) 

Claim[1] rejected under 35 U.S.C.  101 because 

Examiner Note: 

        1.  This form paragraph must be followed by any one of paragraphs 
7.05.01-  7.05.03 or another appropriate reason. 

        2.  Explain the rejection following the recitation of the statute 
and  the use of form paragraphs 7.05.01-7.05.03 or other reason. 

        3.  See MPEP # 706.03(a) and # 2105 - # 2107.02 for other 
situations. 
        4.  This paragraph must be preceded by paragraph 7.04 in first 
actions  and final rejections. 

W 7.05.01 Rejection, 35 U.S.C. 101, Non-Statutory 

the claimed invention is directed to non-statutory subject matter. [1]. 
Examiner Note: 

        In bracket 1, insert identification of non-statutory subject 
matter. 
 W  7.05.02   Rejection, 35 U.S.C. 101, Utility Lacking 

 the claimed invention lacks patentable utility. [1]. 

Examiner Note: 

        In bracket 1, provide explanation of lack of utility, such as, for 
 example, that which is frivolous, fraudulent, against public policy, or 
lacks  proper chemical specificity, etc. See MPEP # 706.03(a) and 
# 2105 - # 2107.02. 

W 7.05.03 Rejection, 35 U.S.C. 101, Inoperative 

the disclosed invention is inoperative and therefore lacks utility. [1]. 
Examiner Note: 

        In bracket 1, explain why invention is inoperative.< 


706.03(a)(1)    Guidelines For Examination of Applications for Compliance 
With the Utility Requirement of 35 U.S.C. 101 and 35 U.S.C. 112 [R-2] 

        The following guidelines establish the policies and procedures to 
be  followed by Office personnel when examining applications for 
compliance with  the utility requirements of 35 U.S.C. 101 and 35 U.S.C. 
112. The guidelines  also address issues that may arise during examination 
of applications claiming  protection for inventions in the field of 
biotechnology and human therapy. 
 See MPEP # 2107- # 2107.02 for a discussion of the legal precedent 
governing  utility rejections. 

GUIDELINES 

        Office personnel must adhere to the following procedures when 
reviewing  applications for compliance with the useful invention (utility) 
requirement  of 35 U.S.C. 101 and 35 U.S.C. 112, first paragraph: 

(1)   Determine what the applicant has **>invented and is seeking to 
patent:< 
(a)   Ensure that the **>claims define< statutory subject matter (e.g., a 
process,  a machine, a manu- facture, or a composition of matter); and 

(b)   **>Review the complete specification, including the detailed 
description  of the invention, any specific embodiments that have been 
disclosed, the claims,  and any specific utilities that have been asserted 
for the invention.< 
(2)   Review the specification and claims to determine if the applicant 
has  asserted any credible utility for the claimed invention. 

(a)   If the applicant has asserted that the claimed invention is useful 
for  any particular purpose (i.e., a "specific utility") and that 
assertion would  be considered credible by a person of ordinary skill in 
the art, do not impose  a rejection based on lack of utility. Credibility 
is to be assessed from the  perspective of one of ordinary skill in the 
art in view of any evidence of  record (e.g., data, statements, opinions, 
references, etc.) that is relevant  to the applicant's assertions. An 
applicant must provide only one credible  assertion of specific utility 
for any claimed invention to satisfy the utility  requirement. 

(b)   If the invention has a well-established utility, regardless of any 
assertion  made by the applicant, do not impose a rejection based on lack 
of utility.  An invention has a well-established utility if a person of 
ordinary skill in  the art would immediately appreciate why the invention 
is useful based on the  characteristics of the invention (e.g., properties 
of a product or obvious  application of a process). 

(c)   If the applicant has not asserted any specific utility for the 
claimed  invention and it does not have 
a well-established utility, impose a rejection under 
35 U.S.C. 101, emphasizing that the applicant has not disclosed a specific 
 utility for the invention. Also impose a separate rejection under 35 
U.S.C.  112, first paragraph, on the basis that the applicant has not 
shown how to  use the invention due to lack of disclosure of a specific 
utility. The 35 U.S.C.  101 and 112 rejections should shift the burden to 
the applicant to: 
(i)   explicitly identify a specific utility for the claimed invention, 
and 

(ii)    indicate where support for the asserted util-     ity can be found 
 in the specification. 

        Review the subsequently asserted utility by the applicant using 
the  standard outlined in paragraph (2)(a) above, and ensure that it is 
fully supported  by the original disclosure. 

(3)   If no assertion of specific utility for the claimed invention made 
by  the applicant is credible, and the claimed invention does not have a 
well-established  utility, reject the claim(s) under 35 U.S.C. 101 on the 
grounds that the invention  as claimed lacks utility. Also reject the 
claims under 35 U.S.C. 112, first  paragraph, on the basis that the 
disclosure fails to teach how to use the invention  as claimed. The 35 
U.S.C. 112, first paragraph, rejection imposed in conjunction  with a 35 
U.S.C. 101 
rejection should incorporate by reference the grounds of the corresponding 
 35 U.S.C. 101 rejection and should be set out as a rejection distinct 
from  any other rejection under 35 U.S.C. 112, first paragraph, not based 
on lack  of utility for the claimed invention. 

To be considered appropriate by the Office, any rejection based on lack of 
 utility must include the following elements: 

(a)   A prima facie showing that the claimed invention has no utility.  A 
prima  facie showing of no utility must establish that it is more likely 
than not  that a person skilled in the art would not consider credible any 
specific utility  asserted by the applicant for the claimed invention. A 
prima facie showing  must contain the following elements: 

(i)   a well-reasoned statement that clearly sets forth the reasoning used 
 in concluding that the asserted utility is not credible; 

(ii)    support for factual findings relied upon in reaching this 
conclusion;  and 

(iii)     support for any conclusions regarding evidence provided by the 
applicant  in support of an asserted utility. 

(b)   Specific evidence that supports any fact-based assertions needed to 
establish  the prima facie showing. Whenever possible, Office personnel 
must provide documentary  evidence (e.g., scientific or technical 
journals, excerpts from treatises or  books, or U.S. or foreign patents) 
as the form of support used in establishing  the factual basis of a prima 
facie showing of no utility according to items 
(a)(ii) and (a)(iii) above. If documentary evidence is not available, 
Office  personnel shall note this fact and specifically explain the 
scientific basis  for the factual conclusions relied on in sections 
(a)(ii) and (a)(iii). 
(4)   A rejection based on lack of utility should not be maintained if an 
asserted  utility for the claimed invention would be considered credible 
by a person  of ordinary skill in the art in view of all evidence of 
record. 

        Once a prima facie showing of no utility has been properly 
established,  the applicant bears the burden of rebutting it. The 
applicant can do this by  amending the claims, by providing reasoning or 
arguments, or by providing evidence  in the form of a declaration under 
37 CFR 1.132 or a printed publication, that rebuts the basis or logic of 
the  prima facie showing. If the applicant responds to the prima facie 
rejection,  Office personnel shall review the original disclosure, any 
evidence relied  upon in establishing the prima facie showing, any claim 
amendments and any  new reasoning or evidence provided by the applicant in 
support of an asserted  utility. It is essential for Office personnel to 
recognize, fully consider  and respond to each substantive element of any 
response to a rejection based  on lack of utility. Only where the totality 
of the record continues to show  that the asserted utility is not credible 
should a rejection based on lack  of utility be maintained. 

        If the applicant satisfactorily rebuts a prima facie rejection 
based  on lack of utility under 35 U.S.C. 101, withdraw the 35 U.S.C. 101 
rejection  and the corresponding rejection imposed under 35 U.S.C. 112, 
first paragraph,  per paragraph (3) above. 

        Office personnel are reminded that they must treat as true a 
statement  of fact made by an applicant in relation to an asserted 
utility, unless countervailing  evidence can be provided that shows that 
one of ordinary skill in the art would  have a legitimate basis to doubt 
the credibility of such a statement. Similarly,  Office personnel must 
accept an opinion from a qualified expert that is based  upon relevant 
facts whose accuracy is not being questioned; it is improper  to disregard 
the opinion solely because of a disagreement over the significance  or 
meaning of the facts offered. 


706.03(b) Barred by Atomic Energy Act [R-1] 


        >A limitation on what can be patented is imposed by the Atomic 
Energy  Act of 1954. Section 151(a) (42 U.S.C. 2181a) thereof reads in 
part as follows: 
        No patent shall hereafter be granted for any invention or 
discovery  which is useful solely in the utilization of special nuclear 
material or atomic  energy in an atomic weapon. 

        The terms "atomic energy" and "special nuclear material" are 
defined  in Section 11 of the Act (42 U.S.C. 2014). 

        Sections 151(c) and 151(d) (42 U.S.C. 2181c and d) set up 
categories  of pending applications relating to atomic energy that must be 
brought to the  attention of the Department of Energy. Under 37 CFR 1.14(c), 
applications for patents which disclose or which appear to disclose, or 
which  purport to disclose, inventions or discoveries relating to atomic 
energy are  reported to the Department of Energy and the Department will 
be given access  to such applications, but such reporting does not 
constitute a determination  that the subject matter of each application so 
reported is in fact useful or  an invention or discovery or that such 
application in fact discloses subject  matter in categories specified by 
the Atomic Energy Act. 

        All applications received in the Patent and Trademark Office are 
screened  by Group 2200 personnel, under 37 CFR 1.14(c), in order for the 
Commissioner  to fulfill his responsibilities under section 151(d) (42 
U.S.C. 2181d) of the  Atomic Energy Act. Papers subsequently added must be 
inspected promptly by  the examiner when received to determine whether the 
application has been amended  to relate to atomic energy and those so 
related must be promptly forwarded  to Licensing and Review in Group 2200. 

        All rejections based upon sections 151(a)(42 U.S.C. 2181a), 152 
(42  U.S.C. 2182), and 155 (42 U.S.C. 2185) of the Atomic Energy Act must 
be made  only by Group 2200 personnel.< 


706.03(c) Rejections Under 35 U.S.C. 112, First Paragraph [R-1] 


        >Rejections based on the first paragraph of 35 U.S.C. 112 are 
discussed  in MPEP # 2161 - # 2165.04.  For a discussion of the utility 
requirements of  35 U.S.C. 112, first paragraph, and 35 U.S.C. 101, see 
MPEP # 706.03(a)(1)  and # 2107 - # 2107.02. The appropriate Form 
Paragraphs 7.31.01 through 7.33.01  should be used in making rejections 
under 35 U.S.C. 112, first paragraph. 
W 7.31.01 Rejection, 35 U.S.C. 112, 1st Paragraph, Description 
Requirement,  Including New Matter Situations 

        Claim[1] rejected under 35 U.S.C. 112, first paragraph, as the 
specification  does not contain a written description of the claimed 
invention, in that the disclosure does not reasonably convey to one 
skilled  in the relevant art that the inventor(s) had possession of the 
claimed invention  at the time the application was filed. [2]. 

Examiner Note: 

        1.  In bracket 2, identify (by suitable reference to page and line 
 numbers and/or drawing figures) the subject matter not described in the 
application  as filed, and provide an explanation of your position. The 
explanation should  include any questions examiners asked which were not 
satisfactorily resolved  and consequently raise doubt as to possession of 
the claimed invention at the  time of filing. 

W 7.31.02 Rejection, 35 U.S.C. 112, 1st Paragraph, Enablement 

        Claim[1] rejected under 35 U.S.C. 112, first paragraph, because 
the  specification does not enable any person skilled in the art to which 
it pertains,  or with which it is most nearly connected, to [2] the 
invention.  [3]. 
Examiner Note: 

        1.  If the problem is one of scope, form paragraph 7.31.03 should 
be  used. 

        2.  In bracket 2, fill in only the appropriate portion of the 
statute,  i.e., one of the following "make,"  "use," or  "make and use." 

        3.  In bracket 3, identify the claimed subject matter for which 
the  specification is not enabling along with an explanation as to why the 
specification  is not enabling. The explanation should include any 
questions posed by the  examiner which were not satisfactorily resolved 
and consequently raise doubt  as to enablement. 

        4.  Where an essential component or step of the invention is not 
recited  in the claims, use form paragraph 7.33.01. 

W 7.31.03 Rejection, 35 U.S.C. 112, 1st Paragraph, Scope of Enablement 
        Claim[1] rejected under 35 U.S.C. 112, first paragraph, because 
the  specification, while being enabling for [2], does not reasonably 
provide enablement  for [3].  The specification does not enable any person 
skilled in the art to  which it pertains, or with which it is most nearly 
connected, to [4] the invention  commensurate in scope with these claims. [5]. 

Examiner Note: 

        1.  This paragraph is to be used when the scope of the claims is 
not  commensurate with the scope of the enabling disclosure. 

        2.  In bracket 2, identify the claimed subject matter for which 
the  specification is enabling. This may be by reference to specific 
portions of  the specification. 

        3.  In bracket 3, identify aspect(s) of the claim(s) for which the 
 specification is not enabling. 

        4.  In bracket 4, fill in only the appropriate portion of the 
statute,  i.e., one of the following:  "make"  "use", or  "make and use". 

        5.  In bracket 5, identify the problem along with an explanation 
as  to why the specification is not enabling.  The explanation should 
include any  questions posed by the examiner which were not satisfactorily 
resolved and  consequently raise doubt as to enablement. 

W 7.31.04 Rejection, 35 U.S.C. 112, 1st Paragraph, Best Mode Requirement 
        Claim[1] rejected under 35 U.S.C. 112, first paragraph, because 
the  best mode contemplated by the inventor has not been disclosed. 
Evidence of  concealment of the best mode is based upon [2]. 

Examiner Note: 

        1.  In bracket 2, insert the basis for holding that the best mode 
has  been concealed, e.g., the quality of applicant's disclosure is so 
poor as to  effectively result in concealment. 

        2.  Use of this form paragraph should be rare. See MPEP 
# 2165-# 2165.04. 

W 7.33.01 Rejection, 35 U.S.C. 112, 1st Paragraph, Essential Subject 
Matter  Missing From Claims (Enablement) 

        Claim[1] rejected under 35 U.S.C. 112, first paragraph, as based 
on  a disclosure which is not enabling.  [2] critical or essential to the 
practice  of the invention, but not included in the claim(s) is not 
enabled by the disclosure. 
 In re Mayhew, 527 F.2d 1229, 188 USPQ 356 (CCPA 1976).  [3]. 

Examiner Note: 

        1.  In bracket 2, recite the subject matter omitted from the 
claims. 
        2.  In bracket 3, give the rationale for considering the omitted 
subject  matter critical or essential. 

        3.  The examiner shall cite the statement, argument, date, 
drawing,  or other evidence which demonstrates that a particular feature 
was considered  essential by the applicant, is not reflected in the claims 
which are rejected.< 

706.03(d) Rejections Under 35 U.S.C. 112, Second Paragraph [R-2] 


        Rejections under 35 U.S.C. 112, second paragraph, are discussed in 
 MPEP # 2171 - # 2174.  Form paragraphs 7.34 through 7.35.01 should be 
used  to reject under 
35 U.S.C. 112, second paragraph. 

W 7.34      Rejection, 35 U.S.C. 112, 2nd Paragraph, Failure 
To Claim Applicant>'<s Invention 

        Claim[1] rejected under 35 U.S.C. 112, second paragraph, as 
failing  to set forth the subject matter which applicant(s) regard as 
their invention.  Evidence that claim [2] fail(s) to correspond in scope 
with that which applicant(s)  regard as the invention can be found in 
paper no. [3] filed [4]. In that paper,  applicant has stated [5], and 
this statement indicates that the invention is  different from what is 
defined in the claim(s) because [6]. 

Examiner Note*>:< 

        >1.< This paragraph is to be used only where applicant has stated, 
 somewhere other than in the application, as filed, that the invention is 
something  different from what is defined in the claim(s). 

        2.  In brackets 3 and 4, identify the submission by applicant 
(which  is not the application, as filed, but may be in the remarks by 
applicant, in  the brief, in an affidavit, etc.) by paper no. and the date 
the paper was filed  in the PTO. 

        3.  In bracket 5, set forth what applicant has stated in the 
submission  to indicate a different invention. 

        4.  In bracket 6, explain how the statement indicated an invention 
 other than what is being claimed. 

W 7.34.01 Rejection, 35 U.S.C. 112, 2nd Paragraph, Failure 
To Particularly Point Out and Distinctly Claim (Indefinite) 

        Claim[1] rejected under 35 U.S.C. 112, second paragraph, as being 
indefinite  for failing to particularly point out and distinctly claim the 
subject matter  which applicant regards as the invention. 

Examiner Note: 

        This paragraph should be followed by one or more of the following 
form  paragraphs 7.34.02 - 7.34.06, as applicable. If none of these form 
paragraphs  are appropriate, a full explanation of the deficiency of the 
claims should  be supplied. Whenever possible, identify the particular 
term(s) or limitation(s)  which render the claim(s) indefinite and state 
why such term or limitation  renders the claim indefinite. If the scope of 
the claimed subject matter can  be determined by one having ordinary skill 
in the art, a rejection using this  form paragraph would not be 
appropriate. See MPEP>w<w 2171-*2174 for guidance.  See also form 
paragraph 17.07 for pro se applicants. 

W 7.34.02 Terminology Used Inconsistent With Accepted Meaning 

        While applicant may be his or her own lexicographer, a term in a 
claim  may not be given a meaning repugnant to the usual meaning of that 
term, In  re Hill, 161 F.2d 367, 73 USPQ 482 (CCPA 1947). The term [1] in 
claim [2] is  used by the claim to mean [3], while the accepted meaning is 
[4]. 
Examiner Note: 

        1.  In bracket 3, point out the meaning that is assigned to the 
term  by applicant's claims, taking into account the entire disclosure. 
        2 In bracket 4, point out the accepted meaning of the term. 
Support  for the examiner's stated accepted meaning should be provided 
through the citation  of an appropriate reference source, e.g. text book 
or dictionary.  See MPEP  w 2173.05(a). 

        3.  This form paragraph must be preceded by form paragraph 
7.34.01. 
W 7.34.03 Relative Term - Term of Degree Rendering Claim Indefinite 
        The term [1] in claim [2] is a relative term which renders the 
claim  indefinite.  The term [1] is not defined by the claim, the 
specification does  not provide a standard for ascertaining the requisite 
degree, and one of ordinary  skill in the art would not be reasonably 
apprised of the scope of the invention.  [3]. 

Examiner Note: 

        1.  In bracket 3, explain which parameter, quantity, or other 
limitation  in the claim has been rendered indefinite by the use of the 
term appearing  in bracket 1. 

        2.  This form paragraph must be preceded by form paragraph 
7.34.01. 
W 7.34.04 Broader Range/Limitation and Narrow Range/Limitation In Same 
Claim 

        A broad range or limitation together with a narrow range or 
limitation  that falls within the broad range or limitation (in the same 
claim) is considered  indefinite, since the resulting claim does not 
clearly set forth the metes  and bounds of the patent protection desired. 
Note the explanation given by  the Board of Patent Appeals and 
Interferences in Ex parte Wu, 10 USPQ2d 2031,  2033 (Bd. Pat. App. & 
Inter. 1989), as to where broad language is followed  by "such as" and 
then narrow language.  The Board stated that this can render  a claim 
indefinite by raising a question or doubt as to whether the feature 
introduced by such language is (a) merely exemplary of the remainder of 
the  claim, and therefore not required, or (b) a required feature of the 
claims. 
 Note also, for example, the decisions of Ex parte Steigewald, 131 USPQ 74 
(Bd. App. 1961); Ex parte Hall, 83 USPQ 38 (Bd. App. 1948); and Ex parte 
Hasche,  86 USPQ 481 (Bd. App. 1949).  In the present instance, claim [1] 
recites the  broad recitation [2], and the claim also recites [3] which is 
the narrower  statement of the range/limitation. 

Examiner Note: 

        1.  In bracket 2, insert the broader range/limitation and where it 
 appears in the claim; in bracket 3, insert the narrow range/limitation 
and  where it appears. This form paragraph may be modified to fit other 
instances  of indefiniteness in the clams. 

        2.  This form paragraph must be preceded by form paragraph 
7.34.01. 
W 7.34.05 Lack of Antecedent Basis In the Claims 

        Claim [1] recites the limitation [2] in [3]. There is insufficient 
 antecedent basis for this limitation in the claim. 

Examiner Note: 

        1.  In bracket  2, insert the limitation which lacks antecedent 
basis,  for example  "said lever" or  "the lever." 

        2 In bracket 3, identify where in the claim(s) the limitation 
appears,  for example, "line 3", "the 3rd paragraph of the claim", "the 
last 2 lines  of the claim", etc. 

        3.  This form paragraph must be preceded by form paragraph 
7.34.01. 
W 7.34.06 Use Claims 

        Claim [1] provides for the use of [2], but>,< since the claim does 
 not set forth any steps involved in the method/process, it is unclear 
what  method/process applicant is intending to cover. A claim is 
indefinite where  it merely recites a use without any active, positive 
steps delimiting how this  use is actually practiced. 

        >Claim [3] is rejected under 35 U.S.C. 101 because the claimed 
recitation  of a use, without setting forth any steps involved in the 
process, results  in an improper definition of a process, i.e., results in 
a claim which is not  a proper process claim under 35 U.S.C. 101. See for 
example 
Ex parte Dunki, 153 USPQ 678 (Bd. App. 1967) and Clinical Products, Ltd v. 
 Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966).< 

Examiner Note: 

        1.  In bracket  2, insert what is being used. For example, insert 
 "the monoclonal antibodies of claim 4," where the claim recites  "a 
method  for using monoclonal antibodies of claim 4 to purify interferon." 
        2.  ** See also MPEP 2173.05(q). 

        3.  This form paragraph must be preceded by form paragraph 
7.34.01. 
W 7.35      Rejection, 35 U.S.C. 112, 2nd Paragraph, Failure to 
Particularly  Point Out and Distinctly Claim - Omnibus Claim 

        Claim [1] rejected under 35 U.S.C. 112, second paragraph, as being 
 indefinite in that it fails to point out what is included or excluded by 
the  claim language.  This claim is an omnibus type claim. 

Examiner Note: 

        1.  Use this paragraph to reject an "omnibus" type claim. No 
further  explanation is necessary. 

        2.  See MPEP w 1302.04(b) for cancellation of such a claim by 
examiner's  amendment upon allowance. 

        3.  An example of an omnibus claim is:  "A device substantially as 
 shown and described." 

>W   7.35.01 Trademark or Trade Name as a Limitation  in the Claim 
        Claim [1] contains the trademark/trade name [2]. Where a trademark 
 or trade name is used in a claim as a limitation to identify or describe 
a  particular material or product, the claim does  not comply with the 
requirements  of 35 U.S.C. 112, second paragraph.  Ex parte Simpson, 21 8 
USPQ 1020 (Bd.  App. 1 982). The claim scope is uncertain since the 
trademark or trade name  cannot be used properly to identify any 
particular material or product.  A  trademark or  trade name is used to 
identify  a  source of goods, and not the  goods themselves. Thus, a 
trademark or trade name does not identify or describe  the goods 
associated with the trademark or trade name. In the present case,  the 
trademark/trade name is used to identify/describe [3] and, accordingly, 
the identification/description is indefinite. 

Examiner Note: 

        1.  In bracket 2, insert the trademark/trade name and where it is 
used  in the claim. 

        2.  In bracket  3, specify the material or product which is 
identified  or described in the claim by the trademark/trade name.< 


706.03(k) Duplicate Claims [R-1] 


        >Inasmuch as a patent is supposed to be limited to only one 
invention  or, at most, several closely related indivisible inventions, 
limiting an application  to a single claim, or a single claim to each of 
the related inventions might  appear to be logical as well as convenient. 
However, court decisions have confirmed  applicant's right to restate 
(i.e., by plural claiming) the invention in a  reasonable number of ways. 
Indeed, a mere difference in scope between claims  has been held to be enough. 

        Nevertheless, when two claims in an application are duplicates, or 
 else are so close in content that they both cover the same thing, despite 
a  slight difference in wording, it is proper after allowing one claim to 
reject  the other as being a substantial duplicate of the allowed claim. 

        See MPEP Chapter 800 for double patenting rejections of inventions 
 not patentable over each other.< 


706.03(m) Nonelected Inventions [R-1] 


        >See MPEP # 821 to # 821.03 for treatment of claims held to be 
drawn  to nonelected inventions.< 


706.03(o) New Matter [R-2] 


35 U.S.C. 132. Notice of rejection; reexamination. 

        Whenever, on examination, any claim for a patent is rejected, or 
any  objection or requirement made, the Commissioner shall notify the 
applicant  thereof, stating the reasons for such rejection, or objection 
or requirement,  together with such information and references as may be 
useful in judging of  the propriety of continuing the * prosecution of his 
application; and if after  receiving such notice, the applicant persists in 
his claim for a patent, with or without amendment, the application shall 
be  reexamined. No amendment shall introduce new matter into the 
disclosure of  the invention. 

        In amended cases, subject matter not disclosed in the original 
application  is sometimes added and a claim directed thereto. Such a claim 
is rejected on  the ground that it recites elements without support in the 
original disclosure  under 35 U.S.C. 112, first paragraph, >Waldemar Link, 
GmbH & Co. v. Osteonics  Corp. 32, F.3d 556, 559, 31 USPQ2d 1855, 1857 
(Fed. Cir. 1994);< In re Rasmussen,  650 F.2d 1212, 211 USPQ 
323 (CCPA 1981). See MPEP # 2163.06 - # 2163.07(b) for a discussion of the 
 relationship of new matter to 
35 U.S.C. 112, first paragraph. New matter includes not only the addition 
of  wholly unsupported subject matter, but may also include adding 
specific percentages  or compounds after a broader original disclosure, or 
even the omission of a  step from a method. See MPEP # 608.04 to # 
608.04(c). See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) and MPEP 
# 2163.05 for guidance in determining whether the addition of specific 
percentages  or compounds after a broader original disclosure constitutes 
new matter. 
        In the examination of an application following amendment thereof, 
the  examiner must be on the alert to detect new matter. 35 U.S.C. 132 
should be  employed as a basis for objection to amendments to the 
abstract, specification,  or drawings attempting to add new disclosure to 
that originally disclosed on  filing. 

        If subject matter capable of illustration is originally claimed 
and  it is not shown in the drawing, the claim is not rejected but 
applicant is  required to add it to the drawing. See MPEP # 608.01(l). 

        If new matter is added to the specification, it should be objected 
 to by using Form Paragraph 7.28. 

W 7.28      Objection to New Matter Added To Specification 

        The amendment filed [1] is objected to under 35 U.S.C. 
132 because it introduces new matter into the disclosure. 
35 U.S.C. 132 states that no amendment shall introduce new matter into the 
 disclosure of the invention. The added material which is not supported by 
the  original disclosure is as follows: [2]. 

        Applicant is required to cancel the new matter in the response to 
this  Office action. 

Examiner Note: 

        This form paragraph is not to be used in reissue applications; use 
 form paragraph 14.22.01 instead. 

        1.  In bracket 2, identify the new matter by page and the line 
numbers  and/or drawing figures and provide an appropriate explanation of 
your position.  This explanation should address any statement by applicant 
to support the position  that the subject matter is described in the 
specification as filed. It should  further include any unresolved 
questions which raise a doubt as to the possession  of the claimed 
invention at the time of filing. 

        2.  If new matter is added to the claims, or affects the claims, a 
 rejection under 35 U.S.C. 112, first paragraph, using form paragraph 
7.31.01  should also be made.  If new matter is added only to a claim, an 
objection  using this paragraph should not be made, but the claim should 
be rejected using  form paragraph 7.31.01.  As to any other appropriate 
prior art or 35 U.S.C.  112 rejection, the new matter must be considered 
as part of the claimed subject  matter and can not be ignored. 


706.03(s) Foreign Filing Without License [R-1] 


>35 U.S.C. 182          Abandonment of invention for unauthorized 
disclosure. 
        The invention disclosed in an application for patent subject to an 
 order made pursuant to section 181 of this title may be held abandoned 
upon  its being established by the Commissioner that in violation of said 
order the  invention has been published or disclosed or that an 
application for a patent  therefor has been filed in a foreign country by 
the inventor, his successors,  assigns, or legal representatives, or 
anyone in privity with him or them, without  the consent of the 
Commissioner. The abandonment shall be held to have occurred  as of the 
time of violation. The consent of the Commissioner shall not be given 
without the concurrence of the heads of the departments and the chief 
officers  of the agencies who caused the order to be issued.  A holding of 
abandonment  shall constitute forfeiture by the applicant, his successors, 
assigns, or legal  representatives, or anyone in privity with him or them, 
of all claims against  the United States based upon such invention. 

35 U.S.C. 184     Filing of application in foreign country. 

        Except when authorized by a license obtained from the Commissioner 
 a person shall not file or cause or authorize to be filed in any foreign 
country  prior to six months after filing in the United States an 
application for patent  or for the registration of a utility model, 
industrial design, or model in  respect of an invention made in this 
country.  A license shall not be granted  with respect to an invention 
subject to an order issued by the Commissioner  pursuant to section 181 of 
this title without the concurrence of the head of  the departments and the 
chief officers of the agencies who caused the order  to be issued. The 
license may be granted retroactively where an application  has been filed 
abroad through error and without deceptive intent and the application 
does not disclose an invention within the scope of section 181 of this 
title. 
        The term "application" when used in this chapter includes 
applications  and any modifications, amendments, or supplements thereto, 
or divisions thereof. 
        The scope of a license shall permit subsequent modifications, 
amendments,  and supplements containing additional subject matter if the 
application upon  which the request for the license is based is not, or 
was not, required to  be made available for inspection under section 181 
of this title and if such  modifications, amendments, and supplements do 
not change the general nature  of the invention in a manner which would 
require such application to be made  available for inspection under such 
section 181.  In any case in which a license  is not, or was not, required 
in order to file an application in any foreign  country, such subsequent 
modifications, amendments, and supplements may be  made, without a 
license, to the application filed in the foreign country if  the United 
States application was not required to be made available for inspection 
under section 181 and if such modifications, amendments, and supplements 
do  not, or did not, change the general nature of the invention in a 
manner which  would require the United States application to have been 
made available for  inspection under such section 181. 

35 U.S.C. 185       Patent barred for filing without license. 

        Notwithstanding any other provisions of law any person, and his 
successors,  assigns, or legal representatives,shall not receive a United 
States patent  for an invention if that person, or his successors, 
assigns, or legal representatives  shall, without procuring the license 
prescribed in section 184 of this title,  have made, or consented to or 
assisted another's making, application in a foreign  country for a patent 
or for the registration of a utility model, industrial  design, or model 
in respect of the invention. A United States patent issued  to such 
person, his successors assigns, or legal representatives shall be invalid 
unless the failure to procure such license was through error and without 
deceptive  intent, and the patent does not disclose subject matter within 
the scope of  section 181 of this title. 

        If, upon examining an application, the examiner learns of the 
existence  of a corresponding foreign application which appears to have 
been filed before  the United States application had been on file for 6 
months, and if the invention  apparently was made in this country, he 
shall refer the application to Licensing  and Review Section of Group 
2200, calling attention to the foreign application.  Pending investigation 
of the possible violation, the application may be returned  to the 
examining group for prosecution on the merits. When it is otherwise  in 
condition for allowance, the application will be again submitted to 
Licensing  and Review Section of Group 2200 unless the latter has already 
reported that  the foreign filing involves no bar to the United States 
application. 
        If it should be necessary to take action under 
35 U.S.C. 185, Licensing and Review Section of Group 2200 will request 
transfer  of the application to it.< 


706.03(u) Disclaimer [R-1] 


        >Claims may be rejected on the ground that applicant has 
disclaimed  the subject matter involved. Such disclaimer may arise, for 
example, from the  applicant's failure: 

(a)   to make claims suggested for interference with another application 
under  37 CFR 1.605 (See MPEP 
# 2305.02), 

(b)   to copy a claim from a patent when suggested by the examiner (MPEP # 
 2305.02), or 

(c)   to respond or appeal, within the time limit fixed, to the examiner's 
 rejection of claims copied from a patent (see MPEP # 2307.02). 

        The rejection on disclaimer applies to all claims not patentably 
distinct  from the disclaimed subject matter as well as to the claims 
directly involved. 
        Rejections based on disclaimer should be made by using one of Form 
 Paragraphs 7.48 and 7.49. 

W 7.48      Failure To Present Claims For Interference 

        Claim [1] rejected under 35 U.S.C. [2] based upon claim [3] of 
patent  no. [4]. 

        Failure to present claims and/or take necessary steps for 
interference  purposes after notification that interfering subject matter 
is claimed constitutes  a disclaimer of the subject matter. This amounts 
to a concession that, as a  matter of law, the patentee is the first 
inventor in this country, In re Oguie,  186 USPQ 227 (CCPA 1975). 

Examiner Note: 

        1.  This paragraph should be used only after applicant has been 
notified  that interference proceedings must be instituted before the 
claims can be allowed  and applicant has refused to copy the claims. 

        2.  In bracket 2, insert 102(g) or 102(g)/103. 

        3.  In bracket 4, insert the patent number, and "in view of -"  if 
 another reference is also relied upon. When the rejection is under 35 
U.S.C. 103, the examiner's basis for finding obviousness should be 
included.  Note that interferences may include obvious variants, see MPEP 
# 2306. 
W 7.49      Rejection, Disclaimer, Failure to Appeal 

        Claim [1] stand finally disposed of for failure to respond or 
appeal  from the examiner's rejection of such claims(s) presented for 
interference  within the time limit fixed. (See 37 CFR 1.661 and 1.663.) 


706.03(v) After Interference or Public Use Proceeding [R-2] 


        For rejections following an interference, see MPEP 
# 2363.03. 

        The outcome of public use proceedings may also be the basis of a 
rejection. 
(See 37 CFR 1.292) (Note: In re Kaslow, 217 USPQ 1089, Fed. Cir. 1983). 
        Upon termination of a public use proceeding including a case also 
involved  in >an< interference, in order for a prompt resumption of the 
interference  proceedings, a notice should be sent to the Board of Patent 
Appeals and Interferences  notifying them of the disposition of the public 
use proceeding. 


706.03(w) Res Judicata [R-2] 


        Res Judicata may constitute a proper ground for rejection. 
However,  as noted below, the Court of Customs and Patent Appeals has 
materially restricted  the use of res judicata rejections. It should be 
applied only when the earlier  decision was a decision of the Board of 
Appeals or any one of the reviewing  courts and when there is no 
opportunity for further court review of the earlier  decision. 

        The timely filing of a second application copending with an 
earlier  application does not preclude the use of res judicata as a ground 
of rejection  for the second application claims. 

        When making a rejection on res judicata, action should ordinarily 
be  made also on the basis of prior art, especially in continuing 
applications.  In most situations the same prior art which was relied upon 
in the earlier  decision would again be applicable. 

        In the following cases a rejection of a claim on the ground of res 
 judicata was sustained where it was based on a prior adjudication, 
against  the inventor on the same claim, a patentably nondistinct claim, 
or a claim  involving the same issue. 

        >In re Freeman, 30 F.3d 1459, 31 USPQ 2d 1444 (Fed. Cir. 1994).< 
        Edgerton v. Kingland, 75 USPQ 307 (D.C. Cir., 1947). 

        In re Szwarc, 138 USPQ 208, 50 CCPA 1571 (1963). 

        In re Katz, 167 USPQ 487, 58 CCPA 713 (1970), (prior decision by 
District  Court). 

        In the following cases for various reasons, res judicata 
rejections  were reversed. 

        In re Fried, 136 USPQ 429, 50 CCPA 954 (1963) (differences in 
claims). 
        In re Szwarc, 138 USPQ 208, 50 CCPA 1571 (1963) (differences in 
claim). 
        In re Hellbaum, 152 USPQ 571, 54 CCPA 1051 (1967) (differences in 
claims). 
        In re Herr, 153 USPQ 548, 54 CCPA 1315 (1967) (same claims, new 
evidence,  prior decision by CCPA). 

        In re Kaghan, 156 USPQ 130, 55 CCPA 844 (1967) (prior decision by 
Board  of Appeals, final rejection on prior art withdrawn by examiner "to 
simplify  the issue," differences in claims; holding of waiver based on 
language in MPEP  at the time). 

        In re Craig, 162 USPQ 157, 56 CCPA 1438 (1969) (Board of Appeals 
held  second set of claims patentable over prior art). 

        In re Fisher, 166 USPQ 18, 57 CCPA 1099 (1970) 
(difference in claims). 

        In re Russell, 169 USPQ 426, 58 CCPA 1081 (1971) (new evidence, 
rejection  on prior art reversed by court). 

        In re Ackermann, 170 USPQ 340, 58 CCPA 1405 (1971) (prior decision 
 by Board of Appeals, new evidence, rejection on prior art reversed by 
court). 
        Plastic Contact Lens Co. v. Gottschalk, 179 USPQ 262 (D.C Cir., 
1973) 
(follows In re Kaghan). 


706.03(x) Reissue [R-1] 


        >The examination of reissue applications is covered in MPEP 
Chapter  1400. 

        35 U.S.C. 251 forbids the granting of a reissue "enlarging the 
scope  of the claims of the original patent" unless the reissue is applied 
for within  2 years from the grant of the original patent. This is an 
absolute bar and  cannot be excused. This prohibition has been interpreted 
to apply to any claim  which is broader in any respect than the claims of 
the original patent. Such  claims may be rejected as being barred by 35 
U.S.C. 251. However, when the  reissue is applied for within 2 years, the 
examiner does not go into the question  of undue delay. 

        The same section permits the filing of a reissue application by 
the  assignee of the entire interest only in cases where it does not 
"enlarge the  scope of the claims of the original patent." Such claims 
which do enlarge the  scope may also be rejected as barred by the statute. 
In In re Bennett, 226  USPQ 413 (Fed. Cir. 1985), however, the court 
permitted the erroneous filing  by the assignee in such a case to be 
corrected. 

        A defective reissue oath affords a ground for rejecting all the 
claims  in the reissue application. See MPEP 
# 1444. 

        Note that a reissue application is "special" and remains so even 
if  applicant does not make a prompt response.< 


706.04          Rejection of Previously Allowed Claims [R-1] 


        >A claim noted as allowable shall thereafter be rejected only 
after  the proposed rejection has been submitted to the primary examiner 
for consideration  of all the facts and approval of the proposed action. 

        Great care should be exercised in authorizing such a rejection. 
See  Ex parte Grier, 1923 C.D. 27; 309 O.G. 223; Ex parte Hay, 1909 C.D. 
18; 139  O.G. 197. 

PREVIOUS ACTION BY DIFFERENT EXAMINER 

        Full faith and credit should be given to the search and action of 
a  previous examiner unless there is a clear error in the previous action 
or knowledge  of other prior art. In general, an examiner should not take 
an entirely new  approach or attempt to reorient the point of view of a 
previous examiner, or  make a new search in the mere hope of finding 
something. 

        Because it is unusual to reject a previously allowed claim, the 
examiner  should point out in his or her letter that the claim now being 
rejected was  previously allowed by using Form Paragraph 7.50. 

W 7.50      Claims Allowed, Now Rejected, New Art 

        The indicated allowability of claim [1] is withdrawn in view of 
the  newly discovered prior art to [2]. The delay in citation of this art 
is regretted.  Rejections based on the newly discovered prior art follow. 

Examiner Note: 

        1.  In bracket 2, insert the name(s) of the newly discovered prior 
 art. 

        2.  Any action including this form paragraph requires the 
signature  of a primary examiner. MPEP # 1004.< 


706.05          Rejection After Allowance of Application [R-1] 


        >See MPEP # 1308.01 for a rejection based on a reference.< 

706.06          Rejection of Claims Copied From Patent [R-1] 


  >See MPEP # 2307.02.< 


706.07          Final Rejection [R-2] 


37 CFR 1.113.     Final rejection or action. 

        (a)   On the second or any subsequent examination or consideration 
 the rejection or other action may be made final, whereupon applicant's or 
patent  owner's response is limited to appeal in the case of rejection of 
any claim 
(w 1.191) or to amendment as specified in w 1.116. Petition may be taken 
to  the Commissioner in the case of objections or requirements not 
involved in  the rejection of any claim (w 1.181). Response to a final 
rejection or action  must include cancellation of, or appeal from the 
rejection of, each rejected  claim. If any claim stands allowed, the 
response to a final rejection or action  must comply with any 
*>requirements< or objection as to form. 

        (b)   In making such final rejection, the examiner shall repeat or 
 state all grounds of rejection then considered applicable to the claims 
in  the case, clearly stating the reasons therefor. 

        Before final rejection is in order a clear issue should be 
developed  between the examiner and applicant. To bring the prosecution to 
as speedy conclusion  as possible and at the same time to deal justly by 
both the applicant and the public, the  invention as disclosed and claimed 
should be thoroughly searched in the first  action and the references 
fully applied; and in response to this action the  applicant should amend 
with a view to avoiding all the grounds of rejection  and objection. 
Switching from one subject matter to another in the claims presented  by 
applicant in successive amendments, or from one set of references to 
another  by the examiner in rejecting in successive actions claims of 
substantially  the same subject matter, will alike tend to defeat 
attaining the goal of reaching  a clearly defined issue for an early 
termination; i.e., either an allowance  of the case or a final rejection. 

        While the rules no longer give to an applicant the right to "amend 
 as often as the examiner presents new references or reasons for 
rejection,"  present practice does not sanction hasty and ill-considered 
final rejections.  The applicant who is seeking to define his or her 
invention in claims that  will give him or her the patent protection to 
which he or she is justly entitled  should receive the cooperation of the 
examiner to that end, and not be prematurely  cut off in the prosecution 
of his or her case. But the applicant who dallies  in the prosecution of 
his or her case, resorting to technical or other obvious  subterfuges in 
order to keep the application pending before the primary examiner,  can no 
longer find a refuge in the rules to ward off a final rejection. 
        The examiner should never lose sight of the fact that in every 
case  the applicant is entitled to a full and fair hearing, and that a 
clear issue  between applicant and ex aminer should be developed, if 
possible, before appeal.  However, it is to the interest of the applicants 
as a class as well as to that  of the public that prosecution of a case be 
confined to as few actions as is  consistent with a thorough consideration 
of its merits. 

        Neither the statutes nor the Rules of Practice confer any right on 
 an applicant to an extended prosecution; Ex parte Hoogendam, 1939 C.D. 3, 
499  O.G.3. 

 STATEMENT OF GROUNDS 

        In making the final rejection, all outstanding grounds of 
rejection  of record should be carefully reviewed, and any such grounds 
relied on in the  final rejection should be reiterated. They must also be 
clearly developed to 
 such an extent that applicant may readily judge the advisability of an 
appeal  unless a single previous Office action contains a complete 
statement supporting  the rejection. 

        However, where a single previous Office action contains a complete 
 statement of a ground of rejection, the final rejection may refer to such 
a  statement and also should include a rebuttal of any arguments raised in 
the  applicant's response. If appeal is taken in such a case, the 
examiner's answer  should contain a complete statement of the examiner's 
position. The final rejection  letter should conclude with Form Paragraph 
7.39. 

W 7.39      Action Is Final 

        THIS ACTION IS MADE FINAL. Applicant is reminded of the extension 
of  time policy as set forth in 37 CFR 1.136(a). 

        A shortened statutory period for response to this final action is 
set  to expire THREE MONTHS from the date of this action. In the event a 
first response  is filed within TWO MONTHS of the mailing date of this 
final action and the  advisory action is not mailed until after the end of 
the THREE-MONTH shortened  statutory period, then the shortened statutory 
period will expire on the date  the advisory action is mailed, and any 
extension fee pursuant to 37 CFR 1.136(a)  will be calculated from the 
mailing date of the advisory action. In no event  will the statutory 
period for response expire later than SIX MONTHS from the  date of this 
final action. 

Examiner Note: 

        1.  This paragraph should not be used in reissue litigation cases 
(SSP-1  month) or in reexamination proceedings (SSP-1 or 2 months). 

        2.  37 CFR 1.136(a) should not be available in a reissue 
litigation  case and is not available in a reexamination proceeding. 

        The Office action first page form PTOL-326 should be used in all 
Office  actions up to and including final rejections. 

        For amendments filed after final rejection, see MPEP # 714.12 and 
#  714.13. 

        For final rejection practice in reexamination proceedings see MPEP 
 # 2271. 


706.07(a) Final Rejection, When Proper on Second Action [R-2] 


        Due to the change in practice as affecting final rejections, older 
 decisions on questions of prematureness of final rejection or admission 
of  subsequent amendments do not necessarily reflect present practice. 
        Under present practice, second or any subsequent actions on the 
merits  shall be final, except where the examiner introduces a new ground 
of rejection  not necessitated by amendment of the application by 
applicant, whether or not  the prior art is already of record. 
Furthermore, a second or any subsequent  action on the merits in any 
application or patent undergoing reexamination  proceedings will not be 
made final if it includes a rejection, on newly cited  art, of any claim 
not amended by applicant or patent owner in spite of the fact that other 
claims may have been  amended to require newly cited art. 

        A second or any subsequent action on the merits in any application 
 or patent involved in reexamination 
proceedings should not be made final if it includes a rejection, on prior 
art  not of record, of any claim amended to include limitations which 
should *>reasonably<  have been expected to be claimed. See MPEP # 904 et 
seq. For example, one would  reasonably expect that a rejection under 35 
U.S.C. 112 for the reason of incompleteness  would be responded to by an 
amendment supplying the omitted element. 
        See MPEP # 809.02(a) for actions which indicate generic claims not 
 allowable. 

        In the consideration of claims in an amended case where no attempt 
 is made to point out the patentable novelty, the examiner should be on 
guard  not to allow such claims. See MPEP # 714.04. The claims may be 
finally rejected  if, in the opinion of the examiner, they are clearly 
open to rejection on grounds  of record. 

        Form Paragraph 7.40 should be used where an action is made final 
including  new grounds of rejection necessitated by applicant's amendment. 

W 7.40      Action Is Final, Necessitated by Amendment 

        Applicant's amendment necessitated new grounds of rejection. 
Accordingly,  THIS ACTION IS MADE FINAL.  See MPEP 706.07(a). Applicant is 
reminded of the  extension of time policy as set forth in 
37 CFR 1.136(a). 

        A shortened statutory period for response to this final action 
*>is<  set to expire THREE MONTHS from the date of this action.  In the 
event a first  response is filed within TWO MONTHS of the mailing date of 
this final action  and the advisory action is not mailed until after the 
end of the THREE-MONTH  shortened statutory period, then the shortened 
statutory period will expire  on the date the advisory action is mailed, 
and any extension fee pursuant to  37 CFR 1.136(a) will be calculated from 
the mailing date of the advisory action.  In no event will the statutory 
period for response expire later than SIX MONTHS  from the date of this 
final action. 

Examiner Note: 

        1.  This paragraph should not be used in reissue litigation cases 
(SSP-1  month) or in reexamination proceedings (SSP-1 or 2 months). 

        2.  37 CFR 1.136(a) should not be available in a reissue 
litigation  case and is not available in a reexamination proceeding. 


706.07(b) Final Rejection, When Proper on First Action [R-2] 


        The claims of a new application may be finally rejected in the 
first  Office action in those situations where (1) the new application is 
a continuing  application of, or a substitute for, an earlier application, 
and (2) all claims  of the new application (a) are drawn to the same 
invention claimed in the earlier  application, and (b) would have been 
properly finally rejected on the grounds  and art of record in the next 
Office action if they had been entered in the  earlier application. 

        However, it would not be proper to make final a first Office 
action  in a continuing or substitute application where that application 
contains material  which was presented in the earlier application after 
final rejection or closing  of prosecution but was denied entry for one of 
the following reasons: 
(1)   New issues were raised that required further consideration and/or 
search,  or 

(2)   The issue of new matter was raised. 

        Further, it would not be proper to make final a first Office 
action  in a continuation-in-part application where any claim includes 
subject matter  not present in the earlier application. 

        A request for an interview prior to first action on a continuing 
or  substitute application should ordinarily be granted. 

        A First Action Final rejection should be made by using form 
paragraph  7.41. 

W 7.41      Action Is Final, First Action 

        This is a [1] of applicant's earlier application no. [2]. All 
claims  are drawn to the same invention claimed in the earlier application 
and could  have been finally rejected on the grounds and art of record in 
the next Office  action if they had been entered in the earlier 
application.  Accordingly, THIS  ACTION IS MADE FINAL even though it is a 
first action in this case. See MPEP  706.07(b). Applicant is reminded of 
the extension of time policy as set forth  in 37 CFR 1.136(a). 

        A shortened statutory period for response to this final action 
*>is<  set to expire THREE MONTHS from the date of this action. In the 
event a first  response is filed within TWO MONTHS of the mailing date of 
this final action  and the advisory action is not mailed until after the 
end of the THREE-MONTH  shortened statutory period, then the shortened 
statutory period will expire  on the date the advisory action is mailed, 
and any extension fee pursuant to  37 CFR 1.136(a) will be calculated from 
the mailing date of the advisory action.  In no event will the statutory 
period for response expire later than SIX MONTHS  from the date of this 
final action. 

Examiner Note: 

        1.    In bracket 1, insert either continuation or substitute, as 
appropriate. 
        2.  If an amendment was refused entry in the parent case on the 
grounds  that it raised new issues or new matter, this paragraph cannot be 
used. See  MPEP # 706.07(b). 

        3.  This paragraph should not be used in reissue litigation cases 
(SSP-1  month) or in reexamination proceedings (SSP-1 or 2 months). 

        4.  37 CFR 1.136(a) should not be available in a reissue 
litigation  case and is not available in a reexamination proceeding. 


706.07(c) Final Rejection, Premature [R-1] 


        >Any question as to prematureness of a final rejection should be 
raised,  if at all, while the case is still pending before the primary 
examiner. This  is purely a question of practice, wholly distinct from the 
tenability of the  rejection. It may therefore not be advanced as a ground 
for appeal, or made  the basis of complaint before the Board of Patent 
Appeals and Interferences.  It is reviewable by petition under 37 CFR 1.181.< 


706.07(d) Final Rejection, Withdrawal of, Premature [R-1] 


        >If, on request by applicant for reconsideration, the primary 
examiner  finds the final rejection to have been premature, he or she 
should withdraw  the finality of the rejection. 

        Form Paragraph 7.42 should be used when withdrawing a Final 
Rejection. 
W 7.42      Withdrawal of Final Rejection 

        Applicant's request for reconsideration of the finality of the 
rejection  of the last Office action is persuasive and, therefore, the 
finality of that  action is withdrawn.< 


706.07(e) Withdrawal of Final Rejection, General [R-1] 


        >See MPEP # 714.12 and # 714.13, Amendments 
after final rejection. 

        Once a final rejection that is not premature has been entered in a 
 case, it should not be withdrawn at the applicant's or patent owner's 
request  except on a showing un- der 37 CFR 1.116(b). Further amendment or 
argument  will be considered in certain instances. An amendment that will 
place the case  either in condition for allowance or in better form for 
appeal may be admitted.  Also, amendments complying with objections or 
requirements as to form are to  be permitted after final action in 
accordance with 37 CFR 1.116(a). 
        The examiner may withdraw the rejection of finally rejected 
claims.  If new facts or reasons are presented such as to convince the 
examiner that  the previously rejected claims are in fact allowable or 
patentable in the case  of reexamination, then the final rejection should 
be withdrawn. Occasionally,  the finality of a rejection may be withdrawn 
in order to apply a new ground  of rejection. 

        Although it is permissible to withdraw a final rejection for the 
purpose  of entering a new ground of rejection, this practice is to be 
limited to situations  where a new reference either fully meets at least 
one claim or meets it except  for differences which are shown to be 
completely obvious. Normally, the previous  rejection should be withdrawn 
with respect to the claim or claims involved. 
        The practice should not be used for application of subsidiary 
references,  or of cumulative references, or of references which are 
merely considered to  be better than those of record. 

        When a final rejection is withdrawn, all amendments filed after 
the  final rejection are ordinarily entered. 

        New grounds of rejection made in an Office action reopening 
prosecution  after the filing of an appeal brief require the approval of 
the supervisory  primary examiner.  See MPEP # 1002.02(d).< 


706.07(f) Time for Response to Final Rejection [R-2] 


        ** 

(1)   All final rejections setting a three (3) month shortened statutory 
period 
(SSP) for response should contain one of the Form Paragraphs (7.39; 7.40; 
7.41)  advising applicant that if the response is filed within two 
(2) months of the date of the final Office action, 
the shortened statutory period will expire at three 
(3) months from the date of the final rejection or on the date the 
advisory  action is mailed, whichever is later. Thus, a variable response 
period will  be established. In no event can the statutory period for 
response expire later  than 6 months from the date of the final rejection. 

(2)   If the paragraph setting a variable response period is inadvertently 
 not included in the final Office action, the SSP for response will end 3 
months  from the date of the final Office action and cannot be extended 
other than  by making a petition and paying a fee pursuant to 37 CFR 
1.136(a). However,  if an advisory action (including an examiner's 
amendment) is mailed in such  a case where the response to the final 
action has been filed within 2 months,  the examiner should vacate the 
original SSP and reset the period for response  to correspond with the 
Office policy set forth at 1027 OG 71. See paragraph (6)  below. 

(3)   This procedure of setting a variable response period in the final 
rejection  dependent on when applicant files a first response to a final 
office action  does not apply to situations where an SSP less than 3 
months is set - e.g.  reissue litigation cases (1 month SSP) or any 
reexamination case. 

Advisory Actions 

(4)   Where the final Office action sets a variable response period as set 
 forth in paragraph 1 above, AND applicant files a complete first response 
to  the final Office action within 2 months of the date of the final 
Office action,  the examiner must determine if the 

(a)   Response puts the application in condition for allowance - then the 
application  should be processed as an allowance and no extension fees are 
due. 
(b)   Response puts the application in condition for allowance except for 
matters  of form which the examiner can change without authorization from 
applicant,  MPEP w 1302.04 - then the application should be amended as 
required and processed  as an allowance and no extension fees are due. 

(c)   Response does not put the application in condition for allowance - 
then  the advisory action should inform applicant that the SSP for 
response expires  3 months from the date of the final rejection or as of 
the mailing date of  the advisory action, whichever is later>,< by 
checking the appropriate box  at the top portion of the Advisory Action 
form, PTOL-303>.< 

        If PTOL-303 is not used, then use Form Paragraph 7.67.1 on all 
advisory  actions where a first complete response has been filed within 2 
months of the  date of the final Office action. 

(5)   Where the final Office action sets a variable response period as set 
 forth in paragraph 1 above, and 
applicant does NOT file a complete first response to the final Office 
action  within 2 months, examiners should use the content of Form 
Paragraph 7.67. 
(6)   Where the final Office action does not set a variable response 
period  as set forth in paragraph 
1 above, AND applicant does file a complete first response to the final 
Office  action within 2 months, and if an advisory action (which may 
include an examiner's  amendment) is necessary and cannot be mailed within 
3 months of the final Office  action, the examiner should vacate the 
original SSP and reset the response  period to expire on the mailing date 
of the advisory action by using form paragraph  7.67.2. In no case can the 
statutory period for response expire later than  6 months from the date of 
the final Office action. Note that Form Paragraph  7.67.2 can be used with 
the advisory action (preferable) or after the advisory  action is mailed 
to correct the error of not setting a variable response period. 
(7)   When an advisory action properly contains either Form Paragraph 
7.67.1  or 7.67.2, the time for applicant to take further action 
(including the calculation  of extension fees under 37 CFR 1.136(a)>)< 
begins to run 
3 months from the date of the final rejection, or from the date of the 
advisory  action, whichever is later. Extension fees cannot be prorated 
for portions  of a month. In no event can the statutory period for 
response expire later  than 6 months from the date of the final rejection. 

Examiner's Amendments 

(8)   Where a complete first response to a final Office action has been 
filed  within 2 months of the final Office action, an examiner's amendment 
to put  the application in condition for allowance may be made without the 
payment  of extension fees if the examiner's amendment is a part of the 
first * action  >after said first response<, because the examiner's 
amendment will either set 
(7.67.1) or reset (7.67.2) the period for response to expire on the date 
the  examiner's amendment is mailed if it is mailed more than 3 months 
from the  date of the final Office action. 

(9)   Where a complete first response to a final 
Office action has not been filed within 2 months of the final Office 
action,  applicant's authorization to make an amendment to place the 
application in  condition for 
allowance must be made either within the 3 month shortened statutory 
period  or within an extended period for response that has been petitioned 
and paid  for by applicant pursuant to 37 CFR 1.136(a). 

(10)    An extension of time under 37 CFR 1.136(a) requires a petition for 
 an extension and the appropriate fee provided for in 37 CFR 1.17. Where 
an  extension of time is necessary to place an application in condition 
for allowance 
(e.g., when an examiner's amendment is necessary after the shortened 
statutory  period for response has expired), applicant may file the 
required petition  and fee or give authorization to the examiner to make 
the petition of record  and charge a specified fee to a deposit account. 
When authorization to make  a petition for an extension of time of record 
is given to the 
examiner, the authorization must be made of record in the application file 
 by the examiner by way of an Interview *>Summary< form dated before the 
extended  period expires. The authorization should also be made of record 
in an examiner's  amendment by indicating the name of the person making 
the authorization, the  deposit account number to be charged, the length 
of the extension requested  and the amount of the fee to be charged to the 
deposit account. **>Form Paragraph  13.02.02 should be used. 

W 13.02.02  Extension of Time and Examiner's Amendment Authorized by 
Telephone 
        An extension of time under 37 CFR 1 .136(a) is required in order 
to  make an examiner's amendment which places this application in 
condition for  allowance.  During a telephone conversation conducted on 
[1], [2] requested  an extension of time for [3] MONTH(S) and authorized 
the Commissioner to charge  Deposit Account No. [4] the required fee of 
$[5] for this extension and authorized  the following examiner's 
amendment. Should the changes and/or additions be  unacceptable to 
applicant, an amendment may be filed as provided by 37 CFR  1.312. To 
ensure consideration of such an amendment, it MUST be submitted no  later 
than the payment of the issue fee. 

Examiner Note: 

        1.  An interview summary form dated before the extended period 
expires  is also required. 

        2.  See MPEP 706.07(f), item 10 which explains when an extension 
of  time is needed in order to make amendments to place the application in 
condition  for allowance.< 

Practice After Final 

(11)    Responses after final should be processed and considered promptly 
by  all Office personnel. 

(12)    Responses after final should not be considered by the examiner 
unless  they are filed within the SSP or are accompanied by a petition for 
an extension  of time and the appropriate fee (37 CFR 1.17 and 1.136(a)). 
>See also MPEP  w 710.02(e).< This requirement also applies to 
supplemental responses filed  after the first response. 

(13)    Interviews may be conducted after the expiration of the shortened 
statutory  period for response to a final office action but within the 
6-month statutory  period for response without the payment of an extension 
fee. 

(14)    Formal matters which are identified for the first time after a 
response  is made to a final Office action and which require action by 
applicant to correct  may be required in an Ex parte Quayle action if the 
application is otherwise  in condition for allowance. No extension fees 
would be required since the response  puts the application in condition 
for allowance except for the correction of  formal matters - the 
correction of which had not yet been required by the examiner. 
(15)    If prosecution is to be reopened after a final Office action has 
been  responded to, the finality of the previous Office action should be 
withdrawn  to avoid the issue of abandonment and the payment of extension 
fees. For example,  if a new reference comes to the attention of the 
examiner which renders unpatentable  a claim indicated to be allowable, 
the Office action should begin with a statement  to the effect: The 
finality of the Office action mailed is hereby withdrawn  in view of the 
new ground of rejection set forth below. Form Paragraph 7.42  could be 
used in addition to this statement. 

W 7.67.01 Advisory After Final, Heading, 1st Response Filed Within 2 
Months 
        The shortened statutory period for response expires THREE MONTHS 
from  the date of the final rejection or as of the mailing date of this 
Advisory  Action, whichever is later. In no event however, will the 
statutory period  for response expire later than SIX MONTHS from the date 
of the final rejection.  Any extension of time must be obtained by filing 
a petition under 37 CFR 1.136(a)  accompanied by the proposed response and 
the appropriate fee. The date on which  the response, the petition, and 
the fee have been filed is the date of the  response and also the date for 
the purposes of determining the period of extension  and the corresponding 
amount of the fee. 

        Any extension fee pursuant to 37 CFR 1.17 will be calculated from 
the  date that the shortened statutory period for response expires as set 
forth  above. 

Examiner Note: 

        1.  This paragraph should be used in all advisory actions if: 
        a.  it was the first response to the final rejection, and 
        b.  it was filed within 2 months of the date of the final 
rejection 
        2.  If a notice of appeal has been filed, also use paragraph 7.68. 
        3.  DO NOT USE THIS FORM PARAGRAPH FOR REEXAMINATION PROCEEDINGS. 
        4.  Follow with form paragraph 7.41.01 IF transitional provisions 
of  37 CFR 1.129(a) are applicable. 

W 7.67.02 Advisory After Final, Heading, No Variable SSP Set in Final 
        Since the first response to the final Office action **>was< filed 
within  TWO MONTHS of the mailing date of that action and the advisory 
action was not  mailed within THREE MONTHS of that date, the THREE MONTH 
shortened statutory  period for response set in the final Office action is 
hereby vacated and reset  to expire as of the mailing date of the advisory 
action. See Notice entitled  "Procedure for Handling Amendments Under 37 
CFR 1.116", published in the Official  Gazette at 1027 OG 71, February 8, 
1983. In no event, however, will the statutory  period for response expire 
later than SIX MONTHS from the date of the final  Office action. 

        Any extension fee required pursuant to 37 CFR 1.17 will be 
calculated  from the mailing date of the advisory action. 

Examiner Note: 

        1.  This paragraph should be used in all advisory actions where: 
        a.  the response is a first response to the final action; 
        b.    the response was filed within two months of the mailing date 
 of the final; and 

        c.  the final action failed to inform applicant of a variable SSP 
beyond  the normal three month period, as is set forth in form paragraph 
7.39-7.41. 
        2.  If the final action set a variable SSP, do not use this 
paragraph.  Use paragraph 7.67.01 instead. 

        3.  If a notice of appeal has been filed, also use paragraph 7.68. 
        >4.     Follow with form paragraph 7.41.01 if transitional 
provisions  of 37 CFR 1.129(a) are applicable.< 

        Under the changed procedure, if an applicant initially responds 
within  2 months from the date of mailing of any final rejection setting a 
3-month  shortened statutory period for response and the Office does not 
mail an advisory  action until after the end of the 3-month shortened 
statutory period, the period  for response for pur- poses of determining 
the amount of any extension fee  will be the date on which the Office 
mails the advisory action advising applicant  of the status of the 
application, but in no event can the period extend beyond  6 months from 
the date of the final rejection. This procedure will apply only  to a 
first response to a final rejection and has been implemented by including 
the following language in each final rejection mailed after February 27, 
1983: 
        "A SHORTENED STATUTORY PERIOD FOR RESPONSE TO THIS FINAL ACTION IS 
 SET TO EXPIRE THREE MONTHS FROM THE DATE OF THIS ACTION. IN THE EVENT A 
FIRST  RESPONSE IS FILED WITHIN TWO MONTHS OF THE MAILING DATE OF THIS 
FINAL ACTION  AND THE ADVISORY ACTION IS NOT MAILED UNTIL AFTER THE END OF 
THE THREE-MONTH  SHORTENED STATUTORY PERIOD, THEN THE SHORTENED STATUTORY 
PERIOD WILL EXPIRE  ON THE DATE THE ADVISORY ACTION IS MAILED, AND ANY 
EXTENSION FEE PURSUANT TO  37 CFR 1.136(a) WILL BE CALCULATED FROM THE 
MAILING DATE OF THE ADVISORY ACTION.  IN NO EVENT WILL THE STATUTORY 
PERIOD FOR RESPONSE EXPIRE LATER THAN SIX MONTHS  FROM THE DATE OF THIS 
FINAL ACTION." 

        For example, if applicant initially responds within 
2 months from the date of mailing of a final rejection and the examiner 
mails  an advisory action before the end of 
3 months from the date of mailing of the final rejection, the shortened 
statutory  period will expire at the end of 
3 months from the date of mailing of the final rejection. In such a case, 
any  extension fee would then be calculated from the end of the 3-month 
period.  If the examiner, however, does not mail an advisory action until 
after the  end of 3 months, the shortened statutory period will expire on 
the date the  examiner mails the advisory action and any extension fee may 
be calculated  from that date. 


706.07(g) Transitional After-Final Practice [R-2] 


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

        (a)   An applicant in an application, other than for reissue or a 
design  patent, that has been pending for at least two years as of June 8, 
1995, taking  into account any reference made in such application to any 
earlier filed application  under 35 U.S.C. 120, 121 and 365(c), is 
entitled to have a first submission  entered and considered on the merits 
after final rejection under the following  circumstances: The Office will 
consider such a submission, if the first submission  and the fee set forth 
in # 1.17(r) are filed prior to the filing of an appeal  brief and prior 
to abandonment of the application. The finality of the final  rejection is 
automatically withdrawn upon the timely filing of the submission  and 
payment of the fee set forth in # 1.17(r). If a subsequent final rejection 
 is made in the application, applicant is entitled to have a second 
submission  entered and considered on the merits after the subsequent 
final rejection under  the following circumstances: The Office will 
consider such a submis- sion,  if the second submission and a second fee 
set forth in # 1.17(r) are filed  prior to the filing of an appeal brief 
and prior to abandonment of the application.  The finality of the 
subsequent final rejection is automatically withdrawn upon  the timely 
filing of the submission and payment of the second fee set forth  in # 
1.17(r). Any submission filed after a final rejection made in an 
application  subsequent to the fee set forth in 
# 1.17(r) having been twice paid will be treated as set forth in 
# 1.116. A submission as used in this paragraph includes, but is not 
limited  to, an information disclosure statement, an amendment to the 
written description,  claims or drawings and a new substantive argument or 
new evidence in support  of patentability. 

***** 

        (c)   The provisions of this section shall not be applicable to 
any  application filed after June 8, 1995. 

        In order to facilitate the completion of prosecution of 
applications  pending in the PTO as of June 8, 1995 and to ease the 
transition between a  17-year patent term and a 20-year patent term, 
Public Law 103-465 provided  for the further limited reexamination of an 
application pending for 2 years  or longer as of June 8, 1995, taking into 
account any reference made in the  application to any earlier filed 
application under 35 U.S.C. 120, 121, or 365(c).  The further limited 
reexamination permits appli-cants to present for consideration,  as a 
matter of right upon payment of a fee, a submission after a final 
rejection  has been issued on an application.  An applicant will be able 
to take advantage  of this provision on two separate occasions provided 
the submission and fee are presented prior to the  filing of the Appeal 
Brief and prior to abandonment of the application. This  will have the 
effect of enabling an applicant to essentially reopen prosecution  of the 
pending application on two separate occasions by paying a fee for each 
occasion, and avoid the impact of refiling the application to obtain 
consideration  of additional claims and/or information relative to the 
claimed subject matter.  The transitional after-final practice is only 
available to applications filed  on or before June 8, 1995 and it is not 
available for reissue or design applications  or reexamination proceedings. 

        The following flowchart illustrates the transitional after-final 
procedures  set forth in 37 CFR 1.129(a). 



A70607g05.bmp 



A70607g05.end 



        Effective June 8, 1995, in any pending application having an 
actual  or effective filing date of June 8, 1993 or earlier, applicant is 
entitled,  under 37 CFR 1.129(a), to have a first submission after final 
rejection entered  and considered on the merits, if the submission and the 
fee set forth in 37  CFR 1.17(r) are filed prior to the filing of an 
Appeal Brief under 37 CFR 1.192  and prior to abandonment. For an 
application entering national stage under  35 U.S.C. 371 or an application 
filed under 35 U.S.C. 111(a) claiming benefit  under 35 U.S.C. 120 of a 
PCT application designating the U.S., the PCT international  filing date 
will be used to determine whether the application has been pending  for at 
least 2 years as of June 8, 1995. 

        >Form paragraph 7.41.01 may be used to notify applicant that the 
application  qualifies under 37 CFR 1.129(a). 

# 7.41.01  Transitional After Final Practice,  First Submission, 
(37 CFR 1.129(a)) 

        This application is subject to the provisions of Public Law 
103-465,  effective June 8, 1995. Accordingly, since this application has 
been pending  for at least two years as of June 8, 1995, taking into 
account any reference  to an earlier filed application under 35 U.S.C. 
120, 121 or 365(c), applicant,  under 37 CFR 1.129(a), is entitled to have 
a first submission entered and considered  on the merits if, prior to 
abandonment, the submission and the fee set forth  in 37 CFR 1.17(r) are 
filed prior to the filing of an appeal brief under 37  CFR 1.192. Upon the 
timely filing of a first submission and the appropriate  fee of $[1] for a 
[2] entity under 37 CFR 1.17(r), the finality of the previous  Office 
action will be withdrawn. If a Notice of Appeal and the appeal fee set 
forth in 37 CFR 1.17(e) were filed prior to or with the payment of the fee 
 set forth in 37 CFR 1.17(r), the payment of the fee set forth in 37 CFR 
1.17(r)  by applicant will be construed as a request to dismiss the appeal 
and to continue  prosecution under 37 CFR 1.129(a).  In view of 35 U.S.C. 
132, no amendment  considered as a result of payment of the fee set forth 
in 37 CFR 1.17(r) may  introduce new matter into the disclosure of the 
application. 

        If applicant has filed multiple proposed amendments  which, when 
entered,  would conflict with one another, specific instructions for entry 
or non-entry  of each such amendment should be provided upon payment of 
any fee under 37  CFR 1.17(r). 

Examiner Note: 

        1.  This form paragraph may follow any of form paragraphs 
7.39-7.41,  7.67-7.67.02, 7.72-7.78 or 7.80 in any application filed prior 
to June 9, 1995,  which has been pending for at least two years as of June 
8, 1995, taking into  account any reference under 35 U.S.C. 120, 121 or 
365(c) to a previously filed  application and no previous fee has been 
paid under 37 CFR 1.17(r). 
        2.  This form paragraph should NOT  be used in a design or reissue 
 application, or in a reexamination proceeding. 

        3.  In bracket  1, insert the current fee for a large or small 
entity,  as appropriate. 

        4.  In bracket 2, insert --small-- or --large--, depending on the 
current  status of the application.< 

        The submission under 37 CFR 1.129(a) may comprise, but is not 
limited  to, an information disclosure statement, an amendment to the 
written description,  claims or drawings, a new substantive argument 
and/or new evidence. No amendment  considered as a result of payment of 
the fee set forth in 37 CFR 1.17(r) may  introduce new matter into the 
disclosure of the application. 35 U.S.C. 132.  In view of the fee set 
forth in 37 CFR 1.17(r), any information disclosure  statement previously 
refused consideration in the application because of applicant's  failure 
to comply with 37 CFR 1.97(c) or (d) will be treated as though it has 
been filed within one of the time periods set forth in 37 CFR 1.97(b) and 
will  be considered without the petition and petition fee required in 37 
CFR 1.97(d),  if it complies with the requirements of 37 CFR 1.98. 

        If the application qualifies under 37 CFR 1.129(a), that is, it 
was  filed on or before June 8, 1995 and the application has an effective 
U.S. filing  date of June 8, 1993 or earlier, the examiner must check to 
see if the submission  and 37 CFR 1.17(r) fee were filed prior to the 
filing of the Appeal Brief and  prior to abandonment of the application. 
If an amendment was timely filed  in response to the final rejection but 
the fee set forth in 37 CFR 1.17(r)  did not accompany the amendment, 
examiners will continue to consider these  amendments in an expedited 
manner as set forth in MPEP # 714.13 and issue an  advisory action 
notifying applicant whether the amendment has been entered.  If the 
examiner indicated in an advisory action that the amendment has not  been 
entered, applicant may then pay the fee set forth in 37 CFR 1.17(r) and 
any necessary fee to avoid abandonment of the application and obtain entry 
 and consideration of the amendment as a submission  under 37 CFR 
1.129(a). 
 If the submission and the fee set forth in 37 CFR 1.17(r) were timely 
filed  in response to the final rejection and no advisory action has been 
issued prior  to the payment of the fee set forth in 37 CFR 1.17(r), no 
advisory action will  be necessary.  The examiner will notify applicant 
that the finality of the  previous office action has been withdrawn 
pursuant to 37 CFR 1.129(a).  It  is noted that if the submission is 
accompanied by a "conditional" payment of  the fee set forth in 37 CFR 
1.17(r), i.e., an authorization to charge the fee  set forth in 37 CFR 
1.17(r) to a deposit account in the event that the submission would not 
otherwise be entered, the  PTO will treat the conditional payment as an 
unconditional payment of the 37  CFR 1.17(r) fee. 

        The finality of the final rejection is automatically withdrawn 
upon  the timely filing of the submission and payment of the fee set forth 
in 37  CFR 1.17(r).  Upon the timely payment of the fee set forth in 37 
CFR 1.17(r),  all previously unentered submissions, submissions filed with 
the 37 CFR 1.17(r)  fee, and any submissions filed prior to the mailing of 
the next Office action  will be entered. Any conflicting amendments should 
be clarified for entry by  the applicant upon payment of the 37 CFR 
1.17(r) fee. Absent specific instructions  for entry, all submissions 
filed as of the date of the withdrawl of the finality  of the previous 
final action will be entered in the order in which they were  filed. Form 
paragraph 7.42.01 should be used to notify applicant that the finality  of 
the previous Office action has been withdrawn. 

# 7.42.01 Withdrawal of Finality of Last Office Action Transitional 
Application  Under 37 CFR 1.129(a) 

        Since this application is eligible for the transitional procedure 
of  37 CFR 1.129(a) and * the fee set forth in 37 CFR 1.17(r) has been 
timely paid,  the finality of the previous Office action has been 
withdrawn pursuant to 37  CFR 1.129(a). Applicant's [1] submission filed 
on [2] has been entered. 
Examiner Note: 

        Insert  "first" or  "second"  in bracket 1. 

        If a Notice of Appeal and the appeal fee set forth in 37 CFR 
1.17(e)  were filed prior to or with the payment of the fee set forth 37 
CFR 1.17(r),  the payment of the fee set forth in 37 CFR 1.17(r) by 
applicant is construed  as a request to dismiss the appeal and to continue 
prosecution under 37 CFR  1.129(a). 

        Upon the timely payment of the fee set forth in 
37 CFR 1.17(r), if the examiner determines that the submission is not 
fully  responsive to the previous Office action, e.g., if the submission 
only includes  an information disclosure statement, applicant will be 
given a new shortened  statutory period of 1 month or 30 days, whichever 
is longer, to submit a complete  response. Form paragraph 7.42.02 should 
be used. 

# 7.42.02 Non>-<responsive Submission Filed Under 37 CFR 1.129(a) 
        The timely submission under 37 CFR 1.129(a) filed on [1] is 
non-responsive  to the prior Office action because [2]. Since the 
submission appears to be  a bona fide attempt to provide a complete 
response to the prior Office action,  applicant is given a shortened 
statutory period of ONE MONTH or THIRTY DAYS  from the date of this 
letter, whichever is longer, to submit a complete response.  This 
shortened statutory period supersedes the time period set in the prior 
Office action. This time period may be extended pursuant to 37 CFR 
1.136(a).  If a Notice of Appeal and the appeal fee set forth in 37 CFR 
1.17(e)were filed  prior to or with the payment of the fee set forth in 37 
CFR 1.17(r), the payment  of the fee set forth in 37 CFR 1.17(r) by 
applicant is construed as a request  to dismiss the appeal and to continue 
prosecution under 37 CFR 1.129(a). The  appeal stands dismissed. 

Examiner Note: 

        The reasons why the examiner considers the submission to be 
>non-responsive<  must be set forth in bracket 2. 

After submission and payment of the fee set forth in 37 CFR 1.17(r), the 
next  Office action on the merits may be made final only under the 
conditions for  making a first action in a continuing application final 
set forth in MPEP #  706.07(b). 

        Form paragraph 7.42.03 may be used if it is appropriate to make 
the  first action final following a submission under 37 CFR 1.129(a). 
# 7.42.03 Action Is Final, First Action Following Submission Under 37 CFR 
1.129(a) 

        All claims are drawn to the same invention claimed in the 
application  prior to the entry of the submission under 37 CFR 1.129(a) 
and could have been  finally rejected on the grounds and art of record in 
the next Office action  if they had been entered in the application prior 
to entry under 37 CFR 1.129(a).  Accordingly, THIS ACTION IS MADE FINAL 
even though it is a first action after  the submission under 37 CFR 
1.129(a). See MPEP # 706.07(b). Applicant is reminded  of the extension of 
time policy as set forth in 37 CFR 1.136(a). 

        A shortened statutory period for response to this final action is 
set  to expire THREE MONTHS from the date of this action. In the event a 
first response  is filed within TWO MONTHS of the mailing date of this 
final action and the  advisory action is not mailed until after the end of 
the THREE-MONTH shortened  statutory period, then the shortened statutory 
period will expire on the date  the advisory action is mailed, and any 
extension fee pursuant to 37 CFR 1.136(a)  will be calculated from the 
mailing date of the advisory action. In no event  will the statutory 
period for response expire later than SIX MONTHS from the  date of this 
final action. 

Examiner Note: 

        Also use form paragraph 7.41.02 if this is a final rejection 
following  a first submission under 37 CFR 1.129(a). 

        If a subsequent final rejection is made in the application, 
applicant  would be entitled to have a second submission entered and 
considered on the  merits under the same conditions set forth for 
consideration of the first submission.  Form paragraph 7.41.02 should be used. 

# 7.41.02 Transitional After Final Practice, Second Submission (37 CFR 
1.129(a)) 
        Since the fee set forth in 37 CFR 1.17(r) for a first submission 
subsequent  to a final rejection has been previously paid, applicant, 
under 37 CFR 1.129(a),  is entitled to have a second submission entered 
and considered on the merits  if, prior to abandonment, the second 
submission and the fee set forth in 37  CFR 1.17(r) are filed prior to the 
filing of an appeal brief under 37 CFR 1.192.  Upon the timely filing of a 
second submission and the appropriate fee of $[1]  for a [2] >entity< under 
37 CFR 1.17(r), the finality of the previous Office action will be 
withdrawn.  If a Notice of Appeal and the appeal fee set forth in 37 CFR 
1.17(e) were filed  prior to the payment of the fee set forth in 37 CFR 
1.17(r), the payment of  the fee set forth in 37 CFR 1.17(r) by applicant 
will be construed as a request  to dismiss the appeal and to continue 
prosecution under 37 CFR 1.129(a). In  view of 35 U.S.C. 132, no amendment 
considered as a result of payment of the  fee set forth in 37 CFR 1.17(r) 
may introduce new matter into the disclosure  of the application. 

Examiner Note: 

        1.  This form paragraph is to follow any of form paragraphs 7.39 - 
 7.41 in any application filed prior to June 9, 1995, which has been 
pending  for at least two years as of June 8, 1995, taking into account 
any reference  under 35 U.S.C. 120, 121 or 365(c) to a previously filed 
application and a  first submission fee has been previously paid under 37 
CFR 1.17(r). 
        2.  This form paragraph should NOT be used in a design or reissue 
application  or in a reexamination proceeding. 

        3.  In bracket 1, insert the current fee for a large or small 
entity,  as appropriate. 

        4.  In bracket 2, insert "small" or "large," depending on the 
current  status of the application. 

        5.  If the fee set forth in 37 CFR 1.17(r) has been twice paid, 
the  provisions of 37 CFR 1.129(a) are no longer available. 

        Any submission filed after a final rejection made in the 
application  subsequent to the fee set forth in 37 CFR 1.17(r) having been 
twice paid will  be treated in accordance with the current after-final 
practice set forth in  37 CFR 1.116. 


707   Examiner's Letter or Action [R-2] 


37 CFR 1.104. Nature of examination; examiner's action 

        (a)   On taking up an application for examination or a patent in a 
 reexamination proceeding, the examiner shall make a thorough study 
thereof  and shall make a thorough investigation of the available prior 
art relating  to the subject matter of the claimed invention. The 
examination shall be complete  with respect both to compliance of the 
application or patent under reexamination  with the applicable statutes 
and rules and to the patentability of the invention  as claimed, as well 
as with respect to matters of form, unless otherwise indicated. 
        (b)   The applicant, or in the case of a reexamination proceeding, 
 both the patent owner and the requester, will be notified of the 
examiner's  action. The reasons for any adverse action or any objection or 
requirement  will be stated and such information or references will be 
given as may be useful  in aiding the applicant or in the case of a 
reexamination proceeding the patent  owner, to judge the propriety of 
continuing the prosecution. 

        (c)   An international-type search will be made in all national 
applications  filed on and after June 1, 1978. 

        (d)   Any national application may also have an international-type 
 search report prepared thereon at the time of the national examination on 
the  merits, upon specific written request therefor and payment of the 
international-type  search report fee. See w 1.21 (e) for amount of fee 
for preparation of international-type  search report. 

        NOTE.  -  The Patent and Trademark Office does not require that a 
formal  report of an international-type search be prepared in order to 
obtain a search  fee refund in a later filed international application. 

        (e)   Co-pending applications will be considered by the examiner 
to  be owned by, or subject to an obligation of assignment to, the same 
person  if: (1) the application files refer to assignments recorded in the 
Patent and  Trademark Office in accordance with Part 3 of this chapter 
which convey  the  entire rights in the applications to the same person or 
organization: or (2)  copies of unrecorded assignments which convey the 
entire rights in the applications  to the same person or organization are 
filed in each of the applications; or 
(3) an affidavit or declaration by the common owner is filed which states 
that  there is common ownership and states facts which explain why the 
affiant or  declarant believes there is common ownership; or (4) other 
evidence is submitted  which establishes common ownership of the 
applications. In circumstances where  the common owner is a corporation or 
other organization, an affidavit or declaration  may be signed by an 
official of the corporation or organization empowered to  act on behalf of 
the corporation or organization. 

        For Office actions in reexamination proceedings, see MPEP # 2260. 
        Under the current first action procedure, the examiner signifies 
on  the action form PTOL-326 certain information including the period set 
for response,  any attachments, and a "summary of action," the position 
taken on all claims. 
        Current procedure also allows the examiner, in the exercise of his 
 professional judgment to indicate that a discussion with applicant's or 
patent  owner's representative may result in agreements whereby the 
application or  patent under reexamination may be placed in condition for 
allowance and that  the examiner will telephone the representative within 
about 2 weeks. Under  this practice the applicant's or patent owner's 
representative can be adequately  prepared to conduct such a discussion. 
Any resulting amendment may be made  either by the applicant's or patent 
owner's attorney or agent or by the examiner  in an examiner's amendment. 
It should be recognized that when extensive amendments  are necessary it 
would be preferable if they were filed by the attorney or  agent of 
record, thereby reducing the professional and clerical workload in  the 
Office and also providing the file wrapper with a better record, including 
 applicant's arguments for allowability as required by 37 CFR 1.111. 
        The list of references cited appears on a separate form, Notice of 
 References Cited, PTO-892 (copy in MPEP # 707.05) attached to applicant's 
copies  of the action. Where applicable, Notice of Informal Patent 
Drawings, PTO-948  and Notice of Informal Patent Application, PTO-152 are 
attached to the first  action. 

        The attachments have the same paper number and are to be 
considered  as part of the Office action. 

        Replies to Office actions should include the 4-digit art unit 
number  and the examiner's name to expedite handling within the Office. 

        In accordance with the Patent Law, "Whenever, on examination, any 
claim  for a patent is rejected >,< or any objection . . . made", 
notification of  the reasons for rejection and/or objection together with 
such information and  references as may be useful in judging the propriety 
of continuing the prosecution 
(35 U.S.C. 132) should be given. 

        When considered necessary for adequate information, the particular 
 figure(s) of the drawing(s), and/or page(s) or paragraph(s) of the 
reference(s),  and/or any relevant comments briefly stated should be 
included. For rejections  under 35 U.S.C. 103, the way in which a 
reference is modified or plural references  are combined should be set 
out. 

        In exceptional cases, as to satisfy the more stringent 
requirements  under 37 CFR 1.106(b), and in pro se cases where the 
inventor is unfamiliar  with the patent law and practice, a more complete 
explanation may be needed. 
        Objections to the disclosure, explanation of references cited but 
not  applied, indication of allowable subject matter, requirements 
(including requirements  for restriction if applicable) and any other 
pertinent comments may be included.  Summary sheet PTOL-326, which serves 
as the first page of the Office action,  is to be used with all first 
actions and will identify any allowed claims. 
W 7.100       Name and Number of Examiner To Be Contacted 

        An inquiry concerning this communication should be directed to [1] 
 at telephone number (703) [2]. 

Examiner Note: 

        1.  This paragraph or paragraph 7.101 should be used at the 
conclusion  of all actions. 

        2.  In bracket 1, insert the name of the examiner designated to be 
 contacted first regarding inquiries about the Office action. This could 
be  either the non-signatory examiner preparing the action or the 
signatory examiner. 
        3.  In bracket 2, insert the individual phone number of the 
examiner. 
W 7.101       Telephone Inquiry Contacts - Non 5/4/9 Schedule 

        Any inquiry concerning this communication or earlier 
communications  from the examiner should be directed to [1] whose 
telephone number is (703)  [2].  The examiner can normally be reached on 
[3] from [4] to [5]. 
        If attempts to reach the examiner by telephone are unsuccessful, 
the  examiner's supervisor, [6], can be reached on (703) [7].  The fax 
phone number  for this group is (703) [8]. 

        Any inquiry of a general nature or relating to the status of this 
application  or proceeding should be directed to the group receptionist 
whose telephone  number is (703) [9]. 

Examiner Note: 

        1.  In bracket 1, insert your name. 

        2.  In bracket 2, insert your individual phone number. 

        3.  In bracket 3, insert the days that you work every week, e.g., 
"Monday-Thursday"  for an examiner off every Friday. 

        4.  In brackets 4 and 5, insert your normal duty hours. e.g., 
"6:30  AM - 5:00 PM."  Do not insert the core hours**. 

        5.  In bracket 6, insert your SPE's name. 

        6.  In bracket 7, insert your SPE's phone number. 

        7.  In bracket 8, insert the group fax number. 

        8.  In bracket 9, insert the telephone number for your group 
receptionist. 
W *>7.102< Telephone Inquiry Contacts - 5/4/9 Schedule 

        Any inquiry concerning this communication or earlier 
communications  from the examiner should be directed to [1] whose 
telephone number is (703)  [2].  The examiner can normally be reached on 
[3] from [4] to [5].  The examiner  can also be reached on alternate [6]. 

        If attempts to reach the examiner by telephone are unsuccessful, 
the  examiner's supervisor, [7], can be reached on (703) [8]. The fax 
phone number  for this group is (703) [9]. 

        Any inquiry of a general nature or relating to the status of this 
application  or proceeding should be directed to the group receptionist 
whose telephone  number is (703) [10]. 

Examiner Note: 

        1.  In bracket 1, insert your name. 

        2.  In bracket 2, insert your individual phone number. 

        3.  In bracket 3, insert the days that you work every week, e.g., 
"Monday-Thursday"  for an examiner off on alternate Fridays. 

        4.  In brackets 4 and 5, insert your normal duty hours. e.g., 
"6:30  AM - 5:00 PM."  Do not insert the core hours**. 

        5.  In bracket 6, insert the day in each pay period that is your 
compressed  day off, e.g., "Fridays" for an examiner on 5/4/9 with the 
first Friday off. 
        6.  In bracket 7, insert your SPE's name. 

        7.  In bracket 8, insert the group phone number. 

        8.  In bracket 9, insert your group fax number. 

        9.  In bracket 10, insert the telephone number for your group 
receptionist. 
W *>7.103< Statute Cited in Prior Action 

        The text of those sections of Title 35, U.S. Code not included in 
this  action can be found in a prior Office action. 



A70700006.bmp 



A70700006.end 




707.01          Primary Examiner Indicates Action for New Assistant [R-1] 

        >After the search has been completed, action is taken in the light 
 of the references found. Where the assistant examiner has been in the 
Office  but a short time, it is the duty of the primary examiner to go 
into the case  thoroughly. The usual procedure is for the assistant 
examiner to explain the  invention and discuss the references which he or 
she regards as most pertinent.  The primary examiner may indicate the 
action to be taken, whether restriction  or election of species is to be 
required, or whether the claims are to be considered  on their merits. If 
action on the merits is to be given, the examiner may indicate  how the 
references are to be applied in cases where the claim is to be rejected, 
or authorize allowance if it is not met in the references and no further 
field  of search is known.< 


707.02(a) Cases Up for Third Action and 5-Year Cases [R-1] 


        >The supervisory primary examiners should impress their assistants 
 with the fact that the shortest path to the final disposition of an 
application  is by finding the best references on the first search and 
carefully applying  them. 

        The supervisory primary examiners are expected to personally check 
 on the pendency of every application which is up for the third or 
subsequent  official action with a view to finally concluding its 
prosecution. 
        Any case that has been pending five years should be carefully 
studied  by the supervisory primary examiner and every effort made to 
terminate its  prosecution. In order to accomplish this result, the case 
is to be considered  "special" by the examiner.< 

** 


707.05       Citation of References [R-2] 


        During the examination of an application or reexamination of a 
patent,  the examiner should cite appropriate prior art which is nearest 
to the subject  matter defined in the claims. When such prior art is 
cited, its pertinence  should be explained. 

        Form Paragraph 7.96 may be used as an introductory sentence. 
W 7.96      Citation of Pertinent Prior Art 

        The prior art made of record and not relied upon is considered 
pertinent  to applicant's disclosure.  [1] 

Examiner Note: 

        When such prior art is cited, its pertinence should be explained 
in  accordance with MPEP # 707.05. 

        Effective June 8, 1995, Public Law 103-465 amended 35 U.S.C. 154 
to  change the term of a patent to 20 years measured from the filing date 
of the  earliest U.S. application for which benefit under 35 U.S.C. 120, 
121 or 365(c)  is claimed. The 20-year patent term applies to all utility 
and plant patents  issued on applications filed on or after June 8, 1995. 
As a result of the  20-year patent term, it is expected, in certain 
circumstances, that applicants  may cancel their claim to priority by 
amending the specification to delete  any references to prior 
applications. Therefore, examiners should search all  applications based 
on the actual U.S. filing date of the application rather  than on the 
filing date of any parent U.S. application for which priority is  claimed. 
Examiners should cite of interest all material prior art having an 
effective filing date after the filing date of the U.S. parent application 
 but before the actual filing date of the application being examined. 
        Allowed applications should generally contain a citation of 
pertinent  prior art for printing in the patent, even if no claim 
presented during the  prosecution was considered unpatentable over such 
prior art. Only in those  instances where a proper search has not revealed 
any prior art relevant to  the claimed invention is it appropriate to send 
a case to issue with no art  cited. In the case where no prior art is 
cited, the examiner must write "None"  on a form PTO-892 and insert it in 
the file wrapper. Where references have  been cited during the prosecution 
of parent applications and a continuing ap-plication,  having no newly 
cited references, is ready for allowance, the cited references  of the 
parent applications should be listed on a form PTO-892. The form should 
then be placed in the file of the continuing application.  See MPEP # 
1302.12. 
 In a file wrapper continuing application under 37 CFR 1.62, it is not 
necessary  to prepare a new form PTO-892 since the form from the parent 
application is  in the same file wrapper and will be used by the printer. 

        In all continuation and continuation-in-part applications, the 
parent  applications should be reviewed for pertinent prior art. 

        Applicants and/or *>applicants'< attorney in PCT 
related national applications may wish to cite the material citations from 
 the PCT International Search Report by an information disclosure 
statement  under 37 CFR 1.97 and 1.98 in order to ensure consideration by 
the examiner. 
        In those instances where no information disclosure statement has 
been  filed by the applicant and where documents are cited in the 
International Search  Report but neither a copy of the documents nor an 
English translation (or English  family member) is provided, the examiner 
may exercise discretion in deciding  whether to take necessary steps to 
obtain the copy and/or translation. 
        Copies of documents cited will be provided as set forth in MPEP w 
707.05(a).  That is, copies of documents cited by the examiner will be 
provided to applicant  except where the documents 

A.  are cited by applicant in accordance with MPEP  # 609, # 707.05(b), 
and  # 708.02, 

B.  have been referred to in applicant's disclosure statement, 

C.  are cited and have been provided in a parent application, and 
D.  are U. S. Patents which are cited at allowance (MPEP # 1302.04). 
37 CFR 1.107.     Citation of references. 

        (a)   If domestic patents are cited by the examiner, their numbers 
 and dates, and the names of the patentees, and the classes of inventions 
must  be stated. If foreign published applications or patents are cited, 
their nationality  or country, numbers and dates, and the names of the 
patentees must be stated,  and such other data must be furnished as may be 
necessary to enable the applicant,  or in the case of a reexamination 
proceeding, the patent owner, to identify  the published applications or 
patents cited. In citing foreign published applications  or patents, in 
case only a part of the document is involved, the particular  pages and 
sheets containing the parts relied upon must be identified. If printed 
publications are cited, the author (if any), title, date, pages or plates, 
 and place of publication, or place where a copy can be found, shall be 
given. 
        (b)   When a rejection in an application is based on facts within 
the  personal knowledge of an employee of the Office, the data shall be as 
specific  as possible, and the reference must be supported, when called 
for by the applicant,  by the affidavit of such employee, and such 
affidavit shall be subject to contradiction  or explanation by the 
affidavits of the applicant and other persons. 

707.05(a) Copies of Cited References [R-1] 


        >Copies of cited references (except as noted below) are 
automatically  furnished without charge to applicant together with the 
Office action in which  they are cited. Copies of the cited references are 
also placed in the application  file for use by the examiner during the 
prosecution. 

        Copies of references cited by applicant in accordance with MPEP # 
609,  # 707.05(b) and # 708.02 are not furnished to applicant with the 
Office action.  Additionally, copies of references cited in continuation 
applications if they  had been previously cited in the parent application 
are not furnished. The  examiner should check the left hand column of form 
PTO-892 if a copy of the  reference is not to be furnished to the applicant. 

        Copies of foreign patent documents and nonpatent literature (NPL) 
which  are cited by the examiner at the time of allowance will be 
furnished to applicant  with the Office action, and copies of the same 
will also be retained in the  file. This will apply to all allowance 
actions, including first action allowances  and Ex Parte Quayle actions. 

        In the rare instance where no art is cited in a continuation 
application,  all the references cited during the prosecution of the 
parent application will  be listed at allowance for printing in the patent. 

        To assist in providing copies of references, the examiner should: 
(a)   Write the citation of the references on form PTO-892, "Notice of 
References  Cited". 

(b)   Place the form PTO-892 in the front of the file wrapper. 

(c)   Include in the application file wrapper all of the references cited 
by  the examiner which are to be furnished to the applicant and which have 
been  obtained from the classified search file. 

(d)   Make two copies of each reference which is to be supplied and which 
has  been located in a place other than the classified search file (i.e. 
textbooks,  bound mag- 

azines, personal search material, etc.). Using red ink identify one copy 
as  the "File Copy" and the other copy as the "Applicant's Copy". Both 
copies should  be placed in the application file wrapper. 

(e)   Turn the application in to the Docket Clerk for counting. Any 
application  which is handed in without all of the required references 
will be returned  to the exam-iner. The missing reference(s) should be 
obtained and the file  returned to the Docket Clerk as quickly as possible. 

        In the case of design applications, procedures are the same as set 
 forth in MPEP # 707.05 (a)-(g) except that less than the entire 
disclosure  of a cited U.S utility patent may be supplied with the action 
by the Design  Group. Copies of all sheets of drawings relied on and of 
the first page of  the specification are furnished without charge. 

Any other subject matter, including additional pages of specification 
relied  on by the examiner will be provided without charge. Where an 
applicant desires  a complete copy of a cited U.S. utility patent, it may 
be obtained through  the Customer Services Division at the usual charge.< 



A70705a07.bmp 





A70705a07.end 




707.05(b) Citation of Related Art by Applicants  [R-1] 


        >MPEP # 609 sets forth positive guidelines for applicants, their 
attorneys  and agents who desire to submit prior art for consideration by 
the Patent and  Trademark Office. 

        Submitted citations will not in any way diminish the obligation of 
 examiners to conduct independent prior art searches, or relieve examiners 
of  citing pertinent prior art of which they may be aware, whether or not 
such  art is cited by the applicant. 

        Prior art submitted by applicant in the manner provided in MPEP # 
609  will not be supplied with an Office action.< 


707.05(c) Order of Listing [R-1] 


        >In citing references for the first time, the identifying data of 
the  citation should be placed on form PTO-892 "Notice of References 
Cited", a copy  of which will be attached to the Office action. No 
distinction is to be made  between references on which a claim is rejected 
and those formerly referred  to as "pertinent". With the exception of 
applicant submitted citations, MPEP  # 609 and # 708.02, it is recommended 
that  the pertinent features of references  which are not used as a basis 
for rejection, be pointed out briefly. 
        See MPEP # 1302.12.< 


707.05(d) Reference Cited in Subsequent Actions [R-1] 


        >Where an applicant in an amendatory paper refers to a reference 
which  is subsequently relied upon by the examiner, such reference shall 
be cited  by the examiner in the usual manner using a form PTO-892, 
"Notice of References  Cited", unless applicant has listed the reference 
on a PTO-1449 which has been  initialled by the examiner.< 


707.05(e) Data Used in Citing References  [R-1] 


        >37 CFR 1.107 ( MPEP # 707.05 and # 901.05(a)) requires the 
examiner  to give certain data when citing references. The patent number, 
patent date,  name of the patentee, class and subclass and the filing 
date, if appropriate,  must be given in the citation of U.S. patents. 
This information is listed  on the "Notice of References Cited" form 
PTO-892 (Copy at MPEP # 707.05). See  MPEP w 901.04 for details concerning 
the various series of U.S. patents and  how to cite them. Note that 
patents of the X-Series (dated prior to July 4,  1836) are not to be cited 
by number. Some U.S. patents issued in 1861 have  two numbers thereon. The 
larger number should be cited. 

        If the patent date of a U.S. patent is after, and the effective 
filing  date of the patent is before, the effective U.S. filing date of 
the application,  the filing date of the  patent must be set forth along 
with the citation of  the patent. This calls attention to the fact that 
the particular patent relied  on is a reference because of its filing date 
and not its patent date.  Similarly,  when the reference is a 
continuation-in-part of an earlier filed application  which discloses the 
anticipatory matter and it is necessary to go back to the  earlier filing 
date, the fact that the subject matter relied upon was originally 
disclosed on that date in the first application should be stated. 

        In the rare instance where no art is cited in a continuation 
application,  all the references cited during the prosecution of the 
parent application will  be listed at allowance for printing in the 
patent.  See MPEP # 707.05(a). 


CROSS-REFERENCES 

        Official cross-references should be marked "X". 

FOREIGN PATENTS AND PUBLISHED 
APPLICATIONS 

        In citing foreign patents, the patent number, citation date, name 
of  the country, name of the patentee, and U..S. class and subclass must 
be given.  Foreign patents searched in those Examining Groups filing by 
International  Patent Classification (IPC) will be cited using the 
appropriate IPC subclass/group/subgroup.  On the file wrapper "Searched" 
box and PTO-892, the IPC subclass shall be cited  in the space provided 
for "Class", and IPC group/subgroup shall be cited in  the space provided 
for "Subclass". 

        In actions where references are furnished, and (1) less than the 
entire  disclosure is relied upon, the sheet and page numbers specifically 
relied upon  and the total number of sheets of drawing and pages of 
specification must be  included (except applicant submitted citations); 
(2) the entire disclosure  is relied on, the total number of sheets and 
pages are not included, and the  appropriate columns on PTO-892 are left 
blank. 

        Publications such as German allowed applications and Belgian and 
Netherlands  printed specifications should be similarly handled. If the 
total number of  sheets and pages in any publication to be furnished 
(other than U.S. patents)  exceeds 15, the authorizing signature of the 
supervisory primary examiner is  required. Applicants who desire a copy of 
the complete foreign patent or of  the portion not "relied on" must order 
it in the usual manner. 

        See MPEP # 901.05(a) for a chart in which foreign language terms 
indicative  of foreign patent and publication dates to be cited are listed. 

PUBLICATIONS 

        See MPEP # 711.06(a) for citation of abstracts, 
abbreviatures and defensive publications. See MPEP 
# 901.06(c) for citation of Alien Property Custodian publications. In 
citing  a publication, sufficient information should be given to determine 
the identity  and facilitate the location of the publication. For books 
the data required  by 37 CFR 1.107 (MPEP # 707.05) with the specific pages 
relied on identified  together with the SCIENTIFIC LIBRARY call number 
will suffice. The call number  appears on the "spine" of the book if the 
book is thick enough and, in any  event, on the back of the title page. 
Books on interlibrary loan will be marked  with the call numbers of the 
other library, of course. THIS NUMBER SHOULD NOT  BE CITED. The same 
convention should be followed in citing articles from periodicals.  The 
call number should be cited for periodicals owned by the Scientific 
Library,  but not for periodicals borrowed from other libraries. In citing 
periodicals,  information sufficient to identify the article includes the 
author(s) and title  of the article and the title, volume number issue 
number, date, and pages of  the periodical. If the copy relied on is 
located only in the group making the  action (there may be no call 
number), the additional information, 

        "Copy in Group" should be given. 

         Examples of nonpatent bibliographical citations: 

1. For books: 

        Winslow. C. E. A. Fresh Air and Ventilation. N.Y., E. P. Dutton, 
1926.  p. 97-112. TI17653.W5. 

2. For parts of books: 

        Smith, J. F. "Patent Searching." in: Singer, T.E.R., 
 Information and Communication Practice in Industry (New York, Reinhold, 
1958),  pp. 157-165. T 175.S5. 

3. For encyclopedia articles: 

        Calvert, R. "Patents (Patent Law)." in: Encyclopedia of Chemical 
Technology 
(1952 ed.), vol. 9, pp. 868-890. Ref. TP9.E68. 

 4. For sections of handbooks: 

        Machinery's Handbook, 16th ed. New York, International Press, 
1959.  pp. 1526-1527. TJ151.M3 1959. 

 5. For periodical articles: 

        Noyes, W. A. A Climate for Basic Chemical Research. 

        Chemical & Engineering News, Vol. 38, no. 42(Oct. 17, 1960), pp. 
91-95.  TP1.I418. 

        Note: DO NOT abbreviate titles of books or periodicals. 

        A citation to P.S.E.B.M. is meaningless. References are to be 
cited  so that anyone reading a patent may identify and retrieve the 
publications  cited. Give as much bibliographic information as possible, 
but at least enough  to identify the publication. For books, minimal 
information includes the author,  title and date. For periodicals, at 
least the title of the periodical, the  volume number, date, and pages 
should be given. These minimal citations may  be made ONLY IF the complete 
bibliographic details are unknown or unavailable. 
        If the original publication is located outside the Office, the 
examiner  should immediately make or order a photocopy of at least the 
portion relied  upon and indicate the class and subclass in which it will 
be filed. The Office  action MUST designate this class and subclass.< 


707.05(f) Effective Dates of Declassified Printed Matter [R-1] 


        >In using declassified material as references there are usually 
two  pertinent dates to be considered, namely, the printing date and the 
publication  date. The printing date in some instances will appear on the 
material and may  be considered as that date when the material was 
prepared for limited distribution.  The publication date is the date of 
release when the material was made available  to the public. See Ex parte 
Harris et al., 79 USPQ 439. If the date of release  does not appear on the 
material, this date may be determined by reference to the Office of 
Technical  Services, Department of Commerce. 

        In the use of any of the above noted material as an anticipatory 
publication,  the date of release following declassification is the 
effective date of publication  within the meaning of the statute. 

        For the purpose of anticipation predicated upon prior knowledge 
under  35 U.S.C. 102(a) the above noted declassified material may be taken 
as prima  facie evidence of such prior knowledge as of its printing date 
even though  such material was classified at that time. When so used the 
material does not  constitute an absolute statutory bar and its printing 
date may be antedated  by an affidavit or declaration under 37 CFR 1.131.< 


707.05(g) Incorrect Citation of References  [R-1] 


        >Where an error in citation of a reference is brought to the 
attention  of the Office by applicant, a letter correcting the error, 
together with a  correct copy of the reference, is sent to applicant. See 
MPEP # 710.06. Where  the error is discovered by the examiner, applicant 
is also notified and the  period for response restarted. In either case, 
the examiner is directed to  correct the error, in ink, in the paper in 
which the error appears, and place  his or her initials on the margin of 
such paper, together with a notation of  the paper number of the action in 
which the citation has been correctly given.  See MPEP w 710.06. 

        Form PTOL-316 is used to correct an erroneous citation or an 
erroneously  furnished reference. Clerical instructions are outlined in 
the Manual of Clerical  Procedures, w 410.C (2) and (3). 

        Form Paragraphs 7.81-7.83 may be used to correct citations or 
copies  of references cited. 

W 7.81      Correction Letter re Last Office Action 

        In response to applicant's [1] regarding the last Office action, 
the  following corrective action is taken. 

        The period for response of [2] MONTHS set in said office action is 
 RESTARTED to begin with the date of this letter. 

Examiner Note: 

        1.  In bracket 1, insert -- telephone inquiry of _____________ . 
--  or--  communication dated _________.-- 

        2.  In bracket 2, insert the new period for response. 

        3.  This paragraph must be followed by one or more of paragraphs 
7.82,  7.82.01 or 7.83. 

        4.  Before restarting the period, the SPE should be consulted. 
W 7.82      Correction of Reference Citation 

        The reference [1] was not correctly cited in the last Office 
action.  The corrected citation is shown on the attached PTO-892. 

Examiner Note: 

        1.  Every correction MUST be reflected on a corrected or new 
PTO-892. 
        2.  This paragraph must follow paragraph 7.81. 

        3.  If a copy of the PTO-892 is being provided without correction, 
 use paragraph 7.83 instead of this paragraph. 

        4.  Also use paragraph 7.82.01 if reference copies are being 
supplied. 
W 7.82.01 Copy of Reference(s) furnished 

        Copies of the following references not previously supplied are 
enclosed: 
Examiner Note: 

        1.  The reference copies being supplied must be listed following 
this  paragraph. 

        2.  This paragraph must be preceded by paragraph 7.81 and may also 
 be used with paragraph 7.82 or 7.83. 

W 7.83      Copy of Office action supplied 

        [1] of the last Office action is enclosed. 

Examiner Note: 

        1.  In bracket 1, explain what is enclosed. For example: 

        a.  "A corrected copy" 

        b.  "A complete copy" 

        c.  A specific page or pages, e.g., "Pages 3-5" 

        d "A Notice of Reference Cited, Form PTO-892" 

        2.  This paragraph should follow paragraph 7.81 and may follow 
paragraphs  7.82 and 7.82.01. 

        In any case otherwise ready for issue, in which the erroneous 
citation  has not been formally corrected in an official paper, the 
examiner is directed  to correct the citation on an examiner's amendment 
form PTOL-37. 

        If a FOREIGN patent is incorrectly cited: for example, the wrong 
country  is indicated or the country omitted from the citation, the 
General Reference  Branch of the Scientific Library may be helpful. The 
date and number of the  patent are often sufficient to determine the 
correct country which granted  the patent. 

        To correct a citation prior to mailing, see the Manual of Clerical 
 Procedures, # 410.C(1).< 


707.06      Citation of Decisions, Orders Memorandums, and Notices [R-1] 

        >In citing court decisions, the USPQ citation should be given and, 
 when it is convenient to do so, the U.S., CCPA or Federal Reporter 
citation  should also be provided. 

        The citation of manuscript decisions which are not available to 
the  public should be avoided. 

        It is important to recognize that a Federal District Court 
decision  that has been reversed on appeal cannot be cited as authority. 

        In citing a manuscript decision which is available to the public 
but  which has not been published, the tribunal rendering the decision and 
complete  data identifying the paper should be given. Thus, a decision of 
the Board of  Patent Appeals and Interferences which has not been 
published but which is  available to the public in the patented file 
should be cited, as "Ex parte  , decision of the Board of Patent Appeals 
and Interferences, Patent No., paper  No. , pages." 

        Decisions found only in patented files should be cited only when 
there  is no published decision on the same point. 

        When a Commissioner's order, notice or memorandum not yet 
incorporated  into this manual is cited in any official action, the title 
and date of the  order, notice or memorandum should be given. When 
appropriate other data, such  as a specific issue of the Journal of the 
Patent Office Society or of the Official  Gazette in which the same may be 
found, should also be given.< 


707.07      Completeness and Clarity of Examiner's Action [R-1] 


>37 CFR 1.105. Completeness of examiner's action. 

        The examiner's action will be complete as to all matters, except 
that  in appropriate circumstances, such as misjoinder of invention, 
fundamental  defects in the application, and the like, the action of the 
examiner may be  limited to such matters before further action is made. 
However, matters of  form need not be raised by the examiner until a claim 
is found allowable. 
        Form Paragraphs 7.37 and 7.38 may be used where applicant's 
arguments  are not persuasive or moot. 

W 7.37      Arguments Are Not Persuasive 

        Applicant's arguments filed [1] have been fully considered but 
they  are not persuasive. [2]. 

Examiner Note: 

        1.  The examiner must address all arguments which have not already 
 been responded to in the statement of the rejection. 

        2.  In bracket 2, provide explanation as in non-persuasiveness. 
W 7.38      Arguments Are Moot Because of New Ground of Rejection 
        Applicant's arguments with respect to claim [1] have been 
considered  but are moot in view of the new grounds of rejection. 

Examiner Note: 

        The examiner must, however, address any arguments presented by the 
 applicant which are still relevant to any references being applied.< 

707.07(a) Complete Action on Formal Matters [R-1] 


        >Forms are placed in informal applications listing informalities 
noted  by the Draftsman (Form PTO-948) and the Application Division (Form 
PTO-152).  Each of these forms comprises an original for the file record 
and a copy to  be mailed to applicant as a part of the examiners first 
action. They are specifically  referred to as attachments to the letter 
and are marked with its paper number.  In every instance where these forms 
are to be used, they should be mailed with  the examiner's first letter, 
and any additional formal requirements which the  examiner desires to make 
should be included in the first letter. 

        When any formal requirement is made in an examiner's action, that 
action  should, in all cases where it indicates allowable subject matter, 
call attention  to 37 CFR 1.111(b) and state that a complete response must 
either comply with  all formal requirements or specifically traverse each 
requirement not complied  with. 

W 7.43.03 Allowable Subject Matter, Formal Requirements Outstanding 
        As allowable subject matter has been indicated, applicant's 
response  must either comply with all formal requirements or specifically 
traverse each  requirement not complied with. See 37 CFR 1.111(b) and 
MPEP # 707.07(a). 

Examiner Note: 

        This paragraph would be appropriate when changes must be made 
prior  to allowance. For example, when there is a requirement for drawing 
corrections  that have to be submitted for approval or when corrections to 
the specification  have to be made prior to allowance.< 


707.07(b) Requiring New Oath [R-1] 


        >See MPEP # 602.02.< 


707.07(c) Draftsman's Requirement [R-1] 


        >See MPEP # 707.07(a); also MPEP # 608.02(a), (e), and (s).< 

707.07(d) Language To Be Used In Rejecting Claims [R-2] 


        Where a claim is refused for any reason relating to the merits 
thereof  it should be "rejected" and the ground of rejection fully and 
clearly stated,  and the word "reject" must be used. The examiner should 
designate the statutory basis  for any ground of rejection by express 
reference to a section of 35 U.S.C.  in the opening sentence of each 
ground of rejection. If the claim is rejected  as too broad, the reason 
for so holding should be given; if rejected as indefinite  the examiner 
should point out wherein the indefiniteness resides; or if rejected  as 
incomplete, the element or elements lacking should be specified, or the 
applicant be otherwise advised as to what the claim requires to render it 
complete. 
        See MPEP # 706.02 >(i), (j), and (m)< for language    to be used. 
        Everything of a personal nature must be avoided. Whatever may be 
the  examiners view as to the utter lack of patentable merit in the 
disclosure of  the application examined, he or she should not express in 
the record the opinion  that the application is, or appears to be, devoid 
of patentable subject matter.  Nor should he or she express doubts as to 
the allowability of allowed claims  or state that every doubt has been 
resolved in favor of the applicant in granting  him the claims allowed. 

        Although, not every ground of rejection may be categorically 
related  to a specific section of the statute, 
35 U.S.C. 112 is considered as the more apt section for old combination 
rejections  than 35 U.S.C. 102 or 103; Ex parte Des Granges, 864 O.G. 7122. 

        The examiner should, as a part of the first Office action on the 
merits,  identify any claims which he or she judges, as presently recited, 
to be allowable  and/or should suggest any way in which he or she 
considers that rejected claims  may be amended to make them allowable. If 
the examiner does not do this, then  by implication it will be understood 
by the applicant or his or her attorney  or agent that in the examiner's 
opinion, as presently advised, there appears  to be no allowable claim nor 
anything patentable in the subject matter to which  the claims are 
directed. 

IMPROPERLY EXPRESSED REJECTIONS 

        An omnibus rejection of the claim "on the references and for the 
reasons  of record" is stereotyped and usually not informative and should 
therefore  be avoided. This is especially true where certain claims have 
been rejected  on one ground and other claims on another ground. 

        A plurality of claims should never be grouped together in a common 
 rejection, unless that rejection is equally applicable to all claims in 
the  group. 


707.07(e) Note All Outstanding Requirements [R-1] 


        >In taking up an amended case for action the examiner should note 
in  every letter all the requirements outstanding against the case. Every 
point  in the prior action of an examiner which is still applicable must 
be repeated  or referred to, to prevent the implied waiver of the 
requirement. 
        As soon as allowable subject matter is found, correction of all 
informalities  then present should be required.< 


707.07(f) Answer All Material Traversed  [R-2] 


        Where the requirements are traversed, or suspension thereof 
requested,  the examiner should make proper reference thereto in his 
action on the amendment. 
        Where the applicant traverses any rejection, the examiner should, 
if  he or she repeats the rejection, take note of the applicant's argument 
and  answer the substance of it. 

        If a rejection of record is to be applied to a new or amended 
claim,  specific identification of that ground of rejection, as by 
citation of the  paragraph in the former Office letter in which the 
rejection was originally  stated, should be given. 

ANSWERING ASSERTED ADVANTAGES 

        After an Office action, the response (in addition to making 
amendments,  etc.) may frequently include arguments and affidavits to the 
effect that the  prior art cited by the examiner does not teach how to 
obtain or does not inherently  yield one or more advantages (new or 
improved results, functions or effects),  which advantages are urged to 
warrant issue of a patent on the allegedly novel  subject matter claimed. 

        If it is the examiner's considered opinion that the asserted 
advantages  are without significance in determining patentability of the 
rejected claims,  he or she should state the reasons for his or her 
position in the record, preferably  in the action following the assertion 
or argument relative to such advantages.  By so doing the applicant will 
know that the asserted advantages have actually been considered  by the 
examiner and, if appeal is taken, the Board of Patent Appeals and 
Interferences  will also be advised. 

        The importance of answering such arguments is illustrated by In re 
 Herrmann **>261 F.2d 598, 120 USPQ 182 (CCPA 1958)< where the applicant 
urged  that the subject matter claimed produced new and useful results. 
The court  noted that since applicant's statement of advantages was not 
questioned by  the examiner or the Board of Appeals, it was constrained to 
accept the statement  at face value and therefore found certain claims to 
be allowable. 

        >See also In re Soni, 54 F.3d 746, 751, 34 USPQ2d 1684, 1688 (Fed 
Cir.  1995) (Office failed to rebut applicant's argument).< 


707.07(g) Piecemeal Examination [R-2] 


        Piecemeal examination should be avoided as much as possible. The 
examiner  ordinarily should reject each claim on all valid grounds 
available, avoiding,  however, undue multiplication of references. (See MPEP 
w 904.02.) Major technical rejections on grounds such as lack of proper 
disclosure,  undue breadth, serious indefiniteness and res judicata should 
be applied where  appropriate even though there may be a seemingly 
sufficient rejection on the  basis of prior art. Where a major technical 
rejection is proper, it should  be stated with a full development of 
reasons rather than by a mere conclusion  coupled with some stereotyped 
expression. 

        In cases where there exists a sound rejection on the basis of 
prior  art which discloses the "heart" of the invention (as distinguished 
from prior  art which merely meets the terms of the claims), secondary 
rejections on minor  technical grounds should ordinarily not be made. 
Certain technical rejections 
(e.g. negative limitations, indefiniteness) should not be made where the 
examiner,  recognizing the limitations of the English language, is not 
aware of an improved  mode of definition. 

        Some situations exist where examination of an application appears 
best  accomplished by limiting action on the claim thereof to a particular 
issue.  These situations include the following: 

(1)   Where an application is too informal for a complete action on the 
merits;  see  MPEP w 702.01; 

(2)   Where there is an undue multiplicity of claims, and there has been 
no  successful telephone request for election of a limited number of 
claims for  full examination; see MPEP w *>2173.05(n)<; 

(3)   Where there is a misjoinder of inventions and there has been no 
successful  telephone request for election; see  MPEP  w 803, w 806.02, w 
812.01; 
(4)   Where disclosure is directed to perpetual motion; note Ex parte 
Payne,  1904 C.D. 42; 108 O.G. 1049. However, in such cases, the best 
prior art readily  available should be cited and its pertinency pointed 
out without specifically  applying it to the claims. 

        On the other hand, a rejection on the grounds of res judicata, no 
prima  facie showing for reissue, new matter, or inoperativeness (not 
involving perpetual  motion) should be accompanied by rejection on all 
other available grounds. 

707.07(h) Notify of Inaccuracies in Amendment [R-1] 


        >See  MPEP # 714.23.< 


707.07(i) Each Claim To Be Mentioned in Each Letter [R-1] 


        >In every letter each claim should be mentioned by number, and its 
 treatment or status given. Since a claim retains its original numeral 
throughout  the prosecution of the case, its history through successive 
actions is thus  easily traceable. Each action should conclude with a 
summary of all claims  presented for examination. 

        Claims retained under 37 CFR 1.142 and claims retained under 37 
CFR  1.146 should be treated as set out in MPEP # 821 to # 821.03 and # 
809.02(c). 
        See MPEP # 2363.03  for treatment of claims in the application of 
losing  party in interference. 

        The Index of Claims should be kept up to date as set forth in MPEP 
 # 717.04.< 


707.07(j) State When Claims Are Allowable [R-1] 


>INVENTOR FILED APPLICATIONS 

        When, during the examination of a pro se case, it becomes apparent 
 to the examiner that there is patentable subject matter disclosed in the 
application,  the examiner shall draft one or more claims for the 
applicant and indicate  in his or her action that such claims would be 
allowed if incorporated in the  application by amendment. 

        This practice will expedite prosecution and offer a service to 
individual  inventors not represented by a 


registered patent attorney or agent. Although this practice may be 
desirable  and is permissible in any case where deemed appropriate by the 
examiner, it  will be expected to be applied in all cases where it is 
apparent that the applicant  is unfamiliar with the proper preparation and 
prosecution of patent applications. 
ALLOWABLE EXCEPT AS TO FORM 

        When an application discloses patentable subject matter and it is 
apparent  from the claims and the applicant's arguments that the claims 
are intended  to be directed to such patentable subject matter, but the 
claims in their present  form cannot be allowed because of defects in form 
or omission of a limitation,  the examiner should not stop with a bare 
objection or rejection of the claims.  The examiner's action should be 
constructive in nature and when possible should  offer a definite 
suggestion for correction. Further, an examiner's suggestion  of allowable 
subject matter may justify indicating the possible desirability  of an 
interview to accelerate early agreement on allowable claims. 
        If the examiner is satisfied after the search has been completed 
that  patentable subject matter has been disclosed and the record 
indicates that  the applicant intends to claim such subject matter, the 
examiner may note in  the Office action that certain aspects or features 
of the patentable invention  have not been claimed and that if properly 
claimed such claims may be given  favorable consideration. 

        If a claim is otherwise allowable but is dependent on a cancelled 
claim  or on a rejected claim, the Office action should state that the 
claim would  be allowable if rewritten in independent form. 

EARLY ALLOWANCE OF CLAIMS 

        Where the examiner is satisfied that the prior art has been fully 
developed  and some of the claims are clearly allowable, the allowance of 
such claims  should not be delayed. 

W 7.43      Objection to Claims, Allowable Subject Matter 

        Claim [1] objected to as being dependent upon a rejected base 
claim,  but would be allowable if rewritten in independent form including 
all of the  limitations of the base claim and any intervening claims. 

W 7.43.01 Allowable Subject Matter, Claims Rejected under 
35 U.S.C. 112, Independent Claim 

        Claim [1] would be allowable if rewritten or amended to overcome 
the  rejection(s) under 35 U.S.C. 112 set forth in this Office action. 
W 7.43.02 Allowable Subject Matter, Claims Rejected under 
35 U.S.C. 112, Dependent Claim 

        Claim [1] would be allowable if rewritten to overcome the 
rejection(s)  under 35 U.S.C. 112 set forth in this Office action and to 
include all of the  limitations of the base claim and any intervening claims. 

        Form Paragraph 7.97 may be used to indicate allowance of claims. 
 W  7.97        Claims Allowed 

        Claim [1] allowed.< 


707.07(k) Numbering Paragraphs [R-1] 


        >It is good practice to number the paragraphs of the letter 
consecutively.  This facilitates their identification in the future 
prosecution of the case.< 


707.07(l) Comment on Examples [R-1] 


        >The results of the tests and examples should not normally be 
questioned  by the examiner unless there is reasonable basis for 
questioning the results.  If the examiner questions the results, the 
appropriate claims should be rejected  as being based on an insufficient 
disclosure under 35 U.S.C. 112, first paragraph,  In re Borkowski et al, 
164 USPQ 642 (CCPA 1970). The applicant must respond  to the rejection or 
it will be repeated, for example, by providing the results  of an actual 
test or example which has been conducted, or by providing relevant 
arguments that there is strong reason to believe that the result would be 
as  predicted. Care should be taken that new matter is not entered into 
the application. 
        If questions are present as to operability or utility, 
consideration  should be given to the applicability of a rejection under 
35 U.S.C. 101.< 

707.08      Reviewing and Initialing by Assistant Examiner [R-2] 


        The full surname of the examiner who prepares the Office action 
will,  in all cases, be typed *>at the end of< the action.  The telephone 
number below  this should be called if the case is to be discussed or an 
interview arranged.  Form paragraph 7.101 or *>7.102< should be used. 

W 7.101             Telephone Inquiry Contacts- Non 5/4/9 Schedule 
        Any inquiry concerning this communication or earlier 
communications  from the examiner should be directed to [1] whose 
telephone number is (703)  [2].  The examiner can normally be reached on 
[3] from [4] to [5]. 
        If attempts to reach the examiner by telephone are unsuccessful, 
the  examiner's supervisor, [6], can be reached on (703) [7].  The fax 
phone number  for this group is (703) [8]. 

        Any inquiry of a general nature or relating to the status of this 
application  or proceeding should be directed to the group receptionist 
whose telephone  number is (703) [9]. 

Examiner Note: 

        1.  In bracket 1, insert your name. 

        2.  In bracket 2, insert your individual phone number. 

        3.  In bracket 3, insert the days that you work every week, e.g. 
                "Monday-Thursday" for an examiner off every Friday. 
        4.  In brackets 4 and 5, insert your normal duty hours, e.g. 
                "6:30 AM - 5:00 PM."  **>Do< not insert the 
                core hours. 

        5.  In bracket 6, insert your SPE's name. 

        6.  In bracket 7, insert you SPE's phone number. 

        7.  In bracket 8, insert the group fax number. 

        8>.<    In bracket 9, insert the telephone number for your group 
             receptionist. 
W *>7.102<  Telephone Inquiry Contacts- 5/4/9 Schedule 

        Any inquiry concerning this communication or earlier 
communications  from the examiner should be directed to [1] whose 
telephone number is (703)  [2].  The examiner can normally be reached on 
[3] from [4] to [5]. The examiner  can also be reached on alternate [6]. 

        If attempts to reach the examiner by telephone are unsuccessful, 
the  examiner's supervisor, [7], can be reached on (703) [8]. The fax 
phone number  for this group is (703) [9]. 

        Any inquiry of a general nature or relating to the status of this 
application  or proceeding should be directed to the group receptionist 
whose telephone  number is (703) [10]. 

Examiner Note: 

        1.  In bracket 1, insert your name. 

        2.  In bracket 2, insert your individual phone number. 

        3.  In bracket 3, insert the days that you work every week, e.g., 
             "Monday-Thursday"  for an examiner off on alternate 
                Fridays. 

        4.  In bracket 4 and 5, insert your normal duty hours, e.g. "6:30 
             AM  -4:00 PM." **>Do< not insert the core hours. 

        5.  In bracket 6, insert the day in each pay-period that is your 
     compressed  day off, e.g. "Fridays" for an examiner on 5/4/9 
with the first Friday  off. 

        6.  In bracket 7, insert your SPE's name. 

        7.  In bracket 8, insert your SPE's phone number. 

        8.  In bracket 9, insert the group fax number. 

        9.  In bracket 10, insert the telephone number for your group 
             receptionist. 
        After the action is typed, the examiner who prepared the action 
reviews  it for correctness. >The surname or initials of the examiner who 
prepared the  action and the date on which action was typed should appear 
below the action.< 
 If this examiner does not have the authority to sign the action, he or 
she  should initial above the typed name >or initials<, and forward the 
action to  the authorized signatory examiner for signing. 


707.09      Signing by Primary or Other Authorized Examiner [R-1] 

        >Although only the original is signed, the word "Examiner" and the 
 name of the signer should appear on the original and copies. 

        All letters and issues should be signed promptly.< 


707.10      Entry [R-1] 


        >The original, signed by the authorized examiner, is the copy 
which  is placed in the file wrapper. The character of the action, its 
paper number  and the date of mailing are entered in black ink on the 
outside of the file  wrapper under "Contents".< 


707.11      Date [R-1] 


        >The date should not be typed when the letter is written, but 
should  be stamped or printed on all copies of the letter after it has 
been signed  by the authorized signatory examiner and the copies are about 
to be mailed.< 

707.12      Mailing [R-1] 


        >Copies of the examiner's action are mailed by the group after the 
 original, initialed by the assistant examiner and signed by the 
authorized  signatory examiner, has been placed in the file. After the 
copies are mailed  the original is returned for placement in the file.< 


707.13      Returned Office Action [R-1] 


        >Letters are sometimes returned to the Office because the Post 
Office  has not been able to deliver them. The examiner should use every 
reasonable  means to ascertain the correct address and forward the letter 
again, after  stamping it "remailed" with the date thereof and redirecting 
it if there be  any reason to believe that the letter would reach 
applicant at such new address.  If the Office letter was addressed to an 
attorney, a letter may be written  to the inventor or assignee informing 
him or her of the returned letter. The period running against the 
application begins with the date of remailing. (Ex  parte Gourtoff, 1924 
C.D. 153, 329 O.G. 536.) 

        If the Office is not finally successful in delivering the letter, 
it  is placed, with the envelope, in the file wrapper. If the period 
dating from  the remailing elapses with no communication from applicant, 
the case is forwarded  to the Abandoned Files Repository.< 


708   Order of Examination [R-2] 


37 CFR 1.101.     Order of examination. 

        (a)   *>Nonprovisional applications< filed in the Patent and 
Trademark  Office and accepted as complete applications are assigned for 
examination to  the respective examining groups having the classes of 
inventions to which the  applications relate. *>Nonprovisional 
applications< shall be taken up for examination  by the examiner to whom 
they have been assigned in the order in which they  have been filed except 
for those applications in which examination has been  advanced pursuant to 
# 1.102. See w1.496 for order of examination of international 
applications in the national stage. 

        (b)   Applications which have been acted upon by the examiner, and 
 which have been placed by the applicant in condition for further action 
by  the examiner (amended applications) shall be taken up for action in 
such order  as shall be determined by the Commissioner. 

        Each examiner will give priority to that applicant in his or her 
docket,  whether amended or new, which has the oldest effective U.S. 
filing date. Except  as rare circumstances may justify group directors in 
granting individual exceptions,  this basic policy applies to all 
applications. 

        The actual filing date of a continuation-in-part application is 
used  for docketing purposes. However, the examiner may act on a 
continuation-in-part  application by using the effective filing date, if 
desired. 

        If at any time an examiner determines that the "effective filing 
date"  status of any application differs from what the records show, the 
clerk should  be informed, who should promptly amend the records to show 
the correct status,  with the date of correction. 

        The order of examination for each examiner is to give priority to 
reissue  applications, with top priority to those in which litigation has 
been stayed 
(MPEP 
# 1442.03), then to those special cases having a fixed 30-day due date, 
such  as examiner's answers and decisions on motions. Most other cases in 
the "special"  category (for example, interference cases, cases made 
special by petition,  cases ready for final conclusion, etc.) will 
continue in this category, with  the first effective U.S. filing date 
among them normally controlling priority. 
        All amendments before final rejection should be responded to 
within  two months of receipt. 


708.01      List of Special Cases [R-1] 


>37 CFR 1.102.      Advancement of examination. 

        (a)   Applications will not be advanced out of turn for 
examination  or for further action except as provided by this part, or 
upon order of the  Commissioner to expedite the business of the Office, or 
upon filing of a request  under paragraph (b) of this section or upon 
filing a petition under paragraphs 
(c) or (d) of this section with a verified showing which, in the opinion 
of  the Commissioner, will justify so advancing it. 

        (b)   Applications wherein the inventions are deemed of peculiar 
importance  to some branch of the public service and the head of some 
department of the  Government requests immediate action for that reason, 
may be advanced for examination. 
        (c)   A petition to make an application special may be filed 
without  a fee if the basis for the petition is the applicant's age or 
health or that  the invention will materially enhance the quality of the 
environment or materially  contribute to the development or conservation 
of energy resources. 
        (d)   A petition to make an application special on grounds other 
than  those referred to in paragraph (c) of this section must be 
accompanied by the  petition fee set forth in # 1.17(i). 

        Certain procedures by the examiners take precedence over actions 
even  on special cases. 

        For example, all papers typed and ready for signature should be 
completed  and mailed. 

        All issue cases returned with a "Printer Waiting" slip must be 
processed  and returned within the period indicated. 

        Reissue applications, particularly those involved in stayed 
litigation,  should be given priority. 

        Cases in which practice requires that the examiner act within a 
set  period such as two months after appellants brief to furnish the 
examiner's  answers (MPEP 
# 1208), necessarily take priority over special cases without specific 
time  limits. 

        If an examiner has a case in which he or she is satisfied that it 
is  in condition for allowance, or in which he or she is satisfied will 
have to  be finally rejected, he or she should give such action forthwith 
instead of  making the case await its turn. 

        The following is a list of special cases (those which are 
advanced  out of turn for examination): 

(a)   Applications wherein the inventions are deemed of peculiar 
importance  to some branch of the public service and when for that reason 
the head of some  department of the Government requests immediate action 
and the Commissioner  so orders (37 CFR 1.102). 

(b)   Cases made special as a result of a petition. (See MPEP # 708.02.) 
        Subject alone to diligent prosecution by the applicant, an 
application  for patent that has once been made special and advanced out 
of turn for examination  by reason of a ruling made in that particular 
case (by the Commissioner or  an Assistant Commissioner) will continue to 
be special throughout its entire  course of prosecution in the Patent and 
Trademark Office, including appeal,  if any, to the Board of Patent 
Appeals and Interferences; 


and any interference in which such an application becomes involved shall, 
in  like measure be considered special by all Office officials concerned. 
(c)   Applications for reissues, particularly those involved in stayed 
litigation 
(37 CFR 1.176). 

(d)   Applications remanded by an appellate tribunal for further action. 
(e)   An application, once taken up for action by an examiner according to 
 its effective filing date, should be treated as special by an examiner, 
art  unit or group to which it may subsequently be transferred; exemplary 
situations include new cases transferred as the result of a telephone 
election  and cases transferred as the result of a timely response to any 
official action. 
(f)   Applications which appear to interfere with other applications 
previously  considered and found to be allowable, or which will be placed 
in interference  with an unexpired patent or patents (37 CFR 1.201). 

(g)   Applications ready for allowance, or ready for allowance except as 
to  formal matters. 

(h)   Applications which are in condition for final rejection. 

(i)   Applications pending more than 5 years, including those which, by 
relation  to a prior United States application, have an effective pendency 
of more than 5 years.  See MPEP # 707.02(a). 

(j)   Reexamination Proceedings, MPEP # 2261. 

        See also MPEP # 714.13, # 1207 and # 1309.< 


708.02      Petition To Make Special [R-2] 


37 CFR 1.102      Advancement of examination. 

        (a)   Applications will not be advanced out of turn for 
examination  or for further action except as provided by this part, or 
upon order of the  Commissioner to expedite the business of the Office, or 
upon filing of a request  under paragraph (b) of this section or upon 
filing a petition  under paragraphs 
(c) or (d) of this section with a verified showing which, in the opinion 
of  the Commissioner, will justify so advancing it. 

        (b)   Applications wherein the inventions are deemed of peculiar 
importance  to some branch of the public service and the head of some 
department of the  Government requests immediate action for that reason, 
may be advanced for examination. 
        (c)   A petition to make an application special may be filed 
without  a fee if the basis for the petition is the applicant's age or 
health or that  the invention will materially enhance the quality of the 
environment or materially  contribute to the development or conservation 
of energy resources. 
        (d)   A petition to make an application special on grounds other 
than  those referred to in paragraph (c) of this section must be 
accompanied by the  petition fee set forth in # 1.17(i). 

        New applications ordinarily are taken up for examination in the 
order  of their effective United States filing dates. Certain exceptions 
are made  by way of petitions to make special, which may be granted under 
the conditions  set forth below. 

I. MANUFACTURE 

        An application may be made special on the ground of prospective 
manufacture  upon the filing of a petition accompanied by the fee under 37 
CFR 1.17(i) >and  a verified statement< by the applicant or assignee >or a 
statement by an attorney/agent  registered to practice before the PTO< 
alleging**: 

(1)   The possession by the prospective manufacturer of sufficient 
presently  available capital (stating approximately the amount) and 
facilities (stating  briefly the nature thereof) to manufacture the 
invention in quantity or that  sufficient capital and facilities will be 
made available if a patent is granted; 
        If the prospective manufacturer is an individual, there must be a 
corroborating  affidavit from some responsible party, as for example, an 
officer of a bank,  showing that said individual has the required 
available capital to manufacture; 
(2)   That the prospective manufacturer will not manufacture, or will not 
increase  present manufacture, unless certain that the patent will be 
granted; 
(3)   That *>the prospective manufacturer< obligates himself *>,< herself 
or  **>itself<, to manufacture the invention, in the United States or its 
possessions,  in quantity immediately upon the allowance of claims or 
issuance of a patent  which will protect the investment of capital and 
facilities*>; and< 
** 

(*>4<) That the applicant or assignee has made or caused to be made a 
careful  and thorough search of the prior art, or has a good knowledge of 
the pertinent  prior art**. 

II. INFRINGEMENT 

        Subject to a requirement for a further showing as may be 
necessitated  by the facts of a particular case, an application may be 
made special because  of actual infringement (but not for prospective 
infringement) upon payment  of the fee under 37 CFR 1.17(i) and the filing 
of a petition >accompanied by  a verified statement by the applicant or 
assignee or a statement by an attorney/agent  registered to practice 
before the PTO< alleging 


**>;(1) That< there is an infringing device or product actually on the 
market  or method in use **>; (2) That< a rigid comparison of the alleged 
infringing  device, product, or method with the claims of the application 
has been made,  *>and< that, in his or her opinion, some of the claims are 
unquestionably infringed  **>; and (3) That< he or she has made or caused 
to be made a careful and thorough  search of the prior art or has a good 
knowledge of the pertinent prior art**. 
        >Applicant must provide one copy of each of the reference deemed 
most  closely related to the subject matter encompassed by the claims if 
said references  are not already of record.< 

Models or specimens of the infringing product or that of the application 
should  not be submitted unless requested. 

III. APPLICANT'S HEALTH 

        An application may be made special upon a petition by applicant 
accompanied  by **>any evidence showing< that the state of health of the 
applicant is such  that he might not be available to assist in the 
prosecution of the application  if it were to run its normal course>, such 
as a doctor's certificate or other  medical certificate<. No fee is 
required for such a petition, 37 CFR 1.102(c). 
IV. APPLICANT'S AGE 

        An application may be made special upon filing a petition 
including  **>any evidence showing< that the applicant is 65 years of age, 
or more >,  such as a birth certificate or applicant's verified 
statement<. No fee is required  with such a petition, 37 CFR 1.102(c). 

V. ENVIRONMENTAL QUALITY 

        The Patent and Trademark Office will accord "special" status to 
all  patent applications for inventions which materially enhance the 
quality of  the environment of mankind by contributing to the restoration 
or maintenance  of the basic life-sustaining natural elements - air, 
water, and soil. 
        All applicants desiring to participate in this program should 
petition  that their applications be accorded "special" status. Such 
petitions ** should  be accompanied by **>verified statements< under 37 
CFR 1.102 by the applicant  >or assignee< or **>statements by an 
attorney/agent registered to practice  before the PTO< his attorney or 
agent explaining how the inventions contribute  to the restoration or 
maintenance of one of these life-sustaining elements.  No fee is required 
for such a petition, 
37 CFR 1.102(c). 

VI. ENERGY 

        The Patent and Trademark Office will, on petition>,< accord 
"special"  status to all patent applications for inventions which 
materially contribute  to (1) the discovery or development of energy 
resources, or (2) the more efficient  utilization and conservation of 
energy resources. Examples of inventions in  category (1) would be 
developments in fossil fuels (natural gas, coal, and  petroleum), nuclear 
energy, solar energy, etc. Category (2) would include inventions  relating 
to the reduction of energy consumption in combustion systems, industrial 
equipment, household appliances, etc. 

        All applicants desiring to participate in this program should 
petition  that their applications be accorded "special" status. Such 
petitions ** should  be accompanied by **>verified statements< under 
37 CFR 1.102 by the applicant >or assignee< or **>statements by an 
attorney/agent  registered to practice before the PTO< explaining how the 
invention materially  contributes to category (1) or (2) set forth above. 
No fee is required for  such a petition, 
37 CFR 1.102(c). 

VII. INVENTIONS RELATING TO 
RECOMBINANT DNA 

        In recent years revolutionary genetic research has been conducted 
involving  recombinant deoxyribonucleic acid ("recombinant DNA"). 
Recombinant DNA research  appears to have extraordinary potential benefit 
for mankind. It has been suggested,  for example, that research in this 
field might lead to ways of controlling  or treating cancer and hereditary 
defects. The technology also has possible  applications in agriculture and 
industry. It has been likened in importance to the discovery of nuclear 
fission and fusion. At the same time, concern has been expressed over the 
safety  of this type of research. The National Institutes of Health (NIH) 
has released  guidelines for the conduct of research concerning 
recombinant DNA. These "Guidelines  for Research Involving Recombination 
DNA Molecules," were published in the  Federal Register of July 7, 1976, 
41 FR 27902-27943. NIH is sponsoring experimental  work to identify 
possible hazards and safety practices and procedures. 
        In view of the exceptional importance of recombinant DNA and the 
desirability  of prompt disclosure of developments in the field, the 
Patent and Trademark  Office will accord "special" status to patent 
applications relating to safety  of research in the field of recombinant 
DNA. Upon appropriate petition and  payment of the fee under 37 CFR 
1.17(i), the Office will make special patent  applications for inventions 
relating to safety of research in the field of  recombinant DNA. Petitions 
for special status should be ** accompanied by **  >verified statements< 
under 37 CFR 1.102 by the applicant **>or assignee or  statements by an 
attorney/agent registered to practice before the PTO< explaining  the 
relationship of the invention to safety of research in the field of 
recombinant  DNA research. ** The fee set forth under 37 CFR 1.17(i) must 
also be paid. 
VIII. SPECIAL EXAMINING PROCEDURE FOR CERTAIN NEW APPLICATIONS - 
ACCELERATED EXAMINATION 

        A new application (one which has not received any examination by 
the  examiner) may be granted special status provided that applicant (and 
this term  includes applicant's attorney or agent) complies with each of 
the following  items: 

        (a)   Submits a * petition to make special accompanied by the fee 
set  forth in 37 CFR 1.17(i); 

        (b)   Presents all claims directed to a single invention, or if 
the  Office determines that all the claims presented are not obviously 
directed  to a single invention, will make an election without traverse as 
a prerequisite  to the grant of special status. 

        The election may be made by applicant at the time of filing the 
petition  for special status. Should applicant fail to include an election 
with the original  papers or petition and the Office determines that a 
requirement should be made,  the established telephone restriction 
practice will be followed. 

        If otherwise proper, examination on the merits will proceed on 
claims  drawn to the elected invention. 

        If applicant refuses to make an election without traverse, the 
application  will not be further examined at that time. The petition will 
be denied on the  ground that the claims are not directed to a single 
invention, and the application  will await action in its regular turn. 

        Divisional applications directed to the nonelected inventions will 
 not automatically be given special status based on papers filed with the 
petition  in the parent case. Each such application must meet on its own 
all requirements  for the new special status; 

        (c)   Submits a *>statement(s)< that a pre-examination search was 
made,  ** and listing the field of search by class and subclass, 
publication, Chemical  Abstracts, foreign patents, etc. A search made by a 
foreign patent office   satisfies this requirement; 

        (d)   Submits one copy each of the references deemed most closely 
related  to the subject matter encompassed by the claims>if said 
references are not  already of record<; and 

        (e)   Submits a detailed discussion of the references, which 
discussion  points out, with the particularity required by 37 CFR 1.111 
(b) and (c), how  the claimed subject matter is *>patentable< over the 
references. ** 
        In those instances where the request for this special status does 
not  meet all the prerequisites set forth above, applicant will be 
notified and  the defects in the request will be stated. The application 
will remain in the  status of a new application awaiting action in its 
regular turn. In those instances  where a request is defective in one or 
more respects, applicant will be given  one opportunity to perfect the 
request >in a renewed petition to make special<.  If perfected, the 
request will then be granted.  >If not perfected in the first  renewed 
petition, any additional renewed petitions to make special may or may  not 
be considered at the discretion of the Group Director.< 

        Once a request has been granted, prosecution will proceed 
according  to the procedure set forth below; there is no provision for 
"withdrawal" from  this special status. 

        The special examining procedure of VIII (accelerated examination) 
involves  the following procedures: 

(1)   The new application, having been granted special status as a result 
of  compliance with the requirements set out above will be taken up by the 
examiner before all other categories of applications except those clearly 
in condition  for allowance and those with set time limits, such as 
examiner's answers, etc.,  and will be given a complete first action which 
will include all essential  matters of merit as to all claims. The 
examiner's search will be restricted  to the subject matter encompassed by 
the claims. A first action rejection will  set a 3-month shortened period 
for response. 

(2)   During the 3-month period for response, applicant is encouraged to 
arrange  for an interview with the examiner in order to resolve, with 
finality, as many  issues as possible. In order to afford the examiner 
time for 


reflective consideration before the interview, applicant or his or her 
representative  should cause to be placed in the hands of the examiner at 
least one working  day prior to the interview, a copy (clearly denoted as 
such) of the ** amendment  that he proposes to file in response to the 
examiner's action. Such a paper  will not become a part of the file, but 
will form a basis for discussion at  the interview. 

(3)   Subsequent to the interview, or responsive to the examiner's first 
action  if no interview was had, applicant will file the "record" 
response. The response  at this stage, to be proper, must be restricted to 
the rejections, objections,  and requirements made. Any amendment which 
would require broadening the search  field will be treated as an improper 
response. 

(4)   The examiner will, within 1 month from the date of receipt of 
applicant's  formal response, take up the application for final 
disposition. This disposition  will constitute either a final action which 
terminates with the setting of  a 3-month period for response, or a notice 
of allowance. The examiner's response  to any amendment submitted after 
final rejection should be prompt and by way  of form PTO-303 or PTO-327, 
by passing the case to issue, or by an examiner's  answer should applicant 
choose to file an appeal brief at this time.  The use  of these forms is 
not intended to open the door to further prosecution. Of  course, where 
relatively minor issues or deficiencies might be easily resolved,  the 
examiner may use the telephone to inform the applicant of such. 
(5)   A personal interview after final Office action will not be permitted 
 unless requested by the examiner. However, telephonic interviews will be 
permitted  where appropriate for the purpose of correcting any minor 
matters which remain  outstanding. 

        After allowance, these applications are given top priority for 
printing. 
 See MPEP # 1309. 

IX. SPECIAL STATUS FOR PATENT 
APPLICATIONS RELATING 
TO SUPERCONDUCTIVITY 

        In accordance with the President's proposal directing the Patent 
and  Trademark Office to accelerate the processing of patent applications 
and adjudication  of disputes involving superconductivity technologies 
when requested by the  applicant to do so, the Patent and Trademark Office 
will, on request, accord  "special" status to all patent applications for 
inventions involving superconductivity  materials. Examples of such 
inventions would include those directed to the  superconductive materials 
themselves as well as to their manufacture and application.  In order that 
the Patent and Trademark Office may implement this procedure,  we invite 
all applicants desiring to participate in this program to request  that 
their applications be accorded "special" status. Such requests should  be 
** accompanied by a statement under 37 CFR 1.102 that the invention 
involves  superconductive materials. No fee is required. The statement 
must be verified  if made by a person not registered to practice before 
the Patent and Trademark  Office. ** 

X. INVENTIONS RELATING TO HIV/AIDS 
AND CANCER 

        In view of the importance of developing treatments and cures for 
HIV/AIDS  and cancer and the desirability of prompt disclosure of advances 
made in these  fields, the Patent and Trademark Office will accord 
"special" status to patent  applications relating to HIV/AIDS and cancer. ** 

        Applicants who desire that an application relating to HIV/AIDS or 
cancer  be made special should file a petition and the fee under 37 CFR 
1.17 (i) requesting  the Patent and Trademark Office to make the 
application special.  The petition  for special status should be ** 
accompanied by a statement explaining how the  invention contributes to 
the diagnosis, treatment or prevention of HIV/AIDS  or cancer.  Such 
statement must be **>verified< unless it is signed by a registered 
practitioner. ** 

>FORMAL REQUIREMENTS OF PETITION TO MAKE SPECIAL 

        Any petition to make special should: 

        (1)  be in writing; and 

        (2) identify the application by application number and filing 
date.< 
HANDLING OF PETITIONS TO MAKE SPECIAL 

        >Applications which have been made special will be advanced out of 
 turn for examination and will continue to be treated as special 
throughout  the entire prosecution in the PTO.< 

        Each petition to make special, regardless of the ground upon which 
 the petition is based and the nature of the decision, is made of record 
in  the application file, together with the decision thereon. The Office 
that rules  on a petition is responsible for properly entering that 
petition and the resulting  decision in the file record. The petition, 
with any attached papers and supporting  affidavits, will be given a 
single paper number and so entered in the "Contents"  of the file. The 
decision will be accorded a separate paper number and similarly  entered. 
To ensure entries in the "Contents" in proper order, the clerk in  the 
examining group will make certain that all papers prior to a petition have 
 been entered and/or listed in the application file before forwarding it 
for  consideration of the petition. Note MPEP w 1002.02 (b), (c), 
and (j). 

        >Petitions to make special, except those based on the ground of 
prospective  manufacture or infringement, are decided by the Director of 
the patent examining  group to which the application is assigned. 
Petitions to make special based  on the ground of prospective manufacture 
or infringement are decided by the  Office of Petitions.< 


708.03      Examiner Tenders Resignation [R-1] 


        >Whenever an examiner tenders his or her resignation, the 
supervisory  primary examiner should see that the remaining time as far as 
possible is used  in winding up the old complicated cases or those with 
involved records and  getting as many of his amended cases as possible 
ready for final disposition. 
        If the examiner has considerable experience in his or her 
particular  art, it is also advantageous to the Office if he or she 
indicates (in pencil)  in the file wrappers of cases in his or her docket, 
the field of search or  other pertinent data that he considers appropriate.< 


709   Suspension of Action [R-1] 


>37 CFR 1.103.       Suspension of action. 

        (a) Suspension of action by the Office will be granted for good 
and  sufficient cause and for a reasonable time specified upon petition by 
the applicant  and, if such cause is not the fault of the Office, the 
payment of the fee set  forth in w 1.17(i). Action will not be suspended 
when a response by the applicant  to an Office action is required. 

        (b)   If action by the Office on an application is suspended when 
not  requested by the applicant, the applicant shall be notified of the 
reasons  therefor. 

        (c)   Action by the examiner may be suspended by order of the 
Commissioner  in the case of applications owned by the United States 
whenever publication  of the invention by the granting of a patent thereon 
might be detrimental to  the public safety or defense, at the request of 
the appropriate department  or agency. 

        (d)   Action on applications in which the Office has accepted a 
request  to publish a defensive publication will be suspended for the 
entire pendency  of these applications except for purposes relating to 
patent interference proceedings  under Subpart E. 

        Suspension of action (37 CFR 1.103) should not be confused with 
extension  of time for reply (37 CFR 1.136).  It is to be noted that a 
suspension of action  applies to an impending Office action by the 
examiner whereas an extension  of time for reply applies to action by the 
applicant. In other words, the action  cannot be suspended in an 
application which contains an outstanding Office  action or requirement 
awaiting response by the applicant. It is only the action  by the examiner 
which can be suspended under 37 CFR 1.103. 

        A request that action in an application be delayed will be granted 
 only under the provisions of 37 CFR 1.103, which provides for "Suspension 
of  Action." A petition for suspension of action must be presented as a 
separate  paper accompanied by the petition fee, must request a specific 
and reasonable  period of suspension not greater than six months, and must 
present good and  sufficient reasons why the suspension is necessary. If 
the requirements of  37 CFR 1.103 are not met, applicants should expect 
that their applications,  whether new or amended, will be taken up for 
action by the examiner in the  order provided in 37 CFR 1.101, Order of 
Examination. 

        A petition for suspension of action to allow applicant time to 
submit  an information disclosure statement will be denied as failing to 
present good  and sufficient reasons, since 37 CFR 1.97 provides adequate 
recourse for the  timely submission of prior art for consideration by the 
examiner. 
        In new applications, the mere inclusion in the transmittal form 
letter  of a request that action be delayed cannot be relied upon to avoid 
immediate  action in the application. Many Group Art Units and examiners 
have short pendency to first  action, and new applications may be taken up 
for action before preliminary  amendments are filed in those applications. 
Where a preliminary amendment and  petition to suspend action have been 
filed, it would be helpful to telephone  the examiner in that regard to 
avoid having the amendment and the first office  action cross in the mail. 

        Paragraph (b) of the rule provides for a suspension of Office 
action  by the examiner on his or her own initiative, as in MPEP # 709.01 
and w 2315.01.  The primary examiner may grant an initial suspension of 
action for a maximum  period of six months. This time limitation applies 
to both suspensions granted  at the request of the applicant and 
suspensions imposed sua sponte by the examiner.  Any second or subsequent 
suspension of action in patent applications under  37 CFR 1.103 are 
decided by the group director. See MPEP w 1002.02(c), item  11. 

        Suspension of action under 37 CFR 1.103(c) is decided by the 
Director  of Group 2200. 

        Suspension of action under 37 CFR 1.103(c) is decided by the 
Director  of Group 2200. 

        Form Paragraphs 7.52-7.56 should be used in actions relating to 
suspension  of action. 

W 7.52      Suspension of Action, Awaiting New Reference 

        A reference relevant to the examination of this application may 
soon  become available. Ex parte prosecution is SUSPENDED FOR A PERIOD OF 
[1] MONTHS  from the date of this letter. Upon expiration of the period of 
suspension,  applicant should make an inquiry as to the status of the 
application. 
Examiner Note: 

        1.  Maximum period for suspension is six months. 

        2.  The group director should approve all second or subsequent 
suspensions.  See MPEP # 1003, paragraph 10. 

W 7.53      Suspension of Action, Possible Interference 

        All claims are allowable. However, due to a potential 
interference,  ex parte prosecution is SUSPENDED FOR A PERIOD OF [1] 
MONTHS from the date  of this letter. Upon expiration of the period of 
suspension, applicant should  make an inquiry as to the status of the 
application. 

Examiner Note: 

        1.  Maximum period for suspension is six months. 

        2.  The group director should approve all second or subsequent 
suspensions.  See MPEP # 1003, paragraph 10. 

        3.  Director's approval must appear on the letter granting any 
second  or subsequent suspension. 

W 7.54      Suspension of Action, Applicant's Request 

        Pursuant to applicant's request filed on [1], action by the Office 
 is suspended on this application under 37 CFR 1.103(a) for a period of 
[2]  months. At the end of this period, applicant is required to notify 
the examiner  and  request continuance of prosecution or a further 
suspension. See MPEP #  709. 

Examiner Note: 

        1.  Maximum period of suspension is six months. 

        2.  Only the group director can grant second or subsequent 
suspensions,  see MPEP # 1003, paragraph 10. Such approval must appear on 
the Office letter. 
W 7.56      Petition for Suspension, Denied, Outstanding Office Action 
        Applicant's request for suspension of action in this application 
under  37 CFR 1.103(a) is denied as being improper.  Action cannot be 
suspended in  an application awaiting a response by the applicant. See 
MPEP # 709.< 

709.01      Overlapping Applications by Same Applicant or Owned by Same 
Assignee [R-1] 

        >Examiners should not consider ex parte, when raised by an 
applicant,  questions which are pending before the Office in inter partes 
proceedings involving  the same applicant. (See Ex parte Jones, 1924 C.D. 59; 
327 O.G. 681.) 

        Because of this where one of several applications of the same 
inventor  which contain overlapping claims gets into an interference it 
was formerly  the practice 
to suspend action by the Office on the applications 
not in the interference in accordance with Ex parte 
McCormick, 1904 C.D. 575; 113 O.G. 2508. 

        However, the better practice would appear to be to reject claims 
in  an application related to another application in interference over the 
counts  of the interference and in the event said claims are not cancelled 
in the outside  application, prosecution of said application should be 
suspended pending the  final determination of priority in the interference. 

        If, on the other hand applicant wishes to prosecute the outside 
application,  and presents good reasons in support, prosecution should be 
continued. Ex parte  Bullier, 1899 C.D. 155, 88 O.G. 1161; In re Seebach, 
1937 C.D. 495, 484 O.G.  503; In re Hammell, 1964 C.D. 733, 808 O.G. 25. 
See MPEP # 804.03.< 

710   Period for Response [R-1] 


>35 U.S.C. 133.       Time for prosecuting application. 

        Upon failure of the applicant to prosecute the application within 
six  months after any action therein, of which notice has been given or 
mailed to  the applicant, or within such shorter time, not less than 
thirty days, as fixed  by the Commissioner in such action, the application 
shall be regarded as abandoned by the parties thereto, unless it  be shown 
to the satisfaction of the Commissioner that such delay was unavoidable. 
35 U.S.C. 267.      Time for taking action in Government applications. 
        Notwithstanding the provisions of sections 133 and 151 of this 
title,  the Commissioner may extend the time for taking any action to 
three years,  when an application has become the property of the United 
States and the head  of the appropriate department or agency of the 
Government has certified to  the Commissioner that the invention disclosed 
therein is important to the armament  or defense of the United States. 

        See MPEP Chapter 1200 for period for response when appeal is taken 
 or court review sought. 

        Extension of time under 35 U.S.C. 267 is decided by the Director 
of  Group 2200.< 


710.01      Statutory Period [R-1] 


>37 CFR 1.135.      Abandonment for failure to respond within time limit. 
        (a)   If an applicant of a patent application fails to respond 
within  the time period provided under ## 1.134 and 1.136, the application 
will become  abandoned unless an Office action indicates otherwise. 

        (b)   Prosecution of an application to save it from abandonment 
pursuant  to paragraph (a) of this section must include such complete and 
proper action  as the condition of the case may require. The admission of 
an amendment not  responsive to the last Office action, or refusal to 
admit the same, and any  proceedings relative thereto, shall not operate 
to save the application from  abandonment. 

        (c) When action by the applicant is a bona fide attempt to respond 
 and to advance the case to final action, and is substantially a complete 
response  to the Office action, but consideration of some matter or 
compliance with some  requirement has been inadvertently omitted, 
opportunity to explain and supply  the omission may be given before the 
question of abandonment is considered. 
        The maximum statutory period for response to an Office action is 6 
 months, 35 U.S.C. 133. Shortened periods are currently used in 
practically  all cases, see MPEP 
# 710.02(b). 

        37 CFR 1.135 provides that if no response is filed within the time 
 set in the Office action under 37 CFR 1.134 or as it may be extended 
under  37 CFR 1.136, the application will be abandoned unless an Office 
action indicates  that another consequence, such as disclaimer, will take 
place. 

        Paragraph (c) has been amended to add that applicant's reply must 
be  a bona fide attempt to respond as well as to advance the case to final 
action  in order for applicant to be given an opportunity to supply any 
omission.< 

710.01(a) Statutory Period, How Computed [R-1] 


        >The actual time taken for response is computed from the date 
stamped  or printed on the Office action to the date of receipt by the 
Office of applicant's  response. No cognizance is taken of fractions of a 
day and applicant's response  is due on the corresponding day of the month 
6 months or any lesser number  of months specified after the Office action. 

        Response to an Office action with a 3-month shortened statutory 
period,  dated November 30 is due on the following February 28 (or 29 if 
it is a leap  year), while a response to an Office action dated February 
28 is due on May  28 and not on the last day of May. Ex parte Messick, 
7 USPQ 57;1930 C.D. 6; 400 O.G. 3 (Comm'r Pat. 1930) . 

        A 1-month extension of time extends the time for response to the 
date  corresponding to the Office action date in the following month. For 
example,  a response to an Office action mailed on January 31 with a 
3-month shortened  statutory period would be due on April 30. If a 1-month 
extension of time were  given, the response would be due by May 31. The 
fact that April 30 may have  been a Saturday, Sunday, or Federal holiday 
has no effect on the extension  of time. Where the period for response is 
extended by some time period other  than ``1-month" or an even multiple 
thereof, the person granting the extension  should indicate the date upon 
which the extended period for response will expire. 
        When a timely response is ultimately not filed, the application is 
 regarded as abandoned after midnight of the date the period for response 
expired.  In the above example where May 31 is not a Saturday, Sunday, or 
Federal holiday  and no further extensions of time are obtained prior to 
the end of the 6-month  statutory period, the application would be 
abandoned as of June 1. The fact  that June 1 may be a Saturday, Sunday, 
or Federal holiday does not change the  abandonment date since the 
response was due on May 31, a business day. See  MPEP 
# 711.04(a) regarding the pulling and forwarding of abandoned 
applications. 
        A 30-day period for response in the Office means 30 calendar days 
including  Saturdays, Sundays, and federal holidays. However, if the 
period ends on a  Saturday, Sunday, or Federal holiday, the response is 
timely if it is filed  on the next succeeding business day. If the period 
for response is extended, the time extended is added to the last calendar 
day  of the original period, as opposed to being added to the day it would 
have  been due when said last day is a Saturday, Sunday, or Federal 
holiday. 
        The date of receipt of a response to an Office action is given by 
the  "Office date" stamp which appears on the responding paper. 

        In some cases the examiner's letter does not determine the 
beginning  of a statutory response period. In all cases where the 
statutory response period  runs from the date of a previous action, a 
statement to that effect should  be included. 

        Since extensions of time are available pursuant to 
37 CFR 1.136(a), it is incumbent upon applicants to 
recognize the date for response so that the proper fee 
for any extension will be submitted. Thus, the date 
upon which any response is due will normally be indicated only in those 
instances  where the provisions of 37 CFR 1.136(a) are not available. See 
MPEP Chapter  2200 for reexamination proceedings.< 


710.02      Shortened Statutory Period and Time Limit Actions Computed 
[R-2] 

37 CFR 1.136.     Filing of  timely responses with petition and fee for 
extension  of time and extensions of time for cause. 

        (a) If an applicant is required to respond within a non-statutory 
or  shortened statutory time period, applicant may respond up to four 
months after  the time period set if a petition for an extension of time 
and the fee set  in # 1.17 are filed prior to or with the response, unless 
(1) applicant is  notified otherwise in an Office action or (2) the 
application is involved in  an interference declared pursuant to # 1.611. 
The date on which the response,  the petition, and the fee have been filed 
is the date of the response and also  the date for purposes of determining 
the period of extension and the corresponding  amount of the fee. The 
expiration of the time period is determined by the amount  of the fee 
paid. In no case may an applicant respond later than the maximum  time 
period set by statute, or be granted an extension of time under paragraph 
(b) of this section when the provisions of this paragraph are available. 
See  w1.645 for extension of time in interference proceedings, and # 
1.550(c) for  extension of time in reexamination proceedings. 

        (b) When a response with petition and fee for extension of time 
cannot  be filed pursuant to paragraph (a) of this section, the time for 
response will  be extended only for sufficient cause, and for a reasonable 
time specified.  Any request for such extension must be filed on or before 
the day on which  action by the applicant is due, but in no case will the 
mere filing of the  request effect any extension. In no case can any 
extension carry the date on  which response to an Office action is due 
beyond the maximum time period set  by statute or be granted when the 
provisions of paragraph (a) of this section  are available. See # 1.645 
for extension of time interference proceedings and  # 1.550(c) for 
extension of time in reexamination proceedings. 

        37 CFR 1.136 implements 35 U.S.C. 41(a)(8) which directs the 
Commissioner  to charge fees for extensions of time to take action in 
patent applications. 
        Under 37 CFR 1.136 (35 U.S.C. 133) an applicant may be required to 
 respond in a shorter period than 
6 months, not less than 30 days. Some situations in which shortened 
periods  for response are used are listed in MPEP # 710.02(b). 

        In other situations, for example, the rejection of a copied patent 
 claim, the examiner may require applicant to respond on or before a 
specified  date. These are known as time limit actions and are established 
under authority  of 35 U.S.C. 6. Some situations in which time limits are 
set are noted in MPEP  # 710.02(c). The time limit requirement should be 
typed in capital letters  where required. 

        An indication of a shortened time for reply should appear 
prominently  on the first page of all copies of actions in which a 
shortened time for reply  has been set so that a person merely scanning 
the action can easily see it. 
        Shortened statutory periods ** are subject to the provisions of 37 
 CFR 1.136(a) unless applicant is notified otherwise in an Office action. 
See  MPEP # 710.02(e) for a discussion of extensions of time. See Chapter 
2200 for  reexamination proceedings. 


710.02(b) Shortened Statutory Period:  Situations In Which Used [R-2] 

        Under the authority given him by 35 U.S.C. 133, the Commissioner 
has  directed the examiner to set a shortened period for response to every 
action.  The length of the shortened statutory period to be used depends 
on the type  of response required. Some specific cases of shortened 
statutory period for  response to be given are: 

THIRTY DAYS 

        Requirement for restriction or election of species - no claim 
rejected  ......MPEP # 809.02(a) and # 817. 

 TWO MONTHS 

        Winning party in terminated interference to reply to unanswered 
Office  action ......MPEP # 2363.02. 

        Where, after the termination of an interference proceeding, the 
application  of the winning party contains an unanswered Office action, 
final rejection  or any other action, the primary examiner notifies the 
applicant of this fact. In this case  response to the Office action is 
required within a shortened statutory period  running from the date of 
such notice. See Ex parte Peterson, 49 USPQ 119; 1941  C.D. 8; 525 O.G. 3 
(Comm'r Pat. 1941). 

        Ex parte Quayle, 25 USPQ 74; 1935 C.D. 11; 453 O.G. 213 (Comm'r 
Pat.  1935) ......... MPEP # 714.14. 

        When an application is in condition for allowance, except as to 
matters  of form, such as correction of specification, a new oath, etc., 
the case will  be considered special and prompt action taken to require 
correction of formal  matters. Such action should include an indication on 
the first page of form  letter PTOL-326 that prosecution on the merits is 
closed in accordance with  the decision in Ex parte Quayle, 1935 C.D. 11; 
453 O.G. 213.  A 2-month shortened  statutory period for response should 
be set. 

        Multiplicity rejection - no other rejection........MPEP # 
*>2173.05(n)< 
        A new ground of rejection in an examiner's answer on appeal 
......MPEP  # 1208.01 

THREE MONTHS 

        To respond to any Office action on the merits. 

PERIOD FOR RESPONSE RESTARTED 

        Incorrect citation by examiner - regardless of time remaining in 
original  period .... MPEP # 710.06. 

        The above periods may be changed under special, rarely occurring 
circumstances. 
        A shortened statutory period may not be less than 30 days (35 
U.S.C.  133). 


710.02(c) Time-Limit Actions: Situation In Which Used [R-1] 


        >As stated in MPEP # 710.02, 35 U.S.C. 6 provides authority for 
the  Commissioner to establish rules and regulations for the conduct of 
proceedings  in the Patent and Trademark Office. Among the rules are 
certain situations  in which the examiner sets a time limit within which 
some specified action  should be taken by applicant. Some situations in 
which a time limit is set  are as follows: 

        (a)   A portion of 37 CFR 1.605(a) provides that in suggesting 
claims  for interference: 

        The applicant to whom the claim is suggested shall amend the 
application  by presenting the suggested claim within a time specified by 
the examiner,  not less than one month. Failure or refusal of an applicant 
to timely present  the suggested claim shall be taken without further 
action as a disclaimer by  the applicant of the invention defined by the 
suggested claim. 

        See MPEP # 2305.02. 

        (b)   When applicant has made a bona fide attempt to respond but 
has  made an inadvertent omission, applicant should be given a time limit 
of 1 month,  which cannot be extended under 37 CFR 1.136(a) or (b), to 
complete the response  by submitting the omission in accordance with 37 
CFR 1.135(c). 

        37 CFR 1.135(c). When action by the applicant is a bona fide 
attempt  to respond and to advance the case to final action and is 
substantially a complete  response to the Office action, but consideration 
of some matter or compliance  with some requirement has been inadvertently 
omitted, opportunity to explain  and supply the omission 
may be given before the question of abandonment is considered. 

        Under 37 CFR 1.135(c), the missing matter or lack of compliance 
must  be considered by the examiner as being "inadvertently omitted." Once 
an inadvertent  omission is brought to the attention of the applicant, the 
question of inadvertence  no longer exists. Therefore, any further time to 
complete the response would  not be appropriate under 37 CFR 1.135(c). 
Accordingly, no extension of time  will be granted in these situations and 
37 CFR 1.136(a) is not applicable.  See MPEP # 710.02(e) and # 714.03. 

        (c)   If an amendment is filed which amends the claims and/or 
presents  additional claims so as to require additional fees pursuant to 
37 CFR 1.16(b), 
(c), or (d), applicant should be given a time limit of 1 month or the 
remainder  of the period for response, whichever is longer, within which 
to remit the  additional fees due or to submit an amendment which amends 
or cancels the claims  so that no additional fee is due. The 1-month time 
limit is not extendable  under 37 CFR 1.136(a) or (b). However, the period 
for response set in the previous  Office action may be extended pursuant 
to 37 CFR 1.136(a) provided the extension  does not go beyond the 6-month 
period from the date of the previous Office  action. See MPEP 
# 607 and # 714.03. 

        (d)   To correct an unsigned or improperly signed amendment, 
applicant  should be given a time limit of 
1 month or the remainder of the period for response, whichever is longer, 
to  supply a duplicate paper or ratification, properly signed. The 1-month 
time  limit is not extendable under 37 CFR 1.136(a) or (b). However, the 
period for  response set in the previous Office action may be extended 
pursuant to 37CFR  1.136(a) provided the extension does not go beyond the 
6-month period from the date of the previous  office action. See MPEP 
# 714.01(a). 

        (e)   Where an application is otherwise allowable but contains a 
traverse  of a requirement to restrict, 1 month is given to cancel claims 
to the nonelected  invention or species or take other appropriate action. 
See 37 CFR 1.141 and  1.144, and MPEP # 809.02(c) and # 821.01.< 


710.02(d) Difference Between Shortened Statutory and Time-Limit Periods 
[R-1] 

        >The distinction between a limited time for reply and a shortened 
statutory  period under 37 CFR 1.136 should not be lost sight of. The 
penalty attaching  to failure to reply within the time limit (e.g., from 
the suggestion of claims)  is loss of the subject matter involved on the 
doctrine of disclaimer. A rejection  on the ground of disclaimer is 
appealable. On the other hand, a complete failure  to respond within the 
set statutory period results in abandonment of the entire application. 
This is not appealable, but a petition to revive may be granted  if the 
delay was unavoidable 
(37 CFR 1.137(a)) or unintentional (37 CFR 1.137(b)). Further, where 
applicant  responds a day or two after the time limit, this may be excused 
by the examiner  if satisfactorily explained. The examiner may use his or 
her discretion to  request an explanation for the delay if the reason for 
the delay is not apparent  from the response. A response 1 day late in a 
case carrying a shortened statutory  period under 35 U.S.C. 133, no matter 
what the excuse, results in abandonment;  however, an extension of the 
period may be 
obtained under 37 CFR 1.136 provided the extension does not go beyond the 
6-months  statutory period from the date of the Office action. 

        The situation sometimes occurs where a nonfinal 
Office action with a 3-month shortened statutory period is sent to 
applicant.  Just before or on the last day of the maximum permitted 
statutory period of  6 months, applicant files a petition for an extension 
of time of 
3 months and the required fee, and a response, which is a bona fide 
attempt  but through apparent oversight or inadvertence omits some 
necessary point.  A letter is sent out with a 1-month time limit, 
seemingly giving applicant  more than 6 months to respond. 

        However, by determining that the response is a bona fide attempt, 
37  CFR 1.135(c), the examiner has determined that applicant has 
prosecuted the  application within 6 months as required by 35 U.S.C. 133, 
and the period for  response has been tolled. The time limit of 
1 month given to applicant is not and should not be construed as an 
extension  of time to the statutory period. Rather, it is a time limit in 
order to give  applicant an opportunity to supply the inadvertent omission. 

        If, however, applicant fails to supply or correct the inadvertent 
omission  within the 1-month time limit, that failure constitutes evidence 
that the holding  that the response was a bona fide attempt was in error. 
In that event, the  response would not be considered to meet the 
requirements of 37 CFR 1.111 and  the application would, therefore, be 
abandoned as of the end of the shortened  statutory period (per 37 CFR 
1.135(a) and (b)), as extended by any timely filed  petition for extension 
of time, per 37 CFR 1.136(a). 

        In the above situation, therefore, the application would not have 
become  abandoned upon expiration of the 1-month time limit. Rather, it 
would be abandoned  as of midnight of the last day of the 6-month 
statutory period. 

        In another example, if an Office action is mailed on April 22, 
1991  setting a 3-month shortened statutory period for response, the 
response would  be due on July 22, 1991. If applicant files an amendment 
that is deemed to  be a bona fide response on July 15, 1991 but through 
apparent oversight or  inadvertence omits some necessary point, a letter 
holding the amendment nonresponsive  would be mailed giving the applicant 
a 1-month time limit or the remainder  of the period for response, 
whichever is longer, in order to complete the response.  Assuming the 
letter holding the amendment nonresponsive is mailed on August  12, 1991, 
applicant would have until September 12 to complete his response.  Further 
assuming that applicant failed to respond to the August 12, 1991 letter 
at all, then the application would have become abandoned as of midnight on 
 July 22, 1991 with the date of abandonment being July 23, 1991. 

        Time periods such as time periods for responding to a requirement 
for  information or filing a brief on appeal to the Board of Patent 
Appeals and  Interferences are normally subject to 37 CFR 1.136(a), but, 
in exceptional  circumstances, additional time may be granted under 
37 CFR 1.136(b) where no further time is available under 37 CFR 1.136(a). 
This is possible since these periods are not statutory  periods subject to 
the requirement of 35 U.S.C. 133. See MPEP # 710.02(e).< 

710.02(e) Extension of Time [R-2] 


37 CFR 1.136    Filing of timely responses with petition and fee for 
extension  of time and extensions of time for cause. 

        (a)(1)      If an applicant is required to respond within a 
nonstatutory  or shortened statutory time period, applicant may respond up 
to four months  after the time period set if a petition for an extension of 


time and the fee set in w 1.17 are filed prior to or with the response, 
unless: 
        (i)   Applicant is notified otherwise in an Office action, 
        (ii)    The response is a reply brief submitted pursuant to w 
1.193(b), 

        (iii)     The response is a request for an oral hearing submitted 
pursuant  to w 1.194(b), 

        (iv)    The response is to a decision by the Board of Patent 
Appeals  and Interferences pursuant to w 1.196, w 1.197 or w 1.304, or 

        (v)   The application is involved in an interference declared 
pursuant  to # 1.611, 

        (a)(2)      The date on which the response, the petition, and the 
fee  have been filed is the date of the response and also the date for 
purposes  of determining the period of extension and the corresponding 
amount of the  fee. The expiration of the time period is determined by the 
amount of the fee  paid. In no case may an applicant respond later than 
the maximum time period  set by statute, or be granted an extension of 
time under paragraph (b) of this  section when the provisions of this 
paragraph are available. See # 1.136(b)  for extensions of time relating 
to proceedings pursuant to ## 1.193(b), 1.194,  1.196 or 1.197. See # 
1.304 for extension of time to appeal to the U.S. Court  of Appeals for 
the Federal Circuit or to commence a civil action. See # 1.550(c)  for 
extension of time in reexamination proceedings and # 1.645 for extension 
of time in interference proceedings. 

        (b)   When a response with petition and fee for *>extension< of 
time  cannot be filed pursuant to paragraph (a) of this section, the time 
for response  will be extended only for sufficient cause and for a 
reasonable time specified.  Any request for such extension must be filed 
on or before the day on which  action by the applicant is due, but in no 
case will the mere filing of the  request effect any extension. In no case 
can any extension carry the date on  which response to an Office action is 
due beyond the maximum time period set  by statute or be granted when the 
provisions of paragraph (a) of this section  are available. See # 1.304 
for extension of time to appeal to the U.S. Court  of Appeals for the 
Federal Circuit or to commence a civil action, # 1.645 for  extension of 
time in interference proceedings, and # 1.550(c) for extension  of time in 
reexamination proceedings. 

        37 CFR 1.136 provides for two distinct procedures to extend the 
period  for action or response in particular situations. The procedure 
which is available  for use in a particular situation will depend upon the 
circumstances. 37 CFR  1.136(a) permits an applicant to file a petition 
for extension of time and  a fee as in 37 CFR 1.17 (a), (b), (c), or (d) 
up to 4 months after the end  of the time period set to take action except 
(1) where prohibited by statute, 
(2) where prohibited by one of the items listed in the rule, or (3) where 
applicant  has been notified otherwise in an Office action. The petition 
and fee must  be filed within the extended time period for response 
requested in the petition  and can be filed prior to or with the response. 
The filing of the petition  and fee will extend the time period to take 
action up to 4 months dependent  on the amount of the fee paid except in 
those circumstances noted above. 37  CFR 1.136(a) will effectively reduce 
the amount of paperwork required by applicants  and the Office since the 
extension will be effective upon filing of the petition  and payment of 
the appropriate fee and without acknowledgment or action by  the Office 
and since the petition and fee can be filed with the response. Paragraph 
(b) provides for requests for extensions of time upon a showing of 
sufficient  cause when the procedure of paragraph (a) is not available. 
Although the petition  and fee procedure of 37 CFR 1.136(a) will normally 
be available within 4 months  after a set period for response has expired, 
an extension request for cause  under 
37 CFR 1.136(b) must be filed during the set period for response. 
Extensions  of time in interference proceedings are governed by 37 CFR 
1.645. 
        It should be very carefully noted that neither the primary 
examiner  nor the Commissioner has authority to extend the shortened 
statutory period  unless a petition for the extension is filed. While the 
shortened period may  be extended within the limits of the statutory 
6 months period, no extension can operate to extend the time beyond the 6 
months. 
        Compare, however, 37 CFR 1.135(c) and MPEP 
# 714.03. 

        Any request under 37 CFR 1.136(b) for extension of time for reply 
must  state a reason in support thereof. Such extensions will only be 
granted for  sufficient cause and must be filed prior to the end of the 
set period for response. 
        Extensions of time with the payment of a fee pursuant to 37 CFR 
1.136  are possible in response to most Office actions of the examiner. 
Exceptions  include (1) all extensions in a reexamination proceeding (see 
37 CFR 1.550(c)  and MPEP w 2265) (2) all extensions during an 
interference proceeding (but  not preparatory to an interference such as 
where a claim is suggested for interference), 
(3) those specific situations where an Office action states that the 
provisions  of 37 CFR 1.136(a) are not applicable; e.g., in reissue 
applications associated  with litigation, or where an application in 
allowable condition has non-elected  claims and time is set to cancel such 
claims, and (4) those limited instances  where applicant is given a 
1-month time limit to complete an incomplete response  pursuant to 37 CFR 
1.135(c). 

        The fees for extensions of time are set forth in 
37 CFR 1.17(a)-(d) and are subject to a 50% reduction for persons or 
concerns  qualifying as small entities. The fees itemized at 37 CFR 
1.17(a)-(d) are cumulative.  Thus, if an applicant has paid an extension 
fee in the 


amount set forth in 37 CFR 1.17(a) for a 1-month extension of time and 
thereafter  decides that an additional 1 month is needed, the proper fee 
would be the amount  set forth in 37 CFR 1.17(b) less the amount set forth in 
37 CFR 1.17(a) which was previously paid. 

        The statute at 35 U.S.C. 41(a)(8) requires the filing of (1) a 
petition  to extend the time and (2) the appropriate fee. Such a petition 
need not be  in any required format, but the petition should explicitly 
request, in writing,  an extension of time for the specific number of 
months needed. 

        Although a preferred 37 CFR 1.136(a) petition includes the above 
noted  request for a specific number of months, an acceptable petition 
will be considered  to comprise (1) a response accompanied by (2) a 
writing which specifically  refers to the provisions of 37 CFR 1.136(a) 
and thereby manifests a clear intent  by applicant to obtain an extension 
of time. 

        A general authorization under 37 CFR 1.25(b) to charge any 
necessary  fees under 37 CFR 1.16 or 1.17 to a deposit account will NOT be 
interpreted  as a petition for an extension of time. 

        A petition for an extension of time must be filed in response to 
each  Office action or requirement for which the extension is requested. A 
general  request for an extension of time filed prior to examination would 
NOT be effective  since it is not provided for, and it would not be a 
petition in response to  an Office action or requirement as intended by 
the statute and rules. A proper  petition may be a mere sentence such as 

        `The applicant herewith petitions the Commissioner of Patents and 
Trademarks  to extend the time for response to the Office action dated 
____  for ____   ____  month(s) from ____  ____  to ____  ____  Submitted 
herewith is a check  for _____ ____ to cover  the cost of the extension 
[Please Charge my deposit  account number ____   ____ , in the amount o f 
____  ____  to cover the cost  of the extension. Any deficiency or 
overpayment should be charged or credited  to the above numbered deposit 
account.]' 

        Where applicant desires to file a continuing application rather 
than  a response to a given action by the examiner, it is appropriate to 
merely file  a petition to extend the time along with the proper fee in 
the pending application  and file the continuing application during the 
extension period. It is not  necessary to file a response in the pending 
application. The petition plus  fee provides the time for applicant to 
take whatever action is appropriate.  Desirably, applicant should 
expressly abandon the prior application after the  filing of the 
continuing application. An extension of time will not be effected  in the 
prior application by filing a petition for extension of time in a 
continuing  application. This is because the petition for extension of 
time must be directed  toward and filed in the application to which it 
pertains in accordance with  37 CFR 1.4 and 1.5. 

        Where a response is filed after the set period for response has 
expired  and no petition or fee accompanies it, the response will not be 
accepted as  timely until the petition and the appropriate fee are 
submitted. The response,  when filed late, must include both the petition 
and the fee. If either is missing,  the response is not acceptable until 
such time as the missing petition or fee  is submitted. For example, if an 
Office action sets a 3-month period for response  and applicant responds 
in the fourth month and includes only the fee for a  1-month extension of 
time, the response is not acceptable until the petition  is filed. If the 
petition is not filed until the fifth month, an additional  fee for the 
second month extension would also be required in order to render  the 
response timely. 

        >An extension of time under 37 CFR 1.136 is not necessary when 
submitting  a supplemental response to an Office action if a complete 
first response was  timely filed in response to the Office action.< 

        When the provisions of 37 CFR 1.136(a) are not applicable, 
extensions  of time for cause pursuant to 37 CFR 1.136(b) are possible. 
Any such extension  must be filed on or before the day on which action by 
the applicant is due.  The mere filing of such a request will not effect 
any extension. All such requests  are to be decided by the Group Director. 
No extension can operate to extend  the time beyond the 6-month statutory 
period. 

        If a request for extension of time under 37 CFR 1.136(b) is filed 
in  duplicate and accompanied by a stamped return-addressed envelope, the 
Office  will indicate the action taken on the duplicate and return it 
promptly in the envelope.  Utilization of this procedure is optional on 
the part of applicant. In this  procedure, the action taken on the request 
should be noted on the original  and on the copy which is to be returned. 
The notation on the original, which  becomes a part of the file record, 
should be signed by the person granting  or denying the extension, and the 
name and title of that person should also  appear in the notation on the 
copy which is returned to the person requesting  the extension. 

        When the request is granted, no further action by the Office is 
necessary.  When the request is granted in part, the extent of the 
extension granted will  be clearly indi-cated on both the original and on 
the copy which is to be returned.  When the request is denied, the reason 
for the denial will be indicated on  both the original and on the copy 
which is to be returned or a formal decision  letter giving the reason for 
the denial will be forwarded promptly after the  mailing of the duplicate. 

        If the request for extension of time is granted, the due date is 
computed  from the date stamped or printed on the action, as opposed to 
the original  due date. See MPEP w 710.01(a). For example, a response to 
an action with a  3-month shortened statutory period, dated November 30, 
is due on the following  February 28 (or 29, if it is a leap year). If the 
period for response is extended  an additional month, the response becomes 
due on March 30, not on March 28. 
        For purposes of convenience, a request for an extension of time 
may  be personally delivered and left with the appropriate area to become 
an official  paper in the file without routing through the mail room. The 
person who accepts  the request for an extension of time will have it date 
stamped. 

        If duplicate copies of a request for an extension of time under 37 
 CFR 1.136(b) are hand delivered to an examining group, both copies are 
dated,  either stamped approved or indicated as being approved in part or 
denied, and  signed. The duplicate copy is returned to the delivering 
person regardless  of whether the request was signed by a registered 
attorney or agent, either  of record or acting in a representative 
capacity, the applicant or the assignee  of record of the entire interest. 

        If the request for extension under 37 CFR 1.136(b) is not 
presented  in duplicate, the applicant should be advised promptly by way 
of form letter  PTOL-327 regarding action taken on the request so that the 
file record will  be complete. 

        Form Paragraph 7.98 may be used where a response is filed late but 
 an extension of time is possible. 

W  7.98        Response is Late, Extension of Time Suggested 

        Applicant's response was received in the Office on [1], which is 
after  the expiration of the period for response set in the last Office 
action mailed  on [2]. This application will become abandoned unless 
applicant obtains an  extension of time to reply to the last Office action 
under 
37 CFR 1.136(a). 

Examiner Note: 

        Since the provisions of 37 CFR 1.136(a) do not apply to 
reexamination  proceedings or to litigation related reissue applications, 
do not use this  paragraph in these applications. 

FINAL REJECTION - TIME FOR RESPONSE 

        **>If< an applicant initially responds within 2 months from the 
date  of mailing of any final rejection setting a 3-month shortened 
statutory period  for response and the Office does not mail an advisory 
action until after the  end of the 3-month shortened statutory period, the 
period for response for  purposes of determining the amount of any 
extension fee will be the date on  which the Office mails the advisory 
action advising applicant of the status  of the application, but in no 
event can the period extend beyond 6 months from  the date of the final 
rejection. This procedure **>applies< only to a first  response to a final 
rejection. **>The< following language >must be included  by the Examiner< 
in each final rejection **. 

        A SHORTENED STATUTORY PERIOD FOR RESPONSE TO THIS FINAL ACTION IS 
SET  TO EXPIRE THREE MONTHS FROM THE DATE OF THIS ACTION. IN THE EVENT A 
FIRST RESPONSE  IS FILED WITHIN TWO MONTHS OF THE MAILING DATE OF THIS 
FINAL ACTION AND THE  ADVISORY ACTION IS NOT MAILED UNTIL AFTER THE END OF 
THE THREE-MONTH SHORTENED  STATUTORY PERIOD, THEN THE SHORTENED STATUTORY 
PERIOD WILL EXPIRE ON THE DATE  THE ADVISORY ACTION IS MAILED, AND ANY 
EXTENSION FEE PURSUANT TO 37 CFR 1.136(a)  WILL BE CALCULATED FROM THE 
MAILING DATE OF THE ADVISORY ACTION. IN NO EVENT  WILL THE STATUTORY 
PERIOD FOR RESPONSE EXPIRE LATER THAN SIX MONTHS FROM THE  DATE OF THIS 
FINAL ACTION. 

        For example, if applicant initially responds within 
2 months from the date of mailing of a final rejection and the examiner 
mails  an advisory action before the end of 3 months from the date of 
mailing of the final rejection, the shortened statutory  period will 
expire at the end of 3 months from the date of mailing of the final 
rejection. In such a case, any  extension fee would then be calculated 
from the end of the 3-month period.  If the examiner, however, does not 
mail an advisory action until after the  end of 3 months, the shortened 
statutory period will expire on the date the  examiner mails the advisory 
action and any extension fee may be calculated  from that date. 

        See also MPEP w 706.07(f). 

EXTENSIONS OF TIME TO SUBMIT 
 AFFIDAVITS AFTER FINAL REJECTION 

        Frequently, applicants request an extension of time, stating as a 
reason  therefor that more time is needed in which to submit an affidavit. 
When such  a request is filed after final rejection, the granting of the 
request for extension  of time is without prejudice to the right of the 
examiner to question why the  affidavit is now necessary and why it was 
not earlier presented. If applicant's  showing is insufficient, the 
examiner may deny entry of the affidavit, notwithstanding  the previous 
grant of an extension of time to submit it. The grant of an extension  of 
time in these circumstances serves merely to keep the case from becoming 
abandoned while allowing the applicant the opportunity to present the 
affidavit  or to take other appropriate action. Moreover, prosecution of 
the application  to save it from abandonment must include such timely, 
complete and proper action  as required by 37 CFR 1.113. The admission of 
the affidavit for purposes other  than allowance of the application, or 
the refusal to admit the affidavit, and  any proceedings relative thereto, 
shall not operate to save the application  from abandonment. 

        Implicit in the above practice is the fact that affidavits 
submitted  after final rejection are subject to the same treatment as 
amendments submitted  after final rejection; In re Affidavit Filed After 
Final Rejection, 152 USPQ  292, 1966 C.D. 53. 

        Failure to file a response during the shortened statutory period 
results  in abandonment of the application. 

REQUIREMENT FOR A RESPONSE UNDER 
37 CFR 1.136 AND 1.137 WHERE CONTINUING 
APPLICATION IS BEING FILED 

        In those instances where an extension of time or a revival of an 
abandoned  application is sought solely for the purpose of filing a 
continuing application  under 
35 U.S.C. 120 and where the prior application is to be abandoned in favor 
of  the continuing application, the filing of a response as required by 37 
CFR  1.111, 1.113, 1.192 or other regulation is considered to be an 
unnecessary  expenditure of resources by the applicant. Accordingly, in 
these situations,  the Patent and Trademark Office will accept the filing 
of a continuing application  as a response under 37 CFR 1.136 or 1.137. 
However, the filing of a continuing  application is not a proper response 
where (1) the response needed is payment  of the issue fee, or (2) there 
is a need to respond under 37 CFR 1.135(c) to  complete an inadvertently 
incomplete response. 

        To facilitate processing by the Office, any such petition for 
extension  of time or petition to revive should specifically refer to the 
filing of a  continuing application and also include an express 
abandonment of the prior  application conditioned upon the granting of the 
petition and the granting  of a filing date to the continuing application. 

        Extensions of time to appeal to the courts under 
37 CFR 1.304 is covered in MPEP # 1216. 

EXTENSION OF TIME AFTER PAYMENT 
OF ISSUE FEE 

        The statutory (nonextendable) time period for payment of the issue 
 fee is 3  months from the date of the Notice of Allowance (35 U.S.C. 
151).  In situations where informalities such as drawing corrections or 
submission  of supplemental or corrected declarations are outstanding at 
the time of allowance,  applicants will be notified on the PTOL-37 (Notice 
of Allowablility) of such  informalities. While extensions of time under 
37 CFR 1.136(a) are available  to correct such informalities, the issue 
fee must be paid within the 3-month  period. 


710.04      Two Periods Running [R-1] 


        >There sometimes arises a situation where two different periods 
for  response are running against an application, the one limited by the 
regular  statutory period, the other by the limited period set in a 
subsequent Office  action. The running of the first period is not 
suspended nor affected by an  Ex parte limited time action or even by an 
appeal therefrom. For an exception,  involving suggested claims, see MPEP 
# 2305.03.< 


710.04(a) Copying Patent Claims [R-1] 


        >Where, in an application in which there is an unanswered 
rejection  of record, claims are copied from a patent and all of these 
claims are rejected  there results a situation where two different periods 
for response are running  against the application. One period, the first, 
is the regular statutory period  of the unanswered rejection of record, 
the other period is the limited period  set for response to the rejection 
(either first or final). The date of the  last unanswered Office action on 
the claims other than the copied patent claims  is the controlling date of 
the statutory period. (Ex parte Milton, 164 Ms.  D. 1, 


63 USPQ 132 and Ex parte Nelson, 164 Ms. D. 361, 
26 J.P.O.S. 564.)  See also MPEP w 2305.02.< 


710.05      Period Ending on Saturday, Sunday, or a Federal Holiday [R-1] 

>35 U.S.C. 21      Filing date and day for taking action. 

***** 

        (b) When the day, or the last day, for taking any action or paying 
 any fee in the United States Patent and Trademark Office falls on 
Saturday,  Sunday, or a Federal holiday within the District of Columbia 
the action may  be taken, or the fee paid, on the next succeeding secular 
or business day. 

37 CFR 1.7.   Times for taking action; Expiration on Saturday, Sunday, or 
Federal  holiday. 

        Whenever periods of time are specified in this part in days, 
calendar  days are intended. When the day, or the last day fixed by 
statute or by or  under this part for taking any action or paying any fee 
in the Patent and Trademark  Office falls on Saturday, Sunday, or on a 
Federal holiday within the District  of Columbia, the action may be taken, 
or the fee paid, on the next succeeding  day which is not a Saturday, 
Sunday, or a Federal holiday. See w 1.304 for  time for appeal or for 
commencing civil action. 

        The Federal holidays are New Year's Day, January 1; Martin Luther 
King's  birthday, the third Monday in January; Washington's Birthday, the 
third Monday  in February; Memorial Day, the last Monday in May; 
Independence Day, July 4;  Labor Day, the first Monday in September; 
Columbus Day, the second Monday in  October; Veteran's Day, November 11; 
Thanksgiving Day, the fourth Thursday  in November; Christmas Day, 
December 25; Inauguration day (January 20, every  4 years). Whenever a 
Federal holiday falls on a Sunday, the following day (Monday)  is also a 
Federal holiday, Ex. Order 10,358; 17 FR. 5269; 5 U.S.C. 6103. 
        When a Federal holiday falls on a Saturday, the preceding day, 
Friday,  is considered to be a Federal holiday and the Patent and 
Trademark Office will  be closed for business on that day (5 U.S.C. 6103). 
Accordingly, any action  or fee due on such a Federal holiday Friday or 
Saturday is to be considered  timely if the action is taken, or the fee 
paid, on the next succeeding day  which is not a Saturday, Sunday, or a 
Federal holiday. 

        When an amendment is filed a day or two later than the expiration 
of  the period fixed by statute, care should be taken to ascertain whether 
the  last day of that period was Saturday, Sunday, or a Federal holiday 
and if so,  whether the amendment was filed or the fee paid on the next 
succeeding day  which is not a Saturday, Sunday, or a Federal holiday. 

        An amendment received on such succeeding day which was due on 
Saturday,  Sunday, or Federal holiday is endorsed on the file wrapper with 
the date of  receipt. The Saturday, Sunday, or Federal holiday is also 
indicated.< 

710.06      Situations When Response Period Is Reset or Restarted [R-1] 

        >Where the citation of a reference is incorrect or an Office 
action  contains some other defect and this error is called to the 
attention of the  Office within 1 month of the mail date of the action, 
the Office will restart  the previously set period for response to run 
from the date the error is corrected,  if requested to do so by applicant. 
If the error is brought to the attention  of the Office within the period 
for response set in the Office action but more  than 1 month after the 
date of the Office action, the Office will set a new  period for response, 
if requested to do so by the applicant, to substantially  equal the time 
remaining in the response period. For example, if the error  is brought to 
the attention of the Office 5 weeks after mailing the action,  then the 
Office would set a new 2-month period for response. The new period  for 
response must be at least 1 month 


and would run from the date the error is corrected. See MPEP w 707.05(g) 
for  the manner of correcting the record where there has been an erroneous 
citation. 
        Where for any reason it becomes necessary to remail any action 
(MPEP  w 707.13), the action should be correspondingly redated, as it is 
the remailing  date that establishes the beginning of the period for 
response; Ex parte Gourtoff,  1924 C.D. 153, 329 O.G. 536. 

        A supplementary action after a rejection explaining the references 
 more explicitly or giving the reasons more fully, even though no further 
references  are cited, establishes a new date from which the statutory 
period runs. 
        If the error in citation or other defective Office action is 
called  to the attention of the Office after the expiration of the period 
for response,  the period will not be restarted and any appropriate 
extension fee will be  required to render a response timely. The Office 
letter correcting the error  will note that the time period for response 
remains as set forth in the previous  Office action. 

        See MPEP # 505, # 512, and # 513 for Patent and Trademark Office 
practice  on date stamping documents. 

        In the event that correspondence from the Office is received late 
due  to (1) delays in the U.S. Postal Service, or (2) because the mail was 
delayed  in leaving the PTO (the postmark date is later than the mail date 
printed on  the correspondence), applicants may petition to reset the 
period for response,  which petitions shall be evaluated according to the 
guidelines which follow.  Where the PTO action involved in the petition 
was mailed by an examining group,  the authority to decide such petitions 
has been delegated to the Group Director.  See 1160 O.G. 14. 

PETITIONS TO RESET A PERIOD FOR 
RESPONSE DUE TO LATE RECEIPT 
 OF A PTO ACTION 

        The PTO will grant a petition to restart the previously set period 
 for response to a PTO action to run from the date of receipt of the PTO 
action  at the correspondence address when the following criteria are met: 
        (1)   the petition is filed within 2 weeks of the date of receipt 
of  the PTO action at the correspondence address; 

        (2)   a substantial portion of the set response period had elapsed 
 on the date of receipt (e.g., at least 1 month of a 2- or 3-month 
response  period had elapsed); and 

        (3)   the petition includes (a) evidence showing the date of 
receipt  of the PTO action at the correspondence address (e.g., a copy of 
the PTO action  having the date of receipt of the PTO action at the 
correspondence address  stamped thereon, a copy of the envelope (which 
contained the PTO action) having  the date of receipt of the PTO action at 
the correspondence address stamped  thereon, etc.), and (b) a statement 
(verified if made by other than a registered  practitioner) setting forth 
the date of receipt of the PTO action at the correspondence  address and 
explaining how the evidence being presented establishes the date  of 
receipt of the PTO action at the correspondence address. 

        There is no statutory requirement that a shortened statutory 
period  of longer than 30 days to respond to a PTO action be reset due to 
delay in  the mail or in the PTO. However, when a substantial portion of 
the set response  period had elapsed on the date of receipt at the 
correspondence address (e.g.,  at least 1 month of a 2- or 3-month period 
had elapsed), the procedures set  forth above for late receipt of a PTO 
action are available. Where a PTO action  was received with less than 
2 months remaining in a shortened statutory period of 
3 months, the period may be restarted from the date of receipt. Where the 
period  remaining is between 2 and 
3 months, the period will be reset only in extraordinary situations; e.g., 
 complex PTO action suggesting submission of comparative data. 

PETITIONS TO RESET A PERIOD FOR 
 RESPONSE DUE TO A POSTMARK DATE 
LATER THAN THE MAIL DATE PRINTED 
ON A PTO ACTION 

        The PTO will grant a petition to restart the previously set period 
 for response to a PTO action to run from the postmark date shown on the 
PTO  mailing envelope which contained the PTO action when the following 
criteria  are met: 

        (1)   the petition is filed within 2 weeks of the date of receipt 
of  the PTO action at the correspondence address; 

        (2)   the response period was for payment of the issue fee; or the 
 response period set was 1 month or 30 days; and 

        (3)   the petition includes (a) evidence showing address (e.g., 
copy  of the PTO action having the date of receipt of the PTO action at 
the correspondence  address stamped thereon, etc.), (b) a copy of the 
envelope which 


contained the PTO action showing the postmark date, and (c) a statement 
(verified  if made by other than registered practitioner) setting forth 
the date of receipt  of the PTO action at the correspondence address and 
stating that the PTO action  was received in the postmarked envelope. 

        The provisions of 37 CFR 1.8 and 1.10 apply to the filing of the 
above-noted  petitions with regard to the requirement that the petition be 
filed within 2 weeks of the date of receipt  of the PTO action. 

        The showings outlined above may not be sufficient 
if there are circumstances that point to a conclusion that the PTO action 
may  have been delayed after receipt rather than a conclusion that the PTO 
action  was delayed in the mail or in the PTO.< 


711   Abandonment [R-1] 


>37 CFR 1.135.      Abandonment for failure to respond within time limit. 
        (a)   If an applicant of a patent application fails to respond 
within  the time period provided under ww 1.134 and 1.136, the application 
will become  abandoned unless an Office action indicates otherwise. 

        (b)   Prosecution of an application to save it from abandonment 
pursuant  to paragraph (a) of this section must include such complete and 
proper action  as the condition of the case may require. The admission of 

an amendment not responsive to the last Office action, or refusal to admit 
 the same, and any proceedings relative thereto, shall not operate to save 
the  application from abandonment. 

        (c)   When action by the applicant is a bona fide attempt to 
respond  and to advance the case to final action, and is substantially a 
complete response  to the Office action, but consideration of some matter 
or compliance with some  requirement has been inadvertently omitted, 
opportunity to explain and supply  the omission may be given before the 
question of abandonment is considered. 
37 CFR 1.138.     Express abandonment. 

  An application may be expressly abandoned by filing in the Patent and 
Trademark  Office a written declaration of abandonment signed by the 
applicant and the  assignee of record, if any, and identifying the 
application. An application  may also be expressly abandoned by filing a 
written declaration of abandonment  signed by the attorney or agent of 
record. A registered attorney or agent acting  under the provision of 
# 1.34(a), or of record, may also expressly abandon a prior application as 
 of the filing date granted to a continuing application when filing such a 
continuing  application. Express abandonment of the application may not be 
recognized by  the Office unless it is actually received by appropriate 
officials in time  to act thereon before the date of issue. 

        Abandonment may be either of the invention or of an application. 
This  discussion is concerned with abandonment of the application for 
patent. 
        An abandoned application, in accordance with 
37 CFR 1.135 and 1.138, is one which is removed from the Office docket of 
pending  cases through: 

        (1)   formal abandonment 

        (a)   by the applicant (acquiesced in by the assignee if there be 
one),  or 

        (b)   by the attorney or agent of record including an associate 
attorney  or agent appointed by the principal attorney or agent and whose 
power is of  record but not including a registered attorney or agent 
acting in a representative  capacity under 37 CFR 1.34(a) except where a 
continuing application is filed;  or 

        (2)   failure of applicant to take appropriate action within a 
specified  time at some stage in the prosecution of the case. 

        Where an applicant, himself or herself, formally abandons an 
application  and there is a corporate assignee, the acquiescence must be 
made through an  officer whose official position is indicated. 

        See MPEP # 712 for abandonment for failure to pay issue fee.< 

711.01      Express or Formal Abandonment [R-1] 


        >The applicant (acquiesced in by an assignee of record), or the 
attorney/agent  of record, if any, can sign an express abandonment. It is 
imperative that the  attorney or agent of record exercise every precaution 
in ascertaining that  the abandonment of the application is in accordance 
with the desires and best  interests of the applicant prior to signing a 
letter of express abandonment  of a patent application. Moreover, special 
care should be taken to ensure that  the appropriate application is 
correctly identified in the letter of abandonment. 
        A letter of abandonment properly signed becomes effective when an 
appropriate  official of the Office takes action thereon. When so 
recognized, the date of  abandonment may be the date of recognition or a 
different date if so specified  in the letter itself. For example, where a 
continuing application is filed  with a request to abandon the prior 
application as of the filing date accorded  the continuing application, 
the date of the abandonment of the prior application  will be in 
accordance with the request once it is recognized. 

        Action in recognition of an express abandonment may take the form 
of  an acknowledgment by the examiner or the Publishing Division of the 
receipt  of the express abandonment, indicating that it is in compliance 
with 37 CFR 1.138. Alternatively, recognition may be no more than the 
transfer of  drawings to a new application pursuant to instructions which 
include a request  to 


abandon the application containing the drawings to be transferred (see 37 
CFR  1.60 and MPEP # 608.02(i)). 

        It is suggested that divisional applications being submitted under 
 37 CFR 1.60 be reviewed before filing to ascertain whether the prior 
application  should be abandoned. Care should be exercised in situations 
such as these as  the Office looks on express abandonments as acts of 
deliberation, intentionally  performed. 

        Applications may be expressly abandoned as provided for in 37 CFR 
1.138.  When a letter expressly abandoning an application (not in issue) 
is received,  the examiner should acknowledge receipt thereof, and 
indicate whether it does  or does not comply with the requirements of 37 
CFR 1.138. 

        The filing of a request for a file wrapper continuing application 
(FWC)  under 37 CFR 1.62(g) is considered to be a request to expressly 
abandon the  prior application as of the filing date granted the 
continuing application. 
        Form Paragraph 7.88 may be used to acknowledge proper express 
abandonments. 
W 7.88      Acknowledge Express Abandonment 

        This application is abandoned in view of the letter of express 
abandonment  complying with 37 CFR 1.138 filed on [1]. 

Examiner Note: 

        1.  With the exception of express abandonments resulting from the 
filing  of a file wrapper continuation application or filed with a 
continuing application,  all express abandonments must be signed by all 
the inventors, the owners of  the entire interest, or an attorney of record. 

        2.  The provisions of 37 CFR 1.34 do not apply to express 
abandonments  unless filed with a continuing application. 

        If the letter expressly abandoning the application does comply 
with  37 CFR1.138, the examiner should re-spond by using form PTOL-1432 
and by checking  the appropriate boxes which indicate that the letter is 
in compliance with  37 CFR 1.138 and that the application is being 
forwarded to the Files Repository.  The examiner's signature may appear at 
the bottom of the form. If such a letter  does not comply with the 
requirements of 37 CFR 1.138, a fully explanatory  letter should be sent. 

        Form Paragraph 7.89 may be used to acknowledge improper express 
abandonments. 
W  7.89  Letter of Express Abandonment, Improper 

        The letter filed on [1] does not comply with the requirements of 
37  CFR 1.138, and therefore is not a proper letter of express 
abandonment. 
Examiner Note: 

        The reasons why the letter fails to comply with 37 CFR 1.138 must 
be  fully explained, e.g., the individual signing the express abandonment 
is not  of record. See the Examiner Notes of form paragraph 7.88. 

        A letter of express abandonment which is not timely filed (because 
 it was not filed within the period for response), is not acceptable to 
expressly  abandon the application. The letter of express abandonment 
should be endorsed  on the file wrapper and placed in the application file 
but not formally entered. 
        The application should be pulled for abandonment after expiration 
of  the minimum permitted period for response (see MPEP # 711.04(a)) and 
applicant  notified of the abandonment for failure to respond within the 
statutory period.  See MPEP # 711.02 and # 711.04(c). 

        In view of the doctrine set forth in Ex parte Lasscell, 1884 C.D. 
66,  29 O.G. 861 (Comm'r Pat. 1884), an amendment canceling all of the 
claims, even  though said amendment is signed by the applicant himself and 
the assignee,  is not an express abandonment. Such an amendment is 
regarded as nonresponsive  and should not be entered, and applicant should 
be notified as explained in  MPEP # 714.03 to # 714.05. But see MPEP # 
608.02(i) for situation where an  application is abandoned along with 
transfer of drawings to a new application. 
        An attorney or agent not of record in an application may file a 
withdrawal  of an appeal under 37 CFR 1.34(a) except in those instances 
where such withdrawal  would result in abandonment of the application. In 
such instances the withdrawal  of appeal is in fact an express abandonment. 

AFTER NOTICE OF ALLOWANCE 

        Letters of abandonment of allowed applications are acknowledged by 
 the Publishing Division. 

        37 CFR 1.313 provides that an allowed application will not be 
withdrawn  from issue except by approval of the Commissioner, and that 
after the issue  fee has been paid, it will not be withdrawn for any 
reason except 

        (1)   mistake on the part of the Office, 

        (2)   a violation of 37 CFR 1.56 or illegality in the application, 


        (3)   unpatentability of one or more claims, 

        (4)   for interference, or 

        (5)   for abandonment to permit consideration of an information 
disclosure  statement under 37 CFR 1.97 in a continuing application. See 
MPEP # 711.05  and # 1308. 

        In cases where 37 CFR 1.313 precludes giving effect to an express 
abandonment,  the appropriate remedy is a petition, with fee, under 37 CFR 
1.183, showing  an extraordinary situation where justice requires 
suspension of 37 CFR 1.313. 
APPLICATION IN INTERFERENCE 

        A written declaration of abandonment of the application signed 
only  by an attorney or agent of record, when the application sought to be 
expressly  or formally abandoned is the subject of an interference 
proceeding under 35 U.S.C. 135, is not effective to terminate the 
interference, and will not  be considered until after ex parte 
pro-secution is resumed. In order to be  effective to terminate an 
interference proceeding, an abandonment of the application  must be signed 
by the inventor in person with the written consent of the assignee  where 
there has been an assignment.< 


711.02      Failure To Take Required Action During Statutory Period [R-1] 

        >37 CFR 1.135(a) specifies that an application becomes abandoned 
if  applicant "fails to prosecute" his or her application within the fixed 
statutory  period. This failure may result either from (1) failure to 
respond with 

in the statutory period, or (2) insufficiency of response, i.e., failure 
to  take "complete and proper action, as the condition of the case may 
require"  within the statutory period (37 CFR 1.135(b)). 

        When an amendment is filed after the expiration of the statutory 
period,  the case is abandoned and the remedy is to petition to revive it. 
The examiner  should notify the applicant or attorney at once that the 
application has been  abandoned by using form letter PTOL-1432. The proper 
boxes on the form should  be checked and the blanks for the dates of the 
proposed amendment and the Office  action completed. The late amendment is 
endorsed on the file wrapper but not  formally entered. (See MPEP # 714.17.) 

        Form Paragraph 7.90 may also be used. 

W 7.90      Abandonment, Failure To Respond 

        This application is abandoned in view of applicant's failure to 
submit  a response to the Office action mailed on [1] within the required 
period for  response. 

 Examiner Note: 

        1. A letter of abandonment should not be mailed until after the 
period  for requesting an extension of time under 37 CFR 1.136(a) has 
expired. 
        2. In pro se cases see form paragraph 17.10. 

        To pass on questions of abandonment, it is essential that the 
examiner  know the dates that mark the beginning and end of the statutory 
period under  varying situations. Applicant's response must reach the 
Office within the set  shortened statutory period for reply dating from 
the date stamped or printed  on the Office letter or within the extended 
time period obtained under 37 CFR  1.136. (See MPEP # 710 to # 710.06.) 

PETITION TO WITHDRAW HOLDING OF ABANDONMENT BASED ON FAILURE TO RECEIVE 
OFFICE ACTION 
        An allegation that an Office action was not received may be 
considered  as a petition for the withdrawal of the holding of 
abandonment. If the allegation  is adequately supported, the petition may 
be granted and a new Office action  mailed. The petition should include 
sufficient data describing the procedures  and controls utilized by the 
addressee when correspondence is received from  the Patent and Trademark 
Office. If possible the addressee should also point  out how these 
procedures and controls were followed in the situation at hand.  The 
statements of fact setting forth the above must be verified by affidavit 
under oath before a Notary Public or, in the alternative, by declaration 
in  accordance with 37 CFR 1.68 if made by a person not registered to 
practice  before the Patent and Trademark Office. Prior to 1971, the only 
relief available  to an applicant alleging the nonreceipt of an Office 
communication, wherein  the period for response had expired, was by way of 
a petition to revive. The  Office was not receptive to treating such 
contentions as petitions for the  withdrawal of the holding of abandonment 
regardless of the evidence presented  in support of the contention that 
the Office action was not received. However,  in 1971, the District Court, 
District of Columbia, in Delgar Inc. v. Schuyler,  172 USPQ 513, decided 
that the Commissioner should mail a new Notice of Allowance  in view of 
the evidence presented in support of the contention that plaintiff's 
attorney never received the first 
Notice.< 


711.02(a) Insufficiency of Response [R-1] 


        >Abandonment may result from a situation where applicant's reply 
is  within the period for response but is not fully responsive to the 
Office action.  But see MPEP 
# 710.02(c), par. (c). See also MPEP # 714.02 to # 714.04. 

W  7.91 Reply is Not Fully Responsive, Extension of Time Suggested 
        Applicant's reply received [1] is not deemed to be fully 
responsive  to the prior Office action because [2]. Since the period for 
response set in  the prior Office action has expired, this application 
will become abandoned  unless applicant corrects the deficiency and 
obtains an extension of time under  37 CFR 1.136(a). 

        The date on which the corrected response, the petition under 37 
CFR 1.136(a), and the petition fee are filed will be the date of the 
response  and also the date for determining the period of extension and 
the corresponding  amount of the fee. In no case may an applicant respond 
later than the six month  statutory period or obtain an extension for more 
than four months beyond the date of response set in an Office action. 
Examiner Note: 

        1.  In bracket 2, set forth why the examiner considers there to be 
 a failure to take "complete and proper action" within the statutory 
period. 
        2. If the response appears to be a bona fide attempt to respond 
with  an inadvertent omission, do not use this paragraph; instead use form 
paragraph  7.95.< 


711.02(b) Special Situations Involving Abandonment [R-1] 


        >The following situations involving questions of abandonment often 
 arise, and should be specially noted: 

        (1)   Copying claims from a patent when not suggested by the 
Patent  and Trademark Office does not constitute a response to the last 
Office action  and will not 

save the case from abandonment, unless the last Office action relied 
solely  on the patent for the rejection of all the claims rejected in that 
action. 
        (2)   A case may become abandoned through withdrawal of, or 
failure  to prosecute, an appeal to the Board of Patent Appeals and 
Interferences. See  MPEP # 1215.01 to # 1215.04. 

        (3)   Likewise it may become abandoned through dismissal of appeal 
 to C.A.F.C. or civil action, where there was not filed prior to such 
dismissal  an amendment putting the case in condition for issue or fully 
responsive to  the Board's decision. Abandonment results from failure to 
perfect an appeal  as required by C.A.F.C.  See MPEP # 1215.05 and # 1216.01. 

        (4)   Where claims are suggested for interference near the end of 
the  period for response running against the case, see MPEP # 2305. 

        (5)   When an FWC application under 37 CFR 1.62 
is filed. See MPEP # 201.06(b) and # 711.01.< 


711.02(c) Termination of Proceedings [R-1] 


        >"Termination of proceedings" is an expression found in 35 U.S.C. 
120.  As there stated, a second application is considered to be copending 
with an  earlier case if it is filed before (a) the patenting, (b) the 
abandonment of,  or (c) other termination of proceedings in the earlier 
case. Before "has consistently  been interpreted, in this context, to mean 
"not later than." 

        In each of the following situations, proceedings are terminated: 
        (1)   When the issue fee is not paid and the application is 
abandoned  for failure to pay the issue fee, proceedings are terminated as 
of the date  the issue fee was due and the application is the same as if 
it were abandoned  after midnight on that date (but if the issue fee is 
later accepted, on petition,  the application is revived). See MPEP # 712. 

        (2)   If an application is in interference involving all the 
claims  present in the application as counts and the application loses the 
interference  as to all the claims, then proceedings on that application 
are terminated as  of the date appeal or review by civil action was due if 
no appeal or civil  action was filed. 

        (3)   Proceedings are terminated in an application after decision 
by  the Board of Patent Appeals and Interferences as explained in MPEP # 
1214.06. 
        (4)   Proceedings are terminated after a decision by the court as 
explained  in MPEP # 1216.01.< 


711.03      Reconsideration of Holding of Abandonment; Revival [R-1] 

        >When advised of the abandonment of his or her application, 
applicant  may either ask for reconsideration of such holding, if he or 
she disagrees  with it on the basis that there is no abandonment in fact; 
or petition for  revival under 37 CFR 1.137.< 


711.03(a) Holding Based on Insufficiency of Response [R-1] 


        >Applicant may deny that the response was incomplete. 

        While the primary examiner has no authority to act upon an 
application  in which no action by applicant was taken during the period 
for response, he  or she may reverse his or her holding as to whether or 
not an amendment received  during such period was responsive and act on a 
case of such character which  he or she has previously held abandoned. 
This is not a revival of an abandoned  application but merely a holding 
that the case was never abandoned. See also  MPEP # 714.03.< 


711.03(b) Holding Based on Failure To Respond Within Period [R-1] 

        >When an amendment reaches the Patent and Trademark Office after 
the  expiration of the period for response and there is no dispute as to 
the dates  in-volved, no question of reconsideration of a holding of 
abandonment can be  presented. 

        However, the examiner and the applicant may disagree as to the 
date  on which the period for response commenced to run or ends. In this 
situation,  as in the situation involving sufficiency of response, the 
applicant may take  issue with the examiner and point out to him or her 
that his or her holding  was erroneous.< 


711.03(c) Petitions Relating to Abandonment [R-2] 


37 CFR 1.137. Revival of abandoned application. 

        (a) An application abandoned for failure to prosecute may be 
revived  as a pending application if it is shown to the satisfaction of 
the 
Commissioner that the delay was unavoidable. A petition to revive an 
abandoned  application must be promptly filed after the applicant is 
notified of, or otherwise  becomes aware of, the abandonment, and must be 
accompanied by: 

        (1)   a proposed response to continue prosecution of that 
application,  or filing of a continuing application, unless either has 
been previously filed; 
        (2)   the petition fee as set forth in w 1.17(l); and 

        (3)   a showing that the delay was unavoidable. The showing must 
be  a verified showing if made by a person not registered to practice 
before the  Patent and Trademark Office. 

        (b) An application unintentionally abandoned for failure to 
prosecute  may be revived as a pending application if the delay was 
unintentional. A petition  to revive an unintentionally abandoned 
application must be: 

        (1)   accompanied by a proposed response to continue prosecution 
of  that application, or the filing of a continuing application, unless 
either  has been previously filed; 

        (2)   accompanied by the petition fee as set forth in #1.17(m); 
        (3)   accompanied by a statement that the delay was unintentional. 
 The statement must be a verified statement if made by a person not 
registered  to practice before the Patent and Trademark Office. The 
Commissioner may require  additional information where there is a question 
whether the delay was unintentional;  and 

        (4)   filed either: 

        (i)   within one year of the date on which the application became 
abandoned;  or 

        (ii)    within three months of the date of the first decision on a 
 petition to revive under paragraph (a) of this section which was filed 
within  one year of the date on which the application became abandoned. 

        (c) Any petition pursuant to paragraph (a) of this section not 
filed  within six months of the date of abandonment of the application, 
must be accompanied  by a terminal disclaimer with fee under w 1.321 
dedicating to the public a  terminal part of the term of any patent 
granted thereon equivalent to the period  of abandonment of the 
application. The terminal disclaimer must also apply  to any patent 
granted on any continuing application entitled under 35 U.S.C.  120 to the 
benefit of the filing date of the application for which revival  is sought. 

        (d) Any request for reconsideration or review of a decision 
refusing  to revive an application upon petition filed pursuant to 
paragraphs (a) or 
(b) of this section, to be considered timely, must be filed within two 
months  of the decision refusing to revive or within such time as set in 
the decision. 
        (e) The time periods set forth in this section cannot be extended, 
 except that the three-month period set forth in paragraph (b)(4)(ii) and 
the  time period set forth in paragraph (d) of this section may be 
extended under  the provisions of w 1.136. 

        Public Law 97-247 provided at 35 U.S.C. 41(a)7, a fee for the 
revival  of an unintentionally abandoned application for a patent or for 
the unintentionally  delayed payment of the fee for issuing each patent 
unless the petition is filed  under 35 U.S.C. 133 or 151 (revival based 
upon unavoidable delay), in which  case a different fee is applicable. 
These fees are expressly set forth in 37  CFR 1.17(l) and 1.17(m) and 
provide for a 50% reduction for small entities. 
        The standard which is applied in situations where the delay 
resulting  in abandonment is unavoidable is the same standard which has 
previously been  applied prior to Public Law 97-247. 

        37 CFR 1.17(m) provides for a fee for filing each petition for 
revival,  or for acceptance of the delayed payment of an issue fee, where 
the abandonment  or the failure to pay the issue fee is unintentional. The 
standard which is  applied is substantially less rigorous than the 
standard applied for unavoidable  delay petitions. Generally, a statement 
that the delay was unintentional, plus  the proper petition fee, and the 
proposed response is all that is required.  The statement that the delay 
was unintentional should be made by a person involved  with the 
application during the entire period of delay. A description of the 
circumstances surrounding the delay should not be submitted unless there 
is  a question whether the delay was unintentional. Where a question 
arises whether  the 


delay was unintentional, additional information may be required. For 
example,  a letter of express abandonment in the abandoned application 
would prompt a  requirement for further information where the record does 
not make clear that  such a delay was unintentional. 

        An applicant is not precluded from filing a petition based upon 
unintentional  delay where a petition plus fee based upon unavoidable 
delay is unsuccessful.  In such an instance, a petition to revive on the 
ground of unintentional abandonment  accompanied by the proper fee and the 
appropriate response could be filed.  For this purpose, a mere statement 
that the delay was unintentional is all  that is required. 

        In the instances where an application is abandoned and revival is 
based  upon unintentional delay or unavoidable delay is desired solely for 
the purpose  of continuity in order to effect the filing of a continuing 
application, it is not  necessary to file the appropriate response. 

The filing of the continuing application will be accepted as the 
appropriate  response in such situations. If revival is desired for other 
than the filing  of a continuing application, a complete petition must 
include the proposed  response which resulted in the holding of 
abandonment. To facilitate action,  the petition to revive should include 
reference to the filing of the continuing  application and a letter of 
express abandonment conditional upon the granting  of the petition and of 
a filing date to the continuing application. 
        An application which is abandoned for failure to respond within a 
set  period, with no extension fees having been paid, would not require 
the payment of extension fees as a condition of  revival. 

PETITIONS TO WITHDRAW THE HOLDING OF ABANDONMENT 

        Prior to 1971, the only relief available to an applicant alleging 
the  nonreceipt of an Office communication, wherein the period for 
response had  expired, was by way of a petition to revive. The Office was 
not receptive to  treating such contentions as petitions for the withdrawal 
of the holding of abandonment regardless of the evidence presented in 
support  of the contention that the Office action was not received. 
However, in 1971,  the District Court, District of Columbia, in Delgar Inc. 
v. Schuyler, 172 USPQ 513 (D.D.C. 1971), decided that the Commissioner 
should  mail a new Notice of Allowance in view of the evidence presented 
in support  of the contention that plaintiff's attorney never received the 
first Notice. 
        While the decision may have been based on the fact that a petition 
 to revive was not available in a case abandoned for failure to pay the 
issue  fee, the reasoning of the court can appropriately be applied to 
cases abandoned  for failure to prosecute. Accordingly, the form of relief 
provided in Delgar  is extended to cover the abandonment of an application 
for failure to respond  to an Office action which was not received by the 
applicant or his or her representative.  Henceforth, an allegation that an 
Office action was not received may be considered  as a petition for the 
withdrawal of the holding of abandonment. If the allegation  is adequately 
supported, the petition may be granted and a new Office action  mailed. 

        In order to minimize costs and burdens to the practitioner and the 
 Office when an application has become abandoned due to a failure to 
receive  an Office action, the Office has modified (1156 O.G. 53, November 
16, 1993)  the showing required to make a petition to with- draw the 
holding of abandonment  grantable. The showing required to establish the 
failure to receive an Office  action must consist of a statement from the 
practitioner stating that the Office  action was not received by the 
practitioner and attesting to the fact that  a search of the file jacket 
and docket records indicates that the Office action  was not received. A 
copy of the docket record where the nonreceived Office  action would have 
been entered had it been received and docketed must be attached  to and 
referenced in practitioner's statement. 

        The showing outlined above may not be sufficient if there are 
circumstances  that point to a conclusion that the Office action may have 
been lost after  receipt rather than a conclusion that the Office action 
was lost in the mail,  e.g., if the practitioner has a history of not 
receiving Office actions. Two  additional procedures are available for 
reviving an application that has become  abandoned due to a failure to 
respond to an Office Action: (1) a petition based  on unintentional 
abandonment or delay; and (2) a petition based on unavoidable  delay. 

        A petition to revive an abandoned application should not be 
confused  with a petition from an examiner's holding of abandonment. Where 
the holding  of abandonment is predicated on the insufficiency of the 
response, or disagreement  as to controlling dates, the petition from such 
holding comes under 37 CFR  1.181 and does not require a fee. 

UNAVOIDABLE DELAY PETITIONS 

        A decision on a petition to revive an abandoned application under 
37  CFR 1.137(a) is based solely on whether a satisfactory showing has 
been made  that the delay was unavoidable (35 U.S.C. 133). A petition to 
revive is not  normally considered unless the petition fee has been paid 
and will not be granted  unless a proposed response to the last Office 
action has been received 
(37 CFR 1.137). While a response to a nonfinal action may be either an 
argument  or an amendment under 37 CFR 1.111, a response to a final action 
"must include cancellation of, or  appeal from the rejection of, each 
claim so rejected" under 37 CFR 1.113. Accordingly,  in any case where a 
final rejection had been made, the proposed response required  for 
consideration of a petition to revive must be either an appeal or an 
amendment that cancels all the rejected  claims or otherwise prima facie 
places the application in condition for allowance  or the filing of a 
continuing application. When a notice of appeal is the appropriate 
response accompanying a petition to revive, the brief required by 37 CFR 
1.192  will be due within the time set by the Commissioner in the decision 
granting  the petition. In those situations where abandonment occurred 
because of the  failure to 

file an appeal brief, the proposed response, required for consideration of 
 a petition to revive, must include a proper brief accompanied by the 
proper  fee. 

        A copy of an appropriate form for use in filing a petition to 
revive  an unavoidably abandoned application is reproduced below. 



A71103c08.bmp 





A71103c08.end 



A71103c09.bmp 



A71103c09.end 



A71103c10.bmp 





A71103c10.end 



        In all applications filed before June 8, 1995 and in all design 
applications  filed on or after June 8, 1995, which application has been 
abandoned for at  least 6 months before the filing of a granted petition 
to revive, an appropriate  terminal disclaimer is required 37 CFR 1.137(c). 

        When a terminal disclaimer is a necessary component of the 
petition,  the period to be disclaimed must equal the number of months 
between the date  of 


abandonment and the date a grantable petition is filed. The date of 
abandonment  is the date the period for response has expired (see MPEP w 
711.04(a)). This  is normally the end of the 3-month shortened statutory 
period. The requirement  for a terminal disclaimer should not be viewed as 
a substitute for the promptness  requirement of 37 CFR 1.137(a). Moreover, 
the terminal disclaimer should employ  the format shown below. 



A71103c11.bmp 



A71103c11.end 



        Applicants may petition under the provisions of 
37 CFR 1.183 for a waiver of the requirement that a period equivalent to 
the  period of abandonment be disclaimed if it can be shown that an 
extraordinary  situation exists in which justice requires waiver of this 
requirement. 
        In situations where petitions to revive are not grantable because 
of  insufficient evidence submitted or petitioner's failure to comply with 
certain  requirements, the Office may dismiss those petitions with an 
indication as  to the missing items and warn petitioners that if 
reconsideration is desired  a renewed petition supplying the omissions has 
to be filed within 2 months  from the date of the decision or such time as 
may be set in the dismissal as  being the appropriate deadline for 
requesting reconsideration. In those situations  where petitioners require 
more time to gather additional evidence or items  needed for 
reconsideration, an extension of time of up to 
4 months may be obtained under the provisions of 
37 CFR 1.136(a). The filing of a renewed petition within the period 
specified  in the decision or within the extended period permitted under 
37 CFR 1.136(a)  will satisfy the promptness requirement of petitions 
under the unavoidable  standard. 

        Upon failure to timely file a renewed petition under the 
unavoidable  standard, the Office will require a showing of unavoidable 
delay for the entire  period of abandonment. To be entitled to relief 
under the unavoidable standard,  petitioner must be able to show 
unavoidable delay from a time prior to abandonment  to the filing 
of a grantable petition. In re Application of Takeo, 
17 USPQ2d 1155 (Comm'r Pat. 1990). 

        It should also be recognized that a petition to revive an 
abandoned  application under 37 CFR 1.137 alleging nonreceipt of the 
Office action may  be treated as a request to withdraw the holding of 
abandonment. However, any  petition fee, filed with a 37 CFR 1.137 
petition so treated, may be returned  or credited to petitioner's account 
by indicating in the decision that a request  should be made to the Office 
of Finance. 

        The granting of a petition to revive does not necessarily mean 
that  the proposed response is complete. The Office of Petitions will 
normally route  the application for determining if the response to a final 
Office action places  the application in condition for allowance before 
granting a petition to revive.  The patent examiner is instructed that if 
the response places the application  in condition for allowance, the 
patent examiner should write in the margin  of the response "OK to enter 
upon revival."  If, on the other hand, the response  would not place the 
application in condition for allowance, the patent examiner  is instructed 
to complete form PTOL-303 and return the unmailed form to the  Office of 
Petitions with the application. If the petition is otherwise grantable 
and the patent examiner indicates that the response places the application 
 in condition for allowance, the petition will be granted. If such an 
amendment  does not place the application into condition for allowance, 
the petition will  not be granted. A copy of the form PTOL-303 is not 
mailed with the decision  on the petition but merely serves as an advisory 
to the Office of Petitions  regarding the decision of the patent examiner 
on the amendment after final  rejection. 

        Where the proposed response is to a nonfinal Office action, the 
petition  may be granted if the response appears to be bona fide. After 
revival of the  application, the patent examiner may, upon more detailed 
review, determine  that the response is bona fide but lacking in some 
respect. In this limited  situation, the patent examiner should send out a 
letter giving a 1-month (or  30 days in the event that a 1-month period 
for response would be less than  30 days) shortened statutory period in 
order to correct the error or omission.  Extensions of time under 37 CFR 
1.136(a) are permitted. If applicant does not  complete the response 
within the shortened statutory period including any extension,  the 
application is again abandoned. 

        See MPEP # 712 for a petition for late payment of the issue fee. 
UNINTENTIONAL ABANDONMENT 

        A decision on a petition to revive an unintentionally abandoned 
application  under 37 CFR 1.137(b) is based substantially on whether the 
statement that  the delay was unintentional is present along with the 
required fee and the  proposed response. Generally, nothing else is 
required unless there is reason  to believe that the abandonment was 
intentional such as a letter of express  abandonment being of record in 
the abandoned application. In such an instance,  the Office might inquire 
as to the circumstances surrounding the abandonment  in order to clarify 
that the abandonment was, in fact, unintentional. 
        A petition to revive based upon unintentional delay does not 
require  the submission of a terminal disclaimer. 37 CFR 1.137(c) 
specifically states  that such disclaimers are only required when a 
grantable petition based on unavoidable delay is not  filed within 6 
months of the date of abandonment in all applications filed  before June 
8, 1995 and in all design applications filed on or after June 8,  1995. 

        If a petition to revive based upon unavoidable delay is 
unsuccessful,  an applicant is not estopped from filing a petition based 
upon unintentional  delay so long as such petition is filed within 1 year 
of the date of abandonment  of the application or within 3 months of the 
date of the first decision on  a petition to revive based upon avoidable 
delay, which was filed within 1 year  of the date of abandonment of the 
application. The petition must include a  statement that the delay was 
unintentional, a proposed response if not filed  previously, and the 
required petition fee. The statement that the delay was  unintentional 
must be verified if made by a person not registered to practice  before 
the Office. The 3-month period referred to above which is measured from 
the date of the first decision on a petition to revive based upon 
unavoidable  delay is extendable for a period of up to 4 months under 37 
CFR 1.136(a), but  no further extensions under 37 CFR 1.136(b) will be 
granted. 

        The manner of determining the end of the 1-year period set forth 
in  37 CFR 1.137(b) is the same as that for determining the date of 
abandonment.  If the 1-year anniversary falls on a Saturday, Sunday, or 
Federal holiday,  the 1-year anniversary date is deemed to be the next 
succeeding business day.  The 1-year period would be over after midnight 
of the 1-year anniversary date. 
        A copy of an appropriate form for use in filing a petition to 
revive  an unintentionally abandoned application is reproduced below. 

        37 CFR 1.137(b) is permissive in the sense that it does not 
require  a showing of unavoidable delay and does not require a terminal 
disclaimer,  but it is not meant to encourage delay. Applicants who have 
received a Notice  of Abandonment in their applications sometimes 
calculate the time when the  1-year period for filing a petition for 
unintentional abandonment ends with  a view toward delaying the filing of 
a petition until the end of the period.  Applicants are not permitted to 
do this. The Office has amended 37 CFR 1.137(b) 
(effective **>Sept. 20<, 1993) to require applicant to state that the 
delay  was unintentional, rather than the abandonment was unintentional. A 
person  seeking revival should not make a statement that the delay was 
unintentional  unless the entire delay, including the delay from the date 
it was discovered  that the application was abandoned up until the 
petition to revive was actually  filed, was unintentional. For example, a 
statement that the delay was unintentional  would not be proper when an 
applicant becomes aware of an abandonment and then  intentionally delays 
filing a petition to revive the application under 37 CFR  1.137. 

        Applicants are cautioned against intentionally delaying the filing 
 of a petition to revive an abandoned application because it may preclude 
any  revival from an abandoned status. Applicants have delayed filing a 
petition  under the unintentional standard until after expiration of the 
1-year period  because of a miscalculation of the 1-year period. This 
miscalculation resulted  in the applicant being unable to show that the 
delay was unavoidable. In re  Application of S, 8 USPQ2d 1630 (Comm'r Pat. 
1988). Note that 37 CFR 1.137(a)  requires that petitions under that 
section of the Rule be promptly filed after  the application is notified, 
or otherwise becomes aware of, the abandonment. 
        Upon failure to timely file a renewed petition under the 
unintentional  standard (see 37 CFR 1.137(d), 1.155(e), 1.316(e), and 
1.317(e)), petitioner  may be subject to a loss of the right to proceed 
under the unintentional standard  if more than 1 year lapsed between the 
date of abandonment and the date the  renewed petition is filed. 

        The unintentional provisions specified in 37 CFR 1.137(b) apply to 
 applications abandoned under 37 CFR 1.53(d). Prior to **>Sept. 20<, 1993, 
37  CFR 1.137(b) specified that unintentional revival was not permitted if 
the  application had been abandoned under 37 CFR1.53(d). However, on 
November 5,  1990, the Commissioner waived, under 37 CFR 1.183, that 
exception as to applicability  of petitions under the unintentional 
standards to applications abandoned under  37 CFR 1.53(d). See "Petitions 
to Revive Patent Applications Waiver of Provisions of 37 CFR 1.137(b)," 
1121 Off. Gaz. Pat. 
Office 6 (December 4, 1990). 

PETITIONS UNDER 37 CFR 1.183 TO WAIVE THE 1-YEAR TIME PERIOD REQUIREMENT 
IN  37 CFR 1.137(b), 1.155(c), AND 1.316(c) 

        Petitions to revive an unintentionally abandoned application (37 
CFR  1.137(b)) or to accept an unintentionally late paid issue fee (37 CFR 
1.155(c)  or 1.136(c)) must be filed within one year of the date on which 
the application  became abandoned. 



A71103c12.bmp 



A71103c12.end 



A71103c13.bmp 



A71103c13.end 



        The prohibition against requests for waiver previously found in 37 
 CFR 1.137(b), 1.155(c), 1.316(c), and 1.317(c) have been deleted, 
effective  **>Sept. 20<, 1993. However, applicants are cautioned that 
waiver of the 1-year  deadline under the unintentional standard will 
continue to be subject to strictly  limited conditions. The Office has 
determined that under certain very limited  conditions, the interests of 
the patent system would be better served by waiving  the 1-year time period. 

        These very limited conditions arise when an application becomes 
abandoned  due to an action or inaction by applicant and the Patent and 
Trademark Office  performs a documented and Official act (e.g., by issuing 
an Official document)  which could lead a reasonable individual to 
conclude that the action or inaction  was appropriate. If this conclusion 
is a contributing factor in the applicant's  failure to realize the "true" 
abandoned status of his application in time to  file a petition under one 
of the above-noted subsections, then conditions exist  under which a 37 
CFR 1.183 petition will be considered. 

        For example, if an applicant files papers for a continuing 
application  under 37 CFR 1.60 or 1.62 on a date when the parent 
application is abandoned 
(e.g., the applicant neglected to obtain an extension of time in the 
parent  application), the requirements of these regulations are not 
satisfied and the  papers should not be processed into an application. 
However, if in spite of  this error the Office issues a filing receipt for 
the continuing application,  a reasonable individual could conclude that 
the continuing application had  been properly filed on a date when the 
parent application was pending. Further,  if the lack of copendency 
between the parent and the continuing applications  is not discovered 
until after 1 year from the date on which the parent application  became 
abandoned, the opportunity to obtain copendency by reviving the parent 
application under 37 CFR 1.137(b) is lost. As an additional example, if an 
 applicant submits a check for payment of the issue fee and the payment is 
improper 
(e.g., the check is not timely submitted or is returned to the Office 
unpaid  due to insufficient funds), the application should be held 
abandoned. However,  if in spite of the improper issue fee payment the 
Office issues the application  as a patent, a reasonable individual could 
conclude that the issue fee payment  had been proper. Further, if the 
improper issue fee payment is not discovered  until after one year from 
the date on which the application became abandoned,  the opportunity to 
request acceptance of a late paid issue fee under 37 CFR  1.155(c) or 
1.316(c) is lost. 

        The abandonment problems described in the above noted examples are 
 clearly attributed to an error on the part of the applicant. 
Nevertheless,  such a problem could be aggravated when the Office performs 
a documented and  Official act which, in the circumstances recounted 
above, may be a contributing  factor in the loss of an opportunity to 
rectify this problem by filing a petition  under one of the above-noted 
subsections. In light of these factors, the Commissioner  will exercise 
his authority under 37 CFR 1.183 to waive the 1-year period requirement 
for filing a petition pursuant to 37 CFR 1.137(b), 1.155(c) or 1.316(c) 
providing  the following strictly limited conditions are present: 

        (1)   The applicant's action or inaction which caused the 
application  to become abandoned was clearly an unintentional oversight 
which resulted from  a bona fide attempt, as evidenced by Patent and 
Trademark Office records, to  comply with patent statutes, rules, and 
procedures in order to keep the application  pending as desired; 

        (2)   The Office performed a documented and Official act which 
could  lead a reasonable individual to conclude that the action or 
inaction was proper  and this conclusion was contributing factor in the 
applicant's failure to realize  the true abandoned status of his 
application in time to file a petition under  one of the above-noted 
subsections; 

        (3)   A petition under 37 CFR 1.183 and one of the above-noted 
subsections  is filed promptly after the applicant is notified by the 
Office or otherwise  becomes aware of the "true" abandoned status of the 
application; and 
        (4)   If the period of delay is over 6 months, the petition must 
be  accompanied by a terminal disclaimer with fee under 37 CFR 1.321 
dedicating  to the public a terminal part, equivalent to the period of 
abandonment, of  the term of any patent granted on the application or on 
any application entitled  to the benefit of the filing date of the 
application under 35 U.S.C. 120. 
        Applicants should note that this is intended to be a very limited 
extension  of the Commissioner's discretion in exercising his authority to 
waive the 1-year  period required under the above-mentioned subsections. 



NOTIFICATION OF CHANGE OF ADDRESS 

        Applications have become abandoned as a consequence of a change of 
 correspondence address therein, where an Office action is mailed to the 
old,  uncorrected address and fails to reach the addressee sufficiently 
early to  permit filing of a timely response. One factor for consideration 
in deciding  petitions under 37 CFR 1.137 to revive such applications is 
the degree of care  that has been exercised in adhering to the requirement 
(see MPEP w 601.03)  for prompt notification in each concerned application 
of the change of address.  In such instances, the showing of the cause of 
unavoidable delay must include  an adequate showing that a timely 
notification of the change of address was  filed in the application 
concerned, and in a manner reasonably calculated to  call attention to the 
fact that it was a notification of a change of address.  The mere 
inclusion, in a paper filed in an application for another purpose,  of an 
address differing from the previously provided correspondence address, 
without mention of the fact that an address change was being made, 
ordinarily  will not be considered sufficient notification of a change of 
address. If no  such notification was filed, or was filed belatedly, the 
showing must include  an adequate explanation of that failure or delay 
A showing that notification was made on a paper filed in the Patent and 
Trademark  Office listing plural applications as being affected will not 
be considered  to constitute a proper notification. The showing should 
include an indication  of whether the Postal Service was notified of the 
change of address and, if  so, the date of that notification. 

OFFICE ACTION - TIMELY RESPONSE 

        The Patent and Trademark Office has in the past received an 
excessively  large volume of petitions to revive based primarily on the 
late filing of amendments  and other responses to official actions. Many 
of these petitions indicate that  the late filing was due to unusual mail 
delays; however, the records generally  show that the filing was only 2 or 
3 days late. 

        In order to alleviate, for applicants and the Office, the problems 
 and expenditures of time and effort occasioned by abandonments and 
petitions  to revive, it is suggested that unless the certificate of 
mailing provisions  of 37 CFR 1.8 or 37 CFR 1.10 are used that responses to 
Office actions be mailed to the Patent and Trademark Office at least 1, 
and  preferably 2, week(s) prior to the expiration of the period within 
which a  response is required. This suggestion is made in the interest of 
improving  efficiency, thereby providing better service to the public. 

CONDITIONAL PETITION TO REVIVE FOR APPLICANTS RESIDING IN FOREIGN 
COUNTRIES AND MAILING BY AIR CARRIER SERVICE 

        Since applications that became abandoned unintentionally present 
burdens  to both the Patent and Trademark Office and the applicant, a 
simplified procedure  has been devised to alleviate these burdens when the 
abandonment results from  a delay in the mails from foreign countries. 
This procedure provides for an  automatic petition to revive or petition 
to accept the delayed payment of issue  fee when mailing by using an air 
carrier service. 

        The Certificate of Mailing procedures under 37 CFR 1.8 and 37 CFR 
1.10  can only be used in the United States of America. Therefore, it is 
suggested  that when a communication, complying with the circumstances 
enumerated below,  is mailed from a foreign country to the Patent and 
Trademark Office, a conditional  petition be attached to the communication. 

        However, foreign applicants are expected to avail themselves of 
the  fee extension of time provisions under 37 CFR 1.136(a) before they 
rely upon  a conditional petition to revive. Therefore, the Conditional 
Petition to Revive  is only appropriate when the period for response 
cannot be extended under the  provisions of 37 CFR 1.136(a). 

        If the communication is received in the Patent and Trademark 
Office  after the due date and the application becomes abandoned, the 
conditional petition  will become effective, subject to the following 
requirements. The petition  must include (1) payment of the appropriate 
fee or an authorization to charge  a deposit account for any required 
fees, including the petition fee, and (2)  an oath or declaration signed 
by the person mailing the communication and also  signed by the applicant 
or his or her registered attorney or agent. The wording  of the petition 
is dependent on the type of air carrier service used to forward  the 
communication. 

        The oath and declaration must identify the type of air carrier 
service  used and set forth the number of days expected for delivery by 
that air carrier  service from the point of origin to the United States 
Patent and Trademark Office and must be  deposited with that air carrier 
service at least the specified number of days  prior to the due date. Any 
mail delay beyond the time stated will be considered  to constitute 
unavoidable delay and sufficient cause to grant a petition to  revive (35 
U.S.C. 133) or a petition to accept delayed payment of an issue  fee (35 
U.S.C. 151). For example, if a response was due in the Patent and 
Trademark  Office on June 17, 1987, and mail is expected to take two days 
by the air carrier  service designated, the communication and conditional 
petition must be posted  no later than June 15, 1987 in order for the 
conditional petition to be effective. 

        The circumstances under which this procedure may be used are those 
 where the communication, if timely filed, (1) would be a proper and 
complete  response to an action or request by the Patent and Trademark 
Office, and (2)  would stop a period for response from continuing to run. 
Accordingly, this  procedure would be appropriate for: 

        (1)   A response to a nonfinal Office action. 

        (2)   A response to a final Office action in the form of an 
amendment  that cancels all rejected claims or otherwise prima facie 
places the application  in condition for allowance. 

        (3)   A notice of appeal and requisite fee. 

        (4)   An appeal brief, in triplicate, and requisite fee. 

        (5)   An issue fee. 

        Examples for which this procedure would not be appropriate and 
will  not apply include the following types of communications when they 
are forwarded  to the Patent and Trademark Office. 

        (1)   Application papers. 

        (2)   A response to a final Office action other than that 
indicated  in categories 2 and 3, above. 

        (3)   Extensions of time. 

        (4)   Amendments under 37 CFR 1.312. 

        (5)   Priority documents. 

        Normal petition practices are not affected in those situations 
where  this procedure is either not elected or appropriate. 

        A suggested format for the conditional petition is shown below: 
CONDITIONAL PETITION TO REVIVE 

Applicant(s) 

Application No. 

Filing Date: 

For: 

I hereby certify that the attached communication is being deposited in the 
 mail outside the United States as air mail (here specifically designate 
the  type of air carrier service and the time stated by that carrier 
service required  to deliver mail from the point of origin to the United 
States Patent and Trademark  Office) in an envelope addressed to : 
Commissioner of Patents and Trademarks,  Washington D.C. 20231, on (date) 
from (location) by (name of individual mailing  the communication). 

In the event that such communication is not timely filed in the United 
States  Patent and Trademark Office, it is requested that this paper be 
treated as  a petition and that the delay be held unavoidable. The 
petition fee of $ _____________  is enclosed. 

The undersigned declares further that all statements made herein are true, 
 based upon the best available information; and further, that these 
statements  were made with the knowledge that willful false statements and 
the like so  made are punishable by fine or imprisonment, or both, under 
Section 1001 or  Title 18 of the United States Code, and that such willful 
false statements  may jeopardize the validity of the application or any 
patent issuing thereof. 
________        _____________________________________ 
  (date)        (Signature of applicant or signature and 
                registration number of a Registered Repre- 
                sentative) 

________        _____________________________________ 
  (date)        (Signature of person mailing, if other 
                than the above) 

        The procedure for handling applications becoming abandoned due to 
late  filing of a communication having a conditional petition attached 
thereto is  as follows: 

        (1)   Forward the papers and the application file wrapper to the 
Office  of Petitions. 

        (2)   Do not mail a form PTOL-1432 or forward the file wrapper to 
the  Abandoned File Unit. 

        (3)   In the event that the application is revived, the file 
wrapper  will be returned to the forwarding group for further action. In 
view of the  availability of 37 CFR 1.136(a), the Certificate of Mailing 
practice, and the  Express Mail practice, the Conditional petition to 
revive practice is not expected  to be used frequently. 


711.03(d) Examiner's Statement on Petition To Set Aside Examiner's Holding 
 [R-1] 

        >37 CFR 1.181 states that the examiner "may be 
directed by the Commissioner to furnish a written statement within a 
specific time setting forth the reasons for his or her decision  upon the 
matters averred in the petition, supplying a copy thereof to the 
petitioner."  Unless requested, however, such a statement should not be 
prepared. See MPEP  w 1002.01.< 


711.03(e) Petitions Relating to Revival of Abandoned Provisional 
Applications [R-1] 

>37 CFR 1.139       Revival of provisional application. 

        (a)   A provisional application which has been accorded a filing 
date  and abandoned for failure to timely respond to an Office requirement 
may be  revived so as to be pending for a period of no longer than twelve 
months from  its filing date if it is shown to the satisfaction of the 
Commissioner that  the delay was unavoidable. Under no circumstances will 
the provisional application  be pending after twelve months from its 
filing date. A petition to revive an  abandoned provisional application 
must be promptly filed after the applicant  is notified of, or otherwise 
becomes aware of, the abandonment, and must be  accompanied by: 

        (1)   the required response unless it has been previously filed; 
        (2)   the petition fee as set forth in # 1.17(l); and 

        (3)   a showing that the delay was unavoidable. The showing must 
be  a verified showing if made by a person not registered to practice 
before the  Patent and Trademark Office. 

        (b)   A provisional application which has been accorded a filing 
date  and abandoned for failure to timely respond to an Office requirement 
may be  revived so as to be pending for a period of no longer than twelve 
months from  its filing date if the delay was unintentional. Under no 
circumstances will  the provisional application be pending after twelve 
months from its filing  date. A petition to revive an abandoned 
provisional application must be: 
        (1)   accompanied by the required response unless it has been 
previously  filed; 

        (2)   accompanied by the petition fee as set forth in # 1.17(m); 
        (3)   accompanied by a statement that the delay was unintentional 
The  statement must be a verified statement if made by a person not 
registered to  practice before the Patent and Trademark Office. The 
Commissioner may require  additional information where there is a question 
whether the delay was unintentional;  and 

        (4)   filed either: 

        (i)   within one year of the date on which the provisional 
application  became abandoned; or 

        (ii)    within three months of the date of the first decision on a 
 petition to revive under paragraph (a) of this section which was filed 
within  one year of the date on which the provisional application became 
abandoned. 

        (c)   Any request for reconsideration or review of a decision 
refusing  to revive a provisional application upon petition filed pursuant 
to paragraphs 
(a) or (b) of this section, to be considered timely, must be filed within 
two  months of the decision refusing to revive or within such time as set 
in the  decision. 

        (d)   The time periods set forth in this section cannot be 
extended,  except that the three-month period set forth in paragraph 
(b)(4)(ii) of this  section and the time period set forth in paragraph (c) 
of this section may  be extended under the provisions of # 1.136. 

        37 CFR 1.139(a) sets forth the procedure for reviving an abandoned 
 provisional application where the delay was unavoidable. 37 CFR 1.139(b) 
sets  forth the procedure for reviving an abandoned provisional 
application where  the delay was unintentional. The requirements for 
reviving an abandoned provisional  application set forth in 37 CFR 1.139 
parallel the existing requirements set  forth in 37 CFR 1.137. See MPEP # 
711.03(c). 

        A provisional application is abandoned, by operation of law, 12 
months  from its filing date, 35 U.S.C. 111(b)(5). A provisional 
application may be  abandoned prior to 12 months from its filing date for 
failure to respond to  an Office requirement, e.g., failure to submit the 
filing fee and/or cover  sheet. Applicant may petition to have an 
abandoned provisional application  revived as a pending provisional 
application for a period of no longer than  12 months from the filing date 
of the provisional application where the delay  was unavoidable or 
unintentional. It would be permissible to file a petition  for revival 
later than 12 months from the filing date of the provisional application 
but only to revive the application for the 12-month period following the 
filing  of the provisional application. Thus, even if the petition were 
granted to  establish the pendency up to the end of the 12-month period, 
the provisional  application would not be considered pending after 12 
months from its filing  date.< 


711.04      Disposition of Abandoned Applications [R-1] 


        >37 CFR 1.14(b) states that "complete applications 
(# 1.51(a)) which are abandoned may be destroyed after 20 years from their 
 filing date, except those to which particular attention has been called 
and  which have been marked for preservation. Abandoned applications will 
not be  returned." 

        As explained in MPEP # 1302.07, a retention label is used to 
indicate  applications not to be destroyed.< 


711.04(a) Pulling and Forwarding Abandoned Applications [R-1] 


        >The files of abandoned applications are pulled and forwarded to 
the  Files Repository on a biweekly basis 1 month after the full 6-month 
statutory period has expired. However, the date  of abandonment is after 
midnight of the date on which the set shortened statutory  period, 
including any extensions under 37 CFR 1.136, expired. 

        They should be carefully scrutinized by the appropriate examiner 
to  verify that they are actually abandoned. A check should be made of 
files containing  a decision of the Board of Appeals for the presence of 
allowed claims to avoid  their being erroneously sent to the Files Repository. 

        Although the abandoned files are not pulled until the maximum 
permissible  period for which an extension of time under 37 CFR 1.136(a) 
plus 1 month has  expired, the date of the abandonment is after midnight 
of the date the period  for response actually expired. This is normally 
the end of the 3 month shortened  statutory period.< 


711.04(b) Ordering of Patented and Abandoned Files [R-1] 


        >In examination of an application it is sometimes necessary to 
inspect  the application papers of a previously patented or abandoned 
application. It  is always necessary to do so in the examination of a 
reissue application. 
        Recently patented and abandoned files are stored at the Files 
Repository  located near the other PTO buildings in Crystal City. Older 
files are housed  in a warehouse located in Suitland, Maryland. 

        Patented and abandoned files are ordered by means of a PALM video 
display  transaction. To place such an order, the examiner is required to 
input his/her  PALM location code, employee number, and patent number(s) 
and/or serial number(s)  of the file(s) that are needed. After 
transmission of the request transaction  by the examiner, a "response" 
screen appears on the video display terminal  which informs him/her of the 
status of the request for each file. The examiner  is informed that the 
request (1) is accepted; (2) is accepted, but for which  the file is 
located at the Suitland warehouse (in which case delivery time  is 
increased); or that the request is not accepted since (3) the file is not 
located at the repository or warehouse; (4) a previous request for the 
file  has not yet been filled; or (5) the patent or serial number inputted 
is not  valid. 

        Periodically each day, personnel at the Files Repository perform a 
 PALM print transaction which produces a list of all accepted requests in 
patent  number order and, for requests for abandoned files, in serial 
number order.  The printed record of each request is detached from the 
list when its associated  file is found. It is then stapled to it. 
Throughout the day, periodic deliveries  of files are made directly to the 
offices of their requestors by Files Repository  personnel. Upon delivery 
of files at the various locations, files that are  ready to be returned to 
the repository are picked up. 

        With the exception of certain older files, the drawings of 
patented  and abandoned files, if any, are now stored within their 
respective application  file jackets. Since it is desired not to separate 
one from the other, both  the file and its drawings are delivered when a 
file is ordered.< 


711.04(c) Notifying Applicants of Abandonment [R-1] 


        >The Patent Examining Corps currently mails to the correspondence 
address  of record, a Notice of Abandonment Form PTOL-1432 in all 
applications which  become abandoned in the Corps for failure to 
prosecute. However, in no case  will mere failure to receive a notice of 
abandonment affect the status of an  abandoned application. 

        This procedure should enable applicants to take appropriate and 
diligent  action to reinstate an application inadvertently abandoned for 
failure to timely  respond to an official communication. In most cases, a 
petition to revive under  37 CFR 1.137 will be the appropriate remedy. It 
may be that a response to the  Office action was mailed to the Office with 
a certificate of mailing declaration  as a part thereof (MPEP # 512) but 
was not received in the Office. In this  instance, adequate relief may be 
available by means of a petition to withdraw  the holding of abandonment. 

        In any instance, if action is not taken promptly after receiving 
the  notice of abandonment, appropriate relief may not be granted. If a 
lack of  diligent action is predicated on the contention that neither the 
Office action  nor the notice of abandonment was received, one may presume 
that there is a  problem with the correspondence address of record. 
Accordingly, attention is  directed to MPEP # 402 and # 601.03 dealing 
with changes of address. In essence,  it is imperative that a paper 
notifying the Office of a change of address be  filed promptly in each 
application in which the correspondence address is to  be changed. 

        If an application is abandoned for more than 
6 months, a terminal disclaimer may be required 
(37 CFR 1.137(c)).< 


711.05      Letter of Abandonment Received After Application is Allowed 
[R-1] 

        >Receipt of a letter of abandonment while an application is 
allowed  is acknowledged by the Publishing Division. 

        An express abandonment arriving after the issue fee has been paid 
will  not be accepted without a showing of one of the reasons indicated in 
37 CFR  1.313(b), or else a showing under 37 CFR 1.183 justifying 
suspension of 37 CFR 1.313.< 


711.06      Abstracts, Abbreviatures, and Defensive Publications [R-1] 

        >Abstracts were prepared and published in accordance with the 
Notice  of January 25, 1949, 619 O.G. 258. Each abstract includes a 
summary of the  disclosure of the abandoned application, and in 
applications having drawings,  a figure of the drawing. The publication of 
such abstracts was discontinued  in 1953. 

ABBREVIATURES 

        Abbreviatures were prepared and published in accordance with the 
procedure  indicated in the Notice of October 13, 1964, 808 O.G. 1. Each 
abbreviature contains a specific portion  of the disclosure of the 
abandoned application, preferably a detailed representative  claim, and, 
in applications having drawings, a figure of the drawing. The publication 
of such abbreviatures was discontinued in 1965. 

DEFENSIVE PUBLICATIONS 

        The Defensive Publication Program, set forth in 
37 CFR 1.139, which provided for the publication of the abstract of the 
technical  disclosure of a pending application if the applicant waived his 
or her rights  to an enforceable patent, was removed from the rules 
effective May 8, 1985,  in view of the applicant's ability to obtain a 
Statutory Invention Registration. 
        An application is laid open for public inspection laid open under 
the  Defensive Publication Program and the applicant provisionally 
abandons the  application, retaining rights to an interference for a 
limited period of 5 years from the earliest effective U.S. filing date. 

        The defensive publication of an application precluded a continuing 
 application (divisional, continuation-in-part, or continuation) filed 
under  35 U.S.C. 120 from being entitled to the benefit of the filing date 
of the  defensively published application unless a continuing application 
is filed  within 30 months after the earliest effective U.S. Filing date. 
Where a similar  application is not filed until after expiration of the 
30-month period, the  application was examined, but it may not claim the 
benefit of the earlier filing  date of the defensive publication 
application. The examiner should require  the cancellation of any claim or 
statement intended to obtain the benefit of  the earlier filing date in 
such cases, objecting to its inclusion on the ground  of estoppel. 

        If a first continuing application was filed within 
30 months from the earliest U.S. effective filing date of the application 
published  under the Defensive Publication Program, later copending 
continuing applications 
(such as divisions if restriction is required during the prosecution of 
the  first continuing application) were not barred and could be filed 
during the  pendency of the first continuing application, even though 
beyond the 30 month  period, without loss of the right to claim the 
benefit of the filing date of  the Defensive Publication application. 

        The Defensive Publication Abstract and a selected figure of the 
drawing,  if any, were published in the 
Official Gazette. Defensive Publication Search Copies, containing the 
defensive  publication abstract and suitable drawings, if any, were 
provided for the application  file, the Public Search Room and the 
examiner's search files. 

        The defensive publication application files are maintained in the 
Record  Room. 

Defensive Publication Application Interferences 

        During the 5-year period from its earliest U.S. effective filing 
date,  interferences may be declared between defensive publication 
applications and  other applications and/or patents in accordance with 
existing interference  rules and procedures. 

        Examiners search the Defensive Publication Search 
Copies in the regular patent search files, when making patentability 
searches.  Where the claims of a defensive publication application recite 
substantially  the same subject matter as the allowed claims, the allowed 
claims should be suggested for interference purposes to the defensive 
publication  application if these claims would be allowable therein. 

        Abandonment of a defensive publication application will be stayed 
during  the period beginning with the suggestion of claims or the filing 
of claims  copied from a patent and ending with the termination of the 
interference proceedings  or the mailing of a decision refusing the 
interference. 

        Termination of the interference in favor of the defensive 
publication  application would render the express abandonment ineffective 
but would not  result in the issuance of an enforceable patent. The 
examiner cancels by examiner's  amendment all the claims in the case 
except those awarded to applicant and  sends the case to issue. The Notice 
of Allowance in these cases will be accompanied  by a statement informing 
the applicant that when the issue fee is remitted,  a disclaimer of the 
entire term of the patent to be granted, must be included  in accordance 
with 35 U.S.C. 253. 

        Distinct numbers are assigned to all Defensive Publications 
published  December 16, 1969 through October 1980, for example. 

        For Defensive Publications published or and after November 4, 
1980,  a different numbering system is used. 

        The revised numbering system is as follows: 

        Defensive Publications are included in subclass lists and 
subscription  orders. The distinct numbers are used for all official 
reference and document  copy requirements. 

        A conversion table from the application serial number to the 
distinct  number for all Defensive Publications published before December 
16, 1969 appears  at 869 O.G. 687.< 


711.06(a)  Citation and Use of Abstracts, Abbreviatures, and Defensive 
Publications as References [R-1] 

        >It is important that abstracts, abbreviatures, and defensive 
publications 
(O.G. Defensive Publication and Defensive Publication Search Copy) be 
referred  to as publications. 

        These printed publications are cited as prior art under 35 U.S.C. 
102(a)  or 102(b) effective from the date of publication in the Official 
Gazette. See  Ex parte Osmond, 191 USPQ 334 (Bd. Appl. 1973) and In re 
Osmond 191 USPQ 340, (Bd. Appl. 1976). 

        An application or portion thereof from which an abstract, 
abbreviature  or defensive publication has been prepared, in the sense 
that the application  is evidence of prior knowledge, may be used as a 
reference under 
35 U.S.C.102(a), effective from the actual date of filing in the United 
States. 
        These publications may be used alone or in combination with other 
prior  art in rejecting claims under 
35 U.S.C. 102 and 103. 

        Defensive Publications are listed with "U.S. Patent Documents." 
Abstracts  and Abbreviatures are listed under "Other References" in the 
citation thereof  as follows: 

        (a)   Abstracts and Abbreviatures  Brown, (abstract or 
abbreviature)  of Serial No. ........, filed ............., published in 
O.G. ........., on  ........, (list classification). 

        (b)   Applications or designated portions thereof, abstracts, 
abbreviatures,  and defensive publications Jones, Application Serial No. 
........, filed .............,  laid open to public inspection on 
............... as noted at .......... O.G. 
(portion of application relied on), (list classification; 
if any).< 


712   Abandonment for Failure To Pay Issue Fee [R-2] 


37 CFR 1.316. Application abandoned for failure to pay issue fee. 
        >(a)    If the issue fee is not paid within 3 months from the date 
 of the notice of allowance, the application will be regarded as 
abandoned.  Such an abandoned application will not be considered as 
pending before the  Patent and Trademark Office. 

        (b)   The Commissioner may accept the payment of the issue fee 
later  than three months after the mailing of the notice of allowance as 
though no  abandonment had ever occurred if upon petition the delay in 
payment is shown to have been unavoidable. The petition to accept the 
delayed  payment must be promptly filed after the applicant is notified 
of, or otherwise  becomes aware of, the abandonment and must be 
accompanied by: 

        (1)   The issue fee, unless it has been previously submitted; 
        (2)   The fee for delayed payment (w 1.17(l)); and 

        (3)   A showing that the delay was unavoidable. The showing must 
be  a verified showing if made by a person not registered to practice 
before the  Patent and Trademark Office. 

        (c)   The Commissioner may, upon petition, accept the payment of 
the  issue fee later than three months after the mailing of the notice of 
allowance  as though no abandonment had ever occurred if the delay in 
payment was unintentional.  The petition to accept the delayed payment 
must be: 

        (1)   Accompanied by the issue fee, unless it has been previously 
submitted; 
        (2)   Accompanied by the fee for unintentionally delayed payment 
(w  1.17(m)); 

        (3)   Accompanied by a statement that the delay was unintentional. 
 The statement must be a verified statement if made by a person not 
registered  to practice before the Patent and Trademark Office. The 
Commissioner may require  additional information where there is a question 
whether the delay was unintentional;  and 

        (4)   Filed either: 

        (i)   Within one year of the date on which the application became 
abandoned;  or 

        (ii)    Within three months of the date of the first decision on a 
 petition under paragraph (b) of this section which was filed within one 
year  of the date on which the application became abandoned. 

        (d)   In all applications filed before June 8, 1995, any petition 
pursuant  to paragraph (b) of this section not filed within six months of 
the date of  abandonment of the application, must be accompanied by a 
terminal disclaimer  with fee under # 1.321 dedicating to the public a 
terminal part of the term  of any patent granted thereon equivalent to the 
period of abandonment of the  application. The terminal disclaimer must 
also apply to any patent granted  on any continuing application entitled 
under 35 U.S.C. 120 to the benefit of  the filing date of the application 
for which revival is sought. 

        (e)   Any request for reconsideration or review of a decision 
refusing  to accept the delayed payment upon petition filed pursuant to 
paragraphs (b)  or (c) of this section, to be considered timely, must be 
filed within two months  of the decision refusing to accept the delayed 
payment or within such time  as set in the decision. 

        (f)   The time periods set forth in this section cannot be 
extended,  except that the three-month period set forth in paragraph 
(c)(4)(ii) and the  time period set forth in paragraph (e) of this section 
may be extended under  the provisions of w 1.136.< 

        35 U.S.C. 41(a)7 establishes two different fees for filing 
petitions  with different standards to accept the delayed payment of the 
fee for issuing  a patent. The fees set forth in this section are due on 
filing the petition.  Since the section provides for two alternative fees 
with different standards,  the section permits the applicant seeking 
acceptance of a delayed payment of  the fee for issuing a patent to choose 
one or the other of the fees and standards. 
        Under 35 U.S.C. 41(a)(7) the Commissioner has established time 
limits  within which petitions under each of the different fees and 
standards can be  filed. 37 CFR 1.17(m) establishes the fee for filing 
each petition for acceptance  of the delayed payment of an issue fee where 
the abandonment or the failure  to pay the issue fee is unintentional. In 
order to prevent abuse and injury  to the public the Commissioner can 
require a terminal disclaimer in all applications  filed before June 8, 
1995 equivalent to the period of abandonment and require  applicants to 
act promptly after becoming aware of the abandonment. 37 CFR  1.17(l) 
establishes the fee for filing a petition under 35 U.S.C. 151 in 
accordance  with standards requiring that the delay in payment of the 
issue fee be unavoidable.  Under this section, a petition accompanied by 
either the fee under 37 CFR 1.17(m)  or the fee under 37 CFR 1.17(l) would 
not be granted where the failure to pay  the fee for issuing the patent 
was intentional as opposed to being unintentional  or unavoidable. 

        37 CFR 1.316 implements the statutory provisions of 35 U.S.C. 
41(a)  with regard to petition fees for revival of applications abandoned 
for failure  to pay the issue fee. Paragraph (b) provides for petitions 
for revival with  the fee in 37 CFR 1.17(1) where the delay in payment was 
unavoidable, indicates  that the petition must be promptly filed, and 
states when showings that the  delay was unavoidable must be verified. 
Paragraph (c) provides for petitions  for revival with the fee in 37 CFR 
1.17(m) where the delay was unintentional.  Paragraph (c) also indicates 
when such petitions can be filed. Paragraph (d)  requires a terminal 
disclaimer in all applications filed before June 8, 1995  if a grantable 
petition under 37 CFR 1.316(b) is not filed within 6 months  of the date 
of abandonment. The period to be disclaimed must equal the number  of 
months between the date of abandonment and the date a grantable petition 
is filed. The terminal disclaimer should employ the format referred to in 
MPEP  # 711.03(c). See MPEP # 711.03(c) for a general discussion of 
petitions relating  to abandonment. 


713   Interviews [R-1] 


        >The personal appearance of an applicant, attorney, or agent 
before  the examiner or a telephone conversation between such parties 
presenting matters  for the examiner's consideration is considered an 
interview.< 


713.01      General Policy, How Conducted [R-1] 


>37 CFR 1.133.      Interviews. 

        (a) Interviews with examiners concerning applications and other 
matters  pending before the Office must be had in the examiners' rooms at 
such times,  within office hours, as the respective examiners may 
designate. Interviews  will not be permitted at any other time or place 
without the authority of the  Commissioner. Interviews for the discussion 
of the patentability of pending  applications will not be had before the 
first official action thereon. Interviews  should be arranged for in advance. 

        (b) In every instance where reconsideration is requested in view 
of  an interview with an examiner, a complete written statement of the 
reasons  presented at the interview as warranting favorable action must be 
filed by  the applicant. An interview does not remove the necessity for 
response to Office  actions as specified in ## 1.111, 1.135. 

        Interviews are permissible on any working day except during 
periods  of overtime work. 

        An interview should normally be arranged for in advance, as by 
letter,  telegram or telephone call, in order to insure that the primary 
examiner and/or  the examiner in charge of the application will be present 
and available in  the Office. When a second art unit is involved 
(Patentability Report), the  availability of the second examiner should 
also be checked. (See MPEP w 705.01(f).)  An appointment for interview 
once arranged should be kept. Many applicants  and attorneys plan trips to 
Washington in reliance upon such appointments.  When, after an appointment 
has been made, circumstances compel the absence  of the examiner or 
examiners necessary to an effective interview, the other  party should be 
notified immediately so that substitute arrangements may be  made. 

        When a telephone call is made to an examiner and it becomes 
evident  that a lengthy discussion will ensue or that the examiner needs 
time to restudy  the situation, the call should be terminated with an 
agreement that the examiner  will call back at a specified time. Such a 
call and all other calls originated  by the examiner should be made 
through the FTS (Federal Telecommunications  System) even though a collect 
call had been authorized. It is helpful if amendments  and other papers, 
such as the letter of transmittal, include the complete telephone  number 
with area code and extension, preferably near the signature of the writer. 
        The unexpected appearance of an attorney or applicant requesting 
an  interview without any previous notice to the examiner may well justify 
his  refusal of the interview at that time, particularly in an involved 
case. 
        An examiner's suggestion of allowable subject matter may justify 
indicating  the possibility of an interview to accelerate early agreement 
on allowable  claims. 

        An interview should be had only when the nature of the case is 
such  that the interview could serve to develop and clarify specific 
issues and lead  to a mutual understanding between the examiner and the 
applicant, and thereby  advance the prosecution of the application. Thus 
the attorney when presenting  himself or herself for an interview should 
be fully prepared to discuss the  issues raised in the Office action. When 
it is obvious that the attorney is  not so prepared, an interview should 
not be permitted. It is desirable that  the attorney or applicant indicate 
in advance what issues he or she desires  to discuss at the interview by 
submitting, in writing, a proposed amendment.  This would permit the 
examiner to prepare in advance for the interview and  to focus on the 
matters set forth in the proposed amendment. 

        Examiners should avoid unnecessary interruptions during interviews 
 with attorneys or inventors. In this regard, examiners should notify 
their  receptionist, immediately prior to an interview, to not complete 
incoming telephone  calls unless such are of an emergency nature. As 
appropriate, examiners should  familiarize themselves with the status and 
existing issues in an application  or reexamination proceeding before an 
interview. 

        The examiner should not hesitate to state, if such be the case, 
that  claims presented for consideration at the interview require further 
search  and study. Nor should the examiner hesitate to conclude an 
interview when it  appears that no common ground can be reached nor when 
it becomes apparent that  the application requires further amendment or an 
additional action by the examiner.  However, the examiner should attempt 
to identify issues and resolve differences  during the interview as much 
as possible. 

        It is the responsibility of both parties to the interview to see 
that  it is not extended beyond a reasonable period, usually not longer 
than 30 minutes.  It is the duty of the primary examiner to see that an 
interview is not extended  beyond a reasonable period even when he does 
not personally participate in  the interview. 

        During an interview with an applicant who is prosecuting his or 
her  own case and is not familiar with Office procedure the examiner may 
make suggestions  that will advance the prosecution of this case; this 
lies wholly 
within his or her discretion. Too much time, however, should not be 
allowed  for such interviews. 

        Examiners may grant one interview after final rejection. See MPEP 
#  713.09. 

        Where the response to a first complete action includes a request 
for  an interview or a telephone consultation to be initiated by the 
examiner, or  where an out-of-town attorney under similar circumstances 
requests that the  examiner defer taking any further action on the case 
until the attorney's next  visit to Washington (provided such visit is not 
beyond the date when the Office  action would normally be given), the 
examiner, as soon as he or she has considered  the effect of the response, 
should grant such request if it appears that the  interview or 
consultation would result in expediting the case to a final action. 
        Where agreement is reached as a result of an interview, 
applicant's  representative should be advised that an amendment pursuant 
to the agreement  should be promptly submitted. If the amendment prepares 
the case for final  action, the examiner should take the case up as 
special. If not, the case should  await its turn. 

        Consideration of a filed amendment may be had by hand delivery of 
a  duplicate copy of said amendment. 

        Early communication of the results of the consideration should be 
made  to applicant; if requested, indicate on attorney's copy any 
agreement; initial  and date both copies. 

        Although entry of amendatory matter usually requires actual 
presence  of the original paper, examiner and clerical processing should 
proceed as far  as practicable based on the duplicate copy. The extent of 
processing will depend  on each amendment. 

        The substance of any interview, whether in person or by telephone 
must  be made of record in the application. See MPEP # 713.04. 

VIEWING OF VIDEO TAPES DURING INTERVIEWS 

        The Patent and Trademark Office has video tape equipment available 
 in the facilities of the Patent Academy for viewing video tapes from 
applicants  during interviews with patent examiners. 

        The video tape equipment may use VHS and UHS (3/4-inch tape) 
cassettes. 
        Attorneys or applicants wishing to show a video tape during an 
examiner  interview must be able to demonstrate that the content of the 
video tape has  a bearing on an outstanding issue in the application and 
its viewing will advance  the prosecution of the application. Prior 
approval of viewing of a video tape  during an interview must be granted 
by the Supervisory Primary Examiner. Also,  use of the room and equipment 
must be granted by the Training Manager to avoid  any conflict with the 
Patent Academy. 

        Requests to use video tape viewing equipment for an interview 
should  be made at least 1 week in advance to allow the Patent Academy 
staff sufficient  time to ensure the availability and proper scheduling of 
both a room and equipment. 
        Interviews using Office video tape equipment will be held only in 
the  Patent Academy facilities located in One Crystal Park, Room 502. 
Attorneys  or applicants should not contact the Patent Academy directly 
regarding availability  and scheduling of video equipment. All scheduling 
of rooms and equipment should  be done through and by the examiner 
conducting the interview. The substance  of the interview, including a 
summary of the content of the video tape must  be made of record in the 
application. See MPEP # 713.04. 

EXAMINATION BY EXAMINER OTHER THAN THE ONE WHO CONDUCTED THE INTERVIEW 
        Sometimes the examiner who conducted the interview is transferred 
to  another group or resigns, and the examination is continued by another 
examiner.  If there is an indication that an interview had been held, the 
second examiner  should ascertain if any agreements were reached at the 
interview. Where conditions  permit, as in the absence of a clear error or 
knowledge of other prior art,  the second examiner should take a position 
consistent with the agreements previously  reached. See MPEP # 812.01 for 
a statement of telephone practice in restriction  and election of species 
situations.< 


713.02      Interviews Prior to First Official Action [R-1] 


        >Prior to filing, no interview is permitted. However, in the 
examiner's  discretion, a limited amount of time may be spent in 
indicating the field of  search to an attorney, searcher or inventor. 

        A request for an interview prior to the first Office action is 
ordinarily  granted in continuing or substitute applications. A request 
for an interview  in all other applications before the first action is 
untimely and will not be acknowledged  if written, or granted if oral; 
37 CFR 1.133 (a). 

SEARCHING IN GROUP 

        Search in the group art unit should be permitted only with the 
consent  of a primary examiner. 

EXPOUNDING PATENT LAW 

        The Patent and Trademark Office cannot act as an expounder of the 
patent  law, nor as a counsellor for individuals.< 


713.03      Interview for "Sounding Out" Examiner Not Permitted [R-1] 

        >Interviews that are solely for the purpose of "sounding out" the 
examiner,  as by a local attorney acting for an out-of-town attorney, 
should not be permitted  when it is apparent that any agreement that would 
be reached is conditional  upon being satisfactory to the principal 
attorney. < 


713.04      Substance of Interview Must Be Made of Record [R-2] 


        A complete written statement as to the substance of any 
face-to-face  or telephone interview with regard to the merits of an 
application must be  made of record in the application, whether or not an 
agreement with the examiner  was reached at the interview. See 37 CFR 
1.133(b), MPEP # 713.01. 

37 CFR 1.133            Interviews 

***** 

        (b) In every instance where reconsideration is requested in view 
of  an interview with an examiner, a complete written statement of the 
reasons  presented at the interview as warranting favorable action must be 
filed by  the applicant. An interview does not remove the necessity for 
response to Office  actions as specified in ## 1.111, 1.135. 

37 CFR 1.2  Business to be transacted in writing. 

        All business with the Patent and Trademark Office should be 
transacted  in writing. The personal attendance of applicants or their 
attorneys or agents  at the Patent and Trademark Office is unnecessary. 
The action of the Patent  and Trademark Office will be based exclusively 
on the written record in the  Office. No attention will be paid to any 
alleged oral promise, stipulation,  or understanding in relation to which 
there is disagreement or doubt. 
        The action of the Patent and Trademark Office cannot be based 
exclusively  on the written record in the Office if that record is itself 
incomplete through  the failure to record the substance of interviews. 

        It is the responsibility of the applicant or the attorney or agent 
 to make the substance of an interview of record in the application file, 
unless  the examiner indicates he or she will do so. It is the examiner's 
responsibility  to see that such a record is made and to correct material 
inaccuracies which  bear directly on the question of patentability. 

        Examiners must complete **>an< Interview Summary Form for each 
interview  where a matter of substance has been discussed during the 
interview by checking  the appropriate boxes and filling in the blanks**. 
Discussions regarding only  procedural matters, directed solely to 
restriction requirements for which interview  recordation is otherwise 
provided for in MPEP # 812.01, or pointing out typographical  errors in 
Office actions or the like, are excluded from the interview recordation 
procedures below. 

        The Examiner Interview Summary Form PTOL 413 shall be given an 
appropriate  paper number, placed in the right hand portion of the file, 
and listed on the  "Contents" list on the file wrapper. In a personal 
interview, the duplicate  copy of the Form is ** given to the applicant 
(or attorney or agent) at the  conclusion of the interview. In the case of 
a telephonic interview, the copy  is mailed to the applicant's 
correspondence address either with or prior to  the next official 
communication. If additional correspondence from the examiner  is not 
likely before an allowance or if other circumstances dictate, the Form 
should be mailed promptly after the telephonic interview rather than with 
the  next official communication. 

        The Form provides for recordation of the following information: 
Serial Number of the application 

Name of applicant 

Name of examiner 

Date of interview 

Type of interview (personal or telephonic) 

Name of participant(s) (applicant, attorney, or 
                agent, etc.) 

An indication whether or not an exhibit was 
                shown or a demonstration conducted 

An identification of the claims discussed 

An identification of the specific prior art 
                discussed 

An indication whether an agreement was 
                reached and if so, a description of the general 
                nature of the agreement (may be by attachment 
                of a copy of amendments or claims agreed as 
                being allowable). (Agreements as to allowability 
                are tentative and do not restrict further action by 
                the examiner to the contrary.) 

The signature of the examiner who conducted 
                the interview 

Names of other Patent and Trademark Office 
                personnel present. 

        The Form also contains a statement reminding the applicant of his 
or  her responsibility to record the substance of the interview. 

        It is desirable that the examiner orally remind the applicant of 
his  or her obligation to record the substance of the interview in each 
case unless  both applicant and examiner agree that the examiner will 
record same. Where  the examiner agrees to record the substance of the 
interview, or when it is  adequately recorded on the Form or in an 
attachment to the Form, the examiner  will check a box at the bottom of 
the Form informing the applicant that he  or she need not supplement the 
Form by submitting a separate record of the  substance of the interview. 

        It should be noted, however, that the Interview Summary Form will 
not  be considered a complete and proper recordation of the interview 
unless it  includes, or is supplemented by the applicant or the examiner 
to include, all  of the applicable items required below concerning the 
substance of the interview. 
        The complete and proper recordation of the substance of any 
interview  should include at least the following applicable items: 

        (1)   A brief description of the nature of any exhibit shown or 
any  demonstration conducted, 

        (2)   an identification of the claims discussed, 

        (3)   an identification of specific prior art discussed, 

        (4)   an identification of the principal proposed amendments of a 
substantive  nature discussed, unless these are already described on the 
Interview Summary  Form completed by the examiner, 

        (5)   the general thrust of the principal arguments of the 
applicant  and the examiner should also be identified, even where the 
interview is initiated  by the examiner. The identification of arguments 
need not be lengthy or elaborate.  A verbatim or highly detailed 
description of the arguments is not required.  The identification of the 
arguments is sufficient if the general nature or  thrust of the principal 
arguments can be understood in the context of the application  file. Of 
course, the applicant may desire to emphasize and fully describe those 
arguments which he or she feels were or might be persuasive to the 
examiner*>,< 
        (6)   a general indication of any other pertinent matters 
discussed,  and 

        (7)   if appropriate, the general results or outcome of the 
interview  unless already described in the Interview Summary Form 
completed by the examiner. 
        Examiners are expected to carefully review the applicant's record 
of  the substance of an interview. If the record is not complete or 
accurate, the  examiner will give the applicant one month from the date of 
the notifying letter  or the remainder of any period for response, 
whichever is longer, to complete  the response and thereby avoid 
abandonment of the application by using Form  paragraph 7.84 (37 CFR 
1.135(c)). 

W 7.84      Amendment Is Non-Responsive to Interview 

        The communication filed on [1] is non-responsive because it fails 
to  include a complete or accurate record of the substance of the [2] 
interview.  [3]>.< 

        Applicant is given a ONE MONTH TIME LIMIT from the date of this 
letter,  or until the expiration of the period for response set in the 
last office action,  whichever is the longer, to complete the response. NO 
EXTENSION OF THIS TIME  LIMIT MAY BE GRANTED UNDER EITHER 37 CFR 1.136 (a) 
OR (b)*>.< 

Examiner Note: 

        1.  In bracket 2, insert the date of the interview. 

        2.  In bracket 3, explain the deficiencies. 

EXAMINER TO CHECK FOR ACCURACY 

        Applicant's summary of what took place at the interview should be 
carefully  checked to determine the accuracy of any argument or statement 
attributed to  the examiner during the interview. If there is an 
inaccuracy and it bears directly  on the question of patentability, it 
should be pointed out in the next Office  letter. If the claims are 
allowable for other reasons of record, the examiner  should send a letter 
setting forth his or her version of the statement attributed  to him or her. 

        If the record is complete and accurate, the examiner should place 
the  indication "Interview record OK" on the paper recording the substance 
of the  interview along with the date and the examiner's initials. 


713.05      Interviews Prohibited or Granted, Special Situations [R-1] 

        >Saturday interviews, see MPEP # 713.01. 

        Except in unusual situations, no interview is permitted after the 
brief  on appeal is filed or after a case has been passed to issue. 

        An interview may be appropriate before applicant's first response 
when  the examiner has suggested that al- lowable subject matter is 
present or where  it will assist applicant in judging the propriety of 
continuing the prosecution. 
        Office employees are forbidden to hold either oral or written 
communication  with an unregistered or a disbarred attorney regarding an 
application unless  it be one in which said attorney is the applicant. See 
MPEP # 105. 
        Interviews are frequently requested by persons whose credentials 
are  of such informal character that there is serious question as to 
whether such  persons are entitled to any information under the provisions of 
37 CFR 1.14. In general, inter- views are not granted to persons who lack 
proper  authority from the applicant or attorney of record in the form of 
a paper on  file in the case or do not have in their possession a copy of 
the application  file. A MERE POWER TO INSPECT IS NOT SUFFICIENT AUTHORITY 
FOR GRANTING AN INTERVIEW  INVOLVING THE MERITS OF THE APPLICATION. 

        However, interviews may be granted to registered individuals who 
are  known to be the local representatives of the attorney in the case, 
even though  a power of attorney to them is not of record in the 
particular application.  When prompt action is important an interview with 
the local representative  may be the only way to save the application from 
abandonment. (See MPEP # 408.) 
        If a registered individual seeking the interview has in his or her 
 possession a copy of the application file, the examiner may accept his or 
her  statement that he or she is authorized to represent the applicant 
under 37  CFR 1.34 or is the person named as the attorney of record. 

        Interviews normally should not be granted unless the requesting 
party  has authority to bind the principal concerned. 

        The availability of personal interviews in the "Conference 
Period,"  which is the time between the filing of applicant's thorough 
first response  and a concluding action by the the examiner, for attorneys 
resident or frequently  in Washington is obvious. For others more remote, 
telephone interviews may  prove valuable. However, present Office policy 
places great emphasis on telephone  interviews initiated by the examiner 
to attorneys and agents of record. See  MPEP # 408. 

        The examiner, by making a telephone call, may be able to suggest 
minor,  probably quickly acceptable changes which would result in 
allowance. If there  are major questions or suggestions, the call might 
state them concisely, and  suggest a further telephone or personal 
interview, at a prearranged later time,  giving applicant more time for 
consideration before discussing the points raised. 
        For an interview with an examiner who does not have negotiation 
authority,  arrangements should always include an examiner who does have 
such authority,  and who is familiar with the case, so that authoritative 
agreement may be reached  at the time of the interview. 

GROUPED INTERVIEWS 

        For attorneys remote from Washington who prefer personal 
interviews,  the grouped interview practice is effective. If in any case 
there is a prearranged  interview, with agreement to file a prompt 
supplemental amendment putting the  case as nearly as may be in condition 
for concluding action, prompt filing  of the supplemental amendment gives 
the case special status, and brings it  up for immediate special action.< 


713.06      No Inter Partes Questions Discussed Ex Parte [R-1] 


        >The examiner may not discuss inter partes questions 
ex parte with any of the interested parties.< 


713.07      Exposure of Other Cases [R-1] 


        >Prior to an interview the examiner should arrange his or her desk 
 so that all files, drawings and other papers, except those necessary in 
the  interview, are placed out of view. See MPEP # 101.< 


713.08      Demonstration, Exhibits, Models [R-2] 


        The invention in question may be exhibited or demonstrated during 
the  interview by a model thereof. A model received by the examiner from 
the applicant  or his or her attorney must be properly recorded on the 
"Contents" portion of the application file wrapper. See MPEP # 608.03 and 
# 608.03(a). 
        Oftentimes a model or exhibit is not given into the custody of the 
 Office but is brought directly into the group by the attorney solely for 
inspection  or demonstration during the course of the interview. This is 
permissible. Demonstrations  of apparatus or exhibits too large to be 
brought into the Office may be viewed  by the examiner outside of the 
Office (in the Washington >area) with the approval  of the supervisory 
primary examiner.  It is presumed that the witnessing of  the 
demonstration<* or the reviewing of the exhibit is actually essential in 
the developing and clarifying of the issues involved in the application. 

713.09      Finally Rejected Application [R-1] 


        >Normally, one interview after final rejection is permitted. 
However,  prior to the interview, the intended purpose and content of the 
interview should  be presented briefly, preferably in writing. Such an 
interview may be granted  if the examiner is convinced that disposal or 
clarification for appeal may  be accomplished with only nominal further 
consideration. Interviews merely  to restate arguments of record or to 
discuss new limitations which would require  more than nominal 
reconsideration or new search should be denied. See MPEP  # 714.13. 

        Interviews may be held after the expiration of the SSP and prior 
to  the maximum permitted statutory period of 6 months without an 
extension of  time. See MPEP # 706.07(f). 

        A second or further interview after a final rejection may be held 
if  the examiner is convinced that it will expedite the issues for appeal 
or disposal  of the application.< 


713.10      Interview Preceding Filing Amendment Under 37 CFR 1.312  [R-2] 

        After a case is sent to issue, it is technically no longer under 
the  jurisdiction of the primary examiner, 37 CFR 1.312. An interview with 
an examiner  that would involve a detailed consideration of claims sought 
to be entered  and perhaps *>entailing< a discussion of the prior art for 
determining whether  or not the claims are allowable should not be given. 
Obviously an applicant  is not entitled to a greater degree of 
consideration in an amendment presented  informally than is given an 
applicant in the consideration of an amendment  when formally presented, 
particularly since consideration of an amendment filed  under **>37 CFR< 
1.312 cannot be demanded as a matter of right. 

        Requests for interviews on cases where notes of allowance has been 
 mailed should be granted only with specific approval of the Group 
Director  upon a showing in writing of extraordinary circumstances. 


714   Amendments, Applicant's Action [R-1] 


>37 CFR 1.115. Amendment. 

        The applicant may amend before or after the first examination and 
action  and also after the second or subsequent examination or 
reconsideration as specified  in w 1.112 or when and as specifically 
required by the examiner. The patent  owner may amend in accordance with 
ww 1.510(e) and 1.530(b) prior to reexamination,  and during reexamination 
proceedings in accordance with ## 1.112 and 1.116. 
        See also MPEP # 714.12. 

        For amendments in reexamination proceedings see MPEP # 2250 and # 
2266.< 

714.01      Signatures to Amendments [R-1] 


        >To facilitate any telephone call that may become necessary, it is 
 recommended that the complete telephone number with area code and 
extension  be given, preferably near the signature. Note MPEP # 605.04 to 
# 605.05(a) for a discussion of signatures to the application.< 


714.01(a) Unsigned or Improperly Signed Amendment [R-1] 


        >An unsigned amendment or one not properly signed by a person 
having  authority to prosecute the case is not entered. This applies, for 
instance,  where the amendment is signed by one only of two applicants and 
the one signing  has not been given a power of attorney by the other 
applicant. 

        If copies (carbon or electrostatic) of papers which require an 
original  signature as set forth in 37 CFR 1.4(e) are filed, the signature 
must be applied  after the copies are made. MPEP # 714.07. 

        An amendment filed with a copy of a signature rather than an 
original  signature, may be entered if an accompanying transmittal letter 
contains a  proper original signature. 

        When an unsigned or improperly signed amendment is received the 
amendment  will be listed on the file wrapper, but not entered. The 
examiner will notify applicant of the status  of the case, advising him or 
her to furnish a duplicate amendment properly  signed or to ratify the 
amendment already filed. Applicant should be given  either the time 
remaining in the period for response or a 1-month time limit  in which to 
ratify the previously filed amendment (37 CFR 1.135 (c)). 
        Applicants may be advised of unsigned amendments by use of Form 
Paragraph  7.84.01. 

W 7.84.01Amendment Is Unsigned 

        The proposed [1] filed on [2] has not been entered because it is 
unsigned. 
        Applicant is given either the time remaining in the response 
period  of the last Office action or a ONE MONTH TIME LIMIT from the date 
of this letter,  whichever is longer, within which to supply a duplicate 
paper or ratification,  properly signed. NO EXTENSION OF THIS TIME LIMIT 
MAY BE GRANTED UNDER EITHER  37 CFR 1.136 (a) OR (b). 

Examiner Note: 

        In the first "bracket" insert (1) amendment (2) substitute oath 
(3)  substitute declaration whichever is applicable. 

        Sometimes problems arising from unsigned or improperly signed 
amendments  may be disposed of by calling in the local representative of 
the attorney of  record, since he or she may have the authority to sign 
the amendment. 
        An amendment signed by a person whose name is known to have been 
removed  from the registers of attorneys and agents under the provisions 
of 37 CFR 1.347  or # 1.348 is not entered. The file and unentered 
amendment are submitted to  the Office of Enrollment and Discipline for 
appropriate action.< 


714.01(c) Signed by Attorney Not of Record  [R-1] 


        >See MPEP # 405. A registered attorney or agent acting in a 
representative  capacity under 37 CFR 1.34, may sign amendments even 
though he does not have  a power of attorney in the application. See MPEP 
# 402.< 


714.01(d) Amendment Signed by Applicant But Not by Attorney of Record 
[R-1] 

        >If an amendment signed by the applicant is received in an 
application  in which there is a duly appointed attorney, the amendment 
should be entered  and acted upon. Attention should be called to 37 CFR 
1.33(a) in patent applications  and to 37 CFR 1.33(c) in reexamination 
proceedings. Two cop- 
ies of the action should be prepared, one being sent to the attorney and 
the  other directly to the applicant. The notation: "Copy to applicant" 
should appear  on the original and on both copies.< 


714.02      Must Be Fully Responsive [R-2] 


37 CFR 1.111.  Reply by applicant or patent owner. 

        (a) After the Office action, if adverse in any respect, the 
applicant  or patent owner, if he or she persists in his or her 
application for a patent  or reexamination proceeding, must reply thereto 
and may request reconsideration  or further examination, with or without 
amendment. 

        (b) In order to be entitled to reconsideration or further 
examination,  the applicant or patent owner must make request therefor in 
writing. The reply  by the applicant or patent owner must distinctly and 
specifically point out  the supposed errors in the examiner's action and 
must respond to every ground  of objection and rejection in the prior 
Office action. If the reply is with  respect to an application, a request 
may be made that objections or requirements  as to form not necessary to 
further consideration of the claims be held in  abeyance until allowable 
subject matter is indicated. The applicant's or patent  owner's reply must 
appear throughout to be a bona fide attempt to advance the  case to final 
action. A general allegation that the claims define a patentable 
invention without specifically pointing out how the language of the claims 
 patentably distinguishes them from the references does not comply with 
the  requirements of this section. 

        (c) In amending in response to a rejection of claims in an 
application  or patent undergoing reexamination, the applicant or patent 
owner must clearly  point out the patentable novelty which he or she 
thinks the claims present  in view of the state of the art disclosed by 
the references cited or the objections  made. He or she must also show how 
the amendments avoid such references or  objections. (See ## 1.135 and 
1.136 for time for reply.) 

        In all cases where response to a requirement is indicated as 
necessary  to further consideration of the claims, or where allowable 
subject matter has  been indicated in an application, a complete response 
must either comply with  the formal requirements or specifically traverse 
each one not complied with. 
        Drawing and specification corrections, presentation of a new oath 
and  the like are generally considered as formal matters. However, the 
line between  formal matter and those touching the merits is not sharp, 
and the determination  of the merits of a case may require that such 
corrections, new oath, etc.,  be insisted upon prior to any indication of 
allowable subject matter. 
37 CFR 1.119.       Amendment of claims. 

        The claims may be amended by canceling particular claims, by 
presenting  new claims, or by rewriting particular claims as indicated in 
w 1.121. The requirements of w 1.111 must be complied with by pointing out 
 the specific distinctions believed to render the claims patentable over 
the references in presenting arguments in support of new claims  and 
amendments. 

        An amendment submitted after a second or subsequent nonfinal 
action  on the merits which is otherwise responsive but which increases 
the number  of claims drawn to the invention previously acted upon is not 
to be held nonresponsive  for that reason alone. (See 37 CFR 1.112, MPEP # 
706.) 

        The prompt development of a clear issue requires that the 
responses  of the applicant meet the objections to and rejections of the 
claims. Applicant  should also specifically point out the support for any 
amendments made to the  disclosure. See MPEP # *>2163.06<. 

        An amendment attempting to "rewrite" a claim in the manner set 
forth  in 37 CFR 1.121(b) may be held nonresponsive if it uses 
parentheses, ( ), where  brackets, [  ], are called for; see MPEP # 714.22. 

        Responses to requirements to restrict are treated under MPEP # 
818. 

714.03      Amendments Not Fully Responsive Action To Be Taken [R-1] 

        >If there is sufficient time remaining in the 6-month statutory 
period  or set shortened statutory period when applicant's amendment is 
found to be  not fully responsive to the last Office action, a letter 
should at once be  sent applicant pointing out wherein his or her 
amendment fails to fully respond  coupled with a warning that the response 
must be completed within the time  period in order to avoid the question 
of abandonment. See MPEP # 714.05. 
        Where a bona fide response to an examiner's action is filed before 
 the expiration of a permissible period, but through an apparent oversight 
or  inadvertence some point necessary to a complete response has been 
omitted -  such as an amendment or argument as to one or two of several 
claims involved  or signature to the amendment - the examiner, as soon as 
he or she notes the  omission, should require the applicant to complete 
his or her response within  a specified time limit (usually one month) if 
the period for response has already  expired or insufficient time is left 
to take action before the expiration of  the period. If this is done the 
application should not be held abandoned even  though the prescribed 
period has expired. 

        Under 37 CFR 1.135(c), the missing matter or lack of compliance 
must  be considered by the examiner as being "inadvertently omitted." Once 
an inadvertent  omission is brought to the attention of the applicant, the 
question of inadvertence  no longer exists. Therefore, any further time to 
complete the response would  not be appropriate under 37 CFR 1.135(c). 
Accordingly no extensions of time  can be granted in such situations. 

        The practice of giving applicant a 1-month time limit in order to 
complete  and/or correct a bona fide effort to file a response does not, 
however, normally  apply after a final rejection or final action. 
Amendments after final are normally  only approved for entry if they place 
the application in condition for allowance  or in better form for appeal. 
Otherwise, they are not approved for entry. See  MPEP # 714.12 and # 
714.13. Thus even if some point necessary for a complete  response (after 
final) was omitted through an apparent oversight or inadvertence,  the 
amendment should be denied entry. A 1-month time limit to correct the 
omission  should not be given. Applicant may, however, obtain additional 
time under 37  CFR 1.136(a) to file another or supplemental amendment in 
order to correct  and/or complete the response. Two exceptions to the 
normal practice exist.  An applicant may be given a 1-month time limit for 
an amendment after final  if the amendment is not acceptable because: (1) 
it is not signed or not properly  signed, or (2) additional fees are due 
for additional claims. See MPEP # 710.02(c). 
        In these limited circumstances, the applicant may be given a 
1-month  time limit to complete the response. 

        Where there is an informality as to the fee in connection with an 
amendment  presenting additional claims, the applicant is notified by the 
clerk on form  PTOL-319. See MPEP # 607 and # 714.10. 

        The examiner must exercise discretion in applying the practice 
under  37 CFR 1.135(c) to safeguard against abuses thereof. 

        The practice outlined above does not apply where there has been a 
deliberate  omission of some necessary part of a complete response. For 
example, if an  election of species has been required and applicant does 
not make election  because he or she holds the requirement to be wrong, 
the amendment on its face  is not a "bona fide attempt to advance the case 
to final action" (37 CFR 1.135(c)),  and the examiner is without authority 
to postpone decision as to abandonment. 
        If there is ample time for applicant's reply to be filed within 
the  time period, no reference is made to the time for response other than 
to note  in the letter that the re-sponse must be completed within the 
period for response  dating from the last Office action or within any 
extension pursuant to 37 CFR  1.136(a). 

        Form Paragraph 7.95 may be used where a bona fide response is not 
entirely  responsive. 

W 7.95      Bona Fide Non-Responsive Amendments 

        The communication filed on [1] is non-responsive to the prior 
Office  action because [2]. Since the response appears to be bona fide, 
but through  an apparent oversight or inadvertence failed to provide a 
complete response,  applicant is required to complete the response within 
a TIME LIMIT of ONE MONTH  from the date of this letter or within the time 
remaining in the response period  of the last Office action, whichever is 
the longer. NO EXTENSION OF THIS TIME  LIMIT MAY BE GRANTED UNDER EITHER 
37 CFR 1.136 (a) OR (b) but the period for  response set in the last 
office action may be extended up to a maximum of SIX  MONTHS. 

Examiner Note: 

        This practice does not apply where there has been a deliberate 
omission  of some necessary part of a complete response. Under such cases, 
the examiner  has no authority to grant an extension if the period for 
response has expired.  See form paragraph 7.91.< 


714.04      Claims Presented in Amendment With No Attempt To Point Out 
Patentable Novelty [R-1] 

        >In the consideration of claims in an amended case where no 
attempt  is made to point out the patentable novelty, the claims should 
not be allowed. 
(See 37 CFR 1.111, MPEP # 714.02.) 

        An amendment failing to point out the patentable novelty which the 
 applicant believes to exist in his case may be held to be nonresponsive 
and  a time limit set to furnish a proper response if the statutory period 
has expired  or almost expired (MPEP # 714.03). However, if the claims as 
amended are clearly  open to rejection on grounds of record, a final 
rejection should generally  be made.< 


714.05      Examiner Should Immediately Inspect [R-1] 


        >Actions by applicant, especially those filed near the end of the 
period  for response, should be inspected immediately upon filing to 
determine whether  they are completely responsive to the preceding Office 
action so as to prevent  abandonment of the application. If found 
inadequate, and sufficient time remains,  applicant should be notified of 
the deficiencies and warned to complete the  response within the period. 
See MPEP 
# 714.03. 

        All amended cases put on the examiner's desk should be inspected 
at  once to determine the following: 

        If the amendment is properly signed (MPEP 
# 714.01). 

        If the amendment has been filed within the statutory period, set 
shortened  period, or time limit (MPEP 
# 710). 

        If the amendment is fully responsive (MPEP # 714.03 and # 714.04). 
        If the changes made by the amendment warrant transfer (MPEP w 
903.08(d)). 
        If the case is special (MPEP # 708.01). 

        If claims suggested to applicant for interference purposes have 
been  inserted. 

        If there is a traverse of a requirement for restriction (MPEP # 
818.03(a)). 
        If "easily erasable" paper has been used or other nonpermanent 
method  of preparation or reproduction (MPEP w 714.07). 

        If applicant has cited references (MPEP # 707.05(b) and # 
1302.12). 
        If a terminal disclaimer has been filed (MPEP 
# 508.01, # 804.02, # 804.03, and # 1490). 

        If any matter involving security has been added (MPEP # 107.01). 
ACTION CROSSES AMENDMENT 

        A supplemental action is usually necessary when an amendment is 
filed  on or before the mailing date of the regular action but reaches the 
examining  group later. The supplemental action should be promptly 
prepared. It need not  reiterate all portions of the previous action that 
are still applicable but  it should specify which portions are to be 
disregarded, pointing out that the  period for response runs from the 
mailing of the supplemental action. The action  should be headed 
"Responsive to amendment of (date) and supplemental to the  action mailed 
(date)."< 


714.06      Amendments Sent to Wrong Group  [R-1] 


        >See MPEP # 508.01.< 



714.07      Amendments Not in Permanent Ink [R-1] 


        >37 CFR 1.52(a) requires "permanent ink or its equivalent in 
quality"  to be used on papers which will become part of part of the 
record and In re  Benson, 1959 C.D. 5, 744 O.G. 353, holds that documents 
on so-called "easily  erasable" paper violate the requirement. The fact 
that 37 CFR 1.52(a) has not  been complied with may be discovered as soon 
as the amendment reaches the examining  group or, later, when later, when 
the case is reached for action. In the first  instance, applicant is 
promptly notified that the amendment is not entered  and is required to 
file a permanent copy within 1 month or to order a copy  to be made by the 
Patent and Trademark Office at his or her expense. Physical  entry of the 
amendment will be made from the permanent copy. 

        If there is no appropriate response within the 1-month period, a 
copy  is made by the Patent and Trademark Office, applicant being notified 
and required  to remit the charges or authorize charging them to his 
deposit account. 
        In the second instance, when the nonpermanence of the amendment is 
 discovered only when the case is reached for action, similar steps are 
taken,  but action on the case is not held up, the requirement for a 
permanent copy  of the amendment being included in the Office action. 

        Office copier or good carbon copies on satisfactory paper are 
acceptable.  But see In re Application Papers Filed Jan. 20, 1956, 706 
O.G. 4. Although  a good copy is acceptable, signatures must be applied 
after the copy is made  if the papers require an original signature as set 
forth in 37 CFR 1.4(e). 
        See MPEP # 608.01 for more discussion on acceptable copies.< 

714.08      Telegraphic Amendment [R-1] 


        >When a telegraphic amendment is received, the telegram is placed 
in  the file but not entered. If a properly signed formal amendment does 
not follow  in due time, the applicant is notified that the telegram will 
not be accepted  as a response to the former Office action. The time 
period for response to  the Office action continues to run and is 
extendable under 37 CFR 1.136. 
        The same test as to completeness of response applies to an 
amendment  sent by telegraph as to one sent by mail. See MPEP # 714.02.< 


714.09      Amendments Before First Office Action [R-1] 


        >An amendment filed before the first Office action, but not filed 
along  with the original application, does not enjoy the status of part of 
the original  disclosure. See MPEP # 608.04(b). However, an application 
will be accorded  a filing date based upon identification of the 
inventor(s) and the submission  of a complete specification including 
claims and any required drawings. The  oath or declaration and/or filing 
fee can be submitted later. Thus, in the  instance where an application is 
filed without the oath or declaration and  such application is accompanied 
by an amendment, that amendment is considered  a part of the original 
disclosure. The subsequently filed oath or declaration  must refer to both 
the application and the amendment. Any copy of the application  as filed 
must include a copy of the amendment as well, particularly where certified 
 copies for priority purposes are requested. 

        In the case of 37 CFR 1.60 or 1.62 (unexecuted) applications, an 
amendment  to the specification stating that, "This application is a 
division (continuation)  of application Serial No. ............ filed 
............." and canceling any  irrelevant claims as well as any 
preliminary amendment should accompany the  application. Amendments should 
either accompany the application or be filed  after the application has 
received its serial number and filing date. See MPEP  # 201.06(a).< 


714.10      Claims Added in Excess of Filing Fee    [R-1] 


        >The patent statute provides for the presentation of claims added 
in  excess of the filing fee. On payment of an additional fee (see MPEP # 
607),  these excess claims may 
be presented any time after the application is filed, which of course, 
includes  the time before the first action.< 


714.11      Amendment Filed During Interference Proceedings [R-1] 

  >See MPEP # 2364.01.< 


714.12      Amendments After Final Rejection or Action [R-1] 


>37 CFR 1.116.          Amendments after final action. 

        (a)   After final rejection or action (w 1.113) amendments may be 
made  canceling claims or complying with any requirement of form which has 
been made.  Amendments presenting rejected claims in better form for 
consideration on appeal  may be admitted. The admission of, or refusal to 
admit, any amendment after  final rejection, and any proceedings relative 
thereto, shall not operate to  relieve the application or patent under 
reexamination from its condition as  subject to appeal or to save the 
application from abandonment under # 1.135. 
        (b)   If amendments touching the merits of the application or 
patent  under reexamination are presented after final rejection, or after 
appeal has  been taken, or when such amendment might not otherwise be 
proper, they may  be admitted upon showing of good and sufficient reasons 
why they are necessary  and were not earlier presented. 

        (c)   No amendment can be made as a matter of right in appealed 
cases.  After decision on appeal, amendments can only be made as provided 
in # 1.198,  or to carry into effect a recommendation under 
# 1.196. 

        Once a final rejection that is not premature has been entered in a 
 case, applicant or patent owner no longer has any right to unrestricted 
further  prosecution. This does not mean that no further amendment or 
argument will  be considered. Any amendment that will place the case 
either in condition for  allowance or in better form for appeal may be 
entered. Also, amendments complying  with objections or requirements as to 
form are to be permitted after final  action in accordance with 37 CFR 
1.116(a). Ordinarily, amendments filed after  the final action are not 
entered unless approved by the examiner. See MPEP  # 706.07(f), # 714.13 
and # 1207. 

        The prosecution of an application before the examiner should 
ordinarily  be concluded with the final action. However, one personal 
interview by applicant  may be entertained after such final action if 
circumstances warrant. Thus,  only one request by applicant for a personal 
interview after final should be  granted, but in exceptional 
circumstances, a second personal interview may  be initiated by the 
examiner if in his judgment this would materially assist  in placing the 
application in condition for allowance. 

        Many of the difficulties encountered in the prosecution of patent 
applications  after final rejection may be alleviated if each applicant 
includes, at the  time of filing or no later than the first response, 
claims varying from the  broadest to which he or she believes he or she is 
entitled to the most detailed  that he or she is willing to accept.< 


714.13      Amendments After Final Rejection or Action, Procedure Followed 
[R-2] 

 FINAL REJECTION - TIME FOR RESPONSE 

        **>If< an applicant initially responds within two months from the 
date  of mailing of any final rejection setting a 3-month shortened 
statutory period  for response and the Office does not mail an advisory 
action until after the  end of the 3-month shortened statutory period, the 
period for response for  purposes of determining the amount of any 
extension fee will be the date on  which the Office mails the advisory 
action advising applicant of the status  of the application, but in no 
event can the period extend beyond 6 months from  the date of the final 
rejection. This procedure **>applies< only to a first  response to a final 
rejection **>.  The following language must be included  by the Examiner< 
in each final rejection mailed after February 27, 1983: 
A SHORTENED STATUTORY PERIOD FOR RESPONSE TO THIS FINAL ACTION IS SET TO 
EXPIRE  THREE MONTHS FROM THE DATE OF THIS ACTION. IN THE EVENT A FIRST 
RESPONSE IS  FILED WITHIN TWO MONTHS OF THE MAILING DATE OF THIS FINAL 
ACTION AND THE ADVISORY  ACTION IS NOT MAILED UNTIL AFTER THE END OF THE 
THREE-MONTH SHORTENED STATUTORY  PERIOD, THEN THE SHORTENED STATUTORY 
PERIOD WILL EXPIRE ON THE DATE THE ADVISORY ACTION IS MAILED, AND ANY 
EXTENSION  FEE PURSUANT TO 37 CFR 1.136(a) WILL BE CALCULATED FROM THE 
MAILING DATE OF  THE ADVISORY ACTION. IN NO EVENT WILL THE STATUTORY 
PERIOD FOR RESPONSE EXPIRE  LATER THAN SIX MONTHS FROM THE DATE OF THIS 
FINAL ACTION. 

        This wording is part of Form Paragraphs 7.39, 7.40, and 7.41. Form 
 Paragraph 7.39 appears in MPEP # 706.07. Form Paragraph 7.40 appears in 
MPEP w 706.07(a). Form Paragraph 7.41 appears in MPEP # 706.07(b). 

        For example, if applicant initially responds within 
2 months from the date of mailing of a final rejection and the examiner 
mails  an advisory action before the end of 3 months from the date of 
mailing of the final rejection, the shortened statutory  period will 
expire at the end of 3 months from the date of mailing of the final 
rejection. In such a case, any  extension fee would then be calculated 
from the end of the 3-month period. If the examiner, however, does not 
mail an advisory action until after the end of 3 months, the shortened 
statutory  period will expire on the date the examiner mails the advisory 
action and any  extension fee may be calculated from that date. In the 
event that a first response  is not filed within two months of the mailing 
date of the final rejection,  any extension fee pursuant to 37 CFR 
1.136(a) will be calculated from the end  of the response period set in 
the final rejection. 

        Failure to file a response during the shortened statutory period 
results  in abandonment of the application unless the time is extended 
under the provisions  of 
37 CFR 1.136. 

ENTRY NOT A MATTER OF RIGHT 

        It should be kept in mind that applicant cannot, as a matter of 
right,  amend any finally rejected claims, add new claims after a final 
rejection (see  37 CFR 1.116) or reinstate previously canceled claims. 

        Except where an amendment merely cancels claims, adopts examiner 
suggestions,  removes issues for appeal, or in some other way requires 
only a cursory review  by the examiner, compliance with the requirement of 
a showing under 37 CFR  1.116(b) is expected in all amendments after final 
rejection. Failure to properly  respond to the final rejection results in 
abandonment. 

        An amendment filed at any time after final rejection but before an 
 appeal brief is filed, may be entered upon or after filing of an appeal 
provided  the total effect of the amendment is to (1) remove issues for 
appeal, and/or 
(2) adopt examiner suggestions. 

        See also MPEP # 1207 and # 1211. 

ACTION BY EXAMINER 

        See also MPEP # 706.07 (f). 

        In the event that the proposed amendment does not place the case 
in  better form for appeal, nor in condition for allowance, applicant 
should be  promptly informed of this fact, whenever possible, within the 
statutory period.  The refusal to enter the proposed amendment should not 
be arbitrary. The proposed  amendment should be given sufficient 
consideration to determine whether the  claims are in condition for 
allowance and/or whether the issues on appeal are  simplified. Ordinarily, 
the specific deficiencies of the amendment need not  be discussed. The 
reasons for nonentry should be concisely expressed. For example: 
        (1)   The claims, if amended as proposed, would not avoid any of 
the  rejections set forth in the last Office action, and thus the 
amendment would  not place the case in condition for allowance or in 
better condition for appeal. 
        (2)   The claims, if amended as proposed, **>would raise the issue 
 of new matter<. 

        (3)   The claims as amended present new issues requiring further 
consideration  or search. 

        (4)   Since the amendment presents additional claims without 
canceling  any finally rejected claims it is not considered as placing the 
application  in better condition for appeal; Ex parte Wirt, 1905 C.D. 247, 
117 O.G. 599. 
        Examiners should indicate the status of each claim of record or 
proposed  in the amendment, and which proposed claims would be entered on 
the filing  of an appeal if filed in a separate paper. 

        Applicant should be notified, if certain portions of the amendment 
 would be acceptable as placing some of the claims in better form for 
appeal  or complying with objections or requirements as to form, if a 
separate paper  were filed containing only such amendments. Similarly, if 
the proposed amendment  to some of the claims would render them allowable, 
applicant should be so informed.  This is helpful in assuring the filing 
of a brief consistent with the claims  as amended. A statement that the 
final rejection stands and that the statutory period runs from the date 
of the final rejection is also in order. 

        Form letter PTOL-303 should be used to acknowledge receipt of a 
response  from applicant after final rejection where such response is 
prior to filing  of an appeal brief and does not place the application in 
condition for allowance.  This form has been devised to advise applicant 
of the disposition of the proposed  amendments to the claims and of the 
effect of any argument or affidavit not  placing the application in 
condition for allowance or which could not be made  allowable by a 
telephone call to clear up minor matters. 

        Any amendment timely filed after a final rejection should be 
immediately  considered to determine whether it places the application in 
condition for  allowance or in better form for appeal. >An examiner 
is<expected to turn in  *>a< response to an amendment after final 
rejection within *>10 calendar< days  from the time the amendment >is 
received by the examiner.  A response to an amendment after final 
rejection should be mailed within thirty (30) days  of the date the 
amendment is received by the Office.<  In all instances, both  before and 
after final rejection, in which an application is placed in condition  for 
allowance as by an interview or amendment, ** applicant should be notified 
 promptly of the allowability of all claims by means of Interview Summary 
**>PTO-413<  or **>a Notice of Allowabilty< PTOL-37. 

        Such a letter is important because it may avoid an unnecessary 
appeal  and act as a safeguard against a holding of abandonment. Every 
effort should  be made to mail the letter before the period for response 
expires. 
        If no appeal has been filed within the period for 
response and no amendment has been submitted to make the case allowable or 
 which can be entered in part (see MPEP # 714.20), the case stands 
abandoned. 
        It should be noted that under 37 CFR. 1.181(f), the filing of a 37 
 CFR 1.181 petition will not stay the period for reply to an examiner's 
action  which may be running against an application. See MPEP # 1207 for 
appeal and  post-appeal procedure. For after final rejection practice 
relative to affidavits  or declarations filed under 
37 CFR 1.131 and 1.132, see MPEP # 715.09 and # 716. 

        Form Paragraphs 7.67-7.80 are to be used when issuing advisory 
actions  after a final rejection. 

W 7.67      Advisory After Final, Heading, Before Appeal 

        The period for response [1] to run [2] MONTHS from the date of the 
 final rejection. Any extension of time must be obtained by filing a 
petition  under 37 CFR 1.136(a) accompanied by the proposed response and 
the appropriate  fee. The date on which the *>response<, the petition, and 
the fee have been  filed is the date of the response and also the date for 
the purposes of determining  the period of extension and the corresponding 
amount of the fee. 

Examiner Note: 

        1.  This paragraph should appear as a heading in all advisory 
actions  prior to appeal. After appeal, use paragraph 7.68. 

        2.  In Bracket 1, insert "continues" if applicant has not 
submitted  a petition for an extension of time along with the appropriate 
fee under 37  CFR 1.136. If a proper extension has been requested under 37 
CFR 1.136, insert  "is extended" in bracket 1. 

        3.  In bracket 2, insert the full statutory period resulting from 
any  extensions of time which have been granted, e.g., "FOUR'' months. 
        4.  DO NOT USE THIS FORM PARAGRAPH FOR REEXAMINATION PROCEEDINGS. 
        5.  Follow with form paragraph 7.41.01 IF transitional provisions 
of  37 CFR 1.129(a) are applicable. 

W 7.67.01 Advisory After Final>,< Heading, 1st Response Filed Within 2 
Months 
        The shortened statutory period for response expires THREE MONTHS 
from  the date of the final rejection or as of the mailing date of this 
Advisory  Action, whichever is later. In no event however, will the 
statutory period  for response expire later than SIX MONTHS from the date 
of the final rejection.  Any extension of time must be obtained by filing 
a petition under 37 CFR 1.136(a)  accompanied by the proposed response and 
the appropriate fee. The date on which  the response, the petition, and 
the fee have been filed is the date of the  response and also the date for 
the purposes of determining the period of extension  and the corresponding 
amount of the fee. 

        Any extension fee required pursuant to 37 CFR 1.17 will be 
calculated  from the date that the shortened statutory period for 
*>response< expires as  set forth above. 

Examiner Note: 

        1.  This paragraph should be used in all advisory actions if: 
        a.  it was the first response to the final rejection, and 
        b.  it was filed within two months of the date of the final 
rejection. 
        2.  If a notice of appeal has been filed, also use paragraph 7.68. 
        3.  DO NOT USE THIS FORM PARAGRAPH FOR REEXAMINATION PROCEEDINGS. 
        4.  Follow with form paragraph 7.41.01 IF transitional provisions 
of  37 CFR 1.129(a) are applicable. 

W 7.67.02.  Advisory After Final, Heading, No Variable SSP Set in Final 
        Since the first response to the final Office action has been filed 
 within TWO MONTHS of the mailing date of that action and the advisory 
action  was not mailed within THREE MONTHS of that date, the THREE MONTH 
shortened  statutory period for response set in the final Office action is 
hereby vacated  and reset to expire as of the mailing date of the advisory 
action. See Notice  entitled "Procedure for Handling Amendments Under 37 
CFR 1.116", published  in the Official Gazette at 1027 O.G. 71, February 
8, 1983. In no event, however,  will the statutory period for response 
expire later than SIX MONTHS from the  date of the final Office action. 

        Any extension fee required pursuant to 37 CFR 1.17 will be 
calculated  from the mailing date of the advisory action. 

Examiner Note: 

        1.This paragraph should be used in all advisory actions where: 
                a.The response is a first response to the final action; 
                b. the response was filed within two months of the mailing 
 date of the final; and 

                c. the final action failed to inform applicant of a 
variable  SSP beyond the normal three month period, as is set forth in 
form paragraphs  7.39-7.41. 

        2. If the final action set a variable SSP, do not use this 
paragraph.  Use paragraph 7.67.01. 

        3. If a notice of appeal has been filed, also use paragraph 7.68. 
        >4. Follow with form paragraph 7.41.01 if transitional provisions 
of  37 CFR 1.129(a) are applicable.< 

W 7.68      Advisory After Final, Heading, After Appeal 

        An appeal under 37 CFR 1.191 was filed in this application on [1]. 
Appellant's brief is due on [2] in accordance with 37 CFR 1.192(a). 
Examiner Note: 

        1.  This paragraph must precede paragraph 7.70 if the amendment is 
 entered. 

        2.  This paragraph must precede paragraph 7.71 if the amendment is 
 not entered. 

W 7.69      Advisory After Final, Before Appeal, Amendment To Be Entered 
        The amendment filed [1] under 37 CFR 1.116 in response to the 
final  rejection will be entered upon the filing of an appeal, but is not 
deemed to  place the application in condition for allowance. Upon the 

filing of an appeal and entry of the amendment, the status of the claims 
would  be as follows: 

 Allowed *>claim(s)<: [2] 

 Rejected *>claim(s)<: [3] 

 Claim(s) objected to: [4] 

Examiner Note: 

        1. This paragraph must be preceded by paragraph 7.67, *>7.67.01<, 
or  *>7.67.02<. 

        2. In *>brackets< 2-4 indicate the status of all claims 

        3. An explanation of any changes in the rejection necessitated by 
the  amendment, a statement of reasons for allowance, or other appropriate 
information  may be added following the listing of the claims. 

W 7.70      Advisory After Final, After Appeal, Amendment Entered 
        The amendment filed [1] under 37 CFR 1.116 in response to the 
final  rejection has been entered, but is not deemed to place the 
application in condition  for allowance. For purposes of appeal, the 
status of the claims is as follows: 
         Allowed *>claim(s)<: [2] 

         Rejected *>claim(s)<: [3] 

         Claim(s) objected to: [4] 

  The brief should be directed to the rejection of claim [5]. 

Examiner Note: 

        1. This paragraph must be preceded by paragraph 7.68 

        2. In brackets 2-4, indicate the status of all pending claims. 
        3. An explanation of appropriate changes, such as a change in the 
rejection  or a statement of reasons for allowance, may be added following 
the listing  of the claims. 

        4. In bracket 5, repeat claims identified in bracket 3. 

W 7.71      Advisory After Final, Amendment not Entered 

        The amendment filed [1] under 37 CFR 1.116 in response to the 
final  rejection has been considered but is not deemed to place the 
application in  condition for allowance and will not be entered because: 

Examiner Note: 

        1. This paragraph must be preceded by paragraph 7.67, 7.67.01 or 
7.67.02  if an appeal has not been taken, or by paragraph 7.68 if an 
appeal has been  taken. 

        2. If it is not known whether a notice of appeal has been filed 
and  the full six month period has expired, do not use paragraphs 7.67, 
7.67.01,  7.67.02 or 7.68; use instead the following: 

        "If an appeal under 37 CFR 1.191 has not been properly filed, this 
 application is abandoned." 

        3. One or more of the appropriate paragraphs 7.72-7.76 must 
directly  follow this paragraph. 

W 7.72      >Advisory After Final,< Lacks Showing, Why Necessary and not 
Earlier  Presented 

        There is no convincing showing under 37 CFR 1.116(b) why the 
proposed  amendment is necessary and was not earlier presented. 

Examiner Note: 

        1.  Paragraph 7.71 must precede this paragraph. 

        2.  Do not use this paragraph as the sole reason for refusing 
entry  of the amendment unless the situation is aggravated, in which case 
a full explanation  is necessary. 

        3.  Follow with form paragraph 7.41.01 IF transitional provisions 
of  37 CFR 1.129(a) are applicable and only if not used in previous 
action. 
W 7.73      >Advisory After Final,< Raises New Issues 

        The proposed amendment raises new issues that would require 
further  consideration and/or search. [1]. 

Examiner Note: 

        1. This paragraph must be preceded by paragraph 7.71. 

        2. The new issues **> including questions of new matter must be 
clearly  identified in bracket 1. (Examples are sufficient if the new 
issues are extensive.) 
        3.  Follow with form paragraph 7.41.01 if transmitional provisions 
 of 37 CFR 1.129(a) are applicable and only if not used in previous 
action.< 
** 

W 7.75      >Advisory After Final,< Form for Appeal Not Improved 

        The proposed amendment is not deemed to place the application in 
better  form for appeal by materially simplifying the issues for appeal. 

Examiner Note: 

        1.  This paragraph must be preceded by paragraph 7.71. 

        2.  Follow with form paragraph 7.41.01 IF transitional provisions 
of  37 CFR 1.129(a) are applicable and only if not used in previous 
action. 
W 7.76      >Advisory After Final,<Additional Claims Presented 

        The proposed amendment presents additional claims without 
cancelling  a corresponding number of finally rejected claims. 

Examiner Note: 

        1.  **>This paragraph must be preceded by paragraph 7.71.< 
        2.  Follow with form paragraph 7.41.01 IF transitional provisions 
of  37 CFR 1.129(a) are applicable and only if not used in previous 
action. 
** 

W 7.78      >Advisory After Final,< Proposed New Claims Would Be Allowable 
        Claim [1] as proposed would be allowable if submitted in a 
separately  filed amendment cancelling all non-allowed claims. 

 Examiner Note: 

        1.  This paragraph must be preceded by paragraph 7.71. 

        2.  Follow with form paragraph 7.41.01 IF transitional provisions 
of  37 CFR 1.129(a) are applicable and only if not used in previous 
action. 
W 7.79      Advisory After Final, Affidavit, Exhibit, or Request for 
Reconsideration  Considered 

        The [1] has been entered and considered but does not overcome the 
rejection  because [2]. 

 Examiner Note: 

        1.  This paragraph must be preceded by either paragraph 7.67, 
7.67.01,  7.67.02, or 7.68. 

        2.  In bracket 1, insert "affidavit", "declaration", "exhibit", or 
 "request for reconsideration". 

        3.  An explanation should be provided in bracket 2. 

        4.  Follow with form paragraph 7.41.01 IF transitional provisions 
of  37 CFR 1.129(a) are applicable and only if not used in previous 
action. 
W 7.80      Advisory After Final, Affidavit or Exhibit Not Considered 
        The [1] will not be considered because good and sufficient reasons 
 why it was not earlier presented have not been shown. [2]. 

Examiner Note: 

        1.  This paragraph must be preceded by either paragraph 7.67, 
7.67.01,  7.67.02, or 7.68. 

        2.  In bracket 1, insert "affidavit", "declaration", "exhibit", or 
 "request for reconsideration". 

        3.  An explanation should follow in bracket 2. 

        4.  Follow with form paragraph 7.41.01 IF transitional provisions 
of  37 CFR 1.129(a) are applicable and only if not used in previous 
action. 
HAND DELIVERY OF PAPERS 

        Any paper which relates to a pending application may be personally 
 delivered to an examining group. However, the examining group will accept 
the  paper only if: (1) the paper is accompanied by some form of receipt 
which can  be handed back to the person delivering the paper; and (2) the 
examining group  being asked to receive the paper is responsible for 
acting on the paper. 
        The receipt may take the form of a card identifying the paper. The 
 identifying data on the card should be so complete as to leave no 
uncertainty  as to the paper filed. For example, the card should contain 
the applicant's  name(s), Serial No. filing date, and a description of the 
paper being filed.  If more than one paper is being filed for the same 
application, the card should  contain a description of each paper or item. 

        Under this procedure, the paper and receipt will be date stamped 
with  the group date stamp. The receipt will be handed back to the person 
hand delivering  the paper. The paper will be correlated with the 
application and made an official  paper in the file, thereby avoiding the 
necessity of processing and forwarding  the paper to the examining group 
via the Mail Room. 

        The examining group will accept and date stamp a paper even though 
 the paper is accompanied by a check or the paper contains an 
authorization  to charge a Deposit Account. However, in such an instance, 
the paper will be  hand carried by group personnel to the Office of 
Finance for processing and  then made an official paper in the file. 

        All such papers, together with the cash, checks, or money orders, 
shall  be hand-carried to the Cashier's Window, Room 2-1BO1, between the 
hours of  3:00 p.m. and 4:00 p.m. 

        The papers shall be processed by the accounting clerk, Office of 
Finance,  for pickup at the Cashier's Window by 3:00 p.m. the following 
work day. Upon  return to the group, the papers will be entered in the 
application file wrappers. 
Expedited Procedure for Processing Amendments and Other Responses After 
Final  Rejection (37 CFR 1.116) 

        In an effort to improve the timeliness of the processing of 
amendments  and other responses under 37 CFR 1.116, and thereby provide 
better service  to the public, an expedited processing procedure has been 
established which  the public may utilize in filing amendments and other 
responses after final  rejection under 37 CFR 1.116. In order for an 
applicant to take advantage of  the expedited procedure the amendment or 
other response under 37 CFR 1.116  will have to be marked as a "Response 
under 37 CFR 1.116* - Expedited Procedure  - Examining Group (Insert 
Examining Group Number)" on the upper right portion  of the amendment or 
other response and the envelope must be marked "Box AF" in the lower left 
hand corner.  The markings preferably should be written in a bright color 
with a felt point  marker. If the response is mailed to the Office, the 
envelope should contain  only responses under 37 CFR 1.116 and should be 
mailed to "Box AF, Assistant  Commissioner for Patents, Washington, D.C. 
20231." Instead of mailing the envelope  to "Box AF" as noted above, the 
response may be hand-carried to the particular  Examining Group or other 
area of the Office in which the application is pending  and marked on the 
outside envelope "Response Under 37 CFR 1.116 - Expedited 
Procedure-Examining Group (Insert Examining Group Number)." 

        Upon receipt by the Patent and Trademark Office from the Postal 
Service  of an envelope appropriately marked "Box AF," the envelope will 
be specially  processed by the Patent and Trademark Office Mail Room and 
forwarded promptly  to the Examining Group, via the Office of Finance if 
any fees have to be charged  or otherwise processed. Upon receipt of the 
response in the Examining Group  it will be promptly processed by a 
designated clerical employee and forwarded  to the examiner, via the 
Supervisory Primary Examiner (SPE), for action. The  SPE is responsible 
for ensuring that prompt action on the response is taken by the examiner. 
If the examiner to which the  application is assigned is not available and 
will not be available for an extended  period, the  SPE will ensure that 
action on the application is promptly taken  to assure meeting the PTO 
goal described below. Once the examiner has completed  his or her 
consideration of the response, the examiner's action will be promptly 
typed and mailed by clerical employees designated to expedite the 
processing  of responses filed under this procedure. The Examining Group 
supervisory personnel;  e.g., the Supervisory Primary Examiner, 
Supervisory Applications Clerk, and  Group Director are responsible for 
ensuring that actions on responses filed  under this procedure are 
promptly processed and mailed. The Patent and Trademark  Office goal is to 
mail the examiner's action on the response within 1 month  from the date 
on which the amendment or response is received by the Patent  and 
Trademark Office. 

        Applicants are encouraged to utilize this expedited procedure in 
order  to facilitate Patent and Trademark Office processing of responses 
under 37  CFR 1.116. If applicants do not utilize the procedure by 
appropriately marking  the envelope and enclosed papers, the benefits 
expected to be achieved therefrom  will not be attained. The procedure 
cannot be expected to result in achievement  of the goal in applications 
in which the delay results from actions by the  applicant; e.g., delayed 
interviews, applicant's desire to file a further response,  or a petition 
by applicant which requires a decision and delays action on the  response. 
In any application in which a response under this procedure has been 
filed and no action by the examiner has been received within the time 
referred  to herein, plus normal mailing time, a telephone call to the SPE 
of the relevant  Group Art Unit would be appropriate in order to permit 
the SPE to determine  the cause for any delay. If the SPE is unavailable 
or if no satisfactory response  is received, the Group Director of the 
Examining Group should be contacted. 

714.14      Amendments After Allowance of All Claims [R-1] 


        >Under the decision in Ex parte Quayle, 1935 C.D. 11; 453 O.G. 
213,  after all claims in a case have been allowed the prosecution of the 
case on  the merits is closed even though there may be outstanding formal 
objections  which preclude fully closing the prosecution. 

        Amendments touching the merits are treated in a manner similar to 
amendments  after final rejection, though the prosecution may be continued 
as to the formal  matters. See MPEP # 714.12 and # 714.13. 

        See MPEP # 714.20 for amendments entered in part. 

        See MPEP # 607 for additional fee requirements. 

        Use Form Paragraph 7.51 to issue an Ex parte Quayle action. 
W 7.51      Quayle Action 

        This application is in condition for allowance except for the 
following  formal matters: [1]. 

        Prosecution on the merits is closed in accordance with the 
practice  under Ex parte Quayle, 1935 C.D. 11, 453 O.G. 213. 

        A shortened statutory period for response to this action is set to 
 expire TWO MONTHS from the date of this letter. 

Examiner Note: 

        1.  Explain the formal matters which must be corrected in bracket 
1.< 

714.15      Amendment Received in Examining Group After Mailing of Notice 
of Allowance [R-1] 

        >Where an amendment, even though prepared by applicant prior to 
allowance,  does not reach the Office 


until after the notice of allowance has been mailed, such amendment has 
the  status of one filed under 37 CFR 1.312. Its entry is a matter of 
grace. For  discussion of amendments filed under 37 CFR 1.312, see MPEP 
# 714.16 to # 714.16(e). 

        If, however, the amendment is filed in the Office prior to the 
mailing  out of the notice of allowance, but is received by the examiner 
after the mailing  of the notice of allowance, it has the same standing in 
the case as though  the notice had not been mailed. Where the case has not 
been closed to further  prosecution, as by final rejection of one or more 
claims, or by an action allowing  all of the claims, applicant may be 
entitled to have such amendment entered  even though it may be necessary 
to withdraw the application from issue. Such  withdrawal, however, is 
unnecessary if the amendatory matter is such as the  examiner would 
recommend for entry under 
37 CFR 1.312. 

        As above implied, the case will not be withdrawn from issue for 
the  entry of an amendment that would reopen the prosecution if the Office 
action  next preceding the notice of allowance closed the case to further 
amendment,  i.e., by indicating the patentability of all of the 
claims, or by allowing some and finally rejecting the remainder. 

        After an applicant has been notified that the claims are all 
allowable,  further prosecution of the merits of the case is a matter of 
grace and not  of right (Ex parte Quayle, 1935 C.D. 11; 453 O.G. 213). To 
this extent the  practice affecting the status of an amendment received in 
the Office on the  date of mailing the notice of allowance, as set forth 
in Ex parte Miller, 1922  C.D. 36; 305 O.G. 419, is modified.< 


714.16      Amendment After Notice of Allowance, 37 CFR 1.312 [R-2] 

37 CFR 1.312.     Amendments after allowance. 

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

        (b) Any amendment pursuant to paragraph (a) of this section filed 
after  the date the issue fee is paid must be accompanied by a petition 
including  the fee set forth in w 1.17(i) and a showing of good and 
sufficient reasons  why the amendment is necessary and was not earlier 
presented. 

        The amendment of an application by applicant after allowance falls 
 within the guidelines of 37 CFR 1.312. Further, the amendment of an 
application  broadly encompasses any change in the file record of the 
application. Accordingly,  the following are examples of "amendments" by 
applicant after allowance which  must comply with 37 CFR 1.312: An 
amendment to the specification, a change  in the drawings, an amendment to 
the claims, a change in the inventorship,  the submission of prior art, 
etc. Finally, it is pointed out that an amendment  under 37 CFR 1.312 
filed on or before the date the issue fee is paid must comply  with 
paragraph (a) and that such an amendment filed after the date the issue 
fee is paid must comply with paragraph (b). 

        The Commissioner has delegated the approval of recommendations 
under  37 CFR 1.312(a) to the supervisory primary examiners. 

        A supplemental oath is not treated as an amendment under 37 CFR 
1.312,  see MPEP # 603.01. 

        After the Notice of Allowance has been mailed, the application is 
technically  no longer under the jurisdiction of the primary examiner. He 
or she can, however,  make examiner's amendments (See MPEPw 1302.04) and 
has authority to enter amendments  submitted after Notice of Allowance of 
an application which embody merely the  correction of formal matters in 
the specification or drawing, or formal matters  in a claim without 
changing the scope thereof, or the cancellation of claims  from the 
application, without forwarding to the supervisory primary examiner  for 
approval. 

        Amendments other than those which merely embody the correction of 
formal  matters without changing the scope of the claims require approval 
by the supervisory  primary examiner. The Group Director establishes group 
policy with respect  to the treatment of amendments directed to trivial 
informalities which seldom  affect significantly the vital formal 
requirements of any patent; namely, (1)  that its disclosure be adequately 
clear, and (2) that any invention present  be defined with sufficient 
clarity to form an adequate basis for an enforceable  contract. 

        Consideration of an amendment under 37 CFR 1.312 cannot be 
demanded  as a matter of right. Prosecution of a case should be conducted 
before, and  thus be complete including editorial revision of the 
specification and claims  at the time of the Notice of Allowance. However, 
where amendments of the type  noted are shown (1) to be needed for proper 
disclosure or protection of the invention, and (2) to require  no 
substantial amount of additional work on the part of the Office, they may 
be considered and, if proper, entry may be recommended by the primary 
examiner. 
        The requirements of 37 CFR 1.111(c) (MPEP 
# 714.02) with respect to pointing out the patentable novelty of any claim 
 sought to be added or amended, apply in the case of an amendment under 37 
CFR  1.312, as in ordinary amendments. See MPEP # 713.04 and w 713.10 
regarding  interviews. As to amendments affecting the disclosure, the 
scope of any claim,  or that add a claim, the remarks accompanying the 
amendment must fully and  clearly state the reasons on which reliance is 
placed to show: 

        (1)   why the amendment is needed; 

        (2)   why the proposed amended or new claims require no additional 
 search or examination; 

        (3)   why the claims are patentable*>;< and 

        (4)   why they were not presented earlier. 

NOT TO BE USED FOR CONTINUED PROSECUTION 

        37 CFR 1.312 was never intended to provide a way for the continued 
 prosecution of an application after it has been passed for issue. When 
the recommendation is against entry, a detailed  statement of reasons is 
not necessary in support of such recommendation. The  simple statement 
that the proposed claim is not obviously allow-able and briefly  the 
reason why is usually adequate. Where appropriate, any one of the 
following  reasons is considered sufficient: 

        (1)   an additional search is required, or 

        (2)   more than a cursory review of the record is necessary, or 
        (3)   the amendment would involve materially added work on the 
part  of the Office; e.g., checking excessive editorial changes in the 
specification  or claims. 

        Where claims added by amendment under 37 CFR 1.312 are all of the 
form  of dependent claims, some of the usual reasons for nonentry are less 
likely  to apply 
although questions of new matter, sufficiency of disclosure, or undue 
multiplicity  of claims could arise. 

        See MPEP # 607 and # 714.16(c) for additional fee requirements. 
AMENDMENTS FILED AFTER PAYMENT OF ISSUE FEE 

        37 CFR 1.312(b) provides that amendments under 
37 CFR 1.312 filed after the date the issue fee has been paid must include 
 a petition and fee under 37 CFR 1.17(i) and a showing of good and 
sufficient  reasons why such an amendment is necessary and was not earlier 
presented. Such  petitions are decided by the Group Director. >Form 
Paragraph 13.10 should be  used where no petition and/or fee has been filed. 

W 13.10       Rule 312 Amendment, Issue Fee Paid, No Petition/Fee 
        Applicants amendment of [1] was filed after the issue fee was 
paid.  37 CFR 1.312(b) requires a petition and the fee set forth in 
37 CFR 1.17(i). 

Examiner Note: 

        1.  For Rule 312 amendments submitted after the issue fee has been 
 paid and not complying with 37 CFR 1.312(b), use this paragraph on form 
PTOL-90. 
        2.  In bracket 1, insert the date of the amendment.< 


714.16(a) Amendments Under 37 CFR 1.312, Copied Patent Claims [R-1] 

        >See MPEP # 2305.04 for the procedure to be followed when an 
amendment  is received after notice of allowance which includes one or 
more claims copied  or substantially copied from a patent. 

        The entry of the copied patent claims is not a matter of right. 
See  MPEP # 714.19 item (4). 

        See MPEP # 607 and # 714.16(c) for additional fee requirements.< 

714.16(b) Amendments Under 37 CFR 1.312 Filed With a Motion Under 37 CFR 
1.633 [R-1] 

        >Where an amendment filed with a motion under 
37 CFR 1.633(c)(2) applies to a case in issue, the amendment is not 
entered  unless and until the motion has been granted. See MPEP # 2333.< 


714.16(c) Amendments Under 37 CFR 1.312, Additional Claims [R-1] 


        >If the amendment under 37 CFR 1.312 adds claims (total and 
independent)  in excess of the number previously paid for, additional fees 
are required.  The amendment is not considered by the examiner unless 
accompanied by the full  fee required. See MPEP # 607 and 35 U.S.C. 41.< 


714.16(d) Amendments Under 37 CFR 1.312, Handling [R-1] 


>AMENDMENTS AFFECTING THE DISCLOSURE OF THE SPECIFICATION, 
ADDING CLAIMS, OR CHANGING THE SCOPE OF ANY CLAIM 

        Amendments under 37 CFR 1.312 are sent by the Correspondence and 
Mail  Division to the Publishing Division which, in turn, forwards the 
proposed amendment,  file, and drawing (if any) to the group which allowed 
the application. In the  event that the class and subclass in which the 
application is classified has  been transferred to another group after the 
application was allowed, the proposed  amendment, file and drawing (if 
any) are transmitted directly to said other  group and the Publishing 
Division notified. If the examiner who allowed the  application is still 
employed in the Patent and Trademark Office but not in  said other group, 
he or she may be consulted about the propriety of the proposed  amendment 
and given credit for any time spent in giving it consideration. The 
amendment is PROMPTLY considered by the examiner who indicates whether or 
not  its entry is recommended by writing "Enter - 312," "Do Not Enter" or 
"Enter In Part" thereon in red ink in the upper left corner. 
        If the amendment is favorably considered, it is entered and a 
notice  of entry (PTOL-271) is prepared. No "Entry Recommended under Rule 
312" stamp  is required on the amendment or on the notice of entry in view 
of the use of  form (PTOL-271). The primary examiner indicates his or her 
recommendation by  stamping and signing his or her name on the notice of 
entry form (PTOL-271). 
 Form Paragraph 7.85 may be used to indicate entry. 

W 7.85      Amendment under 37CFR 1.312, Entered 

The amendment filed on [1] under 37 CFR 1.312 has been entered. 

Examiner Note: 

1.Use this form for both Order 3311 amendments that do not affect the 
scope  of the claims, and for other amendments being entered under 37 CFR 
1.312. 
2. Entry of amendments under Order 3311 require the approval of a Primary 
Examiner  and entry of amendments under 37 CFR 1.312(a) require approval 
by the Supervisory  Patent Examiner on recommendation of the Primary 
Examiner.  See MPEP # 714.16 
3. Amendments filed after payment of the issue fee require a petition and 
fee.  These petitions are first decided by the Group Director. 

        If the examiner's recommendation is completely adverse, a report 
giving  the reasons for nonentry is typed on the notice of disapproval 
(PTOL-271) and  signed by the primary examiner. 

        Form Paragraph 7.87 may be used to indicate nonentry. 

W 7.87      Amendment under 37CFR 1.312, not Entered 

The proposed amendment filed on [1] under 37 CFR 1.312 has not been 
entered.  [2]. 

Examiner Note: 

The reasons for non-entry should be specified in bracket 2. 

        In either case, whether the amendment is entered or not entered, 
the  file, drawing, and unmailed notices are forwarded to the supervisory 
primary  examiner for consideration, approval, and mailing. 

        For entry-in-part, see MPEP # 714.16(e). 

        The filling out of the appropriate form by the clerk does not 
signify  that the amendment has been admitted; for, though actually 
entered it is not  officially admitted unless and until approved by the 
supervisory primary examiner. 
        See MPEP # 607 and # 714.16(c) for additional fee requirements. 
        Petitions to the Commissioner relating to the refusal to enter an 
amendment  under 37 CFR 1.312 and relating to entry of an amendment under 
37 CFR 1.312  filed after payment of the issue fee are decided by the 
group director. 
        If the 37 CFR 1.312 amendment includes proposed drawing changes 
which  are acceptable, the Office response should include Form Paragraph 
6.48. 
W 6.48 Drawing Changes in 37 CFR1.312 Amendment 

Applicant is hereby given ONE MONTH from the date of this letter or until 
the  expiration of the period set in the "Notice of Allowance" (PTOL-85) 
or  ``Notice  of Allowability" (PTOL-37), whichever is longer, to file 
corrected drawings. 
Examiner Note: 

Use with 37 CFR 1.312 amendment notice where there is a drawing correction 
 proposal or request. 

AMENDMENTS WHICH EMBODY MERELY THE CORRECTION OF FORMAL MATTERS IN THE 
SPECIFICATION, FORMAL CHANGES IN A CLAIM WITHOUT CHANGING THE SCOPE 
THEREOF, OR THE CANCELLATION OF CLAIMS 

        The examiner indicates approval of amendments concerning merely 
formal  matters by writing "Enter Formal Matters Only" thereon. Such 
amendments do not require submission to  the supervisory primary examiner 
prior to entry. See MPEP w 714.16. The notice  of entry (PTOL-271) is date 
stamped and mailed by the examining group. If such  amendments are 
disapproved either in whole or in part, they require the signature  of the 
supervisory primary examiner.< 


714.16(e) Amendments Under 37 CFR 1.312, Entry in Part [R-1] 


        >The general rule that an amendment cannot be entered in part and 
refused  in part should not be relaxed, but when, under 37 CFR 1.312, an 
amendment,  for example, is proposed containing a plurality of claims or 
amendments to  claims, some of which may be entered and some not, the 
acceptable claims or  amendments should be entered in the case. If 
necessary, the claims should be  renumbered to run consecutively with the 
claims already in the case. The refused  claims or amendments should be 
canceled in lead pencil on the amendment. 
        The examiner should then submit a report (PTOL-271) recommending 
the  entry of the acceptable portion of the amendment and the nonentry of 
the remaining portion together  with his reasons therefor. The claims 
entered should be indicated by number  in this report. 
Applicant may be notified by using Form Paragraph 7.86. 

W 7.86      Amendment under 37 CFR 1.312, Entered in Part 

The amendment filed on [1] under 37 CFR 1.312 has been entered in part. 
[2]. 
Examiner Note: 

When an amendment under 37 CFR 1.312 is proposed containing  plural 
changes,  some of which may be entered and some not, the acceptable 
changes should be  entered. An indication of which changes have and have 
not been entered with  appropriate explanation should follow in bracket 2. 

        Handling is similar to complete entry of a 37 CFR 1.312 amendment. 
        Entry in part is not recommended unless the full additional fee 
required,  if any, accompanies the amendment. See MPEP # 607 and # 
714.16(c).< 

714.17      Amendment Filed After the Period for 

        Response Has Expired [R-1] 

        >When an application is not prosecuted within the period set for 
response  and thereafter an amendment is filed with out a petition for 
extension of time  and fee pursuant to 37 CFR 1.136(a), such amendment 
shall be endorsed on the  file wrapper of the application, but not 
formally entered. The clerk shall  immediately notify the applicant, by 
telephone and form letter PTOL-327, that  the amendment was not filed 
within the time period and therefore cannot be  entered and that the 
application is abandoned unless a petition for extension  of time and the 
appropriate fee are timely filed. See MPEP # 711.02. 
        A mere authorization to charge a deposit account for any fee 
required  will not be considered to be a petition for an extension of 
time. 
        The Patent and Trademark Office has been receiving an excessively 
large  volume of petitions to revive based primarily on the late filing of 
amendments  and other responses to official actions. Many of these 
petitions indicate that  the late filing was due to unusual mail delays; 
however, the records generally  show that the filing was only 2 or 3 days 
late. 

        In order to alleviate, for applicants and the Office, the problems 
 and expenditures of time and effort occasioned by abandonments and 
petitions  to revive, it is suggested that responses to official action be 
mailed to the  office at least one, and preferably 2 week(s) prior to the 
expiration of the  period within which a response is required or that the 
Certificate of Mailing  procedure under 37 CFR 1.8 (MPEP # 512) or 37 CFR 
1.10 (MPEP 
# 513) be utilized. This suggestion is made in the interest of improving 
efficiency,  thereby providing better service to the public.< 


714.18      Entry of Amendments [R-2] 


        Amendments are stamped with the date of their receipt in the 
group.  It is important to observe the distinction which exists between 
the stamp which  shows the date of receipt of the amendment in the group 
("Group Date" stamp)  and the stamp bearing the date of receipt of the 
amendment by the Office ("Office  Date" stamp). The latter date, placed in 
the left-hand corner, should always  be referred to in writing to the 
applicant with regard to his or her amendment. 
        All amendments received in the clerical sections are processed and 
 with the applications delivered to the supervisory primary examiner for 
his  or her review and distribution to the examiners. 

        Every mail delivery should be carefully screened to remove all 
amendments  responding to a final action in which a time period is running 
against the applicant. Such amendments should be processed  within the 
next 24 hours. 

        The purpose of this procedure is to ensure uniform and prompt 
treatment  by the examiners of all cases where the applicant is awaiting a 
reply to a  proposed amendment after final action. By having all of these 
cases pass over  the supervisory primary examiner's desk, he or she will 
be made aware of the  need for any special treatment, if the situation so 
warrants. For example,  the supervisory primary examiner will know whether 
or not the examiner in each  case is on extended leave or otherwise 
incapable of moving the case within  the required time periods (** see 
MPEP w 714.13). In cases of this type, the  applicant should receive an 
Office communication in sufficient time to adequately  consider his or her 
next action if the case is not allowed. Consequently, the  clerical 
handling will continue to be special when these cases are returned  by the 
examiners to the clerical sections. 

        The amendment or letter is placed in the file, given its number as 
 a paper in the application, and its character endorsed on the file 
wrapper  in red ink. 

        When several amendments are made in an application on the same day 
 no particular order as to the hour of the receipt or the mailing of the 
amendments can be assumed, but consideration  of the case must be given as 
far as possible as though all the papers filed  were a composite single paper. 

        After entry of the amendment the application is "up for action." 
It  is placed on the examiner's desk, and he or she is responsible for its 
proper  disposal. The examiner should immediately inspect the amendment as 
set forth  in MPEP # 714.05. After inspection, if no immediate or special 
action is required,  the application awaits examination in regular order. 


714.19      List of Amendments, Entry Denied            [R-2] 


        The following types of amendments are ordinarily denied entry: 
        (1)   An amendment presenting an unpatentable claim, or a claim 
requiring  a new search or otherwise raising a new issue in a case whose 
prosecution before  the primary examiner has been closed, as where 

        (a)   All claims have been allowed, 

        (b)   All claims have been finally rejected (for exceptions see 
MPEP  w 714.12, w 714.13, and w 714.20(4)), 

        (c)   Some claims allowed and remainder finally rejected. See MPEP 
 w 714.12 to w 714.14. 

        (2)   Substitute specification that does not comply with 37 CFR 
1.125.  See MPEP w 608.01(q) and w 714.20. 

        (3)   A patent claim suggested by the examiner and not presented 
within  the time limit set or an extension thereof, unless entry is 
authorized by the  Commissioner. See MPEP w 2305.03.** 

        (4)   While copied patent claims are generally admitted even 
though  the case is under final rejection or on appeal, under certain 
conditions, the  claims may be refused entry. See MPEP w 2307.03. 

        (5)   An unsigned or improperly signed amendment or one signed by 
a  disbarred attorney. 

        (6)   An amendment filed in the Patent and Trademark Office after 
the  expiration of the statutory period or set time limit for response and 
any extension  thereof. See MPEP w 714.17. 

        (7)   An amendment so worded that it cannot be entered with 
certain  accuracy. See MPEP w 714.23. 

        (8)   An amendment cancelling all of the claims and presenting no 
substitute  claim or claims. See MPEP w 711.01. 

        (9)   An amendment in a case no longer within the examiner's 
jurisdiction  with certain exceptions in applications in issue, except on 
approval of the  Commissioner. See MPEP w 714.16. 

        (10)    Amendments to the drawing held by the examiner to contain 
new  matter are not entered until the question of new matter is settled. 
This practice  of nonentry because of alleged new matter, however, does 
not apply in the case  of amendments to the specification and claims. See 
MPEP # 608.04 and # 706.03(o). 
        (11)    An amendatory paper containing objectionable remarks that, 
 in the opinion of the examiner, brings it within the condemnation of 37 
CFR  1.3, will be submitted to the group director for return to applicant. 
See MPEP  # 714.25 and MPEP w 1003, item 3. If the group director 
determines that the  remarks are in violation of 37 CFR 1.3, he will 
return the paper. 

        (12)    Amendments not in permanent ink. Amendments on so-called 
"easily  erasable paper." See MPEP # 714.07. 

        (13)    An amendment presenting claims (total and independent) in 
excess  of the number previously paid for and not accompanied by the full 
fee for the claims or an authorization to charge  the fee to a deposit 
account. 

        (14)    An amendment canceling all claims drawn to the elected 
invention  and presenting only claims drawn to the nonelected invention 
should not be  entered. Such an amendment is nonresponsive. Applicant 
should be notified as  directed in MPEP # 714.03 and # 714.05. See MPEP # 
821.03. 

        While amendments falling within any of the foregoing categories 
should  not be entered by the examiner at the time of filing, a subsequent 
showing  by applicant may lead to entry of the amendment. 


714.20      List of Amendments Entered in Part [R-2] 


        To avoid confusion of the record the general rule prevails that an 
 amendment should not be entered in part. As in the case of most other 
rules,  the strict observance of its letter may sometimes work more harm 
than would  result from its infraction, especially if the amendment in 
question is received  at or near the end of the period for response. Thus, 

        (1)   an "amendment" presenting an unacceptable substitute 
specification  along with amendatory matter, as amendments to claims or 
new claims, should  be entered in part, rather than refused entry in toto. 
The substitute specification  should be denied entry and so marked, while 
the rest of the paper should be  entered. 

        The case as thus amended is acted on when reached in its turn, the 
 applicant being advised that the substitute specification ** has not been 
entered.  ** 

        >See 37 CFR 1.125 and MPEP # 608.01(q) for information regarding 
the  submission of a substitute specification.< 

        Under current practice, substitute specifications may be 
voluntarily  filed by the applicant if he or she desires. A >proper< 
substitute specification  will normally be accepted by the Office even if 
it has not been required by  the examiner. 

** 

        (2)   An amendment under 37 CFR 1.312, which in part is approved 
and  in other part disapproved, is entered only as to the approved part. 
See MPEP # 714.16(e). 

        (3)   In a case having all claims allowed and some formal defect 
noted,  where an amendment is presented at or near the close of the 
statutory period  curing the defect and adding one or more claims some or 
all of which are in  the opinion of the examiner not patentable, or will 
require a further search,  the amendment in such a case will be entered 
only as to the formal matter.  Applicant has no right to have new claims 
considered or entered at this point  in the prosecution. 

        (4)   In an amendment accompanying a motion granted only in part, 
the  amendment is entered only to the extent that the motion was granted. 
        NOTE. The examiner writes "Enter" in ink and his or her initials 
in  the left margin opposite the enterable portions. 


714.21      Amendments Inadvertently Entered, No Legal Effect [R-1] 

        >If the clerk inadvertently enters an amendment when it should not 
 have been entered, such entry is of no legal effect, and the same action 
is  taken as if the changes had not been actually made, inasmuch as they 
have not  been legally made. Unless such unauthorized entry is deleted, 
suitable notation  should be made on the margin of the amendatory paper, 
as "Not Officially Entered." 
        If it is to be retained in the file an amendatory paper, even 
though  not entered, should be given a paper number and listed on the file 
wrapper  with the notation "Not Entered." See 37 CFR 1.3 and MPEP 
# 714.25, for an instance of a paper which may be returned.< 


714.22      Entry of Amendments, Directions for  [R-1] 


>37 CFR 1.121.            Manner of making amendments. 

(a)   Erasures, additions, insertions, or alterations of the Office file 
of  papers and records must not be physically entered by the applicant. 
Amendments  to the application (excluding the claims) are made by filing a 
paper (which  should conform to # 1.52), directing or requesting that 
specified amendments  be made. The exact word or words to be stricken out 
or inserted by said amendment  must be specified and the precise point 
indicated where the deletion or insertion  is to be made. 

(b)   Except as otherwise provided herein, a particular claim may be 
amended  only by directions to cancel or by rewriting such claim with 
underlining below  the word or words added and brackets around the word or 
words deleted. The  rewriting of a claim in this form will be construed as 
directing the cancellation  of the original claim; however, the original 
claim number followed by the parenthetical  word "amended" must be used 
for the rewritten claim. If a previously rewritten  claim is rewritten, 
underlining and bracketing will be applied in reference  to the previously 
rewritten claim with the parenthetical expression "twice  amended," "three 
times amended," etc., following the original claim number.* 
(c)   A particular claim may be amended in the manner indicated for the 
application  in paragraph (a) of this section to the extent of corrections 
in spelling,  punctuation, and typographical errors. Additional amendments 
in this manner  will be admitted provided the changes are limited to (1) 
deletions and/or (2)  the addition of no more than five words in any one 
claim. Any amendment submitted  with instructions to amend particular 
claims but failing to conform to the  provisions of paragraphs (b) and (c) 
of this section may be considered non-responsive  and treated accordingly. 

(d)   Where underlining or brackets are intended to appear in the printed 
patent  or are properly part of the claimed material and not intended as 
symbolic of  changes in the particular claim, amendment by rewriting in 
accordance with  paragraph (b) of this section shall be prohibited. 

(e)   In reissue applications, both the descriptive portion and the claims 
 are to be amended by either (1) submitting a copy of a portion of the 
description  or an entire claim with all matter to be deleted from the 
patent being placed  between brackets and all matter to be added to the 
patent being underlined,  or (2) indicating the exact word or words to be 
stricken out or inserted and  the precise point where the deletion or 
insertion is to be made. Any word or  words to be inserted must be 
underlined. See w 1.173. 

(f) Proposed amendments presented in patents involved in reexamination 
proceedings  must be presented in the form of a full copy of the text of 
(1) each claim  which is amended and (2) each paragraph of the description 
which is amended.  Matter deleted from the patent shall be placed between 
brackets and matter  added shall be underlined. Copies of the printed 
claims from the patent may  be used with any additions being indicated by 
carets and deleted material being  placed between brackets. Claims must 
not be renumbered and the numbering of  the claims added for reexamination 
must follow the number of the highest numbered patent claim. No amendment 
may enlarge the scope  of the claims of the patent. No new matter may be 
introduced into the patent. 
        The term "brackets" set forth in 37 CFR 1.121(b) means angular 
brackets,  thus: [  ]. It does not encompass and is to be distinguished 
from parentheses 
(  ). Any amendment using parentheses to indicate canceled matter in a 
claim  rewritten under 37 CFR 1.121(b) may be held nonresponsive in 
accordance with  37 CFR 1.121(c). 

        Where, by amendment under 37 CFR 1.121(b), a dependent claim is 
rewritten  to be in independent form, the subject matter from the prior 
independent claim  should be considered to be "added" matter and should be 
underlined. 
        37 CFR 1.121(f) requires a complete copy of any new or amended 
claim  when presented during reexamination proceedings. See MPEP w 2221, w 
2250, and  w 2266. Form Paragraphs 6.33 and 6.34 may be used to inform 
applicants if the  amendments are not in proper format. 

W 6.33      Amendment to the Claims, 37 CFR 1.121 

The amendment to the claims has not been entered because it requests the 
addition  of more than 5 words in any one claim. See 
37 CFR 1.121(c) below: 

(c)   A particular claim may be amended in the examiner indicated in for 
the  application in paragraph (a) of this section to the extent of 
corrections in  spelling, punctuation, and typographical errors. 
Additional amendments in  this manner will be admitted provided the 
changes are limited to:  (1) deletions  and/or (2) the addition of no more 
than five words in any one claim.  Any amendment  submitted with 
instructions to amend particular claims but failing to conform  to the 
provisions of paragraphs (b) and (c) of this section may be considered 
nonresponsive and treated accordingly. 

The amendments to the claims should be made in accordance with 37 CFR 
1.121(b)  which states: 

(b) Except as otherwise provided herein, a particular claim may be amended 
 only by directions to cancel or by rewriting such claim with underlining 
below  the word or words added and brackets around the word or words 
deleted.  The  rewriting of a claim in this form will be construed as 
directing the cancellation  of the original claim; however, the original 
claim number followed by the parenthetical  word "amended" must be used 
for the rewritten claim. If a previously rewritten  claim is rewritten, 
underlining and bracketing will be applied in reference  to the previously 
rewritten claim with the parenthetical expression "twice  amended" "three 
times amended", etc., following the original claim number. 
Applicant is given a ONE MONTH TIME LIMIT from the date of this letter, or 
 until the expiration of the period for response set in the last Office 
action  whichever is longer, to complete the response.  NO EXTENSION OF 
THIS TIME LIMIT  MAY BE GRANTED UNDER EITHER 37CFR 1.136(a) OR (b), but 
the period for response  set in the last office action may be extended up 
to a maximum of six months. 
W 6.34      Amendment of the Claims, Brackets or Underlining Cannot Be 
Used 
The claims of this application contain underlining or brackets that are 
intended  to appear in the printed patent or are properly part of the 
claimed material.  The brackets or underlining are not intended to 
indicate amendments or changes  in the claims. Under these conditions, 
proposed amendments to the claims may  not be made by underlining words 
added or by bracketing words to be deleted.  Accordingly, the proposed 
amendment to the claims has not been entered. See  37 CFR 1.121(d). 

Applicant is given a ONE month time limit from the date this letter, or 
until  the expiration of the period for response set in the last Office 
action, whichever  is longer, to complete the response. NO EXTENSION OF 
THIS TIME LIMIT MAY BE  GRANTED UNDER EITHER 37 CFR 1.136(a) OR (b) but 
the period for response set  in the last Office action may be extended up 
to a maximum of six months.< 

714.23      Entry of Amendments, Directions for, Defective [R-1] 


        >The directions for the entry of an amendment may be defective, 
as,  inaccuracy in the line designated, or lack of precision where the 
word to which  the amendment is directed occurs more than once in the 
specified line. If it is clear from the  context what is the correct place 
of entry, the amendatory paper will be properly  amended in the examining 
group; and notation thereof, initialed in ink by the  examiner, who will 
assume full responsibility for the change, will be made  on the margin of 
the amendatory paper. In the next Office action the applicant  should be 
informed of this alteration in the amendment and the entry of the 
amendment as thus amended. The applicant will also be informed of the 
nonentry  of an amendment where defective directions and context leave 
doubt as to the  intent of applicant.< 


714.24      Amendment of Amendments [R-1] 


>37 CFR 1.124. Amendment of amendments. 

When an amendatory clause is to be amended, it should be wholly rewritten 
and  the original insertion canceled, so that no interlineations or 
deletions shall  appear in the clause as finally presented. Matter 
canceled by amendment can  be reinstated only by a subsequent amendment 
presenting the canceled matter  as a new insertion. 

        However, where a relatively small amendment to a previous 
amendment  can be made easily without causing the amendatory matter to be 
obscure or difficult  to follow, such small amendment should be entered.< 


714.25      Discourtesy of Applicant or Attorney        [R-1] 


>37 CFR 1.3.            Business to be conducted with decorum and 
courtesy. 
Applicants and their attorneys or agents are required to conduct their 
business  with the Patent and Trademark Office with decorum and courtesy. 
Papers presented  in violation of this requirement will be submitted to 
the Commissioner and  will be returned by his direct order. Complaints 
against examiners and other  employees must be made in communications 
separate from other papers. 
        All papers received in the Patent and Trademark 
Office should be briefly reviewed by the clerk, before entry, sufficiently 
 to determine whether any discourteous remarks appear therein. 

        If the attorney is discourteous in the remarks or arguments in his 
 amendment, either the discourtesy should be entirely ignored or the paper 
submitted  to the group director with a view toward its being returned. 
See MPEP # 1003,  item 3. If the group director determines that the 
remarks are in violation  of 37 CFR 1.3, the Group Director will return 
the paper.< 


715   Swearing Back of Reference-Affidavit or Declaration Under 37 CFR 
1.131   [R-2] 

37 CFR 1.131.     Affidavit or declaration of prior invention to overcome 
cited  patent or publication 

(a)(1) When any claim of an application or a patent under reexamination is 
 rejected under 35 U.S.C. ## 102(a) or (e), or 35 U.S.C. # 103 based on a 
U.S.  patent to another which is prior art under 35 U.S.C. ## 102(a) or 
(e) and which  substantially shows or describes but does not claim the 
same patentable invention,  as defined in # 1.601(n), or on reference to a 
foreign patent or to a printed  publication, the inventor of the subject 
matter of the rejected claim, the  owner of the patent under 
reexamination, or the party qualified under ## 1.42,  1.43 or 1.47, may 
submit an appropriate oath or declaration to overcome the  patent or 
publication. The oath or declaration must include facts showing a 
completion of the invention in this country or in a NAFTA or WTO member 
country  before the filing date of the application on which the *>U.S.< 
patent issued,  or before the date of the foreign patent, or before the 
date of the printed  publication. When an appropriate oath or declaration 
is made, the patent or  publication cited shall not bar the grant of a 
patent to the inventor or the  confirmation of the patentability of the 
claims of the patent, unless the date  of such patent or printed 
publication is more than one year prior to the date  on which the 
inventor's or patent owner's application was filed in this country. 
(2) A date of completion of the invention may not be established under 
this  section before December 8, 1993, in a NAFTA country, or before 
January 1, 1996,  in a WTO Member country other than a NAFTA country. 

(b) The showing of facts shall be such, in character and weight, as to 
establish  reduction to practice prior to the effective date of the 
reference, or conception  of the invention prior to the effective date of 
the reference coupled with  due diligence from prior to said date to a 
subsequent reduction to practice  or to the filing of the application. 
Original exhibits of drawings or records,  or photocopies thereof, must 
accompany and form part of the affidavit or declaration  or their absence 
satisfactorily explained. 

        37 CFR 1.131(a) has been amended to implement the relevant 
provisions  of Public Law 103-182, 107 Stat. 2057 (1993) (North American 
Free Trade Agreement  Act) and Public Law 103-465, 108 Stat. 4809 (1994) 
(Uruguay Round Agreements  Act), respectively. Under 37 CFR 1.131(a) as 
amended, which provides for the  establishment of a date of completion of 
the invention in a NAFTA or WTO member  country, as well as in the United 
States, an applicant can establish a date  of completion in a NAFTA member 
country on or after December 8, 1993, the effective date of section 331 of 
Public Law 103-182,  the North American Free Trade Agreement Act, and can 
establish a date of completion  in a WTO member country other than a NAFTA 
member country on or after January  1, 1996, the effective date of section 
531 of Public Law 103-465, the Uruguay Round Agreements Act (URAA).  Acts 
occurring prior to the effective dates of NAFTA or URAA may be relied 
upon to show completion of the invention; however, a date of completion of 
 the invention may not be established under 37 CFR 1.131 before December 
8,  1993 in a NAFTA country or before January 1, 1996 in a WTO country 
other than  a NAFTA country. 

        Any printed publication dated prior to an applicant's or patent 
owner's  effective filing date, or any domestic patent of prior filing 
date, which is  in its disclosure pertinent to the claimed invention, is 
available for use  by the examiner as a reference, either basic or 
auxiliary, in the rejection  of the claims of the application or patent 
under reexamination. 

        Such a rejection may be overcome, in certain instances noted 
below,  by filing of an affidavit or declaration under 37 CFR 1.131, known 
as "swearing  back" of the reference. 

        It should be kept in mind that it is the rejection that is 
withdrawn  and not the reference. 

SITUATIONS WHERE 37 CFR 1.131 AFFIDAVITS OR DECLARATIONS CAN BE USED 
        Affidavits or declarations under 37 CFR 1.131 may be used: 
        (1)   Where the date of the foreign patent or that of the 
publication  is less than 1 year prior to applicant's or patent owner's 
effective filing  date. 

        (2)   Where the reference, a U.S. Patent, with a patent date less 
than  one year prior to applicant's effective filing date, shows but does 
not claim the same patentable invention. See MPEP  # 715.05 for a 
discussion of "same patentable invention." 

SITUATIONS WHERE 37 CFR 1.131 AFFIDAVITS OR DECLARATIONS ARE INAPPROPRIATE 
        An affidavit or declaration under 37 CFR 1.131 is not appropriate 
in  the following situations: 

        (1)   Where the reference publication date is more than one year 
back  of applicant's or patent owner's effective filing date. Such a 
reference is  a "statutory bar" under 35 U.S.C. 102(b). 

        (2)   Where the reference U.S. patent claims the same patentable 
invention.  See MPEP # 715.05 for a discussion of "same patentable 
invention" and MPEP # 2306. 

        (3)   Where the reference is a foreign patent for the same 
invention  to applicant or patent owner or his or her legal 
representatives or assigns  issued prior to the filing date of the 
domestic application or patent on an  application filed more than 12 
months prior to the filing date of the domestic  application. See 35 
U.S.C. 102(d). 

        (4)   Where the effective filing date of applicant's or patent 
owner's  parent application or an International Convention proved filing 
date is prior  to the effective date of the reference, an affidavit or 
declaration under 37  CFR 1.131 is unnecessary because the reference is 
not used. See MPEP # 201.11  to # 201.15. 

        (5)   Where the reference is a prior U.S. patent to the same 
entity,  claiming the same invention** >. The< question involved is one of 
"double patenting." 
        (6)   Where the reference is the disclosure of a prior U.S. patent 
 to the same party, not copending** >. The< question is one of dedication 
to  the public. Note however, In re Gibbs and Griffin, 168 USPQ 578 (CCPA 
1971)  which substantially did away with the doctrine of dedication. 

        (7)   Where applicant has >clearly< admitted on the record that 
subject  matter relied on in the reference is prior art*>. In this case,< 
that subject  matter may be used as a basis for rejecting his or her 
claims and may not be  overcome by an affidavit or declaration under 37 
CFR 1.131. In re Blout, 333  F.2d 928, 142 USPQ 173 (CCPA 1964); In re 
Lopresti, 333 F.2d 932, 142 USPQ  177 (CCPA 1964); In re Garfinkel, 437 
F.2d 1000, 168 USPQ 659 (CCPA 1971);  In re Hellsund, 474 F.2d 1307, 177 
USPQ 170 (CCPA 1973). 

        (8)   Where the subject matter relied upon is prior art under 35 
U.S.C.  102(f). 

        (9)   Where the subject matter relied on in the reference is prior 
 art under 35 U.S.C. 102(g). 37 CFR 1.131 is designed to permit an 
applicant  to overcome rejections under 35 U.S.C 102(a) and (e) based on 
patents and publications  having effective filing dates less than one year 
prior to the effective filing  date but subsequent to his or her actual 
date of invention. However, when the  subject matter relied on is also 
available under 35 U.S.C. 102(g), a 37 CFR  1.131 affidavit or declaration 
cannot be used to overcome it. In re Bass, 474  F.2d 1276, 177 USPQ 178 
(CCPA 1973). This is because subject matter which is  available under 35 
U.S.C. 102(g) by definition must have been made before the  applicant made 
his invention. References under 35 U.S.C. 102(a) and (e), by  contrast, 
merely establish a presumption that their subject matter was made before 
applicant's  invention date. It is this pre-sumption which may be rebutted 
by evidence submitted  under 37 CFR 1.131. 

        (10)    Where the subject matter corresponding to a lost count in 
an  interference is either prior art under 35 U.S.C. 102(g) or barred to 
applicant by the doctrine of interference estoppel.  In re Bandel, 348 
F.2d 563, 146 USPQ 389 (CCPA 1965); In re Kroekel, 803 F.2d 705, 231 USPQ 
640 (Fed. Cir.  1986). See also In re Deckler 24 USPQ2d 1448 (Fed. Cir. 
1992) (Under the principles of res judicata and collateral  estoppel, 
applicant was not entitled to claims that were patentably 
indistinguishable  from the claim lost in interference even though the 
subject matter of the lost  count was not available for use in an 
obviousness rejection under 35 U.S.C.  103). But see In re Zletz, 893 F.2d 
319, 13 USPQ2d 1320 (Fed. Cir. 1989) (A  losing party to an interference, 
on showing that the invention now claimed  is not "substantially the same" 
as that of the lost count, may employ the procedures  of 37 CFR 1.131 to 
antedate the filing date of an interfering application).  On the matter of 
when a "lost count" in an interference constitutes prior art  under 35 
U.S.C. 102(g), see In re McKellin, 529 F.2d 1342, 188 USPQ 428 (CCPA 1976) 
(A count is not prior art under 35 U.S.C. 102(g) as to the loser of an 
interference  where the count was lost based on the winner's foreign 
priority date). Similarly,  where one party in an interference wins a 
count by establishing a date of invention  in a NAFTA or WTO member 
country (see 35 U.S.C. 104), the subject matter of  that count is 
unpatentable to the other party by the doctrine of interference estoppel, 
even though it is not available  as statutory prior art under 35 U.S.C. 
102(g) (see MPEP # 2138.01 and # 2138.02). 
REFERENCE DATE TO BE OVERCOME 

        The date to be overcome under 37 CFR 1.131 is the effective date 
of  the reference (i.e., the date on which the reference is available as 
prior  art). 

1.  U.S. Patents 

        See MPEP # 2136 through # 2136.03 for a detailed discussion of the 
 effective date of a U.S. patent as a reference. 

        Should it be established that the portion of the patent disclosure 
 relied on as the reference was introduced into the patent application by 
amendment  and as such was new matter, the date to be overcome by the 
affidavit or declaration  is the date of amendment. In re Willien, 74 F.2d 
550, 24 USPQ 210 (CCPA 1935).  The effective date of a domestic patent 
when used as a reference is not the  foreign filing date to which the 
application for patent may have been entitled  under 35 U.S.C. 119(a) 
during examination. In re Hilmer, 359 F.2d 859, 149  USPQ 480 (1966). 
Therefore, the date to be overcome under 
37 CFR 1.131 is the effective U.S. filing date, not the foreign priority 
date.  Note, however, that, when the U.S. patent reference is entitled to 
a priority  date based on an earlier filed international application 
(PCT), the effective  filing date of the reference is the international 
filing date as defined by  35 U.S.C. 363. Further, note that the effective 
date of a patent issued on  an application entitled to priority under 35 
U.S.C. 119(e) to a provisional  application filed under 35 U.S.C. 111(b) 
is the filing date of the provisional  application, except for a patent 
granted on an international application in  which applicant has fulfilled 
the requirements of paragraphs (1), (2) and (4)  of 35 U.S.C. 371. The 
effective date of a patent granted on such a 35 U.S.C.  371 application is 
the date on which the requirements of paragraphs (1), (2)  and (4) were 
fulfilled. 

2. Foreign Patents 

        See MPEP # 2126 through # 2127 regarding date of availability of 
foreign  patents as prior art. 

3. Printed Publications 

        A printed publication, including a published foreign patent 
application,  is effective as of its publication date, not its date of 
receipt by the publisher.  For additional information regarding effective 
dates of printed publications,  see MPEP # 2128 through # 2128.02. 

>FORM PARAGRAPHS< 

        Form Paragraphs 7.57 - 7.64 may be used to respond to 37 CFR 1.131 
 affidavits. 

# 7.57      Affidavit or Declaration Under 37CFR 1.131, Ineffective, 
Heading 
The [1] filed on [2] under 37 CFR 1.131 has been considered but is 
ineffective  to overcome the [3] reference. 

Examiner Note: 

1. In bracket 1, insert either  "affidavit" or  "declaration". 

2. This paragraph must be followed by one or more of paragraphs 7.58 to 
7.63  or a paragraph setting forth proper basis for the insufficiency, 
such as a  failure to establish acts performed in this country, or that 
the scope of the  declaration or affidavit is not commensurate with the 
scope of the claim(s). 
# 7.58      Affidavit or Declaration Under 37 CFR 1.131, Ineffective, 
Claiming  Same Invention 

The [1] reference is a U.S. patent that claims the rejected invention. An 
affidavit  or declaration is inappropriate under 37 CFR 1.131(a) when the 
patent is claiming  the same patentable invention, see MPEP # 2306. The 
patent can only be overcome  by establishing priority of invention through 
interference proceedings. See  MPEP Chapter 2300 for information on 
initiating interference proceedings. 
Examiner Note: 

1.      If used to respond to the submission of an affidavit or 
declaration  under 37 CFR 1.131 affidavit, this paragraph must be preceded 
by paragraph  7.57. 

2.      This paragraph may be used without paragraph 7.57 when an 
affidavit  under 37 CFR 1.131 has not yet been filed, and the examiner 
desires to notify  applicant that the submission of an affidavit under 37 
CFR 1.131 would be inappropriate. 
# 7.59      Affidavit or Declaration Under 37 CFR 1.131, Insufficient 
Evidence  of Reduction to Practice Before Reference Date 

The evidence submitted is insufficient to establish a reduction to 
practice  of the invention in this country or a NAFTA or WTO member 
country prior to  the effective date of the [1] reference. [2]. 

Examiner Note: 

1.      This paragraph must be preceded by paragraph 7.57. 

2.      An explanation of the lack of showing of the alleged reduction to 
practice  must be provided in bracket 2. 

# 7.60      Affidavit or Declaration Under 37 CFR 1.131, >Ineffective,< 
Reference  is a Statutory Bar 

The [1] reference is a statutory bar under 35 U.S.C. 102(b) and thus 
cannot  be overcome by an affidavit or declaration under 37 CFR 1.131. 

Examiner Note: 

This paragraph must be preceded by paragraph 7.57. 

# 7.61      Affidavit or Declaration Under 37 CFR 1.131, >Ineffective,< 
Insufficient  Evidence of Conception 

The evidence submitted is insufficient to establish a conception of the 
invention  prior to the effective date of the [1] reference. While 
conception is the mental  part of the inventive act, it must be capable of 
proof, such as by demonstrative  evidence or by a complete disclosure to 
another. Conception is more than a  vague idea of how to solve a problem. 
The requisite means themselves and their  interaction must also be 
comprehended. See Mergenthaler v. Scudder, 1897 C.D.  724, 81 O.G. 1417 
(D.C. Cir. 1897). [2]. 

Examiner Note: 

1. This paragraph must be preceded by paragraph 7.57. 

2. An explanation of the deficiency in the showing of conception must be 
presented  in bracket 2. 

3. If the affidavit additionally fails to establish either diligence or a 
subsequent  reduction to practice, this paragraph should be followed by 
paragraph 7.62  and/or 7.63. If either diligence or a reduction to 
practice is established,  a statement to that effect should follow this 
paragraph. 

# 7.62      Affidavit or Declaration Under 37 CFR 1.131, >Ineffective,< 
Diligence  Lacking 

The evidence submitted is insufficient to establish diligence from a date 
prior  to the date of reduction to practice of the [1] reference to either 
a constructive  reduction to practice or an actual reduction to practice. [2]. 

Examiner Note: 

1.      This paragraph must be preceded by paragraph 7.57. 

2.      If the affidavit additionally fails to establish conception, this 
paragraph  must also be preceded by paragraph 7.61. If the affidavit 
establishes conception,  a statement to that effect should be added to 
this paragraph. 

3.      If the affidavit additionally fails to establish an alleged 
reduction  to practice prior to the application filing date, this 
paragraph must be followed  by paragraph 7.63. If such an alleged 
reduction to practice is established,  a statement to that effect should 
be added to this paragraph. 

4.      An explanation of the reasons for a holding of non-diligence must 
be  provided in bracket 2. 

5.      See MPEP # 715.07(a), Ex parte Merz, 75 USPQ 296 (Bd. App. 1947), 
which  indicates that diligence is not required after reduction to 
practice. 
# 7.63      Affidavit or Declaration Under 37 CFR 1.131, >Ineffective,< 
Insufficient  Evidence of Actual Reduction To Practice 

The evidence submitted is insufficient to establish applicant's alleged 
actual  reduction to practice of the invention in this country or a NAFTA 
or WTO member  country after the effective date of the [1] reference. [2]. 

Examiner Note: 

1.      This paragraph must be preceded by paragraph 7.57. 

2.      If the alleged reduction to practice is prior to the effective 
date  of the reference, do not use this paragraph. See paragraph 7.59. 

3.      If the affidavit additionally fails to establish either conception 
 or diligence, paragraphs 7.61 and/or 7.62 should precede this paragraph. 
If  either conception or diligence is established, a statement to that 
effect should  be included after this paragraph. 

4.      An explanation of the lack of showing of the alleged reduction to 
practice  must be given in bracket 2. 

# 7.64      Affidavit or Declaration Under 37 CFR 1.131, Effective to 
Overcome  Reference 

The [1] filed on [2] under 37 CFR 1.131 is sufficient to overcome the [3] 
reference. 
Examiner Note: 

1. In bracket 1, insert either  "affidavit" or "declaration". 

2. In bracket 2, insert the filing date of the affidavit or declaration. 
3. In bracket 3, insert the name of the reference. 


715.01      37 CFR 1.131 Affidavits Versus 37 CFR 1.132 Affidavits [R-1] 

        >The purpose of a 37 CFR 1.131 affidavit or declaration is to 
overcome  a prior art rejection by proving invention of the claimed 
subject matter by  applicant prior to the effective date of the reference 
relied upon in the rejection. 
        In some situations, an applicant may, alternatively, be able to 
overcome  prior art rejections relying on references which are available 
as prior art  under 35 U.S.C. 102(a) or (e) by proving that the subject 
matter relied upon  in the reference was applicant's own invention. 

        Similarly, where the reference relied upon in a 
35 U.S.C. 103 rejection qualifies as prior art only under 35 U.S.C. 102(f) 
 or (g), applicant may be able to overcome this rejection by proving that 
the  subject matter relied upon and the claimed invention were commonly 
owned or  subject to common assignment at the time the latter invention 
was made. In  such situations, an affidavit or declaration under 37 CFR 
1.132, rather than  37 CFR 1.131, would be appropriate. See MPEP # 
715.01(a) through # 715.01(c)  for specific situations where these issues 
may arise.< 


715.01(a) Reference Is a Joint Patent to Applicant and Another [R-1] 

        >When subject matter, disclosed but not claimed in a patent issued 
 jointly to S and another, is claimed in a later application filed by S, 
the  joint patent is a valid reference unless overcome by affidavit or 
declaration  under 37 CFR 1.131 or an unequivocal declaration under 
37 CFR 1.132 by S that he/she conceived or invented the subject matter 
disclosed  in the patent and relied on in the rejection. In re DeBaun, 214 
USPQ 933 (CCPA  1982). See MPEP # 716.10 for a discussion of the use of 37 
CFR 1.132 affidavits  or declarations to overcome rejections by 
establishing that the subject matter  relied on in the patent was the 
invention of the applicant. Disclaimer by the other patentee should not be 
required but, if submitted, may be accepted  by the examiner. 

        Although affidavits or declarations submitted for the purpose of 
establishing  that the reference discloses applicant's invention are 
properly filed under  37 CFR 1.132, rather than 37 CFR 1.131, such 
affidavits submitted improperly  under 37 CFR 1.131 will be considered as 
though they were filed under 37 CFR  1.132 to traverse a ground of 
rejection. In re Facius, 408 F.2d 1396, 161 USPQ  294 (CCPA 1969).< 


715.01(b) Reference and Application Have Common Assignee [R-2] 


        The mere fact that the reference patent which shows but does not 
claim  certain subject matter and the application which claims it are 
owned by the  same assignee does not avoid the necessity of filing an 
affidavit or declaration  under 37 CFR 1.131, in the absence of a showing 
under 37 CFR 1.132 that the  patentee derived the subject matter relied on 
from the applicant (MPEP # 716.10). The common assignee does not obtain 
any rights in this regard by  virtue of common ownership which he would 
not have in the absence of common  ownership. In re Beck, **>155 F.2d 398, 
69 USPQ 520 (CCPA 1946)<;  Pierce v.  Watson, >275 F.2d 890,< 124 USPQ 356 
>(D.C. Cir. 1960)<; In re Frilette **,  412 F.2d 269, 162 USPQ 163>(CCPA 
1969)<. Where, however, a rejection is applied  under 35 U.S.C. 102(f)/103 
or 35 U.S.C. 102(g)/103 using the reference patent,  a showing that the 
invention was commonly owned at the time the later invention  was made 
would preclude such a rejection or be sufficient to overcome such  a 
rejection. 


715.01(c) Reference Is Publication of Applicant's Own Invention  [R-2] 

        Unless it is a statutory bar, a rejection based on a publication 
may  be overcome by a showing that it was published either by applicant 
himself/herself  or on his/her behalf. Since such a showing is not made to 
show a date of invention  by applicant prior to the date of the reference 
under 37 CFR 1.131, the limitation  in 35 U.S.C. 104 and in 37 CFR 
1.131(a)(1) that only acts which occurred in  this country or in a NAFTA 
or WTO member country may be relied on to establish  a date of invention 
is not applicable. Ex parte Lemieux, 115 USPQ 148, 1957  C.D. 47, 725 O.G. 
4 (Bd. App. 1957); Ex parte Powell **, 1938 C.D. 15, 489  O.G. 231 (Bd. 
App. 1938). See MPEP # 716.10 regarding 37 CFR 1.132 affidavits  submitted 
to show that the reference is a publication of applicant's own invention. 
COAUTHORSHIP 

        Where the applicant is one of the co-authors of a publication 
cited  against his or her application, he or she may overcome the 
rejection by filing  an affidavit or declaration under 37 CFR 1.131. 
Alternatively, the applicant  may overcome the rejection by filing a 
specific affidavit or declaration under  37 CFR 1.132 establishing that 
the article is describing applicant's own work.  An affidavit or 
declaration by applicant alone indicating that applicant is  the sole 
inventor and that the others were merely working under his direction  is 
sufficient to remove the publication as a reference under 35 U.S.C. 
102(a). In re Katz, 687 F.2d 450,  215 USPQ 14 (CCPA 1982). 

DERIVATION 

        When the unclaimed subject matter of a patent or other publication 
 is applicant's own invention, a rejection on that patent or publication 
may  be removed by submission of evidence establishing the fact that the 
patentee  or author derived his or her knowledge of the relevent subject 
matter from  applicant. Moreover applicant must further show that he or 
she made the invention  upon which the relevent disclosure in the patent 
or publication is based. In  re Mathews, 408 F.2d 1393, 161 USPQ 276, 56 
CCPA 1033 (CCPA 1969); In re Facius,  408 F.2d 1396, 161 USPQ 294, 56 CCPA 
1384 (CCPA 1969). 


715.02      How Much of the Claimed Invention Must Be Shown, Including the 
General Rule as to Generic Claims [R-2] 

        The 37 CFR 1.131 affidavit or declaration must establish 
possession  of either the whole invention claimed or something falling 
within the claim 
(such as a species of a claimed genus), in the sense that the claim as a 
whole  reads on it. In re Tanczyn, 146 USPQ 298 (CCPA 1965) (Where 
applicant claims  an alloy comprising both nitrogen and moybdenum, an 
affidavit showing applicant  made an alloy comprising nitrogen but not 
molybdenum is not sufficient under  37 CFR 1.131 to overcome a rejection 
under 35 U.S.C. 103 based on the combined  teachings of one reference 
disclosing an alloy comprising nitrogen but not  molybdenum and a second 
reference disclosing an alloy comprising molybdenum but not nitrogen). 
Note, however, where  the differences between the claimed invention and 
the disclosure of the reference(s)  are so small as to render the claims 
obvious over the reference(s), an affidavit  or declaration under 37 CFR 
1.131 is required to show no more than the reference  shows. In re 
Stryker, 168 USPQ 372 (CCPA 1971). In other words, where the examiner,  in 
rejecting a claim under 35 U.S.C. 103, has treated a claim limitation as 
being an obvious feature or modification of the disclosure of the 
reference(s)  relied upon, without citation of a reference which teaches 
such feature or  modification, a 37 CFR 1.131 affidavit or declaration **> 
may be sufficient<  to overcome the rejection **> even if< it does not 
show such feature or modification. 
        Further, ** a 37 CFR 1.131 affidavit is not insufficient merely 
because  it does not show the identical disclosure of the reference(s) 
relied upon.  If the affidavit contains facts showing a completion of the 
invention commensurate  with the extent >of< the invention as claimed is 
shown in the reference, the  affidavit or declaration is sufficient, 
whether or not it is a showing of the  identical disclosure of the 
reference. In re Wakefield, 
422 F.2d 897, 164 USPQ 636 (CCPA 1970). 

        Even if applicant's 37 CFR 1.131 affidavit is not fully 
commensurate  with the rejected claim, the applicant can still overcome 
the rejection by  showing that the differences between the claimed 
invention and the showing  under 37 CFR 1.131 would have been obvious to 
one of ordinary skill in the  art, in view of applicant's 37 CFR 1.131 
evidence, prior to the effective date  of the reference(s). Such evidence 
is sufficient because applicant's possession  of what is shown carries 
with it possession of variations and adaptations which  would have been 
obvious, at the same time, to one of ordinary skill in the  art. However, 
the affidavit or declaration showing must still establish possession  of 
the invention (i.e., the basic inventive concept) and not just of what one 
 reference (in a combination of applied references) happens to show, if 
that  reference does not itself teach the basic inventive concept. In re 
Spiller,  500 F.2d 1170, 182 USPQ 614 (CCPA 1974) (Claimed invention was 
use of electrostatic  forces to adhere dry starch particles to a wet paper 
web on the Fourdrinier  wire of a paper-making machine. 
37 CFR 1.131 affidavit established use of electrostatic forces to adhere 
starch  particles to wet blotting paper moved over a fluidized bed of 
starch particles  prior to the applied reference date. Affidavit was 
sufficient in view of prior  art reference showing that deposition of dry 
coatings directly on wet webs  on the Fourdrinier wire of a paper-making 
machine was well known in the art  prior to the date of the applied 
reference. The affidavit established possession  of the basic invention, 
i.e., use of electrostatic forces to adhere starch  to wet paper.). 

 SWEARING BEHIND ONE OF A PLURALITY OF COMBINED REFERENCES 

        Applicant may overcome a 35 U.S.C 103 rejection based on a 
combination  of references by showing completion of the invention by 
applicant prior to  the effective date of any of the references; applicant 
need not antedate the  reference with the earliest filing date. However, 
as discussed 
above, applicant's 37 CFR 1.131 affidavit must show possession of either 
the  whole invention as claimed or something falling within the claim(s) 
prior to  the effective date of the reference being antedated; it is not 
enough merely  to show possession of what the ref-erence happens to show 
if the reference  does not teach the basic inventive concept. 

        Where a claim has been rejected under 35 U.S.C. 103 based on 
Reference  A in view of Reference B, with the effective date of secondary 
Reference B  being earlier than that of Reference A, the applicant can 
rely on the teachings  of Reference B to show that the differences between 
what is shown in his or  her 37 CFR 1.131 affidavit or declaration and the 
claimed invention would have  been obvious to one of ordinary skill in the 
art prior to the date of Reference  A. However, the 37 CFR 1.131 affidavit 
or declaration must still establish  possession of the claimed invention, 
not just what Reference A shows, if Reference  A does not teach the basic 
inventive concept. 

GENERAL RULE AS TO GENERIC CLAIMS 

        A reference applied against generic claims may (in most cases) be 
antedated  as to such claims by an affidavit or declaration under 37 CFR 
1.131 showing  completion of the invention of only a single species, 
within the genus, prior  to the effective date of the reference (assuming, 
of course, that the reference  is not a statutory bar or a patent claiming 
the same invention).  See Ex parte  Biesecker, 144 USPQ 129 (Bd. App. 
1964). See, also, In re Fong, 288 F.2d 932,  129 USPQ 264 (CCPA 1961); In 
re Defano, 392 F.2d 280, 
157 USPQ 192 (CCPA 1968) (distinguishing chemical species of genus 
compounds  from embodiments of a single invention).  See, however, MPEP # 
715.03 for practice relative to cases in unpredictable  arts. 


715.03      Genus-Species, Practice Relative to Cases Where Predictability 
Is in Question [R-1] 

        >Where generic claims have been rejected on a reference which 
discloses  a species not antedated by the affidavit or declaration, the 
rejection will  not ordinarily be withdrawn, subject to the rules set 
forth below, unless the  applicant is able to establish that he or she was 
in possession of the generic  invention prior to the effective date of the 
reference. In other words, the  affidavit or declaration under 37 CFR 
1.131 must show as much as the minimum  disclosure required by a patent 
specification to furnish support for a generic  claim. 

REFERENCE DISCLOSES SPECIES 

Species Claim 

        Where the claim under rejection recites a species and the 
reference  discloses the claimed species, the rejection can be overcome 
under 37 CFR 1.131  directly by showing prior completion of the claimed 
species or indirectly by  a showing of prior completion of a different 
species coupled with a showing  that the claimed species would have been 
an obvious modification of the species  completed by applicant. See In re 
Spiller, 500 F.2d 1170, 
182 USPQ 614 (1974). 

Genus Claim 

        The principle is well established that the disclosure of a species 
 in a cited reference is sufficient to prevent a 
later applicant from obtaining a "generic claim." In re Gosteli, 872 F.2d 
1008,  10 USPQ2d 1614 (Fed. Cir. 1989); In re Slayter, 276 F.2d 408, 125 
USPQ 345 
(CCPA 1960). 

        Where the only pertinent disclosure in the reference is a single 
species  of the claimed genus, the applicant can overcome the rejection 
directly under  37 CFR 1.131 by showing prior possession of the species 
disclosed in the reference.  On the other hand, a reference which 
discloses several species of a claimed  genus can be overcome directly 
under 37 CFR 1.131 only by a showing that the  applicant completed, prior 
to the date of the refer- ence, all of the species  shown in the 
reference. In re 
tempel, 113 USPQ 77 (CCPA 1957). 

        Proof of prior completion of a species different from the 
reference  species will be sufficient to overcome a reference indirectly 
under 37 CFR  1.131 if the reference species would have been obvious in 
view of the species  shown to have been made by the applicant. In re 
Clarke, 148 USPQ 665 (CCPA  1966); In re Plumb, 176 USPQ 323 (CCPA 1973); 
In re Hostettler, 356 F.2d 562,  148 USPQ 514 (CCPA 1966). Alternatively, 
if the applicant cannot show possession  of the reference species in this 
manner, the applicant may be able to antedate  the reference indirectly 
by, for example, showing prior completion of one or  more species which 
put him or her in possession of the claimed genus prior  to the reference 
date. The test is whether the species completed by applicant prior to the 
reference date provided  an adequate basis for inferringthat the invention 
has generic applicability.  In re Shokal, 242 F.2d 771, 113 USPQ 283 (CCPA 
1957); In re Rainer, 390 F.2d  771, 156 USPQ 334 (CCPA 1968); In re 
Clarke, 148 USPQ 665 (CCPA 1966); In re  Plumb, 176 USPQ 323 (CCPA 1973). 

        It is not necessary for the affidavit evidence to show that the 
applicant  viewed his or her invention as encompassing more than the 
species ** actually  made. The test is whether the facts set out in the 
affidavit are such as would  persuade one skilled in the art that the 
applicant possessed so much of the  invention as is shown in the 
reference. In re Schaub, 537 F.2d 509, 190 USPQ 324 (CCPA 1976). 

Species Versus Embodiments 

        References which disclose one or more embodiments of a single 
claimed  invention, as opposed to species of a claimed genus, can be 
overcome by filing  a 37 CFR 1.131 affidavit showing prior completion of a 
single embodiment of  the invention, whether it is the same or a different 
embodiment from that disclosed  in the reference. See In re Fong, 288 F.2d 
932, 129 USPQ 264 (CCPA 1961) (Where  applicant discloses and claims a 
washing solution comprising a detergent and  polyvinylpyrrolidone (PVP), 
with no criticality alleged as to the particular  detergent used, the PVP 
being used as a soil-suspending agent to prevent the  redeposition of the 
soil removed, the invention was viewed as the use of PVP  as a 
soil-suspending agent in washing with a detergent. The disclosure in the 
reference of the use of PVP with two detergents, both of which differed 
from  that shown in applicant's 37 CFR 1.131 affidavit, was considered a 
disclosure of different embodiments of a single invention, rather than 
species  of a claimed genus); In re Defano, 
392 F.2d 280, 157 USPQ 192 (CCPA 1968). 

REFERENCE DISCLOSES CLAIMED GENUS 

        In general, where the reference discloses the claimed genus, a 
showing  of completion of a single species within the genus is sufficient 
to antedate  the reference under 37 CFR 1.131. Ex parte Biesecker, 144 
USPQ 129 (Bd. App. 1964). 
        In cases where predictability is in question, on the other hand, a 
 showing of prior completion of one or a few species within the disclosed 
genus  is generally not sufficient to overcome the reference. In re 
Shokal, 242 F.2d  771, 113 USPQ 283 (CCPA 1957). The test is whether the 
species completed by  applicant prior to the reference date provided an 
adequate basis for inferring  that the invention has generic 
applicability. In re Clarke, 356 F.2d 987, 148  USPQ 665 (CCPA 1965); In 
re Rainer, 390 F.2d 771, 156 USPQ 334 (CCPA 1968);  In re DeFano, 392 F.2d 
280, 157 USPQ 192 (CCPA 1968); In re Mantell, 454 F.2d  1398, 172 USPQ 530 
(CCPA 1973). In the case of a small genus such as the halogens,  which 
consists of four species, a reduction to practice of three, or perhaps 
even two, species might show possession of the generic invention, while in 
 the case of a genus comprising hundreds of species, reduction to practice 
of  a considerably larger number of species would be necessary. In re 
Shokal, supra. 

        It is not necessary for the affidavit evidence to show that the 
applicant  viewed his or her invention as encompassing more than the 
species he or she  actually made. The test is whether the facts set out in 
the affidavit are such  as would persuade one skilled in the art that the 
applicant possessed so much  of the invention as is shown in the 
reference. In re Schaub, 537 F. 509, 190  USPQ 324 (CCPA 1976). 


715.04      Who May Make Affidavit or Declaration; Formal Requirements of 
Affidavits and Declarations [R-1] 

>WHO MAY MAKE AFFIDAVIT OR DECLARATION 

        (A)   All the inventors of the subject matter claimed. 

        (B)   An affidavit or declaration by less than all named inventors 
 of an application is accepted where it is shown that less than all named 
inventors  of an application invented the subject matter of the claim or 
claims under  rejection. For example, one of two joint inventors is 
accepted where it is  shown that one of the joint inventors is the sole 
inventor of the claim or  claims under rejection. 

        (C)   The assignee or other party in interest when it is not 
possible  to produce the affidavit or declaration of the inventor. Ex 
parte Foster, 1903  C.D. 213, 105 O.G. 261 (Comm'r Pat. 1903). 

        Affidavits or declarations to overcome a rejection of a claim or 
claims  on a cited patent or publication must be made by the inventor or 
inventors  of the subject matter of the rejected claim(s) or the assignee 
or other party  in interest when it is not possible to produce the 
affidavit or declaration of  the inventor(s). Thus, where all of the named 
inventors of a pending application  are not inventors of every claim of 
the application, any affidavit under 37  CFR 1.131 could be signed by only 
the inventor(s) of the subject matter of  the rejected claims. Further, 
where it is shown that a joint inventor is deceased,  refuses to sign, or 
is otherwise unavailable, the signatures of the remaining  joint inventors 
are sufficient. However, the affidavit or declaration, even  though signed 
by fewer than all the joint inventors, must show completion of  the 
invention by all of the joint inventors of the subject matter of the 
claim(s)  under rejection. In re Carlson, 79 F.2d 900, 27 USPQ 400 (CCPA 
1935). 
FORMAL REQUIREMENTS OF AFFIDAVITS AND DECLARATIONS 

        An affidavit is a statement in writing made under oath before a 
notary  public, magistrate, or officer authorized to administer oaths. See 
MPEP # 604  through # 604.06 for additional information regarding formal 
requirements of affidavits. 
        37 CFR 1.68 permits a declaration to be used instead of an 
affidavit.  The declaration must include an acknowledgment by the 
declarant that willful  false statements and the like are punishable by 
fine or imprisonment, or both 
(18 U.S.C. 1001) and may jeopardize the validity of the application or any 
 patent issuing thereon. The declarant must set forth in the body of the 
declaration  that all statements made of the declarant's own knowledge are 
true and that  all statements made on information and belief are believed 
to be true.< 

715.05      Patent Claiming Same Invention  [R-1] 


        >When the reference in question is a noncommonly owned patent 
claiming  the same invention as applicant and its issue date is less than 
one year prior  to the filing date of the application being examined, 
applicant's remedy, if  any, must be by way of 37 CFR 1.608 instead of 
37 CFR 1.131. The examiner should therefore take note whether the status 
of  the patent as a reference is that of a PATENT or a PUBLICATION. If the 
patent  is claiming the same invention as the application, this fact 
should be noted  in the Office action. The reference patent can then be 
overcome only by way  of interference. Note, however, 35 U.S.C. 135 and 
MPEP # 2300.01. 

        Where the reference patent and the application at 
issue are commonly owned and are claiming the same 
invention, an affidavit or declaration under 37 CFR 1.131 may be used to 
overcome  a rejection under 
35 U.S.C. 102 or 103 only if a petition under 37 CFR 1.183 has been 
granted. 
        A 37 CFR 1.131 affidavit is ineffective to overcome a United 
States  patent, not only where there is a verbatim correspondence between 
claims of  the application and of the patent, but also where there is no 
patentable distinction  between the respective claims. In re Hidy, 
303 F.2d 954, 133 USPQ 650 (CCPA 1962); In re Wagenhorst, 20 CCPA 829, 62 
F.2d  831, 16 USPQ 126 (CCPA 1933); In re Teague, 254 F.2d 145, 117 USPQ 
284 (CCPA  1958); In re Clark, 457 F.2d 1004, 173 USPQ 359 (CCPA 1972); In 
re Ward, 236  F.2d 428, 111 USPQ 101 (CCPA 1956). 

        If the application (or patent under reexamination) and the 
domestic  patent contain claims which are identical, or which are not 
patentably distinct,  then the application and patent are claiming the 
"same patentable invention,"  defined by 37 CFR 1.601(n) as follows: 

        Invention "A" is the "same patentable invention" as an invention 
"B"  when invention "A" is the same as 
(35 U.S.C. 102) or is obvious (35 U.S.C. 103) in view of invention "B" 
assuming  invention "B" is prior art with respect to invention "A." 

        As provided in 37 CFR 1.601(i), an interference may be declared 
whenever  an examiner is of the opinion that an application and a patent 
contain claims  for the "same patentable invention." An applicant who is 
claiming an invention  which is identical to, or obvious in view of, the 
invention as claimed in a  domestic patent cannot employ an affidavit 
under 37 CFR 1.131 as a means for  avoiding an interference with the 
patent. To allow an applicant to do so would  result in the issuance of 
two patents to the same invention. 

        Since 37 CFR 1.131 defines "same patentable invention" in the same 
 way as the interference rules (37 CFR 1.601(n), the PTO cannot prevent an 
applicant  from overcoming a reference by a 37 CFR 1.131 affidavit or 
declaration on the  grounds that the reference domestic patent claims 
applicant's invention and,  at the same time, deny applicant an 
interference on the grounds that the claims  of the application and those 
of the reference patent are not for substantially  the same invention. See 
In re Eickmeyer, 602 F.2d 974, 202 USPQ 655 (CCPA 1979). Where, in denying 
an applicant's motion in interference to substitute  a broader count, it 
is held that the limitation to be deleted was material  for the opponent 
patentee, this constitutes a holding that the proposed count  is for an 
invention which is not the "same patentable invention" claimed by  the 
patentee. Therefore, the applicant may file an affidavit or declaration 
under 37 CFR 1.131 to overcome a prior art rejection based on the patent. 
Adler v.  Kluver, 159 USPQ 511 (Bd. Pat. Int. 1968). 

        Form paragraph 7.58 (reproduced in MPEP # 715) may be used to note 
 such a situation in the Office 
action.< 


715.07      Facts and Documentary Evidence [R-2] 


GENERAL REQUIREMENTS 

        The essential thing to be shown under 37 CFR 1.131 is priority of 
invention  and this may be done by any satisfactory evidence of the fact. 
FACTS, not conclusions,  must be alleged **>.  Evidence<   in the form of 
exhibits *> may accompany<  the affidavit or declaration. Each exhibit 
relied upon should be specifically  referred to in the affidavit or 
declaration, in terms of what it is relied  upon to show. For example, the 
allegations of fact might be supported by submitting  as evidence one or 
more of the following: 

        (1)   attached sketches; 

        (2)   attached blueprints; 

        (3)   attached photographs; 

        (4)   attached reproductions of notebook entries; 

        (5)   an accompanying model; 

        (6)   attached supporting statements by witnesses, where verbal 
disclosures  are the evidence relied upon, Ex parte Ovshinsky, 10 USPQ2d 
1075 (Bd. Pat.  App. & Inter. 1989). 

        (7)   testimony given in an interference. Where interference 
testimony  is used, the applicant must point out which parts of the 
testimony are being  relied on; examiners cannot be expected to search the 
entire interference record  for the evidence. Ex parte Homan, 1905 C.D. 
288 (Comm'r Pat. 1905). 
        (8)   Disclosure documents (MPEP # 1706) may be used as 
documentary  evidence of conception. 

        A general allegation that the invention was completed prior to the 
 date of the reference is not sufficient. Ex parte Saunders, 1883 C.D. 23, 
23  O.G. 1224 (Comm'r Pat. 1883). Similarly, a declaration by the inventor 
to the  effect that his or her invention was conceived or reduced to 
practice prior  to the reference date without a statement of facts 
demonstrating the correctness  of this conclusion, is insufficient to 
satisfy 37 CFR 1.131. 

        ** 37 CFR 1.131(b) requires that original exhibits of drawings or 
records,  or photocopies thereof, accompany and form part of the affidavit 
or declaration  or their absence satisfactorily explained. 

        If the applicant made sketches he should so state, and produce and 
 describe them; if the sketches were made and lost, and their contents 
remembered,  they should be reproduced and furnished in place of the 
originals. The same  course should be pursued if the disclosure was by 
means of models. If neither  sketches nor models are relied upon, but it 
is claimed that verbal disclosures,  sufficiently clear to indicate 
definite conception of the invention, were made  the witness should state 
as nearly as possible the language used in imparting  knowledge of the 
invention to others. 

Ex parte Donovan, 1890 C.D. 109, 52 O.G. 309 (Comm'r Pat. 1890). 

        However, when reviewing a 37 CFR 1.131 affidavit or declaration, 
the  examiner must consider all of the evidence presented in its entirety, 
including  the affidavits or declarations and all accompanying exhibits, 
records and "notes."  An accompanying exhibit need not support all claimed 
limitations, provided  that any missing limitation is supported by the 
declaration itself. Ex parte  Ovshinsky, 10 USPQ2d 1075 (Bd. Pat. App. & 
Inter. 1989). 

        The affidavit or declaration and exhibits must clearly explain 
which  facts or data applicant is relying on to show completion of his or 
her invention  prior to the particular date. Vague and general statements 
in broad terms about  what the exhibits describe along with a general 
assertion that the exhibits  describe a reduction to practice "amounts 
essentially to mere pleading, unsupported  by proof or a showing of facts" 
and, thus, does not satisfy the requirements of 37 CFR 1.131(b). In re 
Borkowski, 505 F.2d 713, 184 USPQ  29 (CCPA 1974).  >Applicant must give a 
clear explanation of the exhibits pointing  out exactly what facts are 
established and relied on by applicant.  Id. at  33; see also In re Harry, 
333 F.2d 920, 142 USPQ 164 (CCPA 1964)  (Affidavit  "asserts that facts 
exist but does not tell what they are or when they occurred.").< 
ESTABLISHMENT OF DATES 

        If the dates of the exhibits have been removed or blocked off, the 
 matter of dates can be taken care of in the body of the oath or 
declaration. 
        When alleging that conception or a reduction to practice occurred 
prior  to the effective date of the reference, the dates in the oath or 
declaration  may be the actual dates or, if the applicant or patent owner 
does not desire  to disclose his or her actual dates, he or she may merely 
allege that the acts  referred to occurred prior to a specified date. 
However, the actual dates of  acts relied on to establish diligence must 
be provided. See MPEP 
# 715.07(a) regarding the diligence requirement. 

THREE WAYS TO SHOW PRIOR INVENTION 

        The affidavit or declaration must state FACTS and produce such 
documentary  evidence and exhibits in support thereof as are available to 
show conception  and completion of invention in this country or in a NAFTA 
or WTO member country 
(MPEP # 715.07(c)), at least the conception being at a date prior to the 
effective  date of the reference. Where there has not been reduction to 
practice prior  to the date of the reference, the applicant or patent 
owner must also show  diligence in the completion of his or her invention 
from a time just prior  to the date of the reference continuously up to 
the date of an actual reduction  to practice or up to the date of filing his 
or her application (filing constitutes a constructive reduction to 
practice,  37 CFR 1.131). 

        As discussed above, 37 CFR 1.131(b) provides three ways in which 
an  applicant can establish prior invention of the claimed subject matter. 
The  showing of facts must be sufficient to show: 

        (1)   reduction to practice of the invention prior to the 
effective  date of the reference; or 

        (2)   conception of the invention prior to the effective date of 
the  reference coupled with due diligence from prior to the reference date 
to a  subsequent (actual) reduction to practice; or 

        (3)   conception of the invention prior to the effective date of 
the  reference coupled with due diligence from prior to the reference date 
to the  filing date of the application (constructive reduction to 
practice). 
        A conception of an invention, though evidenced by disclosure, 
drawings,  and even a model, is not a complete invention under the patent 
laws, and confers  no rights on an inventor, and has no effect on a 
subsequently granted patent  to another, UNLESS THE INVENTOR FOLLOWS IT 
WITH REASONABLE DILIGENCE BY SOME  OTHER ACT, such as an actual reduction 
to practice or filing an application  for a patent. Automatic Weighing 
Mach. Co. v. Pneumatic Scale Corp., Limited,  166 F.2d 288, 1909 C.D. 498, 
139 O.G. 991 (1st Cir. 1909). 

        Conception is the mental part of the inventive act, but it must be 
 capable of proof, as by drawings, complete disclosure to another person, 
etc.  In Mergenthaler v. Scudder, 1897 C.D. 724, 81 O.G. 1417 (D.C. Cir. 
1897), it  was established that conception is more than a mere vague idea 
of how to solve  a problem; the means themselves and their interaction 
must be comprehended  also. 

        In general, proof of actual reduction to practice requires a 
showing  that the apparatus actually existed and worked for its intended 
purpose. However,  "there are some devices so simple that a mere 
construction of them is all that  is necessary to constitute reduction to 
practice." In re Asahi/America Inc.,  94-1249 (Fed. Cir. 1995) (Citing 
Newkirk v. Lulegian, 825 F.2d 1581, 3USPQ2d  1793 (Fed. Cir. 1987) and 
Sachs v. Wadsworth, 48 F.2d 928, 929, 9 USPQ 252,  253 (CCPA 1931). The 
claimed restraint coupling held to be so simple a device  that mere 
construction of it was sufficient to constitute reduction to practice. 
Photographs, coupled with articles and a technical report describing the 
coupling  in detail were sufficient to show reduction to practice.). 

        The facts to be established under 37 CFR 1.131 are similar to 
those  to be proved in interference. The difference lies in the way in 
which the evidence  is presented. If applicant disagrees with a holding 
that the facts are in sufficient  to overcome the rejection, his remedy is 
by appeal from the continued rejection. 
        See MPEP # 2138.04 through # 2138.06 for a detailed discussion of 
the  concepts of conception, reasonable diligence, and reduction to 
practice. 
        For the most part, the terms "conception," "reasonable diligence," 
 and "reduction to practice" have the same meanings under 37 CFR 1.131 as 
they  have in interference proceedings. However, in In re Eickmeyer, 
602 F.2d 974, 202 USPQ 655 (CCPA 1979), the court stated the following: 
The purpose of filing a [37 CFR 1.]131 affidavit is not to demonstrate 
prior  invention, per se, but merely to antedate the effective date of a 
ref- erence.  See In re Moore, 58 CCPA 1340, 444 F.2d 572, 170 USPQ 260 
(1971). Although  the test for sufficiency of an affidavit under Rule 
131(b) parallels that for  determining priority of invention in an 
interference under 35 U.S.C. 102(g),  it does not necessarily follow that 
Rule 131 practice is controlled by interference  law. To the contrary, 
"[t]he parallel to interference practice found in Rule  131(b) should be 
recognized as one of convenience rather than necessity." Id.  at 1353, 444 
F.2d at 580, 170 USPQ at 267. Thus, "the `conception' and `reduction  to 
practice' which must be established under the rule need not be the same 
as what is required in the `interference' sense of those terms." Id.; 
accord,  In re Borkowski, 505 F.2d 713, 718-19, 184 USPQ 29, 33 (CCPA 
1974). 
        One difference is that in interference practice a reduction to 
practice  requires a proof that a utility was known, whereas under 37 CFR 
1.131 practice,  proof of a utility must be shown only if the reference 
discloses a utility.  In re Wilkinson, 304 F.2d 673, 134 USPQ 
171 (CCPA 1962); In re Moore, 444 F.2d 572, 170 USPQ 260 (CCPA 1971). 
Where  proof of utility is required, whether or not test results are 
required to establish  the utility of the subject matter in question 
depends on the facts of each  case. The ultimate issue is whether the 
evidence is such that one of ordinary  skill in the art would be satisfied 
to a reasonable certainty that the subject matter necessary to antedate 
the reference possessed the alleged utility. In re Blake, 358 F.2d 149 
USPQ  217 (CCPA 1966). Also, in interference practice, conception, 
reasonable diligence,  and reduction to practice require corroboration, 
whereas averments made in  a 37 CFR 1.131 affidavit or declaration do not 
require corroboration; an applicant  may stand on his own affidavit or 
declaration if he so elects. Ex parte Hook,  102 USPQ 130 (Bd. App. 1953). 

        Form Paragraph 7.59 or 7.63 (both reproduced in MPEP # 715) may be 
 used where insufficient evidence is included in a 37 CFR 1.131 affidavit. 

715.07(a) Diligence [R-1] 


        >Where conception occurs prior to the date of the reference, but 
reduction  to practice is afterward, it is not enough merely to allege 
that applicant  or patent owner had been diligent. Ex parte Hunter, 1889 
C.D. 218, 49 O.G. 733 (Comm'r Pat. 1889). Rather, applicant must show 
evidence of facts  establishing diligence. 

        In determining the sufficiency of a 37 CFR 1.131 affidavit or 
declaration,  diligence need not be considered unless conception of the 
invention prior to  the effective date is clearly established, since 
diligence comes into question  only after prior conception is established. 
Ex parte Kantor, 177 USPQ 455 (Bd. App. 1958). 

        What is meant by diligence is brought out in Christie v. Seybold, 
1893  C.D. 515, 64 O.G. 1650 (6th Cir. 1893). In patent law, an inventor 
is either  diligent at a given time or he is not diligent; there are no 
degrees of diligence.  An applicant may be diligent within the meaning of 
the patent law when he or  she is doing nothing, if his or her lack of 
activity is excused. Note, however,  that the record must set forth an 
explanation or excuse for the inactivity;  the PTO or courts will not 
speculate on possible explanations for delay or  inactivity. See In re 
Nelson, 420 F.2d 1079, 164 USPQ 458 (CCPA 1970). Diligence must be judged 
on the basis  of the particular facts in each case. See MPEP # 2138.06 for 
a detailed discussion  of the diligence requirement for proving prior 
invention. 

        Under 37 CFR 1.131, the critical period in which diligence must be 
 shown begins just prior to the effective date of the reference and ends 
with  the date of a reduction to practice, either actual or constructive 
(i.e., filing  a United States patent application). Note, therefore, that 
only diligence before  reduction to practice is a material consideration. 
The "lapse of time between  the completion or reduction to practice of an 
invention and the filing of an  application thereon" is not relevent to an 
affidavit or declaration under 37  CFR 1.131. See Ex parte Merz, 75 USPQ 
296 (Bd. App. 1947). 

        Form Paragraph 7.62 (reproduced in MPEP # 715) may be used to 
respond  to a 37 CFR 1.131 affidavit where diligence is lacking.< 


715.07(b) Interference Testimony Sometimes Used [R-1] 


        >In place of an affidavit or declaration the testimony of the 
applicant  in an interference may be sometimes used to antedate a 
reference in lieu of 37 CFR 1.131 affidavit or declaration. 
        The part of the testimony to form the basis of priority over the 
reference  should be pointed out. Ex parte Bowyer, 1939 C.D. 5, 42 USPQ 
526 (Comm'r Pat.  1939).< 


715.07(c) Acts Relied Upon Must Have Been Carried Out in This Country or a 
NAFTA or WTO Member Country [R-1] 

>35 U.S.C. 104.       Invention Made Abroad 

In proceedings before the Patent and Trademark Office and in the courts, 
an  applicant for a patent, or a patentee, may not establish a date of 
invention  by reference to knowledge or use thereof, or other activity 
with respect thereto,  in a foreign country other than a NAFTA country or 
a WTO member country, except  as provided in sections 119 and 365 of this 
title. Where an invention was made  by a person, civil or military, while 
domiciled in the United States and serving  in a foreign country in 
connection with operations by or on behalf of the United  States, he shall 
be entitled to the same rights of priority with respect to  such invention 
as if the same had been made in the United States. 

        The 37 CFR 1.131 affidavit or declaration must contain an 
allegation  that the acts relied upon to establish the date prior to the 
reference were  carried out in this country or in a NAFTA country or WTO 
member country. See  35 U.S.C. 104. 

        Under 37 CFR 1.131(a), which provides for the establishment of a 
date  of completion of the invention in a NAFTA or WTO member country, as 
well as  in the United States, an applicant can establish a date of 
completion in a  NAFTA member country on or after 
December 8, 1993, the effective date of section 331 of Public Law 103-182, 
 the North American Free Trade Agreement Act, and can establish a date of 
completion  in a WTO member country other than a NAFTA mem- 

ber country on or after January 1, 1996, the effective date 
of section 531 of Public Law 103-465, the Uruguay Round Agreements Act. 
Acts  occurring prior to the effective dates of NAFTA or URAA may be 
relied upon  to show completion of the invention; however, a date of 
completion of the invention  may not be established under 37 CFR 1.131 
before December 8, 1993 in a NAFTA  country or before January 1, 1996 in a 
WTO country other than a NAFTA country.< 


715.07(d) Disposition of Exhibits [R-1] 


        >Exhibits, such as those filed as part of an affidavit or 
declaration  under 37 CFR 1.131, that are too bulky to be placed in the 
application file  are retained in the examining group until the case is 
finally disposed of.  When the case goes to issue (or abandonment) the 
exhibits are returned or otherwise  disposed of. See MPEP # 608.03(a).< 


715.08      Passed Upon by Primary Examiner [R-1] 


        >The question of sufficiency of affidavits or declarations under 
37  CFR 1.131 should be reviewed and decided by a primary examiner. 

        Review of questions of formal sufficiency and propriety are by 
petition.  Such petitions are answered by the Group Directors (MPEP # 
1002.02(c), item  4(e)). 

        Review on the merits of 37 CFR 1.131 affidavit or declaration is 
by  appeal to the Board of Patent Appeals and Interferences.< 


715.09      Seasonable Presentation [R-1] 


        >Affidavits or declarations under 37 CFR 1.131 must be timely 
presented  in order to be admitted. Affidavits and declarations submitted 
under 37 CFR  1.131 and other evidence traversing rejections are 
considered timely if: 
        (a)   submitted prior to a final rejection, 

        (b)   submitted before appeal in an application not having a final 
 rejection, or 

        (c)   submitted after final rejection and submitted 

        (i)   with a first response after final rejection for the purpose 
of  overcoming a new ground of rejection or requirement made in the final 
rejection,  or 

        (ii)    with a satisfactory showing under 37 CFR 1.116(b) or 37 
CFR  1.195, or 

        (iii)     under 37 CFR 1.129(a). 

        All admitted affidavits and declarations are acknowledged and 
commented  upon by the examiner in his or her next succeeding action. 

        For affidavits or declarations under 37 CFR 1.131 filed after 
appeal,  see 37 CFR 1.195 and MPEP # 1212. 

        Review of an examiner's refusal to enter an affidavit as untimely 
is  by petition and not by appeal to the Board 

of Appeals. In re Deters, 515 F.2d 1152, 185 USPQ 644 (CCPA 1975); Ex 
parte  Hale, 49 USPQ 209 (Bd. App. 1941). See MPEP # 715.08 regarding 
review of questions  of propriety of 37 CFR 1.131 affidavits and declarations. 
< 


715.10      Review of Affidavit or Declaration for Evidence of Prior 
Public Use or Sale or Failure to DiscloseBest Mode [R-1] 

        >Any affidavits or declarations submitted under 
37 CFR 1.131 and the accompanying evidence must be reviewed carefully by 
the  examiner in order to determine whether they show that the claimed 
invention  was "in public use" or "on sale" in this country more than one 
year prior to  the effective filing date of the application, which acts 
constitute a statutory  bar under 35 U.S.C. 102(b). Although the rejection 
based on the reference(s)  sought to be antedated may actually be overcome 
by such an affidavit or declaration,  the effect of the applicant's prior 
"public use" or "on sale" activities may  not be overcome under 37 CFR 
1.131. See MPEP # 2133.03 regarding rejections  based on "public use" and 
"on sale" statutory bars. 

        Where the 37 CFR 1.131 evidence relies on an embodiment of the 
invention  not disclosed in the application, the question of whether the 
application includes  the "best mode" must be considered. However, a "best 
mode" rejection should  not be made unless the record, taken as a whole, 
establishes by a preponderance  of the evidence that applicant's 
specification has not set forth the best mode  contemplated by the 
inventor of carrying out the invention. See MPEP # 2165  - # 2165.04 
regarding the best mode requirement of the first paragraph of 35  U.S.C. 112.< 


716   Affidavits or Declarations Traversing  Rejections, 37 CFR 1.132 
[R-1] 

>37 CFR 1.132.      Affidavits or declarations traversing grounds of 
rejection. 
When any claim of an application or a patent under reexamination is 
rejected  on reference to a domestic patent which substantially shows or 
describes but  does not claim the invention, or on reference to a foreign 
patent, or to a  printed publication, or to facts within the personal 
knowledge of an employee  of the Office, or when rejected upon a mode or 
capability of operation attributed  to a reference, or because the alleged 
invention is held to be inoperative  or lacking in utility, or frivolous 
or injurious to public health or morals,  affidavits or declarations 
traversing these references or objections may be  received. 

        It is the responsibility of the primary examiner to personally 
review  and decide whether affidavits or declarations submitted under 37 
CFR 1.132  for the purpose of traversing grounds of rejection, are 
responsive to the rejection  and present sufficient facts to overcome the 
rejection. 

        This rule sets forth the general policy of the Office consistently 
 followed for a long period of time of receiving affidavit evidence 
traversing  rejections or objections. The enumeration of rejections in the 
rule is merely  exemplary. All affidavits or declarations presented which 
do not fall within  or under other specific rules are to be treated or 
considered as falling under  this rule. 

        Form Paragraph 7.65 or 7.66 should be used to comment on a 37 CFR 
1.132  affidavit or declaration. 

# 7.65        Affidavit or Declaration Under 37 CFR 1.132, Effective To 
Withdraw  Rejection 

The [1] under 37 CFR 1.132 filed [2] is sufficient to overcome the 
rejection  of claim [3] based upon [4]. 

Examiner Note: 

1. In bracket 1, insert either  "affidavit" or  "declaration". 

2. In bracket 2, insert the filing date of the affidavit or declaration. 
3. In bracket 3, insert the affected claim or claims. 

4. In bracket 4, indicate the rejection that has been overcome, including 
the  statutory grounds; i.e., insufficiency of disclosure under 35 U.S.C. 
112, first  paragraph; lack of utility under 35 U.S.C. 101, 
inoperativeness under 35 U.S.C.  101; a specific reference applied under 
35 U.S.C. 103, etc. See MPEP # 716. 
# 7.66      Affidavit or Declaration Under 37 CFR 1.132, Insufficient 
The [1] under 37 CFR 1.132 filed [2] is insufficient to overcome the 
rejection  of claim[3] based upon [4] as set forth in the last Office 
action because [5]. 
Examiner Note: 

1. In bracket 1, insert either  "affidavit" or  "declaration". 

2. In bracket 2, insert the filing date of the affidavit or declaration. 
3. In bracket 3, insert the claim or claims affected. 

4. In bracket 4, indicate the rejection that has been overcome, including 
the  statutory grounds; i.e., insufficiency of disclosure under 35 U.S.C. 
112, first  paragraph, lack of utility under 35 U.S.C. 101, 
inoperativeness under 35 U.S.C.  101, a specific reference applied under 
35 U.S.C. 103, etc. See MPEP # 716. 
5. In bracket 5, set forth the reasons for the insufficiency; e.g., 
categories  include: "untimely", "fails to set forth facts", "facts 
presented are not germane  to the rejection at issue", "showing is not 
commensurate in scope with the  claims", etc. See MPEP # 716. Also include 
a detailed explanation of the reasons  why the affidavit or declaration is 
insufficient.< 


716.01      Generally Applicable Criteria [R-2] 


        The following criteria are applicable to all evidence traversing 
rejections  submitted by applicants, including affidavits or declarations 
submitted under  37 CFR 1.132: 

(1)   Timeliness 

        Evidence traversing rejections must be timely or seasonably filed 
to  be entered and entitled to consideration. In re Rothermel **, 276 F.2d 
393,  125 USPQ 328 (CCPA 1960). 

        Affidavits and declarations submitted under 37 CFR 1.132 and other 
 evidence traversing rejections are considered timely if: 

        (a)   submitted prior to a final rejection, 

        (b)   submitted before appeal in an application not having a final 
 rejection, or 

        (c)   submitted after final rejection and submitted 

        (i)   with a first response after final rejection for the purpose 
of  overcoming a new ground of rejection or requirement made in the final 
rejection,  or 

        (ii)    with a satisfactory showing under 37 CFR 1.116(b) or 37 
CFR  1.195, or 

        (iii)  under 37 CFR 1.129(a). 

(2) Consideration of Evidence 

        Evidence traversing rejections must be considered by the examiner 
whenever  present. All entered affidavits, declarations, and >other< 
evidence traversing  rejections are acknowledged and commented upon by the 
examiner in the next  succeeding action. The extent of the commentary 
depends on the action taken  by the examiner. Where an examiner holds that 
the evidence is sufficient to  overcome the prima facie case, the comments 
should be consistent with the guidelines  for statements of reasons for 
allowance. See MPEP # 1302.14. Where the evidence  is insufficient to 
overcome the rejection, the examiner must specifically explain  why the 
evidence is insufficient. General statements such as "the declaration 
lacks technical validity" or "the evidence is not commensurate with the 
scope  of the claims" without an explanation supporting such findings are 
insufficient. 

716.01(a) Objective Evidence of Nonobviousness [R-2] 


OBJECTIVE EVIDENCE MUST BE CONSIDERED WHENEVER PRESENT 

        Affidavits or declarations *>containing< evidence of criticality 
or  unexpected results, commercial success, long-felt but unsolved needs, 
failure  of others, skepticism of experts, etc., must be considered by the 
examiner  in determining the issue of obviousness of claims for 
patentability under 35  U.S.C. 103. The Court of Appeals for the Federal 
Circuit stated in Stratoflex,  Inc. v. Aeroquip Corp., 713 F.2d 1530, 218 
USPQ 871, 879 (Fed. Cir. 1983) that  "evidence rising out of the so-called 
`secondary considerations' must always  when present be considered en 
route to a determination of obviousness." Such  evidence might ** give 
light to circumstances surrounding the origin of the  subject matter 
sought to be patented. As indicia of obviousness or unobviousness,  such 
evidence may have relevancy. Graham v. John Deere Co., 383 U.S. 1, 148 
USPQ 459 (1966); In re Palmer, 451 F.2d 1100, 
172 USPQ 126 (CCPA 1971); In re Fielder and Underwood, 471 F.2d 640, 176 
USPQ  300 (CCPA 1973). The Graham v. John Deere pronouncements on the 
relevance of  commercial success, etc. to a determination of obviousness 
were not negated  in Sakraida v. Ag Pro, 425 U.S. 273, 189 USPQ 449 (1979) 
or Anderson's-Black  Rock Inc. v. Pavement Salvage Co., 396 U.S. 57, 163 
USPQ 673 (1969), where  reliance was placed upon A&P Tea Co. v. 
Supermarket Corp., 340 U.S. 147, 87  USPQ 303 (1950). See Dann v. 
Johnston, 425 U.S. 219, 189 USPQ 257, * 261 >,  n. 4< (1976)**. 

  Examiners must consider comparative data in the specification which is 
intended  to illustrate the claimed invention in reaching a conclusion 
with regard to  the obviousness of the claims. In re Margolis, 785 F.2d 1029, 
228 USPQ 940 (Fed. Cir. 1986). **>The<  lack of objective evidence of 
nonobviousness  does not weigh in favor of obviousness. Miles Labs. Inc. 
v. Shandon Inc., 997  F.2d 870, 27 USPQ2d 1123, 1129 (Fed. Cir. 1993), 
cert. denied, 127 L. Ed. 232 
(1994). However, where a prima facie case of obviousness is established, 
the  failure to provide rebuttal evidence is dispositive. 


716.01(b) Nexus Requirement and Evidence of Nonobviousness [R-1] 


>TO BE OF PROBATIVE VALUE, ANY SECONDARY EVIDENCE MUST BE RELATED TO THE 
CLAIMED INVENTION (NEXUS REQUIRED) 

        The weight attached to evidence of secondary considerations by the 
examiner  will depend upon its relevance to the issue of obviousness and 
the amount and nature of the evidence. Note  the great reliance apparently 
placed on this type of evidence by the Supreme  Court in upholding the 
patent in United States v. Adams, 383 U.S. 39,148 USPQ 479 (1966). 
        To be given substantial weight in the determination of obviousness 
 or nonobviousness, evidence of secondary considerations must be relevant 
to  the subject matter as claimed, and therefore the examiner must 
determine whether  there is a nexus between the merits of the claimed 
invention and the evidence  of secondary considerations. Ashland Oil, Inc. 
v. Delta Resins & Refractories,  Inc., 776 F.2d 281, 227 USPQ 657, 
673-674, n. 42 (Fed. Cir. 1985), cert. denied,  475 U.S. 1017 (1986). The 
term "nexus" designates a factually and legally sufficient  con-nection 
between the objective evidence of nonobviousness and the claimed 
invention so that the evidence is of probative value in the determination 
of  nonobviousness. Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 
F.2d 1387, 7 USPQ 2d 1222 (Fed. Cir.), cert. denied, 488 U.S. 956 (1988).< 

716.01(c) Probative Value of Objective Evidence [R-2] 


TO BE OF PROBATIVE VALUE, ANY OBJECTIVE EVIDENCE SHOULD BE SUPPORTED BY 
ACTUAL PROOF 
        Objective evidence which must be factually supported by an 
appropriate  affidavit or declaration to be of probative value includes 
evidence of unexpected  results, commercial success, solution of a 
long-felt need, inoperability of  the prior art, invention before the date 
of the reference, and allegations  that the author(s) of the prior art 
derived the disclosed subject matter from  the applicant. See, for 
example, In re De Blauwe, 736 F.2d 699, 222 USPQ 191,  196 (Fed. Cir. 
1984) ("It is well settled that unexpected results must be established  by 
factual evidence." "[A]ppellants have not presented any experimental data 
showing  that prior heat-shrinkable articles split. Due to the absence of 
tests comparing appellant's heat shrinkable articles with those of the 
closest prior art, we  conclude that appellant's assertions of unexpected 
results constitute mere  argument."). See also In re Lindner, 457 F.2d 
506, 508, 173 USPQ 356, 358 (CCPA 1972); Ex parte George, 21 USPQ2d 1058 
(Bd. Pat. App. & Inter. 1991). 
ATTORNEY ARGUMENTS CANNOT TAKE THE PLACE OF EVIDENCE 

        The arguments of counsel cannot take the place of evidence in the 
record.  In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). 
Examples of  attorney statements which are not evidence and which must be 
supported by an  appropriate affidavit or declaration include statements 
regarding unexpected  results, commercial success, solution of a long-felt 
need, inoperability of  the prior art, invention before the date of the 
reference, and allegations  that the author(s) of the prior art derived 
the disclosed subject matter from  the applicant. ** 

        See MPEP # 2145 generally for case law pertinent to the 
consideration  of applicant's rebuttal arguments. 

OPINION EVIDENCE 

        Although factual evidence is preferable to opinion testimony, such 
 testimony is entitled to consideration and some weight so long as the 
opinion  is not on the ultimate legal conclusion at issue. While an 
opinion as to a  legal conclusion is not entitled to any weight, the 
underlying basis for the  opinion may be persuasive. In re Chilowsky, 306 
F.2d 908, 134 USPQ 515 (CCPA 1962) (expert opinion that an application 
meets the require-ments of 35 U.S.C. 112 is not entitled to any weight; 
however,  facts supporting a basis for deciding that the speci-fication 
complies with  35 U.S.C. 112 are entitled to some weight); In re Lindell, 
385 F.2d 453, 155  USPQ 521 (CCPA 1967) (Although an affiant's or 
declarant's opinion on the ultimate  legal issue is not evidence in the 
case, "some weight ought to be given to  a persuasively supported 
statement of one skilled in the art on what was not  obvious to him." 155 
USPQ at 524 (emphasis in original)). 

        In assessing the probative value of an expert opinion, the 
examiner  must consider the nature of the matter sought to be established, 
the strength  of any opposing evidence, the interest of the expert in the 
outcome of the  case, and the presence or absence of factual support for 
the expert's opinion.  Ashland Oil, Inc. v. Delta Resins & Refractories, 
Inc., 776 F.2d 281, 227 USPQ 657 (Fed. Cir. 1985), cert. denied,  475 U.S. 
1017 (1986). See also In re Oelrich, 198 USPQ 210 (CCPA 1978) (factually 
based expert opinions on the level of ordinary skill in the art were 
sufficient  to rebut the prima facie case of obviousness); Ex parte Gray, 
10 USPQ2d 1922 
(Bd. Pat. App. & Inter. 1989) (statement in publication dismissing the 
"preliminary identification  of a human b-NGF-like molecule" in the prior 
art, even if considered to be  an ex- pert opinion, was inadequate to 
overcome the rejection based on that  prior art because there was no 
factual evidence supporting the statement);  In re Carroll, 601 F.2d 1184, 
202 USPQ 571 (CCPA 1979) (expert opinion on what  the prior art taught, 
supported by documentary evidence and formulated prior  to the making of 
the claimed invention, received considerable deference); In  re Beattie, 
974 F.2d 1309, 24 USPQ2d 1040 (Fed. Cir. 1992) (declarations of  seven 
persons skilled in the art offering opinion evidence praising the merits 
of the claimed invention were found to have little value because of a lack 
 of factual support); Ex parte George, 21 USPQ2d 1058 (Bd. Pat. App. & 
Inter.  1991) (conclusory statements that results were "unexpected," 
unsupported by  objective factual evidence, were considered but were not 
found to be of substantial  evidentiary value). 

        Although an affidavit or declaration which states only conclusions 
 may have some probative value, such an affidavit or declaration may have 
little  weight when considered in light of all the evidence of record in 
the application.  In re Brandstadter, 484 F.2d 1395, 179 USPQ 286 (CCPA 1973). 

        An affidavit of an applicant as to the advantages of his claimed 
invention,  while less persuasive than that of a disinterested person, 
cannot be disregarded  for this reason alone. Ex parte Keyes, 214 USPQ 579 
(Bd. App. 1982); In re  McKenna, 203 F.2d 717, 97 USPQ 348 (CCPA 1953). 


716.01(d) Weighing Objective Evidence  [R-2] 


IN MAKING A FINAL DETERMINATION OF PATENTABILITY, EVIDENCE SUPPORTING 
PATENTABILITY MUST BE WEIGHED AGAINST EVIDENCE SUPPORTING PRIMA FACIE CASE 
        When an applicant submits evidence traversing a rejection, the 
examiner  must reconsider the patentability of the claimed invention. The 
ultimate determination  of patentability must be based on consideration of 
the entire record, by a  preponderance of evidence, with due consideration 
to the persuasiveness of  any arguments and any secondary evidence.  In re 
Oetiker, 977 F.2d 1443, 24  USPQ2d 1443 (Fed. Cir. 1992). The submission 
of objective evidence of patentability  does not mandate a conclusion of 
patentability in and of itself. In re Chupp, 816 F.2d 643, 2 USPQ2d 1437 
(Fed. Cir. 1987). Facts established by rebuttal  evidence must be 
evaluated along with the facts on which the conclusion of  a prima facie 
case was reached, not against the conclusion itself. In re Eli  Lilly, 902 
F.2d 943, 14 USPQ2d 1741 (Fed. Cir. 1990). In other words, each  piece of 
rebuttal evidence should not be evaluated for its ability to knockdown 
the prima facie case. All of the competent rebuttal evidence taken as a 
whole  should be weighed against the evidence supporting the prima facie 
case. In  re Piasecki, 745 F.2d 1468, 
223 USPQ 785, 788 (Fed. Cir. 1984). Although the record may establish 
evidence  of secondary considerations which are indicia of nonobviousness, 
the record  may also establish such a strong case of obviousness that the 
objective evidence  of nonobviousness is not sufficient to outweigh the 
evidence of obviousness.  Newell *> Cos.<  v. Kenney *>Mfg.< Co., 864 F.2d 
757, 9 USPQ2d 1417, 1427 (Fed.  Cir. 1988), cert. denied, 493 U.S. 814 
(1989). See In re Piasecki, 745 F.2d  1468, 223 USPQ 785 (Fed. Cir. 1984) 
for a detailed discussion of the proper  roles of the examiner's prima 
facie case and applicant's rebuttal evidence  in the final determination 
of obviousness. 

        If, after evaluating the evidence, the examiner is still not 
convinced  that the claimed invention is patentable, the next Office 
action should include  a statement to that effect and identify the 
reason(s) (e.g., evidence of commercial  success not convincing, the 
commercial success not related to the technology,  etc.). See Demaco Corp. 
v. F. Von Langsdorff Licensing Ltd., 851F.2d 1387,  7 USPQ 2d 1222 (Fed. 
Cir.), cert. denied, 488 U.S. 956(1988). See also MPEP # 716.01. 

716.02      Allegations Of Unexpected Results [R-2] 


        Any differences between the claimed invention and the prior art 
may  be expected to result in some differences in properties. The issue is 
whether  the properties differ to such an extent that the difference is 
really unexpected.  In re Merck & Co., * 231 USPQ 375 (Fed. Cir. 1986) 
(differences in sedative  and anticholinergic effects between prior art 
and claimed antidepressants were  not unexpected). In In re Waymouth, 499 
F.2d 1273, 
182 USPQ 290, 293 (CCPA 1974), the court held that unexpected results for 
a  claimed range as compared with the range disclosed in the prior art had 
been  shown by a demonstration of "a marked improvement, over the re- 
sults achieved  under other ratios, as to be classified as a difference in 
kind, rather than  one of degree." Compare In re Wagner, 152 USPQ 552, 560 
(CCPA 1967) (differences  in properties cannot be disregarded on the 
ground they are differences in degree  rather than in kind); Ex parte 
Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App.  & Inter. 1992) ("we generally 
consider a discussion of results in terms of  `differences in degree' as 
compared to `differences in kind' . . . to have  very little meaning in a 
relevant legal sense"). 


716.02(a) Evidence Must Show Unexpected Results [R-1] 


>GREATER THAN EXPECTED RESULTS ARE EVIDENCE OF NONOBVIOUSNESS 

        "A greater than expected result is an evidentiary factor pertinent 
 to the legal conclusion of obviousness ... of the claims at issue." In re 
Corkill,  226 USPQ 1005 (Fed. Cir. 1985). In Corkhill, the claimed 
combination showed  an additive result when a diminished result would have 
been expected. This  result was persuasive of nonobviousness even though 
the result was equal to  that of one component alone. Evidence of a 
greater than expected result may  also be shown by demonstrating an effect 
which is greater than the sum of each  of the effects taken separately 
(i.e., demonstrating "synergism"). Merck &  Co. Inc. v. Biocraft 
Laboratories Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 
493 U.S. 975 
(1989). However, a greater than additive effect is not necessarily 
sufficient  to overcome a prima facie case of obviousness because such an 
effect can either  be expected or unexpected. Applicants must further show 
that the results were  greater than those which would have been expected 
from the prior art to an  unobvious extent, and that the results are of a 
significant, practical advantage.  Ex parte The NutraSweet Co., 19 USPQ2d 1586 
(Bd. Pat. App. & Inter. 1991) (Evidence showing greater than additive 
sweetness  resulting from the claimed mixture of saccharin and 
L-aspartyl-L-phenylalanine  was not sufficient to outweigh the evidence of 
obviousness because the teachings  of the prior art lead to a general 
expectation of greater than additive sweetening  effects when using 
mixtures of synthetic sweeteners.). 

SUPERIORITY OF A PROPERTY SHARED WITH THE PRIOR ART IS EVIDENCE OF 
NONOBVIOUSNESS 
        Evidence of unobvious or unexpected advantageous properties, such 
as  superiority in a property the claimed compound shares with the prior 
art, can  rebut prima facie obviousness. "Evidence that a compound is 
unexpectedly superior  in one of a spectrum of common properties . . . can 
be enough to rebut a prima  facie case of obviousness." No set number of 
examples of superiority is required.  In re Chupp, 816 F.2d 643, 2 USPQ2d 
1437, 1439 (Fed. Cir. 1987) (Evidence showing  that the claimed herbicidal 
compound was more effective than the closest prior  art compound in 
controlling quackgrass and yellow nutsedge weeds in corn and  soybean 
crops was sufficient to overcome the rejection under 35 U.S.C. 103,  even 
though the specification indicated the claimed compound was an average 
performer on crops other than corn and soybean.). See also Ex parte A, 17 
USPQ2d  1716 (Bd. Pat. App. & Inter. 1990) (unexpected superior 
ther-apeutic activity  of claimed compound against anaerobic bacteria was 
sufficient to rebut prima  facie obviousness even though there was no 
evidence that the compound was effective against all  bacteria). 

PRESENCE OF AN UNEXPECTED PROPERTY IS EVIDENCE OF NONOBVIOUSNESS 

        Presence of a property not possessed by the prior art is evidence 
of  nonobviousness. In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963) 
(rejection  of claims to compound structurally similar to the prior art 
compound was reversed  because claimed compound unexpectedly possessed 
anti-inflammatory properties  not possessed by the prior art compound); Ex 
parte Thumm, 132 USPQ 66 (Bd.  App. 1961) (Appellant showed that the 
claimed range of ethylene diamine was  effective for the purpose of 
producing " `regenerated cellulose consisting  substantially entirely of 
skin' " whereas the prior art warned "this compound  has `practically no 
effect.' "). The submission of evidence that a new product  possesses 
unexpected properties does not necessarily require a conclusion that  the 
claimed invention is nonobvious. In re Payne, 606 F.2d 303, 203 USPQ 245 
(CCPA 1979). See the discussion of latent properties and additional 
advantages in MPEP # 2145, paragraph (b). 
ABSENCE OF AN EXPECTED PROPERTY IS EVIDENCE OF NONOBVIOUSNESS 

        Absence of property which a claimed invention would have been 
expected  to possess based on the teachings of the prior art is evidence 
of unobviousness. Ex parte Mead Johnson & Co. 227 USPQ 78 (Bd. Pat. App. & 
Inter. 1985) (Based  on prior art disclosures, claimed compounds would 
have been expected to possess  beta-andrenergic blocking activity; the 
fact that claimed compounds did not  possess such activity was an 
unexpected result sufficient to establish unobviousness  within the 
meaning of 35 U.S.C. 103.).< 


716.02(b) Burden on Applicant [R-1] 


>BURDEN ON APPLICANT TO ESTABLISH RESULTS ARE UNEXPECTED AND SIGNIFICANT 
        The evidence relied up should establish "that the differences in 
results  are in fact unexpected and unobvious and of both statistical and 
practical  significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. 
App. & Inter.  1992) (Mere conclusions in appellants' brief that the 
claimed polymer had an  unexpectedly increased impact strength "are not 
entitled to the weight of conclusions  accompanying the evidence, either 
in the specification or in a declaration."  22 USPQ2d at 1319.); Ex parte 
C, 27 USPQ2d 1492 (Bd. Pat. App. & Inter. 1992) 
(Applicant alleged unexpected results with regard to the claimed soybean 
plant,  however there was no basis for judging the practical significance 
of data with  regard to maturity date, flowering date, flower color, or 
height of the plant.).  See also In re Nolan, 553 F.2d 1261, 
193 USPQ 641, 645 (CCPA 1977) and In re Eli Lilly, 902 
F.2d 943, 14 USPQ2d 1741 (Fed. Cir. 1990) as discussed in MPEP # 
716.02(c). 


APPLICANTS HAVE BURDEN OF EXPLAINING PROFFERED DATA 

        "[A]ppellants have the burden of explaining the data in any 
declaration  they proffer as evidence of non-obviousness." Ex parte 
Ishizaka, 24 USPQ2d  1621, 1624 (Bd. Pat. App. & Inter. 1992). 

DIRECT AND INDIRECT COMPARATIVE TESTS ARE PROBATIVE OF NONOBVIOUSNESS 
        Evidence of unexpected properties may be in the form of a direct 
or  indirect comparison of the claimed invention with the closest prior 
art which  is commensurate in scope with the claims. See In re Boesch, 617 
F.2d 272, 205  USPQ 215 (CCPA 1980) and MPEP # 716.02(d) - 
# 716.02(e). See In re Blondel, 499 F.2d 1311, 1317, 182 USPQ 294, 298 
(CCPA  1974) and In re Fouche, 439 F.2d 1237, 169 USPQ 429, 433 (CCPA 
1971) for examples  of cases where indirect comparative testing was found 
sufficient to rebut a  prima facie case of obviousness. 

        The patentability of an intermediate may be established by 
unexpected  properties of an end product "when one of ordinary skill in 
the art would reasonably  ascribe to a claimed intermediate the 
`contributing cause' for such an unexpectedly  superior activity or 
property." In re Magerlein, 202 USPQ 473, 479 (CCPA 1979).  "In order to 
establish that the claimed intermediate is a `contributing cause'  of the 
unexpectedly superior activity or property of an end product, an applicant 
 must identify the cause of the unexpectedly superior activity or property 
(compared  to the prior art) in the end product and establish a nexus for 
that cause between  the intermediate and the end product." 202 USPQ at 479.< 


716.02(c) Weighing Evidence of Expected and Unexpected Results [R-1] 

>EVIDENCE OF UNEXPECTED AND EXPECTED PROPERTIES MUST BE WEIGHED 

        Evidence of unexpected results must be weighed against evidence 
supporting  prima facie obviousness in making a final determination of the 
obviousness  of the claimed invention. In re May, 197 USPQ 601 (CCPA 1978) 
(Claims directed  to a method of effecting analgesia without producing 
physical dependence by  administering the levo isomer of a compound having 
a certain chemical structure  were rejected as obvious over the prior art. 
Evidence that the compound was  unexpectedly nonaddictive was sufficient 
to overcome the obviousness rejection.  Although the compound also had the 
expected result of potent analgesia, there  was evidence of record showing 
that the goal of research in this area was to  produce an analgesic 
compound which was nonaddictive, enhancing the evidentiary  value of the 
showing of nonaddictiveness as an indicia of nonobviousness.).  See MPEP # 
716.01(d) for guidance on weighing evidence submitted to traverse a 
rejection. 

        Where the unexpected properties of a claimed invention are not 
shown  to have a significance equal to or greater than the expected 
properties, the  evidence of unexpected properties may not be sufficient 
to rebut the evidence  of obviousness. In re Nolan, 553 F.2d 1261, 
193 USPQ 641, 645 (CCPA 1977) (Claims were directed to a display/memory 
device  which was prima facie obvious over the prior art. The court found 
that a higher  memory margin and lower operating voltage would have been 
expected properties  of the claimed device, and that a higher memory 
margin appears to be the most  significant improvement for a memory 
device. Although applicant presented evidence  of unexpected properties 
with regard to lower peak discharge current and higher  luminous 
efficiency, these properties were not shown to have a significance  equal 
to or greater than that of the expected higher memory margin and lower 
operating voltage. The court held the evidence of nonobviousness was not 
sufficient  to rebut the evidence of obviousness.); 
In re Eli Lilly, 902 F.2d 943, 14 USPQ2d 1741 (Fed. Cir. 1990) (Evidence 
of  improved feed efficiency in steers was not sufficient to rebut prima 
facie  case of obviousness based on prior art which specifically taught 
the use of  compound X537A to enhance weight gain in animals because the 
evidence did not  show that a significant aspect of the claimed invention 
would have been unexpected.). 

EXPECTED BENEFICIAL RESULTS ARE EVIDENCE OF OBVIOUSNESS 

        "Expected beneficial results are evidence of obviousness of a 
claimed  invention, just as unexpected results are evidence of 
unobviousness thereof."  In re Gershon, 152 USPQ 602, 604 (CCPA 1967) 
(resultant decrease of dental  enamel solubility accomplished by adding an 
acidic buffering agent to a fluoride  containing dentifrice was expected 
based on the teaching of the prior art); Ex parte Blanc, 13 USPQ2d  1383 
(Bd. Pat. App. & Inter. 1989) (Claims at issue were directed to a process 
of sterilizing a polyolefinic composition which contains an antioxidant 
with  high-energy radiation. Although evidence was presented in 
appellant's specification  showing that particular antioxidants are 
effective, the Board concluded that  these beneficial results would have 
been expected because one of the references  taught a claimed antioxidant 
is very efficient and provides better results  compared with other prior 
art antioxidants.).< 


716.02(d) Unexpected Results Commensurate in Scope With Claimed Invention 
[R-1] 

        >Whether the unexpected results are the result of unexpectedly 
improved  results or a property not taught by the prior art, the 
"objective evidence  of nonobviousness must be commensurate in scope with 
the claims which the evidence  is offered to support." In other words, the 
showing of unexpected results must  be reviewed to see if the results 
occur over the entire claimed range. In re  Clemens, 622 F.2d 1029, 206 
USPQ 289, 296 (CCPA 1980) (Claims were directed  to a process for removing 
corrosion at "elevated temperatures" using a certain  ion exchange resin 
(with the exception of claim 8 which recited a temperature  in excess of 
1005C). Appellant demonstrated unexpected results via comparative  tests 
with the prior art ion exchange resin at 1105C and 1305C. The court 
affirmed  the rejection of claims 1-7 and 9-10 because the term "elevated 
temperatures"  encompassed temperatures as low as 605C where the prior art 
ion exchange resin  was known to perform well. The rejection of claim 8, 
directed to a temperature  in excess of 1005C, was reversed.). See also In 
re Grasselli, 218 USPQ 769,  777 (Fed. Cir. 1983) (Claims were directed to 
certain catalysts containing  an alkali metal. Evidence presented to rebut 
an obviousness rejection compared  catalysts containing sodium with the 
prior art. The court held this evidence  insufficient to rebut the prima 
facie case because experiments limited to sodium  were not commensurate in 
scope with the claims.). 

NONOBVIOUSNESS OF A GENUS OR CLAIMED RANGE MAY BE SUPPORTED BY DATA 
SHOWING UNEXPECTED RESULTS OF A SPECIES OR NARROWER RANGE UNDER CERTAIN 
CIRCUMSTANCES 
        The nonobviousness of a broader claimed range can be supported by 
evidence  based on unexpected results from testing a narrower range if one 
of ordinary  skill in the art would be able to determine a trend in the 
exemplified data  which would allow the artisan to reasonably extend the 
probative value thereof.  In re Kollman, 201 USPQ 193 (CCPA 1979) (Claims 
directed to 
mixtures of an herbicide known as "FENAC" with a diphenyl ether herbicide 
in  certain relative proportions were rejected as prima facie obvious. 
Applicant  presented evidence alleging unexpected results testing three 
species of diphenyl  ether herbicides over limited relative proportion 
ranges. The court held that  the limited number of species exemplified did 
not provide an adequate basis  for concluding that similar results would 
be obtained for the other diphenyl  ether herbicides within the scope of 
the generic claims. Claims 6-8 recited  a FENAC:diphenyl ether ratio of 
1:1 to 4:1 for the three specific ethers tested.  For two of the claimed 
ethers, unexpected results were demonstrated over a  ratio of 16:1 to 2:1, 
and the effectiveness increased as the ratio approached  the untested 
region of the claimed range. The court held these tests were commensurate 
in scope with the claims and supported the nonobviousness thereof. 
However,  for a third ether, data was only provided over the range of 1:1 
to 2:1 where  the effectiveness decreased to the "expected level" as it 
approached the untested  region. This evidence was not sufficient to 
overcome the obviousness rejection.);  In re Lindner, 173 USPQ 356, 359 
(CCPA 1972) (Evidence of nonobviousness consisted  of comparing a single 
composition within the broad scope of the claims with  the prior art. The 
court did not find the evidence sufficient to rebut the  prima facie case 
of obviousness because there was "no adequate basis for reasonably 
concluding that the great number and variety of compositions included in 
the  claims would behave in the same manner as the tested composition."). 
DEMONSTRATING CRITICALITY OF A CLAIMED RANGE 

        To establish unexpected results over a claimed range, applicants 
should  compare a sufficient number of tests both inside and outside the 
claimed range to show the criticality of the claimed  range. In re Hill, 
128 USPQ 197 (CCPA 1960).< 


716.02(e) Comparison With Closest Prior Art  [R-1] 


        >An affidavit or declaration under 37 CFR 1.132 must compare the 
claimed  subject matter with the closest prior art to be effective to 
rebut a prima  facie case of obviousness. In re Burckel, 201 USPQ 67 (CCPA 
1979). "A comparison of the claimed invention with the disclosure of each 
cited reference  to determine the number of claim limitations in common 
with each reference,  bearing in mind the relative importance of 
particular limitations, will usually  yield the closest single prior art 
reference." In re Merchant, 197 USPQ 785,  787 (CCPA 1978) (emphasis in 
original). Where the comparison is not identical  with the reference 
disclosure, deviations therefrom should be explained, In  re Finley, 81 
USPQ 383 (CCPA 1949), and if not explained should be noted and  evaluated, 
and if significant, explanation should be required. In re Armstrong,  126 
USPQ 281 (CCPA 1960) (deviations from example were inconsequential). 
THE CLAIMED INVENTION MAY BE COMPARED WITH PRIOR ART THAT IS CLOSER THAN 
THAT APPLIED  BY THE EXAMINER 

        Applicants may compare the claimed invention with prior art that 
is  more closely related to the invention than the prior art relied upon 
by the  examiner. In re Holladay, 199 USPQ 516 (CCPA 1978); Ex parte 
Humber, 217 USPQ 265 (Bd. App. 1961) (Claims to a 13-chloro substituted 
compound were  rejected as obvious over nonchlorinated analogs of the 
claimed compound. Evidence  showing unexpected results for the claimed 
compound as compared with the 9-,  12-, and 14- chloro derivatives of the 
compound rebutted the prima facie case  of obviousness because the 
compounds compared against were closer to the claimed  invention than the 
prior art relied upon.). 

COMPARISONS WHEN THERE ARE TWO EQUALLY CLOSE PRIOR ART REFERENCES 
  Showing unexpected results over one of two equally close prior art 
references  will not rebut prima facie obviousness unless the teachings of 
the prior art  references are sufficiently similar to each other that the 
testing of one showing  unexpected results would provide the same 
information as to the other. In re  Johnson, 223 USPQ 1260, 1264 (Fed. 
Cir. 1984) (Claimed compounds differed from  the prior art either by the 
presence of a trifluoromethyl group instead of  a chloride radical, or by 
the presence of an unsaturated ester group instead  of a saturated ester 
group. Although applicant compared the claimed invention  with the prior 
art compound containing a chloride radical, the court found  this evidence 
insufficient to rebut the prima facie case of obviousness because  the 
evidence did not show relative effectiveness over all compounds of the 
closest prior art. An applicant does not have to test all the compounds 
taught  by each reference, "[h]owever, where an applicant tests less than 
all cited  compounds, the test must be sufficient to permit a conclusion 
respecting the  relative effectiveness of applicant's claimed compounds 
and the compounds of  the closest prior art."  223 USPQ at 1264 (quoting 
In re Payne, 203 USPQ 245,  256 (CCPA 1979)) (emphasis in original).). 

THE CLAIMED INVENTION MAY BE COMPARED WITH THE CLOSEST SUBJECT MATTER THAT 
 EXISTS IN THE PRIOR ART 

        Although evidence of unexpected results must compare the claimed 
invention  with the closest prior art, applicant is not required to 
compare the claimed  invention with subject matter that does not exist in 
the prior art. In re Geiger,  2 USPQ2d 1276, 1279 (Fed. Cir. 1987) 
(Newman, J., concurring) (Evidence rebutted  prima facie case by comparing 
claimed invention with the most relevant prior  art. Note that the 
majority held the Office failed to establish a prima facie  case of 
obviousness.); In re Chapman, 357 F.2d 418, 148 USPQ 711 (CCPA 1966) 
(Requiring applicant to compare claimed invention with polymer suggested 
by  the combination of references relied upon in the rejection of the 
claimed invention  under 35 U.S.C. 103 "would be requiring comparison of 
the results of the invention  with the results of the invention." 148 USPQ 
at 714.).< 


716.02(f) Advantages Disclosed or Inherent  [R-1] 


        >Advantages not disclosed in appellant's application may not be 
urged  as a basis for the allowance of claims, In re Davies, 177 USPQ 381, 
385 (CCPA  1973) ("[W]e are of the view that the basic property or utility 
must be disclosed in order for  affidavit evidence of unexpected 
properties to be offered."; "[T]he public  will derive the most benefit 
from a patent when it discloses on its face those  properties or 
utilitarian advantages which were ultimately persuasive of 
nonobviousness."),  unless the advantage would inherently flow from what 
was originally disclosed  in the specification. In re Zenitz, 142 USPQ 158 
(CCPA 1964) (evidence that  claimed compound minimized side effects of 
hypotensive activity must be considered  because this undisclosed property 
would inherently flow from disclosed use  as tranquilizer); Ex parte 
Sasajima, 212 USPQ 103 (Bd. App. 1981) (evidence  relating to initially 
undisclosed relative toxicity of claimed pharmaceutical  compound must be 
considered). In re Davies, the court held that the undisclosed  properties 
of toughened polystyrene (i.e., improved gloss, transparency, and 
processability) would not flow from a disclosure of improved mechanical 
properties  such as impact strength. 

        The specification need not disclose proportions or values as 
critical  for applicants to present evidence showing the proportions or 
values to be  critical. In re Saunders 170 USPQ 213, 220 (CCPA 1971).< 


716.02(g) Declaration or Affidavit Form  [R-1] 


        >"The reason for requiring evidence in declaration or affidavit 
form  is to obtain the assurances that any statements or representations 
made are  correct, as provided by 35 U.S.C. 25 and 18 U.S.C. 1001." 
Permitting a publication  to substitute for expert testimony would 
circumvent the guarantees built into  the statute. Ex parte Gray, 10 
USPQ2d 1922, 1928 (Bd. Pat. App. & Inter. 1989).  Publications may, 
however, be evidence of the facts in issue and should be  considered to 
the extent that they are probative.< 


716.03      Commercial Success [R-1] 


>NEXUS BETWEEN CLAIMED INVENTION AND EVIDENCE OF COMMERCIAL SUCCESS 
REQUIRED 
        An applicant who is asserting commercial success to support its 
contention  of nonobviousness bears the burden of proof of establishing a 
nexus between  the claimed invention and evidence of commercial success. 
The term "nexus"  designates a factually and legally sufficient connection 
between the evidence  of commercial success and the claimed invention so 
that the evidence is of  probative value in the determination of 
nonobviousness. Demaco Corp. v. F.  Von Langsdorff Licensing Ltd., 7 
USPQ2d 1222 (Fed. Cir. 1988). 

COMMERCIAL SUCCESS ABROAD IS RELEVANT 

        Commercial success abroad, as well as in the United States, is 
relevant  in resolving the issue of nonobviousness. Lindemann 
Maschinenfabrik GMBH v.  American Hoist & Derrick Co., 221 USPQ 481 (Fed. 
Cir. 1984).< 


716.03(a) Commercial Success Commensurate in Scope With Claimed Invention 
[R-1] 

>EVIDENCE OF COMMERCIAL SUCCESS MUST BE COMMENSURATE IN SCOPE WITH THE 
CLAIMS 
        Objective evidence of nonobviousness including commercial success 
must  be commensurate in scope with the claims. In re Tiffin, 448 F.2d 
791, 171 USPQ  294 (CCPA 1971) (evidence showing commercial success of 
thermoplastic foam  "cups" used in vending machines was not commensurate 
in scope with claims directed  to thermoplastic foam "containers" 
broadly). In order to be commensurate is  scope with the claims, the 
commercial success must be due to claimed features,  and not due to 
unclaimed features. Joy Technologies Inc. v. Manbeck, 751 F.  Supp. 225, 
17 USPQ2d 1257, 1260 (D.D.C. 1990), aff'd, 959 F.2d 226, 22 USPQ2d  1153, 
1156 (Fed. Cir. 1992) (Features responsible for commercial success were 
recited only in allowed dependent claims, and therefore the evidence of 
commercial  success was not commensurate in scope with the broad claims at 
issue.). 
        An affidavit or declaration attributing commercial success to a 
product  or process "constructed according to the disclosure and claims of 
[the] patent  application" or other equivalent language does not establish 
a nexus between  the claimed invention and the commercial success because 
there is no evidence  that the product or process which has been sold 
corresponds to the claimed  invention, or that whatever commercial success 
may have occurred is attributable  to the product or process defined by 
the claims. Ex parte Standish, 10 USPQ2d  1454, 1458 (Bd. Pat. App. & 
Inter. 1988). 

REQUIREMENTS WHEN CLAIMED INVENTION IS NOT COEXTENSIVE WITH COMMERCIAL 
PRODUCT  OR PROCESS 

        If a particular range is claimed, applicant does not need to show 
commercial  success at every point in the range. "Where, as here, the 
claims are directed  to a combination of ranges and procedures not shown 
by the prior art, and where  substantial commercial success is achieved at 
an apparently typical point within  those ranges, and the affidavits 
definitely indicate that operation throughout  the claimed ranges 
approximates that at the particular points involved in the  commercial 
operation, we think the evidence as to commercial success is persuasive." 
In re Hollingsworth, 117 USPQ 182, 
184 (CCPA 1958). See also Demaco Corp. v. F. Von Langsdorff Licensing 
Ltd.,  7 USPQ2d 1222 (Fed. Cir. 1988) (where the commercially successful 
product or  process is not coextensive with the claimed invention, 
applicant must show  a legally sufficient relationship between the claimed 
feature and the commercial  product or process).< 


716.03(b) Commercial Success Derived From Claimed Invention [R-1] 

>COMMERCIAL SUCCESS MUST BE DERIVED FROM THE CLAIMED INVENTION 

        In considering evidence of commercial success, care should be 
taken  to determine that the commercial success alleged is directly 
derived from the  invention claimed, in a marketplace where the consumer 
is free to choose on  the basis of objective principles, and that such 
success is not the result  of heavy promotion or advertising, shift in 
advertising, consumption by purchasers  normally tied to applicant or 
assignee, or other business events extraneous  to the merits of the 
claimed invention, etc. In re Mageli, 176 USPQ 305 (CCPA  1973) 
(conclusory statements or opinions that increased sales were due to the 
merits of the invention are entitled to little weight); In re Noznick, 178 
 USPQ 43 (CCPA 1973). 

        In ex parte proceedings before the Patent and Trademark Office, an 
 applicant must show that the claimed features were responsible for the 
commercial  success of an article if the evidence of nonobviousness is to 
be accorded substantial  weight. Merely showing that there was commercial 
success of an article which  embodied the invention is not sufficient. Ex 
parte Remark, 15 USPQ2d 1498,  1502-02 ((Bd. Pat. App. & Inter. 1990). 
Compare Demaco Corp. v. F. Von Langsdorff  Licensing Ltd., 
7 USPQ2d 1222 (Fed. Cir. 1988) (In civil litigation, a patentee does not 
have  to prove that the commercial success is not due to other factors. "A 
requirement  for proof of the negative of all imaginable contributing 
factors would be unfairly  burdensome, and contrary to the ordinary rules 
of evidence."). 

        See also Pentec, Inc. v. Graphic Controls Corp. 
227 USPQ 766 (Fed. Cir. 1985) (commercial success may have been 
attributable  to extensive advertising and position as a market leader 
before the introduction  of the patented product); In re Fielder, 176 USPQ 
300 (CCPA 
1973) (success of invention could be due to recent changes in related 
technology  or consumer demand; here success of claimed voting ballot 
could be due to the  contemporary drive toward greater use of automated 
data processing techniques);  EWP Corp. v. Reliance Universal, Inc. 225 
USPQ 20 (Fed. Cir. 1985) (evidence  of licensing is a secondary 
consideration which must be carefully appraised  as to its evidentiary 
value because licensing programs may succeed for reasons  unrelated to the 
unobviousness of the product or process, e.g., license is  mutually 
beneficial or less expensive than defending infringement suits); Hybritech 
 Inc. v. Monoclonal Antibodies, Inc., 231 USPQ 81 (Fed. Cir. 1986) 
(Evidence  of commercial success supported a conclusion of nonobviousness 
of claims to  an immunometric "sandwich" assay with monoclonal antibodies. 
Patentee's assays  became a market leader with 25% of the market within a 
few years. Evidence  of advertising did not show absence of a nexus 
between commercial success and  the merits of the claimed invention 
because spending 25-35% of sales on marketing  was not inordinate (mature 
companies spent 17-32% of sales in this market),  and advertising served 
primarily to make industry aware of the product because  this is not kind 
of merchandise that can be sold by advertising hyperbole.). 

COMMERCIAL SUCCESS MUST FLOW FROM THE FUNCTIONS AND ADVANTAGES 
DISCLOSED OR INHERENT IN THE  SPECIFICATION DESCRIPTION 

        To be pertinent to the issue of nonobviousness, the commercial 
success  of devices falling within the claims of the patent must flow from 
the functions  and advantages disclosed or inherent in the description in 
the specification.  Furthermore, the success of an embodiment within the 
claims may not be attributable to improvements or modifications made by 
others. In re Vamco Machine & Tool, Inc. 224 USPQ 617 (Fed. Cir. 1985). 
IN DESIGN CASES, ESTABLISHMENT OF NEXUS IS ESPECIALLY DIFFICULT 

        Establishing a nexus between commercial success and the claimed 
invention  is especially difficult in design cases. Evidence of commercial 
success must  be clearly attributable to the design to be of probative 
value, and not to  brand name recognition, improved performance, or some 
other factor. Litton  System, Inc. v. Whirlpool Corp., 221 USPQ 97 (Fed. 
Cir. 1984) (showing of commercial  success was not accompanied by evidence 
attributing commercial success of Litton  microwave oven to the design 
thereof). 

SALES FIGURES MUST BE ADEQUATELY DEFINED 

        Gross sales figures do not show commercial success absent evidence 
 as to market share, Cable Electric Products, Inc. v. Genmark, Inc. 226 
USPQ  881 (Fed. Cir. 1985), or as to the time period during which the 
product was  sold, or as to what sales would normally be expected in the 
market, Ex parte  Standish, 10 USPQ2d 1454 (Bd. Pat. App. & Inter. 1988).< 


716.04      Long-Felt Need and Failure of Others [R-1] 


>THE CLAIMED INVENTION MUST SATISFY A LONG-FELT NEED WHICH WAS RECOGNIZED, 
PERSISTENT, AND  NOT SOLVED BY OTHERS 

        Establishing long-felt need requires objective evidence that an 
art  recognized problem existed in the art for a long period of time 
without solution.  The relevance of long-felt need and the failure of 
others to the issue of obviousness  depends on several factors. First, the 
need must have been a persistent one  that was recognized by those of 
ordinary skill in the art. In re Gershon, 152 USPQ 602, 605 (CCPA 1967) 
("Since the alleged problem in this case was  first recognized by 
appellants, and others apparently have not yet become aware  of its 
existence, it goes without saying that there could not possibly be any 
evidence of either a long felt need in the . . . art for a solution to a 
problem  of dubious existence or failure of others skilled in the art who 
unsuccessfully  attempted to solve a problem of which they were not 
aware."); Orthopedic Equipment  Co., Inc. v. All Orthopedic Appliances, 
Inc., 217 USPQ 1281 (Fed. Cir. 1983) 
(Although the claimed invention achieved the desirable result of reducing 
inventories,  there was no evidence of any prior unsuccessful attempts to 
do so.). 
        Second, the long-felt need must not have been satisfied by another 
 before the invention by applicant. Newell Companies v. Kenney Mfg. Co., 9 
USPQ2d  1417, 1426 (Fed. Cir. 1988) (Although at one time there was a 
long-felt need  for a "do-it-yourself" window shade material which was 
adjustable without the  use of tools, a prior art product fulfilled the 
need by using a scored plastic  material which could be torn. "[O]nce 
another supplied the key element, there  was no long-felt need or, indeed, 
a problem to be solved".) 

        Third, the invention must in fact satisfy the long-felt need. In 
re  Cavanagh, 168 USPQ 466 (CCPA 1971). 

LONG-FELT NEED IS MEASURED FROM THE DATE A PROBLEM IS IDENTIFIED AND 
EFFORTS ARE MADE TO SOLVE IT 
        Long felt need is analyzed as of date the problem is identified 
and  articulated, and there is evidence of efforts to solve that problem, 
not as  of the date of the most pertinent prior art references. Texas 
Instruments Inc.  v. Int'l Trade Comm'n, 26 USPQ2d 1018, 1029 (Fed. Cir. 
1993). 

OTHER FACTORS CONTRIBUTING TO THE PRESENCE OF A LONG-FELT NEED MUST BE 
CONSIDERED 
        The failure to solve a long-felt need may be due to factors such 
as  lack of interest or lack of appreciation of an invention's potential 
or marketability  rather than want of technical know-how. Scully Signal 
Co. v. Electronics Corp.  of America, 196 USPQ 657 (1st. Cir. 1977). 

        See also Environmental Designs, Ltd. v. Union Oil Co. of Cal., 218 
 USPQ 865, 869 (Fed. Cir. 1983) (presence of legislative regulations for 
controlling  sulfur dioxide emissions did not militate against existence 
of long-felt need  to reduce the sulfur content in the air); In re Tiffin, 
170 USPQ 88 (CCPA 1971) 
(fact that affidavit supporting contention of fulfillment of a long-felt 
need  was sworn by a licensee adds to the weight to be accorded the 
affidavit, as long as there is a bona fide licensing agreement entered 
into  at arm's length). < 


716.05      Skepticism of Experts [R-1] 


        >"Expressions of disbelief by experts constitute strong evidence 
of  nonobviousness." Environmental Designs, Ltd. v. Union Oil Co. of Cal., 
218  USPQ 865, 869 (Fed. Cir. 1983) (citing United States v. Adams, 383 
U.S. 39,  52, 148 USPQ 479, 483-484 (1966)) (The patented process 
converted all the sulfur  compounds in a certain effluent gas stream to 
hydrogen sulfide, and thereafter  treated the resulting effluent for 
removal of hydrogen sulfide. Before learning  of the patented process, 
chemical experts, aware of earlier failed efforts  to reduce the sulfur 
content of effluent gas streams, were of the opinion that  reducing sulfur 
compounds to hydrogen sulfide would not adequately solve the  problem.). 

        "The skepticism of an expert, expressed before these inventors 
proved  him wrong, is entitled to fair evidentiary weight, . . . as are 
the five to  six years of research that preceded the claimed invention." 
In re Dow Chemical  Co., 5 USPQ2d 1529 (Fed. Cir. 1988); Burlington 
Industries Inc. v. Quigg 3  USPQ2d 1436 (Fed. Cir. 1987) (testimony that 
the invention met with initial  incredulity and skepticism of experts was 
sufficient to rebut the prima facie case of obviousness based on the prior 
art).< 


716.06      Copying [R-1] 


        >Another form of secondary evidence which may be presented by 
applicants  during prosecution of an application, but which is more often 
presented during  litigation, is evidence that competitors in the 
marketplace are copying the  invention instead of using the prior art. 
However, more than the mere fact  of copying is necessary to make that 
action significant because copying may  be attributable to other factors 
such as a lack of concern for patent property  or contempt for the 
patentee's ability to enforce the patent. Cable Electric  Products, Inc. 
v. Genmark, Inc., 226 USPQ 881 (Fed. Cir. 1985). Evidence of  copying was 
persuasive of nonobviousness when an al-leged infringer tried for  a 
substantial length of time to design a product or process similar to the 
claimed invention, but failed and then copied the claimed invention 
instead.  Dow Chemical Co. v. American Cyanamid Co., 
2 USPQ2d 1350 (Fed. Cir. 1987). Alleged copying is not persuasive of 
nonobviousness  when the copy is not identical to the claimed product, and 
the other manufacturer  had not expended great effort to develop its own 
solution. Pentec, Inc. v.  Graphic Controls Corp., 227 USPQ 766 (Fed. Cir. 
1985). See also Vandenberg  v. Dairy Equipment Co., 224 USPQ 195, 199 
(Fed. Cir. 1984) (evidence of copying  not found persuasive of 
nonobviousness) and Panduit Corp. v. Dennison Manufacturing  Co., 227 USPQ 
337, 348, 349 (Fed. Cir. 1985), vacated on other grounds, 475  U.S. 809, 
229 USPQ 478 (1986), on remand, 
1 USPQ2d 1593 (Fed. Cir. 1987) (evidence of copying found persuasive of 
nonobviousness  where admitted infringer failed to satisfactorily produce 
a solution after 10 years of effort and expense).< 


716.07      Inoperability of References [R-1] 


        >Since every patent is presumed valid (35 U.S.C. 282), and since 
that  presumption includes the presumption of operability, Metropolitan 
Eng. Co.  v. Coe, 1935 C.D. 54, 78 F.2d 199,examiners should not express 
any opinion  on the operability of a patent.  Affidavits or declarations 
attacking the operability  of a patent cited as a reference must rebut the 
presumption of operability  by a preponderance of the evidence. In re 
Sasse, 629 F.2d 675, 
207 USPQ 107 (CCPA 1980). 

        Further, since in a patent it is presumed that a process if used 
by  one skilled in the art will produce the product or result described 
therein,  such presumption is not overcome by a mere showing that it is 
possible to operate  within the disclosure without obtaining the alleged 
product. In re Weber, 405  F.2d 1403, 160 USPQ 549 (CCPA 1969). It is to 
be presumed also that skilled  workers would as a matter of course, if 
they do not immediately obtain desired  results, make certain experiments 
and adaptations, within the skill of the  competent worker. The failures 
of experimenters who have no interest in succeeding  should not be 
accorded great weight. In re 
Michalek, 162 F.2d 229, 74 USPQ 107 (CCPA 1947); In re Reid, 179 F.2d 998, 
 84 USPQ 478 (CCPA 1950). 

        Where the affidavit or declaration presented asserts inoperability 
 in features of the reference which are not relied upon, the reference is 
still  effective as to other features which are operative. In re Shepherd, 
172 F.2d  560, 80 USPQ 495 (CCPA 1949). 

  Where the affidavit or declaration presented asserts that the reference 
relied  upon is inoperative, the claims represented by applicant must 
distinguish from  the alleged inoperative reference disclosure. In re Crosby, 
157 F.2d 198, 71 USPQ 73 (CCPA 1946). See also In re Epstein, 32 F.3d 
1559,  31 USPQ2d 1817 (Fed. Cir. 1994) (lack of diagrams, flow charts, and 
other details in the prior art references  did not render them nonenabling 
in view of the fact that applicant's own specification  failed to provide 
such detailed information, and that one skilled in the art  would have 
known how to implement the features of the references. 
        If a patent teaches or suggests the claimed invention, an 
affidavit  or declaration by patentee that he or she did not intend the 
disclosed invention  to be used as claimed by applicant is immaterial. In 
re Pio, 217 F.2d 956,  104 USPQ 177 (CCPA 1954). Compare In re Yale, 434 
F.2d 66, 168 USPQ 46 (CCPA  1970) (Correspondence from a co-author of a 
literature article confirming that  the article misidentified a compound 
through a typographical error that would  have been obvious to one of 
ordinary skill in the art was persuasive evidence  that the erroneously 
typed compound was not put in the possession of the public.).< 

716.08      Utility and Operability of Applicant's Disclosure [R-1] 

        >See MPEP # 2107.01, paragraphs (d), (e), and (f) for guidance on 
when  it is proper to require evidence of utility or operativeness, and 
how to evaluate  any evidence which is submitted to overcome a rejection under 
35 U.S.C. 101 for lack of utility. See MPEP # 2107 - 
# 2107.02 generally for an overview of legal precedent relevant to the 
utility  requirement of 35 U.S.C. 101.< 


716.09        Sufficiency of Disclosure [R-1] 


        >See MPEP # 2164 - # 2164.04(b) for guidance in determining 
whether  the specification provides an enabling disclosure in compliance 
with 35 U.S.C.  112, first paragraph. 

        Once the examiner has established a prima facie case of lack of 
enablement,  the burden falls on the applicant to present persuasive 
arguments, supported  by suitable proofs where necessary, that one skilled 
in the art would have  been able to make and use the claimed invention 
using the disclosure as a guide.  In re Brandstadter, 484 F.2d 1395, 179 
USPQ 286 (CCPA 1973). Evidence to supplement  a specification which on its 
face appears deficient under 35 U.S.C. 112 must  establish that the 
information which must be read into the specification to  make it complete 
would have been known to those of ordinary skill in the art.  In re 
Howarth, 654 F.2d 103, 210 USPQ 689 (CCPA 1981) (copies of patent 
specifications  which had been opened for inspection in Rhodesia, Panama, 
and Luxembourg prior  to the U.S. filing date of the applicant were not 
sufficient to overcome a  rejection for lack of enablement under 35 U.S.C. 
112, first paragraph). 
  Affidavits or declarations presented to show that the disclosure of an 
application  is sufficient to one skilled in the art are not acceptable to 
establish facts  which the specification itself should recite. In re 
Buchner, 929 F.2d 660,  18 USPQ2d 1331 (Fed. Cir. 1991) (Expert described 
how he would construct elements  necessary to the claimed invention whose 
construction was not described in  the application or the prior art; this 
was not sufficient to demonstrate that  such construction was well-known 
to those of ordinary skill in the art.); In  re Smyth, 189 F.2d 982, 90 
USPQ 106 (CCPA 1951). 

  Affidavits or declarations purporting to explain the disclosure or to 
interpret  the disclosure of a pending application are usually not 
considered. In re Oppenauer,  143 F.2d 974, 62 USPQ 297 (CCPA 1944). But 
see Glaser v. Strickland, 220 USPQ  446 (Bd. Pat. Int. 1983) which 
reexamines the rationale on which In re Oppenauer  was based in light of 
the Federal Rules of Evidence. The Board stated as a  general proposition 
"Opinion testimony which merely purports to state that  a claim or count, 
is `disclosed' in an application involved in an interference  . . . should 
not be given any weight. Opinion testimony which purports to  state that a 
particular feature or limitation of a claim or count is disclosed  in an 
application involved in an interference and which explains the underlying 
factual basis for the opinion may be helpful and can be admitted. The 
weight  to which the latter testimony may be entitled must be evaluated 
strictly on  a case-by-case basis."< 


716.10      Attribution [R-1] 


        >Under certain circumstances an affidavit or declaration may be 
submitted  which attempts to attribute a reference or part of a reference 
to the applicant.  If successful, the reference is no longer applicable. 
When subject matter,  disclosed but not claimed in a patent application 
issued jointly to S and another,  is claimed in a later application filed 
by S, the joint patent is a valid reference  available as prior art under 
35 U.S.C. 102(a), (e), or (f) unless overcome  by affidavit or declaration 
under 37 CFR 1.131 showing prior invention (see MPEP # 715) or an 
unequivocal declaration  by S under 37 CFR 1.132 that he or she conceived 
or invented the subject matter disclosed in the patent.  Disclaimer by the 
other patentee should not be required but, if submitted,  may be accepted 
by the examiner. 

        Where there is a published article identifying the authorship 
(MPEP  # 715.01(c)) or a patent identifying the inventorship (MPEP # 
715.01(a)) that  discloses subject matter being claimed in an application 
undergoing examination,  the designation of authorship or inventorship 
does not raise a presumption  of inventorship with respect to the subject 
matter disclosed in the article  or with respect to the subject matter 
disclosed but not claimed in the patent  so as to justify a rejection 
under subsection (f). 

        However, it is incumbent upon the inventors named in the 
application,  in response to an inquiry regarding the appropriate 
inventorship under subsection 
(f) or to rebut a rejection under 35 U.S.C. 102(a) or (e), to provide a 
satisfactory  showing by way of affidavit under 37 CFR 1.132 that the 
inventorship of the  application is correct in that the reference 
discloses subject matter derived  from the applicant rather than invented 
by the author or patentee notwithstanding  the authorship of the article 
or the inventorship of the patent. In re Katz, 687 F.2d 450, 215 USPQ 
14,18 (CCPA 1982) (inquiry is appropriate to clarify  any ambiguity 
created by an article regarding inventorship and it is then incumbent 
upon the applicant to provide "a satisfactory showing that would lead to a 
 reasonable conclusion that [applicant] is the ... inventor" of the 
subject  matter disclosed in the article and claimed in the application). 

        An uncontradicted "unequivocal statement" from the applicant 
regarding  the subject matter disclosed in an article or patent will be 
accepted as establishing  inventorship. In re DeBaun, 214 USPQ 933, 936 
(CCPA 1982). However, a statement  by the applicants regarding their 
inventorship in view of an article or a patent  may not be sufficient 
where there is evidence to the contrary. Ex parte Kroger,  218 USPQ 370 
(Bd. App. 1982) (a rejection under 35 U.S.C. 102(f) was affirmed 
notwithstanding declarations by the alleged actual inventors as to their 
inventorship  in view of a nonapplicant author submitting a letter 
declaring the author's  inventorship); In re Carriera, 189 USPQ 461 (CCPA 
1976) (disclaiming declarations  from patentees were directed at the 
generic invention and not at the claimed  species, hence no need to 
consider derivation of the subject matter). 
        A successful 37 CFR 1.132 affidavit or declaration establishing 
derivation  by the author or patentee of a first reference does not enable 
an applicant  to step into the shoes of that author or patentee in regard 
to its date of  publication so as to defeat a later second reference. In 
re Costello, 717 F.2d  1346, 219 USPQ 389, 392 (Fed. Cir. 1983). 

EXAMPLES 

        The following examples demonstrate the application of an 
attribution  affidavit or declaration. 

Example 1 

During the search the examiner finds a reference fully describing the 
claimed  invention. The applicant is the author or patentee and it was 
published or  patented less than one year prior to the filing date of the 
application. The  reference cannot be used against applicant since it does 
not satisfy the 1-year  time requirement of 
35 U.S.C. 102(b). 

Example 2 

Same facts as above, but the author or patentee is an entity different 
from  applicant. Since the entities are different, the reference is prior 
art under  35 U.S.C. 102(a) or (e). 

        In the situation described in Example 2, an affidavit under 37 CFR 
 1.132 may be submitted to show that the relevant portions of the 
reference  originated with or were obtained from applicant. Thus the 
affidavit attempts  to convert the fact situation from that described in 
Example 2 to the situation  described in Example 1.< 


717   File Wrapper [R-1] 


        >The folder in which the Patent and Trademark Office maintains the 
 application papers is referred to as a file wrapper.< 


717.01      Papers in File Wrapper [R-1] 


        >Papers that do not become a permanent part of the record should 
not  be entered on the "Contents" of the file wrapper. All papers legally 
entered  on the "contents" of the file wrapper are given a paper number. 
No paper legally  entered on the "Contents" should ever be withdrawn or 
returned to applicant  without special authority of the Commissioner. 
Certain oaths executed abroad  may be returned but a copy is retained in 
the file. See MPEP w 604.04(a).< 

717.01(a) Arrangement of Papers in File Wrapper [R-1] 


        >Until revision for allowance, the specification, amendments and 
all  other communications from applicant are fastened to the left side 
(center fold)  of the file wrapper. They are in inverse chronological 
order; that is, the  communication with the latest "Mail Room" date is on 
top. A similar arrangement  is followed on the right side, where Office 
actions and other communications  from the Office are fastened, except 
that the print is always kept on top for  the convenience of the examiner. 

        Where amendments are submitted in duplicate, the carbon copy is 
destroyed  except where the duplicate is received within the time period 
for response  and the original is late. In this latter situation both 
copies are placed in  the file. The "original" (ribbon copy) is entered 
with reference made to the  carbon copy. 

        At allowance, only those papers required by the printer are placed 
 in the left side (center section) of the file wrapper. 

        The use of return self-addressed postcards as a receipt is covered 
 in MPEP w 503.< 


717.01(b) Prints [R-1] 


        >The prints of the drawing are fastened inside the file wrapper by 
 the Customer Services Division. 

        The white paper prints shall always be kept on top of the papers 
on  the right of the file wrapper. 

        All prints and inked sketches subsequently filed to be part of the 
 record should be endorsed with the date of their receipt in the office 
and  given their appropriate paper number. Note MPEP w 608.02(m).< 


717.02      Data Entered on File Wrapper [R-1] 


        >See also MPEP w 707.10, w 717.01. 

        It is sometimes necessary to return applications to the 
Application  Branch for correction of the file wrapper label. If the 
examiner notices an  error in any of the data originally entered on the 
file wrapper, he or she  should return the application to the Application 
Branch for correction. 
        Instances where such a return is necessary include: 

        (1)   Correction of Inventorship such as changes in the order of 
the  names or a change in the name of an inventor, granted by petition, 
and additions  or deletions of inventors under 37 CFR 1.48. See MPEP # 
605.04 (g). 
        (2)   Correction of the Filing Date. 

        (3)   Correction concerning prior U.S. applications which have 
serial  number errors. See MPEP # 202.02. 

        (4)   Correction of application type, for example, where an 
application  is filed under 37 CFR 1.60 but is not shown as such on the 
file wrapper. 
        The application must be sent to the Application Branch for 
correction  of the file wrapper label and should be accompanied by an 
Application Branch  Data Base Routing Slip with an explanation of the 
correction to be made. 
        All other corrections are performed in the examining group. For 
example,  changes to claims to priority under 35 U.S.C. 120, 121, or 
365(c), changes  to the title, power of attorney, and correspondence 
address may be made with  red ink. 

        If an error is noticed in the name or address of the assignee, it 
should  be corrected by the Assignment Division. 

        All of the above entries are either typed or made in black ink. 
Such  changes by amendment as change of address or of attorney are entered 
in red  ink by the clerk of the group, the original entry being canceled 
but not erased.< 

717.02(b) Name or Residence of Inventor or Title Changed [R-1] 


        >The distinction between "residence" and Post Office address 
should  not be lost sight of. 

        MPEP w 605.04(c) explains the procedure to be followed concerning 
sending  the application to the Application Division when applicant 
changes name. 
        Unless specifically requested by applicant, the residence will not 
 be changed on the file. For example, if a new oath gives a different 
residence  from the original, the file will not be changed.< 


717.03      Classification During Examination  [R-1] 


        >When a new case is received in an examining group, the 
classification  of the case and the initials or name of the examiner who 
will examine it or  other assigned docket designation are noted in pencil 
in the upper left hand  corner of the first sheet of the "heavy paper" 
print and in the designated  spaces on the file wrapper. These notations 
should be kept current.< 

717.04      Index of Claims [R-1] 


        >Constant reference is made to the "Index of Claims" found in the 
inside  of the file wrapper of all applications. It should be kept up to 
date so as  to be a reliable index of all claims standing in a case, and 
of the amendment  in which the claims are to be found. 

        The preprinted series of claim numbers appearing on the file 
wrapper  refer to the claim numbers as originally filed while the adjacent 
column should  be used for the entry of the final numbering of the allowed 
claims. 
        Independent claims should be designated in the Index of Claims by 
encircling  the claim number in red ink. 

        A line in red ink should be drawn below the number corresponding 
to  the number of claims originally presented. 

        Thereafter, a line in red ink should be drawn below the number 
corresponding  to the highest numbered claim added by each amendment. Just 
outside the Index  of Claims form opposite the number corresponding to the 
first claim of each  amendment there should be placed the letter 
designating the amendment. 
        If the claims are amended in rewritten form under 
37 CFR 1.121(b), the original claim number should not be stricken from the 
 Index of Claims but a notation should be made in red ink in the margin to 
the  left of the original claim number, i.e. "Amend. 1"; if the claim is 
rewritten  a second time, "Amend. 1" should be changed by striking out "1" 
and inserting  "2" above it. 

        As any claim is canceled, a line in red ink should be drawn 
through  its number. 

        A space is provided for completion by the examiner to indicate the 
 date and type of each Office action together with the resulting status of 
each  claim. A list of codes for identifying each type of Office action 
appears below  the Index. At the time of allowance, the examiner places 
the final patent claim  numbers in the column marked "Final."< 


717.05      Field of Search [R-1] 


        >In each action involving a search, the examiner shall endorse, on 
 the flap of the file wrapper, the U.S. classes and subclasses, 
International  Patent Classification(s) and publications searched, the 
date when the search  was made or was brought up to date and the 
examiner's initials, all entries  being in BLACK INK. Great care should be 
taken so as to clearly indicate the  places searched and the date(s) on 
which the search was conducted. 
        In order to provide a complete, accurate, and uniform record of 
what  has been searched and considered by the examiner for each 
application, the  Patent and Trademark Office has established procedures 
for recording search  data in the application file. Such a record is of 
importance to anyone evaluating  the strength and validity of a patent, 
particularly if the patent is involved in litigation. These procedures 
will also facilitate the printing of certain  search data on patents. 

        Under the procedures, searches are separated into two categories 
and  listed, as appropriate, in either the "SEARCHED" box or "SEARCHED 
NOTES" box  on the file wrapper. 

        If additional space is required, entries should be continued on 
the  outside right flap of the file wrapper. 

A. "SEARCHED" Box Entries 

        Search entries made here, except those for search updates (see 
item  A.3 below), will be printed under "Field of Search" on the patent 
front page.  Therefore, the following searches will be recorded in the 
"SEARCHED" box by  the examiner along with the date and the examiner's 
initials, according to  the following guidelines: 

        (1)   A complete search of a subclass, including all United States 
 and foreign patent documents, whether filed by U.S. or IPC 
classification,  and other publications placed therein. 

        The complete classification (class and subclass) should be 
recorded. 
Examples: 

424/270, 272, 273 

224/42.1 F 

414/DIG. 4 

D3/32 R 

A61K 9/22 

A61K 31/56 - A61K 31/585 

        (2)   A limited search of a subclass, for example, a search that 
is  restricted to an identifiable portion of the patent documents placed 
therein.  If, however, only the publications in a subclass are searched, 
such an entry  is to be made under "SEARCH NOTES" rather than under 
"SEARCHED." (See item  B(4) below.) 

        The class and subclass, followed by the information defining the 
portion  of the subclass searched-in parenthesis, should be recorded. 



Examples: 

414/1 (U.S. only) 

238/6 (1954 to date). 

        (3)   An update of a search previously made. This search entry 
will  be recorded in a manner to indicate clearly which of the previously 
recorded  searches have been updated, followed by the expression 
"(updated)." Search  update entries, although recorded in the "SEARCHED" 
box, will not be printed. 
Examples: 

424/270 (updated) 

414/DIG, 4 (updated) 

Above (updated) 

        When a search made in a parent application is updated during the 
examination  of a continuing application, those searches updated, followed 
by "(updated  from parent S.N. ............)" will be recorded. If the 
parent application  has been patented, the patent number "Pat. N. 
............" instead of serial  number in the above phrase will be 
recorded. The examiner should recopy the  entire search updated from the 
parent on the file wrapper of the continuing  application to the extent 
pertinent to the continuing application. 
Examples: 

273/29 BC (updated from 

343/114.5 parent S.N. 495,123) 

116/DIG.47  (updated from 

D7/73, 74   parent Pat. N. 4,998,999) 

B. "SEARCH NOTES" Box Entries 

        Entries made in the "SEARCH NOTES" box are of equal importance to 
those  placed in the "SEARCHED" box; however, these entries are not to be 
printed  on any resulting patent. They are intended to complete the 
application file  record of areas and/or documents considered by the 
examiner in his or her search.  The examiner should record the following 
searches in this box and in the manner  indicated, with each search dated 
and initialled: 

        (1)   A cursory search, or scanning, of a U.S. subclass or IPC 
subclass/group/subgroup,  i.e., a search usually made to determine if the 
documents classified there  are relevant. Record the classification, 
followed by "(cursory)." 

Examples: 

250/13 (cursory) 

A61K 9/44 (cursory) 

        (2)   A consultation with other examiners to determine if relevant 
 search fields exist in their areas of expertise. 

        If the subclass is not searched, record the class and subclass 
discussed,  followed by "(consulted)." This entry may also include the 
name of the examiner  consulted and the art unit. 

Examples: 

24/ fasteners (consulted) 

24/ fasteners (consulted J. Doe A.U. 3501) 

24/201 R-230 AV (consulted) 

        (3)   A search of a publication not located within the classified 
patent  file, e.g., a library search, a text book search, a Chemical 
Abstracts search,  etc. Record according to the following for each type of 
literature search: 
        (a)   Abstracting publications, such as Chemical Abstracts record 
name  of publications, list terms consulted in index, and indicate period 
covered. 
Examples: 

Chem. Abs, Palladium hydride Jan-June 1975 

Eng. Index, Data Conversion Analog to Digital 1975 

        (b)   Periodicals - list by title and period or volumes covered, 
as  appropriate. 

Example: 

Popular Mechanics, June-Dec. 1974 

Lubrication Engineering, vols. 20-24 

        (c)   Books - list by title and author, edition or date, as 
appropriate. 
Example: 

Introduction to Hydraulic Fluids, Roger E. Hatton, 1962 

        (d)   Other types of literature not specifically mentioned herein 
(i.e.,  catalogs, manufacturer's literature, private collections, etc.) 

        Record data as necessary to provide unique identification of 
material  searched. 

Example: 

Sears Roebuck catalog, Spring-Summer, 1973. 

        Where a book or specific issue of a periodical is cited by the 
examiner,  it is not necessary to list the specific book or periodical in 
the "SEARCH  NOTES" box. 

        A cursory or browsing search through a number of materials that 
are  not found to be of significant relevance may be indicated in a 
collective manner,  e.g., "Browsed STIC shelves under QA 76.5" or "Browsed 
text books in STIC relating  to ......................" More detailed 
reviews or searches through books  and periodicals or any search of terms 
in abstracting publications should be  specifically recorded, however. 

        (e)   Computer Search in Scientific and Technical Information 
Center 
(STIC) - An online computerized literature searching service which uses 
key  terms and index terms to locate relevant publications in many large 
bibliographic  data bases is available in the STIC. Members of the STIC 
staff are assigned  to assist examiners in selecting key terms and to 
conduct a search. To record  a computer search conducted by STIC, see 
instructions in B6 below 

        (4)   A search of only the publications in a subclass. 

        Record class and subclass followed by "(publications only)." 
Examples: 

43/56 (publications only) 

99/DIG. 15 (publications only) 

        (5)   A review of art cited in a parent application or an original 
 patent, as required for all continuing and reissue applications and 
reexamination  proceedings, or a review of art cited in related 
applications or patents mentioned  within the specification, such as those 
included to provide background of the  invention. 

        Record the serial number of a parent application that is still 
pending  or abandoned, followed by "refs. checked" or "refs. ck'ed." If 
for any reason  not all of the references have been checked because they 
are not available  or clearly not relevant, such exceptions should be noted. 

S. N. 495,123 refs. checked 

S. N. 490,000 refs. checked 

S. N. 480,111 refs. checked except for Greek patent to Kam 

S. N.410,113 refs. not checked since the file was not available 

        Record the patent number of a parent or related application that 
is  now patented or of an original patent now being reissued with "refs. 
checked"  or "refs. ck'ed." 

Examples: 

Pat. 3,900,000 refs. checked. 

Pat. 3,911,111 refs. ck'ed 

        (6)   In each action involving a search of a computer accessed 
text  or chemical structure or sequence database, the examiner shall 
endorse, in  the SEARCH NOTES box on the file wrapper flap, the name of 
the database service,  the date when the search was made or was brought up 
t date and the examiner's  initials. All entries shall be made in BLACK 
INK. If additional space is required,  entries shall be continued on the 
outside right flap of the file wrapper. Computer  database searches 
including text, chemical structure, or sequences shall be  documented in 
the SEARCH NOTES box on the file wrapper by providing the following 
minimum information: 

        (a)   The search logic or chemical structure or sequence used as a 
 query; 

        (b)   The name of the file or files searched and the data base 
service; 
        (c)   Date of the search; and 

        (d)   The examiner's initials. 

        Three ways in which this minimum documentation can be provided 
are: 
        (1)   supplying, and as necessary annotating, the computer search 
printout  resulting from a computer assisted search (see examples 1 and 2 
and "Printouts"  below), or 

        (2)   recording the required information on Form PTO-1604 (Form 
PTO-1605  for Sequence Searches), or 

        (3)   recording the required information in the SEARCH NOTES box. 
        For methods (1) and (2), the name of the database service and the 
expressions  "(see form)" or "(see printout)" should be recorded in the 
SEARCH NOTES box  as appropriate with the date and the examiner's initials. 

Printouts 

        Most of the database services accessed in application searches 
provide  a command to display or print the search history which includes 
most, if not  all, of the minimum required information for documenting 
database searches.  Table 1 below lists the history command for each 
database service and which  of the required minimum documentation elements 
are missing when the history  command is entered. The missing elements may 
be documented by writing them  on the printout of the search history or by 
supplying further portions of the missing when the history command is 
entered. The missing elements may be documented  by writing them on the 
printout of the search history or by supplying further  portions of the 
search transcript which do include the missing elements. In  some 
instances, depending on the database service, the log off command will 
supply the missing data element. A printout of the history command and log 
 out response containing the required data elements is acceptable as full 
documentation  of a search. This is the case with STN and Questel's log 
off command. 
        In each case, the name of the database service is not provided by 
entering  the history command and must be supplied in another manner. If 
there are several  search statements in the history, the statement or 
statements of which the  results were reviewed should be indicated by 
circling them in BLACK INK. The  form or printout page(s) with the 
required data elements should be hole punched  and placed in the 
application file on the right hand flap of the file wrapper. 
TABLE 1 

History Commands and Missing Elements by Database Service 

E71705014.bmp 



E71705014end 

                In a structure search in STN, in addition to "d 
                     his  full", the structure should be printed out 
               while in the  Registry File.  The command 
                  string for  this is "d L# que stat," where L# is 
           the number of the answer  set of a full file 
          structure search. 

                Need to enter history command for each file 
             searched  before changing file or logging off. 

                Information provided as part of search result 
             file  for each request. 

                Search query sequence provided as part of 
             search  result file for each request. 

                Displayed by log off command. 

        Name and number of file provided at file                entry; 
number  only of file given when leaving                         the file; 
number only  of last file accessed 
                given at log off. 

        Name of the file given at file entry and when 
leaving  the file; name of last file accessed 
                given at log off. 

Explanation of Table Terminology 

        History Command - Generally, a display of what the user has asked 
the  search software to do. Will display the search logic entered by the 
user. Some  histories are limited to display of the searches done only in 
the current file  while others deliver a complete record of what file or 
files were accessed  and all searches done since sign on. Dialog, Questel, 
Orbit, and Mead are services  limited to display of the searches done only 
in the current file. 

        Name of Database Service - Most services do not display this 
information  as part of the search transcript.  None of the services in 
the table list that  information as part of the history command. However, 
Orbit, Questel, and STN  supply the name of the database service during 
log off. 

        Search Logic - Generally, a display of the search commands 
executed  by the search software. For a structure or sequence search, this 
can be a printout  of the structure or sequence used to query the system. 

        Name of File Searched - This is the name of the collection of data 
 accessed. In some services, the file name is only displayed when the file 
is  selected and not in response to the history display command. Dialog 
and Orbit  are two such services. The file in some cases is identified 
only by a number.  For example, Dialog only supplies the file number with 
the log off command.  The file number alone is not adequate documentation 
of a search. The name of  the file is required. 

        Date of Search - Dialog, Orbit, and Questel do not display the 
date  of search as part of the history command. They do supply the date of 
search  during log off. 

        Nucleotide and peptide sequence searches will be fully documented 
by  a printout of the search query sequence and the beginning of the 
search result  file. Eachquery sequence should be clearly related to the 
appropriate search  result, if necessary, by appropriate annotation. 

Other Databases 

        For other types of publicly accessible computer accessed databases 
(e.g., CD ROM databases, specialized databases, etc.), record data as 
necessary  to provide unique identification of material searched and 
sufficient information as to  the search query or request so that the 
search can be up- dated. The record  should also document the location of 
the database and its form 
(CD ROM, etc.) 

Example;        Citing a biotech CD ROM database 

Entrez: Sequences, National Center for Biotechnology Information, Version 
7.19.91b 
(CD ROM, Group 1800) Searched HIV and vaccine; neighbored Galloway article 
 dated 6/5/91 on April 1, 1990. 

Example:        Citing a nonbiotech CD ROM database 

Computer Select, (November, 1991), Ziff Davis Communications Co., (CD ROM, 
 STIC), Searched Unix and emulation on December 1, 1991. 

C. Information Not Recorded On The Flap of The File Wrapper 

        For an indication of consideration or nonconsideration of prior 
art  citations submitted by applicant in Information Disclosure Statements 
(37 CFR  1.97 and 1.98), see MPEP 609.< 

A71705015.bmp 





A71705015.end 



A71705017.bmp 



A71705017.end 



A71705018.bmp 





A71705018.end 



A71705019.bmp 



A71705019.end 




717.06      Foreign Filing Dates [R-1] 


        >See MPEP # 201.14(c), # 202.03 and # 201.14(d).< 


717.07      Related Applications [R-1] 


        >The file wrapper should identify earlier filed related 
applications. 
        See MPEP # 202.02 and # 202.03.< 


720   Public Use Proceedings [R-1] 


>37 CFR 1.292     .   Public use proceedings. 

(a)   When a petition for the institution of public use proceedings, 
supported  by affidavits or declarations and the fee set forth in 
w 1.17(j), is filed by one having information of the pendency of an 
application  and is found, on reference to the examiner, to make a prima 
facie showing that  the invention claimed in an application believed to be 
on file had been in  public use or on sale more than one year before the 
filing of the application, 
 a hearing may be had before the Commissioner to determine whether a 
public  use proceeding should be instituted. If instituted, the 
Commissioner may designate  an appropriate official to conduct the public 
use proceeding including the  setting of times for taking testimony, which 
shall be taken as provided by  ww 1.671 to 1.685. The petitioner will be 
heard in the proceedings but after  decision therein will not be heard 
further in the prosecution of the application  for patent. 

(b)   The petition and accompanying papers should either: (1) Reflect that 
 a copy of the same has been served upon the applicant or upon his 
attorney  or agent of record; or (2) be filed with the Office in duplicate 
in the event  service is not possible. The petition and accompanying 
papers, or a notice  that such a petition has been filed, shall be entered 
in the application file. 
(c)   A petition for institution of public use proceedings shall not be 
filed  by a party to an interference as to an application involved in the 
interference.  Public use and on sale issues in an interference shall be 
raised by a preliminary  motion under w 1.633(a). 

        Public use proceedings are provided for in 37 CFR 1.292. The 
institution  of public use proceedings is discretionary with the 
Commissioner. This section  is intended to provide guidance when a 
question concerning public use proceedings  arises. 

        A petition and fee (37 CFR 1.17(j)) is required to initiate 
consideration  of whether to institute a public use proceeding. The 
petitioner ordinarily  has information concerning a pending application 
which claims, in whole or  in part, subject matter that the petitioner 
alleges was in "public use" or  "on sale" in this country more than one 
year prior to the effective United  States filing date of the pending 
application (see 35 U.S.C. 119, 1st paragraph,  and 120).  He or she thus 
asserts that a statutory bar 
(35 U.S.C. 102(b) alone or in combination with 35 U.S.C. 103) exists which 
 prohibits the patenting of the subject matter of the application. 
        When public use petitions and accompanying papers are submitted 
they,  or a notice in lieu thereof, will be entered in the application 
file. Duplicate  copies should be submitted only when, after diligent 
effort, it has not been  possible for petitioner to serve a copy of the 
petition on the applicant, his  or her attorney or agent in which case the 
Special Program Law Office of the  Office of the Deputy Assistant 
Commissioner for Patents Policy and Projects  will attempt to get the 
duplicate copy to the applicant, his or her attorney  or agent. 

        Notice of a petition for a public use proceeding will be entered 
in  the file in lieu of the petition itself when the petition and the 
accompanying  papers are too bulky to accompany the file. Any public use 
papers not physically  entered in the file will be publicly available 
whenever the application file  wrapper is available. 

        There are two types of public use proceedings: ex parte and inter 
partes.  It is important to understand the difference. In the ex parte 
situation, the  petitioner is not entitled, as a matter of right, to 
inspect the pending application.  Thus, he or she stands in no better 
position than any other member of the public  regarding access to the 
pending application. In the inter partes situation,  the pending 
application is a reissue application. In the inter partes situation,  the 
petitioner is privy to the contents of the pending application (37 CFR 
1.612). Thus, as pointed out below, the petitioner in the inter partes 
situation  participates in the public use proceedings to a greater degree 
than in the  ex parte situation. A petitioner who was once involved in a 
terminated interference  with a pending application is no longer privy to 
the application contents and  will accordingly be treated as an ex parte 
petitioner. It should be noted that  petitions filed on and after February 
11, 1985 will not be allowed in accordance  with 37 CFR 1.292(c) unless 
the petition arises out of an interference declared  prior to February 11, 
1985 or the interference was declared after February  11, 1985 but arose 
from an interference declared prior to that date. 
        Since, February 11, 1985, a petition for institution of public use 
 proceedings cannot be filed by a party to 
an interference as to an application involved in the 
interference. Public use issues can only be raised by a 
preliminary motion under 37 CFR 1.633(a). However, if the issue of public 
use  arises out of an interference declared prior to February 11, 1985, 
the petition  may be filed by a party to the interference as to an 
application involved in  the interference. 

        There may be cases where a public use petition has been filed in 
an  application which has been restricted or is subject to a proper 
restriction  requirement. If the petition alleges that subject matter 
covering both elected  claims and nonelected claims is a statutory bar, 
only that part of the petition  drawn to subject matter of the elected 
claims will be considered. However,  if a public use proceeding is 
ultimately instituted, it will not necessarily  be limited to the subject 
matter of the elected claims but may include the  nonelected subject 
matter. Any evidence adduced on the nonelected subject matter  may be used 
in any subsequent-filed application claiming subject matter without  the 
requirement of a new fee 
(37 CFR 1.17(j)). The petitioner will not be heard regarding the 
appropriateness  of any restriction requirement.< 


720.01      Preliminary Handling [R-1] 


        >A petition filed under 37 CFR 1.292 should be forwarded to the 
Special  Program Law Office of the Office of the Deputy Assistant 
Commissioner for Patent  Policy and Projects, and served in accordance 
with 37 CFR 1.292(b). In addition,  all other papers filed relating to the 
petition or subsequent public use proceeding  must be served in accordance 
with 37 CFR 1.646 and 1.248. A member of the Special  Program Law Office's 
staff will ascertain whether the formal requirements of  37 CFR 1.292 have 
been fulfilled. In particular, the petition will be reviewed  to see if 
the alleged use or sale occurred more than one year before the effective 
filing date of the application, whether the petition contains affidavits 
and  exhibits to establish the facts alleged, whether the papers have been 
filed  in duplicate, or one copy has been served on applicant and whether 
the required  fee has been tendered. The application file is ordered and 
its status ascertained  so that appropriate action may be taken. 

        In those ex parte situations where a petitioner cannot identify 
the  pending application by serial number, the petition papers will be 
forwarded  to the appropriate group director for an identification search. 
Once the application  file(s) is located, it should be forwarded to the 
Special Program Law Office.< 

720.02      Examiner Determination of Prima Facie Showing [R-1] 


        >Once the Special Program Law Office staff member has determined 
that  the petition meets the formal requirements of 37 CFR 1.292, and the 
application's  status warrants consideration of the petition, he or she 
will prepare a letter  for the Patent Legal Administrator, forwarding the 
petition and the application  file to the examiner for determination of 
whether a prima facie case of public  use or sale of the claimed subject 
matter is established by the petition. Any  other papers that have been 
filed by the parties involved, such as a reply  by the applicant or 
additional submissions by the petitioner, will also be  forwarded to the 
examiner. Whether additional papers are accepted is within  the discretion 
of the Special Program Law Office's staff member. However, protracted 
paper filing is discouraged since the parties should endeavor to present 
their  best case as to the prima facie showing at the earliest possible 
time. No oral  hearings or interviews will be granted at this stage, and 
the examiner is cautioned  not to answer any inquiries by the petitioner 
or applicant. 

        A prima facie case is established by the petition if the examiner 
finds  that the facts asserted in the affidavit(s), as supported by the 
exhibits,  if later proved true by testimony taken in the public use 
proceeding, would  result in a statutory bar to the claims under 35 U.S.C. 
102(b) alone or in  combination with 35 U.S.C. 103. See MPEP 
# 2120 et seq. 

        To make this determination, the examiner must identify exactly 
what  was in public use or on sale, whether it was in use or on sale more 
than one  year before the effective filing date, and whether the pending 
claims "read"  on or are obvious over what has been shown to be in public 
use or on sale.  On this last point, the examiner should compare all 
pending claims with the  matter alleged to have been in use or on sale, 
not just the claims identified  by petitioner. 

        In situations where the petition alleges only that the claims are 
obvious  over subject matter asserted to be in public use or on sale, the 
petition should  include prior art or other information on which it relies 
and explain how the  prior art or other information in combination with 
the subject matter asserted  to be in public use or on sale renders the 
claims obvious. The examiner is  not expected to make a search of the 
prior art in evaluating 
the petition. If, however, the examiner determines that a prima facie case 
of anticipation under 35 U.S.C. 102(b) has not been established  but, at 
the time of evaluating the petition, the examiner is aware of prior  art 
or other information which, in his or her opinion, renders the claims 
obvious  over the subject matter asserted to be in public use or on sale 
the examiner  may determine that a prima facie case is made out, even if 
the petition alleged  only that the claims were anticipated under 35 
U.S.C. 102(b). 

        After having made his/her determination, the examiner will forward 
 a memorandum to the Patent Legal Administrator, stating his or her 
findings  and his or her decision as to whether a prima facie case has 
been established.  The findings should include a summary of the alleged 
facts, a comparison of  at least one claim with the device alleged to be 
in public use or sale, and  any other pertinent facts which will aid the 
Patent Legal Administrator in  conducting the preliminary hearing. The 
report should be prepared in triplicate  and addressed to the Patent Legal 
Administrator.< 


720.03      Preliminary Hearing [R-1] 


        >Where the examiner concludes that a prima facie showing has not 
been  established, both the petitioner and the applicant are so notified 
by the Office  of the Deputy Assistant Commissioner for Patent Policy and 
Projects and the  application proceedings are resumed without giving the 
parties an opportunity  to be heard on the correctness of the examiner's 
decision. Where the examiner  concludes that a prima facie case has been 
established, the Commissioner may  hold a preliminary hearing. In such 
case, the parties will be notified by letter  of the examiner's conclusion 
and of the time and date of the hearing. In ex  parte cases, whether or 
not the examiner has concluded that a prima facie showing  has been 
established, no copy of the examiner's memorandum to the Patent Legal 
Administrator will be forwarded to the petitioner. However, in such cases 
where  the petition covers restrictable subject matter and it is evident 
that petitioner  is not aware of a restriction requirement which has been 
or may be made, petitioner  will be informed that the examiner's 
conclusion is limited to elected subject  matter. While not so 
specifically captioned, the notification of this hearing  amounts to an 
order to show cause why a public use proceeding should not be  held. No 
new evidence is to be introduced or discussed at this hearing. The  format 
of the hearing is established by the member of the Special Program Law 
Office staff, and the Patent Legal Administrator presides. The examiner 
may  attend as an observer only. 

        Where the hearing is held in the ex parte situation, great care 
will  be taken to avoid discussion of any matters of the application file 
which are  not already of knowledge to petitioner. Of course, applicant 
may of his or  her own action or consent notify the petitioner of the 
nature of his or her  claims or other related matters. 

        After the hearing is concluded, the Patent Legal Administrator 
will  decide whether public use proceedings are to be initiated, and 
he/she will  send appropriate notice to the parties.< 


720.04      Public Use Proceeding Testimony[R-1] 


        >When the Patent Legal Administrator decides to institute public 
use  proceedings, the case is referred to the examiner who will conduct 
all further  proceedings. The fact that the affidavits and exhibits 
presented with the petition  for institution of the public use proceedings 
have been held to make out a  prima facie case does not mean that the 
statutory bar has been conclusively  established. The statutory bar can 
only be established by testimony taken in  accordance with normal rules of 
evidence, including the right of cross-examination.  The affidavits are 
not to be considered part of the testimony and in no case  can they be 
used as evidence on behalf of the party submitting them. 
        The procedure for taking testimony in a public use proceeding is 
similar  to that for taking testimony in an interference. Normally, no 
representative  of the Commissioner need be present at the taking of the 
testimony. 
        The examiner will set a schedule of times for taking testimony and 
 for filing the record and briefs on the basis of the following: 

        Petitioner's testimony to close - 60 days; 

        Rebuttal testimony by applicant to close - 30 days later; 
        An original and one copy of the Record to be filed - 30 days 
later; 
        Petitioner's brief to be filed - 30 days later; and 

        Applicant's brief to be filed - 20 days later. Upon proper 
showing,  the examiner may grant appropriate extensions of time. 

        No extension of time will be permitted under 37 CFR 1.136(a). Any 
extension  of time request must be filed under 37 CFR 1.136(b). 

        It is understood from the above scheduling of times that a given 
time  period begins with the close of the previous period, and that the 
completion  of testimony or the filing of the Record or a brief before the 
close of the  corresponding period does not change its closing date. To 
avoid confusion,  the examiner should indicate specific dates for the 
close of each period. 
        In ex parte cases and in inter partes cases where the pending 
application  is a reissue, an oral hearing is ordinarily not held. 

        In all public use proceedings, whether the ultimate issue is 
anticipation  under 35 U.S.C. 102(b) or obviousness over 35 U.S.C. 103, 
testimony will be  limited to the issues of public use or on sale. No 
testimony will be received  on whether the claimed subject matter would 
have been obvious over subject  matter asserted to be in public use or on 
sale.< 


720.05      Final Decision [R-1] 


        >The final decision of the examiner should be "analogous to that 
rendered  by the [Board of Patent Appeals and Interferences] in an 
interference proceeding, analyzing the testimony and stating conclusions, 
In re Townsend, 1913 C.D.  55. In reaching his or her decision, the 
examiner is not bound by the prior  finding that a prima facie case has 
been established. 

        If the examiner concludes that a public use or sale bar exists, he 
 or she will enter a rejection to that effect in the application file, 
predicating  that rejection on the evidence considered and the findings 
and decision reached  in the public use proceeding. Even if a rejection is 
not made, the examiner's  written action should reflect that the evidence 
of 35 U.S.C. 102(b) activity  has in fact been considered. Likewise, if 
the examiner concludes that a prima  facie case (1) has not been 
established, or (2) has been established and rebutted 
(MPEP # 2124) then the examiner's written action should so indicate. 
Strict  adherence to this format should cause the rationale employed by 
the examiner  in the written action to be self-evident. In this regard, 
the use of reasons  for allowance pursuant to 37 CFR 1.109 may also be 
appropriate, MPEP # 1302.14.  In ex parte cases where the petitioner does 
not have access to the file, no  copy of the examiner's action is mailed 
to the petitioner by the Office. 
        There is no review from the final decision of the examiner in the 
public  use proceedings. A petition under 37 CFR 1.181, requesting that 
the Commissioner  exercise his or her supervisory authority and vacate the 
examiner's decision,  will not be entertained except where there is a 
showing of clear error. See  Ex parte Hartley 1908 C.D. 224. Once the 
application returns to its ex parte  status, appellate review under 35 
U.S.C. 134 and 141-145 may be had of any  adverse decision rejecting 
claim(s), as a result of the examiner's decisions  as to public use or sale.< 


724   Trade Secret, Proprietary, and Protective Order Materials  [R-1] 

        >Situations arise in which it becomes necessary, or desirable, for 
 parties to proceedings in the Patent and Trademark Office relating to 
pending  patent applications or reexamination proceedings to submit to the 
Office trade  secret, proprietary, and/or protective order materials. Such 
materials may  include those which are subject to a protective or secrecy 
order issued by  a court or by the International Trade Commission (ITC). 
While one submitting  materials to the Office in relation to a pending 
patent application or reexamination  proceeding must generally assume that 
such materials will be made of record  in the file and be made public, the 
Office is not unmindful of the difficulties  this sometimes imposes. The 
Office is also cognizant of the sentiment expressed  by the court in In re 
Sarkar, 197 USPQ 788 at 
791 (CCPA 1978), which stated: 

"that wherever possible, trade secret law and patent laws should be 
administered  in such manner that the former will not deter an inventor 
from seeking the  benefit of the latter, because, the public is most 
benefited by the early disclosure  of the invention in consideration of 
the patent grant. If a patent applicant  is unwilling to pursue his right 
to a patent at the risk of certain loss of  trade secret protection, the 
two systems will conflict, the public will be  deprived of knowledge of 
the invention in many cases, and inventors will be  reluctant to bring 
unsettled legal questions of significant current interest  . . . for 
resolution." 

        Parties bringing information to the attention of the Office for 
use  in the examination of applications and reexaminations are frequently 
faced  with the prospect of having legitimate trade secret, proprietary, 
or protective  order material disclosed to the public. 

        Inventors and others covered by 37 CFR 1.56(c) and 1.555 have a 
duty  to disclose to the Office information they are aware of which is 
material to patentability. 37 CFR 1.56(b) states that "information is 
material to patentability when it  is not cumulative to information 
already of record or being made of record  in the application, and (1) it 
establishes, by itself or in combination with  other information, a prima 
facie case of unpatentability of a claim; or (2)  it refutes, or is 
inconsistent with, a position the applicant takes in: 
        (i)   opposing an argument of unpatentability relied on by the 
Office,  or 

        (ii)    asserting an argument of patentability. 

        A prima facie case of unpatentability is established when the 
information  compels a conclusion that a claim is unpatentable under the 
preponderance of  evidence, burden-of-proof standard, giving each term in 
the claim its broadest  reasonable construction consistent with the 
specification, and before any consideration  is given to evidence which 
may be submitted in an attempt to establish a contrary  conclusion of 
patentability." 

        It is incumbent upon patent applicants, therefore, to bring 
"material"  information to the attention of the Office. It matters not 
whether the "material"  information can be classified as a trade secret, 
or as proprietary material,  or whether it is subject to a protective 
order. The obligation is the same;  it must be disclosed if "material to 
patentability "as defined in 37 CFR 1.56(b).  The same duty rests upon a 
patent owner under 37 CFR 1.555 whose patent is  undergoing reexamination. 

        Somewhat the same problem faces a protestor under 
37 CFR 1.291(a) who believes that trade secret, proprietary, or protective 
 order material should be considered by the Office during the examination 
of  an application. 

        In some circumstances, it may be possible to submit the 
information  in such a manner that legitimate trade secrets, etc., will 
not be disclosed,  e.g., by appropriate deletions of nonmaterial portions 
of the information.  This should be done only where there will be no loss 
of information material  to patentability under 37 CFR 1.56 or 1.555. 

        The provisions of this section do not relate to material appearing 
 in the description of the patent application.< 


724.01      Completeness of the Patent File Wrapper [R-1] 


        >It is the intent of the Office that the patent file wrapper be as 
 complete as possible insofar as "material" information is concerned. The 
Office  attempts to minimize the potential conflict between full 
disclosure of "material"  information as required by 37 CFR 1.56 and 
protection of trade secret, proprietary,  and protective order material to 
the extent possible. 

        The procedures set forth in the following sections are designed to 
 enable the Office to ensure as complete a patent file wrapper as possible 
while  preventing unnecessary public disclosure of trade secrets, 
proprietary material,  and protective order material.< 


724.02      Method of Submitting Trade Secret, Proprietary, and/or 
Protective Order Materials [R-1] 

        >Information which is considered by the party submitting the same 
to  be either trade secret material or proprietary material, and any 
material subject  to a protective order, must be clearly labeled as such 
and be filed in a sealed,  clearly labeled, envelope or container. Each 
document or item must be clearly  labeled as a "Trade Secret" document or 
item, a "Proprietary" document or item,  or as an item or document 
"Subject To Protective Order." It is essential that  the terms 
"Confidential," "Secret," and "Restricted" or "Restricted Data" not  be 
used when marking these documents or items in order to avoid confusion 
with  national security information documents which are marked with these 
terms (note  also MPEP w 121). If the item or document is "Subject to 
Protective Order"  the proceeding, including the tribunal, must be set 
forth on each document  or item. Of course, the envelope or container, as 
well as each of the documents  or items, must be labeled with complete 
identifying information for the file  to which it is directed, including 
the Office or area to which the envelope  or container is directed. 

        Examples of appropriate labels for such an envelope or container 
addressed  to an application are as follows: (Appropriate changes would be 
made for papers  filed in a reexamination file.) 

        A. "TRADE SECRET MATERIAL NOT OPEN TO PUBLIC. TO BE OPENED ONLY BY 
 EXAMINER OR OTHER AUTHORIZED PATENT AND TRADEMARK OFFICE EMPLOYEE. 
        In re Application of 

        Serial No 

        Filed: 

        For: (Title of Invention) 

        Group Art Unit: 

        Examiner: 

        ATTENTION: (Current Location of Application)" 

        B. "PROPRIETARY MATERIAL NOT OPEN TO PUBLIC. TO BE OPENED ONLY BY 
EXAMINER  OR OTHER AUTHORIZED PATENT AND TRADEMARK OFFICE EMPLOYEE. 

        In re Application of 

        Serial No 

        Filed: 

        For: (Title of Invention) 

        Examiner: 

        ATTENTION: (Current Location of Application)" 

        C. "MATERIAL SUBJECT TO PROTECTIVE ORDER - NOT OPEN TO PUBLIC. TO 
BE  OPENED ONLY BY EXAMINER OR OTHER AUTHORIZED PATENT AND TRADEMARK 
OFFICE EMPLOYEE. 
        Tribunal Issuing Protective Order: 

        Civil Action or Other Identification No.: 

        Date of Order: 

        Current Status of Proceeding: (Pending, Stayed, etc.) 

        In re application of: 

        Serial No. 

        Filed: 

        For: (Title of Invention) 

        Group Art Unit: 

        Examiner: 

        ATTENTION: (Current Location of Application)" 

        The envelope or container must be accompanied by a transmittal 
letter  which also contains the same identifying information as the 
envelope or container.  The transmittal letter must also state that the 
materials in the envelope or  container are considered trade secrets or 
proprietary, or are subject to a  protective order, and are being 
submitted for consideration under MPEP w 724.  A petition under 37 CFR 
1.182 and fee therefor (37 CFR 1.17(h)) to expunge  the information, if 
found not to be important to a reasonable examiner in deciding  whether to 
allow the application to issue as a patent, may also accompany the 
envelope or container. 

        In order to ensure that such an envelope or container is not 
mishandled,  either prior to reaching the Office, or in the Office, the 
envelope or container  should preferably be hand-carried to the particular 
area to which it is directed  and in which the application or 
reexamination is pending at that time. If the  proceeding is then pending 
in an examining group, the envelope or container  should be hand-carried 
to the office of the director of the examining group.  The Office 
personnel receiving the envelope or container should be informed  that it 
contains such material. If the envelope or container cannot be 
hand-carried  to the office, it can be mailed to the Patent and Trademark 
Office in the normal  manner, but that method of submission is not as 
desirable as hand-carrying  the envelope or container to the Office or 
area involved.< 


724.03      Types of Trade Secret, Proprietary, and/or Protective Order 
Materials Submitted Under MPEP # 724.02  [R-1] 

        >The types of materials or information contemplated for submission 
 under MPEP w 724.02 include information "material to patentability" but 
does  not include information favorable to patentability. Thus, any trade 
secret,  proprietary, and/ or protective order materials which are 
required to be submitted  on behalf of a patent applicant under 37 CFR 
1.56 or patent owner under 37  CFR 1.555 can be submitted in accordance 
with MPEP # 724.02. Neither 37 CFR  1.56 nor 1.555 require the disclosure 
of information favorable to patentability,  e.g., evidence of commercial 
success of the invention (see 42 Fed. Reg. 5590).  Such information should 
not be submitted in accordance with MPEP # 724.02.  If any trade secret, 
proprietary, and/or protective order materials are submitted  in 
amendments, arguments in favor of patentability, or affidavits under 37 
CFR 1.131 or 1.132, they will be made of record in the file and will not 
be  given any special status. 

        Insofar as protestors under 37 CFR 1.291(a) are concerned, 
submissions  can be made in accordance with MPEP # 724.02 if protestor or 
petitioner has  access to the application involved. In such cases, of 
course, the requirements  for service must be followed. The Office cannot 
ensure that the party or parties  served will maintain the information 
secret. If the party or parties served  find it necessary or desirable to 
comment on material submitted under MPEP  w 724 before it is, or without 
its being, found "material to patentability,"  such comments should either 
(1) not disclose the details of the material or 
(2) be submitted in a separate paper under MPEP w 724.02.< 


724.04      Office Treatment and Handling of Materials Submitted Under 
MPEP # 724.02 [R-1] 

        >The exact methods of treating and handling materials submitted 
under  MPEP w 724.02 will differ slightly depending upon whether the 
materials are  submitted in an original application subject to the 
requirements of 35 U.S.C.  122 or whether the submission is made in a 
reissue application or reexamination  file open to the public under 37 CFR 
1.11(b) or (d). In any event, Office personnel  must not disclose such 
materials to the public without authorization. Upon  receipt of the 
submission, the transmittal letter and the envelope or container  will be 
date stamped and brought to the attention of the examiner or other  Office 
employee responsible for evaluating the submission. The receipt of the 
transmittal letter and envelope or container will be noted on the 
"Contents"  of the application or reexamination file. In addition, the 
face of the application  or reexamination file will have the notation 
placed thereon to indicate that  trade secret, proprietary, or protective 
order material has been filed. The  location of the material will also be 
specified. The words "TRADE SECRET MATERIALS  FILED WHICH ARE NOT OPEN TO 
PUBLIC" on the face of the file are sufficient  to indicate the presence 
of trade secret material. Similar notations will be  made for either 
proprietary or protective order materials.< 


724.04(a) Materials Submitted in an Application Covered by 35 U.S.C. 122 
[R-1] 

        >Any materials submitted under MPEP # 724.02 in an application 
covered  by 35 U.S.C. 122 will be treated in the following manner: 

        (1)   The examiner, or other appropriate Office official who is 
responsible  for considering the information, will make a determination as 
to whether or  not any portion or all of the information submitted is 
important to a reasonable  examiner in deciding whether to allow the 
application to issue as a patent. 
        (2)   If any portion or all of the submitted information is found 
important  to a reasonable examiner in deciding whether to allow the 
application to issue  as a patent, it will be cited in the next Office 
action, or other appropriate  Office communication and will become a part 
of the file history, which upon  issuance of the application as a patent 
would become available to the public. 
        (3)   If any portion or all of the submitted information is found 
not  to be important to a reasonable examiner in deciding whether to allow 
the application  to issue as a patent, the next Office action or other 
appropriate Office communication  will so indicate without including the 
details of the submitted information. 
        (4)   If any portion or all of the submitted information is found 
not  to be important to a reasonable examiner in deciding whether to allow 
the application  to issue as a patent, that information will be resealed 
in its envelope or  container and retained pending the possible filing of 
a petition to expunge  the information. 

        (5)   Any petition to expunge the submitted information or any 
portion  thereof will be treated in accordance with MPEP # 724.05.< 


724.04(b) Materials Submitted in Reissue Applications Open to the Public 
Under 37 CFR 1.11(b) [R-1] 

        >Any materials submitted under MPEP # 724.02 in a reissue 
application  open to the public under 37 CFR 1.11(b) will be treated in 
the following manner: 
        (1)   The submitted information will be maintained separate from 
the  reissue application file and will not be publicly available until a 
determination  has been made as to whether or not the information is 
important to a reasonable  examiner in deciding whether to allow the 
application to issue as a patent. 
        (2)   The examiner, or other appropriate Office official who is 
responsible  for considering the information, will make a determination as 
to whether or  not any portion or all of the information submitted is 
important to a reasonable  examiner in deciding whether to allow the 
application to issue as a patent. 
        (3)   If any portion or all of the submitted information is found 
important  to a reasonable examiner in deciding whether to allow the 
application to issue  as a patent, it will be cited in the next Office 
action or other appropriate  Office communication and will thereafter 
become a permanent part of the reissue  application file and open to the 
public. 

        (4)   If any portion or all of the submitted information is found 
not  to be important to a reasonable examiner in deciding whether to allow 
the application to issue as a patent, the next Office action or other 
appropriate Office communication will so indicate without including in the 
communication  the details of the submitted information. 

        (5)   If any portion or all of the submitted information is found 
not  to be important to a reasonable examiner in deciding whether to allow 
the application  to issue as a patent, that information will be resealed 
in its envelope or  container and retained separate from the application 
file, and unavailable  to the public, pending the possible filing of a 
petition to expunge the information. 
        (6)   Pending the filing of the petition to expunge the sealed 
envelope  or container should be clearly marked "Not Open To The Public" 
and Office personnel  will not make such envelope or container available 
to any member of the public  inspecting the reissue application file. 

        (7)   Any petition to expunge a portion or all of the submitted 
information  will be treated in accordance with MPEP # 724.05.< 


724.04(c) Materials Submitted in Reexamination File Open to the Public 
Under 37 CFR 1.11(d) [R-1] 

        >Any materials submitted under MPEP # 724.02 in a reexamination 
file  open to the public under 37 CFR 1.11(d) will be treated in the 
following manner: 
        (1)   The submitted information will be maintained separate from 
the  reexamination file and will not be publicly available until a 
determination  has been made as to whether or not the information is 
important to a reasonable  examiner in deciding whether or not a claim is 
patentable. 

        (2)   The examiner, or other appropriate Office official who is 
responsible  for considering the information, will make a determination as 
to whether or  not any portion or all of the information submitted is 
important to a reasonable  examiner in deciding whether or not a claim is 
patentable. 

        (3)   If any portion or all of the submitted information is found 
important  to a reasonable examiner in deciding whether or not a claim is 
patentable,  it will be cited in the next Office action or other 
appropriate Office communication  and will thereafter become a permanent 
part of the reexamination file and open  to the public. 

        (4)   If any portion or all of the submitted information is found 
not  to be important to a reasonable examiner in deciding whether or not a 
claim  is patentable, the next Office action or other appropriate Office 
communication  will so indicate without including in the communication the 
details of the  submitted information. 

        (5)   If any portion or all of the submitted information is found 
not  to be important to a reasonable examiner in deciding whether or not a 
claim  is patentable, that information will be resealed in its envelope or 
container  and retained separate from the reexamination file, and 
unavailable to the public,  pending the possible filing of a petition to 
expunge the information. 
        (6)   Pending the filing of the petition to expunge the sealed 
envelope  or container should be clearly marked "Not Open To The Public" 
and Office personnel  will not make such envelope or container available 
to any member of the public  inspecting the reexamination file. 

        (7)   Any petition to expunge a portion or all of the submitted 
information  will be treated in accordance with MPEP # 724.05.< 


724.05      Petition To Expunge Materials Submitted Under MPEP # 724.02 
[R-1] 

        >A petition to expunge information submitted under MPEP # 724.02 
will  be entertained only if the petition fee (37 CFR 1.17(h)) is filed 
and the information  has been found not to be important to a reasonable 
examiner in deciding on  patentability. If the information is found to be 
important to a reasonable  examiner in deciding on patentability, any 
petition to expunge the information  will be denied. Any such petition to 
expunge information submitted under MPEP  # 724.02 should be directed to 
the Office of the Assistant Commissioner for  Patents, Crystal Park 2, 
Suite 923. Such petition must contain: 

        (1)   A clear identification of the information to be expunged 
without  disclosure of the details thereof. 

        (2)   A clear statement that the information to be expunged is 
trade  secret material, proprietary material, and/or subject to a 
protective order,  and that the information has not been otherwise made 
public. 

        (3)   A clear identification of the application paper(s) which 
held  that such information was not important to deciding patentability. 
        (4)   A commitment on the part of the petitioner to retain such 
information  for the period of any patent with regard to which such 
information is submitted. 
        (5)   A statement that the petition to expunge is being submitted 
by,  or on behalf of, the party in interest who originally submitted the 
information. 
        (6)   The fee (37 CFR 1.17(h)) for a petition under 
37 CFR 1.182. 

        Any such petition to expunge may accompany the submission of the 
information  and, in any event, must be submitted in sufficient time that 
it can be acted  on prior to the date on which the patent or reexamination 
certificate issues.  Timely submission of the petition is, accordingly, 
extremely important. If  the petition does not accompany the information 
when it is initially submitted,  the petition should be submitted while 
the application or reexamination is  pending in the examining group and 
before it is transmitted to the Publishing  Division. If, for any reason, 
a decision to expunge cannot be, or is not, made prior to the date  on 
which the patent or reexamination certificate issues any material then in 
the file will remain therein and be open to the public. Accordingly, it is 
 important that both the submission of any material under MPEP # 724.02 
and  the submission of any petition to expunge occur as early as possible 
during  the examination process. 

        It should be noted that petitions to expunge information not 
submitted  under MPEP # 724.02; i.e., information which is a part of the 
original disclosure  such as the specification and drawings, will 
ordinarily not be favorably entertained.< 


Contents 

801         Introduction 

802         Basis for Practice in Statute and Rules 

802.01      Meaning of "Independent" and "Distinct" 

802.02      Definition of Restriction 

803         Restriction  --  When Proper 

803.01      Review by Primary Examiner 

803.02      Restriction - Markush Claims 

803.03      Restriction - Transitional Applications 

803.03(a)   Transitional Application - Linking Claim Allowable 

803.03(b)   Transitional Application - Generic Claim Allowable 

804         Definition of Double Patenting 

804.01      Prohibition of Double Patenting Rejections Under 
            35 U.S.C. 121 

804.02      Avoiding a Double Patenting Rejection 

804.03      Treatment of Commonly Owned Cases of Different 
            Inventive Entities 

804.04      Submission to Group Director 

805         Effect of Improper Joinder in Patent 

806         Determination of Distinctness or Independence 
            of Claimed Inventions 

806.01      Compare Claimed Subject Matter 

806.02      Patentability Over the Prior Art Not Considered 

806.03      Single Embodiment, Claims Defining Same Essential Features 
806.04      Independent Inventions 

806.04(a)   Species - Genus 

806.04(b)   Species May Be Related Inventions 

806.04(c)   Subcombination Not Generic to Combination 

806.04(d)   Definition of a Generic Claim 

806.04(e)   Claims Restricted to Species 

806.04(f)   Claims Restricted to Species, by Mutually Exclusive 
            Characteristics 

806.04(h)   Species Must Be Patentably Distinct From Each Other 
            and From Genus 

806.04(i)   Generic Claims Presented for First Time After Issue 
            of Species 

806.05      Related Inventions 

806.05(a)   Combination and Subcombination or Element 

806.05(b)   Old Combination - Novel Subcombination 

806.05(c)   Criteria of Distinctness for Combination, 
            Subcombination, or Element of a Combination 

806.05(d)   Subcombinations Usable Together 

806.05(e)   Process and Apparatus for Its Practice - Distinctness 
806.05(f)   Process of Making and Product Made - Distinctness 

806.05(g)   Apparatus and Product Made - Distinctness 

806.05(h)   Product and Process of Using 

806.05(i)   Product, Process of Making, and Process of Using 
            -- Product Claim Not Allowable 

807         Patentability Report Practice Has No Effect on 
            Restriction Practice 

808         Reasons for Insisting Upon Restriction 

808.01      Independent Inventions 

808.01(a)   Species 

808.02      Related Inventions 

809         Claims Linking Distinct Inventions 

809.02      Generic Claim Linking Species 

809.02(a)   Election Required 

809.02(b)   Election Required - Generic Claim Allowable 

809.02(c)   Action Following Election 

809.02(d)   No Species Claims 

809.02(e)   Generic Claim Allowable in Substance 

809.03      Linking Claims 

809.04      Retention of Claims to Nonelected Invention 

810         Action on the Merits 

810.01      Not Objectionable When Coupled With Requirement 

810.02      Usually Deferred 

810.03      Given on Elected Invention When Requirement Is Made Final 
811         Time for Making Requirement 

811.02      Even After Compliance With Preceding Requirement 

811.03      Repeating After Withdrawal Proper 

811.04      Proper Even Though Grouped Together in Parent Case 

812         Who Should Make the Requirement 

812.01      Telephone Restriction Practice 

814         Indicate Exactly How Application Is To Be Restricted 

815         Make Requirement Complete 

816         Give Reasons for Holding of Independence or Distinctness 
817         Outline of Letter for Restriction Requirement Between 
            Distinct Inventions 

818         Election and Response 

818.01      Election Fixed by Action on Claims 

818.02      Election Other Than Express 

818.02(a)   By Originally Presented Claims 

818.02(b)   Generic Claims Only - No Election of Species 

818.02(c)   By Optional Cancellation of Claims 

818.03      Express Election and Traverse 

818.03(a)   Response Must Be Complete 

818.03(b)   Must Elect, Even When Requirement Is Traversed 

818.03(c)   Must Traverse To Preserve Right of Petition 

818.03(d)   Traverse of Nonallowance of Linking Claims 

818.03(e)   Applicant Must Make Own Election 

819         Office Generally Does Not Permit Shift 

819.01      Office May Waive Election and Permit Shift 

820         Not an Election; Permissible Shift 

820.01      Old Combination Claimed - Not an Election 

820.02      Interference Issues - Not an Election 

821         Treatment of Claims Held to be Drawn to Nonelected Inventions 
821.01      After Election With Traverse 

821.02      After Election Without Traverse 

821.03      Claims for Different Invention Added After a Office Action 
>821.04     Rejoinder< 

822         Claims to Inventions That Are Not Distinct in 
            Plural Applications of Same Inventive Entity 

822.01      Copending Before the Examiner 

823         Unity of Invention Under the Patent Cooperation Treaty 

801   Introduction 


        This chapter is limited to a discussion of the subject of 
restriction  and double patenting under U.S.C. Title 35  and the Rules of 
Practice as it  relates to national applications filed under 35 U.S.C. 
111. The discussion  of unity of invention under the Patent Cooperation 
Treaty Articles and Rules  as it is applied as an International Searching 
Authority, International Preliminary  Examining Authority, and in 
applications entering the National Stage under  35 U.S.C. 371 as a 
Designated or Elected Office in the Patent and Trademark  Office is 
covered in Chapter 1800. 


802   Basis for Practice in Statute and Rules 


        The basis for restriction and double patenting practices is found 
in  the following statute and rules: 

35 U.S.C. 121.      Divisional applications. 

        If two or more independent and distinct inventions are claimed in 
one  application, the Commissioner may require the application to be 
restricted  to one of the inventions. If the other invention is made the 
subject of a divisional  application which complies with the requirements 
of section 120 of this title  it shall be entitled to the benefit of the 
filing date of the original application.  A patent issuing on an 
application with respect to which a requirement for  restriction under 
this section has been made, or on an application filed as  a result of 
such a requirement shall not be used as a reference either in the  Patent 
and Trademark Office or in the courts against a divisional application  or 
against the original application or any patent issued on either of them, 
if the divisional application is filed before the issuance of the patent 
on  the other application. If a divisional application is directed solely 
to subject  matter described and claimed in the original application as 
filed, the Commissioner  may dispense with signing and execution by the 
inventor. The validity of a  patent shall not be questioned for failure of 
the Commissioner to require the  application to be restricted to one 
invention. 

37 CFR 1.141.     Different inventions in one application. 

        (a) Two or more independent and distinct inventions may not be 
claimed  in one national application, except that more than one species of 
an invention,  not to exceed a reasonable number, may be specifically 
claimed in different  claims in one national application, provided that 
application also includes  an allowable claim generic to all the claimed 
species and all the claims to  species in excess of one are written in 
dependent form (w 1.75) or otherwise  include all the limitations of the 
generic claim. 

        (b) Where claims to all three categories, product, process of 
making  and process of use, are included in a national application, a 
three way requirement  for restriction can only be made where the process 
of making is distinct from  the product. If the process of making and the 
product are not distinct, the  process of using may be joined with the 
claims directed to the product and  the process of making the product even 
though a showing of distinctness between  the product and process of using 
the product can be made. 

37 CFR 1.142.     Requirement for restriction. 

        (a) If two or more independent and distinct inventions are claimed 
 in a single application, the examiner in his action shall require the 
applicant  in his response to that action to elect that invention to which 
his claim shall  be restricted, this official action being called a 
requirement for restriction 
(also known as a requirement for division). If the distinctness and 
independence  of the inventions be clear, such requirement will be made 
before any action  on the merits; however, it may be made at any time 
before final action in the  case, at the discretion of the examiner. 

        (b) Claims to the invention or inventions not elected, if not 
cancelled,  are nevertheless withdrawn from further consideration by the 
examiner by the  election, subject however to reinstatement in the event 
the requirement for  restriction is withdrawn or overruled. 

        The pertinent Patent Cooperation Treaty (PCT) articles and rules 
are  cited and discussed in Chapter 1800. Sections 1868, 1898.02(b) and 
1898.07(c)  should be consulted for discussions on unity of invention: (1) 
before the International  Searching Authority, (2) the International 
Preliminary Examining Authority,  and (3) the National Stage under 35 
U.S.C. 371. 


802.01      Meaning of "Independent" and "Distinct" 


        35 U.S.C. 121 quoted in the preceding section states that the 
Commissioner  may require restriction if two or more "independent and 
distinct" inventions  are claimed in one application. In 37 CFR 1.141, the 
statement is made that  two or more "independent and distinct inventions" 
may not be claimed in one  application. 

        This raises the question of the subjects as between which the 
Commissioner  may require restriction. This, in turn, depends on the 
construction of the  expression "independent and distinct" inventions. 

        "Independent", of course, means not dependent. If  ``distinct" 
means  the same thing, then its use in the statute and in the rule is 
redundant. If  "distinct" means something different, then the question 
arises as to what the  difference in meaning between these two words may 
be. The hearings before the  committees of Congress considering the 
codification of the patent laws indicate  that 35 U.S.C. 121: "enacts as 
law existing practice with 
respect to division, at the same time introducing a number of changes." 
        The report on the hearings does not mention as a change that is 
introduced,  the subjects between which the Commissioner may properly 
require division. 
        The term "independent" as already pointed out, means not 
dependent.  A large number of subjects between which, prior to the 1952 
Act, division had  been proper, are dependent subjects, such, for example, 
as combination and  a subcombination thereof; as process and apparatus 
used in the practice of  the process; as composition and the process in 
which the composition is used;  as process and the product made by such 
process, etc. If section 121 of the  1952 Act were intended to direct the 
Commissioner never to approve division  between dependent inventions, the 
word "independent" would clearly have been  used alone. If the 
Commissioner has authority or discretion to restrict independent 
inventions only, then restriction would be improper as between dependent 
inventions;  e.g., such as the ones used for purpose of illustration 
above. Such was clearly,  however, not the intent of Congress. Nothing in 
the language of the statute  and nothing in the hearings of the committees 
indicate any intent to change  the substantive law on this subject. On the 
contrary, joinder of the term "distinct"  with the term "independent", 
indicates lack of such intent. The law has long  been established that 
dependent inventions (frequently termed related inventions)  such as used 
for illustration above may be properly divided if they are, in 
fact,"distinct" inventions, even though dependent. 

INDEPENDENT 

        The term "independent" (i.e., not dependent) means that there is 
no  disclosed relationship between the two or more subjects disclosed, 
that is,  they are unconnected in design, operation, or effect, for 
example: (1) species  under a genus which species are not usable together 
as disclosed or (2) process  and apparatus incapable of being used in 
practicing the process. 

DISTINCT 

        The term "distinct" means that two or more subjects as disclosed 
are  related, for example, as combination and part (subcombination) 
thereof, process  and apparatus for its practice, process and product 
made, etc., but are capable  of separate manufacture, use, or sale as 
claimed, AND ARE PATENTABLE (novel  and unobvious) OVER EACH OTHER (though 
they may each be unpatentable because  of the prior art). It will be noted 
that in this definition the term related  is used as an alternative for 
dependent in referring to subjects other than  independent subjects. 

        It is further noted that the terms "independent" and ``distinct" 
are  used in decisions with varying meanings.  All decisions should be 
read carefully  to determine the meaning intended. 


802.02      Definition of Restriction 


        Restriction, a generic term, includes that practice of requiring 
an  election between distinct inventions, for example, election between 
combination  and subcombination inventions, and the practice relating to 
an election between  independent inventions, for example, and election of 
species. 


803   Restriction - When Proper  [R-2] 


        Under the statute an application may properly be 
required to be restricted to one of two or more claimed inventions only if 
 they are able to support sep- 
arate patents and they are either independent 
(MPEP w 806.04 - w 806.04(j)) or distinct >(< MPEP 
w 806.05 - w 806.05(i)). 

                ** 

        If the search and examination of an entire application can be made 
 without serious burden, the examiner must examine it on the merits, even 
though  it includes claims to distinct or independent inventions. 

CRITERIA FOR RESTRICTION BETWEEN 
PATENTABLY DISTINCT INVENTIONS 

        There are two criteria for a proper requirement for restriction 
between  patentably distinct inventions: 

(1)   The inventions must be independent (see MPEP # 802.01, # 806.04, # 
808.01)  or distinct as claimed (see MPEP w 806.05 - w 806.05(i)); and 

(2)   There must be a serious burden on the examiner 
if restriction is not required (see MPEP w 803.02 
# 806.04(a)-(j), # 808.01(a) and # 808.02). 

GUIDELINES 

        Examiners must provide reasons and/or examples to support 
conclusions,  but need not cite documents to support the requirement in 
most cases. 
        Where plural inventions are capable of being viewed as related in 
two  ways, both applicable criteria for distinctness must be demonstrated 
to support  a restriction requirement. 

        If there is an express admission that the claimed inventions are 
obvious  over each other within the meaning of 35 U.S.C. 103, restriction 
should not  be required, In re Lee, 199 USPQ 108 (Deputy Asst. Comm'r. for 
Pats 1978). 
        For purposes of the initial requirement, a serious burden on the 
examiner  may be prima facie shown if the examiner shows by appropriate 
explanation either  separate classification, separate status in the art, 
or a different field of  search as defined in MPEP w 808.02.  That prima 
facie showing may be rebutted  by appropriate showings or evidence by the 
applicant. Insofar as the criteria  for restriction practice relating to 
Markush-type claims is concerned, the  criteria is set forth in MPEP w 
803.02.  Insofar as the criteria for restriction  or election practice 
relating to claims to genus-species, see MPEP w 806.04(a) - (j) and MPEP w 
808.01(a). 


803.01      Review by Primary Examiner 


        Since requirements for restriction under Title 
35 U.S.C. 121 are discretionary with the Commissioner, it becomes very 
important  that the practice under this section be carefully administered. 
Notwithstanding  the fact that this section of the statute apparently 
protects the applicant  against the dangers that previously might have 
resulted from compliance with  an improper requirement for restriction, IT 
STILL REMAINS IMPORTANT FROM THE  STANDPOINT OF THE PUBLIC INTEREST THAT 
NO REQUIREMENTS BE MADE WHICH MIGHT  RESULT IN THE ISSUANCE OF TWO PATENTS 
FOR THE SAME INVENTION. Therefore, to  guard against this possibility, the 
primary examiner must personally review  and sign all final requirements 
for restriction. 


803.02      Restriction - Markush Claims [R-2] 


PRACTICE RE MARKUSH-TYPE CLAIMS 

        >If the members of the Markush group are sufficiently few in 
number  or so closely related that a search and examination of the entire 
claim can  be made without serious burden, the examiner must examine all 
claims on the  merits, even though they are directed to independent and 
distinct inventions.  In such a case, the examiner will not follow the 
procedure described below  and will not require restriction.< 

        Since the decisions in In re Weber **, 198 USPQ 328 (CCPA 1978); 
and  In re Haas, 198 USPQ 334 (CCPA 1978), it is improper for the Office 
to refuse  to examine that which applicants regard as their invention, 
unless the subject  matter in a claim lacks unity of invention, In re 
Harnish, 631 F.2d 716, 206  USPQ 300 (CCPA 1980); Ex Parte Hozumi, 3 
USPQ2d 1059 (Bd. Pat. App. & Int.  1984). Broadly, unity of invention 
exists where compounds included within a  Markush group (1) share a common 
utility and (2) share a substantial structural  feature disclosed as being 
essential to that utility. 

        This subsection deals with Markush-type generic claims which 
include  a plurality of alternatively usable substances or members. In 
most cases, a  recitation by enumeration is used because there is no 
appropriate or true generic  language. **>A< Markush-type *>claim can< 
include independent and distinct  inventions. This is true where two or 
more of the members are so unrelated  and diverse that a prior art 
reference anticipating the claim with respect  to one of the members would 
not render the claim obvious under 35 U.S.C. 103  with respect to the 
other member(s).  In applications containing claims of  that nature, the 
examiner may require a provisional election of a single species  prior to 
examination on the merits. The provisional election will be given  effect 
in the event that the Markush-type claim should be found not allowable. 
Following election, the Markush-type claim will be examined fully with 
respect  to the elected species and further to the extent necessary to 
determine patentability.  *>If< Markush-type claim **>is< not 
allowable>over the prior art<, examination  will be limited to the 
Markush-type claim and claims to the elected species,  with claims drawn 
to species patentably distinct from the elected species held  withdrawn 
from further consideration. 

        As an example, in the case of an application with a 
Markush-type claim drawn to the compound C-R, wherein R is a radical 
selected  from the group consisting of A, B, C, D, and E, the examiner may 
require a  provisional election of a single species, CA, CB, CC, CD, or 
CE. The Markush-type  claim would then be examined fully with respect to 
the elected species and  any species considered to be clearly unpatentable 
over the elected species.  If on examination the elected species is found to 
be anticipated or rendered obvious by prior art, the Markush-type claim 
and  claims to the elected species shall be rejected, and claims to the 
non-elected  species would be held withdrawn from further consideration. 
As in the prevailing  practice, a second action on the rejected claims 
would be made final. 
        On the other hand, should no prior art be found that anticipates 
or  renders obvious the elected species, the search of the Markush-type 
claim will  be extended. If prior art is then found that anticipates or 
renders obvious  the Markush-type claim with respect to a non-elected 
species, the Markush-type  claim shall be rejected       and claims to the 
non-elected species held withdrawn  from further consideration. The prior 
art search, however, will not be extended  unnecessarily to cover all 
non-elected species. Should applicant, in response  to this rejection of 
the Markush-type claim, overcome the rejection, as by  amending the 
Markush-type claim to exclude the species anticipated or rendered  obvious 
by the prior art, the amended Markush-type claim will be reexamined.  The 
prior art search will be extended to the extent necessary to determine 
patentability of the Markush-type claim. In the event prior art is found 
during  the reexamination that anticipates or renders obvious the amended 
Markush-type  claim, the claim will be rejected and the action made final. 
Amendments submitted  after the final rejection further restricting the 
scope of the claim may be  denied entry. 

** 


803.03      Restriction - Transitional Applications [R-2] 


PRACTICE RE TRANSITIONAL APPLICATION 

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

***** 

        (b)(1)      In an application, other than for reissue or a design 
patent,  that has been pending for at least three years as of June 8, 
1995, taking into  account any reference made in the application to any 
earlier filed application  under 35 U.S.C. 120, 121 and 365(c), no 
requirement for restriction or for  the filing of divisional applications 
shall be made or maintained in the application  after June 8, 1995, except 
where: 

(i)   the requirement was first made in the application or any earlier 
filed  application under 35 U.S.C. 120, 121 and 365(c) prior to April 8, 
1995; 
(ii)    the examiner has not made a requirement for restriction in the 
present  or parent application prior to April 8, 1995, due to actions by 
the applicant;  or 

(iii)     the required fee for examination of each additional invention 
was  not paid. 

(2)   If the application contains more than one independent and distinct 
invention  and a requirement for restriction or for the filing of 
divisional applications  cannot be made or maintained pursuant to this 
paragraph, applicant will be  so notified and given a time period to: 

(i)   elect the invention or inventions to be searched and examined, if no 
 election has been made prior to the notice, and pay the fee set forth in 
1.17(s)  for each independent and distinct invention claimed in the 
application in excess  of one which applicant elects; 

(ii)    confirm an election made prior to the notice and pay the fee set 
forth  in w 1.17(s) for each independent and distinct invention claimed in 
the application  in addition to the one invention which applicant 
previously elected; or 
(iii)     file a petition under this section traversing the requirement. 
If  the required petition is filed in a timely manner, the original time 
period  for electing and paying the fee set forth in # 1.17(s) will be 
deferred and  any decision on the petition affirming or modifying the 
requirement will set  a new time period to elect the invention or 
inventions to be searched and examined  and to pay the fee set forth in 
# 1.17(s) for each independent and distinct invention claimed in the 
application  in excess of one which applicant elects. 

(3)   The additional inventions for which the required fee has not been 
paid  will be withdrawn from consideration under # 1.142(b). An applicant 
who desires  examination of an invention so withdrawn from consideration 
can file a divisional  application under 35 U.S.C. 121. 

        (c)   The provisions of this section shall not be applicable to 
any  application filed after June 8, 1995. 

        "Restriction" under 37 CFR 1.129(b) applies to both restriction 
requirements  under 37 CFR 1.142 and election of species requirements 
under 37 CFR 1.146. 
        Section 1.129(b)(1) provides for examination of more than one 
independent  and distinct invention in certain applications pending for 3 
years or longer  as of June 8, 1995, taking into account any reference to 
any earlier application  under 35 U.S.C. 120, 121, or 365(c).  Applicant 
will not be permitted to have  such additional invention(s) examined in an 
application if: 

(1)   The requirement was made in the application or in an earlier 
application  relied on under 35 U.S.C. 120, 121, or 365(c) prior to April 
8, 1995; 
(2)   no restriction requirement was made with respect to the invention(s) 
 in the application or earlier application prior to April 8, 1995, due to 
actions  by the applicant; or 

(3)   the required fee for examination of each additional invention was 
not  paid. 

        Only if one of these exceptions applies is a normal restriction 
requirement  appropriate and telephone restriction practice may be used. 

        Examples of what constitute "actions by the applicant" in 37 CFR 
1.129(b)(1)  are: 

(1)   applicant abandoned the application and continued to refile the 
application  such that no Office action could be issued in the 
application, 

(2)   applicant requested suspension of prosecution under 37 CFR 1.103(a) 
such  that no Office action could be issued in the application, 

(3)   applicant disclosed a plurality of independent and distinct 
inventions  in the present or parent application, but delayed presenting 
claims to more  than one of the disclosed independent and distinct 
inventions in the present  or parent application such that no restriction 
requirement could be made prior  to April 8, 1995, and 

(4)   applicant combined several applications, each of which claimed a 
different  independent and distinct invention, into one large "continuing" 
application,  but delayed filing the continuing application first claiming 
more than one  independent and distinct invention such that no restriction 
requirement could  be made prior to April 8, 1995. 

        In examples (1) and (2), the fact that the present or parent 
application  claiming independent and distinct inventions was on an 
examiner's docket for  at least three months prior to abandonment or 
suspension, or in examples (3)  and (4), the fact that the amendment 
claiming independent and distinct inventions  was first filed, or the 
continuing application first claiming the additional  independent and 
distinct inventions was on an examiner's docket, at least three  months 
prior to April 8, 1995, is prima facie evidence that applicant's actions 
did not pre- 
vent the Office from making a requirement for restriction with respect to 
those  independent and distinct inventions prior to April 8, 1995. 
Furthermore, an  extension of time under 37 CFR 1.136(a) does not 
constitute such ``actions  by the applicant" under 37 CFR 1.129(b)(1). 

        NOTE: If an examiner believes an application falls under the 
exception  that no restriction could be made prior to April 8, 1995 due to 
applicant's  action, the application must be brought to the attention of 
the Group Expert  for review. 

        Under 37 CFR 1.129(b)(2), if the application contains claims to 
more  than one independent and distinct invention, and no requirement for 
restriction  or for the filing of divisional applications can be made or 
maintained, applicant  will be notified and given a time period to: 

(i)   elect the invention or inventions to be searched and examined, if no 
 election has been made prior to the notice, and pay the fee set forth in 
37  CFR 1.17(s) for each independent and distinct invention claimed in the 
application  in excess of one which applicant elects, 

(ii)    in situations where an election was made in response to a 
requirement  for restriction that cannot be maintained, confirm the 
election made prior  to the notice and pay the fee set forth in 37 CFR 
1.17(s) for each independent  and distinct invention claimed in the 
application in addition to the one invention  which applicant previously 
elected, or 

(iii)     file a petition under 37 CFR 1.129(b)(2) traversing the 
requirement  without regard to whether the requirement has been made 
final. No petition  fee is required. 37 CFR 1.129(b)(2) also provides that 
if the petition is filed  in a timely manner, the original time period for 
electing and paying the fee  set forth in 37 CFR 1.17(s) will be deferred 
and any decision on the petition  affirming or modifying the requirement 
will set a new time period to elect  the invention or inventions to be 
searched and examined and to pay the fee  set forth in 37 CFR 1.17(s) for 
each independent and distinct invention claimed  in the application in 
excess of one which applicant elects. 

        Under 37 CFR 1.129(b)(3), each additional invention for which the 
required  fee set forth in 37 CFR 1.17(s) has not been paid will be 
withdrawn from consideration  under 37 CFR 1.142(b). An applicant who 
desires examination of an invention  so withdrawn from consideration can 
file a divisional application under 35 U.S.C. 121. 

        Section 1.129(c) clarifies that the provisions of 
37 CFR 1.129(a) and (b) are not applicable to any application filed after 
June  8, 1995. However, any application filed on June 8, 1995, would be 
subject to  a 20-year patent term. 

        Form paragraph 8.41 may be used to notify applicant that 
application  is a transitional application and is entitled to 
consideration of additional  inventions upon payment of the required fee. 

W 8.41      Transitional Restriction or Election of Species Requirement to 
 be Mailed After June 8, 1995 

        This application is subject to the transitional restriction 
provisions  of Public Law 103-465, which became effective on June 8, 1995, 
because: 
1. the application was filed on or before June 8, 1995, and has an 
effective  U.S. filing date of June 8, 1992, or earlier; 

2. a requirement for restriction was not made in the present or a parent 
application  prior to April 8, 1995; and 

3. the examiner was not prevented from making a requirement for 
restriction  in the present or parent application prior to April 8, 1995, 
due to actions  by the applicant. 

        The transitional restriction provisions permit applicant to have 
more  than one independent and distinct invention examined in the same 
application  by paying a fee for each invention in excess of one. 

        Final rules concerning the transition restriction provisions were 
published  in the Federal Register at 60 FR 20195 (April 25, 1995) and in 
the Official  Gazette at 1174 OG 15 (May 2, 1995). The final rules at 
37 CFR 1.17(s) include the fee amount required to be paid for each 
additional  invention as set forth in the following requirement for 
restriction. >See the  current fee schedule for the proper amount of the fee.< 

        Applicant must either: (1) elect the invention or inventions to be 
 searched and examined and pay the fee set forth in 37 CFR 1.17(s) for 
each  independent and distinct invention in excess of one which applicant 
elects;  or (2) file a petition under 37 CFR 1.129(b) traversing the 
requirement. 
Examiner Note: 

        1.  This paragraph should be used in all restriction or election 
of  species requirements made in applications subject to the transition 
restriction  provisions set forth in 37 CFR 1.129(b) where the requirement 
is being mailed  after June 8, 1995. The procedure is NOT applicable to 
any design or reissue  application. 

        2.  This paragraph should be followed by form paragraph(s) 8.01, 
8.02  or 8.08-8.22, as appropriate. 


803.03(a) Transitional Application - Linking Claim Allowable [R-1] 

        Whenever divided inventions in a transitional application are 
rejoined  because a linking claim is allowed (MPEP w 809) and applicant 
paid the fee  set forth in 
37 CFR 1.17(s) for the additional invention, applicant should be notified 
that  he or she may request a refund of the fee paid for that additional 
invention.< 

>803.03(b)  Transitional Application - Generic Claim Allowable [R-1] 

        Whenever claims drawn to an additional species in a transitional 
application  for which applicant paid the fee set forth in 37 CFR 1.17(s) 
are no longer  withdrawn because they are fully embraced by an allowed 
genericclaim, applicant  should be notified that he or she may request a 
refund of the fee paid for  that additional species. 

        The determination of when claims to a non-elected species would no 
 longer be withdrawn should be made 
as indicated in MPEP w 809.02(b), w 809.02(c), or 
w 809.02(d).< 



A80903b01.bmp 



A80903b01.end 




804   Definition of Double Patenting [R-2] 


35 U.S.C. 101.          Inventions Patentable 

        Whoever invents or discovers any new and useful process, machine, 
manufacture,  or composition of matter or any new and useful improvement 
thereof, may obtain  a patent therefore, subject to the conditions and 
requirements of this title. 

35 U.S.C. 121     Divisional Applications 

        If two or more independent and distinct inventions are claimed in 
one  application, the Commissioner may require the application to be 
restricted  to one of the inventions. If the other invention is made the 
subject of a divisional  application which complies with the requirements 
of section 120 of this title  it shall be entitled to the benefit of the 
filing date of the original application.  A patent issuing on an 
application with respect to which a requirement for  restriction under 
this section has been made, or on an application filed as  a result of 
such a requirement, shall not be used as a reference either in  the Patent 
and Trademark Office or in the courts against a divisional application  or 
against the original application or any patent issued on either of them, 
if the divisional application is filed before the issuance of the patent 
on  the other application. If a divisional is directed solely to subject 
matter  described and claimed in the original application as filed, the 
Commissioner  may dispense with signing and execution by the inventor. The 
validity of a  patent shall not be questioned for failure of the 
Commissioner to require the  application to be restricted to one 
invention. 

        The doctrine of double patenting seeks to prevent the unjustified 
extension  of patent exclusivity beyond the term of a patent. The public 
policy behind  this doctrine is that: 

The public should . . . be able to act on the assumption that upon the 
expiration  of the patent it will be free to use not only the invention 
claimed in the  patent but also modifications or variants which would have 
been obvious to  those of ordinary skill in the art at the time the 
invention was made, taking  into account the skill in the art and prior 
art other than the invention claimed  in the issued patent. 

        In re Zickendraht, 319 F.2d 225, 232, 138 USPQ 22, 
27 (CCPA 1963) (Rich, J., concurring). Double patenting results when the 
right  to exclude granted by a first patent is unjustly extended by the 
grant of a  later issued patent or patents. In re Van Ornum, 686 F.2d 937, 
214 USPQ 761 
(CCPA 1982). 

        Before consideration can be given to the issue of double 
patenting,  there must be some common relationship of inventorship and/or 
ownership of  two or more patents or applications. Since the doctrine of 
double patenting  seeks to avoid unjustly extending patent rights at the 
expense of the public,  the focus of any double patenting analysis 
necessarily is on the claims in  the multiple patents or patent 
applications involved in the analysis. 
        There are two types of double patenting rejections. One is the 
"same  invention" type double patenting rejection based on 35 U.S.C. 101 
which states  in the singular that an inventor "may obtain a patent".  The 
second is the  "nonstatutory-type" double patenting rejection based on a 
judicially created  doctrine grounded in public policy and which is 
primarily intended to prevent  prolongation of the patent term by 
prohibiting claims in a second patent not  patentably distinguishing from 
claims in a first patent.  Nonstatutory double  patenting includes one-way 
obviousness, two-way obviousness and nonobviousness  rejections. 

        Refer  to Charts I-A, I-B, II-A, and II-B for an overview of the 
treatment  of applications having conflicting claims. 

I.  INSTANCES WHERE DOUBLE PATENTING            ISSUE CAN BE RAISED 
        A double patenting issue * >may< arise between two or more 
pending  applications, between one or more pending applications and a 
patent, or in  a reexamination proceeding. Double patenting does not 
relate to international  applications which have not yet entered the 
national stage in the United States. 

A.  BETWEEN ISSUED PATENT AND ONE OR MORE APPLICATIONS 

        Double patenting may exist between an issued patent and an 
application  filed by the same inventive entity, or by an inventive entity 
having a common  inventor with the patent, and/or by the owner of the 
patent.  Since the inventor/patent  owner has already secured the issuance 
of a first patent, the examiner must  determine whether the grant of a 
second patent would give rise to an unjustified  extension of the rights 
granted in the first patent. 

B.  Between Copending APPLICATIONS - 
Provisional Rejections 

        Occasionally, the examiner becomes aware of two copending 
applications  filed by the same inventive entity, or by different 
inventive entities having  a common inventor, and/or that are filed by a 
common assignee that would raise  an issue of double patenting if one of the 
applications became a patent.  Where this issue can be 
addressed without violating the confidential status of 




A80400002.bmp 



A80400002.end 



A80400003.bmp 



A80400003.end 



A80400004.bmp 



A80400004.end 



A80400005.bmp 



A80400005.end 



applications (35 U.S.C. 122), the courts have sanctioned the practice of 
making  applicant aware of the potential double patenting problem if one 
of the applications  became a patent by permitting the examiner to make a 
"provisional" rejection  on the ground of double patenting. In re Mott, 
539 F.2d 1291, 190 USPQ 536 
(CCPA 1976); In re Wetterau, 148 USPQ 499 (CCPA 1966). The merits of such 
a  provisional rejection can be addressed by both the applicant and the 
examiner  without waiting for the first patent to issue. 

        The "provisional" double patenting rejection should continue to be 
 made by the examiner in each application as long as there are conflicting 
claims  in more than one application unless that "provisional" double 
patenting rejection  is the only rejection remaining in one of the 
applications. If the "provisional"  double patenting rejection in one 
application is the only rejection remaining  in that application, the 
examiner should then withdraw that rejection and permit  the application 
to issue as a patent, thereby converting the "provisional"  double 
patenting rejection in the other application(s) into a double patenting 
rejection at the time the one application issues as a patent. 

        If the "provisional" double patenting rejections in both 
applications  are the only rejections remaining in those applications, the 
examiner should  then withdraw that rejection in one of the applications 
(e.g., the application  with the earlier filing date) and permit the 
application to issue as a patent.  The examiner should maintain the double 
patenting rejection in the other application  as a "provisional" double 
patenting rejection which will be converted into  a double patenting 
rejection when the one application issues as a patent. 
C.  Reexamination Proceedings 

        * >Under limited circumstances, e.g., where new or amended claims 
are  presented,< double patenting * may be raised in a reexamination 
proceeding.  **  Accordingly, a double patenting issue may * be addressed 
in a reexamination  proceeding.  See MPEP 2258. 

II.   REQUIREMENTS OF A DOUBLE PATENTING  REJECTION (INCLUDING PROVISIONAL 
        REJECTIONS) 

        When a double patenting rejection is appropriate, it must be based 
 either on statutory grounds or nonstatutory grounds. The ground of 
rejection  employed depends upon the relationship of the inventions being 
claimed. Generally,  a double patenting rejection is not permitted where 
the claimed subject matter  is presented in a divisional application as a 
result of a restriction requirement  made in a parent application under 35 
U.S.C. 121. 

        Where the claims of an application are substantively the same as 
those  of a first patent, they are barred under 
35 U.S.C. 101 - the statutory basis for a double patenting rejection. A 
rejection  based on double patenting of the "same invention" type finds 
its support in  the language of 35 U.S.C. 101 which states that "whoever 
invents or discovers  any new and useful process ... may obtain a patent 
therefor ..." (Emphasis  added). Thus, the term "same invention", in this 
context, means an invention  drawn to identical subject matter. Miller v. 
Eagle Mfg. Co., 151 U.S. 186 (1894);  In re Ockert, 
245 F.2d 467, 114 USPQ 330 (CCPA 1957); and In re Vogel, 422 F.2d 438, 164 
 USPQ 619 (CCPA 1970). Where the claims of an application are not the 
"same"  as those of a first patent, but the grant of a patent with the 
claims in the  application would unjustly extend the rights granted by the 
first patent, a  double patenting rejection under nonstatutory grounds is 
proper. 

        In determining whether a proper basis exists to enter a double 
patenting  rejection, the examiner must determine - 

(a)   Whether a double patenting rejection is prohibited by the third 
sentence  of 35 U.S.C. 121? See MPEP 804.01. If such a prohibition 
applies, a double  patenting rejection cannot be made. 

(b)   Whether a statutory basis exists? 

(c)   Whether a nonstatutory basis exists? 

        Each determination must be made on the basis of all the facts in 
the  case before the examiner. Charts I-A, I-B, II-A, and II-B illustrate 
the methodology  of making such a determination. 

        Domination and double patenting should not be confused. They are 
two  separate issues. One patent or application "dominates" a second 
patent or application  when the first patent or application has a broad or 
generic claim which fully  encompasses or reads on an invention defined in 
a narrower or more specific  claim in another patent or application. 
Domination by itself; i.e.,  in the absence of statutory or nonstatutory 
double patenting grounds, cannot  support a double patenting rejection. In 
re Sarett, 140 USPQ 474, 482 (CCPA  1964); In re Kaplan, 229 USPQ 678, 681 
(Fed. Cir. 1986). However, the presence  of domination does not preclude 
double patenting. See, e.g., In re Schneller,  158 USPQ 210 (CCPA 1968). 

A.  STATUTORY DOUBLE PATENTING - 
35 U.S.C. 101 

        In determining whether a statutory basis for a double patenting 
rejection  exists, the question to be asked is: Is the same invention 
being claimed twice?  35 U.S.C. 101 prevents two patents from issuing on 
the same invention. "Same  invention" means identical subject matter. 
Miller v. Eagle Mfg. Co., 151 U.S.  186 (1984); In re Ockert, 114 USPQ 330 
(CCPA 1957); In re Vogel, 164 USPQ 619 
(CCPA 1970). 

        A reliable test for double patenting under 35 U.S.C. 101 is 
whether  a claim in the application could be literally infringed without 
literally infringing  a corresponding claim in the patent. In re Vogel, 
422 F.2d 438, 164 USPQ 619 
(CCPA 1970). Is there an embodiment of the invention that falls within the 
 scope of one claim, but not the other? If there is such an embodiment, 
then  identical subject matter is not defined by both claims and statutory 
double  patenting would not exist. For example, the invention defined by a 
claim reciting  a compound having a "halogen" substituent is not identical 
to or substantively  the same as a claim reciting the same compound except 
having a "chlorine" substituent  in place of the halogen because "halogen" 
is broader than "chlorine." On the  other hand, claims may be differently 
worded and still define the same invention.  Thus, a claim reciting a 
widget having a length of "36 inches" defines the  same invention as a 
claim reciting the same widget having a length of "3 feet." 

        If it is determined that the same invention is being claimed 
twice,  35 U.S.C. 101 precludes the grant of the second patent regardless 
of the presence  or absence of a terminal disclaimer. Vogel, supra. 

        Form paragraphs 8.30 and 8.31 (between an issued patent and one or 
 more applications) or 8.32 (provisional rejections) may be used to make 
statutory  double patenting rejections. 

W   8.30        35 U.S.C. 101, Statutory Basis for Double Patenting 
"Heading"  Only 

        A rejection based on double patenting of the "same invention" type 
 finds its support in the language of 35 U.S.C. 101 which states that 
"whoever  invents or discovers any new and useful process ... may obtain a 
patent therefor  ..." (Emphasis added). Thus, the term "same invention," 
in this context, means  an invention drawn to identical subject matter. 
Miller v. Eagle Mfg. Co., 151  U.S. 186 (1894); In re Ockert, 245 F.2d 
467, 114 USPQ 330 (CCPA 1957); and  In re Vogel, 422 F.2d 438, 164 USPQ 
619 (CCPA 1970). 

        A statutory-type (35 U.S.C. 101) double patenting rejection can be 
 overcome by canceling or amending the conflicting claims so they are no 
longer  coextensive in scope. The filing of a terminal disclaimer cannot 
overcome a  double patenting rejection based upon 35 U.S.C. 101. 

Examiner Note: 

        This form paragraph must be used as a heading for all subsequent 
double  patenting rejections of the statutory (same invention) type using 
either of  form paragraphs 8.31 or 8.32. 

W 8.31 Rejection, 35 U.S.C. 101, Double Patenting      ** 

        Claim[1] rejected under 35 U.S.C. 101 as claiming the same 
invention  as that of claim[ 2] of prior U.S. Patent No. [3]. This is a 
double patenting  rejection. 

Examiner Note 

        1.  This paragraph must be preceded by form paragraph 8.30 and is 
used  only for double patenting rejections of the same invention claimed 
in an earlier  patent; that is, the "scope" of the inventions claimed is 
identical. 
        2.  If the conflicting claims are in another copending 
application,  do not use this paragraph. A provisional double patenting 
rejection should  be made using paragraph 8.32. 

        3.  Do not use this paragraph for non-statutory-type double 
patenting  rejections. If non-statutory type, use appropriate form 
paragraphs 8.33 to  8.39. 

        4.  This paragraph may be used where the conflicting patent and 
the  pending application are: 

(a)   by the same inventive entity, or 

(b)   by a different inventive entity and are commonly assigned even 
though  there is no common inventor, or 

(c)   not commonly assigned but have at least one common inventor. 
        5.  In bracket 3, insert the number of the conflicting patent. 
        6.  If the patent is to a different inventive entity and is 
commonly  assigned with the application, paragraph 8.27 should 
additionally be used to  require the assignee to name the first inventor. 

        7.  If evidence is of record to indicate that the patent is prior 
art  under either 35 U.S.C. 102(f) or (g), a rejection should also be made 
using  paragraphs 7.15 and/or 7.19 in addition to this double patenting 
rejection. 

        8.  If the patent is to a different inventive entity from the 
application  and the effective U.S. filing date of the patent antedates 
the effective filing  date of the application, a rejection under 35 U.S.C. 
102(e) should additionally  be made using paragraph 7.15.02. 

W 8.32 Provisional Rejection, 35 U.S.C. 101, Double Patenting 
   ** 

        Claim[1] provisionally rejected under 35 U.S.C. 101 as claiming 
the  same invention as that of claim[2] of copending Application  No. [3]. 
This  is a provisional double patenting rejection since the conflicting 
claims have  not in fact been patented. 

Examiner Note: 

        1.  This paragraph must be preceded by form paragraph 8.30 and is 
used  only for double patenting rejections of the same invention claimed 
in another  copending application; that is, the scope of the claimed 
inventions is identical. 

        2.  If the conflicting claims are from an issued patent, do not 
use  this paragraph. See paragraph 8.31. 

        3.  Do not use this paragraph for non-statutory-type double 
patenting  rejections. See paragraphs 8.33 to 8.39. 

        4.  This paragraph may be used where the conflicting claims are in 
 a copending application that is: 

(a) by the same inventive entity, or 

(b)   by a different inventive entity and is commonly assigned even though 
 there is no common inventor, or 

(c) not commonly assigned but has at least one common inventor. 

        5.  Paragraph 8.28 may be used in place of or along with this 
paragraph  to resolve any remaining issues relating to priority under 
35 U.S.C. 102(f) or (g). 

        6.  In bracket 3, insert the number of the conflicting 
application. 

        7.  A double patenting rejection should also be made in the 
conflicting  application. 

        8.  If the copending application is by a different inventive 
entity  and is commonly assigned, paragraph 8.27 should additionally be 
used to require  the assignee to name the first inventor. 

        9.  If evidence is also of record to show that either application 
is  prior art unto the other under 35 U.S.C. 102(f) or (g), a rejection 
should  also be made in the other application using paragraphs 7.15 and/or 
7.19 in  addition to this provisional double patenting rejection. 

        10.   If the applications do not have the same inventive entity 
and  effective U.S. filing date, a provisional 102(e) rejection should 
additionally  be made in the later-filed application using paragraph 
7.15.01. 

        If the "same invention" is not being claimed twice, an analysis 
must  be made to determine whether a nonstatutory basis for double 
patenting exists. 

B.  NONSTATUTORY DOUBLE PATENTING 

        A rejection based on nonstatutory double patenting, whether of the 
 obvious type or nonobvious type, is based on a judicially created 
doctrine  grounded in public policy so as to prevent the unjustified or 
improper timewise  extension of the right to exclude granted by a patent. 
In re Sarett, 327 F.2d  1005, 140 USPQ 474 (CCPA 1964); In re Schneller, 
397 F.2d 350, 158 USPQ 210 
(CCPA 1968); In re White, 405 F.2d 904, 160 USPQ 417 (CCPA 1969); In re 
Thorington,  418 F.2d 528, 163 USPQ 644 (CCPA 1969); In re Vogel, 422 F.2d 
438, 164 USPQ  619 (CCPA 1970); In re Van Ornum, 
686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Longi, 759 F.2d 887, 225 
USPQ  645 (Fed. Cir. 1985); In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 
1993). 
1.  Obvious Type 

        In determining whether a nonstatutory basis exists for a double 
patenting  rejection, the first question to be asked is - Does any claim 
in the application  define an invention that is merely an obvious 
variation of an invention claimed  in the patent? If the answer is yes, 
then an "obvious type" nonstatutory double  patenting rejection may be 
appropriate. 

        A double patenting rejection of the obvious type is "analogous to 
[a  failure to meet] the nonobviousness requirement of 35 U.S.C. 103" 
except that  the patent principally underlying the double patenting 
rejection is not considered  prior art. In re Braithwaite, 379 F.2d 594, 
154 USPQ 29 (CCPA 1967). Therefore,  any analysis employed in an 
obvious-type double patenting rejection parallels  the guidelines for 
analysis of a 35 U.S.C. 103 obviousness determination. In  re Longi, 759 
F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Braat, 937 F.2d  589, 19 
USPQ2d 1289 (Fed. Cir. 1991). 

        Since the analysis employed in an obvious-type double patenting 
determination  parallels the guidelines for a 35 U.S.C. 103 rejection, the 
factual inquiries  set forth in Graham v. John Deere Co., 383 U.S. 1, 148 
USPQ 459 (1966), that  are applied for establishing a background for 
determining obviousness under  35 U.S.C. 103 are employed when making an 
obvious-type double patenting analysis.  These factual inquiries are 
summarized as follows: 

(1)   Determine the scope and content of a patent claim and the prior art 
relative  to a claim in the application at issue; 

(2)   Determine the differences between the scope and content of the 
patent  claim and the prior art as determined in (1) and the claim in the 
application  at issue; 

(3)   Determine the level of ordinary skill in the pertinent      art; and 


(4)   Evaluate any objective indicia of nonobviousness. 

        The conclusion of obvious-type double patenting is made in light 
of  these factual determinations. 

        Any obvious-type double patenting rejection should make clear: 
(1)   The differences between the inventions defined by the conflicting 
claims  - a claim in the patent compared to a claim in the application; 
and 
(2)   The reasons why a person of ordinary skill in the art would conclude 
 that the invention defined in the claim in issue is an obvious variation 
of  the invention defined in a claim in the patent. 

  When considering whether the invention defined in a claim of an 
application  is an obvious variation of the invention defined in the claim 
of a patent,  the disclosure of the patent may not be used as prior art. 
This does not mean  that one is precluded from all use of the patent 
disclosure. 

        The specification can always be used as a dictionary to learn the 
meaning  of a term in the patent claim. In re Boylan, 392 F.2d 1017, 157 
USPQ 370 (CCPA  1968). Further, those portions of the specification which 
provide support for  the patent claims may also be examined and considered 
when addressing the issue  of whether a claim in the application defines 
an obvious variation of an invention  claimed in the patent. In re Vogel, 
422 F.2d 438, 164 USPQ 619 >,622< (CCPA  1970). The court in Vogel 
recognized "that it is most difficult, if not meaningless,  to try to say 
what is or is not an obvious variation of a claim," but that  one can 
judge whether or not the invention claimed in an application is an 
obvious variation of an embodiment disclosed in the patent which provides 
support  for the patent claim. According to the court, one must first 
"determine how  much of the patent disclosure pertains to the invention 
claimed in the patent"  because only "[>t<]his portion of the 
specification supports the patent claims  and may be considered." The 
court pointed out that "this use of the disclosure  is not in 
contravention of the cases forbidding its use as prior art, nor is  it 
applying the patent as a reference under 35 U.S.C. 103, since only the 
disclosure  of the invention claimed in the patent may be examined." 

a.  One-Way Obviousness 

        If the application is the later filed case or both are filed on 
the  same day, only a one-way determination of obviousness is needed in 
resolving  the issue of double patenting - i.e., whether the invention 
defined in a claim  in the application is an obvious variation of the 
invention defined in a claim  in the patent. If a claimed invention in the 
application is obvious over a  claimed invention in the patent, there 
would be an unjustified timewise extension  of the patent and an 
obvious-type double patenting rejection is proper. Unless  a claimed 
invention in the application is obvious over a claimed invention  in the 
patent, no double patenting rejection of the obvious-type is made, but 
this does not necessarily preclude a rejection based on nonstatutory, 
nonobvious  double patenting. 

        Similarly, even if the application at issue is the earlier filed 
case,  only a one-way determination of obviousness is needed to support a 
double patenting  rejection, in the absence of a finding of administrative 
delay on the part  of the Office causing delay in prosecution of the 
application at issue, the  earlier filed case. However, if administrative 
delay in prosecution of the  application at issue, i.e., the earlier filed 
case, on the part of the Office  results in earlier issuance of a patent 
on the later filed application containing  conflicting claims, a two-way 
determination of obviousness may be required  to support a double 
patenting rejection. 

        Form paragraph 8.33 and the appropriate one of form paragraphs 
8.34-8.37  may be used to make nonstatutory rejections of the 
obvious-type. 

b.  Two-Way Obviousness 

        If the patent is the later filed case, the question of whether the 
 timewise extension of the right to exclude granted by a patent is 
justified  or unjustified must be addressed. A two-way test need only be 
applied when  there is administrative delay. In the absence of 
administrative delay, a one-way  test is appropriate. In re Goodman, 29 
USPQ2d 2010 (Fed. Cir. 1993). (Applicant's  voluntary decision to obtain 
early issuance of claims directed to a species  and to pursue prosecution 
of previously rejected genus claims in a continuation  is a considered 
election to postpone by the applicant, and not administrative  delay). 
Unless the record clearly shows administrative delay by the Office,  the 
examiner may use the one-way obviousness determination and shift the 
burden  to applicant to show why a two-way obviousness determination is 
required. 
        When making a two-way obviousness determination where appropriate, 
 it is necessary to apply the Graham obviousness analysis twice, once with 
the  application claims as the claims in issue, and once with the patent 
claims  as the claims in issue. Where a two-way obviousness determination 
is required,  an obvious-type double patenting rejection is appropriate 
only where each analysis compels  a conclusion that the invention defined 
in the claims in issue is an obvious  variation of the invention defined 
in a claim in the other application/patent.  If either analysis does not 
compel a conclusion of obviousness, no double patenting  rejection of the 
obvious-type is made, but this does not necessarily preclude  a rejection 
based on nonstatutory, nonobvious double patenting. 

        Although a delay in the processing of applications before the 
Office  that would cause patents to issue in an order different from the 
order in which  the applications were filed is a factor to be considered 
in determining whether  a one-way or two-way obviousness determination is 
necessary to support a double  patenting rejection, it may be very 
difficult to assess whether an applicant  or the administrative process is 
primarily responsible for a delay in the issuance  of a patent. On the one 
hand, it is applicant who presents claims for examination  and pays the 
issue fee. On the other hand, the resolution of legitimate differences  of 
opinion that must be resolved in an appeal process or the time spent in 
an interference proceeding can significantly delay the issuance of a 
patent.  Nevertheless, the reasons for the delay in issuing a patent have 
been considered  in assessing the propriety of a double patenting 
rejection. Thus, in Pierce  v. Allen B. DuMont Laboratories, Inc., 297 
F.2d 323, 131 USPQ 340 (3rd. Cir.  1961), the Court found that 
administrative delay may justify the extension  of patent rights beyond 17 
years but "a considered election to postpone . .  . acquisition of the 
broader [patent after the issuance of the latter filed  application] 
should not be tolerated." In Pierce, the patentee elected to participate 
in an interference proceeding [after all claims in the application had 
been  determined to be patentable] whereby the issuance of the broader 
patent was  delayed by more than seven years after the issuance of the 
narrower patent.  The court determined that the second issued patent was 
invalid on the ground  of double patenting. On the other hand, in General 
Foods Corp. v. Studiengesellschaft  Kohle mbH, 972 F.2d 1272, 23 USPQ2d 
1839 (Fed. Cir. 1992), the court elected  not to hold the patentee 
accountable for a delay in issuing the first filed  application until 
after the second filed application issued as a patent, even  where the 
patentee had intentionally refiled the first filed application as  a 
continuation-in-part after receiving a Notice of Allowance indicating that 
 all claims presented were patentable. Similarly, where, through no fault 
of  the applicant, the claims in a later filed application issue first, an 
obvious-type  double patenting rejection is improper, in the absence of a 
two-way obviousness  determination, because the applicant does not have 
complete control over the  rate of progress of a patent application 
through the Office. In re Braat, 937  F.2d 589, 19 USPQ2d 1289 (Fed. Cir. 
1991). While acknowledging that allowance  of the claims in the earlier 
filed application would result in the timewise  extension of an invention 
claimed in the patent, the court was of the view  that the extension was 
justified under the circumstances in this case, indicating  that a double 
patenting rejection would be proper only if the claimed inventions  were 
obvious over each other - a two-way obviousness determination. 
        Form Paragraph 8.33 and the appropriate one of Form Paragraphs 
8.34-8.37  may be used to make nonstatutory rejections of the obvious 
type. 

W 8.33      Basis For Non-statutory Double Patenting (Obviousness and 
Non-*>obviousness<  type) "Heading" Only 

        The non-statutory double patenting rejection, whether of the 
*>obviousness<-type  or non-*>obviousness<-type, is based on a judicially 
created doctrine grounded  in public policy (a policy reflected in the 
statute) so as to prevent the unjustified  or improper timewise extension 
of the "right to exclude" granted by a patent.  In re Thorington, 418 F.2d 
528, 163 USPQ 644 (CCPA 1969); In re Vogel, 422  F.2d 438, 164 USPQ 619 
(CCPA 1970); In re Van Ornum, 686 F.2d 937, 214 USPQ  761 (CCPA 1982); In 
re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985);  and In re Goodman, 
29 USPQ2d 2010 (Fed. Cir. 1993). 

        A timely filed terminal disclaimer in compliance with 37 CFR 1.321 
(b) and (c) may be used to overcome an actual or provisional rejection 
based  on a non-statutory double patenting ground provided the conflicting 
application  or patent is shown to be commonly owned with this 
application. See 37 CFR 1.78 
(d). 

        Effective January 1, 1994, a registered attorney or agent of 
record  may sign a terminal disclaimer. A terminal disclaimer signed by 
the assignee  must fully comply with 37 CFR 3.73(b) 

Examiner Note: 

        This form paragraph is to be used as a heading before a 
non-statutory  double patenting rejection using any of form paragraphs 
8.34 - 8.39. 
W 8.34      Rejection, Obviousness Type Double Patenting - No Secondary 
Reference(s) 

        Claim[1] rejected under the judicially created doctrine of 
obviousness-type  double patenting as being unpatentable over claim[2] of 
U.S. Patent No. [3].  Although the conflicting claims are not identical, 
they are not patentably  distinct from each other because [4]. 

Examiner Note: 

        1.  This paragraph is used for obviousness-type double patenting 
rejections  based upon a patent. 

        2.  If the obviousness-type double patenting rejection is based 
upon  another application, do not use this paragraph. A provisional 
double patenting rejection should be made using form paragraphs 8.33 and 
8.35  or 8.37. 

        3.  This paragraph may be used where the conflicting invention is 
claimed  in a patent which is: 

(a)   by the same inventive entity, or 

(b)   by a different inventive entity and is commonly assigned even though 
 there is no common inventor, or 

(c)   not commonly assigned but has at least one inventor in common. 
        4.  Form paragraph 8.33 must precede any one of paragraphs 8.34 to 
 8.39 and must be used only ONCE in an Office action. 

        5.  In bracket 3, insert the number of the patent. 

        6.  If evidence indicates that the conflicting patent is prior art 
 under 
35 U.S.C. 102(f) or (g), a rejection should additionally be made under 
102(f)/103>(a)<  or 102(g)/103 >(a)<using paragraph 7.21. 

        7.  If the patent is to another inventive entity and has an 
earlier  U.S. filing date, a rejection under 35 U.S.C. 102(e) or 
102(e)/103 >(a)< may  be made using paragraphs 7.15.02 or 7.21.02. 

        8.  In bracket 4, provide appropriate rationale of obviousness for 
 any claims being rejected over the claims of the cited patent. 

W 8.35 Provisional Rejection, Obviousness Type Double Patenting - No 
Secondary  Reference(s) ** 

        Claim[1] provisionally rejected under the judicially created 
doctrine  of obviousness-type double patenting as being unpatentable over 
claim[2] of  copending Application No. [3]. Although the conflicting 
claims are not identical,  they are not patentably distinct from each 
other because [4]. 

        This is a provisional obviousness-type double patenting rejection 
because  the conflicting claims have not in fact been patented. 

Examiner Note: 

        1.  This paragraph should be used when the conflicting claims are 
in  another copending application. 

        2.  If the conflicting claims are in a patent, do not use this 
paragraph.  Use form paragraphs 8.33 and 8.34. 

        3.  This paragraph may be used where the conflicting claims are in 
 a copending application that is: 

(a)   by the same inventive entity, or 

(b)   is commonly assigned even though there is no common inventor, or 
(c)   not commonly assigned but has at least one common inventor. 
        4.  Form paragraph 8.33 must precede any one of paragraphs 8.34 to 
 8.39 and must be used only ONCE in an office action. 

        5.  If the conflicting application is currently commonly assigned 
but  the file does not establish that the conflicting inventions were 
commonly owned  at the time the later invention was made, form paragraph 
8.28 may be used in  place of or in addition to this form paragraph to 
also resolve any issues relating  to priority under 102(f) and/or (g). 

        6.  In bracket 3, insert the number of the conflicting 
application. 

        7.  A provisional double patenting rejection should also be made 
in  the conflicting application. 

        8.  If evidence shows that either application is prior art unto 
the  other under 35 U.S.C. 102(f) or (g) and the copending application has 
not been  disqualified as prior art in a 103 rejection based on common 
ownership), a  rejection should additionally be made in the other 
application under 35 U.S.C.  102(f)/103 >(a)< or 102(g)/103 >(a)< using 
paragraph 7.21. 

        9.  If the disclosure of one application may be used to support a 
rejection  of the other and the applications have different inventive 
entities and different  U.S. filing dates, use paragraph 7.21.01 to 
additionally make a 102(e)/103  >(a)< rejection in the other application. 

        10.   In bracket 4, provide appropriate rationale for obviousness 
of  claims being rejected over the claims of the cited patent. 

W 8.36      Rejection, Obviousness Type Double Patenting - With Secondary 
Reference(s) 

        Claim[1] rejected under the judicially created doctrine of 
obviousness-type  double patenting as being unpatentable over claim[2] of 
U.S. Patent No. [3]  in view of [4]. [5]. 

Examiner Note: 

        1.  This paragraph is used for obviousness-type double patenting 
rejections  where the primary reference is a conflicting patent. 

        2.  If the obviousness double patenting rejection is based on 
another  application, do not use this paragraph. A provisional 
obviousness-type double  patenting rejection should be made using form 
paragraphs 8.33 and 8.35 or 8.37. 

        3.  This paragraph may be used where the prior invention is 
claimed  in a patent which is: 

(a) by the same inventive entity, or 

(b) by a different inventive entity and is commonly assigned even though 
there  is no common inventor, or 

(c) not commonly assigned but has at least one common inventor. 

        4.  Form paragraph 8.33 must precede any one of paragraphs 8.34 to 
 8.39 and must be used only ONCE in an office action. 

        5.  In bracket 3, insert the number of the conflicting patent. 
        6.  In bracket 4, insert the secondary reference. 

        7.  In bracket 5, insert an explanation of the obviousness-type 
rejection. 

        8.  If evidence shows that the conflicting patent is prior art 
under  102(f) or (g), a rejection should additionally be made under 
102(f)/103>(a)<  or 102(g)/103 >(a)< using paragraph 7.21. 

        9.  If the patent issued to a different inventive entity and has 
an  earlier U.S. filing date, a rejection under 35 U.S.C. 102(e) or 
102(e)/103>(a)<  may be made using paragraphs 7.15.02 or 7.21.02. 

W 8.37      Provisional Rejection, Obviousness Type Double Patenting - 
With  Secondary Reference(s)    ** 

        Claim[1] provisionally rejected under the judicially created 
doctrine  of obviousness-type double patenting as being unpatentable over 
claim[2] of  copending Application No. [3] in view of [4]. [5]. 

        This is a provisional obviousness-type double patenting rejection. 


Examiner Note: 

        1.  This paragraph is used for obviousness-type double patenting 
rejections  where the primary reference is a conflicting application. 

        2.  If the conflicting claims are in a patent, do not use this 
paragraph.  Use form paragraph 8.34. 

        3.  This paragraph may be used where the conflicting claims are in 
 a copending application that is: 

(a)         by the same inventive entity, or 

(b)         is commonly assigned even though there is no common inventor, 
or 

(c)         commonly assigned but has at least one common inventor. 
        4.  Form paragraph 8.33 must precede any one of paragraphs 8.34 to 
 8.39 and must be used only ONCE in an office action. 

        5.  If the conflicting cases are currently commonly assigned but 
the  file does not establish that the conflicting inventions were commonly 
owned  at the time the later invention was made, form paragraph 8.28 may 
be used in  place of or in addition to this form paragraph to also resolve 
any issues relating  to priority under 102(f) and/or (g). 

        6.  In bracket 3, insert the number of the conflicting 
application. 

        7.  In bracket 5, insert an explanation of the obviousness-type 
rejection. 

        8.  A provisional double patenting rejection should also be made 
in  the conflicting application. 

        9.  If evidence shows that either application is prior art unto 
the  other under 35 U.S.C. 102(f) or (g) and the copending application has 
not been  disqualified as prior art in a 103 >(a)< rejection based on 
common ownership,  a rejection should additionally be made under 
35 U.S.C. 102(f)/103 >(a)< or 102(g)/103>(a)<  using paragraph 7.21. 
        10.   If the disclosure of one application may be used to support 
a  rejection of the other and the applications have different inventive 
entities  and different U.S. filing dates, use paragraph 7.21.01 to 
additionally make  a 102(e)/103 >(a)< rejection. 

2.  Nonobviousness Type 

        There are some unique circumstances where it has been recognized 
that  another type of nonstatutory double patenting rejection is 
applicable even  where the inventions claimed in two or more 
applications/patents are considered  nonobvious over each other. These 
circumstances are illustrated by the facts  before the court in In re 
Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968). 

        Schneller disclosed an invention relating to a wire clip having 
three  elements known in the prior art (A, B, and C), and two features (X 
and Y) which  he had invented that could be used separately or in 
combination. Schneller  acknowledged the best mode of his invention used 
the two features (X and Y)  in combination. The claims of the patent were 
directed to a wire clip comprising  ABCX. Schneller voluntarily filed a 
divisional application claiming wire clips  comprising ABCY and ABCXY. 
Without determining that the combinations ABCY and  ABCXY were obvious 
over the combination ABCX claimed in the patent, the court  affirmed the 
double patenting rejection. It was observed that the claims in  both the 
patent and the application cover the preferred embodiment disclosed  in 
both the application and the patent (ABCXY). Since patent protection for 
the metal clips defined by ABCXY, fully disclosed in and covered by the 
claims  of the patent, would be extended by allowance of the appealed 
claims, the double  patenting rejection was affirmed. 

        In making an analysis for this type of nonstatutory double 
patenting,  the first question is: Is the subject matter recited in the 
claims of the application  fully disclosed in the patent and covered by a 
claim in the patent? If the  answer is no, double patenting does not 
exist. If the answer is yes, the second  question is: Is there any reason 
why applicant was prevented from presenting  the same claims for 
examination in the issued patent? If the answer is no,  a double patenting 
rejection is appropriate. 

        A fact situation similar to that in Schneller was presented to a 
Federal  Circuit panel in In re Kaplan, 789 F.2d 1574, 229 USPQ 678 (Fed. 
Cir. 1986).  Kaplan had been issued a patent on a process of making 
chemicals in the presence  of an organic solvent. Among the organic 
solvents disclosed and claimed as  being useful were tetraglyme and 
sulfolane. One unclaimed example in the patent  was specifically directed 
to a mixture of these two solvents. The claims in  the application to 
Kaplan and Walker, the application before the Office, were  directed to 
essentially the same chemical process, but requiring the use of  the 
solvent mixture of tetraglyme and sulfolane. In reversing the double 
patenting  rejection, the court stated that the mere fact that the broad 
process claim  of the patent requiring an organic solvent reads on or 
"dominates" the narrower  claim directed to basically the same process 
using a specific solvent mixture  does not, per se, justify a double 
patenting rejection. The court also pointed  out that the double patenting 
rejection improperly used the disclosure of the  joint invention (solvent 
mixture) in the Kaplan patent specification as though  it were prior art. 

        A significant factor in the Kaplan case was that the broad 
invention  was invented by Kaplan, and the narrow invention (i.e., using a 
specific combination  of solvents) was invented by Kaplan and Walker. 
Since these applications (as  the applications in Braat) were filed before 
the Patent Law Amendments Act  of 1984 (Pub. Law 98-622, November 8, 1984) 
amending 35 U.S.C. 116 to expressly  authorize filing a patent application 
in the names of joint inventors who did  not necessarily make a 
contribution to the invention defined in each claim  in the patent, it was 
necessary to file multiple applications to claim both  the broad and 
narrow inventions. Accordingly, there was a valid reason, driven  by 
statute, why the claims to the specific solvent mixture were not presented 
 for examination in the Kaplan patent application. 

        Each double patenting situation must be decided on its own facts. 
To  the extent that one would view the Schneller and Kaplan decisions to 
be in  conflict, it is clear that Schneller is the controlling precedent. 
Decisions of a three-judge panel  of the Federal Circuit cannot overturn 
prior precedential decisions of the  CCPA. See UMC Elec. Co. v. United 
States, 816 F.2d 647, 2 USPQ2d 1465 (Fed.  Cir. 1987), cert. denied, 484 
U.S. 1025 (1988). 

        Form paragraph 8.33 and the appropriate one of 8.38 (between an 
issued  patent and one or more applications) and 8.39 (provision 
rejections) may be  used to make nonstatutory double patenting rejections 
of the nonobvious type. 

W 8.38      Double Patenting - Non-statutory, Non-obvious With a Patent 
        Claim[1] rejected under the judicially created doctrine of double 
patenting  over claim[2] of U. S. Patent No. [3] since the claims, if 
allowed, would improperly  extend the "right to exclude" already granted 
in the patent. 

        The subject matter claimed in the instant application is fully 
disclosed  in the patent and is covered by the patent since the patent and 
the application  are claiming common subject matter, as follows: [4]. 

        Furthermore, there is no apparent reason why applicant was 
prevented  from presenting claims corresponding to those of the instant 
application during  prosecution of the application which matured into a 
patent. In re Schneller,  397 F.2d 350, 158 USPQ 210 (CCPA 1968). See also 
MPEP w 804. 

Examiner Note: 

        1.  This form paragraph must be preceded by form paragraph 8.33. 
        2.  Use this form paragraph only when the subject matter of the 
claim(s)  is fully disclosed in, and covered by, at least one claim of an 
issued U.S.  Patent which is commonly owned or where there is common 
inventorship (one or  more inventors in common). 

        3.  In bracket 3, insert the number of the patent. 

        4.  Form paragraph 8.33 must precede any one of paragraphs 8.34 to 
 8.39 and must be used only ONCE in an Office action. 

        5.  If evidence indicates that the conflicting patent is prior art 
 under 35 U.S.C. 102(f) or (g), a rejection should additionally be made 
under 102(f)/103>(a)<  or 102(g)/103 >(a)< using paragraph 7.21. 

        6.  If the patent is to another inventive entity and has an 
earlier  U.S. filing date, a rejection under 35 U.S.C. 102(e) or 
102(e)/103 >(a)< may  be made using paragraphs 7.15.02 or 7.21.02. 

W  8.39       Double Patenting - Non-statutory, Non-obvious With Another 
Application 

        Claim[1] rejected under the judicially created doctrine of double 
patenting  over claim[2] of copending Application No. [3]. 

        The subject matter claimed in the instant application is fully 
disclosed  in the referenced copending application and would be covered by 
any patent  granted on that copending application since the referenced 
copending application  and the instant application are claiming common 
subject matter, as follows:  [4]. 

        Furthermore, there is no apparent reason why applicant would be 
prevented  from presenting claims corresponding to those of the instant 
application in  the other copending application. In re Schneller, 397 F.2d 
350, 158 USPQ 210 
(CCPA 1968). See also MPEP w 804. 

Examiner Note: 

        1.  This form paragraph must be preceded by form paragraph 8.33. 
        2.  Use this form paragraph only when the subject matter of the 
claim(s)  is fully disclosed in, and covered by, at least one claim of 
another copending  application which is commonly owned or where there is 
common inventorship (one  or more inventors in common). 

        3.  In bracket 3, insert the number of the conflicting 
application. 

        4.  In bracket 4, insert a description of the subject matter being 
 claimed which is covered in the copending application. 

        5.  Paragraph 8.33 must precede any one of paragraphs 8.34 to 8.39 
 and must be used only ONCE in an office action. 

        6.  If the conflicting application is currently commonly assigned 
but  the file does not establish that the conflicting inventions were 
commonly owned  at the time the later invention was made, form paragraph 
8.28 may be used in 

place of or in addition to this form paragraph to also resolve any issues 
relating  to priority under 102(f) and/or (g). 

        7.  A provisional double patenting rejection should also be made 
in  the conflicting application. 

        8.  If evidence shows that either application is prior art unto 
the  other under 35 U.S.C. 102(f) or (g) and the copending application has 
not been  disqualified (as prior art in a 103 rejection based on common 
ownership), a  rejection should additionally be made in the other 
application under 35 U.S.C.  102(f)/103 >(a)< or 102(g)/103 >(a)< using 
paragraph 7.21. 

        9.  If the disclosure of one application may be used to support a 
rejection  of the other and the applications have different inventive 
entities and different  U.S. filing dates, use paragraph 7.21.01 to 
additionally make a 102(e)/103  >(a)< rejection. 

3. Design/Plant - Utility situations 

        Double patenting issues may be raised where an 
applicant has filed both a utility patent application 
(35 U.S.C. 111) and either an application for a plant patent (35 U.S.C. 
161)  or an application for a design patent (35 U.S.C. 171). In general, 
the same  double patenting principles and criteria that are applied in 
utility-utility  situations are applied to utility-plant or utility-design 
situations. Double  patenting rejections in utility-plant situations may 
be made in appropriate  circumstances. 

        Although double patenting is rare in the context of utility versus 
 design patents, a double patenting rejection of a pending design or 
utility  application can be made on the basis of a previously issued 
utility or design  patent, respectively. Carman Industries Inc. v. Wahl, 
724 F.2d 932, 220 USPQ 481 (Fed. Cir. 1983). The rejection is based on the 
 public policy preventing the extension of the term of a patent. Double 
patenting  may be found in a design-utility situation irrespective of 
whether the claims  in the patent relied on in the rejection and the 
claims in issue involve the  same invention, or whether they involve 
inventions which are obvious variations  of one another. In re Thorington, 
418 F.2d 528, 
163 USPQ 644 (CCPA 1969). 

  In Carman, the court held that no double patenting existed between a 
design  and utility patent since the claims in the utility patent, drawn 
to the interior  construction of a flow promoter, were not directed to the 
same invention or  an obvious variation of the invention claimed in a 
design patent directed to  the visible external surface configuration of a 
storage bin flow promoter.  The majority opinion in this decision appears 
to indicate that a two-way obviousness  determination is necessary in 
design-utility cases. >724 F.2d at 940-41, 220  USPQ at 487-88.<  But see 
Carman (J. Nies, concurring). 

        In Thorington, the court affirmed a double patenting rejection of 
claims  for a fluorescent light bulb in a utility patent application in 
view of a previously  issued design patent for the same bulb. In another 
case, a double patenting  rejection of utility claims for a finger ring 
was affirmed in view of an earlier  issued design patent, where the 
drawing in both the design patent and the utility  application illustrated 
the same article. In re Phelan, 205 F.2d 183, 98 USPQ  156 (CCPA 1953). A 
double patenting rejection of a design claim for a flashlight  cap and 
hanger ring was affirmed over an earlier issued utility patent. In  re 
Barber, 81 F.2d 231, 28 USPQ 187 (CCPA 1936). A double patenting rejection 
 of claims in a utility patent application directed to a balloon tire 
construction  was affirmed over an earlier issued design patent. In re 
Hargraves, 53 F.2d  900, 11 USPQ 240 (CCPA 1931). 

III.            CONTRAST BETWEEN DOUBLE PAT- 
                ENTING REJECTION AND REJECTIONS 
                BASED ON PRIOR ART 

        Rejections over a patent or another copending application based on 
 double patenting or 35 U.S.C. 103 are similar in the sense that both 
require  comparison of the claimed subject matter with at least part of 
the content  of another patent or application, and both may require that 
an obviousness  analysis be made. However, there are significant 
differences between a rejection  based on double patenting and one based 
on 35 U.S.C. 102(e) prior art under  35 U.S.C. 103. In re Bartfeld, 925 
F.2d 1450, 
17 USPQ2d 1885 (Fed. Cir. 1991). 

        One significant difference is that a double patenting rejection 
must  rely on a comparison with the claims in an issued or to be issued 
patent, whereas  an obviousness rejection based on the same patent under 
35 U.S.C. 102(e)/103  relies on a comparison with what is disclosed 
(whether or not claimed) in the  same issued or to be issued patent. In a 
35 U.S.C. 102(e)/103 rejection over  a prior art patent, the reference 
patent is available for all that it fairly  discloses to one of ordinary 
skill in the art, regardless of what is claimed.  In re Bowers, 359 F.2d 
886, 149 USPQ 570 (CCPA 1966). 

        A second significant difference is that a terminal disclaimer 
cannot  be used to obviate a rejection based on 
35 U.S.C. 102(e)/103 prior art. In re Fong, 378 F.2d 977, 154 USPQ 25 
(CCPA  1967). The purpose of a terminal disclaimer is to obviate a double 
patenting  rejection by removing the potential harm to the public by 
issuing a second  patent, and not to remove a patent as prior art. 

        Where the inventions are made by inventors that have assigned 
their  rights to a common assignee, the assignee can take some preemptive 
measures  to avoid having a copending application become prior art under 
35 U.S.C. 102(e). The applications can be filed on the same day, or 
copending  applications can be merged into a single continuation-in-part 
application and  the parent applications abandoned. If these steps are 
undesirable or the first  patent has issued, the prior art effect of the 
first patent may be avoided  by a showing under 
37 CFR 1.132 that any unclaimed invention disclosed in the first patent 
was  derived from the inventor of the application before the examiner in 
which the  35 U.S.C. 102(e)/103 rejection was made. In re Katz, 687 F.2d 
450, 215 USPQ  14 (CCPA 1982). >See also MPEP 
w 716.10.< Finally, it may be possible for applicant to respond to a 35 
U.S.C.  102(e)/103 rejection by showing, under 37 CFR 1.131, that the date 
of invention  of the claimed subject matter was prior to the effective 
filing date of the  reference patent which has been relied upon for its 
unclaimed disclosure. >See  MPEP w 715.< 

        Because there are significant differences between a rejection 
based  on double patenting and one based on prior art under 35 U.S.C. 
102(e)/103 over  the same issued patent, it is both appropriate and 
necessary that an examiner  make both rejections when the facts support 
both rejections. A prior art reference  that renders claimed subject 
matter obvious under 35 U.S.C. 102(e)/103 does  not create a double 
patenting situation where that subject matter is not claimed  in the 
reference patent. Where the subject matter that renders a claim obvious 
is both claimed and disclosed in a U.S. patent which satisfies the 
criteria  of 35 U.S.C. 102(e), the examiner should make rejections based 
both on double  patenting and 35 U.S.C. 103. 



804.01      Prohibition of Double Patenting Rejections Under 35 U.S.C. 121 
                                 [R-2] 


        35 U.S.C. 121 authorizes the Commissioner to restrict the claims 
in  a patent application to a single invention when independent and 
distinct inventions  are presented for examination. The third sentence of 
35 U.S.C. 121 prohibits  the use of a patent issuing on an application 
with respect to which a requirement  for restriction has been made, or on 
an application filed as a result of such  a requirement, as a reference 
against any divisional application, if the divisional  application is 
filed before the issuance of the patent. The 35 U.S.C. 121 prohibition 
applies only where the Office has made a requirement for restriction. The 
prohibition  does not apply where the divisional application was 
voluntarily filed by the  applicant and not in response to an Office 
requirement for restriction. This  apparent nullification of double 
patenting as a ground of rejection or invalidity  in such cases imposes a 
heavy burden on the Office to guard against erroneous  requirements for 
restrictions where the claims define essentially the same  invention in 
different language and which, if acquiesced in, might result in  the 
issuance of several patents for the same invention. 

        The prohibition against holdings of double patenting applies to 
requirements  for restriction between the related subjects treated in MPEP 
806.04 through  806.05(i), namely, between combination and subcombination 
thereof, between  subcombinations disclosed as usable together, between 
process and apparatus  for its practice, between process and product made 
by such process and between  apparatus and product made by such apparatus, 
etc., so long as the claims in  each case are filed as a result of such 
requirement. 

        The following are situations where the prohibition of double 
patenting  rejections under 35 U.S.C. 121 does not apply: 

(a)   The applicant voluntarily files two or more cases without a 
restriction  requirement by the examiner. In re Schneller, 397 F.2d 350, 
158 USPQ 210 (CCPA  1968) 

(b)   The claims of the different applications or patents are not 
consonant  with the restriction requirement made by the examiner, since 
the claims have  been changed in material respects from the claims at the 
time the requirement  was made. For example, the divisional application 
filed includes additional  claims not consonant in scope to the original 
claims subject to restriction  in the parent. Symbol Technologies, Inc. v. 
Opticon, Inc., 935 F.2d 1569, 19  USPQ2d 1241 (Fed. Cir. 1991) *>;<Gerber 
Garment Technology, Inc. v. Lectra  Systems Inc., 916 F.2d 683, 16 USPQ2d 
1436 (Fed. Cir. 1990). In order for consonance  to exist, the line of 
demarcation between the independent and distinct inventions  identified by 
the examiner in the requirement for restriction must be maintained. 
Gerber, supra. 

(c)   The restriction requirement was written in a manner which made it 
clear  to applicant that the requirement was made subject to the non 
allowance of  generic or other linking claims and such linking claims are 
subsequently allowed.  Therefore, if a generic or linking claim is 
subsequently allowed, the restriction  requirement should be removed. 

(d)   The requirement for restriction (holding of lack of unity of 
invention)  was only made in an international application by the 
International Searching  Authority or the International Preliminary 
Examining Authority. 

(e)   The requirement for restriction was withdrawn by the examiner before 
 the patent issues. In re Ziegler, 443 F.2d 1211, 170 USPQ 129 (CCPA 
1971). 

(f)   The claims of the second application are drawn to the "same 
invention"  as the first application or patent. Studiengesellschaft Kohle 
mbH v. Northern  Petrochemical Co., 784 F.2d 351, 228 USPQ 837 (Fed. Cir. 
1986). 

        While the situation should not arise where appropriate care is 
exercised  in defining the independent and distinct inventions in a 
restriction requirement,  the issue might arise as to whether 35 U.S.C. 
121 prevents the use of a double  patenting rejection when the identical 
invention is claimed in both the patent  and the pending application. 
Under these circumstances, the Office will make  the double patenting 
rejection because the patentee is entitled only to a single  patent for an 
invention. As expressed in Studiengesellschaft Kohle, supra, 
(J. Newman, concurring), "35 U.S.C. 121 of course does not pro vide that 
multiple  patents may be granted on the identical invention." 


804.02      Avoiding a Double Patenting Rejection 


I.  STATUTORY 

        A rejection based on the statutory type of double patenting can be 
 avoided by canceling the conflicting claims in all but one of the pending 
application(s) or patent, or by amending the  conflicting claims so that 
they are not coextensive in scope. A terminal disclaimer  is not effective 
in overcoming a statutory double patenting rejection. 
        The use of a 37 CFR 1.131 affidavit in overcoming a statutory 
double  patenting rejection is inappropriate. In re Dunn, 349 F.2d 433, 
146 USPQ 479 
(CCPA 1965). Knell v. Muller, 174 USPQ 460 (Com. Pat. 1971), citing the 
CCPA  decisions in In re Ward, 236 F.2d 428, 111 USPQ 101 (CCPA 1956); In 
re Teague,  254 F.2d 145, 117 USPQ 284 (CCPA 1958); and In re Hidy, 303 
F.2d 954, 133 USPQ  65 (CCPA 1962). 

II.   NONSTATUTORY 

37 CFR 1.78.    Claiming benefit of earlier filing date and cross 
references  to other applications. 

***** 

        (d)   Where an application claims an invention which is not 
patentably  distinct from an invention claimed in a commonly owned patent 
with the same  or a different inventive entity, a double patenting 
rejection will be made  in the application. An obviousness-type double 
patenting rejection may be obviated  by filing a terminal disclaimer in 
accordance with w 1.321(b). 

        A rejection based on a nonstatutory type of double patenting can 
be  avoided by filing a terminal disclaimer in the application or 
proceeding in  which the rejection is made. In re Knohl, 155 USPQ 586 
(CCPA 1967); In re Griswold,  150 USPQ 804 (CCPA 1966); In re Vogel, 164 
USPQ 619 (CCPA 1970). The use of  a terminal disclaimer in overcoming a 
nonstatutory double patenting rejection  is in the public interest because 
it encourages the disclosure of additional  developments, the earlier 
filing of applications, and the earlier expiration  of patents whereby the 
inventions covered become freely available to the public.  In re Jentoft, 
157 USPQ 363 (CCPA 1968); In re Eckel, 393 F.2d 848, 157 USPQ  415 (CCPA 
1968); In re Braithwaite, 379 F.2d 594, 154 USPQ 29 (CCPA 1967). 

        The use of a 37 CFR 1.131 affidavit in overcoming a double 
patenting  rejection is inappropriate because the claim or claims in the 
application are  being rejected over a patent which claims the rejected 
invention. In re Dunn,  349 F2.d 433, 146 USPQ 479 (CCPA 1965). Rule 131 
is inapplicable if the claims  of the application and the patent are 
"directed to substantially the same invention".  It is also inapplicable 
if there is a lack of "patentable distinctness" between  the claimed 
subject matter. Knell v. Muller, 174 USPQ 460 (Com. Pat. 1971),  citing 
the CCPA decisions in In re Ward, 236 F.2d 428, 111 USPQ 101 (CCPA 1956); 
In re Teague, 254 F.2d 145, 117 USPQ 284 (1958); and In re Hidy, 303 F.2d 
954,  133 USPQ 65 (CCPA 1962). 

        The Patent and Trademark Office cannot ensure that two or more 
cases  will have a common issue date. Applicants are cautioned that 
reliance upon  a common issue date cannot effectively substitute for the 
filing of one or  more terminal disclaimers in order to overcome a proper 
double patenting rejection,  particularly since a common issue date alone 
does not avoid the potential problem  of dual ownership of patents to 
patentably indistinct inventions. 
        A patentee or applicant may disclaim or dedicate to the public the 
 entire term, or any terminal part of the term of a patent. 35 U.S.C. 253. 
The  statute does not provide for a terminal disclaimer of only a 
specified claim  or claims. The terminal disclaimer must operate with 
respect to all claims  in the patent. 

        The filing of a terminal disclaimer to obviate a rejection based 
on  nonstatutory double patenting is not an admission of the propriety of 
the rejection.  Quad Environmental Technologies Corp. v. Union Sanitary 
District, 946 F.2d  870, 20 USPQ 2d 1392 (Fed. Cir. 1991). The court 
indicated that the "filing  of a terminal disclaimer simply serves the 
statutory function of removing the  rejection of double patenting, and 
raises neither a presumption nor estoppel  on the merits of the 
rejection." 

        A terminal disclaimer filed to obviate a double patenting 
rejection  is effective only with respect to the application identified in 
the disclaimer,  unless by its terms it extends to continuing 
applications. If an appropriate  double patenting rejection of the 
nonstatutory type is made in two or more  pending applications, an 
appropriate terminal disclaimer must be filed in each  application. 

        Claims that differ from each other (aside from minor differences 
in  language, punctuation, etc.), whether or not the difference is 
obvious, are  not considered to be drawn to the same invention for double 
patenting purposes  under 35 U.S.C. 101. In cases where the difference in 
claims is obvious, terminal  disclaimers are effective to overcome double 
patenting rejections. However,  such terminal disclaimers must include a 
provision that 
the patent shall be unenforceable if it ceases to be 
commonly owned with the other application or patent. Note 37 CFR 1.321(c). 
 It should be emphasized that a terminal disclaimer cannot be used to 
overcome a rejection under 35 U.S.C.  102(e)/103. 

REQUIREMENTS OF A TERMINAL 
DISCLAIMER 

        A terminal disclaimer is a statement filed by an owner (in whole 
or  in part) of a patent or a patent to be granted that is used to 
disclaim or  dedicate a portion of the entire term of all the claims of a 
patent. The requirements  for a terminal disclaimer are set forth in 37 
CFR 1.321. Sample forms of a  terminal disclaimer are provided in MPEP 
1490. 


804.03      Treatment of Commonly Owned Cases of Different Inventive 
Entities [R-2] 

37 CFR 1.78   Claiming benefit of earlier filing date and cross references 
 to other applications. 

***** 

        (c)   Where two or more applications, or an application and a 
patent  naming different inventors and owned by the same party contain 
conflicting  claims, and there is no statement of record indicating that 
the claimed inventions  were commonly owned or subject to an obligation of 
assignment to the same person  at the time the later invention was made, 
the assignee may be called upon to  state whether the claimed inventions 
were commonly owned or subject to an obligation  of assignment to the same 
person at the time the later invention was made,  and if not, indicate 
which named inventor is the prior inventor. In addition  to making said 
statement, the assignee may also explain why an interference  should or 
should not be declared. 

        (d)   Where an application claims an invention which is not 
patentably  distinct from an invention claimed in a commonly owned patent 
with the same  or a different inventive entity, a double patenting 
rejection will be made  in the application. An obviousness-type double 
patenting rejection may be obviated  by filing a terminal disclaimer in 
accordance with w 1.321(b). 

I.  DOUBLE PATENTING 

        The Patent and Trademark Office has withdrawn the Commissioners 
Notice  of January 9, 1967, Double Patenting, 834 O.G. 1615 (Jan. 31, 
1967), to the  extent that it does not authorize a double patenting 
rejection where different  inventive entities are present. The examiner 
may reject claims in commonly  owned applications of different inventive 
entities on the ground of double  patenting. This is in accordance with 
existing case law and prevents an organization  from obtaining two or more 
patents with different expiration dates covering  nearly identical subject 
matter. See In re Zickendraht, 319 F.2d 225, 138 USPQ  22 (CCPA 1963)* 
(the doctrine is well established that claims in different  applications 
need be more than merely different in form or content*>,< and  that 
patentable distinction must exist to entitle applicants to a second 
patent);  In re Christensen, 330 F.2d 652, 
141 USPQ 295 (CCPA 1964). 

        Double patenting rejections can be overcome in certain 
circumstances  by disclaiming, pursuant to the provisions of 37 CFR 1.321, 
the terminal portion  of the term of the later patent and including in the 
disclaimer a provision  that the patent shall be enforceable only for and 
during the period the patent  is commonly owned with the application or 
patent which formed the basis for  the rejection, thereby eliminating the 
problem of extending patent life. 37  CFR 1.78(d). 

II.   DETERMINING PRIORITY; REJECTIONS                  UNDER 35 U.S.C. 
102  AND 103 

        A determination of priority is not required when two inventions 
come  within the provisions of ** 35 U.S.C. 103>(c)<. Two inventions of 
different  inventive entities come within the provisions of ** 35 U.S.C. 
103 >(c)< when 
(1) the later invention is not anticipated by the earlier invention under 
35  U.S.C. 102; (2) the earlier invention qualifies as prior art against 
the later  invention only under subsection (f) or (g) of 35 U.S.C. 102; 
and (3) the inventions  were, at the time the later invention was made, 
owned by the same person or  subject to an obligation of assignment to the 
same person. If the two inventions  come within the provisions of ** 35 
U.S.C. 103>(c)<, it is not necessary to  determine priority of invention 
since the earlier invention is disqualified  as prior art against the 
later invention and since double patenting rejections  can be used to 
ensure that the patent terms expire together. In circumstances  where the 
inventions of different inventive entities come within the provisions  of 
35 U.S.C. 103>(c)<, no inquiry under 37 CFR 1.78(c) should be made since 
it is unnecessary to determine the prior inventor. However, if there is no 
 evidence that claims of applications of different inventive entities come 
within  the provisions of ** 35 U.S.C. 103>(c)< and if the applications 
are owned by  the same party and contain conflicting claims, it is 
necessary to determine  the prior inventor unless the conflicting claims 
by all but one inventive entity  are eliminated. 

        Form paragraphs 8.27 and 8.28 may be used to require the applicant 
 to name the prior inventor under 
37 CFR 1.78(c). 

        Before making the requirement to state the prior inventor under 37 
 CFR 1.78(c), with its threat to hold the case abandoned if the statement 
is  not made by the as-signee, the examiner must make sure that claims are 
present  in each case which are conflicting as defined in MPEP 804. See In 
re Rekers,  203 USPQ 1034 (Comm'r. Pats. 1979). 

        In some situations the application file wrappers may reflect which 
 invention is the prior invention, e.g., by reciting that one invention is 
an  improvement of the other invention. See Margolis et al. v. Banner, 202 
USPQ 365 (CCPA 1979) (Court refused to uphold a holding of abandonment for 
failure  to name the prior inventor since the record showed what was 
invented by the  different inventive entities and who was the prior 
inventor). 

        An application in which a requirement to name the prior inventor 
has  been made will not be held abandoned where a timely response 
indicates that  the other application is abandoned or will be permitted to 
become abandoned  and will not be filed as a continuing application. Such 
a response will be  considered sufficient since it renders the requirement 
to identify the prior  inventor moot because the existence of conflicting 
claims is eliminated. 
        If, after taking out a patent, a common assignee presents claims 
for  the first time in a copending application by different inventive 
entities not  patentably distinct from the claims in the patent, the 
claims of the application  should be rejected on the ground that the 
assignee, by taking out the patent  at a time when the application was not 
claiming the patented invention, is  estopped to contend that the patentee 
is not the prior inventor. This rejection  could be overcome if the 
requirements of ** 
35 U.S.C. 103 >(c)< are met. 

# 8.27      Different Inventors, Common Assignee, Same Invention 
        Claim [1] directed to the same invention as that of claim [2] of 
commonly  assigned [3]. The issue of priority under 35 U.S.C. 102 (g) and 
possibly 35  U.S.C. 102(f) of this single invention must be resolved. 

        Since the Patent and Trademark Office normally will not institute 
an  interference between applications or a patent and an application of 
common  ownership (see MPEP w 2302), the assignee is required to state 
which entity  is the prior inventor of the conflicting subject matter. A 
terminal disclaimer  has no effect in this situation since the basis for 
refusing more than one  patent is priority of invention under 35 U.S.C. 
102(f) or (g) and not an extension  of monopoly. 

        Failure to comply with this requirement will result in a holding 
of  abandonment of the application. 

Examiner Note: 

        1.  In bracket 3, insert the U.S. patent number or the copending 
application  serial number. 

        2.  The claims listed in brackets 1 and 2 must be for the same 
invention.  If one invention is obvious in view of the other, do not use 
this paragraph;  see form paragraph 8.28. 

        3.  A provisional or actual statutory double patenting rejection 
may  also be made using paragraphs 8.31 or 8.32. 

        4.  If the commonly assigned application or patent has an earlier 
U.S.  filing date, a rejection under 35 U.S.C. 102(e) may also be made 
using form  paragraph  7.15.01 or 7.15.02. 

W 8.28      Different Inventors, Common Assignee, Obvious Inventions, No 
Evidence  of Common Ownership at time of invention 

        Claim [1] directed to an invention not patentably distinct from 
claim  [2] of commonly assigned [3]. Specifically, [4] 

Examiner Note: 

        1.  This paragraph should be used when the application being 
examined  is commonly assigned with a conflicting application or patent 
but there is  no indication that they were commonly assigned at the time 
the invention was  actually made. 

        2.  If the conflicting claims are in a patent with an earlier U.S. 
 filing date, make a rejection under 35 U.S.C. 102(e)/103 >(a)< using 
paragraph  7.21 in addition to this paragraph. 

        3.  If the conflicting claims are in a commonly-assigned, 
copending  application with an earlier filing date, make a provisional 
102(e)/103 >(a)<  rejection of the claims using paragraph 7.20 and 7.21.01 
in addition to this  paragraph. 

        4.  In bracket 3, insert the number of the conflicting patent or 
application. 

        5.  An obviousness double patenting rejection may also be included 
 in the action using paragraphs 8.34 to 8.36. 

        6.  In bracket 4, explain why the claims in the conflicting cases 
are  not considered to be distinct. 

        7.  Form paragraph 8.28.01 MUST follow this paragraph. 

# 8.28.01 Advisory Information Relating to Paragraph 8.28 

        Commonly assigned [1], discussed above, would form the basis for a 
 rejection of the noted claims under 35 U.S.C. 103 >(a)< if the commonly 
owned  case qualifies as prior art under 35 U.S.C. 102(f) or (g) and the 
conflicting  inventions were not commonly owned at the time the invention 
in this application  was made. In order for the examiner to resolve this 
issue, the assignee is  required under 37 CFR 1.78(c) and 
35 U.S.C. 132 to either show that the conflicting inventions were commonly 
 owned at the time the invention in this application was made or to name 
the  prior inventor of the conflicting subject matter. Failure to comply 
with this  requirement will result in a holding of abandonment of the 
application. 
        A showing the the inventions were commonly owned at the time the 
invention  in this application was made will preclude a rejection under 
35 U.S.C. 103 >(a)< based upon the commonly assigned case as a reference 
under  35 U.S.C. 102(f) or (g). 

Examiner Note: 

        This form paragraph should follow paragraph 8.28 and should only 
be  used ONCE in an Office action. 

        If evidence is of record to indicate that one patent or 
application  is prior art under 35 U.S.C. 102(f) or (g) or 102(f)/103 or 
102(g)/103 to another application, and the inventions do not  fall within 
** 35 U.S.C. 103>(c)<, the examiner should also reject the claims  of the 
other application under 35 U.S.C. 102(f), 102(g), 102(f)/103 or 102(g)/103 
 using the appropriate one(s) *>of< form paragraphs 7.19, 7.15, 7.21 and 
7.21.01.  Rejections under 35 U.S.C. 102 or 103 cannot be obviated by 
filing a terminal  disclaimer. 

# 7.15      Rejection, 35 U.S.C. 102(a), (b) Patent or Publication, and 
(g) 

        Claim[1] rejected under 35 U.S.C. 102([2]) as being [3] by [4]. 
Examiner Note 

        1. In bracket 2, insert the appropriate paragraph letter or 
letters  of 
35 U.S.C 102 in parentheses. If paragraph (e) of 35 U.S.C. 102 is 
applicable,  use form paragraph 7.15.02. 

        2. In bracket 3, insert either "anticipated" or "clearly 
anticipated"  with an explanation at the end of the paragraph. 

        3. In bracket 4, insert the prior art relied upon. 

        4. This rejection must be preceded either by paragraph 7.07 and 
paragraphs  7.08, 7.09, and 7.14 as appropriate, or by paragraph *>7.103<. 

        5. If 35 U.S.C. 102(e) is also being applied, this paragraph must 
be  followed by either form paragraph 7.15.02 or 7.15.03. 

# 7.19 Rejection, 35 U.S.C. 102(f), Applicant not the Inventor 

        Claim [1] rejected under 35 U.S.C. 102(f) because the applicant 
did  not invent the claimed subject matter. [2]. 

Examiner Note: 

        1.  This paragraph must be preceded either by paragraphs 7.07 and 
7.13  or by paragraph *>7.103<. 

        2.  In bracket 2, insert an explanation of the supporting evidence 
 establishing that applicant was not the inventor. 

W 7.21      Rejection, 35 U.S.C. 103 >(a)< 

Claim[1] rejected under 35 U.S.C. 103>(a)< as being unpatentable over [2]. 
 [3]. 

Examiner Note: 

        1.  This paragraph must be preceded either by paragraph 7.20 or 
paragraph  *>7.103<. 

        2.  In bracket 3, an explanation of the rejection applying the 
Graham  >et al.< *>v.<. Deere test must be provided. 

        3.  If this rejection relies upon art that is disqualified under 
35  U.S.C. 102(f) or(g) based upon the common ownership of the inventions, 
paragraph 
 7.20.01 must follow this paragraph. 

        4.  If this rejection is a provisional *>35 U.S.C.103 (a)< 
rejection  based upon a copending application that would comprise prior 
art under 102(e)  if patented, use paragraph 7.21.01 instead of this 
paragraph. 

# 7.21.01 Provisional Rejection, 35 U.S.C. 103>(a)<, Common Assignee or At 
 Least One Common Inventor Only 

        Claim[1] provisionally rejected under 35 U.S.C. 103 >(a)<as being 
obvious  over copending Application No. [2] which has a common [3] with 
the instant  application. Based upon the earlier effective U.S. filing 
date of the copending  application, it would constitute prior art under 
35 U.S.C. 102(e) if patented. This provisional rejection under 35 U.S.C. 
103  is based upon a presumption of future patenting of the conflicting 
application.  [4]. 

        This provisional rejection might be overcome either by a showing 
under  37 CFR 1.132 that any invention disclosed but not claimed in the 
copending  application was derived from the inventor of this application 
and is thus not  the invention "by another", or by a showing of a date of 
invention for the  instant application prior to the effective U.S. filing 
date of the copending  application under 37 CFR 1.131. 

Examiner Note: 

        1. This paragraph is used to provisionally reject claims not 
patentably  distinct from the disclosure in a copending application having 
an earlier U.S.  filing date and also having either a common assignee or 
at least one common  inventor. 

        2. If the claimed invention is fully disclosed in the copending 
application,  use paragraph 7.15.01. 

        3. In bracket 3, insert either "assignee" or "inventor". 

        4. In bracket 4, insert explanation of obviousness. 

        5. If the claimed invention is also claimed in the copending 
application,  a provisional obviousness double patenting rejection should 
additionally be  made using paragraph 8.33 and 8.37. 

        6.  If evidence indicates that the copending application is also 
prior  art under 35 U.S.C. 102(f) or (g) and the copending application has 
not been  disqualified as prior art in a 35 U.S.C. 103 >(a)< rejection 
based upon common  ownership, a rejection should additionally be made 
under 35 U.S.C. 103 >(a)<  using paragraph 7.21 (e.g., applicant has named 
the prior inventor in response  to a requirement made using paragraph 
8.28). 

        Further, if the conflicting applications have different effective 
U.S.  filing dates, the examiner should consider making a provisional 
rejection in  the later filed application, based on the earlier filed 
application, under 35 U.S.C. 102(e) or 102(e)/103, using form paragraph 
7.15.01 or 7.21.01. Similarly,  if an application has a later effective 
U.S. filing date than a conflicting  issued patent, the examiner should 
consider making a rejection in the application,  based on the patent, 
under 35 U.S.C. 102(e) or 102(e)/103, using form paragraph  7.15.02 or 
7.21.02. Rejections under 35 U.S.C. 102 or 103 cannot be obviated  by the 
filing of a terminal disclaimer. 

# 7.15.01 Provisional Rejection, 35 U.S.C. 102(e)- 
Common Assignee or At Least One Common Inventor 

        Claim[1] provisionally rejected under 35 U.S.C. 102(e) as being 
anticipated  by copending Application No. [2] which has a common [3] with 
the instant application. 

        Based upon the earlier effective U.S. filing date of the copending 
 application, it would constitute prior art under 35 U.S.C. 102(e) if 
patented.  This provisional rejection under 35 U.S.C. 102(e) is based upon 
a presumption  of future patenting of the copending application. [4]. 

        This provisional rejection under 35 U.S.C. 102(e) might be 
overcome  either by a showing under 37 CFR 1.132 that any invention 
disclosed but not  claimed in the copending application was derived from 
the inventor of this  application and is thus not the invention "by 
another," or by an appropriate  showing under 37 CFR 1.131. 

        This rejection may not be overcome by the filing of a terminal 
disclaimer.  See In re Bartfeld, 17 USPQ 2d 1685 (Fed. Cir. 1991). 

Examiner Note: 

        1. This paragraph is used to provisionally reject over a copending 
 application with an earlier filing date that discloses the claimed 

invention. The copending application must have either a common assignee or 
 at least one common inventor. 

        2. If the claims are obvious over the invention disclosed in the 
other  copending application, use paragraph 7.21.01. 

        3. In bracket 3, insert either "assignee" or "inventor." 
        4. In bracket 4, an appropriate explanation may be provided in 
support  of the Examiner's position on anticipation, if necessary. 

        5. If the claims of the copending application conflict with the 
claims  of the instant application, a provisional double patenting 
rejection should  also be given using paragraphs 8.30 and 8.32. 

        6. If evidence is additionally of record to show that either 
invention  is prior art unto the other under 35 U.S.C. 102(f) or (g), a 
rejection using  paragraphs 7.13 and/or 7.14 should also be made. 

 W  7.15.02   Rejection, 35 U.S.C. 102(e), Common Assignee or Inventor(s) 
        Claim[1] rejected under 35 U.S.C. 102(e) as being anticipated by 
[2]. 

        The applied reference has a common [3] with the instant 
application.  Based upon the earlier effective U.S. filing date of the 
reference, it constitutes  prior art under 35 U.S.C. 102(e). This 
rejection under 35 U.S.C. 102(e) might  be overcome either by a showing 
under 37 CFR 1.132 that any invention disclosed  but not claimed in the 
reference was derived from the inventor of this application  and is thus 
not the invention "by another", or by an appropriate showing under  37 CFR 
1.131. 

Examiner Note: 

        1. This paragraph is used to reject over a patent with an earlier 
filing  date that discloses, but does not claim the same invention. The 
patent must  have either a common assignee or a common inventor. 

        2. In bracket 3, insert either "assignee" or "inventor." 
# 7.21.02 Rejection, 35 U.S.C. 103>(a)<, Common Assignee or At Least One 
Common  Inventor 

        Claim[1] rejected under 35 U.S.C. 103 >(a)<as being obvious over 
[2]. 
        The applied reference has a common [3] with the instant 
application.  Based upon the earlier effective U.S. filing date of the 
reference, it constitutes  prior art under 35 U.S.C. 102(e). This 
rejection under 35 U.S.C. 103>(a)< might  be overcome either by a showing 
under 37 CFR 1.132 that any invention disclosed  but not claimed in the 
reference was derived from the inventor of this application  and is thus 
not the invention "by another", or by a showing of a date of invention 
for the instant application of any unclaimed subject matter prior to the 
effective  U.S. filing date of the reference under 37 CFR 1.131. [4]. 

Examiner Note: 

        1.  This paragraph is used to reject over a patent with an earlier 
 filing date that discloses the claimed invention. The patent must have 
either  a common assignee or at least one common inventor. 

        2.  In bracket 3, insert either "assignee" or "inventor." 
        3.  In bracket 4, insert explanation of obviousness. 


804.04      Submission to Group Director 


        In order to promote uniform practice, every action containing a 
rejection  on the ground of double patenting of a divisional (or parent) 
application (where  the divisional application was filed because of a 
requirement to restrict by  the examiner under 35 U.S.C. 121, including a 
requirement to elect species,  made by the Office) must be submitted to 
the Group Director for approval prior  to mailing. If the rejection on the 
ground of double patenting is disapproved,  it shall not be mailed but 
other appropriate action shall be taken. Note MPEP  1003, item 4. 


805   Effect of Improper Joinder in Patent 


        35 U.S.C. 121, last sentence provides "The validity of a patent 
shall  not be questioned for failure of the Commissioner to require the 
application  to be restricted to one invention. In other words under this 
statute, no patent  can be held void for improper joinder of inventions 
claimed therein." 

806   Determination of Distinctness or Independence of Claimed Inventions 
[R-2] 

        The general principles relating to distinctness or independence 
may  be summarized as follows: 

1.  Where inventions are independent (i.e., no disclosed relation 
therebetween),  restriction to one thereof is ordinarily proper, MPEP w 
806.04 - w 806.04(j),  though a reasonable number of species may be 
claimed when there is an allowed 
(novel and unobvious) claim 
generic thereto, 37 CFR 1.141, MPEP w 809.02 - 
w 809.02(e). 

2.  Where inventions are related as disclosed but are distinct as claimed, 
 restriction may be proper. 

3.  Where inventions are related as disclosed but are not distinct as 
claimed,  restriction is never proper. *>Where< restriction is required by 
the Office  double patenting cannot be held, >and thus,< it is imperative 
the requirement  should never be made where related inventions as claimed 
are not distinct.  For (2) and (3) see MPEP w 806.05 - w 806.05(i) and>#< 
809.03. See MPEP w 802.01  for criteria for patentably distinct inventions. 


806.01      Compare Claimed Subject Matter 


        In passing upon questions of double patenting and restriction, it 
is  the claimed subject matter that is considered and such claimed subject 
matter  must be compared in order to determine the question of 
distinctness or independence. 

806.02      Patentability Over the Prior Art Not Considered 


        For the purpose of a decision on the question of restriction, and 
for  this purpose only, the claims are ordinarily assumed to be in proper 
form and  patentable (novel and unobvious) over the prior art. 

        This assumption, of course, is not continued after the question of 
 restriction is settled and the question of patentability of the several 
claims  in view of prior art is taken up. 


806.03      Single Embodiment, Claims Defining Same Essential Features 

        Where the claims of an application define the same essential 
characteristics  of a single disclosed embodiment of an invention, 
restriction therebetween  should never be required. This is because the 
claims are but different definitions  of the same disclosed subject 
matter, varying in breadth or scope of definition. 
        Where such claims appear in different applications optionally 
filed  by the same inventor, disclosing the same embodiments, see MPEP w 
804 - w 804.02. 

806.04      Independent Inventions 


        If it can be shown that the two or more inventions are in fact 
independent,  applicant should be required to restrict the claims 
presented to but one of  such independent inventions. For example: 

1.  Two different combinations, not disclosed as capable of use together, 
having  different modes of operation, different functions or different 
effects are  independent. An article of apparel such as a shoe, and a 
locomotive bearing  would be an example. A process of painting a house and 
a process of boring  a well would be a second example. 

2.  Where the two inventions are process and apparatus, and the apparatus 
cannot  be used to practice the process or any part thereof, they are 
independent.  A specific process of molding is independent from a molding 
apparatus which  cannot be used to practice the specific process. 

3.  Where species under a genus are independent, for example, a genus of 
paper  clips having species differing in the manner in which a section of 
the wire  is formed in order to achieve a greater increase in its holding 
power. 

SPECIES ARE TREATED EXTENSIVELY IN THE FOLLOWING SECTIONS 


806.04(a) Species - Genus 


        The statute (35 U.S.C. 121) lays down the general rule that 
restriction  may be required to one of two or more independent inventions. 
37 CFR 1.141  makes an exception to this, providing that a reasonable 
number of species may  be claimed in one application if the other 
conditions of the rule are met. 

806.04(b) Species May Be Related Inventions [R-2] 


        Species, while usually independent>,< may be related under the 
particular  disclosure. Where inventions as disclosed and claimed are both 
(a) species  under a claimed genus and (b) related, then the question of 
restriction must  be determined by both the practice applicable to 
election of species and the  practice applicable to other types of 
restrictions such as those covered in  MPEP w 806.05 - w 806.05(i). If 
restriction is improper under either practice,  it should not be required. 

        For example, two different subcombinations usable with each other 
may  each be a species of some common generic invention. In Ex parte 
Healy, 1898  C.D. 157, 84 O.G. 1281, a clamp for a handle bar stem and a 
specifically different  clamp for a seat post both usable together on a 
bicycle were claimed. In his  decision, the Commissioner considered both 
the restriction practice under election  of species and the practice 
applicable to restriction between combination and  subcombinations. 

        As a further example, species of carbon compounds may be related 
to  each other as intermediate and final product. Thus, these species are 
not independent  and in order to sustain a restriction requirement, 
distinctness must be shown.  Distinctness is proven if it can be shown 
that the intermediate product is  useful other than to make the final 
product. Otherwise, the disclosed relationship would preclude  their being 
issued in separate patents. 

        Form Paragraph 8.14 may be used in intermediate - final product 
restriction  requirements. 

W 8.14      Intermediate - Final Product 

        Inventions [1] and [2] are related as mutually exclusive species 
in  intermediate-final product relationship. Distinctness is proven for 
claims  in this relationship if the intermediate product is useful to make 
other than  the final product (MPEP w 806.04(b), 3rd paragraph), and the 
species are patentably  distinct (MPEP w 806.04(h)). 

        In this instant case, the intermediate product is deemed to be 
useful  as [3] and the inventions are deemed patentably distinct since 
there is nothing  on this record to show them to be obvious variants. 
Should applicant traverse  on the ground that the species are not 
patentably distinct, applicant should  submit evidence or identify such 
evidence now of record showing the species  to be obvious variants or 
clearly admit on the record that this is the case.  In either instance, if 
the examiner finds one of the inventions anticipated  by the prior art, 
the evidence or admission may be used in a rejection under  35 U.S.C. 103 
>(a)< of the other invention. 

Examiner Note: 

        1.  This form paragraph is to be used when claims are presented to 
 both an intermediate and final product (MPEP w 806.04(b)). 

        2.  Conclude restriction requirement with form paragraph 8.21. 
        The intermediate and final product must have a mutually exclusive 
species  relationship and as with all species restrictions, must be 
patentably distinct. 
        Typically, the intermediate loses its identity in the final 
product. 
        Additionally, the intermediate must be shown to be useful to make 
other  than the final product. The examiner must give an example of an 
alternative  use but need not provide documentation. Applicant then has 
the burden to prove  or provide a convincing argument that the 
intermediate does not have the suggested  use. 


806.04(c) Subcombination Not Generic to Combination 


        The situation is frequently presented where two different 
combinations  are disclosed, having a subcombination common to each. It is 
frequently puzzling  to determine whether a claim readable on two 
different combinations is generic  thereto. 

        This was early recognized in Ex parte Smith, 1888 C.D. 131, 44 
O.G.1183,  where it was held that a subcombination was not generic to the 
different combinations  in which it was used. 

        To exemplify, a claim that defines only the subcombination; e.g., 
the  mechanical structure of a joint, is not a generic or genus claim to 
two forms  of a combination; e.g., two different forms of a doughnut 
cooker each of which  utilizes the same form of joint. 


806.04(d) Definition of a Generic Claim 


        In an application presenting three species illustrated, for 
example,  in Figures 1, 2, and 3, respectively, a generic claim should 
read on each of  these views; but the fact that a claim does so read is 
not conclusive that  it is generic. It may define only an element or 
subcombination common to the  several species. 

        It is not possible to define a generic claim with that precision 
existing  in the case of a geometrical term. In general, a generic claim 
should include  no material element additional to those recited in the 
species claims, and  must comprehend within its confines the organization 
covered in each of the  species. 

        For the purpose of obtaining claims to more than one species in 
the  same case, the generic claim cannot include limitations not present 
in each  of the added species claims. Otherwise stated, the claims to the 
species which  can be included in a case in addition to a single species 
must contain all  the limitations of the generic claim. 

        Once a claim that is determined to be generic is allowed, all of 
the  claims drawn to species in addition to the elected species which 
include all  the limitations of the generic claim will ordinarily be 
obviously allowable  in view of the allowance of the generic claim, since 
the additional species  will depend thereon or otherwise include all of 
the limitations thereof. When  all or some of the claims directed to one 
of the species in addition to the  elected species do not include all the 
limitations of the generic claim, then  that species cannot be claimed in 
the same case with the other species; see  MPEP w 809.02(c)(2). 


806.04(e) Claims Restricted to Species 


        Claims are definitions of inventions. Claims are never species. 
Claims  may be restricted to a single disclosed embodiment (i.e. a single 
species,  and thus be designated a specific species claim), or a claim may 
include two  or more of the disclosed embodiments within the breadth and 
scope of definition 
(and thus be designated a generic or genus claim). 

        Species are always the specifically different embodiments. 
        Species are usually but not always independent as disclosed (see 
MPEP  w 806.04(b)) since there is usually no disclosure of relationship 
therebetween.  The fact that a genus for two different embodiments is 
capable of being conceived  and defined, does not affect the independence 
of the embodiments, where the  case under consideration contains no 
disclosure of any commonality of operation,  function or effect. 


806.04(f) Claims Restricted to Species, by Mutually Exclusive 
Characteristics 

        Claims to be restricted to different species must be mutually 
exclusive.  The general test as to when claims are restricted, 
respectively, to different  species is the fact that one claim recites 
limitations which under the disclosure  are found in a first species but 
not in a second, while a second claim recites  limitations disclosed only 
for the second species and not the first. This is  frequently expressed by 
saying that claims to be restricted to different species,  must recite the 
mutually exclusive characteristics of such species. 

806.04(h) Species Must Be Patentably Distinct From Each Other and From 
Genus 

        Where an applicant files a divisional application claiming a 
species  previously claimed but nonelected in the parent case, pursuant to 
and consonant  with a requirement to restrict, there should be no 
determination of whether  or not the species claimed in the divisional 
application is patentable over  the species retained in the parent case 
since such a determination was made  before the requirement to restrict 
was made. 

        In a national application containing claims directed to more than 
a  reasonable number of species, the examiner should not require 
restriction to  a reasonable number of species unless he or she is 
satisfied that he or she  would be prepared to allow claims to each of the 
claimed species over the parent  case, if presented in a divisional 
application filed according to the requirement.  Restriction should not be 
required if the species claimed are considered clearly  unpatentable over 
each other. 

        In making a requirement for restriction in an application claiming 
 plural species, the examiner should group together species considered 
clearly  unpatentable over each other, with the statement that restriction 
as between  those species is not required. 

        Where generic claims are allowed in a national application, 
applicant  may claim in the same application additional species as 
provided by 37 CFR  1.141. As to these, the patentable distinction between 
the species or between  the species and genus is not rigorously 
investigated since they will issue  in the same patent. However, the 
practice stated in MPEP w 706.03(k) may be  followed if the claims differ 
from the allowed genus only by subject matter  that can be shown by 
citation of prior art. 

        Where, however, an applicant optionally files another national 
application  with claims to a different species, or for a species 
disclosed but not claimed  in a parent case as filed and first acted upon 
by the examiner, there should  be close investigation to determine the 
presence or absence of patentable difference.  See MPEP w 804.01 and w 804.02. 


806.04(i) Generic Claims Presented for First Time After Issue of Species 

        The Patent and Trademark Office no longer follows the practice of 
prohibiting  the allowance of generic claims that are presented for the 
first time after  the issuance of a copending application claiming plural 
species. Instead, the  Office may reject the generic claims on the grounds 
of obviousness-type double  patenting. Applicant may overcome such a 
rejection by filing a terminal disclaimer.  See In re Braithwaite, 154 USPQ 
38 (CCPA 1967). 

** 


806.05      Related Inventions 


        Where two or more related inventions are being claimed, the 
principal  question to be determined in connection with a requirement to 
restrict or a  rejection on the ground of double patenting is whether or 
not the inventions  as claimed are distinct. If they are distinct, 
restriction may be proper. If  they are not distinct, restriction is never 
proper. If nondistinct inventions  are claimed in separate applications or 
patents, double patenting must be held,  except where the additional 
applications were filed consonant with a requirement  to restrict in a 
national application 

        The various pairs of related inventions are noted in the following 
 sections. 


806.05(a) Combination and Subcombination or Element 


        A combination is an organization of which a subcombination or 
element  is a part. 

        Relative to questions of restriction where a combination is 
alleged,  the claim thereto must be assumed to be allowable (novel and 
unobvious) as  pointed out in MPEP w 806.02, in the absence of a holding 
by the examiner to  the contrary. When a claim is found in a patent, it 
has already been found  by the Office to be allowable and must be treated 
on that basis. 


806.05(b) Old Combination - Novel Subcombination 


        Restriction is ordinarily not proper between a combination (AB) 
that  the examiner holds to be old and unpatentable and the subcombination 
(B) in  which the examiner holds the novelty, if any, to reside, Ex parte 
Donnell,  1923 C.D. 54, 315 O.G. 398 (Comm'r Pats.1923). (See MPEP w 
820.01.) 

806.05(c) Criteria of Distinctness for Combination, Subcombination, or 
Element of a Combination [R-1] 

        In order to establish that combination and subcombination 
inventions  are distinct, two-way distinctness must be demonstrated. 

        To support a requirement for restriction, both two-way 
distinctness  and reasons for insisting on restriction are necessary, i.e. 
separate classification,  status, or field of search. See MPEP w 808.02. 

        If it can be shown that a combination, as claimed 

(1)   does not require the particulars of the subcombination as claimed 
for  patentability (to show novelty and unobviousness), and 

(2)   the subcombination can be shown to have utility either by itself or 
in  other and different relations, the inventions are distinct. When these 
factors  cannot be shown, such inventions are not distinct. 

        The following examples are included for general guidance. 
1.  SUBCOMBINATION NOT ESSENTIAL TO 
        COMBINATION 

ABbr / Bsp Restriction proper 

        Where a combination as claimed does not set forth the details of 
the  subcombination as separately claimed and the subcombination has 
separate utility,  the inventions are distinct and restriction is proper 
if reasons exist for  insisting upon the restriction; i.e. separate 
classification, status, or field  of search. 

        This situation can be diagramed as combination A Bbr ("br" is an 
abbreviation  for "broad"), and subcombination Bsp ("sp" is an 
abbreviation for "specific").  Bbr indicates that in the combination the 
subcombination is broadly recited  and that the specific characteristics 
set forth in the subcombination claim  Bsp are not set forth in the 
combination claim. 

        Since claims to both the subcombination and combination are 
presented  and assumed to be patentable, the omission of details of the 
claimed subcombination  Bsp in the combination claim A Bbr is evidence 
that the patentability of the  combination does not rely on the details of 
the specific subcombination. 
2.  SUBCOMBINATION ESSENTIAL TO 
        COMBINATION 

A Bsp / Bsp No restriction 

        If there is no evidence that combination A Bsp is patentable 
without  the details of Bsp, restriction should not be required. Where the 
relationship  between the claims is such that the separately claimed 
subcombination Bsp constitutes  the essential distinguishing feature of 
the combination A Bsp as claimed, the  inventions are not distinct and a 
requirement for restriction must not be made,  even though the 
subcombination has separate utility. 

3.  SOME COMBINATION CLAIMS RECITE 
        SPECIFIC FEATURES OF THE SUBCOMBINA-            TION BUT OTHER 
COMBINATION  CLAIMS                  GIVE EVIDENCE THAT THE SUBCOMBINA- 
          TION  IS NOT ESSENTIAL TO THE 
        COMBINATION. 

A Bsp / A Bbr (Evidence claim) / Bsp Restriction 
proper 

        Claim A Bbr is an evidence claim which indicates that the 
combination  does not rely upon the specific details of the subcombination 
for its patentability.  If claim A Bbr is subsequently found to be 
unallowable, the question of rejoinder of the inventions  restricted must 
be considered and the letter to the applicant should so state.  Therefore, 
where the combination evidence claim A Bbr does not set forth the  details 
of the subcombination Bsp and the subcombination Bsp has separate utility, 
 the inventions are distinct and restriction is proper if reasons exist 
for  insisting upon the restriction. 

        In applications claiming plural inventions capable of being viewed 
 as related in two ways, for example, as both combination-subcombination 
and  also as different statutory categories, both applicable criteria for 
distinctness  must be demonstrated to support a restriction requirement. 
See also MPEP w  806.04(b). 

        Form Paragraph 8.15 may be used in combination-subcombination 
restriction  requirements. 

W 8.15      Combination-Subcombination 

** 

        Inventions [1] and [2] are related as combination and 
subcombination.  Inventions in this relationship are distinct if it can be 
shown that (1) the  combination as claimed does not require the 
particulars of the subcombination  as claimed for patentability and (2) 
that the subcombination has utility by  itself or in other combinations. 
(MPEP >w< 806.05(c)). In the instant case,  the combination as claimed 
does not require the particulars of the subcombination  as claimed because 
[3]. The subcombination has separate utility such as [4]. 
Examiner Note: 

        >1 .    This form paragraph is to be used when claims are 
presented  to both combination(s) and subcombination(s) (MPEP w 806.05(c)). 

        2.< In situations involving evidence claims, see MPEP 
*>w 806.05(c),< example 3, and explain in bracket 3. 

        >3.<     In bracket 4, suggest utility other than used in 
combination. 
        >4.         Conclude restriction requirement with form paragraph 
8.21.< 
        The burden is on the examiner to suggest an example of separate 
utility. 
        If applicant proves or provides an argument supported by facts, 
that  the other utility, suggested by the examiner, cannot be 
accomplished, the burden  shifts to the examiner to document a viable 
separate utility or withdraw the  requirement. 


806.05(d) Subcombinations Usable Together [R-1] 


        Two or more claimed subcombinations, disclosed as usable together 
in  a single combination, and which can be shown to be separately usable, 
are usually  distinct from each other. 

        Care should always be exercised in this situation to determine if 
the  several subcombinations are generically claimed. (See MPEP w 
806.04(b).) 
        Form Paragraph 8.16 may be used in restriction requirements 
between  subcombinations. 

W 8.16      Subcombinations, Usable Together 

** 

        Inventions [1] and [2] are related as subcombinations disclosed as 
 usable together in a single combination. The subcombinations are distinct 
from  each other if they are shown to be separately usable. In the instant 
case invention  [3] has separate utility such as [4]. See *MPEP >w< 
806.05(d)*. 

Examiner Note: 

        >1.         This form paragraph is to be used when claims are 
presented  to subcombinations usable together (MPEP w 806.05(d)).< 

        *>2<. In bracket 3, insert the appropriate group number or 
identify  the invention. 

        *>3<. In bracket 4, suggest utility other than with the other 
invention. 
        >4.         Conclude restriction requirement with form paragraph 
8.21.< 
        Only one way Distinctness is Required. 

        The examiner must show, by way of example, that one of the 
subcombinations  has utility other than in the disclosed combination. 

        Care must be taken to determine if the subcombinations are 
generically  claimed. 

        Where subcombinations as disclosed and claimed are both (a) 
species  under a claimed genus and (b) related, then the question of 
restriction must  be determined by both the practice applicable to 
election of species and the  practice applicable to related inventions. If 
restriction is improper under  either practice, it should not be required 
(MPEP w 806.04(b)). 

        The burden is on the examiner to provide an 
example. 

        If applicant proves or provides an argument, supported by facts, 
that  the other use, suggested by the examiner, cannot be accomplished or 
is not  reasonable, the burden is on the examiner to document a viable 
alternative  use or withdraw the requirement. 


806.05(e) Process and Apparatus for Its Practice - Distinctness [R-1] 

        In applications claiming inventions in different statutory 
categories,  only one-way distinctness is generally needed to support a 
restriction requirement.  However, see MPEP w 806.05(c). 

        Process and apparatus for its practice can be shown to be distinct 
 inventions, if either or both of the following can be shown: (1) that the 
process  as claimed can be practiced by another materially different 
apparatus or by  hand, or (2) that the apparatus as claimed can be used to 
practice another  and materially different process. 

        If the apparatus claims include a claim to "means" for practicing 
the  process, the claim is a linking claim and must be examined with the 
elected  invention. If it is ultimately allowed rejoinder is required. 

        Form Paragraph 8.17 may be used to make restriction requirements 
between  process and apparatus. 

W 8.17      Process and Apparatus 

        ** 

        Inventions [1] and [2] are related as process and apparatus for 
its  practice. The inventions are distinct if it can be shown that either: 
(1) the 
process as claimed can be practiced by another materially different 
apparatus  or by hand, or (2) the apparatus as claimed can be used to 
practice another  and materially different process. *MPEP 
>w< 806.05(e)*. In this case [3]. 

Examiner Note: 

        >1. This form paragraph is to be used when claims are presented to 
 both a process and apparatus for its practice (MPEP w 806.05(e)). 
        2.<In bracket 3, use one or more of the following reasons: 
*>a. the< process as claimed can be practiced by another and materially 
different  apparatus such as *>0 ,< 

*>b. the< process as claimed can be practiced by hand, 

*>c. the< apparatus as claimed can be used to practice another and 
materially  different process such as *>0.< 

        >3.         Conclude restriction requirement with form paragraph 
8.21.< 
        The burden is on the examiner to provide reasonable examples that 
recite  material differences. 

        If the apparatus claims include a claim to "means" for practicing 
the  process, this claim is a linking claim (except for the presence of 
this claim  restriction between apparatus and process claims would be 
proper). The linking  claim must be examined with the elected invention, 
but only to the extent necessary  to determine if the linking claim is 
unpatentable. If the linking claim is  unpatentable, restriction is proper. 

        It should be noted that a claim such as, "An apparatus for the 
practice  of the process of claim 1, comprising ...." and then the claim 
continues with  purely apparatus limitations, is not a linking claim. This 
is merely a preamble  similar to a statement of intended use and should be 
treated as any preamble. 
        If applicant proves or provides convincing argument that there is 
no  material difference or in the case of that process that cannot be 
performed  by hand (if examiner so argued), the burden is on the examiner 
to document  another materially different process or apparatus or withdraw 
the requirement. 

806.05(f) Process of Making and Product Made - Distinctness [R-1] 

        A process of making and a product made by the process can be shown 
 to be distinct inventions if either or both of the following can be 
shown: 
(1) that the process as claimed is not an obvious process of making the 
product  and the process as claimed can be used to make other and 
different products,  or (2) that the product as claimed can be made by 
another and materially different  process. 

        Allegations of different processes or products need not be 
documented. 
        A product defined by the process by which it can be made is still 
a  product claim (In re Bridgeford, 149 USPQ 55 (CCPA 1966)) and can be 
restricted  from the process if the examiner can demonstrate that the 
product as claimed  can be made by another materially different process; 
defining the product in  terms of a process by which it is made is nothing 
more than a permissible technique  that applicant may use to define the 
invention. 

        If applicant convincingly traverses the requirement, the burden 
shifts  to the examiner to document a viable alternative process or 
product, or withdraw  the requirement. 

        Form Paragraph 8.18 may be used in restriction requirements 
between  product and process of making. 

W 8.18      Product and Process of Making 

        ** 

        Inventions [1] and [2] are related as process of making and 
product  made. The inventions are distinct if either or both of the 
following can be  shown: (1) that the process as claimed can be used to 
make another and materially  different product or (2) that the product as 
claimed can be made by another  and materially different process (MPEP 
>w< 806.05(f)). In the instant case [3]. 

Examiner Note: 

        >1.   This form paragraph is to be used when claims are presented 
to  both a product and the process of making the product (MPEP 
w 806.05(f)). 

        2.<In bracket 3, use one or more of the following reasons: 
>a. the< process as claimed can be used to make a materially different 
product  such as *>0,< 

>b. the< product as claimed can be made by a materially different process 
such  as *>0.< 

        >3.    Conclude restriction requirement with form paragraph 8.21.< 

806.05(g) Apparatus and Product Made - Distinctness [R-1] 


        An apparatus and a product made by the apparatus can be shown to 
be  distinct inventions if either or both of the following can be shown: 
(1) that  the apparatus as claimed is not an obvious apparatus for making 
the product  and the apparatus as claimed can be used to make other and 
different products,  or (2) that the product as claimed can be made by 
another and materially different  apparatus. 

        Form Paragraph 8.19 may be used for restriction requirements 
between  apparatus and product made. 

W 8.19      Apparatus and Product Made 

        ** 

        Inventions [1] and [2] are related as apparatus and product made. 
The  inventions in this relationship are distinct if either or both of the 
following  can be shown: (1) that the apparatus as claimed is not an 
obvious apparatus  for making the product and the apparatus can be used 
for making a different  product or (2) that the product as claimed can be 
made by another and materially  different apparatus (MPEP >w< 806.05(g)). 
In this case [3]. 

Examiner Note: 

        >1.         This form paragraph is to be used when claims are 
presented  to both the apparatus and product made (MPEP w 806.05(g)). 

        2.<         In bracket 3, use one or more of the following 
reasons: 
*>a. the< apparatus as claimed is not an obvious apparatus for making the 
product  and the apparatus as claimed can be used to make a different 
product such as  *> 0,< 

*>b. the< product can be made by a materially different apparatus such as 
*  0.< 

        >3.         Conclude restriction requirement with form paragraph 
8.21.< 
Only One Way Distinctness is Required 

        The examiner must show by way of example either (1) that the 
apparatus  as claimed is not an obvious apparatus for making the product 
and the apparatus  as claimed can be used to make other and different 
products or (2) that the  product as claimed can be made by another and 
materially different apparatus. 
        See Form Paragraph 8.19 above. 

        The burden is on the examiner to provide an example which need not 
 be documented. 

        If applicant either proves or provides convincing argument that 
the  alternative example suggested by the examiner is not workable, the 
burden is  on the examiner to suggest another viable example or withdraw 
the restriction  requirement. 


806.05(h) Product and Process of Using 


        A product and a process of using the product can be shown to be 
distinct  inventions if either or both of the following can be shown: (1) 
the process  for using as claimed can be practiced with another materially 
different product,  or (2) the product as claimed can be used in a 
materially different process. 
        The burden is on the examiner to provide an example, but the 
example  need not be documented. 

        If the applicant either proves or provides a convincing argument 
that  the alternative use suggested by the examiner cannot be 
accomplished, the burden  is on the examiner to support a viable 
alternative use or withdraw the requirement. 
        Form Paragraph 8.20 may be used in restriction requirements 
between  the product and method of using. 

W 8.20      Product and Process of Using 

        ** 

        Inventions [1] and [2] are related as product and process of use. 
The  inventions can be shown to be distinct if either or both of the 
following can  be shown: (1) the process for using the product as claimed 
can be practiced  with another materially different product or (2) the 
product as claimed can  be used in a materially different process of using 
that product (MPEP >w< 806.05(h)).  In the instant case [3]. 

Examiner Note: 

        >1.         This form paragraph is to be used when claims are 
presented  to both the product and process of using the product (MPEP w 
806.05(h)). 
        2.<         In bracket 3, use one or more of the following 
reasons: 
*>a. the< process as claimed can be practiced with another materially 
different  product such as *> 0,< 

*>b. the< product as claimed can be used in a materially different process 
 such as *> 0.< 

        >3. Conclude restriction requirement with form paragraph 8.21.< 

806.05(i) Product, Process of Making, and Process of Using - Product Claim 
Not Allowable [R-1] 

37 CFR 1.141.     Different inventions in one national application. 
***** 

        (b)   Where claims to all three categories, product, process of 
making,  and process of use, are included in a national application, a 
three way requirement  for restriction can only be made where the process 
of making is distinct from  the product. If the process of making and the 
product are not distinct, the  process of using may be joined with the 
claims directed to the product and  the process of making the product even 
though a showing of distinctness between  the product and process of using 
the product can be made. 

        Where an application contains claims to a product, claims to a 
process  specially adapted for (i.e., not patentably distinct from, as 
defined in MPEP  w 806.05(f)) the product, and claims to a process of 
using the product, and  the product claims are not allowable (i.e., not 
novel and nonobvious), restriction  is proper between the process of 
making and the process of using. In this instance,  applicant may be 
required to elect either (1) the product and process of making  it, or (2) 
the process of using. Unless the examiner can make a showing of 
distinctness between the process of using and the product (MPEP 
w 806.05(h)), the product must also be joined with the process of using in 
 grouping (2). 

        Where the product claims are allowable (i.e., novel and 
nonobvious),  restriction may be required only where the process of making 
and the product  made are distinct (MPEP w 806.05(f)); otherwise, the 
process of using must  be joined with the process of making and product 
made, even if a showing of  distinctness can be made between the product 
and process of using (MPEP w 806.05(h)). 

        Determination of patentability of the product need not be made 
prior  to making a requirement for restriction unless the requirement is 
based on  a determination that the product claims are not allowable. 

        Form paragraph 8.20.>0<1 may be used in product, process of making 
 and process of using situations where the product is not allowable. 
W 8.20.>0<1   Product, Process of Making and Process of Using - Product Is 
 Not Allowable 

        ** 

        Inventions [1] and [2] are related as a process of making and 
process  of using the product. The use as claimed cannot be practiced with 
a materially  different product. Since the product is not allowable, 
restriction is proper  between said method of making and method of using. 
The product claim will be  examined along with the elected invention (MPEP 
>w< 806.05(i)). 

>Examiner  Note: 

        1.  This paragraph is to be used when claims are presented to the 
product,  process of making, and process of using where the product claims 
are not allowable 
(MPEP w 806.05(i)).< 


807   Patentability Report Practice Has No Effect on Restriction Practice 

        Patentability report practice (MPEP w 705), has no effect upon, 
and  does not modify in any way, the practice of restriction, being 
designed merely  to facilitate the handling of cases in which restriction 
cannot properly be  required. 


808   Reasons for Insisting Upon Restriction 


        Every requirement to restrict has two aspects, (1) the reasons (as 
 distinguished from the mere statement of conclusion) why the inventions 
as  claimed are either independent or distinct, and (2) the reasons for 
insisting  upon restriction therebetween as set forth in the following 
sections. 

808.01      Independent Inventions [R-2] 


        Where the inventions claimed are independent; i.e., where they are 
 not connected in design, operation, or effect under the disclosure of the 
particular  application under consideration (MPEP w 806.04), the facts 
relied on for this  conclusion are in essence the reasons for insisting 
upon restriction. This  situation, except for species, is but rarely 
presented, since persons will  seldom file an application containing 
disclosures of independent things. 
> Form Paragraph 8.20.02 may be used when claims are directed to 
independent,  unrelated inventions. 

W 8.20.02 Independent Unrelated Inventions 

        Inventions [1] and [2] are completely unrelated independent 
inventions  directed to different inventive concepts. 

Examiner  Note: 

        This form paragraph is to be used only when claims are presented 
to  totally unrelated independent inventive concepts, e. g., a washing 
machine  and an airplane.< 


808.01(a) Species 


        Where there is no disclosure of relationship between species (see 
MPEP  w 806.04(b)), they are independent inventions and election of one 
invention  following a requirement for restriction is mandatory even 
though applicant  disagrees with the examiner. There must be a patentable 
difference between  the species as claimed, see MPEP w 806.04(h). Thus the 
reasons for insisting  upon election of one species, are the facts relied 
on for the conclusion that  there are claims restricted, respectively, to 
two or more patentably different  species that are disclosed in the 
application, and it is not necessary to show  a separate status in the art 
or separate classification. 

        A single disclosed species must be elected as a prerequisite to 
applying  the provisions of 37 CFR 1.141 to additional species if a 
generic claim is  allowed. 

        Even though the examiner rejects the generic claims, and even 
though  the applicant cancels the same and thus admits that the genus is 
unpatentable, where there is a relationship disclosed  between species, 
such disclosed relation must be discussed and reasons advanced  leading to 
the conclusion that the disclosed relation does not prevent restriction, 
in order to establish the propriety of restriction. 

        Election of species should not be required if the species claimed 
are  considered clearly unpatentable (obvious) over each other. In making 
a requirement  for restriction in an application claiming plural species, 
the examiner should  group together species considered clearly 
unpatentable over each other, with  the statement that restriction as 
between those species is not required. 
        Election of species should be required prior to a search on the 
merits 
(1) in all applications containing claims to a plurality of species with 
no  generic claims, and (2) in all applications containing both species 
claims  and generic or Markush claims. 

        In all applications in which no species claims are present and a 
generic  claim recites such a multiplicity of species that an unduly 
extensive and burdensome  search is required, a requirement for an 
election of species should be made  prior to a search of the generic claim. 

        In all applications where a generic claim is found allowable, the 
application  should be treated as indicated in MPEP ww 809.02 (b), (c), or 
(e). If an election  is made pursuant to a telephone requirement, the next 
action should include  a full and complete action on the elected species 
as well as on any generic  claim that may be present. 


808.02      Related Inventions 


        Where, as disclosed in the application, the several inventions 
claimed  are related, and such related inventions are not patentably 
distinct as claimed,  restriction under 35 U.S.C. 121 is never proper ( 
MPEP w 806.05). If applicant  optionally restricts, double patenting may 
be held. 

        Where the related inventions as claimed are shown to be distinct 
under  the criteria of MPEP ww 806.05(c-i), the examiner, in order to 
establish reasons  for insisting upon restriction, must show by 
appropriate explanation one of  the following: 

(1)   Separate classification thereof: 

        This shows that each distinct subject has attained recognition in 
the  art as a separate subject for inventive effort, and also a separate 
field of  search. Patents need not be cited to show separate 
classification. 
(2)    A separate status in the art when they are classifiable together: 
        Even though they are classified together, each subject can be 
shown  to have formed a separate subject for inventive effort when an 
explanation  indicates a recognition of separate inventive effort by 
inventors. Separate  status in the art may be shown by citing patents 
which are evidence of such  separate status, and also of a separate field 
of search. 

(3)   A different field of search: 

        Where it is necessary to search for one of the distinct subjects 
in  places where no pertinent art to the other subject exists, a different 
field  of search is shown, even though the two are classified together. 
The indicated  different field of search must in fact be pertinent to the 
type of subject  matter covered by the claims. Patents need not be cited 
to show different fields  of search. 

        Where, however, the classification is the same and the field of 
search  is the same and there is no clear indication of separate future 
classification  and field of search, no reasons exist for dividing among 
related inventions. 

809   Claims Linking Distinct Inventions 


        Where, upon examination of an application containing claims to 
distinct  inventions, linking claims are found, restriction can 
nevertheless be required.  See MPEP w 809.03 for definition of linking claims. 

        A letter including only a restriction requirement or a telephoned 
requirement  to restrict (the latter being encouraged) will be effected, 
specifying which  claims are considered linking. See MPEP w 812.01 for 
telephone practice in  restriction requirements. 

        No art will be indicated for this type of linking claim and no 
rejection  of these claims made. 

        A 1-month shortened statutory period will be set for response to a 
 written requirement. Such action will not be an "action on the merits" 
for  the purpose of the second action final program. 

        To be complete, a response to a requirement made according to this 
 section need only include a proper election. 

        The linking claims must be examined with the invention elected, 
and  should any linking claim be allowed, rejoinder of the divided 
inventions must  be permitted. 


809.02      Generic Claim Linking Species 


        Under 37 CFR 1.141, an allowed generic claim may link a reasonable 
 number of species embraced thereby. 

  The practice is stated in 37 CFR 1.146. 

37 CFR 1.146.     Election of species. 

        In the first action on an application containing a generic claim 
and  claims restricted separately to each of more than one species 
embraced thereby,  the examiner may require the applicant in his response 
to that action to elect  that species of his or her invention to which his 
or her claim shall be restricted  if no generic claim is held allowable. 
However, if such application contains  claims directed to more than a 
reasonable number of species, the examiner may  require restriction of the 
claims to not more than a reasonable number of species  before taking 
further action in the case. 


809.02(a) Election Required [R-2] 


        Where generic claims are present, the examiner should send a 
letter  including only a restriction requirement or place a telephone 
requirement to  restrict (the latter being encouraged). See MPEP w 812.01 
for telephone practice  in restriction requirements. 

        Action as follows should be taken: 

(1)   Identify generic claims or indicate that no generic claims are 
present.  See MPEP w 806.04(d) for definition of a generic claim. 

(2)   Clearly identify each (or in aggravated cases at least exemplary 
ones)  of the disclosed species, to which claims are restricted. The 
species are preferably  identified as the species of figures 1, 2, and 3 
or the species of examples  I, II, and III, respectively. In the absence 
of distinct figures or examples  to identify the several species, the 
mechanical means, the particular material,  or other distinguishing 
characteristic of the species should be stated for  each species 
identified. If the species cannot be conveniently identified,  the claims 
may be grouped in accordance with the species to which they are  restricted. 

(3)   Applicant should then be required to elect a single disclosed 
species  under 35 U.S.C. 121, and advised as to the requisites of a 
complete response  and his rights under 37 CFR 1.141. 

        For generic claims, a search should not be made and art should not 
 be cited. 

        A 1-month (not less than 30 days) shortened statutory period will 
be  set for response when a written requirement is made without an action 
on the  merits. This period may be extended under the provisions of 
37 CFR 1.136(a). Such action will not be an "action on the merits" for 
purposes  of the second action final program. 

        To be complete, a response to a requirement made according to this 
 section should include a proper election along with a listing of all 
claims  readable thereon, including any claims subsequently added. 

        In those applications wherein a requirement for restriction is 
accompanied  by an action on all claims, such action will be considered to 
be an action  on the merits and the next action should be made final. 

        Examiners should use Form Paragraphs 8.01 or 8.02 to make election 
 of species requirements. 

W 8.01      Election of Species 

        This application contains claims directed to the following 
patentably  distinct species of the claimed invention: [1]. 

        Applicant is required under 35 U.S.C. 121 to elect a single 
disclosed  species for prosecution on the merits to which the claims shall 
be restricted  if no generic claim is finally held to be allowable. 
Currently, [2] generic. 
        Applicant is advised that a response to this requirement must 
include  an identification of the species that is elected consonant with 
this requirement,  and a listing of all claims readable thereon, including 
any claims subsequently  added. An argument that a generic claim is 
allowable or that all claims are  generic is considered nonresponsive 
unless accompanied by an election. 
        Upon the allowance of a generic claim, applicant will be entitled 
to  consideration of claims to additional species which are written in 
dependent  form or otherwise include all the limitations of an allowed 
generic claim as  provided by 37 CFR 1.141. If claims are added after the 
election, applicant  must indicate which are readable upon the elected 
species. MPEP 809.02(a). 
        Should applicant traverse on the ground that the species are not 
patentably  distinct, applicant should submit evidence or identify such 
evidence now of  record showing the species to be obvious variants or 
clearly admit on the record  that this is the case. In either instance, if 
the examiner finds one of the  inventions unpatentable over the prior art, 
the evidence or admission may be  used in a rejection under 35 U.S.C. 103 
>(a)< of the other invention. 
Examiner Note: 

        In bracket 2, insert the appropriate generic claim information. 
W 8.02      Election When Claims Are Not Restricted to Species 

        Claim [1] generic to a plurality of disclosed patentably distinct 
species  comprising [2]. Applicant is required under 35 U.S.C. 121 to 
elect a single  disclosed species, even though this requirement is traversed. 

        Should applicant traverse on the ground that the species are not 
patentably  distinct, applicant should submit evidence or identify such 
evidence now of  record showing the species to be obvious variants or 
clearly admit on the record  that this is the case. In either instance, if 
the examiner finds one of the  inventions unpatentable over the prior art, 
the evidence or admission may be  used in a rejection under 35 U.S.C. 103 
>(a)< of the other invention. 
Examiner Note: 

        1. This paragraph should be used for the election of species 
requirement  described in MPEP ww 803.02 (Markush group) and 809.02(d) 
(burdensome search  necessary). 

         2. In bracket  2, clearly identify the species from which 
election  is to be made. 

        If claims are added after the election, applicant must indicate 
which  are readable on the elected species. 

        It is necessary to (1) identify generic claims or state that none 
are  present, and (2) to clearly identify each species involved. 


809.02(b) Election Required - Generic Claim Allowable 


        When a claim generic to two or more claimed species is found to be 
 allowable on the first or any subsequent action on the merits and 
election  of a single species has not been made, applicant should be 
informed that the  claim is allowable and generic, and a requirement 
should be made that applicant  elect a single species embraced by the 
allowed genus unless the species claims  are all in the form required by 
37 CFR 1.141 and no more than a reasonable  number of species are claimed. 
Substantially the following should be stated: 
        "Applicant is advised that his or her response to complete must 
include  an identification of the single, disclosed species within the 
allowed genus  that he or she elects and a listing of all claims readable 
thereupon. Applicant  is entitled to consideration of claims to a 
reasonable number of disclosed  species in addition to the elected 
species, which species he or she must identify  and list all claims 
restricted to each, provided all the claims to each additional  species 
are written in dependent form or otherwise include all the limitations  of 
an allowed generic claim as provided by 37 CFR 1.141." 


809.02(c) Action Following Election [R-1] 


        An examiner's action subsequent to an election of species should 
include  a complete action on the merits of all claims readable on the 
elected species. 
(1)   When the generic claims are rejected, or there is no generic claim, 
all  claims not readable on the elected species should be treated 
substantially  as follows: 

"Claims_________ are held to be withdrawn from further consideration under 
 37 CFR 1.142(b) as not readable on the elected species ,there being no 
(allowable)  generic claim." 

(2)   When a generic claim is subsequently found to be allowable, and not 
more  than a reasonable number of additional species are claimed, 
treatment should  be as follows: 

(i)   When all claims to each of the additional species are embraced by an 
 allowable generic claim as provided by 37 CFR 1.141, applicant should be 
advised  of the allowable generic claim and that claims drawn to the 
nonelected species  are no longer withdrawn since they are fully embraced 
by the allowed generic  claim. 

(ii)    When any claim directed to one of said additional species embraced 
 by an allowed generic claim is not in the required form, all claims to 
that  species should be held to be withdrawn from further consideration by 
the examiner.  The holding should be worded somewhat as follows: 

"Claims_____________ directed to ________ species are withdrawn from 
further  consideration in this case, since all of the claims to this 
species do not  depend upon or otherwise include all of the limitations of 
an allowed generic  claim as required by 37 CFR 1.141." 

        Note that each additional species is handled separately. When all 
of  the claims to one nonelected species are embraced by an allowable 
generic claim  but each of the claims to another nonelected species are 
not embraced by an  allowable generic claim, applicant should be advised 
that the claims to the  one nonelected species are no longer withdrawn 
from further consideration but  that the claims to the other nonelected 
species remain withdrawn from further  consideration since all of the 
claims to this other species do not depend upon  or fully include all of 
the limitations of an allowed generic claim as required  by 37 CFR 1.141. 
This holding should be worded as follows: 

"Allowed claims ______ are generic. Claims ______ directed to species 
_______  are no longer withdrawn from further consideration in this case 
since all of  the claims to this species depend from or otherwise include 
all of the limitations  of an allowed generic claim. Claims ______directed 
to species________ are withdrawn  from further consideration in this case 
since all of the claims to this species  do not depend upon or otherwise 
include all of the limitations of an allowed  generic claim as required by 
37 CFR 1.141." 

        When the case is otherwise ready for issue and there is an allowed 
 generic claim, and applicant has not been previously notified as to the 
allowance  of a generic claim, applicant should be advised of the 
allowance of a generic  claim and given a time limit of 1 month to conform 
all of the claims to the  nonelected species to fully embrace an allowed 
generic claim or the examiner  will cancel the claims to each 
nonconforming species by examiner's amendment and pass the case  to issue. 
If the election is traversed, an additional paragraph worded as Form 
Paragraph 8.03 should be added to the holding. 

W 8.03      In Condition for Allowance, Nonelected Claims 

        This application is in condition for allowance except for the 
presence  of claim [1] to an invention non-elected with traverse in Paper 
no. [2]. Applicant  is given **>THIRTY DAYS< from the date of this letter 
to cancel the noted claims  or take other appropriate action (37 CFR 
1.144). Failure to take action during  this period will be treated as 
authorization to cancel the noted claims by  Examiner s Amendment and pass 
the case to issue. Extensions of time under 37  CFR 1.136(a) will not be 
permitted since this application will be passed to  issue. 

        The prosecution of this case is closed except for consideration of 
 the above matter. 

        Claims directed to species not embraced by an allowed generic 
claim  should be treated as follows: 

"Claims ______ are for species not embraced by an allowed generic claim as 
 required by 37 CFR 1.141 and are withdrawn from further consideration in 
this  case, 37 CFR 1.142(b)." 


809.02(d) No Species Claims 


        Where only generic claims are presented, no restriction can be 
required  except in those cases where the generic claims recite such a 
multiplicity of  species that an unduly extensive and burdensome search is 
necessary. See MPEP  w 808.01(a). If after an action on only generic 
claims with no restriction  requirement, applicant presents species claims 
to more than one species of  the invention, he or she must at that time 
indicate an election of a single  species. 


809.02(e) Generic Claim Allowable in Substance [R-1] 


        Whenever a generic claim is found to be allowable in substance, 
even  though it is objected to or rejected on merely formal grounds, 
action on the  species claims shall thereupon be given as if the generic 
claim were allowed. 
        The treatment of the * >application< should be as indicated in 
MPEP  ww 809.02 (b), (c), or (d). 


809.03      Linking Claims 


        There are a number of situations which arise in which an 
application  has claims to two or more properly divisible inventions, so 
that a requirement  to restrict the application to one would be proper, 
but presented in the same  case are one or more claims (generally called 
"linking" claims) inseparable  therefrom and thus linking together the 
inventions otherwise divisible. 
        The most common types of linking claims which, if allowed, act to 
prevent  restriction between inventions that can otherwise be shown to be 
divisible,  are: 

        Genus claims linking species claims. 

        A claim to the necessary process of making a product linking 
proper  process and product claims. 

        A claim to "means" for practicing a process linking proper 
apparatus  and process claims. 

        A claim to the product linking a process of making and a use 
(process  of using). 

        Where linking claims exist, a letter including a restriction 
requirement  only or a telephoned requirement to restrict (the latter 
being encouraged)  will be effected, specifying which claims are 
considered to be linking. Note  Form Paragraph 8.12. 

W 8.12      Restriction, Linking Claims 

        Claim [1] link(s) inventions [2] and [3]. 

        For traverse of rejection of linking claim in applications see 
MPEP  w 818.03(d). 


809.04      Retention of Claims to Nonelected Invention 


        Where the requirement for restriction in an application is 
predicated  upon the nonallowability of generic or other type of linking 
claims, applicant  is entitled to retain in the case claims to the 
nonelected invention or inventions. 
        If a linking claim is allowed, the examiner must thereafter 
examine  species if the linking claim is generic thereto, or he or she 
must examine  the claims to the nonelected inventions that are linked to 
the elected invention  by such allowed linking claim. 

        When a final requirement is contingent on the nonallowability of 
the  linking claims, applicant may petition from the requirement under 37 
CFR 1.144  without waiting for a final action on the merits of the linking 
claims; or  applicant may defer his or her petition until the linking 
claims have been  finally rejected, but not later than appeal, 37 CFR 
1.144, MPEP w 818.03(c). 

810   Action on the Merits 


        In general, in an application when a requirement to restrict is 
made,  no action on the merits is given. 


810.01      Not Objectionable When Coupled With Requirement 


        A basic policy of the present examining program is that the second 
 action on the merits should be made final whenever proper, MPEP w 
706.07(a).  In those applications wherein a requirement for restriction or 
election is  accompanied by a complete action on the merits of all the 
claims, such action  will be considered to be an action on the merits and 
the next action by the  examiner should be made final. When preparing a 
final action in an application  where applicant has traversed the 
restriction requirement, see MPEP w 821.01. 
        Although an action on the merits is not necessary to a 
requirement,  it is not objectionable, Ex parte Lantzke, 1910 C.D. 100, 
156 O.G. 257. However,  note that a question may arise as to whether there 
is a serious burden on the  examiner. 

        However, except as noted in MPEP w 809 and 
w 812.01, if an action is given on the merits, it must be given on all 
claims. 

810.02      Usually Deferred 


        The Office policy is to usually defer action on the merits until 
after  the requirement for restriction is complied with, or withdrawn. 

        Ex parte Pickles, 1904 C.D. 126, 109 O.G. 1888. 

        Ex parte Snyder, 1904 C.D. 242, 110 O.G. 2636. 

        Ex parte Weston, 1911 C.D. 218, 173 O.G. 285. 


810.03      Given on Elected Invention When Requirement Is Made Final 
[R-1] 

        37 CFR 1.143 last sentence states: "If the requirement is repeated 
 and made final, the examiner will at the same time act on the claims to 
the  invention elected." Thus, action is ordinarily given on the elected 
invention  in the action making the requirement final. 

W 8.25.>0<1   Election Without Traverse 

 Applicant's election without traverse of [1] in Paper No [2] is 
acknowledged. 

811   Time for Making Requirement 


        37 CFR 1.142(a), 2nd sentence: "If the distinctness and 
independence  of the invention be clear, such requirement will be made 
before any action  upon the merits; however, it may be made at any time 
before final action in  the case at the discretion of the examiner." 

        This means, the examiner should, make a proper requirement as 
early  as possible in the prosecution, in the first action if possible, 
otherwise,  as soon as a proper requirement develops. 

        Before making a restriction requirement after the first action on 
the  merits, the examiner will consider whether there will be a serious 
burden if  restriction is not required. 


811.02      Even After Compliance With Preceding Requirement 


        Since the rule provides that restriction is proper at any stage of 
 prosecution up to final action, a second requirement may be made when it 
becomes  proper, even though there was a prior requirement with which 
applicant complied,  Ex parte Benke, 1904 C.D. 63, 108 O.G. 1588 (Comm'r 
Pats. 1904). 


811.03      Repeating After Withdrawal Proper 


        Where a requirement to restrict is made and withdrawn, because it 
was  improper, when it becomes proper at a later stage in the prosecution, 
restriction  may again be required. 


811.04      Proper Even Though Grouped Together in Parent Case 


        Even though inventions are grouped together in a requirement in a 
parent  case, restriction there among may be required in the divisional 
case if proper. 

812   Who Should Make the Requirement 


        The requirement should be made by an examiner who would examine at 
 least one of the inventions. 

        An examiner should not require restriction in an application if 
none  of the claimed subject matter is classifiable in his or her group. 
Such an  application should be transferred to a group to which at least 
some of the  subject matter belongs. 


812.01      Telephone Restriction Practice [R-2] 


        If an examiner determines that a requirement for restriction 
should  be made in an application, the examiner should formulate a draft 
of such restriction  requirement including an indication of those claims 
considered to be linking or generic.  No search or rejection of the 
linking claims should be made. Thereupon, the  examiner should telephone 
the attorney >or agent< of record and request an  oral election, with or 
without traverse if desired, after the attorney >or  agent< has had time 
to consider the restriction requirement. >However, no telephone 
communication need be made where the requirement for restriction is 
complex,  the application is being prosecuted by the applicant pro se, or 
the examiner  knows from past experience that an election will not be made 
by telephone.<  The examiner should arrange for a second telephone call 
within a reasonable  time, generally within 3 working days. If the 
attorney >or agent< objects to  making an oral election, or fails to 
respond, the usual restriction letter  will be mailed, and this letter 
should contain reference to the unsuccessful  telephone call. See MPEP w 
809 and w 809.02(a). When an oral election is made,  the examiner will 
then proceed to incorporate into the Office action a formal  restriction 
requirement including the date of the election, the attorney's  >or 
agent's< name,  and a complete record of the telephone interview, followed 
 by a complete action on the elected claims including linking or generic 
claims  if present. 

        Form Paragraphs 8.23 or 8.23.>0<1 should be used to make a 
telephone  election of record. 

W 8.23      Requirement, When Elected by Telephone 

        During a telephone conversation with [1] on [2] a provisional 
election  was made [3] traverse to prosecute the invention of [4], claim 
[5]. Affirmation  of this election must be made by applicant in responding 
to this Office action.  Claim [6] withdrawn from further consideration by 
the examiner, 37 CFR 1.142(b),  as being drawn to a non-elected invention. 

Examiner Note: 

        1.  In bracket 3, insert "with" or "without", whichever is 
applicable. 
        2.  In bracket 4, insert either the elected group or species. 
        3.  An action on the merits of the claims should follow. 

W 8.23.01 Requirement, No Election by Telephone 

        A telephone call was made to [1] on [2] to request an oral 
election  to the above restriction requirement, but did not result in an 
election being  made. 

Examiner Note: 

        1. In bracket 1, insert the name of the applicant or attorney or 
agent  contacted. 

        2. In bracket 2, insert the date(s) of the telephone contact(s). 
        3. This paragraph should be used in all instances where a 
telephone  election was attempted and applicant's representative did not 
or would not  make an election. 

        4. This paragraph should not be used if no contact was made with 
applicant's  representative or applicant. 

        If on examination the examiner finds the elected claims to be 
allowable  and no traverse was made, the letter should be  **>attached to< 
PTOL-37 **>Notice  of Allowability< and should include cancellation of the 
nonelected claims,  a statement that the prosecution is closed, and that a 
notice of allowance  will be sent in due course. Correction of formal 
matters in the above-noted  situation which cannot be handled by a 
telephone call and thus requires action  by the applicant should be 
handled under the Ex parte Quayle practice, using  PTOL-326. 

        Should the elected claims be found allowable in the first action, 
and  an oral traverse was noted, the examiner should include in his or her 
action  a statement under MPEP w 821.01, making the restriction final and 
giving applicant  1-month to either cancel the nonelected claims or take 
other appropriate action 
(37 CFR 1.144). Failure to take action will be treated as an authorization 
 to cancel the nonelected claims by an examiner's amendment and pass the 
case  to issue. Prosecution of the application is otherwise closed. 

        In either situation (traverse or no traverse), caution should be 
exercised  to determine if any of the allowed claims are linking or 
generic claims before  canceling the nonelected claims. 

        Where the respective inventions are located in different groups, 
the  requirement for restriction should be made only after consultation 
with and  approval by all groups involved. If an oral election would cause 
the application  to be examined in another group, the initiating group 
should transfer the application  with a signed memorandum of the 
restriction requirement and a record of the  interview. The receiving 
group will incorporate the substance of this memorandum  in its official 
letter as indicated above. Differences as to restriction should  be 
settled by the existing chain of command; e.g. supervisory primary 
examiner  or group director. 

        This practice is limited to use by examiners who have at least 
negotiation  authority. Other examiners must have the prior approval of 
their supervisory  primary examiner. 


814   Indicate Exactly How Application Is To Be Restricted 


        A. Species. The mode of indicating how to require 
restriction between species is set forth in MPEP 
w 809.02(a). 

        As pointed out in Ex parte Ljungstrom, 1905 C.D. 541, 
119 O.G. 2335, the particular limitations in the claims and the reasons 
why  such limitations are considered to restrict the claims to a 
particular disclosed  species should be mentioned if necessary to make the 
requirement clear. 
        B. Inventions other than species. It is necessary to read all of 
the  claims in order to determine what the claims cover. When doing this, 
the claims  directed to each separate subject should be noted along with a 
statement of  the subject matter to which they are drawn. 

        This is the best way to most clearly and precisely indicate to 
applicant  how the application should be restricted. It consists in 
identifying each separate  subject amongst which restriction is required, 
and grouping each claim with  its subject. 

        The separate inventions should be identified by a grouping of the 
claims  with a short description of the total extent of the invention 
claimed in each  group, specifying the type or relationship of each group 
as by stating the  group is drawn to a process, or to a subcombination, or 
to a product, etc.,  and should indicate the classification or separate 
status of each group, as  for example, by class and subclass. 

        While every claim should be accounted for, the omission to group a 
 claim, or placing a claim in the wrong group will not affect the 
propriety  of a final requirement where the requirement is otherwise 
proper and the correct  disposition of the omitted or erroneously grouped 
claim is clear. 

        C. Linking claims. The generic or other linking claims should not 
be  associated with any one of the linked inventions since such claims 
must be  examined with any one of the linked inventions that may be 
elected. This fact  should be clearly stated. 


815   Make Requirement Complete 


        When making a requirement every effort should be made to have the 
requirement  complete. If some of the claimed inventions are classifiable 
in another art  unit and the examiner has any doubt as to the proper line 
among the same, the  application should be referred to the examiner of the 
other art unit for information  on that point and such examiner should 
render the necessary assistance. 

816   Give Reasons for Holding of Independence or Distinctness [R-1] 

        The particular reasons relied on by the examiner for holding that 
the  inventions as claimed are either independent or distinct, should be 
concisely  stated. A mere statement of conclusion is inadequate. The 
reasons upon which  the conclusion is based should be given. 

        For example, relative to combination and a subcombination thereof, 
 the examiner should point out the reasons why he or she considers the 
subcombination  to have utility by itself or in other combinations, and 
why he or she considers  that the combination as claimed does not rely on 
the subcombination as its  essential distinguishing part. 

        Each other relationship of claimed invention should be similarly 
treated  and the reasons for the conclusions of distinctness of invention 
as claimed  set forth. 

        The separate inventions should be identified by a grouping of the 
claims  with a short description of the total extent of the invention 
claimed in each  group, specifying the type or relationship of each group 
as by stating the  group is drawn to a process, or to subcombination, or 
to product, etc., and  should indicate the classification or separate 
status of each group, as for  example, by class and subclass. See MPEP w 809. 

        Note Form Paragraph 8.13. 

W 8.13      Distinctness (Heading) 

        The inventions are distinct, each from the other because**: 
*>Examiner Note<: 

        **>This paragraph should be followed by one of< paragraphs 8.14 to 
 **>8.20.02< to *>show< distinctness. 


817   Outline of Letter for Restriction Requirement Between Distinct 
Inventions [R-1] 

        The statement in MPEP w 809.02 through w 809.02(d) is adequate 
indication  of the form of letter when election of species is required. 

        No outline of a letter is given for other types of independent 
inventions  since they rarely occur. 

        The following outline of a letter for a requirement to restrict is 
 intended to cover every type of original restriction requirement between 
related  inventions including those having linking claims. 

OUTLINE OF LETTER 

A.  Statement of the requirement to restrict and that it is being made 
under  35 U.S.C. 121 

        -Identify each group by Roman numeral 

        -List claims in each group 

        -Check accuracy of numbering 

                Look for same claims in two groups 

                Look for omitted claims 

        -Give short description of total extent of the subject  matter 
claimed  in each group. 

        -Point out critical claims of different scope 

        -Identify whether combination, subcombination, process, apparatus, 
 or product 

        -Classify each group 

        -Form Paragraphs 8.08-8.11 should be used to group inventions. 
 W  8.08        Restriction, 2 Groupings 

  Restriction to one of the following inventions is required under 35 
U.S.C. 121: 

        I. Claim [1], drawn to [2], classified in class [3], subclass [4]. 
        II. Claim [5], drawn to [6], classified in class [7], subclass 
[8]. 
W 8.09      Restriction, 3rd Grouping 

        III. Claim [1], drawn to [2], classified in class [3], subclass 
[4]. 
W 8.10      Restriction, 4th Grouping 

        IV. Claim [1], drawn to [2], classified in class [3], subclass 
[4]. 
W 8.11      Restriction, Additional Groupings 

         [1]. Claim [2], drawn to [3], classified in class [4], subclass 
[5]. 
>Examiner  Note: 

        In bracket 1, insert the appropriate roman numeral, e.g., --V--, 
--VI--,  etc.< 

B.  Take into account claims not grouped, indicating their disposition. 
 -Linking claims 

        -Indicate - (make no action) 

        -Statement of groups to which linking claims may be as signed for 
examination 
        -Other ungrouped claims. 

        -Indicate disposition e.g., previously nonelected, nonstatutory, 
canceled,  etc. 

C.  Allegation of distinctness 

        -Point out facts which show distinctness 

        -Treat the inventions as claimed, don't merely state your 
conclusion  that inventions in fact are distinct 

        -(1) Subcombination - (Subcombination (disclosed) as usable 
together) 
        Each usable alone or in other identified combination 

        Demonstrate by examiner's suggestion 

        -(2) Combination - Subcombination 

        Combination as claimed does not require subcombination 

                AND 

        Subcombination usable alone or in other combination 

        Demonstrate by examiner's suggestion 

        -(3) Process - Apparatus 

        Process can be carried out by hand or by other apparatus 

        Demonstrate by examiner s suggestion 

                OR 

        Demonstrate apparatus can be used in other process (rare). 
        -(4) Process of making and/or Apparatus - Product 

        Demonstrate claimed product can be made by other    process (or 
apparatus) 
        By examiner's suggestion 

                OR 

        Process of making (or apparatus) can produce other 
product 
(rare) 

        D. Allegation of reasons for insisting upon restriction 

        -Separate status in the art 

        -Different classification 

        -Same classification but recognition of divergent 
subject  matter 

        -Divergent fields of search 

        -Search required for one group not required for the other 
E. Summary statement 

        -Summarize (1) distinctness and (2) reasons for 

 insisting upon restriction, if applicable. 

        -Include paragraph advising as to response required. 

        -Indicate effect of allowances of linking claims, if any present. 
        -Indicate effect of cancellation or nonallowance of evidence 
claims 
(see MPEP w 806.05(c)). 

         Form Paragraph 8.21 must be used at the conclusion of each 
restriction  requirement. 

W 8.21      Conclusion of All Restriction Requirements 

** 

        Because these inventions are distinct for the reasons given above 
and  [1] restriction for examination purposes as indicated is proper. 

Examiner Note: 

        >1.   This paragraph must be added as a conclusion to all 
restriction  requirements employing any of form paragraphs 8.14 to 8.20.02.< 

        >2.<In the bracket insert by writing one or more of the following 
reasons: 
*>a.< have acquired a separate status in the art as shown by the different 
 classification, 

*>b.< have acquired a separate status in the art because of their 
recognized  divergent subject matter, 

*>c.< the search required for *>invention< [ ] is not required for 
*>invention<  [ ]. 

        Form Paragraph 8.23.>0<2 must be included in all restriction 
requirements  for applications having joint inventors. 

W 8.23.>0<2   Joint Inventors, Correction of Inventorship 

        Applicant is reminded that upon the cancellation of claims to a 
non-elected  invention, the inventorship must be amended in compliance 
with 37 CFR 1.48(b)  if one or more of the currently named inventors is no 
longer an inventor of  at least one claim remaining in the application. 
Any amendment of inventorship  must be accompanied by a diligently-filed 
petition under 37 CFR 1.48(b) and  by the fee required under 37 CFR 1.17(h). 

Examiner Note: 

        This paragraph must be included in all restriction requirements 
for  applications having joint inventors. 


818   Election and Response 


        Election is the designation of the particular one of two or more 
disclosed  inventions that will be prosecuted in the application. 

        A response is the reply to each point raised by the examiner's 
action,  and may include a traverse or compliance. 

        A traverse of a requirement to restrict is a statement of the 
reasons  upon which the applicant relies for his conclusion that the 
requirement is  in error. 

        To be complete, a response to a requirement which merely specifies 
 the linking claims need only include a proper election. 

        Where a rejection or objection is included with a restriction 
requirement,  applicant, besides making a proper election must also 
distinctly and specifically  point out the supposed errors in the 
examiner's rejection or objection. See  37 CFR 1.111. 


818.01      Election Fixed by Action on Claims 


        Election becomes fixed when the claims in an application have 
received  an action on their merits by the Office. 


818.02      Election Other Than Express 


        Election may be made in other ways than expressly in response to a 
 requirement as set forth in MPEP 
# 818.02(a) and # 818.02(c). 


818.02(a) By Originally Presented Claims 


        Where claims to another invention are properly added and entered 
in  the case before an action is given, they are treated as original 
claims for  purposes of restriction only. 

        The claims originally presented and acted upon by the Office on 
their  merits determine the invention elected by an applicant, and 
subsequently presented  claims to an invention other than that acted upon 
should be treated as provided  in MPEP # 821.03. 


818.02(b) Generic Claims Only - No Election of Species 


        Where only generic claims are first presented and prosecuted in an 
 application in which no election of a single invention has been made, and 
applicant  later presents species claims to more than one species of the 
invention, he  or she must at that time indicate an election of a single 
species. The practice  of requiring election of species in cases with only 
generic claims of the unduly  extensive and burdensome search type is set 
forth in MPEP 
w 808.01(a). 


818.02(c) By Optional Cancellation of Claims 


        Where applicant is claiming two or more inventions (which may be 
species  or various types of related inventions) and as a result of action 
on the claims,  he or she cancels the claims to one or more of such 
inventions, leaving claims  to one invention, and such claims are acted 
upon by the examiner, the claimed  invention thus acted upon is elected. 


818.03      Express Election and Traverse 


37 CFR 1.143. Reconsideration of requirement. 

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

        Election in response to a requirement may be made either with or 
without  an accompanying traverse of the requirement. 


818.03(a) Response Must Be Complete 


        As shown by the first sentence of 37 CFR 1.143 the traverse to a 
requirement  must be complete as required by 37 CFR 1.111(b) which reads 
in part: "In order  to be entitled to reconsideration or further 
examination, the applicant or  patent owner must make request therefor in 
writing. The reply by the applicant  or patent owner must distinctly and 
specifically point out the supposed errors  in the examiner's action and 
must respond to every ground of objection and  rejection in the prior 
Office action. . . . The applicant's or patent owner's  reply must appear 
throughout to be a bona fide attempt to advance the case  to final action. 
. . ." 

        Under this rule, the applicant is required to specifically point 
out  the reasons on which he or she bases his or her conclusions that a 
requirement  to restrict is in error. A mere broad allegation that the 
requirement is in  error does not comply with the requirement of 37 CFR w 
1.111. Thus the required  provisional election (see MPEP 
w 818.03(b)) becomes an election without traverse. 


818.03(b) Must Elect, Even When Requirement Is Traversed 


        As noted in the second sentence of 37 CFR 1.143, a provisional 
election  must be made even though the requirement is traversed. 

        All requirements for restriction should include Form Paragraph 
8.22. 
W 8.22      Requirement, Election, Mailed 

        Applicant is advised that the response to this requirement to be 
complete  must include an election of the invention to be examined even 
though the requirement  be traversed (37 CFR 1.143). 

Examiner Note: 

        This paragraph can be used in Office actions with or without an 
action  on the merits. 


818.03(c) Must Traverse To Preserve Right of Petition [R-1] 


37 CFR 1.144.       Petition from requirement for restriction. 

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

        If applicant does not distinctly and specifically point out 
supposed  errors in the restriction requirement, the election should be 
treated as an  election without traverse and be so indicated to the 
applicant by use of form  paragraph 8.25.2. 

W 8.25.>0<2   Election Without Traverse Based on Incomplete Response 
        Applicant's election of [1] in paper no. [2] is acknowledged. 
Because  applicant did not distinctly and specifically point out the 
supposed errors  in the restriction requirement, the election has been 
treated as an election  without traverse (MPEP >w< 818.03(a)). 


818.03(d) Traverse of Nonallowance of Linking Claims 


        A traverse of the nonallowance of the linking claims is not a 
traverse  of the requirement to restrict; it is a traverse of a holding of 
nonallowance. 
        Election combined with a traverse of the nonallowance of the 
linking  claims only is an agreement with the position taken by the Office 
that restriction  is proper if the linking-type claim is not allowable and 
improper if they are  allowable. If the Office allows such a claim, it is 
bound to withdraw the requirement  and to act on all linked inventions. 
But once all linking claims are canceled  37 CFR 1.144 would not apply, 
since the record would be one of agreement as  to the propriety of 
restriction. 

        Where, however, there is a traverse on the ground that there is 
some  relationship (other than and in addition to the linking-type claim) 
that also  prevents restriction, the merits of the requirement are 
contested and not admitted.  Assume a particular situation of process and 
product made where the claim held  linking is a claim to product limited 
by the process of making it. The traverse  may set forth particular 
reasons justifying the conclusion that restriction  is improper since the 
process necessarily makes the product and that there  is no other present 
known process by which the product can be made. If restriction  is made 
final in spite of such traverse, the right to petition is preserved  even 
though all linking claims are canceled. 


818.03(e) Applicant Must Make Own Election 


        Applicant must make his or her own election. The examiner will not 
 make the election for the applicant, 
37 CFR 1.142, 37 CFR 1.143, second sentence. 


819   Office Generally Does Not Permit Shift [R-2] 


        The general policy of the Office is not to permit the applicant to 
 shift to claiming another invention after an election is once made and 
action  given on the elected subject matter. When claims are presented 
which the examiner  holds are drawn to an invention other than the one 
elected, he or she should  treat the claims as outlined in MPEP w 821.03. 

        Where the inventions are distinct and of such a nature that the 
Office  compels restriction, an election is not waived even though the 
examiner gives  action upon the patentability of the claims to the 
nonelected invention, Ex  parte Loewenbach, 1904 C.D. 170, 110 O.G. 857 
(Comm'r Pats 1904); and In re  Waugh, 1943 C.D. 411, 
553 O.G. 3 (CCPA 1943) 

        >Where an application filed under 37 CFR 1.62, File Wrapper 
Continuation 
(FWC), is a continuation and not a division or C-I-P, the election made in 
 the parent application carries over to the FWC application unless 
otherwise  indicated by applicant.  Where there is no indication in the 
filing of the  FWC application that a change in election is desired, the 
examiner's first  action should include a repetition of the restriction 
requirement made in the  parent application to the extent it is still 
applicable in the FWC application  and an indication that prosecution is 
being continued on the invention elected  and prosecuted by applicant in 
the parent application.< 


819.01      Office May Waive Election and Permit Shift 


        While applicant, as a matter of right, may not shift from claiming 
 one invention to claiming another, the Office is not precluded from 
permitting  a shift. It may do so where the shift results in no additional 
work or expense,  and particularly where the shift reduces work as by 
simplifying the issues:  Ex parte Heritage Pat. No. 2,375,414 decided 
January 26, 1944. If the examiner  has accepted a shift from claiming one 
invention to claiming another, the case is not abandoned:  Meden v. 
Curtis, 1905 C.D.272, 117 O.G. 1795 (Comm'r Pats 1905). 


820   Not an Election; Permissible Shift 


        Where the Office rejects on the ground that the process is 
obvious,  the only invention being in the product made, presenting claims 
to the product  is not a shift: 
Ex parte Trevette, 1901 C.D. 170, 97 O.G. 1173. 

        Product elected - no shift where examiner holds invention to be in 
 process: Ex parte Grier, 1923 C.D. 27, 309 O.G. 223. 

        Genus allowed, applicant may prosecute a reasonable number of 
additional  species thereunder, in accordance with 37 CFR 1.141, this not 
constituting  a shift: 
Ex parte Sharp et al., Patent No. 2,232,739. 


820.01      Old Combination Claimed - Not an Election [R-2] 


        Where an application originally presents claims to a combination 
(AB),  the examiner holding the novelty, if any, to reside in the 
subcombination (B),  per se, only (see MPEP w 806.05(b)), and these claims 
are rejected, subsequently  presented claims to subcombination (B) of the 
originally claimed combination  should not be rejected on the ground of 
previous election of the combination,  nor should this rejection be 
applied to such combination claims if they are  reasserted, Ex parte 
Donnell, 1923 C.D. 54. Final rejection of the reasserted  old combination 
claims is the action that should be taken. The combination  and 
subcombination as defined by the claims under this special situation are 
not for distinct inventions. (See MPEP w 806.05(c).) ** 


820.02      Interference Issues - Not an Election 


        Where an interference is instituted prior to an applicant's 
election,  the subject matter of the interference issues is not elected. 
An applicant  may, after the termination of the interference, elect any 
one of the inventions  claimed. 


821   Treatment of Claims Held to be Drawn to Nonelected Inventions 

        Claims held to be drawn to nonelected inventions, including claims 
 to nonelected species, are treated as indicated in MPEP w 821.01 through 
w  821.03. 

        The propriety of a requirement to restrict, if traversed, is 
reviewable  by petition under 37 CFR 1.144, In re Hengehold, 169 USPQ 473 
(CCPA 1971). 
        All claims that the examiner holds as not being directed to the 
elected  subject matter should be withdrawn from further consideration by 
the examiner  as set forth in MPEP w 809.02(c) and w 821.01 through w 
821.03. As to one or  more of such claims the applicant may traverse the 
examiner's holding that  they are not directed to the elected subject 
matter. The propriety of this  holding, if traversed, is appealable. Thus, 
if the examiner adheres to his  or her position after such traverse, he or 
she should reject the claims to  which the traverse applies on the ground 
that they are not directed to the  elected subject matter. Because 
applicant believes the claims are readable  on the elected invention and 
the examiner disagrees, the metes and bounds of  the claim(s) cannot be 
readily ascertained, rendering the claim(s) vague and  indefinite within 
the meaning of 35 U.S.C. 112, second paragraph. 


821.01      After Election With Traverse [R-2] 


        Where the initial requirement is traversed, it should be 
reconsidered.  If, upon reconsideration, the examiner is still of the 
opinion that restriction  is proper, it should be repeated and made final 
in the next Office action. 
(See MPEP w 803.01.) In doing so, the examiner should reply to the reasons 
 or arguments advanced by applicant in the traverse. Form Paragraph 8.25 
should  be used to make a restriction requirement final. 

 W  8.25        Answer to Arguments With Traverse 

        Applicant's election with traverse of [1] in Paper No. [2] is 
acknowledged.  The traversal is on the ground(s) that [3]. This is not 
found persuasive because  [*>4<]. 

        The requirement is still deemed to be proper and is therefore made 
 FINAL. 

Examiner Note: 

        1. In bracket 1, insert the invention elected. 

        2. In bracket 3, insert in summary form, the ground(s) on which 
traversal  is based. 

        3. In bracket 4, insert the reasons why the traversal was not 
found  to be persuasive. 

        If the examiner, upon reconsideration, is of the opinion that the 
requirement  for restriction is improper, he or she should state in the 
next Office action  that the requirement for restriction is withdrawn and 
give an action on all  the claims. 

        If the requirement is repeated and made final, in that and in each 
 subsequent action, the claims to the non-elected invention should be 
treated  by using Form Paragraph 8.05. 

W 8.05      Claims Stand Withdrawn With Traverse 

        Claim [1] withdrawn from further consideration by the examiner, 37 
CFR 1.142(b), as being drawn to a non-elected [2], the requirement having 
been traversed in paper no. [3]. 

Examiner Note: 

        In bracket 2, insert "invention" or "species". 

        This will show that applicant has retained the right to petition 
from  the requirement under 37 CFR 1.144 (see MPEP w 818.03(c).) 

        When the case is otherwise ready for issue, and has not received a 
 final action, the examiner should treat the case by using Form Paragraph 
8.03.  See MPEP 
w 809.02(c). 

        When preparing a final action in an application where there has 
been  a traversal of a requirement for restriction, the examiner should 
indicate  in the Office action that a complete response must include 
cancellation of  the claims drawn to the nonelected invention, or other 
appropriate action (37  CFR 1.144). See Form Paragraph 8.24. 

W 8.24      Response to * Final Must Include Cancellation 

        This application contains claim [1] drawn to an invention 
non-elected  with traverse in Paper No. [2]. A complete response to the 
final rejection  must include cancellation of non-elected claims or other 
appropriate action 
(37 CFR 1.144) MPEP w 821.01. 

Examiner Note: 

        For use in FINAL rejections of applications containing claim(s) 
non-elected  with traverse. 

        Where a response to a final action has otherwise placed the 
application  in condition for allowance, the failure to cancel claims 
drawn to the nonelected  invention or to take appropriate action will be 
construed as authorization  to cancel these claims by examiner's amendment 
and pass the case to issue after  the expiration of the period for response. 

        Note that the petition under 37 CFR 1.144 must be filed not later 
than  appeal. This is construed to mean appeal to the Board of Patent 
Appeals and  Interferences. If the case is ready for allowance after 
appeal and no petition  has been filed, the examiner should simply cancel 
the nonelected claims by  examiner's amendment, calling attention to the 
provisions of 37 CFR 1.144. 


821.02      After Election Without Traverse [R-1] 


        Where the initial requirement is not traversed, if adhered to, 
appropriate  action should be given on the elected claims and the claims 
to the nonelected  invention should be treated by using Form Paragraph 8.06. 

W 8.06      Claims Stand Withdrawn Without Traverse 

        Claim [1] withdrawn from further consideration by the examiner, 37 
CFR 1.142(b) as being drawn to a nonelected [2]. Election was made without 
 traverse in paper no. [3]. 

Examiner Note: 

        In bracket 2, insert "invention" or "species". 

        This will show that applicant has not retained the right to 
petition  from the requirement under 37 CFR 1.144. 

        Under these circumstances, when the case is otherwise ready for 
issue,  the claims to the nonelected invention, including nonelected 
species, may be  canceled by an examiner's amendment, and the case passed 
for issue. The examiner's  amendment should include Form Paragraph 8.07. 

W 8.07      Ready for Allowance Without Traverse 

        This application is in condition for allowance except for the 
presence  of claim [1] to [2] nonelected without traverse. Accordingly, 
claim [3] been  cancelled. 

Examiner Note: 

        In bracket 2, insert either "an invention" or ">a< species". 

821.03      Claims for Different Invention Added After an Office Action 
[R-1] 

        Claims added by amendment following action by the examiner, MPEP w 
 818.01, w 818.02(a), to an invention other than previously claimed, 
should  be treated as indicated by 37 CFR 1.145. 

37 CFR 1.145.     Subsequent presentation of claims for different 
invention. 
        If, after an office action on an application, the applicant 
presents  claims directed to an invention distinct from and independent of 
the invention  previously claimed, the applicant will be required to 
restrict the claims to  the invention previously claimed if the amendment 
is entered, subject to reconsideration  and review as provided in ww 1.143 
and 1.144. 

        The action should include Form Paragraph 8.04. 

W 8.04      Election by Original Presentation 

        Newly submitted claim [1] directed to an invention that is 
independent  or distinct from the invention originally claimed for the 
following reasons:  [2]. 

        Since applicant has received an action on the merits for the 
originally  presented invention, this invention has been constructively 
elected by original  presentation for prosecution on the merits. 
Accordingly, claim [3] withdrawn  from consideration as being directed to 
a non-elected invention. See 37 CFR  1.142(b) and MPEP >w< 821.03. 

        Of course, a complete action on all claims to the elected 
invention  should be given. 

        Note that the above practice is intended to have no effect on the 
practice  stated in MPEP w 2303. 

        An amendment canceling all claims drawn to the elected invention 
and  presenting only claims drawn to the nonelected invention should not 
be entered.  Such an amendment is nonresponsive. Applicant should be 
notified by using Form  Paragraph 8.26. 

W 8.26      Cancelled Elected Claims, Non-Responsive 

        The amendment filed on [1] cancelling all claims drawn to the 
elected  invention and presenting only claims drawn to a non-elected 
invention is non-responsive, 
(MPEP >w< 821.03). The remaining claims are not readable on the elected 
invention  because [2]. Applicant is given a ONE MONTH TIME LIMIT or until 
the expiration  of the response period set in the the last Office action, 
whichever is longer,  to complete the response. NO EXTENSION OF THIS TIME 
LIMIT WILL BE GRANTED UNDER  EITHER 37 CFR 1.136 (a) or (b), but the 
period for response set in the last  Office action may be extended up to a 
maximum of *>SIX< MONTHS. 


>821.04       Rejoinder [R-2] 


        Where product and process claims drawn to independent and distinct 
 inventions are presented in the same application, applicant may be called 
upon  under 
35 U.S.C. 121 to elect claims to either the product or 
process. See MPEP w 806.05(f) and w 806.05(h).  The claims to the 
non-elected  invention will be withdrawn from further consideration under 
37 CFR 1.142. 
 See MPEP w 809.02(c) and w 821 through w 821.03.  However, if applicant 
elects  claims directed to the product, and a product claim is 
subsequently found allowable,  withdrawn process claims which depend from 
or otherwise include all the limitations  of the allowable product claim 
will be rejoined. 

        Where the application as originally filed discloses the product 
and  the process for making and/or using the product, and only claims 
directed to  the product are presented for examination, when a product 
claim is found allowable, applicant  may present claims directed to the 
process of making and/or using the patentable  product by way of amendment 
pursuant to 37CFR 1.115. In view of the rejoinder  procedure, and in order 
to expedite prosecution, applicants are encouraged  to present such 
process claims, preferably as dependent claims, in the application  at an 
early stage of prosecution.  Process claims which depend from or otherwise 
 include all the limitations of the patentable product will be entered as 
a  matter of right if the amendment is presented prior to final rejection 
or allowance. 
 Amendments submitted after final rejection are governed by 37 CFR 1.116. 
 Process claims which do not depend from or otherwise include the 
limitations  of the patentable product will be withdrawn from 
consideration, via an election  by original presentation (see MPEP w 
821.03).  Amendments submitted after allowance  are governed by 37 CFR 
1.312.  Process claims which depend from or otherwise  include all the 
limitations of an allowed product claim and which meet the  requirements 
of 35 U.S.C. 101, 102, 103, and 112 may be entered. 

        Where applicant voluntarily presents claims to the product and 
process  in separate applications (i.e., no restriction requirement was 
made by the  Office), and one of the applications issues as a patent, the 
remaining application  may be rejected under the doctrine of 
obviousness-type double patenting, where  appropriate (see MPEP w 804 - w 
804.03), and applicant may overcome the rejection  by the filing of a 
terminal disclaimer under 37 CFR 1.321 (c).  Similarly,  if co-pending 
applications separately present product and precess claims, provisional 
obviousness-type double patenting rejections should be made where 
appropriate. 
 However, once a determination as to the patentability of the product has 
been  reached any process claim which contains limitations identical to 
the allowed/allowable  product should not be rejected over prior art 
without consultation with a Patent  Examining Group Director. 

        Where product and process claims are presented in a single 
application  and that application qualifies under the transitional 
restriction practice  pursuant to 37 CFR 1.129(b), applicant may either 
(1) elect the invention to  be searched and examined and pay the fee set 
forth in 37 CFR 1.17 (s) and have  the additional inventions searched and 
examined under 
37 CFR 1.129 (b) (2), or (2) elect the invention to be searched and 
examined  and not pay the additional fee (37 CFR 1.129(b) (3)).  Where no 
additional  fee is paid, if the elected invention is directed to the 
product and the claims  directed to the product are subsequently found 
patentable, process claims which  either depend from or include all the 
limitations of the allowable product  will be rejoined.  If applicant 
chooses to pay the fees to have the additional  inventions searched and 
examined pursuant to 
37 CFR 1.129(b) (2), even if the product is found allowable, applicant 
would  not be entitled to a refund of the fees paid under 37 CFR 1.129 (b) 
by arguing  that the process claims could have been rejoined. 
37 CFR 1.26 states that "[m]oney paid by actual mistake or in excess will 
be  refunded, but a mere change of purpose after the payment of 
money...will not  entitle a party to demand such a return..."  The fees 
paid under 37 CFR 1.129 
(b) were not paid by actual mistake nor paid in excess, therefore, 
applicant  would not be entitled to a refund. 

        In the event of rejoinder, the rejoined process claims will be 
fully  examined for patentability in accordance with 37 CFR 1.104-1.106. 
Thus, to  be allowable, the rejoined claims must meet all criteria for 
patentability  including the requirements of 
35 U.S.C. 101, 102, 103, and 112.  If the application containing the 
rejoined  claims is not in condition for allowance, the subsequent Office 
action may  be made final, or, if the application was already under final 
rejection, the  next Office action may be an advisory action. 

        See MPEP w 706.02(n) for the applicability of 
35 U.S.C. 103(b) to biotechnological processes and compositions of matter. 
        See MPEP w 2116.01 for guidance on the treatment of process claims 
 which make or use a novel, unobvious product. 

        See MPEP w 806.05(c) for rejoinder of restricted 
combination/subcombination  inventions when an evidence claim is found to 
be unallowable, and 
see MPEP w 806.05(e) and w 809 for rejoinder of restricted inventions when 
 a linking claim is found allowable.< 


822   Claims to Inventions That Are Not Distinct in Plural Applications of 
Same Inventive Entity [R-2] 

        The treatment of plural applications of the same inventive entity, 
 none of which has become a patent, is treated in 37 CFR 1.78(b) as 
follows: 
         (b) Where two or more applications filed by the same applicant 
contain  conflicting claims, elimination of such claims from all but one 
application  may be required in the absence of good and sufficient reason 
for their retention  during pendency in more than one application. 

        ** 

        See MPEP ** # 804.03 for conflicting subject matter, different 
inventors,  common ownership. 

        See MPEP w 706.03(k) for rejection of one claim on another in the 
same  application. 

        See MPEP # 706.03(w) and # 706.07(b) for res 
judicata. 

        See MPEP # 709.01 for one application in interference. 

        See MPEP # 806.04(h) to # 806.04(j) for species and genus in 
separate  applications. 

        Wherever appropriate, such conflicting applications should be 
joined.  This is particularly true, where the two or more applications are 
due to, and  consonant with, a requirement to restrict which the examiner 
now considers  to be improper. 

        Form Paragraph 8.29 should be used when the conflicting claims are 
 identical or conceded by applicant to be not patentably distinct. 
W 8.29      Conflicting Claims, Copending Applications 

        Claim [1] of this application conflict with claim [2] of 
application  no. [3]. 37 CFR 1.78(b) provides that when two or more 
applications filed by  the same applicant contain conflicting claims, 
elimination of such claims from  all but one application may be required 
in the absence of good and sufficient  reason for their retention during 
pendency in more than one application. Applicant  is required to either 
cancel the conflicting claims from all but one application  or maintain a 
clear line of demarcation between the applications. See MPEP  w 822. 

Examiner Note: 

        This paragraph is appropriate when the conflicting claims are 
identical  or conceded by applicant to be not patentably distinct. 


822.01      Copending Before the Examiner 


        Under 37 CFR 1.78(b), the practice relative to overlapping claims 
in  applications copending before the examiner (and not the result of and 
consonant  with a requirement to restrict, for which see MPEP w 804.01), 
is as follows: 
        Where claims in one application are unpatentable over claims of 
another  application of the same inventive entity because they recite the 
same invention,  a complete examination should be made of the claims of 
each application and  all appropriate rejections should be entered in each 
application, including  rejections based upon prior art. The claims of 
each application may also be  rejected on the grounds of provisional 
double patenting on the claims of the  other application whether or not 
any claims avoid the prior art. Where appropriate,  the same prior art may 
be relied upon in each of the applications. 
ONLY PROVISIONAL DOUBLE PATENTING REJECTION IN ONE APPLICATION 

        The "provisional" double patenting rejection should continue to be 
 made by the examiner in each application as long as there are conflicting 
claims  in more than one application unless that "provisional" double 
patenting rejection  is the only rejection remaining in one of the 
applications. If the "provisional"  double patenting rejection in one 
application is the only rejection remaining  in that application, the 
examiner should then withdraw that rejection and permit  the application 
to issue as a patent, thereby converting the "provisional"  double 
patenting rejection in the other application(s) into a double patenting 
rejection at the time the one application issues as a patent. 

ONLY PROVISIONAL DOUBLE PATENTING 
REJECTION IN TWO APPLICATIONS 

        If the "provisional" double patenting rejections in both 
application  are the only rejections remaining in those applications, the 
examiner should  then withdraw that rejection in one of the applications 
and permit the application  to issue as a patent. The examiner should 
maintain the double patenting rejection  in the other application as a 
"provisional" double patenting rejection which  will be converted into a 
double patenting rejection when the one application  issues as a patent. 


823   Unity of Invention Under the Patent Cooperation Treaty 


        See Chapter 1800 for a detailed discussion of unity of invention 
under  the Patent Cooperation Treaty (PCT). 

Contents 

901         Prior Art 

901.01      Canceled Matter in U.S. Patent Files 

901.02      Abandoned Applications 

901.03      Pending Applications 

901.04      U.S. Patents 

901.05      Foreign Patent Documents 

901.05(a)   Citation Data 

901.05(b)   Other Significant Data 

901.05(c)   Obtaining Copies 

901.05(d)   Translation 

901.06      Non-Patent Publications 

901.06(a)   Scientific and Technical Information Center (STIC) 

901.06(b)   Borrowed Publications 

901.06(c)   Alien Property Custodian Publications 

901.06(d)   Abstracts, Abbreviatures, and Defensive Publications 

901.07      Arrangement of Art in Examining Groups 

901.08      Borrowing References 

901.09      Missing Copies - Replacement 

902         Search Tools and Classification Information 

902.01      Manual of Classification 

902.01(a)   Index to the U.S. Patent Classification System 

902.02      Class and Subclass Definitions 

902.02(a)   Definition Notes 

902.02(b)   Search Cards 

902.03      Classification Information 

902.03(a)   Master Classification File (MCF) on Microfilm 

902.03(b)   Patent Index 

902.03(c)   Subclass Listings 

902.03(d)   Classification and Search Support Information 
            System (CASSIS) 

902.03(e)   Automated Patent System (APS) 

902.04      Classification Orders 

902.04(a)   Reclassification Alert Report 

903         Classification 

903.01      Statutory Authority 

903.02      Basis and Principles of Classification 

903.02(a)   New and Revised Classes 

903.02(b)   Scope of a Class 

903.02(c)   Establishing Subclasses and Cross-Reference Art 
            Collections 

903.03      Classification of Foreign Patents 

903.05      Transfer of U.S. Patents 

903.06      Practice To Be Followed in Ordering Official Cross- 
            References 

903.07      Classifying and Cross-Referencing at Allowance 

903.07(a)   Cross-Referencing - Keep Systematic Notes 
            During Prosecution 

903.07(b)   Issuing in Another Examining Group Without Transfer 

903.08      Applications: Assignment and Transfer 

903.08(a)   New Applications 

903.08(b)   Classification and Assignment to Examiner 

903.08(c)   Immediate Inspection of Amendments 

903.08(d)   Transfer Procedure 

903.08(e)   General Regulations Governing the Assignment 
            of >Nonprovisional< Applications for Examination 

903.08(f)   Post Classifier's Decision 

903.08(g)   Transfer to Another Examining Group After Decision 

903.09      International Classification of Patents for Inventions 
903.10      Duties of the Post Classifier 

904         How to Search 

904.01      Analysis of Claims 

904.01(a)   Variant Embodiments Within Scope of Claim 

904.01(b)   Equivalents 

904.01(c)   Analogous Arts 

904.01(d)   Outlining Field of Search 

904.02      Conducting the Search 

905         Miscellaneous 

905.01      Photocopy Orders 

905.02      Soft Copy Orders 

905.03      Ordering of Patented and Abandoned >Provisional 
            and Nonprovisional Application Files< 

905.04      Marking Examiners'  Copies of Patents 

905.05      Application File Location 

905.06      Family of Patent Information 


901   Prior Art [R-1] 


        Note 37 CFR 1.104(a) in MPEP w 707.  >See also MPEP w 2121-2129.< 



901.01      Canceled Matter in U.S. Patent Files 


        Canceled matter in the application file of a U.S. patent is not a 
proper  reference as of the filing date under 
35 U.S.C. 102(e), see Ex parte Stalego, 154 USPQ 52. However, matter 
canceled  from the application file wrapper of a U.S. patent may be used 
as prior art  as of the patent date in that it then constitutes prior 
public knowledge under  35 U.S. C. 102(a), In re Lund et al., 
153 USPQ 625 (CCPA 1967). 


901.02      Abandoned Applications [R-1] 


37 CFR 1.108.       Abandoned applications not cited. 

        Abandoned applications as such will not be cited as references 
except  those which have been opened to inspection by the public following 
a defensive  publication. 



        Where an abandoned application is referred to in an issued U.S. 
patent,  the disclosure of the application is incorporated by reference 
into the disclosure  of the patent  and is available to the public.  See w 
1.14(b). 



        In re Heritage, 1950 CD. 419, 86 USPQ 160 (CCPA 1950), holds that 
where  a patent refers to and relies on the disclosure of a copending 
abandoned application,  such disclosure is available as a reference.  See 
also In re Lund et al., 153  USPQ 625, (CCPA 1967). 

        It has also been held that where the reference patent refers to a 
copending  but abandoned application which discloses subject matter in 
common with the  patent, the effective date of the reference as to the 
common subject matter  is the filing date of the abandoned application; Ex 
parte Clifford, 49 USPQ  152  (Bd. App 1940); Ex parte Peterson, 63 USPQ 
99 (Bd. Ar 1944); and In re  Switzer et al., 612 O.G. 11; 77 USPQ 1. (CCPA 
1948).  >See MPEP 
w 2127(a).< 

        Published abstracts, abbreviatures, and defensive publications are 
 references (MPEP w 901.06(d)). 


901.03      Pending Applications [R-1] 


        Except as provided in 37 CFR 1.11(b), pending U.S. applications 
are  preserved in secrecy (37 CFR 1.14(a)) and are not available as 
references. 
 However, claims in one >nonprovisional< application may be rejected on 
the  claimed subject matter of a copending >nonprovisional< application of 
the same  inventive entity.  See MPEP w 804.  For applications having a 
common assignee  and different inventive entities claiming a single 
inventive concept, see MPEP  w 804.03.  >See MPEP 
w 2127(d).< 

        Applications abandoned as Defensive Publications were  treated as 
pending  applications for limited time periods regarding interferences and 
the filing  of a continuing application.  (See MPEP w 711.06.) 


901.04      U.S. Patents [R-1] 


        The following different series of U.S. patents are being or in the 
 past have been issued.  The date of patenting given on the face of each 
copy  is the publication date and is the one usually cited.  The filing 
date, in  most instances also given on the face of the patent, is 
ordinarily the effective  date as a reference (35 U.S.C. 102(e)).  >See 
MPEP w 2127(b).  The 35 U.S.C.  102(e) date for a nonprovisional 
application claiming the benefit of a prior  provisional application (35 
U.S.C. 111(b)) is the filing date of the provisional  application.< 

        X-Series. These are the approximately 10,000 patents issued 
between  1790 and July 4, 1836.  They were not originally numbered, but 
have been arbitrarily  assigned numbers in the sequence in which they were 
issued.  The number should  not be cited.  When copies are ordered, the 
patentee's name and date of issue  suffice for identification. 

        1836 Series.  The mechanical, electrical, and chemical patents 
issued  since 1836 and frequently designated as  "utility"  patents are 
included in  this series.  A citation by number only is understood to 
refer to this series. 
 This series comprises the bulk of all U.S. patents issued.  Some U.S. 
patents  issued in 1861 bear two numbers but only the larger number should 
be cited. 
  Reissue series. Reissue patents (MPEP w 1401) have been given a 
separate  series of numbers preceded by  "Re."  In citing, the letters and 
the number  must be given; e.g., Re. 1776.  The date that it is effective 
as a reference  is the effective date of the original patent application, 
not the filing date  of the reissue application. 

        Design reissue patents are numbered with the same number series as 
 "utility"  reissue patents.  The letter prefix does, however, indicate 
them  to be design reissues. 

        A.I. Series. From 1838 to 1861, patents covering an inventor's 
improvement  on his own patented device were given a separate series of 
numbers preceded  by  "A.I."  to indicate Additional Improvement.  In 
citing, the letters and  the number must be given; e.g., A.I. 113.  About 
300 such patents were issued. 
        Plant Patent Series.  When the statutes were amended to provide 
for  patenting certain types of plants (MPEP Chapter 1600) these patents 
were given  a separate series of numbers.  In citing, the letters  "P.P." 
and the number  must be given; e.g., P.P. 13. 

        Design Patents. Patents for designs (MPEP Chapter 1500) are issued 
 under a separate series of numbers.  In citing, the letter  "D"  and the 
number  must be given; e.g., "D."  140,000. 

  Numbers for Identification of Bibliographic Data 
        on the First Page of Patent and Like Documents 
        (INID Numbers) 

        The purpose of INID Codes ("INID"  is an acronym for 
"Internationally  Agreed Numbers for the Identification of Data") is to 
provide a means whereby  the various data appearing on the first page of 
patent and like documents can  be identified without knowledge of the 
language used and the laws applied. 
 They are now used 



by most patent offices and have been applied to U.S. patents since Aug. 4, 
 1970.  Some of the codes are not pertinent to the documents of a 
particular  country and some which are may, in fact, not be used.   See 
list in MPEP 901.05(b). 

901.05      Foreign Patent Documents [R-1] 


All foreign patents, published applications, or any other published 
derivative  material containing portions or summaries of the contents of 
published or unpublished  patents (e.g., abstracts) which have been 
disseminated to the public are available  to U.S. Examiners.  See MPEP w 
901.06(a)(3).  In general, a foreign patent,  the contents of its 
application, or segments of its content should not be cited  as a 
reference until its date of patenting or publication can be confirmed  by 
an Examiner's review of a copy of the document. Examiners should remember 
that in some countries, there is a delay between the date of the patent 
grant  and the date of publication. 

Information pertaining to those countries from which the most patent 
publications  are received are given in the following sections and in MPEP 
w 901.05(a).   Additional information can be obtained from the Scientific 
and Technical Information  Center. 

See MPEP w 707.05(e) for data used in citing foreign references. 

A. PLACEMENT OF FOREIGN PATENT 
    EQUIVALENTS IN THE SEARCH FILES 

There are approximately 25 countries in which the specifications of 
patents  are published in printed form either before or after a patent is 
granted. 
When the same invention is disclosed by common inventor(s) and patented in 
 more than one country, it is called a patent family.  Whenever a family 
of  patents or published patent disclosures exist, the Office selects from 
a prioritized  list of countries a single family member for placement in 
the Examiners' search  file.  If the U.S. is one of the countries granting 
a patent in the "family"  of patents, none of the foreign "equivalents" is 
placed in its search file. 
 However,  foreign patents or published patent disclosures within a common 
 family which issued prior to the final highest priority patent (e.g., 
U.S.)  may have been placed in our paper search file and these copies are 
generally  not removed when the higher priority patent is added to our 
search files at  a later date. 

B.  OVERVIEW OF FOREIGN PATENT LAWS 

This section includes some general information on foreign patent laws and 
summarizes  particular features and their terminology.   Some additional 
details on the  most commonly cited foreign patent publications may be 
found under the individual  country in Part E.   Examiners should recall, 
by way of contrast, that in the  United States our patent law requires 
that a number of different events all  occur on the issue date of a U.S. 
patent. These events include the following: 
(1) a patent document, the "letters patent'' which grants and thereby 
creates  the legal rights conferred by a patent, is executed and sent to 
the applicant; 
(2) the patent rights come into existence; (3) the patent rights can be 
exercised; 
(4) the specification of the patent becomes available to the public; (5) 
the  patented file becomes available to the public; (6) the specification 
is published  in printed form; (7) an issue of an official journal, the 
Official Gazette,  containing an announcement of the patent and a claim, 
is published.   In most  foreign countries, various ones of these events 
occur on different days and  some of them may never occur at all. 

The following list catalogs some of the most significant variations from 
U.S. 
 practices: 

1. Applicant 

In most countries, the owner of the prospective rights, derived from the 
inventor,  may also apply for a patent in the owner's name as applicant; 
in a few, other  persons may apply as well or be joined as coapplicants. 
Hence applicant is  not synonymous with inventor, and the applicant may be 
a company. Some countries  require the inventors' names to be given and 
regularly print them on the published  copies. Other countries may 
sometime print the inventors' names only when available  or when requested 
to do so. 

2. Application 

The word "application" is commonly used in the US to refer to the entire 
set  of papers filed when seeking a patent. However,  in many countries 
and in PCT  cases,  the word application refers only to the paper, usually 
a printed form, 
 which is to be "accompanied by" or have "attached" to it certain other 
papers,  namely a 




specification, drawings when necessary,  claims, and perhaps other papers. 
 Unless it is otherwise noted in the following portions of this section, 
the  term "application" refers to the entire set of papers filed. 

3. Publication of contents of pending applications. 

In general, pending applications are confidential until a certain stage in 
 the proceedings (e.g., upon patent grant), or until a certain date (e.g., 
18  months after filing), as may be specified in a particular law. 
Many countries have adopted the practice of publishing the specification, 
drawing,  or claims of pending applications.  In these countries, the 
contents of the  application are published at a certain time, usually 18 
months after filing. 
 The applicant is given certain provisional rights upon publication even 
though  examination has not been completed or in some cases has not even 
begun at the  time of publication. 

This publication may take either of two forms.  In the first form, some 
countries  publish a notice giving certain particulars in their official 
journal and thereafter  any one may see the papers at the patent office or 
order copies.  This procedure  is referred to as "laying open for public 
inspection". There is no printed  publication of the specification, 
although an abstract may be published in  printed form.   If anyone can 
inspect or obtain copies of the laid open application,  then it is 
sufficiently accessible to the public to constitute a "publication" 
within the meaning of 35 U.S.C.  102(a) and (b).  The full application is 
thus  available as prior art as of either the date of publication of its 
notice or  its laying open to public inspection if this is a later date; 
In re Wyer, 210  USPQ 790 (CCPA 1981). >See MPEP w 2127(c).< 

In the second form, several other countries publish the specifications of 
pending  applications in printed form at a specified time, usually 18 
months after filing.  These documents, of course, constitute references as 
printed publications. 
4. Administrative systems 

Patent law administration varies from country to country.  In some 
countries,  all that is undertaken is an inspection of the papers to 
determine if they  are in proper form.  Other countries perform an 
examination of the merits on  the basis of an extensive search of the 
prior art, as is done in the U.S.   The former are referred to as 
nonexamining or registration countries, although  some systems allow for a 
rejection on matters apparent on the face of the papers,  such as matters 
of form or statutory subject matter. 

Of the examining countries, the extent of the material searched prior to 
issue  varies greatly.  Only a few countries include both their own 
patents and a  substantial amount of foreign patent material and nonpatent 
publications in  their search files.  Some countries specifically limit 
the search by rule,  or lack or facilities, to their own patents with very 
little or no additional  material.  An increasing number of countries are 
requiring applicants to give  information concerning references cited in 
corresponding applications filed  in other countries. 

5. Opposition 

Some examining countries consider participation by the public as an 
inherent  feature of their examining system. When an application is found 
to be allowable  by the examiner, it is "published" for opposition. Then 
there is a period,  usually 3 or 4 months, within which members of the 
public can oppose the grant  of the patent.  In some countries, the 
opposing party can be any person or  company.  In other countries, only 
those parties who are affected by the outcome  can participate in the 
opposition. The opposition is an inter partes proceeding  and the opposing 
party can ordinarily raise any ground on the basis of which  a patent 
would be refused or held invalid, including any applicable references. 
The publication for opposition may take the form of a laying open of the 
application  by the publication of a notice in the official journal with 
the application  being then open to public inspection and the obtaining of 
copies.  Otherwise  publication occurs by the issue of the applications in 
printed form. Either  way, these published documents constitute printed 
publications which are available  as references under 35 U.S.C. 102(a) and 
(b). 

6. The Patent 

Practices and terminology vary worldwide regarding patents.   In  some 
countries,  there is no "letters patent" document which creates and grants 
the rights. 
 In other countries, the examiner grants the patent by signing the 
required  paper. In a few countries, the patent is granted by operation of 
law after  certain events have occurred.   The term "granting the patent" 
is used here  for convenience, but it should be noted that  35 U.S.C. 
102(a) and 102(b) do  not use this terminology. 



A list of granted patents is ordinarily published in each country's 
official  journal and some of these countries also print an abstract or 
claims at or  after the granting date.  Not all countries publish the 
granted patent.  Where  the specifications of granted patents are issued 
in printed form, publication  seldom occurs simultaneously with the day of 
grant; instead, publication occurs  a short time thereafter. There also 
are a few countries in which publication  does not take place until 
several years after the grant. 

The length of time for which the patent is enforceable (the patent term) 
varies  from country to country.  The term of the patent may start as of 
the grant  of the patent, or as of the filing date of the application 

Most countries require the payment of periodic fees to maintain a patent 
in  force.  These fees often start a few years after filing and increase 
progressively  during the term of the patent.   If these fees are not paid 
within the time  allowed, the patent lapses and is no longer in force. 
This lapsing does not  affect the use of the patent as a reference. 

7.  Patents of addition 

Some countries issue patents of addition which should be identified as 
such  and, when separately numbered as in France, the number of the 
addition patent  should be cited. "Patents of addition" generally cover 
improvements of a patented  parent invention and can be obtained by the 
owner of the parent invention. 
 Inventiveness in relation to the parent invention need not be 
demonstrated  and the term is governed by the term of the parent patent. 

C.  CORRESPONDING SPECIFICATIONS IN A 
     FAMILY OF PATENTS 

Since a separate patent must be obtained in each country in which patent 
rights  are desired (except for EP, the European Patent Convention, and 
AP, the African  Regional Industrial Property Organization, whose members 
issue a common patent),  there may be a large number of patents issued in 
different countries for the  same invention. This group of patents is 
referred to as a family of patents. 

 All of the countries listed in Part E are parties to the Paris Convention 
 for the Protection of Industrial Property and provide for the right of 
priority. 
 If an application is filed in one of these countries, an application for 
the  same invention thereafter filed in another country, within 1 year of 
the filing  of the first application, will be entitled to the benefit of 
the filing date  of the first application on fulfilling various 
conditions.  See MPEP w 201.13.   The later patents or published 
specifications countries are required  to specify that priority has been 
claimed and to give the country, date, and  number of the priority 
application. This data serves the purpose, among others,  of enabling any 
patent based on the priority application to be easily located. 
In general, the specification of the second application is identical in 
substance  to the specification of the first. In many instances, the 
second, if in another  language, is simply a translation of the first with 
perhaps some variation  in purely formal parts.  But in a minority of 
cases, the two may not be identical. 
 For instance, sometimes two applications filed in one country are 
combined  into one second application which is filed in another country. 
Alternatively,  a second application could be filed for only part of the 
disclosure of the  the priority application. The second application may 
have the relationship  to the first which we refer to as a 
continuation-in-part (e.g., the second  application includes additional 
subject matter discovered after the first was  filed).  In some instances, 
the second application could have its disclosure  diminished or increased, 
to meet the requirements or practices of the second  country. 

Duplicate or substantially duplicate versions of a foreign language 
specification,  in English or some other language known to the Examiner, 
can sometimes be found. 
 It is possible to cite a foreign language specification as a reference, 
while  at the same time citing an English language version of the 
specifications with  a later date as a convenient translation if the 
latter is in fact a translation. 
 Questions as to content in such cases must be settled based on the 
specification  which was used as the reference. 

If a U.S. patent being considered as a reference claims the priority of a 
previously  filed foreign application, it may be desirable to determine if 
the foreign  application has issued or has been published, to see if there 
is an earlier  date.  For example, it has occurred that an examiner 
rejected claims on the  basis of a U.S. patent and the applicant filed 
affidavits to overcome the filing  date of the reference; the affidavits 
were controversial and the case went  to appeal, with extensive brief and 
examiner's 




answer having been filed.  After all this work, somebody noticed that the 
U.S.  patent reference claimed the priority of a foreign application filed 
in a country  in which patents were issued fairly soon, checked the 
foreign application,  and discovered that the foreign patent had not only 
been issued, but also published  in printed form, more than 1 year prior 
to the filing date of the application  on appeal. 

If a foreign patent or specification claims the priority of a U.S. 
application,  it can be determined whether the latter is abandoned, still 
pending, or patented.  Even if the U.S. case is or becomes patented, 
however, the foreign documents  may still be useful as supplying an 
earlier printed publication date. 
If a foreign patent or specification claims the priority of an application 
 in another foreign country, it may sometimes be desirable to check the 
latter  to determine if the subject matter was patented or published at an 
earlier  date.  As an example, if a British specification being considered 
as a reference  claims the priority of an application filed in Belgium, it 
is known at once  that a considerably earlier effective date can be 
established, if needed, because  Belgian patents issue soon after filing. 
In addition, if the application referred  to was filed in one of the 
countries which publish applications in printed  form 18 months after 
filing, the subject matter of the application will be  available as a 
printed publication as of the 18 month publishing date.  These  remarks 
obviously also apply to a U.S. patent claiming a foreign priority. 
The determination of whether a foreign patent has been issued or the 
application  published is a comparatively simple matter for some 
countries, but for some  it is quite laborious and time-consuming and may 
not even be possible from  Scientific and Technical Information Center 
maintained sources.  Other sources  for this data which are not maintained 
by the Office do exist and can be utilized  for locating corresponding 
patents. One source is Chemical Abstracts which  publishes abstracts of 
patents from a large number of countries.  Only one  patent or published 
specification from a family is abstracted in full and any  related family 
members issued or published are cross-referenced.  Its annual  indexes 
include lists of patent numbers, and also include patentees' and 
inventors'  names in the alphabetical author index.  A concordance of 
corresponding patents  appearing during five year periods has also been 
published.  Other sources  for this family data are the INPODOC and 
DERWENT data files. 

When an application is filed outside the convention year from an earlier 
application,  the later application may not refer to the first 
application.  It is hence  possible that there will be duplicate 
specifications published without any  indication revealing the fact. 
These may be detected when the two copies come  together in the same 
subclass.  Because the later application is filed outside  the convention 
year, the earlier application may be prior art to the latter  if it has 
been published or issued. 

D.  VALIDITY OF DATES DISPLAYED ON FACE OF FOREIGN PATENT DOCUMENTS 
The examiner is not required to prove either the date or the occurrence of 
 events specified on specifications of patents or applications, or in 
official  journals, of foreign patent offices which the Office has in its 
possession. 
 In a court action, certified copies of the Office copies of these 
documents  constitute prima facie evidence, in view of 28 U.S.C. 1745. An 
applicant is  entitled to show the contrary by competent evidence, but 
this question seldom  arises. 

The date of receipt of copies by the Office, as shown by office records or 
 stamped on the copies, need only to be stated by the examiner, when 
necessary. 
E.  NOTES ON INDIVIDUAL COUNTRIES 

The following table gives some data concerning the published patent 
material  of a number of countries to assist in their use and citation as 
references. 
 The countries listed were selected based on the current level of material 
 provided for the examiner search files.  Together, the countries and 
organizations  account for over 98% of the patent material being added to 
the examiner files  each year.  This table reflects only the most current 
patent office practice  for each foreign county specified and is not 
applicable for many older foreign  patent documents.  The Scientific and 
Technical Information Library staff can  help examiners obtain data 
related to any documents not covered by this table. 
 Note that the citation dates listed in the following table are not 
necessarily  the oldest possible dates.  Sometimes an earlier effective 
date, which is not  readily apparent from the face of the document, is 
available.  If an earlier  date is important to a 




rejection, the examiner should consult STIC staff who will attempt to 
obtain  further information regarding the earliest possible effective 
date. 
HOW TO USE TABLE 

Each horizontal row of boxes contains information on one or more distinct 
patent  document from a specified country available as a reference under 
35 USC 102(a)  and (b).  If several distinct patent documents are included 
within a common  box of a row, these documents are related to each other 
and are merely separate  documents published at different stages of the 
same invention's patenting process.  Usually, this related group of 
documents includes a published application which  ripens into an issued 
patent.  Within each box of the second column of each  row, the top listed 
document of a related group is the one that is "published"  first (e.g., 
made available for public inspection by laying open application,  or 
application printed and disseminated to the public).  Once an examiner 
determines  the country or organization publishing the documents, the name 
of the document  can be located in the second column of the table and the 
examiner can determine  if a document from the 

related group containing the same or similar disclosure having an earlier 
date  is available as a reference.  Usually, the documents within a 
related group  have identical disclosures, sometimes, however, there are 
differences in the  claims or minor differences in the specification. 
Therefore, examiners should  always verify that the earlier related 
document also includes the subject matter  necessary for the rejection. 
Some countries issue more than one type of patent  and for clarity, in 
these situations, separate rows are provided for each type. 




A90105001.bmp 



A90105001.end 



A90105002.bmp 



A90105002.end 



A90105003.bmp 



A90105003.end 



A90105004.bmp 



A90105004.end 




901.05(a) Citation Data 


        Foreign patent publications that use Arabic and Roman numerals in 
lieu  of names to indicate the date, show in order the day, month, and 
year. Roman  numerals always refer to the month. 

        Japanese patent application publications show the date in Arabic 
numerals  by indicating in order the year of the reign of the Emperor, the 
month, and  the day.  To convert the Japanese year of the Emperor to the 
Western calendar  year, for years prior to 1989, add 1925 to the JAPANESE 
YEAR.  For example:  40.3.6 = March 6, 1965.  For years after 1988, add 
1988 to the JAPANESE  YEAR. 
        Alphabetical lists of the foreign language names of the months and 
 of the names and abbreviations for the United States of America follow. 
The  lists set forth only selected commonly encountered foreign language 
names and  do not include those which are similar to the English language 
names and thus  easily translatable. 

        In using the lists, identification of the foreign language (except 
 for Russian), is not necessary.  The translation into English is 
ascertained  by alphabetically locating the foreign language name on the 
list. 
        The list of the foreign language names and abbreviations for the 
United  States is useful in determining whether a foreign language patent 
publication  indicates the filing of a similar application in the United 
States. 
Alphabetical List of Selected Foreign Language Names of Months 



        augusti       August 

        avril     April 

        brezen      March 

        cervna      June 

        cervenca        July 

        czerwca       June 

        decembre        December 

        dicembre        December 

        dubna     April 

        elokuu      August 

        febbraio        February 

        Feber     February 

        februari        February 

        fevrier       February 

        gennaio       January 

        giugno      June 

        grudnia       December 

        heinakuu        July 

        helmikuu        February 

        huhtikuu        April 

        Janner      January 

        janvier       January 

        joulukuu        December 

        juillet       July 

        juin    June 

        kesakuu       June 

        kvetna      May 

        kwietnia        April 

        leden     January 

        lipca     July 

        listopad        November 

        listopada November 

        lokakuu       October 

        luglio      July 

        lutego      February 

        maaliskuu March 

        maart     March 

        maggio      May 

        Mai   May 

        Maj   May 

        maja    May 

        maraskuu        November 

        marca     March 

        mars    March 

        Marts     March 

        Marz    March 

        marzo     March 

        mei   May 

        ottobre       October 

  pazdziernika      October 

        prosinca        December 

  rijna       October 

        settembre September 

        sierpnia        August 

        srpna     August 

        stycznia        January 

  syyskuu September 

        tammikuu        January 

        toukokuu        May 

        unora     February 

        wrzesnia        September 

        zari    September 





        List of Selected Foreign Language Names and Abbreviations for the 
United  States of America 



        Amerikas Forenta Stater       Stati Uniti d'America 

        De Forenete Stater av Amerika     S.U. 

        EE.UU.      S.U.A. 

        E.U.    S.Z.A. 

        E.U.A.      V.St.A. 

        E.U. d Am.  V.St.v.A. 

        Etats-Unis d'Amerique     Ver.St.V. 
Am(erika) 
        Sp.St.A.        Vereenigde                              StatenVan 
                     Amerika 
         Spoj. St. Am.      Vereenigde 
StatenVan                       Noord-Amerika 
        Spojene Staty Americke      Vereinigten 
             StaatenVon 
                                        Amerika 

        Stany Zjednoczone Ameryke Vorenede Stater i             Amerika 

901.05(b) Other Significant Data 


  Numbers for Identification of Bibliographic Data 
        on the First Page of Patent and Like 
        Documents (INID Numbers) 

        The purpose of INID Codes ("INID"  is an acronym for 
"Internationally  Agreed Numbers for the Identification of Data") is to 
provide a means whereby  the various data appearing on the first page of 
patent and like documents can  be identified without knowledge of the 
language used and the laws applied. 
 They are now used by most patent offices and have been applied to U.S. 
patents  since Aug. 4, 1970.  Some of the codes are not pertinent to the 
documents of  a particular country and some which are may, in fact, not be 
used. 
        INID Codes and Minimum Required for the Identification of 
Bibliographic  Data 

        (10) Document identification 

        _(11) Number of the document 

        _(12) Plain language designation of the kind of document 

        _(13) Kind of document code according to WIPO Standard ST.16 
        __(19) WIPO Standard ST.3 code, or other identification, of the 
office 
 publishing the document 

        Note:  (i) __ Minimum data element for patent documents only. 
                (ii) with the proviso that when data coded (11) and (13), 
or 
(19), (11) and (13), are used together and on a single line,category (10) 
can  be used, if so desired. 

        (20) Domestic filing data 

        _(21) Number(s) assigned to the application(s), e.g., "Numero 
d'enre  gistrement national",  "Aktenzeichen" 

        _(22) Date(s) of filing application(s) 

        _(23) Other date(s), including date of filing complete 
specification  following provisional specification and date of exhibition 

        (24) Date from which industrial property rights may have effect 
        (25) Language in which the published application was originally 
filed 
        (26) Language in which the application is published 

  (30) Priority Data 

        _(31) Number(s) assigned to priority application(s) 

        _(32) Date(s) of filing of priority application(s) 

        _(33) WIPO Standard ST.3 Code identifying the national patent 
office  allotting the priority application number or the organization 
allotting the  regional priority application number; for international 
applications filed  under the PCT, the code "WO" is to be used 

        (34) For priority filings under regional or international 
arrangements,  the WIPO Standard ST.3 Code identifying at least one 
country party to the Paris  Union for which the regional or international 
application was made 
        Notes: (i) With the proviso that when data coded (31), (32), and 
(33)  are used together and on a single line, category (30) can be used, 
if so desired. 
 If an 

ST.3 Code identifying a country for which a regional or international 
application  was made is published, it should be identified as such using 
INID 
Code (34) and should be on  a line separate from that of elements coded 
(31), 
(32) and (33) or (30). 

                (ii) The presentation of priority application numbers 
should  be as recommended in WIPO Standards ST.10/C and in ST.34. 

        (40) Date(s) of making available to the public 

        __(41) Date of making available to the public by viewing, or 
copying  on request, an unexamined document, on which no grant has taken 
place on or  before the said date. 

        __(42) Date of making available to the public by viewing, or 
copying  on request, an examined document, on which no grant has taken 
place on or before  the said date 

        __(43) Date of publication by printing or similar process of an 
unexamined  document, on which no grant has taken place on or before the 
said date 
        __(44) Date of publication by printing or similar process of an 
examined  document on which no grant has taken place on or before the said 
date 


        __(45) Date of publication by printing or similar process of a 
document  on which grant has taken place on or before the said date 

        (46) Date of publication by printing or similar  process of the 
claim(s)  only of a document 

        __(47) Date of making available to the public by viewing, or 
copying  on request, a document on which grant has taken place on or 
before the said  date 

        Note: __Minimum data element for patent documents only, the 
minimum  data requirement being met by indicating the date of making 
available to the  public the document concerned 

        (50) Technical information 

        _(51) International Patent Classification 

        (52) Domestic or national classification 

        (53) Universal Decimal Classification 

        _(54) Title of the invention 

        (55) Keywords 

        (56) List of prior art documents, if separate from descriptive 
text 
        Note: Attention is drawn to WIPO Standard ST.14 in connection with 
 the citation of references on the front page of patent documents and in 
search  reports attached to patent documents. 

        (57) Abstract or claim 

        (58) Field of search 

        (60) References to other legally related domestic patent documents 
 including unpublished applications therefor 

        _(61) Number and, if possible, filing date of the earlier 
application,  or number of the earlier publication, or number of earlier 
granted patent,  inventor's certificate, utility model, or the like to 
which the present document  is an addition 

        _(62) Number and, if possible, filing date of the earlier 
application  from which the present document has been divided out 

        _(63) Number and filing date of the earlier application of which 
the  present document is a continuation 

        _(64) Number of the earlier publication which is  "reissued" 
        (65) Number of a previously published patent document concerning 
the  same application 

        Note:  (i) Priority data should be coded in category (30) 
                (ii) Code (65) is intended primarily for use by countries 
in  which the national laws require that re-publication occurs at various 
procedural  stages under different publication numbers and these numbers 
differ from the  basic application numbers. 

        (70) Identification of parties concerned with the document 
  __(71) Name(s) of applicant(s) 

                (72) Name(s) of inventor(s) if known to be such 

        __(73) Name(s) of grantee(s) 

                (74) Name(s) of attorney(s) or agent(s) 

        __(75) Name(s) of inventor(s) who is (are) also applicant(s) 
        __(76) Names(s) of inventor(s) who is (are) also applicant(s) and 
grantee(s) 
        Notes:   (i)   __For documents on which grant has taken place on 
or  before the date of making available to the public, and gazette entries 
relating  thereto, the minimum data requirement is met by indicating the 
grantee, and  for other documents by indicating the applicant). 

                (ii) (75) and (76) are intended primarily for use by 
countries  in which the national laws require that the inventor and 
applicant are normally  the same. In other cases (71) and (72) or (71), 
(72) and (73) should generally  be used. 

        (80) Identification of date related to International Conventions 
other  than the Paris Convention 

        (81) Designated State(s) according to the PCT 

        (83) Information concerning the deposit of microorganisms; e.g., 
under  the Budapest Treaty 

        (84) Designated contracting states under regional patent 
conventions 
        (85) Date of fulfillment of the requirements of article 22 and/or 
39  of the PCT for introducing the national procedure according to PCT 
        (86) Filing data of the regional or PCT application; i.e. 
application  filing date, application number, and optionally, the language 
in which the  published application was originally filed 

        (87) Publication data of the regional or PCT application; i.e. 
publication  date, publication number, and optionally, the language in 
which the application  is published 

        (88) Date of deferred publication of the search report 

        (89) Document number, date of filing,  and country of origin of 
the  original document according to the CMEA Agreement on Mutual 
Recognition of  Inventors Certificates and other Documents of Protection 
for Inventions. 
        Notes:  (i) The codes (86) and (87) are intended to be used: 
        -on national documents when identifying one or more of the 
relevant  filing data or publication data of a regional or PCT 
application, or 
        -on regional documents when identifying one or more of the 
relevant  filing data or publication data of another regional or PCT 
application. 
                (ii) all data in code (86) should be presented together 
and  preferably on a single line. 

        (iii) all data in code (87) should also be presented together and 
preferably  on a single line. 


901.05(c) Obtaining Copies 


        The Patent and Trademark Office receives copies of the published 
specifications  of patents and patent applications from nearly all the 
countries which issue  them in printed form or disseminate them to the 
public in a similar manner 
(e.g., CD-ROM).  The U.S. has agreements with these countries to exchange 
patent  documentation. 

        It is current practice in the Patent and Trademark Office to 
classify  and place only a single patent family member for each invention 
in the Examiner  search files.  In addition, all non-English language 
patent documents placed  in the Examiner files are now being accompanied 
by an English language abstract.  For countries where the specification is 
printed twice, once during the application  stage and again after the 
patent has been granted, only the first printing  is in general placed in 
the search files, since the second printing ordinarily  does not vary from 
the first as to disclosure. 

        Copies of various specifications not included in the search files, 
 whether non-English-language patent documents or documents not printed or 
available  for exchange, may come to the examiner's attention. For 




example, they may be cited in a motion to dissolve an interference, be 
cited  by applicants, or turn up in an online search. Upon request, the 
Scientific  and Technical Information Center will obtain a copy from its 
extensive collection,  or if necessary, from the patent office of the 
particular country.  In the  case of unprinted patent documents, the 
Scientific and Technical Information  Center will request that the date of 
granting and the date the specification  was made available to the public 
be indicated on the copies provided by the  country of origin. 

        Examiners can order copies of any foreign patent documents from 
the  Foreign Patent Branch.  If examiners so choose, they can make copies 
themselves.  The most current patent documents are accessible through the 
Foreign Patent  Access System (FPAS), a CD-ROM-based local area network 
that allows public  and PTO users to look up, view, and print foreign 
documents.  Older documents  can be found on microfilm in the Microfilm 
Room or in the paper collection  in the stacks.  Examiners may place a 
photocopy or translation in the shoes  of the class which he or she 
examines if the patents are particularly relevant. 
(MPEP # 905.01 and # 903.03). 


901.05(d) Translation 


        Examiners may  consult the translators in the Translation Branch 
of  the Scientific and Technical Information Center (STIC) for oral 
assistance  in translating foreign patents or literature that are possible 
references for  an application being examined.  Examiners may also request 
written translations  of pertinent portions of references being considered 
for citation or already  cited in applications.  (See MPEP w 901.06(a), 
Translations, and MPEP w 903.03,  Classification of Foreign Patents.) 

        Examiners can request written translations at any point in the 
examination  process, at the discretion of the individual examiner, but 
are encouraged to  use oral assistance and/or language reference resources 
as much as possible  in the early phases of examination. 
        Equivalent versions of foreign specifications, that is, members of 
 the same patent family, are often available in English or other languages 
known  to the examiner.  In addition, copies of previously translated 
documents are  stored in the Translation Branch.  Before any translation 
request is processed,  the staff of the Translation Branch checks for 
equivalents or previous translations. 
 The staff of STIC's Foreign Patents Branch or the Translation Branch can 
assist  examiners in locating equivalents or abstracts. (See MPEP # 
901.06(a), STIC  Services - Foreign Patent Services.) 


901.06      Nonpatent Publications [R-1] 


        All printed publications may be used as references, the date to be 
 cited being the publication date. Recognized abbreviations of names of 
periodicals  may be used in their citation (MPEP w 707.05(e)). >See MPEP 
w 2128 - w 2128.02.< 

        There are some publications kept or circulated in every group and 
each  assistant examiner should ascertain which are available in his or 
her group  and whether or not any of them is likely to bear on any 
assigned class. 
        Where a nonpatent literature reference with a document 
identification  number is cited, the identification number and the class 
and subclass should  be included on form  PTO-892. 

        The citation should be as follows: (S00840001) Winslow, C.E.A. 
Fresh  Air and Ventilation N.Y., E.P. Dutton, 1926, p. 97-112, TH 7653. 
W5, 315-22. 

901.06(a) Scientific and Technical Information Center (STIC) 


        The Scientific and Technical Information Center, formerly known as 
 the Scientific Library, is located at CP3/4, Room 2C01.  The STIC 
maintains  three additional satellite information centers:  the 
Biotechnology/Chemical  Library in CM1, Room 1C19, the Electronic 
Information Center in CPK2, Room  4B40, and the Patent Law Library in 
CPK1, Room 568. 

35 U.S.C. 8.     Library. 

        The Commissioner shall maintain a library of scientific and other 
works  and periodicals, both foreign and domestic, in the Patent and 
Trademark Office  to aid the officers in the discharge of their duties. 



        Technical literature, foreign patent documents, and reference and 
online  search services available in the Scientific and Technical 
Information Center 
(STIC) are all important resources for the patent examiner to utilize. 
These  resources provide material which must be known or searched to 
determine whether  claims of applications are directly anticipated and 
therefore unpatentable  under the provisions of 35 U.S.C.  102.  STIC 
handbooks, textbooks, periodicals,  reports, and other materials assist 
examiners in deciding the question of patentable  invention in cases in 
which the primary 




search indicates that there is some novelty as compared to any single 
reference  in the art (35 U.S.C. 103).  These resources enable the 
examiner to determine  whether the features novel in the particular 
combination searched would be  obvious to a person skilled in the art from 
the general state of knowledge  as reflected in the technical literature. 

STIC COLLECTIONS 

1.  Books 

        The Scientific and Technical Information Center carefully selects 
and  purchases primarily English-language pub-lications in all fields of 
applied  technology.  There is a modest collection in French and German, 
mostly in the  field of chemistry.  Collections of books and trade 
catalogs are also purchased  by STIC for permanent location in specific 
examining groups.  For instance,  the Design Patent Group has a great many 
manufacturer's catalogs.  Books may  be ordered by examiners for location 
in the groups by addressing a memorandum  to the Manager of STIC via the 
group director.  The STIC is also developing  a collection of  materials 
in electronic formats (i.e., CD-ROM) in order to  provide more timely 
delivery of requested references.  The locations of all  acquired 
publications are recorded in STIC so that users will know where to  look 
for a particular publication, be it in the Information Center or in an 
examining group.  All publications, regardless of location, are processed 
in  STIC's Technical Services Branch. 

        Reference works including encyclopedias, dictionaries, handbooks, 
and  abstracting and indexing services are also available in the 
Information Center  to assist examiners in finding information pertinent 
to the subject matter  of a patent application.  STIC does not circulate 
reference materials.  Books  in the reference collection are so labeled. 

        The staff of the Scientific and Technical Information Center makes 
 every effort to obtain current, useful publications.  However, all 
suggestions  for additional purchases that come in from the Examining 
Corps are welcomed. 
2.  Periodicals 

        Approximately 1,300 technical periodical titles are received in 
STIC,  including publications of many important scientific and technical 
societies. 
 Incorporated into the collection are a number of titles pertinent to the 
examination  of design patent applications and titles of interest to 
nonexamining areas  of the PTO.  Many of the periodical holdings in STIC 
are in microfilm or CD-ROM  formats. 

        Requests for the purchase of new subscription titles are accepted 
at  any time throughout the year, with subsequent purchase dependent on 
demonstrated  need and availability of funds.  STIC staff is alert to new 
periodical titles  and often acquires sample copies which are sent to 
appropriate examining groups  for review and recommendation. 

        Current issues of periodicals are arranged alphabetically and 
located  on shelves near the reference collection.  Bound periodicals are 
interfiled  with the book collection by their library classification 
numbers. Periodicals  on microfilm and CD-ROM are housed in cabinets.  A 
list of  periodicals is  available in STIC. 

3.  Foreign Patent Documents 

        The United States Patent and Trademark Office receives foreign 
patent  documents through exchange agreements with almost all countries 
that print  their patent documents. This makes STIC's collection of 
foreign patent documents  the most comprehensive in the United States. 

        The collection is located in the Foreign Documents Division.  The 
most  current part of the collection is made available to examiners and 
the public  through the Foreign Patent Access System (FPAS), a 
CD-ROM-based local area  network in STIC that allows users to look up, 
view and print documents.  The  documents from the major industrial 
countries for the period 1969 to 1990 are  found on 16 mm microfilm in the 
Microfilm Room.  The earliest patent documents,  back as far as 1617, and 
documents from smaller countries are found in the  paper collection in the 
stacks or at remote sites. 

        Most foreign countries issue official patent and trademark 
journals  corresponding to the Official Gazette of the United States 
Patent and Trademark  Office.  These journals are shelved under country 
name.  Most countries issue  name indexes; some also issue classified 
indexes.  Indexes are shelved with  the journals.  Much of the index 
information is also available on FPAS. 
        The official journals of a few countries include abstracts of the 
disclosures  of the patents announced or applications published. 

        In addition, the Foreign Patents Branch acquires English language 
abstracts  of foreign patent documents 



for selected countries published by Derwent.  Holdings are in 16mm format 
from  1972 to date.  Earlier holdings are in paper.  The Branch also has 
unexamined  Japanese patent applications abstracted by the Japanese Patent 
Office, the  Patent Abstracts of Japan,  from 1977 to date in paper. 

        Many countries; e.g., China, are providing abstracts of their 
patent  documents on CD-ROM.  These abstracts will also be accessible 
through FPAS. 
        Many technical abstracting publications include patent literature; 
 the most notable of these is Chemical Abstracts.  The annual indexes of 
Chemical  Abstracts include, in addition to the subject matter index, an 
author index  in which the patentee's and inventor's names appear, and 
patent number lists;  corresponding patents of different countries are 
identified.  Specifications  of unprinted, or as yet unprinted, patents 
may be included in some of these  abstracting services. 

4.  Special Collection 

Biotechnology/Chemical 

        With the formulation of a new biotechnology examining group in 
1988  came a mandate to improve STIC resources in this area.  The former 
Chemical  Library, located with the biotechnology and chemical examining 
groups, was  replaced by the Biotech/Chemical Library.  The library staff 
has been developing  the collection to reflect the needs of the examiners 
in the biotechnology and  chemical arts.  Besides the usual journals and 
books in print, the library  has been collecting backfiles of journals in 
microfilm and in CD-ROM format. 
Government Publications 

        In 1986, the Scientific and Technical Information Center was 
designated  a Federal Depository Library which means that it now receives 
a selected number  of documents published by various U.S. government 
agencies.  Many of these  publications are on microfiche or CD-ROM.  The 
primary search aids are the  Monthly Catalog of U.S. Government 
Pub-lications and the List of Classes.   All the documents received in the 
STIC have been cataloged into the STIC's  online catalog system and 
interfiled with the main collection. 

Project XL Materials 

        This collection of books, games, puzzles, and manipulatives relate 
 to the teaching of thinking skills whether they are classified as 
creative  thinking, critical thinking, decision making, innovation and 
invention, or  problem-solving skills. The collection is primarily aimed 
at, but not limited  to, elementary education and is a result of a PTO 
initiative in the mid-1980's  to emphasize the importance of encouraging 
creativity in America's youth. Access  to the collection is through STIC's 
online catalog.  All Project XL materials  are available for loan. 

HOW TO LOCATE MATERIALS IN STIC 

The STIC Online Catalog 

        The primary vehicle for locating books and other materials is the 
STIC  online catalog.  The online catalog contains a record of all 
materials held  by the STIC collections, including location, call number, 
and availability. 
 Workstations for accessing the online catalog are located in the STIC 
branches. 
        Materials acquired by the STIC are classified according to the 
Library  of Congress classification system, which employs a combination of 
letters and  numbers.  Books and bound periodicals are intershelved in the 
stacks according  to this classification system.  New unbound periodical 
issues are shelved in  a separate area of each branch, in alphabetical 
order by title. 

LOAN POLICY 

        All STIC materials except noncirculating items may be charged out 
at  the Circulation Desk.  (Noncirculating material includes reference 
publications,  foreign patent documents, and microfilm.) Books circulate 
for a period of 4  weeks and can be renewed on request.  Extended loan 
periods are available on  request.   Examiners may use the Department of 
Commerce Libraries as well as  other Federal Government libraries in the 
area.   STIC's staff can answer questions  regarding the accessibility and 
lending practices of other libraries.   If  books are needed from another 
library for official use, the request should  go through the Scientific 
and Technical Information Center by means of an interlibrary  loan 
request.   (See  "Interlibrary Loan"  under STIC SERVICES.) 

STIC SERVICES 

1.  Reference Services 

        The staff of the Scientific Reference Branch, the Electronic 
Information  Center, the Patent Law Library, and the 
Biotechnology/Chemical Information  Branch assist examiners in the use of 
the STIC.  Upon request, 



they provide guidance on finding information in the collection.  If any 
problems  are encountered in locating materials, using the catalogs or 
indexing services,  or finding answers to informational needs, please 
check with the staff.  They  are ready and willing to assist.  Queries may 
be made in person or by telephone. 
2.  Online Searching 

        Online computer data base searching is provided by the Scientific 
Reference  Branch, the Electronic Information Center, the Patent Law 
Library, and the  Biotechnology/Chemical Information Branch.  All branches 
have access via modems  or the in-house system to a number of vendors' 
commercial data base search  systems.  These vendors' databases 
extensively cover the field of knowledge  and make it possible for online 
searchers to retrieve bibliographic information  with abstracts, chemical 
structures, DNA sequences, and sometimes the full  text of the articles, 
depending on the database.  This online search service  provides a 
valuable screen of the nonpatent literature for the examiner intending  to 
make a search of the secondary sources of his/her area of interest. 
        Vendors accessed by STIC staff include DIALOG, ORBIT, DOE/RECON, 
Chemical  Abstracts Services (STN), INPADOC, DataTimes, DATASTAR, 
DTIC/DROLS, IntelliGenetics,  and Mead Data Central.  When they are 
identified as meeting the needs and requirements  of the Office, new data 
base vendors are added.  A list of the data bases offered  by each vendor 
is available in the vendors' manuals located in each STIC branch. 
Examiners may request a computer search by submitting a request form to 
the  appropriate  branch.   Searches are usually completed and ready for 
pickup  within 1-2 days. 

        Examiners are allowed to conduct searches of online commercial 
databases  independently of STIC staff.  Training is provided through the 
Patent Academy  and individual assistance is available from the STIC 
staff, especially for  searching chemical structures and DNA sequences. 

        Online searching of nucleic and amino acid sequences is conducted 
by  the staff of the Biotechnology/Chemical Information Branch through the 
use  of an in-house computer network developed for this purpose. 
Examiners who  wish to access the Automated Biotechnology Sequence Search 
(ABSS) system located  in Group 1800 must apply through their SPE to the 
Biotechnology/Chemical System  Branch for an ID and password.  On an as 
needed basis, introductory classes  are conducted by STIC staff to assist 
examiners in understanding the sequence  search results. 

3.  Foreign Patent Services 

        The staff of the Foreign Patents Branch of the Foreign Document 
Division  is available to assist with any problem or informational need 
regarding foreign  patent searching or foreign patent documents. 

        Online search services on Orbit/Questel and Dialog (on the basis 
of  Derwent databases) or INPADOC are performed for patent examiners by 
the Foreign  Patents Branch.  The services provided include: 
identification of English-language  or preferred-language equivalents; 
determination of priority dates and publication  dates; searches by 
inventor name or abstract number; other patent family and  bibliographic 
searches; and foreign classification information. 

        Examiners who choose to perform their own patent searches after 
receiving  appropriate training through the Patent Academy can consult 
foreign patent  experts for difficult searches.  In using the Derwent 
versus the INPADOC databases,  examiners should be aware that the systems 
overlap in coverage and have other  similarities, but also differ in 
format, kinds of searches that can be performed,  and patent document and 
country coverage.  Derwent maintains superior coverage  of chemical patent 
documents, while INPADOC includes earlier documents and  more countries 
and has more extensive coverage of mechanical and electrical  patent 
documents than Derwent databases. 

        The staff of the Foreign Patents Branch can supplement the online 
searching  effort with manual searches of foreign patent journals, 
including Official  Gazette(s), patent concordances, and/or indexes.  The 
staff also provides training  in the use of the Foreign Patents Access 
System (FPAS) and information of use  of the foreign patent collections. 

        SPECIAL NOTE:  Members of the public can order copies of foreign 
patent  documents.  Procedures are outlined in a brochure entitled, 
"Foreign Patent  Document Copy Orders"  available in STIC. 

4.  Translations 

        Examiners may consult the translators in the Translations Branch 
of  STIC's Foreign Document Division for oral assistance in translating 
foreign  language 




patents and other literature sources that are possible references for 
applications  being examined.  Oral translations are performed for the 
major European languages  and for Japanese.  Examiners may also request 
written translations of pertinent  portions of references being considered 
for citation or already cited in applications. 
 Full translations are also made upon request.  Written translations can 
be  made from virtually all foreign languages into English. 

        There is a computerized database located in the Translations 
Branch  listing all translations which have been made by the Branch, and a 
few others  gathered from miscellaneous sources.  This database lists over 
30,000 translations  of foreign patents and articles, all of which are 
located in the Translations  Branch.  Patent translations are indexed by 
country and patent number; articles  are indexed by language and author or 
title.  Any copies of translations coming  to examiners from outside the 
Office should be furnished to the Translations  Branch so that it may make 
copies for its files. 

5.  Interlibrary Loans 

        When needed for official business purposes, STIC will borrow 
materials  not available in-house from other libraries.  Requests are 
initially submitted  to the Reference Fulfillment Branch.  Those that can 
be filled by libraries  in the metropolitan area are handled by staff who 
go out on a daily basis to  retrieve requested materials.  Those that must 
be filled by libraries elsewhere  in the country are requested 
electronically via numerous networks and commercial  vendors.  Law books 
cannot be borrowed by STIC for use by examiners in connection  with law 
courses. 

        When a book or periodical is borrowed from another library, and 
cited  in an Office action, a photocopy of the portion cited should be 
placed in an  appropriate class and subclass.  This class and subclass 
should be cited in  the Office action. 

  STIC also loans its materials to other libraries around the country so 
that  occasionally an examiner may find that the item he/she desires is 
unavailable. 
 Materials which are out on interlibrary loan may be recalled for the 
examiner  if required for immediate use. 

6.  On-Site Photocopying 

        For the convenience of the Examining Corps, photocopy machines are 
 available for employee use in STIC.   These are to be used for 
photocopying  STIC materials which do not circulate, or for materials 
which examiners do  not wish to checkout. 

7.  Obtaining Publication Dates 

        Requests pertaining to the earliest date of publication or first 
distribution  to the public of publications should be made to the 
Scientific Reference Branch  or the Biotechnology/Chemical Information 
Branch.  For U.S. publications, the  staff can obtain the day and month of 
publication claimed by the copyright  owner.  The same information can be 
obtained for foreign publications through  correspondence although it will 
take a little longer. 

8.  Tours 

        Special tours of the STIC can be arranged for examiners or for 
outside  groups.  Contact the Scientific Reference Branch. 

9.  STIC Brochure 

        A brochure detailing location, hours, holdings, telephone numbers, 
 and services of the Scientific and Technical Information Center is 
available  from STIC. 


901.06(b) Borrowed Publications 


        See MPEP w 901.06(a), Interlibrary Loans. 


901.06(c) Alien Property Custodian Publications 


        Applications vested in the Alien Property Custodian during World 
War  II were published in 1943 even though they had not become patents. 
        Care must be taken not to refer to these publications as patents; 
they  should be designated as A.P.C. published applications. 

        An A.P.C. published application may be used by the examiner as a 
basis  for rejection only as a printed publication effective from the date 
of publication,  which is printed on each copy. 

        The manner of citing one of these publications is as follows: 
A.P.C.  Application of ............, Ser. No. ............, Published 
............ 


        The Public Search Room contains a complete set of A.P.C. published 
 applications arranged numerically in bound volumes. 


901.06(d) Abstracts, Abbreviatures, and Defensive Publications 


        Abstracts and Abbreviatures are Patent and Trademark Office 
publications  of abandoned applications. Defensive Publications (the O.G. 
defensive publication  and search copy) are Patent and Trademark Office 
publications of a provisionally  abandoned application wherein the 
applicant retains his rights to an interference  for a limited time period 
of 5 years from the earliest effective U.S. filing  date.  On May 8, 1985, 
the Patent and Trademark Office stopped accepting Defensive  Publication 
requests and began accepting applications for Statutory Invention 
Registrations (SIRs), although there was an overlap period where both 
Defensive  Publications and Statutory Invention Registrations were 
processed; see MPEP  w 711.06 and w 711.06(a). Statutory Invention 
Registrations have now replaced  the Defensive Publication program. 
Statutory Invention Registrations are numbered  with document category 
"H," beginning with "H1."  Defensive Publications and  Statutory Invention 
Registrations are included in subclass lists and subscription  orders. 

        Distinct numbers are assigned to all Defensive Publications 
published  December 16, 1969 through October 1980, for example. 



        For Defensive Publications published on and after November 4, 
1980,  a different numbering system is used. 



        A conversion table from the application serial number to the 
distinct  number for all Defensive Publications published before December 
16, 1969 appears  at 869 O.G. 687.  The distinct numbers are used for all 
official reference  and document copy requirements. 


901.07      Arrangement of Art in Examining Groups 


        In the examining groups,  the U.S. patents are arranged in shoes 
bearing  appropriate labels, each showing the class, subclass, and usually 
the lowest  and highest numbered patents put in the respective shoe. The 
patents should  be arranged in numerical order. 

        Some U.S. copies are marked "Cross-Reference."  These are patents 
which  are classified as originals in other classes or subclasses but 
which have either  additional claimed inventions or disclosures pertinent 
to the subclasses in  which they are placed as cross-references. 
Cross-reference copies may be filed  in the shoes along with the copies of 
the original patents to simplify the  tasks of searching and filing. 

        Copies of foreign patents are usually kept in shoes separate from 
and  immediately following the U.S. patents. 

        All foreign patent documents (patents and published applications) 
involved  in a reclassification project issued after January 1, 1974 are 
filed by a computer-generated  sequence number within each subclass.  Each 
such foreign patent document has  the year of publication indicated in the 
upper right-hand corner of the front  page.  It is anticipated that 
eventually all the classified foreign patent  document search files will 
be arranged in this manner.  This filing arrangement 

aids the examiner in updating his search as well as the Search and 
Information  Resources Administration in the maintenance of the integrity 
of the search  files. 

        Nonpatent publications or photocopies thereof containing 
disclosures  for particular subclasses, if numerous, should be filed in 
shoes following  the foreign patents; otherwise, they should be filed at 
the bottom of the last  shoe of foreign patents. 


901.08      Borrowing References 


        The search files in each examining group should at all times be 
complete. 
 Where they are incomplete, the examiners using such files and relying on 
their  completeness may miss valuable references.  References removed from 
the files  whether for use in the group or otherwise should, of course, be 
promptly returned. 



901.09      Missing Copies - Replacement 


        To expedite the handling of requests for replacement copies and 
thereby  ensure the quickest response, the following routing procedures 
should be adhered  to: 

        (1) Use designated collection drops within each group for copy 
orders. 
        (2) Clerical personnel from the Office of Classification Support 
(OCS)  will visit designated collection drops at least twice each week to 
pick up  PTO-14C orders.  Alternatively, the orders may be mailed or 
otherwise delivered  to the Search File Improvement Division, OCS, 
currently located in Crystal  Mall, Building 2, Room 967. 

        The attorneys' drop slot at the Public Service Window  should not 
be  used nor should the forms be mailed to Copy Fulfillment Services as 
consequent  rerouting to Office of Classification Support for processing 
will result in  unnecessary delay. 

        All replacement copies ordered through the PTO-14C program are 
returned  to the requesting examiner as notification of order fulfillment. 
 The examiner  should then place the copies in the designated file drop 
location for filing  by the contractor in the search file 

D90109005.bmp 

. 


D90109005.end 


902   Search Tools and Classification Infomation 



902.01      Manual of Classification 


        The Manual of Classification is the key to the U.S. Patent 
Classification  System.  It is published in full as the Basic Manual every 
2 years. Basic Manuals  reflect current classifications as of December of 
even-numbered years. Revisions  to the Basic Manual occur at 6-month 
intervals.  Pages of the Manual revisions  are inserted as replacements to 
update the previous versions. 

        There are over 400 classes in the U.S. Patent Classification 
System,  each having a title descriptive of its subject matter and each 
being identified  by a class number.  Each class is subdivided into a 
number of subclasses.   Each subclass bears a descriptive title and is 
identified by a subclass number.  The subclass number may be an integral 
number or may contain a decimal portion  and/or alpha characters.  A 
complete identification of a subclass requires  both the class and 
subclass number and any alpha or decimal designations; e.g.,  417/161.1A 
identifies Class 417, Subclass 161.1A. 

        The Manual of Classification contains ordered arrangements of the 
class  and subclass titles, referred to as class schedules. These titles 
are necessarily  brief, although they are intended to be as suggestive as 
possible of subject  matter included.  Therefore, it is best not to depend 
exclusively upon titles  to delineate the subject matter defined by a 
class or subclass.  Reference  to respective definitions and notes is 
essential.  If a search is to be expeditious,  accurate, and complete, the 
Manual of Classification should be used only as  a key to the class or 
subclass definition and appended notes. 

        The Manual of Classification has the following parts: 

        Current Pages - A tabulation showing the classes appearing in the 
current  version and the date each class was created. 

        Classes Arranged by Related Subject - A theoretical organization 
of  most classes into three major groups, which attempts within each group 
to list  classes in a hier-archy  representing a relationship for all 
applied sciences.  This tabulation is for the purpose of assisting the 
user in finding the class  pertinent to his search. 

        Organic Compounds Index - A table showing the hierarchical 
arrangement  of the synthetic resin and organic compound classes. 

        Group Personnel Directory - A listing which shows for each 
examining  group, the Director, the Supervisory Patent Examiners, and the 
Group Post Classifier  with room locations and telephone numbers. 



        Classes Arranged by Art Unit 

        Classes Arranged Numerically with Art Unit and Search Room 
Locations 
        Classes Arranged in Alphabetical Order by Title 

        Class Schedules - The arrangements of subclass titles under each 
class  title. The plant class appears first, followed by the utility 
classes in numeric  sequence, followed by the design classes in numeric 
sequence. 


902.01(a) Index to the U.S. Patent Classification System 


        The Index to the U.S. Patent Classification System is an 
alphabetic  listing of technical and common terms referring to specific 
classes and subclasses  of the U.S. Patent Classification System.  It is 
intended as an initial entry  into the system and should not be considered 
exhaustive.  The class schedule  should be scanned for specifically 
related subclasses and the definition and  associated notes of the 
identified classifications must also be reviewed, even  when the citation 
found in the Index appears to be restricted to a specific  subject matter 
area. 

        The Index is published every year reflecting classification as of 
December  of the year. Suggestions or changes to the Index are encouraged 
and should  be directed to the Classification Groups. 


902.02      Class and Subclass Definitions 


        All of the utility classes (i.e., classes devoted to technology) 
and  the plant class have definitions. The design classes do not have 
definitions. 
        Definitions state the subject matter of the classes and subclasses 
 much more explicitly than it is possible to state in short class and 
subclass  titles.  A study of the definitions is essential to determine 
the proper classification  of subject matter within the U.S. Patent 
Classification System. 

        Definitions are available as full sets on microfiche. The 
microfiche  is revised every 6 months, with full (basic) sets being issued 
in December  of each even numbered year.  Each examining  group has at 
least one set of  definitions on microfiche and a microfiche reader. There 
are several sets of  microfiche and a paper set of definitions in the 
Public Search Room. 
        Definitions of individual classes in paper form or on floppy disc 
are  available from the Office of Classification Support.  It is noted 
that classification  orders frequently affect existing definitions. 
Personal sets of definitions  used by examiners should be periodically 
revised to reflect these changes. 

902.02(a) Definition Notes 


        Many of the definitions have accompanying notes. These notes are 
of  two types:  notes that supplement definitions by explaining terms or 
giving  examples, and notes referring to related disclosures located in 
other classes  or subclasses. 

        These latter notes are termed search notes and are helpful in 
explaining  the limits of a class or subclass. They generally state the 
relationship to,  and difference from, other identified subject matter 
collections. It is intended  that each note should guide a user to the 
extent necessary to reach a decision  either to include or exclude an area 
containing relevant subject matter. 
        Search notes are not exhaustive and should be regarded as 
suggestive  of additional fields of search, but not as limiting the 
search.  Additionally,  since a search note which applies to a particular 
subclass is rarely repeated  for subclasses indented thereunder, it is 
advisable to review the search notes  of all parent subclasses. 


902.02(b) Search Cards 


        Many older subclasses have "search cards" containing the subclass 
definition  in the first shoe of each defined subclass in both the 
examining group and  the Public Search Room. 


902.03      Classification Information 


        Current classification information for U.S. patents is available 
from  the sources indicated below. 


902.03(a) Master Classification File (MCF) on Microfilm 


        A patent number index of domestic patents giving their current 
original  and cross-reference classification is available on microfilm in 
the Public  Search Room.  Patent numbers are arranged in both numeric and 
classified array. 
 The microfilm is updated semiannually, in June and December. 




902.03(b) Patent Index 


        Original and cross-reference classification information for 
individual  patents can be obtained by use of computer  terminals located 
in the Public  Search Room or by calling the Patent Index telephone 
service, 305-5227. This  data is updated bimonthly with new issues and 
reclassifications. 


902.03(c) Subclass Listings 


        Computer printout listings of patents contained in subclasses may 
be  obtained by request from the  Office of Classification Support. 
Listings can  be inclusive or limited by use of a cutoff date or patent 
number.  This data  is updated bimonthly with new issues and 
reclassifications. 


902.03(d) Classification and Search Support Information System (CASSIS) 

        CASSIS provides access to search tools, bibliographic, and 
classification  information on CD-ROM (Compact Disc-Read Only Memory). 
        The following are available on CASSIS CD-ROM: 

                Lists of all classifications of a patent. 

                List of all patents in a classification. 

                Display and word search of class schedules 
                of the Manual of Classification 

         CASSIS/CD-ROM allows word searching and display of patent titles 
and assignees for patents granted after 1969 and word searching and 
display of recent abstracts. 


902.03(e) Automated Patent System (APS) 


        APS is the PTO online system which allows access to the full text 
of  U.S. patents granted since 1970.  In addition, APS provides access to 
current  classification information for all U.S. patents. 


902.04      Classification Orders 


        Classification Orders issue once a month, each Order detailing the 
 changes resulting from a classification project effected that month. 
        Since classification projects issue monthly throughout the year, 
orders  are used to bridge the gap between the time a project issues and 
the time the  other search tools (Manual, Index, Definitions) are updated. 

        The order includes the following: 

        1. Either the new class schedules or changes to existing 
class  schedules necessitated by the project. 

        2. The changes to the definitions necessary to support the changes 
 in 1, above. 

        3. Source and disposition lists showing how the old art has been 
distributed  into the newly established subclasses. 

        4. A revised concordance showing the relationship between the 
newly  established subclasses and their International Patent 
Classification (IPC)  counterparts. 

        Classification Orders are distributed to classifiers and examiners 
 associated with the reclassification project of the order, to Patent 
Depository  Libraries, and to the Public Search Room.  Copies can be 
obtained through the  Group Post Classifier or from the Office of 
Classification Support. 

902.04(a) Reclassification Alert Report 


        The Reclassification Alert Report is distributed to examiners, 
classifiers,  and technicians each quarter.  It lists numerically the 
classes and subclasses  affected by classification orders which issued 
during the quarter, indicating  if the classifications were established, 
abolished, or had definition changes. 
        Copies of definitions of newly established subclasses, definition 
changes  to existing subclasses, or entire classification orders are 
available from  the Office of Classification Support. 


903   Classification 



903.01      Statutory Authority 


        The statutory authority for establishing and maintaining a 
classification  is given in the following statute, which states: 

35 U.S.C. 9.    Classification of patents. 

        The Commissioner  may revise and maintain the classification by 
subject  matter of United States letters patent, and such other patents 
and printed  publications as may be necessary or practicable, for the 
purpose of determining  with readiness and accuracy the novelty of 
inventions for which applications  for patent are filed. 




903.02      Basis and Principles of Classification 


        The basis of classification used in the U.S. Patent and Trademark 
Office,  the principles followed, and the reasons why such principles were 
adopted are  set forth in the booklet Development and Use of Patent 
Classification Systems,  which is available in each art unit.   Since 
classification is the basic tool  of every examiner, this booklet, 
particularly as it relates to the present  classification system, should 
be carefully studied. 


903.02(a) New and Revised Classes 


        The establishment of new classes or subclasses and the revision of 
 old classes are done under the supervision of a  patent classifier. 
        The classifier performing the reclassification is provided with a 
set  of patent copies of the present classification. With these copies, by 
study  and successive groupings, he or she develops an arrangement of the 
patents  which is satisfactory for searching.  Usually expert examiner 
opinion is sought. 
        The definition of the new class or revised class is written or 
modified,  the lines between the class and other classes are drawn up, and 
the subclass  definitions are established. 

        The Index to the U.S. Classification System and the Classification 
 Data System files are also updated. 

        Notification of the new class or subclass is published in a 
Classification  Order, and Supplementary sheets necessary to correct the 
looseleaf Manual of  Classification are published. 

        Definitions of all revised classes and subclasses are included in 
Classification  Orders. 


903.02(b) Scope of a Class 


        In using any classification system, it is necessary to analyze the 
 organization of the class or classes to be included in the search. 
        The initial analysis should determine which one or ones of the 
several  types of subject matter (manufacture, art, apparatus, or stock 
material) are  contained in the class being considered. 

        Further, relative to each type of subject matter, it is necessary 
to  consider each of the various combinations and subcombinations set out 
below: 
        Feature Combined with Basic Subject Matter for Some Added Purpose. 
 The added purpose is in excess of the scope of the subject matter for the 
 class, as defined in the class definition; e.g., adding a sifter to a 
stone  crusher which gives the added function of separating the crushed 
stone. 
        Feature Combined to Perfect the Basic Subject Matter.  Features 
may  be added to the basic subject matter which do not change the 
character thereof,  but do perfect it for its intended purpose; e.g., an 
overload release means  tends to perfect a stonecrusher by providing means 
to stop it on overload and  thus prevent ruining the machine.  However, 
this perfecting combined feature  adds nothing to the basic character of 
the machine. 

        Basic Subject Matter.  The combination of features necessary and 
essential  to the fundamental character of the subject matter treated; 
e.g., a stonecrusher  requires a minimum number of features as essential 
before it can function as  such. 

        Subcombinations Specialized to Basic Subject Matter. Each type of 
basic  subject matter may have subcombinations specialized to use 
therewith; e.g.,  the crushing element of a stonecrusher. 

        Subcombinations of General Utility.  Each type of basic subject 
matter  may have subcombinations which have utility  with other and 
different types  of subject matter; e.g., the ma-chine elements of a 
stonecrusher.  Subcombinations  of this character usually are provided for 
in some general class so that the  examiner should determine in each 
instance where they are classified. 

903.02(c) Establishing Subclasses and Cross-Reference Art Collections 

        When an examiner finds it desirable to create a new subclass or 
cross-reference  art collection, the appropriate post classifier must be 
consulted before work  is begun. The post classifier will assist the 
examiner in establishing any  new subclass or cross-reference art 
collection by providing appropriate instructions  on how to mark patents 
to be transferred from an existing subclass to a new  subclass, obtaining 
any additional cross-reference copies that might be needed,  determining 
the title of the newly established subclass or cross-reference  art 
collection, and assigning the 




numeric designation to be placed on the new subclass or cross-reference 
art  collection. 

        All newly created subclasses will be made official so as to be a 
part  of the defined classification system and will thus  appear in both 
the examiners'  and Public Search Room files. The intent is to accomplish 
this with a minimum  amount of disruption to the examiners.  Any examiner 
having the group director's  approval to create new subclasses should 
contact the group post classifier  for his or her group.  As workload 
permits, the classifier will be assigned  to cooperate with the examiner 
on the arrangement of the subclasses he or she  wishes to establish and 
the definitions thereof.  Then, the examiner will physically  establish 
the subclasses or provide a marked-up computer printout of the patents  in 
the subclass or subclasses being affected.  On a time available basis, the 
 examiner may be aided in this task by classification personnel. 

        At this point, the Office of Classification Support will withdraw 
the  corresponding Search Room copies, and using data gathered from the 
examiners'  newly created subclasses or computer printout, conduct the 
final processing  of the Search Room patents.  After this is complete 
(i.e., the Search Room  copies are arranged by the new classification), 
the examiners' copies will  be withdrawn for a short period to go through 
final clerical processing into  new subclasses and then returned to the 
examiners. 

        The above procedures will not only be beneficial to the Search 
Room  file but will also provide the examiners with defined subclasses. 

903.03      Classification of Foreign Patents 


        Usually, newly received foreign patent documents are distributed 
by  the Foreign Documents Processing Division, Office of Classification 
Support,  to the Classification Groups. Classification personnel will 
classify these  documents and return them to the Foreign Documents 
Processing Division for  further processing.  All classified documents 
will be labeled and routed to  the examining group for inclusion in the 
examiner search file.  Certain examining  groups are currently filing a 
portion of their foreign patent documents by  the International Patent 
Classification system. 

        In a few cases, newly received foreign patent documents will be 
routed  to the examining groups with forms attached. When such documents 
are received,  the examiner should indicate the proper classification for 
the foreign patent  on the form. 

        If the foreign patent is not properly classifiable in his or her 
group,  the examiner should indicate on the form a Group Art Unit and 
Class in which  he or she considers it to be classifiable, if possible, 
and return it with  the patent to the Foreign Documents Processing 
Division. Any indication of  class made by the Foreign Documents 
Processing Division is advisory only, and  the final decision as to where 
the patent is to be placed is made by the classifier  or the examiner in 
whose art it is classifiable. 

        All subclasses in which a copy of the foreign patent is desired 
should  be indicated on the form.  Foreign Documents Processing Division 
will supply  any necessary additional copies and label them with the 
classifications indicated  on the form. 

        All foreign patents should be classified and returned with the 
forms  to the Foreign Documents Processing Division within 2 weeks of 
receipt. 
        If the examiner desires to update the classification of a foreign 
patent  by changing, canceling, or adding copies, he or she should forward 
the patent  to his or her post classifier with a request for the desired 
transaction attached. 
        The Scientific and Technical Information Center retains copies of 
foreign  patents (See MPEP w 901.06(a)) so that foreign patents, known by 
country, number,  and publication date, can be inspected in the Scientific 
and Technical Information  Center or photocopies ordered. 

        Examiners confronted with language problems in classifying 
foreign-language  patents may call upon the Translation Branch of the 
Scientific  and Technical  Information Center for assistance, see MPEP w 
901.06(a). 

        Time spent in classifying foreign patents is allowed in computing 
an  examiner's output.  The method used in classifying foreign patents and 
the  assignment of such work among the examiners of the group are left to 
the supervisory  primary examiners. The hours spent by each examiner on 
this work are noted  on the individual examiner's record of  "Other"  time 
(PTO-690E). 

903.05      Transfer of U.S. Patents 


        The transfer of official copies of U.S. patents, either 




original or cross-reference, from one class or subclass to another 
requires  the approval of a classifier. 

        Examiners must submit to the appropriate classification group all 
questions  of transfer of patents. 

        When an examiner desires to transfer official copies of domestic 
patents  to a different class or subclass, he or she should have a 
memorandum list prepared  for signature of the primary examiner of the 
numbers of all patents which are  to be transferred indicating only the 
class and subclass into which each is  to be placed.  Both originals and 
properly identified official cross-references  may be included in the same 
list and these may involve transfers to or from  any number of different 
classes or subclasses. Additional cross-reference copies  of any listed 
patent may also be requested by merely indicating where the cross 
reference copies should be placed. This list with the examiner's copies of 
 the patents is routed through any other group involved for its prompt 
approval  or comment and is forwarded to the appropriate classification 
group. 
        In those instances where a transfer is approved by a patent 
classifier,  the class and subclass designations on both the examiner and 
Public Search  Room copies of the patents are changed and the 
classification data files are  altered to agree with the new 
classification. When the transfer is not approved,  the copies of the 
patents will be returned with a notification thereof. 
        Unauthorized transfers render the subclasses in the Public Search 
Room  no longer duplicates of those in the examiners' rooms, and also 
render incorrect  the classification data files. 

        The procedure for transferring an entire class or subclass from 
one  group to another is given in the Manual of Clerical Operations. 


903.06      Practice To Be Followed in Ordering Official Cross-References 



        Patents which are useful as references may be found either in the 
course  of a search or from inspection of the Official Gazette each week. 
All patent  copies in official subclasses, cross-reference art 
collections, and digests  are now recorded on the Master Classification 
File (MCF).  In order that the  search file be complete as to patent 
copies and to ensure the accuracy of the  MCF, it is necessary that each 
patent copy subsequently added to the search  file be recorded. 

        The informal placement of cross-references as "Unofficial Patents" 
 into the examiner's search file is prohibited.  All patent copies now 
placed  in the examiner's search file are official cross-references. 
Requests for additional  cross-references will be utilized by the Office 
of Classification Support to  ensure the placement of labeled copies in 
the examiner's search file and the  Public Search Room. 

        To order new or additional cross-references, the examiner should 
submit  a pink-colored form, PTO-14B, completed as follows: 

        (1) Enter the "PATENT NUMBER," "GR. ART UNIT," "DATE OF ORDER," 
and  "EXAMINER'S NAME" in the appropriate boxes. 

        (2) Enter the "CLASS" and "SUBCLASS/DIGEST" information for each 
location  where a copy of the requested patent should be placed. 

        (3) Enter the number of "TOTAL COPIES" requested. This number is 
determined  by multiplying the total number of unique classifications 
listed times two. 
 This ensures a sufficient number of copies will be obtained to place a 
labeled  copy in both the Examiner Search File and the Public Search Room. 
        When cross-references for more than three different patent numbers 
 are desired, the examiner can prepare a list of the patent numbers and 
their  associated classifications.  One copy of Form PTO-14B should be 
completed to  reflect the Art Unit, Date of Order, and Examiner's Name and 
should be attached  to the list. 

        To expedite the handling of requests for additional 
cross-references  and thereby ensure the quickest response, the following 
routing procedures  should be adhered to: 

        (1) Designated collection drops within each group for copy orders 
should  be used. 

        (2)  Clerical personnel from the Office of Classification Support 
(OCS)  will visit designated collection drops at least twice each week to 
pick up  PTO-14 orders.   Alternatively, the orders may be mailed or 
otherwise delivered  to the Search File Improvement Division, OCS, 
currently located in Crystal  Mall, Building 2, Room 967. 

        The attorneys' drop slot at the Public Service Window should not 
be  used, nor should the forms be mailedto Copy Fulfillment Services as 
consequent  rerouting to 




the Office of Classification Support for processing will result in 
unnecessary  delay. 

D90306006.bmp 



D90306006.end 


903.07      Classifying and Cross-Referencing at Allowance 


        It is the duty of each primary examiner to personally review the 
original  classification and cross-referencing made by his or her 
assistants of every  application passed for issue and to print his or her 
full name on the blue  issue classification slip to show that this review 
has been made. 

        Both the blue issue classification slip (PTO-270) and the file 
wrapper  provide spaces for the full names of the  "Assistant Examiner" 
and  "Primary  Examiner." 

        An examiner with full signatory authority who acts personally on 
an  application and sends it to issue should print his or her full name on 
the  blue issue slip and stamp and sign the file wrapper ONLY in the 
"Primary Examiner"  space.  A line should be drawn through the Assistant 
Examiner  spaces on both  the blue issue slip and the file wrapper to make 
it clear that the absence  of information in the box was not an oversight. 

        The initial classification of pending applications and the 
drawings  thereof will have been indicated in pencil by the supervisory 
primary examiner. 
 See MPEP 
w 903.08(b). 

        However, an application, properly classified at the start of 
examination,  may be improperly classified when it is ready for allowance. 
 The allowed claims  should be reviewed in order to determine the subject 
matter covered thereby. 
 It is the disclosed subject matter covered by the allowed claims that 
determines  the original classification of U.S. patents. 

        The procedure for determining the classification of an issuing 
application  is as follows: every claim, whether independent or dependent, 
must be considered  separately for classification. A separate mandatory 
classification is required  for each claim which is classifiable in a 
different class or subclass. After  all mandatory classifications have 
been determined,  the classification to  be designated as the original 
(OR) is determined. If the mandatory classifications  are in different 
classes, the original class is that in which the most comprehensive  claim 
is classified (if the most comprehensive claim cannot be determined,  the 
superiority of statutory categories of inventions applies, as discussed 
in section 711 of "Development and Use of the U.S. Patent Classification 
System"). 
 Within the original class, the mandatory classification that appears 
first 
(highest) in the schedule controls original classification. All remaining 
mandatory  classifications are designated as cross-references, as are any 
additional discretionary  classifications that the examiner wishes to 
apply to the patent. 

        Only the correct original classification should be left on the 
file  and drawing of each application when passed for issue. 

        The examiner must legibly fill out a blue issue classification 
slip 
(PTO-270) or a salmon slip (PTO-328) in the case of designs to indicate 
the  class and subclass in which the patent should be classified as an 
original  and also the classifications in which it should appear as a 
cross-reference. 
 The examiner should be certain that all subclasses into which 
cross-references  are placed are still valid. The examiner attaches the 
blue issue classification  slip to the inside of the left fold of the file 
wrapper to be forwarded to  the Patent Issue Division. 

         The examiner also enters the final original classification 
appearing  on the issue classification slip in the space provided on the 
front of the  file and in the space provided in the stamping at the top 
margin of the drawing. 
 Care should be exercised to see that all three entries of the 
classification  are correct and in agreement, particularly after any 
alteration of one entry,  for otherwise the 



patent will be printed with an erroneous classification orimproperly 
positioned  in the Official Gazette. 

        All examiners are requested to fill in the original class and 
subclass  on the drawings in large numerals using as much of the space 
provided as feasible. 
 In this way, the filing of drawings and subsequent retrieval by the 
Patent  Issue Division will be greatly aided.  See also MPEP w 1302.10. 

        All examiners must include alpha subclass designators on the blue 
issue  slips (PTO-270) at the time of issue when appropriate.  This 
applies to both  the original  classification and the cross-reference 
classification. Any time  that a patent is being issued in or 
cross-referenced to a subclass containing  alpha subclasses, the alpha 
designation for the proper alpha subclass must  be included on the blue 
issue slip. No other designation is permissible.  Inclusion  of only the 
numeric designation of a subclass which includes an alpha subclass 
designation is an incomplete and improper entry on a blue issue slip.  A 
numeric  subclass from which alpha subclasses have been created is 
designated with an  "R" (denoting residual) and if the patent does not fit 
an indented alpha subclass,  the blue slip should include the  "R" 
designation.  It is permissible to place  multiple copies of a patent into 
a single set of alpha subclasses. 
        When the original patent is classified in an alpha subclass 
(including  the  "R"  subclass), the front of the file wrapper and the 
drawing should also  include the alpha designation. 

        Digests and cross-reference art collections should also be 
included  on the blue issue slip, but the original classification must 
never be a digest  or cross-reference art collection. The indication for a 
copy of a patent in  a digest or cross-reference art collection must be in 
the cross-reference area  of the blue issue slip. A digest must be 
identified by class number, alpha  characters DIG, and appropriate digest 
number. 

APPLICATIONS IN ISSUE 

        Where an official Classification Order affects an application 
already  passed to issue, the classification group makes the necessary 
changes on the  file wrapper, blue slip, and drawing, if any. 

        Applications which already have been sent to the printer will be 
classified  by the classification group at the time the patent issues. 


903.07(a) Cross-Referencing - Keep Systematic Notes During Prosecution 

        Throughout the examination of the case, systematic notes should be 
 kept as to cross-references needed either due to claimed or unclaimed 
disclosure.  Examiners handling related subject matter should be consulted 
during prosecution 
(whether they handle larger unclaimed combinations or claimed or 
unclaimed,  but disclosed, subcombinations), and asked if cross-references 
are needed. 
        Each consultation involving a question of the propriety  of the 
classification  of subject matter and/or the need for a cross-reference 
must be recorded in  the SEARCH NOTES box on the file wrapper and must 
include: the name of each  examiner consulted, the date that the 
consultation took place, and the results  of the consultation including 
the consulted examiners' or examiner's indication  of where claimed 
subject matter is properly classified and where subject matter  disclosed 
but unclaimed is properly classified and whether or not a cross-reference 
is needed. 

        A cross-reference MUST be provided for all CLAIMED disclosure 
where  possible and inserted on the blue issue classification slip at time 
of issue. 

903.07(b) Issuing in Another Examining Group Without Transfer 


        When an examiner issues a prospective patent in another examining 
group,  he or she notes in the space provided on the blue issue 
classification slip,  in red ink, the class and subclass of the other 
group, and in parentheses the  number of said other group. (The initials 
of said other primary examiner must  appear in the block to the right of 
the original classification.) In the lower  left corner, the examiner 
writes his or her own group number in black ink. 
(When the patent issues, the classification group will, as a matter of 
routine,  send the necessary notices to the group involved.) 

        The sending of cases to issue from one group and assigning them to 
 classes in another group is restricted to those situations where both 
examiners  concur in the proposed classification of the patent, which must 
be shown 



by the concurring examiner initialing the issue classification slip, or 
where  there has been a ruling by a patent classifier, who must initial 
the slip. 
        When primary examiners disagree on the proper original 
classification  of the allowed claims, the application should be submitted 
for resolution to  the post classifier having jurisdiction over the art 
area to which the application  is presently assigned. The post classifier 
shall give the application a high  priority. 


903.08      Applications:  Assignment and Transfer [R-1] 


        The titles  "supervisory patent examiner,"  "supervisory primary 
examiner,''  and "primary examiner," as used in this Chapter 900, include 
in their definition  any person designated by them to act on their behalf. 
 It is recognized that  authority to accept or refuse the transfer of an 
application may be delegated  when such authority is deserved. 

        The examining group to which an application is assigned is 
responsible  for its examination until such time as the application is 
officially transferred  to another group by the classification group. 

        The primary examiners have full authority to accept any 
application  submitted to them that they believe is properly classifiable 
in a class in  their art unit. 

        Applicants may be advised of expected application transfers by 
using  Form Paragraph 5.03. 



W 5.03 ** >Reassignment Affecting< Application 
** >Location< 

        ** >The group and/or art unit location of your application in the 
PTO  has changed.  To aid in correlating any papers for this application, 
all further  correspondence regarding this application should be directed 
to Group Art Unit  [1]. 

Examiner Note: 

This paragraph should be used in all Office actions when the location of 
an  application is changed due to a reassignment of the art, transfer of 
the application  to a different group or art unit, or transfer of an 
examiner and the examiner's  docket.< 


903.08(a) New Applications [R-1] 


        New >nonprovisional< applications are assigned to the various 
examining  groups in the first instance by the Application Division. Upon 
receiving an  application from the Application Division, the clerk in 
charge of processing  new applications should wand the application on the 
PALM to the art unit to  which it has been assigned and  date stamp the 
file wrapper  on the day the  file is to be delivered to the supervisory 
primary examiner. The complete application 
(file and drawing) are then given to the appropriate supervisory primary 
examiner.  The clerks should not permit these cases to remain overnight 
before distributing. 
        If the supervisory primary examiner decides that the application 
properly  belongs in his or her art unit, it is processed as a new 
receipt. See MPEP  w 903.08(b). 

        When a new application is received which, in the opinion of the 
primary  examiner, does not belong to his or her group, he or she may 
request, transfer  of it to another group. See MPEP w 903.08(d). 

        Form PTO-447,  "Transfer Request"  consists of two copies and is 
used  as a transmittal and notification form. 

        If the search in connection with the first action develops art 
showing  proper classification elsewhere, the transfer is usually 
initiated before the  first action is prepared and mailed. 


903.08(b) Classification and Assignment  to Examiner [R-1] 


        Every >nonprovisional< application, new or amended, and including 
the  drawings, if any, when first assigned to a group must be classified 
and assigned  to an examiner for examination.  The supervisory primary 
examiner normally  assigns them, noting in lead pencil in the space 
provided in the face of the  file, and in the upper left hand corner of 
the first sheet of the colored   paper prints the class and subclass to 
which the case pertains, and also the  name or initials of the examiner or 
the assigned docket designation. The application  file is then turned over 
to the clerk for processing.  >Provisional applications  are not 
classified or assigned since they are not examined.< 

        If an examiner other than the supervisory primary examiner is 
given  the responsibility of assigning applications, time so spent may, at 
the group  director's discretion, be charged to  "Assisting SPE." 




903.08(c) Immediate Inspection of Amendments 


        Upon the receipt of an amendment which makes a transfer proper, 
steps  should be taken promptly in accordance with the transfer procedure 
outlined  in MPEP w 903.08(d). 


903.08(d) Transfer Procedure   [R-1] 


TRANSFER BETWEEN ART UNITS WITHIN THE SAME GROUP 

        All  within the group  transfers must be called to the attention 
of  the group clerk so that the PALM file may be updated to correctly 
indicate  the assignment of the >nonprovisional< application. 

        Where there is a difference of opinion among the supervisory 
primary  examiners as to assignment within the same group, the matter is 
submitted to  the post classifier assigned to that group for resolution. 
Note MPEP w 903.10. 

  TRANSFERS BETWEEN DIFFERENT GROUPS 

        Where a supervisory primary examiner believes an application, 
either  new or amended, does not belong in his or her art unit, he or she 
may request  transfer from his or her art unit (the  "originating"  art 
unit) to another  art unit (the "receiving"  art unit) using form PTO-447. 
 The supervisory primary  examiner of the originating art unit dates and 
completes Section I of the PTO-447  giving a full explanation of the 
reasons for classification in the other art  unit. 

         In the space provided on the form, at least one of the following 
must  be included: 

        (l) Identification of the controlling claim examinable in another 
group. 
        (2) Identification of any existing informal transfer agreement. 
        (3) Other reasons - with full explanation. 



        In all cases when transfer is initiated the application must be 
sent  to another art unit.  It cannot be sent directly to a classification 
group. 
 Even if the application is informal, confusing, or contains unfamiliar 
subject  matter, the examiner must make his or her best judgment as to 
where the application  should be classified and attempt to transfer it there. 

        Where an application's claims include a combination of limitations 
 for plural disciplines (chemical, electrical, or mechanical), a primary 
examiner  may request transfer to another discipline, notwithstanding the 
fact that the  controlling claims are properly classified in his or her 
art unit, on the ground  that the application is  "best examinable"  in 
the other discipline.  In this  instance, the examiner requesting transfer 
should cite art showing the limitations  classifiable in his or her 
discipline. For discussion of the situations in  which assignment of an 
application on a  "best examinable"  basis may be proper,  see MPEP w 
903.08(e). 

  PROCESS FOR TRANSFER 

        When the supervisory primary examiner or primary examiner 
determines  that transfer is proper, he or she staples the form PTO-447 to 
the front of  the file and gives it to the docket clerk for forwarding. 

        If the receiving examiner agrees to accept the application, he or 
she  classifies and assigns the application and initials the form PTO-447 
and the  face of the file wrapper.  The transfer is effected by the clerk 
in the group  which accepts the application for transfer. 

        If the receiving art unit refuses to accept the application, the 
reasons  for refusal, the date, and the examiner's name are placed on the 
form PTO-447  in Section II  "DISPOSITION BY RECEIVING ART UNIT."  Where 
an application is  refused by the receiving art unit based upon the 
classification of any claim,  it may be submitted to the classification 
group associated with the originating  art unit for decision.  Where an 
application is refused by the receiving art  unit solely for reasons 
within the purview of the examining corps; e.g., propriety  of a 
restriction requirement, timeliness of transfer, etc., and there is no 
dispute as to the classification of any claim, the application should be 
returned  directly to the originating art unit using the appropriate line 
in Section  II of the PTO-447. 

        If an application contains both classification issues and 
examining  corps issues; e.g., a dispute both as to the classification of 
claims and the  propriety of restriction, etc., it should be sent to the 
appropriate classification  group.  If the originating art unit receives 
an application as having only  examining corps issues but believes there 
is a 




classification issue present, the originating art unit may  submit the 
application  to their classification group.  For the procedure in the 
classification groups  for applications which contain examining corps 
issue, see MPEP 
w 903.08(e)13. 

        The time limits for requesting or refusing transfer are as 
follows. 
  In a new application, transfer must be requested within 2 calendar weeks 
 of the group receipt date of the application.  In an amended application 
transfer  must be requested within 2 calendar weeks of the group receipt 
date of the  amendment upon which the request for transfer is based.  The 
time limit for  refusal of a transfer request is 2 calendar weeks from the 
receipt of the transfer  request in the receiving art unit. 

        Exceptions to these time limits are: 

        1.  All new applications (docketed and undocketed) transferred to 
Group  220 purely for security reasons. 

        2.  New reissue application should be retained in the group 
indicated  by the notice of filing in the Official Gazette for 2 months 
following the  notice before transfer. 

        3.  PCT applications and other special applications for which a 
different  time limit is set by competent authority. 

        Failure to fill in the date on the form by either the originating 
examiner  or the receiving examiner may result in the assignment of the 
application to  his or her art unit. 

        If a request for transfer is not made or refused within the 2-week 
 time limit, the art unit having physical possession of the application 
must  keep it for purposes of examination.  However, if the group 
directors having  authority over the art units involved agree that strict 
adherence to the 2-week  time limit would not provide the best examination 
for the application, they  may waive the requirement. 

        The question of need for a restriction requirement does not enter 
the  determination of transfer. 

        The regular messenger service may be used to effect the transfer 
of  applications, with the exception that applications filed under the 
Patent Cooperation  Treaty and such other special applications designated 
by competent authority  must be hand-carried throughout the transfer 
process.  If an application is  hand-carried at any stage of the transfer 
process, care must be taken that  it is wanded in or out on the PALM 
system as appropriate so that the PALM system  will always have an 
accurate record of the location of the application. 
CLASSIFICATION AND ASSIGNMENT OF         APPLICATIONS FILED UNDER THE 
PATENT 
 COOPERATION TREATY (PCT) 

        Applications filed under the PCT are treated as any other 
application  submitted to a classification group for classification except 
for the following: 
        1) they are to be hand-carried throughout the transfer and 
classification  process; 

        2) classified on the basis of the first claimed invention 
(However,  if a U.S. national application has been acted upon by an 
examiner, the subsequent  PCT application claiming priority of the 
national application will normally  be assigned to the same examiner.); and 

        3) classified and returned within 3 working days of receipt in a 
classification  group. 

PROCEDURE IN THE CLASSIFICATION GROUP 

        The post classifier will consider the statements and evidence of 
both  the originating and forwarding art units and will assign the 
application to  the art unit which has jurisdiction over the art in which 
the controlling claims  of the application are properly classified.  This 
may be the originating forwarding,  or another art unit as appropriate. 
The post classifier writes the assigned  class and art unit number and his 
or her initials on the face of the file wrapper  and on form PTO-447, 
briefly giving reasons for assignment of the application  in the space on 
the form. 

        Where the change results in assignment of an application to an art 
 area under the jurisdiction of another post classifier, the post 
classifier  having jurisdiction of the originating group art unit obtains 
the concurrence  and signature on form PTO-447 of the other post 
classifier who also states  on form PTO-447 his or her reasons for 
accepting the application. 

        Where there is an issue raised within the purview of the examining 
 corps as well as a dispute as to the classification of any claim, the 
application  is treated as set forth in MPEPw 903.08(e), paragraph 13. 

        Under certain circumstances, a post classifier may, contrary to 
controlling  classification rules, assign an application to a class or 
group which in his  or her judgment 



is better equipped to examine the application.  This is fully described in 
 paragraphs 6 and 9 of MPEP 
w 903.08(e); see also the last paragraph of MPEP 
w 903.08(a).  Assignment by the post classifier becomes final, and no 
transfer  should be accepted without the post classifier's initials on the 
face of the  file wrapper. 

  RECONSIDERATIONS 

        The supervisory (or designated) primary examiner of the group art 
unit  to which an application is assigned by the classification group may 
request  reconsideration if he or she believes the post classifier's 
assignment is in  error, by stating the reason on a new form PTO-447, 
checking the  "Request  for Reconsideration"  box, and sending it with the 
application to his or her  classification group.  All previous PTO-447 
forms  must remain with the application. 
 In each application, only one such request for reconsideration will be 
entertained  from any art unit.  Reconsideration should not be requested 
as a matter of  routine but should be requested only in those unusual 
cases when it is believed  that further evidence will cause a reassignment 
of the application.  The post  classifier having jurisdiction of the area 
to which the application is assigned  considers the matter and writes his 
or her decision on the PTO-447 form with  the advice and consent of his or 
her supervisory patent classifier. Reconsideration  must be requested 
within 2 calendar weeks of the receipt in an art unit of  a decision by a 
classification group.  On those rare occasions when an examining  group 
director becomes involved in or shows an interest in the outcome of a 
reconsideration, the appropriate classification group director(s) in 
collaboration  with appropriate examining group director(s) will come to a 
final classification  decision within 1 calendar week. 

        In the assignment of applications, it must be realized that every 
application,  no matter how peculiar or confusing, must be assigned 
somewhere for examination. 
 Thus, in contesting the assignment of an application, it may be more 
successful  to point out another class that is thought to be a better 
place to classify  the application at hand than merely arguing why the 
application does not fit  the examiner's class. 


903.08(e) General Regulations Governing the Assignment of >Nonprovisional< 
Applications for Examination  [R-1] 

        >This section applies only to nonprovisional applications.  It 
does  not apply to provisional applications since such applications are 
not examined.< 
        The fact should be borne in mind that the following regulations 
are  only general guides, and exceptions frequently arise because of some 
unusual  condition. The fact should also be kept in view that the post 
classifiers as  well as the patent examiners are confronted with an 
already existing classification  made up of newly revised classes, those 
revised years ago and which have somewhat  outgrown their definitions and 
limits, and still others made a generation ago  and never changed.  Also, 
these classes are based on different theories and  plans, some on art, 
some on structure, some on functions, some on the material  worked upon, 
and some apparently on no theory or plan at all. The post classifiers 
cannot change this existing condition as each application comes up for 
assignment,  but must seek to dovetail the cases into the patchwork and 
try to get the applications  where they will be best handled.  To do this 
may violate the post classifier's  views as to what constitutes a really 
proper classification. 

        1. The assignment of >nonprovisional< applications follows, as far 
 as possible, the rules or principles governing the classification of 
patents. 
        2. The most comprehensive claim, that is the claim to the most 
extensive  combination, governs between classes, and this is true whether 
there is only  one such claim and a  large number of other claims, or 
whether the sets of  claims are more evenly divided.  It is regarded as 
just as vital that one complex  claim be searched and adjudicated by an 
examiner skilled in the art as that  a group of such claims be so searched 
and adjudicated. 

        3. The claims and statement of invention are generally taken as 
they  read; however, claims must be read in light of the disclosure 
(claimed disclosure). 
 Any attempt of a post classifier to go behind the record and decide the 
case  upon what is deemed the  "real invention"  would, it is believed, 
introduce  more errors than such action would cure.  The post classifiers 
cannot possess  the specific knowledge of the state of the art in all the 
classes that the  patent ex-examiners collectively possess. Further, such 
questions are matters 


of merit for the examiners to determine and are often open to argument and 
 are subject for appeal. 

        4. Within a class, the first coordinate subclass that will take 
any  claim controls classification. 

        5. The location of the United States patents constituting the 
prior  art is generally controlling over all else. (Note: Where time 
permits, obvious  misplacements of the patents constituting the prior art 
are corrected, but  to straighten all lines as the cases come up for 
assignment would require the  time of several people and would often 
involve a reclassification of an entire  class.) 

        6. Ordinarily, an application cannot be assigned to a class which 
includes  one element or part only of several claimed in combination. The 
claim is treated  in its entirety. The question of aggregation is not 
reviewed by the post classifiers. 
        7. The post classifiers are authorized in all cases, where they 
evaluate  the facts as warranting it, to assign applications for 
examination to the group  best able to examine the same. Since assignment 
for examination on this basis  will at times be contrary to classification 
of patents containing the same  character of claims, the post classifiers 
will indicate the proper classification  of the patent, if such claims are 
allowed. 

        Thus, in cases where there is a claim drawn to hybrid or mixed 
subject  matter and the supervisory primary examiner in one discipline 
feels that the  application requires consideration by, or may be best 
examined by, a group  in one of the other technical disciplines, chemical, 
electrical, or mechanical,  he or she may submit the application to his or 
her post classifier who may  assign the application on a  "best 
examinable"  basis, in accordance with this  subsection. 

        Some examples of applications which may be thus submitted include 
the  following: 

        (1) An application containing a hybrid claim wherein, for 
instance,  a product is defined merely in terms of the process for 
producing it. See MPEP  w 705.01(e)(1). 

        (2) Where an application properly assigned to a mechanical or 
electrical  class contains at least one claim to mixed subject matter, a 
part of which  is chemical, the application  may be assigned to the 
appropriate chemical art  unit for examination; or where the application 
is properly assigned to a mechanical  class and a claim therein contains 
electrical subject matter, the application  may be assigned to the 
appropriate electrical art unit for examination. 
        As indicated earlier, when an application which had been assigned 
for  examination in accordance with this subsection ultimately is allowed, 
it will  be classified according to the controlling claim.  In effect, 
assignment for  examination may be on a  "best examinable"  basis, but the 
patent will issue  and be classified according to the rules of superiority 
in classification;  thus, the search file will have a constant set of 
rules governing placement  of patents therein. 

        Where an application is being reassigned from one examining 
discipline  to another, under the provisions of this subsection, the post 
classifiers are  authorized to require the first examiner to cite 
references pertinent to the  claimed features falling under the 
jurisdiction of the art within his discipline. 
 In those cases wherein the application of the reference(s) is not evident 
 or clear, the first examiner should include a brief statement explaining 
the  relation and possible application of the reference(s) to the 
claim(s); in case  of dispute as to the necessity of this procedure, the 
post classifier has power  to require the statement. 

        8. A U.S. national application filed subsequent to the filing of a 
 PCT application will normally be assigned for examination purposes to the 
examiner  who searched and/or prepared the preliminary examination report 
for the PCT  application. 

        9. When an application has been taken up by an examiner for action 
 and a requirement to restrict is found necessary, a part of the claims 
being  directed to matter classifiable in the group where the case is 
being examined,  an action requiring restriction should be made without 
seeking a transfer of  the case to another group. The action of the 
applicant in response to the requirement  for restriction may result in 
making a transfer of the application unnecessary. 
        10. Ordinarily, where all the claims of an application are for an 
article  made of a specific composition or alloy with no other structure 
of the article  recited, the application will be assigned to the 
composition or alloy class. 
        11. A class of cases exists in which either no art or a divided 
art  is found and in which no rule or principle is involved.  (Such cases 
are placed  where, in the judgment of the post classifiers they will be 
best searched and  adjudicated.)  It is often impossible to so explain a 
decision in this class  of cases as to satisfy, or in any way aid, the 
examiners interested. Indeed,  the reasons for or against 




sending such cases one place or another may be so evenly balanced that no 
reason  of any value can be given. 

        12. An examiner seeking the transfer of a case may make a search, 
both  of his or her own class and the class to which he or she thinks the 
case should  be transferred, and the  examiner in charge of the art unit 
should exhibit  the result of such search to the appropriate 
classification group.  This is  the way the expert knowledge of the 
examiners involved is utilized. 
        13. When an application is received in a classification group in 
which  there is a matter under dispute which is not related to the 
classification  of a claim but which is in the purview of the examining 
corps; e.g., propriety  of a restriction requirement, timeliness of 
submission for transfer, etc.,  as well as a dispute over the 
classification of claims, the application will  be treated as follows. 

        The classifier will check the appropriate box on the PTO-447 
indicating  that the application is being returned (not assigned) to the 
originating group  to resolve the non-classifying issues involved.  The 
classifier will indicate  on the PTO-447 the proper classification of any 
claims under dispute.  If any  claims under dispute are outside the 
jurisdiction of the classifier associated  with the originating group, 
that classifier will obtain concurrence of the  classifier having 
jurisdiction of the claims in question who will sign the  PTO-447 as the 
concurring classifier.  Multiple concurrences may be required  for 
application with claims classifiable in different art areas. 

    It is important that newly received applications be immediately 
screened  for these situations so that the applications may be promptly 
returned to the  originating group. 

    If after resolution of the nonclassifying issues there is still a 
dispute  as to which group should examine the application, the originating 
group may  return the application to classification for assignment. 


903.08(f) Post Classifier's Decision 


        A post classifier in a classification group decides the question 
of  the proper classification of the application, and either (1) returns 
the application  to the group which submitted it if he or she denied the 
transfer request, or 
(2) forwards the application to the group to which it is transferred. See 
also  MPEP w 903.10. 


903.08(g) Transfer to Another Examining Group After Decision 


        If the application is to remain in the group which submitted it 
for  classification, no further procedure is necessary. If assigned to 
another group,  the classification group processes the case as described 
in the Manual of Clerical  Procedures. 

        If the case is one which has been taken up for action by an 
examiner  according to its effective filing date, it should be treated as 
special by  any examiner, art unit, or group to which it is transferred. 
See MPEP w 708.01. 

903.09      International Classification of Patents for Inventions 

        In accordance with the Strasbourg Agreement Concerning the 
International  Patent Classification, the United States is required to 
indicate on its issuing  documents the classification symbols of the 
International Patent Classification  1994 (Sixth  Edition), hereinafter 
referred to as "Int. Cl.6 ." 

        The complete Int. Cl.6 symbols must be placed in the indicated 
space  on the Issue Classification Slip (form PTO-270) when an application 
 is issued. 
        The layout of the Int. Cl.6  is explained below with reference to 
the  sample page. 

   Section 

        The Classification represents the whole body of knowledge which 
may  be regarded as proper to the field of patents for invention, divided 
into eight  sections. 

        (a) Section Symbol -  Each section is designated by one of the 
capital  letters A through H. 

        (b) Section Title -  The section title is to be considered as a 
very  broad indication of the contents of the section. The eight sections 
are entitled  as follows: 

        A.  Human Necessities 

        B.  Performing Operations; Transporting 

        C.  Chemistry; Metallurgy 

        D.  Textiles; Paper 

        E.  Fixed Constructions 

        F.  Mechanical Engineering; Lighting; Heating; 
            Weapons; Blasting 

        G.  Physics 

        H.  Electricity 

        (c) Contents of Section -  Each section title is 




followed by a summary of the titles of its main subdivisions. 

        (d) Subsection - Within sections, informative headings form 
subsections,  which are titles without classification symbols. 

        Example: Agriculture 

        Class 

        Each section is subdivided into classes. 

        (a) Class Symbol - Each class symbol consists of the section 
symbol  followed by a two digit number. 

        Example: A 01 

        (b) Class Title - The class title gives an indication of the 
content  of the class. 

       Example: 

        A 01  Agriculture; Forestry; Animal Husbandry; Hunting; Trapping; 
Fishing 
        Subclass   Each class comprises one or more subclasses. 

        (a) Subclass Symbol - Each subclass symbol consists of the class 
symbol  followed by a capital letter. 

        Example: A 01 B 

        (b) Subclass Title - The subclass title indicates as precisely as 
possible  the content of the subclass. 

        Example: 

        A 01 B Soil Working in Agriculture or Forestry; Parts,  Details, 
or  Accessories of Agricultural Machines or Implements, in General 

        (c) Subclass Index - Some subclasses have an index which is merely 
 an informative summary giving a broad survey of the content of the 
subclass. 
        Group   Each subclass is broken down into subdivisions referred to 
 as  "groups," which are either main groups or subgroups. 

        (a) Group Symbol - Each group symbol consists of the subclass 
symbol  followed by two numbers separated by an oblique stroke. 

        (b) Main Group Symbol  - Each main group symbol consists of the 
subclass  symbol followed by a one to three digit number, the oblique 
stroke, and the  number 00. 

        Example: A 01 B 1/00 

        (c) Main Group Title - The main group title defines a field of 
subject  matter considered to be useful in searching for inventions. 

        Example: A 01 B 1/00 Handtools 

        (d) Subgroup Symbol -  Subgroups form subdivisions under the main 
groups.  Each subgroup symbol consists of the subclass symbol followed by 
the one to  three digit number of its main group, the oblique stroke, and 
a number of at  least two digits other than 00. 

        Example: A 01 B 1/02 

        Any third or fourth digit after the oblique stroke is to be read 
as  a decimal subdivision of the second or third digit, respectively; e.g. 
3/426  is to be read as  "three slash forty-two point six", not  three 
slash four  hundred and twenty six  and is to be found after 3/42 and 
before 3/43, and  5/1185 is to be read as  "five slash eleven point eight 
five,"  and is to be  found after 5/118 and before 5/119. 

        (e) Subgroup Title - The subgroup title defines a field of subject 
 matter within the scope of its main group considered to be useful in 
searching  for inventions. The title is preceded by one or more dots 
indicating the hierarchical  position of the subgroup; i.e. indicating 
that each subgroup forms a subdivision  of the nearest group above it 
having one dot less. The subgroup title is often  a complete expression, 
in which case it begins with a capital letter. A subgroup  title begins 
with a lower case letter if it reads as a continuation of the  title of 
the next higher, less-indented group; i.e. having one dot less. In  all 
cases, the subgroup title must be read as being dependent upon, and 
restricted  by, the title of the group under which it is indented. 

Examples 

        A 01 B 1/00   Handtools 

        1/24    for treating meadows or lawns 

        (The title of 1/24 is to be read as:            Handtools for 
treating  meadows                         or lawns.) 

        A 01 B 1/00   Handtools 

        1/16    Tools for uprooting weeds 

                (The title of 1/16 is a complete 
                expression, but owing to its hierar- 
                chical position, the tools for 
     uprooting  weeds are restricted to 
handtools.) 
        Complete Classification Symbol   A complete classification symbol 
comprises  the combined symbols representing the section, class, subclass, 
and main group  or subgroup. 



E90309007.bmp 



E90309007.end 

        Guide Headings 

        The main groups in each subclass are arranged in a sequence 
intended  to assist the user. It has not however, been found practicable 
to standardize  the sequence. Where several successive main groups relate 
to common subject  matter, it is usual to provide before the first of such 
main groups a  "guide  heading"  which is underlined, indicating this 
subject matter (see, for example,  the guide heading  "Ploughs"  before 
group A 01 B 3/00).  The series of groups  covered by such a heading 
extends to the next guide heading or to a line in  heavy type extending 
across the column, which is used when the following group  or groups 
relate to different subject matter for which no guide heading is 
provided.  (See, for example, the line after A 01 B 75/00.) 

  CLASSIFYING IN THE INT. CL.% SYSTEM 

        A. Selecting subclasses (Corresponding to U.S. Classes) 

        The effective scope of a subclass is defined by the following, 
taken  together: 

        (a) The subclass title which describes, as precisely as is 
possible  in a small number of words, the main characteristic of a portion 
of the whole  body of knowledge covered by the Classification, this 
portion being the field  of the subclass to which all its groups relate; 

        (b) Any references which follows the subclass title or the 
hierarchically  higher class title. These references often indicate 
certain parts of the field  described by the title which are covered by 
other subclasses and are therefore  excluded. These parts may constitute a 
substantial part of the field described  by the title and, thus, the 
references are in some respects as important as  the title itself. For 
example, in subclass A 47 D - FURNITURE SPECIALLY ADAPTED  FOR CHILDREN - 
a considerable part, namely school benches or desks, of the  subject 
matter covered by the title is excluded in view of a reference to 
particular  groups of subclass A 47 B, thus considerably altering the 
scope of subclass  A 47 D; 

        (c) Any references which appear in groups or guide headings of a 
subclass  and which refer subject matter to another class or subclass may 
also affect 
 the scope of the subclass in question. For example, in subclass B 43 
K-INSTRUMENTS  FOR WRITING; DRAWING-PENS-writing points for indicating or 
recording apparatus  are referred out of group 1/00 to group 15/16 of 
subclass G 01 D, thereby reducing  the scope of the subject matter covered 
by the title of subclass B 43 K; 
        (d) Any notes or definitions appearing under the subclass title or 
 its class, subsection or section title.  Such notes or definitions may 
define  terms or expressions used in the title, or elsewhere, or clarify 
the relation  between the subclass and other places.  Examples are (i) 
Note (1) appearing  under the title of the subsection  "ENGINES OR PUMPS," 
embracing classes F01  to F04, which notes define the terms used 
throughout the subsection, (ii) the  notes appearing under the title of 
subclass F01 B, which define its scope in  relation to subclasses F01 C to 
F01 P, and (iii) the note following the title  of section C which define 
groups of elements. 

        B. Selecting Main-groups (Corresponding to U.S. Mainline 
Subclasses) 
        The scope of a main group is to be interpreted only within the 
effective  scope of its subclass (as indicated above). Subject to this, 
the effective  scope of a main group is determined by its title as 
modified by any relevant  references or notes associated with the main 
group or with any guide heading  covering it.  For example, a group for 
"bearings"  in a subclass whose title  is limited to a particular 
apparatus must be read as covering only features  of bearings peculiar to 
that apparatus; e.g. the arrangement of bearings in  the apparatus. 
Attention is drawn to the fact that guide headings are intended  to be 
only informative and, as a rule, do not modify the scope of the groups 
covered by them, except where it is otherwise clear from the context. By 
contrast,  references in the guide headings modify the scope of the 
associated groups. 
        C. Selecting Subgroups (Corresponding to U.S. Indented Subclasses) 
        The scope of a subgroup is likewise to be interpreted only within 
the  effective scope of its main group and of 

any subgroup under which it is indented.  Subject to this, the scope of a 
subgroup  is determined by its title as modified by any relevant 
references or notes  associated therewith. 



        Attention is invited to volume 9 of the International Patent 
Classification,  entitled "Guide, Survey of Classes and Summary of Main 
Groups"  for detailed  procedures for Classifying into and searching Int. 
Cl.6. 



D90309008.bmp 



D90309008.end 



  U.S. INT. CL.% CONCORDANCE, 1990 

        The Office of International Patent Classification has prepared a 
revised  Concordance between the U.S. classes and subclasses and the Int. 
Cl.%.  In  many areas, the two systems are conceptually different. With 
this in mind,  it will be seen that a complete one-to-one correspondence 
between the two systems  cannot be attained.  An indication in the 
Concordance may refer to only one  relevant group and not  necessarily the 
only group in which the patent can  or should be classified.  For some 
inventions, the Concordance may not indicate  any truly relevant group. 
Accordingly, the Concordance must be recognized  as a guide to be used in 
conjunction with the Int. Cl.%, and not as a translation  list. 

        The 1990 Concordance includes all changes in the Int. Cl.   and 
all  changes in the U.S. Classification through Classification Order 1288, 
dated  June 1989. 

        The Concordance may be incomplete in some areas and contain errors 
 in other areas. Therefore, if corrections need to be made in the 
Concordance,  members of the examining corps are requested to report any 
suggested changes  to the appropriate group post classifier. 

  ISSUE CLASSIFICATION SLIP 

        The blue Issue Classification Slip (form PTO-270) permits a 
maximum  of four discrete international notations. 

        An example of the blue Issue Slip (PTO-270) is reproduced below 
with  the following exemplary notations:    A01B 1/02; B07B 7/083; C08F 
110/04; and  C08F 267/00.  Examiners should ensure that the IPC notations 
used are from  the current edition. 

B90504009.bmp 



B90504009.end 




903.10      Duties of the Post Classifier 


        Post classifiers were established to improve liaison between the 
classification  groups and the examining groups. Examiners should contact 
their post classifier  on all classification problems. 

        Each post classifier is normally assigned one examining group as 
his  or her responsibility. Each post classifier is charged with all 
classification  duties relative to this one examining group, except for 
major reclassification  projects. 

        A post classifier is responsible for: 

        (1) The technical accuracy, adequacy, and completeness of all 
search  systems in his or her group including the monitoring of any need 
for major  and minor reclassification projects including mechanized 
systems. 
        (2) The full range of classification administration functions 
including  the resolution of classification disputes on pending 
applications, guidance  on classification matters to both examiners and 
the public, which includes  outlining fields of search and answering 
examiner's requests for advice as  to the proper classification of allowed 
applications. 

        (3) The inspection of issuing applications to determine the 
accuracy  and adequacy of original and cross-reference classification by 
working closely  with the supervisory primary examiners and group 
directors to ensure feedback  to correct problem areas. 

        (4) Determination of the training needs of the personnel in his or 
 her assigned group relative to principles of classification and supplying 
this  training through formal and informal channels. 

        Generally, the post classifiers are to aid the examiners in the 
use,  maintenance, and perfection of the classification system. 


904   How to Search [R-1] 


        The examiner, after having obtained a thorough understanding of 
the  invention disclosed and claimed in the >nonprovisional< application, 
then searches  the prior art as disclosed in patents and other printed 
documents.  Any such  document used in the rejection of a claim is called 
a  reference. 
        In all continuing applications, the parent applications should be 
reviewed  by the examiner for pertinent prior art. Where the cited prior 
art of a parent  application has been reviewed, this fact should be made 
of record in accordance  with the procedure set forth at B.5. of MPEP w 
717.05. 

        The first search should be such that the examiner need not 
ordinarily  make a second search of the prior art, unless necessitated by 
amendments to  the claims by the applicant in the first response, except 
to check to determine  whether any reference which would appear to be 
substantially more pertinent  than the prior art cited in the first Office 
action has become available subsequent  to the initial prior art search. 
It should cover the invention as described  and claimed, including the 
inventive concepts toward which the claims appear  to be directed.  It 
should not be extended merely to add immaterial variants. 

904.01      Analysis of Claims 


     The breadth of the claims in the application should always be 
carefully  noted; that is, the examiner should be fully aware of what the 
claims do not  call for, as well as what they do require.  There is always 
danger of reading  into the claim limitations imported from the 
specification or drawing. 

904.01(a) Variant Embodiments Within Scope of Claim 


        Substantially, every claim includes within its breadth or scope of 
 definition one or more variant embodiments not disclosed by applicant 
which  would anticipate the terms of the definition. The claim must be so 
analyzed  and understood that any such variant encountered during the 
search will be  recognized and selected. 

        In each type of subject matter capable of such treatment (e.g., a 
machine  or other apparatus), the subject matter as defined by the claim 
may be sketched  in order to clearly delineate the limitations of the 
claim.  Two or more sketches,  each of which is as divergent from the 
particular disclosure as is permitted  by claim recitation, will assist 
the examiner in determining the claim's actual  breadth or scope. 
However, an applicant will not be required to submit such  sketches of 
claim structure (In re Application filed November 16, 1945. 1951  C.D. 1, 
646 O.G. 5). 




904.01(b) Equivalents 


        All subject matter that is the patentable equivalent of the 
subject  matter as defined in the claim, even though specifically 
different from the  definition in the claim, must be considered. 


904.01(c) Analogous Arts 


        Not only must the art be searched with which the invention claimed 
 is classifiable, but also all analogous arts regardless of where 
classified. 
        The determination of when arts are analogous is at times 
difficult. 
 It depends upon the necessary essential function or 

utility of the subject matter covered by the claims, and not upon what it 
is  called. 

        For example, a tea mixer and a concrete mixer are for the same 
art,  namely the mixing art, this being the necessary function of each. 
Similarly  a brick-cutting machine and a biscuit cutting machine have the 
same necessary  function. 


904.01(d) Outlining Field of Search 


        A proper field of search includes the subclass in which the 
claimed  subject matter of an application would be properly classified. 
The proper field  of search shall not include those areas in which it 
could reasonably have been  determined that there was a low probability of 
finding the best reference(s). 
        In outlining a field of search, the examiner should note every 
class  and subclass under the U.S. Patent Classification system and other 
organized  systems of literature that may have material pertinent to the 
subject matter  as claimed. Every subclass, digest, and cross-reference 
art collection pertinent  to each type of invention claimed should be 
listed, from the largest combination  through the various subcombinations 
to the most elementary part.  The search  should extend to all probable 
areas relevant to the claimed subject matter  and should cover the 
disclosed features which might reasonably be expected  to be claimed. 

        Strategies should be developed by the examiner for locating prior 
art  utilizing both manual and machine search tools. 

        The areas to be searched should be prioritized so that the most 
likely  areas are searched first. 

        The examiner should plan a search that not only covers the claimed 
 subject matter, but one that also covers the disclosed features that 
might  reasonably be expected to be claimed.  The examiner should consult 
with other  examiners and/or supervisory primary examiners, especially 
with regard to applications  covering subject matter unfamiliar to  the 
examiner. 

        The following should be kept in mind: (a) that a combination 
reference  is necessary to reject a claim drawn to a  combination, (b) 
that a combination  reference is valuable as a basic reference where 
elements thereof may be varied  by substituting equivalent elements of a 
secondary reference, (c) that a convincing  aid to a rejection on the 
ground of old combination is the citation of references  showing the 
subcombinations to have been already recognized as having practical  and 
more general utility, (d) that combination claims can be shown 
unpatentable  by combining separately classified subcombinational elements 
where reasons  can be given for holding obviousness in forming the 
combination, and (e) that  in the rejection of a claim on the ground of 
aggregation, the citation of references  showing the individual utility of 
the elements may better prove that the aggregative  structure is no more 
than the sum of the features shown by the several elemental  patents. 

        An examiner, in each first action upon an application, makes an 
initial  endorsement in ink in the space provided on the left-hand page of 
the open  file wrapper stating the classes and subclasses of domestic and 
foreign patents,  abstract collections and the publications in which 
search for references was  made, and also the date of the search.  Note 
MPEP w 717.05. 

        In subsequent actions, if further search is made, notation of the 
additional  field covered is also endorsed and initialed on the file 
wrapper. 

904.02      Conducting the Search 


        It is a prerequisite to a speedy and just determination of the 
issues  involved in the examination of an application that a careful and 
comprehensive  search, commensurate with the limitations appearing in the 
most detailed claims  in the case, be made in preparing the first action 
on the merits so that the  second action on the merits can be made final 
or the application allowed with  no further searching other than to update 
the original search.  It is normally not enough that references be 
selected to meet only  the terms of the claims alone, especially if only 
broad claims are presented;  but the search should, insofar as possible, 
also cover all subject matter which  the examiner reasonably anticipates 
might be incorporated into applicant's  amendment.  A complete search 
should result if applicants included, at the  time of filing, claims 
varying from the broadest to which they believe they  are entitled to the 
most detailed that they would be willing to accept. 
        It thus results that the examiner finds references that, while not 
 needed for treating the claims, would be useful for forestalling the 
possible  presentation of claims to other subject matter regarded by 
applicant as his  or her invention, and claimable with the subject matter 
being currently claimed,  but shown to be old by these references. 

        In selecting the references to be cited, the examiner  should 
carefully  compare the references with one another and with the 
applicant's disclosure  to avoid the citation of an unnecessary number. 
The examiner is not called  upon to cite all references that may be 
available, but only the  "best."  (37  CFR 1.106.)  Multiplying 
references, any one of which is as good as, but no  better than, the 
others, adds to the burden and cost of prosecution and should  therefore 
be avoided. However, if doubt exists as to the inclusion of a reference, 
it is better to err in citing too much art rather than too little. 
        The best reference should always be the one used.  Sometimes the 
best  reference will have a publication date less than a year prior to the 
application  filing date, hence it will be open to being overcome under 37 
CFR 1.131.    In these cases, if a second reference exists which cannot be 
so overcome and  which, though inferior, is an adequate basis for 
rejection, the claims should  be additionally rejected thereon. 

        In all references considered, including nonpatent, foreign 
patents,  and domestic patents, the examiner should study the 
specification or description  sufficiently to determine the full value of 
the reference disclosure relative  to the claimed or claimable subject matter. 


905   Miscellaneous 



905.01      Photocopy Orders 


        Patents and/or applications received from Germany,  Federal 
Republic  of, since October 1, 1968 and from Japan, France, and the 
U.S.S.R. since July  1, 1969 are not in numerical sequence.  Inasmuch as 
the Patent and Trademark  Office supplies orders for copies of these 
foreign documents from master microfilm  reels made up on weekly or other 
periodic publishing sequences, all orders  must include the country, 
patent or application number, and the publication  date (if known) of the 
ordered document.   Reference should be made to MPEP  w 901.05(a) to 
assist in determining the publication date of the commonly encountered 
foreign patents and applications. 

        All orders for photocopies on PTO-250 originating in the examining 
 groups must be authorized by an examiner having full or partial signatory 
authority  in the box headed  "PRIMARY EXAMINER (Signature)".  The stamped 
name of the  authorizing examiner will be indication of authority for 
Reproduction Section. 
 Handwritten signatures should not be used. 


905.02      Soft Copy Orders 


        Soft copies of U.S. patents for the examiner's personal use may be 
 ordered by the examiner on blue-colored order form PTO-14A.  These copies 
are  not to be placed in the official search file. To complete the form 
PTO-14A,  the examiner should indicate the number of copies desired in the 
 box marked  "NO. OF COPIES" and should also complete the "PATENT NUMBER," 
"EXAMINER'S NAME,"  "ART UNIT," and "DATE OF ORDER" boxes. 

        When soft copies for more than three different patent numbers are 
desired,  the examiner can prepare a list of the patent numbers and attach 
it to one  copy of Form PTO-14B which has been completed to reflect the 
Art Unit, Date  of Order, and Examiner's Name. 

        To expedite the handling of requests for personal copies and 
thereby  ensure the quickest response, the following routing procedures 
should be adhered  to: 

        (1) Designated collection drops within each group for copy orders 
should  be used. 

        (2) Clerical personnel from the Office of Classification Support 
(OCS)  will visit designated collection drops at least twice each week to 
pick up  PTO-14C orders.  Alternatively, the orders may be mailed or 
otherwise delivered  to the Search File Improvement Division, OCS, 
currently located in Crystal  Mall, Building 2, Room 967. 

        The attorneys' drop slot at the Public Service Window should not 
be  used nor should the forms be mailed to Copy Fulfillment Services as 
consequent rerouting to the Office of Classification  Support for 
processing will result in unnecessary delay. 

        Copies provided for personal use will be stamped "DO NOT PLACE IN 
SEARCH  FILE;" any such copy found in the search file will be removed by 
refiling personnel. 
 Because of the cost of printing copies of patents, economy should be 
exercised  in their use.  Personal use soft copies no longer desired by 
examiners should  be destroyed. 

        In view of the high cost of printing patents with color drawings, 
orders  by examiners for plant patents and other patents with color 
drawings for personal  use will normally not be filled. 




905.03      Ordering of Patented and Abandoned >Provisional and 
Nonprovisional Application< Files [R-1] 

        In the examination of an application it is sometimes necessary to 
inspect  the application papers of some previously abandoned application 
>(provisional  or nonprovisional)< or granted patent.  This is always true 
in the case of  a reissue application and reexamination proceeding. 

        Patented and abandoned files are stored at the Files Repository 
located  near the other PTO buildings in Crystal City.  Older files are 
housed in a  warehouse located in Suitland, Maryland. 

        Patented and abandoned files are ordered by means of a PALM video 
display  transaction.  To place such an order, the examiner is required to 
input his/her  PALM location code, employee number, and patent number(s) 
and/or *>application<  number(s) of the file(s) that are needed.  After 
transmission of the request  transaction by the examiner, a  "response" 
screen appears on the video display  terminal which informs him/her of the 
status of the request for each file. 
 The examiner is informed that the request (1) is accepted; (2) is 
accepted,  but for which the file is located at the Suitland warehouse (in 
which case  delivery time is increased); or that the request is not 
accepted since (3)  the file is not located at the repository or 
warehouse; (4) a previous request  for the file has not yet been filled; 
or (5) the patent or *>application< number  inputted is not valid. 

        Periodically each day, personnel at the Files Repository perform a 
 PALM print transaction which produces a list of all accepted requests in 
patent  number order and, for requests for abandoned files, in 
*>application< number  order.  The printed record of each request is 
detached from the list when its  associated file is found.  It is then 
stapled to it. Throughout the day, periodic  deliveries of files are made 
directly to the offices of their requesters by  Files Repository 
personnel.  Upon delivery of files at the various locations,  files that 
are ready to be returned to the repository are picked up. 
        With the exception of certain older files, the drawings of 
patented  and abandoned files, if any, are now stored within their 
respective application  file jackets.  Since it is desired not to separate 
one from the other, both  the file and its drawings are delivered when a 
file is ordered. 


905.04      Marking Examiners' Copies of Patents 


        When the examiners'  copies of patents are sent to their 
respective  art units to be filed, they should be routed across the 
appropriate examiners' 
 desks prior to placement in the shoes. The assistant examiners who 
examined  the application should mark in ink on the face of the drawings, 
or the specifications  where there are no drawings, such features as may 
be deemed advantageous in  aiding understanding of the patents in future 
searches. 




905.05      Application File Location 


        All files should be returned promptly to their proper location. 
        Whenever an application file is moved from one PALM location to 
another;  e.g., removed from a group's central files or moved from one 
examiner to another,  the PALM record should be updated with its current 
location.  The appropriate  bar code transaction should be performed. For 
example, if the examiner to whom  the application is docketed obtains it, 
he/she should perform PALM transaction  1023 by pressing the  "TO EXR" 
key on the bar code reader and scanning the  bar code label of the file 
with the light pen of the BCR.  If an examiner other  than the one to whom 
the application is docketed obtains the file, he/she should  perform 
transaction 1036 which requires the input of his/her group number and 
his/her employee number before the label is scanned.  All files should be 
returned  promptly to their proper location. 


905.06      Family of Patent Information 


        Patent family information is available at the United States Patent 
 and Trademark Office primarily through commercial databases.  Examiners 
have  access to this information either directly or through the search 
services of  the Scientific and Technical Information Center (STIC). 

Available Databases 

        Derwent's World Patents Index in (WPI) and International Patent 
Documentation  Center(INPADOC) are the two databases used for retrieving 
foreign patent information. 
        INPADOC is the first choice for quick searches for publication 
dates  or patent families because of its ease of use and low cost.  The 
Office enjoys  cost effective rates for INPADOC due to an agreement 
between the Office and  the International Patent Documentation Center (now 
part of the European Patent  Office) negotiated several years ago.  The 
agreement applies only to INPADOC  as accessed directly on the INPADOC 
computer in Austria, not to INPADOC as  available on other commercial 
database systems such as ORBIT, DIALOG, or STN. 
        WPI is used whenever abstracts are needed or when searches in 
addition  to publication date or Patent family are required, such as 
searches on inventor  name or IPC (International Patent Classification). 

Access to Foreign Patent Information 

        Patent examiners who have received training and access  codes may 
directly  search INPADOC or WPI or both. Examiners who have been trained 
on searching  the ORBIT, DIALOG, or Questel systems may also search WPI, 
with or without  specific training on WPI, since WPI is one of the 
databases available on these  systems. 

        Examiners may also request foreign patent searches through the 
Scientific  and Technical Information Center (STIC).  Trained searchers in 
both the Reference  and Foreign Patents sections of STIC perform patent 
family searches on demand,  with a short turnaround time.  The Foreign 
Patents section can also help examiners  get copies of foreign patents 
found through online searching. 



Contents 

1001        Statutory Authority of Commissioner 

1001.01     Modes of Exercising Authority 

1002        Petitions to the Commissioner 

1002.01     Procedure 

1002.02     Delegation of Authority To Decide Petitions 

1002.02(b)  Petitions and Requests Decided in the Office of Petitions 
1002.02(c)  Petitions and Requests Decided by the Group Directors 
1002.02(c)(1)       Petitions Decided by the Group Director of 
                    Group 2200 

1002.02(c)(2)       Petitions Decided by the Group Director of 
                    Group 1800 

>1002.02(c)(3)      Petitions Decided by the Group Director of 
                    Group 2900< 

1002.02(d)  Petitions and Matters Decided by Supervisory Examiners 
1002.02(e)  Petitions Decided by Primary Examiners 

1002.02(f)  Petitions and Matters Decided by the Chief Administrative 
            Patent Judge of the Board of Patent Appeals and Interferences 
1002.02(g)  Petitions Decided by the Administrative Patent Judges 
1002.02(i)  Petitions Decided by the Assistant Commissioner 
            for Trademarks 

1002.02(j)  Petitions Decided by the Board of Patent Appeals 
            and Interferences 

1002.02(k)  Petitions Decided by the Solicitor 

1002.02(l)  Request Decided by the Certificates of Correction Branch 
1002.02(m)  Petitions Decided by the Director of Enrollment 
            and Discipline 

1002.02(o)  Petitions and Other Matters Decided by the Deputy 
            Commissioner of Patents and Trademarks 

1002.02(p)  Petitions and Matters Decided by the PCT Legal 
            Administrator 

1002.02(q)  Petitions Decided by the Director of Office of 
            National Application Review 

1003        Matters Submitted to Group Directors 

1004        Actions Which Require the Attention of a Primary Examiner 
1005        Exceptions to Partial Signatory Authority 


1001    Statutory Authority of Commissioner  [R-2] 


35 U.S.C. 3.    Officers and employees. 

(a)   There shall be in the Patent and Trademark Office a Commissioner of 
Patents  and Trademarks, a Deputy Commissioner, two Assistant 
Commissioners and examiners-in-chief  appointed under section 7 of this 
title. The Deputy Commissioner, or, in the  event of a vacancy in that 
office, the Assistant Commissioner senior in date  of appointment, shall 
fill the office of Commissioner during a vacancy in that  office until the 
Commissioner is appointed and takes office. The Commissioner  of Patents 
and Trademarks, the Deputy Commissioner, and the Assistant Commissioners 
shall be appointed by the President, by and with the advice and consent of 
 the Senate. The Secretary of Commerce, upon the nomination of the 
Commissioner,  in accordance with law, shall appoint all other officers 
and employees. 
(b)   The Secretary of Commerce may vest in himself the functions of the 
Patent  and Trademark Office and its officers and employees specified in 
this title  and may from time to time authorize their performance by any 
other officer  or employee. 

(c)   The Secretary of Commerce is authorized to fix the per annum rate of 
 basic compensation of each examiner-in-chief in the Patent and Trademark 
Office  at not in excess of the maximum scheduled rate provided for 
positions in grade  17 of the General Schedule of the Classification Act 
of 1949, as amended. 
(d) The Commissioner of Patents and Trademarks shall be an Assistant 
Secretary  of Commerce and shall receive compensation at the rate 
prescribed by law for  Assistant Secretaries of Commerce. 

(e) The members of the Trademark Trial and Appeal Board of the Patent and 
Trademark  Office shall each be paid at a rate not to exceed the maximum 
rate of basic  pay payable for GS-16 of the General Schedule under section 
5332 of title 5. 
35 U.S.C. 6.    Duties of Commissioner. 

(a)   The Commissioner, under the direction of the Secretary of Commerce, 
shall  superintend or perform all duties required by law respecting the 
granting and  issuing of patents and the registration of trademarks; shall 
have the authority  to carry on studies, programs or exchanges of items or 
services regarding domestic  and international patent and trademark law or 
the administration of the Patent  and Trademark Office>, including 
programs to recognize, identify, assess and  forecast the technology of 
patented inventions and their utility to industry<;  and shall have charge 
of property belonging to the Patent and Trademark Office.  He may, subject 
to the approval of the Secretary of Commerce, establish regulations,  not 
inconsistent with law, for the conduct of proceedings in the Patent and 
Trademark Office. 

(b)   The Commissioner, under the direction of the Secretary of Commerce, 
may,  in coordination with the Department of State, carry on programs and 
studies  cooperatively with foreign patent offices and international 
intergovernmental  organizations, or may authorize such programs and 
studies to be carried on,  in connection with the performance of duties 
stated in subsection (a) of this  section. 

(c)   The Commissioner, under the direction of the Secretary of Commerce, 
may,  with the concurrence of the Secretary of State, transfer funds 
appropriated  to the Patent and Trademark Office, not to exceed $100,000 
in any year, to  the Department of State for the purpose of making special 
payments to international  intergovernmental organizations for studies and 
programs for advancing international  cooperation concerning patents, 
trademarks, and related matters. These special  payments may be in 
addition to any other payments or contributions to the international 
organization and shall not be subject to any limitations imposed by law on 
 the amounts of such other payments or contributions by the Government of 
the  United States. 

37 CFR 1.351 Amendments to rules will be published. 

All amendments to the regulations in this part will be published in the 
Official  Gazette and in the FEDERAL REGISTER. 

37 CFR 1.352  Publication of notice of proposed amendments. 

(a)   Whenever required by law, **  notice of proposed amendments to the 
regulations  in this part will be published in the Official Gazette and in 
the FEDERAL REGISTER.  If not published with the notice, copies of the 
text will be furnished to any person requesting the same. All comments, 
suggestions, and briefs received within a time specified in the notice 
will  be considered before adoption of the proposed amendments which may 
be modified  in the light thereof. 

(b)   Oral hearings may be held at the discretion of the Commissioner. 

1001.01       Modes of Exercising Authority 


The Commissioner's authority to review and supervise the work of the 
Office  is exercised by the promulgation of the Rules of Practice; 
issuance of orders,  notices and memoranda stating Office policies and 
modes for effectuating these  policies; decisions on petitions by 
applicants, and by the designation of particular  cases which must be 
submitted to the Commissioner or other officials authorized  by the 
Commissioner. The present chapter deals with the latter two items. 
37 CFR 1.181(g) states, "The Commissioner may delegate to appropriate 
Patent  and Trademark Office officials the determination of petitions." 

The various delegations to various Office officials are set forth in this 
Chapter. 

1002    Petitions to the Commissioner 


37 CFR 1.181.      Petition to the Commissioner. 

 (a)    Petition may be taken to the Commissioner (1) from any action or 
requirement  of any examiner in the ex parte prosecution of an application 
which is not  subject to appeal to the Board of Patent Appeals and 
Interferences or to the  court; (2) in cases in which a statute or the 
rules specify that the matter  is to be determined directly by or reviewed 
by the Commissioner; and (3) to  invoke the supervisory authority of the 
Commissioner in appropriate circumstances.  For petitions in 
interferences, see w 1.644. 

(b)   Any such petition must contain a statement of the facts involved and 
 the point or points to be reviewed and the action requested. Briefs or 
memoranda,  if any, in support thereof should accompany or be embodied in 
the petition;  and where facts are to be proven, the proof in the form of 
affidavits or declarations 
(and exhibits, if any) must accompany the petition. 

(c)   When a petition is taken from an action or requirement of an 
examiner  in the ex parte prosecution of an application, it may be 
required that there  have been a proper request for reconsideration (w 
1.111) and a repeated action  by the examiner. The examiner may be 
directed by the Commissioner to furnish  a written statement, within a 
specified time, setting forth the reasons for  his decision upon the 
matters averred in the petition, supplying a copy thereof  to the petitioner. 

(d)   Where a fee is required for a petition to the Commissioner the 
appropriate  section of this part will so indicate. If any required fee 
does not accompany  the petition, the petition will be dismissed. 

(e)   Oral hearings will not be granted except when considered necessary 
by  the Commissioner. 

(f)   Except as otherwise provided in these rules, any such petition not 
filed  within 2 months from the action complained of, may be dismissed as 
untimely.  The mere filing of a petition will not stay the period for 
reply to an Examiner's  action which may be running against an 
application, nor act as a stay of other  proceedings. 

(g)   The Commissioner may delegate to appropriate Patent and Trademark 
Office  officials the determination of petitions. 

37 CFR 1.182.      Questions not specifically provided for. 

All cases not specifically provided for in the regulations of this part 
will  be decided in accordance with the merits of each case by or under 
the authority  of the Commissioner, and such decision will be communicated 
to the interested  parties in writing. Any petition seeking a decision 
under this section must  be accompanied by the petition fee set forth in 
w 1.17(h). 

37 CFR 1.183.      Suspension of rules. 

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

37 CFR 1.184.      Reconsideration of cases decided by former 
Commissioners. 
Cases which have been decided by one Commissioner will not be reconsidered 
 by his successor except in accordance with the principles which govern 
the  granting of new trials. 

Petitions on appealable matters ordinarily are not entertained.  See MPEP 
w 1201. 
The mere filing of a petition will not stay the period for replying to an 
examiner's  action which may be running against an application, nor act as 
a stay of other  proceedings (37 CFR 1.181(f)). For example, if a petition 
to vacate a final  rejection as premature is filed within 2 months from 
the date of the final  rejection, the period for response to the final 
rejection is not extended even  if the petition is not reached for 
decision within that period.  However, if  the petition is granted and the 
applicant has filed an otherwise full response  to the rejection within 
the period for response, the case is not abandoned. 
37 CFR 1.181(f) provides that any petition under that rule which is not 
filed  "within 2 months from the action complained of may be dismissed as 
untimely." 
 Often, the "action complained of", for example, a requirement for a new 
drawing,  is included in the same letter as an action on the merits of the 
claims, the  latter having a 3-month period for response.  Under such 
circumstances, if  applicant requests reconsideration, under 
37 CFR 1.111(b), of the requirement for a new drawing, the examiner's 
action  on this request, if adverse, establishes the beginning of the 
2-month period  for filing the petition.  The petition must be filed 
within this period even  though the period for response to the rejection 
of the claims may extend beyond the 2-month period.  The 2-month   period 
 is 
  not   extendible   under   37   CFR 1.136(a) since the time is within 
the  discretion of the Commissioner. 

Form Paragraph 7.99 may be used where an insufficient fee was filed with a 
 petition. 

W 7.99      Petition Dismissed, Proper Fee Not Submitted 

 Applicant's petition under 37 CFR [1] filed [2] is DISMISSED because the 
proper  petition fee of [3] required under 37 CFR 1.17 has not been 
submitted. 
Examiner Note: 

(1)   Petitions under 37 CFR 1.48 for correcting inventorship require a 
fee  as set forth in 37 CFR 1.17(h). 

(2)   Petitions to suspend action under 37 CFR 1.103, to withdraw an 
application  from issue under 37 CFR 1.313, and for consideration of an 
amendment under  37 CFR 1.312 after payment of the issue fee, require a 
fee as set forth in  37 CFR 1.17(i)(1). 

(3)   Petitions for an extension of time under 37 CFR 1.136(a) require 
varying  fees. See 37 CFR 1.17(a) - (d). 


1002.01       Procedure 


Petitions, together with the respective application files, are sent to the 
 official having the delegated authority to decide the petition.  The 
petition  may be referred to the examiner for a formal statement under 37 
CFR 1.181(c)  or for an informal memorandum, MPEP 
w 711.03(d). 

Where a formal statement under 37 CFR 1.181(c) is made, a copy thereof is 
mailed  to the petitioner by the examiner unless the examiner is otherwise 
directed,  and the file and petition, accompanied by the original copy of 
his statement,  are returned to the official handling the petition.  If an 
informal memorandum  is requested, no copy thereof is mailed to the 
petitioner by the examiner. 
After the decision has been rendered, the decision is entered on the 
``Contents"  of the file wrapper which is then returned to the primary 
examiner, who will  act in accordance with the decision. 


1002.02       Delegation of Authority To Decide Petitions [R-1] 


Petitions to the Commissioner are decided in accordance with the following 
 delegation of authority. 

In any case in which the authority to decide the petition has been 
delegated  as indicated in MPEP ww 1002.02* (b), (f), (g), (j) and (o), 
**>a denial of a petition< may be viewed  as a final agency decision for 
the purposes of court review where such review  is proper. >A dismissal of 
a petition, a denial of a petition without prejudice,  and other 
interlocutory orders are not final agency decisions.< 

In accordance with 37 CFR 1.181(g), the authority to decide petitions to 
the  Commissioner, not otherwise delegated, has been delegated to various 
Office  officials. Generally, these officials will decide petitions as 
specified in  the following sections for the effective operation of the 
Office.  Also listed  are certain petitions which are not, strictly 
speaking, to the Commissioner  but have been committed by statute or rule 
to the designated officials. 
Authority not herein delegated has been reserved to the Commissioner and 
may  be delegated to appropriate officials on an ad hoc basis. 

** 


1002.02(b)      Petitions and Requests Decided in the Office of Petitions 
[R-1] 

All petitions decided by the >Special Program Law Office and the<Office of 
 Petitions, and inquiries relating thereto, should be directed to 
"Petitions  Information, Crystal Park One, Suite 520." 

1.  Petitions to revive an abandoned national>, nonprovisional or 
provisional<  patent application, 37 CFR 1.137>, 1.139< (both unavoidable 
delay and unintentional  *>delay<), MPEP w 711.03(c). 

2.  Petitions under 37 CFR 1.183 for waiver or suspension of rules **>not 
otherwise  provided for<. 

3.  Petitions to invoke the supervisory authority of the Commissioner 
under  37 CFR 1.181 in matters ** not otherwise provided for. 

4.  Petitions to withdraw patent applications from issue after payment of 
the  issue fee, 37 CFR 1.313(b), MPEP w 1308. 

5.  Petitions for acceptance of late priority papers in patent 
applications,  37 CFR 1.55, MPEP ww 201.14 (a) and (c). 

6.  Petitions for deferment of issuance of patents, 
37 CFR 1.314, MPEP w 1306.01. 

7.  Petitions for express abandonment of patent applications after payment 
 of the issue fee, MPEP w 711.01. 

8.  Petitions to accept late payment of issue fees, 
37 CFR 1.155 and 1.316, MPEP w 712. 

9.  Petitions to accept late payment of balance of issue fee due, 37 CFR 
1.317,  MPEP w 712. 

10.   Petitions relating to disclaimers in patents and patent applications 
 under 37 CFR 1.321. 

11.   Petitions relating to assignments and issuance of patents, MPEP w 
1308. 
12.   Petitions **>relating to public use proceedings, 37 CFR 1.292<. 
13.   Petitions **>to make a patent application special under 37 CFR 1.102 
 on the ground of: (a) prospective manufacture MPEP w 708.02, item I; (b) 
infringement  MPEP w 708.02, item II<. 

14.   Petitions for the withdrawal of attorney under 
37 CFR 1.36 in patent applications involved in proceedings before the 
Office  of *>the Deputy Assistant Commissioner for Patent Policy and 
Projects<. 
15.   Petitions under 37 CFR 1.182 in matters not *>otherwise< provided 
for  **. 

16.   Petitions **>to expunge papers from patent application files or 
patent  files, 37 CFR 1.182<. 

17.   Requests by the examiner to the Board of Patent Appeals and 
Interferences  for reconsideration of a decision, MPEP w 1214.04. 

18.   Petitions to review refusal to accept and record maintenance fee 
payment  filed prior to the expiration of a patent, 37 CFR 1.377 >, MPEP w 
2580< . 
19.   Petitions to accept delayed payment of maintenance fee in an expired 
 patent **, 37 CFR 1.378, >MPEP w 2590<. 

20.   Petitions to issue patent in name of the assignee recorded after 
payment  of the issue fee, 37 CFR 3.81(b). 

21.   Petitions to review decision of Group Director, 37 CFR 1.181. 
22.   Petitions to withdraw a holding of abandonment not otherwise 
delegated,  37 CFR 1.181. 

23.   Requests to order a Commissioner initiated reexamination proceeding, 
 37 CFR 1.520. 

24.   Petitions to revive an * >abandoned PCT national stage< application 
because  of unavoidable delay, 
37 CFR 1.137(a). 

25.   Petitions >relating< to ** international ** >applications filed 
under  the Patent Cooperation Treaty not otherwise provided for<. 

26.   Petitions to revive a reexamination proceeding because of 
unavoidable  delay, 35 U.S.C. 133. 

>27. Petitions for access to patent applications under 37 CFR 1.14 with 
the  exception of applications involved in or related to a proceeding 
before the  Board of Patent Appeals and Interferences, MPEP w 103, w 104, 
and w 1901.05. 

28.   Petitions relating to reexamination proceedings, under 37 CFR 1.182 
and  1.183. 

29.   Petitions for acceptance of national applications without 
participation  of one or more inventors under 37 CFR 1.47, MPEP w 409.03. 

30.   Matters involving deceased inventors in national applications, 37 
CFR  1.42 and 1.44, MPEP w 409.01(a) and (b). 

31.   Petitions for correction of inventorship in national applications 
under  37 CFR 1.48(a) filed prior to 
issuance of filing receipt, MPEP w 201.1. 

32.   Applications filed without drawings where there is a doubt as to the 
 need for drawings before granting a filing date, MPEP w 608.02. 

33.   Petitions for extensions of time under 37 CFR 1.136(b) in cases 
pending  in Application Processing Division. 

34.   Petitions relating to patent term extension, 
37 CFR 1.710-1.785. 

35.   Petitions relating to the filing date of patent applications under 
37  CFR 1.53, 1.60 and 1.62, MPEP 
w 506. 

36.   Petitions relating to filing and/or issuance of divisional reissue 
applications,  37 CFR 1.177, MPEP w 1451. 

37.   Petitions under 37 CFR 1.48(e) to delete the name of the person 
erroneously  named as inventor in a provisional application. 

38.   Petitions under 37 CFR 1.181 to review a determination of the length 
 of the patent term extension under 37 CFR 1.701. 

39.   Petitions to convert a nonprovisional application filed under 37 CFR 
 1.53(b)(1) to a provisional application under 37 CFR 1.53(b)(2) where the 
nonprovisional  application is before the Office of Petitions or the 
Special Program Law Office.< 

1002.02(c)      Petitions and Requests Decided by the Group Directors 
[R-2] 

1.  Petitions to make patent applications special under 37 CFR 1.102, MPEP 
 w 708.02: 

(a)   on the ground of applicant's age or state of health, MPEP w 708.02, 
items  III & IV; 

(b)   a continuation-in-part of an earlier application; 

(c)   under the Environmental Quality Program, MPEP w 708.02 , item V; 
(d)   under the Energy Program, MPEP w 708.02, item VI. 

(e)   because the application involves safety of research in the field of 
Recombinant  DNA, MPEP 
w 708.02, item VII. 

(f)   under the Special Examining Procedure for certain new 
applications-accelerated  examination, MPEP w 708.02, item VIII. 

(g)   superconductivity, MPEP w 708.02, item IX. 

(h) inventions relating to HIV/AIDS and cancer, MPEP w 708.02, item X. 
(i) for reasons not otherwise provided for. 

2.  Petitions or requests to reopen prosecution of patent applications 
after  decision by the Board of Patent Appeals and Interferences under 37 
CFR 1.198,  where no court action has been filed, MPEP w 1214.04, third 
paragraph and w  1214.07. 

3.  Petitions from a final decision of examiner requiring restriction in 
patent  applications. 37 CFR 1.144, MPEP w 818.03(c) or holding lack of 
unity of invention  in an international application. 

4.  Petitions invoking the supervisory authority of the Commissioner under 
 37 CFR 1.181 involving any ex parte action or requirement in a patent 
application  by the examiner which is not subject to appeal (37 CFR 1.181) 
and not otherwise  provided for, as for example: 

(a)   prematureness of final rejection, MPEP 
w 706.07(c); 

(b)   refusal to enter an amendment, 37 CFR 1.127, MPEP w 714.19; 
(c)   holding of abandonment, MPEP w 711.03(c); 

(d)   requirement to cancel "new matter" from specification, MPEP w 
608.04(c); 
(e)   relative to formal sufficiency and propriety of affidavits under 37 
CFR  1.131 (MPEP w 715.08) 1.132 (MPEP w 716) and 1.608, MPEP w 2308 - w 
2308.03; 
(f)   refusal to initiate an interference under 
37 CFR 1.601(i), MPEP w 2306; 

(g)   refusal to enter an amendment under 37 CFR 1.312, MPEP w 714.16(d); 
>(h) resetting period of response, MPEP 
w 710.06.< 

5.  Petitions under 37 CFR 1.113 relating to objections or requirements 
made  by the examiners. 

6.  Petitions for return of original oaths of patent applications, MPEP w 
604.04(a). 
7.  Requests for extensions of a set shortened statutory period under 37 
CFR  1.136(b). MPEP w 710.02(e). 

8.  Petitions under 37 CFR 1.193(a) relating to the form of the appeal. 
9.  Petitions concerning appealed patent applications before transfer of 
jurisdiction  to the Board of Patent Appeals and Interferences (e.g., 
extension of time under  37 CFR 1.136(b) for filing an appeal brief). MPEP 
w 1206. 

10.   Request by applicant for a second or subsequent suspension of action 
 in patent applications under 
37 CFR 1.103. MPEP w 709. 

11.   Petitions from refusal to issue a Certificate of Correction for a 
patent  not involved in an interference (37 CFR 1.181, MPEP w 1480 - w 
1485). 
12.   Petitions to reinstate appeals dismissed in the group. 

13.   Petitions from the denial of a request for reexamination, 37 CFR 
1.515,  MPEP w 2248. 

14.   Petitions for consideration of an amendment under 37 CFR 1.312(b) 
filed  after payment of issue fee, MPEP w 714.16. 

15.   Petitions for withdrawal of attorney from application pending in 
examining  groups, 37 CFR 1.36. 

16.   Requests for extension of time in reexamination proceedings, 37 CFR 
1.550(c). 
17.   Petition for second or subsequent change of inventorship in an 
application  under 37 CFR 1.48.  See MPEP w 201.03. 

18.   Petitions under 37 CFR 1.84 to accept photographs or color drawings 
in  patent applications. 

19. Petitions under 37 CFR 1.129(b)(2) traversing a restriction 
requirement  made in an application which is subject to the transitional 
restriction provisions. 
20.   Petitions to convert a nonprovisional application filed under 37 CFR 
 1.53(b)(1) to a provisional application under 37 CFR 1.53(b)(2) where the 
nonprovisional  application is before the Examining Group. 

21.   Petitions to withdraw patent applications from issue before payment 
of  the issue fee, 37 CFR 1.313(a). 

The examining groups should use Form Paragraph >10.01 to notify applicant 
that  the application is withdrawn from issue where the issue fee has not 
been paid  and should use Form Paragraph< 10.02 when preparing a paper to 
request withdrawal  of an application from issue after payment of the 
issue fee. 

>W  10.01 Withdrawal From Issue, Fee Not Paid 

In re Application of [1]        : 
Appl. No.: [2]        :       WITHDRAWAL FROM ISSUE 

Filed: [3]    :       37 CFR 1.313 

For: [4]                : 

The purpose of this communication is to inform you that the above 
identified  application is being withdrawn from issue pursuant to 37 CFR 
1.313. 
The application is being withdrawn to permit reopening of prosecution. The 
 reasons therefor will be communicated to you by the examiner. 

Patent and Trademark Office records reveal that the issue fee has not been 
 paid. If the issue fee has been submitted, the applicant may request a 
refund,  or may request that the fee be credited to a deposit account. 
However, applicant  may wait until the application is either again found 
allowable or held abandoned.  If the application is allowed, upon receipt 
of a new Notice of Allowance and  Issue Fee Due, applicant may request 
that the previously submitted issue fee  be applied toward payment of the 
issue fee in the amount identified on the  new Notice of Allowance and 
Issue Fee Due. If the application is abandoned,  applicant may request 
either a refund or a credit to a deposit account. 
The application is being forwarded to the examiner for action. 

________________________ 

[5] 

Director, 
Patent Examining Group [6] 

[7] 

     EXAMINER NOTE: 
        1. This letter should be printed on PTO letterhead and signed by 
the  Group Director. 
          2. Do NOT use this form letter if the issue fee has been paid. 
Use  form paragraph 10.02 if the issue fee has been paid. 
          3. In bracket 7, insert the correspondence address of record.< 
W 10.02       Withdrawal From Issue, Fee Has Been Paid 

Date: [1] 

From: Director, Group [2] 

To:  Issue Control Officer 

Via: Office of Petitions 

Applicant: [3] 

Issue Fee Paid Date: [4] 

Application No.: [5] 

Filed: [6] 

Date sent to issue: [7] 

Title: [8] 

It is requested that the above-identified application be withdrawn from 
issue 
 for the following purpose: [9]. 

The issue fee has been paid. It is directed that this application be 
withdrawn  from issue under 37 CFR 1.313 and returned to the jurisdiction 
of examining  Group [10]. 

The examiner is authorized and directed to take prompt appropriate action 
on  this case including notifying applicant of the new status of this 
application.  Return this application promptly to the Office of the 
Director of Group [11]. 
________________________ 

Office of Petitions 

The following procedure must be followed when the Group Director decides 
to  withdraw an application from issue before payment of the issue fee: 
i.  The CRT Screen on PALM is used to determine if the issue fee has been 
paid. 
ii.   If the issue fee has been paid, a memo to the Office of Petitions is 
 required. (See Form Paragraph 10.02, MPEP w 1002.02(b).) 

iii.     If the issue fee has not been paid, and the deadline for payment 
has  not expired, the Group Director must mail a ``Withdrawal from Issue" 
letter  to the applicant to effectuate the withdrawal from issue. A copy 
of the ``Withdrawal  from Issue" letter should be sent to the Publishing 
Division.  After a "Withdrawal  from Issue" letter is mailed by the 
examining group, the examining group must: 
a.  Cross out the batch number on the face of the file; 

b.  Cross out the date mailed for the ``Notice of Allowance" on the face 
of  the file wrapper and write or stamp ``WITHDRAWN"; 

c.  Change the status of the application to status code 066 (Previous 
Action  Withdrawn - Awaiting Further Action); and 

d.  Forward the file to the examiner for prompt action. 

The processing will be done in the Examining Group without the need to 
send  the application to Publishing Division. 


1002.02(c)(1)     Petitions Decided by the Group Director of Group 2200 

In addition to the items delegated to all Group Directors under MPEP w 
1002.02(c),  authority to decide the following is delegated to the Group 
Director of Group  2200: 

1.  All petitions filed under 35 U.S.C. 267, to extend the time for taking 
 action in United States-owned applications wherein the invention is 
important  to the armament or defense of the United States. 

2.  All petitions under 37 CFR 1.103(c), to suspend action in United 
States-owned  applications wherein the publication of the invention might 
be detrimental  to the public safety or defense. 

Any petitions filed under 35 U.S.C. 267 and/or 
37 CFR 1.103(c) in any area of the Office must be 
forwarded to the Director of Group 2200 for decision thereon. 

3.  Petitions under 37 CFR 5.12(a) for foreign license to file patent 
applications  in foreign countries, MPEP w 140. 

4.  Petitions for rescission of secrecy order, 37 CFR 5.4, MPEP w 120. 
5.  Petition to permit disclosure of subject matter under a secrecy order, 
 37 CFR 5.5(b), MPEP w 120. 

6.  Petition for modification of secrecy order, 37 CFR 5.5(c), MPEP w 120. 
7.  Petition for retroactive foreign filing license, 
37 CFR 5.25, MPEP w 140. 

8.  Petitions relating to refusal of request for publication of a 
Statutory  Invention Registration, 37 CFR 1.295. 

9.  Petitions relating to request for withdrawal of request for 
publication  of a Statutory Invention Registration, 37 CFR 1.296. 

10.   Petitions relating to DOE property rights statements under 42 U.S.C. 
2182. 
11.   Petitions relating to NASA property rights statements under 42 
U.S.C.  2457. 

12.   Petitions relating to foreign filing licenses under 35 U.S.C. 184. 
13.   Petitions concerning review of security or government interest 
matters  not otherwise provided for. 

14.   Petitions relating to any application under a secrecy order pursuant 
 to 35 U.S.C. 181, including petitions to expunge subject matter from the 
application  to overcome the secrecy order. 


>1002.02(c)(2)      Petitions Decided by the Group Director of Group 1800 
[R-1] 

In addition to the items delegated to all Group Directors under MPEP w 
1002.02(c),  authority to decide the following is delegated to the Group 
Director of Group  1800: 

1.  Petition regarding sequence rules, 37 CFR 1.821-1.825.< 


>1002.02(c)(3)      Petitions Decided by the Group Director of Group 2900 
[R-2] 

In addition to the items delegated to all Group Directors under MPEP w 
1002.02(c),  authority to decide the following petitions and requests 
filed in design applications  is delegated to the Group Director of Group 
2900: 

1.  Petitions to revive an abandoned national application, 37 CFR 1.137 
(both  unavoidable delay and unintentional delay), MPEP w 711.03(c). 

2.  Petitions to accept late payment of issue fees, 
37 CFR 1.155, MPEP w 712. 

3.  Petitions relating to disclaimers in patents and patent applications 
under  37 CFR 1.321. 

4.  Petitions for access to patent applications under 37 CFR 1.14 with the 
 exception of applications involved in or related to a proceeding before 
the  Board of Patent Appeals and Interferences, MPEP w 103, w 104, and w 
1901.05. 

5.  Petitions for acceptance of national applications without 
participation  of one or more inventors under 37 CFR 1.47, MPEP w 409.03. 

6.  Matters involving deceased inventors in national applications, 37 CFR 
1.42  and 1.44, MPEP w 409.01 (a) and (b). 

7.  Petitions for correction of inventorship in national applications 
under  37 CFR 1.48(a) filed prior to issuance of filing receipt, MPEP w 
201.03. 
8.  Petitions for extensions of time under 37 CFR 1.136(b) in cases 
pending  in Application Processing Division. 

9.  Petitions relating to the filing date of patent applications under 37 
CFR  1.53, 1.60 and 1.62, MPEP 
w 506.< 


1002.02(d)      Petitions and Matters Decided by Supervisory Examiners 

1.  Entry of amendments under 37 CFR 1.312 which embody more than merely 
the  correction of formal matters without changing the scope of any claim, 
MPEP w 714.16, w 714.16(d). 

2.  Approval of any new ground of rejection made after the filing of an 
appeal  brief.  This requirement extends to new grounds of rejection made 
either in  an examiner's answer or in an Office action reopening 
prosecution.  Evidence  of the approval should appear on applicant's copy 
of the Office action or answer  as well as the record copy, MPEP w 1208.01. 

3.  Requests for a Certificate of Correction submitted under 37 CFR 1.322 
or  1.323 unless the error is clearly minor, clerical or typographical, in 
which  case it is handled by the Certificate of Correction Branch. 

4.  Requests for a Certificate of Correction to correct a claim even if 
the  request is submitted under 37 CFR 1.322. 

5.  Petitions under 37 CFR 1.324 to correct errors in joining inventors in 
 a patent that is not involved in an interference, MPEP w 1481. 

6.  Requests for interviews with the examiner after a patent application 
has  been sent to issue (Notice of Allowability mailed), MPEP w 713.10, or 
after  transfer of jurisdiction to the Board of Patent Appeals and 
Interferences. 
7.  Petitions to consider Information Disclosure Statement after final 
action  or notice of allowance but before payment of the issue fee, 37 CFR 
1.97(d). 
8.  Letters to an applicant suggesting claims for purposes of 
interference,  or the submission of Form PTO-850, where one or more claims 
of one application  would differ from corresponding claims of another 
application.  See 37 CFR  1.603 and MPEP w 2303. 

9.  Amendments presented after decision in an appeal by the Board of 
Patent  Appeals and Interferences as to which the primary examiner 
recommends entry  as placing the application in condition for allowance. 
See MPEP w 1214.07. 

1002.02(e)      Petitions Decided by Primary Examiners 


Petitions under 37 CFR 1.48 for correction of inventorship in applications 
 not otherwise provided for. 


1002.02(f)      Petitions and Matters Decided by the Chief Administrative 
Patent Judge of the Board of Patent Appeals and Interferences [R-2] 

The Chief Administrative Patent Judge is authorized to redelegate 
authority  to decide any of these petitions or matters to the Vice Chief 
Administrative  Patent Judge of the Board of Patent Appeals and Interferences. 

1. Designation of members of the Board of Patent Appeals and Interferences 
 to hear appeals and decide interferences, both initially and on request 
for  reconsideration. 35 U.S.C. 7. 

2.  Designation of members of the Board of Patent Appeals and 
Interferences  to conduct proceedings in an interference. 37 CFR 1.610(a). 

3.  Designation of members of the Board of Patent Appeals and 
Interferences  to decide requests for reconsiderations. 37 CFR 1.640(c). 

4.  Requests related to superintending the functions of the Board of 
Patent  Appeals and Interferences, including: 

a.  Petitions under 37 CFR 1.644 in interferences declared on or after 
February  11, 1985 (commonly known as "new rule" interferences which are 
governed by  37 CFR 1.601 through 1.689). 

b.  Petitions under 37 CFR 1.244 (1984) in interferences declared prior to 
 February 11, 1985 (commonly known as "old rule" interferences which are 
governed  by 37 CFR 1.201 through 1.288 (1984)). 

c.  Petitions under 37 CFR 1.181, 1.182, and 1.183 from actions of the 
Board  of Patent Appeals and Interferences or of personnel at the Board or 
Patent  Appeals and Interferences. 

d.  Petitions under 35 U.S.C. 135(c) and 37 CFR 1.666(c) to permit the 
filing  of an agreement or understanding during the six-month period 
subsequent to  termination of an interference. 

e.  Petitions under 37 CFR 1.666(b) for access to copies of an 
interference  agreement or understanding filed under 35 U.S.C. 135(c), 
MPEP w 2366. 
f.  Petitions under 37 CFR 1.324 to correct errors in joining inventors in 
 a patent involved in an "old rule" interference. 

g.  Petitions from a decision under 37 CFR 1.612(a) granting or denying 
access  by a party to an interference to pending and abandoned patent 
applications,  MPEP w 103. 

h.  Petitions for an extension of time to file a request for 
reconsideration  of a decision of the Board of Patent Appeals and 
Interferences in an ex parte  case. 

i.  Petitions from a decision under 37 CFR 1.615(b) authorizing or 
declining  to authorize continued concurrent prosecution of an application 
involved in  an interference proceeding. 

j.  Petitions from a decision under 37 CFR 1.613(d) declining to authorize 
 a withdrawal of an attorney or agent from representing a party involved 
in  an interference. 

k.  Petitions from a refusal to issue a certificate of correction for a 
patent  that is involved in an "old rule" interference. 

l.  Petitions from a decision granting or denying a request for a 
certificate  of correction under 37 CFR 1.322 and 1.323 *>for< a patent 
involved in a "new  rule" interference. 

m.  Petitions seeking disqualification of an attorney or agent under 37 
CFR  10.130(b) in an inter partes case pending before the Board of Patent 
Appeals  and Interferences. 


1002.02(g)      Petitions Decided by the Administrative Patent Judges 
                              [R-2] 

1.  Petitions for access to unopened preliminary statements under 37 CFR 
1.631. 
2.  Petitions under 37 CFR 1.615 for concurrent ex parte and inter partes 
prosecution  of patent applications, MPEP w 2315. 

3.  Petitions for the withdrawal of attorney under 
37 CFR 1.36 in patent applications involved in interference proceedings 
under  37 CFR 1.601 - 1.688 before the Board of Patent Appeals and 
Interferences,  37 CFR 1.613(d). 

4.  A request for a Certificate of Correction for a patent that is 
involved  in an interference conducted under 37 CFR 1.601 - 1.688 * 
presented via a motion  under 
37 CFR 1.635. 

5.  Motions to correct errors in joining inventors in proceedings under 37 
 CFR 1.601 - 1.688, 37 CFR 1.634. 

See also MPEP w 1002.02(j). 


1002.02(i)      Petitions Decided by the Assistant Commissioner for 
Trademarks 

Petitions relating to Trademarks are covered in Chapter 1700 of the 
Trademark  Manual of Examining Procedure. 


1002.02(j)      Petitions Decided by the Board of Patent Appeals and 
Interferences 

Requests under 37 CFR 1.197(b) for a reconsideration or modification of a 
decision  of the Board of Patent Appeals and Interferences. MPEP w 
1214.03. 

1002.02(k)      Petitions Decided by the Solicitor 


1.  Petitions for extension of time in court matters 35 U.S.C. 142, 145, 
146. 
2.  Petitions relating to ex parte questions in cases before the Court of 
Appeals  for the Federal Circuit. 

3.  Requests filed under the Freedom of Information Act. 

The Office of the Solicitor is available to render legal advice to any 
deciding  official in connection with any petition. 


1002.02(l)  Requests Decided by the Certificates of Correction Branch 

1.  Requests for Certificates of Correction under 
37 CFR 1.322 or 1.323 except for denials on grounds requiring 
consideration  by the Chief Administrative Patent Judge or the supervisory 
primary examiners  otherwise provided for, MPEP w 1480 - w 1485. 

2.    Petitions to issue corrected patent, 37 CFR 1.322(b). 


1002.02(m)  Petitions Decided by the Director of Enrollment and Discipline 

1.  Petitions relating to registration. 

2.  Requests for limited recognition under 37 CFR 10.9. 

3.  Petitions for exceptions to undertakings under 
37 CFR 10.10(b)(2), MPEP w 1702. 

4.  Petitions for regrading of registration examinations under 37 CFR 
10.7(c). 
5.  Petitions for reinstatement under 37 CFR 10.160. 

6.  Petitions to suspend the rules under 37 CFR 10.170. 


1002.02(o)      Petitions and Other Matters Decided by the Deputy 
Commissioner of Patents and Trademarks 

The authority to take the following actions has been delegated to the 
Deputy  Commissioner of Patents and Trademarks. 

1.  Decide petitions to the Commissioner in patent interference 
proceedings  under 37 CFR 1.644. 

2.  Decide petitions to the Commissioner from actions taken by the Board 
of  Patent Appeals and Interferences. 

3.  Decide petitions (under 37 CFR 1.304 or 37 CFR 2.145(d)) seeking to 
extend  the time for filing a notice of appeal to the U.S. Court of 
Appeals for the  Federal Circuit or for commencing a civil action seeking 
judicial review of  a decision of the Board of Patent Appeals and 
Interferences or the Trademark  Trial and Appeal Board. 

4.  Decide petitions under 37 CFR 10.2(c) from a final decision of the 
Director  of Enrollment and Discipline. 

5.  Render final decisions in proceedings under 
35 U.S.C. 32 in which the Director of Enrollment and Discipline seeks to 
exclude  or suspend a practitioner from practice before the Patent and 
Trademark Office. 
6.  Render final decisions in proceedings under 
35 U.S.C. 32 seeking to disqualify a practitioner and/or the 
practitioner's  firm in all cases in the Patent and Trademark Office. 

If a vacancy in the position of Deputy Commissioner for Patents and 
Trademarks,  decisions on petitions in patent interference cases will be 
signed by the Commissioner  of Patents and Trademarks. 

Upon receipt of a petition and without waiting for any opposition, the 
entire  interference file is to be forwarded to the Office of the 
Solicitor.  The Solicitor  is directed to promptly cause a review to be 
made of the petition and to prepare  a draft decision for the Deputy 
Commissioner or Commissioner as may be appropriate. 
 The Solicitor is authorized to take any interlocutory action, i.e., 
extending  times for filing oppositions and seeking judicial review, 
obtaining agreement  on facts from the parties, etc., as may be necessary 
to promptly dispose of  the petition. 


>1002.02(p)   Petitions and Matters Decided by the PCT Legal Administrator 
                                         [R-1] 

1.  Petitions to withdraw the Notice of Acceptance and/or filing receipt 
and  indication of the steps necessary for completion of the national 
stage in a  national application requesting treatment under 35 U.S.C. 371. 

2.  Petitions for withdrawal of attorney or agent of record in proceedings 
 before PCT Operations and/or the Office of the PCT Legal Administrator, 
37  CFR 1.36, MPEP w 402.06. 

3.  Petitions for access to an international application or a national 
application 
(i.e., a national stage application or a national application which is 
continuing  from an international application) pending in PCT Operations 
and/or the Office  of the PCT Legal Administrator. 

4.  Requests under 37 CFR 1.26 or 1.446 for refund of fees paid in an 
international  application or in a national application (i.e., a national 
stage application  or a national application which is continuing from an 
international application)  before PCT Operations and/or the Office of the 
PCT Legal Administrator. 
5.  Petitions under 37 CFR 1.182 to convert a national application which 
was  filed under 35 U.S.C. 371 to an application filed under 35 U.S.C. 
111(a) or  to convert a national application which was filed under 35 
U.S.C. 111(a) to  an application filed under 35 U.S.C. 371. 

6.  Petitions under 37 CFR 1.181 to withdraw the holding of abandonment 
where  the holding was made in PCT Operations or in the PCT Legal Office. 
7.  Petitions under 37 CFR 1.181 to invoke the Supervisory authority of 
the  Commissioner in circumstances arising in PCT Operations and/or the 
Office of  the PCT Legal Administrator other than the circumstances set 
forth in paragraph  6, above. 

8.  Petitions under 37 CFR 1.137(b) to revive an application filed under 
the  Patent Cooperation Treaty (PCT). 

9.  Petitions under 37 CFR 1.425 to accept the signature in an 
international  application on behalf of an applicant. 

10.   Petitions under  37 CFR 1.47 or a submission under 37 CFR 1.42 or 
1.44  to accept the signature in a national stage application on behalf of 
an applicant. 
11.   Petitions under 37 CFR 1.48 or a submission under 37 CFR 1.28 
(change  of inventorship and small entity status, respectively) in a 
national stage  application prior to entry into the national stage. 

12.   Petitions under 37 CFR 1.182 or 1.183 filed in an international 
application  relating to filing date matters, drawing problems, priority 
claim issues, Express  Mail problems, Chapter II Demand problems, issues 
relating to obvious error  and issues relating to withdrawal. 

13.   Petitions under 37 CFR 1.182 or 1.183 dealing with circumstances 
other  than those set forth in paragraph 12, but relating to issues under 
the PCT. 
14.   Decisions withdrawing an examiner's office action in an application 
where  the application is not in compliance with the PCT provisions of the 
Treaty,  U.S. Law or the Regulations. 

15.   Petitions dealing with PCT related issues in an application filed 
under  35 U.S.C. 111(a) (such as  applications where there is a potential 
claim for  benefit under 35 U.S.C. 365). 

16.   Petitions to convert a nonprovisional application filed under 37 CFR 
 1.53(b)(1) to a provisional application under 37 CFR 1.53(b)(2) where the 
nonprovisional application is before PCT Operations and/or the Office of 
the PCT Legal Administrator. 

1002.02(q)      Petitions Decided by the Director of Office of National 
Application Review  [R-1] 

1.  Petitions under 37 CFR 1.48(d) to add the name of an inventor in a 
provisional  application. 

2.  Petitions to convert a nonprovisional application filed under 37 CFR 
1.53(b)(1)  to a provisional application under 37 CFR 1.53(b)(2) where the 
nonprovisional  application is before the Office of National Application 
Review or where the  nonprovisional application is before the Office of 
Publications.< 

1003    Matters Submitted to Group Directors 


The following is a list of matters which are submitted to the appropriate 
Group  Director, together with a reference to any section of this manual 
where such  matters are more fully treated. 

1.  Requests for a Certificate of Correction in which the: 

i.  request raises a novel issue or about which there is some question. 
ii.   request is for a patent known to be in litigation. 

iii.    request deals with a legal matter (e.g., the insertion of foreign 
priority  data or cross referencing to prior U.S. patent applications) 
unless the file  reflects that the examiner has already ruled on the 
matter and that failure  to print the material was clearly an Office error 
in which case it will be  handled by the Certificate of Corrections Branch. 

2.  Return of papers entered on the "Contents" of the file wrapper. See 
MPEP  w 201.14(c), w 604.04(a) and w 717.01. 

3.  Return of papers containing discourteous remarks.  See MPEP w 714.19, 
item  11 and MPEP w 714.25. 

4.  Certain rejections on double patenting of divisional (or parent) case 
when  restriction or election of species has previously been required, 
MPEP w 804.04. 
5.  Request for patentability report, MPEP 
w 705.01(e). 

6.  Actions which hold unpatentable claims copied from a patent for 
interference  purposes where the grounds relied upon are equally 
applicable to the patentee,  MPEP w 2307.02. 

7.  Interferences between applications neither of which is in condition 
for  allowance, MPEP w 2303. 

8.  Letters requesting jurisdiction from Board of Patent Appeals and 
Interferences  of applications involved in appeal or interference. 

9.  Letters to an applicant suggesting claims for purposes of 
interference,  the adoption of which by the applicant would result in the 
withdrawal of an  application from issue, MPEP w 2305.04. 

10.   Examiner's answers containing a new interpretation of law.  See MPEP 
 w 1208. 

11.   Proposed interferences between applications whose effective filing 
dates  differ by more than 6 months.  See MPEP w 2303. 

12.   Withdrawal from appeal of an application remanded by the Board of 
Patent  Appeals and Interferences. See MPEP w 1211. 

13.   Protests filed against issuance of a patent. See MPEP w 1901.06. 
14.   Letters suggesting claims to an application in issue for purposes of 
 interference with a patent. See MPEP w 2305.04. 

15.   Requests by the examiner to the Board for reconsideration of a 
decision  before forwarding to the Office of Petitions, MPEP w 1214.04. 

16.   Second or subsequent suspension of action in patent application 
under  37 CFR 1.103 on examiner's initiative. MPEP w 709. 

17.   Request by the examiner to withdraw an application from issue. 
All unusual questions of practice may be referred to the Group Directors. 

1004    Actions Which Require the Attention of a Primary Examiner 

There are some questions which existing practice requires the primary 
examiner  to be personally responsible for.  The following actions fall in 
this category: 
Final rejection (MPEP w 706.07). 

Initiating an interference (MPEP w 2309). 

Disposition of an amendment in a case in interference looking to the 
formation  of another interference involving that application (MPEP w 
2364.01). 
Calling Administrative Patent Judge's attention to a discovered reference 
which  makes a claim corresponding to a count unpatentable (37 CFR 1.641, 
MPEP w 2341). 
Rejection of a previously allowed claim (MPEP w 706.04). 

Classification of allowed cases (MPEP w 903.07). 

Holding of abandonment for insufficient response (MPEP w 711.03(a)). 
Suspension of examiner's action (MPEP w 709). 

Treatment of newly filed application which obviously fails to comply with 
35  U.S.C. 112 (MPEP w 702.01). 

Consideration of the advisability of a patentability report (MPEP w 
705.01(a)). 
Final requirements for restriction (MPEP w 803.01). 

Withdrawal of final rejection (MPEP ww 706.07(d) and 706.07(e)). 

All examiner's answers on appeal (MPEP w 1208).  Note also MPEP w 1208.01 
where  a new ground of rejection or objection is raised, or a new 
reference is cited,  in the answer. 

Decision on reissue oath or declaration (MPEP 
w 1414 - w 1414.05). 

Decision on affidavits or declarations under 37 CFR 1.131 (MPEP w 715.08) 
and  under 37 CFR 1.132 (MPEP w 716). 

Decision as to acceptance of amendments, statements, and oaths or 
declarations  filed under 37 CFR 1.48 (MPEP w 201.03). 

For a list of actions that are to be submitted to the group directors, see 
 MPEP w 1002.02(c) and w 1003. 


1005    Exceptions to Partial Signatory Authority 


Examiners who are delegated partial signatory authority are expected to 
sign  their own actions with the exception of the following actions which 
require the signature of the primary  examiner: 

Allowances (MPEP w 1302.13). 

Quayle actions (MPEP w 714.14). 

Final rejections (MPEP w 706.07). 

Actions on amendments submitted after final rejection (MPEP w 714.12). 
Examiners' answers on appeal (MPEP w 1208). 

Interference declarations or modifications (MPEP w 2309). 

Actions suggesting claims for interference purposes (MPEP w 2305). 
Actions involving copied patent claims (MPEP w 2307). 

Actions reopening prosecution (MPEP w 1214.07). 

Requests for withdrawal from issue (MPEP w 1308). 37 CFR 1.312 amendments 
(MPEP w 714.16). 
Rejection of previously allowed claim (MPEP w 706.04). 

Final holding of abandonment for insufficient response (MPEP w 711.03(a)). 
Actions based on affidavit or declaration evidence (37 CFR 1.131 and 1.132 
(MPEP w 715.08 and w 716)). 

Suspension of examiner's action (MPEP w 709). 

Reissue cases (decisions on reissue oath or declaration) (MPEP w 1444). 
Requests for an extension of time under 37 CFR 1.136(b) (MPEP w 
710.02(e)). 
Examiner's amendments (MPEP w 1302.04). 

Final restriction requirements (MPEP w 803.01). 

Reexamination proceedings (MPEP w 2236). 



Contents 

1101        Request for Statutory Invention Registration (SIR) 

1103        Examination of a SIR 

1105        Review of Final Refusal to Publish a SIR 

1107        Preparing a SIR for Publication 

1109        Withdrawal of SIR Request 

1111        SIR Publication and Effect 


1101    Request for Statutory Invention Registration (SIR) [R-1] 

35 U.S.C. 157.          Statutory invention registration. 

(a)   Notwithstanding any other provision of this title, the Com- 
missioner  is authorized to publish a statutory invention registration 
containing the  specification and drawings of a regularly filed 
application for a patent without  examination if the applicant - 

(1)         meets the requirements of section 112 of this title; 

(2)         has complied with the requirements for printing; as set forth 
in  regulations of the Commissioner; 

(3)         waives the right to receive a patent on the invention within 
such  period as may be prescribed by the Commissioner; and 

(4)         pays application, publication, and other processing fees 
established  by the Commissioner. 

If an interference is declared with respect to such an application, a 
statutory  invention registration may not be published unless the issue of 
priority of  invention is finally determined in favor of the applicant. 

(b)   The waiver under subsection (a)(3) of this section by an applicant 
shall  take effect upon publication of the statutory invention 
registration. 
(c)   A statutory invention registration published pursuant to this 
section  shall have all of the attributes specified for patents in this 
title except  those specified in section 183 and sections 271 through 289 
of this title.  A statutory invention registration shall not have any of 
the attributes specified  for patents in any other provision of law other 
than this title. A statutory  invention registration published pursuant to 
this section shall give appropriate  notice to the public, pursuant to 
regulations which the Commissioner shall  issue, of the preceding 
provisions of this subsection. The invention with respect  to which a 
statutory invention certificate is published is not a patented invention 
for purposes of section 292 of this title. 

(d)   The Secretary of Commerce shall report to the Congress annually on 
the  use of statutory invention registrations. Such report shall include 
an assessment  of the degree to which agencies of the federal government 
are making use of  the statutory invention registration system, the degree 
to which it aids the  management of federally developed technology, and an 
assessment of the cost  savings to the Federal Government of the uses of 
such procedures. 

37 CFR 1.293.     Statutory invention registration. 

(a)   An applicant for an original patent may request, at any time during 
the  pendency of applicant's pending complete application, that the 
specification  and drawings be published as a statutory invention 
registration. Any such request  must be signed by (1) the applicant and 
any assignee of record or (2) an attorney  or agent of record in the 
application. 

(b)   Any request for publication of a statutory invention registration 
must  include the following parts: 

(1)    A waiver of the applicant's right to receive a patent on the 
invention  claimed effective upon the date of publication of the statutory 
invention registration; 
(2)    The required fee for filing a request for publication of a 
statutory  invention registration as provided for in w 1.17(n) or (o); 

(3)    A statement that in the opinion of the requester, the application 
to  which the request is directed meets the requirements of 35 U.S.C. 112; 
and 
(4)    A statement that, in the opinion of the requester, the application 
to  which the request is directed complies with the formal requirements of 
this  part for printing as a patent. 

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

A request for a statutory invention registration (SIR) may be filed at the 
 time of filing * >a nonprovisional< application for patent, or may be 
filed  later during pendency of * >a nonprovisional< application.  The fee 
required 
(37 CFR 1.17(n) or (o)) depends on when the request is filed. The 
application  to be published as a SIR must be complete as set forth in 37 
CFR 1.51(a)>(1)<  including a specification with a claim or claims, an 
oath or declaration, and  drawings when necessary.  Applicants should use 
the format set forth in form  PTO/SB/94, Request for Statutory 
Registration.  >A provisional application  cannot include a request for a 
SIR.< 

Requests for statutory invention registrations, including those submitted 
in  utility, plant, and design applications, are handled in Examining 
Group 2200.  Accordingly, incoming new applications which include a 
request for a SIR will  be processed like other new applications in the 
Application Processing Division  and then forwarded to Group 2200.  Group 
2200 may be assisted by other examining  groups when the subject matter of 
the application makes it necessary or desirable.  For example, Group 1800 
may handle issues under 35 U.S.C. 112 in applications  involving 
biotechnology. 

Applications which are already assigned to examining groups other than 
Group  2200 and which receive a request for a SIR (or any other indication 
that they  are to be published as a SIR) should be forwarded with a brief 
explanation  to Group 2200 via the clerical staff of the examining group 
to which the application  is assigned.  The forwarding group should first 
determine whether an Office action has been mailed  in the application and 
issue proper SIR disposal credit to the examiner who  prepared any such 
action where appropriate.  Group 2200 R  examiners will determine  whether 
the request for a SIR 

is proper. Non-Group 2200 examiners should make no comment to the 
applicant  regarding what effect the filing of a request for a SIR may 
have had on any  outstanding  rejection. 



A11010001.bmp 



A11010001.end 





1103    Examination of a SIR [R-1] 


37 CFR 1.294.       Examination of request for publication of a statutory 
invention  registration and patent application to which the request is 
directed. 
(a)   Any request for a statutory invention registration will be examined 
to  determine if the requirements of w 1.293 have been met. The 
application to  which the request is directed will be examined to 
determine (1) if the subject  matter of the application is appropriate for 
publication, (2) if the requirements  for publication are met, and (3) if 
the requirements of 35 U.S.C. 112 and w  1.293 of this part are met. 

(b)   Applicant will be notified of the results of the examination set 
forth  in paragraph (a) of this section.  If the requirements of w 1.293 
and this  section are not met by the request filed, the notification to 
applicant will  set a period of time within which to comply with the 
requirements in order  to avoid abandonment of the application. If the 
application does not meet the  requirements of 35 U.S.C. 112, the 
notification to applicant will include a  rejection under the appropriate 
provisions of 35 U.S.C. 112.  The periods for  response established 
pursuant to this section are subject to the extension  of time provisions 
of w 1.136.  After response by the applicant, the application  will again 
be considered for publication of a statutory invention registration.  If 
the requirements of w 1.293 and this section are not timely met, the 
refusal to publish will be  made final. If the requirements of 35 U.S.C. 
112 are not met, the rejection  pursuant to 35 U.S.C. 112 will be made final. 

(c)   If the examination pursuant to this section results in approval of 
the  request for a statutory invention registration the applicant will be 
notified  of the intent to publish a statutory invention registration. 

A Group 2200 examiner will determine whether the application in which a 
request  for a statutory invention registration has been filed is a 
pending >nonprovisional<  application. If the application was abandoned at 
the time the request was filed,  has been patented, or has been allowed 
and the issue fee paid, the examiner  should return the SIR request to the 
requester accompanied by a Return of Statutory  Invention Registration 
Request to Requester notice (form PTOL-442). 
If the application is pending, the examiner should ascertain whether an 
Office  action with a rejection under 35 U.S.C. 112 has been issued and 
not responded  to.  If so, and if there remains any time to respond to the 
rejection, the  examiner should send the applicant a courtesy notice 
requiring a timely response.  If no time for response remains, the 
application is abandoned and the examiner  should inform the applicant of 
this fact. 

After the Group 2200 examiner has ascertained that all outstanding 
rejections  under 35 U.S.C. 112 have been responded to, the examiner 
should verify that  the 
request for a SIR meets the requirements of 37 CFR 1.293.  First, 
applicant  should be notified of any defects in the signature on the SIR 
request or of  any inadequacy of the SIR fee.  A 1-month time period 
should be set for applicant  to correct the signature or fee before any 
further consideration of the SIR  request is given.   Form PTOL-444 may be 
used for this purpose.  Next, applicant  should be given 1 month to 
correct any other informalities in the SIR request  under 37 CFR 1.293 and 
any informalities in the application under 37 CFR 1.294  using a Notice of 
Informal Statutory Invention Registration (SIR) Request,  form PTOL-445. 
The examiner should also determine whether the application  complies with 
35 U.S.C. 112.   If not, a rejection with a 3-month shortened  statutory 
period for response should be made using a Notice of Noncompliance  with 
35 U.S.C. 112 of application having SIR Request, form PTOL-448.  Both 
form PTOL-445 and form PTOL-448 can be mailed at the same time.  If they 
are,  applicant should be given a 3-month shortened statutory period to 
respond to  both forms. 

If applicant's response to form PTOL-445 does not correct the defects, the 
 SIR request should be finally refused using a Notice of Final Refusal of 
Informal  Statutory Invention Registration (SIR) Request, form PTOL-446. 
If applicant's  response to the rejection set forth on form PTOL-448 does 
not bring the application  into compliance with 35 U.S.C. 112, the 
rejection should be made final. 
After the application complies with 37 CFR 1.293, 37 CFR 1.294, and 35 
U.S.C.  112, the examiner should determine whether the application is 
involved in a  pending interference.  If so, applicant should be notified, 
using form PTOL-449,  that no decision will be made on the SIR request 
until the interference proceedings  are concluded. 

If the applicant has lost priority of any claims due to a concluded 
interference,  applicant should be given 
1 month, using form PTOL-449, to cancel the lost claims (if a statutory 
invention  registration is still desired with claims on which priority was 
not lost) or  to request withdrawal of the request for statutory invention 
registration (if  further prosecution as to patentability is desired). 
See MPEP # 1109.  If  none of the claims in the application was lost in 
interference, and if the  application complies with 37 CFR 1.293, 37 CFR 
1.294, and 
35 U.S.C. 112, then the application is in condition to be prepared for 
publication.  See MPEP # 1107. 

An application under secrecy order will be withheld from publication 
during  such period as the national interest requires, and the applicant 
should be  informed of this fact by using a Notice of Statutory Invention 
Registration 
(SIR) Acceptance (Form D-11), form PTOL-452. 



1105    Review of Final Refusal to Publish SIR 


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

(a)   Any requester who is dissatisfied with the final refusal to publish 
a  statutory invention registration for reasons other than compliance with 
35  U.S.C. 112 may obtain review of the refusal to publish the statutory 
invention  registration by filing a petition to the commissioner 
accompanied by the fee  set forth in w 1.17(h) within one month or such 
other time as is set in the  decision refusing publication. Any such 
petition should comply with the requirements  of w 1.181(b). The petition 
may include a request that the petition fee be  refunded if the final 
refusal to publish a statutory invention registration  for reasons other 
than compliance with 35 U.S.C. 112 is determined to result  from an error 
by the Patent and Trademark Office. 

(b)   Any requester who is dissatisfied with a decision finally rejecting 
claims  pursuant to 35 U.S.C. 112 may obtain review of the decision by 
filing an appeal  to the Board of Patent Appeals and Interferences 
pursuant to w 1.191. If the  decision rejecting claims pursuant to 35 
U.S.C.112 is reversed, the request  for a statutory invention registration 
will be approved and the registration  published if all of the other 
provisions of w 1.293 and this section are met. 
An applicant who is dissatisfied with a final refusal to publish a SIR for 
 reasons other than compliance with 35 U.S.C. 112 may obtain review by 
filing  a petition as set forth in 37 CFR 1.295(a). The petition should be 
directed  to the Group Director of Examining Group 2200. 

An applicant who is dissatisfied with a decision finally rejecting claims 
under  35 U.S.C. 112 may obtain review by filing an appeal with the Board 
of Patent  Appeals and Interferences as set forth in 37 CFR 1.295(b). 



1107    Preparing a SIR for Publication [R-1] 


In preparing * >a nonprovisional< application with a SIR request for 
publication,  the examiner should fill out the face of the application 
file jacket in the  same manner as in a non-SIR application. 
Additionally, the examiner should  add the notation "OK for SIR" in the 
space provided for the primary examiner's  signature.  A form PTO-1547 is 
attached to the label area of the file jacket  to indicate that the 
application is for a statutory invention registration.  An issue 
classification slip (form PTO-270 or PTO-328) is filled out and attached 
inside the file jacket in the normal manner with the additional notation 
of  "SIR" added to the left side of the space allocated for the patent 
number.  The index of claims inside the file jacket is filled out, with 
the notation  " * "indicating the claims to be published in the SIR.   If 
the application  contains formal drawings, the final official 
classification of the application  and the figure to be published in the 
Official Gazette are indicated as in  non-SIR applications in the spaces 
provided by the Draftsman's stamp.  Otherwise,  a yellow tag (form 
PTO-1364) is attached to the file. 

A Notice of Intent to Publish Statutory Invention Registration, form 
PTOL-451,  is prepared and sent to the applicant. Requirements for formal 
drawings (allowing  a 3-month shortened statutory period for response) and 
examiner's amendments  may be attached to the Notice of Intent to Publish 
Statutory Invention Registration  as needed.  The application is then 
forwarded to Publication Division. 


1109    Withdrawal of SIR Request [R-1] 


37 CFR 1.296.       Withdrawal of request for publication of statutory 
invention  registration. 

A request for a statutory invention registration which has been filed may 
be  withdrawn prior to the date of the notice of the intent to publish a 
statutory  invention registration issued pursuant to w 1.294(c) by filing 
a request to  withdraw the request for publication of a statutory 
invention registration.  The request to withdraw may also include a 
request for a refund of any amount  paid in excess of the application 
filing fee and a handling fee of $130.00  which will be retained. Any 
request to withdraw the request for publication  of a statutory invention 
registration filed on or after the date of notice  of intent to publish 
issued pursuant to w 1.294(c) must be in the form of a  petition pursuant 
to w 1.183 accompanied by the fee set forth in w 1.17(h). 
If a request to withdraw a SIR is filed in * >a nonprovisional< 
application  which contains a SIR request before a Notice of Intent to 
Publish Statutory  Invention Registration has been mailed, the Group 2200 
examiner should ascertain  whether any outstanding rejection 
under 35 U.S.C. 112 is present in the application.  If so, the examiner 
should  require a timely response to the rejection using a Response to 
Request to Withdraw  Request for a Statutory Invention Registration, form 
PTOL-450. After a timely  reply to the rejection is received, the request 
to withdraw the SIR request  will ordinarily be granted and the 
application forwarded for further examination  to whichever examining 
group would ordinarily examine the art area in which  the application is 
classifiable. 

Any request to withdraw a SIR filed after the mailing date of the Notice 
of  Intent to Publish Statutory Invention Registration must be in the form 
of a  petition pursuant to 37 CFR 1.183 accompanied by the fee set forth 
in 37 CFR  1.17(h).  The Director of Group 2200 will inform the applicant 
of the decision  on the petition via a form PTOL-450 or Response to 
Petition under 
37 CFR 1.295(a), form PTOL-447. 

Note that an original SIR application can be abandoned in favor of a 
continuing  application for a patent, claiming the filing date of the 
earlier filed application,  by filing an express abandonment of the 
original application and a timely request  or petition to withdraw the 
request for a SIR prior to publication of the SIR. 

1111    SIR Publication and Effect [R-1] 


37 CFR 1.297.     Publication of statutory invention registration. 
(a)   If the request for a statutory invention registration is approved, 
the  statutory invention registration will be published. The statutory 
invention  registration will be mailed to the requester at the 
correspondence address  as provided for in w 1.33(a).  A notice of the 
publication of each statutory  invention registration will be published in 
the Official Gazette. 

(b)   Each statutory invention registration published will include a 
statement  relating to the attributes of a statutory invention 
registration. The statement  will read as follows: 

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

Published SIR's are sequentially numbered in a separate "H" series, 
starting  with number "H1". 

In accordance with 35 U.S.C. 157(c), a published SIR will be treated the 
same  as a U.S. patent for all 
defensive purposes, usable as a reference as of its filing date in the 
same  manner as a patent. A SIR is a "constructive reduction to practice" 
under 35  U.S.C.  102(g) and "prior art" under all applicable sections of 
35 U.S.C. 102 including section 102(e). SIR's are classified 
cross-referenced, and placed in the search files, disseminated to foreign 
patent offices, stored in Patent and Trademark Office computer tapes, made 
 available in commercial data bases, and announced in the Official 
Gazette. 

The waiver of patent rights to the subject matter claimed in a statutory 
invention  registration takes effect on publication (37 CFR 1.293(c)) and 
may affect the  patentability of claims in related applications without 
SIR requests, such  as divisional or other continuing applications, since 
the waiver of patent  rights is effective for all inventions claimed in 
the SIR and would effectively  waive the right of the inventor to obtain a 
patent on the invention claimed  in the same application or in any other 
application not issued before the publication  date of the SIR.  If an 
application containing generic claims is published  as a SIR, the waiver 
in that application applies to any other related applications  to the 
extent that the same invention claimed in the SIR is claimed in the  other 
application. Examiners should apply standards similar to those applied  in 
making "same invention" double patenting determinations to determine 
whether  a waiver by an inventor to claims in a SIR precludes patenting by 
the same  inventor to subject matter in any related application.  If the 
same subject  matter is claimed in an application and in a published 
statutory invention  registration naming a common inventor, the claims in 
the application should  be rejected as being precluded by the waiver in 
the statutory invention registration.  See 37 CFR 1.106(e).  A rejection 
as being precluded by a waiver in a SIR cannot  be overcome by a terminal 
disclaimer. 

Examiners should note that the holder of a SIR will not be able to file a 
reissue  application to recapture the rights, including the right to 
exclude others  from making, using, * selling>, offering to sell, or 
importing< the invention,  that were waived by the initial publication of 
the SIR. 



Contents 

1201        Introduction 

1203        Composition of Board 

1204        Administrative Handling 

1205        Notice of Appeal 

1206        Appeal Brief 

1207        Amendment Filed With or After Appeal 

1208        Examiner's Answer 

1208.01     New Reference, New Objection, or New Ground of 
            Rejection in Examiner's Answer 

1208.02     Withdrawal of Final Rejection 

1208.03     Reply Brief 

1208.04     Supplemental Examiner's Answer 

1209        Oral Hearing 

1210        Actions Subsequent to Examiner's Answer but Before 
            Board's Decision 

1211        Remand by Board 

1211.01     Remand by Board To Consider Amendment 

1212        Remand by Board To Consider Affidavits or Declarations 
1213        Decision by Board 

1213.01     Recommendations of Board 

1213.02     Statement as to Rejection of an Allowed Claim 

1213.03     Publication of Board Decision 

1214        Procedure Following Decision by Board 

1214.01     Procedure Following New Ground of Rejection by Board 

1214.03     Reconsideration 

1214.04     Examiner Reversed 

1214.05     Cancellation of Withdrawn Claims 

1214.06     Examiner Sustained in Whole or in Part 

1214.07     Reopening of Prosecution 

1215        Withdrawal or Dismissal of Appeal 

1215.01     Withdrawal of Appeal 

1215.02     Claims Standing Allowed 

1215.03     Partial Withdrawal 

1215.04     Dismissal of Appeal 

1216        Judicial Review 

1216.01     Appeals to the Federal Circuit 

1216.02     Civil Suits Under 35 U.S.C. 145 


1201    Introduction [R-2] 


        The Patent and Trademark Office in administering the Patent Laws 
makes  many decisions of a discretionary nature which the applicant may 
feel deny  him or her the patent protection to which he or she is 
entitled.  The differences  of opinion on such matters can be justly 
resolved only by prescribing and following  judicial procedures. Where the 
differences of opinion concern the denial of  patent claims because of 
prior art or material deficiencies in the disclosure  set forth in the 
application, the questions thereby raised are said to relate  to the 
merits, and appeal procedure within the Patent and Trademark Office  and 
to the courts has long been provided by statute. 

        The line of demarcation between appealable matters for the Board 
of  Patent Appeals and Interferences (Board) and petitionable matters for 
the Commissioner  of Patents and Trademarks should be carefully observed. 
The Board will not  ordinarily hear a question which it believes should be 
decided by the Commissioner,  and the Commissioner will not ordinarily 
entertain a petition where the question  presented is an appealable 
matter. However, since 37 CFR 1.181(f) states that  any petition not filed 
within 2 months from the action complained of may be  dismissed as 
untimely and since 37 CFR 1.144 states that petitions from restriction 
requirements must be filed no later than appeal, petitionable matters will 
 rarely be present in a case by the time it is before the Board for a 
decision. 
 **>In re Watkinson, 900 F.2d 230, 14 USPQ2d 1407 (Fed. Cir.  1990).< 

1203    Composition of Board 


        35 U.S.C. 7 provides for a Board of Patent Appeals and 
Interferences  as follows: 

35 U.S.C. 7.    Board of Patent Appeals and Interferences 

        (a)   The examiners-in-chief shall be persons of competent legal 
knowledge  and scientific ability, who shall be appointed to the 
competitive service.  The Commissioner, the Deputy Commissioner, the 
Assistant Commissioners, and  the examiners-in-chief shall constitute the 
Board of Patent Appeals and Interferences. 
        (b)   The Board of Patent Appeals and Interferences shall, on 
written  appeal of an applicant, review adverse decisions of examiners 
upon applications  for patents and shall determine priority and 
patentability of invention in  interference declared under section 135(a) 
of this title. Each appeal and interference  shall be heard by at least 
three members of the Board of Patent Appeals and  Interferences, who shall 
be designated by the Commissioner. Only the Board  of Patent Appeals and 
Interferences has the authority to grant rehearings. 
        (c)   Whenever the Commissioner considers it necessary, in order 
to  keep current the work of the Board of Patent Appeals and 
Interferences, the  Commissioner may designate any patent examiner of the 
primary examiner grade  or higher, having the requisite ability, to serve 
as examiner-in-chief for  periods not exceeding six months each. An 
examiner so designated shall be qualified  to act as a member of the Board 
of Patent Appeals and Interferences. Not more  than one of the members of 
the Board of Patent Appeals and Interferences hearing  an appeal or 
determining an interference may be an examiner so designated.  The 
Secretary of Commerce is authorized to fix the pay of each designated 
examiner-in-chief  in the Patent and Trademark Office at not to exceed the 
maximum rate of basic  pay payable for grade GS-16 of the General Schedule 
under section 5332 of title  5. The rate of basic pay of each individual 
designated examiner-in-chief shall  be adjusted, at the close of the 
period for which that individual was designated  to act examiner-in-chief, 
to the rate of basic pay that individual would have  been receiving at the 
close of such period if such designation had not been  made. 

        If subsequent to the hearing, but prior to the decision, a Board 
member  who heard the appeal becomes unable to participate in the decision 
for some  reason, the Chairman of the Board, at his discretion, may 
without a rehearing  substitute a different Board member for the one who 
is incapacitated, or he  may offer the applicant the opportunity for a 
rehearing. See In re Bose Corporation,  772 F.2d 866, 227 USPQ 1 (Fed. 
Cir. 1985). 

        Should a member die or otherwise become unavailable (for example, 
retirement)  to reconsider a decision, normally another member will be 
designated by the  Chairman of the Board as a substitute for the absent 
member. 


1204    Administrative Handling 


        Ex parte appeals to the Board, and all papers relating thereto, 
are  forwarded to the examining group for docketing. All appeal papers, 
such as  the notice of appeal, appeal brief, and request for extension of 
time to file  the brief, are processed by the appropriate examining group. 

        The clerk in charge of handling appeals in the examining group is 
solely  responsible for completion of all phases of appeal clerical 
procedure. All  communications from the Board and all signed Office 
communications relating  to appeals from the examiners should be given to 
the group appeals clerk. 
        To ensure that all records are current, memorandum form PTO-262 is 
 attached to the file wrapper when it is remanded by the Board. It is 
important  that this memorandum be promptly completed and forwarded by the 
group if the  application is allowed, the prosecution is reopened, a 
continuation application  is filed, or if the appeal is discontinued for 
any other reason. 

        If the brief is not filed within the time designated by 37 CFR 
1.192,  the clerk will notify the applicant that the appeal stands 
dismissed. 
 "SPECIAL CASE" 

        Subject alone to diligent prosecution by the applicant, an 
application  for patent that once has been made special and advanced out 
of turn by the  office for examination will continue to be special 
throughout its entire course  of prosecution in the Patent and Trademark 
Office, including appeal, if any,  to the Board. See MPEP w 708.02. 

        A petition to make a case special after the appeal has been 
forwarded  to the Board may be addressed to the Board. However, no such 
petition will  be granted unless the brief has been filed and applicant 
has made the same  type of showing required by the Commissioner under 
37 CFR 1.102. Therefore, diligent prosecution is essential to a favorable 
decision  on a petition to make special. 


1205    Notice of Appeal [R-2] 


35 U.S.C. *>134<. Appeal to the Board of Patent Appeals and Interferences. 
        An applicant for a patent, any of whose claims has been twice 
rejected,  may appeal from the decision of the primary examiner to the 
Board of Patent  Appeals and Interferences, having once paid the fee for 
such appeal. 
35 U.S.C. 41.     Patent fees 

        (a) The Commissioner shall charge the following fees: 

* * * * * 

        (6)(A)      On filing an appeal from the examiner to the Board of 
Patent  Appeals and Interferences, $190. 

        (B)   In addition, on filing a brief in support of the appeal, 
$190,  and on requesting an oral hearing in the appeal before the Board of 
Patent  Appeals and Interferences, $160. 

F12040001.bmp 



F12040001.end 

37 CFR 1.191.       Appeal to Board of Patent Appeals and Interferences. 
        (a)   Every applicant for a patent or for reissue of a patent, or 
every  owner of a patent under reexamination, any of the claims of which 
have been  twice rejected, or who has been given a final rejection (w 
1.113), may, upon  the payment of the fee set forth in w 1.17(e), appeal 
from the decision of  the examiner to the Board of Patent Appeals and 
Interferences within the time  allowed for response. 

        (b)   The appeal in an application or reexamination proceeding 
must  identify the rejected claim or claims appealed, and must be signed 
by the applicant,  patent owner or duly authorized attorney or agent. 

        (c)   An appeal when taken must be taken from the rejection of all 
 claims under rejection which applicant or patent owner proposes to 
contest.  Questions relating to matters not affecting the merits of the 
invention may  be required to be settled before an appeal can be considered. 

        (d)   The time periods set forth in ww 1.191 and 1.192 are subject 
 to the provisions of w 1.136 for patent applications and w 1.550(c) for 
reexamination  proceedings. The time periods set forth in ww 1.193, 1.194, 
1.196, and 1.197  are subject to the provisions of w 1.136(b) for patent 
applications or w 1.550(c)  for reexamination proceedings. See 
w 1.304(a) for extensions of time for filing a notice of appeal to the 
U.S.  Court of Appeals for the Federal Circuit or for commencing a civil 
action. 
        (e)   Jurisdiction over the application or patent under 
reexamination  passes to the Board of Patent Appeals and Interferences 
upon transmittal of  the file, including all  briefs and examiner's 
answers, to the Board. Prior  to the entry of a decision on the appeal, 
the Commissioner may sua sponte order  the application remanded to the 
examiner. 

        An applicant or patent owner in a reexamination proceeding 
dissatisfied  with the primary examiner's decision in the second or final 
rejection of his  or her claims may appeal to the Board  for review of the 
examiner's rejection  by filing a notice of appeal, signed by the 
applicant, patent owner, or his  or her attorney, and the required fee set 
forth in 37 CFR 1.17(e). 
        The notice of appeal must be filed within the period for response 
set  in the last Office action, which is normally 3 months for 
applications. See  MPEP w 714.13.  Failure to remove all grounds of 
rejection and otherwise place  an application in condition for allowance 
in the absence of new rejections  or to file an appeal after final 
rejection will result in the application becoming  abandoned, even if one 
or more claims have been allowed except where claims  suggested for 
interference have been copied.  The Notice of Appeal and appropriate  fee 
may be filed up to 6 months from the date of the final rejection, so long 
as an appropriate petition and fee for an extension of time is filed 
either  prior to or with the Notice of Appeal.  Failure to file an appeal 
in a reexamination  proceeding will result in issuance of the certificate 
under 37 CFR 1.570. 
        37 CFR 1.191 provides for appeal to the Board by the patent owner 
from  any decision in a reexamination proceeding adverse to patentability, 
in accordance  with 35 U.S.C. 306. See also MPEP w 2273. 

        The use of a separate letter containing the notice of appeal is 
strongly  recommended. The wording of the letter could be as follows: 

NOTICE OF APPEAL FROM THE EXAMINER 
TO THE BOARD OF PATENT APPEALS AND 
INTERFERENCES 

In re application of: 

Serial or Patent No: 

For: 

Filed: 

Group Art Unit: 

To Commissioner of Patents and Trademarks 

Sir: 

        Applicant or patent owner hereby appeals to the Board of Patent 
Appeals  and Interferences from the decision dated ............ of the 
Examiner finally  rejecting claims ................ 

        The item(s) checked below are appropriate: 

        1.  [  ]An extension of time to respond to the final rejection: 
        a.  [  ]was obtained on ....................... for ........ 
months(s). 
        b.  [  ]is hereby requested under 37 CFR 1.136. 

        2.  [  ]Appeal fee amount ................ 

                [  ]Extension of time fee amount ............. 

        a.  [  ]Enclosed 

        b.  [  ]Charge to Deposit Account No. ..................... 
                (One additional copy of this Notice is enclosed herewith.) 
                ___________________________________ 

                (Signature (37 CFR 1.191(b)) 

                ___________________________________ 

                ___________________________________ 

                (Correspondence address) 

MATTERS HANDLED CONCURRENTLY 
WITH APPEAL 

        The Patent and Trademark Office does not acknowledge receipt of a 
Notice  of Appeal by separate letter. However, if a self-addressed 
postcard is included  with the Notice of Appeal, it will be date stamped 
and mailed. 

        Form Paragraphs 12.01-12.07 may be used to indicate defects in a 
Notice  of Appeal. 

W 12.01       Notice of Appeal Unacceptable __ Fee Unpaid 

        The notice of appeal filed on [1] is not acceptable because the 
appeal  fee required under 37 CFR 1.17(e) was not filed, or was not timely 
filed. 
        Applicant may obtain an extension of time under 37 CFR 1.136(a) to 
 file the notice of appeal and the appropriate fee. The date on which the 
notice  of appeal, the appeal fee, the petition under 37 CFR 1.136(a), and 
the petition  fee are filed will be the date of the response and also the 
date for determining  the period of extension and the corresponding amount 
of the fee. In no case  may an applicant respond later than the maximum 
six month statutory period  or obtain an extension pursuant to 37 CFR 
1.136(a) for more than four months  beyond the date of response set in an 
Office action. 

W 12.02       Notice of Appeal Unacceptable __  No 2nd Rejection 

        The notice of appeal filed on [1] is not acceptable because there 
has  been no second or final rejection in this application, as required 
under 37 CFR 1.191. 

W 12.03       Notice of Appeal Unacceptable __  Not Timely Filed 

        The notice of appeal filed on [1] is not acceptable because it was 
 filed after the expiration of the period set in the prior Office action. 
This  application will become abandoned unless applicant obtains an 
extension of  time under 37 CFR 1.136(a). The date on which the notice of 
appeal, the appeal  fee, the petition under 37 CFR 1.136(a), and the 
petition fee are filed will  be the date of the response and also the date 
for determining the period of  extension and the corresponding amount of 
the fee. In no case may an applicant  respond later than the maximum six 
months statutory period or obtain an extension  pursuant to  37 CFR 
1.136(a) for more than four months beyond the date of response  set in an 
Office action. 

W 12.04       Notice of Appeal Unacceptable __ Claims Allowed 

        The notice of appeal filed on [1] is not acceptable because a 
letter  of allowability was mailed by the Office on [2]. 

W 12.05       Notice of Appeal Defective __  Unsigned 

        The notice of appeal filed on [1] is defective because it is 
unsigned.  A ratification, properly signed, is required. 

Applicant is given a TIME LIMIT of ONE MONTH from the date of this letter 
or  until the expiration of the period for response set in the last office 
action,  whichever is longer, within which to make the nessary correction 
to avoid dismissal of the appeal.  NO EXTENSION OF THE ONE MONTH TIME 
LIMIT MAY BE GRANTED UNDER  EITHER 
37 CFR 1.136(a) OR (b), but the period for response set in 
the last office action may be extended to a maximum of 
SIX MONTH provided the requisite fees are paid. 

W 12.06       Notice of Appeal Defective __ Claims Unidentified. 

        The notice of appeal filed on [1] is defective because it fails to 
 identify the appealed claims(s) as required under 37 CFR 1.191(b). 
Applicant is given a TIME LIMIT of ONE MONTH from the date of this letter 
or  until the expiration of the period for response set in the last office 
action,  whichever is longer, within which to make the necessary 
correction to avoid  dismissal of the appeal. NO EXTENSION OF THE ONE 
MONTH TIME LIMIT MAY BE GRANTED  UNDER EITHER 37 CFR 1.136 (a) OR (b), but 
the period for response set in the  last office action may be extended to 
a maximum of SIX MONTHS provided the  requisite fees are paid. 

W 12.07       Notice of Appeal Defective __  Other Reasons 

        The notice of appeal filed on [1] is defective because [2]. 
Applicant is given a TIME LIMIT of ONE MONTH from 
the date of this letter or until the expiration of the period for 
response set in the last office action, whichever is longer, 
within which to make the necessary correction to avoid dismis- 
sal of the appeal. NO EXTENSION OF THE ONE 
MONTH TIME LIMIT MAY BE GRANTED UNDER 
EITHER 37 CFR 1.136 (a) OR (b), but the period for 
response set in the last office action may be extended to a 
maximum of SIX MONTHS provided the requisite fees 
 are paid. 


1206    Appeal Brief [R-2] 


37 CFR 1.192    . Appellant's brief. 

        (a)   Appellant shall, within 2 months from the date of the notice 
 of appeal under w 1.191 or within the time allowed for response to the 
action  appealed from, if such time is later, file a brief in triplicate. 
The brief  must be accompanied by the requisite fee set forth in w 1.17(f) 
and must set  forth the authorities and arguments on which appellant will 
rely to maintain  the appeal. Any arguments or authorities not included in 
the brief will be  refused consideration by the Board of Patent Appeals 
and Interferences, unless  good cause is shown. 

        (b)   On failure to file the brief, accompanied by the requisite 
fee,  within the time allowed, the appeal shall stand dismissed. 

        (c)   The brief shall contain the following items under 
appropriate  headings and in the order indicated below unless the brief is 
filed by an applicant  who is not represented by a registered practitioner: 

        (1)   Real party in interest. A statement identifying the real 
party  in interest, if the party named in the caption of the brief is not 
the real  party in interest. 

        (2)   Related appeals and interferences. A statement identifying 
by  number and filing date all other appeals or interferences known to 
appellant,  the appellant's legal representative, or assignee which will 
directly affect  or be directly affected by or have a bearing on the 
Board's decision in the  pending appeal. 

        (3)   Status of claims.  A statement of the status of all the 
claims,  pending or canceled, and identifying the claims appealed. 

        (4)   Status of amendments. A statement of the status of any 
amendment  filed subsequent to final rejection. 

        (5)   Summary of invention. A concise explanation of the invention 
 defined in the claims involved in the appeal, which shall refer to the 
specification  by page and line number, and to the drawing, if any, by 
reference characters. 
        (6)   Issues. A concise statement of the issues presented for 
review. 
        (7)   Grouping of claims. For each ground of rejection which 
appellant  contests and which applies to a group of two or more claims, 
the Board shall  select a single claim from the group and shall decide the 
appeal as to the  ground of rejection on the basis of that claim alone 
unless a statement is  included that the claims of the group do not stand 
or fall together and, in  the argument under paragraph (c)(8) of this 
section, appellant explains why  the claims of the group are believed to 
be separately patentable. Merely pointing  out differences in what the 
claims cover is not an argument as to why the claims  are separately 
patentable. 

        (8)   Argument. The contentions of appellant with respect to each 
of  the issues presented for review in paragraph (c)(6) of this section, 
and the  basis therefor, with citations of the authorities, statutes, and 
parts of the  record relied on. Each issue should be treated under a 
separate heading. 
(i)   For each rejection under 35 U.S.C. 112, first paragraph, the 
argument  shall specify the errors in the rejection and how the first 
paragraph of 35  U.S.C. 112 is complied with, including, as appropriate, 
how the specification  and drawings, if any, 

        (A)   describe the subject matter defined by each of the rejected 
claims, 
        (B)   enable any person skilled in the art to make and use the 
subject  matter defined by each of the rejected claims, and 

        (C)   set forth the best mode contemplated by the inventor of 
carrying  out his or her invention. 

(ii)    For each rejection under 35 U.S.C. 112, second paragraph, the 
argument  shall specify the errors in the rejection and how the claims 
particularly point  out and distinctly claim the subject matter which 
applicant regards as the  invention. 

(iii)     For each rejection under 35 U.S.C. 102, the argument shall 
specify  the errors in the rejection and why the rejected claims are 
patentable under  35 U.S.C. 102, including any specific limitations in the 
rejected claims which  are not described in the prior art relied upon in 
the rejection. 

(iv)    For each rejection under 35 U.S.C. 103, the argument shall specify 
 the errors in the rejection and, if appropriate, the specific limitations 
in  the rejected claims which are not described in the prior art relied on 
in the  rejection, and shall explain how such limitations render the 
claimed subject  matter unobvious over the prior art. If the rejection is 
based upon a combination  of references, the argument shall explain why 
the references, taken as a whole,  do not suggest the claimed subject 
matter, and shall include, as may be appropriate,  an explanation of why 
features disclosed in one reference may not properly  be combined with 
features disclosed in another reference. A general argument that all the 
limitations  are not described in a single reference does not satisfy the 
requirements of  this paragraph. 

(v)   For any rejection other than those referred to in paragraphs 
(c)(8)(i)  to (iv) of this section, the argument shall specify the errors 
in the rejection  and the specific limitations in the rejected claims, if 
appropriate, or other  reasons, which cause the rejection to be in error. 

        (9)   Appendix. An appendix containing a copy of the claims 
involved  in the appeal. 

        (d)   If a brief is filed which does not comply with all the 
requirements  of paragraph (c) of this section, appellant will be notified 
of the reasons  for non-compliance and provided with a period of one month 
within which to  file an amended brief.  If appellant does not file an 
amended brief during  the one-month period, or files an amended brief 
which does not overcome all  the reasons for non-compliance stated in the 
notification, the appeal will  stand dismissed. 

        Where the brief is not filed, but within the period allowed for 
filing  the brief an amendment is presented which places the case in 
condition for  allowance, the amendment may be entered since the 
application retains its pending  status during said period. Amendments 
should not be included in the appeal  briefs. Amendments should be filed 
as separate papers. See MPEP 
w 1207, w 1215.01, and w 1215.02. 

TIME FOR FILING APPEAL BRIEF 

        37 CFR 1.192(a) provides 2 months from the date of the Notice of 
Appeal  for the patent owner to file an appeal brief in a reexamination 
proceeding.  In a reexamination proceeding, the time period can be 
extended only under the  provisions of 37 CFR 1.550(c). See also MPEP w 2274. 

        The usual period of time in which appellant must file his  or her 
brief  is 2 months from the date of appeal; i.e., the Mail Room date of 
receipt of  the Notice of Appeal. See MPEP w 512. However, 37 CFR 1.192(a) 
alternatively  permits the brief to be filed "within the time allowed for 
response to the  action appealed from, if such time is later." These time 
periods may be extended  under 
37 CFR 1.136(a), and if 37 CFR 1.136(a) has been exhausted, 37 CFR 
1.136(b). 
        In the event that the appellant finds that he or she is unable to 
file  a brief within the time allotted by the rules, he or she may file a 
petition,  with fee, to the examining group, requesting additional time 
under 37 CFR 1.136(a).  Additional time in excess of 4 months will not be 
granted unless extraordinary  circumstances are involved under 37 CFR 
1.136(b). The time extended is added  to the calendar day of the original 
period, as opposed to being added to the  day it would have been due when 
said last day is a Saturday, Sunday, or Federal holiday. 

        If after an appeal has been filed, but prior to the date for 
submitting  a brief, an interference is declared, appellant's brief need 
not be filed while  the interference is pending, unless the 
examiner-in-chief has consented to  prosecution of the application 
concurrently with the interference.  See MPEP  w 2315. Absent such 
concurrent prosecution, the examiner may, after the interference  has 
terminated and the files have been returned to him or her, (1) set a 
2-month  period for filing the brief, or (2) withdraw the final rejection 
of the appealed  claims in order to enter an additional rejection on a 
ground arising out of  the interference. See for example MPEP w 1109.02 
and w 2363.03. Also, if the  appellant was the losing party in the 
interference, claims which were designated  as corresponding to the lost 
count or counts will stand finally disposed of  under 37 CFR 1.663. 

        When an application is revived after abandonment for failure on 
the  part of the appellant to take appropriate action after final 
rejection, and  the petition to revive was accompanied by a Notice of 
Appeal, appellant has 2 months, from the mailing date of the 
Commissioner's affirmative decision  on the petition, in which to file the 
appeal brief. 

        With the exception of the institution of an interference or 
suggestion  and timely copying of claims for an interference, the appeal 
ordinarily will  be dismissed if the brief is not filed within the period 
provided by 37 CFR  1.192(a) or within such additional time as may be 
properly extended. 
        Attention is directed to the fact that a brief must be filed to 
preserve  appellant's right to the appealed claims, notwithstanding 
circumstances such  as: 

        (1)   the possibility or imminence of an interference involving 
the  subject application, but not resulting in withdrawal of the final 
rejection  prior to the brief's due date; 

        (2)   the filing of a petition for supervisory action under 37 CFR 
 1.181; 

        (3)   the filing of an amendment, even if it is one which  the 
examiner  previously has indicated may place one or more claims in 
condition for allowance,  unless the examiner, in acting on the amendment, 
disposes of all 
issues on appeal; 

        (4)   the receipt of a letter from the examiner stating that 
prosecution  is suspended, without the examiner withdrawing the final 
rejection from which  appeal has been taken, instituting an interference 
with the subject application,  or suggesting claims for an interference. 

        Although failure to file the brief within the permissible time 
will  result in dismissal of the appeal, if any claims stand allowed, the 
application  does not become abandoned by the dismissal, but is returned 
to the examiner  for action on the allowed claims. See MPEP 
w 1215.04. If there are no allowed claims, the case is abandoned as of the 
 date the brief was due. Claims which have been objected to as dependent 
from  a rejected claim do not stand allowed. In a reexamination proceeding 
failure  to file the brief will result in the issuance of the certificate 
under 37 CFR  1.570. 

        If the time for filing a brief has passed and the application has 
consequently  become abandoned, the applicant may petition to revive the 
application, as  in other cases of abandonment, and to reinstate the 
appeal; if the appeal is  dismissed, but the application is not abandoned, 
the petition would be to reinstate  the claims and the appeal, but a 
showing equivalent to that in a petition to  revive under 37 CFR 1.137 is 
required. 

        See MPEP w 1215.04.  In either event, a proper brief must be filed 
 before the petition will be considered on its merits. 

        Where the dismissal of the appeal is believed to be a mistake 
resulting  from inadvertence, filing a petition, pointing out the error, 
may be sufficient. 
        A fee under 37 CFR 1.17(f) is required when the brief is filed. 37 
 CFR 1.192(a) requires the submission of three copies of the appeal brief. 
APPEAL BRIEF CONTENT 

        The brief, as well as every other paper relating to an appeal, 
should  indicate the number of the examining group to which the 
application or patent  under reexamination is assigned and the serial 
number. When the brief is received,  it is forwarded to the group where it 
is entered in the file, and referred  to the examiner. 

        Appellants are reminded that their briefs in appealed cases must 
be  responsive to every ground of rejection stated by the examiner, 
including new  grounds stated in his or her answer. 

        Where an appellant fails to respond by way of brief or reply brief 
 to any ground of rejection, appellant shall be notified by the examiner 
that  he or she is allowed 
1 month to correct the defect by filing a supplemental brief.  Oral 
argument  at a hearing will not remedy such deficiency of a brief. The 
fact that appellant  may consider a ground to be clearly improper does not 
justify a failure to  point out to  the Board the reasons for that belief. 

        The mere filing of any paper whatever entitled as a brief cannot 
necessarily  be considered to be in compliance with 37 CFR 1.192. The rule 
requires that  the brief must set forth the authorities and arguments 
relied upon. Since it  is essential that the Board should be provided with 
a brief fully stating the  position of the appellant with respect to each 
issue involved in the appeal  so that no search of the record is required 
in order to determine that position,  37 CFR 1.192(c) now requires that 
the brief contain specific items, as discussed  below. 

        An exception to the requirement that all the items specified in 37 
 CFR 1.192(c) be included in the brief is made if the application or 
reexamination  proceeding is being prosecuted by the appellant pro se; 
i.e., there is no attorney  or agent of record, and the brief was neither 
prepared nor signed by a registered  attorney or agent.  The brief of a 
pro se appellant which does not contain  all of the items, (1) to (9), 
specified in 37 CFR 1.192(c) will be accepted  as long as it substantially 
complies with the requirements of items (1)-(4), 
(8), and (9). If the brief of a pro se appellant is accepted, it will be 
presumed  that all the claims of a rejected group of claims stand or fall 
together unless  an argument is included in the brief that presents 
reasons as to why the appellant  considers one or more of the claims in 
the rejected group to be separately  patentable from the other claims in 
the group. 

        A distinction must be made between the lack of any argument and 
the  presentation of arguments which carry no conviction. In the former 
case dismissal  is in order, while in the latter case a decision on the 
merits is made, although  it may well be merely an affirmance based on the 
grounds relied on by the examiner. 
        Appellant must traverse every ground of rejection set forth in the 
 final rejection. Oral argument at the hearing will not remedy such a 
deficiency  in the brief. Ignoring or acquiescing in any rejection, even 
one based upon  formal matters which could be cured by subsequent 
amendment, will invite a  dismissal of the appeal as to the claims 
affected. If this involves all of  the claims, the proceedings in the case 
are considered terminated as of the date of the dismissal. Accordingly, 
any application filed thereafter will not  be copending with the 
application on appeal. If in his or her brief, appellant  relies on some 
reference, he or she is expected to provide the Board with at  least one 
copy of it. 

        The specific items required by 37 CFR 1.192(c) are: 

        (1)   Real party in interest. A statement identifying the real 
party  in interest, if the party named in the caption of the brief is not 
the real  party in interest. If appellant does not name a real party in 
interest, the  examiner will assume that the party named in the caption of 
the brief is the  real party in interest, i.e., the owner at the time the 
brief is being filed. 
        The identification of the real party in interest will allow 
members  of the Board to comply with ethics regulations associated with 
working in matters  in which the member has a financial interest to avoid 
any potential conflict  of interest. While the examiner will assume that 
the real party in interest  is the individual or individuals identified in 
the caption when the real party  in interest is not explicitly set out in 
the brief, nevertheless, the Board  may require the appellant to 
explicitly name the real party in interest. When  the Board elects to 
require an explicit statement, ordinarily an order will  be entered 
setting a 1-month period for response to the Board's requirement 
(37 CFR 1.192(d)).  An entire new brief need not be filed. Rather, a 
simple  paper identifying the real party in interest or explicitly stating 
that the  appellant is the real party in interest will suffice. Failure to 
timely respond  to the Board's requirement may result in dismissal of the 
appeal. 
        (2)   Related appeals and interferences. A statement identifying 
by  application number and filing date all other appeals or interferences 
known  to appellant, the appellant's legal representative, or assignee 
which will  directly affect or be directly affected by or have a bearing 
on the Board's  decision in the pending appeal.  The appeal or 
interference number should also  be listed.  The statement is not intended 
to be limited to copending applications.  If appellant does not identify 
any other appeals or interferences, the examiner  will presume that there 
are none. While the examiner will assume that there  are no related cases 
when no related case is explicitly set out in the brief,  nevertheless, 
the Board may require the appellant to explicitly identify any  related 
case.  When the Board elects to require an explicit statement, ordinarily 
an order will be entered setting a 1-month period for response to the 
Board's 
 requirement (37 CFR 1.192(d)). An entire new brief need not be filed. 
Rather,  a simple paper identifying all related cases, or explicitly 
stating that there  are no related cases will suffice. Failure to timely 
respond to the Board's  requirement may result in dismissal of the appeal. 

        (3)   Status of Claims.  A statement of the status of all the 
claims  in the application, or patent under reexamination; i.e., for each 
claim in  the case, appellant must state whether it is cancelled, allowed, 
rejected,  etc. Each claim on appeal must be identified. 

        (4)   Status of Amendments. A statement of the status of any 
amendment  filed subsequent to final rejection; i.e., whether or not the 
amendment has  been acted upon by the examiner, and if so, whether it was 
entered, denied  entry, or entered in part. This statement should be of 
the status of the amendment  as understood by the appellant. 

        Items (3) and (4) are included in 37 CFR 1.192(c) to avoid 
confusion  as to which claims are on appeal, and the precise wording of 
those claims,  particularly where the appellant has sought to amend claims 
after final rejection.  The inclusion of items (3) and (4) in the brief 
will advise the examiner of  what the appellant considers the status of 
the claims and post-final rejection  amendments to be, allowing any 
disagreement on these questions to be resolved  before the appeal is taken 
up for decision by the Board. 

        (5)   Summary of Invention. A concise explanation of the 
invention  defined in the claims involved in the appeal. This explanation 
is required  to refer to the specification by page and line number, and, 
if there is a drawing,  to the drawing by reference characters. Where 
applicable, it is preferable  to read the appealed claims on the 
specification and any drawing. While reference  to page and line of the 
specification may require somewhat more detail than  simply summarizing 
the invention, it is considered important to enable the  Board to more 
quickly determine where the claimed subject matter is described  in the 
application. Since the claims are read in light of the disclosure, 
compliance  with this requirement does not limit the claims. 

        (6)   Issues. A concise statement of the issues presented for 
review.  Each stated issue should correspond to a separate ground of 
rejection which  appellant wishes the Board of Patent Appeals and 
Interferences to  review.  While the statement of the issues must be 
concise, it should not be so concise  as to omit the basis of each issue. 
For example, the statement of an issue  as "Whether claims 1 and 2 are 
unpatentable" would not comply with 37 CFR 1.192(c) 
(6). Rather, the basis of the alleged unpatentability would have to be 
stated,  e.g., "Whether claims 1 and 2 are unpatentable under 35 U.S.C. 
103 over Smith  in view of Jones," or "Whether claims 1 and 2 are 
unpatentable under 35 U.S.C.  112, first paragraph, as being based on a 
nonenabling disclosure." The statement  would be limited to the issues 
presented, and should not include any argument  concerning the merits of 
those issues. 

        (7)   Grouping of Claims. For each ground of rejection which 
appellant  contests and which applies to a group of two or more claims, 
the Board shall  select a single claim from the group and shall decide the 
appeal as to the  ground of rejection on the basis of that claim alone, 
unless a statement is  included that the claims of the group do not stand 
or fall together and, in  the argument section of the brief (37 CFR 
1.192(c)(8)), appellant explains  why the claims of the group are believed 
to be separately patentable. Merely  pointing out differences in what the 
claims cover is not an argument as to  why the claims are separately 
patentable. If an appealed ground of rejection  applies to more than one 
claim and appellant considers the rejected claims  to be separately 
patentable, 37 CFR 1.192(c) (7) requires appellant to state  that the 
claims do not stand or fall together, and to present in the appropriate 
part or parts of the argument under 
37 CFR 1.192(c) (8) the reasons why they are considered separately 
patentable. 

        The absence of such a statement and argument is a concession by 
the  applicant that, if the ground of rejection were sustained as to any 
one of  the rejected claims, it will be equally applicable to all of them. 
37 CFR 1.192(c) 
(7) is consistent with the practice of the Court of Appeals for the 
Federal  Circuit indicated in such cases as In re Sernaker, 702 F.2d 989, 
217 USPQ 1 
(Fed. Cir. 1983), and In re King, 801 F.2d 1324, 231 USPQ 136 (Fed. Cir. 
1986).  37 CFR 1.192(c) (7) requires the inclusion of reasons in order to 
avoid unsupported  assertions of separate patentability. The reasons may 
be included in the appropriate  portion of the "Argument" section of the 
brief. For example, if claims 1 to  4 are rejected under 35 U.S.C. 102 and 
appellant considers claim 4 to be separately  patentable from claims 1 to 
3, he or she should so state in the "Grouping of  claims" section of the 
brief, and then give the reasons for separate patentability  in the 35 
U.S.C. 102 portion of the "Argument" section (i.e., under 37 CFR 1.192(c) 
(8) (iii)). 

        The Board panel assigned to the case will normally select the 
broadest  claim in a group and will consider only that claim, even though 
the group may  contain two broad claims, such as ABCDE and ABCDF. The same 
would be true in  a case where there are both broad method and apparatus 
claims on appeal in  the same group. The rationale behind the rule, as 
amended, is to make the appeal  process as efficient as possible. Thus, 
while the Board will consider each  separately argued claim, the work of 
the Board can be done in a more efficient  manner by selecting a single 
claim from a group of claims when the appellant  does not meet the 
requirements of 
37 CFR 1.192(c)(7). 

        (8)   Argument.  The appellant's contentions with respect to each 
of  the issues presented for review in 
37 CFR 1.192(c) (6), and the basis for those contentions, including 
citations  of authorities, statutes, and parts of the record relied on, 
should be presented  in this section. 

        Included in this paragraph are five subparagraphs, (i) to (v). 
Subparagraphs 
(i) to (iv) concern the grounds of rejection most commonly involved in ex 
parte  appeals, namely, 35 U.S.C. 112, first and second paragraphs, 
35 U.S.C. 102, and 35 U.S.C. 103. Subparagraph (v) is a general provision 
concerning  grounds of rejection not covered by subparagraphs (i) to (iv). 

        The purpose of subparagraphs (i) to (iv) is to ensure that the 
appellant's  argument concerning each appealed ground of rejection will 
include a discussion  of the questions relevant to that ground. It is 
believed that compliance with  the requirements of the particular 
subparagraphs which are pertinent to the  grounds of rejection involved in 
an appeal will be beneficial both to the Patent  and Trademark Office and 
appellants. It will not only facilitate a decision  by the Board of Patent 
Appeals and Interferences by enabling the Board to determine  more quickly 
and precisely the appellant's position on the relevant issues,  but also 
will help appellants to focus their arguments on those issues. 
        For each rejection not falling under subparagraphs (i) to (iv), 
subparagraph 
(v) provides that the argument should specify the specific limitations in 
the  rejected claims, if appropriate, or other reasons, which cause the 
rejection  to be in error. This language recognizes that for some grounds 
of rejection,  it may not be necessary to specify particular claim 
limitations; for example,  a rejec- tion under 35 U.S.C. 101, as in Ex 
parte Hibberd, 
227 USPQ 443 (BPAI 1985). 

        (9)   Appendix. An appendix containing a copy of the claims 
involved  in the appeal. 

        The copy of the claims required in the brief Appendix by 37 CFR 
1.192(c) 
(9) should be a clean copy and should not include any brackets or 
underlining  as required by 37 CFR 1.121(b). 

        For sake of convenience, the copy of the claims involved should be 
 double spaced and the appendix should start on  a new page. 

        37 CFR 1.192(c) merely specifies the minimum requirements for a 
brief,  and does not prohibit the inclusion of any other material which an 
appellant  may consider necessary or desirable. For example, a list of 
references, table  of contents, table of cases, etc. A brief is in 
compliance with 37 CFR 1.192(c)  as long as it includes items (1) to (9) 
in the order set forth (with the appendix,  item (9), at the end). The 
question of whether a brief complies with the rule  is a matter within the 
jurisdiction of the examiner. 

REVIEW OF BRIEF BY EXAMINER 

        37 CFR 1.192(d) provides that if a brief is filed which does not 
comply  with all the requirements of paragraph (c), the appellant will be 
notified  of the reasons for noncompliance and given a 1-month time limit 
within which  to file an amended brief.  The appeal will be dismissed if 
the appellant does  not timely file an amended brief, or files an amended 
brief which does not  overcome all the reasons for noncompliance of which 
the appellant was notified.  An amended brief is timely if filed within the 
1-month time limit or within any extension of the original period to file 
the  brief. 

        It should be noted that 37 CFR 1.192(c) (7) requires the appellant 
 to perform two affirmative acts in his brief in order to have the 
separate  patentability of a plurality of claims subject to the same 
rejection considered.  The appellant must (1) state that the claims do not 
stand or fall together  and (2) present arguments why the claims subject 
to the same rejection are  separately patentable. Where the appellant does 
neither, the claims will be  treated as standing or falling together. 
Where, however, the appellant (i)  omits the statement required by 37 CFR 
1.192(c) (7) yet presents arguments  in the argument section of the brief 
or (ii) includes the statement required  by 37 CFR 1.192(c) (7) to the 
effect that one or more claims do not stand or  fall together (i.e., that 
they are separately patentable) yet does not offer  argument in support 
thereof in the argument section of the brief, the appellant  should be 
notified of the noncompliance as per 
37 CFR 1.192(d). Ex parte Schier, 21 USPQ 2d 1016 (Bd. Pat. App. & Int. 
1991);  Ex parte Ohsumi, 21 USPQ 2d 1020 (Bd. Pat. App. & Int. 1991). 

        The question of whether a brief complies with a rule is a matter 
within  the jurisdiction of the examiner. Under 37 CFR 1.192(d), the 
appellant may  file an amended brief to correct any deficiencies in the 
original brief. Moreover,  if appellant disagrees with the examiner's 
holding of noncompliance, a petition  under 37 CFR 1.181 may be filed. 

        37 CFR 1.192 (a) also contains the following sentence: 

        "Any argument or authorities not included in the brief will be 
refused  consideration by the Board of Patent Appeals and Interferences 
unless good  cause is shown." 

        This sentence emphasizes that all arguments and authorities which 
an  appellant wishes the Board to consider should be included in the 
brief. It  should be noted that arguments not presented in the brief and 
made for the  first time at the oral hearing are not 
normally entitled to consideration. In re Chiddix, 
209 USPQ 78 (Comm'r Pat. 1980); Rosenblum v. 
Hiroshima, 220 USPQ 383 (Comm'r Pat. 1983). 

        37 CFR 1.192 (a) is not intended to preclude the filing of a 
supplemental  paper if a new argument or authority should become available 
or relevant after  the brief was filed. Examples of such circumstances 
would be where a pertinent  decision of a court or other tribunal was not 
published until after the brief  was filed, or where a particular argument 
or authority was not applicable to  any of the grounds of rejection in the 
final rejection, but was relevant to  a new point of argument raised in 
the examiner's answer. 

        Once the brief has been filed, a petition to suspend proceedings 
may  be considered on its merits, but will be granted only in exceptional 
cases,  such as where the writing of the examiner's answer would be 
fruitless or the proceedings would work  a hardship on the appellant. 

        For reply brief see MPEP w 1208.03. 

        Form Paragraphs 12.08-12.17 should be used in letters concerning 
the  appeal brief. 

W 12.08       Appeal Dismissed __  Fee Unpaid, No Allowed Claims 

        The appeal under 37 CFR 1.191 is dismissed because the fee for 
filing  the Brief, as required under 37 CFR 1.17(f), was not submitted or 
timely submitted  and the period for obtaining an extension of time to 
file the brief under 37  CFR 1.136 (a) has expired. 

        As a result of this dismissal, the application is ABANDONED since 
there  are no allowed claims. 

Examiner Note: 

        Claims which have been indicated as containing allowable subject 
matter  but are objected to as being dependent upon a rejected claim are 
to be considered  as if they were rejected. See MPEP w 1215.04. 

W 12.09       Appeal Dismissed __ Fee Unpaid, Allowed Claims 

        The appeal under 37 CFR 1.191 is dismissed because the fee for 
filing  the appeal brief, as required under 37 CFR 1.17(f), was not 
submitted or timely  submitted and the period for obtaining an extension 
of time to file the brief  under 37 CFR 1.136 (a) has expired. 

        As a result of this dismissal, the application will be further 
processed  by the examiner since it contains allowed claims. Prosecution 
on the merits  remains CLOSED. 

Examiner Note: 

        Claims which have been indicated as containing allowable subject 
matter  but are objected to as being dependent upon a rejected claim are 
to be considered  as if they were rejected. See MPEP w 1215.04. 

W 12.09.01  Appeal Dismissed - Allowed Claims, Formal Matters Remaining 
        In view of applicant's failure to file a brief within the time 
prescribed  by 37 CFR 1.192, the appeal stands dismissed and the 
proceedings as to the  rejected claims are considered terminated. See 
37 CFR 1.197(c). 

        This application will be passed to issue on allowed claim(s) [1] 
provided  the following formal matters are corrected. Prosecution is 
otherwise closed. 
        [2]. 

        Applicant is required to make the necessary corrections within a 
shortened  statutory period set to expire ONE MONTH from the mailing date 
of this letter. 
Examiner Note: 

        1.This paragraph should only be used if the formal matters cannot 
be  handled by examiner's amendment. See MPEP w 1215.04. 

        2. Claims which have been indicated as containing allowable 
subject  matter but are objected to as being dependent upon a rejected 
claim are to  be considered as if they were rejected. See MPEP w 1215.04. 

W 12.10       Extension To File Brief __ Granted 

        The request for an extension of time under 37 CFR 1.136(b) for 
filing  the appeal brief under 37 CFR 1.192 filed on [1] has been approved 
for [2]. 

Examiner Note: 

        This paragraph should only be used when 37 CFR 1.136(a) is not 
available  or has been exhausted, such as in litigation reissues. 

W 12.11       Extension To File Brief __ Denied 

        The request for an extension of time under 37 CFR 1.136(b) for 
filing  the appeal brief under 37 CFR 1.192 filed on [1] has been 
disapproved because  no sufficient cause for the extension has been shown. 

Examiner Note: 

        This paragraph should only be used when 37 CFR 1.136(a) is not 
available  or has been exhausted, such as in litigation reissues. 

W 12.12       Brief Defective - Unsigned 

        The appeal brief filed on [1] is defective because it is unsigned. 
 A ratification properly signed is required. 

Applicant is required to make the proper ratification within a TIME LIMIT 
of  ONE MONTH from the date of this 
letter or within TWO MONTHS from the date of the notice of appeal or 
within  the time allowed for response to the action 
ppealed from, whichever is longer, to avoid dismissal of the 
appeal.  NO EXTENSION OF THIS ONE MONTH TIME LIMIT MAY BE GRANTED UNDER 
EITHER  37 CFR 1.136 (a) OR (b), but the TWO MONTH period for filing 
the brief may be extended to a maximum of SIX MONTHS. 

W 12.13       Brief Defective  - Three Copies Lacking 

        The appeal brief filed on [1] is defective because the three 
copies  of the brief required under 37 CFR 1.192(a) have not been 
submitted. 
Applicant is required to supply the necessary copies within 
 a TIME LIMIT of ONE MONTH from the date of this let- 
ter or within TWO MONTHS from the date of the notice 
of appeal or within the time allowed for response to the 
 action appealed from, whichever is longer, to avoid dismis- 
sal of the appeal. NO EXTENSION OF THIS ONE 
MONTH TIME LIMIT MAY BE GRANTED UNDER 
EITHER 37 CFR 1.136 (a) OR (b), but the TWO MONTH 
 period for filing the brief may be extended to a maximum 
 of SIX MONTHS. 

W 12.16       Brief Unacceptable __ Fee Unpaid 

        The appeal brief filed on [1] is unacceptable because the fee 
required  under 37 CFR 1.17(f) was not timely filed. 

        This application will become abandoned unless applicant obtains an 
 extension of time under 37 CFR 1.136(a) to file the appeal brief. The 
date  on which the brief, the fee for filing the brief, the petition under 
37 CFR 1.136(a), and the petition fee are filed will be the date of the 
response  and also the date for determining the period of extension and 
the corresponding  amount of the fee. In no case may an applicant obtain 
an extension for more  than FOUR MONTHS under 37 CFR 1.136(a), beyond the 
TWO MONTH  period ** for 
 filing the appeal brief. 

W 12.17       Brief Unacceptable __ Not Timely Filed 

        The appeal brief filed on [1] is unacceptable because it was filed 
 after the expiration of the required period for response. 

        This application will become abandoned unless applicant obtains an 
 extension of time under 37 CFR 1.136(a). The date on which the brief, the 
fee for filing the brief, the petition under 37 CFR 1.136(a), and the 
petition  fee are filed will be the date of the response and also the date 
for determining  the period of extension and the corresponding amount of 
the fee. In no case  may an applicant  obtain an extension for more than 
FOUR MONTHS under 37 CFR  1.136(a) beyond the TWO MONTH  period ** for 
filing the appeal brief. 
        A form suitable for noting noncompliance with 
37 CFR 1.192(c) 

W 12.69       Heading for Notice Under 37 CFR 1.192(c) 

NOTIFICATION OF NONCOMPLIANCE WITH THE REQUIREMENTS OF 37 CFR 1.192(c) 
Examiner Note: 

        Use form PTOL-90 and follow with one or more of form paragraphs 
12.69.01  -12.77 and conclude with paragraph 12.78. 

W 12.69.01  Statement in Brief That Claims Do Not Stand or Fall Together - 
 Supporting Reasons Lacking 

        The brief includes a statement that claims [1] do not stand or 
fall  together but fail to present reasons in support thereof as required 
under 37  CFR  1.192(c)(*>7<).  MPEP w 1206. 

Examiner Note: 

        1.  This form paragraph should be used only when no supporting 
reasons  are presented in the brief. If reasons are presented, even if 
they are not  agreed with, use form paragraph 12.55.02 instead of this 
form paragraph. Reasons  for disagreement are discussed in either the 
"Grounds of Rejection" or in the  "Response to Argument" portion of the 
examiner's answer. 

        2.  If the brief contains neither a statement that claims do not 
stand  or fall together nor reasons in support thereof, use paragraph 
12.55.10  in  examiner's answer. 

W 12.70       Missing Section Headings 

        The brief does not contain the items of the brief required by 37 
CFR 1.192(c) under the appropriate headings and/or in the order indicated. 
 [1]. 

Examiner Note: 

        In bracket 1 insert an indication of the missing headings or 
errors  in the order of items. 

W  12.70.01   Defect in Statement of Real Party in Interest 

        The brief does not contain a heading identifying the real party in 
 interest as required by 37 CFR 1.192(c)(1). 

 W   12.70.02     Defect in Statement of Related Appeals and Interferences 
        The brief does not contain a heading identifying the related 
appeals  and interferences directly affected by or having a bearing on the 
decision  in the pending appeal as required by 37 CFR 1.192(c)(2). 

W 12.71       Defect in Statement of Status of Claims 

        The brief does not contain a statement of the status of all the 
claims,  pending or cancelled, and identify the claims appealed as 
required by 37 CFR 1.192(c) (3). [1]. 

Examiner Note: 

    In bracket 1 insert an indication of the missing claim status 
information. 
W 12.72       Defect in Statement of Status of Amendment Filed After Final 
 Rejection 

        The brief does not contain a statement of the status of an 
amendment  filed subsequent to the final rejection as required by 37 CFR 
1.192(c) (4).  [1]. 

Examiner Note: 

        In bracket 1 insert an indication of the amendment of which the 
status  is missing. 

W 12.73       Defect in Explanation of the Invention 

        The brief does not contain a concise explanation of the invention 
defined  in the claims involved in the appeal, which refers to the 
specification by  page and line number, and to the drawing, if any, by 
reference characters as  required by 37 CFR 1.192(c) (5). [1]. 

Examiner Note: 

        In bracket 1 insert an indication of the missing explanation. 
W 12.74       Defect in Statement of the Issues 

        The brief does not contain a concise statement of the issues 
presented  for review as required by 37 CFR 1.192(c) (6). [1] 

Examiner Note: 

        In bracket 1, insert an indication of the missing concise 
statement  of the issues presented for review. 

W 12.76       Defects in the Arguments of the Appellant 

        The brief does not contain arguments of the appellant with respect 
 to each of the issues presented for review in 37 CFR 1.192(c) (6), and 
the  basis therefor, with citations of the authorities, statutes, and 
parts of the  record relied on as required by 37 CFR 1.192(c) (8). 

Examiner Note: 

        Include one or more of form paragraphs 12.76.01 - 12.76.06 which 
apply. 
W 12.76.01  Separate Heading for Each Issue 

        Each issue should be treated under a separate heading. 

W 12.76.02  Defect in 112, First Paragraph Rejection Argument 

        The brief does not contain for each rejection under 35 U.S.C. 112, 
 first paragraph, an argument which specifies the errors in the rejection 
and  how the first paragraph of 35  U.S.C. 112 is complied with, including 
 how  the specification and drawings, if any, [1]. 

Examiner Note: 

        In bracket 1 insert the following wording which is appropriate: 
        a. "describe the subject matter defined by each of the rejected 
claims" 

        b. "enable any person skilled in the art to make and use the 
subject  matter defined by each of the rejected claims" 

        c. "set forth the best mode contemplated by the inventor of 
carrying  out his or her invention" 

W 12.76.03  Defect in 112, Second Paragraph, Rejection Argument 

        The brief does not contain for each rejection under 35 U.S.C. 112, 
 second paragraph, an argument which specifies the errors in the rejection 
and  how the claims particularly point out and distinctly claim the 
subject matter  which applicant regards as the invention. 

W 12.76.04  Defect in 102 Rejection Argument 

        The brief does not contain for each rejection under 35 U.S.C. 102, 
 an argument which specifies the errors in the rejection and why the 
rejected  claims are patentable under 35 U.S.C. 102, including any 
specific limitations  in the rejected claims which are not described in 
the prior art relied upon  in the rejection. 

Examiner Note: 

        Specify claim(s) for which no argument of error was specified. 
W 12.76.05  Defect in 103 Rejection Argument 

        The brief does not contain for each rejection under 35 U.S.C. 103, 
 an argument which specifies the errors in the rejection and, if 
appropriate,  the specific limitations in the rejected claims which are 
not described in  the prior art relied on in the rejection, and an 
explanation how such limitations  render the claimed subject matter 
unobvious over the prior art. If the rejection  is based upon a 
combination of references, the argument must explain why the  references, 
taken as a whole, do not suggest the claimed subject matter, and  shall 
include, as may be appropriate, an explanation of why features disclosed 
in one reference may not properly be combined with features disclosed in 
another  reference. A general argument that all the limitations are not 
described in  a single reference does not satisfy the requirements of 37 
CFR 1.192(c) (8) 
(iv). 

Examiner Note: 

        Specify claim(s) for which no argument of error was specified. 
W 12.760.6  For Any Rejection Other Than Those Referred to in Paragraphs 
(c) 
(8) (i) to (iv) of 37 CFR 1.192 for Which No Argument or Error Was 
Specified. 
        The brief does not contain an argument which specifies the errors 
in  the rejection and the specific limitations in the rejected claims, if 
appropriate,  or other reasons, which cause the rejection to be in error. 

Examiner Note: 

        Specify claim(s) for which no argument of error was specified. 
W 12.77       No Copy of Appealed Claims in Appendix 

        The brief does not contain a copy of the claims involved in the 
appeal  in the appendix. 

W 12.78       Period for Response Under 37 CFR 1.192(d) 

        Appellant is required to comply with the provisions of 37 CFR 
1.192(c). 
 Appellant is given a TIME LIMIT of ONE MONTH from the date of this letter 
 or any time remaining in the period under 37 CFR 1.192(a) for filing a 
new  complete brief. If a new brief that fully complies with 37 CFR 
1.192(c) is  not timely submitted, the appeal will be dismissed as of the 
date of expiration  of the period provided by 37 CFR 1.192(a). NO 
EXTENSION OF THIS ONE MONTH TIME  LIMIT MAY BE OBTAINED UNDER EITHER 37 
CFR 1.136(a) OR (b), 
but the original TWO-MONTH period under 37 CFR 1.192(a) for filing the 
brief  may be extended under 37 CFR 1.136(a) up to SIX MONTHS from the 
date of the  notice of appeal. 

Examiner  Note: 

        This paragraph has limited application. To notify appellant of 
noncompliance with 37 CFR 1.192(c) examiner must use form 
PTOL 462. 


1207    Amendment Filed With or After Appeal [R-2] 


        To expedite the resolution of cases under final rejection, an 
amendment  filed at any time after final rejection but before an appeal 
brief is filed,  may be entered upon or after filing of an appeal provided 
the total effect  of the amendment is to (1) remove issues from appeal, 
and/or (2) adopt examiner  suggestions. Of course, if the amendment 
necessitates a new search, raises  the issue of new matter, presents 
additional claims without cancelling a corresponding  number of finally 
rejected claims, or otherwise introduces new issues, it will  not be 
entered. Examiners must respond to all nonentered amendments after   final 
rejection, and indicate the status of each claim of record or proposed, 
including the designation of claims that would be entered on the filing of 
 an appeal if filed in a separate paper. It should be noted that an 
amendment  placing a case in condition for allowance will be enterable by 
the examiner  at any stage prior to forwarding the answer on appeal. 
Except where an amendment  merely cancels claims and/or adopts examiner 
suggestions, removes issues from  appeal, or in some other way requires 
only a cursory review by the examiner,  compliance with the requirement of 
a showing under 
37 CFR 1.116(b) will be expected of all amendments after final rejection. 
        If after appeal has been taken, a paper is presented which on its 
face  clearly places the application in condition for allowance, such 
paper should  be entered and a notice of allowability (PTOL-*>37<) or an 
examiner's amendment  promptly sent to applicant. 

        In accordance with the above, the brief must be directed to the 
claims  and to the record of the case as they appeared at the time of the 
appeal, but  it may, of course, withdraw from consideration on appeal any 
claims or issues  as desired by applicant. 

        A timely filed brief will be referred to the examiner for 
consideration  of its propriety as to the appeal issues and for 
preparation of an examiner's  answer if the 
brief is proper and the application is not allowable. The 
examiner's answer may withdraw the rejection of claims or any objection or 
 requirement as desired by the examiner. Note MPEP w 1208.02. No new 
ground  of rejection or objection should be incorporated in the examiner's 
answer without  express approval in each case by the supervi- 
sory primary examiner. See MPEP w 1002.02(d)(3) and MPEP w 1208.01. See 
MPEP  w 714.13 for procedure on handling amendments filed after final 
action and  before appeal. 

        Note that 37 CFR 1.192(c)(4) requires a statement as to the status 
 of any amendment filed subsequent to the final rejection, MPEP w 1206. 

1208    Examiner's Answer [R-2] 


37 CFR 1.193.       Examiner's answer. 

        (a)   The primary examiner may, within such time as may be 
directed  by the Commissioner, furnish a written statement in answer to 
the appellant's  brief including such explanation of the invention claimed 
and of the references  and grounds of rejection as may be necessary, 
supplying a copy to the appellant.  If the primary examiner shall find 
that the appeal is not regular in form or  does not relate to an 
appealable action, he shall so state and a petition from  such decision 
may be taken to the Commissioner as provided in w 1.181. 
        (b)   The appellant may file a reply brief directed only to such 
new  points of argument as may be raised in the examiner's answer, within 
two months  from the date of such answer. The new points of argument shall 
be specifically  identified in the reply brief. If the examiner determines 
that the reply brief  is not directed only to new points of argument 
raised in the examiner's answer,  the examiner may refuse entry of the 
reply brief and will so notify the appellant.  If the examiner's answer 
expressly states that it includes a new ground of  rejection, appellant 
must file a reply thereto within two months from the date  of such answer 
to avoid dismissal of the appeal as to the claims subject to  the new 
ground of rejection; such reply may be accompanied by any amendment  or 
material appropriate to the new ground. See w 1.136(b) for extensions of 
time for filing a reply brief in a patent application and w 1.550(c) for 
extensions  of time in a reexamination proceeding. 

APPEAL CONFERENCE 

        Appealed cases in which the brief has been filed may be reviewed 
by  conference in the group, those participating being (1) a primary 
examiner, 
(2) the examiner charged with preparation of the examiner's answer, and 
(3)  another examiner, known as the conferee, having sufficient experience 
to be  of assistance in the consideration of the merits of the issues on 
appeal. 
        Nonexamining time is allowed for all examiners participating in an 
 appeal conference. This includes the examiner whose application or 
reexamination  proceeding is being reviewed during the conference. 

        The group director has the discretion as to whether or not appeal 
conferences  are necessary in the examining group and, if so, in which 
instances they are  to be held. If an appeal conference is held, the SPE 
should be informed thereof. 
        If a conference is held, the primary examiner responsible for 
signing  the examiner's answer should weigh the arguments of the other 
examiners, but  it is his or her responsibility to make the final 
decision. During the conference,  consideration should be given to the 
possibility of dropping cumulative art  rejections and eliminating 
technical rejections of doubtful value. 
        On the examiner's answer, the third person (conferee) should place 
 his or her initials below those of the examiner who prepared the answer, 
thus:  ABC (conf.). This does not indicate, necessarily, concurrence with 
the position  taken in the answer. 

        If the examiner charged with the responsibility of preparing the 
answer  reaches the conclusion that the appeal should not be forwarded and 
the primary  examiner approves, no conference is held. 

        Before preparing the answer, the examiner should make certain that 
 all amendments approved for entry have in fact been physically entered. 
The  Clerk of the Board will return to the group any application in which 
approved  amendments have not been entered. 

ANSWER 

        The examiner should furnish the appellant with a written 
statement  in answer to the appellant's brief within 2 months after the 
receipt of the  brief by the examiner. 

        The answer should contain a response to the allegations or 
arguments  in the brief and should call attention to any errors in 
appellant's copy of  the claims. Grounds of rejection not argued in the 
examiner's answer are usually  treated as having been dropped, but may be 
considered by the Board if it desires  to do so. The examiner should treat 
affidavits, declarations, or exhibits in  accordance with 37 CFR 1.195, 
reporting his or her conclusions only on those  admitted. Any affidavits 
or declarations in the file swearing behind a patent  should be clearly 
identified by the examiner as being considered under either  37 CFR 1.131 
or 37 CFR 1.608(b). The distinction is important since the Board  will 
usually consider holdings on 37 CFR 1.131 affidavits or declarations but 
not holdings on 37 CFR 1.608(b) affidavits or declarations in appeal 
cases. 
        If the brief fails to respond to any or all grounds of rejection 
advanced  by the examiner, or comply with 37 CFR 1.192(c), the indicated 
procedure for  handling such briefs set forth in MPEP w 1206 under "Appeal 
Brief Content"  should be followed. 

        Because of the practice of the Patent and Trademark Office in 
entering  amendments after final action under justifiable circumstances 
for purposes  of appeal, many cases coming before the Board  for 
consideration contain claims  which are not the claims treated in the 
examiner's final rejection. They are  either entirely new claims or 
amended versions of the finally rejected claims  or both. The new claims 
or finally rejected claims, as amended, frequently  contain limitations 
not in the claims treated in the final rejection and the  arguments in the 
appellant's brief are directed to the new claims. Under such 
circumstances, the mere reference in the examiner's answer to the final 
rejection  for a statement of his or her position would leave the Board, 
insofar as the  new claims are concerned, with an uncrystallized issue and 
without the benefit  of the examiner's view, which complicates the task of 
rendering a decision. 


        It also frequently happens that an examiner will state a position 
in  the answer in a manner that represents a shift from the position 
stated in  the final rejection without indicating that the last stated 
position supersedes  the former. Such a situation confuses the issue and 
likewise poses difficulties  for the Board since it is not clear exactly 
what the examiner's ultimate position  is. 

        If there is a complete and thorough development of the issues at 
the  time of final rejection, it is possible to save time in preparing the 
examiner's  answer required by 37 CFR 1.193 by taking any of the following 
steps: 
        A. Examiners may incorporate in the answer their statement of the 
grounds  of rejection merely by reference to the final rejection (or a 
single other  action on which it is based, MPEP w 706.07).  Only those 
statements of grounds  of rejection as appear in a single prior action may 
be incorporated by  reference. 
 An examiner's answer should not refer, either directly or indirectly, to 
more  than one prior Office action. Statements of grounds of rejection 
appearing  in actions other than the aforementioned single prior action 
should be quoted  in the answer. The page and paragraph of the final 
action or other single prior  action which it is desired to incorporate by 
reference should be explicitly  identified. Of course, if the examiner 
feels that some further explanation  of the rejection is necessary, he or 
she should include it in the answer but  ordinarily he or she may avoid 
another recital of the issues and another elaboration  of the grounds of 
rejection. The answer should also include any necessary rebuttal  of 
arguments presented in the appellant's brief if the final action does not 
adequately meet the arguments. 

        B. If the appellant fails to describe the invention, as required 
by  37 CFR 1.192, the examiner is no longer required to provide these 
omissions  under 37 CFR 1.192(d).  The examiner should, however, clarify 
the description  and explanation in the answer if he or she feels it 
necessary to present properly  and effectively his or her case to the Board. 

        The examiner should reevaluate his or her position in the light of 
 the arguments presented in the brief, and should expressly withdraw any 
rejections  not adhered to, especially if the rejection was made in an 
action which is  incorporated by reference. This should be done even 
though any rejection not  repeated and discussed in the answer may be 
taken by the Board as having been  withdrawn. 

        >If a new ground of rejection is to be made, MPEP w1208.01 should 
be  consulted before writing the examiner's answer.< 

        All correspondence with the Board, whether by the examiner or the 
appellant,  must be on the record. No unpublished decisions which are 
unavailable to the  general public by reason of 35 U.S.C. 122 can be cited 
by the examiner or the  appellant except that either the examiner or the 
appellant has the right to  cite an unpublished decision in an application 
having common ownership with  the application on appeal. 

        When files are forwarded, soft copies and prints of references 
therein  should remain in the file wrapper. 

        If an examiner's answer is believed to contain a new 
interpretation  or application of the existing patent law, the examiner's 
answer, application  file, and an explanatory memorandum should be 
forwarded to the group director  for consideration; see MPEP w 1003.  If 
approved by the group director, the  examiner's answer should be forwarded 
to the Office of the Assistant Commissioner  for Patents for final approval. 

        Briefs filed on or after April 21, 1995, must comply with amended 
37  CFR 1.192, and all examiner's answers filed in response to such briefs 
must comply with the guidelines set  forth below. 

        Requirements for Examiner's Answer 

        The examiner's answer is required to include, >under appropriate 
headings,<  in the order indicated, the following items: 

        (1)   Real Party in Interest.  A statement acknowledging the 
identification  of the real party in financial interest or indicating that 
the party named  in the caption of the brief is the real party in 
interest, or if the brief  contains a proper heading but no real party in 
interest is identified, a statement  that it is presumed that the party 
named in the caption of the brief is the  real party in interest. While 
the examiner will make this presumption, appellant  should note that the 
Board has discretion to require an explicit statement  on this item from 
appellant. 

        (2)   Related Appeals and Interferences. A statement acknowledging 
 appellants identification of related cases which will directly affect or 
be  directly affected by or have a bearing on the decision in the pending 
appeal,  or if the appellant sets forth the required heading 
but does not identify any related appeals or interferences, a statement 
that  it is presumed that there are none. While the examiner will make 
this presumption,  appellant should note that the Board has discretion to 
require an explicit  statement on this item from appellant. 

        (3) Status of Claims.  A statement of whether the examiner agrees 
or  disagrees with the statement of the status of claims contained in the 
brief  and a correct statement of the status of all the claims pending or 
cancelled,  if necessary.  If the examiner  considers that some or all of 
the finally rejected  claims are allowable, see MPEP w 1208.02. 

        (4) Status of Amendments. A statement of whether the examiner 
disagrees  with the statement of the status of amendments contained in the 
brief, and  an explanation of any disagreement. 

        (5) Summary of Invention. A statement of whether the examiner 
disagrees  with the summary of invention contained in the brief, an 
explanation of why  the examiner disagrees, and a correct summary of 
invention, if necessary. 
        (6) Issues.  A statement of whether the examiner disagrees with 
the  statement of the issues in the brief and an explanation of why the 
examiner  disagrees, including: 

        (i)   Identification of any issues which are petitionable rather 
than  appealable, and 

        (ii)    Identification of any issues or grounds of rejection on 
appeal  which the examiner no longer considers applicable. 

        (7) Grouping of Claims.  A statement of whether the examiner 
disagrees  with any statement in the brief that certain claims do not 
stand or fall together,  and, if the examiner disagrees, an explanation as 
to why those claims are not  separately patentable. 

        (8) Claims Appealed.  A statement of whether the copy of the 
appealed  claims contained in the appendix to the brief is correct and if 
not, a correct  copy of any incorrect claim. 

        (9) References of Record. A listing of the references of record 
relied  on, and in the case of nonpatent references, the relevant page or 
pages. 
        (10) New Prior Art .  A statement of whether or not any new  prior 
 art is being applied and a listing of each such prior art reference being 
cited  for a new ground of rejection in the examiner's answer, and in the 
case of  nonpatent  prior art, the relevant page or pages. 

        (11) Grounds of Rejection.  For each ground of rejection 
applicable  to the appealed claims, an explanation of the ground of 
rejection, or reference  to a final rejection or other single prior action 
for a clear exposition of  the rejection. 

        (i)   For each rejection under 35 U.S.C. 112, first paragraph, the 
 examiner's answer, or the single prior action, shall explain how the 
first  paragraph of 35 U.S.C. 112 is not complied with, including, as 
appropriate,  how the specification and drawings, if any, (a) do not 
describe the subject  matter defined by each of the rejected claims, (b) 
would not enable any person  skilled in the art to make and use the 
subject matter defined by each of the  rejected claims without undue 
experimentation, and (c) do not set forth the  best mode contemplated by 
the appellant of carrying out his or her invention. 

        (ii)    For each rejection under 35 U.S.C. 112, second paragraph, 
the  examiner's answer, or single prior action, shall explain how the 
claims do not particularly point out and distinctly  claim the subject 
matter which applicant regards as the invention. 
        (iii)     For each rejection under 35 U.S.C. 102, the examiner's 
answer,  or single prior action, shall explain why the rejected claims are 
anticipated  or not patentable under 35 U.S.C. 102, pointing out where all 
of the specific  limitations recited in the rejected claims are found in 
the prior art relied  upon in the rejection. 

        (iv)    For each rejection under 35 U.S.C. 103, the examiner's 
answer,  or single prior action, 

        shall state the ground of rejection and point out where each of 
the  specific limitations recited in the rejected claims is found in the 
prior art  relied on in the rejection, 

        shall identify any difference between the rejected claims and the 
prior  art relied on and 

        shall explain how and why the claimed subject matter is rendered 
unpatentable  over the prior art. If the rejection is based upon a 
combination of references,  the examiner's answer, or single prior action, 
shall explain the rationale  for making the combination. 

        (v) For each rejection under 35 U.S.C. 102 or 103 where there are 
questions  as to how limitations in the claims correspond to features in 
the prior art  even after the examiner complies with the requirements of 
(9)(iii) and (iv)  above, the examiner shall compare at least one of the 
rejected claims feature  by feature with the prior art relied on in the 
rejection. The comparison shall  align the language of the claim side-by- 
side with a reference to the specific  page, line number, drawing 
reference number, and quotation from the prior art,  as appropriate. 

        (vi) For each rejection, other than those referred to in 
paragraphs 
(i) to (v) of this section, the examiner's answer, or single prior action, 
 shall specifically explain the basis for the particular rejection. 
        (12) New Ground of Rejection.  A statement of whether or not any 
new  ground of rejection is being made in the examiner's answer and a 
complete statement  and explanation of any such new ground. The 
requirements of section (11) shall  be complied with for any new ground of 
rejection. 

        (13) Response to Argument.  A statement of whether the examiner 
disagrees  with each of the contentions of appellant in the brief with 
respect to the  issues presented and an explanation of the reasons for 
disagreement with any  such contention.  If any ground of rejection is not 
argued and responded to  by appellant, the response shall point out each 
claim affected. 

        (14) Period of Response to New Ground of Rejection.  A statement 
setting  the period for appellant to file a reply to any new ground of 
rejection, if  necessary. 

        A form suitable for the examiner's answer is as follows: 

W 12.50       Heading for Examiner's Answer 

EXAMINER'S  ANSWER 

This is in response to appellant's brief on appeal filed [1]. 

W 12.50.01  Real Party in Interest 

        (1)   Real Party in Interest. 

Examiner Note: 

        Follow this paragraph with paragraph 12.50.02 or 12.50.03.. 
W 12.50.02.   Acknowledgement of Appellant's Identification of a Real 
Party  in Interest in the Brief. 

        A statement identifying the real party in interest is contained in 
 the brief. 

 W  12.50.03.      No Identification of a Real Party in Interest in the 
Brief. 
        The brief does not contain a statement identifying the Real Party 
in  Interest.  Therefore, it is presumed that the party named in the 
caption of  the brief is the Real Party in Interest, i.e., the owner at 
the time the brief  was filed.  The Board, however, may exercise its 
discretion to require an explicit  statement as to the Real party in interest. 

 W  12.50.04    Related Appeals and Interferences 

        (2)  Related appeals and interferences. 

Examiner Note: 

        Follow this paragraph with paragraph 12.50.05 or paragraph 
12.50.06. 
W 12.50.05  Acknowledgement of the Appellant's Statement Identifying the 
Related  Appeals and Interferences. 

        A statement identifying the related appeals and interferences 
which  will directly affect or be directly affected by or have a bearing 
on the decision  in the pending appeal is contained in the brief. 

W 12.50.06.   No Related Appeals and Interferences Identified. 

        The brief does not contain a statement identifying any related 
appeals  and interferences which will directly affect or be directly 
affected by or  have a bearing on the decision in the pending appeal. 
Therefore, it is presumed  that there are none. The Board, however, may 
exercise its discretion to require  an explicit statement as to the 
existence of any related appeals and interference. 
W 12.51       Status of Claims 

(3)  Status of claims. 

Examiner Note: 

        Follow this paragraph with one or more of paragraphs 12.51.01 - 
12.51.10. 
W 12.51.01  Agreement With Statement of Status of Claims 

        The statement of the status of claims contained in the brief is 
correct. 
W 12.51.02  Disagreement With Statement of Status of Claims 

        The statement of the status of claims contained in the brief is 
incorrect. 
 A correct statement of the status of the claims is as follows: 

Examiner Note: 

        1.  Indicate the area of disagreement and the reasons for the 
disagreement. 
        2.  One or more of paragraphs 12.51.03 - 12.51.10 must follow this 
 paragraph. 

W 12.51.03  Claims on Appeal 

        This appeal involves claim [1]. 

Examiner Note: 

        1.  In bracket 1, all the claims still on appeal should be 
specified.  Do not list claims which are no longer rejected. 

        2.  Also use form paragraphs 12.51.04 - 12.51.06 when appropriate 
to  clarify the status of the claims on appeal that were incorrectly 
listed in  the brief. 

W 12.51.04  Status of Claims on Appeal - Substituted 

        Claim [1] substituted for finally rejected claims. 

 Examiner Note: 

        All substituted claims on appeal must be identified if the brief 
incorrectly  lists any substituted claims. 

W 12.51.05  Status of Claims on Appeal - Amended 

        Claim [1] amended subsequent to the final rejection. 

Examiner Note: 

        All claims amended after final rejection must be identified if the 
 brief incorrectly lists any claims amended after final rejection. 
W 12.51.06  Status of Claims on Appeal - Substituted and Amended 

        Claim [1] substituted for finally rejected claims and claim [2] 
amended  subsequent to the final rejection. 

Examiner Note: 

        All claims substituted or amended after final rejection must be 
identified  if the brief incorrectly lists any claims substituted or 
amended after final  rejection. 

W 12.51.07  Claims Allowed 

        Claim [1] allowed. 

Examiner Note: 

        All allowed claims must be identified if the brief incorrectly 
lists  any allowed claims. 

W 12.51.08  Claims Objected To 

        Claim [1] objected to as being dependent upon a rejected base 
claim,  but would be allowable if rewritten in independent form including 
all of the  limitations of the base claim and any intervening claims. 

Examiner Note: 

        All objected to claims must be identified if the brief incorrectly 
 lists any claims objected to. 

W 12.51.09  Claims Withdrawn From Consideration 

        Claim [1] withdrawn from consideration as not directed to the 
elected  [2]. 

Examiner Note: 

        All withdrawn claims must be identified if the brief incorrectly 
lists  any withdrawn claims. 

W 12.51.10  Claims Cancelled 

        Claim  [1] been cancelled. 

Examiner Note: 

        All cancelled claims must be identified if the brief incorrectly 
lists  any cancelled claims. 

W 12.52       Status of Amendments. 

(4)  Status of Amendments After Final. 

Examiner Note: 

        Identify status of all amendments submitted after final rejection. 
 Use one or more of paragraphs 12.52.01 - 12.52.04, if appropriate. 
W 12.52.01  Agreement With Appellant's Statement of the Status of 
Amendments  After Final 

        The appellant's statement of the status of amendments after final 
rejection  contained in the brief is correct. 

W 12.52.02  Disagreement With Appellant's Statement of the Status of 
Amendments  After Final 

        The appellant's statement of the status of amendments after final 
rejection  contained in the brief is incorrect. 

Examiner Note: 

        Form paragraphs 12.52.03 and/or 12.52.04 must follow this 
paragraph  to explain the reasons for disagreeing with appellant's 
statement of the status  of the amendments. 

W 12.52.03  Amendment After Final Entered 

        The amendment after final rejection filed on [1] has been entered. 
Examiner's Note: 

        >1.<In bracket 1, insert the date of any entered >after final< 
amendment. 
        >2.Use this form paragraph for each after final amendment which 
has  been entered.< 

W 12.52.04  Amendment After Final Not Entered 

        The amendment after final rejection filed on [1] has not been 
entered. 
Examiner's Note: 

        >1.<In bracket 1, insert the date of any >after  final<amendment 
 denied entry. 

        >2.   Use this form paragraph for each after final amendment which 
 has been denied entry.< 

W 12.52.05  No Amendments After Final 

        No amendment after final has been filed. 

W 12.53       Summary of Invention 

(5)  Summary of invention. 

Examiner Note: 

        Follow this paragraph with either paragraph 12.53.01 or 12.53.02. 
W 12.53.01  Agreement With the Summary of Invention 

        The summary of invention contained in the brief is correct. 
W 12.53.02  Disagreement With the Summary of Invention 

        The summary of invention contained in the brief is deficient 
because  [1]. 

Examiner Note: 

        In bracket 1, explain the deficiency of the appellant's  summary 
of  the invention.  Include a correct summary of the invention if 
necessary for  a clear understanding of the claimed invention. 

W 12.54       Issues 

(6)  Issues. 

Examiner Note: 

        Follow  this paragraph with  paragraph 12.54.01, 12.54.02, or 
12.54.03. 
W 12.54.01  Agreement With Appellant's Statement of the Issues 

        The appellant's statement of the issues in the brief is correct. 
W 12.54.02  Disagreement With Appellant's Statement of the Issues 
        The appellant's statement of the issues in the brief is 
substantially  correct. The changes are as follows: [1]. 

Examiner Note: 

        In bracket 1 explain the changes with the appellant's statement of 
 the issues in the brief including: 

        (i) an identification of any issues which are petitionable rather 
than  appealable, and/or 

        (ii) an  identification of any issues or grounds of rejection on 
appeal  which the examiner no longer considers applicable. 

        (iii) any change not covered in (i) and (ii). 

W 12.54.03  Nonappealable Issue in Brief 

        Appellant's brief presents arguments relating to [1]. This issue 
relates  to petitionable subject matter under 37 CFR 1.181 and not to 
appealable subject  matter. See MPEP ##  1002 and 1201. 

W 12.55       Grouping of Claims 

(7)  Grouping of Claims. 

Examiner Note: 

        Follow this paragraph with paragraph 12.55.01, 12.55.02 or 
12.55.04  for each grouping of claims (i.e., each ground of rejection 
which appellant  contests). 

W 12.55.01  No Statement and Reasons in Brief That Claims Do Not Stand or 
Fall  Together 

        The rejection of claims [1] stand or fall together because 
appellant's  brief does not include a statement that this grouping of 
claims does not stand  or fall together and reasons in support thereof. 
See 37 CFR 1.192(c) (7). 
Examiner Note: 

        1. Use this paragraph for each grouping of claims (i.e., ground of 
 rejection which appellant contests) wherein the brief  includes neither a 
statement  that a grouping of claims does not stand or fall together nor 
arguments in  support thereof. 

        2. If the brief includes a statement that a grouping of claims 
does  not stand or fall together but does not provide reasons, as set 
forth in 37 CFR 1.192(c)(7), notify appellant of the noncompliance using 
paragraphs  12.69, 12.69.01 and 12.78. 

W 12.55.02  No Agreement with Brief Why Claims Do Not Stand or Fall 
Together 
        The appellant's statement in the brief that certain claims do not 
stand  or fall together is not agreed with because [1]. 

Examiner Note: 

        In bracket 1 explain why the claim grouping listed in the brief is 
 not agreed with by the examiner and why, if appropriate, e.g., the claims 
as  listed by the appellant are not separately patentable. 

W 12.55.04  Brief Gives Reasons Why Claims Do Not Stand or Fall Together 
        Appellant's brief includes a statement that claims [1] do not 
stand  or fall together and provides reasons as set forth in 37 CFR 
1.192(c)(7) and 
(c)(8). 

W 12.56       Claims Appealed 

(8)  Claims appealed. 

Examiner Note: 

        Follow this paragraph with paragraph 12.56.01, 12.56.02, or 
12.56.03. 
 W  12.56.01    Copy of the Appealed Claims in the Appendix Is Correct. 
        The copy of the appealed claims contained in the appendix to the 
brief  is correct. 

W 12.56.02  Copy of the Appealed Claims in the Appendix is Substantially 
Correct. 
        A substantially correct copy of appealed claim [1] appears on page 
 [2] of the appendix to the appellant's brief. The  minor errors are as 
follows:  [3]. 

Examiner Note: 

        1. In bracket 1, indicate the claim or claims with small errors. 
        2. In bracket 3, indicate the nature of the errors. 

W 12.56.03  Copy of the Appealed Claims in the Appendix Contain 
Substantial  Errors. 

        Claim [1] contain(s) substantial errors as presented in the 
appendix  to the brief. Accordingly, claim [2] correctly written in the 
appendix to the 
 examiner's answer. 

Examiner Note: 

        1. Appellant should include a correct copy of all appealed claims 
in  the Appendix to the brief. See 37 CFR 1.192(c)(9). 

        2. Attach a correct copy of any incorrect claims as an Appendix to 
 the examiner's answer and draw a diagonal line in pencil through the 
incorrect  claim in the Appendix of the appellant's appeal brief. 

        3. Rather than using this form paragraph, if the errors in the 
claim(s)  are significant, appellant should be required to submit a 
corrected brief using  form paragraphs 12.69, 12.77, and 12.78, as well as 
any other paragraphs 12.70  to 12.76 as may be appropriate. Where the 
brief includes arguments directed  toward the errors, a corrected brief 
should always be required. 

W 12.57       Prior Art of Record 

(9)  Prior Art of record. 

Examiner Note: 

        Follow this paragraph 12.57 with either paragraph 12.57.01 or 
12.57.02>.< 
W 12.57.01  No Prior Art Relied Upon 

        No prior art is relied upon by the examiner in the rejection of 
claims  under appeal. 

W 12.57.02  Listing of the Prior Art of Record Relied Upon 

        The following is a listing of the prior art of record relied upon 
in  the rejection of claims under appeal. 

Examiner Note: 

        1. Use the following format for providing information on each 
reference  cited: 

                Number             Name           Date 

        2. The following are example formats for listing reference 
citations: 
                2,717,847           VERAIN          9-1955 

                1,345,890          MUTHER (Fed. Rep. of Germany)  7-1963 
                (Figure 2 labeled as prior art in this document) 
        3. See MPEP w 707.05(e) for additional examples>.< 

W 12.58       New Prior Art 

(10)  New prior art. 

Examiner Note: 

        Follow this paragraph with either paragraph 12.58.01 or  12.58.02. 
W 12.58.01  No New Prior Art 

        No new prior art has been applied in this examiner's answer. 
W 12.58.02  New Reference Applied 

        [1] been applied in a new ground of rejection in this examiner's 
answer  and listed below: 

        [2] 

Examiner Note: 

        1.  SPE approval for the citation of new art is required. See also 
 paragraph *>12.60.02<. 

        2.  In bracket 1 insert either  "A new reference has" or "New 
references  have." 

        3.  In bracket 2 list the new reference(s) applied in a new 
rejection  in the examiner's answer. 

        4.  List all patent document references of record by number, name, 
 and date. For example: 1,736,481   Smith   6 - 1987>.< 

        5.  In the case of nonpatent references, list the relevant page or 
 pages. 

        6.  Copies of newly cited references should be supplied with the 
examiner's  answer. 

        7.  A PTO-892 must be completed for the file for use by the 
printer  in case of issuance of the application as a patent. 

W 12.59       Grounds of Rejection 

(11)    Grounds of rejection. 

        The following ground(s) of rejection are applicable to the 
appealed  claims. 

Examiner Note: 

        Explain each ground of rejection or refer to the single prior 
Office  action which clearly sets forth the rejection and complies with 
appropriate  paragraphs i - vi below: 

        (i)   For each rejection under 35 U.S.C. 112, first paragraph, the 
 examiner's answer, or the single prior action, shall explain how the 
first  paragraph of 35 U.S.C. 112 is not complied with, including, as 
appropriate,  how the specification and drawings, if any, (a) do not 
describe the subject  matter defined by each of the rejected claims, (b) 
would not enable any person  skilled in the art to make and use the 
subject matter defined by each of the  rejected claims, and (c) do not set 
forth the best mode contemplated by the  appellant of carrying out his or 
her invention. 

        (ii)    For each rejection under 35 U.S.C. 112, second paragraph, 
the  examiner s answer, or single prior action, shall explain how the 
claims do  not particularly point out and distinctly claim the subject 
matter which applicant  regards as the invention. 

        (iii)     For each rejection under 35 U.S.C. 102, the examiner's 
answer,  or single prior action, shall explain why the rejected claims are 
anticipated  or not patentable under 35 U.S.C. 102, pointing out where all 
of the specific  limitations recited in the rejected claims are found in 
the prior art relied  upon in the rejection. 

        (iv)    For each rejection under 35 U.S.C. 103, the examiner 's 
answer,  or single prior action, shall state the ground of rejection and 
point out where  each of the specific limitations recited in the rejected 
claims is found in  the prior art relied on in the rejection, shall 
identify any difference between  the rejected claims and the prior art 
relied on and shall explain how the claimed  subject matter is rendered 
unpatentable over the prior art. If the rejection  is based upon a 
combination of references, the examiner's answer, or single  prior action, 
shall explain the rationale for making the combination. 
        (v) For each rejection under 35 U.S.C. 102 or 103 where there may 
be  questions as to how limitations in the claims correspond to features 
in the  prior art, the examiner, in addition to the requirements of 
(11)(iii) and (iv)  above, should compare at least one of the rejected 
claims feature by feature  with the prior art relied on in the rejection. 
The comparison shall align the  language of the claim side by side with a 
reference to the specific page, line  number, drawing reference number and 
quotation from the prior art, as appropriate. 
        (vi)    For each rejection, other than those referred to in 
paragraphs 
(i) to (v) of this section, the examiner's answer, or single prior action, 
 shall specifically explain the basis for the particular rejection. 
W 12.60       New Ground of Rejection 

(12)  New ground of rejection. 

Examiner Note: 

        Follow this paragraph with either paragraph 12.60.01 or 
12.60.02>.< 
W 12.60.01  No New Ground of Rejection 

        This examiner's answer does not contain any new ground of 
rejection. 
W 12.60.02  New Ground of Rejection 

        This examiner's answer contains the following NEW GROUND  OF 
REJECTION. 
Examiner Note: 

        1.  Include a complete statement and explanation of the new 
ground.  The requirements as set forth in paragraph 12.59 relating to 
"grounds of rejection"  must also be complied with for any new ground of 
rejection. 

        2.  This heading should precede each new ground of rejection made 
in  an examiner's answer >which must conclude with form paragraph 12.62<. 
        3.  Approval by the SPE is required. 

W 12.61       Response to Argument 

(13)  Response to argument. 

Examiner Note: 

        1.  If an issue raised by appellant was fully responded to under 
the  "Grounds of Rejection," no additional response is required here. 

        2.  If an issue has been raised by appellant that was not fully 
responded  to under the "Grounds of Rejection," a full response must be 
provided after  this paragraph. 

W 12.62       Period of Response To New Ground of Rejection 

(14)  Period of response to new ground of rejection. 

        In view of the new ground of rejection, appellant is given a 
period  of TWO MONTHS from the mailing date of this examiner's answer 
within which  to file a reply to any new ground of rejection. Such reply 
may include any  amendment or material appropriate to the new ground of 
rejection. Prosecution  otherwise remains closed. Failure to respond to 
the new ground of rejection  will result in dismissal of the appeal of the 
claims so rejected. 

W 12.63       Request to Present Oral Arguments 

        The examiner requests the opportunity to present arguments at the 
oral  hearing. 

Examiner Note: 

        1.  Use this form paragraph only if: 

        a.  an oral hearing has been requested by appellant, and 

        b.  the primary examiner intends to present an oral argument. 
        2. If appellant's request for an oral hearing has been made before 
 or with the brief, this form paragraph may be included at the end of the 
examiner's  answer. 

        3. If appellant's request for an oral hearing has been made after 
the  examiner's answer, this form paragraph may be included in a 
supplemental examiner's  answer, an acknowledgment of reply brief (see 
form paragraph 12.47), or in  a separate letter on a form PTOL-90. 

W 12.79       Examiner's Answer, Conclusion 

        For the above reasons, it is believed that the rejections should 
be  sustained. 


Respectfully  submitted, 

        ** 

        For a case having a patentability report, see MPEP w 705.01(a). 
        If the examiner requests an oral hearing, see >the PARTICIPATION 
BY  EXAMINER section in< MPEP w 1209, the request should appear in the 
last paragraph  of the examiner's answer. 

        **>Up to two examiners are permitted to attend any one hearing as 
observers,  where the case is related to the examiners' field of 
technology.  Such attendance  by examiners is considered to be desirable 
for the experience and educational  benefits to the examiners. 

        If the appellant has requested an oral hearing, and the examiner 
wishes  to attend as an observer, the examiner should include a statement 
that he/she  will attend the hearing as the last paragraph of the 
examiner's answer of supplemental  answer.  Also, the examiner should make 
a notation "Examiner will attend (but  not participate in) hearing" on the 
face of the file wrapper below the box  for the examiner's name.< 


1208.01       New Reference, New Objection, or New Ground of Rejection in 
Examiner's Answer 

        At the time of preparing the answer to an appeal brief, the 
examiner  may decide that he or she should cite a new reference, raise a 
new objection,  or apply a new ground of rejection (new reference, double 
patenting, statutory  bar, or other reason for rejection) against some or 
all of the appealed claims.  All answers citing new references or 
containing new grounds of rejection or  objection must be routed over the 
supervisory primary examiner's desk for review  and signature. If there is 
the citation of new references, the answer will  be mailed by the group 
and will include copies of the new references. Also,  a PTO-892 listing 
any new references must be completed for the file for use  by the printer 
in case of issuance as a patent. The Board will return to the  group 
director's office any answer containing (1) a newly cited reference or 
(2) a new ground of rejection, where such answer does not bear  the 
supervisory  primary examiner's signature. 

        In order to introduce a new ground of rejection, it is necessary 
either  to reopen the ex parte prosecution before the examiner or to 
include the new  rejection in the  examiner's answer, depending on 
existing circumstances. The choice of action to be followed will depend on 
such factors as 
(1) the history of the prosecution, 
(2) the number of claims affected, (3) the importance of 
 the new ground of rejection, (4) the significance of the new reference, 
and 
(5) the nature of the response to be expected.  For example, if the 
reference  is basic and materially better in meeting all of the claims, 
reopening of the  prosecution and making the action final would ordinarily 
be approved if the  requirements for making an action final under MPEP w 
706.07(a) are met. Should  appellant desire later to have the Board review 
the examiner's new final action,  the appellant must file a new Notice of 
Appeal and a new brief. On the other  hand, if the new reference 
anticipates some but not all of the claims or supplies  a minor lack in 
art already relied on, inclusion of the new ground in the examiner's 
answer would normally be the approved procedure. Of course, if the new 
ground  of rejection applies to any claim standing allowed the prosecution 
should be  reopened. 

        It is important that the new ground with regard to which the 
supervisory  primary examiner has been consulted be clearly indicated as 
such so that the  Board can readily identify those cases where appellant 
is entitled to a period  of 2 months for reply.  Any new reference should 
be cited under the caption  "New Reference(s)." 

        Likewise when a ground of rejection not involving a new reference 
is  raised for the first time in the answer after consultation with the 
supervisory  primary examiner, the fact that it is a new ground should be 
clearly indicated. 
 In this connection, it is noted that even if the same references are 
relied  on in the answer as were relied on in the final rejection, but the 
thrust of  the rejection is changed, the examiner should identify the 
rejection as a new  ground of rejection. See MPEP w 1208 under 
"Requirements for Examiner's Answer." 
        The examiner's answer which includes a new ground of rejection 
should  include Form Paragraph 12.60.2 and conclude with Form Paragraph 
12.62. 

1208.02       Withdrawal of Final Rejection 


        The examiner may withdraw the final rejection at any time prior to 
 the mailing of the examiner's answer. It is possible that after reading 
the  brief, the examiner may be convinced that some or all of the finally 
rejected  claims are allowable. Where the examiner is of the opinion that 
some of the  claims are allowable, he or she should so specify in the 
examiner's answer  and confine the arguments to the remaining rejected 
claims. If the examiner  finds, upon reconsideration, that all the 
rejected claims are allowable, or  where the appellant in the brief 
withdraws the appeal as to some of the rejected  claims and the examiner 
finds the remaining claims to be allowable, the examiner  should pass the 
case to issue. 

        In applications where an interference has resulted from  the 
applicant  copying claims from the patent which provided the basis for 
final rejection,  the rejection based on that patent should be withdrawn 
and the appeal dismissed  as to the involved claims. 


1208.03       Reply Brief [R-1] 


37 CFR 1.193.       Examiner's answer 

***** 

        (b)   The appellant may file a reply brief directed only to such 
new  points of argument as may be raised in the examiner's answer, within 
two months  from the date of such answer. The new points of argument shall 
be specifically  identified in the reply brief. If the examiner determines 
that the reply brief  is not directed only to new points of argument 
raised in the examiner's answer,  the examiner may refuse entry of the 
reply brief and will so notify the appellant.  If the examiner's answer 
expressly states that it includes a new ground of  rejection, appellant 
must file a reply thereto within two months from the date  of such answer 
to avoid dismissal of the appeal as to the claims subject to  the new 
ground of rejection; such reply may be accompanied by any amendment  or 
material appropriate to the new ground. See w 1.136(b) for extensions of 
time for filing a reply brief in a patent application and 
w 1.550(c) for extensions of time in a reexamination proceeding. 

***** 

        Under 37 CFR 1.193(b), the appellant may file a reply brief if the 
 examiner's answer contains new points of argument, but the appellant must 
file  a reply brief if the examiner's answer expressly states a new ground 
of rejection. 
        In those situations where a reply brief is clearly unwarranted 
(e.g.,  no new grounds of rejection or new points of argument in the 
examiner's answer),  the examiner should refuse entry of the reply brief, 
and notify the appellant  in writing in order to begin the 2-month period 
for petition under 37 CFR 1.181.  >If an amendment, affidavit, or 
declaration was filed with the Reply Brief,  the examiner must also notify 
the appellant in writing of whether it has been  entered, and if it is 
entered, the examiner must issue a supplement answer  in response. 

W 12.46       Notification of Non-entry of Reply Brief 

        The reply brief filed [1] has not been entered because it is not 
limited  to new points of argument or to new grounds of rejection raised 
in the examiner's answer. See MPEP w 1208.03. Appellant has TWO MONTHS 
from the  date of this communication to petition under 
37 CFR 1.181 to request entry of the reply brief. 

Examiner Note: 

        1.  Type on PTOL-90 

        2.  The examiner should initial and date the reply brief with an 
 indication that the reply brief should not be entered. 

        3.  For entry of the reply brief, see form paragraph 12.47.< 
(1) NEW POINTS OF ARGUMENT IN 
EXAMINER'S  ANSWER 

        Where new points of argument have been raised in the examiner's 
answer,  appellant may file a reply brief within 2 months from the date of 
such answer.  Appellants must clearly and specifically indicate in their 
reply briefs the  new points of argument "raised in the examiner's answer" 
to which said reply  briefs are directed. 37 CFR 1.193(b) does not permit 
general rebuttal of each  statement made in the examiner's answer. If the 
examiner determines that the  reply brief is not directed only to new 
points of argument raised in the examiner's  answer, the examiner may 
refuse entry of the reply brief and will so notify  the appellant. 

        Since the reply brief must be limited to any new points of 
argument  raised in the examiner's answer, compliance with the requirement 
of the second  sentence of 37 CFR 1.193(b) should facilitate both 
preparation of the reply  brief by appellant and consideration of the 
reply brief by the Patent and Trademark  Office. The reply brief is 
appropriately limited to new points of argument  raised in the examiner's 
answer because appellants have an obligation to present  arguments 
supporting their positions in their opening  briefs. Considering  an 
argument advanced for the first time in a reply brief would not only delay 
 the proceeding, but also would entail the risk of an improvident or 
ill-advised  opinion on the legal issues tendered. Von Brimer v. Whirlpool 
Corp., 536 F.2d 838, 846, 190 USPQ 528, 534 (9th Cir. 1976). 

(2) NEW GROUND OF REJECTION IN 
EXAMINER'S  ANSWER 

        Where a new ground of rejection is raised in the examiner's 
answer,  the appellant, under 37 CFR 1.193(b) has two months within which 
to file a  reply brief. The appellant's reply, insofar as the new ground 
of rejection  is concerned, may include any amendment or material 
appropriate to the new  ground. Consideration will be limited to 
amendments and facts pertinent to  the new ground of rejection. 

        An amendment limited to the new ground of rejection is entitled to 
 entry:  Ex parte Abseck et al., 133 USPQ 411 (Supervisory Examiner, 
1960). 
        Appellants are reminded that their briefs in appealed cases must 
be  responsive to every ground of rejection stated by the examiner, 
including new  grounds stated in the examiner's answer. 

        If the appellant does not file a timely reply brief in response to 
 a new ground of rejection expressly stated in the examiner's answer, the 
appeal  will be dismissed as to the claims which were made subject to the 
new ground  of rejection.  If the dismissal of the appeal applies to all 
the claims in  the application, the application will be held abandoned. 

        Where an appellant files a reply brief but fails to respond in the 
 reply brief to the new ground of rejection, appellant shall be notified 
by  the examiner that he or she is allowed one month to correct the defect 
by filing  a supplemental reply brief. Where this procedure has not been 
followed, the  Board should remand the application to the examiner for 
compliance. 
        The penultimate sentence of 37 CFR 1.193(b) provides that the 
reply  brief may be accompanied by any amendment or material appropriate 
to the new  ground of rejection. This makes it clear that any amendment or 
other material  appropriate to the new ground of rejection must be 
presented in a separate  paper, rather than in the reply itself. 37 CFR 
1.193(b) requires that the appellant  be notified if the reply brief is 
not entered because of noncompliance with  the rule, and an appellant who 
disagrees with that ruling may seek review by  way of a petition under 37 
CFR 1.181. 


1208.04       Supplemental Examiner's Answer  [R-1] 


        Normally, when a reply brief has been filed by the appellant in 
response  to a new point of argument in the  examiner's answer, the case 
should be forwarded  to the Board without any need for the preparation of 
a supple-mental answer  by the examiner. The examiner must notify 
appellant of consideration of the  reply brief, e.g., by using form 
paragraph 12.47. However, where good reason  to respond is apparent, the 
examiner may issue a supplemental answer in response  to the reply brief 
before forwarding the case to the Board.  If an amendment,  affidavit, or 
declaration was filed with the reply brief, the examiner must  notify the 
appellant in  writing whether it has been entered, and if it is entered, 
the examiner must issue a supplemental  answer in response. 

W 12.47       Acknowledgment of Reply Brief 

        The reply brief filed [1] has been entered and considered but no 
further  response by the examiner is deemed necessary. The application has 
been forwarded  to the Board of Patent Appeals and Interferences for 
decision on the appeal. 
Examiner Note: 

        1.  Type on PTOL-90 

        2. Do not use this form paragraph if a supplemental examiner's 
answer  is prepared. 

        3.  Where good reason to respond is apparent, the examiner may 
issue  a supplemental answer in response to the reply brief before 
forwarding the  case to the Board. If an amendment, affidavit, or 
declaration was filed with  the reply brief, the examiner must notify the 
appellant in writing whether  it has been entered, and if it is entered, 
the examiner must issue a supplemental  >examiner's< answer in response. 

        If the reply brief was filed in response to a new ground of 
rejection 
 in the examiner's answer, the examiner must issue a supplemental answer 
indicating  whether the new ground of rejection has been overcome, and, if 
it has not,  explaining why not. 


1209    Oral Hearing [R-2] 


37 CFR 1.194.       Oral hearing. 

        (a)   An oral hearing should be requested only in those 
circumstances  in which the appellant considers such a hearing necessary 
or desirable for  a proper presentation of his appeal. An appeal decided 
without an oral hearing  will receive the same consideration by the Board 
of Patent Appeals and Interferences  as appeals decided after oral hearing. 

        (b)   If appellant desires an oral hearing, appellant must file a 
written  request for such hearing accompanied by the fee set forth in 
w 1.17(g) within two months after the date of the examiner's answer.  If 
appellant  requests an oral hearing and submits therewith the fee set 
forth in w 1.17(g),  an oral argument may be presented by, or on behalf 
of, the primary examiner  if considered desirable by either the primary 
examiner or the Board.  See w  1.136(b) for extensions of time for 
requesting an oral hearing in a patent  application and w 1.550(c) for 
extensions of time in a reexamination proceeding. 
        (c)   If no request and fee for oral hearing have been timely 
filed  by the appellant, the appeal will be assigned for consideration and 
decision.  If the appellant has requested an oral hearing and has 
submitted the fee set  forth in w 1.17(g), a day of hearing will be set, 
and due  notice thereof given  to the appellant and to the primary 
examiner. A hearing will be held as stated  in the notice, and oral 
argument will be limited to twenty minutes for the  appellant and fifteen 
minutes for the primary examiner unless otherwise ordered  before the 
hearing begins. 

        37 CFR 1.194(b) provides that an appellant who desires an oral 
hearing  before the Board must request the hearing by filing a written 
request therefor,  accompanied by the appropriate fee, within 2 months 
after the date of the examiner's  answer. This time period applies 
regardless of whether or not the  examiner's  answer contains a new ground 
of rejection, and may only be extended by filing  a request under either 
37 CFR 1.136(b) or, if the appeal involves a reexamination  proceeding, 
under 37 CFR 1.550(c). 

        The request for oral hearing should be filed as a separate paper 
to  facilitate its consideration. A notice of hearing, stating the date, 
the time,  and the docket, is forwarded to the appellant in due course. If 
appellant fails  to confirm within the  time required in the notice of 
hearing, the appeal will  be removed from the hearing docket and assigned 
on brief in due course.  No  refund of the fee for requesting an oral 
hearing will be made.  Similarly,  after confirmation, if no appearance is 
made at the scheduled hearing, the  appeal will be decided on brief. Since 
failure to notify the Board of waiver  of hearing in advance of the 
assigned date results in a waste of the Board's  resources, appellant 
should inform the Board of a change in plans at the earliest  possible 
opportunity. 

        If appellant has any special request, such as for a particular 
date  or day of the week, this will be taken into consideration in setting 
the hearing,  if made known to the Board in advance, as long as such 
request does not unduly  delay a decision in the case and does not place 
an undue administrative burden  on the Board. 

        The appellant may also file a request, in a paper addressed to the 
 Chief Clerk of the Board, to present his/her arguments via telephone. The 
appellant  making the request will be required to bear the cost of the 
telephone call. 

        If the time set in the notice of hearing conflicts with prior 
commitments  or if subsequent events make appearance impossible, the 
hearing may be rescheduled  on written request. However, in view of the 
administrative burden involved  in rescheduling hearings and the potential 
delay which may result in the issuance  of any patent based on the 
application on appeal, postponements are discouraged  and will not be 
granted in the absence of convincing reasons in support of  the requested 
change. 

        Normally, 20 minutes are allowed for appellant to explain his or 
her  position. If appellant believes that additional time will be 
necessary, a request  for such time should be made well in advance and 
will be taken into consideration  in assigning the hearing date. The final 
decision on whether additional time is to be granted rests within the 
discretion  of the senior member of the panel hearing the case. 

        ** 

PARTICIPATION BY EXAMINER 

        >If the appellant has requested an oral hearing and the primary 
examiner  wishes to appear and present an oral argument before the Board, 
a request to  present oral argument must be included as the last paragraph 
of the examiners'  answer, using form paragraph 12.63.  See MPEP w 1208. 
If the appellant's request  for a hearing is filed after the examiner's 
answer, then the examiner's request  must be in the last paragraph of the 
supplemental answer.  In either case,  the examiner should also make a 
notation "Examiner Requests an Oral Hearing"  on the face of the file 
wrapper below the box for the examiner's name. < 
        In those appeals in which an oral hearing has been confirmed and 
either  the primary examiner or the Board has indicated a desire for the 
examiner to  participate in the oral argument, oral argument may be 
presented by the examiner  whether or not appellant appears. 

        After the oral hearing has been confirmed and the date set as 
provided  in 37 CFR 1.194(c), the application file will be delivered to 
the examiner  via the appropriate Group Director at least 2 weeks prior to 
the date of the  hearing and the examiner will be notified of the date of 
the hearing.  In those  cases where the Board requests the presentation of 
an oral argument by or on  behalf of the primary examiner, the Board's 
request may, where appropriate,  indicate specific points or questions to 
which the argument should be particularly  directed. The application file 
must be returned to the Board at least 2 working days before the hearing. 

        In any appeal where oral argument is to be presented by, or on 
behalf  of, the primary examiner, the appellant will be given due notice 
of that fact. 
        At the hearing, after the appellant has made his or her 
presentation,  the examiner will be allowed 15 minutes to reply as well as 
to present a statement  which clearly sets forth his or her position with 
respect to the issues and  rejections of record. Appellant may utilize any 
allotted time not used in the  initial presentation for rebuttal. 

        **>If the examiner wishes to attend the oral hearing as an 
observer  but not to present oral argument, see the last two paragraphs of 
MPEP w 1208.< 


1210    Actions Subsequent to Examiner's Answer but Before Board's 
Decision [R-1] 

JURISDICTION OF BOARD 

        The application file and jurisdiction of the application are 
normally  transferred from the examining groups to the Board  at one of 
the following  times: 

        **  >(1)        After 2 months from the examiner's answer, plus 
mail  room time, if no Reply Brief has been timely filed. 

        (2)         After a supplemental examiner's answer has been mailed 
 in reply to a timely Reply Brief. 

        (3)         After the examiner has notified the appellant by 
written  communication that the Reply Brief will be entered and that no 
supplemental  examiner's answer will be prepared in response to the timely 
filed Reply Brief 
(for example by mailing a PTOL-90 with form paragraph 12.47, as described 
in  MPEP w 1208.04). 

        (4)   After two months, plus mailing room time, from the denial of 
 entry of a Reply Brief. This time period is necessary to allow receipt of 
any  petition filed by appellant under 37 CFR 1.181 for reconsideration of 
the denial 
(for example by mailing a PTOL-90 with form paragraph 12.46, as described 
in  MPEP w 1208.03).< 

        Any amendment, affidavit, or other paper relating to the appeal, 
filed  thereafter but prior to the decision of the Board, may be 
considered by the  examiner only in the event the case is remanded by the 
Board for that purpose. 
DIVIDED JURISDICTION 

        Where appeal is taken from the final rejection only of one or more 
 claims presented for the purpose of provoking an interference, 
jurisdiction  of the rest of the case remains with the examiner, and 
prosecution of the remaining  claims may proceed as though the entire case 
was under his or her jurisdiction.  Also, where the examiner certifies in 
writing that there is no conflict of  subject matter and the 
examiner-in-chief in charge of the interference approves,  an appeal to 
the Board may proceed concurrently with an interference. See MPEP w 2315. 

ABANDONMENT OF APPEAL 

        To avoid the rendering of decisions by the Board in applications 
which  have already been refiled as continuations, appellants should 
promptly inform  the clerk of the Board in writing as soon as they have 
positively decided to  refile or to abandon an application containing an 
appeal awaiting a decision.  Failure to exercise appropriate diligence in 
this matter may result in the  Board's refusing an otherwise proper 
request to vacate its decision. 
        See MPEP w 1215.01 - w 1215.03 concerning the withdrawal of 
appeals. 

1211    Remand by Board 


        The Board has authority to remand a case to the examiner for a 
fuller  description of the claimed invention and, in the case of a 
machine, a statement  of its mode of operation.  In certain cases where 
the pertinence of the references  is not clear, the Board may call upon 
the examiner for a further explanation. 
 In the case of multiple rejections of a cumulative nature, the Board may 
also  remand for selection of the preferred or best ground.  The Board may 
also remand  a case to the examiner for further search where it feels that 
the most pertinent  art has not been cited, or to consider an amendment, 
affidavits, or declarations. 
        The group director should approve and the Board should be notified 
 whenever a remanded application is withdrawn from appeal under any 
circumstance.  See MPEP w 706.07(c) - w 706.07(e). 


1211.01       Remand by Board To Consider Amendment 


        While there is no obligation resting on the Board to consider new 
or  amended claims submitted while it has jurisdiction of the appeal. In 
re Sweet,  58 USPQ 327 (CCPA 1943), a proposed amendment, affidavit, 
declaration, or other  paper may be remanded for such consideration as the 
examiner may see fit to  give. Such an amendment, unless filed under 37 
CFR 1.193(b), will be treated  as an amendment filed after appeal.  See 
MPEP w 1207. 

        If the proposed amendment is in effect an abandonment of the 
appeal;  e.g., by canceling the appealed claims, the amendment should be 
entered and  the clerk of the Board notified in order that the case may be 
removed from  the Board's docket. 


1212    Remand by Board To Consider Affidavits or Declarations 


 37 CFR 1.195.      Affidavits or declarations after appeal. 

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

        Affidavits or declarations filed with or after appeal but before 
the  mailing of the examiner's answer will be  considered for entry only 
if the  appellant makes the necessary showing under 37 CFR 1.195 as to why 
they were  not earlier presented. Authority from the Board is not 
necessary to consider  such affidavits or declarations.  Affidavits or 
declarations filed after a  final rejection and prior to a notice of 
appeal are handled as provided in  a MPEP w 715.09 and w 716. 

        In the case of affidavits or declarations filed after the 
application  has been forwarded to the Board, but before a decision 
thereon by the Board,  the examiner is without authority to consider the 
same in the absence of a  remand by the Board. When a case is remanded to 
the examiner for the consideration  of such affidavits or declarations, 
the examiner, after having given such consideration  as the facts in the 
case require, will return the case to the Board with his  or her answer on 
remand, a copy of which should be forwarded to the appellant.  If such an 
affidavit or declaration is not accompanied by the showing required  under 
37 CFR 1.195, the examiner will not consider its merits. If the delay  in 
filing such affidavit or declaration is satisfactorily explained, the 
examiner  will admit the same and consider its merits. 

        It is not the custom of the Board to remand affidavits or 
declarations  offered in connection with a request for reconsideration of 
its decision where  no rejection has been made under 37 CFR 1.196(b). 
Affidavits or declarations  submitted for this purpose, not remanded to 
the examiner, are considered only  as arguments. In re Martin, 69 USPQ 75 
(CCPA 1946). 

        For remand to the examiner to consider appellant's remarks 
relating  to a 37 CFR 1.196(b) rejection, see MPEP w 1214.01. 


1213    Decision by Board 


37 CFR 1.196.       Decision by the Board of Patent Appeals and 
Interferences. 
        (a)   The Board of Patent Appeals and Interferences, in its 
decision,  may affirm or reverse the decision of the examiner in whole or 
in part on the  grounds and on the claims specified by the examiner or 
remand the application  to the examiner for further consideration. The 
affirmance of the rejection  of a claim on any of the grounds specified 
constitutes a general affirmance  of the decision of the  examiner on that 
claim, except as to any ground specifically  reversed. 

***** 

        After consideration of the record including appellant's brief and 
the  examiner's answer, the Board writes its decision, affirming the 
examiner in  whole or in part, or reversing the examiner's decision, 
sometimes also setting  forth a new ground of rejection. 

        On occasion, the Board has refused to consider an appeal until 
after  the conclusion of a pending civil action or appeal to the C.A.F.C. 
involving  issues identical with  and/or similar to those presented in the 
later appeal.  Such suspension of action, postponing consideration of the 
appeal until the  Board has the benefit of a court decision which may be 
determinative of the  issues involved, has been recognized as sound 
practice. An appellant is not  entitled, after obtaining a final decision 
by the Patent and Trademark Office  on an issue in a case, to utilize the 
prolonged pendency of a court proceeding  as a means for avoiding res 
judicata while relitigating the same, or substantially  the same issue in 
another application. 

        An applicant may request that the decision be withheld to permit 
the  refiling of the application at any time prior to the mailing of the 
decision.  Up to 30 days may be granted, although the time is usually 
limited as much  as possible. The Board will be more prone to entertain 
the applicant's request  where the request is filed early, obviating the 
necessity for an oral hearing  or even for th setting of the oral hearing 
date. If the case has already been  set for oral hearing, the petition 
should include a request to vacate the hearing  date, not to postpone it. 

        In a situation where a withdrawal of the appeal is filed on the 
same  day that the decision is mailed, a petition to vacate the decision 
will be  denied. 

        Since review of the decisions of the Board is committed by statute 
 to the courts, its decisions are properly reviewable on petition only to 
the  extent of determining whether they involve obvious error or abuse of 
discretion.  Reasonable rulings made by the Board on matters resting in 
its discretion will  not be disturbed upon petition. Thus, for example, 
the Board's opinion as to  whether it has employed a new ground of 
rejection will not be set aside on  petition unless said opinion is found 
to be clearly unwarranted. 

        See MPEP w 1214.01 concerning a new ground of rejection by the 
Board  under 37 CFR 1.196(b). 


1213.01       Recommendations of Board 


37 CFR 1.196.       Decision by the Board of Patent Appeals and 
Interferences. 
***** 

        (c)   Should the decision of the Board of Patent Appeals and 
Interferences  include an explicit statement that a claim may be allowed 
in amended form,  appellant shall have the right to amend in conformity 
with such statement,  which shall be binding on the examiner in the 
absence of new references or  grounds of rejection. 

***** 

        If the examiner knows of references or reasons which were not 
before  the Board, such a favorable recommendation is not binding. 
Likewise, any change  in a favorably recommended claim other than the 
amendments recommended would  tend to destroy the force of such 
recommendation. Ex parte Young, 18 Gour. 24, 31. 

        In the absence of an express recommendation, a 
remark by the Board that a certain feature does not appear in a claim  is 
not  to be taken as a recommendation that the claim be allowed if the 
feature is  supplied by amendment. Ex parte Norlund, 1913 C.D. 161, 
192 O.G. 989 (Comm'r Pat. 1913). 

        Appellant's right to amend in conformity with the recommendation 
may  only be exercised within the period allowed for seeking court review 
under 37 CFR 1.304.  See MPEP w 1216. 


1213.02       Statement as to Rejection of an Allowed Claim 


37 CFR 1.196.       Decision by the Board of Patent Appeals and 
Interferences. 
***** 

        (d)   Although the Board of Patent Appeals and Interferences 
normally  will confine its decision to a review of rejections made by the 
examiner,  should it have knowledge of any grounds for rejecting any 
allowed claim it  may include in its decision a recommended rejection of 
the claim and remand  the case to the examiner.  In such event, the Board 
shall set a period, not  less than one month, within which the appellant 
may submit to the examiner  an appropriate amendment, a showing of facts 
or reasons, or both, in order  to avoid the grounds set forth in the 
recommendation of the Board of Patent  Appeals and Interferences.  The 
examiner shall be bound by the recommendation  and shall enter and 
maintain the recommended rejection unless an amendment or showing of facts 
 not previously of record is filed which in the opinion of the examiner, 
overcomes  the recommended rejection.  Should the examiner make the 
recommended rejection  final the applicant may again appeal to the Board 
of Patent Appeals and Interferences. 
        (e) Whenever a decision of the Board of Patent Appeals and 
Interferences  includes a remand, that decision shall not be considered as 
a final decision.  When appropriate, upon conclusion of the proceedings 
before the examiner, the  Board of Patent Appeals and Interferences may 
enter an order otherwise making  its decision final. 

        37 CFR 1.196(d) provides express authority for the Board to 
include,  in its decision, a recommendation for rejecting any allowed 
claim that it believes  should be considered by the  examiner.  37 CFR 
1.196(d) also provides that  the Board may remand the case to the examiner 
for such consideration, and that  the appellant shall have an opportunity 
to respond to the grounds set forth  by the Board prior to consideration 
by the examiner.  If the previously allowed  claims are rejected by the 
examiner, the rejection may be appealed to the Board. 
        37 CFR 1.196(e) provides that a decision of the Board which 
includes  a remand will not be considered as a final decision in the case. 
The Board,  following conclusion of the proceedings before the examiner, 
will either adopt  its earlier decision as final or will render a new 
decision based on all appealed  claims, as it considers appropriate.  In 
either case, final action by the Board  will give rise to the alternatives 
available to an appellant following a decision  by the Board. 

        In situations where the examiner concludes after consideration of 
all  the evidence and argument that the remanded claims should be allowed, 
the rule  dealing with reasons for allowance (37 CFR 1.109) provides an 
appropriate mechanism  for him or her to explain, on the record, his or 
her reasoning for coming to  this conclusion, notwithstanding the grounds 
set forth by the Board in its  statement. 

        37 CFR 1.196(d) does not affect the Board's authority to remand a 
case  to the examiner without rendering a decision in appropriate 
circumstances.  37 CFR 1.196(d) is not intended as an instruction to the 
Board to reexamine  every allowed claim in every appealed application.  It 
is, rather, intended  to give the Board express authority to act when it 
becomes apparent, during  the consideration of rejected claims, that one 
or more allowed claims may be  subject to rejection on either the same or 
on different grounds from those  applied against the rejected claims. 

        The period set by the Board for the submission of an amendment or 
showing  to the examiner may not be extended by the filing of a petition 
and fee under  37 CFR 1.136(a), but only under the provisions of 
37 CFR 1.136(b). See 37 CFR 1.196(f). 


1213.03       Publication of Board Decision 


        Decisions  of the Board may be published at the discretion of the 
Commissioner.  Requests by members of the public or applicants to publish 
a decision of the  Board should be referred to the Office of the 
Solicitor. A decision in a pending  or abandoned application will be 
published in accordance with 37 CFR 1.14(d). 

1214    Procedure Following Decision by Board 


37 CFR 1.197.       Action following decision. 

        (a)   After decision by the Board of Patent Appeals and 
Interferences,  the case shall be returned to the examiner, subject to the 
appellant's right  of appeal or other review, for such further action by 
the appellant or by the 
 examiner, as the condition of the case may require, to carry into effect 
the  decision. 

**** 

        After an appeal to the Board has been decided, a copy of the 
decision  is mailed to the appellant and the original placed in the file. 
The clerk of  the Board notes the decision on the file wrapper and in the 
record of appeals,  and then forwards the file to the  examiner through 
the office of the group  director immediately if the examiner is reversed, 
and after about 6 weeks if  the examiner is affirmed or after a decision 
on a request for reconsideration  is rendered. 


1214.01       Procedure Following New Ground of Rejection by Board [R-1] 

37 CFR 1.196.       Decisions by the Board of Patent Appeals and 
Interferences 
***** 

        (b)   Should the Board of Patent Appeals and Interferences have 
knowledge  of any grounds not involved in the appeal for rejecting any 

appealed claim, it may include in the decision a statement to that effect 
with  its reasons for so holding, which statement shall constitute a new 
rejection  of the claims. A new rejection shall not be considered final 
for purposes of  judicial review. When the Board of Patent Appeals and 
Interferences makes a  new rejection of an appealed claim, the appellant 
may exercise any one of the  following two options with respect to the new 
ground: 

        (1)   The appellant may submit an appropriate amendment of the 
claims  so rejected or a showing of facts, or both, and have the matter 
reconsidered  by the examiner in which event the application will be 
remanded to the examiner.  The statement shall be binding upon the 
examiner unless an amendment or showing  of facts not previously of record 
be made which, in the opinion of the examiner,  overcomes the new ground 
for rejection stated in the decision. Should the examiner  again reject 
the application the applicant may again appeal to the Board of  Patent 
Appeals and Interferences. 

        (2)   The appellant may have the case reconsidered under 
w 1.197(b) by the Board of Patent Appeals and Interferences upon the same 
record. 
 The request for * >reconsideration<  shall address the new ground for 
rejection  and state with particularity the points believed to have been 
misapprehended  or overlooked in rendering the decision and also state all 
other grounds upon  which reconsideration is sought. Where request for 
such reconsideration is  made the Board of Patent Appeals and 
Interferences shall reconsider the new  ground for rejection and, if 
necessary, render a new decision which shall include  all grounds upon 
which a patent is refused. The decision on reconsideration  is deemed to 
incorporate the earlier decision, except for those portions specifically 
withdrawn on reconsideration, and is final for the purpose of judicial 
review. 
***** 

        (f)   See w 1.136(b) for extensions of time to take action under 
this  section in a patent application and w 1.550(c) for extensions of 
time in a  reexamination proceeding. 

        Under 37 CFR 1.196(b), the Board may, in its decision on an ex 
parte  appeal, make a new rejection of one or more appealed claims, in 
which case  the appellant has the option of 

        (1)   requesting reconsideration, or 

        (2)   submitting an appropriate amendment of the rejected claims, 
and/or  a showing of facts. 

        (The appellant no longer has the option of treating the rejection 
as  final and immediately appealable.) 

(1) REQUEST FOR RECONSIDERATION 

        A request for reconsideration by the Board >of the rejection under 
 37 CFR 1.196(b)< must be filed within 
1 month from the date of the decision, the period set by 37 CFR 1.197(b). 
 By proceeding in this manner, the appellant waives his or her right to 
further  prosecution before the examiner.  In re Greenfield, 5 USPQ 474 
(CCPA 1930).  >If the Board's decision also includes an affirmance of the 
examiner's rejection,  a request for reconsideration of the affirmance 
(see MPEP w 1214.03 and MPEP  w 1214.06 D.) should be filed in a separate 
paper to facilitate consideration.< 
        However, an appellant's request for reconsideration accompanied by 
 an affidavit containing a showing of facts to be added to the record does 
not  afford reconsideration by the Board as a matter of right under 37 CFR 
1.196(b).  The Board has authority to remand the application to the 
examiner and the examiner  has authority to consider a new showing of 
facts following a new rejection  by the Board and withdraw the Board's 
rejection based on the appellant's affidavit  and accompanying remarks. 
In such an instance, the examiner also has authority  to make any 
appropriate new rejection under 
37 CFR 1.198 with the group director's approval. 

(2) SUBMISSION OF AMENDMENT OR 
SHOWING OF FACTS 

        If the appellant elects to proceed before the examiner, he or she 
must  take such action within the period for response set in the Board's 
decision,  which may not exceed 6 months from the Board's decision. See In 
re application filed July 13, 1950 at 105 USPQ 154, 693 O.G. 136, 1955 
C.D. 3 
(Comm'r Pat. 1955).  A shortened period for response of 2 months 
ordinarily  is set in the Board's decision. Fee extension under 37 CFR 
1.136(a) is not  available to extend the period, 37 CFR 1.196(f). 
A rejection under 37 CFR 1.196(b) in effect nullifies the final rejection 
and  reopens the prosecution of the subject matter of the claims so 
rejected by  the Board. 

        The appellant may amend the claims involved, or substitute new 
claims  to avoid the art or reasons adduced by the Board. Ex parte 
Burrowes, 110 O.G.  599,1904 C.D. 155 (Comm'r Pat. 1904).  Such amended or 
new claims must be directed  to the same subject matter as the appealed 
claims, Ex parte Comstock, 317 O.G.  4,1923 C.D. 82 (Comm'r Pat. 1923). 
The appellant may also submit a showing  of facts under 37 CFR 1.131 or 
1.132, as may be appropriate. 

        Argument without either amendment of the claims so rejected or the 
 submission of a showing of facts can result only in a final rejection of 
the  claims, since the examiner is without authority to allow the claims 
unless  amended or unless the rejection is overcome by a showing of facts 
not before  the Board. The new ground of rejection raised by the Board 
does not reopen  the prosecution except as to that subject matter to which 
the new rejection  was applied. >If the Board's decision in which the 
rejection under 37 CFR 1.196(b)  was made includes an affirmance of the 
examiner's rejection, the basis of the  affirmed rejection is not open to 
further prosecution.  If the appellant elects  to proceed before the 
examiner with regard to the new rejection, the Board's affirmance will be 
treated as  nonfinal for purposes of seeking ju-dicial review, and no 
request for reconsideration  of the affirmance need be filed at that time. 
Prosecution before the examiner  of the 37 CFR 1.196(b) rejection can 
incidentally result in overcoming the  affirmed rejection even though the 
affirmed rejection is not open to further  prosecution.  Therefore, it is 
possible for the application to be allowed as  a result of the limited 
prosecution before the examiner of the 37 CFR 1.196(b)  rejection. If the 
application becomes allowed, the case should not be returned  to the 
Board.  Likewise, if the application is abandoned for any reason, the 
case should not be returned to the Board.  If the rejection under 37 CFR 
1.196(b)  is not overcome, the applicant can file a second appeal (as 
discussed below).  Such appeal must be limited to the 
37 CFR 1.196(b) rejection and may not include the affirmed rejection. If 
the  application does not become allowed or abandoned as discussed above, 
once prosecution  of the claims which were rejected under 
37 CFR 1.196(b) is terminated before the examiner, the application file 
must  be returned to the Board so that a decision making the original 
affirmance  final can be entered. The time for filing a request for 
reconsideration on  the affirmance or seeking court review runs from the 
date of the decision by  the Board making the original affirmance final. 
See MPEP w 1214.03 and w 1216.< 
        If the examiner does not consider that the amendment and/or 
showing  of facts overcome the rejection, he or she will again reject the 
claims; if  appropriate, the rejection will be made final. 

        37 CFR 1.196(b)(1), as amended, adds the following sentence as the 
 penultimate sentence of the section: 

        Should the examiner repeat the rejection the applicant may again 
appeal  to the Board of Patent Appeals and Interferences. 

        An applicant in whose application such a final rejection has been 
made  by the examiner may mistakenly believe that he or she is entitled to 
review  by the Board of the rejection by virtue of the fact that the 
application was  previously on appeal. 37 CFR 1.196(b) now makes it clear 
that after such a  final rejection, an applicant who desires further 
review of the matter must  file a new appeal to the Board.  The language 
of 37 CFR 1.196(b) is similar  to the fourth sentence of 37 CFR 1.196(d). 
Such an appeal from the subsequent  rejection by the examiner will be an 
entirely new appeal involving a different  ground and will require a new 
notice of appeal and the payment of another fee. 
        In accordance with 37 CFR 1.196(f), the time periods for 
requesting  reconsideration of the Board's new rejection under 37 CFR 
1.196(b), or for  submitting an amendment or showing of facts, may not be 
extended by the filing  of a petition and fee under 37 CFR 1.136(a), but 
only under the provisions  of 37 CFR 1.136(b) or under 37 CFR 1.550(c) if 
the appeal involves a reexamination  proceeding. 


1214.03       Reconsideration 


37 CFR 1.197.     Action following decision. 

***** 

        (b)   A single request for reconsideration or modification of the 
decision,  may be made if filed within one month from the date of the 
original decision,  unless the original decision is so modified by the 
decision on reconsideration  as to become, in effect, a new decision, and 
the Board of Patent Appeals and  Interferences so states. The request for 
reconsideration shall state with particularity  the points believed to 
have been misapprehended or overlooked in rendering  the decision and also 
state all grounds upon which reconsideration is sought. 
 See 37 CFR 1.136(b) for extensions of time for seeking reconsideration in 
 a patent application and w 1.550(c) for extensions of time in a 
reexamination  proceeding. 

***** 

        37 CFR 1.197(b) provides that any request for reconsideration must 
 specifically state the points believed to have been misapprehended or 
overlooked  in the Board's decision. Experience has shown that many 
requests for reconsideration  are nothing more than reargument of 
appellant's position on appeal.  The rule  now limits requests to the 
points of law or fact which appellant feels were  overlooked or 
misapprehended by the Board. 

        The 1-month period provided by 37 CFR 1.197(b) for filing a 
request  for reconsideration can only be extended under the provisions of 
37 CFR 1.136(b)  or under 37 CFR 1.550(c) if the appeal involves a 
reexamination proceeding. 
        All copies of references in the file wrapper should be retained 
therein. 
        For extension of time to appeal to the Court of Appeals for the 
Federal  Circuit or commence a civil action under 37 CFR 1.304(a); see 
MPEP w 1002.02(n). 
        For requests for reconsideration by the examiner, see MPEP w 
1214.04. 



1214.04       Examiner Reversed 


        A complete reversal of the examiner's rejection brings the case up 
 for immediate action by the examiner. 

        The examiner should never regard such a reversal as a challenge to 
 make a new search to uncover other and better references This is 
particularly  so where the application has meanwhile been transferred or 
assigned to an examiner  other than the one who finally rejected the 
claims. The second examiner should  give full faith and credit to the 
prior examiner's search. 

        If the examiner has specific knowledge of the existence of a 
particular  reference or references which indicate nonpatentability of any 
of the appealed  claims as to which the examiner was reversed, he or she 
should submit the matter  to the group director for authorization to 
reopen prosecution under 37 CFR  1.198 for the purpose of entering the new 
rejection.  Note MPEP w 1002.02(c),  item 2, and MPEP w 1214.07. The group 
director's approval is placed on the  action reopening prosecution. 

        The examiner may request reconsideration of the Board decision. 
Such  a request should normally be made within 1 month of the receipt of 
the Board  decision in the group. The group director's secretary should 
therefore date  stamp all Board decisions upon receipt in the group. 

        All requests by the examiner to the Board for reconsideration of a 
 decision, must be approved by the group director and must also be 
forwarded  to the Office of the Assistant Commissioner for Patents for 
approval before  mailing. 

        The request should set a period of 1 month for the appellant to 
file  a reply. 

        If approved, the Office of the Assistant Commissioner for Patents 
will  mail a copy of the request for reconsideration to the appellant. 
After the  period set for appellant to file a reply (plus mailing time) 
has expired,   the application file will be forwarded to the Board. 


1214.05       Cancellation of Withdrawn Claims 


        Where an appellant withdraws some of the appealed claims, and the 
Board  reverses the examiner on the remaining appealed claims, the 
withdrawal is treated  as an authorization to cancel the withdrawn claims. 
It is not necessary to  notify the appellant of the cancellation of the 
withdrawn claims. 

1214.06       Examiner Sustained in Whole or in Part [R-1] 


37 CFR 1.197.       Action following decision 

***** 

        (c) Termination of proceedings. 

        Proceedings are considered terminated by the dismissal of an 
appeal  or the failure to timely file an appeal to the court or a civil 
action ( w  1.304) except: (1) where claims stand allowed in an 
application or 
(2) where the nature of the decision requires further action by the 
examiner.  The date of termination of proceedings is the date on which the 
appeal is dismissed  or the date on which the time for appeal to the court 
or review by civil action 
( w 1.304) expires. If an appeal to the court or a civil action has been 
filed,  proceedings are considered terminated when the appeal or civil 
action is terminated.  An appeal to the U.S. Court of Appeals for the 
Federal Circuit is terminated  when the mandate is received by the Office. 
A civil action is terminated when  the time to appeal the judgment 
expires. 

        The time for seeking review of a decision of the Board by the 
Court  of Appeals for the Federal Circuit or the District Court is the 
same for both  tribunals, that is, 
2 months, or 2 months with the extension provided by 
37 CFR 1.304 in the event a request for reconsideration is * >timely< 
filed  before the Board, or as extended by the Commissioner.  See MPEP w 
1216. When  the time for seeking court review (plus 2 weeks to allow for 
information as  to the filing of an appeal or civil action, if any, to 
reach the examiner)  has passed without such review being sought, the 
examiner must take up the  case for consideration. The situations which 
can arise will involve one or  more of the following six circumstances: 

A.  No claims stand allowed. The proceedings in the application are 
terminated  as of the date of the expiration of the time for filing court 
action. The application  is no longer considered as pending. It is to be 
stamped abandoned and sent  to abandoned files. 

Claims indicated as allowable prior to appeal except for their dependency 
from  rejected claims will be treated as if they were rejected.  The 
following examples  illustrate the appropriate approach to be taken by the 
examiner in various  situations: 

        1.      If the Board affirms a rejection of claim 1 and claim 2 
was  objected to prior to appeal as being allowable except for its 
dependency from  claim 1, the examiner should hold the application abandoned. 

        2.  If the Board or court affirms a rejection against an 
independent  claim and reverses all rejections against a claim dependent 
thereon, the examiner,  after expiration of the period for further appeal, 
should proceed in one of two ways: 
        a.  Convert the dependent claim into independent form by 
examiner's  amendment, cancel all claims in which the  rejection was 
affirmed, and issue  the application; or 

        b.  Set a 1-month time period in which appellant may rewrite the 
dependent  claim(s) in independent form. Extensions of time under 37 CFR 
1.136(a) will  not be permitted. If no timely response is received, the 
examiner will cancel  all rejected and objected to claims and issue the 
case with the allowed claims  only. 

        The following language may be used where appropriate: 

Claim(s) ______ is/are incomplete because the claim(s) on which it/they 
depend(s)  from has/have been cancelled by the examiner in accordance with 
MPEP >#<1214.06.  Applicant is given a ONE MONTH TIME LIMIT from the date 
of this letter in which  to present claim(s) ________ in independent form. 
NO EXTENSIONS OF TIME UNDER  37 CFR 1.136(a) WILL BE GRANTED. Failure to 
comply with this deadline will  result in cancellation of claim(s) 
________ and this application will be: 
i.  allowed with claim(s) ______ (if other claims are allowed), or 
ii.   abandoned (if there are no allowed claims). 

        B.  Claims stand allowed.  The appellant is not required to file a 
 response.  The examiner takes the case up and passes it to issue on the 
claims  which stand allowed. A red-ink line should be drawn through the 
refused claims  and the notion  "Board Decision" written in the margin in 
red ink. 
        If the Board affirms a rejection of claim 1, claim 2 was objected 
to  prior to appeal as being allowable except for its dependency from 
claim 1 and  independent claim 3 is allowed, the examiner should cancel 
claims 1 and 2 and  issue the application with claim 3 only. 

        If uncorrected matters of form which cannot be handled without 
written  correspondence remain in the case, the examiner should take 
appropriate action  but prosecution is otherwise closed.  Note subsection 
A of this section for  handling of claims dependent on rejected claims.  A 
letter such as set forth  in Form Paragraph 12.20 is suggested: 

W 12.20       Period for Seeking Court Review Has Lapsed 

        The period for seeking court review of the decision by the Board 
of  Patent Appeals and Interferences rendered [1] has expired and no 
further action  has been taken by applicant. The proceedings as to the 
rejected claims are  considered terminated; see 37 CFR 1.197(c). 

        The application will be passed to issue on allowed claim 
[2] provided the following formal matters are promptly corrected: [3]>.< 
Prosecution is otherwise closed. 

Examiner Note: 

        >1.<In bracket 1, enter the date of the decision. 

        >2.<In bracket 2, identify the allowed claims. 

        (Set a 30-day shortened statutory period for response.) 

C.  Claims require action. If the decision of the Board is an affirmance 
in  part and includes a reversal of a rejection  that brings certain 
claims up  for action on the merits, such as a decision reversing the 
rejection of generic  claims in a case containing claims to nonelected 
species not previously acted  upon, the examiner will take the case up for 
appropriate action on the matters  thus brought up, but the case is not 
considered open to further prosecution  except as to such matters. 

D.  37 CFR 1.196(b) rejection. Where the Board makes a new rejection under 
 37 CFR 1.196(b) and no action is taken with reference thereto by 
appellant  within 
6 months, or such shortened time period as may be set in the Board's 
decision,  the examiner should proceed in the manner indicated for 
situations A, B, or  C, depending on which is appropriate to the case. 
See MPEP w 1214.01. 
        If the Board affirms the examiner's rejection, but also enters a 
new  ground of rejection under 37 CFR 1.196(b), the subsequent procedure 
depends  upon the action taken by the appellant with respect to the 37 CFR 
1.196(b)  rejection. 

        (1)   If the appellant elects to request reconsideration of the 
new  rejection, see MPEP w 1214.01, part (1), the request for 
reconsideration of  the new rejection and of the affirmance must be filed 
within 1 month from the  date of the Board's decision. 

        (2)   If the appellant elects to proceed before the examiner with 
regard  to the new rejection, see MPEP 
w 1214.01, part (2), the Board's affirmance will be treated as nonfinal, 
and  no request for reconsideration of the affirmance need be filed at 
that time.  >Prosecution before the examiner of the 37 CFR 1.196(b) 
rejection can incidentally  result in overcoming the affirmed rejection 
even though the affirmed rejections  is not open to further prosecution. 
Therefore, it is possible for the application  to be allowed as a result 
of the limited prosecution before the examiner of  the 37 CFR 1.196(b) 
rejection. If the application becomes allowed, the case  should not be 
returned to the Board. Likewise, if the application is abandoned  for any 
reason, the case should not be returned to the Board. If the rejection 
under 37 CFR1.196(b) is not  overcome, the applicant can file a second 
appeal (as discussed below). Such  appeal must be limited to the 37 
CFR1.196(b) rejection and may not include  the affirmed rejection. If the 
application does not become allowed or abandoned  as discussed above, once 
prosecution of the claims which were rejected under 37 CFR 1.196(b) is 
terminated before the examiner, the application file must  be returned to 
the Board so that a decision making the original affirmance  final can be 
entered.< The time for filing a request for reconsideration >on  the 
affirmance< or seeking court review runs from the date of the decision  by 
the Board making the original affirmance final.  See MPEP w 1214.03 and  1216. 

E.  37 CFR 1.196(d) recommendation. Where the Board makes a recommendation 
 under 37 CFR 1.196(d) and no action is taken with reference thereto by 
the  appellant within the time permitted for court review, ordinarily 2 
months from  the date of the decision, the examiner should proceed in the 
manner indicated  for situations A, B, or C, depending on which is 
appropriate to the case. 
 See MPEP w 1213.01. 

F.    Appeal dismissed. Where the appeal has been dismissed for failure to 
 argue a ground of rejection involving all the appealed claims see MPEP w 
1215.04. 
        The practice under situations A, B, and C is similar to the 
practice  after a decision of the court outlined in MPEP w 1216.01. 

        In view of the above practice, examiners must be very careful that 
 applications which come back from the Board are not overlooked because 
every  case, except those in which all claims stand rejected after the 
Board's decision,  is up for action by the examiner in the event no court 
review has been sought.  Consequently, when a file is received after 
decision by the Board, it must  be examined and appropriate precautions 
taken to indicate the presence of allowed  claims, if any. This may be 
done by writing the notation "Allowed Claims" or  "Rejection Reversed" on 
the "Contents"  page of file wrapper immediately below  endorsement 
"Decision by Board." 

        See MPEP w 1216.01 and w 1216.02 for procedure where court review 
is  sought. 


1214.07       Reopening of Prosecution [R-1] 


37 CFR 1.198.       Reopening after decision. 

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

        Sometimes an amendment is filed after the Board's decision which 
does  not carry into effect any recommendation made by the Board and which 
presents  a new or amended claim or claims.  In view of the fact that the 
prosecution  of the case is definitely closed, the appellant clearly is 
not entitled to  have such amendment entered as a matter of right. 
However, if the amendment  obviously places the case in condition for 
allowance, the primary examiner  should endorse on the amendatory paper a 
recommendation that the amendment  be admitted, and with the concurrence 
of the Supervisory Primary Examiner,  the amendment will be entered. Note 
MPEP w 1003, item 14. 

        Where the amendment cannot be entered, the examiner should write 
to  the appellant indicating that the amendment cannot be entered and 
stating the  reason why. The refusal should never be made to appear 
arbitrary or capricious. 
        Form Paragraph 12.19 should be used: 

W 12.19       Amendment After Board Decision 

        The amendment filed [1] after a decision *>by< the Board of Patent 
 Appeals and Interferences is refused entry under 37 CFR 1.116(c) because 
prosecution  is closed and the proposed claim(s) raise new issues which 
require further  consideration or search. 

Examiner Note: 

        >1.<Identify the new issues. 

        >2.<This paragraph is not to be used in a response to a 37 CFR 
1.196(b)  rejection. 

        In the event that claims stand allowed in the case under the 
conditions  set forth in MPEP w 1214.06 (paragraph B), the case should be 
passed to issue. 
        Petitions under 37 CFR 1.198 to reopen or reconsider prosecution 
of  a patent application after decision by the Board, where no court 
action has  been filed, are decided by the group director, MPEP w 
1002.02(c), item 2. 
        The Commissioner also entertains petitions under 37 CFR 1.198 to 
reopen  certain cases in which an appellant has sought review under 35 
U.S.C. 141 or  145.  This procedure is restricted to cases which have been 
decided by the  Board and which are amenable to settlement without the 
need for going forward  with the court proceeding. Such petitions will 
ordinarily be granted only in  the following categories of cases: 

        1.  When the decision of the Board asserts that the rejection of 
the  claims is proper because the claims do not include a disclosed 
limitation or  because they suffer from some other curable defect, and the 
decision reasonably  is suggestive that claims including the limitation or 
devoid of the defect  will be allowable; 

        2.  When the decision of the Board asserts that the rejection of 
the  claims is proper because the record does not include evidence of a 
specified  character, and is reasonably suggestive that if such evidence 
were presented,  the appealed claims would be allowable, and it is 
demonstrated that such evidence  presently exists and can be offered; or 

        3.  When the decision of the Board is based on a practice, rule, 
law,  or judicial precedent which, since the Board's decision, has been 
rescinded,  repealed, or overruled. 

        Any such petition must be accompanied by the proposed amendment, 
evidence,  or argument said to justify allowance of the claims. The 
petition further must  point out how the case falls within one of the 
preceding categories. Failure  to do so or failure of the case to qualify 
as coming within one of the categories  will usually constitute basis for 
denying the petition.  In any event, no case  will be reopened unless it 
is for the consideration of matters not already  adjudicated, and 
sufficient cause has been shown. 

        Such petitions will not be ordinarily entertained after the filing 
 of the Commissioner's brief in cases in which review has been sought 
under  35 U.S.C. 141, or after trial in a 35 U.S.C. 145 case. 

        In the case of an appeal under 35 U.S.C. 141, if the petition is 
granted,  steps will be taken to request the court to remand the case to 
the Patent and  Trademark Office and if so remanded the proposed 
amendments, evidence, and  arguments will be entered of record in the 
application file for consideration,  and further action will be taken by 
the Board in the first instance or by the  examiner as may be appropriate. 
 In the case of civil action under 35 U.S.C.  145, steps will be taken for 
obtaining dismissal of the action without prejudice  to consideration of 
the proposals. 


1215    Withdrawal or Dismissal of Appeal 



1215.01       Withdrawal of Appeal 


        Except in those instances where a withdrawal of an appeal would 
result  in abandonment of the application, an attorney not of record in an 
application  may file a paper under 37 CFR 1.34(a) withdrawing an appeal. 
In such instances  where no allowable claims appear in the application, 
the withdrawal of an appeal  is in fact an express abandonment and does 
not comply with 37 CFR 1.138 except  where a continuing application is 
being filed on the same date. 

        Where, after appeal has been filed and before decision by the 
Board,  an applicant withdraws the appeal after the period for response to 
the final  rejection has expired, the application is to be considered 
abandoned as of  the date on which the appeal was withdrawn unless there 
are allowed claims  in the case. 

        Where a letter abandoning the application is filed in accordance 
with  37 CFR 1.138, the effective date of abandonment is the date of 
filing of such  letter. 

        If a brief has been filed within the time permitted by 37 CFR 
1.192 
(or any extension thereof) and an answer mailed and appellant withdraws 
the  appeal, the case is returned to the examiner. 

        To avoid the rendering of decisions by the Board in applications 
which  have already been refiled as continuations, applicants should 
promptly inform  the clerk of the Board in writing as soon as they have 
positively decided to  refile or to abandon an application containing an 
appeal awaiting a decision.  Failure to exercise appropriate diligence in 
this matter may result in the  Board's refusing an otherwise proper 
request to vacate its decision. 
        Applications having no allowed claims will be abandoned.  Claims 
which  are allowable except for their dependency from rejected claims will 
be treated  as if they were rejected. The following examples illustrate 
the appropriate  approach to be taken by the examiner in various situations: 

        1.  Claim 1 is allowed; claims 2 and 3 are rejected. The examiner 
should  cancel claims 2 and 3 and issue the application with claim 1 only. 
        2.  Claims 1 - 3 are rejected. The examiner should hold the 
application  abandoned. 

        3.  Claim 1 is rejected and claim 2 is objected to as being 
allowable  except for its dependency from claim 1. The examiner should 
hold the application  abandoned. 

        4.  Claim 1 is rejected and claim 2 is objected to as being 
allowable  except for its dependency from claim 1; 


independent claim 3 is allowed. The examiner should cancel claims 1 and 2 
and  issue the application with claim 3 only. 


1215.02       Claims Standing Allowed 


        If the application contains allowed claims, as well as claims on 
appeal,  the withdrawal of the appeal does not operate as an abandonment 
of the application,  but is considered a withdrawal of the appeal as to 
those claims and authority  to the examiner to cancel the same. An 
amendment canceling the appealed claims  is equivalent to a withdrawal of 
the appeal. 


1215.03       Partial Withdrawal 


        A withdrawal of the appeal as to some of the claims on appeal 
operates  as a cancellation of those claims from the case and the appeal 
continues as  to the remaining claims. The withdrawn claims will be 
canceled from an application  by direction of the examiner when necessary 
without further action by the applicant. 



1215.04       Dismissal of Appeal 


        If no brief is filed within the time prescribed by 
37 CFR 1.192, the appeal stands dismissed by operation of the rule. The 
letter 
(form PTOL-333) notifying the appellant that the appeal stands dismissed 
is  not an action in the case and does not start any period for reply. If 
no claims  stand allowed the application is considered as abandoned on the 
date the brief  was due.   If claims stand allowed in the application, the 
failure to file  a brief and consequent dismissal of the appeal is to be 
treated as a withdrawal  of the appeal and of any claim not standing 
allowed. The application should  be passed to issue forthwith Unless 
appellant specifically withdraws the appeal  as to rejected claims, the 
appeal should not be dismissed until the extended  period (4 months under 
37 CFR 1.136(a)) to file the brief has expired. 
        Applications having no allowed claims will be abandoned.  Claims 
which  are allowable except for their dependency from rejected claims will 
be treated  as if they were rejected. The following examples illustrate 
the appropriate  approach to be taken by the examiner in various situations: 

        1.  Claim 1 is allowed; claims 2 and 3 are rejected. The examiner 
should  cancel claims 2 and 3 and issue the application with claim 1 only. 
        2.  Claims 1 - 3 are rejected. The examiner should hold the 
application  abandoned. 

        3.  Claim 1 is rejected and claim 2 is objected to as being 
allowable  except for its dependency from claim 1. The examiner should 
hold the application  abandoned. 

        4. Claim 1 is rejected and claim 2 is objected to as being 
allowable  except for its dependency from claim 1; independent claim 3 is 
allowed. The  examiner should cancel claims 1 and 2 and issue the 
application with claim  3 only. 

        However, if formal matters remain to be attended to, the examiner 
should  take appropriate action on such matters, setting a shortened 
period for reply,  but the application is to be considered closed to 
further prosecution except  as to such matters.  A letter such as the 
following is suggested: 

        "In view of applicant's failure to file a brief within the time 
prescribed  by 37 CFR 1.192, the appeal stands dismissed and the 
proceedings as to the  rejected claims are considered terminated; see 37 
CFR 1.197(c)." 

        "This application will be passed to issue on claims (identify) 
which  stand allowed provided the following formal matter(s) is (are) 
corrected. Prosecution  is otherwise closed." 

        (Set out formal matter(s) requiring correction.) 

        (Set a 30-day shortened statutory period for response.) 


1216    Judicial Review 


35 U.S.C. 141.          Appeal to Court of Appeals for the Federal 
Circuit. 
        An applicant dissatisfied with the decision in an appeal to the 
Board  of Patent Appeals and Interferences under section 134 of this title 
may appeal  the decision to the United States Court of Appeals for the 
Federal Circuit.  By filing such an appeal the applicant waives his or her 
right to proceed under  section 145 of this title. A party to an 
interference dissatisfied with the  decision of the Board of Patent 
Appeals and Interferences on the interference  may appeal the decision to 
the United States Court of Appeals for the Federal  Circuit, but such 
appeal shall be dismissed if any adverse party to such interference, 
within twenty days after the appellant has filed notice of appeal in 
accordance  with section 142 of this title, files notice with the 
Commissioner that the  party elects to have all further proceedings 
conducted as provided in section  146 of this title. If the appellant does 
not, within thirty days after filing  of such notice by the adverse party, 
file a civil action under section 146,  the decision appealed from shall 
govern the further proceedings in the case. 
 35 U.S.C. 145.       Civil action to obtain patent. 

        An applicant dissatisfied with the decision of the Board of Patent 
 Appeals and Interferences in an appeal under section 134 of this title, 
may,  unless appeal has been taken to the United States Court of Appeals 
for the  Federal Circuit, have remedy by civil action against the 
Commissioner in the  United States District Court for the District of 
Columbia if commenced within  such time after such decision, not less than 
sixty days, as the Commissioner  appoints. The court may adjudge that such 
applicant is entitled to receive  a patent for his invention, as specified 
in any of his claims involved in the  decision of the Board of Patent 
Appeals and Interferences, as the facts in  the case may appear and such 
adjudication shall authorize the Commissioner  to issue such patent on 
compliance with the requirements of law.  All the expenses  of the 
proceedings shall be paid by the applicant. 

35 U.S.C. 146.          Civil action in case of interference. 

        Any party to an interference dissatisfied with the decision of the 
 Board of Patent Appeals and Interferences, may have remedy by civil 
action,  if commenced within such time after such decision, not less than 
sixty days,  as the Commissioner appoints or as provided in section 141 of 
this title, unless  he has appealed to the United States Court of Appeals 
for the Federal Circuit,  and such appeal is pending or has been decided. 
In such suits the record in  the Patent  and Trademark Office shall be 
admitted on motion of either party  upon the terms and conditions as to 
costs, expenses, and the further cross-examination  of the witnesses as 
the court imposes, without prejudice to the right of the  parties to take 
further testimony. The testimony and exhibits of the record  in the Patent 
and Trademark Office when admitted shall have the same effect  as if 
originally taken and produced in the suit. 

        Such suit may be instituted against the party in interest as shown 
 by the records of the Patent and Trademark Office at the time of the 
decision  complained of, but any party in interest may become a party to 
the action.  If there be adverse parties residing in a plurality of 
districts not embraced  within the same state, or an adverse party 
residing in a foreign country, the  United States District Court for the 
District of Columbia shall have jurisdiction  and may issue summons 
against the adverse parties directed to the marshal of  any district in 
which any adverse party resides. Summons against adverse parties  residing 
in foreign countries may be served by publication or otherwise as  the 
court directs. The Commissioner shall not be a necessary party but he 
shall  be notified of the filing of the suit by the clerk of the court in 
which it  is filed and shall have the right to intervene. Judgment of the 
court in favor  of the right of an applicant to a patent shall authorize 
the Commissioner to  issue such patent on the filing in the Patent and 
Trademark Office of a certified  copy of the judgment and on compliance 
with the requirements of law. 
 35 U.S.C. 306.         Appeal. 

        The patent owner involved in a reexamination proceeding under this 
 chapter may appeal under the provisions of section 134 of this title, and 
may  seek court review under the provisions of sections 141 to 145 of this 
title,  with respect to any decision adverse to the patentability of any 
original or  proposed amended or new claim of the patent. 

37 CFR 1.301.       Appeal to U.S. Court of Appeals for the Federal 
Circuit. 
        Any applicant or any owner of a patent involved in a reexamination 
 proceeding dissatisfied with the decision of the Board of Patent Appeals 
and  Interferences, and any party to an interference dissatisfied with the 
decision  of the Board of Patent Appeals and Interferences, may appeal to 
the U.S. Court  of Appeals for the Federal Circuit. The appellant must 
take the following steps  in such an appeal: (a) In the Patent and 
Trademark Office file a written notice  of appeal directed to the 
Commissioner (see ## 1.302 and 1.304); and (b) in  the Court, file a copy 
of the notice of appeal and pay the fee for appeal,  as provided by the 
rules of the Court. 

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

        (a)   Any applicant or any owner of a patent involved in a 
reexamination  proceeding dissatisfied with the decision of  the Board of 
Patent Appeals and  Interferences, and any party dissatisfied with the 
decision of the Board of  Patent Appeals and Interferences, may, instead 
of appealing to the U.S. Court  of Appeals for the Federal Circuit 
(# 1.301), have remedy by civil action under 35 U.S.C. 145 or 146, as 
appropriate.  Such civil action must be commenced within the time 
specified in # 1.304. 
        (b)   If an applicant in an ex parte case or an owner of a patent 
involved  in a reexamination proceeding has taken an appeal to the U.S. 
Court of Appeals  for the Federal Circuit, he or she thereby waives his or 
her right to proceed  under 35 U.S.C. 145. 

        (c)   If any adverse party to an appeal taken to the U.S. Court of 
 Appeals for the Federal Circuit by a defeated party in an interference 

proceeding files notice with the Commissioner within twenty days after the 
 filing of the defeated party's notice of appeal to the court (# 1.302), 
that  he or she elects to have all further proceedings conducted as 
provided in 35  U.S.C. 146, the notice of election must be served as 
provided in # 1.646. 
37 CFR 1.304. Time for appeal or civil action. 

        (a)(1)      The time for filing the notice of appeal to the U.S. 
Court  of Appeals for the Federal Circuit (# 1.302) or for commencing a 
civil action 
(# 1.303) is two months from the date of the decision of the Board of 
Patent  Appeals and Interferences. If a request for consideration or 
modification of  the decision is filed within the time period provided 
under # 1.197(b) or #  1.658(b), the time for filing an appeal or 
commencing a civil action shall  expire two months after action on the 
request. In interferences, the time for  filing a cross-appeal or cross- 
action expires: 

(i)   14 days after service of the notice of appeal or the summons and 
complaint,  or 

(ii)    Two months after the date of decision of the Board of Patent 
Appeals  and Interferences, whichever is later. 

        (2)   The time periods set forth in this section are not subject 
to  the provisions of # 1.136, # 1.550(c) or # 1.645 (a) or (b). 

        (3)   The Commissioner may extend the time for filing an appeal or 
 commencing a civil action: 

(i)   For good cause shown if requested in writing before the expiration 
of  the period for filing an appeal or commencing a civil action, or 

(ii)            Upon written request after the expiration of the period 
for  filing an appeal or commencing a civil action upon a showing that the 
failure  to act was the result of excusable neglect. 

        (b)   The times specified in this section in days are calendar 
days.  The time specified herein in months are calendar months except that 
one day  shall be added to any two-month period which includes February 
28. 
If the last day of the time specified for appeal or commencing a civil 
action  falls on a Saturday, Sunday, or Federal holiday in the District of 
Columbia,  the time is extended to the next day which is neither a 
Saturday, Sunday, nor  a Federal holiday. 

        (c)   If a defeated party to an interference has taken an appeal 
to  the U.S. Court of Appeals for the Federal Circuit and an adverse party 
has  filed notice under 35 U.S.C. 141 electing to have all further 
proceedings conducted  under 35 U.S.C. 146 (w 1.303(c)), the time for 
filing a civil action thereafter  is specified in 35 U.S.C. 141. The time 
for filing a cross-action expires 14  days after service of the summons 
and complaint. 

EX PARTE AND REEXAMINATION 
PROCEEDINGS 

        The applicant in an ex parte proceeding or the owner of a patent 
involved  in a reexamination proceeding who is dissatisfied with a 
decision of the Board  may seek judicial review either by an appeal to the 
U.S. Court of Appeals for  the Federal Circuit (35 U.S.C. 141, 306; 37 CFR 
1.301) or by a civil action  in the U.S. District Court for the District 
of Columbia (35 U.S.C. 145, 306;  37 CFR 1.303(a)). By filing an appeal to 
the Federal Circuit, the applicant  in an ex parte case or the owner of a 
patent involved in a reexamination proceeding  waives the right to seek 
judicial review by a civil action under 35 U.S.C.145,  37 CFR 1.303(b). 

INTERFERENCE PROCEEDINGS 

        Any party to an interference who is dissatisfied with a decision 
of  the Board may seek judicial review either by an appeal to the Federal 
Circuit 
(35 U.S.C.141; 37 CFR 1.301) or, if no 35 U.S.C. 141 appeal is pending or 
has  been decided, by a civil action in an appropriate district court (35 
U.S.C.  146; 37 CFR 1.303(a)).  Furthermore, a 35 U.S.C. 141 appeal to the 
Federal  Circuit by a dissatisfied party in an interference will be 
dismissed if any  ad-verse party in the interference, within twenty (20) 
days after the appellant  has filed a notice of appeal according to 35 
U.S.C. 142, files notice with  the Commissioner that such adverse party 
elects to have all further proceedings  conducted in accordance with 35 
U.S.C.146. 35 U.S.C. 141; 37 CFR 1.303(c). 
 If, within 30 days after filing of such notice of election by an adverse 
party,  the appellant does not file a civil action under 35 U.S.C.146, the 
decision  appealed from shall govern the further proceedings in the case. 
35 U.S.C. 141. 
 Copies of such notice of election, which must be served as provided in 37 
 CFR 1.646, will be transmitted by the Solicitor to the Federal Circuit 
for  such action as may be necessary (37 CFR 1.303(c)). 

TIME FOR FILING NOTICE OF APPEAL OR 
COMMENCING CIVIL ACTION 

        The time for filing a notice of a 35 U.S.C. 141 appeal to the 
Federal  Circuit or for commencing a civil action under  35 U.S.C.145 or 
146 is within  2 months of the Board's decision. 37 CFR 1.304(a). 
However, if a request for  reconsideration or modification of the Board's 
decision is filed within the  time provided under 37 CFR 1.197(b) (ex 
parte appeals) or 37 CFR 1.658(b) (inter  partes appeals), the time for 
filing a notice of appeal to the Federal Circuit  or for commencing a 
civil action expires 2 months after a decision on a request  for 
reconsideration or modification (37 CFR 1.304(a)). 

        These 2-month periods meet the 60-day requirement of 35 U.S.C. 
142,  145, and 146 except for time periods which include February 28. In 
order to  comply with the  60-day requirement; 37 CFR 1.304(b) provides 
that an additional  day shall be added to any 2-month period for 
initiating review which includes  February 28. Appeals will always be 
timely if the judicial review is initiated  within 2 months of the final 
decision. 

        The times specified in 37 CFR 1.304 are calendar days. If the last 
 day of the time specified for appeal or commencing a civil action falls 
on  a Saturday, Sunday, or a Federal holiday in the District of Columbia, 
the time  is extended to the next day which is neither a Saturday, Sunday, 
nor a Federal  holiday (37 CFR 1.304(b)). 

  TIME FOR FILING CROSS-APPEAL OR 
CROSS-ACTION 

        37 CFR 1.304(a) specifies that the time for filing a cross-appeal 
or  commencing a cross-action expires (1) 14 days after service of the 
notice of  appeal or the summons and complaint or (2) 2 months after the 
decision to be  reviewed, whichever is later. 

        37 CFR 1.304(a) also provides that the time for filing a 
cross-action  expires 14 days after service of the summons and complaint. 
The district court  will determine whether any cross-action was timely 
filed since neither the  complaint nor cross-action is filed in the Patent 
and Trademark Office. 
EXTENSION OF TIME TO SEEK JUDICIAL 
REVIEW 

        In 37 CFR 1.304(a), the Office has adopted a standard which is 
similar  to the standard used in the Federal courts for granting 
extensions. Under the rule, the Commissioner may extend  the time (1) for 
good cause if requested before the expiration of the time  provided for 
initiating judicial review or (2) upon a showing of excusable  neglect in 
failing to initiate judicial review if requested after the expiration  of 
the time period. This standard is applicable once the "last" decision; 
i.e.,  either the decision (in circumstances where no timely 
reconsideration is sought)  or the decision on reconsideration, of the 
Board in an ex parte appeal or interferencehas  been entered. Extensions 
of time under 37 CFR 1.136(b) and 1.550(c) and fee  extensions under 37 
CFR 1.136(a) are not available to extend the time for the  purpose of 
judicial review once a decision or a decision  on reconsideration  has 
been entered. 37 CFR 1.304(a) states that the provisions of 37 CFR 1.136 
and 1.550(c) are not available to extend the time to initiate judicial 
review. 
        Requests for extension of time to seek judicial review under 37 
CFR  1.304 should be addressed as follows: 

        Box 8, Attention The Solicitor 

        Commissioner of Patents and Trademarks 

        Washington, D.C. 20231 

        Requests may also be hand carried to the Office of the Solicitor. 
APPLICATION UNDER JUDICIAL REVIEW 

        The administrative file of an application under judicial review, 
even  though carried to a court, will not be opened to the public by the 
Patent and  Trademark Office, unless it is otherwise available to the 
public under 37 CFR 1.11. 

        During judicial review, the involved application or reexamination 
is  not under the jurisdiction of the examiner or the Board, unless 
remanded to  the Patent and Trademark Office by the court.  Any amendment, 
such as one copying  claims from a patent for interference purposes, can 
be admitted only under  the provisions of 
37 CFR 1.198.   See MPEP w 1214.07. 

SERVICE OF COURT PAPERS ON THE 
COMMISSIONER 

        Rule 5(b) of the Federal Rules of Civil Procedure provides in 
pertinent  part: 

Whenever under these rules service is required or permitted to be made 
upon  a party represented by an attorney the service shall be made upon 
the attorney  unless service upon the party himself is ordered by the 
court. Service upon  the attorney . . . shall be made by delivering a copy 
to him or by mailing  it to him at his last known address . . . . 

        Similarly, Rule 25(b) of the Federal Rules of Appellate Procedure 
provides  that "[s]ervice on a party represented by counsel shall be made 
on counsel." 

        Accordingly, all service copies of papers filed in court 
proceedings  in which the Commissioner of Patents and Trademarks is a 
party must be served  on the Solicitor of the Patent and Trademark Office. 
Service on the Solicitor  may be effected in either of the following ways: 

1.  By hand between 8:30 A.M. and 5:00 P.M. at the Office of the 
Solicitor. 
2.  By mail in an envelope addressed as follows: 

Office of the Solicitor 

P.O. Box 15667 

Arlington, VA 22215 

        While the above mail service address may be supplemented to 
include  the name of the particular attorney assigned to the court case, 
it must not  be supplemented to refer to either the Commissioner of 
Patents and Trademarks  or the U.S. Patent and Trademark Office. 

        Any court papers mailed to an address other than the above mail 
service  address or delivered by hand to the Patent and Trademark Office 
are deemed  to have been served on the Commissioner when actually received 
in the Office  of the Solicitor. 

        The above mail service address should not be used for filing a 
notice  of appeal to the Federal Circuit. See MPEP w 1216.01. 

        Nor should the above mail service address be used for noncourt 
papers;  i.e., papers which are intended to be filed in the Patent and 
Trademark Office  in connection with an application or other proceeding 
pending in the Patent  and Trademark Office. ANY NONCOURT PAPERS WHICH ARE 
MAILED TO THE ABOVE MAIL  SERVICE ADDRESS WILL BE RETURNED TO THE SENDER. 
NO EXCEPTIONS WILL BE MADE  TO THIS POLICY. 


1216.01       Appeals to the Federal Circuit 


35 U.S.C. 142     .   Notice of appeal. 

        When an appeal is taken to the United States Court of Appeals for 
the  Federal Circuit, the appellant shall file in the Patent and Trademark 
Office  a written notice of appeal directed to the Commissioner,  within 
such time  after the date of the decision from which the appeal is taken 
as the Commissioner  prescribes, but in no case less than sixty days, 
after that date. 

35 U.S.C. 143.          Proceedings on appeal. 

        With respect to an appeal described in section 142 of this title, 
the  Commissioner shall transmit to the United States Court of Appeals for 
the Federal  Circuit a certified list of documents comprising the record 
in the Patent and  Trademark Office. The court may request that the 
Commissioner forward the original  or certified copies of such documents 
during pendency of the appeal. In an  ex parte case, the  Commissioner 
shall submit to the court in writing the grounds  for the decision of the 
Patent and Trademark Office, addressing all the issues  involved in the 
appeal. The court shall, before hearing an appeal, give notice  of the 
time and place of the hearing to the Commissioner and the parties in  the 
appeal. 

35 U.S.C. 144.          Decision on appeal. 

        The United States Court of Appeals for the Federal Circuit shall 
review  the decision from which an appeal is taken on the record before 
the Patent  and Trademark Office. Upon its determination the court shall 
issue its mandate  and opinion, which shall be entered of record in the 
Patent and Trademark   Office and shall govern the further proceedings in 
the case. 

37 CFR 1.302    . Notice of appeal. 

        (a)   When an appeal is taken to the U.S. Court of Appeals for the 
 Federal Circuit, the appellant shall give notice thereof to the 
Commissioner  within the time specified in w 1.304. 

        (b)   In interferences, the notice must be served as provided in w 
1.646. 

        (c)   A notice of appeal, if mailed to the Office, shall be 
addressed  as follows: Box 8, Commissioner of Patents and Trademarks, 
Washington, DC 20231. 
        Filing an appeal to the Federal Circuit requires that the 
applicant,  the owner of a patent involved in a reexamination proceeding, 
or a party to  an interference proceeding, (1) file in the Patent and 
Trademark Office a written  notice of appeal (35 U.S.C. 142) directed to 
the Commissioner and (2) file  with the Clerk of the Federal Circuit a 
copy of the notice of appeal and pay  the docket fee for the appeal, as 
provided by Federal Circuit Rule 52. 37 CFR  1.301. 

        For a notice of appeal to be considered timely filed in the Patent 
 and Trademark Office, it must (1) actually reach the Patent and Trademark 
Office  within the time specified in 37 CFR 1.304 (including any 
extensions) or (2)  be mailed within the time specified in 37 CFR 1.304 
(including any extensions)  by "Express Mail" in accordance with 37 CFR 1.10. 

        A Notice of Appeal to the Federal Circuit should not be mailed to 
the  Commissioner, the Board or the examiner. Nor should it be mailed to 
the Solicitor's  mail service address for court papers, given in MPEP w 
1216.  Instead, it should  be filed in the Patent and Trademark Office in 
any one of the following ways: 
        1.  By mail addressed as follows, in which case the notice of 
appeal  must actually reach the Patent and Trademark Office by the due 
date: 
        Box 8 

        Commissioner of Patents and Trademarks 

        Washington, D.C. 20231 

        Attention: Office of the Solicitor 

        2.  By "Express Mail"  (U.S. Postal Service only) under 37 CFR 
1.10  addressed as follows, in which case the notice of  appeal is deemed 
filed on  the date of the Express Mail certificate: 

        Box 8 

        Commissioner of Patents and Trademarks 

        Washington, D.C. 20231 

        Attention: Office of the Solicitor 

        3.  By hand to the Office of the Solicitor. 

        A copy of the notice of appeal and the docket fee should be filed 
with  the Clerk of the Federal Circuit, whose mailing and actual address 
is: 
        U.S. Court of Appeals for the Federal Circuit 

        717 Madison Place, N.W. 

        Washington, D.C.  20439 

        The Solicitor, prior to a decision by the Federal Circuit, may 
request  that the case be remanded to the Patent and Trademark Office and 
prosecution  reopened. See MPEP w 1214.07. 

OFFICE PROCEDURE FOLLOWING DECISION BY THE FEDERAL CIRCUIT 

        After the Federal Circuit has heard and decided the appeal, an 
uncertified  copy of the decision is sent to the Patent and Trademark 
Office and to the  appellant and appellee (if any). 

        In due course, the Clerk of the Federal Circuit forwards to the 
Patent  and Trademark Office a certified copy of the court's decision. 
This certified  copy is known as the "mandate." The mandate is entered in 
the file of the application,  reexamination or interference which was the 
subject of the appeal. The date  of receipt of the mandate by the Patent 
and Trademark Office marks the conclusion  of the appeal, i.e., the 
termination of proceedings as that term is used in  35 U.S.C. 120; see 
37 CFR 1.197(c), or "termination of the interference" as that term is used 
 in 35 U.S.C. 135(c). 

        The Federal Circuit's opinion may or may not be precedential. 
Whether  or not the opinion is precedential, the Patent and Trademark 
Office will not  give the public access to the administrative record of an 
involved application, or to  the file of an interference, unless it is 
otherwise available to the public  under 37 CFR 1.11.  However, since the 
court record in a 35 U.S.C. 141 appeal  generally includes a copy of at 
least part of the application, such may be  inspected at the Federal 
Circuit. In re Mosher, 248 F.2d 956, 115 USPQ 140 
(CCPA 1957). 

        In an ex parte appeal, after the mandate is entered in the 
application  or reexamination file, the file is then returned to the 
appropriate Patent  and Trademark Office official for further proceedings 
consistent with the mandate. 
 See MPEP 
w 1214.06 for handling of claims dependent on rejected claims. 

        1.  All claims rejected. 

        If all claims in the case stand rejected, proceedings in the case 
are  considered terminated on the date of receipt of the Federal Circuit's 
mandate. 
 Because the case is no longer considered pending, it is ordinarily not 
open  to subsequent amendment and prosecution by the applicant. 
Continental Can Company  v. Schuyler, 326 F. Supp. 283, 168 USPQ 625 
(D.D.C. 1970). However, exceptions  may occur where the mandate clearly 
indicates that further action in the Patent  and Trademark Office is to be 
taken in accordance with the Federal Circuit's  opinion. 

        2.  Some claims allowed. 

        Where the case includes one or more allowed claims, including 
claims  allowed by the examiner prior to appeal and claims whose 
rejections were reversed  by either the Board or the court, the 
proceedings are considered terminated  only as to any claims which still 
stand rejected. It is not necessary for the  applicant or patent owner to 
cancel the rejected claims, since they may be  canceled by the examiner in 
an examiner's amendment or by an appropriate notation  in the margin of 
the claims, to avoid confusion of the printer.  Thus, if no  formal 
matters remain to be attended to, the examiner will pass the application 
to issue forthwith on the allowed claims or, in the case of a 
reexamination,  will issue a "Notice of Intent to Issue a Reexamination 
Certificate and/or  Examiner's Amendment."   See MPEP w 2287. 

        If formal matters remain to be attended to, the examiner promptly 
should  take appropriate action on such matters, such as by an examiner's 
amendment  or by an Office action setting a 30-day shortened period for 
reply. However,  the application or reexamination proceeding is considered 
closed to further  prosecution except as to such matters. 

        3.  Remand. 

        Where the decision of the court brings up for action on the merits 
 claims which were not previously considered on the merits, such as a 
decision  reversing a rejection of generic claims in a case containing 
claims to nonelected  species, the examiner will take the case up for 
appropriate action on the matters  thus brought up, but the case is not 
considered open to further prosecution  except as to such matters. 

        4.  Reopening of prosecution. 

        In rare situations it may be necessary to reopen prosecution of an 
 application after a decision by the Federal Circuit.  Any Office action 
proposing  to reopen prosecution after a decision by the Federal Circuit 
must be forwarded  to the Office of the Assistant Commissioner for Patents 
for written approval,  which will be indicated on the Office action. 

DISMISSAL OF APPEAL 

        After an appeal is docketed in the Federal Circuit, failure to 
prosecute  the appeal, such as by appellant's failure to file a brief, may 
result in dismissal  of the appeal by the court. Under particular 
circumstances the appeal also  may be dismissed by the court on motion of 
the appellant and/or the Commissioner. 
        The court proceedings are considered terminated as of the date of 
dismissal.  After dismissal, the action taken by the examiner will be the 
same as set forth  above under the heading "Office Procedure Following 
Decision by the Federal Circuit." 

        In the event of a dismissal for a reason other than failure to 
prosecute  the appeal, the status of the application, reexamination 
proceeding or interference  must be determined according to the 
circumstances leading to the dismissal. 

1216.02       Civil Suits Under 35 U.S.C. 145 


        A 35 U.S.C. 145 civil action is commenced by filing a complaint in 
 the U.S. District Court for the District of Columbia within the time 
specified  in 37 CFR 1.304 (see MPEP w 1216). Furthermore, copies of the 
complaint and  summons must be served in a timely manner on the Solicitor, 
the U.S. Attorney  for the District of Columbia, and the Attorney General 
in the manner set forth  in Rules 4(d)(4) and 4(d)((5) of the Federal 
Rules of Civil Procedure. Regarding  timely service, see Walsdorf v. 
Commissioner, 229 USPQ 559 (D.D.C. 1986) and  Hodge v. Rostker, 501 F. 
Supp. 332 (D.D.C. 1980).  When a 35 U.S.C. 145 civil action is filed, a 
notice thereof is placed  in the application or reexamination file, which 
ordinarily will be kept in  the Solicitor's Office pending termination of 
the civil action. 

        In an action under 35 U.S.C. 145, the plaintiff may introduce 
evidence  not previously presented to the Patent and Trademark Office. But 
plaintiff  will be precluded from presenting new issues, at least in the 
absence of some  reason of justice put forward for failure to present the 
issue to the Patent  and Trademark Office. DeSeversky v. Brenner, 424 F.2d 
857, 858, 
164 USPQ 495, 496 (D.C. Cir. 1970); MacKay v. Quigg, 641 F. Supp. 567, 
570,  231 USPQ 907, 908 (D.D.C. 1986).  Furthermore, new evidence is not 
admissible  in district court where it was available to the parties but 
was withheld from  the Patent and Trademark Office as a result of fraud, 
bad faith, or gross negligence. DeSeversky, 424 F.2d at 858 n.5, 164 USPQ at 
496 n.5; California Research Corp. v. Ladd, 356 F.2d 813, 821 n.18, 148 
USPQ  404, 473 n.18 (D.C. Cir. 1966); MacKay, 641 F. Supp. at 570, 231 
USPQ at 908;  Monsanto Company v. Kamp, 269 F. Supp. 818, 
822, 154 USPQ 259, 260 (D.D.C. 1967); Killian v. 
Watson, 121 USPQ 507, 507 (D.D.C. 1958). 

        Upon termination of the civil action, a statement of the court's 
final  disposition of the case is placed in the application or 
reexamination file,  which is then returned to the examiner for action in 
accordance with the same  procedures as follow termination of a 


35 U.S.C. 141 appeal. See MPEP w 1216.01. 37 CFR 1.197(c) provides that a 
civil  action is terminated when the time to appeal the judgment expires. 
Where the  exact date when the civil action was terminated is material, 
the date may be  ascertained from the Solicitor's Office. 

        The procedures to be followed in the Patent and Trademark Office 
after  a decision, remand, or dismissal of the case by the district court 
are the  same as the procedures followed with respect to 35 U.S.C. 141 
appeals.  See MPEP w 1216.01. 

        Where a civil action involving an application has been dismissed 
before  coming to trial, the application will not be opened to the public 
unless it  is otherwise available to the public under 37 CFR 1.11. 
However, the complaint  and any other court papers not under a protective 
order are open to the public  and may be inspected at the Office of the 
Clerk for the U.S. District Court  for the District of Columbia, located 
in the U.S. Courthouse, Constitution  and John Marshall Place, Washington, 
D.C. 20001. The court papers in the Office  of the Solicitor are not 
generally made available for public inspection. 
        Any subpoena by the district court for an application or 
reexamination  file should be hand-carried to the Office of the Solicitor. 



Contents 

1301        Substantially Allowable Case, Special 

1302        Final Review and Preparation for Issue 

1302.01     General Review of Disclosure 

1302.02     Requirement for a Rewritten Specification 

1302.03     Status Letter of Allowability 

1302.04     Examiner's Amendments and Changes 

1302.04(a)  Title of Invention 

1302.04(b)  Cancelation of Nonstatutory Claim 

1302.04(c)  Cancelation of Claims to Nonelected Invention 

1302.04(d)  Cancelation of Claim Lost in Interference 

1302.04(e)  Cancelation of Rejected Claims Following Appeal 

1302.04(f)  Data of Copending Application Referred to Should 
            Be Brought Up to Date 

1302.04(g)  Identification of Claims 

1302.05     Correction of Drawing 

1302.05(a)  Original Drawings Cannot Be Located 

1302.06     Prior Foreign Application 

1302.07     Use of Retention Labels To Preserve Abandoned 
            Companion Applications 

1302.08     Interference Search 

1302.09     Notations on File Wrapper 

1302.10     Notations on Drawings and on Classification (Issue) 
           Slip 
1302.11     Reference to Assignment Division 

1302.12     Listing of References 

1302.13     Signing 

1302.14     Reasons for Allowance 

1303        Notice of Allowance 

1303.01     Amendment Received After Allowance 

1303.02     Undelivered 

1303.03     Not Withheld Due to Death of Inventor 

1304        Amendments After D-10 Notice 

1304.01     Withholding From Issue of "Secrecy Order" Cases 

1305        Jurisdiction 

1306        Issue Fee 

1306.01     Deferring Issuance of a Patent 

1306.02     Simultaneous Issuance of Patents 

1306.03     Practice After Payment of Issue Fee 

1307        Change in Classification of Cases Which Are in Issue 

1308        Withdrawal From Issue 

1308.01     Rejection After Allowance 

1308.02     For Interference Purposes 

1308.03     Quality Review Program for Examined Patent 
           Applications 
1309        Issue of Patent 

1309.01     Patent Terms and Extensions 

1309.02     "Printer Waiting" Cases 


1301    Substantially Allowable Case, Special 


When an application is in condition for allowance, except as to matters of 
 form, the case will be considered special and prompt action taken to 
require  correction of formal matters. See MPEP w 710.02(b). 


1302    Final Review and Preparation for Issue 



1302.01       General Review of Disclosure [R-2] 


When an application is apparently ready for allowance, it should be 
reviewed  by the examiner to make certain that the whole case meets all 
formal requirements  and particularly that the brief summary of the 
invention and the descriptive  matter are confined to the invention to 
which the allowed claims are directed  and that the language of the claims 
finds clear support or antecedent basis  in the specification.  Neglect to 
give due attention to these matters may lead  to confusion as to the scope 
of the patent. 

Frequently, the invention as originally described and claimed was of much 
greater  scope than that defined in the claims as allowed.  Some of much 
of the subject  matter disclosed may be entirely outside the bounds of the 
claims accepted  by the applicant. In such case, the examiner should 
require the applicant to  modify the brief summary of the invention and 
restrict the descriptive matter  so as to be in harmony with the claims. 
However, valuable for reference purposes  the examiner may consider the 
matter which is extraneous to the claimed invention,  patents should be 
confined in their disclosures to the respective inventions  patented 
(>see< 37 CFR 1.71 and 1.73).  Of course, enough  background should  be 
included to make the invention clearly understandable. See MPEP w 
608.01(d)  and w 608.01(e). >Form Paragraphs 13.07 and 13.08 may be used. 

W  13.07        Disclosure to be Limited to Claimed Invention 

Applicant is required to modify the brief summary of the invention and to 
restrict  the descriptive matter so that they are confined to and in 
harmony with the  invention to which the allowed claims are directed. See 
MPEP # 1302.01. For  example, [1]. 

Examiner Note: 

An example should be given as to the specific sheets or drawing figures 
and  portions of the specification which should be cancelled. If drawing 
figures  are to be cancelled, applicant should be reminded that subsequent 
figures must  be renumbered. 

W  13.08        Disclosed Subject Matter Outside the Bounds of the Claims 
The application contains disclosure entirely outside the bounds of the 
allowed  claims. Applicant is required to modify the brief summary of the 
invention  and restrict the descriptive matter so as to be in harmony with 
the claims 
(MPEP # 1302.01).< 

There should be clear support or antecedent basis in the specification for 
 the terminology used in the claims.  Usually,  the original claims follow 
the  nomenclature of the specification; but sometimes in amending the 
claims or  in adding new claims, applicant employs terms that do 
not appear in the specification.  This may result in uncertainty as to the 
 interpretation to be given such terms.  See MPEP w 608.01(o). 

Where a copending application is referred to in the specification, the 
examiner  should ascertain whether it has matured into a patent or become 
abandoned and  that fact or the patent number should be added to the 
specification. 
The claims should be renumbered as required by 
37 CFR 1.126, and particular attention should be given to claims dependent 
 on previous claims to see that the numbering is consistent. An examiner's 
amendment  should be prepared if the order of the claims is changed. See 
MPEP w 608.01(j),  w 608.01(n), and 
w 1302.04(g). 

The abstract should be checked for an adequate and clear statement of the 
disclosure.  See MPEP 
w 608.01(b).  The  length of the abstract should be limited to 250 words. 
The title should also be checked.  It should be as short and specific as 
possible. 
 However, the title should be descriptive of the invention claimed, even 
though  a longer title may result. If a satisfactory title is not supplied 
by the applicant,  the examiner may change the title on or after 
allowance. See MPEP w 606 and  w 606.01. 

No pencil notes should be made in the application file by the examiner. 
Any  notes in the file must be erased when the case is passed to issue. 
The Mail Room receipt date of all amendments should be reviewed to assure 
that  they were timely filed. 


1302.02       Requirement for a Rewritten Specification [R-2] 


Whenever interlineations or cancellations have been made in the 
specification  or amendments which would lead to confusion and mistake, 
the examiner should  require the entire portion of specification affected 
to be rewritten before  passing the case to issue. See 37 CFR 1.125 and 
MPEP w 608.01(q). 

Form Paragraph 13.01 should be used when making such a requirement. 
W 13.01       Requirement for Rewritten Specification 

The interlineations or cancellations made in the specification or 
amendments  to the claims would lead to confusion and mistake during the 
issue and printing  process. Accordingly, the portion of the specification 
or claims as identified  below is required to be rewritten before passing 
the case to issue. See 37  CFR 1.125 and MPEP w 608.01(q). 

Examiner Note: 

1.  Specific discussion of the sections of the specification or claims 
required  to be rewritten must be set forth. 

** 

*>2.< See paragraph 6.28.01 for a substitute specification. 


1302.03       Status Letter of Allowability 


Form PTO-37 is used whenever an application has been placed in condition 
for  allowance as a result of a communication from or an interview with 
applicant,  except where an examiner's amendment will be mailed promptly. 

The date of the communication or interview which resulted in the allowance 
 and the name of the person with whom the interview, if any, was held 
should  be included in the letter. 

Immediately after determining that a PTO-37 letter or examiner's amendment 
 is necessary, it should be prepared and mailed before preparing the 
application  for allowance. See MPEP w 714.13. 


1302.04       Examiner's Amendments and Changes [R-2] 


Except by formal amendment duly signed or as hereinafter provided, no 
corrections,  erasures, or interlineations may be made in the body of 
written portions of  the specification or any other paper filed in the 
application for patent. (See  37 CFR 1.121.) 

Correction of the following obvious errors and omissions only may be made 
with  pen by the examiner of the case who  will then initial the sheet 
margin and  assume full responsibility for the change. When correcting 
originally filed  papers, clean red ink must be used (not blue or black ink). 

1.  Misspelled words. 

2.  Disagreement of a noun with its verb. 

3.  Inconsistent ``case" of a pronoun. 

4.  Disagreement between a reference character as used in the description 
and  on the drawing. The character may be corrected in the description but 
only  when the examiner is certain of the propriety of the change. 

5.  Entry of "Patent No. ........" to identify a patent which has been 
granted  on a U.S. application referred to by application number in the 
specification. 
6.  Entry of  "abandoned" if a U.S. patent application referred to by 
application  number in the specification has become abandoned. 

7.  Correction of reversed figure numbers, Garrett v. Cox, >233 F.2d 343, 
345,<  110 USPQ 52, 54 (CCPA 1956). 

8.  Other obvious minor grammatical errors such as misplaced or omitted 
commas,  improper parentheses, quotation marks, etc. 

9.  Obvious informalities in the application, other than the ones noted 
above,  or of purely grammatical nature. 

The fact that applicant is entitled to an earlier U.S. effective filing 
date  under 35 U.S.C. 120 or 35 U.S.C. 119(e) is sometimes overlooked. To 
minimize  this possibility, the statement that, "This is a division 
(continuation, continuation-in-part)  of Application Number ........, 
filed ........." should appear as the first  sentence of the description 
of applications claiming priority under 35 U.S.C. 120, except in the case 
of design applications where it should appear  as set forth in MPEP 
w 1503.01. In applications claiming priority under 
35 U.S.C. 119(e), a statement such as "This application claims the benefit 
 of U.S. Provisional Application No. 60/---, filed ---'' should appear as 
the  first sentence of the description. In addition, for an application 
which is  claiming the benefit under 35 U.S.C. 120 of a prior application 
which in turn  claims the benefit of a provisional application under 35 
U.S.C. 119(e), a suitable  reference would read, "This application is a 
continuation of U.S. Application  No.  08/---, filed ---, now abandoned, 
which claims the benefit of U.S. Provisional  Application No. 60/---, 
filed ---''. The status (whether patented or abandoned)  of the 
nonprovisional application(s) for which priority is claimed should also 
be included. Any such statements appearing elsewhere in the specification 
should  be relocated. The clerk indicates the change for the printer in 
the appropriate  margin when checking new applications for matters of form. 

Other obvious informalities in the application may be corrected by the 
examiner,  but such corrections must be by a formal examiner's amendment, 
signed by the  primary examiner, placed in the file, and a copy sent to 
the applicant. The  changes specified in the amendment are entered by the 
clerk in the regular  way. An examiner's amendment should include Form 
Paragraph 13.02 and Form Paragraph  13.02.01. >Form Paragraph 13.02.02 
should be used if an extension of time is  required.< 

W 13.02.        Examiner's Amendment 

An examiner's amendment to the record appears below. Should the changes 
and/or  additions be unacceptable to applicant, an amendment may be filed 
as provided  by 37 CFR 1.312. To ensure consideration of such an 
amendment, it MUST be submitted  no later than the payment of the issue fee. 

W 13.02.01  Examiner's Amendment Authorized 

Authorization for this examiner's amendment was given in a telephone 
interview  with [1] on [2]. 

>W  13.02.02    Extension of Time and Examiner's Amendment Authorized by 
Telephone 
An extension of time under 37 CFR 1.136(a) is required in order to make an 
 examiner's amendment which places this application in condition for 
allowance.  During a telephone conversation conducted on [1], [2] 
requested an extension  of time for [3] MONTH(S) and authorized the 
Commissioner to charge Deposit  Account No. [4] the required fee of $[5] 
for this extension and authorized  the following examiner's amendment. 
Should the changes and/or additions be  unacceptable to applicant, an 
amendment may be filed as provided by 37 CFR  1.312. To ensure 
consideration of such an amendment, it MUST be submitted no  later than 
the payment of the issue fee. 

Examiner Note: 

1.  An interview summary form dated before the extended period expires is 
also  required. 

2.  See MPEP  w 706.07(f), item 10 which explains when an extension of 
time  is needed in order to make amendments to place the application in 
condition  for allowance.< 

The amendment or cancelation of claims by formal examiner's amendment is 
permitted  when passing an application to issue where these changes have 
been authorized  by applicant (or his attorney or agent) in a  telephone 
or personal interview.  The examiner's amendment should indicate that the 
changes were authorized,  the date and type (personal or telephone) of 
interview, and with whom it was  held. 

The examiner's amendment practice may be used to make charges against 
deposit  accounts under special conditions. 

An examiner's amendment can be used to make a charge against a deposit 
account,  provided prior approval is obtained from the applicant, attorney 
or agent,  in order to expedite the issuance of a patent on an application 
otherwise ready  for allowance. When such an examiner's amendment is 
prepared, the prior approval  is indicated by identification of the name 
of the authorizing party, the date  and type (personal or telephone) of 
authorization, the purpose for which the  charge is made (additional 
claims, etc.), and the deposit account number. 
Further identifying data, if deemed necessary and requested by the 
attorney,  should also be included in the examiner's amendment. 

For example, Form Paragraph 13.06 may be used to charge an extension of 
time  fee in an examiner's amendment. 

W 13.06       Extension of time  *>by Examiner's Amendment< 

An extension of time under 37 CFR 1.136(a) is required to place this 
application  in condition for allowance. During a telephone conversation 
conducted on [1],  [2] requested an extension of time for  [3] MONTH(S) 
and authorized the Commissioner  to charge deposit account no. [4] the 
required fee of $ [5] for this extension. 
Examiner Note: 

1.  An interview summary form dated before the extended period expires is 
also  required. 

2.  See MPEP  w 706.07(f), item 10 which explains when an extension of 
time  is needed in order to make amendments to place the application in 
condition  for allowance. 

3.  When an examiner's amendment is also authorized use form 13.02.02 
instead. 
A change in the abstract may be made by examiner's amendment. 

Where a reference to the parent application in an otherwise allowable 37 
CFR  1.60 or 37 CFR 1.62 case has inadvertently been omitted by the 
applicant, the  examiner should insert the required reference by 
examiner's amendment (see  MPEP w 201.11). 

References cited as being of interest by examiners when passing an 
application  to issue will not be supplied to applicant. The references 
will be cited as  usual on form PTO-892, a copy of which will be attached 
to examiner's amendment  form PTO-37. 

See also MPEP w 608.02(w). 

No other changes may be made by any person in any record of the Patent and 
 Trademark office without the written approval of the Commissioner of 
Patents  and Trademarks. 

In reviewing the application, all errors should be carefully noted.  It is 
 not necessary that the language be the best; it is, however, essential 
that  it be clear in meaning, and free from errors in syntax.  Any 
necessary examiner's  amendment is usually made at the time a case is 
being prepared for issue by  the examiner. However, the need for such may 
not be noted until after the proof  of the patent is read and the case is 
sent up to the examiner with a "printer  waiting" slip (Form PTO-97). A 
copy of any formal examiner's amendment is sent  to applicant even if the 
application is already in the printer's hands. See  MPEP w 1309.01. 

Examiners will not cancel claims on the basis of an amendment which argues 
 for certain claims and, alternatively, purports to authorize their 
cancelation  by the examiner if other claims are allowed, In re Willingham, 
>282 F.2d 353,< 127 USPQ 211 (CCPA 1960). 

In all instances, both before and after final rejection, in which an 
application  is placed in condition for allowance as by an interview or 
amendment, applicant  should be notified promptly of this fact by means of 
form letter PTO-37 or  an examiner's amendment. 

If after reviewing, screening, or surveying an allowed application in the 
Office  of Quality Review, an error or omission of the type noted in items 
1 through  9 under the second paragraph above is noted, the error or 
omission may be corrected  by the Patentability Review Examiner in the 
same manner as set forth in the  second paragraph.  Since all other 
obvious informalities may only be corrected  by a formal examiner's 
amendment, if the Office of Quality Review discovers  any such 
informality, the Patentability Review Examiner will return the application 
 to the Group examining personnel via the Group Director suggesting, as 
appropriate,  specific changes for approval and correction by the examiner 
through the use  of an examiner's amendment. 


1302.04(a)  Title of Invention 


Where the title of the invention is not specific to the invention as 
claimed,  see MPEP w 606.01. 


1302.04(b)  Cancelation of Nonstatutory Claim 


When a case is otherwise in condition for allowance the examiner may 
cancel  an obviously nonstatutory claim such as one to  "A device 
substantially as  shown and described." Applicant should be notified of 
the cancelation of the  claim by an examiner's amendment. 


1302.04(c)  Cancelation of Claims to Nonelected Invention 


See MPEP w 821.01 and w 821.02. 


1302.04(d)  Cancelation of Claim Lost in Interference 


See MPEP w 1109.02 and w 2363.03. 


1302.04(e)  Cancelation of Rejected Claims Following Appeal 


See MPEP w 1214.06, w 1215.03, and w 1215.04. 


1302.04(f)  Data  of  Copending  Application Referred to Should Be Brought 
Up to Date 

Where a patent application which is ready for issue refers by application 
number  to a U.S.  nonprovisional application which has matured into a 
patent, the  examiner is authorized to enter the patent number without a 
formal examiner's  amendment. This entry should be in the following form: 
", Patent No. .........". 
 The entry is to be initialed and dated in the margin by the examiner to 
fix  responsibility for the same. The entry and the initials should be in 
red ink. 
If the nonprovisional application referred to has become abandoned, the 
entry  ``abandoned" should be made in red ink, and initialed and dated by 
the examiner  in the margin.  A formal examiner's amendment is not required. 


1302.04(g)   Identification of Claims 


To identify a claim, a formal examiner's amendment should refer to it by 
the  original number and, if renumbered in the allowed application, also 
by the  new number. 


1302.05   Correction of Drawing 


Where an application otherwise ready for issue requires correction of the 
drawing,  the examiner should send revised application to the Publishing 
Division after  requiring corrected drawings. 


1302.05(a)  Original Drawings Cannot Be Located 


When the original drawings cannot be located and the application is 
otherwise  in condition for allowance, no "Official Search" need be 
undertaken. The examining  group should check its own area and attempt to 
obtain the drawing from abandoned  files.  If the drawing cannot be 
located, a yellow tag should be placed on  the application to flag it as 
having a drawing problem.  A memorandum as outlined  below should be 
stapled to the outside of the file when forwarding it to the  Publishing 
Division. 

Memorandum 

Application No. .............................. 

Date forwarded .............................. 

ATTENTION PUBLISHING DIVISION, DRAWING MISSING 

I have attempted to locate the drawing in this application without 
success.  The drawing cannot be located in the examining group. (The 
drawing cannot be  obtained from Abandoned Files.) 

  Issue Revision Clerk 

        Print O.G. Fig.                                 Class 
............................. 
        Subclass 


1302.06       Prior Foreign Application 


  See MPEP w 201.14(c) and # 202.03. 


1302.07       Use of Retention Labels To Preserve Abandoned Companion 
Applications 

Related applications referred to in patent specifications are preserved 
from  destruction by a retention label (form PTO-150) which is attached to 
the outside  of the file wrapper. The final review clerk of the group 
prepares such a label  for use as indicated below on each application 
(which has not become a patent)  which is referred to in the specification 
or oath or declaration of the application  ready for allowance (or in any 
Office letter therein). 

If the case referred to is: 

Still pending: 

Fill in and paste label on the face of the pending file wrapper in the 
space  provided.  Make no change in specification of the allowable 
application. 
Abandoned for failure to pay issue fee: 

If file has been forwarded to Files Repository, fill in label and send it 
to  Files Repository for attachment to the wrapper. If not forwarded, 
treat the  same as pending case. 

Abandoned: 

If file has been forwarded to the Files Repository, fill in label and send 
 it to Files Repository for attachment to the wrapper. If not forwarded, 
treat  the same as pending case. Add "abandoned" in red ink and initials 
to the allowable  application. 

Already patented: 

No label is required. Insert patent number in specification if not already 
 present. Formal examiner's amendment not necessary if this is only 
change. 
In issue: 

  Fill in label. Make no change in the specification of the allowable 
application. 

Examiners are reminded that only one retention label is necessary. Thus, 
if  a retention label is already present, it is sufficient to merely add 
``et al."  to the serial number cited thereon. 


>1302.08        Interference Search [R-2]< 


Assuming that the case is found ready for issue, the examiner makes an 
interference  search  and notes the date and class and subclasses searched 
in the file wrapper.  To do this, the examiner inspects all the pending 
prints and drawings (or all  the digests if the invention is not 
susceptible of illustration) in the relevant  subclasses of the class in 
which the application is classified, and all other  pertinent classes, 
whether in his or her group or elsewhere, in order to ascertain  whether 
any other applicant is claiming substantially the same subject matter  as 
is being allowed in the case in hand.  When any of the drawings or digests 
 shows such a condition to be likely, the corresponding file is reviewed. 
Note also MPEP w 2301.01(b). 

If the search does not disclose any interfering application, the examiner 
should  prepare the case for issue. 

An interference search may be required in Group *>2200<.  Inspection of 
pertinent  prints, drawings, brief cards, and applications in Group 
*>2200< will be done  on request by an examiner in Group *>2200<. 


1302.09       Notations on File Wrapper [R-2] 


The examiner preparing the application for issue fills out, in black ink, 
the  appropriate spaces on the face of the file wrapper. 

To aid the Publishing Division and the printers, examiners should write 
the  class and subclass on the outside of the file wrapper as carefully 
and legibly  as possible. Each numeral should be distinct and any decimal 
point should be  shown clearly and in its proper position. 

Spaces are provided on the file wrapper for identifying data of a prior 
abandoned  application for which the instant application is a substitute, 
and for the  parent application(s) and prior foreign application(s). 
Examiners must review  the data regarding prior U.S. applications to make 
sure that the information  is correct when preparing the application for 
issue.  If any claim to priority  under 35 U.S.C. 120, 121, or 365(c) is 
added, deleted, and/or modified during  prosecution of the application and 
such addition, deletion, and/or modification  have been approved, the 
examiner must make sure that the information on the  file wrapper *>and in 
the PALM data base are<  current and up to date.  >If  the PALM system has 
not been updated, the application must be forwarded to  Application 
Division Customer Corrections, accompanied by a completed Application 
Branch Data Base Routing Slip, with an explanation of the correction to be 
 made.< 

The class and subclass and the name of the examiner which are written in 
pencil  on the file wrapper should correspond to the class and subclass in 
which the  patent will issue and to the name of the examiner preparing the 
application  for issue. 

 See MPEP w 202.02 for notation as to parent or prior U.S. application, 
including  provisional application, to be placed on file wrapper. 

See MPEP w 202.03 for notation as to foreign patent application to be 
placed  on file wrapper. 

See MPEP w 1302.13 for name of examiner. 

Examiners, when preparing an application for issue, are to record the 
number  of the claim selected for printing in the Official Gazette in the 
box labeled  "PRINT CLAIM(S):" on the inside left flap of the file wrapper 
above the "Index  of Claims". 

The claim or claims should be selected in accordance with the following 
instructions: 
1.  The broadest claim should be selected. 

2.  Misspelled words. 

3.  Examiners should ordinarily designate but one claim on each invention, 
 although when a plurality of inventions are claimed in an application, 
additional  claims up to a maximum of five may be designated for 
publication. 
4.  A dependent claim should not be selected unless the independent claim 
on  which it depends is also printed. In the case where a multiple 
dependent claim  is selected, the entire chain of claims for one 
embodiment should be listed. 
5.  In reissue applications, the broadest claim with changes or the 
broadest  additional reissue claim should be  selected for printing. 

When recording this information in the box provided, the following items 
should  be kept in mind: 

1.  Write the claim number clearly in black ink. 

2.  If multiple claims are selected, the claim numbers should be separated 
 by commas. 

3.  The claim designated must be referred to by using the renumbered 
patent  claim number rather than the original application claim number. 


1302.10       Notations on Drawings and on Classification (Issue) Slip 

On the margin of the first sheet of drawing, the examiner indicates in 
black  ink in the spaces provided by the Draftsman's stamp the figure to 
be printed  in the Official Gazette and also the final official 
classification of the case. 
 Ordinarily a single figure is selected for printing. This figure should 
be  consistent with the claim to be printed in the Official Gazette. The 
numerals  should fill as much of the space provided as feasible.  The 
figure to be printed  in the Official Gazette must not be one that is 
labeled "prior art". 
If the selected figure is not on the first sheet, the examiner should 
indicate  it also on the sheet where it does appear. If there is no figure 
illustrative  of or helpful in understanding the claimed invention, no 
figure need be selected.  ``None" may be written after  ``O.G. Fig."  If, 
through inadvertence, the stamped  legend for O.G. Fig. and class and 
subclass appears within the margin of the  drawing, the examiner should 
make the notations outside of the margin. 
Under current practice, the clerk of the examining group does NOT enter 
any  date when the case is  ``sent to issue".  See MPEP w 903.07, w 
903.07(b) and  w 903.09 for notation to be applied to the Issue 
Classification Slip (Form  PTO-270). 

In all reissue applications, the number of the original patent which is 
being  reissued should be placed in the box provided therefor below the 
box for the  applicant's name. 

To ensure that both copies of the slip do not become separated from the 
file,  examiners should affix the entire unit setto the inside left flap 
of the file  wrapper by stapling it in the area above the perforation.  It 
is not necessary  to remove the carbon paper. 

The Allowed Files Unit of the Publishing Division removes the original for 
 use by Machine Operations Branch and leaves the carbon copy in the file 
for  use by the printer. 


1302.11       Reference to Assignment Division 


The practice of referring certain applications to the Assignment Division 
when  passing them to issue is no longer followed.  See MPEP w 303. 


1302.12       Listing of References 


All references which have been cited by the examiner during the 
prosecution,  including those appearing in Board of Patent Appeals and 
Interferences decisions  or listed in the reissue oath, must be listed on 
either a form PTO-892 or PTO-1449.  All such reference citations will be 
printed in the patent. 

At time of allowance, the examiner may cite pertinent art in an examiner's 
 amendment. Such pertinent art should be listed as usual on form PTO-892, 
a  copy of which is attached to the examiner's amendment form PTOL-37. 
Such pertinent  art, other than foreign patent documents and non-patent 
literature, is not  sent to the applicant. Such citation of art is 
important in the case of continuing  applications where significant prior 
art is often of record in the parent case.  In the rare instance where no 
art is cited in a continuation application, all  the references cited 
during the prosecution of the  parent application  will 
 be  listed at  allowance  for printing in the patent. See MPEP w 707.05 
and  707.05(a). 

When preparing an application for allowance, the "final review" clerk will 
 verify that there is at least one list of references (PTO-892 or 
PTO-1449)  in the application.  All lists of references are maintained in 
the center section  of the file wrapper. 

In the first action after termination of an interference, the examiner 
should  make of record in each application all references not already of 
record which  were pertinent to any motions to dissolve and which were 
discussed in the decision  on motion. 

In any case, otherwise ready for issue, in which the erroneous citation 
has  not been formally corrected in an official paper, the examiner is 
directed  to correct the citation by an examiner's amendment. See MPEP 
w 707.05(g). 

Any new reference cited when the case is in issue, under the practice of 
MPEP  w 1308.01, should be added by way of a PTO-892 or PTO-1449. 

All copies of references placed in the file wrapper during prosecution 
should  be retained therein, when the allowed application is forwarded to 
the Publishing  Division. 


1302.13       Signing 


The primary examiner and the assistant examiner involved in the allowance 
of  an application will print or stamp their names on the file wrapper in 
the appropriateboxes.  The assistant examiner shall place his or her 
initials after his or her printed  or stamped name. The primary examiner 
will place his or her signature in the  appropriate box on the file 
wrapper so that the stamped or 

printed name can still be easily read. A primary examiner who prepares an 
application  for issue prints or stamp his or her name and signs the file 
wrapper only in  the "Primary Examiner" box. A line should be drawn 
through the "Assistant   Examiner" box to make it clear that the absence 
of a name in the box was not  an oversight. 

Only the names of the primary examiner and the assistant examiner 
appearing  on the face of the application file wrapper will be listed in 
the printed patent. 

1302.14       Reasons for Allowance 


37 CFR 1.109.     Reasons for allowance. 

 If the examiner believes that the record of the prosecution as a whole 
does  not make clear his or her reasons for allowing a claim or claims, 
the examiner  may set forth such reasoning. The reasons shall be 
incorporated into an Office  action rejecting other claims of the 
application or patent under reexamination  or be the subject of a separate 
communication to the applicant or patent owner.  The applicant or patent 
owner may file a statement commenting on the reasons  for allowance within 
such time as may be specified by the examiner. Failure  to file such a 
statement shall not give rise to any implication that the applicant  or 
patent owner agrees with or acquiesces in the reasoning of the examiner. 
REASONS FOR ALLOWANCE 

One of the primary purposes of 37 CFR 1.109 is to improve the quality and 
reliability  of issued patents by pro-viding a complete file history which 
should clearly  reflect, as much as is reasonably possible, the reasons 
why the application  was allowed. Such information facilitates evaluation 
of the scope and strength  of a patent by the patentee and the public and 
may help avoid or simplify litigation  of a patent. 

The practice of stating the reasons for allowance is not new, and the rule 
 merely formalizes the examiner's existing authority to do so and provides 
applicants  or patent owners an opportunity to comment upon any such 
statement of the examiner. 
It should be noted that the setting forth reasons for allowance is not 
mandatory  on the examiner's part.  However, in meeting the need for the 
application file  history to speak for itself, it is incumbent upon the 
examiner in exercising  his or her responsibility to the public, to see 
that the file history is as  complete as is reasonably possible. 

When an application is finally acted upon and allowed, the examiner is 
expected  to determine, at the same time, whether the reasons why the 
application is  being allowed are evident from the record. 

In determining whether reasons for allowance should be recorded, the 
primary  consideration lies in the first sentence of 37 CFR 1.109 which 
states: 
"If the examiner believes that the record of the prosecution as a whole 
does  not make clear his or her reasons for allowing a claim or  claims, 
the examiner 
 may set  forth such  reasoning."  (Emphasis added). 

In most cases, the examiner's actions and the applicant's responses make 
evident  the reasons for allowance, satisfying the ``record as a whole" 
proviso of  the rule.  This is particularly true when applicant fully 
complies with 37  CFR 1.111 (b) and (c), 37 CFR 1.119 and 
37 CFR1.133(b). Thus, where the examiner's actions clearly point out the 
reasons  for rejection and the applicant's response explicitly represents 
reasons why  claims are patentable over the reference, the reasons for 
allowance are in  all probability evident from the record and no statement 
should be necessary. 
 Conversely, where the record is not explicit as to reasons, but allowance 
 is in order, then a logical extension of 37 CFR 1.111, 1.119, and 1.133 
would  dictate that the examiner should make reasons of record and such 
reasons should  be specific. 

Examiners should give particular attention to whether an application file 
reasonably  indicates the reasons for allowance when the application is 
being allowed in  the first Office action, especially if prior art made of 
record in the file  is very close to the claims; when an examiner 
withdraws a rejection for reasons  not suggested by the applicant; when an 
applicant submits several arguments  for allowing a claim and the examiner 
finds not all of them persuasive; and  when the examiner allows a claim 
after remand from the Board of Patent Appeals  and Interferences. 

Where specific reasons are recorded by the examiner, care must be taken to 
 ensure that such reasons are accurate, precise, and do not place 
unwarranted  interpretations, whether broad or narrow, upon the claims. 
The examiner should  keep in mind the possible misinterpretations of his 
or her  statement  that  may be made and its possible estoppel effects. 
Each statement should include at least: (1) the  major difference in the 
claims not found in the prior art of record, and (2)  the reasons why that 
difference is considered to define patentably over the  prior art if 
either of these reasons for allowance is not clear in the record. 
 The statement is not intended to 


necessarily state all the reasons for allowance or all the details why 
claims  are allowed and should not be written to specifically or impliedly 
state that  all the reasons for allowance are set forth. 

Under the rule, the examiner must make a judgment of the individual record 
 to determine whether or not reasons for allowance should be set out in 
that  record. These guidelines, then, are intended to aid the examiner in 
making  that judgment. They comprise illustrative examples as to 
applicability and  appropriate content. They are not intended to be 
exhaustive. 

  EXAMPLES OF WHEN IT IS LIKELY THAT 
 A STATEMENT SHOULD BE ADDED TO 
THE RECORD 

1. Claims are allowed on the basis of one (or some) of a number of 
arguments  and/or affidavits presented, and a  statement is necessary to 
identify which  of these were persuasive, for example: 

a.  When the arguments are presented in an appeal brief. 

b.  When the arguments are presented in an ordinary response, with or 
without  amendment of claims. 

c.  When both an affidavit under 37 CFR 1.131 and arguments concerning 
rejections  under 35 U.S.C. 102 and 103 are presented. 

2. First action issue: 

a.  Of a noncontinuing application, wherein the claims are very close to 
the  cited prior art and the differences have not been discussed 
elsewhere. 
b.  Of continuing applications, wherein reasons for allowance are not 
apparent  from the record in the parent case or clear from preliminary 
filed matters. 
3. Withdrawal of a rejection for reasons not suggested by applicant, for 
example: 
a.  As a result of an appeal conference. 

b.  When applicant's arguments have been misdirected or are not persuasive 
 alone and the examiner comes to realize that a more cogent argument is 
available. 
c.  When claims are amended to avoid a rejection under 35 U.S.C. 102, but 
arguments 
(if any) fail to address the question of obviousness. 

4. Allowance after remand from the Board of Patent Appeals and 
Interferences. 
5.  Allowance coincident with the citation of newly found references that 
are  very close to the claims, but claims are considered patentable 
thereover: 
a.  When reference is found and cited (but not argued) by applicant. 
b.  When reference is found and cited by examiner. 

6.  Where the reasons for allowance are of record but, in the examiner's 
judgment,  are unclear (e.g., spread throughout the file history) so that 
an unreasonable  effort would be required to collect them. 

7.  Allowance based on claim interpretation which might not be readily 
apparent,  for example: 

a.  Article claims in which method limitations impart patentability. 
b.  Method claims in which article limitations impart patentability. 
c.  Claim is so drafted that ``nonanalogous" art is not applicable. 
d.  Preamble or functional language ``breathes life"  into claim. 
EXAMPLES OF STATEMENTS OF SUITABLE 
CONTENT 

1. The primary reason for allowance of the claims is the inclusion of .03 
to  .05 percent nickel in all of the claims. Applicant's second affidavit, 
in example  5 shows unexpected results from this restricted range. 

2. During two telephonic interviews with applicant's  attorney, Mr. 
............  on 5/6 and 5/10/77, the examiner stated that applicant's 
remarks about the  placement of the primary teaching's grid member were 
persuasive, but he pointed  out that applicant did not claim the member as 
being within the reactor.  Thus,  an amendment doing such was agreed to. 

3. The instant application is deemed to be directed to an unobvious 
improvement  over the invention patented in Pat. No. 3,953,224. The 
improvement comprises  baffle means 12 whose effective length in the 
extraction tower may be varied  so as to optimize and to control the 
extraction process. 

4. Upon reconsideration, this application has been awarded the effective 
filing  date of application number. 

.............  Thus the rejection under 35 U.S.C. 102(d) and 103 over 
Belgium  Patent No. 757,246 is withdrawn. 

5. The specific limitation as to the pressure used during compression was 
agreed  to during the telephone interview with applicant's attorney. 
During said interview,  it was 


noted that applicants contended in their amendment that a process of the 
combined  applied teachings could not result in a successful article 
within the amended  pressure range. The examiner agreed to rely on this 
statement (see page 3,  bottom, of applicant's amendment), and the case 
was allowed. 

6. In the examiner's opinion, it would not be obvious to a person of 
ordinary  skill in the art first to eliminate one of top members 4, second 
to eliminate  plate 3, third to attach remaining member 4 directly to tube 
2 and finally  to substitute this modified handle for the handle 20 of 
Nania (see Fig. 1)  especially in view of applicant's use of term 
``consisting." 

EXAMPLES OF STATEMENTS THAT ARE NOT 
SUITABLE AS TO CONTENT 

1. The 3 roll press couple has an upper roll 36 which is swingably 
adjustable  to vary the pressure selectively against either of the two 
lower rolls. (NOTE:  The significance of this statement may not be clear 
if no further explanation  is given.) 

2. The main reasons for allowance of these claims are applicant's remarks 
in  the appeal brief and an agreement reached in the appeals conference. 
3.  The instant composition is a precursor in the manufacture of melamine 
resins.  A thorough search of the prior art did not bring forth any 
composition which  corresponds to the instant composition. The examiner in 

the art also did not know of any art which could be used against the 
instant  composition. 

4. Claims 1-6 have been allowed because they are believed to be both novel 
 and unobvious. 

The examiner should not include in his statement any matter which does not 
 relate directly to the reasons for allowance. For example: 

5.  Claims 1 and 2 are allowed because they are patentable  over the prior 
 art.  If applicants are aware of better art than that which has been 
cited,  they are required to call such to the attention of the examiner. 

6. The reference Jones discloses and claims an invention similar to 
applicant's. 
 However, a comparison of the claims, as set forth below, demonstrates the 
 conclusion that the inventions are noninterfering. 

Most instances when the examiner finds a need to place in the file a 
statement  of the reasons for allowing a claim or claims will come at the 
time of allowance.  In such cases, the excessive white space examiner 
should (a) check box 6 on  the form PTOL-*>37< marked "other" and indicate 
"see attached statement of  reasons for allowance", and (b) attach thereto 
a separate form containing the  examiner's statement of reasons for 
allowance. The same general procedure will  be followed in connection with 
an examiner's amendment (PTOL-37) by indicating  thereon  >"<see attached 
statement of reasons for allowance>"<  and attaching  thereto the form 
containing the reasons for allowance. Such a statement should  be 
typewritten. The form  should  identify  the application  number  and  be 
clearly labeled  "Statement of Reasons for Allowance".  It should also 
specify  that comments may be filed by the applicant on the statement and 
should preferably  be submitted with the payment of the issue fee so as 
not to delay processing  of the application and in any event no later than 
payment of the issue fee. 
Form Paragraph 13.03 may be used for this purpose. 

W  13.03        Reasons for Allowance 

The following is an examiner's statement of reasons for allowance: 
 [1]. 

  Any comments considered necessary by applicant must be submitted no 
later  than the payment of the issue fee and, to avoid processing delays, 
should preferably  accompany the issue fee. Such submissions should be 
clearly labeled "Comments  on Statement of Reasons for Allowance". 

Examiner Note: 

Do not use this paragraph in reexamination applications. 

Such comments will be entered in the application file by the Allowed Files 
 Branch with an appropriate notation on the  "Contents" list on the file 
wrapper. 
A statement may be sent to applicant with other communications, where 
appropriate,  but should be clearly labeled as a  "Statement of Reasons 
for Allowance" and  contain the other data indicated above. Examiners are 
expected to prepare any  statement of their reasons for allowance 
accurately and precisely so as not  to place unwarranted interpretations, 
whether broad or narrow, on the claims.  Where the examiner has a large 
number of reasons for allowing a claim, it may  suffice to state only the 
major or important reasons, being careful to so couch  the statement. For 
example, a statement might start: "The primary reason for  the allowance 
of the claims is the  inclusion   of   the   limitation 
....................  in  all  the  claims which is not found in the prior 
art references," with further amplification  as necessary. 

Stock paragraphs with meaningless or uninformative statements of the 
reasons  for the allowance should not be used. The statement of reasons 
for allowance  by the examiner is intended to provide information equivalent 


to that contained in a file in which the examiner's Office actions and the 
 applicant's responses make evident the examiner's reasons for allowing 
claims. 
Examiners are urged to carefully carry out their responsibilities to see 
that  the application file contains a complete and accurate picture of the 
Office's  consideration of the patentability of the application. 

Finally, comments made by applicants on the examiner's statement of 
reasons  for allowance will not be returned to the examiner after their 
entry in the  file and will not be commented upon by the examiner. 


1303    Notice of Allowance 


37 CFR 1.311.     Notice of Allowance. 

(a)   If, on examination, it shall appear that the applicant is entitled 
to  a patent under the law, a notice of allowance will be sent to 
applicant at  the correspondence address indicated in w 1.33, calling for 
the payment of  a specified sum constituting the issue fee (w 1.18), which 
shall be paid within  three months from the date of the mailing of the 
notice of allowance. 
(b)   An authorization to charge the issue fee (w 1.18) to a deposit 
account  may be filed in an individual application, either before or after 
mailing of  the notice of allowance. Where an authorization to charge the 
issue fee to  a deposit account has been filed before the mailing of the 
notice of allowance,  the issue fee will be automatically charged to the 
deposit account at the time  of mailing the notice of allowance. 

The appropriate form of notice of allowance is prepared and mailed, and 
the  mailing date appearing thereon is stamped on the file wrapper. 


1303.01       Amendment Received After Allowance 


If the amendment is filed under 37 CFR 1.312, see MPEP w 714.15 to w 
714.16(e).  If the amendment contains claims copied from a patent, see MPEP 
w 1101.02(g). 

ISSUE BATCH NUMBER 

All papers filed by applicant in the Office after receiving the Notice of 
Allowance  and before the time the 
Issue Fee Receipt is received should include the Issue Batch Number. The 
Issue  Batch Number is printed on the Notice of Allowance form. The Issue 
Batch Number  consists of a capital  letter followed by two digits, for 
example; "A03", "D18",  "F42",  "J79".  Use of the Issue Batch Numbers is 
important since the allowed  applications are filed by these numbers. 

Any paper filed after receiving the Issue Fee Receipt should include the 
indicated  patent number rather than the Issue Batch Number.  At this time 
in the processing,  the Issue Batch Number is no longer useful since the 
application has been removed  from the batch at the time the patent number 
was assigned. 


1303.02       Undelivered 


In case a notice of allowance is returned, and a new notice is sent (see 
MPEP  w 707.13), the date of sending the notice must be changed in the 
file to agree  with the date of such remailing. 


1303.03       Not Withheld Due to Death of Inventor 


The notice of allowance will not be withheld due to death of the inventor 
if  the executor or administrator has not intervened.  See MPEP w 
409.01(f). 

1304    Amendments After D-10 Notice 


For amendments received after D-10 Notice, see MPEP w 130. 


1304.01       Withholding From Issue of ``Secrecy Order" Cases 


``Secrecy Order" cases are not sent to issue even when all of the claims 
have  been allowed. Instead of mailing an ordinary notice of allowance a 
D-10 Notice  is sent. See MPEP w 130. 

If the ``Secrecy Order" in a case is withdrawn after the D-10 notice is 
mailed,  the case should then be treated like an ordinary application in 
condition for  allowance. 


1305    Jurisdiction 


Jurisdiction of the application remains with the primary examiner until 
the  notice of allowance is mailed.  However, the examiner may make 
examiner's amendments  correcting obvious errors, as when brought to the 
attention of the examiner  by the printer, and also may admit amendments 
under 37 CFR 1.312  which  are confined to matters of form in 
specification or claims, or to the cancelation  of a claim or claims.  The 
examiner's action on other amendments under 37 CFR  1.312 consists of a 
recommendation to the Commissioner. 

To regain jurisdiction over the case, the examiner must write a letter to 
the  Commissioner requesting it. See MPEP  w 1308, and w 1308.02. 

Once the patent has been granted, the Patent and Trademark Office can take 
 no action concerning it, except as provided in 35 U.S.C. 135 and 35 
U.S.C.  251 through 256 and 35 U.S.C. 302 through 307. 


1306    Issue Fee 


The Issue Fee is due 3 months from the date of the Notice of Allowance. 
The  amount of the Issue Fee is shown on the Notice of Allowance. The 
amounts due  under 
35 U.S.C. 41(a) are reduced by 50 per centum for small entities; note the 
issue  fees are set forth in 37 CFR 1.18. 

Applicants and their attorneys or agents are urged to use the special fee 
transmittal  forms provided with the Notice of Allowance when submitting 
their payments. 
The payment of the issue fee due may be simplified by using a Patent and 
Trademark  Office Deposit Account for such a fee.  However, any such 
payment must be specifically  authorized by reference to the "issue fee" 
or  "fees due under 37 CFR 1.18". 
The issue fee will be accepted from the applicant, assignee, or a 
registered  attorney or agent, either of record or under 37 CFR 1.34(a). 

The Commissioner has no authority to extend the time for paying the issue 
fee.  Intentional failure to pay the issue fee within the 3 months 
permitted by 35  U.S.C. 151 does not amount to unavoidable or 
unintentional delay in making  payment. 


1306.01       Deferring Issuance of a Patent 


37 CFR 1.314.     Issuance of patent. 

  If payment of the issue fee is timely made, the patent will issue in 
regular  course unless- 

(a)   The application is withdrawn from issue (w 1.313) or 

(b)   Issuance of the patent is deferred. 

Any petition by the applicant requesting deferral of the issuance of a 
patent  must be accompanied by the fee set forth in w 1.17(i)(1) and must 
include a  showing of good and sufficient reasons why it is necessary to 
defer issuance  of  the patent. 

There is a public policy that the patent will issue in regular course once 
 the issue fee is timely paid. 37 CFR 1.314. It has been the policy of the 
Patent  and Trademark Office to defer issuance of a patent, upon request, 
for a period  of up to 1 month only, in the absence of extraordinary 
circumstances or requirement  of the regulations (e.g., 37 CFR 1.177) 
which would dictate a longer period. 
 Situations like negotiation of licenses, time for filing in foreign 
countries,  collection of data for filing a continuation-in-part 
application, or a desire  for  simultaneous issuance of related 
applications are not considered to amount  to extraordinary circumstances. 

A petition to defer issuance of a patent is not appropriate until the 
issue  fee is paid. Issuance of a patent cannot be deferred after an 
allowed application  receives a patent number and issue date unless the 
application is withdrawn  from issue under 37 CFR 1.313(b). The petition 
to defer is considered at the  time the petition is co related with the 
application file before the appropriate  deciding  official  (MPEP w 
1002.02(b)(6)). In order to facilitate consideration  of a petition for 
deferment of issue, the petition should be firmly attached  to the Issue 
Fee Transmittal form (PTOL-85B) and clearly labeled as a Petition  to 
Defer Issue; Attention: Office of the Assistant Commissioner for Patents. 

1306.02       Simultaneous Issuance of Patents 


Where applications have been allowed and a Notice of Allowance and Issue 
Fee  Due (PTOL-85) has been mailed in each application, a request for 
simultaneous  issuance will be granted. Unless all the applications have 
reached this stage  of processing, or a specific requirement of the 
regulations is involved (e.g.,  37 CFR 1.177), a request for simultaneous 
issuance generally will not be granted. 
Applicants and their attorneys who desire the simultaneous issue of 
allowed  applications must submit the request to: Commissioner of Patents 
and Trademarks,  Washington, D.C. 20231, Attention: Office of Publications. 

The request must contain the following information about each allowed 
application  for which simultaneous issue is requested: 

(1)   Application number 

(2)   Filing date 

(3)   Name(s) of inventor(s) 

(4)   Title of invention 

(5)   Date of allowance 

Separate copies of the request must accompany each Issue Fee Transmittal 
(PTOL-85B). 

1306.03       Practice After Payment of Issue Fee 


Since a patent number and issue date are assigned to an application 
approximately  within two (2) weeks after 


the issue fee is received in the Patent and Trademark Office, and this 
event  starts a printing routine that takes about eight (8) weeks, the 
availability  of an application file being processed into a patent is 
restricted.  Relief  may not be available under some circumstances because 
of the requirements of  processing the application into a patent grant, 
even though relief would have  been appropriate. Accordingly, it is most 
important that application files  be reviewed thoroughly upon receiving 
the Notice of Allowance and Issue Fee  Due to ensure that the application 
is complete in all respects and ready for  printing. 


1307    Change in Classification of Cases Which Are in Issue 


See MPEP w 903.07. 


1308    Withdrawal From Issue 


37 CFR 1.313.     Withdrawal from issue. 

(a)   Applications may be withdrawn from issue for further action at the 
initiative  of the Office or upon petition by the applicant. Any such 
petition by the applicant  must include a showing of good and sufficient 
reasons why withdrawal of the  application is necessary and, if the reason 
for the withdrawal is not the fault  of the Office, must be accompanied by 
the fee set forth in w 1.17(i). If the  application is withdrawn from 
issue, a new notice of allowance will be sent  if the application is again 
allowed. Any amendment accompanying a petition  to withdraw an application 
from issue must comply with the requirements of  w 1.312. 

(b)   When the issue fee has been paid, the application will not be 
withdrawn  from issue for any reason except; 

(1) A mistake on the part of the Office; 

(2) A violation of w 1.56 or illegality in the application; 

(3) Unpatentability of one or more claims; 

(4) For interference; or 

(5) For abandonment to permit consideration of an information disclosure 
statement  under w 1.97 in a continuing application. 

If the applicant wishes to have the case withdrawn from issue, he or she 
must  petition the Commissioner (MPEP 1002.02(b)(4)). Once the issue fee 
is paid  withdrawal is permitted only for the reasons stated in 
37 CFR 1.313(b). The status of the application, at the time the petition 
is  filed is determinative of whether the petition is considered under 37 
CFR 1.313(a)  or 37 CFR 1.313(b). 

In addition to the specific reasons identified in 
37 CFR 1.313(b)(1)-(4), applicant should be able to identify some specific 
 and significant defect in the allowed application before the application 
will  be withdrawn from issue. It is the policy of the Patent and 
Trademark Office  to permit an application to be withdrawn from issue 
under 37 CFR 1.313(a) to  file a continuing application, unless the 
application to be withdrawn is itself  a continuing application. This 
policy does not affect applicant's right and  ability to file a continuing 
application on or before the last day the issue  fee is due and permit the 
parent application to become abandoned for failure  to pay the issue fee 
(35 U.S.C. 151). 

For withdrawal from issue pursuant to 37 CFR 1.313(b)(5), see the 
discussion  in MPEP w 609 at B(4). 

Unless applicant receives a written communication from the Office that the 
 application has been withdrawn from issue, the issue fee must be timely 
submitted  to avoid abandonment. 


1308.01       Rejection After Allowance 


A claim noted as allowable shall thereafter be rejected only with the 
approval  of the primary examiner. Great care should be exercised in 
authorizing such  rejection. See MPEP w 706.04. 

When a new reference is discovered, which obviously is applicable to one 
or  more of the allowed claims in an application in issue, a letter is 
addressed  to the group director, requesting that the application be 
withdrawn from issue  for the purpose of applying the new reference.  This 
letter should cite the  reference, and, if need be, briefly state its 
application. The letter should  be submitted with the reference and the 
file wrapper. Upon approval of this  request, the letter is taken to the 
Publishing Division and the application  is stamped ``Withdrawn" over the 
name stamp and initials of the primary examiner.  It is then returned to 
the group from which it came; the withdrawal from issue  is entered on the 
register, and the application is thus restored to its former  status as a 
pending application awaiting action by the examiner.  The examiner  at 
once writes a letter in the case stating that the application has been 
withdrawn  from issue, citing the new reference, and rejecting the claims 
met thereby. 
The letter is given a paper number and placed in the file. 

If the examiner's proposed action is not approved, the letter requesting 
withdrawal  from issue should not be placed in the file. 

If the issue fee has already been paid and prosecution is reopened, the 
applicant  may request a refund or request that the fee be credited to a 
Deposit Account. 

However, applicant may wait until the application is either found 
allowable  or held abandoned. If allowed, upon receipt of a new Notice of 
Allowance, applicant  may request that the previously submitted issue fee 
be applied. If abandoned,  applicant may request refund or credit to a 
Deposit Account. 

If the issue fee has been paid, the examiner should forward the request to 
 withdraw the application from issue to the Office of the Assistant 
Commissioner  for Patents after the request is approved by the Group 
Director. The actual  withdrawal will be handled by the Assistant 
Commissioner's Office and then  the application will be returned to the 
examiner for prompt action as noted  above. 


1308.02       For Interference Purposes 


It may be necessary to withdraw a case from issue for reasons connected 
with  an interference. For the procedure to be followed, see MPEP w 
2305.04 and w  2307.03. 


1308.03       Quality Review Program for Examined Patent Applications 
[R-2] 

The Office of Quality Review administers a program for reviewing the 
quality  of the examination of patent applications. The general purpose of 
the program  is to improve patent quality and increase the likelihood of 
patents being found  to be valid. 

The quality review is conducted by Patentability Review Examiners on a 
randomly  selected sample of allowed applications from each Art Unit. The 
sample is computer  generated under the office-wide computer system (PALM 
III), which selects a  predetermined number of allowed applications from 
each Art Unit per year for  review only, and which selects from each Art 
Unit's sample a sub-sample of  allowed applications for both review and 
full research. The only applications  excluded from the sample are those 
in which there has been a deci-sion by the  Board of Patent Appeals and 
Interferences, or by a Court. 

The Patentability Review Examiner independently reviews each sampled 
application  assigned to his or her docket to determine whether any claims 
may be unpatentable.  The Patentability Review Examiner may consult with, 
discuss or review an application  with any other reviewer or professional 
in the examining corps, except the  professional who acted on the 
application. The review will, with or without  additional search, provide 
the examining corps personnel with information which  will assist in 
improving the quality of issued applications. The program shall  be used 
as an educational tool to aid in identifying problem areas in the 
examining  Groups. 

Reviewed applications may be returned to the Examining Groups for 
consideration  of the Reviewer's question(s) as to adequacy of the search 
and/or patentability  of a claim(s). 

If, during the quality review process, it is determined that one or more 
claims  of a reviewed application are unpatentable, the prosecution of the 
application  will be reopened. The Office action should contain, as an 
opening, Form Paragraph  13.04. 

W 13.04       Reopen Prosecution - After Notice of Allowance 

 Prosecution on the merits of this application is reopened on claim [1] 
considered  unpatentable for the reasons indicated below: [2] 

Examiner Note: 

1.  This paragraph should be used when a rejection is made on any 
previously  allowed claim(s) which for one reason or another is considered 
unpatentable  after the "Notice of  Allowance" >(PTOL-85)< has been mailed. 

2.  Make appropriate rejection(s) as in any other action. 

3. In bracket 1 identify claim(s) that are considered unpatentable. 
4. In bracket 2 state all appropriate rejections for each claim considered 
 unpatentable. 

If the issue fee has already been paid in the application, the application 
 must be withdrawn from issue by the Office of Petitions, and the action 
should  contain not only the above quoted paragraph, but also Form 
Paragraph 13.05. 
W 13.05       Reopen Prosecution - Vacate Notice of Allowance 

Applicant is advised that the "Notice of Allowance" dated [1] is vacated. 
If  the issue fee has already been paid applicant may request a refund or 
request  that the fee be credited to a deposit account. However, applicant 
may wait  until the application is either found allowable or held 
abandoned. If allowed,  upon receipt of a new "Notice of Allowance", 
applicant  may request that the  previously submitted issue fee be 
applied. If abandoned, applicant may request  refund or credit to a 
deposit account. 

Examiner Note: 

1.  This paragraph must be used when the prosecution is reopened after the 
 mailing of a "Notice of Allowance". 

2.  In bracket 1 insert date of  "Notice of Allowance". 

Quality Review forms and papers are not to be included with Office 
actions,  nor should such forms or papers be retained in the file of any 
reviewed application whether or not prosecution is to be reopened. The 
application record should  not indicate that a review has been conducted 
by Quality Review. 

Whenever an application has been returned to the Group under the Quality 
Review  Program, the Group should promptly decide what action is to be 
taken in the  application and inform the Office of Quality Review of the 
nature of that action  by use of the appropriate form.  If prosecution is 
to be reopened or other  corrective action taken, only the forms should be 
returned to the Office of  Quality Review initially, with the application 
being returned to the Office  of Quality Review when action is completed. 
In all other instances, both the  application and the forms should be 
returned to the Office of Quality Review. 

1309    Issue of Patent [R-1] 


The files of allowed cases (not patented files) are kept in the Publishing 
 Division, arranged in batch number order. When the Issue fee is paid 
within  the time allowed by law, the file is given a patent number and 
date, after  which it is sent for printing of the specification. A bond 
paper copy of the  drawing and specification is ribboned and sealed in 
the Publishing Division  and finally signed. 

See MPEP w 1303.01 for explanation of ``Issue Batch Number." 

Patent Printing Priority 

The applications placed in the weekly formulation of an issue set aside 
for  printing will be selected according to the following priorities: 

1.  Allowed cases which were made special by the Commissioner (including 
those  under the Special Examining Procedure). 

2.  Allowed cases that have a U.S. effective filing date more than 5 years 
 old. 

3.  Allowed reissue applications. 

4.  Allowed applications having an effective filing date earlier than that 
 required for declaring an interference with a copending application 
claiming  the same subject matter. 

5.  Allowed application of a party involved in a terminated interference. 
6.  Allowed applications in which the applicant has filed a request in the 
 nature of a petition setting forth reasons for advancing the printing 
date. 
7.  Allowed applications ready for printing and not covered by any of the 
six  preceding categories. The selection of cases in the involved category 
will  be by chronological sequence based on the date the issue fee was 
paid. 
To ensure that any application falling within the scope of the categories 
outlined  above and identified by numbers 1 to 5 receives special 
treatment, the examiners  should staple on the file wrapper a tag entitled 
"Special in Publishing Division."  The special tag, PTO-1101, may be 
obtained from the group clerk.   The examiner 
 shall  print  directly  on  the tag the recitation ``In Publishing 
Division"  and the appropriate printing category outlined above. The 
application is then  forwarded to Publishing Division. 

The personnel in the Publishing Division will then set the tagged cases 
aside  and make a notation that further processing of this application 
will be ``special." 

In cases falling in category No. 6, the request must be filed after the 
Notice  of Allowance has been received and no later than the date the 
issue fee is  paid.  The request must be directed to the Head of the 
Publishing Division. 
35 U.S.C. 2.    Seal 

The Patent and Trademark Office shall have a seal with which letters 
patent,  certificates of trademark registrations, and papers issued from 
the Office  shall be authenticated. 

35 U.S.C. 153.      How issued 

Patents shall be issued in the name of the United States of America, under 
 the seal of the Patent and Trademark Office, and shall be signed by the 
Commissioner  or have his signature placed thereon and attested by an 
officer of the Patent  and Trademark Office designated by the 
Commissioner, and shall be recorded  in the Patent and Trademark Office. 

**PRINTING NAMES OF PRACTITIONERS 
AND FIRM ON PATENTS 

The Issue Fee Transmittal form provides a space (item 4) for the person 
submitting  the base issue fee to indicate, for printing, (1) the names of 
up to three  registered patent attorneys or agents or, alternatively, (2) 
the name of a  single firm, which has as a member at least one registered 
patent attorney  or agent, and the names of up to two registered patent 
attorneys or agents.  If the person submitting the issue fee desires that 
no name of practitioner  or firm be printed on the patent, the space on 
the Issue Fee Transmittal form  should be left blank. If no name is listed 
on the form, no name will be printed  on the patent. 

ASSIGNMENT PRINTED ON PATENT 

The Issue Fee Transmittal Form portion (PTOL-85B) of the Notice of 
Allowance  provides a 


space (item 5) for assignment data which should be completed in order to 
comply  with 37 CFR 3.81. Unless an assignee's name and address are 
identified in item  5 of the Issue Fee Transmittal Form PTOL-85B, the 
patent will issue to the  applicant. Assignment data printed on the patent 
will be based solely on the  information so supplied.  See MPEP w 307. 

ASSIGNEE NAMES 

Only the first appearing name of an assignee will be printed on the patent 
 where multiple names for the same party are identified on the Issue Fee 
Transmittal  form, PTOL-85B.  Such multiple names may occur when both a 
legal name and an 
 "also known as"  or  "doing business as"  name is also included. This 
printing  practice will not, however, affect the practice of recording 
assignments with  the Office in the Assignment Division. The assignee 
entry on form PTOL-85B  should still be completed to indicate the 
assignment data as recorded in the  Office.  For example, the assignment 
filed in the Office and therefore the  PTOL-85B assignee entry might read 
"Smith Company doing business as (d.b.a.)  Jones Company."  The assignee 
entry on the printed patent will read "Smith Company." 
Various officials including the head of the Publishing Division have been 
designated  as attesting officers to attest to the name of the 
Commissioner. The assistant  head of the Publishing Division acts as 
attesting officer in the absence or  unavailability of the head of the 
Division. 


>1309.01                Patent Terms and Extensions 

                         [R-1] 

35 U.S.C. 154.      Contents and term of patent 

(a) IN GENERAL.- 

(1)   CONTENTS.-Every patent shall contain a short title of the invention 
and  a grant to the patentee, his heirs or assigns, of the right to 
exclude others  from making, using, offering for sale, or selling the 
invention throughout  the United States or importing the invention into 
the United States, and, if  the invention is a process, of the right to 
exclude others from using, offering  for sale or selling throughout the 
United States, or importing into the United  States, products made by that 
process, referring to the specification for the  particulars thereof. 

(2)   TERM.-Subject to the payment of fees under this title, such grant 
shall  be for a term beginning on the date on which the patent issues and 
ending 20  years from the date on which the application for the patent was 
filed in the  United States or, if the application contains a specific 
reference to an earlier  filed application or applications under section 
120, 121, or 365(c) of this  title, from the date on which the earliest 
such application was filed. 
(3)   PRIORITY.-Priority under section 119, 365(a), or 365(b) of this 
title  shall not be taken into account in determining the term of a 
patent. 
(4)   SPECIFICATION AND DRAWING.-A copy of the specification and drawing 
shall  be annexed to the patent and be a part of such patent. 

(b)   TERM EXTENSION.- 

(1)   INTERFERENCE DELAY OR SECRECY ORDERS.-If the issue of an original 
patent  is delayed due to a proceeding under section 135(a) of this title, 
or because  the application for patent is placed under an order pursuant 
to section 181  of this title, the term of the patent shall be extended 
for the period of delay,  but in no case more than 5 years. 

(2)   EXTENSION FOR APPELLATE REVIEW.-If the issue of a patent is delayed 
due  to appellate review by the Board of Patent Appeals and Interferences 
or by  a Federal court and the patent is issued pursuant to a decision in 
the review  reversing an adverse determination of patentability, the term 
of the patent  shall be extended for a period of time but in no  case more 
than 5 years.   A patent shall not be eligible for extension under this 
paragraph if it is  subject to a terminal disclaimer due to the issue of 
another patent claiming  subject matter that is not patentably distinct 
from that under appellate review. 


(3)   LIMITATIONS.-The period of extension referred to in paragraph (2)- 
(A)   shall include any period beginning on the date on which an appeal is 
 filed under section 134 or 141 of this title, or on which an action is 
commenced  under section 145 of this title, and ending on the date of a 
final decision  in favor of the applicant; 

(B)   shall be reduced by any time attributable to appellate review before 
 the expiration of 3 years from the filing date of the application for 
patent;  and 

(C)   shall be reduced for the period of time during which the applicant 
for  patent did not act with due diligence, as determined by the 
Commissioner. 
(4)   LENGTH OF EXTENSION.-The total duration of all extensions of a 
patent  under this subsection shall not exceed 5 years. 

(c)   CONTINUATION.- 

(1)   DETERMINATION.-The term of a patent that is in force on or that 
results  from an application filed before the date that is 6 months after 
the date of  the enactment of the Uruguay Round Agreements Act shall be 
the greater of the  20-year term as provided in subsection (a), or 17 
years from grant subject  to any terminal disclaimers. 

(2)   REMEDIES.-The remedies of sections 283, 284, and 285 of this title 
shall  not apply to Acts which - 

(A)   were commenced or for which substantial investment was made before 
the  date that is 6 months after the date of the enactment of the Uruguay 
Round  Agreements Act; and 

(B)   became infringing by reason of paragraph (1). 

(3)   REMUNERATION.-The acts referred to in paragraph (2) may be continued 
 only upon the payment of an equitable remuneration to the patentee that 
is  determined in an action brought under chapter 28 and chapter 29 (other 
than  those provisions excluded by paragraph (2)) of this title. 

For applications filed on or after June 8, 1995, utility and plant patents 
(other than those granted on reissue applications) will be granted for a 
term  which begins on the date the patent issues and ends twenty years 
from the  date on which the application for the patent was filed in the 
United States  or, if the application contains a specificreference to an 
earlier filed application  or applications under 35 U.S.C. 120, 121, or 
365(c), twenty years from the  earliest effective U.S. filing date. 
Patents on design applications will be  granted for a term of 14 years 
which begins on the date the patent issues. 
A patent granted on an application which resulted from an international 
application  after compliance with 35 U.S.C. 371 will have a term which 
ends twenty years  from the filing date of the international application. 

A continuation or a continuation-in-part application of an international 
application  filed under 35 U.S.C. 363 designating the United States will 
have a term which  ends twenty years from the filing date of the parent 
international application. 
Foreign priority under 35 U.S.C. 119 (a)-(d), 365(a), or 365(b) is not 
considered  in determining the term of a patent.  Likewise, priority under 
35 U.S.C. 119(e)  to one or more U.S. provisional applications is not 
considered in the calculation  of the twenty year term. 

TRANSITIONAL RULES 

        All patents that are in force on June 8, 1995, or that will issue 
on  an application that is filed before June 8, 1995, will automatically 
have a  term that is the greater of the twenty year term discussed above 
or seventeen  years from the patent grant. This provision affects all 
patents that are in  force on June 8, 1995, and all patents issued 
thereafter on applications filed  prior to June 8, 1995.  The terms of 
these patents are, of course, subject  to reduction by any applicable 
terminal disclaimers. 

Applications filed on or after June 8, 1995 will be subject only to the 
twenty  year term discussed above. 

TERM EXTENSIONS 

 The twenty year patent term may be extended for a maximum of five years 
for  delays in the issuance of the patent due to interferences, secrecy 
orders and/or  successful appeals to the Board of Patent Appeals and 
Interferences or the  Federal courts in accordance with 
37 CFR 1.701. Extensions for successful appeals are limited in that the 
patent  must not be subject to a terminal disclaimer. Further, the period 
of extension  will be reduced by any time attributable to appellate review 
within three years  of the filing date of the application and the period 
of extension for appellate  review will be reduced by any time during 
which the applicant did not act with  due diligence. The patent term 
extension that may be available under 35 U.S.C.  156 for premarket 
regulatory review is separate from and will be added to any  extension 
that may be available under 35 U.S.C 154. 

        At the time of issue, examiners will make no decisions regarding 
patent  term extensions. Extensions under 35 U.S.C. 156 will be handled by 
the Office  of the Deputy Assistant Commissioner for Patent Policy and 
Projects. Extensions  related to interferences and successful appellate 
review will be calculated  by PALM. Any patent term extension granted as a 
result of administrative delay  pursuant to 37 CFR 1.701 will be printed 
on the face of the patent. The term  of a patent will be readily 
discernible from the face of the patent (i. e.,  from the filing date, 
continuing data, issue date and any patent term extensions  printed on the 
patent).< 


*>1309.02 <*"Printer Waiting" Cases [R-1] 


When the printer finds an apparent error in an application, the file is 
returned  to the Office with an attached ``Printer Waiting"  slip noting 
the supposed  error. 

The Patent Issue Division forwards such "printer waiting" applications to 
the  group director's secretary.  The secretary acts as a control center 
in each  examining group and forwards the applications to the examiner by 
the appropriate  route. The application should be taken up and acted on 
immediately and returned  to the group director's secretary within 24 
hours (excluding weekends and holidays).  Either necessary corrective 
action should be taken or an indication should  be made that the 
application is considered to be correct as it stands. 
If the examiner concurs in the criticisms, the errors should, if possible, 
 be corrected in clean red ink and initialed or be corrected by examiners' 
amendment. 

See MPEP w 1302.04. 

If the required correction cannot be cured by examiner's amendment, the 
application  may have to be withdrawn from issue. This may sometimes be 
avoided if the applicant  or his or her representative is telephoned 
immediately, and the error is corrected  by amendment under 37 CFR 1.312. 

The applications are picked up from the secretary's office by the 
messenger  and returned to the Patent Issue Division for forwarding to the 
printer. 
THESE APPLICATIONS SHOULD NOT BE MAILED TO THE PUBLISHING DIVISION. 


Contents 

1401        Reissue 

1402        Grounds for Filing 

1403        Diligence in Filing 

1404        Submission of Papers Where Reissue Patent Is in 
            Litigation 

1410        Content of Reissue Application 

1410.01     Reissue Applicant, Oath or Declaration, and Assent of 
            All Assignees 

1411        Form of Specification 

1411.01     Certificate of Correction or Disclaimer in Original Patent 
1411.02     New Matter 

1412        Content of Claims 

1412.01     Reissue Claims Must Be for Same General Invention 

1412.02     Recapture of Canceled Subject Matter 

1412.03     Broadening Reissue Claims 

1413        Drawings 

1414        Content of Reissue Oath or Declaration 

1414.01     Reissue Oath or Declaration Under 
            37 CFR 1.175 (a)(1), (a)(2), and (a)(3) 

** 

1414.03     Requirements of 37 CFR 1.175(a)(5) 

1414.04     Requirements of 37 CFR 1.175(a)(6) 

1414.05     Requirements of 37 CFR 1.175(a)(7) 

1415        Reissue Filing and Issue Fees 

1416        Offer to Surrender and Return Original Patent 

1417        Claim for Benefit Under 35 U.S.C. 119 

1418        Information Disclosure Statement and Other Information 
1430        Reissue Files Open to the Public and Notice of Filing 
            Reissue Announced in Official Gazette 

1431        Notice in Patent File 

1440        Examination of Reissue Application 

1441        Two-Month Delay Period 

1442        Special Status 

1442.01     Litigation Related Reissues 

1442.02     Litigation Not Stayed 

1442.03     Litigation Stayed 

1442.04     Litigation Involving Patent 

1442.05     Cases in Which Stays Were Considered 

1442.05(a)  Stays Granted 

1442.05(b)  Stays Denied 

1443        Initial Examiner Review 

1444        Review of Reissue Oath or Declaration 

** 

1445        Reissue Application Examined in Same Manner as 
            Original Application 

** 

1447        Additional Information, Affidavits, or Declarations 
            Required 

1448        Fraud, Inequitable Conduct, or Duty of Disclosure Issues 
1449        Protest Filed in Reissue Where Patent Is in Interference 
1449.01     Concurrent Office Proceedings 

1450        Restriction and Election of Species 

1451        Divisional Reissue Applications 

1453        Amendments to Reissue Applications 

1455        Allowance and Issue 

1456        Reissue Review 

1460        Effect of Reissue 

1480        Certificates of Correction - Office Mistake 

1481        Applicant's Mistake 

1485        Handling of Request for Certificates of Correction 

1490        Disclaimers 

        Errors in a patent may be corrected in four ways, namely (1) by 
reissue, 
(2) by the issuance of a certificate of correction which becomes a part of 
 the patent, (3) by disclaimer, and (4) by reexamination. 


1401    Reissue 


35 U.S.C.  251.  Reissue of defective patents. 

        Whenever any patent is, through error without any deceptive 
intention,  deemed wholly or partly inoperative or invalid, by reason of a 
defective specification  or drawing, or by reason of the patentee claiming 
more or less than he had  a right to claim in the patent, the Commissioner 
shall, on the surrender of  such patent and the payment of the fee 
required by law, reissue the patent  for the invention disclosed in the 
original patent, and in accordance with  a new and amended application, 
for the unexpired part of the term of the original  patent. No new matter 
shall be introduced into the application for reissue. 
        The Commissioner may issue several reissued patents for distinct 
and  separate parts of the thing patented, upon demand of the applicant, 
and upon  payment of the required fee for a reissue for each of such 
reissued patents. 
        The provisions of this title relating to applications for patent 
shall  be applicable to applications for reissue of a patent, except that 
application  for reissue may be made and sworn to by the assignee of the 
entire interest  if the application does not seek to enlarge the scope of 
the claims of the  original patent. 

        No reissued patent shall be granted enlarging the scope of the 
claims  of the original patent unless applied for within two years from 
the grant of  the original patent. 


1402    Grounds for Filing [R-2] 


        The most common bases for filing a reissue application are (1) the 
 claims are too narrow or too broad; (2) the disclosure contains 
inaccuracies; 
(3) applicant failed to or incorrectly claimed foreign priority; (4) 
applicant  failed to make reference to or incorrectly made reference to 
prior copending  applications. 

        An attorney's failure to appreciate the full scope of the 
invention  was held to be an error correctable through reissue in In re 
Wilder, >736 F.2d  1516,< 222 USPQ 369 (Fed. Cir. 1984). The Patent and 
Trademark Board of Appeals held in Ex parte Scudder, 169 USPQ 814, 815 
(Bd. App. 1971) that 35  U.S.C. 251 authorizes reissue application to 
correct misjoinder of inventors  where 
35 U.S.C. 256 is inadequate. Reissue may no longer be necessary under the 
facts  in Ex parte Scudder in view of 
35 U.S.C. 116 ** which provides, inter alia, 

        "Inventors may apply for a patent jointly even though 
. . . . (3) each did not make a contribution to the subject matter of 
every  claim in the patent." 

        * >See also< 37 CFR 1.45 **>(b)(3).< 

        The correction of misjoinder of inventors in divisional reissues 
has  been held to be a ground for reissue: Ex parte Scudder, 169 USPQ 814 
(Bd. App.  1971). The filing of a reissue application may not be necessary 
if the only  change is to correct the inventorship since this can be 
accomplished under  the provisions of 35 U.S.C. 256 and 37 CFR 1.324. 

        A reissue was granted in Brenner v. State of Israel, 
>400 F.2d 789<, 158 USPQ 584 (D.C. Cir. 1968), where the only ground urged 
 was failure to file a certified copy of the original foreign application 
to  obtain the right of foreign priority under 35 U.S.C. 119 before the 
patent  was granted. 

        Correction of failure to adequately claim priority in an earlier 
filed  copending U.S. Patent application was held a proper ground for 
reissue * >.<  Sampson v. Commr. of Pats., 195 USPQ 136, 137 (D.D.C. 
1976). Reissue applicant's  failure to timely file a divisional 
application is not considered to be error  causing a patent granted on 
elected claims to be partially inoperative by reason  of claiming less 
than they had a right to claim; and thus such applicant's  error is not 
correctable by reissue of the original patent under 35 U.S.C.  251* >.< In 
re Orita, ** >550 F.2d 1277,< 193 USPQ 
145, 148 (CCPA 1977); see also In re Mead, 581 F.2d 
257, 198 USPQ 412 (CCPA 1978)* >;< In re Watkinson, >900 F.2d 230,< 14 
USPQ2d  1407 (Fed. Cir. 1990). 


1403    Diligence in Filing [R-2] 


        When a reissue application is filed within 2 years from the date 
of  the original patent, a rejection on the grounds of lack of diligence 
or delay  in filing the reissue should not normally be made, in the 
absence of evidence  to the contrary* >.< Ex parte Lafferty, 190 USPQ 202 
(Bd. App. 1975); but see  Rohm & Haas Co. v. Roberts Chemical Inc., 142 F. 
Supp. 499, 110 USPQ 93 (S.W.  Va. 1956) * >rev'd< on other grounds 245 
F.2d 693, 113 USPQ 423 (4th Cir. 1957). 
        However, as stated in the fourth paragraph of 
35 U.S.C. 251, 

        >``<No reissued patent shall be granted enlarging the scope of the 
 claims of the original patent unless applied for within two years from 
the  grant of the original patent.>"< See MPEP # 1412.03 for broadening 
reissue  practice. 

        *>See<  In re Bennett, 226 USPQ 413, 416 (Fed. Cir* >.<  1985); In 
 re Fotland, 128 USPQ 193 (Fed. Cir. 1985). 

        A reissue filed on the 2-year anniversary date is considered filed 
 within 2 years ** >.  See< Switzer & Ward v. Sockman & Brady, >333 F.2d 
935,<  142 USPQ 226 (CCPA 1964) * >(< a similar rule in interferences>)<. 
        A reissue application can be granted a filing date without an oath 
 or declaration, or the filing fee being present in accordance with 37 CFR 
1.53(d)(1).  Applicant will be given a period of time to provide the 
missing parts and to  pay the surcharge under 37 CFR 1.16(e).  See MPEP # 
1410.01. 


1404    Submission of Papers Where Reissue Patent Is in Litigation 

        Applicants and protestors (see MPEP # 1901.03) submitting papers 
for  entry in reissue applications of patents involved in litigation are 
requested  to mark the outside envelope and the top right-hand portion of 
the papers with  the words "REISSUE LITIGATION" and with the Office or 
group art unit of the  Patent and Trademark Office in which the reissue 
application is located; e.g.,  Assistant Commissioner for Patents, Board 
of Patent Appeals and Interferences,  Examining Group, Office of 
Publications, etc. Protestor's participation, including  the submission of 
papers, is limited in accordance with 37 CFR 1.291(c). Any  "Reissue 
Litigation" papers mailed to the Office should be so marked and mailed  to 
Box 7, Commissioner of Patents and Trademarks, Washington, D.C. 20231. The 
 markings preferably should be written in a bright color with a felt point 
marker.  Papers marked "REISSUE LITIGATION" will be given special 
attention and expedited handling.  See MPEP # 1442.01 through # 1442.04 
for examination of litigation related  applications. 


1410    Content of Reissue Application [R-1] 


37 CFR 1.171.      Application for reissue. 

        An application for reissue must contain the same parts required 
for  an application for an original patent, complying with all the rules 
relating  thereto except as otherwise provided, and in addition, must 
comply with the  requirements of the rules relating to reissue 
applications. The application  must be accompanied by a certified copy of 
an abstract of title or an order  for a title report accompanied by the 
fee set forth in # 1.19(b)(4), to be  placed in the file, and by an offer 
to surrender the original patent (# 1.178). 
        Applicants for reissue are required to file a reissue oath or 
declaration  which, in addition to complying with 37 CFR 1.63, must comply 
with 37 CFR 1.175.  The oath or declaration or filing fee may be submitted 
after the filing date  under 37 CFR 1.53>(d)(1)<. 


1410.01       Reissue Applicant, Oath or Declaration, and Assent of All 
Assignees [R-1] 

37 CFR 1.172.      Applicants, assignees. 

        (a)  A reissue oath must be signed and sworn to or declaration 
made  by the inventor or inventors except as otherwise provided (see ## 
1.42, 1.43,  1.47), and must be accompanied by the written assent of all 
assignees, if any,  owning an undivided interest in the patent, but a 
reissue oath may be made  and sworn to or declaration made by the assignee 
of the entire interest if  the application does not seek to enlarge the 
scope of the claims of the original  patent. 

        (b) A reissue will be granted to the original patentee, his legal 
representative  or assigns as the interest may appear. 

        The reissue oath must be signed and sworn to or declaration made 
by  all the inventors except as otherwise provided in 37 CFR 1.42, 1.43, 
and 1.47 
(see MPEP 
# 409). Where the reissue application does not seek to enlarge the scope 
of  any of the claims of the original patent, the reissue oath may be made 
and  sworn to or declaration made by the assignee of the entire interest. 
        The reissue oath or declaration must be accompanied by the written 
 assent of all assignees.  35 U.S.C. 111>(a)< and 37 CFR 1.53>(b)(1)< 
provide,  however, for according an application a filing date if filed 
with a specification,  including claim(s), and any required drawings. 
Thus, where an application is  filed without an oath or declaration, or 
without the assent of all assignees,  if the application otherwise 
complies with 37 CFR 1.53(b)>(1)< and the reissue  rules, the Application 
Branch will send out a notice of missing parts setting  a period of time 
for filing the missing part and for payment of any surcharge  required 
under 37 CFR 1.53(d)>(1)< and 1.16(e). The surcharge is required because, 
until the assent is filed, the reissue oath or declaration is defective, 
since  it is not apparent that the signatures thereon are proper absent an 
indication  the assignees have assented to the filing. See MPEP # 324 for 
additional requirements  of 37 CFR 3.73(b) for assignee seeking to take 
action. 

        Where no assignee exists, applicant should affirmatively state 
that  fact. If the file record is silent as to the existence of an 
assignee, it will  be presumed that no assignee exists. Such presumption 
should be set forth by  the examiner in the first Office action alerting 
applicant to the requirement.  It should be noted that the mere filing of 
a small entity statement in no way  relieves applicant of this requirement. 

        Where the written assent of all the assignees to the filing of the 
 reissue application cannot be obtained, applicant may under appropriate 
circumstances  petition to the Office of **>Petitions< (MPEP # 1002.02(b)) 
for a waiver under  37 CFR 1.183 with fee (37 CFR 1.17(*>h<)) of the 
requirement of 37 CFR 1.172,  to permit the acceptance of the filing of 
the reissue application. 
        The reissue application can then be examined, but will not be 
allowed  or issued without the assent of all the assignees as required by 
37 CFR 1.172;  N. B. Fassett, O.G. 420, 1877 C.D. 32; James D. Wright, 10 
O.G. 587, 1876 C.D.  217, 218. 

        Form Paragraph 14.15 may be used to indicate that the consent of 
the  assignee is lacking. 

W 14.15 Consent of Assignee to Reissue Lacking 

        This application is objected to under 35 U.S.C. 251 as lacking the 
 written consent of all assignees owning an undivided interest in the 
patent.  The consent of the assignee must be in compliance with 37 CFR 
3.73(b). See  MPEP w 324. 

        The examiner must inspect the abstract of the title to determine 
whether  37 CFR 1.172 has been complied with (note MPEP # 201.01). 

        The reissue will be granted to the original patentee, his or her 
legal  representatives or assigns as the interest may appear. 


1411    Form of Specification [R-2] 


37 CFR 1.173.   Specification. 

        The specification of the reissue application must include the 
entire  specification and claims of the patent, with the matter to be 
omitted byreissue  enclosed in square brackets; and any additions made by 
the reissue must be  underlined, so that the old and the new 
specifications and claims may be readily  compared. Claims should not be 
renumbered and the numbering of claims added  by reissue should follow the 
number of the highest numbered patent claim. No  new matter shall be 
introduced into the specification. 

        The file wrappers of all reissue applications are stamped 
"REISSUE"  above the Serial Number on the front of the file. "Reissue" 
also appears below  the Serial Number on the printed label on the file 
wrapper. 

        Cut-up soft copies of the original patent, with only a single 
column  of the printed patent securely mounted on a separate sheet of 
paper, may be  used in preparing the reissue specification and claims to 
be filed. It should  be noted, however, that amendments to the reissue 
application should not be  prepared in this way. After filing, the 
specification and claims in the reissue  application must be amended by 
either (1) submitting a copy of a portion of  the description or an entire 
claim with all matter to be deleted from the patent  being placed between 
brackets and all matter to be added to the patent being  underlined, or 
(2) indicating the exact word or words to be stricken out or  inserted and 
the precise point where the deletion or insertion is to be made  must be 
specified in the amendment as provided in 37 CFR 1.121(e) and (a). 
However, insertions or deletions to the patent specification or claims 
made  prior to filing should be underlined or bracketed, respectively, as 
indicated  in 37 CFR 1.173. 

        Examples of the form for a twice-reissued patent *>are< found in 
Re.  23,558 and Re. 28,488. 

        Entire words or chemical formulas must be shown as being changed. 
Change  in only a part of a word or formula is not permitted. Deletion of 
chemical  formula should be shown by brackets which are substantially 
larger and darker  than any in the formula. 


1411.01       Certificate of Correction or Disclaimer in Original Patent 

        The applicant should include any changes, additions, or deletions 
that  were made by a Certificate of Correction to the original patent 
grant in the  reissue application without underlining or bracketing. The 
examiner should  also make certain that all Certificate of Correction 
changes have been properly  incorporated into the reissue application. 

        Certificate of Correction changes and disclaimer of claim(s) under 
 37 CFR 1.321(a) should be made before reissue changes without using 
underlining  or brackets. Since these are part of the original patent and 
were made before  the reissue was filed, they should show up in the 
printed reissue document  as part of the original patent; i.e., not in 
italics or bracketed. If the changes  are extensive and/or applicant has 
submitted them improperly with underlining  and brackets, a clean copy of 
the specification with Certificate of Correction  changes in it may be 
requested by the examiner. 


1411.02       New Matter [R-2] 


        New matter, that is, matter not present in the patent sought to be 
 reissued, is excluded from a reissue application in accordance with 35 
U.S.C.  251. 

        The claims in the reissue application must also be for matter 
which  the applicant had the right to claim in the original patent. New 
matter may  exist by virtue of the omission of a feature or of a step in a 
method. See  United States Industrial Chemicals, Inc. v. Carbide & Carbon 
Chemicals Corp.,  315 U.S. 668, 53 USPQ 6 (1942). 

        >Form Paragraph 14.22.01 may be used where new matter has been 
added. 
W 14.22.01  Rejection, 35 U.S.C. 251, New Matter 

        Claim[1] rejected under 35 U.S.C. 251 as being based upon new 
matter  added to the patent for which reissue is sought.  The added 
material which  is not supported by the prior patent is as follows: [2] 

Examiner Note: 

        1.  In bracket 2, fill in the applicable page and line numbers and 
 provide an explanation of your position, as appropriate. 

        2.  A rejection under 35 U.S.C. 112, first paragraph, should also 
be  made if the new matter is added to the claims or is added to the 
specification  and affects the claims. If new matter is added to the 
specification and does  not affect the claims, an objection should be made 
based upon 35 U.S.C. 132  using form paragraph 7.28.< 


1412    Content of Claims 


        The content of claims in a reissue application is somewhat limited 
 as indicated in MPEP # 1412.01 through MPEP # 1412.03. 


1412.01       Reissue Claims Must Be for Same General Invention [R-2] 

        The reissue claims must be for the same invention as that 
disclosed  as being the invention in the original patent, as required by 
35 U.S.C. 251. This does not mean that the invention  claimed in the 
reissue must have been claimed in the original patent, although  this is 
evidence that applicants considered it their invention. The entire 
disclosure, not just the claim, is considered in determining what the 
patentee  objectively intended as his invention. The proper test is ** "an 
essentially  factual inquiry confined to the objective intent manifested 
by the original  patent."  >In re Amos, 953 F.2d 613, 618, 21 USPQ2d 1271, 
1274 (Fed. Cir. 1991) 
(quoting  In re Rowand 526 F.2d 558, 560, 187 USPQ 487, 489 (CCPA 1975).< 
See  also In re Mead, 581 F.2d 257, 198 187 USPQ 412 (CCPA 1978). ** >Some 
disclosure<  in the original patent *>should evidence< that applicant 
intended to claim  or that applicant considered the material now claimed 
to be his or her invention. 
        >A patentee may file a reissue application to permit consideration 
 of process claims which qualify for 
35 U.S.C. 103(b) treatment if a patent is granted on an application 
entitled  to the benefit of 35 U.S.C. 103(b) without an election having 
been made as  a result of error without deceptive intent.  See MPEP # 
706.02(n).< 

1412.02       Recapture of Canceled Subject Matter [R-2] 


        A reissue will not normally be granted to "recapture" claimed 
subject  matter deliberately canceled in an application to obtain a 
patent*>Ball Corp  v. United States, 729 F.2d 1429, 221 USPQ 289, 295 
(Fed. Cir. 1989);< In re  Willingham, 282 F.2d 353, 127 USPQ 211 (CCPA 
1960). **>;< In re Richman, 161  USPQ 359, 363, 364 (CCPA 1969); * In re 
Wadlinger, ** 181 USPQ 826 (CCPA 1974).  As *>stated<  by the * >Federal 
Circuit< in Ball **>:< 



The recapture rule bars the patentee from acquiring, through reissue 
claims  that are of the same or broader scope than those claims that were 
canceled  from the original application. On the other hand, the patentee 
is free to acquire,  through reissue, claims that are narrower in scope 
than the canceled claims.  If the reissue claims are narrower than the 
canceled claims, yet broader than  the original patent claims, reissue 
must be sought within 2 years after the  grant of the original patent. 

        See MPEP # 1412.03. 

        >A patentee may file a reissue application to permit consideration 
 of process claims which qualify for 
35 U.S.C. 103(b) treatment if a patent is granted on an application 
entitled  to the benefit of 35 U.S.C. 103(b) without an election having 
been made as  a result of error without deceptive intent.  See MPEP # 
706.02(n).< 

1412.03       Broadening Reissue Claims [R-2] 


        35 U.S.C. 251 prescribes a 2-year limit for filing applications 
for  broadening reissues: 

No reissue patent shall be granted enlarging the scope of the original 
patent  unless applied for within two years from the grant of the original 
patent. 

        A claim of a reissue enlarges the scope of the claims of the 
patent  if it is broader than such claims in any respect, even though it 
may be narrower  in other respects>.< *>For example, if any amended or 
newly added claim< contains  within its scope any conceivable apparatus or 
process which would not have  infringed the original patents*>, then that 
reissue claim would be broader  than the original patent claims. 
Tillotson, Ltd. v. Walbro Corp., 831 F.2d  1033, 1037 n.2, 4 USPQ2d 1450, 
1453 n. 2 (Fed. Cir. 1987);< In re Ruth, 278  F.2d 729,126 USPQ 155, 156; 
** (>CCPA< 1960); In re Rogoff, 261 F.2d 601 >,<  120 USPQ 185, 186, ** 
(>CCPA< 1958). ** 

        >If the reissue application is timely filed within two years of 
the  original patent grant and the applicant indicates in the oath or 
declaration  that the claims will be broadened, then applicant may 
subsequently further  broaden the claims in the pending reissue 
prosecution, even if the additional  broadening occurs beyond the two year 
limit.  In re Doll, 419 F.2d 925, 928,  164 USPQ 218, 220 (CCPA 1970). 
See also In re Bennett, 766 F.2d 524, 528,  226 USPQ 413, 416 (Fed. Cir. 
1985) (in banc) (allowing correction, more than  two years after patent 
grant, of improperly executed declaration to reissue  application, filed 
within two years after patent grant). However, failure by  an applicant to 
include an oath or declaration indicating a desire to seek  broadened 
claims within two years of the patent grant will bar a subsequent  attempt 
to broaden the claims after the two year limit.  In re Fotland, 779  F.2d 
31, 228 USPQ 193 (Fed. Cir. 1985) (under former version of 37 CFR 1.175, 
applicant timely sought "no defect" reissue, but Court did not allow 
attempt made beyond the two year limit to convert the reissue into a 
broadening  reissue) cert. denied 476 U.S. 1183 (1986).< 

        A reissue application is considered filed within 
2 years of the patent grant if filed on the 2-year anniversary date of the 
 patent grant: see Switzer & Ward v. Sockman & Brady, 142 USPQ 226 (CCPA 
1964)  for a similar rule in interferences. 

        Form Paragraphs 14.12 and 14.13 may be used in rejections based on 
 improper broadened reissue claims. 

W 14.12       Rejection, 35 U.S.C. 251, Broadened Claims After Two Years 
        Claim [1] rejected under 35 U.S.C. 251 as being broadened in a 
reissue  application filed outside the two year statutory period. [2]. 

Examiner Note: 

        The claim limitations that broaden the scope should be identified 
and  explained in bracket 2. See MPEP # 706.03(x) and # 1412.03. 

W 14.13       Rejection, 35 U.S.C. 251, Broadened Claims Filed by Assignee 
        Claim [1] rejected under 35 U.S.C. 251 as being improperly 
broadened  in a reissue application made and sworn to by the assignee and 
not the patentee. 

1413    Drawings [R-1] 


37 CFR 1.174.  Drawings. 

        (a) The drawings upon which the original patent was issued may be 
used  in reissue applications if no changes whatsoever are to be made in 
the drawings.  In such cases, when the reissue application is filed, the 
applicant must submit  a temporary drawing which may consist of a copy of 
the printed drawings of  the patent or a photoprint of the original 
drawings of the size required for  original drawing. 

        (b) Amendments which can be made in a reissue drawing, that is, 
changes  from the drawing of the patent, are restricted. 

        If transfer of the patent drawings to the reissue application is 
desired,  a letter requesting transfer of the drawings from the patent 
file should be  filed along with the reissue application. 

        If transfer of the original drawing is contemplated, applicant 
must  submit a copy of the original drawing. 

        The drawings of the original patent may be used in lieu of new 
drawings,  provided that no alteration whatsoever is to be made in the 
drawings, including  canceling an entire sheet. 

        When the reissue case is ready for allowance, the examining group 
makes  the formal transfer of the original drawing to the reissue case ** 
>, notation  thereof being entered on the file wrapper of the patented 
file.< Additional  sheets of drawings may be added, but no changes can be 
made in the original  patent drawings. 


1414    Content of Reissue Oath or Declaration [R-2] 


37 CFR 1.175.  Reissue oath or declaration. 

        (a) Applicants for reissue, in addition to complying with the 
requirements  of w 1.63, must also file with their applications a 
statement under oath or  declaration as follows: 

        (1)         When the applicant verily believes the original patent 
 to be wholly or partly inoperative or invalid, stating such belief and 
the  reasons why. 

        (2)         When it is claimed that such patent is so inoperative 
or  invalid "by reason of a defective specification or drawing," 
particularly specifying  such defects. 

        (3)         When it is claimed that such patent is inoperative or 
invalid  "by reason of the patentee claiming more or less than he had a 
right to claim  in the patent," distinctly specifying the excess or 
insufficiency in the claims. 
        (4)           [Reserved] 

        (5)         Particularly specifying the errors relied upon, and 
how  they arose or occurred. 

        (6)         Stating that said errors arose "without any deceptive 
intention"  on the part of the applicant. 

        (7)         Acknowledging the duty to disclose to the Office all 
information  known to applicants to be material to patentability as 
defined in 
# 1.56. 

        (b) Corroborating affidavits or declarations of others may be 
filed  and the examiner may, in any case, require additional information 
or affidavits  or declarations concerning the application for reissue and 
its object. 
        The reissue oath or declaration is an essential part of a reissue 
application  and must be filed with the application or within the time set 
under 37 CFR  1.53*>(d)<(1). The question of the sufficiency of the 
reissue oath or declaration  filed under 37 CFR 1.175 must in each case be 
reviewed and decided personally  by the primary exam-iner (see MPEP # 
1414.03). 

        Reissue oaths or declarations must point out very specifically 
what  the defects are and how and when the errors arose, and how and when 
errors  were discovered. If additional defects or errors are discovered 
after filing  and during the examination of the application, a 
supplemental reissue oath  or declaration must be filed pointing out such 
defects or errors and how and  when they arose and how and when they were 
discovered. Any change or departure  from the original specification or 
claims represents an "error" in the original  patent under 35 U.S.C. 251 
and must be addressed in the original, or a supplemental,  reissue oath or 
declaration under 37 CFR 1.175. The statements in the oath  or declaration 
must be of facts and not conclusions. All reissue oaths, in addition to 
complying with  sections (a)(1) and (a)(2) and/or (a)(3), must also comply 
with sections (a)(5), 
(a)(6), and (a)(7). 

        The reissue oath or declaration must, as stated in 
37 CFR 1.175, also comply with 37 CFR 1.63, including making averments 
required  by 37 CFR 1.63(b) that applicants for reissue (1) have reviewed 
and understand  the contents of the specification, including the claims, 
as amended by any  amendment specifically referred to in the oath or 
declaration; (2) believe  the named inventor or inventors to be the 
original and the first inventor or  inventors of the subject matter which 
is claimed and for which a patent is  sought; and (3) acknowledge the duty 
to disclose to the Office all information  known to the person to be 
material to patentability as defined in 37 CFR 1.56  and 1.175(a)(7). See 
also MPEP # 602. 

        ** 


1414.01       Reissue Oath or Declaration Under 37 CFR 1.175 (a)(1), 
(a)(2), and (a)(3) [R-2] 

        Reissue oaths or declarations, ** must comply with section (a)(1) 
and  the appropriate sections (a)(2) and/or (a)(3). All  reissue  oaths 
or  declarations 
 must, in addition, comply with sections (a)(5), (a)(6) and, ** (a)(7). 
        Subsection (a)(1) requires a statement that "applicant verily 
believes  the original patent to be wholly or partly inoperative or 
invalid," and in  addition, "the reasons why." Applicant must acknowledge 
the existence of a  defect in the specification, drawings, or claims which 
causes the original  patent to be defective. In re Wilder**,>736 F.2d 
1516,<  222 USPQ 369 (Fed.  Cir. 1984). Subsection (a)(2) applies when it 
is claimed that such patent is  so inoperative or invalid "by reason of a 
defective specification or drawing";  and requires applicant to 
particularly specify such defects. Subsection (a)(3)  applies when it is 
claimed that such patent is inoperative or invalid "by reason  of patentee 
claiming more or less than he had a right to claim in the patent";  and 
requires applicant, in addition, to distinctly specify the excess or 
insufficiency  in the claims. Any change or departure from the original 
specification or claims  represents an ``error" in the original patent 
under 35 U.S.C. 251 and must  be addressed in the original or supplemental 
reissue oath or declaration. The  reissue oath or declaration should 
specify how the reissue overcomes the defect  in the original patent; 
e.g., describe how the newly presented or amended claims  differ from 
those of the original patent. 

        Form Paragraphs 14.01 and 14.14 (see MPEP 
# 1444) may be used where the reissue oath or declaration does not state 
why  the patent is wholly or partially inoperative or invalid. 

W 14.01       Defective Reissue Oath/Declaration, 37 CFR 1.175(a)(1) 
        The reissue oath or declaration filed with this application is 
defective  because it fails to contain a statement that the applicant 
believes the original  patent to be wholly or partly inoperative or 
invalid, as required under 37  CFR 1.175(a)(1). 

Examiner Note: 

        1.  Use this paragraph when applicant fails to allege a defect. 
        2.  Paragraph 14.14 must follow. 

        Form Paragraph 14.02 may be used where the reissue oath or 
declaration  fails to specify the nature of the errors in the patent, 
including defects  in the specification or drawings and the excesses or 
insufficiencies in the  claims. 

W 14.02       Oath Fails To Specify Excess/Insufficiencies and/or Defects, 
 i.e., Errors in the Patent, 37 CFR 1.175(a)(2) or (a)(3) 

        The reissue oath or declaration filed with this application is 
defective  because it fails to describe the actual error(s) in the patent, 
i.e., it fails  to particularly specify the ``defects" in the 
specification or drawings, 37  CFR 1.175(a)(2); and /or it fails to 
distinctly specify the ``excess or insufficiency"  in the claims, 37 CFR 
1.175(a)(3). [1] 

Examiner Note: 

        1.  Use this paragraph when applicant fails to point out the 
excess  or insufficiency in the claims and/or the defect in the 
specification or drawings.  Applicant must point out every actual error in 
the patent (every ``defect"  and ``excess or insufficiency"). The examiner 
should identify the deficiencies  in bracket 1. 

        2.  Paragraph 14.14 must follow. 

        Failure to assert a difference in scope between the original and 
reissue  claims in the reissue oath or declaration has been held to be a 
fatal defect.  The patent statutes afford no authority for the reissue of 
a patent merely  to add claims of the same scope as those already granted: 
In re Wittry, >489  F.2d 1299,< 180 USPQ 320, 323 (CCPA 1974). 

** 


1414.03       Requirements of 37 CFR 1.175(a)(5) 


        All reissue oaths or declarations must comply with 
37 CFR 1.175(a)(5) by "particularly specifying the errors relied on, and 
how  they arose or occurred".  37 CFR 1.175(a)(5) has two specific 
requirements,  both of which must be complied with in the reissue oath or 
declaration. This  section requires applicant to particularly specify (1) 
"the errors relied upon"  and (2) "how they arose or occurred." 

        If applicant is seeking to amend claims in view of particular 
prior  art or other information, the reissue oath or declaration must 
point out such  prior art or other information and "the errors relied on" 
in view of such prior  art or other information. More specifically, the 
oath or declaration, in appropriate  circumstances, might state that some 
or all claims are deemed to be too broad  and invalid in view of 
references X and Y. Where appropriate, such as where  the pertinence of 
the new references X and Y are not evident, more specificity  about "the 
errors relied on" should be provided. 

        It is particularly important that the reissue oath or declaration 
specify  in detail how the errors arose or occurred. Included are 
inadvertent errors  in conduct; i.e., actions taken by the applicant, the 
attorney, or others before  the original patent issued, which actions are 
alleged to have caused the defect  in the patent. "How" includes when and 
under what circumstances the errors  arose or occurred. This means that 
the reissue oath or declaration must specify  the manner in which "the 
errors" "arose or occurred" Hewlett-Packard Co. v.  Bausch & Lomb, Inc., 
882 F.2d 1556, 11 USPQ2d 1750 (Fed. Cir. 1989); In re  Weiler et al., 229 
USPQ 673 (Fed. Cir. 1986). For example, the reissue oath  or declaration 
must indicate when and the manner in which the reissue applicant  became 
aware of the prior art or other information and of the error in the 
patent; such as, for example, through discovery of prior art or other 
information  subsequent to issuance of patent, knowledge of prior art or 
other information  before issuance of patent with significance being 
brought out after issuance  by third party through allegations made in 
litigation involving the patent,  etc. It is particularly important that 
the reissue oath or declaration adequately  specify how the errors arose 
or occurred. If the reissue oath or declaration  does not particularly 
specify "how," i.e., the manner in which the errors arose  or occurred, 
the Office will be unable to adequately evaluate reissue applicant's 
statement in compliance with 37 CFR 1.175(a)(6) that the "errors arose 
`without  any deceptive intention' on the part of the applicant"; see MPEP 
# 1414.04. 
        Form Paragraph 14.03 may be used where the re-issue oath or 
declaration  fails to comply with 37 CFR 1.175(a)(5). 

W 14.03 Oath Fails To Specify How Errors Arose, 37 CFR 1.175(a)(5) 
        The reissue oath or declaration filed with this application is 
defective  because it fails to particularly specify the errors and/or how 
the errors relied  upon arose or occurred as required under 37 CFR 
1.175(a)(5). Included are inadvertent  errors in conduct, i.e., actions 
taken by the applicant, the attorney or others,  before the original 
patent issued, which are alleged to be the cause of the  actual errors in 
the patent. This includes how and when the errors in conduct  arose or 
occurred, as well as how and when these errors were discovered. 
Applicant's  attention is directed to Hewlett-Packard v. Bausch & Lomb, 11 
USPQ2d 1750,  1758 (Fed. Cir. 1989). [1]. 

Examiner Note: 

  1. Use this paragraph if applicant fails to specify the error(s) in 
conduct  and/or fails to specify the manner and details of how the errors 
in conduct  occurred and when, and the manner in which they were 
discovered by applicant.  The examiner should identify the specific 
deficiencies in bracket 1. 
         2. Paragraph 14.14 must follow. 


1414.04       Requirements of 37 CFR 1.175(a)(6) 


        37 CFR 1.175(a)(6) specifically requires that all reissue oaths or 
 declarations contain the averment "that said errors arose `without any 
deceptive  intention' on the part of the applicant." This requirement for 
an absence of  "deceptive intention" should not be overlooked, since it is 
a necessary part  of any reissue application. The examiner will determine 
whether the reissue  oath or declaration contains the required averment 
that the "errors arose `without  any deceptive intention'," although the 
examiner will not comment as to whether  it appears there was in fact 
deceptive intention or not (see MPEP # 2022.05). 
        Form Paragraph 14.04 may be used where the reissue oath or 
declaration  does not comply with 37 CFR 1.175(a)(6). 

W 14.04       Oath Lacks Statement of No Deceptive Intent, 37 CFR 
1.175(a)(6) 
        The reissue oath or declaration filed with this application fails 
to  state that the errors arose "without any deceptive intention" on the 
part of  the applicant, as required under 37 CFR 1.175(a)(6). 


Examiner Note: 

        Paragraph 14.14 must follow. 


1414.05       Requirements of 37 CFR 1.175(a)(7)  [R-2] 


        37 CFR 1.175(a)(7) **>parallels< the provisions requiring the same 
 acknowledgment of the duty of disclosure in the oath or declaration in 
reissue  applications as in nonreissue applications. Reissue oaths or 
declarations,  whether original or supplemental, ** should be checked by 
the examiner for  compliance with 37 CFR 1.175(a)(7). 


1415    Reissue Filing and Issue Fees [R-2] 


        The applicant is permitted to present every claim that was issued 
in  the original patent for the basic filing fee. In addition to the basic 
filing  fee, filing or later presentation of each independent claim which 
is in excess  of the number of independent claims in the original patent 
requires a fee and  in addition filing or later presentation of each claim 
(whether independent  or dependent) in excess of 20 and also in excess of 
the number of claims in  the original patent requires a fee. The Office 
has prepared a form which is  designed to assist in the correct 
calculation of reissue filing fees. 

A14150001.bmp 


A14150001.end 



1416    Offer to Surrender and Return Original Patent [R-2] 


37 CFR 1.178. Original patent. 

        The application for a reissue must be accompanied by an offer to 
surrender  the original patent. The application should also be accompanied 
by the original  patent, or if the original is lost or inaccessible, by an 
affidavit or declaration  to that effect. The application may be accepted 
for examination in the absence  of the original patent or the affidavit or 
declaration, but one or the other  must be supplied before the case is 
allowed. If a reissue be refused, the original  patent will be returned to 
applicant upon his request. 

        The examination of the reissue application on the merits is made 
even  though the offer to surrender the original patent, or an affidavit 
or declaration  to the effect that the original is lost or inaccessible, 
has not been received.  However, in such case the examiner should require 
one of the above in the first  action. Either the original patent, or an 
affidavit or declaration as to loss  or inaccessibility of the original 
patent, must be received before the examiner  can allow the reissue 
application. 

        Form Paragraph 14.05 may be used to require an offer to surrender 
the  original patent. 

W 14.05  No Offer To Surrender Original Patent 

        This reissue application was filed without the required offer to 
surrender  the original patent or, if the original is lost or 
inaccessible, an affidavit  or declaration to that effect.  The original 
patent, or an affidavit or declaration  as to loss or inaccessibility of 
the original patent, must be received before  the reissue application can 
be allowed. See 
37 CFR 1.178. 

Examiner Note: 

        The examination of the reissue application on the merits is made 
even  though these requirements have not been met. This requirement should 
be made  in the first Office action. 

        >Form Paragraph 14.05.01 may be used to notify applicant that the 
original  patent or an affidavit as to loss is required before allowance. 

W 14.05.01  Original Patent Required Prior to Allowance 

        The original patent, or an affidavit or declaration as to loss or 
inaccessibility  of the original patent, must be received before this 
reissue application can  be allowed.  See 37 CFR 1.178. 

Examiner Note: 

        1.  This form paragraph may be used in an Office action to remind 
applicant  of the requirement for submission of the original patent before 
allowance. 
        2.  It may also be used in an Ex parte Quayle action to require 
such  submission. 

        3.  Do not use this form paragraph in an examiner's amendment. 
The  original patent or declaration of loss must be filed prior to mailing 
of the  "Notice of Allowability".< 

        If applicant requests the return of the patent on abandonment of 
the  reissue application, it will be sent to the applicant by the ** 
examining group. 
        An applicant may request that a surrendered original patent be 
transferred  from an abandoned reissue application to a continuation or 
divisional reissue  application. The clerk making the transfer should note 
the transfer on the  "Contents" of the abandoned application. The 
application number and filing  date of the reissue application to which it 
is transferred must be included  in the notation. Where the original 
patent grant is not submitted with the  reissue application as filed, 
patentee should include a copy of the printed  original patent. Presence 
of a copy of the original patent is useful for the  calculation of the 
reissue filing fee and for the verification of other identifying  data. 


1417    Claim for Benefit Under 35 U.S.C. 119>(a)-(d)< [R-1] 


        A "claim" for the benefit of an earlier filing date in a foreign 
country  under 35 U.S.C. 119>(a)-(d)< must be made in a reissue 
application even though  such a claim was made in the application on which 
the original patent was granted.  However, no additional certified copy of 
the foreign application is necessary.  The procedure is similar to that 
for "Continuing Applications" in MPEP # 201.14(b). 

        The heading on printed copies will not be carried forward to the 
reissue  from the original patent. Therefore, it is important that the 
file wrapper  be endorsed under "Claims Foreign Priority." 


1418    Information Disclosure Statement and Other Information [R-2] 

        ** 37 CFR 1.175>(a)(7)<, **>parellels< the requirements of 37 CFR 
1.56  and *>requires< acknowledgment in the reissue oath or declaration of 
the "duty  to disclose to the Office all information known to the 
applicants to be material  to patentability as defined in # 1.56." 

        Reissue applicants may utilize 37 CFR 1.97 and 1.98 to comply with 
 the duty of disclosure required by 37 CFR 1.56.  This does not, however, 
relieve  applicant of the duties under 37 CFR 1.175 of, for example, 
"particularly specifying  the errors relied upon, and how they arose or 
occurred" in the reissue oath  or declaration, or particularly specifying 
how and when applicant became aware of and/or came to appreciate  the 
relevancy of such prior art or other information. 

        While 37 CFR 1.97(b) provides for filing an information disclosure 
 statement within 3 months of the filing of an application or before the 
mailing  date of a first Office action, reissue applicants are encouraged 
to file information  disclosure statements at the time of filing in order 
that such statements will  be available to the public during the 2-month 
period provided by 37 CFR 1.176. 
        37 CFR 1.175(b) provides that, 

        "(b) Corroborating affidavits or declarations of others may be 
filed  and the examiner may, in any case, require additional information 
or affidavits  or declarations concerning the application for reissue and 
its object." 
        Thus, applicant may under 37 CFR 1.175(b) file "corroborating 
affidavits  or declarations of others . . . concerning the application for 
reissue and  its objects." It also provides that "the examiner may, in any 
case, require  additional information or affidavits or declarations 
concerning the application  for reissue or its 
object." 


1430    Reissue Files Open to the Public and Notice of Filing Reissue 
Announced in Official Gazette 

        37 CFR 1.11(b) provides that all reissue applications filed after 
March  1, 1977 "are open to inspection by the general public, and copies 
may be furnished  upon paying the fee therefor. The filing of reissue 
applications will be announced  in the Official Gazette." The announcement 
gives interested members of the  public an opportunity to submit to the 
examiner information pertinent to the  patentability of the reissue 
application. The announcement includes the filing  date, reissue 
application and original patent numbers, title, class and subclass,  name 
of the inventor, name of the owner of record, name of the attorney or 
agent of record, and the examining group to which the reissue application 
is  initially assigned. A group director or other appropriate Office 
official may,  under appropriate circumstances, postpone access to or the 
making of copies  of a reissue application; such as, for example, to avoid 
interruption of the  examination or other review of the application by an 
examiner. Those reissue  applications already on file prior to March 1, 
1977 are not automatically open  to inspection, but a liberal policy is 
followed by the Office of the Assistant  Commissioner for Patents in 
granting petitions for access to such applications. 
        For those reissue applications filed on or after March 1, 1977, 
the  following procedure will be observed: 

(1)   The filing of all reissue applications, including those filed under 
37  CFR 1.60 and 1.62, will be announced in the Official Gazette and will 
include  certain identifying data as specified in 37 CFR 1.11(b). Any 
member of the  general public may request access to a particular reissue 
application filed  after March 1, 1977. Since no record of such request is 
intended to be kept,  an oral request will suffice. 

(2)   The reissue application files will be maintained in the examining 
groups  and inspection thereof will be supervised by group personnel. 
Although no general  limit is placed on the amount of time spent reviewing 
the files, the Office  may impose limitations, if necessary; e.g., where 
the application is actively  being processed. 

(3)   Where the reissue application has left the examining group for 
administrative  processing, requests for access should be directed to the 
appropriate supervisory  personnel in the Division or Branch where the 
application is currently located. 
(4)   Requests for copies of papers in the reissue application file must 
be  in writing and addressed to the Commissioner of Patents and 
Trademarks, Washington,  D.C. 20231 and may be either mailed or delivered 
to the Office mailroom. The  price for copies made by the Office is set 
forth in 37 CFR 1.19. 


1431    Notice in Patent File 


37 CFR 1.179.   Notice of reissue application. 

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

        Whenever a reissue application is filed, a Form PTO-445 notice is 
placed  in the patented file identifying the reissue application by 
application number  and its filing date. The pertinent data is filled in 
by the Application Branch.  When divisional or continuation reissue 
applications are filed, a separate  form for each reissue application is 
placed in the original patented file.  When the reissue is issued or 
abandoned, it is important that the Record Room  be informed by the 
examining group clerical staff of that fact by written memo.  Record Room 
personnel will update the Form PTO-445 in the patented file. 

1440    Examination of Reissue Application 


37 CFR 1.176.  Examination of reissue. 

        An original claim, if re-presented in the reissue application, is 
subject  to reexamination, and the entire application will be examined in 
the same manner  as original applications, subject to the rules relating 
thereto, excepting  that division will not be required. Applications for 
reissue will be acted  on by the examiner in advance of other 
applications, but not sooner than two  months after announcement of the 
filing of the reissue application has appeared  in the Official Gazette. 

        37 CFR 1.176 provides that an original claim, if 
re-presented in a reissue application, will be subject to reexamination 
and,  along with the entire application, will be fully examined in the 
same manner  subject to the same rules relating thereto, as if being 
presented for the first  time in an original application; except that 
division will not be required.  See MPEP # 1450 and # 1451. Reissue 
applications are normally examined by the  same examiner who issued the 
parent patent. In addition, the application will  be examined with respect 
to compliance with 37 CFR 1.171-1.179 relating specifically  to reissue 
applications; for example, the reissue oath or declaration will  be 
carefully reviewed for compliance with 
37 CFR 1.175.  See MPEP # 1444 for handling applications in which the oath 
 or declaration lacks compliance with 37 CFR 1.175. Reissue applications 
with  related litigation will be acted on by the examiner before any other 
special  applications, and will be acted on immediately by the examiner, 
subject only  to the 2-month delay after publication for examining reissue 
applications. 
        The original patent file wrapper should always be ordered and 
reviewed  when examining a reissue application thereof. 


1441    Two-Month Delay Period 


        37 CFR 1.176 provides that reissue applications will be acted on 
by  the examiner in advance of other applications; i.e., "special", but 
not sooner  than 2 months after announcement of the filing of the reissue 
has appeared  in the Official Gazette. The 2-month delay is provided in 
order that members  of the public may have time to review the reissue 
application and submit pertinent  information to the Office before the 
examiner's action. However, as set forth  in MPEP # 1901.04, the public 
should be aware that such submissions should  be made as early as possible 
since under certain circumstances the 2-month  delay period of 37 CFR 
1.176 may be waived. The Office will entertain petitions  under 37 CFR 
1.183 which are accompanied by the fee (37 CFR 1.17(h)) to waive  the 
delay period of 37 CFR 1.176. Appropriate reasons for requesting such a 
waiver might be, for example, that litigation has been stayed to permit 
the  filing of the reissue application. Such petitions are decided by the 
Assistant  Commissioner for Patents. 

        Since the examining group to which the reissue application is 
assigned  is listed in the Official Gazette notice of filing of the 
reissue application,  the indicated examining group should retain the 
application file for 2 months  after the date of the Official Gazette 
notice before transferring the reissue  application under the procedure 
set forth in MPEP # 903.08(d). 


1442    Special Status 


        All reissue applications are taken up "special", and remain 
"special"  even though applicant does not respond promptly. 

        All reissue applications, except those under suspension because of 
 litigation, will be taken up for action ahead of other "special" 
applications;  this means that all issues not deferred will be treated and 
responded to immediately.  Furthermore, reissue applications involved in 
"litigation" will be taken up  for action in advance of other reissue 
applications. 


1442.01       Litigation Related Reissues 


        During initial review, the examiner should determine whether the 
patent  for which the reissue has been filed is involved in litigation and 
if so the  status of that litigation. If the examiner becomes aware of 
litigation involving  the patent sought to be reissued during examination 
of the reissue application,  and applicant has not made the details 
regarding that litigation of record  in the reissue application, the 
examiner, in the next Office action, will inquire  regarding the specific 
details of the litigation. 

        Form Paragraph 14.06 may be used for such an inquiry. 

W 14.06       Litigation Related Reissue 

        The patent sought to be reissued by this application [1] involved 
in  litigation. Any documents and/or materials which would be material to 
patentability  of this reissue application are required to be made of 
record in response to  this action. 

        Due to the related litigation status of this application, 
EXTENSIONS  OF TIME UNDER THE PROVISIONS OF 37 CFR 
1.136(a) WILL NOT BE PERMITTED DURING THE PROSECUTION OF THIS APPLICATION. 
Examiner Note: 

        In bracket 1, insert either -is- or -has been-. 

        If the additional details of the litigation appear to be material 
to  examination of the reissue application, the examiner may make such 
additional  inquiries as necessary and appropriate under 37 CFR 1.175(b). 

        Where there is litigation, and it has not already been done, the 
examiner  should place a prominent notation on the application file to 
indicate the litigation, 
(1) at the bottom of the face of the file in the box just to the right of 
the  box for the retention label, and (2) on the pink Reissue Notice Card 
form. 
        Applicants will normally be given 1 month to respond to Office 
actions  in all reissue applications which are being examined during 
litigation, or  after litigation had been stayed, dismissed, etc., to 
allow for consideration  of the reissue by the Office. This 1-month period 
may be extended only upon  a showing of clear justification pursuant to 37 
CFR 1.136(b). The Office action  will inform applicant that the provisions 
of 37 CFR 1.136(a) are not available.  Of course, up to 3 months may be 
set for response if the examiner determines  such a period is clearly 
justified. 


1442.02       Litigation Not Stayed 


        In order to avoid duplication of effort, action in reissue 
applications  in which there is an indication of concurrent litigation 
will be suspended  automatically unless and until it is evident to the 
examiner, or the applicant  indicates, that: (1) a stay of the litigation 
is in effect; 
(2) the litigation has been terminated; (3) there are no significant 
overlapping  issues between the application and the litigation; or (4) it 
is applicant's  desire that the application be examined at that time. 

        Form Paragraphs 14.08-14.10 may be used to deny stays. 

W 14.08       Action Not Stayed - Related Litigation Terminated 

        Since the litigation related to this reissue application is 
terminated  and final, action in this reissue application will NOT be 
stayed. Due to the  related litigation status of this reissue application, 
EXTENSIONS OF TIME UNDER  THE PROVISIONS OF 37 CFR 1.136(a) WILL NOT BE 
PERMITTED. 

W 14.09       Action Not Stayed - Related Litigation Not Overlapping 
        While there is concurrent litigation related to this reissue 
application, action in this reissue application will NOT be stayed because 
there  are no significant overlapping issues between the application and 
that litigation.  Due to the related litigation status of this reissue 
application, EXTENSIONS  OF TIME UNDER THE PROVISIONS OF 37 CFR 1.136(a) 
WILL NOT BE PERMITTED. 
W 14.10       Action Not Stayed - Applicant's Request 

        While there is concurrent litigation related to this reissue 
application,  action in this reissue application will NOT be stayed 
because of applicant's  request that the application be examined at this 
time. Due to the related litigation  status of this reissue application, 
EXTENSIONS OF TIME UNDER THE PROVISIONS  OF 37 CFR 1.136(a) WILL NOT BE 
PERMITTED. 

        Form Paragraph 14.11 may be used to stay action in a reissue 
application  with concurrent litigation. 

W 14.11       Action Stayed - Related Litigation 

        In view of concurrent litigation, and in order to avoid 
duplication  of effort between the two proceedings, action in this reissue 
application is  STAYED until such time as it is evident to the examiner 
that (1) a stay of  the litigation is in effect, (2) the litigation has 
been terminated, (3) there  are no significant overlapping issues between 
the application and the litigation,  or (4) applicant requests that the 
application be examined. 


1442.03       Litigation Stayed 


        All reissue applications, except those under suspension because of 
 litigation, will be taken up for action ahead of other "special" 
applications;  this means that all issues not deferred will be treated and 
responded to immediately.  Furthermore, reissue applications involved in 
"stayed litigation" will be taken  up for action in advance of other 
reissue applications. Great emphasis is placed  on the expedited 
processing of such reissue applications. The courts are especially 
interested in expedited processing in the Office where litigation is 
stayed. 
        In reissue applications with "stayed litigation," the Office will 
entertain  petitions under 37 CFR 1.183, which are accompanied by the fee 
under 37 CFR  1.17(h) to waive the 2-month delay period under 37 CFR 1.176. 

        Time-monitoring systems have been put into effect which will 
closely  monitor the time used by applicants, protestors, and examiners in 
processing  reissue applications of patents involved in litigation in 
which the court has  stayed further action. Monthly reports on the status 
of reissue applications  with related litigation are required from each 
examining group. Delays in reissue  processing are to be followed up. 

        The purpose of these procedures and those deferring consideration 
of  certain issues, until all other issues are resolved or the application 
is otherwise  ready for consideration by the Board of Patent Appeals and 
Interferences (note  MPEP # 1448), is to reduce the time between filing of 
the reissue application  and final action thereon, while still giving all 
parties sufficient time to  be heard. 

        Requests for stays in reissues where litigation has been stayed 
may  be answered with Form Paragraph 14.07. 

W 14.07       Action Not Stayed - Related Litigation Stayed 

        While there is concurrent litigation related to this reissue 
application,  action in this reissue application will NOT be stayed 
because a stay of that  litigation is in effect for the purpose of 
awaiting the outcome of these reissue  proceedings. Due to the related 
litigation status of this reissue application,  EXTENSIONS OF TIME UNDER 
THE PROVISIONS OF 37 CFR 1.136(a) WILL NOT BE PERMITTED. 

1442.04       Litigation Involving Patent 


        Where the patent for which reissue is being sought is, or has 
been,  involved in litigation which raised a ques-tion material to 
patentability of  the reissue application, such as the validity of the 
patent, or any allegation  of fraud or inequitable conduct, the existence 
of such litigation must be brought  to the attention of the Office by the 
applicant at the time of, or shortly  after, filing the application, 
either in the reissue oath or declaration, or  in a separate paper, 
preferably accompanying the application as filed. Litigation  begun after 
filing of the reissue application also should be promptly brought  to the 
attention of the Office. The details and documents from the litigation, 
insofar as they are "material to patentability" of the reissue application 
 as defined in 37 CFR 1.56(b), should accompany the application as filed, 
or  be submitted as promptly thereafter as possible (note MPEP 
# 1414.05). For example, the defenses raised against validity of the 
patent,  or charges of fraud or inequitable conduct in the litigation, 
would normally  be "material to patentability" of the reissue application. 
It would, in most  situations, be appropriate to bring such defenses to 
the attention of the Office  by filing in the reissue application a copy 
of the Court papers raising such  defenses. As a minimum, the applicant 
should call the attention of the Office  to the litigation, the existence 
and nature of any allegations relating to  validity and/or "fraud" or 
"inequitable conduct" relating to the original patent,  and the 
nature of litigation materials relating to these issues. Enough 
information  should be submitted to clearly inform the Office of the 
nature of these issues  so that the Office can intelligently evaluate the 
need for asking for further  materials in the litigation. Thus, the 
existence of supporting materials which  may substantiate allegations of 
invalidity or "fraud" or "inequitable conduct"  should, at least, be fully 
described, or submitted. The Office is not interested  in receiving 
voluminous litigation materials which are not relevant to the  Office's 
consideration of the reissue application. The status of the litigation 
should be updated in the reissue application as soon as significant events 
 happen in the litigation. 

        When a reissue application is filed, the examiner should determine 
 whether the original patent has been adjudicated by a court. The decision 
of  the court and also other papers in the suit may give information 
essential  to the examination of the reissue. The patented file will 
contain notices of  the filing and termination of infringement suits on 
the patent. Such notices  are required by law to be filed by the clerks of 
the District Courts. These  notices do not indicate if there was an 
opinion by the court, nor whether a  decision was published. Shepard's 
Federal Citations and the cumulative digests  of the United States Patents 
Quarterly, both of which are in the Office Law  Library, contain tables of 
patent numbers giving the citation of published  decisions concerning the 
patent. Where papers are not otherwise conveniently  obtainable, the 
applicant may be requested to supply copies of papers and records  in 
suits, or the Office of the Solicitor may be requested to obtain them from 
 the court. The information thus obtained should be carefully considered 
for  its bearing on the proposed claims of the reissue, particularly when 
the reissue  application was filed in view of the holding of a court. 

        If the examiner becomes aware of litigation involving the patent 
sought  to be reissued during examination of the reissue application, and 
applicant  has not made the details regarding that litigation of record in 
the reissue  application, the examiner, in the next Office action, should 
inquire regarding  the same. The following paragraph may be used for such 
an inquiry: 
        "It has come to the attention of the examiner that the patent 
sought  to be reissued by this application (is) (has been) involved in 
litigation. 

Any documents and/or materials, including the defenses raised against 
validity,  or against en-forceability because of fraud or inequitable 
conduct, which would  be material to patentability of this reissue 
application are required to be  made of record in response hereto. See 37 
CFR 1.175(b)." 

        If the additional details of the litigation appear to be material 
to  patentability of the reissue application, the examiner may make such 
additional  inquiries as necessary and appropriate under 37 CFR 1.175(b). 
See MPEP # 1447. 

1442.05       Cases in Which Stays Were Considered 


        District Courts are staying litigation in significant numbers of 
cases  to allow for consideration of a reissue application by the Office. 
These cases  are listed here for the convenience of the courts and the 
public. 
        In most instances, the reissue-reexamination procedure is 
instituted  by a patent owner who voluntarily files a reissue application 
as a consequence  of related patent litigation. However, some District 
Courts have required a  patentee-litigant to file a reissue application, 
for example: 

        Alpine Engineering Inc. v. Automated Building Components Inc., 
BNA/PTCJ  367: A-12 (S.D. Fla. 1978); 

        Lee-Boy Manufacturing Co. v. Puckett, 202 USPQ 573 (D. Ga. 1978); 
        Choat v. Rome Industries Inc. et al., 203 USPQ 549 (N.D. Ga. 
1979). 
        Other courts have declined to so order, for example: 

        Bielomatik Leuze & Co., v. Southwest Tablet Manufacturing Co., 204 
 USPQ 226 (N.D. Texas 1979); 

        RCA Corp. v. Applied Digital Data Systems Inc., 
201 USPQ 451 (D. Del. 1979); 

        Antonious v. Kamata-Ri & Co. Ltd., 204 USPQ 294 (D. Md. 1979). 
        Despite the voluntariness of a reissue filing, under present 
practice,  only a patentee or his assignee may file a reissue patent 
application. 

1442.05(a)  Stays Granted 


        "Stays" were ordered in the following sampling of published 
"decisions". 
        PIC Inc. v. Prescon Corp., 195 USPQ 525 (D. Del. 1977). 

        Fisher Controls Co. Inc. v. Control Components, Inc., 
196 USPQ 817 (S.D. Iowa 1977). (Note also 203 USPQ 1059 denying discovery 
during  the stay). 

        Alpine Engineering Inc. v. Automated Building Components Inc., 
BNA/PTCJ  367: A-12 (S.D. Fla. 1978). 

        (Dismissed a Declaratory Judgment suit with order for patentee to 
seek  reissue in the Patent and Trademark Office). 

        AMI Industries, Inc. v. E. A. Industries, Inc., 
204 USPQ 568 (W.D. N.C.1978). (With dicta that if suit had not been 
dismissed  proceedings would have been stayed for Office consideration). 

        Reynolds Metal Co. v. Aluminum Co. of America, 
198 USPQ 529 (N.D. Ind. 1978). 

        Sauder Industries, Inc. v. Carborundum Co., 
201 USPQ 240 (N.D. Ohio, 1978). 

        Rohm and Haas Co. v. Mobil Oil Corp., 201 USPQ 80 (D. Del. 1978). 
(With  provision for limited discovery on allegations of fraud for 
Office's benefit). 
        Lee-Boy Manufacturing Co. v. Puckett, 202 USPQ 573 (D. Ga. 1978). 
(Reissue  ordered after discovery and during wait for trial). 

        Fas-Line Sales & Rentals, Inc. v. E-Z Lay Pipe Corp., 203 USPQ 497 
(W.D. Okla. 1979). 

        Choat v. Rome Industries Inc., 203 USPQ 549 (N.D. Ga. 1979) 
directed  patentee to file reissue application. 

        In re Certain High-Voltage Circuit Interrupters and Components 
Thereof,  204 USPQ 50 (Int'l Trade Comm. 1979). 


1442.05(b)  Stays Denied 


        "Stays" were denied in the following sampling of published 
"decisions". 

        General Tire and Rubber Co. v. Watson-Bowman 
Associates, Inc., 193 USPQ 479 (D. Del. 1977). 

        Perkin-Elmer Corp. v. Westinghouse Electric Corp., BNA/PTCJ 376: 
A-11 
(E.D. N.Y. 1978). 

        In re Certain Ceramic Tile Setters, No. 337-TA-41, BNA/PTCJ 385: 
A-21 
(Int'l Trade Comm. 1978). 

        E.C.H. Will v. Freundlich-Gomez Machinery Corp., 
201 USPQ 476 (S.D. N.Y. 1978). 

        RCA Corp. v. Applied Digital Data Systems Inc., 
201 USPQ 451 (D. Del. 1979) denied stay where a patentee had not filed a 
reissue. 
        Bielomatik Leuze & Co., v. Southwest Tablet Manufacturing Co., 204 
 USPQ 226 (N.D. Texas 1979) 
refused to order reissue. 

        Antonious v. Kamata-Ri & Co. Ltd., 204 USPQ 294 (D. Md. 1979) 
refused  to order reissue. 


1443    Initial Examiner Review 


        On initial receipt of a reissue application, the examiner should 
inspect  the abstract of title to determine whether 37 CFR 1.172 has been 
complied with. 
        The examiner should determine if the filing of the reissue has 
been  announced in the Official Gazette as provided in 37 CFR 1.11(b), 
especially  where the reissue is a file wrapper continuation under 37 CFR 
1.62. If the  filing has not been announced, the reissue application 
should be returned to  Application Branch to handle the announcement. The 
examiner should not further  act on the reissue until 2 months after 
announcement of the filing of the reissue  has appeared in the Official 
Gazette: see MPEP # 1440 and 37 CFR 1.176. 
        The examiner should determine if there is concurrent litigation 
and  if so the status thereof (MPEP 
# 1442.01, supra), and whether the reissue file has been appropriately 
marked. 
 Note MPEP # 1404. 

        The examiner should determine if a protest has been filed and if 
so  it should be handled as set forth in MPEP # 1901.06. 

        The examiner should determine whether the patent is involved in an 
 interference, and if so should refer to MPEP # 1449.01 before taking any 
action  on the reissue application. 

        The examiner should check that an offer to surrender the original 
patent,  or an affidavit or declaration to the effect that the original is 
lost or inaccessible,  has been received. An examination on the merits is 
made even though the above  has not been complied with, but the examiner 
should require compliance in the  first office action. 

        The examiner should verify that all Certificate of Correction 
changes  have been properly incorporated into the reissue application. 

        The examiner should verify that the patent on which the reissue 
application  is based has not expired, either because its term has run or 
because required  maintenance fees have not been paid. 


1444    Review of Reissue Oath or Declaration [R-2] 


        When examining the reissue application, the examiner will consider 
 at each stage or point in the examination whether or not the reissue oath 
or  declaration complies with each of the requirements of 37 CFR 1.175; 
see MPEP  # 1414 to # 1414.05.  For example, in all reissue applications, 
the reissue  oath or declaration must comply with the requirements of 37 
CFR 1.63; see MPEP # 1414, and MPEP # 602, 37 CFR 1.63(b)(1) and (2), 
especially. Similarly, for  example, all reissue declarations must comply 
with * sections (a)(5) *>,< (a)(6)>,  and (a)(7)< of 37 CFR 1.175; see 
MPEP # 1414.03 *>,< 
# 1414.04  ** >and<  # 1414.05. 

        The examiner must check that each and every change in the 
specification  or claims is supported in either the original or a 
supplemental oath or declaration.  Every departure from the original 
patent represents an "error" in said original  patent under 35 U.S.C. 251 
and must be particularly and distinctly specified  and supported in the 
original, or a supplemental, reissue oath or declaration  under 37 CFR 
1.175. Any changes in the specification or claims require an updated 
supplemental oath or declaration specifically directed and supporting said 
 changes under 37 CFR 1.175. See In re Constant, 
827 F.2d 728, 729, 3 USPQ2d 1479, 1480 (Fed. Cir.), cert. denied, 484 U.S. 
 894 (1987). Any such supplemental oath or declaration should be filed 
promptly,  preferably at the time of or as soon as possible after the 
changes in the specification  and claims are filed. If the examination 
reveals a lack of compliance with  any of the appropriate requirements of 
37 CFR 1.175, a rejection of all the  claims should be made on the basis 
that the reissue oath or declaration is  insufficient. 

        >A lack of signature on a reissue oath or declaration would be 
considered  a lack of compliance with 37 CFR 1.175(a) and result in a 
rejection, including  final rejection, of all claims on the basis that the 
reissue oath or declaration  is insufficient. If an unsigned reissue oath 
or declaration is submitted as  a part of a reply which is otherwise 
properly signed and responsive to any  outstanding Office action, the 
reply should be accepted by 
the examiner as proper and responsive, and the oath or declaration 
considered  fully on the merits in the next Office action. The reply 
should not be treated  as nonresponsive as in MPEP # 714.01(a), nor do the 
provisions of Ex parte Quayle  apply in this situation.  The lack of 
signature, along with any other oath  or declaration deficiencies, should 
be noted in the next Office action reject-ing  the claims as being based 
upon an insufficient reissue oath or declaration.< 

        Use Form Paragraphs 14.01-14.04 and Form Paragraph 14.14 to reject 
 under 35 U.S.C. 251. 

W 14.14       Rejection, Defective Reissue Oath/Declaration 

        Claim [1] rejected as being based upon a defective reissue [2] 
under 35 U.S.C. 251.  See 37 CFR 1.175. 

Examiner Note: 

        1. In bracket 1, list all claims in the reissue application. See 
MPEP  706.03(x). 

        2. This paragraph should be preceded by at least one of paragraphs 
 14.01-14.04. 

        3. In bracket 2, insert either -oath- or -declaration-. 

        >Form Paragraph 14.04.01 should be used where a supplemental 
reissue  oath or declaration is required. 

W 14.04.01  Reisue Application Amended - New/Supplemental Oath Required 
        In view of the fact that additional errors in the original patent 
have been corrected through amendments to the [1], a new/supplemental oath 
or declaration complying with 37 CFR 1.175(a)(1), 
(a)(2) and/or (a)(3), (a)(5), (a)(6), and (a)(7) is required. See In re 
Constant,  3 USPQ2d 1479. 

Examiner Note: 

        1.  In bracket 1, insert -specification-, -drawings-, or 
-claims-. 

        2.  This paragraph should be used when amendments have been made 
to  the reissue application including the addition of new claims. Sections 
1444  and 1444.01 of the MPEP should be reviewed before use of this 
paragraph.< 
        Under no circumstances will any reissue application be passed to 
issue  without full compliance with 37 CFR 1.175. No reissue application 
can be passed  for issue with only 37 CFR 1.175(a)(4) type oath or 
declaration. 

** 


1445    Reissue Application Examined in Same Manner as Original 
Application [R-2] 

        As stated in 37 CFR 1.176, a reissue application, including all 
the  claims therein, is subject to "be examined in the same manner as 
original applications".  This means the claims, whether identical to or 
changed from those in the patent,  are subject to any and all rejections 
which the examiner deems appropriate.  The fact that a rejection was not 
made, or could have been made, or was made  and dropped during prosecution 
of the patent does not prevent that rejection  from being made in the 
reissue application. Claims in a reissue application  enjoy no >``< 
presumption of *validity"*>.< In re Doyle, >482 F.2d 1385, 1392,<  179 
USPQ 227, 232-233 (CCPA 1973); In re Sneed ** >, 710 F.2d 1544, 1550 n.4,< 
 218 USPQ 385, 389 >n.4< (Fed, Cir. 1983).  Likewise, the fact that during 
prosecution  of the patent the examiner considered, may have considered, 
or should have  considered information such as, for example, a specific 
prior art document,  does not have any bearing on or prevent its use as 
prior art during prosecution  of the reissue application. 

** 


1447    Additional Information, Affidavits, or Declarations Required 

37 CFR 1.175.   Reissue oath or declaration 

***** 

        (b) Corroborating affidavits or declarations of others may be 
filed  and the examiner may, in any case, require additional information 
or affidavits  or declarations concerning the application for reissue and 
its object. 
        37 CFR 1.175(b) recognizes the need, when appropriate, for 
additional  information or affidavits or declarations, during examination 
of reissue applications.  37 CFR 1.175(b) provides that the examiner may 
require additional information  or affidavits or declarations concerning 
the reissue application and its object. 


1448    Fraud, Inequitable Conduct, or Duty of Disclosure Issues [R-1] 

        The Office no longer investigates and rejects reissue applications 
 under 37 CFR 1.56. The Office will not comment upon duty of disclosure 
issues  which are brought to the attention of the Office in reissue 
applications except  to note in the application, in appropriate 
circumstances, that such issues  are no longer considered by the Office 
during its examination of patent applications. Examination of lack of 
deceptive  intent in reissue applications will continue but without any 
investigation  of fraud, inequitable conduct, or duty of disclosure 
issues. Applicant's statement  of lack of deceptive intent normally will 
be accepted as dispositive except  in special circumstances such as an 
admission or judicial determination of  fraud or inequitable conduct. Form 
paragraph 14.22 may be used if a rejection  is appropriate. 

W 14.22       Rejection, 35 U.S.C. 251, No Error Without Deceptive 
Intention 
        Claims [1] rejected under 35 U.S.C. 251 since ** error was 
"without  deceptive intention" >has not been established<. Paper no. [2], 
* >filed< [3] does not support a conclusion that any error was "without 
deceptive  intention" because [4]. 

Examiner Note: 

        1. In bracket 1, list all claims in the reissue application. 
        2. In bracket 2, insert paper number. 

        3. In bracket 3, insert the >filing< date of the paper. 

        4. In bracket 4, insert a statement that there has been an 
admission  or a judicial determination of fraud or inequitable conduct or 
insert an explanation  of other special circumstances why applicant's 
statement in the oath or declaration  of lack of deceptive intent should 
not be taken as dispositive. 


1449    Protest Filed in Reissue Where Patent Is in Interference 


        If a protest is filed in a reissue application related to a patent 
 involved in a pending interference proceeding, the reissue application 
should  be referred to the Office of the Assistant Commissioner for 
Patents, before  considering the protest and acting on the application. 


1449.01       Concurrent Office Proceedings 


        37 CFR 1.565(d) provides that if "a reissue application and a 
reexamination  proceeding on which an order pursuant to 37 CFR 1.525 has 
been mailed are pending  concurrently on a patent, a decision will 
normally be made to merge the two  proceedings or to stay one of the two 
proceedings."  See MPEP # 2285. 
        If the original patent is involved in an interference, the 
examiner  must consult the examiner-in-chief in charge of the interference 
before taking  any action on the reissue application. It is particularly 
important that the  reissue application not be granted without the 
examiner-in-chief's approval.  See MPEP # 2360. 


1450    Restriction and Election of Species  [R-2] 


        The examiner may not require restriction in a reissue application 
(37  CFR 1.176 * >and< MPEP # 1440). If the original patent contains 
claims to different  inventions which the examiner may nevertheless 
consider independent and distinct,  and the reissue application also 
claims the same inventions, the examiner should  not require restriction 
between them or take any other action with respect  to the question of 
plural inventions. Restriction is entirely at the option  in the first 
instance of the applicant (37 CFR 1.177 and MPEP # 1451). If the  reissue 
application contains claims to an independent and distinct invention 
which was not claimed in the original patent, these claims may be treated 
by  a suitable rejection, such as not being "for the invention disclosed 
in the  original patent," as evidenced by the claims in the original 
patent*>(< In  re Rowand, >526 F.2d 558,<187 USPQ 487 (CCPA 1975)>)<; lack 
of inoperativeness  of, or defect in, the original patent; lack of error; 
or not being for matter  which might have been claimed in the original patent. 

        Reissue applicant's failure to timely file a divisional 
application  is not considered to be error causing a patent granted on 
elected claims to  be partially inoperative by reason of claiming less 
than they had a right to  claim; and thus such applicant's error is not 
correctable by reissue of the  original patent under 35 U.S.C. 251*>In re 
Watkinson, 900 F.2d 230, 14 USPQ2d  1407 (Fed. Cir. 1990);< In re Orita, 
**>550 F.2d 1277,< 193 USPQ 145, 148 (CCPA  1977); see also In re Mead, 
581 F. 2d *>251,< 198 USPQ 412 (CCPA 1978). 
        When the original patent contains claims to a plurality of species 
 and the reissue application contains claims to the same species, election 
of species should not be required even though there is no allowable 
generic claim.  If the reissue application presents claims to species not 
claimed in the original  patent, election of species should not be 
required, but the added claims may  be rejected on an appropriate ground 
which may be lack of defect in the original  patent and lack of error in 
obtaining the original patent. Most situations  require special treatment. 


1451    Divisional Reissue Applications [R-1] 


        As is pointed out in the preceding section, the examiner cannot 
require  restriction in reissue applications, but if the original patent 
claims contain  several independent and distinct inventions they can only 
be granted in separate  reissues if the applicant demands it. The 
following rule sets forth the only  possibility of divisional reissue 
applications. 

37 CFR 1.177.      Reissue in divisions. 

        **>The Commissioner may, in his or her discretion, cause several 
patents  to be issued for distinct and separate parts of the thing 
patented, upon demand  of the applicant, and upon payment of the required 
fee for each division. Each  division of a reissue constitutes the subject 
of a separate specification descriptive  of the part or parts of the 
invention claimed in such division; and the drawing  may represent only 
such part or parts, subject to the provisions of ## 1.83  and 1.84. On 
filing divisional reissue applications, they shall be referred  to the 
Commissioner. Unless otherwise ordered by the Commissioner upon petition 
and payment of the fee set forth in # 1.17(i), all the divisions of a 
reissue  will issue simultaneously; if there is any controversy as to one 
division,  the others will be withheld from issue until the controversy is 
ended, unless  the Commissioner orders otherwise.< 

        Divisional reissue applications are required on filing to be 
referred  to the Office of the Assistant Commissioner for Patents. Where 
such applications  are forwarded to the examining group or examiner 
without having been so referred,  they must be referred immediately to the 
Office of the Assistant Commissioner  for Patents. 

        It is important that divisional reissue applications be 
appropriately  marked so that they "will issue simultaneously" on the same 
date as required  by 37 CFR 1.177. 

        Divisional reissue cases which arrive together from the examining 
corps  with appropriate identification on their file jackets (in the 
Continuing Data  box) should be kept and processed together by the 
Publishing Division and throughout  all stages of preparation for issue. 
Situations yielding divisional reissues  occur infrequently and usually 
involve only two such files. It should be noted,  however, that in rare 
instances in the past, there have been more than two 
(and as many as five) divisional reissues of a patent. 

        Some special handling of divisional reissue applications is 
required  in various parts of the Office. 

        Appropriate amendments to the continuing data entries are to be 
made  to the file jackets and specification paragraphs for all such 
applications  so that all "sibling" divisional reissue applications are 
specifically identified. 

1453    Amendments to Reissue Applications  [R-2] 


        37 CFR 1.121.  Manner of making amendments. 

***** 

        (e) In reissue applications, both the descriptive portion and the 
claims  are to be amended by either (1) submitting a copy of a portion of 
the description  or an entire claim with all matter to be 


deleted from the patent being placed between brackets and all matter to be 
 added to the patent being underlined, or (2) indicating the exact word or 
words  to be stricken out or inserted and the precise point where the 
deletion or  insertion is to be made. Any word or words to be inserted 
must be underlined.  See # 1.173. 

***** 

        >Form Paragraph 14.20 may be used to advise applicant as to the 
proper  manner of making amendments. 

# 14.20       Amendments to Reissue 

        Applicant is notified that any subsequent amendment to the 
specification  and/or claims must comply with 37 CFR 1.121(e). 

Examiner Note: 

        This paragraph may be used in the first Office action to advise 
applicant  of the proper manner of making amendments. 

        Form Paragraph 14.21 may be used to notify applicant that the 
proposed  amendment does not comply with 37 CFR 1.21(e). 

# 14.21       Improper Amendment to Reissue 

        The amendment filed [1] is informal/non-responsive because the 
proposed  amendments to claim [2] do not comply with 37 CFR 1.121(e), 
which sets forth  the manner of amending claims in reissue applications. 
A supplemental paper  correctly amending the claims is required within  a 
time limit of ONE MONTH  from the date of this letter or within the time 
remaining in the response period  of the last Office action, whichever is 
longer. NO EXTENSION OF THIS TIME LIMIT  MAY BE GRANTED UNDER 37 CFR 
1.136(a) OR (b), but the period for the response  set in the last office 
action may be extended up to a maximum of SIX MONTHS. 
Examiner Note: 

        Do not use this paragraph for litigated reissue applications as 37 
CFR 1.136(a) would not apply.< 

        When a reissue patent is printed, all underlined matter is printed 
 in italics and all brackets are printed as inserted in the application to 
show  exactly which additions and deletions have been made to the original 
patent.  Therefore, all underlining and bracketing should be made relative 
to the text  of the original patent. 

        A substantial number of problems arise in the 
Office because of improper submission of amendments in reissue 
applications.  The following examples are provided to assist in 
preparation of proper amendments  to reissue applications. 

 ORIGINAL DESCRIPTION OR CLAIM AMENDED 

        (1) Submit a copy of the entire paragraph being amended with 
underlining  and bracketing. 

Scanning [is] are controlled by clocks which are, in turn, controlled from 
 the display tube line synchronization. The signals resulting from 
scanning  the scope of the character are delivered in parallel, then 
converted into serial  mode through a shift register wherein the shift 
signal frequency is controlled  by a clock that is, in turn, controlled 
from the display tube line synchronization. 
        Claim 6. The apparatus of claim [5] 1 wherein the first 
piezoelectric  element is parallel to the second piezoelectric element. 

or (2) Submit an amendment indicating the exact word or words to be 
deleted  or inserted and the precise point where the deletion or insertion 
is to be  made. 

        Column 6, line 1, change [is] to --are--. 

        Column 6, line 2, after "are", insert--, in turn,--. 

        Column 6, line 7, after "is", insert--, in turn,--. 

        Claim 6, line 2, change [5] to --1--. 

 ORIGINAL CLAIM CANCELED 

        (1) Present entire claim within brackets. 

        [Claim 6. The apparatus of claim 5 wherein the first piezoelectric 
 element is parallel to the second piezoelectric element.] 

or (2) direct cancelation of entire claim. 

        Cancel claim 6. 

 ADDING ADDITIONAL CLAIMS 

        New claim should be presented with underlining throughout the 
claim. 
        Claim 7. The apparatus of claim 5 further comprising electrodes 
attaching  to said opposite faces of the first and second piezoelectric 
elements. 
        Even though original claims may have been canceled, the numbering 
of  the original claims does not change. Any added claims are numbered 
beginning  with the number next higher than the number of claims in the 
original patent.  If the dependency of any original dependent claims 
changes, it is proper to  change the dependency to the later filed higher 
numbered claim. If new claims  have been added to the reissue application 
which are later canceled prior to  issuance of the reissue patent, the 
examiner will renumber any remaining new  claims in numerical order to 
follow the number of claims in the original patent. 
 AMENDMENT OR CANCELATION OF 
 ADDITIONAL CLAIMS 

        Any amendments to additional claims presented in the reissue 
application  should be amended only by speci-fying the words to be deleted 
or added and  the precise point of such deletion or insertion. Likewise, 
any cancelation  of additional claims should be made by specifying the 
number of the claim or  claims to be canceled. Such amendments will be 
entered by the clerical staff  within the Patent and Trademark Office. 

 ORIGINAL CLAIM FURTHER AMENDED 

        Examples of proper claim amendment in reissue applications. 
A.  Patent claim. 

Claim 1. A cutting means having a handle portion and a blade portion. 
B.  Proper first amendment format. 

Claim 1. A [cutting means] knife having a bone handle portion and a 
notched  blade portion. 

C.  Proper second amendment format. 

Claim 1. A [cutting means] knife having a handle portion and a serrated 
blade  portion. 

        Note that the second amendment includes the changes presented in 
the  first amendment; i.e. [cutting means] knife, as well as the changes 
presented  in the second amendment; i.e. serrated. However, the term 
notched which was  presented in the first amendment and replaced by the 
term serrated in the second  amendment and the term bone which was 
presented in the first amendment and  deleted in the second amendment are 
NOT shown in brackets; i.e. [notched] and  [bone] in the second amendment. 
This is because the terms [notched] and [bone]  would not be changes from 
the patent claim text and therefore are not shown. In both the first and 
the second amendments,  the entire claim is presented with all the changes 
from the patent text. 

1455    Allowance and Issue 


        In all reissue applications prepared for issue, the number of the 
original  patent being reissued should be placed in the box provided 
therefor below the  box for the applicant's name on the Issue 
Classification Slip (form PTO-270). 
        The specifications of reissue patents will be printed in such a 
manner  as to show the changes over the original patent by printing 
material omitted  by reissue enclosed in heavy brackets [ ] and material 
added by reissue in  italics. 37 CFR 1.173 (see MPEP w 1411) requires the 
specification of a reissue  application to be presented in a specified 
form, specifically designed to facilitate  this different manner of 
printing, as well as for other reasons. 

        The printed reissue specification will carry the following heading 
 which will be added by the Patent Issue Division: 

        "Matter enclosed in heavy brackets [ ] appears in the original 
patent  but forms no part of this reissue specification; matter printed in 
italics  indicates the additions made by reissue." 

        The examiners should see that the specification is in proper form 
for  printing. Matter appearing in the original patent which is omitted by 
reissue  should be enclosed in heavy brackets, while matter added by 
reissue should  be underlined. 

        Any material added by amendment in the reissue application which 
is  later canceled should be crossed through. However, cancelation of 
material  in the original patent should be indicated by brackets. 

        All the claims of the patent should appear in the specification, 
with  omitted claims enclosed in brackets. No renumbering of the original 
patent  claims is necessary, even if the dependency of a dependent claim 
is changed  by reissue so that it is dependent on a subsequent higher 
numbered claim. However,  when a dependent claim in a reissue application 
depends upon a claim which  has been canceled and no change in dependency 
to a remaining claim has been  made, such a dependent claim must be 
rewritten in independent form. New claims  should follow the number of the 
highest numbered patent claims and be underlined  to indicate italics. The 
provisions of 37 CFR 1.173 that claims should not  be renumbered applies 
to the reissue application as filed. When the reissue  is allowed, any 
claims remaining which are additional to the patent claims  are renumbered 
in sequence starting with the number next higher than the number  of 
claims in the original patent. Therefore, the number of claims allowed 
will  not necessarily correspond to the number of the last claim in the 
reissue application,  as allowed. 

        At least one claim of an allowable reissue application must be 
designated  for printing in the Official 
Gazette. Whenever possible, that claim should be one which has been 
changed  or added by the reissue. A can-celed claim must not be designated 
as the claim  for the Official Gazette. 

        In the case of reissue applications which have not been prepared 
in  the indicated manner, the examiner may request from the applicant a 
clean copy  of the reissue specification prepared in the indicated form. 
However, if the  deletions from the original patent are small, the reissue 
application can be  prepared for issue by put-ting the bracketed inserts 
at the appropriate places  and suitably numbering the claims. 

        All parent application data on the original patent file wrapper 
should  be placed on the reissue file wrapper, if it is still proper. 

        The list of references to be printed at the end of the reissue 
specification  should include both the references cited during the 
original prosecution as  well as the references cited during the 
prosecution of the reissue application.  A patent cannot be reissued 
solely for the purpose of adding citations of additional  prior art. 

        NOTE. - Transfer of drawing, MPEP # 1413. 


1456    Reissue Review 


        All reissue cases are screened in Quality Review for obvious oath 
or  declaration informalities as well as adherence to current reissue 
practices.  A patentability review will be made in a sample of reissue 
applications by  the Quality Review Examiners. This review is an 
appropriate vehicle for providing  information on the uniformity of 
practice and is helping to identify problem  areas. 


1460    Effect of Reissue [R-1] 


35 U.S.C. 252.          Effect of reissue. 

        **>The surrender of the original patent shall take effect upon the 
 issue of the reissued patent, and every reissued patent shall have the 
same  effect and operation in law, on the trial of actions for causes 
thereafter arising, as if the same had been originally granted in such 
amended  form, but in so far as the claims of the original and reissued 
patents are  identical, such surrender shall not affect any action then 
pending nor abate  any cause of action then existing, and the reissued 
patent, to the extent that  its claims are identical with the original 
patent, shall constitute a continuation  thereof and have effect 
continuously from the date of the original patent. 
        A reissued patent shall not abridge or affect the right of any 
person  or that person`s successors in business who, prior to the grant of 
a reissue,  made, purchased, offered to sell, or used within the United 
States, or imported  into the United States, anything patented by the 
reissued patent, to continue  the use of, to offer to sell, or to sell to 
others to be used, offered for  sale, or sold, the specific thing so made, 
purchased, offered for sale, used,  or imported unless the making, using, 
offering for sale, or selling of such  thing infringes a valid claim of 
the reissued patent which was in the original  patent. The court before 
which such matter is in question may provide for the  continued 
manufacture, use, offer for sale, or sale of the thing made, purchased, 
offered for sale, used, or imported as specified, or for the manufacture, 
use,  offer for sale, or sale in the United States of which substantial 
preparation  was made before the grant of the reissue, and the court may 
also provide for  the continued practice of any process patented by the 
reissue that is practiced,  or for the practice of which substantial 
preparation was made, before the grant  of the reissue, to the extent and 
under such terms as the court deems equitable  for the protection of 
investments made or business commenced before the grant  of the reissue. 

        (Amended Dec. 8, 1994, Public Law 103-465, sec. 533, 108 Stat. 
4809,  effective Jan. 1, 1996.)< 


1480    Certificates of Correction - Office Mistake 


35 U.S.C.  254.       Certificate of correction of Patent and 
Trademark Office mistake. 

        Whenever a mistake in a patent, incurred through the fault of the 
Patent  and Trademark Office, is clearly disclosed by the records of the 
Office, the  Commissioner may issue a certificate of correction stating 
the fact and nature  of such mistake, under seal, without charge, to be 
recorded in the records  of patents. A printed copy thereof shall be 
attached to each printed copy of  the patent, and such certificate shall 
be considered as part of the original  patent. Every such patent, together 
with such certificate, shall have the same  effect and operation in law on 
the trial of actions for causes thereafter arising  as if the same had 
been originally issued in such corrected form. The Commissioner  may issue 
a corrected patent without charge in lieu of and with like effect  as a 
certificate of correction. 

37 CFR 1.322.  Certificate of correction of Office mistake. 

        (a) A certificate of correction under 35 U.S.C. 254 may be issued 
at  the request of the patentee or the patentee's assignee. Such 
certificate will  not be issued at the request or suggestion of anyone not 
owning an interest  in the patent, nor on motion of the Office, without 
first notifying the patentee 
(including any assignee of record) and affording the patentee an 
opportunity  to be heard. When the request relates to a patent involved in 
an interference,  the request shall comply with the requirements of this 
section and shall be  accompanied by a motion under w 1.635. 

        (b) If the nature of the mistake on the part of the Office is such 
 that a certificate of correction is deemed inappropriate in form, the 
Commissioner  may issue a corrected patent in lieu thereof as a more 
appropriate form for  certificate of correction, without expense to the 
patentee. 

        Mistakes incurred through the fault of the Office are the subject 
of  Certificates of Correction under 37 CFR 1.322. If such mistakes are of 
such  a nature that the meaning intended is obvious from the context, the 
Office  may decline to issue a certificate and merely place the 
correspondence in the  patented file, where it serves to call attention to 
the matter in case any  question as to it arises. 

        Letters which merely call attention to errors in patents, with a 
request  that the letter be made of record in the patented file, will not 
be acknowledged. 
        In order to expedite all proper requests, a Certificate of 
Correction  should be requested only for errors of consequence. Letters 
making errors of  record should be utilized whenever possible. 

        Each issue of the Official Gazette (patents section) numerically 
lists  all United States patents having Certificates of Correction. The 
list appears  under the heading "Certificates of Correction for the week 
of (date)." 

1481    Applicant's Mistake [R-2] 


35 U.S.C.  255.  Certificate of correction of applicant's mistake. 
        Whenever a mistake of a clerical or typographical nature, or of 
minor  character, which was not the fault of the Patent and Trademark 
Office, appears  in a patent and a showing has been made that such mistake 
occurred in good  faith, the Commissioner may, upon payment of the 
required fee, issue a certificate  of correction, if the correction does 
not involve such changes in the patent  as would constitute new matter or 
would require re-examination. Such patent,  together with the certificate, 
shall have the same effect and operation in  law on the trial of actions 
for causes thereafter arising as if the same had  been originally issued 
in such corrected form. 

37 CFR 1.323.   Certificate of correction of applicant's mistake. 
        Whenever a mistake of a clerical or typographical nature or of 
minor  character which was not the fault of the Office, appears in a 
patent and a  showing is made that such mistake occurred in good faith, 
the Commissioner  may, upon payment of the fee set forth in # 1.20(a), 
issue a certificate, if  the correction does not involve such changes in 
the patent as would constitute  new matter or would require reexamination. 
A request for a certificate of correction  of a patent involved in an 
interference shall comply with the requirements  of this section and shall 
be accompanied by a motion under # 1.635. 
        37 CFR 1.323 relates to the issuance of Certificates of Correction 
 for the correction of errors which were not the fault of the Office.  A 
mistake  is not of a minor character if the requested change would 
materially affect  the scope or meaning of the patent. The fee for 
providing a 
correction of applicant's mistake, other than inventorship is set forth in 
 37 CFR 1.20(a). 

        The Issue Fee Transmittal Form portion (PTOL-85B) of the Notice of 
 Allowance provides a space (item 5) for assignment data which should be 
completed  in order to comply with 37 CFR 3.81. Unless an assignee's name 
and address  are identified in item 5 of the Issue Fee Transmittal Form 
PTOL-85B, the patent  will issue to the applicant. Assignment data printed 
on the patent will be  based solely on the information so supplied. 

        A request for a certificate of correction under 
37 CFR 1.323 arising from incomplete or erroneous assignee's name 
furnished  in item 5 of PTOL-85B will not be granted unless a petition 
under 37 CFR 1.183  has been granted. Any such petition under 37 CFR 1.183 
should be directed to  the Office of Petitions and should include: (1) the 
petition fee required by  37 CFR 1.17(h); (2) a request that 37 CFR 
3.81(a) be waived to permit the correct  name of the assignee to be 
provided after issuance of the patent; (3) a statement 
(verified if made by other than a registered attorney or agent) that the 
failure  to include the correct assignee name on the PTOL-85B was 
inadvertent; and (4)  a copy of the Notice or Recordation of Assignment 
Document. 

35 U.S.C.  256.  Correction of named inventor. 

        Whenever through error a person is named in an issued patent as 
the  inventor, or through error an inventor is not named in an issued 
patent and  such error arose without any deceptive intention on his part, 
the Commissioner  may, on application of all the parties and assignees, 
with proof of the facts  and such other requirements as may be imposed, 
issue a certificate correcting  such error. 

        The error of omitting inventors or naming persons who are not 
inventors  shall not invalidate the patent in which such error occurred if 
it can be corrected  as provided in this section. The court before which 
such matter is called in  question may order correction of the patent on 
notice and hearing of all parties  concerned and the Commissioner shall 
issue a certificate accordingly. 
        In requesting the Office to effectuate a court order correcting 
inventorship  in a patent pursuant to 35 U.S.C. 256, a copy of the court 
order and a certificate  of correction under 37 CFR 1.323 should be 
submitted to the Certificates of  Corrections Branch. 

37 CFR 1.324.  Correction of inventorship in patent. 

        Whenever a patent is issued and it appears that the correct 
inventor  or inventors were not named through error without deceptive 
intention on the  part of the actual inventor or inventors, the 
Commissioner may, on petition  of all the parties and the assignees and 
satisfactory proof of the facts and  payment of the fee set forth in # 
1.20(b), or on order of a court 
before which such matter is called in question, issue a certificate naming 
 only the actual inventor or inventors. A request to correct inventorship 
of  a patent involved in an interference shall comply with the 
requirements of  this section and shall be accompanied by a motion under # 
1.634. 

        The "satisfactory proof of facts" required by 
37 CFR 1.324 must be of the same type and character as the proof required 
under  37 CFR 1.48 to justify correcting inventorship in a nonprovisional 
application,  as described in MPEP # 201.03. Unlike correction of 
inventorship in a nonprovisional  application under 
37 CFR 1.48(a), where the requirement for a verified statement of facts by 
 each originally named inventor may be waived pursuant to 37 CFR 1.183, 
any  correction of inventorship in a patent under 37 CFR 1.324 requires 
petition  of all the parties; i.e., originally named inventors and 
assignees, in accordance  with statute (35 U.S.C. 256) and thus the 
requirement cannot be waived. Correction  of inventorship request under 37 
CFR 1.324 should be directed to the Supervisory  Primary Examiner whose 
unit handles the subject matter of the patent. >Form  Paragraphs 10.13 and 
10.14 may be used. 

# 10.13       Petition Under 37 CFR 1.324, Granted 

In re Patent No. [1]    : 

Issue Date: [2]       :       DECISION ON PETITION 

Appl. No.: [3]      :     37 CFR 1.324 

Filed: [4]  : 

For:  [5] : 

        This is a decision on the petition, filed [6], to correct 
inventorship  under 37 CFR 1.324. 

        The petition is granted. 

        The patented file is being forwarded to Certificate of Corrections 
 Branch for issuance of a certificate naming only the actual inventor or 
inventors. 

________________________ 

[7] 

Supervisory Patent Examiner, 

Art Unit [8], 

Patent Examining Group [9] 

[10] 

Examiner Note: 

        1.  Petitions to correct inventorship of an issued patent are 
decided  by the Supervisory Patent Examiner, as set forth in the 
Commissioner's memorandum  dated June 2, 1989. 

        2.  In bracket 10, insert the correspondence address of record. 
        3.  Print this form paragraph on PTO letterhead. 

# 10.14       Treatment of 37 CFR 1.48 Petition Under 37 CFR 
1.324, Granted 

In re Patent No. [1]    : 

Issue Date: [2]       :       DECISION ON PETITION 

Appl. No.: [3]      :     37 CFR 1.324 

Filed: [4]  : 

For: [5]        : 


        This is a decision on the petition under 37 CFR under 1.48, filed 
[6]. 
 In view of the fact that the patent has already issued, the petition has 
been  treated as a petition to correct inventorship under 37 CFR 1.324. 
        The petition is granted. 

        The patented file is being forwarded to Certificate of Corrections 
 Branch for issuance of a certificate naming only the actual inventor or 
inventors. 

________________________ 

[7] 

Supervisory Patent Examiner, 

Art Unit [8], 

Patent Examining Group [9] 

[10] 

Examiner Note: 

        1.  Petitions to correct inventorship of an issued patent are 
decided  by the Supervisory Patent Examiner, as set forth in the 
Commissioner's memorandum  dated June 2, 1989. 

        2.  Print this form paragraph on PTO letterhead.. 

        3.  Prepare Certificate using form paragraph 10.15.< 


1485    Handling of Request for Certificates of Correction 


        Requests for certificates of correction will be forwarded by the 
Correspondence  and Mail Division, to the Certificate of Correction Branch 
of the Publishing  Division, where they will be listed in a permanent 
record book. 

        If the patent is involved in an interference, a certificate of 
correction  under 37 CFR 1.324 will not be issued unless a corresponding 
motion under 37  CFR 1.634 has been granted by the examiner-in-chief. See 
MPEP # 2334. Otherwise,  determination as to whether an error has been 
made, the responsibility for  the error, if any, and whether the error is 
of such a nature as to justify  the issuance of a certificate of 
correction will be made by the Certificate  of Correction Branch. If a 
report is necessary in making such determination,  the case will be 
forwarded to the appropriate group with a request that the  report be 
furnished. If no certificate is to issue, the party making the request  is 
so notified and the request, report, if any, and copy of the communication 
 to the person making the request are placed in the file and entered 
thereon  under "Contents" by the Certificate of Correction Branch. The 
case is then  returned to the patented files. If a certificate is to 
issue, it will be prepared  and forwarded to the person making the request 
by the Publishing Division.  In that case, the request, the report, if 
any, and a copy of the letter transmitting  the certificate of correction 
to the person making the request will be placed  in the file and entered 
thereon under "Contents". 

        Applicants, or their attorneys or agents, are urged to submit the 
text  of the correction on a special Certificate of Correction form, 
PTO-1050, which  can serve as the camera copy for use in direct offset 
printing of the certificate  of correction. Both parts of form PTO-1050 
must accompany the request since  the second part will be placed in the 
application file for internal use. 
        A perforated space at the bottom of form PTO-1050 has been 
provided  for the patentee's current mailing address, and for ordering any 
desired additional  copies of the printed certificate. The fee for each 
additional copy ordered  is set forth in 37 CFR 1.19(a)(1). The fee should 
accompany the request. 
        To facilitate the use of the Form PTO-1050, the public may obtain 
as  many copies as needed from the Correspondence and Mail Division. 

        Where only a part of a request can be approved, or where the 
Office  discovers and includes additional corrections, the appropriate 
alterations  are made on the form PTO-1050 by the Office. The patentee is 
notified of the  changes on the Notification of Approval-in-part form 
PTOL-404. The certificate  is issued approximately 6 weeks thereafter. 

        Form PTO-1050 should be used exclusively regardless of the length 
or  complexity of the subject matter. Intricate chemical formulas or page 
of specification  or drawings may be reproduced and mounted on a blank 
copy of PTO-1050. Failure  to use the form has frequently delayed issuance 
since the text must be retyped  by the Office onto a PTO-1050. 

        The exact page and line number where the errors occur in the 
application  file should be identified on the request. However, on form 
PTO-1050, only the  column and line number in the printed patent should be 
used. 

        The patent grant should be retained by the patentee. The Office 
does  not attach the Certificate of Correction to patentee's copy of the 
patent.  The patent grant will be returned to the patentee if submitted. 

        Below is a sample form illustrating a variety of corrections and 
the  suggested manner of setting out the format. Particular attention is 
directed  to: 

        a. Identification of the exact point of error by reference to 
column  and line number of the printed patent or to claim number and line 
where a claim  is involved. 

        b. Conservation of space on the form by typing single space, 
beginning  two lines down from the printed message. 

        c. Starting the correction to each separate column as a sentence, 
and  using semicolons to separate corrections within said column, where 
possible. 
        d. Two-inch space left blank at bottom of the last sheet for 
signature  of attesting officer. 

        e. Use of quotation marks to enclose the exact subject matter to 
be  deleted or corrected; use of double hyphens (-- --) to enclose subject 
matter  to be added, except for formulas. 

        f. Where a formula is involved, setting out only that portion 
thereof  which is to be corrected or, if necessary, pasting a photocopy 
onto form PTO-1050. 
        The examiner's comments are requested on form PTO-306 revised, 
where,  under 37 CFR 1.323, there is a question involving change in 
subject matter. 
UNITED STATES PATENT AND TRADEMARK OFFICE 
CERTIFICATE OF CORRECTION 

 Patent No. - - - - -                            Dated April 1, 1969 
                James W. Worth 

        It is certified that error appears in the above-identified patent 
and  that said Letters Patent is hereby corrected as shown below: 

        In the drawings, Sheet 3, Fig. 3, the reference numeral 225 should 
 be applied to the plate element attached to the support member 207. 
Column  7, lines 45 to 49, the left-hand formula should appear as follows: 
              Rg 

                        CX"Z 

            CFz: 

  Column 10, formula XXXV, that portion of the formula reading 


Formula XXXVII, that portion of the formula reading "-CH2CH-" should read 
-  -CHCH- -.  Column 2, line 68 and column 3, lines 3, 8 and 13, for  the 
claim  reference numeral "2", each occurrence, should read -1-. Column 10, 
line 16,  cancel beginning with "12. A sensor device" to and including 
"tive strips." 
 in column 11, line 8, and insert the following claim: 

        12.  A control circuit of the character set forth in claim 1 and 
for  an automobile having a convertible top, and including; means for 
moving said  top between raised and lowered retracted position; and 
control means responsive  to said sensor relay for energizing the top 
moving means for moving said top  from retracted position to raised 
position. 


1490    Disclaimers [R-2] 


35 U.S.C.  253.       Disclaimer. 

        Whenever, without any deceptive intention, a claim of a patent is 
invalid  the remaining claims shall not thereby be rendered invalid. A 
patentee, whether  of the whole or any sectional interest therein, may, on 
payment of the fee  required by law, make disclaimer of any complete 
claim, stating therein the  extent of his interest in such patent. Such 
disclaimer shall be in writing,  and recorded in the Patent and Trademark 
Office; and it shall thereafter be  considered as part of the original 
patent to the extent of the interest possessed  by the disclaimant and by 
those claiming under him. 

        In like manner any patentee or applicant may disclaim or dedicate 
to  the public the entire term, or any terminal part of the term, of the 
patent  granted or to be granted. 

37 CFR 1.321.      Statutory disclaimers, including terminal disclaimers. 
        (a) A patentee owning the whole or any sectional interest in a 
patent  may disclaim any complete claim or claims in a patent. In like 
manner any patentee  may disclaim or dedicate to the public the entire 
term, or any terminal part  of the term, of the patent granted. Such 
disclaimer is binding upon the grantee  and its successors or assigns. A 
notice of the disclaimer is published in the  Official Gazette and 
attached to the printed copies of the specification. The  disclaimer, to 
be recorded in the Patent and Trademark Office, must: 
        (1)         be signed by the patentee, or an attorney or agent of 
record; 
        (2)         identify the patent and complete claim or claims, or 
term  being disclaimed. A disclaimer which is not a disclaimer of a 
complete claim  or claims, or term, will be refused recordation; 

        (3)         state the present extent of patentee's ownership 
interest  in the patent; and 

        (4)         be accompanied by the fee set forth in # 1.20(d). 
        (b) An applicant or assignee may disclaim or dedicate to the 
public  the entire term, or any terminal part of the term, of a patent to 
be granted.  Such terminal disclaimer is binding upon the grantee and its 
successors or  assigns. The terminal disclaimer, to be recorded in the 
Patent and Trademark  Office, must: 

        (1)         be signed: 

        (i)   by the applicant, or 

        (ii)    if there is an assignee of record of an undivided part 
interest,  by the applicant and such assignee, or 

        (iii)     if there is an assignee of record of the entire 
interest,  by such assignee, or 

        (iv)    by an attorney or agent of record; 

        (2)   specify the portion of the term of the patent being 
disclaimed; 
        (3)   state the present extent of applicant's or assignee's 
ownership  interest in the patent to be granted; and 

        (4)   be accompanied by the fee set forth in # 1.20(d). 

        (c) A terminal disclaimer, when filed to obviate a double 
patenting  rejection in a patent application or in a reexamination 
proceeding, must: 
        (1)         comply with the provisions of paragraphs (b)(2) 
through 
(b)(4) of this section; 

        (2)         be signed in accordance with paragraph (b)(1) of this 
section  if filed in a patent application, or in accordance with paragraph 
(a)(1) of  this section if filed in a reexamination proceeding; and 

        (3)         include a provision that any patent granted on that 
application  or any patent subject to the reexamination proceeding shall 
be enforceable  only for and during such period that said patent is 
commonly owned with the  application or patent which formed the basis for 
the rejection. 

        A disclaimer is a statement filed by an owner (in part or in 
entirety)  of a patent or of a patent to be granted, in which said owner 
relinquishes  certain legal rights to the patent. There are two types of 
disclaimers: statutory  and terminal. For a disclaimer to be accepted, it 
must be signed by the proper  party as follows: 

(1)   A disclaimer filed in a patent or a reexamination proceeding must be 
 signed by either (a) the patentee, or (b) an attorney or agent of record. 
(2)   A disclaimer filed in an application must be signed by either (a) 
the  applicant where the application has not been assigned, the applicant 
and the  assignee where each owns a part interest in the application, the 
assignee where  assignee owns the entire interest in the application, or 
(b) an attorney or  agent of record. 

(3)   Where the assignee signs the disclaimer, there is a requirement to 
comply  with 37 CFR 3.73 (b) in order to satisfy 37 CFR 1.321. See MPEP # 
324 as to  compliance with 37 CFR 3.73 (b).  A copy of the ``Certificate 
Under 37 CFR  3.73 (b)'' reproduced in MPEP # 324 may be sent by the 
examiner to applicant  to provide an acceptable way to comply with the 
requirements of 37 CFR 3.73 
(b). 

        Where the attorney or agent of record signs the disclaimer, there 
is  no need to comply with 37 CFR 3.73 (b). 

STATUTORY DISCLAIMERS 

        Under 37 CFR 1.321(a) the owner of a patent may disclaim a 
complete  claim or claims of his patent. This may result from a lawsuit or 
because he  has reason to believe that the claim or claims are too broad 
or otherwise invalid.  If the patent is involved in an interference, see 
MPEP w 2362. 

TERMINAL DISCLAIMERS 

        37 CFR 1.321(a), also provides for the filing by an applicant or 
patentee  of a terminal disclaimer which disclaims or dedicates to the 
public the entire  term or any portion of the term of a patent or patent 
to be granted. 
        37 CFR 1.321(b) and (c) specifically provide for the filing of a 
terminal  disclaimer in an application or a reexamination proceeding for 
the purpose  of overcoming a rejection based on double patenting. See MPEP 
# 804.02. 
PROCESSING 

        The Certificates of Corrections Branch is responsible for the 
handling  of all statutory disclaimers filed under the first paragraph of 
35 U.S.C. 253,  whether the case is pending or patented, and all terminal 
disclaimers (filed  under the second paragraph of 35 U.S.C. 253) except 
for those filed in an application  pending in an Examining Group. This 
involves: 

(1)   Determining compliance with 35 U.S.C. 253 and 
37 CFR 1.321 and 3.73; 

(2)   Notifying applicant or patentee when the disclaimer is informal and 
thus  not acceptable; 

(3)   Recording the disclaimers; and 

(4)   Providing the disclaimer data for printing. 

TERMINAL DISCLAIMER IN PENDING 
APPLICATION PRACTICE 

        Where a terminal disclaimer is filed in an application pending in 
an  Examining Group, it will be processed by the paralegal of the Office 
of the  Special Program Examiner of the Examining Group having 
responsibility for the  application. The paralegal will: 

(1)   Determine compliance with 35 U.S.C. 253 and 37 CFR 1.321 and 3.73; 
(2)   Notify the examiner having charge of the application whether the 
terminal  disclaimer is acceptable or not; 

(3)   Where the terminal disclaimer is not acceptable, indicate the nature 
 of the informalities so that the examiner can inform applicant in the 
next  Office action; 

(4)   Record the terminal disclaimer; and 

(5)   Provide the appropriate terminal disclaimer data for printing. 
        The paralegal will identify a terminal disclaimer as being present 
 in an application by: 

(a)   Attaching a green label to the file wrapper; 

(b)   Stamping a notice on the file of the term which has been disclaimed; 
(c)   Endorsing the paper containing the terminal disclaimer submission on 
 the "Contents" flap of the application file; and 

(d)   Entering the terminal disclaimer into the PALM system records, for 
the  application. 

        As to points 2 and 3 above, the Group's paralegal completes a 
Terminal  Disclaimer Informal Memo to notify the examiner of the nature of 
the informalities  in the terminal disclaimer. The examiner should notify 
the applicant of the  informalities in the next Office action, or by 
interview with applicant if  such will expedite 


prosecution of the application. Further, the examiner should initial and 
date  the Terminal Disclaimer Informal Memo and return it to the paralegal 
to indicate  that the examiner has appropriately notified applicant about 
the terminal disclaimer,  and so that the Terminal Disclaimer Informal 
Memo may be discarded. 
        Since the claims of pending applications are subject to 
cancellation,  amendment, or renumbering, a terminal disclaimer directed 
to a particular claim  or claims will not be accepted; the disclaimer must 
be of a terminal portion  of the term of the entire patent to be granted. 
The statute does not provide  for conditional disclaimers and accordingly, 
a proposed disclaimer which is  made contingent on the allowance of 
certain claims cannot be accepted. The  disclaimer should identify the 
disclaimant and his or her interest in the application  and should specify 
the date when the disclaimer is to become effective. 
        A terminal disclaimer filed to obviate a double patenting 
rejection  is effective only with respect to the application identified in 
the disclaimer  unless by its terms it extends to continuing applications. 
For example, a terminal  disclaimer filed in a parent application normally 
has no effect on a continuing  application claiming filing date benefits 
of the parent application under 35  U.S.C. 120. If two (or more) pending 
applications are filed, in each of which  a rejection of one claimed 
invention over the other on the ground of obviousness-type  double 
patenting is proper, the rejection will be made in each application.  An 
appropriate terminal disclaimer must be filed in each application. This 
is because a terminal disclaimer filed to obviate a double patenting 
rejection  is effective only with respect to the application identified in 
the disclaimer.  Moreover, the filing of an appropriate terminal 
disclaimer in each application  will prevent a potential extension of 
monopoly in the last application to be  issued. 

WITHDRAWING A RECORDED 
TERMINAL DISCLAIMER 

        If timely requested, a recorded terminal disclaimer may be 
withdrawn  before the application in which it is filed issues as a patent, 
or in a reexamination  proceeding before the reexamination certificate 
issues. After a patent or reexamination  certificate issues, it is 
unlikely that a recorded terminal disclaimer will  be nullified. 

1.  Before Issuance of Patent 

        While the filing and recordation of an unnecessary terminal 
disclaimer  has been characterized as an "un-happy circumstance" in In re 
Jentoft, 392  F.2d 633, 
157 USPQ 363 (CCPA 1968), there is no statutory prohibition against 
nullifying  or otherwise canceling the effect of a recorded terminal 
disclaimer which was  erroneously filed before the patent issues. Since 
the terminal disclaimer would  not take effect until the patent is 
granted, and the public has not had the  opportunity to rely on the 
terminal disclaimer, relief from this unhappy circumstance  may be 
available by way of petition or by refiling the application. 
        Under appropriate circumstances, consistent with the orderly 
administration  of the examination process, the nullification of a 
recorded terminal disclaimer  may be addressed by filing a petition under 
37 CFR 1.182 requesting withdrawal  of the recorded terminal disclaimer. 
Petitions seeking to reopen the question  of the propriety of the double 
patenting rejection that prompted the filing  of the terminal disclaimer 
have not been favorably considered. The filing of  a continuing 
application, while abandoning the application in which the terminal 
disclaimer has been filed, will typically nullify the effect of a terminal 
 disclaimer. 

2.  After Issuance of Patent 

        The mechanisms to correct a patent - certificate of correction (35 
 U.S.C. 255), reissue (35 U.S.C. 251), and reexamination (35 U.S.C. 305) - 
are  not available to withdraw or otherwise nullify the effect of a 
recorded terminal  disclaimer. As a general principle, public policy does 
not favor the restoration  to the patent owner of something that has been 
freely dedicated to the public,  particularly where the public interest is 
not protected in some manner - e.g.,  intervening rights in the case of a 
reissue patent. See, e.g., Altoona Publix  Theatres v. American Tri-Ergon 
Corp., 294 U.S. 477, 24 USPQ 308 (1935). 
        Certificates of correction (35 U.S.C. 255) are available for the 
correction  of an applicant's mistake. The scope of this remedial 
provision is limited  in two ways - by the nature of the mistake for which 
correction is sought and  the nature of the proposed correction. In re 
Arnott, 19 USPQ2d 1049 (Comm'r.  Pat. 1991). The nature of the mistake for 
which correction is sought is limited  to those mistakes that are: 

(1)   of a clerical nature, 

(2)   of a typographical nature, or 

(3)   of a minor character. 

        The nature of the proposed correction is limited to those 
situations  where the correction does not involve changes which would: 

(1)   constitute new matter, or 

(2)   require reexamination. 

        A mistake in filing a terminal disclaimer does not fall within any 
 of the categories of mistake for which a certificate of correction of 
applicant's  mistake is permissible, and any attempt to remove or nullify 
the effect of  the terminal disclaimer would typically require 
reexamination of the circumstances  under which it was filed. 

        Although the remedial nature of reissue (35 U.S.C. 251) is well 
recognized,  reissue is not available to correct all errors. It has been 
the Office position  that reissue is not available to withdraw or 
otherwise nullify the effect of  a terminal disclaimer recorded in an 
issued patent. First, the reissue statute  only authorizes the 
Commissioner to reissue a patent "for the unexpired part  of the term of 
the original patent". Since the granting of a reissue patent  without the 
effect of a recorded terminal disclaimer would result in extending  the 
term of the original patent, reissue under these circumstances would be 
contrary to the statute. Second, the principle against recapturing 
something  that has been intentionally dedicated to the public dates back 
to Leggett v.  Avery, 101 U.S. 256 (1879). The attempt to restore that 
portion of the patent  term that was dedicated to the public to secure the 
grant 

of the original patent would be contrary to this recapture principle. 
Finally,  applicants have the opportunity to challenge the need for a 
terminal disclaimer  during the prosecution of the application that issues 
as a patent. "Reissue  is not a substitute for Patent Office appeal 
procedures." Ball Corp. v. United  States, 729 F.2d 1429, 1435, 221 USPQ 
289, 293 (Fed. Cir. 1984). Where applicants  did not challenge the 
propriety of the examiner's obvious-type double patenting  rejection, but 
filed a terminal disclaimer to avoid the rejection, the filing  of the 
terminal disclaimer did not constitute error within the meaning of 35 
U.S.C. 251. Ex parte Anthony, 230 USPQ 467 (Bd. App. 1982), aff'd. No. 
84-1357 
(Fed. Cir. June 14, 1985). 

        Finally, the nullification of a recorded terminal disclaimer would 
 not be appropriate in a reexamination proceeding. There is a prohibition 
(35  U.S.C. 305) against enlarging the scope of a claim during a 
reexamination proceeding.  As noted by the Board in Anthony, supra, if a 
terminal disclaimer was nullified,  "claims would be able to be sued upon 
for a longer period than would the claims  of the original patent. 
Therefore, the vertical scope, as opposed to the horizontal  scope (where 
the subject matter is enlarged), would be enlarged." 



A14900002.end 


A14900002.end 


A14900003.bmp 


A14900003.bmp 


A14900004.bmp 


A14900004.end 


Contents 

1501        Statutes and Rules Applicable 

1502        Definition of a Design 

1502.01     Distinction Between Design and Utility Patents 

1503        Elements of a Design Patent Application 

1503.01     Specification and Claim 

1503.02     Drawing 

1503.03     Design Claim 

1504        Examination 

1504.01     Statutory Subject Matter for Designs 

1504.02     Novelty 

1504.03     Nonobviousness 

1504.04     Considerations Under 35 U.S.C. 112 

1504.05     Restriction 

1504.06     Double Patenting 

1504.10     Priority Under 35 U.S.C. 119 (a)-(d) 

1504.20     Benefit Under 35 U.S.C. 120 

1505        Allowance and Term of Design Patent 

1509        Reissue of a Design Patent 

1510        Reexamination 

1511        Protest 

1512        Relationship Between Design Patent, Copyright, and 
            Trademark 

1513        Miscellaneous 


1501        Statutes and Rules Applicable 


        The right to a patent for a design stems from: 

35 U.S.C. 171.          Patents for designs. 

Whoever invents any new, original and ornamental design for an article of 
manufacture  may obtain a patent therefor, subject to the conditions and 
requirements of  this title. 

The provisions of this title relating to patents for inventions shall 
apply  to patents for designs, except as otherwise provided. 

37 CFR 1.151.     Rules applicable. 

The rules relating to applications for patents for other inventions or 
discoveries  are also applicable to applications for patents for designs 
except as otherwise  provided. (35 U.S.C. 171) 

        37 CFR 1.152-1.155, which relate only to design patents, are 
reproduced  in the sections of this chapter. 

        It is noted that design patent applications are not included in 
the  Patent Cooperation Treaty (PCT), and the procedures followed for PCT 
international  applications are not to be followed for design patent 
applications. 
        The practices set forth in other chapters of this Manual of Patent 
 Examining Procedure (MPEP) are to be followed in examining applications 
for  design patents, except as particularly pointed out in the chapter. 

1502    Definition of a Design [R-2] 


        The design of an object consists of the visual characteristics or 
aspects  displayed by the object. It is the appearance presented by the 
object which  creates a visual impact upon the mind of the observer. 

        Since a design is manifested in appearance, the subject matter of 
a  design patent application may relate to the configuration or shape of 
an object,  to the surface ornamentation on an object, or both. 

        Design is inseparable from the object to which it is applied and 
cannot  exist alone merely as a scheme of surface ornamentation. It must 
be a definite,  preconceived thing, capable of reproduction and not merely 
the chance result  of a method. 

** 

W 15.43       Subject Matter of Design Patent 

        Since a design is manifested in appearance, the subject matter of 
a  Design Patent may relate to the configuration or shape of an object, to 
the  surface ornamentation on the object or both. 


1502.01       Distinction Between Design and Utility Patents [R-1] 

        In general terms, a "utility patent" protects the way an article 
is  used and works (35 U.S.C. 101), while a "design patent" protects the 
way an  article looks (35 U.S.C. 171). The ornamental appearance of an 
article includes  its shape/configuration or surface ornamentation upon 
the article, or both.  Both design and utility patents may be obtained on 
an article if invention  resides both in its utility and ornamental 
appearance. 

        While utility and design patents afford legally separate 
protection,  the utility and ornamentality of an article is not easily 
separable. Invention  is a blend of function and ornamental design. 
Articles of manufacture typically  possess both functional and ornamental 
characteristics. 

        Some of the more common differences between design and utility 
patents  are summarized below: 

        1.  The term of a utility patent >on an application filed on or 
after  June 8, 1995< is * >20< years >measured from the U.S. filing date; 
or if the  application contains a specific reference to an earlier 
application under 35  U.S.C. 120, 121, or 365(c), 20 years from the 
earliest effective U.S. filing  date<, while the term of a design patent 
is 14 years >measured from the date  of grant< (see 35 U.S.C. 173). 

        2.  Maintenance fees are required for utility patents (see 37 CFR 
1.20),  while no maintenance fees are required for design patents. 

        3.  Design patent applications may include only a single claim, 
while  utility patent applications can have multiple claims. 

        4.  Restriction between plural, distinct inventions is 
discretionary  on the part of the examiner in utility patent applications 
(see MPEP w 803),  while it is mandatory in design patent applications 
(see MPEP w 1510.01). 


        5.  An international application naming various countries may be 
filed  for utility patents under the Patent Cooperation Treaty (PCT), 
while no such  provision exists for design patents. 

        6.  Foreign priority under 35 U.S.C. 119>(a)-(d)< can be obtained 
for  the filing of utility patent applications up to 1 year after the 
first filing  in any country subscribing to the Paris Convention, while 
this period is only  6 months for design patent applications. 

        Other distinctions between design and utility patent practice are 
detailed  in this chapter. Unless otherwise provided, the rules for 
applications for  utility patents are equally applicable to applications 
for patents for designs 
(35 U.S.C. 171 and 37 CFR 1.151). 


1503    Elements of a Design Patent Application 


        A design patent application has essentially the elements required 
of  an application for a utility patent filed under 35 U.S.C. 101 (see 
Chapter  600). However, unlike the latter, a preamble still remains a 
requirement in  a design patent application, and the arrangement of the 
specification is as  specified in 37 CFR 1.154. 

        A claim in a specific form is a necessary element of a design 
patent  application.  See MPEP # 1503.01. 

        A drawing is an essential element of a design patent application. 
See  MPEP w 1503.02 for requirements for drawing. 


1503.01       Specification and Claim [R-2] 


37 CFR 1.153.     Title, description and claim, oath or declaration. 
(a)   The title of the design must designate the particular article. No 
description,  other than a reference to the drawing, is ordinarily 
required. The claim shall  be in formal terms to the ornamental design for 
the article (specifying name)  as shown, or as shown and described.  More 
than one claim is neither required  nor permitted. 

(b)   The oath or declaration required of the applicant must comply with w 
 1.63. 

37 CFR 1.154.       Arrangement of specification. 

The following order of arrangement should be observed in framing design 
specifications: 
(a)   Preamble, stating name of the applicant and title of the design. 
(b)   Description of the figure or figures of the drawing. 

(c)   Description, if any. 

(d)   Claim. 

(e)   Signed oath or declaration (See w 1.153(b)). 

W 15.05       Design Patent Application Arrangement 

The following order of arrangement should be observed in framing design 
patent  applications: 

(a)   Preamble, stating the name of the applicant and the title of the 
design. 
(b)   Description of the figure or figures of the drawings. 

(c)   Description, if any. 

(d)   Claim. 

(e)   Signed oath or declaration (See 37 CFR 1.153(b)). 

PREAMBLE 

        The preamble must state the name of the applicant and the title of 
 the design (37 CFR 1.153-1.154). 

        The title of the design identifies the article in which the design 
 is embodied by the name generally known and used by the public. A title 
descriptive  of the actual article aids the examiner in developing a 
complete field of search  of the prior art and aids in the proper 
assignment of new applications to the  appropriate class, subclass, and 
patent examiner, and the proper classification  of the patent upon 
allowance of the application. It also aids the public in  understanding 
the nature and use of the article embodying the design after  the patent 
has been published. For example, a broad title such as "Adapter  Ring" 
provides little clue as to the nature and intended use of the article 
embodying the design. Thus, applicants are encouraged to provide a 
specific  and descriptive title. 

        Following are examples of preferred and non-preferred titles: 
        Preferred Title:                Rather than: 

        Stove       Heating Device 

        Vacuum Bottle       Bottle 

        Microwave Oven      Cooking 

                        Appliance 

        Alarm for an Automobile       Electronic 

                        Device 

        Since 37 CFR 1.153 requires that the title must designate the 
particular  article, and since the particular article is defined by the 
claim, it follows  that the language of the title and claim must 
correspond. When the language  of the title and claim do not correspond, 
the title should be objected to under  37 CFR 1.153 as not corresponding 
to the language of the claim. 

        However, it is emphasized that, under the second paragraph of 35 
U.S.C.  112, the claim defines "the subject matter which the applicant 
regards as his  invention" (emphasis added). Thus, the examiner should 
afford the 
applicant substantial latitude in the language of the 
title/claim. The examiner should only require amendment of the title/claim 
 if the language is clearly misdescriptive, inaccurate, or unclear (i.e., 
the  language would result in a rejection of the claim under 35 U.S.C. 
112, second  paragraph; see MPEP w *>1503.03<). 

        Any amendment to the language of the title must also be made in 
both  the title and the claim. It is preferable (but not required) that 
the amended  language also be incorporated into the figure description. 
However, it is not  necessary to submit a new oath or declaration merely 
to obtain correspondence  in terminology between the title, claim, and the 
oath or declaration. 
W 15.05.1 Title of Design Invention 

The title of an article being claimed in a design patent must correspond 
to  the name of the article shown in solid lines in the drawings. 

W 15.59        Amend Title 

For [1**], the title [2] amended throughout the application, original oath 
 or declaration excepted, to read: [3]. 

Examiner Note: 

>1. In bracket 1, insert reason. 

2.<In bracket 2, insert "must be" or  "has been." 

DESCRIPTION 

        Any description of the design in the specification, other than a 
brief  description of the drawing, is generally not necessary since as a 
general rule  the illustration in the drawing views is its own best 
description. However,  while not required, such a description is not 
prohibited and may be incorporated,  at applicant's option, into the 
specification or may be provided in a separate  paper. 

        In addition to the figure descriptions, the following types of 
statements  are permissible in the specification: 

        1.  Description of the appearance of portions of the claimed 
design  which are not illustrated in the drawing disclosure. 

        2.  Statement indicating that any broken line illustration in the 
drawing  disclosure is not part of the design sought to be patented. 

        3.  Description denoting the nature and environmental use of the 
claimed  design. 

        It is the policy of the Office to attempt to resolve questions 
about  the nature and intended use of the claimed design prior to 
examination by making  a Requirement for Information (see Form Paragraph 
15.56) at the time of initial  docketing of the application. This will 
enable the application to be properly  classified and docketed to the 
appropriate examiner and to be searched when  the application comes up for 
examination in its normal course without the need  for a rejection under 
35 U.S.C. 112 prior to a search of the prior art.  Explanation  of the 
nature and intended use of the article may be added to the specification 
provided it does not constitute new matter. See MPEP w 1506. It may 
alternately,  at applicant's option, be submitted in a separate paper 
without amendment of  the specification. 

        4.  A "characteristic features" statement describing a particular 
feature  of the design that is considered a feature of novelty or 
nonobviousness over  the prior art 
(37 CFR 1.71(c)). 

W 15.47        Characteristic Feature Statement 

        A "characteristic features" statement describing a particular 
feature  of novelty or unobviousness in the claimed design may be 
permissible in the  specification. Such a statement should be in terms as 
``The characteristic  feature of the design resides in **>[1]"< or, if 
combined with one of the figure  descriptions, in terms such as > ". . . < 
the characteristic feature of which  resides in **>[2]"<. While 
consideration of the claim goes to the total or  overall appearance, the 
use of a ``characteristic feature" statement may serve  later to limit the 
claim. (McGrady v. Aspenglas Corp., ** 208 USPQ 242  >(S.D.N.Y.  1980)<). 

>Examiner Note: 

In brackets 1 and 2, insert a brief but accurate description of the 
design.< 
        The following types of statements are not permissible in the 
specification: 
a.  A disclaimer statement directed to any portion of the claimed design 
that  is shown in solid lines in the drawings. See Ex parte Remington, 114 
O.G. 761,  1905 C.D. 28 (Comm'r Pat. 1904); In re Blum, 153 USPQ 177 (CCPA 
1967). 
b.  Statements which describe or suggest modifications of the claimed 
design  which are not illustrated in the drawing disclosure. 

c.  Statements describing matters which are constructions unrelated to the 
 design. 

W 15.60       Amend All Figure Descriptions 

For [1**] the figure descriptions [2] amended to read: [3]. 

Examiner Note: 

>1.   In bracket 1, insert reason. 

2.< In bracket 2, insert ``must be" or ``have been". 

>3.   In bracket 3, insert amended text.< 

W 15.61       Amend Selected Figure Descriptions 

        For [1**] the description(s) of Fig(s). [2] [3] amended to read: 
[4] 
Examiner Note: 

>1.   In bracket 1, insert reason. 

2.   In bracket 2, insert selected Figure descriptions. 

3.<   In bracket 3, insert "must be" or  "have been." 

>4.   In bracket 4, insert amended text.< 


1503.02       Drawing [R-2] 


37 CFR 1.152.     Design drawing. 

The design must be represented by a drawing that complies with the 
requirements  of w 1.84, and must contain a sufficient number of views to 
constitute a complete  disclosure of the appearance of the article. 
Appropriate surface shading must  be used to show the character or contour 
of the surfaces represented. Solid  black surface shading is not permitted 
except when used to represent color  contrast.  Broken lines may be used 
to show visible environmental structure,  but may not be used to show 
hidden planes and surfaces which cannot be seen  through opaque materials. 
Alternate positions of a design component, illustrated  by full and broken 
lines in the same view are not permitted in a design drawing.  Photographs 
and ink drawings must not be combined in one application. Photographs 
submitted in lieu of ink drawings in design patent applications must 
comply  with w 1.84(b) and must not disclose environmental structure but 
must be limited  to the design for the article claimed. Color drawings and 
color photographs  are not permitted in design patent applications. 

        Every design patent application must include a drawing. It is of 
utmost  importance that the drawing clearly show the complete ornamental 
appearance  of the entire article such that nothing is left to conjecture. 

        In addition to the criteria for utility applications set forth in 
37  CFR 1.81-1.88, design drawings must also comply with 37 CFR 1.152 as 
follows: 
A.  Views 

        Normally, drawing figures should be provided showing the article, 
at  a minimum, from each of its six normal views. Additional perspective 
views  should also be provided if helpful in disclosing the design. 

        Views that are merely duplicative of other views of the article or 
 that are merely plain and include no ornamentality may be omitted from 
the  drawing if the specification makes this explicitly clear. See MPEP w 
1503.01.  For example, if the left and right sides of an article are 
identical or symmetrical,  a view should be provided of one side and a 
statement made in the drawing description  that the other side is 
identical/symmetrical; if the bottom of an article has  a plain bottom, a 
view of the bottom may be omitted if the specification includes  a 
statement that the bottom is plain and unornamented. 

        While a sectional view which more clearly brings out elements of 
the  design is permissible (see Ex parte 
Lohman, 1912 CD 336, 184 OG 287 (Comm'r Pat. 1912)), a sectional view 
presented  to show functional features or for exhibiting mechanical 
features or interior  structure not part of the design should be rejected 
under 35 U.S.C. 112, paragraph  2. 

B.  Surface Shading 

        The drawing should be appropriately surface shaded to show clearly 
 the character and contour of all surfaces of any 3-dimensional aspects of 
the  design Surface shading is also necessary to distinguish between any 
open and  solid areas of the article. 

        Lack of appropriate surface shading in the drawing as filed may 
render  the design indefinite under 35 U.S.C. 112. Additionally, if the 
surface shape  is not evident from the disclosure as filed, the addition 
of surface shading  after filing may comprise new matter and may prevent 
the applicant from obtaining  priority under 35 U.S.C. 120 of any 
continuation-in-part filed to correct the  defect in the original 
application. 

C.  Broken Lines 

  Structure that is not part of the claimed design but is considered 
necessary  to show the environment in which the article is used may be 
represented in  the drawing in broken lines. Additionally, a portion of an 
article that is  not considered part of the design may be shown in broken 
lines, In re Zahn 
 204 USPQ 988 (CCPA 1980). A broken line showing is for illustrative 
purposes  only and forms no part of the claimed design. 

        However, broken lines are not permitted for the purpose of 
indicating  that a portion of an article is of lesser importance in the 
design, In re Blum,  ** 153 USPQ 177 (CCPA 1967). The use of broken lines 
indicates that the environmental  structure or the portion of the article 
depicted in broken lines forms no part  of the design, and is not to 
indicate the relative importance of parts of a  design. 

        In general, when broken lines are used, they should not intrude 
upon  or cross the showing of the claimed design and should not be of 
heavier weight  than the lines used in depicting the claimed design. Where 
a broken line showing  of environmental structure must necessarily cross 
or intrude upon the representation  of the claimed design, such an 
illustration should be included as a separate  figure in addition to the 
other figures which fully disclose the subject matter  of the design. 

D.  Surface Indicia 

        The ornamental appearance of an article includes its shape and 
configuration  as well as any indicia, lettering, or other ornamentation 
embodied in the article 
("surface indicia"). Surface indicia must be embodied in an article of 
manufacture.  Surface indicia, per se (i.e., not embodied in a specific 
article of manufacture)  is not proper subject matter for a design patent 
under 
35 U.S.C. 171.  See MPEP w 1507. 

        Surface indicia shown in a design drawing will normally be 
considered  as prima facie evidence that the inventor considered the 
surface indicia shown  in the drawing to be an integral part of the 
claimed design. 

        However, if the original disclosure of an application, taken as a 
whole,  indicates that the inventor intended surface indicia to be merely 
exemplary  or nonlimitative, the examiner may afford applicant the 
opportunity to remove  the surface indicia from the design or to show the 
indicia in broken lines.  For example, lettering on an article that is 
described in the specification  as merely exemplary of any lettering that 
could be applied to the article may  be amended to be shown in broken 
lines without raising the issue of new matter. 

        If the original drawing shows surface indicia, and the disclosure, 
 taken as a whole, does not indicate that the inventor considered the 
indicia  to be merely optional or exemplary, an amendment canceling the 
indicia (or  showing the indicia in broken lines) would comprise new 
matter. 

        If the examiner is uncertain from the application, as filed, 
whether  the inventor considered any surface indicia to be part of the 
design or merely  exemplary of other indicia, the examiner may require the 
actual inventor to  provide an oath or declaration attesting to whether 
the indicia was considered  a part of the claimed design. It is 
appropriate to request such information  directly from the inventor since 
only the actual named inventor is directly  aware of his or her actual 
inventive intent. 

E.  Photographs 

        Drawings are normally required to be submitted in black ink on 
white  paper, 37 CFR 1.84(a). Photographs are normally not permitted in 
design patent  applications. 

        However, the Office will accept black and white photographs in 
design  patent applications only after granting a petition filed under 37 
CFR 1.84(b)(1)  requesting that photographs be accepted. Petitions to 
accept photographs as  drawings will be considered by the Supervisory 
Patent Examiner and will be  granted if the appropriate fee set forth in 
37 CFR 1.17(h) has been included  and the three sets of photographs 
required under 37 CFR 1.84(b)(1)(ii) have  been included. If other 
provisions of 37 CFR 1.84(b) for photographs have not  been complied with 
(e.g., the photographs are not on double weight photographic  paper, are 
not properly mounted, or details are not adequately reproducible),  such 
lack of compliance will not bar the grant of a petition to accept the 
photographs but rather will form the basis of subsequent objection to the 
content  of the drawing. 

        Photographs submitted on double weight photographic paper must 
have  the drawing figure number entered on the face of the photograph. 
Photographs  mounted on Bristol board may have the figure number shown in 
black ink on the  Bristol board proximate the corresponding photograph. 

        Photographs and ink drawings must not be combined in one 
application.  The introduction of both photographs and ink drawings in a 
design application  would result in a high probability of inconsistencies 
between corresponding  elements on the ink drawings as compared with the 
photographs. 

        Color drawings and color photographs will not be accepted under 
any  conditions in design patent applications. See 37 CFR 1.152. 


1503.03       Design Claim [R-2] 


        The requirements for utility claims specified in 
37 CFR 1.75 do not apply to design claims. Instead, the form and content 
of  a design claim is set forth in 37 CFR 1.153: 

37 CFR 1.153  ... claim ... 

        (a) ... The claim shall be in formal terms to the ornamental 
design  for the article (specifying name) as shown or as shown and 
described.   More  than one claim is neither required nor permitted. 

***** 

        A design patent application may only include a single claim. The 
single  claim should normally be in formal terms to "The ornamental design 
for (the  article as specified in the Title of the Invention) as shown." 
The description  of the article in the claim should be consistent in 
terminology with the title  of the invention.  See MPEP w 1503.01. 

        When there is a properly included special description of the 
design  in the specification (see MPEP 
w 1503.01), or a proper showing of modified forms of the design or other 
descriptive  matter has been included in the specification, the words "and 
described" should  be added to the claim following the term "shown"; i.e., 
the claim should read  "The ornamental design for (the article as 
specified in the Title of the Invention)  as shown and described". 

        The claimed design is shown by solid lines in the drawing. It is 
not  permissible to show any portion of the claimed design in dotted 
lines. There  are no portions of the claimed design which are immaterial 
or unimportant,  and elements shown in dotted lines in the drawing are not 
part of the claim. 
 See MPEP w 1502.03(c) and In re Blum, ** 153 USPQ 177 (CCPA 1967). 
W 15.45 Photographs as Informal Drawings 

For filing date purposes, in those design patent applications 
**>containing<  photographs for drawings contrary to the requirement for 
ink drawings, the  Application Division has been authorized to construe 
the photographs as informal  drawings rather than to hold the 
*>applications< incomplete as filed.  By so  doing, the Patent and 
Trademark Office can accept applications without requiring  applicants to 
file petitions to obtain the original deposit date as the filing  date. 
However, 37 CFR 1.84(b)(1) requires that if black and white photographs 
are filed as formal drawings, a petition for acceptance *>of< such, the 
fee  under 37 CFR 1.17(h), and three sets of the photographs must be 
filed.  Before  the photographs in this application can be treated as 
formal drawings, applicant  must submit [1]. 

Examiner Note: 

1. In bracket 1, insert "a petition", "the fee", and/or "three full sets 
of  photographs". 

W   15.57 Not-Entered Drawings Returned 

The non-entered drawings filed [1] will be returned to applicant(s) upon 
proper  request.  The request must be filed within a reasonable time. 
Otherwise the  drawing may be disposed of at the discretion of the 
Commissioner (MPEP >w<  608.02(y)). 


1504    Examination 


        In design patent applications, as in utility patent applications, 
novelty  and unobviousness are necessary prerequisites to the grant of a 
patent.  In  the case of a design, the inventive novelty or unobviousness 
resides in the  shape or configuration and/or surface ornamentation of the 
subject matter which  is claimed. This is in contradistinction to the 
evaluation of novelty and nonobviousness  in utility patent applications, 
which involves evaluation of such factors as  the operation, function, 
advantages, and properties of the article. 
        Novelty and unobviousness of a design claim must generally be 
determined  by a search in the pertinent design classes. It is also 
mandatory that the  search be extended to the mechanical classes 
encompassing inventions of the  same general type. Catalogs and trade 
journals are also to be consulted. 

1504.01       Statutory Subject Matter for Designs [R-2] 


A.  Icons and Surface Indicia 

        The language "new, original and ornamental design for an article 
of  manufacture" set forth in 35 U.S.C. 171 has been interpreted by the 
case law  to include at least three kinds of designs: (1) a design for an 
ornament, impression,  print, or picture applied to an article of 
manufacture (surface indicia); (2)  a design for the shape or 
configuration of an article of manufacture; and (3)  a combination of the 
first two categories.  See In re Schnell, 46 F.2d 203,  8 USPQ 19 (CCPA 
1931); Ex parte Donaldson, 26 USPQ2d 1250 (Bd. Pat. App. &  Int. 1992). 

        A picture standing alone is not patentable under 
35 U.S.C. 171. The factor which distinguishes statutory design subject 
matter  from mere picture or ornamentation, per se (i.e., abstract design) 
is the embodiment  of the design in an article of manufacture. Consistent with 
35 U.S.C. 171, case law and PTO practice (37 CFR 1.152), the design must 
be  shown applied to an article of manufacture. 

        A claim to a picture, * print, impression, etc. per se, that is 
not  embodied in an article of manufacture should be rejected under 35 
U.S.C. 171  as directed to nonstatutory subject matter. 

>I. Guidelines for Examination of Design Patent 
Applications for Computer-Generated Icons 

        The following guidelines have been developed to assist PTO 
personnel  in determining whether design patent applications for 
computer-generated icons  comply with the "article of manufacture" 
requirement of 
35 U.S.C. 171. 

(a).  General Principle Governing Compliance with the "Article of 
Manufacture"  Requirement 

        Computer-generated icons, such as full screen displays and 
individual  icons, are 2-dimensional images which alone are surface 
ornamentation.  See,  e.g., Ex parte Strijland, 26 USPQ2d 1259 (Bd. Pat. 
App. & Int. 1992) (computer-generated  icon alone is merely surface 
ornamentation).  The PTO considers designs for  computer-generated icons 
embodied in articles of manufacture to be statutory  subject matter 
eligible for design patent protection under 35 U.S.C. 171.   Thus, if an 
application claims a computer-generated icon shown on a computer  screen, 
monitor, other display panel, or a portion thereof, the claim complies 
with the "article of manufacture" requirement of 35 U.S.C. 171.  Since a 
patentable  design is inseparable from the object to which it is applied 
and cannot exist  alone merely as a scheme of surface ornamentation, a 
computer- 
generated icon must be embodied in a computer screen, monitor, other 
display  panel, or portion thereof, to satisfy 35 U.S.C. 171.  See MPEP # 
1502. 
        "We do not see that the dependence of the existence of a design on 
 something outside itself is a reason for holding it is not a design `for 
an  article of manufacture.' " In re Hruby, 153 USPQ 61 (CCPA 1967) 
(design of  water fountain patentable design for an article of 
manufacture).  The dependence  of a computer-generated icon on a central 
processing unit and computer program  for its existence itself is not a 
reason for holding that the design is not  for an article of manufacture. 

(b). Procedures for Evaluating Whether Design Patent Applications Drawn to 
 Computer-Generated Icons Comply with the "Article of Manufacture" 
Requirement 
        PTO personnel shall adhere to the following procedures when 
reviewing  design patent applications drawn to computer-generated icons 
for compliance  with the "article of manufacture" requirement of 35 U.S.C. 
171. 

        (1)  Read the entire disclosure to determine what the applicant 
claims  as the design and to determine whether the design is embodied in 
an article  of manufacture. 
37 CFR 1.71 and 1.152-1.154. 

        Since the claim must be in formal terms to the design "as shown, 
or  as shown and described," the drawing provides the best description of 
the claim.  37 CFR 1.153. 

        (i) Review the drawing to determine whether a computer screen, 
monitor,  other display panel, or portion thereof, is shown. 37 CFR 1.152. 

        Although a computer-generated icon may be embodied in only a 
portion  of a computer screen, monitor, or other display panel, the 
drawing "must contain  a sufficient number of views to constitute a 
complete disclosure of the appearance  of the article." 37 CFR 1.152. In 
addition, the drawing must comply with 37  CFR 1.84. 

        (ii) Review the title to determine whether it clearly describes 
the  claimed subject matter. 37 CFR 1.153. 

        The following titles do not adequately describe a design for an 
article  of manufacture under 35 U.S.C. 171: "computer icon"; or "icon." 
On the other  hand, the following titles do adequately describe a design 
for an article of  manufacture under 35 U.S.C. 171: "computer screen with 
an icon"; "display panel  with a computer icon"; "portion of a computer 
screen with an icon image"; "portion  of a display panel with a computer 
icon image"; or "portion of a monitor displayed  with a computer icon image." 

        (iii) Review the specification to determine whether a 
characteristic  feature statement is present. 37 CFR 1.71. If a 
characteristic feature statement  is present, determine whether it 
describes the claimed subject matter as a  computer-generated icon 
embodied in a computer screen, monitor, other display  panel, or portion 
thereof. See McGrady v. Aspenglas Corp., 208 USPQ 242 (S.D.N.Y.  1980) 
(descriptive statement in design patent application narrows claim scope). 

        (2) If the drawing does not depict a computer- 
generated icon embodied in a computer screen, monitor, other display 
panel,  or a portion thereof, in either solid or broken lines, reject the 
claimed design  under 
35 U.S.C. 171 for failing to comply with the article of manufacture 
requirement. 

        (i) If the disclosure as a whole does not suggest or describe the 
claimed  subject matter as a computer-generated icon embodied in a 
computer screen,  monitor, other display panel, or portion thereof, 
indicate that: 

-  the claim is fatally defective under 35 U.S.C. 171; and 

-  amendments to the written description, drawings and/or claim attempting 
 to overcome the rejection will not be entered because they would lack a 
written  descriptive basis under 
35 U.S.C. 112, first paragraph, and would constitute new matter under 35 
U.S.C.  132. 

        (ii) If the disclosure as a whole suggests or describes the 
claimed  subject matter as a computer-generated icon embodied in a 
computer screen,  monitor, other display panel, or portion thereof, 
indicate that the drawing  may be amended to overcome the rejection under 
35 U.S.C. 171. Suggest amendments which would bring the claim into 
compliance  with 35 U.S.C. 171. 

        (3) Indicate all objections to the disclosure for failure to 
comply  with the formal requirements of the Rules of Practice in Patent 
Cases. 37 CFR  1.71, 1.81-1.85, and 1.152-1.154. Suggest amendments which 
would bring the  disclosure into compliance with the formal requirements 
of the Rules of Practice  in Patent Cases. 

        (4) Upon response by applicant: 

        (i) Approve entry of any amendments which have support in the 
original  disclosure; and 

        (ii) Review all arguments and the entire record, including any 
amendments,  to determine whether the drawing, title, and specification 
clearly disclose  a 
computer-generated icon embodied in a computer screen, monitor, other 
display  panel, or portion thereof. 

        (5) If, by a preponderance of the evidence (see In re Oetiker, 24 
USPQ2d  1443 (Fed. Cir. 1992) ("After evidence or argument is submitted by 
the applicant  in response, patentability is determined on the totality of 
the record, by  a preponderance of evidence with due consideration to 
persuasiveness of argument.")),  the applicant has established that the 
computer-generated icon is embodied  in a computer screen, monitor, other 
display panel, or portion thereof, withdraw  the rejection under 35 U.S.C. 
171. 

II.  Effect of the Guidelines on Pending Design Applications Drawn to 
Computer-Generated  Icons 

  PTO personnel shall follow the procedures set forth above when examining 
 design patent applications for computer-generated icons pending in the 
PTO  as of April 19, 1996. 

III.  Treatment of Type Fonts 

        Traditionally, type fonts have been generated by solid blocks from 
 which each letter or symbol was produced. Consequently, the PTO has 
historically  granted design patents drawn to type fonts. PTO personnel 
should not reject  claims for type fonts under 35 U.S.C. 171 for failure 
to comply with the "article  of manufacture" requirement on the basis that 
more modern methods of typesetting,  including computer-generation, do not 
require solid printing blocks.< 
B. Functionality vs. Ornamentality 

        A design for an article of manufacture that is dictated purely by 
the  function of the article lacks ornamentality and should be rejected 
under 35  U.S.C. 171. See In 
re Carletti, 328 F.2d 10, 140 USPQ 653 (CCPA 1964); Power Control Corp. v. 
 Hybrinetics, Inc., 806 F.2d 234, 231 USPQ 774 (Fed. Cir. 1986). 

        The examiner shall, upon making a prima facie showing that the 
design  of an article is dictated by its function, make a rejection under 
35 U.S.C.  171 that the design lacks ornamentality. Such a rejection is 
rebuttable through  presentation of evidence of ornamentality, such as an 
affidavit by the actual  inventor attesting to the ornamental concerns in 
making the invention and a  showing of how the function of the article can 
be accomplished by substantively  different designs. Mere arguments by the 
attorney of record are of little value  in establishing ornamental intent 
on the part of the inventor. Upon submission  of any evidence of 
ornamentality, the examiner must reevaluate all the evidence  anew and 
make a new determination whether the evidence of ornamentality is 
sufficient to overcome the prima facie showing of lack of ornamentality. 
C. Hidden in Use 

        A design for an article of manufacture that is hidden in its 
ultimate  end use, where there is no evidence that its ornamental 
appearance was of commercial  concern prior to reaching its ultimate end 
use, lacks ornamentality and should  be rejected under 35 U.S.C. 171.  See 
In re Stevens, 173 F.2d 1015, 81 USPQ  362 (CCPA 1949). 

        However, a design directed to an article of manufacture that is 
hidden  in its ultimate end use may be proper subject matter for a design 
patent if  there is some period in the commercial life of the design when 
its ornamentality  has been shown to be a matter of concern. See In re 
Webb, 916 F.2d 1553, 16  USPQ2d 1433 (Fed. Cir. 1990). 

        The examiner shall, upon making a prima facie showing that an 
article  is hidden in its ultimate end use and absent any evidence that 
the ornamentality  was of actual concern to prospective purchaser of the 
article, make a rejection  under 35 U.S.C. 171 that the design lacks 
ornamentality. Such a rejection is  rebuttable through presentation of 
objective evidence of ornamentality, such  as a showing that ornamentality 
of the article was of commercial concern during  the period of commercial 
life between its manufacture and ultimate hidden end  use. A showing that 
the actual appearance of the article (or a similar article)  is advertised 
or displayed to prospective customers may comprise evidence that  its 
ornamentality might be of actual concern. Affidavits or declarations from 
actual customers  attesting that ornamentality of the article was of 
actual concern to them during  the commercial life of the article would 
comprise stronger evidence. Upon submission  of any objective evidence of 
ornamentality, the examiner must reevaluate all  the evidence anew and 
make a new determination whether the objective evidence  of ornamentality 
is sufficient to overcome the prima facie showing of lack  of ornamentality. 

W 15.08       35 U.S.C. 171 Rejection as Purely Functional 

The claim is rejected under 35 U.S.C. 171 as not meeting the requirements 
of  ornamentality, the subject matter being obviously the result of purely 
functional  considerations. 

W 15.09       35 U.S.C. 171 Rejection 

        The claim is rejected under 35 U.S.C. 171 for the reason that 
[1]>,  because [2]<. 

Examiner Note: 

A rejection on the *>grounds< of lack of ornamentality includes the more 
specific  grounds of functionality, frivolity, fraud, contrary to public 
policy. The  statutory basis for this rejection is 35 U.S.C. 171. (See 
MPEP Chapter 1500).  Also, identify the specific ground(s) not complied 
with >in bracket 1< and  give reasons why >in bracket 2<. 

W 15.41       Functional, Structural Features Not Considered 

Attention is directed to the fact that design patent applications are 
concerned  solely with the ornamental appearance of an article of 
manufacture. The functional  and/or structural features stressed by 
applicant in the papers are of no concern  in design cases and are neither 
permitted nor required. Function and structure  fall under the realm of 
utility patent applications. 

W 15.44       Design Inseparable From Object to Which Applied 

Design is inseparable from the object to which it is applied and cannot 
exist  alone merely as a scheme of ornamentation. It must be a definite 
preconceived  thing, capable of reproduction, and not merely the chance 
result of a method. 
(35 U.S.C. 171; 35 U.S.C. 112, first and second paragraphs.) 

D.  Offensive Subject Matter 

        Design applications which disclose subject matter which could be 
deemed  offensive to any race, religion, sex, ethnic group, or 
nationality, such as  those which include caricatures or depictions, 
should be rejected as not meeting  the requirements of ornamentality under 
35 U.S.C. 171. Form Paragraph 15.10 should be used. 

W 15.10       Frivolous, Offensive Subject Matter 

        The disclosure, and therefore the claim in this application, is 
rejected  as being frivolous ** and therefore improper subject matter for 
design patent  protection under 35 U.S.C. 171. Such subject matter *>does< 
not ** meet the  requirements of ornamentality under 
35 U.S.C. 171. Moreover, since 37 CFR 1.3 proscribes the presentation of 
papers  which are lacking in decorum and courtesy, and this includes 
depictions or  caricatures in the disclosure, *>drawings,< and/or 
*>claim(s)< which might  reasonably be considered offensive, such subject 
matter as presented herein  is deemed to be clearly contrary to 
37 CFR 1.3. (See *>MPEP w< 608**). 


1504.02       Novelty [R-2] 


        If the prior art discloses any article of substantially the same 
appearance  as that of the claimed design, it is immaterial in the 
evaluation of novelty  what the use of such an article is. Stated 
differently, it is not necessary  that the claimed design and prior art 
article be from "analogous arts" when  evaluating novelty. 

        In determining novelty with respect to design patents, the 
standard  recognized by the courts is whether the prior art shows an 
article of "substantially  the same appearance" to an ordinary observer. 
Absolute identity of design is  not required to support a rejection for 
lack of novelty under 35 U.S.C. 102.  See In re Glavas, 109 USPQ 50, 52 
(CCPA 1956). 

        In evaluating a statutory bar based on 35 U.S.C. 102(b), the case 
law  indicates that the experimental use exception to a statutory bar for 
public  use or sale (see MPEP w 2 128.01) does not apply for designs 
patents. See In  re Mann, 861 F.2d 1581, 8 USPQ2d 2030 (Fed. Cir. 1988). 

        Registration of a design abroad is considered to be equivalent to 
patenting  under 35 U.S.C. 119 and 102(d), whether or not the foreign 
grant is published. 
(See Ex parte Lancaster et al. 833 O.G. 8, 1966 C.D. 20 (Bd. App. 1965); 
Ex  parte Marinissen, 842 O.G. 528, 155 USPQ 528 (Bd. App. 1966); Appeal 
No. 239-48,  Decided April 30, 1965, 833 O.G. 10, 1966 C.D. 22 (Bd. App. 
1965); Ex parte Appeal decided September 3, 1968, 866 O.G. 16 (Bd. App. 
1966). The  basis of this practice is that if the foreign applicant has 
received the protection  offered in the foreign country, no matter what 
the protection is called ("patent,"  "Design Registration," etc.), if the 
United States application is timely filed,  a claim for priority will 
vest. If, on the other hand, the U.S. application  is not timely filed, a 
statutory bar arises under 
35 U.S.C. 102(d) as modified by 35 U.S.C. 172. In order for the filing to 
be  timely for priority purposes and to avoid possible statutory bars, the 
U.S.  design patent application must be made within 6 months of the 
foreign filing.  See also MPEP w 1504.10. 

        The laws of each foreign country vary in one or more respects. ** 
> The following table sets forth the dates on which design rights can be 
enforced  in a foreign country (INID Code (24)) and thus, are also useable 
in a 35 U.S.C.  102(d) rejection as modified by 35 U.S.C. 172.  It should 
be noted that in  many countries the date of registration or grant is the 
filing date. 
1  Based on information taken from the "Survey of Filing Procedures and 
Filing  Requirements, as well as of Examination Methods and Publication 
Procedures,  Relating to Industrial Designs" as adopted by the PCIPI 
Executive Coordination  Committee of the World Intellectual Property 
Organization (WIPO) at its fifteenth  session on November 25, 1994. 


1  Based on information taken from the "Survey of Filing Procedures and 
Filing  Requirements, as  well as of Examination Methods  and Publication 
Procedures,  Relating to Industrial Designs" as adopted by the PCIPI 
Executive Coordination 
 Committee of  the World Intellectual Property Organization (WIPO) at its 
fifteenth  session on November 25, 1994. 


1  Based on information taken from the "Survey of Filing Procedures and 
Filing  Requirements, as  well as of Examination Methods  and Publication 
Procedures,  Relating to Industrial Designs" as  adopted by  the PCIPI 
Executive Coordination 
 Committee of the World Intellectual Property Organization (WIPO) at its 
fifteenth  session on November 25, 1994.< 

W 15.11       35 U.S.C. 102(a) Rejection 

The claim is rejected under 35 U.S.C. 102(a) as clearly anticipated by [1] 
 because the invention was known or used by others in this country, or 
patented  or described in a printed publication in this or a foreign 
country before the  invention thereof by the applicant >for patent<. 

W 15.12       35 U.S.C. 102(b) Rejection 

The claim is rejected under 35 U.S.C. 102(b) as clearly anticipated by [1] 
 because the invention was patented or described in a printed publication 
in  this or a foreign country or in public use or >on< sale in this 
country, more  than one >(1)< year prior to the application for patent in 
the United States. 
W 15.13       35 U.S.C. 102(c) Rejection 

The claim is rejected under 35 U.S.C. 102(c) because the invention has 
been  abandoned. 

W 15.14       35 U.S.C. 102(d) Rejection 

The claim is rejected under 35 U.S.C. 102(d), as modified by 
35 U.S.C. 172, as clearly anticipated by [1] because the invention was 
first  patented or caused to be patented, or was the subject of an 
inventor's certificate  by the applicant or his legal representatives or 
assigns in a foreign country  prior to the date of the application for 
patent in this country, or on an application  for patent or inventor's 
certificate filed more than six >(6)< months before  the filing of the 
application in the United States. 

W 15.15       35 U.S.C. 102(e) Rejection 

The claim is rejected under 35 U.S.C. 102(e) as clearly anticipated by [1] 
 because the invention was described in a patent granted on an application 
for  patent by another filed in the United States before the invention 
thereof by  the applicant for patent. 

W 15.16       35 U.S.C. 102(f) Rejection 

The claim is rejected under 35 U.S.C. 102(f) because applicant did not 
himself  invent the subject matter sought to be patented. 

W 15.17       35 U.S.C. 102(g) Rejection 

The claim is rejected under 35 U.S.C. 102(g) because, before the 
applicant's  invention thereof, the invention was made in this country by 
another who had  not abandoned, suppressed or concealed it. 


1504.03       Nonobviousness [R-2] 


        A claimed design that meets the test of novelty must additionally 
be  evaluated for nonobviousness under 
35 U.S.C 103. 

A.  Gathering the Facts 

        The basic factual inquiries guiding the evaluation of obviousness, 
 as outlined by the Supreme Court in Graham v. John Deere Co., 148 USPQ 
459 
(1966), are equally applicable to the evaluation of design and utility 
patentability: 
        1.  Determining the scope and content of the prior art; 

        2.  Ascertaining the differences between the claimed invention and 
 the prior art; 

        3.  Resolving the level of ordinary skill in the art; and 
        4.  Evaluating any objective evidence of nonobviousness (i.e., 
so-called  "secondary considerations"). 

1. Scope of the Prior Art 

        The scope of the relevant prior art for purposes of evaluating 
obviousness  under 35 U.S.C. 103 extends to all "analogous arts." 

        While the determination of whether arts are analogous is basically 
 the same for both design and utility inventions, the case law (In re 
Glavas,  109 USPQ 50, 52 (CCPA 1956)) provides specific guidance for 
evaluating analogous  arts in the design context, which should be used to 
supplement the general  requirements for analogous art as follows: 

The question in design cases as distinguished from utility cases is "not 
whether  the references sought to be combined are in analogous arts in the 
mechanical  sense, but whether they are so related that the appearance of 
certain ornamental  features in one would suggest the application of those 
features to the other. 
Thus, if the problem is merely one of giving an attractive appearance to a 
 surface, it is immaterial whether the surface in question is that of wall 
paper,  an oven door, or a piece of crockery. . . . 

On the other hand, when the proposed combination of references involves 
material  modifications of the basic form of one article in view of 
another, the nature  of the articles involved is a definite factor in 
determining whether the proposed  change involves [patentable] invention." 

        Therefore, where the differences between the claimed design and 
the  prior art are limited to the application of ornamentation to the 
surface of  an article, any prior art reference which discloses 
substantially the same  surface ornamentation would be considered 
analogous art. Where the differences  are in the shape or form of the 
article, the nature of the articles involved  must also be considered. 

2.  Differences Between the Prior Art and the Claimed Design 

        Differences between the claimed design and the prior art may 
comprise  those of surface indicia or of shape or form of the article of 
manufacture  embodying the design. Note that whether any particular 
ornamentation is embossed  on or impressed in the surface to which it is 
applied is considered a matter  of choice well within the skill of the 
ordinary designer. See In re Cornwall  109 USPQ57 (CCPA 1956). All 
differences between the claimed design and the  closest prior art 
reference should be identified in any rejection of the design  claim under 
35 U.S.C. 103. If any differences are considered de minimis or 
inconsequential from a design viewpoint, the rejection should so state. 
3.  Level of Ordinary Skill in the Art 

        In order to be unpatentable, 35 U.S.C. 103 requires that an 
invention  must have been obvious to a person having "ordinary skill in 
the art" to which  the subject matter sought to be patented pertains. The 
"level of ordinary skill  in the art" from which obviousness of a design 
claim must be evaluated under  35 U.S.C. 103 has been held by the courts 
to be the perspective of the "designer  of . . . articles of the types 
presented." In re Nalbandian, 661 F.2d 1216,  211 USPQ 782, 784 (CCPA 
1981); In re Carter, 213 USPQ 625 (CCPA 1982). 
4.  Secondary Considerations 

        Secondary considerations, such as commercial success and copying 
of  the design by others, are relevant to the evaluation of obviousness of 
a design  claim just as in a utility claim. Evidence of nonobviousness may 
be present  at the time a prima facie case of obviousness is evaluated or 
it may be presented  in rebuttal of a prior obviousness rejection. 

B.  Prima Facie Obviousness 

        Once the factual inquiries mandated under Graham v. Deere have 
been  made, the examiner must determine whether they support a conclusion 
of prima  facie obviousness. 

        In determining prima facie obviousness, the proper standard is 
whether  the design would have been obvious to a designer of ordinary 
skill with the  claimed type of article, In re Nalbandian, 661 F.2d 1214, 
211 USPQ 782 (CCPA  1981). 

        The procedure for evaluating prima facie obviousness of a design 
is  set forth in In re Rosen, 673 F.2d 388, 213 USPQ 347 (CCPA 1982). 
Rosen states,  essentially, that it is the overall appearance, the visual 
effect as a whole  of the design, which must be taken into consideration. 
Rosen additionally states,  on a procedural level, that the examiner must 
first provide "a reference, a  something in existence, the design 
characteristics of which are basically the  same as the claimed design." 
(213 USPQ at 350). 

        Such a basic reference (commonly called a "Rosen reference") is 
not  required to be identical in all minutiae to the claimed design. The 
design  of the article in the "Rosen reference" need only possess design 
characteristics  which are "basically the same as the claimed design." 
Rosen, supra. Once a  reference meets the test as a "Rosen reference," 
ornamental features may reasonably  be interchanged with or added from 
those of other references so long as the  references "are so related that 
the appearance of certain ornamental features  in one would suggest the 
application of those features to the other." In re  Rosen, 213 USPQ at 
350, quoting In re Glavas, 109 USPQ 50, 52 (CCPA 1956). 
C. Rebuttal of the Prima Facie Case 

        In design cases as in utility cases, once a prima facie case of 
obviousness  has been established, the examiner must consider any 
additional objective evidence  of nonobviousness and/or rebuttal evidence 
offered by applicant. 

 W  15.18 35 U.S.C. 103>(a)< Rejection (Single Reference) 

The claim is rejected under 35 U.S.C. 103>(a)< as >being< unpatentable 
over  [1]. Although the invention is not identically disclosed or 
described as set  forth in 35 U.S.C. 102, if the differences between the 
subject matter sought  to be patented and the prior art are such that the 
subject matter as a whole  would have been obvious at the time the 
invention was made to a person having  ordinary skill in the art to which 
said subject matter pertains, the invention  is not patentable. 

W 15.19       35 U.S.C. 103>(a)< Rejection (Multiple References) 

The claim is rejected under 35 U.S.C. 103>(a)< as >being< unpatentable 
over  [1] in view of [2]. 

Although the invention is *>not< identically disclosed or described as set 
 forth in *>section< 102 of the statute, if the differences between the 
subject  matter sought to be patented, and the prior art are such that the 
subject matter  as a whole would have been obvious at the time the 
invention was made to a  person having ordinary skill in the art to which 
said subject matter pertains,  the invention is not patentable. 

W 15.19.>0<1    Summary Statement of Rejections 

The claim stands rejected under [1]. 

Examiner Note: 

1.      Use as summary statement of rejection(s) in Office action. 
2.      In bracket 1, insert appropriate basis for rejection, i.e., 
statutory  provisions, etc. 

W 15.58       Claimed Design Is Patentable >(Ex parte Quayle 
Actions)< 

The claimed design is patentable over the references cited. 


1504.04       Considerations Under 35 U.S.C. 112  [R-2] 


        The drawing in a design application is incorporated into the claim 
 by use of the claim language "as shown". 

        Additionally, the drawing disclosure can be supplemented by 
narrative  description in the specification (see MPEP w 1503.01). This 
description is  incorporated into the claim by use of the language "as 
shown and described."  See MPEP w 1503.03. 

        A defect in the drawing or the narrative description in the 
specification  that renders the design unclear, confusing, or incomplete 
supports a rejection  of the claim under 35 U.S.C. 112, first paragraph, 
as being based on an inadequate  disclosure and/or a rejection of the 
claim under 35 U.S.C. 112, second paragraph,  as failing to particularly 
point out and distinctly claim the design. 
        Defects in claim language give rise to a rejection of the claim 
under  the second paragraph of 35 U.S.C. 112 Typical examples include: 

        1.  Use of phrases in the claim such as "substantially as shown," 
"or  similar article," "or the like,"or equivalent terminology. 

        2.  The designation of the design as collectively shown in the 
drawing,  referenced in the title and described in the specification is 
such that it  can not be determined what article of manufacture is being 
claimed. For example,  a design claimed as an "Adapter Ring" in which 
there are no distinguishing  features in the drawing to identify the field 
of endeavor of the article. 
W 15.21       Rejection, 35 U.S.C. 112, First and Second Paragraphs 
The claim is rejected under 35 U.S.C. 112, first and second paragraphs, as 
 the claimed invention is not described in such full, clear, concise and 
exact  terms as to enable any person skilled in the art to make and use 
the same,  and/or for failing to particularly point out and distinctly 
claim the subject  matter which applicant regards as the invention. 

Examiner Note: 

1. This paragraph should not be used when it is appropriate to make one or 
 more separate rejections under the first and/or the second paragraph of 
35  U.S.C. 112. In other words, separate rejections under either the first 
paragraph  or the second paragraph of 35 U.S.C. 112 are preferred. This 
paragraph should  only be used when either the first or second paragraph 
of 35 U.S.C. 112 could  be applicable, but due to some question of 
interpretation, uncertainty exists  as to whether the claimed invention is 
sufficiently described in the enabling  teachings of the specification or 
the claim language is indefinite. 
2. A full explanation should be provided with this rejection. 

W 15.22       Rejection, 35 U.S.C. 112, 2nd Paragraph 

The claim is rejected under 35 U.S.C. 112, second paragraph, as being 
indefinite  for failing to particularly point out and distinctly claim the 
subject matter  which applicant regards as the invention. 

Examiner Note: 

1.      Use this paragraph when claims are vague, indefinite, confusing, 
incorrect  or cannot be understood. 

2.      Add a full explanation of the rejection. 

3.      See also form paragraph 17.07 

W 15.21.>0<1    >Rejection< 35 U.S.C. 112 (>Second< Paragraph *) 
*>(Information  Requested)< 

The claim is rejected as failing to particularly point out and distinctly 
claim  the invention as required in 35 U.S.C. 112, second paragraph. The 
designation  of the design is too broad for the examiner to make a proper 
examination of  the claim *>under< 37 CFR 1.104. 

Applicant is therefore required to provide a sufficient explanation of the 
 design regarding its nature and intended use, so that a proper 
classification  and reliable search can be made. Additional information, 
if available, regarding  >analogous< fields of search, pertinent prior 
art, advertising brochures and  the filing of copending utility 
applications would also *>prove< helpful. If  a utility application has 
been filed, please furnish its *>application< number. 
This information should be submitted in the form of a separate paper and 
should  not be inserted in the specification (37 CFR 1.56). See also 
37 CFR 1.97, 1.98 and 1.99. 

Examiner Note:5 

1.      This rejection may be used when the applicant fails to respond to 
a  request for information and as otherwise deemed appropriate. 

W 15.56       *>Requirement< for Information 

A preliminary review of this application indicates that the designation of 
 the article claimed is so broad that it will be difficult for the 
examiner  to make a proper examination of the claim as required by 37 CFR 
*>1.104<. 
Please provide sufficient explanation to the claimed design invention 
regarding  its nature and intended use so that the most appropriate docket 
assignment  and pertinent search can be made. This information should be 
submitted in the  form of remarks only, and should not be inserted in the 
specification. 
Additional information regarding analogous fields of search, pertinent 
prior  art, advertising brochures, and the filing of copending utility 
applications  would also prove helpful and should be included in the 
response. Attention  is also directed to 37 CFR 1.56 and the procedure in 
*>MPEP w< 609 ** as authorized  by 37 CFR 1.97, 1.98 and 1.99. 

Failure to respond prior to a first Office action on the merits may result 
 in a rejection under 35 U.S.C. 112 *>in< such first Office action if the 
examiner  is unable to make a proper examination. 

The new case status of this application for the purpose of issuance of a 
first  Office action on the merits in filing date order, will continue 
under the provisions  of 37 CFR 1.101, MPEP >w< 708. 

W 15.66       Employ Services of Patent Attorney or Agent (Design 
>Application  Only<) 

As the value of a design patent is largely dependent upon the skillful 
preparation  of the drawings and specification, applicant might consider 
it desirable to  employ the services of a registered patent attorney or 
agent. The Patent and  Trademark Office cannot aid in the selection of an 
attorney or agent. 
New Matter 

        In design patent applications, as in applications filed under 35 
U.S.C.  101, additional or amended illustrations involving new matter is 
in violation  of 35 U.S.C. 132; 
37 CFR 1.118. 

        In a design patent application, deletion of portions of the 
original  design may constitute new matter if the original application as 
filed did not  contain a disclosure that the deleted information was not 
part of the design.  See MPEP w 1503.02(d). 

        If new matter is added to the disclosure, the claim should be 
rejected  under 35 U.S.C. w 112, paragraph one, as lacking support in the 
original disclosure.  See Form Paragraph 15.51. If new matter is added to 
the description or drawing,  the specification should be objected to under 
35 U.S.C. 132. See Form Paragraph  7.28. 

        While amendments involving new matter are ordinarily entered, such 
 matter is required by the examiner to be canceled from the specification, 
and  the claim is rejected under 35 U.S.C. 112, first paragraph. While 
amended drawings  containing new matter are not ordinarily entered in 
utility applications (see  MPEP 
w 608.04), since the drawing in a design application is part of the claim, 
 amended drawings in design cases involving new matter are entered; the 
drawing  should be objected to under 35 U.S.C. 132, the new matter should 
be required  to be canceled, and the claim should be rejected under 35 
U.S.C. 112, first  paragraph. (See In re Rasmussen, 211 USPQ 323 (CCPA 1981.) 

W 15.20       Rejection, 35 U.S.C. 112, First Paragraph (New Matter) 
The claim is rejected under 35 U.S.C. 112, first paragraph, as [1] 
Examiner Note: 

        Supply further explanation as appropriate. New matter rejections 
should  be made under this section of the statute when the claims depend 
upon the new  matter. See also Form Paragraph 15.51. 


1504.05       Restriction [R-2] 


        General principles of utility restriction are set forth in chapter 
 800 of the MPEP. These principles are also applicable to design 
restriction  practice with the exception of those differences set forth in 
this section. 
        Unlike a utility patent application, which can contain plural 
claims  directed to plural inventions, a design patent application may 
only have a  single claim and thus must be limited to a single invention 
to avoid introduction  of a lack of clarity as to what is being claimed. 
Therefore, the design patent  examiner will require restriction in each 
application which contains more than  one invention. 

        Restriction may be required under 35 U.S.C. 121 if subject matter 
in  a design patent application as disclosed in the drawing is either 
independent  or distinct and is able to support separate design patents. 

A.  Independent Inventions 

        Design inventions are independent if there is no apparent 
relationship  between two or more subjects disclosed in the drawings; that 
is, they are unconnected  in overall appearance; for example, a pair of 
eyeglasses and a door handle;  a bicycle and a camera; an automobile and a 
bathtub. Also note examples in  MPEP w 806.04. Restriction in such cases 
is clearly proper. This situation  may be rarely presented since design 
patent applications are seldom filed containing  disclosures of 
independent subjects. 

B.  Distinct Inventions 

        Design inventions are distinct if the overall appearance of two or 
 more embodiments as disclosed in the drawings are related, for example, 
two  embodiments of a vase, and are patentable (novel or unobvious) over 
each other.  Restriction in such cases is also clearly proper. Distinct 
designs may constitute  either multiple embodiments of the same article or 
they may be related as a  combination and subcombination of the overall 
design. On the other hand, if  nondistinct inventions are claimed in 
separate design patent applications,  the issue of double patenting must 
be raised. Note MPEP w 806.05 and 1504.06.  In determining the question of 
distinctness under 35 U.S.C. 121 in a design  patent application, a search 
of the prior art may be necessary. 

1. Multiple Embodiments 

        It is permissible, in a proper case, to illustrate more than one 
embodiment  of a design invention in a single application. However, such 
embodiments may  be presented only if they involve a single inventive 
concept and are not patentably  distinct from one another. See In re 
*>Rubinfield<, 123 USPQ 210 ** (CCPA 1959).  Embodiments that are 
patentably distinct over one another do not constitute  a single inventive 
concept and thus may not be included in the same design  application, In 
re Platner, 155, USPQ 222 (Comm'r Pat. 1967). The disclosure  of plural 
embodiments does not require or justify more than a single claim,  which 
claim must be in the formal terms stated in MPEP w 1503.01. The 
specification  should make clear that multiple embodiments are disclosed 
and may particularize  the differences between the embodiments. 

 W  15.27 Restriction under 35 U.S.C 121 

        This application contains the following separate embodiments of 
the  disclosed design: 

Embodiment 1: Figs. [1] 

Embodiment 2: Figs. [2] 

        Multiple embodiments of a single inventive concept may be included 
 in the same design application only if they involve a single inventive 
concept.  In re Rubinfield, 123 USPQ 210 (CCPA 1959). Embodiments that are 
patentably  distinct from one another do not constitute a single inventive 
concept and  thus may not be included in the same design application. In 
re Platner, 155  USPQ 222 >(Comm'r Pat. 1967)<. 

        The above disclosed embodiments define the following distinct 
groups  of >the disclosed< inventions: 

Group I: Embodiment [3] 

Group II: Embodiment [4] 

        Restriction is required under 35 U.S.C. 121 to one of the above 
identified  patentably distinct groups of the disclosed inventions. 

        A response to this requirement must include an election of a 
single  group for prosecution on the merits, even if this requirement is 
traversed.  Any response that does not include election of a single group 
will be held  non-responsive. Applicant is also requested to direct 
cancellation of all drawing  figures directed to non-elected groups. 

        Should applicant traverse this requirement on the grounds that the 
 embodiments comprise a single inventive concept or are not patentably 
distinct,  applicant should present evidence or identify such evidence now 
of record showing  the embodiments to be obvious variations of one 
another. If embodiments are  determined not to be patentably distinct and 
are accordingly retained in the  same application, any rejection of one 
embodiment over prior art will apply  equally to all other embodiments. No 
argument asserting patentability based  on features of other embodiments 
will be considered once those embodiments  have been determined to 
comprise a single inventive concept. 

        A shortened statutory period of >ONE MONTH or< THIRTY DAYS from 
the  date of this letter>, whichever is longer,< is set for applicant to 
elect a  single embodiment for prosecution on the merits. 

W 15.28 Telephone Restriction under 35 U.S.C. 121 

This application contains the following separate embodiments of the 
disclosed  design: 

Embodiment 1: Figs. [1] 

Embodiment 2: Figs. [2] 

Multiple embodiments of a single inventive concept may be included in the 
same  design application only if they involve a single inventive concept. 
In re Rubinfield,  123 USPQ 210 (CCPA 1959). Embodiments that are 
patentably distinct from one  another do not constitute a single inventive 
concept and thus may not be included  in the same design application. In 
re Platner, 155 USPQ 222 >(Comm'r Pat. 1967)<. 

The above disclosed embodiments define the following distinct groups of 
inventions: 

Group I:        Embodiment [3] 

Group II: Embodiment [4] 

Restriction is required under 35 U.S.C. 121 to one of the above identified 
 patentably distinct groups of the disclosed inventions. 

During telephone discussion with [5] on [6], a provisional election was 
made  [7] traverse to prosecute the invention of Group [8]. Affirmation of 
this election  should be made by applicant in responding to this Office 
action. 

Group [9] is withdrawn from further consideration by the examiner, 37 CFR 
1.42(b), as being for a non-elected invention. 

Examiner Note: 

1. In bracket 7, insert "with" or "without". 

W 15.31       Provisional Election Required (37 CFR 1.143) 

Applicant is advised that the response to be complete must include a 
provisional  election of one of the enumerated designs, even though the 
requirement may  be traversed. 37 CFR 1.143. 

2.  Segregable Parts - Combination/Subcombination 

        A design patent covers the entire design as a whole. It is not 
limited  to any part or portion of the design. Under the so-called 
doctrine of segregable  parts, the design in its entirety (i.e., the 
combination) is distinct from  parts thereof (i.e., any subcombination). 
See Ex parte Sanford, 1914 CD 69;  204 O.G. 1346 (Comm'r Pat. 1914), and 
Blumcraft of Pittsburgh v. Ladd, Comr.  Pats, 144 USPQ 562 (D.D.C. 1965). 
Since separate inventions directed to a combination  and subcombination 
thereof require separate claims, restriction to one or the  other is 
necessary in a design patent application. See Ex parte Heckman, 135  USPQ 
229 (PO Super. Exam. 1960); In re Kelly, 
200 USPQ 560 ( Comm'r Pat. 1978). 

W 15.29       Restriction Under 35 U.S.C. 121 (Segregable Parts) 

Restriction to one of the following inventions is required under 35 U.S.C. 
 121: 

Group I - *>Figs.< [1] drawn to a [2]. 

Group II - *>Figs.< [3] drawn to a [4]. 

Examiner Note: 

Add groups as necessary. 

The inventions as grouped are distinct from each other since under the law 
 a design patent covers only the invention disclosed in an entirety, and 
does  not extend to segregable parts; the only way to protect such 
segregable parts  is to apply for separate patents (Ex parte Sanford, 1914 
C.D. 69; 204 O.G.  1346 >(Comm'r Pat. 1914);<and Blumcraft of *>Pittsburg< 
v. Ladd, *>Comm'r<,  144 USPQ 562 >(D.D.C. 1965)<). It is further noted 
that combination/subcombination  subject matter must be supported by 
separate claims, whereas only a single  claim is permissible in a design 
patent application. (In re *>Rubinfield<,  123 USPQ 210 >(CCPA 1959)<). 

Examiner Note: 

Add comments if necessary. 

Because the inventions are distinct for the reason(s) given above, and 
have  acquired separate status in the art, restriction for examination 
purposes as  indicated is proper (35 U.S.C. 121). 

Applicant is reminded that the response to be complete must include a 
provisional  election of one of the enumerated inventions, even though the 
requirement may  be traversed. 37 CFR 1.143. 

In view of the above requirement, action on the merits is deferred pending 
 compliance with the requirement in accordance with Ex parte Heckman, 135 
USPQ  229. 

Applicant is given **>ONE MONTH  or THIRTY DAYS< from the date of this 
letter>,  whichever is longer,< to make an election to avoid a question of 
abandonment. 
W 15.30       Restriction Under 35 U.S.C. 121 (Segregable Parts) 
(Telephonic) 
Restriction to one of the following inventions is required under 
35 U.S.C. 121: 

Group I - *>Figs.< [1] drawn to a [2]. 

Group II - *>Figs.< [3] drawn to a [4]. 

Examiner Note: 

Add groups as necessary. 

The inventions as grouped are distinct from each other since under the law 
 a design patent covers only the invention disclosed as an entirety, and 
does  not extend to segregable parts; the only way to protect such 
segregable parts  is to apply for separate patents (Ex parte *>Sanford<, 
1914 C.D. 69; *>204<  O.G. 1346 >(Comm'r Pat. 1914)< and Blumcraft of 
*>Pittsburg< v. Ladd, *>Comm'r<,  144 USPQ 562 >(D.D.C. 1965)<. It is 
further noted that combination/ subcombination  subject matter must be 
supported by separate claims, whereas only a single  claim is permissible 
in a design patent application. (In re *>Rubinfield<,  123 USPQ 210 >(CCPA 
1959<). 

Examiner Note: 

*>Insert additional< comments if necessary >, and continue<. 

During a telephone discussion with [5] on [6], a provisional election was 
made  **>[7]< to prosecute the invention of Group [8]. Affirmation of this 
election  should be made by applicant in responding to this Office action. 

Group [9] withdrawn from further consideration by the examiner, 
37 CFR 1.142(b), as being for a non-elected invention. 

W 15.34       Groups Withdrawn From Consideration After Traverse 

Group [1] withdrawn from further consideration by the examiner, 
37 CFR 1.142(b), as being for a non-elected invention, the requirement 
having  been traversed in Paper No. [2]. 

W 15.36       Groups Withdrawn From Consideration Without 
Traverse 

        Group [1] withdrawn from further consideration by the examiner, 37 
CFR 1.142(b), as being for the non-elected invention. Election was made 
without traverse in Paper No. [2]. 

W 15.37       Cancellation of Non-elected Groups, No Traverse 

        In view of the fact that this application is in condition for 
allowance  except for the presence of Group [1] directed to an invention 
or inventions  non-elected without traverse and without right to petition 
in Paper No. [2],  said *>Group(s)< have been cancelled. 


1504.06       Double Patenting [R-2] 


        There are two types of double patenting rejections which apply in 
the  examination of design patent applications as in the examination of 
"Utility"  applications - the "same invention"-type and the 
"obviousness"-type. See MPEP  # 804. Double patenting may exist (1) 
between two or more design patent applications  and/or patents and (2) 
between a design patent application and a "utility"  application and/or 
patent. 

A. Design - Design Double Patenting 

        The "same invention"-type double patenting rejection in design - 
design  situation is based on 
35 U.S.C. 171 which states in the singular that an inventor "may obtain a 
patent."  This has been interpreted as meaning only one patent thus 
prohibiting twice  claiming the same invention, see In re Thorington et 
al. 163 USPQ 644 (CCPA  1969), In re Geiger et al. 165 USPQ 572 (CCPA 
1970). This type of double patenting  rejection cannot be overcome by 
terminal disclaimer (see MPEP w 804.02). 
        The "obviousness-type'' double patenting rejection in design - 
design  situations procedurally the same as where two utility cases are 
involved. 
B.    Design-Utility Double Patenting 

        A utility patent and a design patent may be based on the same 
>subject<  matter; however, there must be clear patentable distinction 
between them. 
        Where the design invention as defined by the claim as shown in the 
 drawing views and the utility invention as defined by the claim language 
cross  read, double patenting exists. This involves the same 
invention-type double  patenting: See Adidas Fabrique v. 
Andsmore Sportswear Corp., 223 USPQ 1109 (D.C. S.D. N.Y. 1984); Wahl et 
al.  v. Rexnord, Inc., 206 USPQ 865 (3d Cir.1980); Transmatic, Inc. v. 
Gulton Industries  Inc., 202 USPQ 559 (6th Cir. 1979)). 

        The Court of Appeals for the Federal Circuit in Carmen Industries 
Inc.  v. Wahl et al. 220 USPQ 481 (Fed. Cir. 1983) also supports the 
broader test  of double patenting between design and utility claims based 
on obvious variations.  This type of double patenting rejection may be 
overcome by a terminal disclaimer  where same inventive entities or common 
ownership exist (See MPEP # 804.02.) 
W 15.23       35 U.S.C. 171 Double Patenting Rejection 

The claim is rejected under 35 U.S.C. 171 on the ground of double 
patenting  of the claim in applicant's prior **>United States Patent No.< 
[1]. 
W 15.24       Obviousness>-Type< Double Patenting Rejection (Sole 
Reference) 
The claim is rejected under the judicially created doctrine of the 
obviousness-type  double patenting of the claim in applicant's >prior U.S. 
Patent No.< [1]. Although  the designs are not identical, they are not 
patentably distinct from each other  because [2]. ** 

Examiner Note: 

>1.< In bracket 1, insert **prior U.S. Patent No. 

>2.< In bracket 2, *>an< explanation *>is< necessary. 

>3. This form paragraph must be followed by form paragraph 15.24.06.< 
W 15.25       Obviousness>-Type< Double Patenting Rejection (Multiple 
References) 
The claim is rejected under the judicially created doctrine of the 
obviousness-type  double patenting of the claim(s) in applicant's prior 
U.S. Patent No. [1] in  view of [2]. At the time * applicant made the 
invention, it would have been  obvious to [3**] as demonstrated by [4]. 

** 

>Examiner Note: 

>1. In brackets 3 and 4, insert explanation of basis for rejection. 
2. This form paragraph must be followed by form paragraph 15.24.06.< 

1504.10       Priority Under 35 U.S.C. 119 (a)-(d) [R-2] 


35 U.S.C. 172.          Right of priority. 

The right of priority provided for by subsections (a) through (d) of 
section  119 of this title and the time specified in section 102(d) shall 
be six months  in the case of designs. The right of priority provided for 
by section 119(e)  of this title shall not apply to designs. 

        The provisions of 35 U.S.C. 119(a)-(d) apply also to design patent 
 applications. However, in order to obtain the benefit of an earlier 
foreign  filing date, the United States application must be filed within 6 
months of  the earliest date on which any foreign application for the same 
design was  filed. Design applications may not make a claim for priority 
of a provisional  application under 37 CFR 1.78(a)(3). 

W 15.01       Conditions Under 35 U.S.C. 119(a)-(d) 

Applicant is advised of conditions as specified in 35 U.S.C. 119(a)-(d). 
An  application for a design patent for an invention filed in this country 
by any  person who has, or whose legal representatives have previously 
filed an application  for a design patent, or equivalent protection for 
the same design in a foreign  country which offers similar privileges in 
the case of applications filed in  the United States, or to citizens of 
the United States, shall have the >same<effect  as the same application 
would have if filed in this country on the date on  which the application 
for patent for the same invention was first filed in  such >foreign< 
country, if the application in this country is filed within  six >(6)< 
months from the earliest date on which such foreign application was  filed. 

W 15.03       **Untimely Priority Papers >Returned< 

        Receipt is acknowledged of the filing on [1] of a certified copy 
of  the [2] application referred to in the oath or declaration. A claim 
for priority  cannot be based on said application, since the United States 
application was  filed more than six >(6)< months thereafter. (35 U.S.C. 
172). The papers are  accordingly being returned. 

        The United States will recognize claims for the right of priority 
under  35 U.S.C. 119(a)-(d) based on applications filed under such 
bilateral or multilateral  treaties as the ``Hague Agreement Concerning 
the International Deposit of Industrial  Designs" and the ``Uniform 
Benelux Act on Designs and Models." In filing a  claim for priority of a 
foreign application previously filed under such a treaty,  certain 
information must be supplied to the United States Patent and Trademark 
Office. In addition to the application number and the date of filing of 
the  foreign application, the following information is required: (1) the 
name of  the treaty under which the application was filed, (2) the name of 
at least  one country other than the United States in which the 
application has the effect  of, or is equivalent to, a regular national 
filing and (3) the name and location  of the national or 
inter-governmental authority which received the application. 
W   15.02 Right of Priority Under 35 U.S.C. 119(b) 

        No application for design patent shall be entitled to the right of 
 priority under 35 U.S.C. 119(b) unless a claim therefor and a certified 
copy  of the original foreign application, specification and drawings upon 
which  it is based are filed in the U.S. Patent and Trademark Office 
before the issue  fee is paid, or at such time during the pendency of the 
application as required  by the Commissioner, not earlier than six months 
after the filing of the application  in this country. Such certification 
shall be made by the patent office, or  other proper authority of the 
foreign country in which filed, and show the  date of the application 
and>of the filing< of the specification and other papers.  The 
Commissioner may require a translation of the papers filed if not in the 
English language, and such other information as **>deemed< necessary. 
        The notation requirement on design patent application file 
wrappers  when foreign priority is claimed is set forth in MPEP w 202.03. 

W 15.04       Priority Under Bilateral or Multilateral Treaties 

The United States will recognize claims for the right of priority under 35 
U.S.C. 119(a)-(d) based on applications filed under such bilateral or 
multilateral  treaties as The Hague Agreement Concerning the International 
Deposit of Industrial  Designs, and the Benelux Designs Convention. In 
filing a claim for priority  of a foreign application previously filed 
under such a treaty, certain information  must be supplied to the U.S. 
Patent and Trademark Office. In addition to the  application number and 
the date of filing of the application, the following  information is 
requested: (1) the name of the treaty under which the application  was 
filed; (2) the name of at least one country other than the United States 
in which the application has the effect of, or is equivalent to, a regular 
 national filing; and (3) the name and location of the national or 
international  governmental authority which received *>such< 
application. 

W 15.52       Examination of Priority Papers 

While the U.S. Patent and Trademark Office does *>not< normally examine 
the  priority papers to determine whether the applicant is in fact 
entitled to the  right of priority, in cases of a design patent 
application, the priority papers  will normally be inspected to determine 
that the foreign application is in  fact for the same invention as the 
application in the United States (35 U.S.C.  119). Inspection of the 
papers herein indicates that the prior >foreign< application  was not for 
the same invention as claimed in this application. Accordingly,  the 
priority claim is improper, and the papers are being returned. 
        Attention is also directed to the paragraphs dealing with the 
requirements  where an actual model was originally filed in Germany (MPEP 
w 201.14(b)). 
        See MPEP Chapter 200 and 37 CFR 1.78 for further discussion of the 
 practice and procedure under 35 U.S.C. 119(a)-(d). 


1504.20       Benefit Under 35 U.S.C. 120 [R-2] 


        If applicant is entitled under 35 U.S.C. 120 to the benefit of an 
earlier  U.S. filing date, the statement that, "This is a division 
[continuation] of  design Application No.- - - -, filed - - -." should 
appear in the specification,  either before or after the description of 
the drawing figures. 

        Attention is directed to the requirements for "continuing" 
applications  set forth in MPEP w 201.07, 
# 201.08, and # 201.11. Note further that where the first application is 
found  to be fatally defective under 
35 U.S.C. 112 because of insufficient disclosure to support an allowable 
claim,  a second design patent application filed as an alleged 
``continuation-in-part"  of the first application to supply the deficiency 
is not entitled to the benefit  of the earlier filing date. (See Hunt Co. 
v. Mallinckrodt Chemical Works, 83  USPQ 277 at 281 (2d Cir. 1949) and 
cases cited therein). See also In re Salmon  et al. 217 USPQ 981 (Fed. 
Cir. 1983). 

        Unless the filing date of an earlier application is actually 
needed,  for example, in the case of an interference or to avoid 
intervening reference,  there is no need for the examiner to make a 
determination as to whether the  requirement of 35 U.S.C. 120 is met. Note 
the holdings in In re Corba, 212  USPQ 825 (Comm'r Pat. 1981). 

        In both utility and design applications, applicants are entitled 
to  claim the benefit of the filing date of earlier applications for later 
claimed  inventions under 
35 U.S.C. 120 only when the earlier application discloses that invention 
in  the manner required by 35 U.S.C. 112, first paragraph. Thus, a claim 
including  limitations directed to the new matter added in a 
continuation-in-part application  is not entitled to the benefit of the 
filing date of the parent application. 
        Where the conditions of 35 U.S.C. 120 are met, a design 
application  may be considered a continuing application of an earlier 
utility application.  Conversely, this also applies to a utility 
application relying on the benefit  of the filing date of an earlier filed 
design application. 

        In light of the KangaROOS USA, Inc. v. Caldor Inc., 
228 USPQ 32 (Fed. Cir. 1985) and In re Berkman, 
209 USPQ 45 (CCPA 1981), the holdings in In re Campbell, 101 USPQ 406 
(CCPA  1954) are no longer controlling. 

        Note also In re Berkman, 209 USPQ 45 (CCPA 1981) where the benefit 
 of a design patent application filing date requested under 35 U.S.C. 120 
was  denied in the later filed utility application of the same inventor. 
The Court  of Customs and Patent Appeals took the position that the design 
application  did not satisfy 35 U.S.C. 112, first paragraph, as required 
under 35 U.S.C.  120. 

W 15.26       Rule 60 (37 CFR 1.60) Requirement 

Applicant is reminded of the following requirement: 

In 37 CFR 1.60 cases, applicant, in the amendment cancelling the 
non-elected  inventions, should include directions to enter "This is a [1 
**] of Application  No. [2], filed [3]" as the first sentence of the 
specification following the  preamble. 

>Examiner Note: 

In bracket 1, insert "division" or "continuation".< 


1505    Allowance and Term of Design Patent [R-1] 


35 U.S.C. 173.          Term of design patent. 

**>Patents for designs shall be granted for the term of fourteen years 
from  the date of grant.< 

37 CFR 1.155.       Issue and term of design patents. 

(a)   If, on examination, it shall appear that the applicant is entitled 
to  a design patent under the law, a notice of allowance will be sent to 
the applicant,  or applicant's attorney or agent, calling for the payment 
of the issue fee 
(w 1.18(b)). If this issue fee is not paid within 3 months of the date of 
the  notice of allowance, the application shall be regarded as abandoned. 
(b)   The Commissioner may accept the payment of the issue fee later than 
three  months after the mailing of the notice of allowance as though no 
abandonment  had ever occurred if upon petition the delay in payment is 
shown to have been  unavoidable. The petition to accept the delayed 
payment must be promptly filed  after the applicant is notified of, or 
otherwise becomes aware of, the abandonment,  and must be accompanied by 
(1) the issue fee, unless it has been previously  submitted, (2) the fee 
for delayed payment (w 1.17(l)), and (3) a showing that  the delay was 
unavoidable. Such showing must be a verified showing if made  by a person 
not registered to practice before the Patent and Trademark Office. 
(c)   The Commissioner may, upon petition, accept the payment of the issue 
 fee later than three months after the mailing of the notice of allowance 
as  though no abandonment had ever occurred if the delay in payment was 
unintentional.  The petition to accept the delayed payment must be filed 
within one year of  the date on which the application became abandoned or 
be filed within three  months of the date of the first decision on a 
petition under paragraph (b)  of this section which was filed within one 
year of the date of abandonment  of the application. The petition to 
accept the delayed payment must be accompanied  by (1) the issue fee, 
unless it has been previously submitted, (2) the fee  for unintentionally 
delayed payment (w 1.17(m)), and (3) a statement that the  delay was 
unintentional. Such statement must be a verified statement if made  by a 
person not registered to practice before the Patent and Trademark Office. 
The Commissioner may require additional information where there is a 
question  whether the abandonment was unintentional. The three-month 
period from the  date of the first decision referred to in this paragraph 
may be extended under  the provisions of w 1.136(a), but no further 
extensions under 
w 1.136(b) will be granted. Petitions to the Commissioner under 
w 1.183 to waive any time periods for requesting revival of an 
unintentionally  abandoned application will not be considered, but will be 
returned to the applicant. 
(d)   Any petition pursuant to paragraph (b) of this section not filed 
within  six months of the date of abandonment must be accompanied by a 
terminal disclaimer  with fee under w 1.321 dedicating to the public a 
terminal part of the term  of any patent granted thereon equivalent to the 
period of abandonment of the  application. The filing and issue fees for 
design applications are set forth  in 37 CFR 1.16(f) and 1.18(f). 


1509    Reissue of a Design Patent [R-2] 


        See MPEP Chapter 1400 for practice and procedure in reissue 
applications. 
        Design Reissue **>fee, see 37 CFR 1.16(h). Issue fee for issuing a 
 reissue design patent, see 37 CFR 1.18(b).< 

        The term of a design patent may not be extended by reissue, Ex 
parte  Lawrence,  ** 70 USPQ 326 (Comm'r Pats. 1946). 


1510    Reexamination 


        See MPEP Chapter 2200 for practice and procedure for reexamination 
 applications. 


1511    Protest 


        See MPEP Chapter 1900 for practice and procedure in protest. 

1512    Relationship Between Design Patent, Copyright, and Trademark 

A.  Design Patent/Copyright Overlap 

        There is an area of overlap between copyright and design patent 
statutes  where the author/inventor can secure both a copyright and a 
design patent.  Thus an ornamental design may be copyrighted as a work of 
art and may also  be subject matter of a design patent. The 
author/inventor may not be required  to elect between securing a copyright 
or a design patent, (see In re Yardley,  181 USPQ 331). In Mazer v. Stein, 
100 USPQ 325, the Supreme Court noted the  election of protection doctrine 
but did not express any view on it since a  design patent had been secured 
in the case and the issue was not before the  Court. 

B.  Inclusion of Copyright Notice 

        It is the policy of the Patent and Trademark Office to permit the 
inclusion  of a copyright notice in a design patent application, and 
thereby any patent  issuing therefrom, under the following conditions. 

        (1)   A copyright notice must be placed adjacent to the copyright 
material  and, therefore, may appear at any appropriate portion of the 
patent application  disclosure including the drawing. However, if 
appearing on the drawing, the  notice must be limited in print size from 
1/8 inch to 1/4 inch and must be  placed within the "sight" of the drawing 
immediately below the figure representing  the copyright material. If 
placed on a drawing in conformance with these provisions,  the notice will 
not be objected to as extraneous matter under 37 CFR 1.84. 
        (2)   The content of the copyright notice must be limited to only 
those  elements required by law. For example, "E 1983 John Doe" would be 
legally sufficient  under 17 U.S.C. 401 and properly limited. 

        (3)   Inclusion of a copyright notice will be permitted only if 
the  following waiver is included at the beginning (preferably as the 
first paragraph)  of the specification to be printed for the patent: 

A portion of the disclosure of this patent document contains material to 
which  a claim for copyright is made. The copyright owner has no objection 
to the  facsimile reproduction by anyone of the patent document or the 
patent disclosure,  as it appears in the Patent and Trademark Office 
patent file or records, but  reserves all other copyright rights whatsoever. 

        (4)   Inclusion of a copyright notice after a Notice of Allowance 
has  been mailed will be permitted only if the criteria of 37 CFR 1.312 
have been  satisfied. 

        Any departure from these conditions may result in a refusal to 
permit  the desired inclusion. If the waiver required under condition (3) 
above does  not include the specific language "(t)he copyright owner has 
no objection to  the facsimile reproduction by anyone of the patent 
document or the patent disclosure,  as it appears in the Patent and 
Trademark Office patent file or records, . . . ." the copyright notice 
will be objected to as improper. 

        The files of design patents D-243,821, D-243,824, and D-243,920 
show  examples of an earlier similar procedure. 

C.  Design Patent/Trademark Overlap 

        A design patent and a trademark may be obtained on the same 
subject  matter. The CCPA, in In re Mogen 
David Wine Corp., 140 USPQ 575 (CCPA 1964), later reaffirmed by the same 
court  at 152 USPQ 593 (CCPA 1967), has held that the underlying purpose 
and essence of patent rights are separate and distinct from those 
pertaining to trademarks,  and that no right accruing from one is 
dependent or conditioned by the right  concomitant to the other. 

D.  Inclusion of Trademarks in Design Patent 
Applications 

1.  Specification 

        The use of trademarks in design patent application specifications 
is  permitted under limited circumstances. See MPEP w 608.01 (v). This 
section  assumes that the proposed use of a trademark is a legal use under 
Federal trademarks  law. 

2.  Drawings 

        Where trademarks are used in the drawing disclosure and there is 
no  evidence of record that the trademark is owned by the applicant or 
assignee,  applicant should be required to establish the legal right to 
use the 

registered trademark in the design application drawing disclosure. See 
Dallas  Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 203 USPQ 161 
(2d Cir.  1979) and Coca-Cola Co. v. Gemini Rising Inc., 175 USPQ 56 
(E.D.N.Y. 1972). 

1513    Miscellaneous 


        With respect to copies of references supplied to applicant in a 
design  patent application, see MPEP 
w 707.05(a). 

        Effective May 8, 1985, the Statutory Invention Registration (SIR), 
 new 35 U.S.C. 157, and 37 CFR 1.293 - 1.297 replaced the former Defensive 
Publication  Program (37 CFR 1.139). The Statutory Invention Registration 
(SIR) Program  applies to utility, plant, and design applications. See 
MPEP Chapter 1100. 


Contents 

1601        Introduction: The Act, Scope, Type of Plants Covered 

1602        Rules Applicable 

1603        Elements of a Plant Application 

1604        Applicant, Oath 

1605        Specification and Claim 

1606        Drawings 

1607        Specimens 

1608        Examination 

1609        Report of Agricultural Research Service 

1610        The Action 

1611        Issue 

1612        UPOV Convention 


1601    Introduction: The Act, Scope, Type of Plants Covered 


        The right to a plant patent stems from: 

35 U.S.C. 161       Patents for plants. 

        Whoever invents or discovers and asexually reproduces any distinct 
 and new variety of plant, including cultivated sports, mutants, hybrids, 
and  newly found seedlings, other than a tuber propagated plant or a plant 
found  in an uncultivated state, may obtain a patent therefor, subject to 
the conditions  and requirements of this title. 

        The provisions of this title relating to patents for inventions 
shall  apply to patents for plants, except as otherwise provided. 

Asexually propagated plants are those that are reproduced by means other 
than  from seeds, such as by the rooting of cuttings, by layering, 
budding, grafting,  inarching, etc. Plants capable of stable reproduction 
are not excluded from  consideration if they have also been asexually 
reproduced. 

        With reference to tuber propagated plants, for which a plant 
patent  cannot be obtained, the term "tuber"  is used in its narrow 
horticultural sense  as meaning a short, thickened portion of an 
underground branch.  Such plants  covered by the term "tuber propagated" 
are the Irish potato and the Jerusalem  artichoke.  This exception is made 
because this group alone, among asexually  reproduced plants, is 
propagated by the same part of the plant that is sold  as food. 

        The term "plant" has been interpreted to mean "plant"  in the 
ordinary  and accepted sense and not in the strict scientific sense and 
thus excludes  bacteria: In re Arzberger, 1940 C.D. 653, 46 USPQ 32, 27 
CCPA 1315 (CCPA 1940). 
 The term "plant" thus does not include asexual propagating material, per 
se,  Ex parte Hibberd, 227 USPQ 443,447 (Bd. Pat. App. & Int. 1985). 

        An asexually reproduced plant may also be protected under 35 
U.S.C.  101, as the Plant Patent Act 
(35 U.S.C. 161) is not an exclusive form of protection which conflicts 
with  the granting of utility patents to plants, Ex parte Hibberd, 227 
USPQ 443 (Bd.  Pat. App. & Int. 1985).  Inventions claimed under 35 U.S.C. 
101 may include  the same asexually reproduced plant which is claimed 
under 35 U.S.C. 161, as  well as plant materials and processes involving 
plant materials. The filing  of a terminal disclaimer may be used in 
appropriate situations to overcome  an obviousness-type double patenting 
rejection based on claims to the asexually  reproduced plant and/or fruit 
and propagating material thereof in an application  under 35 U.S.C. 101 
and the claim to the same asexually reproduced plant in  an application 
under 35 U.S.C. 161. 

35 U.S.C. 163.          Grant. 

        In the case of a plant patent the grant shall be of the right to 
exclude  others from asexually reproducing the plant or selling or using 
the plant so  reproduced. 


1602    Rules Applicable 


37 CFR 1.161.       Rules applicable. 

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


1603    Elements of a Plant Application 


        An application for a plant patent consists of the same parts as 
other  applications and must be filed in duplicate (37 CFR 1.163(b)), but 
only one  need be signed and executed; the second copy may be a legible 
carbon copy of  the original. Two copies of color drawings must be 
submitted, 37 CFR 1.165(b). 
 The reason for thus providing an original and duplicate file is that the 
duplicate  file is utilized for submission to the Department of 
Agriculture for a report  on the plant variety, the original file being 
retained in the Patent and Trademark  Office at all times. 

        Applications for a plant patent which fail to include two copies 
of  the specification and two copies of the drawing  when in color will be 
accepted  for filing only.  The Application Division will notify the 
applicant immediately  of this deficiency and require the same to be 
rectified within one month. Failure  to do so will result in loss of the 
filing date. 


1604    Applicant, Oath 


37 CFR 1.162.       Applicant, oath or declaration. 

        The applicant for a plant patent must be the person who has 
invented  or discovered and asexually reproduced the new and distinct 
variety of plant  for which a patent is sought (or as provided in ww 1.42, 
1.43 and 1.47). The  oath or declaration required of the applicant, in 
addition to the averments  required by w 1.63, must state that he or she 
has asexually reproduced the plant. Where the plant is a newly found 
plant, the  oath or declaration must also state that it was found in a 
cultivated area. 
In an application for a plant patent, there can be joint inventors.  See 
Ex  parte Kluis, 70 USPQ 165 (Bd. App. 1945). 


1605    Specification and Claim 


35 U.S.C. 162.          Description, claim. 

        No plant patent shall be declared invalid for noncompliance with 
section  112 of this title if the description is as complete as is 
reasonably possible. 
        The claim in the specification shall be in formal terms to the 
plant  shown and described. 

37 CFR 1.163.       Specification. 

        (a)   The specification must contain as full and complete a 
disclosure  as possible of the plant and the characteristics thereof that 
distinguish the  same over related known varieties, and its antecedents, 
and must particularly  point out where and in what manner the variety of 
plant has been asexually  reproduced. In the case of a newly found plant, 
the specification must particularly  point out the location and character 
of the area where the plant was discovered. 
        (b)   Two copies of the specification (including the claim) must 
be  submitted, but only one signed oath or declaration is required. The 
second  copy of the specification may be a legible carbon copy of the 
original. 
37 CFR 1.164.       Claim. 

        The claim shall be in formal terms to the new and distinct variety 
 of the specified plant as described and illustrated, and may also recite 
the  principal distinguishing characteristics. More than one claim is not 
permitted. 
The specification should include a complete detailed description of the 
plant  and the characteristics thereof that distinguish the same over 
related known  varieties, and its antecedents, expressed in botanical 
terms in the general  form followed in standard botanical textbooks or 
publications dealing with  the varieties of the kind of plant involved 
(evergreen tree, dahlia plant,  rose plant, apple tree, etc.), rather than 
a mere broad nonbotanical characterization  such as commonly found in 
nursery or seed catalogs.  The specification should  also include the 
origin or parentage of the plant variety sought to be patented  and must 
particularly point out where; e.g., location or place of business,  and in 
what manner the variety of plant has been asexually reproduced. Where 
color is a distinctive feature of the plant, the color should be 
positively  identified in the specification by reference to a designated 
color as given  by a recognized color dictionary or color chart. 

        If the written description of a plant is deficient in certain 
respects,  a clarification or additional description of the plant, or even 
a wholesale  substitution of the original description so long as not 
totally inconsistent  and  unrelated to the original description and 
photograph of the plant, will  not constitute new matter under 35 U.S.C. 
132. (Jessell v. Newland, 195 USPQ  678, 684 (Dep. Comm'r Pat. 1977). 

        The rules on Deposit of Biological Materials, 
37 CFR 1.801-1.809, do not apply to plant patent applications in view of 
the  reduced disclosure requirements of 35 U.S.C. 162, even where a 
deposit of a  plant has been made in conjunction with a utility 
application (35 U.S.C. 101). 
        A plant patent is granted only on the entire plant. It, therefore, 
 follows that only one claim is necessary and only one is permitted.  A 
method  claim in a plant patent application is improper. 


1606    Drawings 


37 CFR 1.165.     Plant drawings. 

        (a)   Plant patent drawings should be artistically and competently 
 executed and must comply with the requirements of w 1.84.  View numbers 
and  reference characters need not be employed unless required by the 
examiner. 
 The drawing must disclose all the distinctive characteristics of the 
plant  capable of visual representation. 

        (b)   The drawing may be in color and when color is a 
distinguishing  characteristic of the new variety, the drawing must be in 
color.  Two copies  of color drawings or color photographs must be submitted. 

All color drawings should be so mounted as to provide a 2-inch margin at 
the  top for office markings when the patent is printed. 


1607    Specimens 


37 CFR 1.166    . Specimens. 

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

Specimens of the plant variety, its flower or fruit, should not be 
submitted  unless specifically called for by the examiner. 


1608    Examination 


37 CFR 1.167.       Examination. 

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

        (b) Affidavits or declarations from qualified agricultural or 
horticultural  experts regarding the novelty and distinctiveness of the 
variety of plant may  be received when the need of such affidavits or 
declarations is indicated. 
The authority for submitting plant applications to the Department of 
Agriculture  for report is given in: 

Executive Order No. 5464, October 17, 1930. Facilitating the consideration 
 of applications for plant patents. 

        I, Herbert Hoover, President of the United States of America, 
under  the authority conferred upon me by act of May 23, 1930 (Public No. 
245) [now  35 U.S.C. 164], entitled "An act to provide for plant patents," 
and by virtue  of all other powers vested in me relating thereto, do 
hereby direct the Secretary  of Agriculture: (1) to furnish the 
Commissioner of Patents such available information  of the Department of 
Agriculture, or (2) to conduct through the appropriate  bureau or division 
of the department such research upon special problems, or 
(3) to detail to the Commissioner of Patents such officers and employees 
of  the department, as the Commissioner may request for the purpose of 
carrying  said act into effect. 

35 U.S.C. 164     .   Assistance of Department of Agriculture. 

        The President may by Executive order direct the Secretary of 
Agriculture,  in accordance with the request of the Commissioner, for the 
purpose of carrying  into effect the provisions of this title with respect 
to plants (1) to furnish  available information of the Department of 
Agriculture, (2) to conduct through  the appropriate bureau or division of 
the Department research upon special  problems, or (3) to detail to the 
Commissioner officers and employees of the  Department. 

Plant applications are subject to the same examination process as any 
other  national application. As such, the statutory provisions with regard 
to patentable  subject matter, utility, novelty, obviousness, disclosure, 
and claim specificity  requirements apply (35 U.S.C. 101, 102, 103, and 
112). The sole exception in 
 terms of applicability of these statutory provisions is set forth in 35 
U.S.C.  162. 

        The prior art considered by the examiner is developed by a search 
of  appropriate subclasses of the United States patent classification 
system as  well as patent and nonpatent literature data bases. Where 
appropriate, a report  may be obtained from the Agricultural Research 
Service, Horticultural Research  Branch, Department of Agriculture. 


1609    Report of Agricultural Research Service 


        Where the examiner considers it necessary to the examination of 
the  plant patent application, a duplicate file and drawing of the 
application are  forwarded to the National Program Leader for 
Horticultural Crops, Agricultural  Research Service (ARS), U.S. Department 
of Agriculture, along with a request  for a report as to whether the plant 
variety disclosed is new and distinct  over known plant varieties. 

        The report of the ARS is usually accompanied by the duplicate file 
 and drawing. The report is in duplicate, the original being signed by the 
Chief  of the Branch. The original copy of the report is retained in the 
duplicate  file.  As the report is merely advisory to the Office, it is 
not a part of  the official record of the application and is, therefore, 
not given a paper  number and is not placed in the original file. The 
carbon copy of the report  is customarily utilized by the examiner in the 
preparation of his action on  the case and is also retained in the 
duplicate file. 

        The report may embody criticisms and objections to the disclosure, 
 may offer suggestions for correction of such, may require specimens of 
the  plant, flower, or fruit thereof, may require affidavits of recognized 
authorities  to corroborate the allegations of the applicant as to certain 
or all of the  distinguishing features of the variety of plant sought to 
be patented, may  state that the plant will be inspected by a field 
representative of the Department  of Agriculture, etc., or the report may 
merely state that: 

        "Examination of the specification submitted indicates that the 
variety  described is not identical with others with which our specialists 
are familiar." 


1610    The Action 


        The action on the application by the examiner will include all 
matters  as provided for in other types of patent applications.  See 37 
CFR 1.161. 
        The action may include so much of the report of the ARS as the 
examiner  deems necessary, or may embody no part of it.  In the event of 
an interview,  the examiner, in his discretion, may show the entire report 
to the inventor  or attorney. 

        With reference to the examination of the claim, the language must 
be  such that it is directed to the "new and distinct variety of plant." 
This is  important as under no circumstance should the claim be directed 
to a new variety  of flower or fruit in contradistinction to the plant 
bearing the flower or  the tree bearing the fruit. This is in spite of the 
fact that it is accepted  and general botanical parlance to say __ A 
variety of apple or a variety of  blackberry __ to mean a variety of apple 
tree or a variety of blackberry plant. 
        Where the application may be allowed a claim which recites, for 
example  __ A new variety of apple characterized  by - may be amended by 
the insertion  of __ tree __ after "apple"  by an examiner's amendment. 

        By the same token, the title of the invention must relate to the 
entire  plant and not to its flower or fruit, thus: Apple Tree, Rose 
Plant. 
        Care should also be exercised that the specification does not 
contain  unwarranted advertising, for example, "the disclosed plant being 
grown in the  XYZ Nurseries of Topeka, Kansas."  It follows, also, that in 
the drawings any  showing in the background of a plant, as a sign carrying 
the name of an individual,  nursery, etc., is objectionable and deletion 
thereof is required. Nor should  the specification include laudatory 
expressions, such as, "The rose is prettier  than any other rose."  Such 
expressions are wholly irrelevant.  Where the fruit  is described, 
statements in the specification as to the character and quality  of 
products made from the fruit are not necessary and should be deleted. 
        The Office action is typed with an additional copy which is placed 
 in the duplicate file.  The papers in the duplicate file are not noted on 
the  index at the back of the duplicate file wrapper. 

        When it appears that the application must be resubmitted to the 
A.R.S.,  as when the report indicates that the duplicate file and drawing 
are retained,  applicant is notified that response papers must be in 
duplicate. 

        Frequently, the ARS in its report states that in view of  its lack 
 of sufficient information, data, specimens, etc., its specialists are 
unable  to determine whether the variety of plant under consideration is 
new and distinct  and suggests that the Patent and Trademark Office 
require the applicant to  submit affidavits or declarations from 
recognized experts as to the newness  of the variety. See 37 CFR 1.167(b). 

        The report of the ARS is not in the nature of a publication and 
matters  raised therein within the personal knowledge of the specialists 
of the ARS  are not sufficient basis for a rejection unless it is first 
ascertained by  the examiner that the same can be supported by affidavits 
by said specialists 
(37 CFR 1.107(b)). See Ex parte Rosenberg, 46 USPQ 393 (Bd. App. 1939). 

1611    Issue 


        The preparation of a plant patent application for issue involves 
the  same procedure as for other applications (37 CFR 1.161), with the 
exception  that where there are colored drawings, the better one of the 
two judged, for  example, by its sharpness or cleanliness is selected, and 
to this one the issue  slip is affixed.  The duplicate file is retained in 
the examining group until  after the application has been patented.  At 
certain periods thereafter, such  duplicate files are collected and sent 
to the abandoned files for storage. 
        The International Patent Classification symbols, most  recent 
edition,  should be placed on the Issue Classification slip of all plant 
patent applications  being sent to issue. 

        All plant patent applications should contain an abstract when 
forwarded  to the Patent Issue Division. 


1612    UPOV Convention 


        On November 8, 1981, the 1978 text of the "International 
Convention  for the Protection of New Varieties of Plants" (generally 
known by its French  acronym as the UPOV Convention) took effect in the 
United States and two other  states, Ireland and New Zealand.  As of March 
1, 1990, 19 states were party  to the UPOV Convention:  They are 
Australia, Belgium, Denmark, Federal Republic  of Germany, France, 
Hungary, Israel, Italy, Japan, Netherlands, New Zealand,  Poland, South 
Africa, Spain, Sweden, Switzerland, United Kingdom, and United  States of 
America.  Over time, most states are expected to adhere to the 1978  text. 

        Both the 1961 and 1978 texts guarantee to plant breeders in each 
member  state both national treatment and the right of priority in all 
other member  states.  In many states, new plant varieties are protected 
by breeders' rights  laws rather than patent laws.  Accordingly, the Paris 
(Industrial Property)  Convention cannot always be relied on to provide 
these and other rights. 
        Insofar as the patenting of asexually reproduced plants in the 
United  States is concerned, both national treatment and the right of 
priority have  been accorded to foreign plant breeders since enactment of 
the plant patent  law in 1930 (now 35 U.S.C. 161-164).  The UPOV 
Convention does not yet apply  to the protection of sexually reproduced 
plants under the Plant Variety Protection  Act, 7 U.S.C. 232 et seq., 
administered by the Department of Agriculture. 
        Application of the UPOV Convention in the United States does not 
affect  the examination of plant patent applications, except in one 
instance.  It is  now necessary as a condition for receiving a plant 
patent to register a variety  name for that plant. 

        The registration process in general terms consists of inclusion of 
 a proposed variety name in the plant patent application. The examiner 
must  evaluate the proposed name in light of UPOV Convention, Article 13. 
Basically,  this Article requires that the proposed variety name not be 
identical with  or confusingly similar to other names utilized in the 
United States or other  UPOV member countries for the same or a closely 
related species.  In addition,  the proposed name must not mislead the 
average consumer as to the characteristics,  value, or identity of the 
patented plant. Ordinarily, the name proposed for  registration in the 
United States must be the same as the name registered in  another member 
state of UPOV.   Inclusion of the variety name in the patent  comprises 
its registration.  Rules of Practice are now being developed for 
administering this variety naming requirement. 



Contents 

1701        Office Personnel Not To Express Opinion on Validity or 
            Patentability of Patent 

1701.01     Office Personnel Not To Testify 

1702        Restrictions on Former Examiners 

1703        The Official  Gazette 

1704        Application Records and Reports 

1705        Examiner Docket, Time, and Activity Recordation 

1706        Disclosure Documents 

1711        U.S.-Philippines Search Exchange 

>1720       Dissemination of Court and Board Decisions< 

>1721       Treatment of Court and Board Decisions Affecting 
            Patent and Trademark Office Policy and Practice< 


1701    Office Personnel Not to Express 

        Opinion on Validity or Patentability 
        of Patent 

        Every patent is presumed to be valid, 35 U.S.C. 282, first 
sentence.  Public policy demands that every employee of the Patent and 
Trademark Office  refuse to express to any person any opinion as to the 
validity or invalidity  of, or the patentability or unpatentability of any 
claim in any U.S. patent,  except to the extent necessary to carry out (a) 
examination of an application  seeking to reissue the patent, (b) a 
reexamination proceeding to reexamine  the patent, or (c) an interference 
involving the patent. 

        The question of validity or invalidity is otherwise exclusively a 
matter  to be determined by a court.  Members of the patent examining 
corps are cautioned  to be especially wary of any inquiry from any person 
outside the Patent and  Trademark Office, including an employee of another 
Government agency, the answer  to which might indicate that a particular 
patent should not have issued. 
        When a field of search for an invention is requested, examiners 
should  routinely inquire whether the invention has been patented in the 
United States. 
 If the invention has been patented, no field of search should be 
suggested. 

        Employees of the Patent and Trademark Office, particularly patent 
examiners  who examined an application which matured into a patent or a 
reissued patent  or who conducted a reexamination proceeding, should not 
discuss or answer inquiries  from any person outside the Patent and 
Trademark Office as to whether or not  a certain reference or other 
particular evidence was considered during the  examination or proceeding 
and whether or not a claim would have been allowed  over that reference or 
other evidence had it been considered during the examination  or 
proceeding. Likewise, employees are cautioned against answering any 
inquiry  concerning any entry in the patent or reexamination file, 
including the extent  of the field of search and any entry relating 
thereto. The record of the file  of a patent or reexamination proceeding 
must speak for itself. 

        Practitioners can be of material assistance in this regard by 
refraining  from making improper inquiries of members of the patent 
examining corps. Inquiries  from members of the public relating to the 
matters discussed above must of  necessity be refused and such refusal 
should not be considered discourteous  or an expression of opinion as to 
validity or patentability. 


1701.01       Office Personnel Not To Testify 


37 CFR 15a.l.     Scope 

        (a)   This part supplements 15 CFR Part 15a and prescribes the 
policies  and procedures of the Office with respect to the testimony of 
Office employees  as witnesses in legal proceedings and the production of 
documents of the Office  for use in legal proceedings pursuant to a 
request, order, or subpoena. This  part is issued pursuant to 15 CFR 
15a.l(e) and is to be construed consistent  with 15 CFR 15a. 

        (b)   This part does not apply to any legal proceeding in which an 
 Office employee is to testify, while on leave status, as to facts or 
events  that are in no way related to the official business of the Office. 

        (c)   This part is intended to ensure the orderly execution of the 
 affairs of the Office and not to impede any legal proceeding and in no 
way  affects the rights and procedures governing public access to records 
pursuant  to the Freedom of Information Act or the Privacy Act. See 15 CFR 
15a.4 and  37 CFR 1.15. 

37 CFR 15a.2.       Definitions. 

        For the purpose of this part: 

        (a) "Commissioner" means Assistant Secretary and Commissioner of 
Patents  and Trademarks. 

        (b) "Demand" means a request, order, or subpoena for testimony or 
documents  for use in a legal proceeding. 

        (c) "Document" means any record, paper, and other property held by 
 the Office, including without limitation official patent and trademark 
files,  official letters, telegrams, memoranda, reports, studies, calendar 
and diary  entries, maps, graphs, pamphlets, notes, charts, tabulations, 
analyses, statistical  or informational accumulations, any kind of 
summaries of meetings and conversations,  film impressions, magnetic 
tapes, and sound or mechanical reproductions. 
        (d) "Legal proceeding" means a proceeding before a tribunal 
constituted  by law, including a court, an administrative body or 
commission, an administrative  law judge or hearing officer or any 
discovery proceeding in support thereof. 

        (e) "Office" means Patent and Trademark Office. 

        (f) "Office employee" means any officer or employee of the Office. 


        (g) "Official business" means the authorized business of the 
Office. 

        (h) "Solicitor"  means the chief legal officer of the Office or 
other  Office employee to whom the Solicitor has delegated authority to 
act under  this part. 

        (i) "Testimony" means a statement given in person before a 
tribunal  or by deposition for use before the tribunal or any other 
statement given for  use before a tribunal in a legal proceeding, 
including an affidavit, declaration  under 35 U.S.C. 25, or declaration under 
28 U.S.C. 1746. 

        (j) "United States" means the Federal Government, its departments 
and  agencies, and individuals acting on behalf of the Federal Government. 

37 CFR 15a.3.       Office policy. 

        The Office policy is that its documents will not be voluntarily 
produced  and Office employees will not voluntarily appear as witnesses or 
give testimony  in a legal proceeding. The reasons for this policy 
include: 

        (a) To conserve the time of Office employees for conducting 
official  business. 

        (b) To minimize the possibility of involving the Office in 
controversial  or other issues which are not related to the mission of the 
Office. 
        (c) To prevent the possibility that the public will misconstrue 
variances  between personal opinions of Office employees and Office 
policy. 

        (d) To avoid spending the time and money of the United States for 
private  purposes. 

        (e)   To preserve the integrity of the administrative process, 
minimize  disruption of the decision-making process, and prevent 
interference with the  Office's administrative functions. 

37 CFR 15a.4.       Testimony or production of documents; general rule 
        (a)   No Office employee shall give testimony concerning the 
official  business of the Office or produce any document in any legal 
proceeding without  the prior authorization of the Solicitor. Where 
appropriate, an Office employee  may be instructed in writing by the 
Commissioner, Solicitor, or other appropriate  Office employee not to give 
testimony or produce a document. Without prior  approval, no Office 
employee shall answer inquiries from a person not employed  by the 
Department of Commerce regarding testimony or documents subject to a 
demand or a potential demand under the provisions of this Part. All 
inquiries  involving a demand or potential demand on an Office employee 
shall be referred  to the Solicitor. 

        (b)   A certified copy of a document, not otherwise available 
under  Chapter I of this Title, will be provided for use in a legal 
proceeding upon  written request and payment of applicable fees required 
by law. 

        (c)(1) Request for testimony or document. A request for testimony 
of  an Office employee or document shall be mailed or hand-delivered to 
the Office  of the Solicitor. The mailing address of the Office of the 
Solicitor is Box  8, Patent and Trademark Office, Washington, D.C. 20231. 

(2)   Subpoenas. A subpoena for testimony by an Office employee or a 
document  shall be served in accordance with the Federal Rules of Civil or 
Criminal Procedure  as appropriate, or applicable state procedure, and a 
copy of the subpoena shall  be sent to the Solicitor. 

(3)   Affidavit. Every request and subpoena shall be accompanied by an 
affidavit  or declaration under 28 U.S.C. 1746 or, if an affidavit or 
declaration is not  feasible, a written statement setting forth the title 
of the legal proceeding,  the forum, the requesting party's interest in 
the legal proceeding, the reasons  for the request or subpoena, a showing 
that the desired testimony or document  is not reasonably available from 
any other source, and if testimony is requested,  the intended use of the 
testimony, a general summary of the testimony desired,  and a showing that 
no document could be provided and used in lieu of testimony.  The purpose 
of this requirement is to permit the Solicitor to make an informed 
decision as to whether testimony or production of a document should be 
authorized. 

        (d)   Any Office employee who is served with a demand shall 
immediately  notify the Office of the Solicitor. 

        (e)   The Solicitor may consult or negotiate with an attorney for 
a  party or the party, if not represented by an attorney, to refine or 
limit a  demand so that compliance is less burdensome or obtain 
information necessary  to make the determination required by paragraph (c) 
of this section. Failure  of the attorney or party to cooperate in good 
faith to enable an informed determination  to be made under this part may 
serve as the basis for a determination not to  comply with the demand. 

        (f)   A determination under this part to comply or not to comply 
with  a demand is not an assertion or waiver of privilege, lack of 
relevance, technical  deficiencies or any other ground for noncompliance. 
The Commissioner reserves  the right to oppose any demand on any legal 
ground independent of any determination  under this part. 

37 CFR 15a.3.       Testimony of Office employees in proceedings involving 
 the United States. 

        (a)   An Office employee may not testify as an expert or opinion 
witness  for any party other than the United States. 

        (b)   When appropriate, the Solicitor may authorize an Office 
employee  to give testimony as an expert or opinion witness on behalf of 
the United States.  Expert or opinion testimony on behalf of the United 
States will not be authorized  in any legal proceeding involving the 
validity or enforceability of a patent  or registered trademark. 

        (c)   Whenever, in any legal proceeding involving the United 
States,  a request is made by an attorney representing or acting under the 
authority  of the United States, the Solicitor will make all necessary 
arrangements for  the Office employee to give testimony on behalf of the 
United States. Where  appropriate, the Solicitor may require reimbursement 
to the Office of the expenses  associated with an Office employee giving 
testimony on behalf of the United  States. 

37 CFR 15a.6    . Legal proceedings between private litigants 

        (a)   Testimony by an Office employee and production of documents 
in  a legal proceeding not involving the United States shall be governed 
by w 15a.4. 

        (b)   If an Office employee is authorized to give testimony in a 
legal  proceeding, the testimony, if otherwise proper, shall be limited to 
facts within  the personal knowledge of the Office employee. An Office 
employee is prohibited  from giving expert or opinion testimony, answering 
hypothetical or speculative  questions, or giving testimony with respect 
to subject matter which is privileged.  If an Office employee is 
authorized to testify in connection with the employee's  involvement or 
assistance in a quasi-judicial proceeding which took place before  the 
Office, that employee is further prohibited from giving testimony in 
response  to questions which seek: 

(1)   Information about that employee's: 

(i)     Background. 

(ii)    Expertise. 

(iii)     Qualifications to examine or otherwise consider a  particular 
patent  or trademark application. 

(iv)    Usual practice or whether the employee followed a  procedure set 
out  in any Office manual of practice in  a particular case. 

(v)     Consultation with another Office employee. 

(vi)    Understanding of: 

(A)   A patented invention, an invention sought to be patented, or patent 
application,  patent, reexamination or interference file. 

(B)   Prior art. 

(C)   Registered subject matter, subject matter sought to be registered, 
or  a trademark application, registration, op position, cancellation, 
interference  or concurrent use file. 

(D)   Any Office manual of practice. 

(E)   Office regulations. 

(F)   Patent, trademark, or other law. 

(G)   The responsibilities of another Office employee. 

(vii)     Reliance on particular facts or arguments. 

(2)   To inquire into the manner in and extent to which the employee 
considered  or studied material in performing the quasi-judicial function. 

(3)   To inquire into the bases, reasons, mental processes, analyses, or 
conclusions  of that Office employee in performing the quasi-judicial 
function. 
37 CFR 15a.7    . Procedures when an Office employee receives a subpoena. 
        (a)   Any Office employee who receives a subpoena shall 
immediately  forward the subpoena to the Office of the Solicitor. The 
Solicitor will determine  the extent to which an Office employee will 
comply with the subpoena. 
        (b)   If the Office employee is not authorized to comply with the 
subpoena,  the Office employee shall appear at the time and place stated 
in the subpoena,  produce a copy of Part 15a of Title 15 and a copy of 
this part, and respectfully  refuse to provide any testimony or produce 
any document. United States ex rel.  Touhy v. Ragen. 340 U.S. 462 (1951). 

        (c)   When necessary or appropriate, the Solicitor will request 
assistance  from the Department of Justice or a U.S. Attorney or otherwise 
assure the presence  of an attorney to represent the interests of the 
Office or an Office employee. 

        It is the policy of the Patent and Trademark Office that its 
employees,  including patent examiners, will not appear as  witnesses or 
give testimony  in legal proceedings, except under the conditions 
specified in 37 CFR Part  15a. Any employee who testifies contrary to this 
policy will be dismissed or  removed. The reasons for this policy are set 
out in 37 CFR 15a.3. 

        Whenever an employee of the Patent and Trademark Office, including 
 a patent examiner, is asked to testify or receives a subpoena, the 
employee  shall immediately notify the Office of the Solicitor.  Inquiries 
requesting  testimony shall be also referred immediately to the Office of 
the Solicitor. 

        Patent examiners and other Patent and Trademark Office employees 
performing  or assisting in the performance of quasi-judicial functions, 
are forbidden  to testify as experts or to express opinions as to the 
validity of any patent. 

        Any individual desiring the testimony of an employee of the Patent 
 and Trademark Office, including the testimony of a patent examiner or 
other  quasi-judicial employee, must comply with the provisions of 37 CFR 
Part 15a. 

        A request for testimony of an employee of the Patent and Trademark 
 Office should be made to the Office of the Solicitor at least 10 working 
days  prior to the date of the expected testimony. 

        If an employee is authorized to testify, the employee will be 
limited  to testifying about facts within the employee's personal 
knowledge. Employees  are prohibited from giving expert or opinion 
testimony. Fischer & Porter Co.  v. Corning Glass Works, 61 F.R.D. 321, 
181 USPQ 329 (E.D. Pa. 1974). Likewise,  employees are prohibited from 
answering hypothetical or speculative questions,  In re Mayewsky, 162 USPQ 
86, 89 (E.D. Va. 1969) (deposition of an examiner  must be restricted to 
relevant matters of fact and must avoid any hypothetical  or speculative 
questions or conclusions based thereon); ShafferTool Works v.  Joy Mfg. 
Co., 167 USPQ 170 (S.D. Tex. 1970) (deposition of examiner should  be 
limited to matters of fact and must not go into hypothetical or 
speculative  areas or the bases, reasons, mental processes, analyses, or 
conclusions of  the examiner in acting upon a patent application). 
Employees will not be permitted  to give testimony with respect to subject 
matter which is privileged. Several  court decisions limit testimony with 
respect to quasi-judicial functions performed  by employees. Those 
decisions include United States v. Morgan, 313 U.S. 409,  422 (1941) 
(improper to inquire into mental processes of quasi-judicial officer  or 
to examine the manner and extent to which the officer considered an 
administrative  record); Western Electric Co. v. Piezo Technology, Inc., 
860 F.2d 428, 8 USPQ  2d 1853 (Fed. Cir. 1988) (patent examiner may not be 
compelled to answer questions  which probe the examiner's technical 
knowledge of the subject matter of a patent);  McCulloch Gas Processing 
Co. v. Department of Energy, 650 F.2d 1216, 1229 (Temp.  Emer. Ct. App. 
1981) (discovery of degree of expertise of individuals performing 
governmental functions not permitted); In re Nilssen, 851 F.2d 1401, 7 
USPQ 2d 1500 (Fed. Cir. 1988) (technical or scientific qualifications of 
examiners-in-chief are not legally relevant in appeal under 35 U.S.C. 134 
since  board members need not be skilled in the art to render obviousness 
decision); 
 Lange  v. Commissioner, 352 F. Supp. 166, 
176 USPQ 162 (D.D.C. 1972) (technical qualifications of examiners-in-chief 
 not relevant in 35 U.S.C. 145 action). 

        In view of the discussion above, if an employee is authorized to 
testify  in connection with the employee's involvement or assistance in a 
quasi-judicial  proceeding which took place before the Patent and 
Trademark Office, the employee  will not be permitted to give testimony in 
response to questions which seek: 

        (1)   Information about that employee's: 

        (A)   Background. 

        (B)   Expertise. 

        (C)   Qualifications to examine or otherwise consider a 
particular  patent or trademark application. 

        (D)   Usual practice or whether the employee followed a  procedure 
 set out in any Office  manual of practice (including the MPEP or TMEP) in 
a  particular case. 

        (E)   Consultation with another Office employee. 

        (F)   Understanding of: 

        (i)   A patented invention, an invention sought to be  patented, 
or  patent application, patent, reexamination or interference file. 

        (ii)    Prior art. 

        (iii)     Registered subject matter, subject matter sought to be 
registered,  or a trademark application, registration, opposition, 
cancellation, interference,  or concurrent use file. 

        (iv)    Any Office manual of practice. 

        (v)   Office regulations. 

        (vi)    Patent, trademark, or other law. 

        (vii)     The responsibilities of another Office employee. 
        (G)   Reliance on particular facts or arguments. 

        (2)   To inquire into the manner in and extent to which the 
employee  considered or studied material in performing a quasi-judicial 
function. 
        (3)   To inquire into the bases, reasons, mental processes, 
analyses,  or conclusions of that Office employee in performing the 
quasi-judicial function. 
        Any request for testimony addressed or delivered to the Office of 
the  Solicitor shall comply with 37 CFR 15a.4(c). All requests must be in 
writing. 
 The need for a subpoena may be obviated where the request complies with 
37  CFR 15a.4(c) if the party requesting the testimony further meets the 
following  conditions: 

        (1)   The party requesting the testimony identifies the civil 
action  or other legal proceeding for which the testimony is being taken. 
The identification  shall include: 

        (a)   the style of the case, 

        (b)   the civil action number, 

        (c)   the district in which the civil action is pending, 
        (d)   the judge assigned to the case, and 

        (e)   the name, address, and telephone number of counsel  for all 
parties  in the civil action. 

        (2)   The party agrees not to ask questions seeking in- formation 
which  is precluded by 37 CFR 15a.6(b). 

        (3)   The party shall comply with applicable provisions of the 
Federal  Rules of Civil Procedure, including Rule 30, and give 10 working 
days notice  to the Office of the Solicitor prior to the date a deposition 
is desired. Fifteen  working days notice is required for any deposition 
which is desired to be taken  between November 15 and January 15. 

        (4)   The party agrees to notice the deposition at a place 
convenient  to the Patent and Trademark Office. The Conference Room in the 
Office of the  Solicitor is deemed to be a place convenient to the Office. 

        (5)   The party agrees to supply a copy of the transcript of the 
deposition  to the Patent and Trademark Office for its records. 

        Absent a written agreement meeting the conditions specified in 
paragraphs 
(1) through (5), a party must comply with the precise terms of 37 CFR 
15a.4(c)  and the Patent and Trademark Office will not permit a deposition 
without issuance  of a subpoena. 


1702    Restrictions on Former Examiners 


37 CFR 10.10    .   Restrictions on practice in patent cases. 

        (a)   Only practitioners who are registered under w 10.6 or 
individuals  given limited recognition under w 10.9 will be permitted to 
prosecute patent  applications of others before the Office. 

        (b)   No individual who has served in the patent examining corps 
of  the Office may practice before the Office after termination of his or 
her service,  unless he or she signs a written undertaking. 

(1)   Not to prosecute or aid in any manner in the prosecution of any 
patent  application pending in any patent examining group during his or 
her period  of service therein, and 

(2)   Not to prepare or prosecute or to assist in any manner in the 
preparation  or prosecution of any patent application of another (i) 
assigned to such group  for examination and (ii) filed within two years 
after the date he or she left  such group, without written authorization 
of the Director. Associated and related  classes in other patent examining 
groups may be required to be included in  the undertaking or designated 
classes may be excluded from the undertaking. 
        When an application for registration is made after resignation 
from  the Office, the applicant will not be registered if he or she has 
prepared  or prosecuted or assisted in the preparation or prosecution of 
any patent application  as indicated in the paragraph. Knowingly preparing 
or prosecuting or providing assistance in the preparation or prosecution 
of any patent  application contrary to the provisions of this paragraph 
shall constitute misconduct  under w 10.23(c)(13) of this part. 

        (c) A practitioner who is an employee of the Office cannot 
prosecute  or aid in any manner in the prosecution of any patent 
application before the  Office. 

        (d) Practice before the Office by Government employees is subject 
to  any applicable conflict of interest laws, regulations, or codes of 
professional  responsibility. 

        See also MPEP w 309. 


1703    The Official Gazette 


        The Patent Official Gazette reports every Tuesday the patents and 
design  patents issued and defensive publications published on that day. 
As to each  patent, the following information is given: 

        (1) the name and (2) the city and state of residence of the 
applicant  with the Post Office address in the case of unassigned patents, 
(3) the same  data for the assignee, if any, (4) the filing date, (5) the 
serial number of  the application, (6) the patent number, (7) the title of 
the invention, (8)  the number of claims, (9) the U.S. classification by 
class and subclass, (10)  a selected figure of the drawing, if any, except 
in the case of a plant patent, 
(11) 
a claim or claims, (12) international classification, 
(13) U.S. patent application data, if any, and (14) foreign priority 
application  data, if any.  In the case of a reissue patent, there are 
published the additional  data of the number and date of the original 
patent and original application. 
        The Patent Official Gazette also includes notices of patent and 
trademark  suits, indexes of patents, disclaimers filed, Certificates of 
Correction issued,  list of patents available for license or sale, and 
general information such  as orders, notices, changes in rules, changes in 
classification, certain adverse  decisions in interferences, the condition 
of work in the Office, disbarment,  and registration of attorneys, and 
notices to parties not reached by mail. 
        Trademark Official Gazette.  The official journal of the Patent 
and  Trademark Office relating to trademarks is published every Tuesday. 
It contains  an illustration of each trademark published for opposition, a 
list of trademarks  registered, classified list of registered trademarks, 
and Patent and Trademark  Office notices. 

        Orders should be addressed and remittances made payable to 
Superintendent  of Documents, U.S. Government Printing Office, Washington, 
D.C. 20402. 

1704    Application Records and Reports 


        The PALM (Patent Application Locating and Monitoring) System is 
the  automated data management system used by the Patent and Trademark 
Office for  the retrieval and/or on-line updating of the computer record 
of each patent  application. The PALM System also maintains examiner time, 
activity, docket,  and clerical backlog records. 

        Information retrieval from PALM is by means of video display 
terminals.  Information update is by means of video display transactions 
and, predominantly,  by means of transactions entered via bar code readers 
(BCR). Among other items,  classification, examiner docket, attorney, 
inventor, and prosecution history  data as well as the location of each 
application can be retrieved and updated  online with PALM. 

DOCKET REPORTS 

        The recording of changes to examiner dockets is accomplished by 
PALM  simultaneously with the recording of incoming and outgoing 
communications,  transfers of applications to and from dockets, and other 
types of updating  of the application record.  The status of each 
examiner's docket can be determined  by means of online video display 
transactions and is supplemented by periodic  printed reports. Docket 
reports that are generated by PALM include the individual  examiner; new, 
special, and amended docket which lists applications in priority  order; 
the individual examiner rejected application docket; the individual 
examiner new application profile, which lists the totals of new 
applications  in each docket, sorted by month of filing; and various 
summaries of the above  reports at the group art unit, group, and corps 
levels. 

 TIME AND ACTIVITY REPORTS 

        All reporting of examiner time and activity is on a biweekly 
basis.  Each examiner's examining and non-examining time, as listed on the 
examiners'  Biweekly Time Worksheet, PTO-690E, is entered into PALM for 
use in the computation  of productivity data. The biweekly reports 
produced include the individual  examiner Time and Activity Report which 
lists, by serial number, all applications  for which actions have been 
counted during the biweekly period. The type of  action counted for each 
application is also indicated on the report. This report  also includes 
examiner time data, an action summary, 
and cumulative summaries to date for the current quarter and fiscal year. 
 Various summary reports at the group art unit, group, and corps levels 
are  also produced. 


1705    Examiner Docket, Time, and Activity 

        Recordation 

COUNTING OF ACTIONS 

        Actions prepared by examiners are submitted to their respective 
docket  clerks for counting. (See "Types of Action" and "Actions Not 
Counted" below  which distinguishes between outgoing communications that 
are considered to  be "actions" from those that are not).  With each 
action, the examiner submits  an Examiner's Case Action Worksheet, 
PTO-1472, upon which he/she indicates  the type of action being taken. The 
docket clerk, thereafter, updates the PALM  record of the application and 
the examiner's production record by entry of  the appropriate online bar 
code reader transaction. 

PROCEDURES FOR REPORTING AN 
EXAMINER'S  ACTION 

        1.  The Examiner Case Action Worksheet, PTO-1472, is filled out by 
 the Examiner and attached to the case for processing by the docket clerk. 
        2.  The docket clerk checks the worksheet to verify that the 
Examiner  provided all necessary information relating to that action. 

        3.  The docket clerk places the count date of the action on the 
Contents  flap of the file wrapper. 

        4.  The docket clerk will enter the examiner's action for the case 
 directly into PALM by using a Bar Code Reader (BCR). 

        5.  Each examiner's action reported to the PALM system will be 
listed  by serial number on the biweekly Examiner's Time and Activity 
Report. 
        6.  The Examiner should check his/her Biweekly Examiner Time and 
Activity  Report to verify that all cases worked on for the biweekly 
report period are  properly listed. 

TYPES OF ACTION TO BE INDICATED ON 
 EXAMINER'S CASE ACTION WORKSHEET, PTO-1472 

        1.  Nonfinal 

        2.  Restriction/Election Only 

a. __ This is not an action on the merit.  Other time credit is given for 
time  spent. 

        3.  Final Rejection 

        4.  Ex parte Quayle 

        5.  Allowance 

        6.  Miscellaneous Action 

a. __ This type of action is used when a response period        is set and 
 the other types of actions listed on the worksheet are not appropriate. 
        7.  Advisory Action After Final Rejection 

        8.  Interference 

a. __ For Interference Memo (PTO-850) and Decision on Motion Mark 
Interference. 
b. __ When an examiner issues an action; e.g., nonfinal and concurrently 
an  initial interference memo (PTO- 850) the examiner will complete a 
worksheet  indicating; e.g., nonfinal and another worksheet indicating an 
interference  action. 

c. __ A worksheet should be filled out for patented cases placed into 
interference. 
        9.  Examiner's Answer 

a. __ If a supplemental or second Examiner's Answer  is written, the 
action  will be counted, but no disposal credit will be received. 

b. __ If prosecution is continued, after a Board of Appeals or a Court 
Decision,  the examiner marks the worksheet, e.g., NONFINAL with the next 
consecutive  action number. 

        10. Suspension 

a.__This will give a miscellaneous action credit on the Biweekly Report. 
It  will also be recorded in PALM as a miscellaneous Office action and a 
letter  of suspension. 

        11. Allowance After Examiner's Answer, Board of Patent Appeals and 
 Interferences or Court Decision 

a. __ This is not a disposal credit and is indicated as a "noncounter" on 
the  biweekly Examiners' Time and Activity Report. 

b. __ Statutory Invention Registration disposal credit only after a first 
action  on the merits. 

        12. Abandonment (Failure to Respond to Office 
Action) 

a. __ The actual date of abandonment is the date the Office action 
response  period expired. See MPEP w 711.04(a). 

b. __ The action number reported should be the action number of the last 
Office  action to which the applicant has failed to respond. 

        13. Express Abandonment 

a. __ The examiner will automatically be credited with a nonmerit Office 
action  for acknowledging the Express Abandonment and an abandonment 
(disposal) credit. 
b. __ The actual date of abandonment will be the date of recognition of 
the  letter.  See MPEP 
w 711.01. 

        14. Abandonment After Examiner's Answer, Board of Patent Appeals 
and  Interferences, or Court Decision 

a. __ The date of abandonment, is the date applicant/appellant response 
period  expired. See MPEP # 711.04(a). 

b. __ This is not a disposal credit and is indicated as a noncounter on 
the  Biweekly Examiners' Time and Activity Report. 

        15. Supplemental Office Action __ When the Examiner issues a 
supplemental  Office action (which is the same type of action previously 
issued), a note  should be attached to the application.  This will assist 
the docket clerk in  properly reporting this supplemental Office action to 
the PALM system. A supplemental  action may be necessary when an 
applicant's response and an examiner's Office  action cross in the mail. 
Also, a supplemental action may be necessary when  the examiner becomes 
aware of an additional ground of rejection after the mailing  of an Office 
action. 

COUNTING OF FIRST ACTION ON 
THE MERITS (FAOM) 

        Office actions on the merits are: 

        (1) Nonfinal 

        (2) Final Rejection 

        (3) Ex parte Quayle 

        (4) Allowance 

        The first time an examiner performs one of the above four merit 
actions,  he/she receives credit for a First Action on the Merits (FAOM) 
on the production  reports. 

        A second/subsequent but First Action on the Merits (FAOM) action 
usually  occurs when the first action is a restriction/election. The 
examiner indicates  the type of action (nonfinal, final rejection, Ex 
parte Quayle and allowance)  on the worksheet, and the PALM system will 
automatically determine if it is  an FAOM.  The action will be listed and 
credited on the Biweekly Examiners'  Time and Activity Report as a 
Second/Subsequent FAOM. 

COUNTING OF DISPOSALS 

        An examiner's "disposal" count consists of four items: 

        (1) allowances, (2) abandonments, (3) Examiner's answers, and (4) 
International  Preliminary Examination Reports. 

        An examiner receives credit for a disposal upon submission of a 
first  Examiner's Answer prepared in an appealed application. These same 
items constitute  the "disposals" for performance evaluation of examining 
art units and groups.  However, disposals at the Office level consist only 
of allowances and abandonments. 
ACTIONS NOT COUNTED 

        The following are not to be counted as actions but are reported to 
 PALM by the docket clerk: 

        (1) Examiner's Amendments. 

        (2) Supplemental actions citing additional references or 
correcting  the data of references of record. 

        (3) Letters acknowledging receipt of communications from 
applicants,  such as new or supplemental oaths, orders for corrections of 
drawings, etc.,  which do not bring the application up for action. 

        (4) Letters stating that the Notice of Allowance will be sent in 
due  course. 

        (5)   Answers to petitions to revive or to make cases special, 
amendments  under 37 CFR 1.312 and to status letters. 

        (6) Actions in Reexamination applications. 

        (7) Transfers of individual cases and patentability reports are 
not  counted as actions, but credit is given for the time spent. 

CORRECTION INFORMATION 

        1. If any information is either missing from or incorrect on the 
biweekly  Examiner Time and Activity Report, the examiner should promptly 
notify the  docket clerk by providing all the pertinent information 
necessary to make the  changes to the PALM system (e.g., examining hours, 
application serial number,  type of action, etc.). 

        2. The docket clerk will report the necessary changes and 
corrections  directly into PALM.  These changes will be listed on the next 
biweekly Examiner  Time and Activity Report. 

        3.  If any information is missing from the last biweekly Examiner 
Time  and Activity Report of a quarter (except at the end of a fiscal 
year) or is  incorrect, the examiner should promptly notify the docket 
clerk and his/her  Supervisory Patent Examiner (SPE). The docket clerk 
will make the appropriate  changes directly into the PALM system.  The 
changes will be listed on the next  biweekly Examiner Time and Activity 
Report. However, these changes will not  be reflected in the last 
Quarter's Report; the Examiner's SPE may manually  make an adjustment to 
the records to show these changes. 

        4.  In order to ensure that all PALM reports are correct at the 
end  of the fiscal year (rating period), a special correction cycle is 
provided  on the PALM system. If any information is missing from or is 
incorrect on the  last biweekly Examiner Time and Activity Report, the 
examiner should immediately  notify the docket clerk and his/her SPE. 
These changes will be reflected in  the examiner's final biweekly report 
for the entire fiscal year. 


1706    Disclosure Documents [R-1] 


        The Patent and Trademark Office ** >(PTO) maintains for 2 years< 
"Disclosure  Documents" as evidence of the dates of conception of inventions. 

THE PROGRAM 

        A paper disclosing an invention and signed by the inventor or 
inventors  may be forwarded to the ** >PTO< by the inventor (or ** 
inventors), by the  owner of the invention, or by the attorney or agent of 
the inventor(s) or owner.  * >The Disclosure Document< will be retained 
for 2 years and then be destroyed  unless it is referred to in a separate 
letter in a related application >filed<  within >those< 2 years. 

        >Disclosure Documents may also be filed at selected Patent and 
Trademark  Office Depository Libraries, presently including the Sunnyvale 
Center for Innovation,  Inventions, and Ideas and the Detroit Public 
Library. (A current listing will  always be available from the PTO's 
Patent and Trademark Depository Library  Program office.) The documents 
are date-stamped and numbered at these PTDLs. 
 One copy of the document is is retained at the PTDL for its records. 
Original  documents are sent to the PTO for fee collection, processing, 
and retention.< 


        The Disclosure Document is not a patent application, and the date 
of  its receipt in the ** >PTO< will not become the effective filing date 
of any  patent application subsequently filed. However, like patent 
applications, these  documents will be kept in confidence by the ** >PTO<. 

        This program does not diminish the value of the conventional 
witnessed  and notarized records as evidence of conception of an invention 
** >. It< should  provide a more credible form of evidence than that 
provided by the popular  practice of mailing a disclosure to oneself or 
another person by registered  mail.  A Disclosure Document is available to 
the public when * >a patent< application  which refers to it issues as a 
patent. 

CONTENT OF DISCLOSURE DOCUMENT 

        **>The< benefits *>provided< by the Disclosure Document will 
depend  * upon the adequacy of the disclosure.  ** >It is recommended< 
that the document  *>be< a clear and complete explanation of 
the manner and process of making and using the invention >. This 
description  must be< in sufficient detail to enable a person having 
ordinary knowledge  in the field of the invention to make and use the 
invention. When the nature  of the invention permits, a drawing or sketch 
should be included.  ** 
PREPARATION OF THE DOCUMENT 

        **>To facilitate the PTO's electronic data capture and storage of 
the  Disclosure Document, it must be on white paper having dimensions not 
to exceed  8# by 11 inches (21.6 by 28.0 cm) with each page numbered. 
Text and drawings  must be sufficiently dark to permit reproduction with 
commonly used office  copying machines.  Oversized papers, even if 
foldable to the above dimensions,  will not be accepted. Attachments such 
as videotapes and working models will  not be accepted and will be 
returned.< 

OTHER ENCLOSURES 

        **>The< Disclosure Document must be accompanied by a ** >separate 
signed  cover letter stating that it is submitted by, or on behalf of, the 
inventor< 
 and requesting that the material be received ** >into< the Disclosure 
Document  Program. ** The inventor's request may take the following form: 

        "The undersigned, being the inventor of the disclosed invention, 
requests  that the enclosed papers be accepted under the Disclosure 
Document Program,  and that they be preserved for a period of two years." 

        >The original submission will not be returned. A notice with an 
identifying  number and date of receipt in the PTO will be mailed to the 
customer, indicating  that the Disclosure Document may be relied on only 
as evidence and that a patent  application should be diligently filed if 
patent protection is desired.< 
DISPOSITION 

        The Disclosure Document ** >is retained by< the ** >PTO< for 2 
years  ** >. After that time, it< will be destroyed unless ** referred to 
in a separate  letter in a related patent application filed within the 
2-year period. ** >A  letter must be filed in the related patent 
application, identifying not only  the patent application but also the 
Disclosure< Document by its title, number,  and date of receipt. 
Acknowledgment ** of such letters * >will be< made in  the next official 
communication or in a separate letter from the ** >PTO<.  Unless it is 
desired to have the ** >PTO< retain the Disclosure Document beyond  the 
2-year period, it is not required that it be referred to in a patent 
application. 
ACKNOWLEDGMENT 

        When a paper referring to a Disclosure Document is filed in a 
patent  application within 2-years after the filing of a Disclosure 
Document, the **  >Examining Group Technical Support Staff member< either 
prepares (1) a memorandum  indicating that a reference to Disclosure 
Document No. --  has been made in  ** >Patent Application<  No. -- , or 
(2) a copy of the paper filed in the application  referring to the 
Disclosure Document. The memorandum or copy is forwarded to  the * 
>Customer Contact Team< of the Correspondence and Mail Division. 
        Upon receipt, the >Customer Contact Team of the< Correspondence 
and  Mail Division prepares a retention label (PTO-150) and attaches it to 
the Disclosure  Document, >so< indicates on the forwarded memo or copy, ** 
and returns the  memo or copy to the group. The returned memo or copy is 
stapled to the inside  left flap of the file wrapper so that the 
examiner's attention is directed  to it when the next Office action is 
prepared. If prosecution before the examiner  has been concluded, a 
separate letter indicating that the Disclosure Document  will be retained 
should be sent to the applicant by the **>Examining Group  Technical 
Support Staff member<. 

        After the acknowledging letter is mailed, the paper >number of the 
 acknowledgement is noted< in the application file **.  The returned memo 
or  copy is stapled to and retained with the original paper >referring to 
the Disclosure  Document< in the file wrapper **. 

FEE 

        The fee >as< set forth in 37 CFR 1.21(c) is ** >$10.<  * >Full 
payment<  must accompany the Disclosure Document when it is submitted to 
the *>PTO<. 
* >NOTICE< TO INVENTORS 

        The 2-year retention period should not be considered to be a 
"grace  period" during which the inventor can wait to file his >or her< 
patent application  without possible loss of benefits. It must be 
recognized that in establishing  priority of invention an affidavit or 
testimony referring to a Disclosure Document  must usually also establish 
diligence in completing the invention or in filing  the patent application 
since the filing of the Disclosure Document. 
        >Inventors not familiar with the requirement of "diligence in 
completing  the invention" or "reduction to practice" under the U.S. 
patent law are advised  to consult an attorney or agent registered to 
practice before the PTO.  A publication,  Attorneys and Agents Registered 
to Practice Before the U.S. Patent and Trademark  Office is available from 
the Superintendent of Documents, U.S. Government Printing  Office, 
Washington, D.C. 20402.  Patent attorneys and agents may be found in  the 
telephone directories of most major cities. Also, many large cities have 
associations of patent attorneys that may be consulted.< 

        Inventors are also reminded that any public use or sale in the 
United  States or publication of the invention **  more than 1 year prior 
to the filing  of a patent application on that invention * >may< prohibit 
the granting of  a patent on it. 

        ** 

        >There is a nationwide network of Patent and Trademark Depository 
Libraries 
(PTDLs), which have collections of patents and patent-related reference 
materials  available to the public, including automated access to PTO data 
bases.  Publications  such as General Information Concerning Patents are 
available at the PTDLs. 
 To find out the location of the PTDL closest to you, please consult the 
complete  listing of all PTDLs that appears in every issue of the Official 
Gazette or  call the PTO Public Service Branch at (703) 308-HELP/4357.  To 
ensure assistance  from a PTDL staff member, you may wish to contact a 
PTDL prior to visiting  to learn about its collections, services, and hours.< 


1711    U.S.-Philippines Search Exchange 


        The United States-Philippines search exchange program involves 
patent  applications filed in the United States which are subsequently 
followed by  corresponding applications filed in the Republic of the 
Philippines and patent  applications filed in the Philippines subsequently 
followed by corresponding  applications filed in the United States. 

        The program operates as follows: 

        The applicant files his application in the U.S. Patent and 
Trademark  Office which will process the application in the normal manner 
and examine  the application in the usual time sequence. 

        If the applicant should later file a corresponding application in 
the  Philippines Patent Office, he may elect to use the special filing 
procedure. 
 Under this special filing procedure, applicant files his application in 
the  Philippines accompanied by a notice of election to participate in the 
special  procedure; which notice of election contains a certification that 
the description 
(excluding references to related applications), claims, and drawings are 
identical  to those of the corresponding application originally filed in 
the United States. 
 The earlier filed application must be fully identified; and, in 
applications  without a claim of priority, a certified copy of the earlier 
filed U.S. application  must be submitted to the Philippines Patent 
Office. In addition, applicant  must also agree that all amendments to his 
U.S. application will also be made  with respect to his application filed 
in the Philippines. 

        In the U.S. Patent and Trademark Office, applicant will regularly 
file  two copies of each amendment, one copy must be marked Copy for 
Philippines  Patent Office. Upon termination of prosecution, the U.S. 
Patent and Trademark  Office shall remove all copies so marked from the 
U.S. file and promptly forward  the same to the Philippines Patent Office. 

        Election forms for participation in this special program must be 
signed  in duplicate and simultaneously accompany the application to be 
filed in the  Philippines. 

        Upon receipt of properly filed notice of election, the Philippines 
 Patent Office will notify the U.S. Patent and Trademark Office of the 
election  by forwarding one copy of the election forms to the U.S. Patent 
and Trademark  Office.  The Philippines Patent Office will defer action on 
the Philippines  application pending receipt of information as to the 
disposition of the application  by the U.S. Patent and Trademark Office. 
If no such information is received  by the Philippines Office within a 
reasonable amount of time from the date  of filing in the Philippines, the 
Philippines Office may, either on  its own  initiative, or at applicant's 
request, inquire as to the status of the U.S.  application and, if 
desired, proceed with its own independent examination. 
        Upon disposal of the application by the U.S. Patent and Trademark 
Office,  appropriate information will be sent to the Philippines Patent 
Office which  will include all necessary identifying data, whether allowed 
or abandoned,  notice of allowance, copies of documents cited during 
examination, a copy of  the last office action and, when necessary, any 
earlier actions which may be  included by reference in the last action. 
The Philippines Office will then  make their own complete office action 
based upon the claims as amended with  U.S. Patent and Trademark Office, 
performing whatever checks desired and search  for copending interfering 
applications.  Alternatively, the Philippines may  request applicant to 
show cause why the results of the U.S. examination should  not be accepted 
in the Philippines.  All avenues of appeal will remain open  to the applicant. 

        Where copending applications are cited and applied during 
examination  in the U.S. Patent and Trademark Office, full examination 
will not be forwarded  to the Philippines Patent Office, and the fact that 
a U.S. copending application  was cited would be noted as a matter of 
information, since such references  are inapplicable in the Philippines. 

        Where the application originates in the Philippines Patent Office 
and  is subsequently filed in the U.S. Patent and Trademark Office, a 
similar procedure  as outlined above, consonant with U.S. Law, will be 
followed. 

        It is believed that this program will facilitate the handling of 
U.S.  origin applications filed in the Republic of the Philippines 
resulting in a  savings in time and expense of prosecution to U.S. 
applicants. 


>1720       Dissemination of Court and Board 
Decisions 


[R-1] 

COURT DECISIONS 

        The Office of the Solicitor forwards to the Office of the 
Assistant  Commissioner for Patents copies of all recent court decisions 
in patent cases  where a precedential opinion is issued.  The Office of 
the Assistant Commissioner  for Patents will routinely provide copies of 
these opinions to Group Directors,  the Patent Academy, and the Director 
of the Office of Quality Review. 
  Directors are to, in turn, make copies available to managers and other 
individuals  as the Director determines to be appropriate. Directors are 
encouraged to discuss  the contents of the opinions in their staff 
meetings, particularly where such  meetings are being held to reinforce 
examination quality. 

BOARD DECISIONS 

        A decision rendered by the Board is returned to the examiner 
through  the Group Director and the examiner's supervisor. The examiner 
takes action  consistent with the decision rendered by the Board unless 
reconsideration of  the Board decision will be requested (MPEP 
w 1214.04). The Director may circulate and discuss the decision among some 
 or all of the supervisors in the Group, and the supervisors, in turn, may 
circulate  the decision among the examiners in their art units, depending 
on the subject  matter or issues in the decisions.< 


>1721       Treatment of Court and Board Decisions Affecting Patent and 
Trademark Office Policy and Practice [R-1] 

        In the event a Board or court decision is one that significantly 
adds  to the body of law by, for example, addressing a new legal or 
procedural issue, or providing a new interpretation  of a prior decision, 
such a decision may result in an internal PTO memorandum  pointing out the 
significance of the decision to the examination process. 
        When any examiner or supervisor in the Patent Examining Corps 
concludes  that a recent decision of the Board or a court affects existing 
PTO policy  or practice, he or she should bring the matter to the 
attention of his/her  Group Director through normal chain-of-command 
procedures. 

        When the Group Director believes that guidance to the Corps is 
warranted  as a result of a decision, the Director should consult with the 
Deputy Assistant  Commissioner for Patent Policy and Projects and provide 
a draft of the guidance  that is recommended as appropriate under the 
circumstances. The Deputy Assistant  Commissioner for Patent Policy and 
Projects will then take appropriate Office  officials, as necessary, to 
formulate a recommendation to the Assistant Commissioner  for Patents on 
the policy implications of the opinion. 

        It may be necessary for the Commissioner, Solicitor, Chairman of 
the  Board, A/C for Patents, Deputy A/C for Patent Policy and Projects, 
Deputy A/C  for Patents and Director making the recommendation to meet to 
review and discuss  the policy ramifications of the case enabling the 
Commissioner to decide how  the PTO will proceed. 

        Communication of the decision on the policy implications of the 
court  or Board decision will normally take place by either notice in the 
Official  Gazette and/or via memorandum to PTO personnel. Ultimately, the 
policy implications  of the decision will be officially incorporated into 
the Manual of Patent Examining  Procedure and Patent Academy curriculum 
materials during the next update cycle  for these reference materials.< 


Contents 

            Introduction 

1801        Basic Patent Cooperation Treaty (PCT) Principles 

1802        PCT Definitions 

1803        Reservations Under the PCT Taken by the United 
            States of America 

1805        Where To File an International Application 

1807        Agent or Common Representative and General Power 
            of Attorney 

1808        Change in or Revocation of the Appointment of an 
            Agent or a Common Representative 

1810        Filing Date Requirements 

1812        Elements of the International Application 

1817        PCT Member States 

1817.01     Designation of States and Precautionary Designations 

1817.02     Continuation or Continuation-In-Part Indication in the 
            Request 

1819        Earlier International or International-Type Search 

1820        Signature of Applicant 

1821        The Request 

1823        The Description 

1823.01     Reference to Deposited Microorganism 

1823.02     Nucleotide and/or Amino Acid Sequence Listings 

1824        The Claims 

1825        The Drawings 

1826        The Abstract 

1827        Fees 

1828        Priority Claim and Document 

1830        International Application Transmittal Letter 

1832        License Request for Foreign Filing Under the PCT 

1834        Correspondence 

1834.01     Use of Telegraph, Teleprinter, Facsimile Machine 

1834.02     Irregularities in the Mail Service 

1836        Rectification of Obvious Errors 

1840        The International Searching Authority 

1840.01     The European Patent Office as an International 
            Searching Authority 

1842        Chapter I Basic Flow 

1843        The International Search 

1844        The International Search Report 

1844.01     Time for the International Search Report 

1846        Sections of the Articles, Regulations, and 
            Administrative Instructions Under the PCT Relevant 
            to the International Search 

1847        Refund of International Search Fee 

1848        Sequence Listings 

1849        Subject Matter Excluded from International Search 

1850        Unity of Invention Before the International Searching 
            Authority 

1851        Identification of Patent Documents 

1852        International-Type Search 

1853        Amendment Under PCT Article 19 

1857        International Publication 

1859        Withdrawal of International Application or 
            Designations 

1860        International Preliminary Examination 

1861        Chapter II Basic Flow 

1862        Agreement with the International Bureau To Serve as an 
            International Preliminary Examination Authority 

1864        The Demand and Preparation for Filing of Demand 

1864.01     Amendments Filed with Demand 

1864.02     Applicant's Right to File a Demand 

1864.03     States Which May Be Elected 

1864.04     Agent's Right to Act 

1865        Filing of Demand 

1866        Filling in of Headings on Chapter II Forms 

1867        Preliminary Examination Fees 

1868        Correction of Defects in the Demand 

1869        Notification to International Bureau of Demand 

1870        Priority Document and Translation Thereof 

1871        Processing Amendments Filed Under Article 19 and 
            Article 34 Prior to or at the Start of International 
            Preliminary Examination 

1872        Transmittal of Demand to the Examining Corps 

1873        Later Election of States 

1874        Determination if International Preliminary 
            Examination is Required and Possible 

1875        Unity of Invention Before the International Preliminary 
            Examining Authority 

1875.01     Preparation of Invitation Concerning Unity 

1875.02     Response to Invitation Concerning Lack of Unity of 
            Invention 

1876        Notation of Errors and Informalities by the Examiner 

1876.01     Request for Rectification and Notification of Action 
            Thereon 

1877        Nucleotide and/or Amino Acid Sequence Listings 
            During the International Preliminary Examination 

1878        Preparation of the Written Opinion 

1878.01(a)  Prior Art Under Chapter II 

1878.01(a)(1)     Novelty Under Chapter II 

1878.01(a)(2)     Inventive Step Under Chapter II 

1878.01(a)(3)     Industrial Applicability Under Chapter II 

1878.02     Response to the Written Opinion 

1879        Preparation of the International Preliminary 
            Examination Report 

1879.01     Time Limit for Preparing Report 

1879.02     Transmittal of the International Preliminary 
            Examination Report 

1879.03     Translations 

1879.04     Confidential Nature of the Report 

1880        Withdrawal of Demand or Election 

1881        Receipt of Notice of Election by the Patent and 
            Trademark Office 

1890        Receipt of Notice of Designation 

1891        Receipt of Notice of Election and Preliminary 
            Examination Report 

1893        The National Stage (U.S. National Application File 
            Under 35 U.S.C. 371) 

1893.01     Commencement and Entry 

1893.01(a)  Entry via the U.S. Designated Office 

1893.01(a)(1)     Submissions Required by 20 Months From the 
                  Priority Date 

1893.01(a)(2)     Article 19 Amendment (Filed With the International 
                  Bureau) 

1893.01(b)        Entry via the U.S. Elected Office 

1893.01(b)(1)     Submissions Required by 30 Months From the 
                  Priority Date 

1893.01(b)(2)     Article 19 and Article 34 Amendments (Filed 
                  With the International Preliminary Examining 
                  Authority) 

1893.01(c)  Fees 

1893.01(d)  Translation 

1893.01(e)  Oath/Declaration 

1893.02     Abandonment 

1893.03     Prosecution of U.S. National Stage Applications 
            Before the Examiner 

1893.03(a)  How To Identify That an Application is a U.S. 
            National Stage Application 

1893.03(b)  The Filing Date of a U.S. National Stage Application 

1893.03(c)  The Priority Date, Priority Claim, and Priority Papers 
            for a U.S. National Stage Application 

1893.03(d)  Unity of Invention 

1893.03(e)  Papers Received From the International Bureau and 
            Placed in a U.S. National Stage Application File 

1893.03(f)  Drawings and PCT Rule 11 

1893.03(g)  Information Disclosure Statement in a National 
            Stage Application 

1895        A Continuation or Continuation-In-Part Application 
            of a PCT Application Designating the United States 

1895.01     Handling of and Considerations In the Handling of 
            National Applications Under 35 U.S.C. 371 and 
            35 U.S.C. 111 Continuations or Continuations-In-Part 
            of a PCT Application 

1896        The Differences Between (1) a National Application 
            Filed Under 35 U.S.C. 111 Application and (2) a 
            National Stage Application Under 35 U.S.C. 371 


INTRODUCTION 


This chapter is designed to be a guide for patent examiners in searching 
and  examining applications filed under the Patent Cooperation Treaty 
(PCT).  Applicants  desiring additional information for filing 
international applications should  obtain a copy of the PCT Applicant's 
Guide from the World Intellectual Property  Organization  (WIPO) in 
Geneva, Switzerland. 

The Articles and Regulations under the PCT are reproduced in Annex T of 
this  Manual and the Administrative Instructions are reproduced in Annex 
AI. 
PCT applications are processed by the International Division within the 
Patent  and Trademark Office. 


>1801    Basic Patent Cooperation Treaty (PCT) Principles 


MAJOR CONCEPTS OF THE PCT 

The Patent Cooperation Treaty (PCT) enables the U.S. applicant to file one 
 application, ``an international application", in a standardized format in 
English  in the U.S.  Receiving Office (the U.S. Patent and Trademark 
Office), and have  that application acknowledged as a regular national 
filing in as many member  countries to the PCT as the applicant 
``designates" or ``elects," that is,  names, as countries in which patent 
protection is desired.  In the same manner,  the PCT enables foreign 
applicants to file a PCT international application,  designating the 
United States of America, in their home language in their home  patent 
office and have the application acknowledged as a regular U.S. national 
filing.  The PCT also provides for a search and publication after 18 
months  from the priority date.  Upon payment of national fees and the 
furnishing of  any required translation, usually 20 months after the 
filing of any priority  application for the invention, or the 
international filing date if no priority  is claimed, the application will 
be subjected to national procedures for granting  of patents in each of 
the designated countries.  If a demand for an international  preliminary 
examination is filed within 19 months from the priority date, the  period 
for entering the national stage is extended to 30 months from the priority 
 date. 

The PCT offers an alternative route to filing patent applications directly 
 in the patent offices of those countries which are members of the PCT. 
It  does not preclude taking advantage of the priority rights and other 
advantages  provided under the Paris Convention. The PCT provides an 
additional and optional  foreign filing route to patent applicants. 

The filing, search and publication procedures are provided for in Chapter 
I  of the PCT.  Additional procedures for a preliminary examination of PCT 
international  applications are provided for in optional PCT Chapter II. 

In most instances a national U.S. application (NA) is filed first.  An 
international  application for the same subject matter will then be filed 
subsequently within  the priority year provided by the Paris Convention 
and the priority benefit  of the U.S. national application filing date 
will be claimed. 

RECEIVING OFFICE (RO) 

The international application (IA) must be filed in a receiving Office 
(RO)(PCT  Article 10).  The United States Patent and Trademark Office will 
act as a receiving  Office for United  States residents and nationals (35 
U.S.C. 361(a)).  Under  PCT Rule 19.1(a)(iii), the International Bureau of 
the World Intellectual Property  Organization will also act as a Receiving 
Office for U.S. residents and nationals.  The receiving Office functions 
as the filing and formalities review organization  for international 
applications. International applications must contain upon  filing the 
designation of at least one country in which patent protection is  desired 
and must meet certain standards for completeness and formality (PCT 
Articles 11(1) and 14(1)). 

Where a priority claim is made, the date of the earlier filed national 
application  is used as the date for determining the timing of 
international processing,  including the various transmittals, the payment 
of certain international and  national fees, and publication of the 
application.  Where no priority claim  is made, the international filing 
date will be considered to be the "priority  date" for timing purposes 
(PCT Article 2(xi)). 

The international application is subject to the payment of certain fees 
upon  filing, or within 1 month thereafter, and at the expiration of 12 
months from  the priority date or within 1 month thereafter.  The 
receiving Office will  grant an international filing date to the 
application, collect fees, handle  informalities by direct communication 
with the applicant, and monitor all corrections 
(35 U.S.C. 361(d)). By 13 months from the priority date, the receiving 
Office  should prepare and transmit a copy of the international 
application, called  the search copy (SC), to the International Searching 
Authority (ISA); and forward  the original, called the record copy (RC), 
to the International Bureau (IB) 
(PCT Rules 22.1 and 23).  A second copy of the international application, 
the  home copy (HC), remains in the receiving Office (PCT Article 12(1)). 
Once  the receiving Office has transmitted copies of the application, the 
International  Searching Authority becomes the focus of international 
processing. 
INTERNATIONAL SEARCHING 
AUTHORITY (ISA) 

The basic function of the International Searching Authority (ISA) is to 
conduct  a prior art search of inventions claimed in international 
applications; it  does this by searching in at least the minimum 
documentation defined by the  Treaty (PCT Articles 15 and 16 and PCT Rule 
34).  At the option of the applicant,  either the U.S. Patent and 
Trademark Office or the European Patent Office will  act as an 
International Searching Authority for international applications  filed in 
the United States Receiving Office.  The International Searching Authority 
 is also responsible for checking the content of the title and abstract 
(PCT  Rules 37.2 and 38.2).  An international search report (SR) will 
normally be  issued by the International Searching Authority within 3 
months from the receipt  of the search  copy (usually about 16 months 
after the priority date)(PCT Rule  42).  Copies of the International 
Search Report and prior art cited will be  sent to the applicant by the 
ISA/US (PCT Rules 43 and 44.1).  The search report  will contain a listing 
of documents found to be relevant and will identify  the claims in the 
application to which they are pertinent; however, no judgments  or 
statements as to patentability will be made (PCT Rule 43.9).  Once the 
international  search report has been completed and transmitted, 
international processing  continues before the International Bureau. 

  INTERNATIONAL BUREAU (IB) 

The basic functions of the International Bureau (IB) are to maintain the 
master  file of all international applications and to act as the publisher 
and central  coordinating body under the Treaty.  The World Intellectual 
Property Organization 
(WIPO) in Geneva, Switzerland performs the duties of the International 
Bureau. 
If the applicant has not filed a certified copy of the priority document 
in  the receiving Office with the international application, or requested 
upon  filing that the receiving Office prepare and transmit to the 
International  Bureau a copy of the prior U.S. national application, the 
priority of which  is claimed, the applicant must submit such a document 
directly to the International  Bureau or the receiving Office not later 
than 16 months after the priority  date (PCT Rule 17).  The Request form 
contains a box which can be checked requesting  that the receiving Office 
prepare the certified copy. This is only possible,  of course, if the 
receiving Office is a part of the same national Office where  the priority 
application was filed. 

The applicant has normally 2 months from the date of transmittal of the 
International  Search Report to amend the claims by filing an amendment 
directly with the  International Bureau (PCT Article 19 and PCT Rule 46). 


The International Bureau will then normally publish the international 
application  along with the search report and any amended claims (Amdt) at 
the expiration  of 18 months from the priority date (PCT Article 21).The 
international publication  is in pamphlet form with a front page 
containing bibliographical data, the  abstract, and a figure of the 
drawing (PCT Rule 48). The pamphlet also contains  the search report and 
any amendments to the claims submitted by the applicant.  If the 
application is published in a language other than English, the search 
report and abstract are also published in English. The International 
Bureau  publishes a PCT Gazette in the French and English languages which 
contains  information similar to that on the front pages of published 
international applications,  as well as various indexes, and announcements 
(PCT Rule 86).  The International  Bureau also transmits copies of the 
international application to all the designated  Offices (PCT Article 20 
and PCT 
Rule 47). 

   DESIGNATED OFFICE (DO) and 
ELECTED OFFICE (EO) 

The designated Office is the national Office (for example, the USPTO) 
acting  for the state or region designated under Chapter I. Similarly, the 
elected  Office is the national Office acting for the state or region 
elected under  Chapter II. 

If no ``Demand" for international preliminary examination has been filed 
within  19 months of the priority date, the applicant must complete the 
requirements  for entering the national stage within 20 months from the 
priority date of  the international application, unless the individual 
designated Office grants  additional time.  The applicant also has the 
right to amend the application  within 1 month from the fulfillment of the 
requirements under PCT Article 22. 
 After this month has expired (PCT Article 28 and PCT Rule 52), each 
designated  Office will make its own determination as to the patentability 
of the application  based upon its own specific national or regional laws 
(PCT Article 27(5)). 
If the applicant desires to obtain the benefit of delaying the entry into 
the  national stage until 30 months from the priority date, a Demand for 
international  preliminary examination must be filed with an appropriate 
International Preliminary  Examining Authority within 19 months of the 
priority date. Those states in  which the Chapter II procedure is desired 
must be ``elected" in the Demand. 
The original Demand is forwarded to the International Bureau by the 
International  Preliminary Examining Authority. The International Bureau 
then notifies the  various elected Offices that the applicant has entered 
Chapter II and that  the application should not be considered withdrawn 
for failure to enter the  national stage within 20 months from the 
priority date. 

The examiner of the International Preliminary Examining Authority may 
comment  on lack of unity of invention, note errors, and issue a written 
"opinion" as  to whether each claim is ``novel", involves ``inventive 
step", and is ``industrially  applicable."  If a written "opinion" is 
issued by the examiner, the applicant  may respond to the opinion by 
arguments and amendments within the time period  set for response.   The 
examiner will then issue the international preliminary  examination report 
which presents the examiner's final position as to whether  each claim is 
``novel", involves ``inventive step", and is "industrially applicable"  by 
28 months from the priority date.   A copy of the international 
preliminary  examination report is sent to the applicant and to the 
International Bureau.  The International Bureau then communicates a copy 
of the international preliminary  examination report to each elected Office. 

The applicant must complete the requirements for entering the national 
stage  by the expiration of 30 months from the priority date to avoid any 
question  of withdrawal of the application as to that elected Office. 


>1802    PCT Definitions 


The PCT contains definitions in PCT Article 2 and in PCT Rule 2, which are 
 found in MPEP Annex T.  Additional definitions are found in 35 U.S.C. 
351,  MPEP Annex L, 37 CFR 1.401, MPEP Annex R, Section 101 of the PCT 
Administrative  Instructions and MPEP Annex AI. 


>1803    Reservations Under the PCT Taken by the United States of America 

The United States of America had originally declared that it was not bound 
 by Chapter II (PCT Article 64 (1)), but withdrew that reservation  on 
July  1, 1987. 

It has also declared that, as far as the United States of America is 
concerned,  international publication is not required (PCT Article 64 
(3)). The United  States of America also made a reservation under PCT 
Article 64(4) which relates  to the prior art effective date of a U.S. 
patent issuing from an international application.  See 35 U.S.C. 102(e) 
and 363.  These reservations are still in effect. 


>1805    Where to File An International Application 


35 U.S.C. 361 Receiving Office. 

(a)   The Patent and Trademark Office shall act as a Receiving Office for 
international  applications filed by nationals or residents of the United 
States. In accordance  with any agreement made between the United States 
and another country, the  Patent and Trademark Office may also act as a 
Receiving Office for international  applications filed by residents or 
nationals of such country who are entitled  to file international 
applications. 

See 37 CFR 1.421 - 1.425 as to who can file an international application. 
Only if at least one of the applicants is a resident or national of the 
United  States of America may an international application be filed in the 
United States  Receiving Office (PCT Article 9(1) and (3), PCT Rules 19.1 
and 19.2, 35 U.S.C.  361(a) and 37 CFR 1.412(a), 1.421).  The concepts of 
residence and nationality  are defined in PCT Rules 18.1 and 18.2. For the 
purpose of filing an international  application, the applicant may be 
either the inventor or the successor in title  of the inventor (assignee 
or owner). However, the laws of the various designated  States regarding 
the requirements for applicants must also be considered when  filing an 
international application.  For example, the patent law of the United 
States of America requires that, for the purposes of designating the 
United  States of America, the applicant(s) must be the inventor(s) (35 
U.S.C. 373,  PCT Article 27(3)). 

The United States Receiving Office is located in Crystal  Plaza, Building 
2,  8th floor, 2011 Jefferson Davis Highway, Arlington, Virginia. 
International  applications and related papers may be deposited directly 
with the United States  Receiving Office or be mailed to: Commissioner of 
Patents and Trademarks, Box  PCT, Washington, D.C. 20231.  It should be 
noted that the ``Express Mail" Certificate  of Mailing or  Transmission 
provisions of 37 CFR 1.10 apply to the filing of  all applications and 
papers filed in the U.S. Patent and Trademark Office,  including PCT 
international applications and related papers and fees.  It should  be 
further noted, however, that PCT international applications and papers 
relating  to international applications are specifically excluded from the 
Certificate  of Mailing or Transmission procedures under 37 CFR 1.8.  This 
means, for example,  that a Demand for international preliminary 
examination cannot be filed using  the Certificate of Mailing or 
Transmission practice under 37 CFR 1.8 if the  date of mailing is the date 
needed for official purposes. If 37 CFR 1.8 is  improperly used, the date 
to be accorded the paper will be the date of actual  receipt in the 
Office. 

Irrespective of the Certification practice under 
37 CFR 1.8, facsimile transmission may be used to submit certain papers in 
 international applications.  However, facsimile transmission may not be 
used  for the filing of an international application, the filing of 
drawings under  37 CFR 1.437, or the filing of a copy of the international 
application, and  the basic national fee to enter the U.S. national stage 
under 35 U.S.C. 371. 
 See 37 CFR 1.6(d)(3) and (4), 1.8(a)(2)(i)D, and 1.8(a)(2)(i)F. The 
Demand  for international preliminary examination may be filed by 
facsimile transmission. 
The United States Receiving Office staff is available to offer guidance on 
 PCT requirements and procedures. In person, telephone or written 
inquiries  are welcome. Telephone inquiries should be directed to (703) 
305-3257. Written  inquiries should be addressed to: Commissioner of 
Patents and Trademarks, Box  PCT, Washington, D.C. 20231. 

Warning - although the United States patent law at 
35 U.S.C. 21(a) authorizes the Commissioner to prescribe by rule that any 
paper  or fee required to be filed in the Patent and Trademark Office will 
be considered  filed in the Office on the date on which it was deposited 
with the United States  Postal Service, PCT Rule 20.1(a) provides for 
marking the ``date of actual  receipt on the request."  Although the 
``Express Mail" provisions under 37  CFR 1.10 have not been contested to 
date regarding PCT applications, applicants  should be aware of a possible 
different interpretation by foreign authorities. 
PCT Rule 19.4 provides for transmittal of an international application to 
the  International Bureau as Receiving Office in certain instances. For 
example,  applications filed in the United states Receiving Office by 
applicants who  are not residents or nationals of the United states, but 
who are residents  or nationals of a PCT Contracting state, will, upon 
timely payment of the proper  fee, have their application forwarded to the 
International Bureau for processing  in its capacity as a Receiving 
Office. The fee is an amount equal to the transmittal  fee. The Receiving 
Office of the International Bureau will consider the international 
application to be received as of the date accorded by the United States 
Receiving Office. This practice will avoid  the loss of a filing date in 
those instances where the United States Receiving  Office is not competent 
to act, but where the international application indicates  an applicant to 
be a national or resident of a PCT Contracting state. Of course,  where 
questions arise regarding residence or nationality; i.e., the U.S. is  not 
clearly competent, the application will be forwarded to the International 
Bureau as Receiving Office.  Note, where no residence or nationality is 
indicated,  the U.S. is not competent, and the application will be 
forwarded to the International  Bureau as Receiving Office so long as the 
necessary fee is paid. 

If all of the applicants are indicated to be residents or nationals of 
non-PCT  Contracting States, PCT Rule 19.4 does not apply, and the 
application is denied  an international filing date. 


>1807    Agent or Common Representative and General Power of Attorney 

37 CFR 1.455.     Representation in international applications. 

(a)   Applicants of international applications may be represented by 
attorneys  or agents registered to practice before the Patent and 
Trademark Office or  by an applicant appointed as a common representative 
(PCT Art. 49, Rules 4.8  and 90 and w 10.10).  If applicants have not 
appointed an attorney or agent  or one of the applicants to represent 
them, and there is more than one applicant,  the applicant first named in 
the request and who is entitled to file in the  U.S. Receiving Office 
shall be considered to be the common representative of  all the 
applicants.  An attorney or agent having the right to practice before  a 
national office with which an international application is filed and for 
which the United States is an International Searching Authority or 
International  Preliminary Examining Authority may be appointed to 
represent the applicants  in the international application before that 
authority. An attorney or agent  may appoint an associate attorney or 
agent who shall also then be of record 
(PCT Rule 90.1(d)).  The appointment of an attorney or agent, or of a 
common  representative, revokes any earlier appointment unless otherwise 
indicated 
(PCT Rule 90.6(b) and (c)). 

(b)   Appointment of an agent, attorney or common representative (PCT Rule 
 4.8) must be effected either in the Request form, signed by all 
applicants,  or in a separate power of attorney submitted either to the 
United States Receiving  Office or to the International Bureau. 

(c)   Powers of attorney and revocations thereof should be submitted to 
the  United States Receiving Office until the issuance of the 
international search  report. 

(d)   The addressee  for correspondence will be as indicated in section 
108  of the Administrative Instructions. 

Where an appointment of an agent or common representative is effected by a 
 separate power of attorney, that power of attorney must be submitted to 
either  the receiving Office or the International Bureau.  However, a 
power of attorney  appointing an agent or sub-agent to represent the 
applicant specifically before  the International Searching Authority or 
the International Preliminary Examining  Authority must be submitted 
directly to that Authority. 

``General" Power of Attorney 

``General" powers of attorney are recognized for the purpose of filing and 
 prosecuting an international application before the international 
authorities. 
 The original general power of attorney should be deposited with the 
International  Division which is the central focus for PCT matters 
throughout the Office.  Any applications relying thereon must include a 
copy thereof. A general power  of attorney form is provided in the annex 
to the PCT Applicant's Guide. 
Any general power of attorney must be filed with the receiving Office if 
the  appointment was for the purposes of the international phase 
generally, or with  the International Searching Authority or International 
Preliminary Examining  Authority if the appointment was specifically to 
represent the applicant before  that Authority. The appointment will then 
be effective in relation to any particular  application filed by that 
applicant provided that the general power of attorney  is referred to in 
the request, the Demand or a separate notice, and that a  copy of the 
general power of attorney is attached to that request, Demand or  separate 
notice. That copy of the signed original need not, itself, be separately 
signed.  See Annex Z of the PCT Applicant's Guide for a suitable model 
form  for a general power of attorney. The PCT Applicant's Guide is 
available from  the International Bureau in Geneva, Switzerland. 


>1808    Change in or Revocation of the Appointment of an Agent or a 
Common Representative 

PCT Rule 90 
Agents and Common Representatives 

*** 

90.6.     Revocation and Renunciation 

(a)   Any appointment of an agent or common representative may be revoked 
by  the persons who made the appointment or by their successors 

in title, in which case any appointment of a sub-agent under Rule 90.1(d) 
by  that agent shall also be considered as revoked.  Any appointment of a 
sub-agent  under Rule 90.1(d) may also be revoked by the applicant 
concerned. 
(b)   The appointment of an agent under Rule 90.1(a) shall, unless 
otherwise  indicated, have the effect of revoking any earlier appointment 
of an agent  made under that Rule. 

(c)   The appointment of a common representative shall, unless otherwise 
indicated,  have the effect of revoking any earlier appointment of a 
common representative. 
(d)   An agent or a common representative may renounce his appointment by 
a  notification signed by him. 

(e)   Rule 90.4(b) and (c) shall apply, mutatis mutandis, to a document 
containing  a revocation or renunciation under this Rule. 

37 CFR 1.455.     Representation in international applications. 

(a)   Applicants of international applications may be represented by 
attorneys  or agents registered to practice before the Patent and 
Trademark Office or  by an applicant appointed as a common representative 
(PCT Art. 49, Rules 4.8  and 90 and w 10.10). If applicants have not 
appointed an attorney or agent  or one of the applicants to represent 
them, and there is more than one applicant,  the applicant first named in 
the request and who is entitled to file in the  U.S. Receiving Office 
shall be considered to be the common representative of  all the 
applicants. An attorney or agent having the right to practice before  a 
national office with which an international application is filed and for 
which the United States is an International Searching Authority or 
International  Preliminary Examining Authority may be appointed to 
represent the applicants  in the international application before that 
authority. An attorney or agent  may appoint an associate attorney or 
agent who shall also then be of record 
(PCT Rule 90.1(d)). The appointment of an attorney or agent, or of a 
common  representative, revokes any earlier appointment unless otherwise 
indicated 
(PCT Rule 90.6(b) and (c)). 

(b)   Appointment of an agent, attorney or common representative (PCT Rule 
 4.8) must be effected either in the Request form, signed by all 
applicants,  or in a separate power of attorney submitted either to the 
United States Receiving  Office or to the International Bureau. 

(c)   Powers of attorney and revocations thereof should be  submitted to 
the  United States Receiving Office until the issuance of the 
international search  report. 

(d)   The addressee  for correspondence will be as indicated in section 
108  of the Administrative Instructions. 

The appointment of an agent or a common representative can be revoked. The 
 document containing the revocation must be signed by the persons who made 
the  appointment or by their successors in title. The appointment of a 
sub-agent  may also be revoked by the applicant concerned. If the 
appointment of an agent  is revoked, any appointment of a sub-agent by 
that agent is also considered  revoked. 

The appointment of an agent for the international phase in general 
automatically  has the effect, unless otherwise indicated, of revoking any 
earlier appointment  of an agent. The appointment of a common 
representative similarly has the effect,  unless otherwise indicated, of 
revoking any earlier appointment of a common  representative. 

The rules for signing and submission of a power of attorney also apply to 
a  revocation of an appointment. 

Renunciation of an appointment may be made by means of a notification 
signed  by the agent or common representative. The rules for signing and 
submission  of a power of attorney apply also to a renunciation. The 
applicant is informed  of the renunciation by the International Bureau. 

U.S. attorneys or agents wishing to withdraw from representation in 
international  applications may request to do so. To expedite the handling 
of requests for  permission to withdraw as attorney, the request should be 
submitted in triplicate 
(original and two copies) to Box PCT and should indicate the present 
mailing  addresses of the attorney who is withdrawing and of the 
applicant. Because  the Patent and Trademark Office (PTO) does not 
recognize law firms, each attorney  of record must sign the notice of 
withdrawal, or the notice of withdrawal must  contain a clear indication 
of one attorney signing on behalf of another. 
The PTO usually requires that there be at least 30 days between approval 
of  withdrawal and the expiration date of a time response period so that 
the applicant  will have sufficient time to obtain other representation or 
take other action.  If less than 30 days remains in a running response 
period, a request to withdraw  is normally disapproved. 

For withdrawal of attorney or agent in the national stage, see MPEP w 
402.06. 

>1810    Filing Date Requirements 


PCT Article 11 
Filing Date and Effects of the International Application 

(1)   The receiving Office shall accord as the international filing date 
the  date of receipt of the international application, provided that that 
Office  has found that, at the time of receipt: 

(i)   the applicant does not obviously lack, for reasons of residence or 
nationality,  the right to file an international application with the 
receiving Office, 
(ii)    the international application is in the prescribed language, 
(iii) the  international application contains at least the following 
elements: 
(a)   an indication that it is intended as an international application, 
(b)   the designation of at least one Contracting State, 

(c)   the name of the applicant, as prescribed, 

(d)   a part which on the face of it appears to be a description, 
(e)   a part which on the face of it appears to be a claim or claims. 
35 U.S.C. 363.      International application designating the United 
States:  Effect. 

An international application designating the United States shall have the 
effect,  from its international filing date under article 11 of the 
treaty, of a national  application for patent regularly filed in the 
Patent and 
Trademark Office except as otherwise provided in section 102(e) of this title. 

35 U.S.C. 373.      Improper Applicant. 

An international application designating the United States, shall not be 
accepted  by the Patent and Trademark Office for the national stage if it 
was filed by  anyone not qualified under chapter 11 of this title to be an 
applicant for  the purpose of filing a national application in the United 
States. Such international  applications shall not serve as the basis for 
the benefit of an earlier filing  date under section 120 of this title in 
a subsequently filed application, but  may serve as the basis for a claim 
of the right of priority under section 119  of this title, if the United 
States was not the sole country designated in  such international application. 

37 CFR 1.431.     International application requirements. 

(a)   An international application shall contain, as specified in the 
Treaty  and the Regulations, a Request, a description, one or more claims, 
an abstract,  and one or more drawings (where required). (PCT Art. 3(2) 
and Section 207 of  the Administrative Instructions.) 

(b)   An international filing date will be accorded by the United States 
Receiving  Office, at the time of receipt of the international 
application, provided that: 
(1)   At least one applicant (w 1.421) is a United States resident or 
national  and the papers filed at the time of receipt of the international 
application  so indicate (35 U.S.C. 361(a), PCT Art. 11(1)(i)). 

(2)   The international application is in the English language (35 U.S.C. 
361(c),  PCT Art. 11(1)(ii)). 

(3)   The international application contains at least the following 
elements 
(PCT  Art. 11(1)(iii)): 

(i)         An indication that it is intended as an international 
application 
(PCT Rule 4.2); 

(ii)    The designation of at least one Contracting State of the 
International  Patent Cooperation Union (w 1.432); 

(iii)     The name of the applicant, as prescribed (note ww 1.421-1.424); 
(iv)    A part which on the face of it appears to be a description; and 
(v)   A part which on the face of it appears to be a claim. 

(c)   Payment of the basic portion of the international fee (PCT Rule 
15.2)  and the transmittal and search fees (w 1.445) may be made in full 
at the time  the international application papers required by paragraph 
(b) of this section  are deposited or within one month thereafter. If the 
basic, transmittal and  search fees are not paid within one month from the 
date of receipt of the international  application, applicant will be 
notified and given one month within which to  pay the deficient fees plus 
a late payment fee equal to the greater of: 
(1)   50% of the amount of the deficient fees up to a maximum amount equal 
 to the basic fee, or 

(2)   an amount equal to the transmittal fee (PCT Rule 16bis). 

The one-month time limit set in the notice to pay deficient fees may not 
be  extended. 

(d)   If the payment needed to cover the transmittal fee, the basic fee, 
the  search fee, one designation fee and the late payment fee pursuant to 
paragraph 
(c) of this section is not timely made, the Receiving Office will declare 
the  international application withdrawn under PCT Article 14(3)(a). 

THE ``INTERNATIONAL FILING DATE" 

An international filing date is accorded on the date on which the 
international  application was received by the receiving Office or 
pursuant to the correction  of defects   on a later date (PCT Articles 
11(1) and 11(2)(b) and PCT Rules  20.1, 20.3, 20.4(a), 20.5, and 20.6): in 
the former case, the international  filing date will be the date on which 
the international application was received  by the receiving Office; in 
the latter case, the international filing date  will be the date on which 
the correction was received by the receiving Office.  Any correction must 
be submitted by the applicant within certain time limits.  Where all the 
sheets pertaining to the same international application are not  received 
on the same day by the receiving Office, in most instances, the date  of 
receipt of the application will be amended to reflect the date on which 
the last missing sheets were received. As an amended date of receipt may 
cause  the priority claim to be forfeited,  applicants should assure that 
all sheets  of the application are deposited with the receiving Office on 
the same day.  For particulars see PCT Rule 20.2. 

An all too common occurrence is that applicants will file an international 
 application in the U.S. Receiving Office and no applicant has a U.S. 
residence  or nationality. Applicants are cautioned to be sure that at 
least one applicant  is a resident or national of the U.S. before filing 
in the U.S. Receiving Office.  Where no applicant indicated on the request 
papers is a resident or national  of the United States, the application is 
not entitled to a filing date since  the  applicant(s) obviously lacks the 
right to file in the U.S. receiving Office.  Such applicant is notified 
pursuant to PCT Article 11(2)(a) that, at the time  of receipt, the 
applicant obviously lacked under Article 11(1)(i) the right  to file based 
upon residence or nationality. A timely response to such notice  results 
in applicant being accorded a filing date under Article 11(2)(b) as  of 
the date of the response if applicant establishes residence or nationality 
 in the United States.  See 35 U.S.C. 373. 


>1812    Elements of the International Application 


PCT Article 3 
The International Application 

(1)   Applications for the protection of inventions in  any of the 
Contracting  States may be filed as international applications under this 
Treaty. 
(2)   An international application shall contain, as specified in this 
Treaty  and the Regulations, a request, a description, one or more claims, 
one or more  drawings (where required), and an abstract. 

(3)   The abstract merely serves the purpose of technical information and 
 cannot be taken into account for any other purpose, particularly not for 
the  purpose of interpreting the scope of the protection sought. 

(4)   The international application shall: 

(i)   be in a prescribed language; 

(ii)    comply with the prescribed physical requirements; 

(iii)     comply with the prescribed requirement of unity of invention; 
(iv)    be subject to the payment of the prescribed fees. 

Any international application must contain the following elements: 
request,  description, claim or claims, abstract and one or more drawings 
(where drawings  are necessary for the understanding of the invention (PCT 
Article 3(2) and  PCT Article 7(2)). The elements of the international 
application are to be  arranged in the following order: the request, the 
description, the claims,  the abstract, and the drawings (PCT 
Administrative Instruc- 

tions, Section 207(a)). All the sheets contained in the in- ternational 
application  must be numbered in consecutive Arabic numerals by using 
three separate series  of numbers; the first applying to the request, the 
second to the description,  claims and abstract, and the third to the 
drawings (PCT Rule 11.7 and PCT Administrative  Instructions Section 
207(b)). Only one copy of the international application  need be filed in 
the United States Receiving Office (37 CFR 1.433(a)). The  request is made 
on a standardized form (Form PCT/RO/101), copies of which can  be obtained 
from the PTO. Letters requesting forms should be addressed ``Box  PCT." 
The ``Request" form can now be presented as a computer print-out. The 
details of a computer generated Request form are provided in 
Administrative  Instruction Section 102. 

A18170001.bmp 


>1817    PCT Member States [R-2] 


The following is a list of PCT Member States: 




A18170001.end 



A18170002.bmp 



A18170002.end 



C18170003.bmp 



C18170003.end 

#Members of Africa Intellectual Property Organization (OAPI) regional 
patent  system. Only regional patent protection is available for OAPI 
member states.  A designation of any state is an indication that all OAPI 
states have been  designated. Note: only one designation fee is due 
regardless of the number  of OAPI member states designated. 

##Members of European Patent Convention (EPC) regional patent system. 
Either  national patents or European patents for member States are 
available through  PCT, except for Belgium, France, Greece, Ireland, 
Italy>,< * Monaco >, and  Netherlands<, for which only European patents 
are available if the PCT is used.  Note: only one PCT designation fee is 
due if European patent protection is  sought for one, several>,< or all 
EPC member countries. 

# Not bound by Chapter II. It should be noted that if ** Greece or Spain * 
 is designated for a European Patent together with at least one other 
State  party to the European Patent Convention which is bound by Chapter 
II of the  PCT, the 30 month time limit for entry into the regional phase 
before the European  Patent Office under PCT Article 39(1) applies also 
with respect to ** Greece  or Spain, if the other State has been elected 
prior to 19 months from the priority  date. 

>The following states are members of African Regional Industrial Property 
Organization 
(ARIPO) regional patent system:  (4) Malawi, (34) Sudan, (68) Kenya, (73) 
Swaziland, 
(75) Uganda, and (81) Lesotho. 

The following states are members of the Eurasian (EA) regional patent 
system: 
 (15) Russian Federation, (57) Kazakstan, (58) Belarus, (65) Kyrgyzstan, 
(66)  Republic of Moldova, (67) Tajikistan, (78) Turkmenistan, and (82) 
Azerbaijan.< 

>1817.01       Designation of States and Precautionary Designations 

37 CFR 1.432.     Designation of States and payment of designation fees. 
(a)   The designation of States including an indication that applicant 
wishes  to obtain a regional patent, where applicable, shall appear in the 
Request  upon filing and must be indicated as set forth in PCT Rule 4.9 
and section  115 of the Administrative Instructions. Applicant must 
specify at least one  national or regional designation on filing of the 
international application  for a filing date to be granted. 

(b)   If the fees necessary to cover all the national and regional 
designations  specified in the Request are not paid by the applicant 
within one year from  the priority date or within one month from the date 
of receipt of the international  application if that month expires after 
the expiration of one year from the  priority date, applicant will be 
notified and given one month within which  to pay the deficient 
designation fees plus a late payment fee equal to the  greater of 50% of 
the amount of the deficient fees up to a maximum amount equal  to the 
basic fee, or an amount equal to the transmittal fee (PCT Rule 16bis). 
The one-month time limit set in the notification of deficient designation 
fees  may not be extended. Failure to timely pay at least one designation 
fee will  result in the withdrawal of the international application. The 
one designation  fee may be paid: 

(1)   within one year from the priority date, 

(2)   within one month from the date of receipt of the international 
application  if that month expires after the expiration of one year from 
the priority date,  or 

(3)   with the late payment fee defined in this paragraph within the time 
set  in the notification of the deficient designation fees. If after a 
notification  of deficient designation fees the applicant makes timely 
payment, but the amount  paid is not sufficient to cover the late payment 
fee and all designation fees,  the Receiving Office will, after allocating 
payment for the basic, search,  transmittal and late payment fees, 
allocate the amount paid in accordance with  PCT Rule 16bis.1(c) and 
withdraw the unpaid designations. The notification  of deficient 
designation fees pursuant to this paragraph may be made simultaneously 
with any notification pursuant to w 1.431(c). 

(c)  On filing the international application, in addition to specifying at 
 least one national or regional designation under PCT Rule 4.9(a), 
applicant  may also indicate under PCT Rule 4.9(b) that all other 
designations permitted  under the Treaty are made. The latter indication 
under PCT Rule 4.9(b) must  be made in a statement on the Request that any 
designation made under this  paragraph is subject to confirmation (PCT 
Rule 4.9(c)) not later than the expiration  of 15 months from the priority 
date by: 

(1)   Filing a written notice with the United States Receiving Office 
specifying  the national and/or regional designations being confirmed; 

(2)   Paying the designation fee for each designation being confirmed; and 
(3)   Paying the confirmation fee specified in w 1.445(a)(4). 

Unconfirmed designations will be considered withdrawn. If the amount 
submitted  is not sufficient to cover the designation fee and the 
confirmation fee for  each designation being confirmed, the Receiving 
Office will allocate the amount  paid in accordance with any priority of 
designations specified by applicant.  If applicant does not specify any 
priority of designations, the allocation  of the  amount paid will be made 
in accordance with PCT Rule 16bis.1(c). 


The designation of States is the indication, in Box No. V of the request 
(except  in the last sub-box of that Box), of specific Contracting States 
in or for  which the applicant is seeking protection for his invention. 
Such a designation  is called a ``specific" designation, as distinct from 
the ``precautionary"  designations. Designations for the purpose of 
obtaining national patents are  effected by indicating each Contracting 
State concerned.  On the printed form,  this is accomplished by marking 
the appropriate check-boxes next to the names  of the States.  Where the 
applicant is seeking a European patent (for the States  party to the 
European Patent Convention) or an OAPI patent, the checkbox ``European 
Patent" or the checkbox ``OAPI Patent" must be marked.  Switzerland and 
Liechtenstein  cannot be designated independently of each other. 

Belgium, France, Greece, Italy, Monaco, and Ireland can be designated only 
 for a European Patent since only a European patent (and not a national 
patent)  can be obtained via the PCT route for those countries.  Where any 
of the other  States for which both a national and a European patent are 
available is designated  twice in the same application, namely for 
national protection and for a European patent, the application is treated 
in the international phase as an  application for a national patent in 
that State and also as an application  for a European patent with effect 
for that State. 

All designations must be made in the international application on filing; 
none  may be added later. However, there is a safety net designed to 
protect applicants  who make mistakes or omissions among the specific 
designations, by way of making  a  precautionary  designation of all other 
States which have not been specifically  designated in the Request whose 
designation would be permitted under the Treaty. 
In addition to specific designations described above, the applicant may, 
under  PCT Rule 4.9(b), indicate in the request that all designations 
which would  be permitted under the PCT are also made, provided that at 
least one specific  designation is made and that the request also contains 
a statement relating  to the confirmation of any precautionary 
designations so made. That statement  must declare that any such 
designation is subject to confirmation (as provided  in Rule 4.9(c)), and 
that any such designation which is not so confirmed before  the expiration 
of 15 months from the priority date is to be 
regarded as withdrawn by the applicant at the expiration of that time 
limit. 
Precautionary designations are effected in practice by including the 
necessary  statement in the last sub-box of Box No. V of the request (the 
statement is  set out in the printed request form). Since the 
precautionary designations  are designed particularly to enable applicants 
to correct omissions and mistakes  in the original list of specific 
designations, it is strongly recommended that  applicants make the 
precautionary designations indication (by leaving the pre-printed 
statement in the printed form, if that form is used) unless there is a 
particular  reason for doing otherwise.  The request form makes provision 
for the applicant  to omit designations if that is desired. It should be 
noted that no fees are  payable in respect of precautionary designtions 
except where the applicant  later decides to confirm them. 

Precautionary designations will be regarded as withdrawn by the applicant 
unless  they are confirmed, but the applicant is not obliged to confirm 
them. The precautionary  designation procedure enables the applicant to 
make, in the request, all designations  permitted by the PCT in addition 
to those made specifically.  For this purpose,  the request must also 
contain a statement that any precautionary designations  so made are 
subject to confirmation as provided in Rule 4.9(c) and that any 
designation which is not so confirmed before the expiration of 15 months 
from  the priority date is to be regarded as withdrawn by the applicant at 
the expiration  of that time limit.  Noting that the confirmation of 
designations is entirely  at the applicant's discretion, no notification 
is sent to the applicant reminding  him or her that the time limit for 
confirming precautionary designations is  about to expire.  Applicants are 
cautioned that in order for the confirmation  of a designation of the U.S. 
to be valid, the inventor must have been named  in the application papers 
as filed, 37 CFR 1.421(b). 

  APPLICANT FOR PURPOSES OF EACH 
DESIGNATION 

Where there is but a single applicant, the right to file an international 
application  and to designate contracting states or regions (EP or OAPI) 
exists if the applicant  is a resident or national of a contracting state. 
 The applicant can be an  individual, corporate entity or other concern. 
If the United States is to  be designated, it is particularly important to 
note that the applicant must  also be the inventor. 

In the case where there are several applicants who are different for 
different  designated states, the right to file an international 
application and to designate  contracting states or regions (EP or OAPI) 
exists if at least one of them is  a resident or national of a contracting 
state. If the United States is to be  designated, it is important to note 
that the applicant must also be the inventor. 
 If the inventor is not also the applicant, the designation of the United 
States  is invalid. 


>1817.02       Continuation or Continuation-In-Part Indication in the 
Request 

PCT Rule 4 
The Request (Contents) 

*** 

4 .14.      Continuation or Continuation-in-Part 

If the applicant wishes his international application to be treated, in 
any  designated State, as an application for a continuation or a 
continuation-in-part  of an earlier application, he shall so indicate in 
the request and shall identify  the parent application involved. 

  ***** 

Box No. V and the Supplemental Box of the Request form should be used 
where  the applicant has an earlier application in a country designated in 
the international  application and where special title or treatment of the 
international application  is desired. For example, if the applicant has a 
pending United States application,  the international application could 
contain additional subject matter and be  treated as a 
continuation-in-part in the United States, if the United States  is 
designated in the international application (PCT Rule 4.14). In this 
example,  the entries to be placed in Box No. V would be as follows: 
``United States  of America; continuation-in-part; and in the Supplemental 
Box, an entry such  as ``Continuation of Box No. V, Parent application for 
U.S. designation: United  States of America, 20 May 1981, 222,222" 
identifying the earlier pending application  should be inserted. 


>1819    Earlier International or International-Type Search 


PCT Rule 4 
Request (Contents) 

*** 

4.11.     Reference to Earlier Search 

If an international or international-type search has been requested on an 
application  under Article 15(5) or if the applicant wishes the 
International Searching Authority to base the international search report 
wholly  or in part on the results of a search, other than an international 
or international-type  search, made by the national Office or 
intergovernmental organization which  is the International Searching 
Authority competent for the international application,  the request shall 
contain a reference to that fact. Such reference shall either  identify 
the application (or its translation, as the case may be) in respect  of 
which the earlier search was made by indicating country, date and number, 
or the said search by indicating, where applicable, date and number of the 
 request for such search. 

***** 

Certain International Searching Authorities refund part or all of the 
international  search fee or reduce the amount of the international search 
fee where the in- ternational search can be based wholly or partly on an 
earlier search (whether an international, international-type, or other 
search)  made by them. The United States provides for a reduced search fee 
where there  is a corresponding prior U.S. national application. 

Where the earlier search by the International Searching Authority was made 
 in relation to a national, regional (for instance, European) or 
international  application, that application must be identified in Box No. 
VII of the request  by an indication of the country of filing (or the 
European Patent Office),  and the number and filing date of that 
application.  Note that, if the earlier  search was made on the basis of a 
translation of that application into a language  other than that in which 
the application was filed, that translation must also  be identified in 
Box No. VII.  Where the earlier search was made independently  of a patent 
granting procedure (for instance, a standard search by the European 
Patent Office), a reference must be made to the date of the request for 
that  search and the number given to the request by the International 
Searching Authority. 
The United States Patent and Trademark Office performs an 
international-type  search on all U.S. national applications filed on and 
after 01 June 1978. No  specific request by the applicant is required and 
no number identifying the  international-type search is assigned by the 
Office. All earlier U.S. applications  referred to in Box No. VI and Box 
No. VII as well as all U.S. applications  referred to in separate 
transmittal letters will be considered by the Office.  See 37 CFR 1.104(c) 
and (d). The forms to be used for recording an international-type  search 
can be obtained from the International Division. 

Box No. VII should be used to identify related international applications 
whether  or not priority of that application is claimed. 


>1820    Signature of Applicant 


PCT Rule 4 
Request (Contents) 

*** 

4.15.     Signature 

(a)     Subject to paragraph (b), the request shall be signed by the 
applicant  or, if there is more than one applicant, by all of them. 

(b)   Where two or more applicants file an international application which 
 designates a State whose national law requires that national applications 
be  filed by the inventor and where an applicant for that designated State 
who  is an inventor refused to sign the request or could not be found or 
reached  after diligent effort, the request need not be signed by that 
applicant if  it is signed by at least one applicant and a statement is 
furnished explaining,  to the satisfaction of the receiving Office, the 
lack of the signature concerned. 
  ***** 

SIGNATURE OF APPLICANT OR AGENT 

The international application must be signed in Box No. IX of the request 
by  the applicant, or, where there are two or more applicants, by all of 
them.  Subject to certain conditions, the request may be signed by the 
agent instead  of the applicant(s). Pursuant to 37 CFR 1.4(d), the request 
filed may be either  an original, or a copy thereof. Certain papers may be 
filed by facsimile transmission.  See 37 CFR 1.6(d) and the discussion in 
MPEP w 1805. 

The international application may be signed by an agent, but in that case 
the  agent must be appointed as such by the applicant in a separate power 
of attorney  signed by the applicant.  If there are two or more 
applicants, the request  may be signed by an agent on behalf of all or 
only some of them; in that case  the agent must be appointed as such in 
one or more powers of attorney signed  by the applicants on whose behalf 
the agent signs the application. Where a  power of attorney appointing an 
agent who signs an international application  is missing, the signature is 
treated as missing until the power of attorney  is submitted. 

The signature should be executed in black indelible ink. The name of each 
person  signing the international application should be indicated 
(preferably typewritten)  next to the signature. Where the person signs on 
behalf of a legal entity,  the capacity in which he signs should also be 
indicated. 

Where an applicant is temporarily unavailable, the international 
application  can be filed without his or her signature. The lack of an 
applicant's signature or of a signed power of attorney  is a correctable 
defect under Article 14(1)(a)(i) and (b), and can be remedied  by filing a 
copy of the request (or, where the request has been signed by an  agent, 
of a power of attorney) duly signed by the applicant within the time 
limit fixed by the receiving Office for the correction of this defect. 
APPLICANT INVENTOR UNAVAILABLE OR 
UNWILLING TO SIGN THE INTERNATIONAL APPLICATION OR OTHER DOCUMENTS 
The PCT provides a special procedure, where two or more applicants file an 
 international application designating the United States of America, which 
enables  the international application to proceed if an applicant inventor 
for the United  States of America refuses to sign or cannot be found or 
reached after diligent  effort. This procedure makes an exception to the 
general rule that all applicants  must sign the request (or a separate 
power of attorney appointing an agent  who then signs the request). Its 
operation is limited to signature of the request  by applicants for the 
purposes of the designation of a State whose national  law requires that 
national applications be filed by the inventor (the United  States of 
America is the only Contracting State to have such a requirement  in its 
national law). 

It is provided by Rule 4.15(b) that, where an applicant inventor for the 
designation  of the United States of America refused to sign the request 
or could not be  found or reached after diligent effort, the request need 
not be signed by that  applicant inventor if it is signed by at  least one 
applicant and a statement  is furnished explaining, to the satisfaction of 
the receiving Office, the lack  of the signature concerned. If such a 
statement is furnished to the satisfaction  of the receiving Office, the 
international application complies with the requirements  of Article 
14(1)(a)(i) for the purposes of all designated States (including  the 
United States of America) without adverse consequences in the 
international  phase.  However, additional proofs may be required by the 
United States Patent  and Trademark Office after entry into the national 
phase if the required oath  or declaration by the inventor is not signed 
by all the applicant inventors. 
The lack of a signature constitutes a defect under Article 14(1)(a)(i), 
and  the statement must thus be filed within the time limit set by the 
receiving  Office for correction of such defects in accordance with 
Article 14(1)(b) and  Rule 26.2. That time limit is fixed, in each case, 
in the invitation by the  receiving Office to correct any defects under 
Article 14(1)(a);  the time limit  must be reasonable under the 
circumstances, must be not less than 1 month from  the date of the 
invitation, and may be extended by the receiving Office at  any time 
before a decision is taken under Rule 26. 

If the request lacks the signature of an applicant inventor for the United 
 States of America and a satisfactory statement cannot be furnished for 
the  purposes of Rule 4.15(b), the international application will be 
considered  withdrawn. The Receiving Office will issue a declaration of 
withdrawal. 
Provisions similar to Rule 4.15(b) apply to excuse a lack of signature by 
an  applicant inventor for the United States of America of certain other 
documents  connected with the international application, provided that a 
similar statement  is furnished explaining the lack of signature to the 
Office or Authority concerned. 
 These documents are the Demand, any notice of a later election, and a 
notice  of withdrawal of the international application, a designation, a 
priority claim,  or an election. Note, however, that the signatures of all 
the applicants are  not required for all of those documents for example, 
the Demand may be signed  by the common representative (including an 
applicant who is considered to be  the common representative. 

PCT Rule 4.15(b) is implemented in the United States through 37 CFR 1.425, 
 which provides: 

37 CFR 1.425.     Filing by other than inventor. 

(a)   If a joint inventor refuses to join in an international application 
which  designates the United States of America or cannot be found or 
reached after  diligent effort, the international application which 
designates the United  States of America may be filed by the other 
inventor on behalf of himself or  herself and the omitted inventor. Such 
an international application which designates  the United States of 
America must be accompanied by proof of the pertinent  facts and must 
state the last known address of the  omitted inventor. The Patent  and 
Trademark Office shall forward notice of the filing of the international 
application to the omitted inventor at said address. 

(b)   Whenever an inventor refuses to execute an international application 
 which designates the United States of America, or cannot be found or 
reached  after diligent effort, a person to whom the inventor has assigned 
or agreed  in writing to assign the invention or who otherwise shows 
sufficient proprietary  interest in the matter justifying such action may 
file the international application  on behalf of and as agent for the 
inventor. Such an international application  which designates the United 
States of America, must be accompanied by proof  of the pertinent facts 
and a showing that such action is necessary to preserve  the rights of the 
parties or to prevent irreparable damage, and must state  the last known 
address of the inventor. The assignment, written agreement to assign or 
other  evidence of proprietary interest, or a verified copy thereof, must 
be filed  in the Patent and Trademark Office. The Office shall forward 
notice of the  filing of the application to the inventor at the address 
stated in the application. 
Where there are joint inventors other than the non-signing 
inventor-applicant,  the available joint inventors should sign the request 
form on behalf of themselves  and the non-signing inventor. Where a sole 
inventor or all of the joint inventors  refuse to sign the request or 
cannot be located, a person who demonstrates  a sufficient proprietary 
interest in the subject matter may make the application  on behalf of the 
non-signing inventor(s). In both instances, the application  must be 
accompanied by sufficient proof that the non-signing inventor(s) either 
refuse to sign or cannot be located after diligent effort. Such proof 
should  take the form of verified statements by persons with first hand 
knowledge of  the pertinent facts. The last known address of the 
non-signing inventor must  be given. Under 37 CFR 1.425(b), proof of the 
requisite proprietary interest  must be filed and a showing must be made 
that such action is necessary to preserve  the rights of the parties. 

APPLICANT-INVENTOR DECEASED 

37 CFR 1.422.     When the inventor is dead. 

In case of the death of the inventor, the legal representative (executor, 
administrator,  etc.) of the deceased inventor may file an international 
application which  designates the United States of America. 

Proof of the authority of the legal representative must be filed. Such 
proof  normally takes the form of a certificate of the clerk of a 
competent court  or the register of wills that the legal representative's 
appointment is still  in full force and effect. Such certificate should be 
signed by an officer and  authenticated by the seal of the court by which 
the same was issued. If the  certificate is not in the  English language, 
an English translation is also  required. In the case of foreign executors 
or administrators, a consular officer  of the United States or a notary 
public from a member country to the Hague  Convention Abolishing the 
Requirement of Legalization for Foreign Public Documents  must 
authenticate the signature of the foreign officer attesting to the papers 
submitted as proof of authority. See MPEP w 409.01(b) and w 602.04. 

>1821    The Request 


A general overview of certain aspects of the request follows. 

37 CFR 1.434.     The request. 

(a)   The request shall be made on a standardized form (PCT Rules 3 and 
4).  Copies of printed Request forms are available from the Patent and 
Trademark  Office. Letters requesting printed forms should be marked ``Box 
PCT." 
(b)   The Check List portion of the Request form should indicate each 
document  accompanying the international application on filing. 

(c)   All information, for example, addresses, names of States and dates, 
shall  be indicated in the Request as required by PCT Rule 4 and 
Administrative Instructions  110 and 201. 

(d)   International applications which designate the United States of 
America  shall include: 

(1)   The name, address and signature of the inventor, except as provided 
by  ww 1.421(d), 1.422, 1.423 and 1.425; 

(2)   A reference to any copending national application or international 
application  designating the United States of America, if the benefit of 
the filing date  for the prior copending application is to be claimed. 

The request must either be made on a printed form to be filled in with the 
 required indications or be presented as a computer print-out complying 
with  the Administrative Instructions. Any prospective applicant may 
obtain copies  of the printed request form, free of charge, from the 
receiving Office with  which he/she plans to file his/her international 
application, or from the International  Bureau. Details of the 
requirements for the request if presented as a computer  print-out are set 
out in Administrative Instructions Section 102(h). 
The request contains a petition for the international application to be 
processed  according to the PCT and must also contain certain indications. 
It must contain  the title of the invention. It must identify the 
applicant, (normally) the  inventor, and the agent (if any), and must 
contain the designation of at least  one Contracting State.  The request 
must contain an indication of any wish  of the applicant's to obtain a 
European patent rather than, or in addition  to, a  national patent in 
respect of a designated State. 

DATES 

Each date appearing in the international application or in any 
correspondence  must be indicated by the Arabic number of the day, the 
name of the month and  the Arabic number of the year, in that order. In 
the request, after, below  or above that indication, the date should be 
repeated in parentheses with a  two-digit Arabic numeral each for the 
number of the day, the number of the  month and the last two figures of 
the year, in that order and separated by  periods, slashes or hyphens for 
example 
10 June 1986 (10.06.86); (10/06/86) or (10-06-86). 

Any prospective applicant may obtain English language Request forms free 
of  charge from the United States Patent and Trademark Office, Box PCT, 
Washington,  D.C. 20231. The Request may not contain any matter that is 
not specified in  PCT Rule 4. Any addition- 
al material will be deleted ex officio (Administrative 
Instruction Section 303). 

SUPPLEMENTAL BOX 

This box is used for any material which cannot be placed in one of the 
previous  boxes because of space limitations. The supplemental information 
placed in  this box should be clearly entitled with the Box number from 
which it is continued,  e.g., "Continuation of Box No. IV." 

FILE REFERENCE 

The applicant or his/her agent may indicate a file reference in the box 
provided  for the purpose on the first sheet of the request form, on each 
page of the  other elements of the international application, on the first 
sheet of the  demand form, and in any other correspondence relating to the 
international  application.The file reference may be composed either of 
letters of the Latin  alphabet or Arabic numerals, or both. It may not 
exceed 12 characters. The  receiving Office, the International Bureau, the 
International Searching Authority  and the International Preliminary 
Examining Authority will use the file reference  in correspondence with 
the applicant. 

TITLE OF THE INVENTION 

The Request must contain the title of the invention; the title must be 
short 
(preferably 2 to 7 words) and precise (PCT Rule 4.3). The title in Box No. 
 I of the Request is considered to be the title of the application. The 
title  appearing on the first page of the description (PCT Rule 5.1(a)) 
and on the  page containing the abstract should be consistent with the 
title indicated  in Box No. I of the 
Request form. 

A title should not be changed by the examiner merely because it contains 
words  which are not considered  descriptive of the invention. Words, for 
example,  such as "improved" or  "improvement of" are acceptable. If the 
title is otherwise  not descriptive of the invention, a change to a more 
descriptive title should  be made and the applicant informed thereof in 
the Search report. 

Where the title is missing or is inconsistent with the title in the 
description,  the Receiving Office invites the applicant to correct the 
missing or inconsistent  title. 

APPLICANT 

Any resident or national of a Contracting State may file an international 
application.  Where there are two or more applicants, at least one of them 
must be a national  or a resident of a PCT Contracting State. 

The question whether an applicant is a resident or national of a 
Contracting  State depends on the national law of that State and is 
decided by the receiving  Office. Also, possession of a real and effective 
industrial or commercial establishment  in a Contracting State may be 
considered residence in that State, and a legal  entity constituted 
according to the national law of a Contracting State is  considered a 
national of that State. 

The applicant must be identified by the indication of his/her name and 
address  and by marking next to that indication, the check-box "This 
person is also  inventor" in Box No. II, or "applicant and inventor" in 
Box No. III, where  the applicant is also the inventor or one of the 
inventors, or the check-box  "applicant only" where the applicant is not 
the inventor or one of the inventors.  Where the applicant is a 
corporation or other legal entity (that is, not a  natural person), the 
check-box "applicant only" must be marked. The applicant's  nationality 
and residence must also be indicated. 

NAMES 

The names of a natural person must be indicated by the family name 
followed  by the given name(s). Academic degrees or titles or other 
indications which  are not part of the person's name must be omitted. The 
family name should preferably  be written in capital letters. 

The name of a legal entity must be indicated by its full official 
designation 
(preferably in capital letters). 

ADDRESSES 

Addresses must be indicated in such a way as to satisfy the requirements 
for  prompt postal delivery at the address indicated and must consist of 
all the  relevant administrative units up to and including the house 
number (if any).  The address must also include the country. 


>1823    The Description 


PCT Article 5 
The Description 

The description shall disclose the invention in a manner sufficiently 
clear  and complete for the invention to be carried out by a person 
skilled in the  art. 

PCT Rule 5 
 The Description 

5.1.    Manner of the Description 

(a)   The description shall first state the title of the invention as 
appearing  in the request and shall: 

(i)   specify the technical field to which the invention relates; 
(ii)    indicate the background art which, as far as known to the 
applicant,  can be regarded as useful for the understanding, searching and 
examination  of the invention, and, preferably, cite the documents 
reflecting such art; 
(iii)     disclose the invention, as claimed, in such terms that the 
technical  problem (even if not expressly stated as such) and its solution 
can be understood,  and state the advantageous effects, if any, of the 
invention with reference  to the background art; 

(iv)    briefly describe the figures in the drawings, if any; 

(v)   set forth at least the best mode contemplated by the applicant for 
carrying  out the invention claimed; this shall be done in terms of 
examples, where appropriate,  and with reference to the drawings, if any; 
where the national law of the designated  State does not require the 
description of the best mode but is satisfied with  the description of any 
mode (whether it is the best contemplated or not), failure  to describe 
the best mode contemplated shall have no effect in that State; 
(vi)    indicate explicitly, when it is not obvious from the description 
or  nature of the invention, the way in which the invention is capable of 
exploitation  in industry and the way in which it can be made and used, 
or, if it can only  be used, the way in which it can be used; the term 
industry  is to be understood  in its broadest sense as in the Paris 
Convention for the Protection of Industrial  Property. 

(b)   The manner and order specified in paragraph (a) shall be followed 
except  when, because of the nature of the invention, a different manner 
or a different  order would result in a better understanding and a more 
economic presentation. 
(c)     Subject to the provisions of paragraph (b), each of the parts 
referred  to in paragraph (a) shall preferably be preceded by an 
appropriate heading  as suggested in the Administrative Instructions. 

***** 

PCT Administrative Instruction Section 204 
Headings of the Parts of the Description 

The headings referred to in Rule 5.1(c) should be as follows: 

(i)   for matter referred to in Rule 5.1(a)(i),  ``Technical Field"; 
(ii)    for matter referred to in Rule 5.1(a)(ii), ``Background Art"; 
(iii)     for matter referred to in Rule 5.1(a)(iii), ``Disclosure of 
Invention" 
(iv)    for matter referred to in Rule 5.1(a)(iv), ``Brief Description of 
Drawings"; 
(v)     for matter referred to in Rule 5.1(a)(v), ``Best Mode for Carrying 
 Out the Invention," or, where appropriate, ``Mode(s) for Carrying Out the 
Invention"; 
(vi)    for matter referred to in Rule 5.1(a)(vi), ``Industrial 
Applicability." 
PCT Administrative Instruction Section 209 
Indications as to Deposited Microorganisms on a Separate Sheet 

(a)   To the extent that any indication with respect to a deposited 
microorganism  is not contained in the description, it may be given on a 
separate sheet.   Where any such indication is so given, it shall 
preferably be on Form PCT/RO/134  and, if furnished at the time of filing, 
the said Form shall, subject to paragraph (b),  preferably be attached to 
the request and referred to in the check list referred  to in Rule 3.3(a)(ii). 

(b)   For the purposes of the Japanese Patent Office when Japan is 
designated,  paragraph (a) applies only to the extent that the said Form 
or sheet is included  as one of the sheets of the description of the 
international application at  the time of filing. 

37 CFR 1.435  The description. 

(a)   Requirements as to the content and form of the description are set 
forth  in PCT Rules 5, 9, 10 and 11 and Administrative Instruction 204, 
and shall  be adhered to. 

(b)   In international applications designating the United States the 
description  must contain upon filing an indication of the best mode 
contemplated by the  inventor for carrying out the claimed invention. 

The description must disclose the invention in a manner sufficiently clear 
 and complete for it to be carried out by a pers on skilled in the art. It 
must  start with the title of the invention as appearing in Box No. I of 
the request.  Rule 5 contains detailed requirements as to the manner and 
order of the description,  which, generally, should be in six parts. Those 
parts should have the following  headings:  ``Technical Field," 
``Background Art," ``Disclosure of Invention,"  ``Brief Description of 
Drawings," ``Best Mode for Carrying Out the Invention"  or, where 
appropriate, ``Mode(s) for Carrying Out the 
Invention," and ``Industrial Applicability." 

The details required for the disclosure of the invention so that it can be 
 carried out by a person skilled in the art depend on the practice of the 
national  Offices. It is therefore recommended that due account be taken 
of national  practice in the United States of America when the description 
is drafted. 
The need to amend the description during the national phase may thus be 
avoided. 
This applies likewise to the need to indicate the ``best mode for carrying 
 out the invention."  If at least one of the designated Offices requires 
the  indication of the  best mode  (for instance, the United States Patent 
and Trademark  Office), that best mode must be indicated in the description. 

A description drafted with due regard to what is said in these provisions 
will  be accepted by all the designated Offices. It might require more 
care than  the drafting of a national patent application, but certainly 
much less effort  than the drafting of multiple applications, which is 
necessary where the PCT  route is not used for filing in several countries. 


>1823.01       Reference to Deposited Microorganism 


PCT Rule 13bis 
Microbiological inventions 

13bis.1       Definition 

For the purposes of this Rule, ``reference to a deposited microorganism" 
means  particulars given in an international application with respect to 
the deposit  of a microorganism with a depositary institution or to the 
microorganism so  deposited. 

13bis.2.        References (General) 

Any reference to a deposited microorganism shall be made in accordance 
with  this Rule and, if so made, shall be considered as satisfying the 
requirements  of the national law of each designated State. 

13bis.3.        References: Contents; Failure to Include Reference or 
Indication 
(a)   A reference to a deposited microorganism shall indicate, 

(i)   the name and address of the depositary institution with which the 
deposit  was made; 

(ii)    the date of deposit of the microorganism with that institution; 
(iii)     the accession number given to the deposit by that institution; 
and 
(iv)    any additional matter of which the International Bureau has been 
notified  pursuant to Rule 13bis.7(a)(i), provided that the requirement to 
indicate that  matter was published in the Gazette in accordance with Rule 
13bis.7(c) at least  two months before the filing of the international 
application. 

(b)   Failure to include a reference to a deposited microorganism or 
failure  to include, in a reference to a deposited microorganism, an 
indication in accordance  with paragraph (a), shall have no consequence in 
any designated State whose  national law does not require such reference 
or such indication in a national  application. 

13bis.4.        References: Time of Furnishing Indications 

If any of the indications referred to in Rule l3bis.3(a) is not included 
in  a reference to a deposited microorganism in the international 
application as  filed but is furnished by the applicant to the 
International Bureau within  16 months after the priority date, the 
indication shall be considered by any  designated Office to have been 
furnished in time unless its national law requires  the indication to be 
furnished at an earlier time in the case of a national  application and 
the International Bureau has been notified of such requirement  pursuant 
to Rule 13bis.7(a)(ii), provided that the International Bureau has 
published such requirement in the Gazette in accordance with Rule 
13bis.7(c)  at least two months before the filing of the international 
application. In  the event that the applicant makes a request for early 
publication under Article  21(2)(b), however, any designated Office may 
consider any indication not furnished  by the time such request is made as 
not having been furnished in time. Irrespective  of whether the applicable 
time limit under the preceding sentences has been  observed, the 
International Bureau shall notify the applicant and the designated 
Offices of the date on which it has received any indication not included 
in  the international application as filed. The International Bureau shall 
indicate  that date in the international publication of the international 
application  if the indication has been furnished to it before the 
completion of technical  preparations international publication. 

13bis.5.        References and Indications for the Purposes of One or More 
 Designated States; Different Deposits for Different Designated States; 
Deposits  with Depositary Institutions Other Than Those Notified 

(a)   A reference to a deposited microorganism shall be considered to be 
made  for the purposes of all designated States, unless it is expressly 
made for  the purposes of certain of the designated States only; the same 
applies to  the indications included in the reference. 

(b)   References to different deposits of the microorganism may be made 
for  different designated States. 

(c)   Any designated Office shall be entitled to disregard a deposit made 
with  a depositary institution other than one notified by it under Rule 
13bis.7(b). 
13bis.6.        Furnishing of Samples 

(a)   Where the international application contains a reference to a 
deposited  microorganism, the applicant shall, upon the request of the 
International Searching  Authority or the International Preliminary 
Examining Authority, authorize and  assure the furnishing of a sample of 
that microorganism by the depositary institution  to the said Authority, 
provided that the said Authority has notified the International  Bureau 
that it may require the furnishing of samples and that such samples  will 
be used solely for the purposes of international search or international 
preliminary examination, as the case may be, and such notification has 
been  published in the Gazette. 

(b)   Pursuant to Articles 23 and 40, no furnishing of samples of the 
deposited  microorganism to which a reference is made in an international 
application  shall, except with the authorization of the applicant, take 
place before the  expiration of the applicable time limits after which 
national processing may  start under the said Articles. However, where the 
applicant performs the acts  referred to in Articles 22 or 39 after 
international publication but before  the expiration of the said time 
limits, the furnishing of samples of the deposited  microorganism may take 
place, once the said acts have been performed. Notwithstanding  the 
previous provision, the furnishing of samples of the deposited 
microorganism  may take place under the national law applicable for any 
designated Office  as soon as, under that law, the international 
publication has the effects of  the compulsory national publication of an 
unexamined national application. 
13bis.7.        National Requirements: Notification and Publication 
(a)   Any national Office may notify the International Bureau of any 
requirement  of the national law, 

(i)   that any matter specified in the notification, in addition to those 
referred  to in Rule 13bis.3(a)(i), (ii) and (iii), is required to be 
included in a reference  to a deposited microorganism in a national 
application; 

(ii)    that one or more of the indications referred to in Rule 13bis.3(a) 
 are required to be included in a national application as filed or are 
required to be furnished at a time specified in the notification which is 
earlier  than 16 months after the priority date. 

(b)   Each national Office shall notify the International Bureau of the 
depositary  institutions with which the national law permits deposits of 
microorganisms  to be made for the purposes of patent procedure before 
that Office or, if the  national law does not provide for or permit such 
deposits, of that fact. 
(c)   The International Bureau shall promptly publish in the Gazette 
requirements  notified to it under paragraph (a) and information noti- 
fied  to it under paragraph (b). 

PCT Administrative Instruction Section 209 
Indications as to Deposited Microorganisms on a Separate Sheet 

(a)   To the extent that any indication with respect to a deposited 
microorganism  is not contained in the description, it may be given on a 
separate sheet.   Where any such indication is so given, it shall 
preferably be on Form PCT/RO/134  and, if furnished at the time of filing, 
the said Form shall, subject to paragraph (b),  preferably be attached to 
the request and referred to in the check list referred  to in Rule 3.3(a)(ii). 

(b)   For the purposes of the Japanese Patent Office when Japan is 
designated,  paragraph (a) applies only to the extent that the said Form 
or sheet is included  as one of the sheets of the description of the 
international application at  the time of filing. 

REFERENCES TO DEPOSITED 
MICROORGANISMS IN THE CASE OF 
MICRO-BIOLOGICAL INVENTIONS 

The PCT does not require the inclusion of a reference to a microorganism 
and/or  to its deposit with a depositary institution in an international 
application;  it merely prescribes the contents of any ``reference to a 
deposited microorganism" 
(defined as ``particulars given ... with respect to the deposit of a 
microorganism  ... or to the microorganism so deposited") which is 
included in an international  application, and when such a reference must 
be furnished. It follows that the  applicant may see a need to make such a 
reference only when it is required  for the purpose of disclosing the 
invention claimed in the international application  in a manner sufficient 
for the invention to be carried out by a person skilled  in the art that 
is, when the law of at least one of the designated States provides  for 
the making, for this purpose, of a reference to a deposited microorganism 
if the invention involves the use of a microorganism that is not available 
 to the public.  Any reference to a deposited microorganism furnished 
separately  from the description will be included in the pamphlet 
containing the published  international application. 

A reference to a deposited microorganism made in accordance with the 
requirements  of the PCT must be regarded by each of the designated 
Offices as satisfying  the requirements of the national law applicable in 
that Office with regard  to the contents of such references and the time 
for furnishing them. 
A reference may be made for the purposes of all designated States or for 
one  or only some of the designated States.  A reference is considered to 
be made  for the purpose of all designated States unless it is expressly 
made for certain  designated States only.  References to different 
deposits may be made for the  purposes of different designated States. 

There are two kinds of indication which may have to be given with regard 
to  the deposit of the microorganism, 
namely: 

(a)   indications specified in the PCT Regulations  themselves;  and 
(b)   additional indications by the national (or regional) Office of (or 
acting  for) a State designated in the international application and which 
have been  published in the PCT Gazette; these additional indications may 
relate not only  to the deposit of the microorganism but also to the 
microorganism itself. 
The indications in the first category are: 

(i)   the name and address of the depositary institution with which the 
deposit  was made; 

(ii) the date of the deposit with that institution;  and 

(iii) the accession number given to the deposit by that institution. 
U.S. requirements include the name and address of the depository 
institution  at the time of filing, the date of the deposit or a statement 
that the deposit  was made on or before the priority date of the 
international application and,  to the extent possible, a taxonomic 
description of the microorganism. See Annex  L of the PCT Applicants Guide. 

The national laws of some of the national (or regional) Offices require 
that,  besides indications concerning the deposit of a microorganism, an 
indication  be given concerning the microorganism itself, such as, for 
example, a short  description of its characteristics, at least to the 
extent that this information  is available to the applicant. These 
requirements must be met in the case of  international applications for 
which any such Office is a designated Office,  provided that the 
requirements have been published in the PCT Gazette. Annex L  of the PCT 
Applicant's Guide indicates, for each of the national (or regional) 
Offices,  the requirements (if any) of this kind which have been 
published. 
If any indication is not included in a reference to a deposited 
microorganism  contained in the international application as filed, it may 
be furnished to  the International Bureau within 16 months after the 
priority date unless the  International Bureau has been notified (and, at 
least 2 months prior to the  filing of the international application, it 
has published in the PCT Gazette)  that the national law requires the 
indication to be furnished earlier.  However,  if the applicant makes a 
request for early publication, all indications should  be furnished by the 
time the request is made, since any designated Office may  regard any 
indication not furnished when the request is made as not having  been 
furnished in time. 

No check is made in the international phase to determine whether a 
reference  has been furnished within the prescribed time limit. However, 
the International  Bureau notifies the designated Offices of the date(s) 
on which indications,  not included in the international application as 
filed were furnished to it.  Those dates are also mentioned in the 
pamphlet containing the published international  application. Failure to 
include a reference to a deposited microorganism (or  any indication 
required in such a reference) in the international application  as filed, 
or failure to furnish it  (or the indication) within the prescribed  time 
limit, has no consequence if the national law does not require the 
reference 
(or indication) to be furnished in a national application. Where there is 
a  consequence, it is the same as that which applies under the national 
law. 
To the extent that indications relating to the deposit of a microorganism 
are  not given in the description, because they are furnished later, they 
may be  given in the ``optional sheet" provided for that purpose. If the 
sheet is submitted  when the international application is filed, a 
reference to it should be made  in the check list contained on the last 
sheet of the request form. Should Japan  be designated, such a sheet must, 
if used, be included as one of the sheets  of the description at the time 
of filing; otherwise the indications given in  it will not be taken into 
account by the Japanese Patent Office in the national  phase. If the sheet 
is furnished to the International Bureau later, it must  be enclosed with 
a letter. 

Each national (or regional) Office whose national law provides for 
deposits  of microorganisms for the purposes of patent procedure notifies 
the International  Bureau of the depositary institutions with which the 
national law permits such  deposits to be made. Information on the 
institutions notified by each of those  Offices is published by the 
International Bureau in the PCT Gazette. 
A reference to a deposit cannot be disregarded by a designated Office for 
reasons  pertaining to the institution with which the microorganism was 
deposited if  the deposit referred to is one made with a depositary 
institution notified  by that Office. Thus, by consulting the PCT Gazette 
or Annex L of the PCT Applicant's  Guide, the applicant can be sure that 
he has deposited the microorganism with  an institution which will be 
accepted by the designated Office. 

International Searching Authorities and International Preliminary 
Examining  Authorities are not expected to request access to deposited 
microorganisms.  However, in order to retain the possibility of access to 
a deposited microorganism  referred to in an international application 
which is being searched or examined  by such an Authority, the PCT 
provides that the Authorities may, if they fulfill  certain conditions, 
ask for samples. Thus, an Authority may only ask for samples  if it has 
notified the International Bureau (in a general notification) that  it may 
require samples and the International Bureau has published the 
notification  in the PCT Gazette. The only Authority which has made such a 
notification (and  thus the only Authority which may request samples) is 
the Japanese Patent Office. 
 If a sample is asked for, the request is directed to the applicant, who 
then  becomes responsible for making the necessary arrangements for the 
sample to  be provided. 

The furnishing of samples of a deposit of a microorganism to third persons 
 is governed by the national laws applicable in the designated Offices. 
Rule 13bis.6(b),  however, provides for the delaying of any furnishing of 
samples under the   national law applicable in each of the designated (or 
elected) Offices until  the start of the national phase, subject to the 
ending of this ``delaying effect"  brought about by the occurrence of 
either of the following two events: 
(i)   the applicant has, after international publication of the 
international  application, taken the steps necessary to enter the 
national phase before the  designated Office. 

(ii) international publication of the international application has been 
effected,  and that publication has the same effects, under the national 
law applicable  in the designated Office, as the compulsory national 
publica-tion of an unexamined  national application (in other words, the 
international application has qualified  for the grant of ``provisional 
protection"). 


>1823.02       Nucleotide and/or Amino Acid Sequence Listings [R-1] 

Rule 5 
The Description 

*** 

PCT 5.2.        Nucleotide and/or Amino Acid Sequence Disclosure 

Where the international application contains disclosure of a nucleotide 
and/or  amino acid sequence, the description shall contain a listing of 
the sequence  complying with the standard prescribed by the Administrative 
Instructions. 
PCT Rule 13ter 
Nucleotide and/or Amino Acid Sequence Listings 

13ter.1.        Sequence Listing for International Authorities 

(a)   If the International Searching Authority finds that a nucleotide 
and/or  amino acid sequence listing does not comply with the standard 
prescribed in  the Administrative Instructions under Rule 5.2, and/or is 
not in a machine  readable form provided for in those Instructions, it may 
invite the applicant,  within a time limit fixed in the invitation, as the 
case may be: 

(i)   to furnish to it a listing of the sequence complying with the 
prescribed  standard, and/or 

(ii)    to furnish to it a listing of the sequence in a machine readable 
form  provided for in the Administrative Instructions or, if that 
Authority is prepared  to transcribe the sequence listing into such a 
form, to pay for the cost of  such transcription. 

(b)   Any sequence listing furnished under paragraph (a) shall be 
accompanied  by a statement to the effect that the listing does not 
include matter which  goes beyond the disclosure in the international 
application as filed. 
(c)   If the applicant does not comply with the invitation within the time 
 limit fixed in the invitation, the International Searching Authority 
shall  not be required to search the international application to the 
extent that  such non-compliance has the result that a meaningful search 
cannot be carried  out. 

(d)   If the International Searching Authority chooses, under paragraph 
(a)(ii),  to transcribe the sequence listing into a machine readable form, 
it shall send  a copy of such transcription in machine readable form to 
the applicant. 
(e)   The International Searching Authority shall, upon request, make 
available  to the International Preliminary Examining Authority a copy of 
any sequence  listing furnished to it, or as transcribed by it, under 
paragraph (a). 
(f)   A sequence listing furnished to the International Searching 
Authority,  or as transcribed by it, under paragraph (a) shall not form 
part of the international  application. 

13ter.2       Sequence Listing for Designated Office 

(a)   Once the processing of the international application has started 
before  a designated Office, that Office may require the applicant to 
furnish to it  a copy of any sequence listing furnished to the 
International Searching Authority,  or as transcribed by that Authority, 
under Rule 13ter.1(a). 

(b)   If a designated Office finds that a nucleotide and/or amino acid 
sequence  listing does not comply with the standard prescribed in the 
Administrative  Instructions under Rule 5.2, and/or is not in a machine 
readable form provided  for in those Instructions, and/or no listing of 
the sequence was furnished  to the International Searching Authority, or 
transcribed by that Authority,  under Rule 13ter.1(a), that Office may 
require the applicant: 

(i)   to furnish to it a listing of the sequence complying with the 
prescribed  standard, and/or 

(ii)    to furnish to it a listing of the sequence in a machine readable 
form  provided for in the Administrative Instructions or, if that Office 
is prepared  to transcribe the sequence listing into such a form, to pay 
for the cost of  such transcription. 

PCT Administrative Instruction Section 208 
**>Sequence Listings 

        (a) Any nucleotide and/or amino acid sequence listing (``sequence 
listing")  shall be presented in a format complying with WIPO Standard 
ST.23 (Recommendation  for the Presentation of Nucleotide and Amino Acid 
Sequence Listings in Patent  Applications and in Published Patent Documents). 

        (b) Any machine readable form of a sequence listing shall comply 
with  the required format in accordance with Annex C. 

        (c) Any sequence listing not forming part of the international 
application  shall, when furnished, be accompanied by a statement to the 
effect that the  listing does not include matter which goes beyond the 
disclosure in the international  application as filed. 

        (d) Sheets of a sequence listing in printed form not forming part 
of  the international application shall be sequentially numbered in a 
series separate  from that used in numbering the sheets of the 
international application; the  number of each sheet shall preferably 
consist of two Arabic numerals separated  by a slant, the first being the 
sheet number and the second being the total  number of such sheets (for 
example, 1/3, 2/3, 3/3).< 

ANNEX C to the PCT Administrative Instructions 

FORMAT FOR NUCLEOTIDE AND/OR AMINO ACID 
SEQUENCE LISTINGS IN MACHINE READABLE FORM 

*** 

United States Patent and Trademark Office (USPTO) 

A sequence listing is required for all disclosures of sequence information 
 in which the sequence has four or more amino acids or ten or more 
nucleotides.  Branched sequences and those including D-amino acids are 
excluded from the  rules. 

The USPTO has not adopted the use of an OCR format and it is not expected 
that  such a format will be adopted by the USPTO. 

Sections 1.821 to 1.825 of title 37, Code of Federal Regulations 
(37 CFR) relate to sequence listings submitted to the USPTO. Sections 
1.824  and 1.825 set forth the requirements for sequence listings in 
machine (computer)  readable form. 

*** 

REQUIREMENTS FOR SEQUENCE LISTINGS 

Where an international application discloses a 
nucleotide and/or amino acid sequence, the description must contain a 
listing of the sequence complying with a standard specified  in the 
Administrative Instructions. The International Searching Authority and 
the International Preliminary Examining Authority may, in some cases, 
invite  the applicant to furnish a listing complying with that standard. 
The applicant  may also be invited to furnish a listing in a machine 
readable form provided  for in the PCT Administrative Instructions or to 
pay for the Authority to transcribe  the listing into such a form. 

Where the international application contains disclosure of a nucleotide 
and/or  amino acid sequence, the description must contain a listing of the 
sequence  complying with WIPO Standard ST.23 (Recommendation for the 
Presentation of  Nucleotide and Amino Acid Sequences in Patent 
Applications and in Published  Patent Documents), which is published in 
the WIPO Handbook on Industrial Property  Information and Documentation. 
Copies of the Handbook, or of the Standard may  be obtained from the 
International Bureau, and the Standard has also been reproduced  in the 
PCT Gazette.  It is advisable for the applicant to submit a listing  of 
the sequence in machine readable form, if such a listing is required by 
the competent International Searching Authority, together with the 
international  application rather than to wait for an invitation by the 
International Searching Authority. 

The machine readable form is not mandatory in international applications 
filed  in the U.S. Receiving Office.  However, if a machine readable form 
of a sequence  listing is not provided, a search or examination will be 
performed only to  the extent possible in the absence of 
the machine readable form. The U.S. sequence rules 
(37 CFR 1.821 - 1.825) and the PCT sequence requirements are substantively 
 consistent. In this regard, full compliance with the requirements of the 
U.S.  rules 
will ensure compliance with the applicable PCT requirements. The European 
Patent  Office  (EPO), since 
01 January 1993, requires nucleotide and amino acid sequences to be in 
machine  readable form (computer readable form). Applicants should be 
cognizant of this  requirement and ensure compliance with EPO requirements 
if the EPO is to be  the search or examination authority.  For specific 
information, a review of  Annex C of the Administrative Instructions or 
consultation with the EPO is  suggested. 


>1824    The Claims 


PCT Article 6 
The Claims 

The claim or claims shall define the matter for which protection is 
sought.  Claims shall be clear and concise. They shall be fully supported 
by the description. 
PCT Rule 6 
The Claims 

6.1.    Number and Numbering of Claims 

(a)   The number of the claims shall be reasonable in consideration of the 
 nature of the invention claimed. 

(b)   If there are several claims, they shall be numbered consecutively in 
 Arabic numerals. 

(c)   The method of numbering in the case of the amendment of claims shall 
 be governed by the Administrative Instructions. 

6.2.    References to Other Parts of the International  Application 
(a)   Claims shall not, except where absolutely necessary, rely, in 
respect  of the technical features of the invention, on references to the 
description  or drawings. In particular, they shall not rely on such 
references as: ``as  described in part ... of the description," or ``as 
illustrated in figure ...  of the drawings." 

(b)   Where the international application contains drawings, the technical 
 features mentioned in the claims shall preferably be followed by the 
reference  signs relating to such features. When used, the reference signs 
shall preferably  be placed between parentheses. If inclusion of reference 
signs does not particularly  facilitate quicker understanding of a claim, 
it should not be made. Reference  signs may be removed by a designated 
Office for the purposes of publication  by such Office. 

6.3.    Manner of Claiming 

(a)   The definition of the matter for which protection is sought shall be 
 in terms of the technical features of the invention. 

(b)   Whenever appropriate, claims shall contain: 

(i)     a statement indicating those technical features of the invention 
which  are necessary for the definition of the  claimed subject matter but 
which,  in combination, are part of the prior art, 

(ii)    a characterizing portion -  preceded by the words ``characterized 
in  that," ``characterized by," ``wherein the improvement comprises," or 
any other  words to the same effect - stating concisely the technical 
features which,  in combination with the features stated under (i), it is 
desired to protect. 
(c)   Where the national law of the designated State does not require the 
manner  of claiming provided for in paragraph (b), failure to use that 
manner of claiming  shall have no effect in that State provided the manner 
of claiming actually  used satisfies the national law of that State. 

6.4.    Dependent Claims 

(a)   Any claim which includes all the features of one or more other 
claims 
(claim in dependent form, hereinafter referred to as ``dependent claim") 
shall  do so by a reference, if possible at the beginning, to the other 
claim or claims  and shall then state the additional features claimed. Any 
dependent claim which  refers to more than one other claim (``multiple 
dependent claim") shall refer  to such claims in the alternative only. 
Multiple dependent claims shall not  serve as a basis for any other 
multiple dependent claim. Where the national  law of the national Office 
acting as International Searching Authority does  not allow multiple 
dependent claims to be drafted in a manner different from  that provided 
for in the preceding two sentences, failure to use that manner of claiming 
 may result in an indication under Article 17(2)(b) in the international 
search  report. Failure to use the said manner of claiming shall have no 
effect in  a designated State if the manner of claiming actually used 
satisfies the national  law of that State. 

(b)   Any dependent claim shall be construed as including all the 
limitations  contained in the claim to which it refers or, if the 
dependent claim is a multiple  dependent claim, all the limitations 
contained in the particular claim in relation  to which it is considered. 

(c)   All dependent claims referring back to a single previous claim, and 
all  dependent claims referring back to several previous claims, shall be 
grouped  together to the extent and in the most practical way possible. 

6.5.    Utility Models 

Any designated State in which the grant of a utility model is sought on 
the  basis of an international application may, instead of Rules 6.1 to 
6.4, apply  in respect of the matters regulated in those Rules the 
provisions of its national  law concerning utility models once the 
processing of the international application  has started in that State, 
provided that the applicant shall be allowed at  least two months from the 
expiration of the time limit applicable under Article  22 to adapt his 
application to the requirements of the said provisions of the  national law. 

PCT Administrative Instructions Section 205 
Numbering and Identification of Claims Upon Amendment 

(a)   Amendments to the claims under Article 19 or Article 34(2)(b) may be 
 made either by cancelling one or more entire claims, by adding one or 
more  new claims or by amending the text of one or more of the claims as 
filed. All  the claims appearing on a replacement sheet shall be numbered 
in Arabic numerals.  Where a claim is cancelled, no renumbering of the 
other claims shall be required.  In all cases where claims are renumbered, 
they shall be renumbered consecutively. 
(b)   The applicant shall, in the letter referred to in the second and 
third  sentences of Rule 46.5(a) or in the second and fourth sentences of 
Rule 66.8(a),  indicate the differences between the claims as filed and 
the claims as amended.  He shall, in particular, indicate in the said 
letter, in connection with each  claim appearing in the international 
application (it being understood that  identical indications concerning 
several claims may be grouped), whether: 
(i)   the claim is unchanged; 

(ii)    the claim is cancelled; 

(iii)     the claim is new; 

(iv)    the claim replaces one or more claims as filed; 

(v)   the claim is the result of the division of a claim as filed. 
37 CFR 1.436.     The claims. 

The requirements as to the content and format of claims are set forth in 
PCT  Art. 6 and PCT Rules 6, 9, 10 and 11 and shall be adhered to. The 
number of  the claims shall be reasonable, considering the nature of the 
invention claimed. 
The claim or claims must ``define the matter for which protection is 
sought." 
 Claims must be clear and concise. They must be fully supported by the 
description. 
 PCT Rule 6 contains detailed requirements as to the number and numbering 
of  claims, the extent to which any claim may refer to other parts of the 
international  application, the manner of claiming, and dependent claims. 
As to the manner  of claiming, the claims must, whenever appropriate, be 
in two distinct parts; 
 namely, the statement of the prior art and the statement of the features 
for  which protection is sought (``the characterizing portion"). 

The physical requirements for the claims are the same as those for the 
description.  Note that the claims must commence on a new sheet. 

The procedure for rectification of obvious errors is explained in MPEP w 
1836.  The omission of an entire sheet of the claims cannot be rectified 
without affecting  the international filing date. It is recommended that a 
request for rectification  of obvious errors in the claims be made only if 
the error is liable to affect  the international  search; otherwise, the 
rectification should be made by amending  the claims. 

The claims can be amended during the international phase under PCT Article 
19  on receipt of the international search report, during international 
preliminary  examination if the applicant has filed a Demand, and during 
the national phase. 

Multiple dependent claims are permitted in international applications 
before  the United States Patent and Trademark Office as an International 
Searching  and International Preliminary Examining Authority or as a 
Designated or Elected  Office, if they are in the alternative only and do 
not serve as a basis for  any other multiple dependent claim (PCT Rule 
6.4(a), 35 U.S.C. 112). The claims,  being an element of the application, 
should start on a new page (PCT Rule 11.4).  Page numbers and line numbers 
must not be placed in the margins (PCT Rule 11.6(e)). 

The number of claims shall be reasonable, considering the nature of the 
invention  claimed (37 CFR 1.436 ). 


>1825    The Drawings 


PCT Article 7 
The Drawings 

(1)   Subject to the provisions of paragraph (2)(ii), drawings shall be 
required  when they are necessary for the understanding of the invention. 

(2)   Where, without being necessary for the understanding of the 
invention,  the nature of the invention admits of illustration by drawings: 

(i)   the applicant may include such drawings in the international 
application  when filed. 

(ii)    any designated Office may require that the applicant file such 
drawings  with it within the prescribed time limit. 


PCT Rule 7 
The Drawings 

7.1.    Flow Sheets and Diagrams 

Flow sheets and diagrams are considered drawings. 

7.2.    Time Limit 

The time limit referred to in Article 7(2)(ii) shall be reasonable under 
the  circumstances of the case and shall, in no case, be shorter than two 
months  from the date of the written invitation requiring the filing of 
drawings or  additional drawings under the said provision. 

PCT Rule 11 
Physical Requirements of the International  Application 

*** 

11.5.     Size of Sheets 

The size of the sheets shall be A4 (29.7 cm x 21 cm).  However, any 
receiving  Office may accept international applications on sheets of other 
sizes provided  that the record copy, as transmitted to the International 
Bureau, and, if the  competent International Searching Authority so 
desires, the search copy, shall  be of A4 size. 

*** 

11.6(c) 

On sheets containing drawings, the surface usable shall not exceed 26.2 cm 
 x 17.0 cm. The sheets shall not contain frames around the usable or used 
surface.  The minimum margins shall be as follows: 

- top: 2.5 cm 

- left side: 2.5 cm 

- right side: 1.5 cm 

- bottom: 1.0 cm 

*** 

11.11.      Words in Drawings 

(a)   The drawings shall not contain text matter, except a single word or 
words,  when absolutely indispensable, such as ``water," `` steam," 
``open," ``closed,"  ``section on AB," and, in the case of electric 
circuits and block schematic  or flow sheet diagrams, a few short 
catchwords indispensable for understanding. 
(b)     Any words used shall be so placed that, if translated, they may be 
 pasted over without interfering with any lines of the drawings. 

*** 

11.13.      Special Requirements for Drawings 

(a)   Drawings shall be executed in durable, black, sufficiently dense and 
 dark, uniformly thick and well-defined, lines and strokes without 
colorings. 
(b)     Cross-sections shall be indicated by oblique hatching which should 
 not impede the clear reading of the reference signs and leading lines. 
(c)   The scale of the drawings and the distinctness of their graphical 
execution  shall be such that a photographic reproduction with a linear 
reduction in size  to two-thirds would enable all details to be 
distinguished without difficulty. 
(d)   When, in exceptional cases, the scale is given on a drawing, it 
shall  be represented graphically. 

(e)   All numbers, letters and reference lines, appearing on the drawings, 
 shall be simple and clear. Brackets, circles or inverted commas shall not 
be  used in association with numbers and letters. 

(f)   All lines in the drawings shall, ordinarily, be drawn with the aid 
of  drafting instruments. 

(g)   Each element of each figure shall be in proper proportion to each of 
 the other elements in the figure, except where the use of a different 
proportion  is indispensable for the clarity of the figure. 

(h)   The height of the numbers and letters shall not be less than 0.32 
cm.  For the lettering of drawings, the Latin and, where customary, the 
Greek alphabets  shall be used. 

(i)   The same sheet of drawings may contain several  figures. Where 
figures  on two or more sheets form in effect a single complete figure, 
the figures  on the several sheets shall be so arranged that the complete 
figure can be  assembled without concealing any part of any of the figures 
appearing on the  various sheets. 

(j)   The different figures shall be arranged on a sheet or sheets without 
 wasting space, preferably in an upright position, clearly separated from 
one  another. Where the figures are not arranged in an upright position, 
they shall  be presented sideways with the top of the figures at the left 
side of the sheet. 
(k)   The different figures shall be numbered in Arabic numerals 
consecutively  and independently of the numbering of the sheets. 

(l)   Reference signs not mentioned in the description shall not appear in 
 the drawings, and vice versa. 

(m)   The same features, when denoted by reference signs, shall, 
throughout  the international application, be denoted by the same signs. 

(n)   If the drawings contain a large number of reference signs, it is 
strongly  recommended to attach a separate sheet listing all reference 
signs and the  features denoted by them. 

***** 

37 CFR 1.437.     The drawings. 

(a)   Subject to paragraph (b) of this section, when drawings are 
necessary  for the understanding of the invention, or are mentioned in the 
description,  they must be part of an international application as 
originally filed in the  United States Receiving Office in order to 
maintain the international filing  date during the national stage (PCT 
Art. 7). 

(b)   Drawings missing from the application upon filing will be accepted 
if  such drawings are received within 30 days of the date of first receipt 
of the  incomplete papers. If the missing drawings are received within the 
30-day period,  the international filing date shall be the date on which 
such drawings  are  received. If such drawings are not timely received, 
all references to drawings  in the international application shall be 
considered non-existent (PCT Art.  14(2), Administrative Instruction 310). 

(c)   The physical requirements for drawings are set forth in PCT 
 Rule 11 and shall be adhered to. 

The international application must contain drawings when they are 
necessary  for the understanding of the invention. Moreover where, without 
drawings being  actually necessary for the understanding of the invention, its 
nature admits of illustration by drawings, the applicant may include such 
drawings  and any designated Office may require the applicant to file such 
drawings during  the national phase. Flow sheets and diagrams are 
considered drawings. ``Guidelines  for Drawings Under the Patent 
Cooperation Treaty," published in the PCT Gazette 
(No. 7/1978), may be obtained, in English and French, from the 
International  Bureau. 

Drawings must be presented on one or more separate sheets. They may not be 
 included in the description, the claims or the abstract.  They may not 
contain  text matter, except a single word or words when absolutely 
indispensable. All  lines in the drawings must, ordinarily, be drawn with 
the aid of a drafting  instrument and must be executed in black, uniformly 
thick and well-defined  lines. Rules 11.10 to 11.13 contain detailed 
requirements as to further physical  requirements of drawings. Drawings 
newly executed according to national standards  may not be required during 
the national phase if the drawings filed with the  international 
application comply with Rule 11. The examiner may require new  drawings 
where the drawings which were accepted during the international phase  did 
not comply with PCT Rule 11. A file reference may be indicated in the 
upper  left corner on each sheet of the drawings as for the description. 
All the figures constituting the drawings must be grouped together on a 
sheet  or sheets without waste of space, preferably in an upright position 
and clearly  separated from each other. Where the drawings or tables 
cannot be presented  satisfactorily in an upright position, they may be 
placed sideways, with the  tops of the drawings or tables on the left-hand 
side of the sheet. 
The usable surface of sheets (which must be of A4 size) must not exceed 
26.2 cm x 17.0 cm.  The sheets must not contain frames around the usable 
surface. The minimum margins  which must be observed are:  top and left 
side:  2.5 cm;  right side:  1.5 cm; 
 bottom:  1.0 cm. 

All sheets of drawings must be numbered in the center of either the top or 
 the bottom of each sheet but not in the margin in numbers larger than 
those  used as reference signs in order to avoid confusion with the 
latter.  For drawings,  a separate series of page numbers is to be used. 
The number of each sheet of  the drawings must consist of two Arabic 
numerals separated by an oblique stroke,  the first being the sheet number 
and the second being the total number of sheets  of drawings. For example, 
``2/5" would be used for the second sheet of drawings  where there are 
five in all. 

Different figures on the sheets of drawings must be numbered in Arabic 
numerals  consecutively and independently of the numbering of the sheets 
and, if possible,  in the order in which they appear. This numbering 
should be preceded by the  expression ``Fig." 

The PCT makes no provision for photographs.  Nevertheless, they are 
allowed  by the International Bureau where it is impossible to present in 
a drawing  what is to be shown (for instance, crystalline structures). 
Where, exceptionally,  photographs are submitted, they must be on sheets 
of A4 size, they must be  black and white, and they must respect the 
minimum margins and admit of direct  reproduction. Color photographs are 
not accepted. 

The procedure for rectification of obvious errors in the drawings is 
explained  in MPEP w 1836. The omission of an entire sheet of drawings 
cannot be rectified  without  affecting the international filing date. 
Changes other than the rectification  of obvious errors are considered 
amendments. 

The drawings can be amended during the international phase only if the 
applicant  files a Demand for international preliminary examination. The 
drawings can  also be amended during the national phase. 

If drawings are referred to in an international application and are not 
found  in the search copy file, the examiner should refer the case to the 
Group Special  Program Examiner. See PCT Administrative Instruction 
Section 310. 


>1826    The Abstract 


PCT Rule 8 The Abstract 

8.1.    Contents and Form of the Abstract 

(a)   The abstract shall consist of the following: 

(i)   a summary of the disclosure as contained in the description, the 
claims,  and any drawings; the summary shall indicate the technical field 
to which the  invention pertains and shall be drafted in a way which 
allows the clear understanding  of the technical problem, the gist of the 
solution of that problem through  the invention, and the principal use or 
uses of the invention; 

(ii)    where applicable, the chemical formula which, among all the 
formulae  contained in the international application, best characterizes 
the invention. 
(b)   The abstract shall be as concise as the disclosure permits 
(preferably  50 to 150 words if it is in English or when translated into 
English). 
(c)   The abstract shall not contain statements on the alleged merits or 
value  of the claimed invention or on its speculative application. 

(d)   Each main technical feature mentioned in the abstract and 
illustrated  by a drawing in the international application shall be 
followed by a reference  sign, placed between parentheses. 

8.2.    Figure 

(a)   If the applicant fails to make the indication referred to in Rule 
3.3(a)(iii),  or if the International Searching Authority finds that a 
figure or figures  other than that figure or those figures suggested by 
the applicant would, among  all the figures of all the drawings, better 
characterize the inven- tion, it  shall, subject to paragraph (b), 
indicate the figure or figures which should  accompany the abstract when 
the latter is published by the International Bureau.  In such case, the 
abstract shall be accompanied by the figure or figures so  indicated by 
the International Searching Authority. Otherwise, the abstract  shall, 
subject to paragraph (b), be accompanied by the figure or figures 
suggested  by the applicant. 

(b)   If the International Searching Authority finds that none of the 
figures  of the drawings is useful for the understanding of the abstract, 
it shall notify  the  International Bureau accordingly. In such case, the 
abstract, when published  by the International Bureau, shall not be 
accompanied by any figure of the  drawings even where the applicant has 
made a suggestion under Rule 3.3(a)(iii). 
8.3.    Guiding Principles in Drafting 

The abstract shall be so drafted that it can efficiently serve as a 
scanning  tool for purposes of searching in the particular art, especially 
by assisting  the scientist, engineer or researcher in formulating an 
opinion on whether  there is a need for consulting the international 
application itself. 
 37 CFR 1.438.      The abstract. 

(a)   Requirements as to the content and form of the abstract are set 
forth  in PCT Rule 8, and shall be adhered to. 

(b)   Lack of an abstract upon filing of an international application will 
 not affect the granting of a filing date. However, failure to furnish an 
abstract  within one month from the date of the notification by the 
Receiving Office  will result in the international application being 
declared withdrawn. 
The abstract must consist of a summary of the disclosure as contained in 
the  description, the claims and any drawings. Where applicable, it must 
also contain  the most characteristic chemical formula. The abstract must 
be as concise as  the disclosure permits (preferably 50 to 150 words if it 
is in English or when  translated into English). National practice (see 
MPEP w 608.01(b)) provides  a range of 50 - 250 words for the abstract. 
The PCT range of 50 - 150 is not  absolute but publication problems could 
result when the PCT limit is increased  beyond the 150 word limit. 
Maintaining the PCT upper limit is encouraged. As  a rule of thumb, it can 
be said that the volume of the text of the abstract,  including one of the 
figures from the drawings (if any), should not exceed  what can be 
accommodated on an A4 sheet of typewritten matter, 1 1/2 spaced.  The 
abstract must begin on a new sheet following the claims (PCT 
Administrative  Instruction Section 207). The other physical requirements 
must correspond to  those for the description. The abstract must be so 
drafted that it can efficiently  serve as a scanning tool for the purposes 
of searching in the particular art.  These and other requirements 
concerning the abstract are spelled out in detail  in Rule 8. Useful 
guidance can be obtained from the ``Guidelines for the Preparation  of 
Abstracts Under the Patent Cooperation Treaty," published in the PCT 
Gazette 
(No. 5/1978). Those Guidelines may be obtained, in English and French, 
from  the International Bureau. 

The abstract should be primarily related to what is new in the art to 
which  the invention pertains. Phrases should not be used which are 
implicit, (for  instance, ``the invention relates to ..."), and statements 
on the alleged merits  or  value of the invention are not allowed. 

Where the receiving Office finds that the abstract is missing, it invites 
the  applicant to furnish it within a time limit fixed in the invitation. 
The international  application is considered withdrawn if no abstract is 
furnished to the receiving  Office within the time limit fixed. Where the 
receiving Office has not invited  the applicant to furnish an abstract, 
the International Searching Authority  establishes one. The same applies 
where the abstract does not comply with the  requirements outlined in the 
preceding paragraphs. Where the abstract is established  by the 
International Searching Authority, the applicant may submit comments  on 
it within 1 month from the date of mailing of the international search 
report, 
(PCT Rule 38.2(b)). 

SUMMARY OF ABSTRACT REQUIREMENTS 

Preferably 50-150 words.  Should contain 

1.  Indication of field of invention. 

2.  Clear indication of the technical problem. 

3.  Gist of invention's solution of the problem. 

4.  Principal use or uses of the invention. 

5.  Reference numbers of the main technical features            placed 
between  parentheses. 

6.  Where applicable, chemical formula which best 
characterizes  the invention. 

Should not contain 

1.  Superfluous language. 

2.  Legal phraseology such as ``said" and ``means." 

3.  Statements of alleged merit or speculative 
                application. 

4.  Prohibited items as defined in PCT Rule 9. 


>1827    Fees 


A complete list of Patent Cooperation Treaty fee amounts which are to be 
paid  to the United States Patent and Trademark Office, for both the 
national and  international stages, can be found at the beginning of each 
weekly issue of  the Official Gazette of the United States Patent and 
Trademark Office. Applicants  are urged to refer to this list before 
submitting any fees to the PTO. 

>1828    Priority Claim and Document 


An applicant who claims the priority of one or more earlier national or 
international  applications for the same invention must indicate on the 
Request, at the time  of filing, the country in or for which it was filed, 
the date of filing, and  the application number. See PCT Article 8 and 
Rule 4.10 for priority claim  particulars and Rule 90 bis.3 for withdrawal 
of priority claims. 

Under the PCT procedure, the applicant may file the certified copy of the 
earlier  filed national application together with the international 
application in the  receiving Office for transmittal with the record copy, 
or alternatively the  certified copy may be submitted by the applicant to 
the International Bureau  or the receiving Office not later than 16 months 
from the priority date or,  if the applicant has requested early 
processing in any designated Office, not  later than the time such 
processing or examination is requested. The International  Bureau will 
normally furnish copies of the certified copy to the various designated 
Offices so that the applicant will not normally be required to submit 
certified  copies to each designated Office. 

For use of the priority document in national stage applications filed 
under  35 U.S.C. 371, see MPEP 
w 1893.03(c). 


>1830    International Application Transmittal Letter 


A PCT international application transmittal letter, Form PTO-1382, is 
available  free of charge for applicants to use when filing PCT 
international applications  with the United States Receiving Office. The 
form is intended to simplify the  filing of PCT international applications 
by providing a one-page letter which  covers the most common requests and 
concerns of applicants. Specifically covered  are: 

(1)   Requests under 37 CFR 1.451 for preparation and transmittal to the 
International  Bureau of certified copies of the U.S. national 
applications, the priority  of which is claimed in international application; 

(2)   Choice of Searching Authority to conduct the international search. 
Applicants  may choose either the U.S. Patent and Trademark Office or the 
European Patent  Office as the International Searching Authority. 

(3)   Authorizations for any required additional search fees requested by 
the  United States International Searching Authority to be charged to a 
Deposit  Account subject to oral confirmation of the authorization. It 
should be noted  that if the European Patent Office is chosen as the 
Searching Authority, any  supplemental search fees requested by that 
Office are payable directly to the  European Patent Office. 

(4)   Indications of information concerning differences in disclosure, if 
any,  between the international application and related applications to 
assist in  determining any foreign transmittal licensing requirements as 
well as for other  purposes; and 

(5)   Requests for foreign transmittal license. 


>1832    License Request for Foreign Filing Under the PCT 


A license for foreign filing is not required to file an international 
application  in the United States Receiving Office but may be required 
before the applicant  or the U.S. Receiving Office can forward a copy of 
the international application  to a foreign patent office, the 
International Bureau or other foreign authority 
(35 U.S.C. 368, 37 CFR 5.1 and 5.11). A foreign filing license to permit 
transmittal  to a foreign office or international authority is not 
required if the international  application does not disclose subject 
matter in addition to that disclosed  in a prior U.S. national application 
filed more than 6 months prior to the  filing of the international application 
(37 CFR 5.11(a)). In all other instances (direct foreign filings outside 
the  PCT or filings in a foreign receiving Office), the applicant should 
petition  for a license for foreign filing (transmittal) (37 CFR 5.12) and 
if appropriate,  identify any additional subject matter in the 
international application which  was not in the earlier U.S. national 
application (37 CFR5.14 (c)). This request  and disclosure information may 
be supplied on the PCT 
into national application transmittal letter, Form PTO-1382. 

If no petition or request for a foreign filing license is included in the 
international  application, and it is clear that a license is required 
because of the designation  of foreign countries and the time at which the 
Record Copy must be transmitted,  it is current Office practice to 
construe the filing of such an international  application to include a 
request for a foreign filing license. If the license  can be granted, it 
will be issued without further correspondence. If no license  can be 
issued, or further information is required, applicant will be contacted. 
The automatic request for a foreign filing license does not apply to the 
filing  of a foreign application outside the PCT. 

EFFECT OF SECRECY ORDER 

If a secrecy order is applied to an international 
application, the application will not be forwarded to the International 
Bureau  as long as the secrecy order remains in effect (PCT Article 27(8) 
and 35 U.S.C.  368). If the secrecy order remains in effect, the 
international application  will be declared withdrawn (abandoned) because 
the Record Copy of the international  application was not received in time 
by the International Bureau 
(37 CFR 5.3(d), PCT Article 12(3), and PCT Rule 22.3). It is, however, 
possible  to prevent abandonment as to the United States of America if it 
has been designated,  by fulfilling the requirements of 35 U.S.C. 371(c). 


>1834    Correspondence 


PCT Rule 92 Correspondence 

92.1.     Need for Letter and for Signature 

(a)   Any paper submitted by the applicant in the course of the 
international  procedure provided for in the Treaty and these Regulations, 
other than the  international application itself, shall, if not itself in 
the form of a letter,  be accompanied by a letter identifying the 
international  application to which  it relates. The letter shall be 
signed by the applicant. 

(b)   If the requirements provided for in paragraph (a) are not complied 
with,  the applicant shall be informed as to the non-compliance and 
invited to remedy  the omission within a time limit fixed in the 
invitation. The time limit so  fixed shall be reasonable in the 
circumstances; even where the time limit so  fixed expires later than the 
time limit applying to the furnishing of the paper 
(or even if the latter time limit has already expired), it shall not be 
less  than 10 days and not more than one month from the mailing of the 
invitation.  If the omission is remedied within the time limit fixed in 
the invitation,  the omission shall be disregarded; otherwise, the 
applicant shall be informed  that the paper has been disregarded. 

(c)   Where non-compliance with the requirements provided for in paragraph 
(a) has been overlooked and the paper taken into account in the 
international  procedure, the non-compliance shall be disregarded. 

92.2.     Languages 

(a)   Subject to Rules 55.1 and 66.9 and to paragraph (b) of this Rule, 
any  letter or document submitted by the applicant to the International 
Searching  Authority or the International Preliminary Examining Authority 
shall be in  the same language as the international application to which 
it relates. However,  where a translation of the international application 
has been transmitted under  Rule 12.1(c) or furnished under Rule 55.2 (a) 
or (c), the language of such  translation shall be used. 

(b)   Any letter from the applicant to the International Searching 
Authority  or the International Preliminary Examining Authority may be in 
a language other  than that of the international application, provided the 
said Authority authorizes  the use of such language. 

(c)     [Deleted] 

(d)   Any letter from the applicant to the International Bureau shall be 
in  English or French. 

(e)   Any letter or notification from the International Bureau to the 
applicant  or to any national Office shall be in English or French. 

***** 

PCT Administrative Instruction Section 105 
Identification of International Application With 
Two or More Applicants 

Where any international application indicates two or more applicants, it 
shall  be sufficient, for the purpose of identifying that application, to 
indicate,  in any Form or correspondence relating to such application, the 
name of the  applicant first named in the request. The provisions of the 
first sentence  of this Section do not apply to the demand or to a notice 
effecting later elections. 
NOTIFICATION UNDER PCT RULE 92.1(b) 
OF DEFECTS WITH REGARD TO 
CORRESPONDENCE 

If the Office finds that papers, other than the international application 
itself,  are not accompanied by a letter identifying the international 
application to  which they relate, or are accompanied by an unsigned 
letter, or are furnished  in the form of an unsigned letter, it notifies 
the applicant and invites him  to remedy the omission. The Office 
disregards the said papers or letter if  the omission is not remedied 
within the time limit fixed in the invitation 
(PCT Rule 92.1(b)). If the omission has been overlooked and the paper 
taken  into account, the omission is disregarded. 


CORRESPONDENCE ADDRESS 

Where there is a sole applicant without an agent in an international 
application,  correspondence will be sent to the applicant at his 
indicated address;  or,  if he has appointed one or more agents, to that 
agent or the first-mentioned  of those agents;  or, if he has not 
appointed an agent but has indicated a  special address for notifications, 
at that special address. 

Where there are two or more applicants who have appointed one or more 
common  agents, correspondence will be addressed to that agent or the 
first-mentioned  of those agents. Where no common agent has been 
appointed, correspondence will  be addressed to the common representative 
(either the appointed common representative  or the applicant who is 
considered to be the common representative (PCT Rule  90.2) at the 
indicated address; or, if the common representative has appointed one or 
more agents, to that agent or the first-mentioned of those  agents;  or, 
if the common representative has not appointed an agent but has  indicated a 
special address for notifications, at that address. 

CERTIFICATE OF EXPRESS MAIL 

The certificate of Express Mail procedure set forth at 
37 CFR 1.10 applies to ``Any paper or fee to be filed in the Patent and 
Trademark  Office." Accordingly, papers filed with the PTO in 
international applications  will be accorded the date of deposit with the 
United States Postal Service  as the date of filing in the PTO if the 
provisions of 37 CFR 1.10 are complied  with. See MPEP w 513. 

The Express Mail provisions of 37 CFR 1.10 require, in addition to using 
the  "Express Mail Post Office to Addressee" service, an indication of the 
"Express  Mail" mailing label number on each paper or fee, and a 
certificate of mailing  by "Express Mail" which states the date of mailing 
by "Express Mail" and is  signed by the person depositing the paper or fee 
in or with the postal service  facility. Failure to comply with these 
requirements will result in the paper  or fee being accorded the date of 
receipt in the USPTO and not the date of  deposit by 
"Express Mail". 

The certificate of mailing by first class mail procedure set forth at 37 
CFR  1.8  differs from the 37 CFR 1.10 Express Mail procedure. See 37 CFR 
1.8(a)(2)(i)(D)  and (E).  It is important to understand that the 37 CFR 
1.8 practice CANNOT  be used for filing any papers during the 
international stage if the date of  deposit is desired. If used, the paper 
and/or fee will be accorded the date  of receipt in the USPTO. 
Accordingly, the certificate of mailing procedures  of 37 CFR 1.8 are not 
available to have a submission during the international  stage considered 
as timely filed if the submission is not physically received  at the PTO 
on or before the due date. 


>1834.01       Use of Telegraph, Teleprinter, Facsimile Machine 


PCT Rule 92.4 provides that a national Office may receive documents by 
telegraph,  teleprinter, or facsimile machine. However, the United States 
Patent and Trademark  Office has not informed the International Bureau 
that it accepts such submissions  other than facsimile transmissions. 
Accordingly, applicants may not currently  file papers in international 
applications with the United States Patent and  Trademark Office via 
telegraph or teleprinter. 

Generally, any paper may be filed by facsimile transmission with certain 
exceptions  which are identified in 37 CFR 1.6(d).  It should be noted 
that a document  filed by facsimile transmission will not be accorded a 
date of receipt if it  is: 

(1)   required by statute to be certified; 

(2)   a drawing submitted under 37 CFR 1.437; 

(3)   an international application for patent; or 

(4)   a copy of the international application and the basic national fee 
necessary  to enter the national stage, as specified in 37 CFR 1.494(b) or 
37 CFR 1.495(b). 
A Certificate of Transmission may be used as provided in 37 CFR 1.8(a)(1) 
except  in the instances specifically excluded in 37 CFR 1.8(a)(2). Note 
particularly  that the Certificate of Transmission cannot be used for the 
filing of an international  application for patent or correspondence in an 
international application before  the U.S. Receiving Office, the U.S. 
International Searching Authority, or the  U.S. International Preliminary 
Examining Authority. Guidelines for facsimile  transmission are clearly 
set forth in 37 CFR 1.6(d) and should be read before  transmitting by 
facsimile machine. 

A signature on a document received via facsimile in a permitted situation 
is  acceptable as a proper signature.  See PCT Rule 92.4(b) and 37 CFR 
1.4(d). 
The receipt date of a document transmitted via facsimile is the date in 
the  USPTO on which the transmission is completed.  See 37 CFR 1.6(d). 
Where a  document is illegible or part of the document is not received, 
the document  will be treated as not received to the extent that it is 
illegible or the transmission  failed. See PCT Rule 92.4(c). 


>1834.02       Irregularities in the Mail Service 


PCT Rule 82 
Irregularities in the Mail Service 

82.1.     Delay or Loss in Mail 

(a)   Any interested party may offer evidence that he has mailed the 
document  or letter five days prior to the expiration of the time limit. 
Except in cases  where surface mail normally arrives at its destination 
within two days of mailing,  or where no airmail service is available, 
such evidence may be offered only  if the mailing was by airmail. In any 
case, evidence may be offered only if  the mailing was by mail registered 
by the postal authorities. 

(b)   If the mailing, in accordance with paragraph (a), of a document or 
letter  is proven to the satisfaction of the national Office or 
intergovernmental organization  which is the addressee, delay in arrival 
shall be excused, or, if the document  or letter is lost in the mail, 
substitution for it of a new copy shall be permitted,  provided that the 
interested party proves to the satisfaction of the said   Office or 
organization that the document or letter offered in substitution  is 
identical with the document or letter lost. 

(c)   In the cases provided for in paragraph (b), evidence of mailing 
within  the prescribed time limit, and, where the document or letter was 
lost, the  substitute document or letter as well as the evidence 
concerning its identity  with the document or letter lost shall be 
submitted within one month after  the date on which the interested party 
noticed   or with due diligence should  have noticed   the delay or the 
loss, and in no case later than six months  after the expiration of the 
time limit applicable in the given case. 
(d)   Any national Office or intergovernmental organization which has 
notified  the International Bureau that it will do so shall, where a 
delivery service  other than the postal authorities is used to mail a 
document or letter, apply  the provisions of paragraphs (a) to (c) as if 
the delivery service was a postal  authority.  In such a case, the last 
sentence of paragraph (a) shall not apply  but evidence may be offered 
only if details of the mailing were recorded by  the delivery service at 
the time of mailing. The notification may contain an  indication that it 
applies only to mailings using specified delivery services  or delivery 
services which satisfy specified criteria. The International Bureau  shall 
publish the information so notified in the Gazette. 

(e)   Any national Office or intergovernmental organization may proceed 
under  paragraph (d): 

(i)   even if, where applicable, the delivery service used was not one of 
those  specified, or did not satisfy the criteria specified, in the 
relevant notification  under paragraph (d), or 

(ii)    even if that Office or organization has not sent to the 
International  Bureau a notification under paragraph (d). 

82.2.     Interruption in the Mail Service 

(a)   Any interested party may offer evidence that on any of the 10 days 
preceding  the day of expiration of the time limit the postal service was 
interrupted  on account of war, revolution, civil disorder, strike, 
natural calamity, or  other like reason, in the locality where the 
interested party resides or has  his place of business or is staying. 

(b)   If such circumstances are proven to the satisfaction of the national 
 Office or intergovernmental organization which is the addressee, delay in 
arrival  shall be excused, provided that the interested party proves to 
the satisfaction  of the said Office or organization that he effected the 
mailing within five  days after the mail service was resumed. The 
provisions of Rule 82.1(c) shall  apply mutatis mutandis. 

Delay or Loss in Mail.  Delay or loss in the mail shall be excused when it 
 is proven to the satisfaction of the receiving Office that the concerned 
letter  or document was  mailed at least five days before the expiration 
of the time  limit. The mailing must have been by registered air mail or, 
where surface  mail would normally arrive at the destination concerned 
within two days of  mailing, by registered surface mail (PCT Rule 82.1(a) 
to (c)). PCT Rule 82  contains detailed provisions governing the situation 
where a letter arrives  late or gets lost due to irregularities in the 
mail service, for example, because  the mail service was interrupted due 
to a strike. The provisions operate to  excuse failure to meet a time 
limit for filing a document for up to six months  after the expiration of 
the time limit concerned, provided that the document  was mailed at least 
five days before the expiration of the time limit. In order  to take 
advantage of these provisions, the mailing must have been by registered 
airmail or, where surface mail would normally arrive at the destination 
concerned  within two days of mailing, by registered surface mail. 
Evidence is required  to satisfy the Office, and a substitute document 
must be filed promptly-see  PCT Rule 82.1(b) and (c) for details. 

Interruption in the Mail Service.  The provisions of PCT Rule 82.1(c) 
apply  mutatis mutandis for interruptions in the mail service caused by 
war, revolution,  civil disorder, strike, natural calamity or other like 
reasons (PCT Rule 82.2). 
Special provisions also apply to mail interruptions caused by war, 
revolution,  civil disorder, strike, natural calamity or other like 
reasons-see PCT Rule 82.2  for details. 

  See PCT Rule 80.5 for guidance on periods which expire on a non-working 
day. 

>1836  Rectification of Obvious Errors 


PCT Rule 91 
Obvious Errors in Documents 

91.1.     Rectification 

(a)   Subject to paragraphs (b) to (gquater), obvious errors in the 
international  application or other papers submitted by the applicant may 
be rectified. 
(b)   Errors which are due to the fact that something other than what was 
obviously  intended was written in the international application or other 
paper shall  be regarded as obvious errors. The rectification itself shall 
be obvious in  the sense that anyone would immediately realize that 
nothing else could have  been intended than what is offered as rectification. 

(c)   Omissions of entire elements or sheets of the international 
application,  even if clearly resulting from inattention, at the stage, 
for example, of copying  or assembling sheets, shall not be rectifiable. 

(d)   Rectification may be made on the request of the applicant. The 
authority  having discovered what appears to be an obvious error may 
invite the applicant  to present a request for rectification as provided 
in paragraphs (e) to  (gquater).  Rule 26.4(a) shall apply mutatis 
mutandis to the manner in which rectifications  shall be requested. 

(e)   No rectification shall be made except with the express 
authorization: 
(i)   of the receiving Office if the error is in the request, 

(ii)    of the International Searching Authority if the error is in any 
part  of the international application other than the request or in any 
paper submitted  to that Authority, 

(iii)     of the International Preliminary Examining Authority if the 
error  is in any part of the international application other than the 
request or in  any paper submitted to that Authority, and 

(iv)    of the International Bureau if the error is in any paper, other 
than  the international application or amendments or corrections to that 
application,  submitted to the International Bureau. 

(f)   Any authority which authorizes or refuses any rectification shall 
promptly  notify the applicant of the authorization or refusal and, in the 
case of refusal,  of the reasons therefor. The authority which authorizes 
a rectification shall  promptly notify the International Bureau 
accordingly. Where the authorization  of the rectification was refused, 
the International Bureau shall, upon request  made by the applicant prior 
to the time relevant under paragraph (gbis), (gter)  or (gquater) and 
subject to the payment of a special fee whose amount shall  be fixed in 
the Administrative Instructions, publish the request for rectification 
together with the international application. A copy of the request for 
rectification  shall be included in the communication under Article 20 
where a copy of the  pamphlet is not used for that communication or where 
the international application  is not published by virtue of Article 64(3). 

(g)   The authorization for rectification referred to in paragraph (e) 
shall,  subject to paragraphs (gbis), (gter)  and (gquater), be effective: 
(i)   where it is given by the receiving Office or by the International 
Searching  Authority, if its notification to the International Bureau 
reaches that Bureau  before the expiration of 17 months from the priority 
date; 

(ii)    where it is given by the International Preliminary Examining 
Authority,  if it is given before the establishment of the international 
preliminary examination  report; 

(iii)     where it is given by the International Bureau, if it is given 
before  the expiration of 17 months from the priority date. 

(gbis)      If the notification made under paragraph (g)(i) reaches the 
International  Bureau, or if the rectification made under paragraph 
(g)(iii) is authorized  by the International Bureau, after the expiration 
of 17 months from the priority  date but before the technical preparations 
for international publication have  been completed, the authorization 
shall be effective and the rectification  shall be incorporated in the 
said publication. 

(g ter)       Where the applicant has asked the International Bureau to 
publish  his international application before the expiration of 18 months 
from the priority  date, any notification made under paragraph (g)(i) must 
reach, and any rectification  made under paragraph (g)(iii) must be 
authorized by, the International Bureau,  in order for the authorization 
to be effective, not later than at the time  of the completion of the 
technical preparations for international publication. 
(gquater) Where the international application is not published by virtue 
of  Article 64(3), any notification made under paragraph (g)(i) must 
reach, and  any rectification made under paragraph (g)(iii) must be 
authorized by, the  International Bureau, in order for the authorization 
to be effective, not later  than at the time of the communication of the 
international application under  Article 20. 

Obvious errors in the international application or other papers submitted 
by  the applicant may generally be rectified under PCT Rule 91, if the 
rectification  is authorized, as required, within the applicable time 
limit. Any such rectification  is free of charge. The omission of entire 
sheets of the description cannot  be rectified, even if resulting from 
inattention at the stage of copying or  assembling sheets. 

Applicants often attempt to rely upon the priority application to 
establish  a basis for obvious error. The priority document (application) 
cannot be used  to support obvious error corrections. The rectification is 
obvious only in  the sense that anyone would immediately realize that 
nothing else could have  been intended than what is offered as 
rectification. For example, a misspelled  word could be considered an 
obvious error subject to rectification. A missing  chemical formula or 
missing line of text would not be considered obvious error  subject to 
rectification. 

Rectifications must be authorized: 

(i)   if the error is in the request by the Receiving 
Office; 

(ii)    if the error is in the description, the claims, the drawings or 
the  abstract by the International Searching Authority, or by the 
International  Preliminary Examining Authority where the international 
application is pending  before the latter Authority; 

(iii)     if the error is in any paper other than the international 
application  or amendments or corrections to it by the International Bureau. 

The request for rectification must be addressed to the authority competent 
 to authorize the rectification. It must be filed in time for the 
rectification  to be authorized and for notification of the authorization 
to reach the International  Bureau before the expiration of the applicable 
time limit, namely: 
(i)   where the authorization is given by the Receiving Office or the 
International  Searching Authority its  notification must reach the 
International Bureau before  the expiration of 17 months from the priority 
date (or later, before the technical  preparations for international 
publication have been completed); 

(ii)    where the authorization is given by the International Preliminary 
Examining  Authority it must be given before the establishment of the 
international preliminary  examination report; 

(iii)     where the authorization is given by the International Bureau it 
must  be given before the expiration of 17 months from the priority date 
(or later,  before the technical preparations for international 
publication have been completed). 
The patent examiner, in his capacity as an officer of either the 
International  Searching Authority or International Preliminary Examining 
Authority, informs  the 
applicant of the authorization or refusal to authorize 
the rectification of obvious errors. The International Searching Authority 
 informs the applicant of the decision by use of Form PCT/ISA/217, while 
the  International Preliminary Examining Authority informs the applicant 
of the  decision by use of Form PCT/IPEA/412. 

Where the examiner discovers what might be considered an obvious error, an 
 invitation to request rectification (Form PCT/ISA/216 or PCT/IPEA/411) 
should  be mailed to applicant. 


>1840    The International Searching Authority 


35 U.S.C. 362.      International Searching Authority and International 
Preliminary  Examining Authority. 

(a)   The Patent and Trademark Office may act as an International 
Searching  Authority and International Preliminary Examining Authority 
with respect to  international applications in accordance with the terms 
and conditions of an  agreement which may be concluded with the 
International Bureau, and may discharge  all duties required of such 
Authorities, including the collection of handling  fees and their 
transmittal to the International Bureau. 

(b)   The handling fee, preliminary examination fee, and any additional 
fees  due for international preliminary examination shall be paid within 
such time  as may be fixed by the Commissioner. 

37 CFR 1.413.     The United States International Searching 
Authority. 

(a)   Pursuant to appointment by the Assembly, the United States Patent 
and  Trademark Office will act as an International Searching Authority for 
international  applications filed in the United States Receiving Office 
and in other Receiving  Offices as may be agreed upon by the Commissioner, 
in accordance with agreement  between the Patent and Trademark Office and 
the International Bureau (PCT Art.  16(3)(b)). 

(b)   The Patent and Trademark Office, when acting as an  International 
Searching  Authority, will be identified by the full title ``United States 
International  Searching Authority"  or by the abbreviation ``ISA/US." 

(c)   The major functions of the International Searching Authority 
include: 
(1)   Approving or establishing the title and abstract; 

(2)   Considering the matter of unity of invention; 

(3)   Conducting international and international-type searches and 
preparing  international and international-type search reports (PCT Art. 
15, 17 and 18,  and PCT Rules 25, 33 to 45 and 47); and 

(4)   Transmitting the international search report to the applicant and 
the  International Bureau. 

The United States Patent and Trademark Office agreed to and was appointed 
by  the PCT Assembly, to act as an International Searching Authority. As 
such an  authority, a primary function is to establish documentary search 
reports on  prior art with respect to inventions which are the subject of 
applications.  See PCT Article 16. 

Pursuant to an agreement concluded with the International Bureau, the 
USPTO,  as an International Searching Authority, agreed to conduct 
international searches  and prepare international search reports, for, in 
addition to the United States  of America, Mexico, Trinidad and Tobago, 
Brazil and Barbados. The agreement  stipulated the English language and 
specified that the subject matter to be  searched is that which is 
searched or examined in United States national applications. 
TRANSMITTAL OF THE SEARCH COPY 
TO THE INTERNATIONAL SEARCHING 
AUTHORITY 

The ``search copy" is transmitted by the Receiving Office to the 
International  Searching Authority (PCT 
Article 12(1)), the details of the transmittal are provided in PCT Rule 
23. 
THE MAIN PROCEDURAL STEPS IN THE 
INTERNATIONAL SEARCHING AUTHORITY 

The main procedural steps that any international application goes through 
in  the International Searching Authority are the following: 

(i)   the making of the international search (PCT Article 15), and 
(ii)    the preparing of the international search report (PCT Article 18 
and  PCT Rule 43). 

COMPETENT INTERNATIONAL 
SEARCHING AUTHORITY 

In respect of international applications filed with the U.S. Receiving 
Office,  the United States International Searching Authority, which is the 
Examining  Corps of the United States Patent and Trademark Office, and the 
European  Patent  Office are competent to carry out the international 
search (PCT Article 16,  PCT Rules 35 and 36, 35 U.S.C. 362 and 37 CFR 1.413). 

The United States Patent and Trademark Office has informed the 
International  Bureau that in addition to the United States Patent and 
Trademark Office, the  European Patent Office is competent as an 
International Searching Authority  for searching all kinds of 
international applications filed in the United States  Receiving Office on 
and after October. 1, 1982. (PCT Article 16(2) and PCT  Rule 35.2(a)(i). 

MATTERS TO BE CONSIDERED WHEN 
CHOOSING AN INTERNATIONAL 
SEARCHING AUTHORITY 

Choosing The European Patent Office (EPO) as an International Searching 
Authority  could be advantageous to United States applicants who designate 
countries for  European Regional patent protection in PCT International 
applications for the  following reasons: 

(1)   Claims may be amended according to EPO search results before 
entering  the European Office as a designated Office. 

(2)   The EPO search fee need not be paid upon entering the European 
Office  as a designated Office. 

(3)   The EPO search results may be available for use in a U.S. priority 
application. 
(4)   The EPO international search may be obtained without the need for a 
European  professional representative. 

(5)   The European Patent Office search could provide the U.S. applicant 
with  the benefit of a European art search (which may be different from 
applicant's  own or the USPTO's search) before it is necessary to enter 
the European Patent  Office or other designated Offices. 

Some of the disadvantages that may occur due to the European Patent Office 
 making the international search are the following: 

(1)   Additional mailing time to and from the EPO Searching Authority may 
shorten  the time for applicants to respond to various invitations from 
the EPO such  as for comments on abstracts and payments of additional 
search fees as well  as for PCT Article 19 amendments to the claims after 
issuance of the International  Search Report. 

(2)   There may be more difficulty in solving any procedural problems 
between  the applicant and the EPO than with the USPTO due to physical 
distance and  time differences. 

The PCT Applicant's Guide provides helpful information for communications 
with  the European Patent Office. 


>1840.01       The European Patent Office as an International Searching 
Authority 

Since October 1, 1982, the European Patent Office (EPO) has been available 
 as a Searching Authority for PCT applications filed in the United States 
Receiving  Office. The choice of Searching Authority, either the EPO or 
the United States  Patent and Trademark Office, must be made by the 
applicant on filing the international  application. The  choice of 
Searching Authority may also be indicated on Form  PTO-1382 Transmittal 
Letter. 

It should be noted that the European Patent Office will not search, by 
virtue  of PCT Article 17(2)(a)(i), any international  application to the 
extent that  it considers that the internation-al application relates to 
subject matter  set forth in PCT Rule  39.1. Furthermore, the European 
Patent Office is not  equipped to search computer programs. 

The international search fee for the European Patent Office must be paid 
to  the United States Patent and Trademark Office (USPTO) as a Receiving 
Office  at the time of filing the international application. The search 
fee for the  European Patent Office is announced weekly in the Official 
Gazette in United  States dollars. The search fee will change as costs and 
exchange rates require. If exchange rates fluctuate significantly, the fee 
may change frequently.  Notice of changes will be published in the 
Official Gazette shortly before  the effective date of any change. 

If the European Patent Office as the International Searching Authority 
considers  that the international application does not comply with the 
requirement of  unity of invention as set forth in PCT Rule 13, the 
European Patent Office  will invite applicants to timely pay directly to 
it an additional search fee  in Deutsche Marks for each additional invention. 

A revised fee calculation sheet (Form PCT/RO/101, Annex) having 
appropriate  spaces to indicate the choice of International Searching 
Authority has been  developed so that applicants may indicate which 
International Searching Authority  is to make the search. 


>1842    Chapter I Basic Flow 


B18420004.bmp 



B18420004.end 




>1843 The International Search 


PCT Article 17 
Procedure before the International Searching Authority 

(1)   Procedure before the International Searching Authority shall be 
governed  by the provisions of this Treaty, the Regulations, and the 
agreement which  the International Bureau shall conclude, subject to this 
Treaty and the Regulations,  with the said Authority. 

(2)(a)      If the International Searching Authority considers: 

(i)   that the international application relates to a subject matter which 
 the International Searching Authority is not required, under the 
Regulations,  to search, and in the particular case decides not to search, or 

(ii)    that the description, the claims, or the drawings, fail to comply 
with  the prescribed requirements to such an extent that a meaningful 
search could  not be carried out, the said Authority shall so declare and 
shall notify the  applicant and the International Bureau that no 
international search report  will be established. 

(b)   If any of the situations referred to in subparagraph (a) is found to 
 exist in connection with certain claims only, the international search 
report  shall so indicate in  respect of such claims, whereas, for the 
other claims,  the said report shall be established as provided in Article 
18. 

(3)(a) If the International Searching Authority considers that the 
international  application does not comply with the requirement of unity 
of invention as set  forth in the Regulations, it shall invite the 
applicant to pay additional fees.  The International Searching Authority 
shall establish the international search  report on those parts of the 
international application which relate to the  invention first mentioned 
in the claims (main invention) and, provided the  required additional fees 
have been paid within the prescribed time limit, on  those parts of the 
international application which relate to inventions in  respect of which 
the said fees were paid. 

(b)   The national law of any designated State may provide that, where the 
 national Office of the State finds the invitation, referred to in 
subparagraph 
(a), of the International Searching Authority justified and where the 
applicant  has not paid all additional fees, those parts of the 
international application  which consequently have not been searched 
shall, as far as effects in the State  are concerned, be considered 
withdrawn unless a special fee is paid by the  applicant to the national 
Office of that State. 

PCT Rule 33 
Relevant Prior Art for the International Search 

33.1.     Relevant Prior Art for the International Search 

(a)   For the purposes of Article 15(2), relevant prior art shall consist 
of  everything which has been made available to the public anywhere in the 
world  by means of written disclosure (including drawings and other 
illustrations)  and which is capable of being of assistance in determining 
that the claimed  invention is or is not new and that it does or does not 
involve an inventive  step (i.e., that it is or is not obvious), provided 
that the making available  to the public occurred prior to the 
international filing date. 

(b)   When any written disclosure refers to an oral disclosure, use, 
exhibition,  or other means whereby the contents of the written disclosure 
were made available  to the public, and such making available to the 
public occurred on a date prior  to the international filing date, the 
international search report shall separately  mention that fact and the 
date on which it occurred if the making available  to the public of the 
written disclosure occurred on a date which is the same  as, or later 
than, the international filing date. 

(c)   Any published application or any patent whose publication date is 
the  same as, or later than, but whose filing date, or, where applicable, 
claimed  priority date, is earlier than the international filing date of 
the international  application searched, and which would constitute 
relevant prior art for the  purposes of Article  15(2) had it been 
published prior to the international  filing date, shall be specially 
mentioned in the international search report. 
33.2.     Fields to Be Covered by the International Search 

(a)   The international search shall cover all those technical fields, and 
 shall be carried out on the basis of all those search files, which may 
contain  material pertinent to the invention. 

(b)   Consequently, not only shall the art in which the invention is 
classifiable  be searched but also analogous arts regardless of where 
classified. 
(c)   The question what arts are, in any given case, to be regarded as 
analogous  shall be considered in the light of what appears to be the 
necessary essential  function or use of the invention and not only the 
specific functions expressly  indicated in the international application. 

(d)   The international search shall embrace all subject matter that is 
generally  recognized as equivalent to the subject matter of the claimed 
invention for  all or certain of its features, even though, in its 
specifics, the invention  as described in the international application is 
different. 

33.3. Orientation of the International Search 

(a)   International search shall be made on the basis of the claims, with 
due  regard to the description and the drawings (if any) and with 
particular emphasis  on the inventive concept towards which the claims are 
directed. 

(b)   In so far as possible and reasonable, the international search shall 
 cover the entire subject matter to which the claims are directed or to 
which  they might reasonably be expected to be directed after they have 
been amended. 
PCT Rule 39 
Subject Matter under Article 17(2)(a)(i) 

39.1.     Definition 

No International Searching Authority shall be required to search an 
international  application if, and to the extent to which, its subject 
matter is any of the  following: 

(i)   scientific and mathematical theories, 

(ii)    plant or animal varieties or essentially biological processes for 
the  production of plants and animals, other than microbiological 
processes and  the products of such processes, 

(iii)     schemes, rules or methods of doing business, performing purely 
mental  acts or playing games, 

(iv)    methods for treatment of the human or animal body by surgery or 
therapy,  as well as diagnostic methods, 

(v)   mere presentations of information, 

(vi)    computer programs to the extent that the International Searching 
Authority  is not equipped to search prior art concerning such programs. 

PCT Article 15 describes the objective of the international search, i.e., 
to  uncover relevant prior art, and also describes the international-type 
search.  It should be noted generally that an international-type search is 
performed on all U.S. national applications filed after June 1, 1978. 
There are several benefits to applicants who use the PCT. One of the three 
 most commonly mentioned benefits is the international search (and 
consequently  the international search report). The others are the time 
delay gained before  having to enter the national phase and the monetary 
savings since filing and  translation fees are also deferred or indeed, 
may not be necessary depending  upon the search results.  The 
international search gives applicants the benefit  of knowing the status 
of the prior art with respect to their invention before  time for entry 
into the national stage. This affords applicants the time to  make 
economic decisions whether to perfect their national stage filings. 
The objective of the international search is to discover relevant prior 
art 
(PCT Article 15(2)). ``Prior art" consists of everything which has been 
made  available to the public anywhere in the world by means of written 
disclosure 
(including drawings and other illustrations); it is  relevant  in respect 
of  the international application if it is capable of being of assistance 
in determining  that the claimed invention is or is not new and that the 
claimed invention  does or does not involve an inventive step (i .e., that 
it is or is not obvious),  and if the making available to the public 
occurred prior to the international  filing date. For further details, see 
PCT Rule 33. The international search  is made on the basis of the claims, 
with due regard to the description and  the drawings (if any) contained in 
the international application (PCT Article  15(3)). Categories of relevant 
prior art as described in PCT Rule 33.1 are  indicated in the search 
report under the section "Documents Considered To Be  Relevant." The 
various letter designations are defined on the search report  form (see 
PCT/ISA/210). 

It is pointed out, for example, that: 

(1)   a category X reference defeats novelty or defeats inventive step 
when  the reference is considered alone; 

(2)   a category Y reference is said to defeat or refute inventive step 
when  combined with one or more other such references - the combination 
being obvious  to a person skilled in the art; 

(3)   a category A reference is one showing the general state of the art 
but  would not be considered to be of particular relevance; 

(4)   a category E reference is an earlier document which is published on 
or  after the international filing date; 

(5)   a category P reference is a document published prior to the 
international  filing date but later than the claimed priority date 
(commonly called an intervening  reference). 

These are the most commonly used categories of references. 

The examiner should not view these categories strictly in the sense that 
they  have a direct comparison to U.S. application of prior art 
references, for example,  a category X reference defeats novelty and in 
that sense, it is closely analogous  to U.S. consideration of 35 U.S.C. 
102 prior art. However, a category X reference  can also defeat inventive 
step which is analogous to U.S. consideration of  35 U.S.C. 103 prior art. 

DOCUMENTS SEARCHED BY THE 
INTERNATIONAL SEARCHING 
AUTHORITY 

The International Searching Authority must endeavor to discover as much of 
 the relevant prior art as its facilities permit (PCT Article 15(4)), and, 
in  any case, must consult the so-called ``minimum documentation" (PCT 
Rule 34). 
CERTAIN SUBJECT MATTER NEED NOT 
 BE SEARCHED 

No International Searching Authority is required to perform an 
international  search where the international application relates to any 
of the following  subject matters: 

(i)   scientific and mathematical theories, 

(ii)    plant or animal varieties or essentially biological processes for 
the  production of plants and animals, other than microbiological 
processes and  the products of such processes, 

(iii)     schemes, rules or methods of doing business, performing purely 
mental  acts or playing games, 

(iv)    methods for treatment of the human or animal body by surgery or 
therapy,  as well as diagnostic methods, 

(v)   mere presentation of information, and 

(vi)    computer programs to the extent that it, the said Authority is not 
 equipped to search prior art (PCT 
Article 17(2)(a)(i) and PCT Rule 39). 

The applicant considering the filing of an international application may 
be  well advised not to file one if the subject matter of the application 
falls  into one of the above mentioned areas. If he or she still does 
file, the International  Searching Authority may declare that it will not 
establish an international  search report. It is to be noted, 
nevertheless, that the lack of the international  search report in such 
case will not have, in itself, any influence on the validity  of the 
international application and the latter's processing will continue, 
including its communication to the designated Offices. 

The USPTO has declared that it will search and examine, in international 
applications,  all subject matter searched and examined in U.S. national 
applications. 
NO SEARCH REQUIRED IF CLAIMS 
ARE UNCLEAR 

If the International Searching Authority considers that the description, 
the  claims, or the drawings fail to comply with the prescribed 
requirements to  such an extent that a  meaningful search could not be 
carried out, it may declare  that it will not establish a search report 
(PCT Article 17(2)(a) (ii) and (b)).  Such declaration may also be made in 
respect of some of the claims only. The  lack of the international search 
report will not, in itself, have any influence  on the validity of the 
international application and the latter's processing  will continue, 
including its communication to the designated Offices. Where  only some of 
the claims are found to be  unsearchable, the International Searching 
Authority will not search them, but will search the rest of the 
international  application. Any unsearched claims will be indicated in the 
Search Report. 

>1844    The International Search Report [R-1] 


PCT Article 18 
The International Search Report 

(1)   The international search report shall be established within the 
prescribed  time limit and in the prescribed form. 

(2)   The international search report shall, as soon as it has been 
established,  be transmitted by the International Searching Authority to 
the applicant and  the International Bureau. 

(3)   The international search report or the declaration referred to in 
Article  17(2)(a) shall be translated as provided in the Regulations. The 
translations  shall be prepared by or under the responsibility of the 
International Bureau. 
The results of the international search will be recorded in the 
international  search report (Form PCT/ISA/210), which is transmitted with 
Form PCT/ISA/220  to the applicant and with Form PCT/ISA/219 to the 
International Bureau. The search report will be published by the 
International  Bureau and will serve as a 
basis for examination of the international application by the designated 
Offices  and the International Preliminary 
Examination Authority. 

The time limit for establishing the international search report or the 
declaration  under Article 17(2)(a) that no search report will be 
established is 3 months  from receipt of the search copy by the searching 
authority or 9 months from  the priority date, whichever time limit 
expires later. To ensure timeliness,  Office policy is to set a shorter 
period for the search by the examiner so  that any corrections to the 
report can be made timely and also to allow for  review and mailing to the 
International Bureau. The Office strives to get all  search reports to the 
International Bureau by 16 months from the priority date  or, where there 
is no priority date, 9 months from the 
international filing date. See PCT Rule 42.1. 

The search report should not contain any expressions of opinion, 
reasoning,  argument or explanation as to any cited prior art. Any such 
comments would  be inappropriate and should be used only if preliminary 
examination is or becomes  a part of the international proceeding. The 
search report is only for the purpose  of identifying prior art and not 
for commenting thereupon. 

The printed international search report form (Form PCT/ISA/210) to be 
transmitted  to the applicant and to the International Bureau contains two 
main sheets ("first  sheet" and "second sheet") to be used for all 
searches. These two main sheets  are intended for recording the important 
features of the search such as the  fields searched and for citing 
documents revealed by the search. The printed  international search report 
form also contains four optional continuation sheets  for use where 
necessary. There are two  continuation sheets for each of the  "first 
sheet" and the "second sheet": "continuation of first sheet (1)" and 
"continuation of first sheet (2)", and "continuation of second sheet" and 
"patent  family annex", respectively. The patent family annex sheet is not 
currently  used since patent family information is not readily available 
to the examiner.  The "continuation of first sheet (1)" is to be used only 
where an 
indication is made on the first sheet that claims were found unsearchable 
(item  1) and/or unity of invention is lacking (item 2). The relevant 
indications  must then be made on that continuation sheet. The 
"continuation of first sheet 
(2)" is to contain the text of the abstract where an abstract or an 
amended  abstract has been established by the International Searching 
Authority (item  5) and an indication to that effect is made on the first 
sheet. The "continuation  of second sheet" is to be used where the space 
on the second sheet is insufficient  for the citation of documents. 
Lastly, the "extra sheet" may be used whenever  additional space is 
required to complete information from the other sheets. 
It is to be noted that only the "second sheet", the "continuation of 
second  sheet" (if any) and the "continuation of first sheet (1)" (if 
any), will be  the subject of international publication, as the "first 
sheet" and the "continuation  of first sheet (2)" (if any) contain only 
information which will already appear  on the front page of the pamphlet. 

The international search report must list the classification 
identification  of the fields searched using the IPC. 

Where the international search report is entirely or partly based on a 
previous  search made for an application relating to a similar subject, 
the relevant  search files consulted for this previous search must also be 
identified in  the report as having been consulted for the international 
application in question. 
Restriction of the Subject of the International Search 

The report must indicate whether the search was restricted or not for any 
of  the reasons indicated below. 

If any such restrictions were applied, the claims in respect of which a 
search  has not been carried out must be identified and the reasons of 
this should  be indicated. 

The three categories where such restrictions may arise are: 

(a)   lack of unity of invention; 

(b)   claims drawn to subject matter excluded from the search; 

(c)   claims in respect of which a meaningful search cannot be carried 
out. 


A18440005.bmp 



A18440005.end 



A18440006.bmp 



A18440006.end 



A18440007.bmp 



A18440007.end 



A18440008.bmp 



uA18440008.end 


Authentication and Dates 

The identification of the International Searching Authority which 
established  the international search report and the date on which the 
report was drawn  up should be indicated in the search report. This date 
should be that of the  drafting of the report by the search examiner who 
carried out the search. In  addition to the date of actual completion of 
the international search, the  international search report shall also 
indicate the date on which it was mailed  to the applicant, which is 
important for the computation of the time limit  for filing amendments to 
the claims under Article 19. See PCT Rules 43.1 and  43.2. 

The international search report shall indicate the name of an authorized 
officer  of the International Searching Authority which means the person 
who actually  performed the search work and prepared the search report. 
See PCT Rule 43.8.  Note that the name is required but not the signature. 

CONTENTS OF THE INTERNATIONAL 
SEARCH  REPORT 

The international search report (PCT Rule 43) contains, among other 
things,  the citations of the documents considered to be relevant (PCT 
Rule 43.5 and  Administrative Instruction Section 503), the classification 
of the subject  matter of the invention (PCT Rule 43.3 and Administrative 
Instruction Section  504) and an indication of the fields searched (PCT 
Rule 43.6). Citations of  particular relevance must be specially indicated 
(Administrative Instruction  Section 505); citations of certain specific 
categories of documents are also  indicated (Administrative Instruction 
Section 507); citations which are not  relevant to all the claims must be 
cited in relation to the claim or claims  to which they are relevant 
(Administrative Instruction Section 508); if only  certain passages of the 
cited document are particularly relevant, they must  be identified, for 
example, by indicating the page, the column or the lines,  where the 
passage appears. 


>1844.01       Time for the International Search Report 


Publication of the international application occurs at 18 months from the 
earliest  priority date or, where there is no priority date, 18 months 
from the international  application filing date. The Office goal is to 
have the search report mailed  in sufficient time to reach the 
International Bureau by the end of 16 months  from the priority date or 9 
months from the filing date if no priority claim  is made. This is 
necessary since the technical preparations for publication  are completed 
by 17.5 months from the earliest priority date. In view of the  treaty 
mandated publication and the time needed for technical preparation,  the 
Office sets time periods for completion of the search report which will 
ensure sufficient time to complete  internal processing and review and 
achieve  receipt of search report at the International Bureau by the 16th 
month from  the priority date. See PCT Rule 42.1 for time limit for the 
search. 
Thus, as a matter of practice, each examining Group tends to set its 
internal  time period for completion of the search  report to meet the 
time limits set  by the International Division. The International Division 
sets its time for  completion to ensure adequate time for review, 
corrections (where necessary)  and mailing. 

The date of transmittal of the search report becomes critical for 
applicants  since it starts the 2 month period for submission of 
amendments to the claims  under Article 19. See PCT Rule 46.1. 

The Patent Cooperation Treaty is extremely date sensitive and for that 
reason,  examiners are encouraged to complete the international search and 
prepare the  search report promptly after receipt. Monitoring and tracking 
procedures have  been devised to minimize the risk of late search reports 
and/or date transmission  thereof. 


>1846    Sections of the Articles, Regulations, and Administrative 
Instructions Under the PCT Relevant to the International Search 

Articles of the Treaty, Articles 15 - 20 (Annex T). 

Regulations under the Treaty, Rules 33 - 47 
   (Annex T). 

Administrative Instruction Sections 501 - 515 

(Annex AI). 


>1847    Refund of International Search Fee 


37 CFR 1.446.     Refund of international application filing and 
processing  fees. 

(a)   Money paid for international application fees, where paid by actual 
mistake  or in excess, such as a payment not required by law or Treaty and 
its Regulations,  will be refunded. 

(b)    [Reserved] 

(c)   Refund of the supplemental search fees will be made if such refund 
is  determined to be warranted by the Commissioner or the Commissioner's 
designee  acting under PCT Rule 40.2(c). 

(d)   The international and search fees will be refunded if no inter- 
national  filing date is accorded or if the application is withdrawn 
before transmittal  of the record copy to the International Bureau (PCT 
Rules 15.6 and 16.2). The  search fee will be refunded if the application 
is withdrawn before transmittal  of the search copy to the International 
Searching Authority. The transmittal  fee will not be refunded. 

(e)   The handling fee (w 1.482(b)) will be refunded (PCT Rule 57.6) only 
if: 
(1)   The Demand is withdrawn before the Demand has been sent by the 
International  Preliminary Examining Authority to the International 
Bureau, or 

(2)   The Demand is considered not to have been submitted (PCT Rule 
54.4(a)). 
Refund of the supplemental search fee will be made if the applicant is 
successful  in a protest (filed pursuant to 37 CFR 1.477) to a holding of 
lack of unity  of invention. The supplemental search fee must be paid and 
be accompanied by 
(1) a protest and (2) a request for refund of the supplemental search fee. 
The search fee will be refunded if no international filing date is 
accorded  or if the application is withdrawn before the search copy is 
transmitted to  the International Searching Authority. The transmittal fee 
will not be refunded. 
Any request for refund of the search fee made after the search copy has 
been  transmitted to the International Searching Authority must be 
directed to the  International Searching Authority and not to the 
Receiving Office. This is  clearly necessary where applicant has chosen 
the European Patent Office as  the search authority. 


>1848    Sequence Listings [R-1] 


PCT Administrative Instructions 
 Section 513 Sequence Listings 

(a)   Where the International Searching Authority finds that an 
international  application contains a disclosure of a nucleotide and/or 
amino acid sequence  but the international application does not contain a 
listing of that sequence,  that Authority may invite the applicant to 
furnish it with a sequence listing  which is in compliance with Section 208. 

(b)   Where a sequence listing has been furnished separately from the 
international  application to the International Searching Authority or 
transcribed by that  Authority, the international search report shall so 
indicate. 

** 

> (c) Where a meaningful international search cannot be carried out 
because  a sequence listing is not available to the International 
Searching Authority  in the required form, that Authority shall so state 
in the international search  report. 

        (d) The International Searching Authority shall indelibly mark, in 
 the upper right-hand corner of the first sheet, and preferably of all 
sheets,  of any sequence listing in printed form not forming part of the 
international  application, the words ``SEPARATELY FURNISHED SEQUENCE 
LISTING."< 
Where an international application contains disclosure of a nucleotide 
and/or  amino acid sequence, the description must contain a listing of the 
sequence  complying with WIPO Standard ST. 23 (Recommendation for the 
Presentation of  Nucleotide and Amino Acid Sequences in Patent 
Applications and in Published  Patent Documents). If the International 
Searching Authority finds that an international  application contains such 
a disclosure but that the description does not include  such a listing or 
that the listing included does not comply with that Standard,  the 
International Searching Authority may invite the applicant to furnish a 
listing complying with that Standard. 

If the International Searching Authority finds that a sequence listing is 
not  in a machine readable form provided for in the Administrative 
Instructions,  it may invite the applicant to furnish a listing to it in 
such a form.  Again,  the International Searching Authority would invite 
the applicant to supply  the machine readable 
diskette. 

Different requirements apply, as set out in Annex C to  the Administrative 
 Instructions, for the various International Searching Authorities. 
Certain  Authorities require listings in a specified format on a computer 
diskette.  The requirements, if any, of each International Searching 
Authority as to machine  readable form are set out or summarized in Annex 
C to the Administrative Instructions.  In some cases, that Annex 
indicated that a machine readable form for sequence  listings is not 
required but is acceptable. 

An invitation from the International Searching Authority to furnish a 
sequence  listing complying with WIPO Standard ST. 23 or Annex C to the 
Administrative  Instructions, will specify a time limit for response to 
the invitation. Any  sequence listing furnished by the applicant must be 
accompanied by a statement  to the effect that the listing does not 
include matter which goes beyond the  disclosure in the international 
application as filed. If the applicant does  not comply within that time 
limit, the search undertaken by the International  Searching Authority may 
be restricted. 

If the applicant wishes to include such a listing in the text of the 
decription  itself, appropriate amendments may be made later under Article 
34, provided that the applicant files a Demand  for international 
preliminary examination. 


>1849    Subject Matter Excluded From International Search 


The examiner is not required to perform an international search on claims 
which  relate to any of the following subject matter: (i) scientific and 
mathematical  theories, (ii) plant or animal varieties or essentially 
biological processes  for the production of plants and animals, other than 
microbiological processes  and the products of such processes, (iii) 
schemes, rules or methods of doing  business, performing purely mental 
acts or playing games, (iv) methods for  treatment of the human or animal 
body by surgery or therapy, as well as diagnostic  methods, (v) mere 
presentation of information, and (vi) computer programs to  the extent 
that the Authority is not equipped to search prior art concerning  such 
programs. See PCT Rule 39. In addition, the examiner is not required to 
search the international application, to the extent that a meaningful 
search  cannot be carried out, in certain cases where a nucleotide and/or 
amino acid  sequence listing is not furnished in accordance with the 
prescribed standard  or in a machine readable form. See Administrative 
Instruction 513(c).  However,  the U.S. Patent & Trademark Office has 
declared that it will search and examine  all subject matter searched and 
examined in U.S. national applications. If  none of the claims are 
required to be searched, the examiner will declare that  no search report 
will be established using form PCT/ISA/203. It should, nevertheless,  be 
noted that the lack of an international search report in such a case does 
not, in itself, have any influence on the validity of the international 
application,  the processing of which, including its communication to the 
designated Offices, continues. 


>1850    Unity of Invention Before the International Searching Authority 

PCT Rule 40 
Lack of Unity of Invention (International Search) 

40.1.     Invitation to Pay 

The invitation to pay additional fees provided for in Article 17(3)(a) 
shall  specify the reasons for which the international application is not 
considered  as complying with the requirement of unity of invention and 
shall indicate  the amount to be paid. 

40.2.     Additional Fees 

(a)   The amount of the additional fee due for searching under Article 
17(3)(a)  shall be determined by the competent International Searching 
Authority. 
(b)   The additional fee due for searching under Article 17(3)(a) shall be 
 payable direct to the International Searching Authority. 

(c)   Any applicant may pay the additional fee under protest, that is, 
accompanied  by a reasoned statement to the effect that the international 
application complies  with the requirement of unity of invention or that 
the amount of the required  additional fee is excessive. Such protest 
shall be examined by a three-member  board or other special instance of 
the International Searching Authority or  any competent higher authority, 
which, to the extent that it finds the protest  justified, shall order the 
total or partial reimbursement to the applicant  of the additional fee. On 
the request of the applicant, the text of both the  protest and the 
decision thereon shall be notified to the designated Offices  together 
with the international search report. The applicant shall submit any 
translation thereof with the furnishing of the translation of the 
international  application required under Article 22. 

(d)   The three-member board, special instance or competent higher 
authority,  referred to in paragraph (c), shall not comprise any person 
who made the decision  which is the subject of the protest. 

***** 

40.3.     Time Limit 

The time limit provided for in Article 17(3)(a) shall be fixed, in each 
case,  according to the circumstances of the case, by the International 
Searching  Authority; it shall not be shorter than 15 or 30 days, 
respectively, depending  on whether the applicant's address is in the same 
country as or in a different  country from that in which the International 
Searching Authority is located,  and it shall not be longer than 45 days, 
from the date of the invitation. 
PCT Administrative Instructions Section 502 
Transmittal of Protest Against Payment of Additional 
Fee and Decision Thereon Where International 
Application Is Considered to Lack Unity of Invention 

The International Searching Authority shall transmit to  the applicant, 
preferably  at the latest together with the international search report, 
any decision which  it has taken under Rule 40.2(c) on the protest of the 
applicant against  payment  of an  additional fee where the international 
application is considered to  lack unity of invention. At the same time, 
it shall transmit to the International  Bureau a copy of both the protest 
and the decision thereon, as well as any  request by the applicant to 
forward the texts of both the protest and the decision  thereon to the 
designated Offices. 

37 CFR 1.475.     Unity of invention before the International Searching 
   Authority,  the International Preliminary Examining Authority and 
during the national stage. 
(a)   An international and a national stage application shall relate to 
one  invention only or to a group of inventions so linked as to form a 
single general  inventive concept ("requirement of unity of invention"). 
Where a group of inventions  is claimed in an application, the requirement 
of unity of invention shall be  fulfilled only when there is a technical 
relationship among those inventions  involving one or more of the same or 
corresponding special technical features. The expression "special 
technical  features" shall mean those technical features that define a 
contribution which  each of the claimed inventions, considered as a whole, 
makes over the prior  art. 

(b)   An international or a national stage application  containing claims 
to  different categories of invention will be considered to have unity of 
invention  if the claims are drawn only to one of the following 
combinations of categories: 
(1)     A product and a process specially adapted for the manufacture of 
said  product; or 

(2)   A product and a process of use of said product; or 

(3)  A product, a process specially adapted for the manufacture of the 
said  product, and a use of the said product; or 

(4)   A process and an apparatus or means specifically designed for 
carrying  out the said process; or 

(5)     A product, a process specially adapted for the manufacture of the 
said  product, and an apparatus or means specifically designed for 
carrying out the  said process. 

(c)   If an application contains claims to more or less than one of the 
combinations  of categories of invention set forth in paragraph (b) of 
this section, unity  of invention might not be present. 

(d)   If multiple products, processes of manufacture or uses are claimed, 
the  first invention of the category first mentioned in the claims of the 
application  and the first recited invention of each of the other 
categories related thereto  will be considered as the main invention in 
the claims, see PCT Article 17(3)(a)  and w 1.476(c). 

  (e)     The determination whether a group of inventions is so linked as 
to  form a single general inventive concept shall be made without regard 
to whether  the inventions are claimed  in separate claims or as 
alternatives within a  single claim. 

37 CFR 1.477.     Protest to lack of unity of invention before the 
International  Searching Authority. 

(a)   If the applicant disagrees with the holding of lack of unity of 
invention  by the International Searching Authority, additional fees may 
be paid under  protest, accompanied by a request for refund and a 
statement setting forth  reasons for disagreement or why the required 
additional fees are considered  excessive, or both (PCT Rule 40.2(c)). 

(b)   Protest under paragraph (a) of this section will be examined by the 
Commissioner  or the Commissioner's designee. In the event that the 
applicant's protest is  determined to be justified, the additional fees or 
a portion thereof will be  refunded. 

(c)   An applicant who desires that a copy of the protest and the decision 
 thereon accompany the international search report when forwarded to the 
Designated  Offices, may notify the International Searching Authority to 
that effect any  time prior to the issuance of the international search 
report. Thereafter,  such notification should be directed to the 
International Bureau (PCT Rule  40.2(c)). 

THE REQUIREMENT FOR ``UNITY OF 
INVENTION" 

Any international application must relate to one invention only or to a 
group  of inventions so linked as to form a single general inventive 
concept (PCT  Article 3(4)(iii) and 17(3)(a), PCT Rule  3.1, and 37 CFR 
1.475). Observance  of this requirement is checked by the International 
Searching Authority and  may be relevant in the national (or regional) phase. 

The decision in Caterpillar Tractor Company v. Commissioner of Patents and 
 Trademarks, 231 USPQ 590 (E.D. Va. 1986) held that the Patent and 
Trademark  Office interpretation of 37 CFR 1.141(b)(2) as applied to unity 
of invention  determinations in international applications was not in 
accordance with the  Patent Cooperation Treaty and its implementing 
regulations. In the Caterpillar  international application, the USPTO 
acting as an International Searching Authority,  had held lack of unity of 
invention between a set of claims directed to a process  for forming a 
sprocket and a set of claims drawn to an apparatus (die) for  forging a 
sprocket. The court stated that it was an unreasonable interpretation  to 
say that the expression "specifically designed" as found in former PCT 
Rule  13.2(ii) means that the process and apparatus have unity of 
invention if they  can only be used with each other, as set forth in MPEP 
w 806.05(e). 
Therefore, when the Office considers international applications as an 
International  Searching Authority, as an International Preliminary 
Examining Authority, and  during the national stage as a Designated or Elected 
Office under 35 U.S.C. 371, PCT Rule 13.1 and 13.2 will be followed when 
considering  unity of invention of claims of different categories without 
regard to the  practice in national applications filed under 35 U.S.C. 
111. No change was  made in restriction practice in United States national 
applications filed under  35 U.S.C. 111 outside the PCT. 

In applying PCT Rule 13.2 to international applications as an 
International  Searching Authority, an International Preliminary Examining 
Authority and to  national stage applications under 35 U.S.C. 371, 
examiners should consider  for unity of invention all the claims to 
different categories of invention  in the application and permit retention 
in the same application for searching  and/or preliminary examination, 
claims to the categories which meet the requirements  of PCT Rule 13.2. 

PCT Rule 13.2, as it was modified effective 01 July 1992, no longer 
specifies  the combinations of categories of invention which are 
considered to have unity  of invention. Those categories, which now appear 
as a part of Annex B to the  Administrative Instructions, has been 
substituted with a statement describing  the method for determining 
whether the requirement of unity of invention is  satisfied. Unity of 
invention exists only when there is a technical relationship among the 
claimed inventions involving one or more  special technical features. The 
term "special technical features" is defined  as meaning those technical 
features that define a contribution which each of  the inventions 
considered as a whole, makes over the prior art. The determination  is 
made based on the contents of the claims as interpreted in light of the 
description and drawings. Annex B also contains examples concerning unity 
of  invention. 

Independent and Dependent Claims 

Unity of invention has to be considered in the first place only in 
relation  to the independent claims in an international application and 
not the dependent  claims. By ``dependent" claim is meant a claim which 
contains all the features  of another claim and is in the same category of 
claim as that other claim (the  expression ``category of claim" referring 
to the classification of claims according  to the subject matter of the 
invention claimed for example, product, process,  use or apparatus or 
means, etc.). 

If the independent claims avoid the prior art and satisfy the requirement 
of  unity of invention, no problem of lack of unity arises in respect of 
any claims  that depend on the independent claims.  In particular, it does 
not matter if  a dependent claim itself contains a further invention. 
Equally, no problem  arises in the case of a genus/species situation where 
the genus claim avoids  the prior art.  Moreover, no problem arises in the 
case of a combination/subcombination  situation where the subcombination 
claim avoids the prior art and the combination  claim includes all the 
features of the subcombination. 

If, however, an independent claim does not avoid the prior art, then the 
question  whether there is still an inventive link between all the claims 
dependent on  that claim needs to be carefully considered.  If there is no 
link remaining,  an objection of lack of unity (that is, arising only 
after assessment of the  prior art) may be raised.  Similar considerations 
apply in the case of a genus/species  or combination/subcombination situation. 

This method for determining whether unity of invention exists is intended 
to  be applied even before the commencement of the international search. 
Where  a search of the prior art is made, an initial determination of 
unity of invention,  based on the assumption that the claims avoid the 
prior art, may be reconsidered  on the basis of the results of the search 
of the prior art. 

Illustrations of Particular Situations 

There are three particular situations for which the method for determining 
 unity of invention contained in PCT Rule 13.2 is explained in greater 
detail: 
(i)   combinations of different categories of claims; 

(ii)    so-called ``Markush practice"; and 

(iii)     intermediate and final products. 

Principles for the interpretation of the method contained in PCT Rule 
13.2,  in the context of each of those situations are set out below. It is 
understood  that the principles set out below are, in all instances, 
interpretations of  and not exceptions to the requirements of PCT Rule 13.2. 

Examples to assist in understanding the interpretation on the three areas 
of  special concern referred to in the preceding paragraph are set out 
below. 
Combinations of Different Categories of Claims 

The method for determining unity of invention under Rule 13 shall be 
construed  as permitting, in particular, the inclusion of any one of the 
following combinations  of claims of different categories in the same 
international application: 
(i)   in addition to an independent claim for a given product, an 
independent  claim for a process specially adapted for the manufacture of 
the said product,  and an independent claim for a use of the said product, or 

(ii) in addition to an independent claim for a given process, an 
independent  claim for an apparatus or means specifically designed for 
carrying out the  said process, or 

(iii)     in addition to an independent claim for a given product, an 
independent  claim for a process specially adapted for the manufacture of 
the said product  and an independent claim for an apparatus or means 
specifically  designed for  carrying out the said process, it being 
understood that a process is specially  adapted for the manufacture of a 
product if it inherently results in the product  and that an apparatus or 
means is specifically designed for carrying out a  process if the 
contribution over the prior art of the apparatus or means corresponds  to 
the contribution the process makes over the prior art. 

Thus, a process shall be considered to be specially adapted for the 
manufacture  of a product if the claimed process inherently results in the 
claimed product  with the technical relationship being present between the 
claimed product and claimed process.  The words ``specially adapted" are 
not  intended to imply that the product could not also be manufactured by 
a different  process. 

Also an apparatus or means shall be considered to be  specifically 
designed  for carrying out  a claimed process if the contribution over the 
prior art  of the apparatus or means corresponds to the contribution the 
process makes  over the prior art.  Consequently, it would not be 
sufficient that the apparatus  or means is merely capable of being used in 
carrying out the claimed process.  However, the expression  specifically 
designed  does not imply that the apparatus  or means could not be used 
for carrying out another process, nor that the process  could not be 
carried out using an alternative apparatus or means. 

``Markush Practice" 

The situation involving the so-called Markush practice  wherein a single 
claim  defines alternatives (chemical or non-chemical) is also governed by 
Rule 13.2. 
 In this special situation, the requirement of a technical 
interrelationship  and the same or corresponding special technical 
features as defined in Rule 13.2,  shall be considered to be met when the 
alternatives are of a similar nature. 
When the Markush grouping is for alternatives of chemical compounds, they 
shall  be regarded as being of a similar nature where the following 
criteria are fulfilled: 
(A)   all alternatives have a common property or activity, and 

(B)(1)      a common structure is present, i.e., a significant structural 
element  is shared by all of the alternatives, or 

(B)(2)      in cases where the common structure cannot be the unifying 
criteria,  all alternatives belong to a recognized class of chemical 
compounds in the  art to which the invention pertains. 

In paragraph (B)(1), above, the words  significant structural element is 
shared  by all of the alternatives  refer to cases where the compounds 
share a common  chemical structure which occupies a large portion of their 
structures, or in  case the compounds have in common only a small portion 
of their structures,  the commonly shared structure constitutes a 
structurally distinctive portion  in  view of existing prior art.  The 
structural element may be a single component  or a combination of 
individual components linked together. 

In paragraph (B)(2), above, the words  recognized class of chemical 
compounds 
 mean that there is an expectation from the knowledge in the art that 
members  of the class will behave in the same way in the context of the 
claimed invention. 
 In other words, each member could be substituted one for the other, with 
the  expectation that the same intended result would be achieved. 

The fact that the alternatives of a Markush grouping can be differently 
classified  shall not, taken alone, be considered to be justification for 
a finding of  a lack of unity of invention. 

When dealing with alternatives, if it can be shown that at least one 
Markush  alternative is not novel over the prior art, the question of 
unity of invention  shall be reconsidered by the examiner. Reconsideration 
does not necessarily  imply that an objection of lack of unity shall be 
raised. 

Intermediate and Final Products 

The situation involving intermediate and final products is also governed 
by  Rule 13.2. 

The term  intermediate  is intended to mean intermediate or starting 
products. 
 Such products have the ability to be used to produce final products 
through  a physical or chemical change in which the intermediate loses its 
identity. 
Unity of invention shall be considered to be present in the context of 
intermediate  and final products where the following two conditions are 
fulfilled: 
(A)   the intermediate and final products have the same essential 
structural  element, in that: 

(1)   the basic chemical structures of the intermediate and the final 
products  are the same, or 

(2)   the chemical structures of the two products are technically closely 
interrelated,  the intermediate incorporating an essential structural 
element into the final  product, and 

(B) the intermediate and final products are technically interrelated, this 
 meaning that the final product is manufactured directly from the 
intermediate  or is separated from it by a small number of intermediates 
all containing the  same essential structural element. 

Unity of invention may also be considered to be present between 
intermediate  and final products of which the structures are not known, 
for example, as between  an intermediate having a known structure and a 
final product the structure  of which is not known, or as between an 
intermediate of unknown structure and  a final product of unknown 
structure.  In order to satisfy unity in such cases, there shall  be 
sufficient evidence to lead one to conclude that the intermediate and 
final  products are technically  closely interrelated as, for example, 
when the intermediate  contains the same essential element as the final 
product or incorporates an  essential element into the final product. 

It is possible to accept in a single international application different 
intermediate  products used in different processes for the preparation of 
the final product,  provided that they have the same essential structural 
element. 

The intermediate and final products shall not be separated, in the process 
 leading from one to the other, by an intermediate which is not new. 
If the same international application claims different intermediates for 
different  structural parts of the final product, unity shall not be 
regarded as being  present between the intermediates. 

If the intermediate and final products are families of compounds, each 
intermediate  compound shall correspond to a compound claimed in the 
family of the final  products. However, some of the final products may 
have no corresponding compound  in the family of the intermediate products 
so that the two families need not  be absolutely congruent. 

As long as unity of invention can be recognized applying the above 
interpretations,  the fact that, besides the ability to be used to produce 
final products, the  intermediates also exhibit other possible effects or 
activities shall not affect  the decision on unity of invention. 

Rule 13.3 requires that the determination of the existence of unity of 
invention  be made without regard to whether the inventions are claimed in 
separate claims  or as alternatives within a single claim. 

Rule 13.3 is not intended to constitute an encouragement to the use of 
alternatives  within a single claim, but is intended to clarify that the 
criterion for the  determination of unity of invention (namely, the method 
contained in Rule 13.2)  remains the same regardless of the form of claim 
used. 

Rule 13.3 does not prevent an International Searching or Preliminary 
Examining  Authority or an Office from objecting to alternatives being 
contained within  a single claim on the basis of considerations such as 
clarity, the conciseness  of claims or the claims fee system applicable in 
that Authority or Office. 
LACK OF UNITY OF INVENTION 

See Annex B of the Administrative Instructions for examples of unity of 
invention. 
The search fee which the applicant is required to pay is intended to 
compensate  the International Searching Authority for carrying out an 
international search  on the international application, but only where the 
international application  meets the ``requirement of unity of invention". 
That means that the international  application must relate to only one 
invention or must relate to a group of  inventions which are so linked as 
to form a single general inventive concept 
(PCT Articles 3(4)(iii) and 17(3)(a)). 

If the International Searching Authority finds that the international 
application  does not comply with the requirement of unity of invention, 
the applicant will  be invited to pay additional search fees. The 
International Searching Authority  will specify the reasons for its 
findings and indicate the number of additional  fees to be paid (PCT Rules 
40.1, 40.2(a) and (b)). Such additional fees are  payable directly to the 
International Searching Authority which is conducting  the search, either 
the United States Patent and Trademark Office or European  Patent Office, 
within the time limit fixed, which must not be shorter than  15 days, if 
the applicant's address is in the same country as the International 
Searching Authority; or 30 days, if applicant's address is in a country 
different  than the country of the International Searching Authority; and 
not longer than  45 days from the date of the invitation (PCT Rule 40.3)). 
The search fee amounts  for the U.S. and the European Patent Office are 
found in each weekly edition  of the Official Gazette. 

The International Searching Authority will establish the international 
search  report on those parts of international application which relate to 
the ``main  invention," that is, the invention or the group of inventions 
so linked as  to form a single general inventive concept first mentioned 
in the claims (PCT  Article 17 (3)(a)). Moreover, the international search 
report will be established  also on those parts of the international 
application which relate to any invention 
(or any group of inventions so linked as to form a single general 
inventive  concept) in respect of which the applicant has paid any 
additional fee within  the prescribed time limits. 

Any applicant may pay the additional fee under protest, that is, 
accompanied  by a reasoned statement to the effect that the international 
application complies with the requirement of  unity of invention or that 
the amount of the required additional fee is excessive 
(PCT Rule 40.2(c)). Any such protest filed with the U.S. International 
Searching  Authority will be examined and decided by the Group Director 
(37 CFR 1.477).  To the extent that the applicant's protest is found to be 
justified, total  or partial reimbursement of the additional fee will be 
made. On the request  of the applicant, the text of both the protest and 
the decision thereon is  sent to the designated Offices together with the 
international search report 
(37 CFR 1.477). 

Where, within the prescribed time limit, the applicant does not pay any 
additional  fees or only pays some of the additional fees indicated, 
certain parts of the  international application will consequently not be 
searched. The lack of an  international search report in respect of such 
parts of the international application  will, in itself, have no influence 
on the validity of the international  application  and processing of the 
international application will continue, both in the  international and in 
the national (regional) phases. The unsearched claims,  upon entry into 
the national stage, will be considered by the examiner and  may be the 
subject of a holding of lack of unity of invention. 

See MPEP w 1875.01 for telephone unity practice. It applies in the same 
manner  under Chapter I. 


>1851    Identification of Patent Documents  [R-2] 


The examiner, in completing the international search report as well as the 
 Chapter II written opinion and final report, is required to cite the 
references  in accordance with the provisions of Administrative 
Instructions 503 and 611.  These sections of the Administrative 
Instructions require reference citations  to include, in addition to other 
information which is apparent from the forms  which the examiner fills 
out, sections 503 and 611 require an indication of  the two-letter country 
code of the country or entity issuing or publishing  the document, and the 
standard code for identifying the kind of patent document.  The discussion 
which follows is limited to the identification of patent documents 
(and non-patent publications) and a listing of the two-letter country 
codes  for countries or other entities which issue or publish industrial 
property  information. 

The standard codes for identifying different kinds of patent documents are 
 found in the "Handbook On Industrial Property Information And 
Documentation"  - Standard 16 which is published by the World Intellectual 
Property Organization.  The listing is extensive. The Special Program 
*>Examiner< in each examining  Group has a complete copy of Standard 16. 
Provided herein is an abbreviated  version representing the countries and 
codes commonly used by the examiner  in drawing up search reports. 

U.S. patent documents, for example, are Code A documents generally. 
Reexamination  certificates are Code B documents. All non-patent 
literature documents are  Code N. Numerical designations which are 
sometimes found on published documents  along with the letter code 
designation should be used by the examiner only  if such numerical 
designation is on the document. Numerical codes along with  letter codes 
can be found, for example, on certain published patent documents  such as 
the German Offenlegungsschrift and published international applications. 
If numerical designations are not provided, the examiner should use only 
the  letter code designation. 

The most commonly cited documents are patents. A guideline for the 
citation  of such documents is listed below. The listing is indicated in 
the order in  which the elements should be listed. 

In the case of a patent document: 

(1)   the Office that issued the document, by the two letter code (WIPO 
Standard  ST.3); 

(2)   the kind of document, by the appropriate symbols as indicated on the 
 original document or as given in Appendix II to WIPO Standard ST.16; 
(3)   the number of the document as given to it by the Office that issued 
it 
(for Japanese patent documents the indication of the year of the reign of 
the  Emperor must precede the serial number of the patent document); 

(4)   the name of the patentee or applicant (in capital letters, where 
appropriate,  abbreviated); 

(5)   the date of publication of the cited patent document indicated 
thereon; 
(6)   where applicable, the pages, columns or lines where the relevant 
passages  appear, or the relevant figures of the drawings. 

(The following example illustrates the citation of a patent document as 
indicated  above: 

JP, B, 50-14535, NCR CORPORATION, 28 May 1975 (28.05.75), see Column 4, 
lines  3 to 27.) 



STANDARD CODE FOR IDENTIFICATION OF 
DIFFERENT KINDS OF PATENT DOCUMENTS 

The Code is subdivided into exclusive groups of letters. The groups 
characterize  patent documents and nonpatent literature documents (N) and 
restricted documents 
(X). Groups 1-5 comprise one or several letters enabling identification of 
 documents pertaining to different publication levels. 

Group 1       Use for primary or major series of patent 
                     documents 
A   First publication level 

B   Second publication level 

C   Third publication level 

Group 2         Use for secondary series of patent documents 

E   First publication level 

F   Second publication level 

G   Third publication level 

Group 3         Use for further series of patent documents, as 
                     the  special requirements of each Office may be 

H 

I 

>L      Documents containing bibliographic informa- 
     tion  and only the text of an abstract and/or 
                claim(s)  and, where appropriate, a drawing 

R   Separately published search reports< 

T   Publication, for information or other purposes, 

                of the translation of the whole or part of a patent 
                document already published by another office or 

                organization 

Group 4         Use for major special types of patent documents 

M       Medicament patent documents 

P       Plant patent documents 

S       Design patent documents 

Group 5         Use for utility model documents having a num- 
             bering  series other than the documents of 
          Group 1 
U       First publications level 

Y       Second publication level 

Z       Third publication level 

Group 6         Other 

N       Nonpatent literature documents 

X       Documents restricted to the internal use of 
             offices 
LIST OF PATENT DOCUMENTS, PAST AND 
CURRENTLY PUBLISHED, AND INTENDED 
TO BE PUBLISHED IN THE FUTURE 

CODE:     A     Patent Documents Numbered in Primary or 
                             Major-Series  First Publication Level 

EXAMPLES: 

Australia Standard of petty patent application 

Austria                 Patent Application 

Belgium         Brevet d'invention/Uitvindingsoctrooi 

Belgium         Brevet de perfectionnement/Verbeteringsoc 
     trooi 
Brazil          Pedido de privilegio (Unexamined patent 

                        application  for invention) 

Bulgaria  Opisanie na izobretenie po patent 

Canada              Patent 

Cuba        Patent application 

Czechoslovakia        Patent application 

Czechoslovakia        Inventor's certificate application 

Denmark         Almindelig tilgoengelig patentansogning 

Egypt           Patent specification 

European 

        Patent Office     Patent application published with search report 
European 

        Patent Office     Patent application published without search 
                             *>report< 

European 

        Patent Office     Separate publication of the search report 
Finland                 Patent Application 

France              Brevet d'invention, premiere et unique 

                        publication 

France              Certificat d'addition a un brevet d'invention, 
                        premiere et unique publication 

France              Certificat d'utilite, premiere et unique 

                        publication 

France              Certificat d'addition a un certificat d'utilite, 
                        premiere et unique publication 

France              Demande de brevet d'invention, premiere 

                        publication 

France              Demande de certificat d'addition a un brevet 

                        d'invention, premiere publication 

France              Demande de certificat d'utilite, premiere 

                        publication 

France              Demande de certificat d'addition a un certificat 
                        d'utilite, premiere publication 

Germany         Offenlegungsschrift 

Germany         Patentschrift (Ausschliessungspatent), patent 

        (document pub-      granted in accordance with paragraph 17.1 
        lished by the       of the Patent Law of the former German 
        Patent Office     Democratic Republic of 27/10/1983 

        of the former 
        GDR) 

Germany       Patentschrift (Wirtschaftspatent), patent 

        (document pub-      granted in accordance with paragraph 17.1 of 
        lished by the     the Patent Law of the former German 

        Patent Office     Democratic Republic of 27/10/1983 

        of the former 
         GDR) 

Hungary       Patent application 

India           Patent specification 

Ireland                 Patent specification 

Italy           Domanda di brevetto publicata 

Japan           Kokai tokkyo koho 

Japan       Kohyo tokkyo koho 

Luxembourg    Brevet d'invention 

Luxembourg    Certificat d'addition a un breet d`invention 

Netherlands     Terinzagegelegging 

Norway            Alment tilgjengelige patentsoknader 

Pakistan                Patent specification 

PCT             International application published with or 
                     without  the international search report 

Poland              Zgloszenie wynalazku do opatentowania 

Poland          Zgloszenie wynalazku w celu uzyskania patentu 

                        tymczasowego 



Republic of Korea Konggae t'ukho kongbo 

Romania         Descrierea inventiei 

Soviet Union      Opisanie izobreteniya k patentu 

Soviet Union      Opisanie izobreteniya k avtorskomy 
                        svidetelstvu 

Spain           Patente de invencion 

Sweden              Allmant tillganglig patentansokan 

Switzerland     Auslegeschrift/Fascicule de la demande/Fasci- 
             colo  della domanda (Patent Application 

                        published and pertaining to the technical fields 
             for  which search and examination as to novelty 
       are made) 
Switzerland     Patentschrift/Fascicule du brevet/Fascicolo del 

                        brevetto (Patent published and pertaining to 
                     the  technical fields for which neither search nor 

                        examination as to novelty are made) 

United Kingdom        Patent specification (old Law; not printed on 
                        documents) 

United Kingdom      Patent application (new Law) 

United States       Patent 

Yugoslavia    Patenta prijava koja se moze razgledati 

CODE:       B       Patent Documents Numbered in Primary or 
                             Major  Series -Second Publication Level 

EXAMPLES: 

Australia   Accepted standard or petty patent 

Austria                 Patentschrift 

Brazil              Patente (granted patent of invention 

Canada              Reissue patent 

Cuba        Patente de invencion 

Czechoslovakia        Popis vynalezu k patentu 

Czechoslovakia        Popis vynalezu k autorskemu osvedceni 

Denmark         Fremlaeggelsesskrift 

Finland                 Kuulutusjulkaisu - Utlaggningsskrift 

France              Brevet d'invention, deuxieme publication 

                        de l'invention 

France              Certificat d'addition a un brevet d' invention, 
                        deuxieme publication de l'invention 

France              Certificat d'utilite, deuxieme publication 

                        del'invention 

France          Certificat d'addition a un certificat d'utilite, 

                        deuxieme publication de l'invention 

Germany       Auslegeschrift 

Germany         Patentschrift (Ausschliessungspatent), patent 

        (document pub-      granted in accordance with paragraph 18.1 of 
        lished by the       the Patent Law of the former German Demo- 
     Patent  Office of cratic Republic of 27/10/1983 

        the former GDR) 

Germany         Patentschrift (Wirtschaftspatent), patent 
(document  pub-    granted in accordance with paragraph 18.1 of 
lished by the     the  Patent Law of the former German Demo- 

        Patent Office of        cratic Republic of 27/10/1983 

        the former GDR) 

Hungary         Szabadalmi leiras 

Japan           Tokkyo koho 

Netherlands     Openbaar gemaakte octrooiaanvrage 

Norway            Utlegningsskrift 

Poland          Opis patentowy 

Republic of Korea T'ukho kongbo 

Sweden              Utlaggningsskrift 

Switzerland     Patentschrift/Fascicule du brevet/Fascicolo del 

                        brevetto (Patent published and pertaining to 
                     the  technical fields for which search and ex 
                               amination  as to novelty are made) 

United Kingdom        Amended patent specification (old Law) 

United Kingdom      Patent specification (new Law) 

United States     Reexamination certificate 

CODE:     C       Patent Documents Numbered in Primary or 
             Major  Series - Third Publication Level 

EXAMPLES: 

Argentina Patente de invencion (Patent) 

Australia   Standard or petty patent, amended after 

                        acceptance 

Denmark       Patentskrift 

Finland                 Patentmeddelat 

Germany       Patentschrift 

Germany       Patentschrift (Ausschliessungspatent), patent 

        (document pub-      granted in accordance with paragraph 19 of the 


        lished by the       Patent Law of the former German Democratic 
        Patent Office of        Republic of 27.10.1983 

        the former GDR) 

Netherlands     Octrooi 

Norway          Patent 

Sweden              Patentskrift 

United Kingdom      Amended patent specification (new Law) 

CODE:     E     Patent Documents Numbered in Secondary 
                     Series-First  Publication Level 

EXAMPLES: 

France          d'addition a brevet d'invention (old Law) 

United States       Reissue patent 

CODE:       H       Patent Documents Numbered in Further 
                                Series 

EXAMPLE: 

United States     Defensive publication 

CODE:     M     Medicament Patent Documents 

EXAMPLES: 

France              Brevet special de medicament 

France              Addition a un brevet special de medicament 

CODE:       P           Plant Patent Documents 

EXAMPLE: 

United States     Plant patent 

CODE:       S           Design Patent Documents 

EXAMPLES: 

Brazil          Pedido de privilegio (unexamined patent 
                        application for industrial model) 

United States     Design patent 

CODE:       U       Utility Model Documents Numbered in Series 
                     other  than the Documents of Group I   First 

                                Publication Level 

EXAMPLES: 

Brazil              Pedido de privilegio (unexamined patent 

                        application for industrial model) 

Germany             Gebrauchsmuster 

Japan       Kokai jitsuyo shinan koho 

Republic of Korea Konggae shilyong shin-an kongbo 


Spain           Solicitud de modelo de utilidad 

CODE:       Y       Utility Model Documents Numbered in Series 
                     other  than the Documents of Group I   Second 
                         Publication  Level 

EXAMPLES: 

Brazil          Patente (granted patent of utility model) 
                    Manual of Patent Examining Procedure 

Chapter 1800   Patent Cooperation Treaty 

ÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄ 

Japan       Jitsuyo shinan koho 

Spain           Model o de utilidad 

COUNTRY CODES 

The two-letter country codes listed below are taken from the "Handbook On 
Industrial  Property Information and Documentation". Standard ST. 3 of 
that Handbook provides,  in Annex A, sections 1 and 3, a listing of the 
two-letter country codes and/or  organizational codes and names for the 
countries and organizations issuing  or publishing industrial property 
documents.  The listing has been modified  for use by the examiner and 
includes countries no longer in existence and new  countries or republics. 

Annex A, Section 1 
List of Countries, and of Other Entities Issuing or Registering Industrial 
 Property Titles (in the order corresponding to the 
current UN and WIPO practice) 

Afghanistan         AF 

Albania             AL 

Algeria             DZ 

Angola          AO 

Anguilla                AI 

Antigua and Barbuda   AG 

Argentina       AR 

Armenia             AM 

Australia   AU 

Austria             AT 

Azerbaijan      AZ 

Bahamas             BS 

Bahrain             BH 

Bangladesh      BD 

Barbados                BB 

Belarus             BY 

Belgium             BE 

Belize          BZ 

Benin       BJ 

Bermuda             BM 

Bhutan          BT 

Bolivia             BO 

Botswana                BW 

Brazil          BR 

British Virgin Islands      VG 

Brunei Darussalam BN 

Bulgaria                BG 

Burkina Faso    BF 

Burma (see Myanmar) 

Burundi             BI 

Cambodia                KH 

Cameroon                CM 

Canada          CA 

Cape Verde      CV 

Cayman Islands      KY 

Central African Republic        CF 

Chad            TD 

Chile       CL 

China       CN 

Colombia                CO 

Comoros             KM 

Congo       CG 

Costa Rica      CR 

Cote d'Ivoire     CI 

Cuba            CU 

Cyprus          CY 

Czechoslovakia      CS 

Czech Republic      CZ 

Democratic Kampuchea (see Cambodia) 

Democratic People's Republic of Korea     KP 

Denmark             DK 

Djibouti                DJ 

Dominica                DM 

Dominican Republic  DO 

Ecuador             EC 

Egypt       EG 

El Salvador         SV 

Equatorial Guinea GQ 

Estonia             EE 

Ethiopia                ET 

Falkland Islands (Malvinas)   FK 

Fiji            FJ 

Finland             FI 

France          FR 

Gabon           GA 

Gambia          GM 

Georgia                 GE 

Germany                 DE 

Ghana       GH 

Gibraltar   GI 

Greece          GR 

Grenada             GD 

Guatemala   GT 

Guinea          GN 

Guinea-Bissau     GW 

Guyana          GY 

Haiti           HT 

Holy See                VA 

Honduras                HN 

Hong Kong   HK 

Hungary             HU 

Iceland             IS 

India           IN 

Indonesia       ID 

Iran (Islamic Republic of)  IR 

Iraq                    IQ 

Ireland             IE 

Israel          IL 

Italy                   IT 

Jamaica             JM 

Japan       JP 

Jordan          JO 

Kazahstan   KZ 

Kenya       KE 

Kiribati                KI 

Kuwait          KW 

Kyrgyzstan      KG 

Laos                    LA 

Latvia          LV 

Lebanon             LB 

Lesotho             LS 

Liberia             LR 

Libya       LY 

Liechtenstein     LI 

Luxembourg  LU 

Madagascar      MG 

Malawi          MW 

Malaysia                MY 

Maldives                MV 

Mali                    ML 

Malta       MT 

Mauritania      MR 

Mauritius   MU 

Mexico              MX 

Moldova, Republic of    MD 

Monaco          MC 

Mongolia                MN 

Montserrat      MS 

Morocco             MA 

Mozambique  MZ 

Myanmar             MM 

Nauru       NR 

Nepal       NP 

Netherlands         NL 

Netherlands Antilles    AN 

New Zealand   NZ 

Nicaragua   NI 

Niger       NE 

Nigeria             NG 

Norway          NO 

Oman            OM 

Pakistan                PK 

Panama          PA 

Papua New Guinea        PG 

Paraguay                PY 

Peru                    PE 

Philippines         PH 

Poland          PL 

Portugal                PT 

Qatar       QA 

Republic of Korea KR 

Romania             RO 

Russian Federation  RU 

Rwanda          RW 

Saint Helena    SH 

Saint Kitts and Nevis     KN 

Saint Lucia         LC 

Saint Vincent and the Grenadines        VC 

Samoa       WS 

San Marino      SM 

Sao Tome and Principe     ST 

Saudi Arabia    SA 

Senegal             SN 

Seychelles      SC 

Sierra Leone    SL 

Singapore   SG 

Slovak Republic       SK 

Solomon Islands       SB 

Somalia             SO 

South Africa    ZA 

Soviet Union    SU 

Spain       ES 

Sri Lanka   LK 

Sudan       SD 

Suriname                SR 

Swaziland   SZ 

Sweden          SE 

Switzerland         CH 

Syria           SY 

Taiwan, Province of China TW 

Tajikistan      TJ 

Thailand                TH 

Togo                    TG 

Tonga       TO 

Trinidad and Tobago   TT 

Tunisia             TN 

Turkey          TR 

Turkmenistan    TM 

Tuvalu          TV 

Uganda          UG 

Ukraine             UA 

United Arab Emirates    AE 

United Kingdom      GB 

United Republic of Tanzania   TZ 

United States of America        US 

Uruguay             UY 

Uzbekistan      UZ 

Vanuatu             VU 

Venezuela   VE 

Viet Nam                VN 

Yemen       YE 

Yugoslavia      YU 

Zaire       ZR 

Zambia          ZM 

Zimbabwe                ZW 

Annex A, Section 3 
International Organizations Issuing or Registering 
Industrial Property Titles 

African Intellectual Property Organization (OAPI) OA 

African Regional Industrial Property Organization (ARIPO) AP 

Benelux Trademark Office and Benelux Designs Office   BX 

European Patent Organization (EPO)      EP 

World Intellectual Property Organization (WIPO)       WO 


>1852 International-Type Search 


PCT Rule 41 
Earlier Search Other Than International Search 

41.1.     Obligation to Use Results; Refund of Fee 

If reference has been made in the request, in the form provided for in 
Rule  4.11, to an international-type search carried out under the 
conditions set  out in Article 15(5) or to a search other than an 
international or international-type  search, the International Searching 
Authority shall, to the extent possible,  use the results of the said 
search in  establishing the international search  report on the 
international application. The International Searching Authority  shall 
refund the search fee, to the extent and under the conditions provided 
for in the agreement under Article 16(3)(b) or in a communication 
addressed  to and published in the Gazette by the International Bureau, if 
the international  search report could wholly or partly be based on the 
results of the said search. 
37 CFR 1.104.     Nature of examination; examiner's action. 
****** 

(c)   An international-type search will be made in all national 
applications  filed on and after June 1, 1978. 

(d)   Any national application may also have an international-type search 
report  prepared thereon at the time of the national examination on the 
merits, upon  specific written request therefor and payment of the 
international-type search  report fee. See w1.21(e) for amount of fee for 
preparation of international-type  search report. 

NOTE: The Patent and Trademark Office does not require that a formal 
report  of an international-type search be prepared in order to obtain a 
search fee  refund in a later filed international application. 

 ***** 

PCT Rule 41 provides that the applicant may request in a later filed 
international  application that the report of the results of the 
international-type search,  i.e., a search similar to an international 
search, but carried out on a  NATIONAL  application (37 CFR 1.104 (c) and 
(d)), be used in establishing an international  search report on such 
international application. An international-type search  is conducted on 
all U.S. national applications filed after June 1, 1978. Upon  specific 
request, at the time of the examination of a U.S. national application 
and provided that the payment of the appropriate international-type search 
 report fee has been made (37 CFR 1.21(e)) an international-type search 
report  Form (PCT/ISA/201) will also be prepared. 


>1853    Amendment Under PCT Article 19 


PCT Article 19 
Amendment of the Claims before the International Bureau 

(1)   The applicant shall, after having received the international search 
report,  be entitled to one opportunity to amend the claims of the 
international application  by filing amendments with the International 
Bureau within the prescribed time  limit. He may, at the same time, file a 
brief statement, as provided in the  Regulations, explaining the 
amendments and indicating any impact that such  amendments might have on 
the description and the drawings. 

(2)   The amendments shall not go beyond the disclosure in the 
international  application as filed. 

 (3)    If the national law of any designated State permits amendments to 
go  beyond the said disclosure, failure to comply with paragraph (2) shall 
have  no consequence in that State. 

PCT Rule 46 
Amendment of Claims before the International Bureau 

46.1.     Time Limit 

The time limit referred to in Article 19 shall be two months from the date 
 of transmittal of the international search report to the International 
Bureau  and to the applicant by the International Searching Authority or 
16 months  from the priority date, whichever time expires later, provided 
that any amendment  made under Article 19 which is received by the 
International Bureau after the  expiration of the applicable time limit 
shall be considered to have been received  by that Bureau on the last day 
of that time limit if it reaches it before the  technical preparations for 
international publication have been completed. 
46.2.     Where to file 

Amendments made under Article 19 shall be filed directly with the 
International  Bureau. 

46.3.     Language of Amendments 

If the international application has been filed in a language other than 
the  language in which it is published, any amendment made under Article 
19 shall  be in the language of publication. 

 46.4.      Statement 

(a)   The statement referred to in Article 19(1) shall be in the language 
in  which the international application is published and shall not exceed 
500 words  if in the English language or if translated into that language. 
The statement  shall be identified as such by a heading, preferably by 
using the words  Statement  under Article 19(1)  or their equivalent in 
the language of the statement. 
(b)   The statement shall contain no disparaging comments on the 
international  search report or the relevance of citations contained in 
that report. Reference  to citations, relevant to a given claim, contained 
in the international search  report may be made only in connection with an 
amendment of that claim. 
46.5.     Form of Amendments 

(a)   The applicant shall be required to submit a replacement sheet for 
every  sheet of the claims which, on account of an amendment or amendments 
under Article  19, differs from the sheet originally filed. The letter 
accompanying the replacement  sheets shall draw attention to the 
differences between the replaced sheets  and the replacement sheets. To 
the extent that any amendment results in the  cancellation of an entire 
sheet, that amendment shall be communicated in a  letter. 

(b)   and (c)       [Deleted] 

37 CFR 1.415.     The International Bureau. 

(a)   The International Bureau is the World Intellectual Property 
Organization  located at Geneva, Switzerland. It is the international 
intergovernmental organization  which acts as the coordinating body under 
the Treaty and the Regulations (PCT Art. 2 (xix) and 35 U.S.C. 351(h)). 
(b)   The major functions of the International Bureau include: 

(1)   Publishing of international applications and the International 
Gazette; 
(2)   Transmitting copies of international applications to Designated 
Offices; 
(3)   Storing and maintaining record copies; and 

(4)   Transmitting information to authorities pertinent to the processing 
of  specific international applications. 

PCT Administrative Instructions Section 205 
Numbering and Identification of Claims Upon Amendment 

(a)   Amendments to the claims under Article 19 or Article 34(2)(b) may be 
 made either by cancelling one or more entire claims, by adding one or 
more  new claims or by amending the text of one or more of the claims as 
filed. All  the claims appearing on a replacement sheet shall be numbered 
in Arabic numerals.  Where a claim is cancelled, no renumbering of the 
other claims shall be required.  In all cases where claims are renumbered, 
they shall be renumbered consecutively. 
(b)   The applicant shall, in the letter referred to in the second and 
third  sentences of Rule 46.5(a) or in the second and fourth sentences of 
Rule 66.8(a),  indicate the differences between the claims as filed and 
the claims as amended.  He shall, in particular, indicate in the said 
letter, in connection with each  claim appearing in the international 
application (it being understood that  identical indications concerning 
several claims may be grouped), whether: 
(i)   the claim is unchanged; 

(ii)    the claim is cancelled; 

(iii)     the claim is new; 

(iv)    the claim replaces one or more claims as filed; 

(v)   the claim is the result of the division of a claim as filed. 
The applicant has one opportunity to amend the claims only of the 
international  application after issuance of the Search Report. The 
amendments to the claims  must be filed directly with the International 
Bureau, usually within 2 months  of the date of mailing of the Search 
Report. If the amendments to the claims  are timely received by the 
International Bureau, such amendments will be published  as part of the 
pamphlet directly following the claims as filed. Article 19  offers 
applicants the opportunity to generally amend the claims before entering 
the designated Offices. The national laws of some designated Offices may 
grant  provisional protection on the invention from the date of 
publication of the  claims. Therefore, some applicants take advantage of 
the opportunity under  Article 19 to  polish  the claims anticipating 
provisional protection. See  PCT Rule 46.5. 


>1857    International Publication 


PCT Article 21 
International Publication 

(1)   The International Bureau shall publish international applications. 
(2)(a)  Subject to the exceptions provided for in subparagraph (b) and in 
Article  64(3), the international publication of the international 
application shall  be effected promptly after the expiration of 18 months 
from the priority date  of that application. 

(b)   The applicant may ask the International Bureau to publish his 
international  application any time before the expiration of the time 
limit referred to in  subparagraph (a). The International Bureau shall 
proceed accordingly, as provided  in the Regulations. 

(3)   The international search report or the declaration referred to in 
Article  17(2)(a) shall be published as prescribed in the Regulations. 

(4)   The language and form of the international publication and other 
details  are governed by the Regulations. 

(5)   There shall be no international publication if the  international 
application  is withdrawn or is considered withdrawn before the technical 
preparations for  publication have been completed. 

(6)   If the international application contains expressions or drawings 
which,  in the opinion of the International Bureau, are contrary to 
morality or public  order, or if, in its opinion, the international 
application contains disparaging  statements as defined in the 
Regulations, it may omit such expressions, drawings,  and statements, from 
its publications, indicating the place and number of words  or drawings 
omitted, and furnishing, upon request, individual copies of the  passages 
omitted. 

PCT Article 29 
Effects of the International Publication 

(1)   As far as the protection of any rights of the applicant in a 
designated  State is concerned, the effects, in that State, of the 
international publication  of an international application shall, subject 
to the provisions of paragraphs 
(2) to (4), be the same as those which the national law of the designated 
State  provides for the compulsory national publication of unexamined 
national applications  as such. 

(2)   If the language in which the international publication has been 
effected  is different from the language in which publications under the 
national law  are effected in the designated State, the said national law 
may provide that  the effects provided for in paragraph (1) shall be 
applicable only from such  time as: 

(i)   a translation into the latter language has been published as 
provided  by the national law, or 

(ii)    a translation into the latter language has been made available to 
the  public, by laying open for public inspection as provided by the 
national law,  or 

(iii)     a translation into the latter language has been transmitted by 
the  applicant to the actual or prospective unauthorized user of the 
invention claimed  in the international application, or 

(iv)    both the acts described in (i) and (iii), or both the acts 
described  in (ii) and (iii), have taken place. 

(3)   The national law of any designated State may provide that, where the 
 international publication has been effected, on the request of the 
applicant,  before the expiration of 18 months from the priority date, the 
effects provided  for in paragraph (1) shall be applicable only from the 
expiration of 18 months  from the priority date. 

(4)   The national law of any designated State may provide that the 
effects  provided for in paragraph (1) shall be applicable only from the 
date on which  a copy of the international application as published under 
Article 21 has been  received in the national Office of or acting for such 
State. The said Office  shall publish the date of receipt in its gazette 
as soon as possible. 
PCT Administrative Instructions Section 404 
 International Publication Number of International Application 

The International Bureau shall assign to each published international 
application  an international publication number which shall be different 
from the international  application number. The international publication 
number shall be used on the  pamphlet and in the Gazette entry. It shall 
consist of the two-letter code 
 WO  followed by a two-digit designation of the last two numbers of the 
year  of publication, a slant, and a serial number consisting of five 
digits (e.g., 
 WO78/1 2345). 

35 U.S.C. 374.      Publication of international application: Effect. 
The publication under the treaty of an international application shall 
confer  no rights and shall have no effect under this title other than 
that of a printed  publication. 

37 CFR 1.318.     Notification of national publication of a patent based 
on  an international application. 

The Office will notify the International Bureau when a patent is issued on 
 an application filed under 35 U.S.C. 371, and there has been no previous 
international  publication. 

The publication of international applications currently occurs every other 
 Thursday. Under Article 20 the International Bureau sends copies of 
published  applications to each of the designated Offices on the day of 
publication. As  a PCT member country, the U.S. Patent and Trademark 
Office also receives copies  of all published International applications 
for inclusion in the examiner search  files. Also a complete set of 
published international applications in numeric  order by publication 
number is available on microfilm in the Scientific and  Technical 
Information Center (STIC). 


>1859    Withdrawal of International Application  or Designations 

PCT Administrative Instructions Section 326 
Withdrawal by Applicant under Rule 90bis.1, 90bis.2 or 90bis.3 

(a)   The receiving Office shall promptly transmit to the International 
Bureau  any notice from the applicant effecting withdrawal of the 
international application  under Rule 90bis.1, of a designation under Rule 
90bis.2 or of a priority claim  under Rule 90bis.3 which has been filed 
with it together with an indication  of the date of receipt of the notice. 
 If the record copy has not yet been  sent to the International Bureau, 
the receiving Office shall transmit the said  notice together with the 
record copy. 

(b)   If the search copy has already been sent to the International 
Searching  Authority and the international application is withdrawn under 
Rule 90bis.1  or a priority claim is withdrawn under Rule 90bis.3, the 
receiving Office shall  promptly transmit a copy of the notice effecting 
withdrawal to the International  Searching Authority. 

(c)   If the search copy has not yet been sent to the International 
Searching  Authority and the international application is withdrawn under 
Rule 90bis.1,  the receiving Office shall not send the search copy to the 
International Searching  Authority and shall, subject to Section 322, 
refund the search fee to the applicant  unless it has already been 
transferred to the International Searching Authority. 
 If the search fee has already been transferred to the International 
Searching  Authority, the receiving Office shall send a copy of the 
request and of the  notice effecting withdrawal to that Authority. 

(d)   If the search copy has not yet been sent to the International 
Searching  Authority and a priority claim is withdrawn under Rule 90bis.3, 
the receiving  Office shall transmit a copy of the notice effecting 
withdrawal to the International  Searching Authority together with the 
search copy. 

PCT Administrative Instructions Section 414 
Notification to the International Preliminary Examining 
Authority Where the International Application or the 
Designations of All Elected States Are Considered Withdrawn 

If a demand has been submitted and the international application or the 
designations  of all designated States which have been elected are 
considered withdrawn under  Article 14(1), (3) or (4), the International 
Bureau shall promptly notify the  International Preliminary Examining 
Authority, unless the international preliminary  examination report has 
already issued. 

The applicant may withdraw the international application by a notice 
addressed  to the International Bureau or to the receiving Office and 
received before  the expiration of 20 months from the priority date. Where 
a Demand for  international  preliminary examination has been filed before 
the expiration of 19 months from  the priority date, the international 
application may be withdrawn by a notice  addressed to the International 
Bureau or to the International Preliminary Examining  Authority and 
received before the expiration of 30 months from the priority  date. Any 
such withdrawal is free of charge. A notice of withdrawal must be  signed 
by all the applicants. An appointed agent or appointed common 
representative  may sign such a notice on behalf of the applicant or 
applicants who appointed  him, but an applicant who is considered to be 
the common representative may  not sign such a notice on behalf of the 
other applicants. As to the case where  an applicant inventor for the 
United States of America refuses to sign or cannot  be found or reached 
see PCT Rule 90bis.5(b). 

The applicant may prevent international publication by withdrawing the 
international  application, provided that the notice of withdrawal reaches 
the International  Bureau before the completion of technical preparations 
for that publication.  The notice of withdrawal may state that the 
withdrawal is to be effective only  on the condition that international 
publication can still be prevented. In  such a case the withdrawal is not 
effective if the condition on which it was  made cannot be met that is, if 
the technical preparations for international  publication have already 
been completed. International publication may be postponed  by 
withdrawing the priority claim. 

The applicant may withdraw the designation of any State by a notice 
addressed  to the International Bureau or to the receiving Office and 
received before  the expiration of 20 months from the priority date. Where 
a Demand for international  preliminary examination has been filed before 
the expiration of 19 months from  the priority date, the designation of 
any elected State may be withdrawn by  a notice addressed to the 
International Preliminary Examining Authority and  received before the 
expiration of 30 months from the priority date. Any such  withdrawal is 
free of charge. A notice of withdrawal must be signed by all  the 
applicants. An appointed agent or appointed common representative may sign 
 such a notice on behalf of the applicant or applicants who appointed him, 
but  an applicant who is considered to be the common representative may 
not sign  such a notice on behalf of the other applicants. If all 
designations are withdrawn,  the international application will be treated 
as withdrawn. 

The applicant may withdraw a priority claim made in the international 
application  by a notice addressed to the International Bureau or to the 
receiving Office  and received before the expiration of 20 months from the 
priority date. Where  a Demand for international preliminary examination 
has been filed before the  expiration of 19 months from the priority date, 
the notice must be received  before the expiration of 30 months from the 
priority date.  In the latter case,  the notice may also be addressed to 
the  International Preliminary Examining  Authority. Any or all of the 
priority claims may be so withdrawn. Any such  withdrawal is free of 
charge. A notice of withdrawal must be signed by all  the applicants. An 
appointed agent or appointed common representative may sign  such a notice 
on behalf of the applicant or applicants who appointed him, but  an 
applicant who is considered to be the common representative may not sign 
such a notice on behalf of the other applicants. 

Where the withdrawal of a priority claim causes a change in the priority 
date  of the international application, any time limit which is computed 
from the  original priority date and which has not yet expired-for 
example, the time  limit before which processing in the national phase 
cannot start-is computed  from the priority date resulting from the 
change. (It is not possible to extend  the time limit concerned if it has 
already expired when the priority claim  is withdrawn.) However, if the 
notice of withdrawal reaches the International  Bureau after the 
completion of the technical preparations for international  publication, 
the International Bureau may proceed with the international publication 
on the basis of the time limit for international publication as computed 
from  the original priority date. 


>1860    International Preliminary Examination 


EXAMINATION PROCEDURE 

The International Preliminary Examination is to be carried out in 
accordance  with PCT Article 34 and PCT Rule 66. After the Demand is 
checked for compliance  with PCT Rules 53 - 55, 57 and 58, the first step 
of the examiner is to study  the description; the drawings (if any), and 
the claims of the international  application and the documents describing 
the prior art as cited in the International  Search Report. 

A Written Opinion must be prepared if the examiner: 

1.  considers that the international application has any of the defects 
described  in PCT Article 34(4) concerning subject matter which is not 
required to be  examined or which is unclear or inadequately supported, 

2.  considers that the report should be negative with respect to any of 
the  claims because of a lack of novelty, inventive step (non-obviousness) 
or industrial  applicability as described in PCT Article 33(2) - (4), 

3.  notices any defects in the form or contents of the international 
application., 
4.  considers that any amendment goes beyond the disclosure in the 
international  application as originally filed; 

5.  wishes to make an observation on the clarity of the claims, the 
description,  the drawings or to the question whether the claims are fully 
supported by the  description (PCT Rule 66.2); 

6.  decides not to carry out the international preliminary examination on 
a  claim for which no International Search Report was issued; or 

7.  considers that no acceptable amino acid sequence listing is available 
in  a form that would allow a meaningful international preliminary 
examination  to be carried out. 

The Written Opinion is prepared on form PCT/IPEA/408  to notify applicant 
of  the defects found in 
the international application. The examiner is further required to fully 
state the reasons for his/her opinion (PCT Rule 66.2(b))  and invite a 
written reply, with amendments where appropriate (PCT Rule 66.2(c)) 
normally setting a 2 month time limit for the reply. 

The applicant may respond to the invitation by making amendments or, if 
applicant  disagrees with the opinion of the examiner, by submitting 
arguments, as the  case may  be, or both. 

The U.S. Rules of Practice pertaining to international preliminary 
examination  of international applications permit a second Written Opinion 
in those cases  where sufficient time is available.  Normally only one 
Written Opinion will  be issued. Any response received after the 
expiration of the set time limit  will not normally be considered in 
preparing the International Preliminary  Examination Report. In 
situations, however, where the examiner has requested  an amendment or 
where a later amendment places the application in better condition  for 
examination, the amendment may be considered by the examiner. 

If the applicant does not respond to the Written Opinion within the set 
time  period, the International Preliminary Examination Report will be 
prepared after  expiration of the time limit plus sufficient time to have 
any response clear  the Mail Room. 

If after initial examination of the international application, there is no 
 negative statement or comment to be made, then only the International 
Preliminary  Examination Report will issue without a Written Opinion 
having been issued. 

>1861    Chapter II Basic Flow 


B18610009.bmp 



B18610009.end 




>1862    Agreement with the International Bureau to Serve as an 
International Preliminary Examination Authority 

PCT Article 32 
The International Preliminary Examining Authority 

(1)   International preliminary examination shall be carried out by the 
International  Preliminary Examining Authority. 

(2)   In the case of demands referred to in Article 31(2)(a), the 
receiving  Office, and, in the case of demands referred to in Article 
31(2)(b), the Assembly,  shall, in accordance with the applicable 
agreement between the interested International  Preliminary Examining 
Authority or Authorities and the International Bureau,  specify the 
International Preliminary Examining Authority or Authorities competent 
for the preliminary examination. 

(3)   The provisions of Article 16(3) shall apply, mutatis mutandis, in 
respect  of the International Preliminary Examining Authorities. 

   PCT Article 34 
   Procedure before the International Preliminary 
Examining Authority 

(1)   Procedure before the International Preliminary Examining Authority 
shall  be governed by the provisions of this Treaty, the Regulations, and 
the agreement  which the International Bureau shall conclude, subject to 
this Treaty and the  Regulations, with the said Authority. 

***** 

37 CFR 1.416.     The United States International Preliminary 
Examining Authority 

(a)   Pursuant to appointment by the Assembly, the United States Patent 
and  Trademark Office will act as an International Preliminary Examining 
Authority  for international applications filed in the United States 
Receiving Office  and in other Receiving Offices as may be agreed upon by 
the Commissioner, in  accordance with agreement between the Patent and 
Trademark Office and the International  Bureau. 

(b)   The United States Patent and Trademark Office, when acting as an 
International  Preliminary Examining Authority, will be identified by the 
full title  United  States International Preliminary Examining Authority 
or by the abbreviation 
 IPEA/US. 

(c)   The major functions of the International Preliminary Examining 
Authority  include: 

(1)   Receiving and checking for defects in the Demand; 

(2)   Collecting the handling fee for the International Bureau and the 
preliminary  examination fee for the United States International 
Preliminary Examining Authority; 
(3)   Informing applicant of receipt of the Demand; 

(4)   Considering the matter of unity of invention; 

(5)   Providing an international preliminary examination report which is a 
 nonbinding opinion on the questions whether the claimed invention appears 
to  be novel, to involve inventive step (to be non-obvious), and to be 
industrially  applicable; and 

(6)   Transmitting the international preliminary examination report to 
applicant  and the International Bureau. 

An agreement was concluded between the United States Patent and Trademark 
Office 
(USPTO) and the International Bureau under which the USPTO agreed to serve 
 as an International Preliminary Examining Authority for those 
applications  filed in the USPTO as a Receiving Office and for those 
international applications  filed in other receiving Offices for which the 
USPTO has served as an International  Searching Authority. 

The agreement is provided for in PCT Articles 32(2) & (3) and 34(1), and 
in  PCT Rules 59.1, 63.1, 72.1, and 77.1(a). Authority is given in 35 
U.S.C. 361(c),  362(a) 
& (b) and in 364(a).  37 CFR 1.416(a) and PCT Administrative Instruction 
Section  103(c) are also relevant. 


>1864    The Demand and Preparation for Filing of Demand 


37 CFR 1.480.     Demand for international preliminary examination. 
(a)   On the filing of a Demand and payment of the fees for international 
preliminary  examination (w1.482), the international application shall be 
the subject of  an international preliminary examination. The preliminary 
examination fee (w1.482(a)(1))  and the handling fee (w1.482(b)) shall be 
due at the time of filing of the  Demand. 

(b)   The Demand shall be made on a standardized form. Copies of printed 
Demand  forms are available from the Patent and Trademark Office. Letters 
requesting  printed Demand forms should be marked  Box PCT . 

(c)   If the Demand is made prior to the expiration of the 19th month from 
 the priority date and the United States of America is elected, the 
provisions  of w1.495 shall apply rather than w1.494. 

(d)   Withdrawal of a proper Demand prior to the start of the 
international  preliminary examination will entitle applicant to a refund 
of the preliminary  examination fee minus the amount of the transmittal 
fee set forth in w 1.445(a)(1). 
Once applicant has requested the filing of an international application 
under  Chapter I which affords applicants the benefit of an international 
search,  applicant has the right to file a Demand for preliminary 
examination. The use  of the term "Demand" distinguishes Chapter II from 
the "Request" under Chapter  I. Applicants who timely and properly file a 
Demand for preliminary examination  are able to defer or delay the time 
for entry into the national stage from  20 months (under Chapter I) to 30 
months from the earliest priority date. It  is not possible to file a 
Demand unless a proper Chapter I "Request" for an  international 
application has been filed. 

The Demand should be filed on PCT Form PCT/IPEA/401 along with the fee 
transmittal  sheet. These forms may be obtained free of charge by 
requesting them by writing  to the United States Patent and Trademark 
Office, Box PCT, Washington D.C. 20231 or by telephone by calling (703) 
305-3257. 

>1864.01       Amendments Filed with Demand 


PCT Rule 66 
Procedure before the International Preliminary Examining 
Authority 

***** 

66.8.     Form of Amendments 

(a)  The applicant shall be required to submit a replacement sheet for 
every  sheet of the international application which, on account of an 
amendment, differs  from the sheet previously filed.  The letter 
accompanying the replacement sheets  shall draw attention to the 
differences between the replaced sheets and the  replacement sheets. Where 
the amendment consists in the deletion of passages  or in minor 
alterations or additions, it may be made on a copy of the relevant  sheet 
of the international application, provided that the clarity and direct 
reproducibility of that sheet are not adversely affected. To the extent 
that  any amendment results in the cancellation of an entire sheet, that 
amendment  shall be communicated in a letter. 

(b)   [Deleted] 

***** 

37 CFR 1.485.     Amendments by applicant during international preliminary 
 examination. 

(a)   The applicant may make amendments at the time of filing of the 
Demand  and within the time limit set by the International Preliminary 
Examining Authority  for response to any notification under w 1.484(b) or 
to any written opinion.  Any such amendments must: 

(1)   Be made by submitting a replacement sheet for every sheet of the 
application  which differs from the sheet it replaces unless an entire 
sheet is cancelled,  and 

(2)   Include a description of how the replacement sheet differs from the 
replaced  sheet. 

(b)   If an amendment cancels an entire sheet of the international 
application,  that amendment shall be communicated in a letter. 

Amendments may be filed with the Demand (PCT Article 34) if desired to 
place  the application claims in better condition for international 
preliminary examination.  Such amendments, however, may not include new 
matter and must be accompanied  by a description of how the replacement 
sheet differs from the replaced sheet. 
Amendments filed after the Demand cannot be assured of consideration since 
 the examiner will be taking up the application to draft the written 
opinion  rather promptly because of the short examination period. 


>1864.02       Applicant's Right to File a Demand 


PCT Article 31 
Demand for International Preliminary Examination 

***** 

(2)(a)      Any applicant who is a resident or national, as defined in the 
 Regulations, of a Contracting State bound by Chapter II, and whose 
international  application has been filed with the receiving Office of or 
acting for such  State, may make a demand for international preliminary 
examination. 
***** 

PCT Rule 54 
The Applicant Entitled to Make a Demand 

54.1.     Residence and Nationality 

The residence or nationality of the applicant shall, for the purposes of 
Article  31(2), be determined according to Rules 18.1 and 18.2. 

54.2.     Two or More Applicants 

If there are two or more applicants, the right to make a demand under 
Article  31(2) shall exist if at least one of the applicants making the 
demand is 
(i)   a resident or national of a Contracting State bound by Chapter II 
and 
 the international application has been filed with a receiving Office of 
or  acting for a Contracting State bound by Chapter II, or 

(ii)    a person entitled to make a demand under Article 31(2)(b) and the 
international  application has been filed as provided in the decision of 
the Assembly. 
54.3.     [Deleted] 

54.4.     Applicant Not Entitled to Make a Demand 

(a)   If the applicant does not have the right to make a demand or, in the 
 case of two or more applicants, if none of them has the right to make a 
demand  under Rule 54.2, the demand shall be considered not to have been 
submitted. 
(b)   [Deleted] 

If there is a sole applicant, he must be a resident or national of a 
Contracting  State bound by Chapter II of the PCT. If there are two or 
more applicants,  it is sufficient that one of them be a resident or 
national of a Contracting  State bound by Chapter II, regardless of the 
elected State(s) for which each  applicant is indicated. Only applicants 
for the elected States are required  to be indicated in the Demand. The 
detailed requirements for the various indications  required in connection 
with each applicant (name and address, telephone number,  facsimile 
machine number or teleprinter address, nationality and residence)  are the 
same as those required under Rule 4 in connection with the Request.  Note 
that any inventor who is not also an applicant is not indicated in the 
Demand. 

If the recording of a change in the name or person has  been requested 
under  PCT Rule 92bis.1 before the De-mand was filed, it is the 
applicant(s) of record  at the time when the Demand is filed who must be 
indicated in the Demand. 

>1864.03       States Which May Be Elected 


PCT Article 31 
Demand for International Preliminary Examination 

***** 

(4)(a)      The demand shall indicate the Contracting State or States in 
which  the applicant intends to use the results of the international 
preliminary examination 
( elected States ). Additional Contracting States may be elected later. 
Election  may relate only to Contracting States already designated under 
Article 4. 
(b)   Applicants referred to in paragraph (2)(a) may elect any Contracting 
 State bound by Chapter II. Applicants referred to in paragraph (2)(b) may 
elect  only such Contracting States bound by Chapter II as have declared 
that they  are prepared to be elected by such applicants. 

***** 

Only PCT member states which have ratified or acceded to Chapter II and 
which  were designated in the Request may be elected under Chapter II. The 
Assembly  has taken no action to allow persons who are residents or 
nationals of a State  not party to the PCT or not bound by Chapter II to 
make a Demand under Article  31(2)(b). 


>1864.04       Agent's Right to Act 


Any agent entitled to practice before the receiving Office where the 
international  application was filed may represent the applicant before 
the international  authorities (PCT Article 49). 

If for any reason, the examiner needs to question the right of an attorney 
 or agent to practice before the International Preliminary Examining 
Authority,  the USPTO roster of registered attorneys and agents should be 
consulted.  If  the international application was filed with a receiving 
Office other than  the United States, Form PCT/IPEA/410 may be used by the 
requesting IPEA to  ask the receiving Office with which the international 
application was filed,  whether the agent named in the international 
application has the right to practice  before that Office. 

The PCT Article and Regulations governing the right to practice are 
Article  49 and Rule 83. 


>1865    Filing of Demand [R-2] 


PCT Article 31 
Demand for International Preliminary Examination 

(1)   On the demand of the applicant, his international application shall 
be  the subject of an international preliminary examination as provided in 
the  following provisions and the Regulations. 

  ***** 

(3) The demand for international preliminary examination shall be made 
separately  from the international application. The demand shall contain 
the prescribed  particulars and shall be in the prescribed language and form. 

  ***** 

(6)(a) The demand shall be submitted to the competent International 
Preliminary  Examining Authority referred to in Article 32. 

   ***** 

Applicants should mail the Demand and appropriate fees directly to the 
International  Preliminary Examining Authority they desire to prepare the 
International Preliminary  Examination Report. U.S. applicants who have 
had the international search prepared  by the European Patent Office may 
also request the European Patent Office to  act as the International 
Preliminary Examining Authority. 

Demands filed in the European Patent Office should be addressed to: 
European Patent Office 

Erhardstrasse 27 

8000 Munich 2, 

Federal Republic of Germany. 

Demands directed to the United States Patent and Trademark Office should 
be  addressed to: 

United States Patent and Trademark Office 

Box PCT 

Washington, D.C. 20231. 

The Express MailTM  provisions of 37 CFR 1.10 may be used to file a Demand 
 under Chapter II in the 
USPTO.  Applicants are advised that failure to comply with the provisions 
of  37 CFR 1.10 will result in the paper or fee being accorded the date of 
receipt  and not the date of deposit. 

A Demand for international preliminary examination may be submitted to the 
 USPTO via facsimile. The Certificate of Mailing or Transmission practice 
under 37 CFR 1.8 CANNOT be used to file a Demand if the date of deposit is 
desired. 
 If used, the date of the Demand will be the date of receipt in the USPTO. 
 See MPEP w 513, # 1834, and w 1834.01. 

All Demands filed in the USPTO must be in the English language. 

CHOICE OF EXAMINING AUTHORITY 

U.S. residents and nationals may choose to have the International 
Preliminary  Examination done either by the IPEA/EP or the IPEA/US. The 
IPEA/EP has agreed  that it would act as International Preliminary 
Examining 

Authority for any Chapter II case in which it served as the ISA. The 
IPEA/US  will serve as International Preliminary Examining Authority for 
U.S. residents  and nationals if the U.S. or EPO served  as ISA. 

The IPEA/US will also serve as International Preliminary Examining 
Authority  for residents or nationals of Mexico, Trinidad and Tobago, * 
and Barbados if  the U.S. was the International Searching Authority. 



A18650010.bmp 



A18650010.end 



A18650011.bmp 



A18650011.end 



A18650012.bmp 



A18650012.end 



A18650013.bmp 



A18650013.end 




>1866    Filling in of Headings on Chapter II Forms 


The examiner will encounter several different forms for use in the Chapter 
 II preliminary examination phase and most of the forms will have the same 
"header"  information to be provided. 

The notes below list the common identifying information requested on the 
top  of the first page of most of the forms: 

Applicant's mailing address - this is usually the attorney's address taken 
 from the file wrapper. 

Applicant's or Agent's File Reference - this is the applicant's or agent's 
 application reference (or docket number) which is composed of either 
letters  or numbers, or both, provided this reference does not exceed 
twelve characters.  This reference may be found in the upper right hand 
box on the first sheet  of the Demand, Form PCT/IPEA/401. See 
Administrative Instruction Section 109. 
International Application Number - this is the 14 digit PCT application 
serial  number as stamped and typed on the international application file 
wrapper and  may also be found on the first page of the Demand, Form 
PCT/IPEA/401. 
International Filing Date - this is the filing date printed on the 
international  application file wrapper and may also be found on the first 
page of the Demand,  Form PCT/IPEA/401. 

Applicant (Name) - the first named applicant as set forth on the 
international  application file wrapper and may also be found in box II of 
the Demand, Form  PCT/IPEA/401. 


>1867    Preliminary Examination Fees 


A preliminary examination fee is due on filing of the Demand. This fee is 
for  the benefit of the International Preliminary Examining Authority and 
the amount  for the U.S. doing the preliminary examination is specified in 
37 CFR 1.482.  The fee is somewhat higher if the international search was 
performed by an  authority other than the USPTO. 

The handling fee is a fee for the benefit of the International Bureau and 
is  collected by the International Preliminary Examining Authority. The 
amount  of the handling fee is set out in the PCT schedule of fees which 
is annexed  to the PCT Regulations. 

The current amount of both the preliminary examination fee and the 
handling  fee can be found in each weekly issue of the Official Gazette. 
Since supplements  to the handling fee were deleted, no additional Chapter 
II fees are required  other than any additional preliminary examination 
fee where additional inventions  are determined to be present. The amount 
of this fee is also specified in 37  CFR 1.482 and in the weekly issues of 
the Official Gazette. See also PCT Rules  57 and 58. 


>1868    Correction of Defects in the Demand 


PCT Rule 60 
Certain Defects in the Demand or Elections 

60.1.     Defects in the Demand 

(a)     If the demand does not comply with the requirements specified in 
Rules  53.1, 53.2(a)(i) to (iv), 53.2(b), 53.3 to 53.8 and 55.1, the 
International  Preliminary Examining Authority shall invite the applicant 
to correct the defects  within a time limit which shall be reasonable 
under the circumstances.  That  time limit shall not be less than one 
month from the date of the invitation. 
 It may be extended by the International Preliminary Examining Authority 
at  any time before a decision is taken. 

(b)   If the applicant complies with the invitation within the time limit 
under  paragraph (a), the demand shall be considered as if it had been 
received on  the actual filing date, provided that the demand as submitted 
contained at  least one election and permitted the international 
application to be identified; 
 otherwise, the demand shall be considered as if it had been received on 
the  date on which the International Preliminary Examining Authority 
receives the  correction. 

(c)   Subject to paragraph (d), if the applicant does not comply with the 
invitation  within the time limit under paragraph (a), the demand shall be 
considered as  if it had not been submitted. 

(d)   Where, after the expiration of the time limit under paragraph (a), a 
 signature required under Rule 53.8 or a prescribed indication is lacking 
in  respect of an applicant for a certain elected State, the election of 
that State  shall be considered as if it had not been made. 

(e)   If the defect is noticed by the International Bureau, it shall bring 
 the defect to the attention of the International Preliminary Examining 
Authority,  which shall then proceed as provided in paragraphs (a) to (d). 

(f)   If the demand does not contain a statement concerning amendments, 
the  International Preliminary Examining Authority shall proceed as 
provided for  in Rules 66.1 and 69.1(a) or (b). 

(g)   Where the statement concerning amendments contains an indication 
that  amendments under Article 34 are submitted with the demand (Rule 
53.9(c)) but  no such amendments are, in fact, submitted, the 
International Preliminary Examining  Authority shall invite the applicant 
to submit the amendments within a time  limit fixed in the invitation and 
shall proceed as provided for in Rule 69.1(e). 
 60.2.      Defects in Later Elections 

(a)   If the notice effecting a later election does not comply with the 
requirements  of Rule 56, the International Bureau shall invite the 
applicant to correct  the defects within a time limit which shall be 
reasonable under the circumstances. 
 That time limit shall not be less than one month from the date of the 
invitation. 
 It may be extended by the International Bureau at any time before a 
decision  is taken. 

(b)   If the applicant complies with the invitation within the time limit 
under  paragraph (a), the notice shall be considered as if it had been 
received on  the actual filing date, provided that the notice as submitted 
contained at  least one election and permitted the international 
application to be identified; 
 otherwise, the notice shall be considered as if it had been received on 
the  date on which the International Bureau receives the correction. 

(c)   Subject to paragraph (d), if the applicant does not comply with the 
invitation  within the time limit under paragraph (a), the notice shall be 
considered as  if it had not been submitted. 

(d)   Where, in respect of an applicant for a certain elected State, the 
signature  required under Rule 56.1(b) and (c) or the name or address is 
lacking after  the expiration of the time limit under paragraph (a), the 
later election of  that State shall be considered as if it had not been made. 

Defects in the Demand may be corrected. The type of correction determines 
whether  the filing date of the Demand must be changed. The most common 
defects which  result in the mailing of an invitation to correct are found 
in PCT Rules 53,  55 and 57.4. If the applicant complies with the 
invitation, the Demand is considered  as if it had been received on the 
actual filing date, i.e., the original date  of receipt. See PCT Rule 60.1(b). 


>1869    Notification to International Bureau of Demand 


PCT Article 31 
Demand for International Preliminary Examination 

***** 

(7)   Each elected Office shall be notified of its election. 

The International Preliminary Examining Authority, pursuant to PCT Rule 
61,  promptly notifies the International Bureau and the applicant of the 
filing  of any Demand. The International Bureau in turn notifies each 
elected Office  of their election and also notifies the applicant that 
such notification has  been made. 


>1870    Priority Document and Translation Thereof 


PCT Rule 66 
Procedure before the International Preliminary Examining 
Authority 

***** 

66.7.     Priority Document 

(a)   If the International Preliminary Examining Authority needs a copy of 
 the application whose priority is claimed in the international 
application,  the International Bureau shall, on request, promptly furnish 
such copy. If  that copy is not furnished to the International Preliminary 
Examining Authority  because the applicant failed to comply with the 
requirements of Rule 17.1,  the international preliminary examination 
report may be established as if the  priority had not been claimed. 

(b)   If the application whose priority is claimed in the international 
application  is in a language other than the language or one of the 
languages of the International  Preliminary Examining Authority, that 
Authority may invite the applicant to  furnish a translation in the said 
language or one of the said languages within  two months from the date of 
the invitation. If the translation is not furnished  within that time 
limit, the international preliminary examination report may  be 
established as if the priority had not been claimed. 

***** 

A copy of the priority document may be required by the examiner if 
necessary  because of an intervening reference, and a translation thereof, 
if the priority  document is not in English. 


>1871    Processing Amendments Filed Under Article 19 and Article 34 Prior 
to or at the Start of International Preliminary Examination 

PCT Rule 62 
Copy  of Amendments under Article 19 for the International 
Preliminary Examining Authority 

62.1.     Amendments Made before the Demand is Filed 

Upon receipt of a demand from the International Preliminary Examining 
Authority,  the International Bureau shall promptly transmit a copy of any 
amendments under  Article 19 to that Authority, unless that Authority has 
indicated that it has  already received such a copy. 

62.2.     Amendments Made after the Demand is Filed 

(a)   If, at the time of filing any amendments under Article 19, a demand 
has  already been submitted, the applicant shall preferably, at the same 
time as  he files the amendments with the International Bureau, also file 
a copy of  such amendments with the International Preliminary Examining 
Authority. In  any case, the International Bureau shall promptly transmit 
a copy of such amendments  to that Authority. 

(b)   [Deleted] 

The documents making up the international application may include 
amendments  of the claims filed by the applicant under Article 19. Article 
19 amendments  are exclusively amendments to the claims and these 
amendments can only be made  after the search report has been established. 
Article 19 amendments will be  transmitted to the International 
Preliminary Examining Authority by the International  Bureau. If a Demand 
for international preliminary examination has already been  submitted, the 
applicant should preferably, at the time he files the Article  19 
amendments, also file a copy of the amendments with the International 
Preliminary  Examining Authority. In the event that the time limit for 
filing amendments  under Article 19, as provided in Rule 46.1, has not 
expired and the Demand includes a statement that the start of the 
international  preliminary examination is to be postponed under Rule 
53.9(b), the international  preliminary examination should not start 
before the examiner receives a copy  of any amendments made under Article 
19 or a notice from the applicant that  he does not wish to make 
amendments under Article 19, or before the expiration  of 20 months from 
the priority date, whichever occurs first. 

The applicant has the right to amend the claims, the description, and the 
drawings,  in the prescribed manner and before the start of international 
preliminary  examination. The amendment must not go beyond the disclosure 
in the international  application as filed. These amendments are referred 
to as Article 34(2)(b)  amendments. It should be noted that Article 19 
amendments are strictly amendments  to the claims made during the Chapter 
I search phase while Article 34(2)(b)  amendments to the description, 
claims, and drawings are made during the Chapter  II examination phase. 

When amendments to the description, claims, or drawings are made under 
Rule  66.8, they may be accompanied by an explanation.  These amendments 
may have  been submitted to avoid possible objections as to lack of 
novelty or lack of  inventive step in view of the citations listed in the 
international search  report; to meet any objections noted by the 
International Searching Authority  under Article 17(2)(a)(ii) (i.e., that 
all or at least some claims do not permit  a meaningful search) or under 
Rule 13 (i.e., that there is a lack of unity  of invention); or to meet 
objections that may be raised for some other reason;  e.g., to remedy some 
obscurity which the applicant himself/herself has noted  in the original 
documents. 

The amendments are made by the applicant of his/her own volition. This 
means  that the applicant is not restricted to amendments necessary to 
remedy a defect  in his/her international application. It does not, 
however, mean that the applicant  should be regarded as free to amend in 
any way he/she chooses. Any amendment  must not add subject matter which 
goes beyond the disclosure of the international  application as originally 
filed. Furthermore, it should not itself cause the  international 
application as amended to be  objectionable under the PCT, e.g.,  the 
amendment should not introduce obscurity. 

As a matter of policy and to ensure consistency in handling amendments 
filed  under Articles 19 and 34 of the PCT, the following guidelines for 
processing  these amendments have been established: 

(1)   Any amendment which complies with 37 CFR 1.485(a) will be 
considered; 
(2)   Amendments filed after the Demand 

(a)   will be considered if filed before the application is docketed to 
the  examiner, 

(b)   may be considered if filed after docketing. The examiner has 
discretion  to consider such amendments if the examiner determines that 
the amendment places  the application in better condition for examination 
or the examiner determines  that the amendment should otherwise be entered; 

(3)   Amendments filed after expiration of the period for response to the 
written  opinion 

(a)   will be considered if the amendment was requested by the examiner, 
(b)   may be considered if the examiner determines that the amendment 
places  the application in better condition for examination or the 
examiner determines  that the amendment should otherwise be entered. 

It is expected, due to the relatively short time period for completion of 
preliminary  examination, that the Chapter II application will be taken up 
for preparation  of the written opinion promptly after docketing to the 
examiner and taken up  for preparation of the final report promptly after 
the time expires for response  to the written opinion (i.e., after 
allowing for mail processing). The examiner  is not obliged to consider 
amendments or arguments which are filed after he/she  has taken up the 
case for preparation of the written opinion or the final report. 
Amendments timely filed but misdirected or are otherwise late reaching the 
 examiner will be considered as in the case of regular domestic 
applications  and may require a supplemental written opinion and/or final 
report. 
Clearly, these guidelines offer the examiner flexibility. The examiner 
should  be guided by the over-riding principle that the final report (the 
PCT/IPEA/409)  should be established with as few written opinions as 
possible and resolution  of as many issues as possible consistent with the 
goal of a timely and quality  report. 

See also Administrative Instruction Section 602 regarding processing of 
amendments  by the International Preliminary Examining Authority. 


>1872    Transmittal of Demand to the Examining Corps 


PCT Administrative Instructions Section 605 
File to be used for International Preliminary Examination 

Where the International Preliminary Examining Authority is part of the 
same  national Office or intergovernmental organization as the 
International Searching  Authority, the same file shall serve the purposes 
of international search and  international preliminary examination. 

When the PCT International Division has finished processing of the papers 
and  fees filed with a complete Demand, a copy of the Demand and other 
papers are  forwarded to the appropriate examining group for examination. 
The documents  will be placed in the Search Copy file wrapper when 
forwarded to the examining  corps. 


>1873    Later Election of States 


PCT Article 31 
Demand for International Preliminary Examination 

***** 

(6)(b) Any later election shall be submitted to the International Bureau. 
***** 

PCT Rule 56 
Later Elections 

56.1.     Elections Submitted Later Than the Demand 

(a)   The election of States subsequent to the submission of the demand 
(later  election ) shall be effected by a notice submitted to the 
International Bureau.  The notice shall identify the international 
application and the demand, and  shall include an indication as referred 
to in Rule 53.7(b)(ii). 

(b)   Subject to paragraph (c), the notice referred to in paragraph (a) 
shall  be signed by the applicant for the elected States concerned or, if 
there is  more than one applicant for those States, by all of them. 

(c)   Where two or more applicants file a notice effecting a later 
election  of a State whose national law requires that national 
applications be filed  by the inventor and where an applicant for that 
elected State who is an inventor  refused to sign the notice or could not 
be found or reached after diligent  effort, the notice need not be signed 
by that applicant ( the applicant concerned  ) if it is signed by at least 
one applicant and 

 (i)    a statement is furnished explaining, to the satisfaction of the 
International  Bureau, the lack of signature of the applicant concerned, or 

(ii)    the applicant concerned did not sign the request but the 
requirements  of Rule 4.15(b) were complied with, or did not sign the 
demand but the requirements  of Rule 53.8(b) were complied with. 

(d)   An applicant for a State elected by a later election need not have 
been  indicated as an applicant in the demand. 

 (e)    If a notice effecting a later election is submitted after the 
expiration  of 19 months from the priority date, the International Bureau 
shall notify  the applicant that the election does not have the effect 
provided for under  Article 39(1)(a) and that the acts referred to in 
Article 22 must be performed  in respect of the elected Office concerned 
within the time limit applicable  under Article 22. 

(f)  If, notwithstanding paragraph (a), a notice effecting a later 
election  is submitted by the applicant to the International Preliminary 
Examining Authority  rather than the International Bureau, that Authority 
shall mark the date of  receipt on the notice and transmit it promptly to 
the International Bureau. 
 The notice shall be considered to have been submitted to the 
International  Bureau on the date marked. 

56.2.     Identification of the International Application 

The international application shall be identified as provided in 
Rule 53.6. 

56.3.      Identification of the Demand 

The demand shall be identified by the date on which it was submitted and 
by  the name of the International Preliminary Examining Authority to which 
it was  submitted. 

56.4.     Form of Later Elections 

The notice effecting the later election shall preferably be worded as 
follows: 
  In relation to the international application filed with ... on ... under 
 No. ... by ...(applicant) (and the demand for international preliminary 
examination  submitted on ... to ...), the undersigned elects the 
following additional State(s)  under Article 31 of the Patent Cooperation 
Treaty: ... 

56.5.     Language of Later Elections 

The later election shall be in the language of the demand. 

Applicants may, after filing of the Demand, later, but still within 19 
months  of the priority date, elect additional States which have been 
previously designated  and obtain the benefit of delaying the national 
stage until 30 months after  the priority date in the additional elected 
States.  All such later elections  must be filed directly with the 
International Bureau and not the International  Preliminary Examining 
Authority. Elections received after 19 months will not  delay the time for 
entry into the national stage from 20 to 30 months. 

>1874    Determination if International Preliminary Examination is 
Required and Possible [R-1] 

PCT Article 34 
 Procedure before the International Preliminary Examining 
Authority 

***** 

(4)(a)      If the International Preliminary Examining Authority considers 
(i)         that the international application relates to a subject matter 
 on which the International Preliminary Examining Authority is not 
required,  under the Regulations, to carry out an international 
preliminary examination,  and in the particular case decides not to carry 
out such examination, or 
(ii)    that the description, the claims, or the drawings, are so unclear, 
 or the claims are so inadequately supported by the description, that no 
meaningful  opinion can be formed on the novelty, inventive step 
(non-obviousness), or  industrial applicability, of the claimed invention, 
the said authority shall  not go into the questions referred to in Article 
33(1) and shall inform the  applicant of this opinion and the reasons 
therefor. 

(b)   If any of the situations referred to in subparagraph (a) is found to 
 exist in, or in connection with, certain claims only, the provisions of 
that  subparagraph shall apply only to the said claims. 

There are instances where international preliminary examination is not 
required  because of the nature of the subject matter claimed and also 
because the claims  are so indefinite that no examination is possible. 
Such instances should seldom  occur, especially since most problems of 
this nature would have already been  discovered and indicated at the time 
of the international search. 

If it is found that certain claims of an international application relate 
to  subject matter for which no international preliminary examination is 
required,  on Form PCT/IPEA/408, check the appropriate box. It should be 
noted that subject  matter which is normally examined under U.S. national 
procedure should also  be examined as an International Preliminary 
Examining Authority. 

The examiner should check the appropriate box if it is found that the 
description,  claims or drawings are so unclear, or the claims are so 
inadequately supported  by the description that no opinion could be formed 
as to the novelty, inventive  step (nonobviousness) and industrial 
applicability of the claimed invention. 
Subject matter not searched under Chapter I will not be the subject of a 
preliminary  examination under Chapter II. This is so even if claims which 
were not searched  under Chapter I are modified to be acceptable for 
examination. 

** 


>1875    Unity of Invention Before the International Preliminary Examining 
Authority [R-1] 

PCT Article 34 
Procedure before the International Preliminary Examining 
Authority 

***** 

(3)(a)      If the International Preliminary Examining Authority considers 
 that the international application does not comply with the requirement 
of  unity of invention as set forth in the Regulations, it may invite the 
applicant,  at his option, to restrict the claims so as to comply with the 
requirement  or to pay additional fees. 

***** 

(c)   If the applicant does not comply with the invitation referred to in 
subparagraph 
(a) within the prescribed time limit, the International Preliminary 
Examining  Authority shall establish an international preliminary 
examination report on  those parts of the international application which 
relate to what appears to  be the main invention and shall indicate the 
relevant facts in the said report.  The national law of any elected State 
may provide that, where its national  Office finds the invitation of the 
International Preliminary Examining Authority  justified, those parts of 
the international application which do not relate  to the main invention 
shall, as far as effects in that State are concerned,  be considered 
withdrawn unless a special fee is paid by the applicant to that  Office. 

***** 

37 CFR 1.488.      Determination of unity of invention before the 
International  Preliminary Examining Authority. 

 (a)    Before establishing any written opinion or the international 
preliminary  examination report, the  International Preliminary Examining 
Authority will  determine whether the international application complies 
with the requirement  of unity of invention as set forth in w 1.475. 

(b)   If the International Preliminary Examining Authority considers that 
the  international application does not comply with the requirement of 
unity of  invention, it may: 

(1)   Issue a written opinion and/or an international preliminary 
examination  report, in respect of the entire international application 
and indicate that  unity of invention is lacking and specify the reasons 
therefor without extending  an invitation to restrict or pay additional 
fees. No international preliminary  examination will be conducted on 
inventions not previously searched by an International  Searching Authority. 

(2)   Invite the applicant to restrict the claims or pay additional fees, 
pointing  out the categories of the invention found, within a set time 
limit which will  not be extended. No international preliminary 
examination will be conducted  on inventions not previously searched by an 
International **>Searching< Authority,  or 

(3)   If applicant fails to restrict the claims or pay additional fees 
within  the time limit set for response, the International Preliminary 
Examining Authority  will issue a written opinion and/or establish an 
international preliminary  examination report on the main invention and 
shall indicate the relevant facts  in the said report. In case of any 
doubt as to which invention is the main  invention, the invention first 
mentioned in the claims and previously searched  by an International 
Searching Authority shall be considered the main invention. 
(c)   Lack of unity of invention may be directly evident before 
considering  the claims in relation to any prior art, or after taking the 
prior art into  consideration,, as where a document discovered during the 
search shows the  invention claimed in a generic or linking claim lacks 
novelty or is clearly  obvious, leaving two or more claims joined thereby 
without a common inventive  concept. In such a case the International 
Preliminary Examining Authority may  raise the objection of lack of unity 
of invention. 

The examiner will usually begin the preliminary examination by checking 
the  international application for unity of invention. The international 
preliminary examination will only be  directed to inventions which have 
been searched by the International Searching  Authority.  All claims 
directed to inventions which have not been searched  by the International 
Searching Authority will not be considered by the International 
Preliminary Examining Authority.  If the examiner in the International 
Preliminary  Examining Authority finds lack of unity of invention in the 
claims to be examined,  an invitation is normally prepared and sent to the 
applicant requesting the  payment of additional fees or the restriction of 
the claims on Form PCT/IPEA/405.  Such an invitation will include the 
identification of what the examiner considers  to be the ``main invention" 
which will be examined if no additional fees are  paid or restriction is 
made by the applicant. 

The procedure before the International Preliminary Examining Authority 
regarding  lack of unity of invention is governed by PCT Article 34(3)(a) 
through (c),  PCT Rule 68 (see also PCT Rule 70.13), and 37 CFR 1.475 and 
1.488.  It should  be noted that in most instances lack of unity of 
invention will have been noted  and reported upon by the International 
Searching Authority which will have  drawn up an International Search 
Report based on those parts of the international  application relating to 
the invention, or unified linked group of inventions,  first mentioned in 
the claims ( main invention ). If the applicant has paid  additional 
search fees, additional inventions would also have been searched. 
 No international preliminary examination will be conducted on inventions 
not  previously searched by an International Searching Authority (37 CFR 
1.488(b)(2)). 
Unity of invention must be addressed within 7 days from the date the PCT 
application  is charged to the examining  group from PCT International 
Division. This simply  means that a determination must be made as to 
whether or not the international  application relates to one invention or 
to a group of inventions so linked  as to form a single general inventive 
concept. 

If it is determined that the international application does meet the 
requirements  for unity of invention and no additional fees will be 
requested, the international  application must be returned to the 
Paralegal Specialist in the examining group  so that an indication to that 
affect may be made on the PALM System which monitors  deadlines such as 
the deadline for checking unity of invention. 

If the examiner determines that unity of invention is lacking, there are 
two  options: 

1.  The examiner may conduct an international preliminary examination 
covering  all the claimed and previously searched inventions and indicate 
that unity  of invention is lacking and specify the reasons therefor 
without extending  an invitation to restrict or pay additional fees (PCT 
Rule 68.1), or 
2.  The examiner may invite the applicant to restrict the claims, so as to 
 comply with the requirement, or pay additional fees, pointing out the 
categories  of invention found. The invitation to restrict or pay 
additional fees shall  state the reasons for which the international 
application is considered as  not complying with the requirement of unity 
of invention. (PCT Rule 68.2).  Inventions not previously searched will 
not be considered or included in the  invitation. 

The Written Opinion, if any, and the International Preliminary Examination 
 Report must be established on all inventions for which examination fees 
have  been paid. 

If the applicant fails to respond to the invitation to restrict the claims 
 or pay additional examination fees due to lack of unity of invention, the 
Written  Opinion and Report must be established on the claims directed to 
what  appears  to be the main invention, (PCT Article 34(3)(c)).  The main 
invention, in case  of doubt, is the first claimed invention for which an 
International Search  Report has been issued by the International 
Searching Authority.   The main  invention, as viewed by the examiner, 
must be set forth on Form PCT/IPEA/405. 
Whether or not the question of unity of invention has been raised by the 
International  Searching Authority, it may be considered by the examiner 
when serving as an  authorized officer of the International Preliminary 
Examining Authority. In  the examiner's consideration, all documents cited 
by the International Searching  Authority should be taken into account and 
any additional relevant documents  considered. However, there are cases of 
lack of unity of invention, where,  compared with the procedure of 
inviting the applicant to restrict the international  application or pay 
additional fees (PCT Rule 68.2), little or no additional  effort is 
involved in establishing the Written Opinion and the International 
Preliminary Examination Report for the entire international application. 
Then  reasons of economy may make it advisable for the examiner to use the 
option  referred to in PCT Rule 68.1 by choosing not to invite the 
applicant to restrict the claims  or to pay additional fees. 

Unity of invention is defined by 37 CFR 1.475 which describes the 
circumstances  in which the requirement of unity of invention is 
considered fulfilled. 

>1875.01       Preparation of Invitation Concerning Unity [R-2] 


The  Invitation to restrict or pay additional fees  Form PCT/IPEA/405, is 
used  to invite the applicant, at his/her option, to restrict the claims 
to comply  with the requirements of unity of invention or, to pay 
additional examination  fees. In addition, the examiner must explain the 
reasons why the international  application is not considered to comply 
with the requirement of unity of invention.  The examiner must also 
specify, on Form PCT/IPEA/405, at least one group or  groups of claims 
which, if elected, would comply with the requirement for unity  of invention. 

INVITATION 

In the space provided on form PCT/IPEA/405, the examiner should identify 
the  disclosed inventions by claim numerals and indicate which disclosed 
inventions  are so linked as to form a single general inventive concept, 
thereby complying  with the requirement of unity of invention. For 
example, claims to different  categories of invention such as a product, 
claims to a process specifically  adapted for the manufacture of the 
product and a claim for a use of the product  would be considered related 
inventions which comply with the unity of invention  requirement, whereas 
a claim to an apparatus for making the product in the  same application 
would be considered a second invention for which additional  fees would be 
required.  The reasons for holding that unity of invention is  lacking 
must be specified.  See 37 CFR 1.475 and Annex B of the Administrative 
Instructions. 

Also, the examiner should specify the main invention and claims directed 
thereto  which will be examined if the applicant fails to restrict or pay 
additional  fees. The main invention, in case of doubt, is the first 
claimed invention  or related invention before the International 
Preliminary Examining Authority  for which a search fee has been paid and 
an International Search Report has  been prepared. 

The examiner should indicate the total amount of additional fees required 
for  examination of all claimed inventions. 

In the box provided at the top of the form, the time limit for response is 
 set according to PCT Rule 68.2, normally a 1 month time limit. 
Extensions  of time are not permitted. 

Since the space provided on Form PCT/IPEA/405 is limited, supplemental 
attachment  sheets, supplied by the examiner, with reference back to the 
specific section,  should be incorporated whenever necessary. 

AUTHORIZED OFFICER 

Form PCT/IPEA/405 must be signed by an examiner with at least partial 
signatory  authority. 

TELEPHONIC RESTRICTION PRACTICE 

Telephone practice may be used in certain cases to allow applicants to 
elect  an invention to be examined or to pay additional fees. Additional 
fees may  be charged to a deposit account using the telephone practice 
only if: 
(1)   The Demand for International Preliminary Examination included an 
authorization  to charge additional fees to a deposit account, 

(2)   Applicant or the legal representative or agent orally agrees to 
charge  the additional fees to the account, and 

(3)   A complete record of the telephone conversation is included with the 
 Written Opinion including: 

(a)   Examiner's name; 

(b)   Authorizing attorney's name; 

(c)   Date of conversation; 

(d)   Invention elected and/or inventions for which additional fees paid; 
and 
(e)   Deposit account number and amount to be charged. 

If applicant or the legal representative or agent refuses to either 
restrict  the claims to one invention or authorize payment of additional 
fees, Form PCT/IPEA/405  should be prepared and mailed to applicant. 

When the telephone practice is used in making lack of unity requirements, 
it  is critical that the examiner orally inform applicant that there is no 
right  to protest the holding of lack of unity of invention for any group 
of invention(s)  for which no additional examination fee has  been paid. 

The examiner must further orally advise applicant that any protest to the 
holding  of lack of unity or the amount of additional fee required must be 
filed in  writing no later than one month from the mailing date of the 
Written Opinion  or the International Preliminary Examination Report if 
the lack of unity holding  is first mailed with the IPER because there was 
no Written Opinion.  The examiner  should fill in the information on Form 
499 "Chapter II PCT Telephone Memorandum  for Lack of Unity" as a record 
of the telephonic holding of lack of unity. 
37 CFR 1.475.     Unity of invention before the International Searching 
Authority,  the International Preliminary Examining Authority and during 
the national stage. 
(a)   An international and a national stage application shall relate to 
one  invention only or to a group of inventions so linked as to form a 
single general  inventive concept ("requirement of unity of invention"). 
Where a group of inventions  is claimed in an application, the requirement 
of unity of invention shall be  fulfilled only when there is a technical 
relationship among those inventions  involving one or more of the same or 
corresponding special technical features.  The expression "special 
technical features" shall mean those technical features  that define a 
contribution which each of the claimed inventions, considered  as a whole, 
makes over the prior art. 

(b)   An international or a national stage application  containing claims 
to  different categories of invention will be considered to have unity of 
invention  if the claims are drawn only to one of the following 
combinations of categories: 
(1)   A product and a process specially adapted for the manufacture of 
said  product; or 

(2)   A product and a process of use of said product; or 

(3)   A product, a process specially adapted for the manufacture of the 
said  product, and a use of the said product; or 

(4)   A process and an apparatus or means specifically designed for 
carrying  out the said process; or 

(5)   A product, a process specially adapted for the manufacture of the 
said  product, and an apparatus or means specifically designed for 
carrying out the  said process. 

(c)   If an application contains claims to more or less than one of the 
combinations  of categories of invention set forth in paragraph (b) of 
this section, unity  of invention might not be present. 

 (d)    If multiple products, processes of manufacture or uses are 
claimed,  the first invention of the category first mentioned in the 
claims of the application  and the first recited invention of each of the 
other categories related thereto  will be considered as the main invention 
in the claims, see PCT Article 17(3)(a)  and w 1.476(c). 

(e)   The determination whether a group of inventions is so linked as to 
form  a single general inventive concept shall be made without regard to 
whether  the inventions are claimed in separate claims or as alternatives 
within a single  claim. 

W 18.05       Heading for Lack of Unity Action  (NOT 
 INVOLVING SPECIES) 

This application contains the following inventions or groups of inventions 
 which are not so linked as to form a single inventive concept under PCT 
Rule  13.1.  In order for all inventions to be examined, the appropriate 
additional  examination fees must be paid. 

Examiner Note: 

Begin all Lack of Unity Actions with this Heading. 

W 18.06       Lack of Unity  -  Three Groups of Claims 

Group  [1],  claim(s)  [2],  drawn to  [3]. 

Group  [4],  claim(s)  [5],  drawn to  [6]. 

Group  [7],  claim(s)  [8],  drawn to  [9]. 

Examiner Note: 

**>1. In brackets 1, 4 and 7, insert Roman numerals for each Group. 
2.  In brackets 2, 5 and 8, insert respective claim numbers. 

3.  In brackets 3, 6 and 9, insert respective names of grouped 
inventions.< 
W   18.06.01    Lack of Unity  -  Two (>or< Additional) Groups of  Claims 
** 

Group  [1],  claim(s)  [2],  drawn to  [3]. 

Group  [4],  claim(s)  [5],  drawn to  [6]. 

Examiner Note: 

**>This form paragraph may be used alone or following form paragraph 
18.06.< 
W 18.06.02   Lack of Unity  -  One Additional Group of Claims 

** 

Group  [1],  claim(s)  [2],  drawn to  [3]. 

Examiner Note: 

**>This form paragraph may be used following either 18.06. or 18.06.01. < 
W 18.07       Lack of Unity  -  Reasons Why Inventions Lack Unity 
The inventions listed as Groups  [1]  do not relate to a single inventive 
concept  under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the 
same or corresponding  special technical features for the following 
reasons:  [2]. 

Examiner Note: 

**>1. In bracket 1, insert appropriate Roman numerals for Groups involved. 
2.  In bracket 2, insert reasoning.< 

W 18.16       Lack of Unity  -  Species  -  Heading 

This application contains claims directed to more than one species of the 
generic  invention.  The species identified below are deemed to lack Unity 
of Invention  because they are not so linked as to form a single inventive 
concept under  PCT Rule 13.1.  In order for more than one  species to be 
examined, the appropriate  additional examination fees must be paid.  The 
species are as follows:  [1] 

Examiner Note: 

**>1. In brackets 1, list< each species, * by Figure No. or embodiment 
**>.< 
W 18.17       Lack of  Unity  -  Species  -  Correspondence of  >the< 
Claims  to the Species 

** 

The claims are deemed to correspond to the species listed above in the 
following  manner:  [1] 

 The following claims are generic:  [2] 

Examiner Note: 

**>1. This form paragraph is to be used immediately following 18.16. 
2.  In bracket 1, for< each species, list the claims, e.g.  Fig., 1 - 
claims  1, 3, and 6. 

**>3. In bracket 2, identify< each generic claim **>by number or insert 
the  word "NONE".< 

W 18.18         Lack of Unity  -  Species - Reasons Why  Unity is Lacking 
** 

The species listed above do not relate to a single inventive concept under 
 PCT Rule 13.1 because, under PCT Rule 13.2, the species lack the same or 
corresponding  special technical features for the following reasons:  [1]>.< 

Examiner Note: 

**>1. This form paragraph is to be used immediately following 18.17. 
2.  In bracket 1, insert reasoning.< 


>1875.02       Response to Invitation Concerning Lack of Unity of 
Invention 

PCT Administrative Instructions Section 603 
Transmittal of Protest Against Payment of Additional Fee 
and Decision Thereon Where International Application 
is Considered to Lack Unity of Invention 

The International Preliminary Examining Authority shall transmit to the 
applicant,  at the latest together with the international preliminary 
examination report,  any decision which it has taken under Rule 68.3(c) on 
the protest of the applicant  against payment of the additional fee where 
the international application is  considered to lack unity of invention. 
At the same time, it shall transmit  to the International Bureau a copy of 
both the protest and the decision thereon,  as well as any request by the 
applicant to forward the texts of both the protest  and the decision 
thereon to the elected Offices. 

37 CFR 1.489.     Protest to lack of unity of invention before the 
International  Preliminary Examining Authority 

(a)   If the applicant disagrees with the holding of lack of unity of 
invention  by the International Preliminary Examining Authority, 
additional fees may be  paid under protest, accompanied by a request for 
refund and a statement setting  forth reasons for disagreement or why the 
required additional fees are considered  excessive, or both. 

(b)   Protest under paragraph (a) of this section will be examined by the 
Commissioner  or the Commissioner's designee. In the event that the 
applicant's protest is  determined to be justified, the additional fees or 
a portion thereof will be  refunded. 

(c)   An applicant who desires that a copy of the protest and the decision 
 thereon accompany the international preliminary examination report when 
forwarded  to the Elected Offices, may notify the International 
Preliminary Examining  Authority to that effect any time prior to the 
issuance of the international  preliminary examination report. Thereafter, 
such notification should be directed  to the International Bureau. 

Applicant may respond by paying some or all additional fees or by 
restricting  the claims to one invention. If applicant makes no reply 
within the set time  limit, the international preliminary examination will 
proceed on the basis  of the main invention only. 

If applicant has paid an additional fee or fees, a protest to the holding 
of  lack of unity of invention may be filed with the International 
Preliminary  Examining Authority. 

 NOTIFICATION OF DECISION ON PROTEST 

Form PCT/IPEA/420 is used by the examining group  to inform the applicant 
of  the decision regarding applicant's protest on the payment of 
additional fees  concerning unity of invention. 

NOTIFICATION 

The examining group checks the appropriate box; i.e., 1 or 2.   If box 2 
is  checked, a clear and concise explanation as to why the protest 
concerning the  unity of invention was found to be unjustified must be given. 

Since the space is limited, supplemental attachment sheet(s) should be 
incorporated  whenever necessary. 

AUTHORIZED OFFICER 

Form PCT/IPEA/420 must be signed by a Group Director. 


>1876    Notation of Errors and Informalities by the Examiner [R-1] 

PCT Administrative Instructions Section 607 
Rectifications of Obvious Errors under Rule 91.1 

Where the International Preliminary Examining Authority authorizes a 
rectification  of an obvious error under Rule 91.1, Rule 70.16 and Section 
602 (a) and (b)  shall apply mutatis mutandis. 

Although the examiner is not responsible for discovering errors in the 
international  application, if any errors come to the attention of the 
examiner, they should  be noted and called to the applicant's attention. ** 

>Errors may be called to Applicant's attention in item VII of 
PCT/IPEA/408.< 
AUTHORIZED OFFICER 

Form PCT/IPEA/411 and 423 must be signed by an examiner having at least 
partial  signatory authority. 

** 


>1876.01       Request for Rectification and Notification of Action 
Thereon 

NOTIFICATION OF DECISION CONCERNING 
REQUEST FOR RECTIFICATION 

The rectification of obvious errors is governed by PCT Rules 91.1 and 
66.5. 
NOTIFICATION 

If the applicant requests correction of any obvious errors in the 
international  application or in any paper submitted to the International 
Preliminary Examining  Authority, other than in the request, any 
acceptable correction should be authorized  by using Form PCT/IPEA/412. 

The procedure governing the rectification of obvious errors are PCT Rules 
91.1(d)  and 26.4(a) which state that: 

The request for rectification which the applicant is invited to make must 
be  submitted in a letter. The rectification may be stated in that letter 
if it  is of such  a nature that it can be transferred from the letter to 
the international  application without adversely affecting the clarity and 
direct reproducibility  of the sheet on to which the rectification is to 
be transferred; otherwise,  the applicant is required to submit a 
replacement sheet embodying the rectification  and the letter accompanying 
the replacement sheet must draw attention to the  differences between the 
replaced sheet and the replacement sheet. 

The examiner after fully considering applicant's Request for Rectification 
 of an obvious error, will notify applicant of the action taken on Form 
PCT/IPEA/412.  Since the space provided is limited, supplemental sheet(s) 
should be incorporated  whenever necessary. 

AUTHORIZED OFFICER 

Form PCT/IPEA/412 must be signed by an examiner having at least partial 
signatory  authority. 


>1877    Nucleotide and/or Amino Acid Sequence Listings During the 
International Preliminary Examination 

If a listing has been furnished to the International Searching Authority, 
that  Authority will make a copy available to the International 
Preliminary Examining  Authority upon request (Rule 13ter.1(e)).  If a 
copy in a machine readable  form is not available from the International 
Searching Authority, the International  Preliminary Examining Authority 
may request the applicant to furnish such a  listing in a computer 
readable form in accordance with Annex C of the Administrative 
Instructions and Administrative Instruction 610. 


>1878    Preparation of the Written Opinion [R-2] 


PCT Article 34 
Procedure before the International Preliminary 
Examining Authority 

***** 

  (2)(c) The applicant shall receive at least one written opinion from the 
 International Preliminary Examining Authority unless such Authority 
considers  that all of the following conditions are fulfilled: 

(i)   the invention satisfies the criteria set forth in Article 33(1), 
(ii)    the international application complies with the requirements of 
this  Treaty and the Regulations in so far as checked by that Authority, 
(iii)     no observations are intended to be made under Article 35(2), 
last  sentence. 

***** 

 37 CFR 1.484.      Conduct of international preliminary examination 
(a)   An international preliminary examination will be conducted to 
formulate  a non-binding opinion as to whether the claimed invention has 
novelty, involves  an inventive step (is non-obvious) and is industrially 
applicable. 
(b)   International preliminary examination will begin promptly upon 
receipt  of a Demand which requests examination based on the application 
as filed, or  as amended by an amendment which has been received by the 
United States International  Preliminary Examining Authority. Where a 
Demand requests examination based  on a PCT Article 19 amendment which has 
not been received, examination may  begin at 20 months without receipt of 
a PCT Article 19 amendment. Where a Demand  requests examination based on 
a PCT Article 34 amendment which has not been  received, applicant will be 
notified and given a time period within which to  submit the amendment. 
Examination will begin after the earliest of: 
(1)   Receipt of the amendment; 

(2)   Receipt of applicant's statement that no amendment will be made; or 
(3)   Expiration of the time period set in the notification. 

No international preliminary examination report will be established prior 
to  issuance of an international search report. 

(c)   No international preliminary examination report will be conducted on 
 inventions not previously searched by an International Searching 
Authority. 
(d)   The International Preliminary Examining Authority will establish a 
written  opinion if any defect exists or if the claimed invention lacks 
novelty, inventive  step or industrial applicability and will set a 
non-extendable time limit in  the written opinion for the applicant to 
respond. 

(e)   If no written opinion under paragraph (d) of this section is 
necessary,  or after any written opinion and the response thereto or the 
expiration of  the time limit for response to such written opinion, an 
international preliminary  examination report will be established by the 
International Preliminary Examining  Authority. One copy will be submitted 
to the International Bureau and one copy  will be submitted to the applicant. 

(f)   An applicant will be permitted a personal or telephone interview 
with  the examiner, which must be conducted during the non-extendable time 
limit  for response by the applicant to a written opinion. Additional 
interviews may  be conducted where the examiner determines that such 
additional interviews  may be helpful to advance the international 
preliminary examination procedure.  A summary of any such personal or 
telephone interview must be filed by the  applicant as a part of the 
response to the written opinion or, if applicant  files no response, be 
made of record in the file by the examiner. 

A Written Opinion must be prepared if the examiner: 

1.  considers that the international application has any of the defects 
described  in PCT Article 34(4); 

2.  considers that the report should be negative with respect to any of 
the  claims because of a lack of novelty, inventive step (non-obviousness) 
or industrial  applicability; 

3.  notices any defects in the form or contents of the international 
application  under the PCT; 

4.  considers that any amendment goes beyond the disclosure in the 
international  application as originally filed; 

5.  wishes to make an observation on the clarity of the claims, the 
description,  the drawings or to question whether the claims are fully 
supported by the description; 
6.  decides not to carry out the international preliminary examination on 
a  claim for which no International Search Report was issued; or 

7.  considers that no acceptable amino acid sequence listing is available 
in  a form that would allow a meaningful international preliminary 
examination  to be carried out. 

The applicant must be notified on Form PCT/IPEA/408 of the defects found 
in  the application. The examiner is further required to fully state the 
reasons  for his/her opinion (PCT Rule 66.2(b)) and invite a written 
reply, with amendments  where appropriate (PCT Rule 66.2(c)), setting a 
time limit for the reply of  normally 2 months. 

The examiner should insert the words "first" or "second", as the case may 
be  in the space provided on page 1 of the Written Opinion. 

ITEM I.       BASIS OF OPINION 

Applicant has two opportunities to amend the international application 
prior  to international preliminary examination. Under PCT Article 19, the 
applicant  is entitled to one opportunity to amend the claims of the 
international application  by filing amendments with the International 
Bureau within 2 months of the mailing  of the International Search Report. 
See PCT Rule 46.1. Applicant is also permitted  to make amendments before 
the International Preliminary Examining Authority  under PCT Article 
34(2)(b) and PCT Rule 66.1. Any amendment, however, that  does not 
accompany the filing of the Demand but is filed later may not be 
considered  unless it reaches the examiner before he/she takes up the 
application for examination. 
For the purpose of completing Box I, item 1, of Form PCT/IPEA/408, 
substitute  and/or rectified sheets of the specification and drawings 
filed during Chapter  I proceedings are considered to be originally filed 
pages/sheets and should  be listed as originally filed pages/sheets. Only 
those amendments or rectifications  to the specification and drawings 
filed on the date of Demand or after the  filing of a Demand should be 
listed as later filed pages/sheets. Substitute  and/or rectified sheets of 
claims filed during the Chapter I proceedings are  also considered to be 
originally filed pages/sheets and should be listed as  originally filed 
pages/sheets. However, amended sheets of claims filed under  Article 19 in 
response to the international search report are to be indicated  as 
pages/sheets as amended under Article 19.  Only those amendments, or 
rectifications  to the claims filed on the date of Demand or after the 
filing of a Demand should  be listed as later filed pages/sheets. If a 
claim is made up of sheets filed  on different dates, the latest date is 
the date that should be used for the  claim. 

ITEM II.        PRIORITY 

Item II of Form PCT/IPEA/408 is to inform applicant of non-establishment 
of  a request for priority. 

If applicant fails to furnish a copy or translation of the earlier 
application,  whose priority has been claimed, within the time limit set 
by the examiner  pursuant to PCT Rule 66.7, check box No. 1 and then check 
the first box of the subsection  if applicant failed to furnish a copy of 
the earlier application whose priority  has been claimed, and check the 
second box in the subsection if applicant failed  to furnish a translation 
of the earlier application whose priority has been  claimed. 

When the claim for priority has been found invalid (e.g., the claimed 
priority  date is more than one year prior to the international filing 
date and the notification  under PCT Rule 4.10(d) has been provided or all 
claims are directed to inventions  which were not described and enabled by 
the earlier application), check box  No. 2 of Item II and indicate why the 
claim for priority has been found invalid  following No. 3 "Additional 
observations".  The examiner is reminded that when  some claims in an 
international application are directed to an invention which  was 
disclosed in the earlier application, the priority claim is valid provided 
 that a copy and/or translation of the earlier application have/has been 
filed  and the filing date of the earlier application is one year or less 
from the  filing date of the international application. 

ITEM  III.  NON-ESTABLISHMENT OF OPINION ON NOVELTY, INVENTIVE STEP AND 
INDUSTRIAL APPLICABILITY 

Item III of Form PCT/IPEA/408 is intended to cover situations where some 
or  all claims of an application are so unclear or inadequately supported 
by the  description that the question of novelty, inventive step 
(nonobviousness),  and industrial applicability cannot be considered, or 
where the international  application or claims thereof relate to subject 
matter which does not require  international preliminary examination, or 
where no international search report  has been established for the claims. 

If some or all of claims of an application relate to subject matter which 
does  not require international preliminary examination, check the 
appropriate box,  indicate which claims relate to that subject matter and 
specify the reasons. 
If some or all of the claims of an application are so unclear that no 
meaningful  opinion could be formed, check the appropriate box, indicate 
which claims are  unclear and specify the reasons. 

If some or all of the claims are so inadequately supported by the 
description  that no meaningful opinion could be formed, check the 
appropriate box. 
If no international search report has been established for certain claims, 
 check the appropriate box and indicate the claim numbers. 

ITEM IV.        LACK OF UNITY OF INVENTION 

Item IV of Form PCT/IPEA/408 should be used by the examiner to notify 
applicant  that lack of unity of invention has been found. 

If in response to an invitation to restrict, applicant restricted the 
claims  to a particular group, check the first box under subsection 1. 

If applicant paid additional fees for examination of additional invention, 
 check the second box under subsection 1. 

If the additional fees were paid under protest, check the third box under 
subsection  1. 

If applicant neither restricted nor paid additional fees in response to 
the  objection of lack of unity of invention, check the fourth box under 
subsection  1. 

Subsection 2 of Item IV is to be completed if the examiner determines that 
 unity of invention is lacking but chooses not to invite the applicant to 
restrict  or pay additional fees. 

Subsection 3 of Item IV is to be completed to indicate which claims were 
the  subject of international preliminary examination. 

If all claims are to be examined, check the first box under subsection 3. 
If only some of the claims were the subject of international preliminary 
examination,  check the second box under subsection 3 and identify the 
claim numbers. 
ITEM V.       REASONED STATEMENT WITH REGARD 
TO NOVELTY, INVENTIVE STEP, AND INDUSTRIAL 
APPLICABILITY OF CLAIMS 

In Item V, the examiner must list in summary form all  claims with regard 
to  the criteria of novelty (N), inventive step (IS), and industrial 
applicability 
(IA). 

Item V is the main purpose of the Written Opinion. All claims without 
fatal  defects are treated on the merits in Item V as to novelty, 
inventive step (nonobviousness)  and industrial applicability. 

The treatment of claims in Item V is similar in format to an Office action 
 in a U.S. national patent application except that the words  rejection 
and  patentability are never used in a Written Opinion. On the 
international level, all Written Opinions  are nonbinding and a patent 
does not issue; what does issue is an International  Preliminary 
Examination Report (IPER), which is nonbinding on the Elected States. 
Examiner statements in Item V can be positive and/or negative. If, for 
example,  claims define over the prior art and meet the test of novelty, 
inventive step 
(nonobviousness) and industrial applicability, a statement equivalent to 
detailed  reasons for allowance in a corresponding U.S. application, 
indicating how the  claims meet the tests of novelty, inventive step and 
industrial applicability  is sufficient. If on the other hand it is the 
opinion of the examiner that  some or all claims lack novelty, inventive 
step, and/or industrial applicability,  specific reasons for the opinion 
employing PCT form paragraphs, if appropriate,  must be given similar to 
those used in U.S. national applications including  a statement of 
motivation to combine references cited regarding negative statements  of 
inventive step. 

Form paragraphs to be used by the examiners appear in the relevant 
sections  of this Manual.  All examiners are expected to use the PCT form 
paragraphs  in formulating any negative statements listed in Item V. 

Examiners are encouraged to indicate any amendments which applicant could 
present  which would avoid a negative statement in the International 
Preliminary Examination  Report. 

All international applications where an examination has been demanded 
should  be searched by the examiner at least to the point of bringing the 
previous  search up to date. Prior art discovered in a search and applied 
in an Item  V statement must be made of record in Item V.  Prior art 
already cited on the  International Search Report need not again be cited 
on the Written Opinion  or International Preliminary Examination Report. 
The subsequently discovered  prior art is to be cited in compliance with 
PCT Rule 43.5 and Administrative  Instruction Section 503 using the same 
citation format used on the International  Search Report. 

# 18.01       Lacks Novelty 

Claim [1] novelty under PCT Article 33(2) as being anticipated by [2]. 
Examiner Note: 

**>1. In bracket 1, pluralize< `claim' if needed- Insert claim no(s). 
insert  the verb **>"lack" or  "lacks",< as appropriate**>.< 

**>2. In bracket 2, insert< name of prior art relied **>upon.< 

# 18.02       Lacks  Inventive Step  -  One Reference 

Claim [1] an inventive step under PCT Article 33(3) as being obvious over 
[2]. 
 [3]. 

Examiner Note: 

**>1. In bracket 1, pluralize< `claim' if needed- Insert claim no(s). 
insert  the verb **>"lack" or "lacks", as appropriate. 

2.  In bracket 2, insert name of prior art relied upon. 

3.  In bracket 3, add reasoning.< 

# 18.02.01  Lacks  Inventive Step  -  Two References 

Claim [1] an inventive step under PCT Article 33(3) as being obvious over 
[2]  in view of [3].  [4]. 

Examiner Note: 

**>1. In bracket 1, pluralize< `claim' if needed- Insert claim no(s). 
insert  the verb **>"lack" or "lacks", as appropriate. 

2.  In bracket 2, insert< name of PRIMARY **>prior art relied upon. 
3.  In bracket 3, insert< name of SECONDARY **>prior art relied upon. 
4.  In bracket 4, add< your REASONING **>.< 

# 18.02.02  Lacks Inventive Step -*>Additional< Reference ** 

Claim [1] an inventive step under PCT Article 33(3) as being obvious over 
the  prior art as applied in the immediately preceding paragraph and 
further in  view of [2].  [3]. 

Examiner Note: 

**>1. This form paragraph may follow either 18.02 or 18.02.01 

2.  In bracket 1, pluralize `claim' if needed, insert claim no(s)., and 
the  verb "lack" or  "lacks", as appropriate. 

3.  In bracket 2, insert name of additional prior art relied upon. 
4.  In bracket 3, add reasoning.< 

# 18.03       Lacks Industrial Applicability 

Claim [1] * industrial applicability as defined by PCT Article 33(4). 
[2]. 
Examiner Note: 

**>1. In bracket 1, pluralize `claim' if needed, insert claim no(s)., and 
the  verb "lack" or  "lacks", as appropriate. 

2.  In bracket 2, add reasoning.< 

# 18.04         Meets  Novelty,  Inventive Step and  Industrial 
Applicability 
Claim [1] the criteria set out in PCT Article 33(2)-33(4), because the 
prior  art does not teach or fairly suggest  [2]. 

Examiner Note: 

**>1. In bracket 1, pluralize `claim' if needed, insert claim no(s)., and 
the  verb "lack" or  "lacks", as appropriate. 

2.   In bracket 2, insert patentable subject matter.< 

ITEM VI.        CERTAIN  DOCUMENTS  CITED 

Item VI provides a convenient manner of listing two different types of 
documents: 
(1)   published documents - by the application number or patent number as 
well  as the publication date, filing date and priority date; and 

(2)   nonwritten disclosure - by the kind of disclosure, date of the 
disclosure  and the date of the written  disclosure referring to the 
nonwritten disclosure. 
ITEM  VII.  CERTAIN  DEFECTS  IN THE 
INTERNATIONAL APPLICATION 

In Item VII, defects in the form and content of the international 
application  are identified. 

Examples of defects that would be listed in Item VII are: 

1.  Informalities such as misplaced and/or omitted drawing numerals, 
misspelled  words, grammatical errors, etc. 

2.  An amendment to the drawings, description or claims which was not 
timely  filed. 

3.  Improper multiple-dependent claims (PCT Rule 6.4) if not indicated 
under  Item III. 

        The following form paragraphs are used in Box VII of PCT/IPEA/408 
or  PCT/IPEA/409 "Certain defects in the international application" for 
noting 
 technical defects. 

# 18.08       Drawing Objections >-Defects< 

        The drawings are objected to under PCT Rule 66.2(a)(iii) as 
containing  the following defect(s) in the form or content thereof:   [1]. 

Examiner Note: 

        **>In bracket 1, insert identification of defects in drawings.< 
# 18.08.01  Drawing is Required 

        The subject matter of this application admits of illustration by 
drawing  to facilitate understanding of the invention.  Applicant is 
required under  PCT Article 7(1) to furnish a drawing. 

# 18.09       Description Defective 

        The description is objected to as containing the following 
defect(s)  under PCT Rule 66.2(a)(iii) in the form or contents thereof: 
[1]. 
Examiner Note: 

**>In bracket 1, insert< the technical problem, e.g. misspelled word **>.< 
# 18.10       Claims Defective 

        Claim [1] objected to under PCT Rule 66.2(a)(iii) as containing 
the  following defect(s) in the form or contents thereof:   [2]. 

Examiner Note: 

**>1. In bracket 1, pluralize< `claim' if needed- Insert claim no(s). >and 
 the< *appropriate verb **>"is" or "are".< 

**2.     In bracket 2, insert the technical problem, e.g.  misspelled word 
 **>.< 

ITEM VIII.    CERTAIN OBSERVATIONS ON THE 
INTERNATIONAL APPLICATION 

In Item VIII, the examiner notifies the applicant of observations made as 
to  the clarity of the claims, the description, the drawings, or on the 
question  whether the claims are fully supported by the description. 

If the claims, the description, or the drawings are so unclear, or the 
claims  are so inadequately supported by the description, that no 
meaningful opinion  can be formed on the question of novelty, inventive 
step (nonobviousness) or  industrial applicability, the applicant is so 
informed in Item III (PCT Article  34(4)(a)(ii)). Reasons for the 
examiner's opinion that the claims, description  and drawings, etc., lack 
clarity must also be provided. 

If the above situation is found to exist in certain claims only, the 
provisions  of PCT Article 34(4)(ii) shall apply to those claims only. 

If the lack of clarity of the claims, the description, or the drawings is 
of  such a nature that it is possible to form a meaningful opinion on the 
claimed  subject matter, then it is required that the examiner consider 
the claims and  render a Written Opinion on novelty, inventive step, and 
industrial applicability  in Item V of Form PCT/IPEA/408. 

Since the claims of an international application are not subject to a 
rejection  on either art or indefiniteness consistent with U.S. practice, 
observations  by the examiner  with regard to clarity of the claims, the 
description and  the drawings will be treated in the form of an objection 
in the Written Opinion  in Item VIII. 

The following form paragraphs are used in Box VIII "Certain observations 
on  the international application" of PCT/IPEA/408 and PCT/IPEA/409 for 
noting  objections which are substantive rather than merely technical in 
nature. 
# 18.11       Drawing Objections >-Lack Clarity< 

The drawings are objected to under PCT Rule 66.(2)>(a)<(v) as lacking 
clarity  under PCT Article 7 because:  [1]. 

Examiner Note: 

**>In bracket 1, insert reasons< why the drawings lack clarity, e.g. 
inaccurate  showing **>.< 

# 18.12       Description Defective  -  Lacks Written Description 
The description is objected to under PCT Rule 66.2(a)(v) as lack- ing 
clarity under PCT Article 5 because it fails to contain an adequate 
written  description of  [1].  The description is inadequate because: 
[2]. 
Examiner Note: 

**>1. In bracket 1, identify< the subject matter not described in the 
description  **>.< 

**>2. In bracket 2, insert reasons.< 

# 18.12.01  Claims Objectionable - Inadequate Written Description ** 
Claim [1] objected to as lacking clarity under PCT Rule 66.2(a)(v) because 
 practice of the claimed invention is not adequately described in writing, 
as  required under PCT Rule 5.1(a)(iii), for the reasons set forth in the 
immediately  preceding paragraph. 

Examiner Note: 

**>1. This form paragraph is to be used immediately after 18.12. 

2.  In bracket 1, pluralize `claim' if needed, insert claim no(s). and the 
 appropriate verb "is" or "are".< 

# 18.13       Description Defective  -  Not Enabling 

The description is objected to under PCT Rule 66.2(a)(v) as lacking 
clarity  under PCT Article 5 because it fails to adequately enable 
practice of the claimed  invention because:  [1]. 

Examiner Note: 

**>In bracket 1, insert< objection and **>reasons.< 

# 18.13.01  Claims Objectionable  -  Non-enabling Disclosure ** 

Claim  [1]  objected to as lacking clarity under PCT Rule 66.2(a)(v) 
because  the practice of the claimed invention is not enabled as required 
under PCT  Rule 5.1(a) for the reasons set forth in the immediately 
preceding paragraph. 
Examiner Note: 

**>1. In bracket 1, pluralize `claim' if needed, insert claim no(s). and 
the  appropriate verb "is" or "are". 

2.  This form paragraph is to be used immediately after 18.13.< 

# 18.14       Description Defective  -  No Best Mode 

The description is objected to under PCT Rule 66.2(a)(v) as lacking 
clarity  for failing to describe the best mode for practicing the claimed 
subject matter  as required by PCT Rule 5.1(a)(v).  The best mode is not 
described because: 
 [1]. 

Examiner Note: 

**>In bracket 1, insert< objection and **>reasons.< 

# 18.14.01  Claims Objectionable  -  Lack of Best Mode ** 

Claims  [1]  objected to under PCT Rule 66.2(a)(v) as lacking clarity 
because  claim [2] >based on a description which fails< to describe the 
best mode for  carrying out the invention under PCT Rule 5.1(a)(v) for the 
reasons set forth  in the immediately preceding paragraph. 

Examiner Note: 

**>1. In bracket 1, pluralize `claim' if needed, insert claim no(s). and 
the  appropriate verb "is" or "are". 

2.  In bracket 2, pluralize `claim' if needed, insert claim no(s). and the 
 appropriate verb "fail" or "fails". 

3.  This form paragraph is to be used immediately following 18.14.< 
# 18.15       Claims Objectionable  -  Indefiniteness 

        Claims  [1]  objected to under PCT Rule 66.2(a)(v) as lacking 
clarity  under PCT Article 6 because claim [2] indefinite for the 
following reason(s): 
 [3]. 

Examiner Note: 

**>1. In brackets 1 and 2, pluralize `claim' if needed, insert claim 
no(s).  and the appropriate verb "is" or "are". 

2.  In bracket 3, insert reasons.< 

TIME TO RESPOND 

An invitation by the International Preliminary Examining Authority (IPEA) 
to  applicant to reply to the examiner's Written Opinion will normally set 
a 2-month  time limit to respond. 

The time may be as short as 1 month or as long as 3 months dependent upon 
the  time remaining before the International Preliminary Examination 
Report is due. 
AUTHORIZED OFFICER 

Every Written Opinion must be signed by an examiner having at least 
partial  signatory authority. 

The first document prepared by the examiner in most international 
applications  during the international preliminary examination proceedings 
will be the Written  Opinion. Normally only in those international 
applications where all the formal  matters are proper and the claims are 
directed to inventions which have novelty,  inventive step and industrial 
applicability will an International Preliminary  Examination Report be 
established without a Written Opinion having been issued  first. 


>1878.01(a)  Prior Art Under Chapter II 


PCT Article 33 
The International Preliminary Examination 

***** 

(6)   The international preliminary examination shall take into 
consideration  all the documents cited in the international search report. 
It may take into  consideration any additional documents considered to be 
relevant in the particular  case. 

PCT Rule 64 
Prior Art for International Preliminary Examination 

64.1.     Prior Art 

(a)   For the purposes of Article 33(2) and (3), everything made available 
 to the public anywhere in the world by means of written disclosure 
(including  drawings and other illustrations) shall be considered prior 
art provided that  such making available occurred prior to the relevant date. 

(b)   For the purposes of paragraph (a), the relevant date will be: 
(i)   subject to item (ii), the international filing date of the 
international  application under international  preliminary examination; 

(ii)    where the international application under international 
preliminary  examination validly claims the priority of an earlier 
application, the filing  date of such earlier application. 

64.2.     Nonwritten Disclosures 

In cases where the making available to the public occurred by means of an 
oral  disclosure, use, exhibition or other nonwritten means ( nonwritten 
disclosure  ) before the relevant date as defined in Rule 64.1(b) and the 
date of such  nonwritten disclosure is indicated in a written disclosure 
which has been made  available to the public on a date which is the same 
as, or later than, the  relevant date, the nonwritten disclosure shall not 
be considered part of the  prior art for the purposes of Article 33(2) and 
(3). Nevertheless, the international  preliminary examination report shall 
call attention to such nonwritten disclosure  in the manner provided for 
in Rule 70.9. 

64.3.     Certain Published Documents 

In cases where any application or any patent which would constitute prior 
art  for the purposes of Article 33(2) and (3) had it been published prior 
to the  relevant date referred to in Rule 64.1 was published on a date 
which is the  same as, or later than,the relevant date but was filed 
earlier than the relevant  date or claimed the priority of an earlier 
application which had been filed  prior to the relevant date, such 
published application or patent shall not  be considered part of the prior 
art for the purposes of Article 33(2) and (3).  Nevertheless, the 
international preliminary examination report shall call attention  to such 
application or patent in the manner provided for in Rule 70.10. 
The relevant date for the purpose of considering prior art is defined in 
PCT  Rule 64.1(b) as the international filing date or, where the 
international application  contains a valid claim for priority, that date 
of priority. 

In cases where any application or any patent which would constitute prior 
art  for the purpose of international preliminary examination as to 
novelty and  inventive step (nonobviousness) was published on or after the 
relevant date  of the international application under consideration but 
was filed earlier  than the relevant date or claimed the priority of an 
earlier application which  was filed prior to the relevant date, the 
published application or patent is  not to be considered part of the prior 
art for the purpose of international  preliminary examination as to 
novelty and inventive step. Nevertheless, these  documents are to be 
listed on Form PCT/IPEA/409 under the heading ``CERTAIN  PUBLISHED DOCUMENTS". 

In determining whether there is inventive step, account should be taken of 
 what the applicant acknowledges in his/her description as known.  Such 
acknowledged  prior art  should be regarded as correct and used during 
preliminary examination  where appropriate. 

For oral or nonwritten disclosure, see PCT Rules 64.2 and 70.9. 


>1878.01(a)(1)     Novelty Under Chapter II [R-1] 


Novelty is defined in PCT Article 33(2). 

PCT Article 33 
The International Preliminary Examination 

***** 

(2)   For the purposes of the international preliminary examination, a 
claimed  invention shall be considered novel if it is not anticipated by 
the prior art  as defined in the Regulations. 

***** 

** 


>1878.01(a)(2)     Inventive Step Under Chapter II [R-1] 


Inventive step is defined in PCT Article 33(3) 

PCT Article 33 
The International Preliminary Examination 

***** 

(3)   For purposes of the international preliminary examination, a claimed 
 invention shall be considered to involve an inventive step if, having 
regard  to the prior art as defined in the Regulations, it is not, at the 
prescribed  relevant date, obvious to a person skilled in the art. 

***** 

   PCT Rule 65 
   Inventive Step or Non-Obviousness 

65.1.     Approach to Prior Art 

For the purposes of Article 33(3), the international preliminary 
examination  shall take into consideration the relation of any particular 
claim to the prior  art as a whole. It shall take into consideration the 
claim's relation not only  to individual documents or parts thereof taken 
separately but also its relation  to combinations of such documents or 
parts of documents, where such combinations  are obvious to a person 
skilled in the art. 

 65.2.      Relevant Date 

For the purposes of Article 33(3), the relevant date for the consideration 
 of inventive step (nonobviousness) is the date prescribed in Rule 64.1. 
** 


>1878.01(a)(3)     Industrial Applicability Under Chapter  II [R-1] 

Industrial applicability is defined in PCT Article 33(4). 

PCT Article 33 
The International Preliminary Examination 

***** 

(4)   For the purposes of the international preliminary examination, a 
claimed  invention shall be considered industrially applicable if, 
according to its nature, it can be made or used (in the technological 
sense) in any  kind of industry.  Industry  shall be understood in its 
broadest sense, as  in the Paris Convention for the Protection of 
Industrial Property. 
***** 

** 


>1878.02       Response to the Written Opinion [R-1] 


PCT Article 34 
Procedure before the International Preliminary Examining 
Authority 

***** 

(2)(a) The applicant shall have a right to communicate orally and in 
writing  with the International Preliminary Examining Authority. 

(b)   The applicant shall have a right to amend the claims, the 
description,  and the drawings, in the prescribed manner and within the 
prescribed time limit,  before the international preliminary examination 
report is established. The  amendment shall not go beyond the disclosure 
in the international application  as filed. 

***** 

 (d)    The applicant may respond to the written opinion. 

***** 

PCT Rule 66 
Procedure before the International Preliminary Examining 
Authority 

***** 

66.3.     Formal Response to the International Preliminary Examining 
Authority 
(a)   The applicant may respond to the invitation referred to in Rule 
66.2(c)  of the International Preliminary Examining Authority by making 
amendments or 
 if he disagrees with the opinion of that Authority by submitting 
arguments,  as the case may be, or do both. 

(b)   Any response shall be submitted directly to the International 
Preliminary  Examining Authority. 

***** 

66.5.     Amendment 

Any change, other than the rectification of obvious errors, in the claims, 
 the description, or the drawings, including cancellation of claims, 
omission  of passages in the description, or omission of certain drawings, 
shall be considered  an amendment. 

66.6.     Informal Communications with the Applicant 

The International Preliminary Examining Authority may, at any time, 
communicate  informally, over the telephone, in writing, or through 
personal interviews,  with the applicant. The said Authority shall, at its 
discretion, decide whether  it wishes to grant more than one personal 
interview if so requested by the  applicant, or whether it wishes to reply 
to any informal written communication  from the applicant. 

***** 

66.8.     Form of Amendments 

(a)   The applicant shall be required to submit a replacement sheet for 
every  sheet of the international application which, on account of an 
amendment, differs  from the sheet previously filed.  The letter 
accompanying the replacement sheets  shall draw attention to the 
differences between the replaced sheets and the  replacement sheets. 
Where the amendment consists in the deletion of passages  or in minor 
alterations or additions, it may be made on a copy of the relevant  sheet 
of the international application, provided that the clarity and direct 
reproducibility of that sheet are not adversely affected.  To the extent 
that  any amendment results in the cancellation of an entire sheet, that 
amendment  shall be communicated in a letter. 

(b)   [Deleted] 

66.9.     Language of Amendments 

(a)   Subject to paragraphs (b) and (c), if the international application 
has  been filed in a language other than the language in which it is 
published,  any amendment, as well as any letter referred to in Rule 
66.8(a), shall be  submitted in the language of publication. 

(b)   If the international preliminary examination is carried out, 
pursuant  to Rule 55.2, on the basis of a translation of the international 
application,  any amendment, as well as any letter referred to in 
paragraph (a), shall be  submitted in the language of that translation. 

(c)   Subject to Rule 55.3, if an amendment or letter is not submitted in 
a  language as required under paragraphs (a) or (b), the International 
Preliminary  Examining Authority shall, if practicable having regard to 
the time limit for  establishing the international preliminary examination 
report, invite the applicant  to furnish the amendment or letter in the 
required language within a time limit  which shall be reasonable under the 
circumstances. 

(d)   If the applicant fails to comply, within the time limit under 
paragraph 
(c), with the invitation to furnish an amendment in the required language, 
 the amendment shall not be taken into account for the purposes of the 
international  preliminary examination. If the applicant fails to comply, 
within the time  limit under paragraph (c), with the invitation to furnish 
a letter referred  to in paragraph (a) in the required language, the 
amendment concerned need  not be taken into account for the purposes of 
the international preliminary  examination. 

37 CFR 1.485.     Amendments by Applicant During International Preliminary 
 Examination. 

(a)   The applicant may make amendments at the time of filing of the 
Demand  and within the time limit set by the International Preliminary 
Examining Authority  for response to any notification under w 1.484(b) or 
to any written opinion.  Any such amendments must: 

(1)   Be made by submitting a replacement sheet for each sheet of the 
application  which differs from the sheet it replaces unless an entire 
sheet is cancelled,  and 

(2)   Include a description of how the replacement sheet differs from the 
replaced  sheet. 

(b)   If an amendment cancels an entire sheet of the international 
application,  that amendment shall be communicated in a letter. 

All amendments in response to a Written Opinion must be received within 
the  time limit set for response in order to be assured of consideration 
in the  International Preliminary Examination Report.  Amendments filed at 
or before  expiration of the period for response will be considered. Since 
the examiner will begin to draw up the final report rather  promptly after 
the time period expires, amendments filed after expiration of  the 
response period may not be considered. In view of the short time period 
for completion of preliminary examination, applicants are strongly 
encouraged  to file any amendments promptly. 37 CFR 1.484(d) does not 
allow for extensions  of time to respond to a Written Opinion.  The policy 
of not allowing extensions  of time is to ensure that the USPTO can meet 
its treaty deadline for transmission  of the final report. 

Any change, other than the rectification of obvious errors in the claims, 
the  description, or the drawings, including the cancellation of claims, 
omission  of passages in the description or omission of certain drawings 
will be considered  an amendment (PCT Rule 66.5). The Patent and Trademark 
Office when acting as  the International Preliminary Examining Authority 
will not accept any non-English  applications or amendments. 

Any amendments to the claims, the description, and the drawings in 
response  to a Written Opinion must (1) be made by submitting a 
replacement sheet for  every sheet of the application which differs from 
the sheet it replaces unless  an entire sheet is cancelled and (2) include 
a description of how the replacement  sheet differs from the replaced 
sheet in accordance with PCT Rule 66.8. 
In the particular case where the amendment cancels claims, passages in the 
 description or certain drawings resulting in the cancellation of an 
entire  sheet, the amendment must be submitted in the form of a letter 
cancelling the  sheet (PCT Rule 66.8(a)). 

Replacement sheets must be in typed form. 

Any paper submitted by the applicant, if not in the form of a letter, must 
 be accompanied by a letter signed by the applicant or agent (PCT Rule 
92.1). 
 The letter must draw attention to the differences between the replaced 
sheet  and the replacement sheet. 

The examiner should make sure that amendments filed in accordance with the 
 PCT, which are necessary to correct any deficiencies notified to the 
applicant,  do not go beyond the disclosure of the international 
application as filed,  thus violating PCT Article 34(2)(b). In other 
words, no amendment should contain  matter that cannot be substantiated by 
the application as originally filed.  In a situation where new matter is 
introduced by amendment in response to a  Written Opinion, the 
International Preliminary Examination Report will be established  as if 
the amendment had not been made, and the report should so indicate. It 
shall also indicate the reasons why the amendment goes beyond the 
disclosure 
(PCT Rule 70.2(c)). 

INTERVIEWS 

The examiner or applicant may, during the time limit for response to the 
Written  Opinion, request a telephone or personal interview. Only one 
interview is a  matter of right, whether by telephone or in person. 
Additional interviews may  be authorized by the examiner in a particular 
international application where  such additional interview may be helpful 
to advance the international preliminary  examination procedure. 

All interviews of substance must be made of record by using 
**>PCT/IPEA/428  Notice on Informal Communication with the Applicant.< 

When an interview is arranged, whether by telephone or in writing, and 
whether  by the examiner or by the applicant, the matters for discussion 
should be stated. 
The records of interviews or telephone conversations should indicate, 
where  appropriate, whether a response is due from the applicant or agent 
or whether  the examiner wishes to issue an additional written opinion or 
establish the  International Preliminary Examination Report. 

If the applicant desires to respond to the Written Opinion, such response 
must  be filed within the time limit set for response in order to assure 
consideration.  No extensions to the time limit will be considered or 
granted. If no timely  response is received from the applicant, the 
International Preliminary Examination  Report will be established by the 
examiner, treating each claim substantially  as it was treated in the 
Written Opinion. Responses to the Written Opinion  which are not filed 
within the time limit set but which reach the examiner  before the 
examiner takes up the application for preparation of the final report  may 
be considered. Thus, only timely responses can be assured of 
consideration. 
The applicant may respond to the invitation referred to in Rule 66.2(c) by 
 making amendments or, if the applicant disagrees with the opinion of the 
authority,  by submitting arguments, as the case may be, or both (PCT Rule 
66.3). 
The United States rules pertaining to international preliminary 
examination  of international applications do not provide for any 
extension of time to respond  to a first Written Opinion. 

If applicant does not respond to the Written Opinion, the International 
Preliminary  Examination Report will be prepared in time for forwarding to 
the International  Division in finished form by 27 months from the 
priority date. 


>1879    Preparation of the International Preliminary Examination Report 
[R-2] 

 PCT Article 35 
The International Preliminary Examination Report 

(1)   The international preliminary examination report shall be 
established  within the prescribed time limit and in the prescribed form. 

(2)   The international preliminary examination report shall not contain 
any  statement on the question whether the claimed invention is or seems 
to be patentable  or unpatentable according to any national law. It shall 
state, subject to the  provisions of paragraph (3), in relation to each 
claim, whether the claim appears  to satisfy the criteria of novelty, 
inventive step (non-obviousness), and industrial  applicability, as 
defined for the purposes of the international preliminary  examination in 
Article 33(1) to (4). The statement shall be accompanied by  the citation 
of the documents believed to support the stated conclusion with  such 
explanations as the circumstances of the case may require. The statement 
shall also be accompanied by such other observations as the Regulations 
provide  for. 

(3)(a)      If, at the time of establishing the international preliminary 
examination  report, the International Preliminary Examining Authority 
considers that any  of the situations referred to in Article 34(4)(a) 
exists, that report shall  state this opinion and the reasons therefor. It 
shall not contain any statement  as provided in paragraph (2). 

(b)   If a situation under Article 34(4)(b) is found to exist, the 
international  preliminary examination report shall, in relation to the 
claims in question,  contain the statement as provided in subparagraph 
(a), whereas, in relation  to the other claims, it shall contain the 
statement as provided in paragraph 
(2). 

Administrative Instructions Section 604 
Guidelines for Explanations Contained in the International 
Preliminary Examination Report 

(a)   Explanations under Rule 70.8 shall clearly point out to which of the 
 three criteria of novelty, inventive step (nonobviousness) and industrial 
applicability  referred to in Article 35(2), taken separately, any cited 
docu- ment is applicable  and shall clearly describe, with reference to 
the cited documents, the reasons  supporting the conclusion that any of 
the said criteria is or is not satisfied. 
(b)   Explanations under Article 35(2) shall be concise and preferably in 
the  form of short sentences. 

After examination of the international application, if there are no 
negative  statements and/or negative comments for Form PCT/IPEA/408, then 
the only statement  that will issue from the International Preliminary 
Examining Authority will  be the International Preliminary Examination 
Report (IPER). 

The International Preliminary Examination Report is established on Form 
PCT/IPEA/409. 
The International Preliminary Examination Report must be  established 
within  28 months from the priority date if the Demand was filed prior to 
the expiration  of 
19 months from the priority date; otherwise, the time limit is 9 months 
from  the start of the international preliminary examination. To meet this 
28-month  date for establishing the report, Office practice is to complete 
internal processing  by 27 months from the priority date in order to 
provide adequate time for reviewing,  final processing and mailing.  Thus, 
under normal circumstances, the applicant  receives the report, at the 
latest, 2 months before national processing at  the elected Offices may 
start.  This ensures that he/she has time to consider  whether, and in 
which elected Offices, he/she wants to enter the national stage  and to 
take the necessary action. 

The International Preliminary Examination Report contains, among other 
things,  a statement (in the form of simple "yes" or "no"), in relation to 
each claim  which has been examined, on whether the claim appears to 
satisfy the criteria  of novelty, inventive step (nonobviousness) and 
industrial applicability.   The statement is, where appropriate, 
accompanied by the citation of relevant  documents together with concise 
explanations pointing out the criteria to which  the cited documents are 
applicable and giving reasons for the International  Preliminary Examining 
Authority's conclusions.  Where applicable, the report  also includes 
remarks relating to the question of unity of invention. 
The International Preliminary Examination Report identifies the basis on 
which  it is established, that is, whether, and if so, which amendments 
have been  taken into account. Replacement sheets containing amendments 
under Article  19 and/or Article 34 which have been taken into account are 
attached as "annexes"  to the International Preliminary Examination 
Report. Amendments under Article  19 which have been considered as 
reversed by an amendment under Article 34  or which have been superseded 
by later replacement sheets are not annexed to  the report; neither are 
the letters which accompany replacement sheets. 
The International Preliminary Examination Report may not express a view on 
 the patentability of the invention. Article 35(2) expressly states that 
"the  international preliminary examination report shall not contain any 
statement on the question whether the claimed invention is or seems to be 
patentable  or unpatentable according to any national law." 

CLASSIFICATION OF SUBJECT MATTER 

The classification of the subject matter shall be either (1) that given by 
 the International Searching Authority under PCT Rule 43.3, if the 
examiner  agrees with such classification, or (2) shall be that which the 
examiner considers  to be correct, if the examiner does not agree with 
that classification. Both  the International Patent Classification (IPC) 
and the U.S. classification should  be given. This classification is 
placed on the first sheet of the report. 
ITEM 1.       BASIS OF REPORT 

The International Preliminary Examination Report will be established on 
the  basis of any amendments, rectifications, priority and/or unity of 
invention  holdings and shall answer the questions concerning novelty, 
inventive step,  and industrial applicability for each of the claims under 
examination. 
In completing Form PCT/IPEA/409, the examiner should first indicate any 
amendments  and/or rectifications of obvious  errors taken into account in 
establishing  the International Preliminary Examination Report. The 
amendments and/or rectifications  should be indicated by references to the 
dates on which the amendments and/or  rectifications were filed. 

For the purpose of completing Box I, item 1, substitute and/or rectified 
sheets  of the specification and drawings filed during Chapter I 
proceedings are considered  to be originally filed pages/sheets and should 
be listed as originally filed  pages/sheets. Only those amendments or 
rectifications to the specification  and drawings filed on the date of 
Demand or after the filing of a Demand should  be listed as later filed 
pages/sheets. 

Substitute and/or rectified sheets of claims filed during the Chapter I 
proceedings  are also  considered to be originally filed **>claims< and 
should be listed  as originally filed **>claims<. However, amended sheets 
of claims filed under  Article 19 in response to the international search 
report are to be indicated  as **>claims< as amended under Article 19. 
Applicant's submission of a timely  amendment to the claims alleged to be 
under Article 19 is accepted under Article  34 (not Article 19) unless the 
International Bureau has indicated the amendments  were accepted under 
Article 19. Only those amendments, or rectifications to  the claims filed 
on the date of Demand or after the filing of a Demand should  be listed as 
later filed **>claims<. If a claim is made up of sheets filed  on 
different dates, the latest date is the date that should be used for the 
claim. 

Amendments and/or rectifications filed but not taken into account in the 
establishment  of the report (e.g., an amendment not taken into account 
because the amendment  went beyond the disclosure of the international 
application as filed or a rectification  that is not considered to be 
merely a correction of an obvious error) are then  indicated separately. 
The replacement sheets (but not replacement sheets superseded  by later 
replacement sheets) or letters cancelling sheets under PCT Rule 66.8(a) 
are included as an annex to the report. 

The final report package when sent to the the International Division for 
mailing  must include copies of all amendments and rectifications entered 
and any cover  letters to those amendments. 

ITEM II.        PRIORITY 

Item II of Form PCT/IPEA/409 is to inform applicant of non-establishment 
of  a request for priority.  If the report is established as if the 
priority claim  contained in the Request of the international application 
had not been made,  it shall so indicate.  This will occur in the event 
that the applicant has  failed to comply with the invitation to furnish 
either (1) a copy of the earlier  application whose priority is claimed, 
or (2) a translation of the earlier  application, or (3) where the 
priority claim is found invalid, e.g., the claimed  priority date is more 
than one year prior to the international filing date 
(PCT Rule 17) or all claims are directed to inventions which were not 
described  and enabled by the earlier application (PCT Rule 64.1), or (4) 
where the priority  claim has been withdrawn. 

ITEM III. NON-ESTABLISHMENT OF OPINION WITH REGARD TO NOVELTY, INVENTIVE 
STEP  OR INDUSTRIAL APPLICABILITY 

Indications that a report has not been established 
on the questions of novelty, inventive step or industrial 
applicability, either as to some claims or as to all claims, are given in 
item  III on the Report. The examiner must specify that the report has not 
been established  because: 

(a)   the application relates to subject matter which does not require 
international  preliminary examination; 

(b)   the description, claims or drawings are so unclear that no 
meaningful  opinion could be formed; 

(c)   the claims are so inadequately supported by the description that no 
meaningful  opinion could be formed. 

Where the report has not been established in relation to certain claims 
only,  the claims affected must be specified. 

ITEM IV.        LACK OF UNITY OF INVENTION 

If the applicant has paid additional fees or has restricted the claims in 
response  to an invitation to do so or if the applicant has failed to 
respond to the  invitation to pay additional fees or restrict the claims, 
the International  Preliminary Examination Report shall so indicate. The 
examiner should indicate  whether: 

(a)   the claims have been restricted; 

(b)   additional fees have been paid without protest; 

(c)   additional fees have been paid by the applicant under protest; 
(d)   the applicant has neither restricted the claims nor paid additional 
fees; 
(e)   the examiner was of the opinion that the international application 
did  not comply with the requirement of unity of invention but decided not 
to issue  an invitation to restrict the claims or pay additional fees. 

In addition, if the examiner is examining less than all the claims, the 
examiner  must indicate which parts of the international application were, 
and which  parts were not, the subject of international preliminary 
examination. 
In the case where additional fees were paid under protest, the text of the 
 protest, together with the decision thereon, must be annexed to the 
report  by International Division IPEA personnel if the applicant has so 
requested. 
Where an indication has been given under item (e) above, the examiner must 
 also specify the reasons for which the international application was not 
considered  as complying with the requirement of unity of invention. 

ITEM V.       REASONED STATEMENT UNDER ARTICLE 35(2) WITH REGARD TO 
NOVELTY,  INVENTIVE STEP, AND INDUSTRIAL APPLICABILITY; AND CITATIONS AND 
EXPLANATIONS  SUPPORTING SUCH STATEMENT 

The examiner must indicate whether each claim appears to satisfy the 
criteria  of novelty, inventive step (nonobviousness), and industrial 
applicability.  The determination or statement should be made on each of 
the three criteria  taken separately. The determination as to any criteria 
should be negative if  the criteria as to the particular claim is not 
satisfied.  The examiner should  always cite documents believed to support 
any negative determination as to  novelty and inventive step. Any negative 
holding as to lack of industrial applicability  must be fully explained. 
See the discussion under MPEP w 1878, Item V. The  citation of documents 
should be in accordance with Administrative Instruction  Sections 503 and 
611. The procedure is the same as the procedure for search  report 
citations. Explanations should clearly indicate, with reference to the 
cited documents, the reasons supporting the conclusions  that any of the 
said  criteria is or is not satisfied, unless the statement is positive 
and the reason  for citing any document is easy to understand when 
consulting the document.  If only certain passages of the cited documents 
are relevant, the examiner  should identify them, for example, by 
indicating the page, column, or the lines  where such passages appear. 
Preferably, a reasoned statement should be provided  in all instances. 

ITEM VI.        CERTAIN DOCUMENTS CITED 

If the examiner has discovered or the International Search Report has 
cited,  a relevant document which refers to a nonwritten disclosure, and 
the document  was only published on or after the relevant date of the 
international application,  the examiner must indicate on the 
International Preliminary Examination Report: 
(i)   the date on which the document was made available to the public; 
(ii)    the date on which the non-written public disclosure occurred. 
The examiner should also identify any published application or patent and 
should  provide for each such published application or patent the 
following indications: 
(i)   its date of publication; 

(ii)    its filing date, and its claimed priority date (if any). 

The Report may also indicate that, in the opinion of the International 
Preliminary  Examining Authority, the priority  date of the document cited 
has not been  validly claimed (PCT Rule 70.10). 

Guidelines explaining to the examiner the manner of indicating certain 
special  categories of documents as well as the manner of indicating the 
claims to which  the documents cited in such report are relevant are set 
forth in Administrative  Instruction Sections 507(c), (d), and (e) and 508. 

ITEM VII.  CERTAIN DEFECTS IN THE INTERNATIONAL APPLICATION 

  If, in the opinion of the examiner, defects existing in the form or 
contents  of the international application have not been suitably solved 
at the prescribed  time limit for establishing the Preliminary Examination 
Report, the examiner  may include this opinion in the report, and if 
included, must also indicate  the reasons therefor. See the discussion 
under MPEP # 1878, Item VII. 
ITEM VIII.  CERTAIN OBSERVATIONS ON THE 
INTERNATIONAL APPLICATION 

  If, in the opinion of the examiner, the clarity of claims, the 
description,  and the drawings, or the question as to whether the claims 
are fully supported  by the description have not been suitably solved at 
the prescribed time limit  for establishing the Preliminary Examination 
Report, the examiner may include  this opinion in the report, and if 
included, must also indicate the reasons  therefor.  See the discussion 
under MPEP # 1878, Item VIII. 

CERTIFICATION 

When completing the certification of the report, the  examiner must 
indicate  the date on which the Demand for International Preliminary 
Examination was  submitted and the date on which the examiner completed 
the report and the name  and mailing address of the International 
Preliminary Examining Authority. 
These last mentioned items may either be completed when including the 
other  data or when completing the certification. Every International 
Preliminary  Examination Report must be signed by a primary examiner. 



A18790014.bmp 



A18790014.end 



A18790015.bmp 



A18790015.end 



A18790016.bmp 



A18790016.end 



A18790017.bmp 



A18790017.end 



A18790018.bmp 



A18790018.end 



A18790019.bmp 



A18790019.end 



A18790020.bmp 



A18790020.end 



A18790021.bmp 



A18790021.end 



A18790022.bmp 



A18790022.end 



A18790023.bmp 



A18790023.end 




>1879.01       Time Limit for Preparing Report 


PCT Rule 69 
Start of and Time Limit for International Preliminary 
Examination 

69.1.     Start of International Preliminary Examination 

(a)   Subject to paragraphs (b) to (e), the International Preliminary 
Examining  Authority shall start the international preliminary examination 
when it is  in possession both of the demand and of either the 
international search report  or a notice of the declaration by the 
International Searching Authority under  Article 17(2)(a) that no 
international search report will be established. 
(b)   If the competent International Preliminary Examining Authority is 
part  of the same national Office or intergovernmental organization as the 
competent  International Searching Authority, the international 
preliminary examination  may, if the International Preliminary Examining 
Authority so wishes and subject  to paragraph (d), start at the same time 
as the international search. 
(c)   Where the statement concerning amendments contains an indication 
that  amendments under Article 19 are to be taken into account (Rule 
53.9(a)(i)),  the International Preliminary Examining Authority shall not 
start the international  preliminary examination before it has received a 
copy of the amendments concerned. 
(d)   Where the statement concerning amendments contains an indication 
that  the start of the international preliminary examination is to be 
postponed (Rule  53.9(b)), the International Preliminary Examining 
Authority shall not start  the international preliminary examination before 

(i)     it has received a copy of any amendments made under Article 19, 
(ii)    it has received a notice from the applicant that he does not wish 
to  make amendments under Article 19, or 

(iii)     the expiration of 20 months from the priority date, 

whichever occurs first. 

(e)   Where the statement concerning amendments contains an indication 
that  amendments under Article 34 are submitted with the demand (Rule 
53.9(c)) but  no such amendments are, in fact, submitted, the 
International Preliminary Examining  Authority shall not start the 
international preliminary examination before  it has received the 
amendments or before  the time limit fixed in the invitation  referred to 
in Rule 60.1(g) has expired, whichever occurs first. 

69.2.     Time Limit for International Preliminary Examination 

The time limit for establishing the international preliminary examination 
report  shall be: 

(i)   28 months from the priority date if the demand was filed prior to 
the  expiration of 19 months from the priority date; 

(ii)    nine months from the start of the international preliminary 
examination  if the demand was filed after the expiration of 19 months 
from the priority  date. 

The time limit for preparing the International Preliminary Examination 
Report  is 28 months from the priority date if the Demand was timely 
filed. This time  limit is 
27 months internally to ensure sufficient time to process, review and mail 
 the report in sufficient time to reach the International Bureau by 28 
months  from the earliest priority date. Where the Demand is not filed 
within 19 months  from the priority date, the report is to be established 
by 9 months from the  start of international preliminary examination. 


>1879.02       Transmittal of the International Preliminary Examination 
Report 

PCT Article 36 
Transmittal, Translation, and Communication, of the 
International Preliminary Examination Report 

(1)   The international preliminary examination report, together with the 
prescribed  annexes, shall be transmitted to the applicant and to the 
International Bureau. 
***** 

PCT Rule 71 
Transmittal of the International Preliminary Examination Report 

71.1.     Recipients 

The International Preliminary Examining Authority shall, on the same day, 
transmit  one copy of the international preliminary examination report and 
its annexes,  if any, to the International Bureau, and one copy to the 
applicant. 
71.2.     Copies of Cited Documents 

(a)   The request under Article 36(4) may be presented any time during 
seven  years from the international filing date of the international 
application to  which the report relates. 

(b)   The International Preliminary Examining Authority may require that 
the  party (applicant or elected Office) presenting the request pay to it 
the cost  of preparing and mailing the copies. The level of the cost of 
preparing copies  shall be provided for in the agreements referred to in 
Article 32(2) between  the International Preliminary Examining Authorities 
and the International Bureau. 
(c)     [Deleted] 

(d)   Any International Preliminary Examining Authority may perform the 
obligations  referred to in paragraphs (a) and (b) through another agency 
responsible to  it. 

The International Preliminary Examination Report is transmitted to the 
International  Bureau using a transmittal Form PCT/IPEA/416. Every effort 
is made to ensure  that the transmittal is effected in sufficient time to 
reach the International  Bureau by 28 months from the earliest priority date. 

AUTHORIZED OFFICER 

Form PCT/IPEA/416 must be signed by a primary examiner. 


>1879.03       Translations 


PCT Article 36 
Transmittal, Translation, and Communication, of the 
International Preliminary Examination Report 

***** 

(2)(a)      The international preliminary examination report and its 
annexes  shall be translated into the prescribed languages. 

(b)   Any translation of the said report shall be prepared by or under the 
 responsibility of the International Bureau, whereas any translation of 
the  said annexes shall be prepared by the applicant. 

***** 

PCT Rule 72 
Translation of the International Preliminary Examination Report 

72.1.     Languages 

(a)   Any elected State may require that the international preliminary 
examination  report, established in any language other than the official 
language, or one  of the official languages, of its national Office, be 
translated into English. 
(b)   Any such requirement shall be notified to the International Bureau, 
which  shall promptly publish it in the Gazette. 

72.2.     Copy of Translation for the Applicant 

The International Bureau shall transmit a copy of the translation referred 
 to in Rule 72.1(a) of the international preliminary examination report to 
the  applicant at the same time as it communicates such translation to the 
interested  elected Office or Offices. 

72.3.     Observations on the Translation 

The applicant may make written observations on what, in his opinion, are 
errors  of translation in the translation of the international preliminary 
examination  report and shall send a copy of any such observations to each 
of the interested  elected Offices and a copy to the International Bureau. 

The International Preliminary Examination Report and any annexes are 
established  in Chinese, English, French, German, Japanese, Russian or 
Spanish, if the international  application was filed in one of those 
languages, or in English if the international  application was filed in 
another language. Each elected State may require that  the report, if it 
is not in (one of) the official language(s) of its national  Office, be 
translated into 
English. In that case, the translation of the body of the report is 
prepared  by International Bureau, which transmits copies to the applicant 
and to each  interested elected Office. If any elected Office requires a 
translation of  annexes to the report, the preparation and furnishing of 
that translation is  the responsibility of the applicant. 

The U.S. requires the final report and the annexes thereto to be in 
English.  Translation of the annexes for national stage purposes is 
required pursuant  to 35 U.S.C. 371(c)(5) and 37 CFR 1.495(e). Failure to 
timely provide such  translation results in cancellation of the annexes. 


>1879.04       Confidential Nature of the Report 


PCT Article 38 
Confidential Nature of the International Preliminary 
Examination 

(1)   Neither the International Bureau nor the International Preliminary 
Examining  Authority shall, unless requested or authorized by the 
applicant, allow access  within the meaning, and with the proviso, of 
Article 30(4) to the file of the  international preliminary examination by 
any person or authority at any time,  except by the elected Offices once 
the international preliminary examination  report has been established. 

(2)   Subject to the provisions of paragraph (1) and Articles 36(1) and 
(3)  and 37(3)(b), neither the International Bureau nor the International 
Preliminary  Examining Authority shall, unless requested or authorized by 
the applicant,  give information on the issuance or non-issuance of an 
international preliminary  examination report and on the withdrawal or 
non-withdrawal of the demand or  of any election. 


>1880    Withdrawal of Demand or Election 


PCT Article 37 
Withdrawal of Demand or Election 

(1)   The applicant may withdraw any or all elections. 

(2)   If the election of all elected States is withdrawn, the demand shall 
 be considered withdrawn. 

(3)(a)      Any withdrawal shall be notified to the International Bureau. 
(b)   The elected Offices concerned and the International Preliminary 
Examining  Authority concerned shall be notified accordingly by the 
International Bureau. 
(4)(a)      Subject to the provisions of subparagraph (b), withdrawal of 
the  demand or of the election of a Contracting State shall, unless the 
national  law of that State provides otherwise, be considered to be 
withdrawal of the  international application as far as that State is 
concerned. 

(b)   Withdrawal of the demand or of the election shall not be considered 
to  be withdrawal of the international application if such withdrawal is 
effected  prior to the expiration of the applicable time limit under 
Article 22; however,  any Contracting State may provide in its national 
law that the aforesaid shall  apply only if its national Office has 
received, within the said time limit,  a copy of the international 
application, together with a translation (as prescribed),  and the 
national fee. 

PCT Rule 90bis 
Withdrawals 

***** 

90bis.4.        Withdrawal of the Demand, or of Elections 

(a)   The applicant may withdraw the demand or any or all elections at any 
 time prior to the expiration of 30 months from the priority date. 
(b)   Withdrawal shall be effective upon receipt of a notice addressed by 
the  applicant to the International Bureau. 

(c)   If the notice of withdrawal is submitted by the applicant to the 
International  Preliminary Examining Authority, that Authority shall mark 
the date of receipt  on the notice and transmit it promptly to the 
International Bureau. The notice  shall be considered to have been 
submitted to the International Bureau on the  date marked. 

   ***** 

Administrative Instructions Section 606 
Cancellation of Elections 

The International Preliminary Examining Authority shall, if the election 
is  in the demand, cancel ex officio the election of any State which is 
not a designated  State or which is not bound by Chapter II of the Treaty, 
shall enclose that  election within square brackets, shall draw a line 
between the square brackets  while still leaving the election legible and 
shall enter, in the margin, the  words ``CANCELLED EX OFFICIO BY IPEA" or 
their equivalent in the language of  the demand, and shall notify the 
applicant accordingly. 

Any withdrawal of the Demand or any election must be sent to the 
International  Bureau. Withdrawal, if timely, is effective upon receipt by 
the International  Bureau. 


>1881    Receipt of Notice of Election by the Patent and Trademark Office 

PCT Rule 61 
Notification of the Demand and Elections 

***** 

61.2.     Notification to the Elected Offices 

(a)   The notification provided for in Article 31(7) shall be effected by 
the  International Bureau. 

(b)   The notification shall indicate the number and filing date of the 
international  application, the name of the applicant, the filing date of 
the application  whose priority is claimed (where priority is claimed), 
the date of receipt  by the International Preliminary Examining Authority 
of the demand, and  in  the case of a later election   the date of receipt 
of the notice effecting  the later election.  The latter date shall be the 
actual date of receipt by  the International Bureau or, where applicable, 
the date referred to in Rule  56.1(f) or 60.2(b). 

(c)   The notification shall be sent to the elected Office together with 
the  communication provided for in Article 20.  Elections effected after 
such communication  shall be notified promptly after they have been made. 

 (d)    Where the applicant makes an express request to an elected Office 
under  Article 40(2) before the communication provided for in Article 20 
has taken  place, the International Bureau shall, upon request of the 
applicant or the  elected Office, promptly effect that communication to 
that Office. 
61.3.     Information for the Applicant 

The International Bureau shall inform the applicant in writing of the 
notification  referred to in Rule 61.2 and of the elected Offices notified 
under Article  31(7). 

***** 

All notices of election are received by the PCT International Division 
from  the International Bureau. The PCT International Division prepares 
the appropriate  records of the election and places the paper in storage 
with the communicated  copy of the international application until the 
national stage is entered. 

>1890    Receipt of Notice of Designation 


After publication of the international application, between about 18 and 
19  months from the priority date, the International Bureau notifies each 
national  Office that it has been designated and at the same time forwards 
to each designated  Office a copy of the international application, a copy 
of the search report 
(an English translation is sent to the U.S. if the search report was not 
in  English), a copy of any amendment under Article 19, and a copy of any 
priority  document (PCT Rule 47).  Thus, the U.S. as a designated Office 
first becomes  aware of the fact of its designation at about 18 to 19 
months from the priority  date and may begin a national stage application 
file from the papers forwarded  by the International Bureau.  See PCT Rule 
24.2(b). Contracting States have  the option of being notified of their 
designation earlier.  The U.S. did not  choose to be notified earlier. 

The national stage papers sent by the International Bureau are received in 
 the Designated/Elected Office (DO/EO) Section of the International 
Division  of the USPTO. The papers are matched with applicant's submission 
for entry  into the national stage in the U.S. and together make up the 
U.S. national  stage application file. The DO/EO checks the national stage 
papers to be sure  all necessary parts have been received from applicant 
and from the International  Bureau. When the application is complete, a 
notice of acceptance is mailed  to applicant and the application is 
forwarded to the Application Processing  Division for mailing of a filing 
receipt and final processing before forwarding  to the appropriate 
examining group. 


>1891    Receipt of Notice of Election and Preliminary Examination Report 

If the U.S. is elected in a Demand for preliminary examination prior to 19 
 months from the priority date, applicant may postpone the steps needed 
for  entry into the national stage from 20 to 30 months from the priority 
date.  The USPTO will hold the national stage papers sent by the 
International Bureau awaiting applicant's submissions for entry  into the 
national stage. The international application is examined and the  results 
(the International Preliminary Examination Report) are received by  the 
USPTO for inclusion into the national stage file. The examination report 
is communicated to the elected Offices by the International Bureau. 
The notice of election is communicated to the elected Office along with 
the  Article 20 communication or as soon thereafter as the International 
Bureau  receives notice of the election. Election of a Contracting State, 
of course,  is not possible unless that state was designated. 


>1893    National Stage (U.S. National Application Filed Under 35 U.S.C. 
371) [R-2] 

37 CFR 1.9(a) states, 

(a)(1) A national application as used in this chapter means a 
U.S. application for patent which was either filed in the Office under 35 
U.S.C.  111, or which entered the national stage from an international 
application  after compliance with 35 U.S.C. 371. 

(2)   A provisional application as used in this chapter means a U.S. 
national  application for patent filed in the Office under 35 U.S.C. 
111(b). 
>(3) A nonprovisional application as used in this chapter means a U.S. 
national  application for patent which was either filed in the Office 
under 35 U.S.C.  111(a), or which entered the national stage from an 
international application  after compliance with 35 U.S.C. 371.< 

Thus, there are three types of U.S. national applications: a national 
stage  application under the PCT (filed under 35 U.S.C. 371), a regular 
domestic national  application filed under 35 U.S.C. 111(a), and a 
provisional application filed  under 35 U.S.C. 111(b). 

An applicant who uses the Patent Cooperation Treaty gains the benefit of 
(1)   a delay in the time when **>papers must be submitted to the national 
 offices<; 

(2)   an international search (to judge the level of the relevant prior 
art)  before having to expend resources for filing fees, translations and 
other costs; 
(3)   a delay in the expenditure of fees; 

(4)   additional time for research; 

(5)   additional time to evaluate financial, marketing, commercial and 
other  considerations. 

The time delay is, however, the benefit most often recognized as primary. 
Ultimately,  applicant might choose to *>submit< the national stage 
application. The national  stage is unique compared to a domestic national 
application in that 
- it is *>submitted< later (i.e., normally 20 or 30 months or more from a 
claimed  priority date as compared to 12 months for a domestic application 
claiming  priority). 

- the status of the prior art is generally known before the national stage 
 begins and this is not necessarily so in a domestic national application. 
- any patent issuing on the basis of the national stage application may be 
 used as a reference from its 35 U.S.C. 102(e) date, i.e., it has a prior 
art  effect from its 35 U.S.C. 102(e) date. 

Since the Treaty does not preclude establishing a date for prior art 
purposes  which is or can be as early as the international filing date 
(i.e., by paying  the basic fee, providing a copy of the application, any 
translation thereof,  and an oath or declaration at time of filing the 
international application),  the national stage seems to offer benefits 
that make its use desirable. 
IDENTIFICATION OF THE NATIONAL 
STAGE APPLICATION 

Once the national stage application has been accorded a serial number (the 
 two digit series code followed by a six digit serial number), that number 
as  well as the international application * number should be used whenever 
papers  or other communications are directed to the PTO regarding the 
national stage  application. The national stage application is tracked 
through the PALM locator  system by the eight digit U.S. application 
number. Therefore, processing   is expedited if the U.S. application 
number is indicated.  The international  application number is helpful for 
identification purposes and can be used to  cross-check a possibly 
erroneous U.S. serial number. Of course, the international  filing date 
and the national stage entry date under 35 U.S.C. 371 should also  be 
provided. See 37 CFR 1.5(a). 


>1893.01       Commencement and Entry [R-2] 


35 U.S.C. 371     .   National stage: Commencement 

(a)   Receipt from the International Bureau of copies of international 
applications  with any amendments to the claims, international search 
reports, and international  preliminary examination reports including any 
annexes thereto may be required  in the case of international applications 
designating or electing the United  States. 

(b)   Subject to subsection (f) of this section, the national stage shall 
commence  with the expiration of the applicable time limit under article 
22 (1) or (2),  or under article 39(1)(a) of the treaty. 

(c)   The applicant shall file in the Patent and Trademark Office 
(1)   the national fee provided in section 41(a) of this title; 

(2)   a copy of the international application, unless not required under 
subsection 
(a) of this section or already communicated by the International Bureau, 
and  a translation into the English language of the international 
application, if  it was filed in another language; 

(3)   amendments, if any, to the claims in the international application, 
made  under article 19 of the treaty, unless such amendments have been 
communicated  to the Patent and Trademark Office by the International 
Bureau, and a translation  into the English language if such amendments 
were made in another language; 
(4)   an oath or declaration of the inventor (or other person authorized 
under  chapter 11 of this title) complying with the requirements of 
section 115 of  this title and with regulations prescribed for oaths or 
declarations of applicants; 
(5)   a translation into the English language of any annexes to the 
international  preliminary examination report, if such annexes were made 
in another language. 
(d)   The requirements with respect to the national fee referred to in 
subsection 
(c)(1), the translation referred to in subsection (c)(2), and the oath or 
declaration  referred to in subsection (c)(4) of this section shall be 
complied with by  the date of the commencement of the national stage or by 
such later time as  may be fixed by the Commissioner. The copy of the 
international application  referred to in subsection (c)(2) shall be 
submitted by the date of the commencement  of the national stage. Failure 
to comply with these requirements shall be regarded  as abandonment of the 
application by the parties thereof,  unless it be shown  to the 
satisfaction of the Commissioner that such failure to comply was 
unavoidable.  The payment of a surcharge may be required as a condition of 
accepting the  national fee referred to in subsection (c)(1) or the oath 
or declaration referred  to in subsection (c)(4) of this section if these 
requirements are not met by  the date of the commencement of the national 
stage. The requirements of subsection 
(c)(3) of this section shall be complied with by the date of the 
commencement  of the national stage, and failure to do so shall be 
regarded as a cancellation  of the amendments to the claims in the 
international application made under  article 19 of the treaty. The 
requirement of subsection (c)(5) shall be complied  with at such time as 
may be fixed by the Commissioner and failure to do so  shall be regarded 
as cancellation of the amendments made under article 34(2)(b)  of the treaty. 

(e)   After an international application has entered the national   stage, 
 no patent may be granted or refused thereon before the expiration of the 
applicable  time limit under article 28 or article 41 of the treaty, 
except with the express  consent of the applicant. The applicant may 
present amendments to the specification,  claims and drawings of the 
application after the national stage has commenced. 
(f)   At the express request of the applicant, the national stage of 
processing  may be commenced at any time at which the application is in 
order for such  purpose and the applicable requirements of subsection (c) 
of this section have  been complied with. 

37 CFR 1.491.     Entry into the national stage 

An international application enters the national stage when the applicant 
has  filed the documents and fees required by 35 U.S.C. 371(c) within the 
periods  set in w 1.494 or w 1.495. 

Commencement of the national stage occurs upon expiration of the time 
limit,  as stated in 35 U.S.C. 371(b). 

Entry into the national stage occurs upon completion of certain acts, as 
stated  in 37 CFR 1.491. 

** 


>1893.01(a)  Entry via the U.S. Designated Office 


37 CFR 1.494    . Entering the national stage in the United States of 
America  as a Designated Office. 

(a)   Where the United States of America has not been elected by the 
expiration  of 19 months from the priority date (see w 1.495), the 
applicant must fulfill  the requirements of PCT Article 22 and 35 U.S.C. 
371 within the time periods  set forth in paragraphs (b) and (c) of this 
section in order to prevent the  abandonment of the international 
application as to the United States of America.  International 
applications for which those requirements are timely fulfilled  will enter 
the national stage and obtain an examination as to the patentability  of 
the invention in the United States of America. 

(b)   To avoid abandonment of the application, the applicant shall furnish 
 to the United States Patent and Trademark Office not later than the 
expiration  of 20 months from the priority date: 

(1)   a copy of the international application, unless it has been 
previously  communicated by the International Bureau or unless it was 
originally filed  in the United States Patent and Trademark Office; and 

(2)   the basic national fee (see w 1.492(a)). The 20-month time limit may 
 not be extended. 

(c)   If applicant complies with paragraph (b) of this section before 
expiration  of 20 months from the priority date but omits (1) a 
translation of the international  application, as filed, into the English 
language, if it was originally filed  in another language (35 U.S.C. 
371(c)(2)) and/or (2) the oath or declaration  of the inventor (35 U.S.C. 
371(c)(4); see w 1.497), applicant will be so notified  and given a period 
of time within which to file the translation and/or oath  or declaration 
in order to prevent abandonment of the application. The payment  of the 
processing fee set forth in w 1.492(f) is required for acceptance of  an 
English translation later than the expiration of 20 months after the 
priority  date. The payment of the surcharge set forth in w 1.492(e) is 
required for  acceptance of the oath or declaration of the inventor later 
than the expiration  of 20 months after the priority date. A copy of the 
notification mailed to  applicant should accompany any response thereto 
submitted to the Office. 
(d) A copy of any amendments to the claims made under PCT Article 19, and 
a  translation of those amendments into English, if they were made in 
another  language, must be furnished not later than the expiration of 0 
months from  the priority date. Amendments under PCT Article 19 which are 
not received by  the expiration of 20 months from the priority date will 
be considered to be  cancelled. The 20-month time limit may not be extended. 

(e) Verification of the translation of the international application or 
any  other document pertaining to an international application may be 
required where  it is considered necessary, if the international 
application or other document  was filed in a language other than English. 

(f) The documents and fees submitted under paragraphs (b) and (c) of this 
section  must be clearly identified as a submission to enter the national 
stage under  35 U.S.C. 371, otherwise the submission will be considered as 
being made under  35 U.S.C. 111. 

(g) An international application becomes abandoned as to the United States 
 20 months from the priority date if the requirements of paragraph (b) of 
this  section have not been  complied with within 20 months from the 
priority date  where the United States has been designated but not elected 
by the expiration of 19 months from the priority  date. If the 
requirements of paragraph (b) of this section are complied with  within 20 
months from the priority date but any required translation of the 
international application as filed and/or the oath or declaration are not 
timely  filed, an international application will become abandoned as to 
the United  States upon expiration of the time period set pursuant to 
paragraph (c) of  this section. 

An international application designating the U.S. will enter the national 
stage  via the U.S. Designated Office unless a Demand electing the U.S. is 
filed prior  to the expiration of 19 months from the priority date 
whereupon entry will  be via the U.S. Elected Office.  The procedure for 
entry via the U.S. Designated  Office is as prescribed in 37 CFR 1.494. 


>1893.01(a)(1)     Submissions Required by 20 Months From the Priority 
Date [R-2] 

To begin entry into the national stage, applicant is required to comply 
with  37 CFR 1.494(b) within 20 months from the priority date unless 
election of  the U.S. under Chapter II of the PCT has been made prior to 
19 months from  the priority date (see MPEP w 1893.01(b)).  Thus, 
applicant must pay the basic  national fee on or before 20 months from the 
priority date and be sure that  a copy of the international application 
has been received by the U.S. Designated  Office prior to expiration of 20 
months from the priority date. The notice  referred to in PCT Rule 47.1(c) 
constitutes conclusive evidence of transmission  of the international 
application. Payment of the basic national fee will indicate  applicant's 
intention to enter the national stage and will provide a U.S. 
correspondence  address in most instances. 

Facsimile transmission is not acceptable for submission of the basic 
national  fee and/or the copy of the international application.  See 37 
CFR 1.6(d).   >Likewise, the certificate of mailing procedures of 37 CFR 
1.8 do not apply  to the filing of the copy of the international 
application and payment of the  basic national fee.  See 
37 CFR 1.8(a)(2)(i)(F).< 

Applicants cannot pay the basic national fee with a surcharge after the 20 
 month deadline.  Failure to pay the basic national fee within 20 months 
from  the priority date will result in abandonment of the application. 
The time  for payment of the basis fee is not extendable. 

Similarly, the copy of the international application is required to be 
provided  within 20 months from the priority date. A copy of the 
international application  is provided to the U.S. Designated Office by 
the International Bureau (the  copy is ordinarily received shortly after 
publication at about 18 months from  the priority date). The International 
Bureau also mails a confirmation (Form  IB/308) to applicant upon which 
applicant can rely that the copy has been provided,  see PCT Rule 47.1(c). 
 The copy is placed in a file to await applicant's submission  of the 
basic national fee and other national stage requirements. 
If the basic national fee has been paid by expiration of 
20 months from the priority date, but the required oath, declaration or 
translation  has not been filed within 20 months from the priority date, 
as appropriate,  the Office will send applicant a notice and provide a 
period of time to supply  the deficiency as set forth in 37 CFR 1.494(c). 
The time period usually set  is 1 month from the date of notification by 
the Office or 21 months from the  priority date, whichever is later. This 
period may be extended pursuant to  the provisions of 37 CFR 1.136(a). 
Thus, payment of the basic national fee  on or before 20 months from the 
priority date will (1) cause the Office, after  a check of the national 
stage papers at 20 months, to mail a notice identifying  any deficiencies 
and affording applicant a period for correction of those deficiencies, 
and (2) as in national practice under 37 CFR 1.53, enable applicants to 
extend  the period of time under 37 CFR 1.136(a) for submission of a 
proper oath, declaration  or translation.  The international application 
enters the national stage under  35 U.S.C. 371 and 37 CFR 1.491 when the 
last of the items indicated in 35 U.S.C.  371(c) is timely received by the 
office. 

An international application becomes abandoned if the copy of the 
international  application or the filing fee have not been received by the 
U.S. Designated  Office prior to expiration of 20 months from the priority 
date.  A notification  of any missing parts pursuant to 37 CFR 1.494(c) 
will only be mailed in those  instances where the applicant has paid the 
basic national fee within 20 months  from the priority date. 

The notice of missing requirements lists several items which 37 CFR 1.63 
requires  and all of those items will have to be satisfied before the oath 
or declaration  is considered accepted. Similarly, the translation must be 
a translation of  the international application. A translation of less 
than all of the international  application (e.g., untranslated words in 
the drawings or translations of those  untranslated words in a different 
part of the document) or a translation that includes modifications;  e.g., 
the insertion of headings, is unacceptable. 


>1893.01(a)(2)     Article 19 Amendment (Filed with the International 
Bureau) 

The international application may be amended under Article 19 after 
issuance  of the search report. The amendment is forwarded to the U. S. 
Designated Office  by the International Bureau for inclusion in the U.S. 
national stage application.  Article 19 amendments which were made in 
English will be entered by substituting  each page of amendment for the 
corresponding English language page of claims  of the international 
application.  If the Article 19 amendments were made in  a language other 
than English, applicant must provide an English translation  for the U.S. 
national stage application.  The English translation of the amendment(s) 
must be submitted by 20 months from the priority date, unless the U.S. was 
 elected by 19 months from the priority date in which case the English 
translation  must be filed by 
30 months, or the amendment(s) will be considered to be canceled, 35 
U.S.C.  371(d). Where applicant elects to request early processing of the 
national  stage application under 35 U.S.C. 371(f), subsequently received 
amendments  made in the international stage (and English translations 
thereof) will not  become part of the U.S. national stage application 
file.  If such amendments  are desired, they should be offered under 37 
CFR 1.121 as a preliminary amendment  or a responsive amendment under 37 
CFR 1.111. 

Applicants entering the national stage in the U.S. are encouraged to 
submit  an amendment in accordance with 
37 CFR 1.121 rather than an English translation of an Article 19 
amendment.  Sometimes when an Article 19 amendment is translated into 
English, it cannot  be entered. That is, each page of an Article 19 
amendment must be entered by  substituting a page of amendment for the 
corresponding page of claims of the  international application.  After 
translation of a page, the translated page  may no longer correspond to a 
page of the claims of the international application  such that the 
amendment is capable of entry by substituting the page of English 
translation (of the amendment) for the corresponding page of claims of the 
 international application without leaving an inconsistency.  Where 
applicant  chooses to submit an English translation of the Article 19 
amendment, applicant  should check to be sure that the English translation 
can be entered by substituting  the pages of translation for corresponding 
pages of the claims of the international  application without leaving an 
inconsistency.  If entry of the page of translation  causes 
inconsistencies in the claims of the international application the 
translation  will not be entered. For example, if the translation of the 
originally filed  application has a page which begins with claim 1 and 
ends with a first part  of claim 2 with the remainder of claim 2 on the 
next page then translation  of the Article 19 amendment to only claim 1 
must include a substitute page  or pages beginning with the changes to 
claim 1 and ending with the last of  the exact same first part of claim 2. 
This enables the original translated  first page of claims to be replaced 
by the translation of the amendment without  changing the subsequent 
unamended page(s). Alternatively, applicant may submit  a preliminary 
amendment in accordance with 37 CFR 1.121. 


>1893.01(b)  Entry via the U.S. Elected Office 


37 CFR 1.495.       Entering the national stage in the United States of 
America  as an Elected Office. 

(a)   Where the United States of America has been elected by  the 
expiration  of 19 months from the priority date, the applicant must 
fulfill the requirements  of 35 U.S.C. 371 within the time periods set 
forth in paragraphs (b) and (c)  of this section in order to prevent the 
abandonment of the international application  as to the United States of 
America. International applications for which those  requirements are 
timely fulfilled will enter the national stage and obtain  an examination 
as to the patentability of the invention in the United States  of America. 

(b)   To avoid abandonment of the application the applicant shall furnish 
to  the United States Patent and Trademark Office not later than the 
expiration  of 30 months from the priority date: (1) a copy of the 
international application,  unless it has been previously communicated by 
the International Bureau or unless  it was originally filed in the United 
States Patent and Trademark Office; and 
(2) the basic national fee (see w 1.492(a)). The 30-month time limit may 
not  be extended. 

(c)   If applicant complies with paragraph (b) of this section before 
expiration  of 30 months from the priority date but omits (1) a 
translation of the international  application, as filed, into the English 
language, if it was originally filed  in another language (35 U.S.C. 
371(c)(2)) and/or (2) the oath or declaration  of the inventor (35 U.S.C. 
371(c)(4); see w 1.497), applicant will be so notified  and given a period 
of time within which to file the translation and/or oath  or declaration 
in order to prevent abandonment of the application. The payment  of the 
processing fee set forth in w 1.492(f) is required for acceptance of  an 
English translation later than the expiration of 30 months after the 
priority  date. The payment of the surcharge set forth in w 1.492(e) is 
required for  acceptance of the oath or declaration of the inventor later 
than the expiration  of 30 months after the priority date. A copy of the 
notification mailed to  applicant should accompany any response thereto 
submitted to the Office. 
(d)   A copy of any amendments to the claims made under PCT Article 19, 
and  a translation of those amendments into English, if they were 
made in another language, must be furnished not later than the expiration 
of  30 months from the priority date.  Amendments under PCT Article 19 
which are  not received by the expiration of 30 months from the priority 
date will be  considered to be cancelled.  The 30-month time limit may not 
be extended. 
(e)   A translation into English of any annexes to the international 
preliminary  examination report, if the annexes were made in another 
language, must be furnished  not later than the expiration of 30 months 
from the priority date. Translations  of the annexes which are not 
received by the expiration of 30 months from the  priority date may be 
submitted within any period set pursuant to paragraph 
(c) of this section accompanied by the processing fee set forth in w 
1.492(f).  Annexes for which translations are not timely received will be 
considered cancelled.  The 30-month time limit may not be extended. 

(f)   Verification of the translation of the international application or 
any  other document pertaining to an international application may be 
required where  it is considered necessary, if the international 
application or other document  was filed in a language other than English. 

(g)   The documents submitted under paragraphs (b) and (c) of this section 
 must be clearly identified as a submission to enter the national stage 
under  35 U.S.C. 371, otherwise the submission will be considered as being 
made under  35 U.S.C. 111. 

(h)   An international application becomes abandoned as to the United 
States  30 months from the priority date if the requirements of paragraph 
(b) of this  section have not been complied with within 30 months from the 
priority date  and the United States has been elected by the expiration of 
19 months from  the priority date. If the requirements of paragraph (b) of 
this section are  complied with within 30 months from the priority date 
but any required translation  of the international application as filed 
and/or the oath or declaration are  not timely filed, an international 
application will become abandoned as to  the United States upon expiration 
of the time period set pursuant to paragraph 
(c) of this section. 

An international application designating the U.S. will enter the national 
stage  via the U.S. Elected Office if a Demand electing the U.S. is filed 
prior to  the expiration of 19 months from the priority date.  The 
procedure for entry  via the U.S. Elected Office is as prescribed in 
37 CFR 1.495. 


>1893.01(b)(1)     Submissions Required by 30 Months From the Priority 
Date [R-2] 

To begin entry into the national stage, where election of the U.S. under 
Chapter  II of the PCT has been made prior to 19 months from the priority 
date, applicant  is required to comply with 37 CFR 1.495(b) within 30 
months from the priority  date. Thus, applicant must pay the basic 
national fee on or before 30 months  from the priority date and be sure 
that a copy of the international application  has been received by the 
U.S. Designated Office prior to expiration of 30 months  from the penalty 
date.  The notice referred to in PCT Rule 47.1(c) constitutes  conclusive 
evidence of transmission of the international application.  Payment  of 
the basic national fee will indicate applicant's intention to enter the 
national stage and will provide a U.S. correspondence address in most 
instances. 
Facsimile transmission is not acceptable for submission of the basic 
national  fee and/or the copy of the international application.  See 37 
CFR 1.6(d).   >Likewise, the certificate of mailing procedures of 37 CFR 
1.8 do not apply  to the filing of the copy of the international 
application and payment of the  basic national fee.  See 37 CFR 
1.8(a)(2)(i)(F).< 

  Applicants cannot pay the basic national fee with a surcharge after the 
30  months deadline. Failure to pay the basic national fee within 30 
months from  the priority date will result in abandonment of the 
application. The time for  payment of the basic fee is not extendable. 

  Similarly, the copy of the international application is  required to be 
provided  within 30 months from the priority date. A copy of the 
international application  is provided to the U.S. Designated Office by 
the International Bureau (the  copy is ordinarily received shortly after 
publication at about 18 months from  the priority date).  The 
International Bureau also mails a confirmation (Form  IB/308) to applicant 
upon which applicant can rely that the copy has been provided;  see PCT 
Rule 47.1(c).  The copy is placed in a file to await applicant's 
submission  of the basic national fee and other national stage 
requirements. 

  If the basic national fee has been paid by expiration of 30 months from 
the  priority date but the required oath, declaration, or translation has 
not been  filed within 
30 months from the priority date, as appropriate, the Office will send 
applicant  a notice and provide a period of time to supply the deficiency 
as set forth  in 37 CFR 1.495(c).  The time period usually set is 1 month 
from the date of  the notification by the Office or 31 months from the 
priority date, whichever  is later. This period may be extended pursuant 
to the provisions of 37 CFR  1.136(a). Thus, payment of the basic national 
fee on or before 
30 months from the priority date will (1) cause the Office, after a check 
of  the national stage papers at 30 months, to mail a notice identifying 
any deficiencies  and affording applicant a period for correction of those 
deficiencies, and 
(2) as in national practice under 37 CFR 1.53, enable applicants to extend 
 the period of time 
under 37 CFR 1.136(a) for submission of a proper oath, declaration, or 
translation. The  international application enters the  national stage 
under 35 U.S.C. 371 when the last of the items indicated in  35 U.S.C. 
371(c) and 37 CFR 1.491 is timely received by the office. 
An international application becomes abandoned if the copy of the 
international  application or the *>basic national< fee *>has< not been 
received by the U.S.  Designated Office prior to expiration of 30 months 
from the priority date. 
 A notification of any missing *>requirements< pursuant to 37 CFR 1.495 
will  only be mailed in those instances where the applicant has paid the 
basic national  fee within 30 months from the priority date. 

The notice of missing requirements lists several items which 37 CFR 1.63 
requires  and all of those items will have to be satisfied before the oath 
or declaration  is considered accepted. Similarly, the translation must be 
a translation of  the international application. A translation of less 
than all of the international  application (e.g., untranslated words in 
the drawings or translations of those  untranslated words in a different 
part of the document) or a translation that  includes modifications, e.g., 
the insertion of headings, is unacceptable. 

>1893.01(b)(2)     Article 19 and Article 34 Amendments (Filed with the 
                                     International Preliminary Examining 
Authority) [R-2] 

Paragraph (d) of 37 CFR 1.495 states that if an Article 19 amendment is 
not  received before expiration of 
30 months from the priority date, it is considered to be canceled. 
Nevertheless,  applicant may submit a preliminary amendment in accordance 
with 37 CFR 1.121  adding the substance of the Article 19 amendment to the 
national stage application. 
 In some instances, entry of the subject matter via an amendment under 37 
CFR  1.121 may be preferable to entry via Article 19. For example, where 
the Article  19 amendment was not filed in English the amendment would 
have to be translated  into English in order that it be submitted for 
entry into the national stage.  The translation must be submitted before 
expiration of 30 months from the priority  date and the substitute pages 
must be capable of insertion into the text of  the international 
application. Thus, where an Article 19 amendment was made  in the 
international stage the same amendment may be entered for the national 
stage either in accordance with 35 U.S.C. 371(c)(3) or the amendments may 
be  added via a preliminary amendment in accordance with 37 CFR 1.121. 
Translation of an Annex **>to the International Preliminary Examination 
Report< 
The translation of an ** Annex >to the international preliminary 
examination  report< must be submitted so that the translation of the 
originally filed application  can be changed by replacing the originally 
filed application page(s) (of translation)  with substitute page(s) of 
translation of the annex.  For example, if the translation  of the 
originally filed application has a page which begins with claim 1 and 
ends with a first part of claim 2 with the remainder of claim 2 on the 
next  page then translation of the annex to only claim 1 must include a 
substitute  page or pages beginning with the changes to claim 1 and ending 
with the last  of the exact same first part of claim 2. This enables the 
original translated  first page of claims to be replaced by the 
translation of the annex without  changing the subsequent unamended 
page(s). Alternatively applicant may submit  a preliminary amendment in 
accordance with 37 CFR 1.121. 


>1893.01(c)  Fees 


Because the national stage fees are subject to change, applicants and 
examiners  should always consult the 
Official Gazette for the current fee listing. 

Applicants are cautioned that national stage fees are specifically 
provided  for in 37 CFR 1.492 and authorizations to charge fees under 37 
CFR 1.16 do  not constitute a specific authorization to charge national 
stage fees. 

>1893.01(d)  Translation 


Applicants entering the national stage in the U.S. are required to file a 
translation  of the international application (if the international 
application was filed  in another language), 35 U.S.C. 371(c)(2). The 
translation must be a translation  of the international application as 
filed with any changes which have been  properly accepted under PCT Rule 
26 or any rectifications which have been properly  accepted under PCT Rule 
91. Amendments, even those considered to be minor or  to not include new 
matter, may not be incorporated into the translation. If  an amendment to 
the international application as filed is desired for the national  stage, 
it may be submitted in accordance with 37 CFR 1.121.  An amendment filed 
under 37 CFR 1.121 should be submitted within 1 month after 
completion of the 35 U.S.C. 371(c) requirements and entry into the 
national  stage; see 37 CFR 1.496(a).  If applicant has timely paid the 
basic national  fee but the translation is missing or is defective, a 
notice of Missing Requirements  will be sent to applicant setting a period 
to correct any missing or defective  requirements. The time period is 21 
months or 31 months from the priority date,  as appropriate, or 1 month 
from the date of the notice, whichever expires later.  The time period is 
subject to the provisions of 37 CFR 1.136(a). 


>1893.01(e)  Oath/Declaration [R-2] 


Applicants entering the national stage in the U.S. are required to file an 
 oath or declaration of the inventor in accordance with 37 CFR 1.63. If 
the  basic national fee has been paid by the expiration of 20 or 30 months 
from  the priority date as appropriate, but the required oath or 
declaration has  not been filed, the Office will send applicant a notice 
of Missing Requirements  setting a time period to correct any missing or 
defective requirements. The  time period is 21 months or 31 months from 
the priority date, as appropriate,  or 1 month from the date of the 
notice, whichever expires later. The time period  is subject to the 
provisions of 37 CFR 1.136(a). The oath or declaration must  comply with 
the requirements of 
35 U.S.C. 115 and with the regulations prescribed for oaths and 
declarations,  see especially 37 CFR 1.63. 

If an inventor refuses to execute the oath or declaration or is 
unavailable,  applicant must file an oath or declaration and a petition in 
accordance with  37 CFR 1.47.  Similarly, where an inventor is deceased or 
legally incapacitated,  an oath or declaration in accordance with the 
provisions of 37 CFR 1.42 or  1.43 must be provided. To avoid abandonment 
the oath or declaration and petition 
(under 37 CFR 1.42, 1.43 and/or 1.47, as appropriate) must be filed either 
 before expiration of 20 or 30 months from the priority date, as 
appropriate,  or, where a notification of deficiency of the 
oath/declaration has been mailed,  within the time for response to that 
notification. 

If applicant has filed an oath or declaration and petition under 37 CFR 
1.42,  but has not provided proof 
of authority of the legal representative as required by 
37 CFR 1.44, the application papers will be provisionally accepted for 
entry  into the national stage and forwarded for further processing and 
examination  on the merits. However, if sufficient proof of authority of 
the person(s) signing  as legal representative of the deceased inventor is 
not provided before mailing  of the notice of allowance, the application 
should be forwarded to the PCT  Legal Affairs *>Division<.  If proof of 
authority is not filed, the application  will be held not to have entered 
the national stage for failure to provide  an oath or declaration as 
required by 35 U.S.C. 371(c)(4) and will be held  abandoned in accordance 
with 37 CFR 1.494(g) or 1.495(h). Under such circumstances  the date of 
abandonment will be the date of expiration of 20 months from the  priority 
date or, where a notification of deficiency of the oath/declaration  has 
been mailed, the date of expiration of the time for response to that 
notification  or as extended by any extension fee timely paid under 37 CFR 
1.136(a). 

>1893.02       Abandonment 


If the requirements of 35 U.S.C. 371(c) are not complied with by the time 
period  set in 37 CFR 1.494(b) and (c) or 37 CFR 1.495(b) and (c), as 
appropriate,  the application is considered to be abandoned, see 37 CFR 
1.494(g) and 37 CFR  1.495(h). 

Examiners and applicants should be aware that sometimes papers filed for 
the  national stage are deficient and abandonment results. For example, if 
the fee  submitted does not include at least the amount of the basic 
national fee that  is due, the application becomes abandoned. 

Applicant may file a petition to revive an abandoned application in 
accordance  with the provisions of 37 CFR 1.137.  See MPEP w 711.03(c) 


>1893.03       Prosecution of U.S. National Stage Applications Before the 
Examiner 

An international application which enters the national stage will be 
forwarded  to the appropriate examining group for examination in turn 
based on the 35  U.S.C. 102(e) date of the application. Once the 
application is forwarded to  the examiner, prosecution proceeds in the 
same manner as for a domestic application  with the exceptions that (1) 
the international filing date is the date to keep  in mind when searching 
the prior art and (2) unity of invention proceeds as  under 37 CFR 1.475. 


>1893.03(a)  How To Identify That an Application Is a U.S. National Stage 
Application [R-2] 

Applicant's initially deposited application must indicate that treatment 
as  a national stage application (filed under 35 U.S.C. 371) is requested 
(see 37 CFR 1.494(f) and 37 CFR 1.495(g)).  Otherwise, the application 
will be treated as an application  filed under 35 U.S.C. 111(a). 

That is, if applicant wishes the application to be filed under 35 U.S.C. 
111(a),  applicant's originally filed application papers need indicate 
simply that the  papers are for a new U.S. patent application.  If, 
however, applicant is filing  papers for entry into the national stage of 
a PCT application, applicant must  so state. 37 CFR 1.494(f) and 1.495(g) 
require that applicant's application  papers  must be clearly identified 
as a submission to enter the national stage  under 35 U.S.C. 371; 
otherwise the submission will be considered as being made  under 35 U.S.C. 
111. Examination of the originally filed application papers  occurs in 
either the Application Processing Division or in the **>National  Stage 
Processing Division of the Office of PCT Operations< where it is 
determined  whether applicant has asked that the papers be treated as a 
national stage  filing under 35 U.S.C. 371. If the application is accepted 
for entry into the  national stage, the **>National Stage Processing 
Division< will fill out and  mail Form PCT/DO/EO/903 indicating acceptance 
of the application as a national  stage filing under 35 U.S.C. 371 and 
will stamp the face of the file with an  indication that the application 
is filed under 35 U.S.C. 371. Accordingly,  the three key indicators which 
reflect that an application is filed under 35  U.S.C. 371 are (1) the file 
face indication of a filing under 35 U.S.C. 371, 
(2) the Form PCT/DO/EO/903 indicating acceptance of the application as a 
national  stage filing under 35 U.S.C. 371, and (3) applicant's statement 
(or the equivalent)  in the originally filed application papers that the 
application is a national  stage filing under 35 U.S.C. 371. Applicants 
who use transmittal Form PCT/DO/EO/1390  will satisfy this requirement 
since the form includes an indication that the  application is a national 
stage filing under 35 U.S.C. 371. 

Initially, the examiner should inspect the face of the file jacket for an 
indication  that it is filed under 35 U.S.C. 371 and should also check the 
application  papers for the presence of Form PCT/DO/EO/903.  If neither of 
these indications  are present the application may, in the absence of 
evidence to the contrary 
(there is an indication in the originally filed application papers that 
processing  as a national stage is desired), be treated as a filing under 
35 U.S.C. 111(a). 
 Thus, if both indications are present, the application should be treated 
as  a filing under 35 U.S.C. 371.  If the face of the file jacket does not 
indicate  a filing under 35 U.S.C. 371, but a properly completed Form 
PCT/DO/EO/903 is  in the file, the examiner should complete the face of 
the file by adding  ``filed  under 35 U.S.C. 371"  in the upper left 
margin thereof. The examiner should  initial and date this change. If the 
file wrapper does not include a properly  completed Form PCT/DO/EO/903 but 
the face of the file indicates a filing under  35 U.S.C. 371, the 
application should be returned to the **>National Stage  Processing 
Division of the Office of PCT Operations< for certification that  the 
application has been accepted for the national stage. 

In accordance with the notice at 1077 OG 13 (14 April 1987), if the 
applicant  files a U.S. national application and clearly identifies in the 
accompanying  oath or declaration the specification to which it is 
directed by referring  to a particular international application by PCT 
*>Application< Number and  International Filing Date and that he or she is 
executing the declaration as,  and seeking a U.S. Patent as, the inventor 
of the invention described in the  identified international application, 
then the application will be accepted  as filed under 35 U.S.C. 371. 
Merely claiming priority of an international 
(PCT) application in an oath or declaration will not serve to indicate a 
filing  under 35 U.S.C. 371.  Also, if there are any conflicting 
instructions as to  whether the filing is under 35 U.S.C. 111(a) or 35 
U.S.C. 371, the application  will be accepted as filed under 35 U.S.C. 111(a). 



A189303a1.bmp 



A189303a1.end 



A189303a2.bmp 



A189303a2.end 




>1893.03(b)  The Filing Date of a U.S. National Stage Application [R-2] 

An international application designating the U.S. has two stages 
(international  and national) with the filing date being the same in both 
stages.  Often the  date of entry into the national stage is confused with 
the filing date.  It  should be borne in mind that the filing date of the 
international stage application  is also the filing date for the national 
stage application.  Specifically,  35 U.S.C. 363  provides that 

An international application designating the United States shall have the 
effect,  from its international filing date under Article 11 of the 
treaty, of a national  application for patent regularly filed in the 
Patent and Trademark Office except  as otherwise provided in section 
102(e) of this title. 

Similarly, PCT Article 11(3) provides that 

...an international filing date shall have the effect of a regular 
national  application in each designated State as of the international 
filing date, which  date shall be considered to be the actual filing date 
in each designated State. 
37 CFR 1.496(a), first sentence, reads ``International applications which 
have  complied with the requirements of 35 U.S.C. 371(c) will be taken up 
for action  based on the date on which such requirements were met."  Thus, 
when the face  of the file jacket is printed and pasted to the face of the 
U.S. national stage  application file, the information is read from the 
PALM data base and the information  printed in the filing date box is the 
date of entry into the national stage  rather than the actual 
international filing date.  See the preceding Sample-National  Stage 
Filing Under 35 U.S.C. 371 wherein the face of the file of national stage 
application serial number 07/XXX,XXX is shown with the date of entry into 
the  national stage (11/08/91) shown in the FILING DATE box and the true 
U.S. filing  date (01/10/90) is indicated just to the right of the 
international application  serial number (PCT/EP90/XXXXX) in the 
FOREIGN/PCT APPLICATIONS  block. 
>Applicants are quite often confused as to the true filing date and will 
ask  for corrected filing receipts thinking that the information thereon 
is wrong. 
 This explanation should offer some clarity. For all legal purposes, the 
filing  date is the PCT international filing date. The date of actual 
entry into the  national stage is otherwise the date provided in the PALM 
system. Any issued  patent will have all of the relevant dates listed.< 


>1893.03(c)  The Priority Date, Priority Claim, and Priority Papers for a 
U.S. National Stage Application [R-2] 

A U.S. national stage application (filed under 35 U.S.C. 371) may include 
a  claim under 35 U.S.C. 119 or 120 for benefit of the filing date of a 
prior  application or applications. See also 35 U.S.C. 365. 

Priority Claim Under 35 U.S.C. 119 

A national stage application which includes a priority claim under 35 
U.S.C.  119 must refer to a priority application the priority of which was 
also claimed  in the international application.  If the 35 U.S.C. 119 
priority claim is to  an application the priority of which was properly 
claimed in the international  application, the claim for priority is 
acknowledged and checked for compliance  with the other requirements of 35 
U.S.C. 119 (e.g. the certified copy as discussed  below). 

If the 35 U.S.C. 119 priority claim in the national stage application is 
to  an application the priority of which was not claimed in the 
international application,  the claim for priority must be denied for 
failing to meet the requirements  of the Patent Cooperation Treaty, 
specifically PCT Rule 4.10. 

** 

For a comparison with 35 U.S.C. 119 priority claims in a national 
application  filed under 35 U.S.C. 111(a) see MPEP w 1895.01. 

The 35 U.S.C. 119 (a)-(d) Certified Copy 

The requirement for a certified copy of the foreign priority application 
is  normally fulfilled by applicant providing a certified copy to the 
Receiving  Office or to the International Bureau within 16 months from the 
priority date  and subsequently, the International Bureau forwarding a 
photocopy of the certified  priority document when it forwards a copy of 
the international application 
(shortly  after publication at 18 months from the priority date) to each 
Designated  Office.  The copy from the International Bureau is placed in 
the U.S. national  stage file. The International Bureau stamps the face of the 
photocopy of the certified priority document with an indication that the 
certified  priority document was received at the International Bureau. 
The stamped copy  of the priority document sent to the U.S. **>Office of 
PCT Operations< from  the International Bureau is acceptable to meet the 
certified copy requirement  of 35 U.S.C. 119(b).  The examiner should 
acknowledge in the next 


Office action that the certified copy of the foreign priority document has 
 been filed. Note the example of an acceptable priority document with the 
stamp 
(box) in the upper right hand section indicating receipt by the 
International  Bureau (WIPO) on 30 November 1992 and the stamped term 
``PRIORITY DOCUMENT''. 



A189303c3.bmp 



A189303c3.end 



If applicant has not forwarded a certified copy of the priority 
application  in time for the International Bureau to forward it to the 
U.S. Designated Office  with the copy of the international application, 
then applicant will have to  provide a certified copy of the priority 
document during the national stage  to fulfill the requirement of 
paragraph  (b) of 35 U.S.C. 119. 

Priority Claim Under 35 U.S.C. 120 

A national stage application may include a priority claim under 35 U.S.C. 
120  to a prior U.S. national application or to a prior international 
application  designating the U.S.  The conditions for according benefit 
under 35 U.S.C.  120 are as described in MPEP w 201.07, 
w 201.08, and w 201.11 and are similar regardless of whether the U.S. 
national  application is a national stage application filed under 35 
U.S.C. 371 or a  national application filed under 35 U.S.C. 111(a). 

For a national stage application (of international application ``X'') to 
obtain  benefit under 35 U.S.C. 120 of a prior U.S. national application, 
the international  application (``X") must include an appropriate 
reference to the prior U.S.  national application, be copending with the 
prior U.S. national application,  and have at least one inventor in common 
with the prior U.S. national application,  MPEP w 201.11. The prior U.S. 
national application is copending with the national  stage application if 
the prior U.S. national application was pending on the  international 
filing date. 

If a national stage application includes a priority claim under 35 U.S.C. 
120  to a prior  international application, the examiner must ascertain 
whether 
(1) the first international application was copending (not abandoned or 
withdrawn)  with the second international application claiming benefit 
under 35 U.S.C.  120, and (2) the prior international application 
designated the U.S. 
Note, a national stage application filed under 
35 U.S.C. 371 may not claim benefit of the filing date of the 
international  application (of which it is the national stage) since its 
filing date is the  date of filing of that international application; see 
also MPEP w 1893.03(b). 
 Stated differently, since the international application is not an earlier 
 application (it has the same filing date as the national stage), a 
priority  claim in the national stage to the international application is 
inappropriate. 
For a comparison with 35 U.S.C. 120 priority claims in a national 
application  filed under 35 U.S.C. 111(a), see MPEP # 1895. 


>1893.03(d)  Unity of Invention [R-1] 


37 CFR 1.499.     Unity of invention during the national stage 

If the examiner find that a national stage application lacks unity of 
invention  under w 1.475, the examiner may in an Office action require the 
applicant in  the response to that action to elect the invention to which 
the claims shall  be restricted. Such requirement may be made before any 
action on the merits  but may be made at any time before the final action 
at the discretion of the  examiner. Review of any such requirement is 
provided under ww 1.143 and 1.144. 
PCT Rule 13 was amended effective 01 July 1992 
37 CFR 1.475 was amended effective 01 May 1993 to correspond to PCT Rule 
13. 

Examiners are reminded that unity of invention (not restriction) practice 
is  applicable in international applications (both Chapter I and II) and 
in national  stage (filed under 35 U.S.C. 371) applications.  Restriction 
practice continues  to apply to U.S. national applications filed under 35 
U.S.C. 111 >(a)<. 
When making a lack of unity of invention requirement, the examiner must 
(1)  list the different groups of claims and (2) explain why each group 
lacks unity  with each other group (i.e., why there is no single general 
inventive concept)  specifically describing the unique special technical 
feature in each group. 
The principles of unity of invention are used to determine the types of 
claimed  subject matter and the combinations of claims to different 
categories of invention  that are permitted to be included in a single 
international or national stage  patent application. The basic principle 
is that an application should relate  to only one invention or,  if there 
is more than one invention, that applicant  would have a right to include 
in a single application only those inventions  which are so linked as to 
form a single general inventive concept. 
A group of inventions is considered linked to form a single general 
inventive  concept where there is a technical relationship among the 
inventions that involves  at least one common or corresponding special 
technical feature. The expression 
 special technical features  is defined as meaning those technical 
features  that define the contribution which each claimed invention, 
considered as a  whole, makes over the prior art. For example, a 
corresponding technical feature  is exemplified by a key defined by 
certain claimed structural characteristics which correspond to the 
claimed features of a lock to be used with the claimed key.  Note also 
examples  1-17 of Annex B Part 2 of the PCT Administrative Instructions as 
amended 01  July 1992 contained in Appendix AI of the MPEP. 

  A process is ``specially adapted" for the manufacture of a product if 
the  claimed process inherently produces the claimed product with the 
technical  relationship being present between the claimed process and the 
claimed product. 
 The expression ``specially adapted" does not imply that the product could 
 not also be manufactured by a different process. 

An apparatus or means is  specifically designed  for carrying out the 
process  when the apparatus or means is suitable for carrying out the 
process with the  technical relationship being present between the claimed 
apparatus or means  and the claimed process. The expression  specifically 
designed does not imply  that the apparatus or means could not be used for 
carrying out another process,  nor does it imply that the process could 
not be carried out using an alternative  apparatus or means. 

Note, the determination regarding unity of invention is made without 
regard  to whether a group of inventions is claimed in separate claims or 
as alternatives  within a single claim. The basic criteria for unity of 
invention are the same,  regardless of the manner in which applicant 
chooses to draft a claim or claims. 

>1893.03(e)  Papers Received from the International Bureau and Placed in a 
U.S. National Stage Application File [R-2] 

The national stage application includes papers forwarded by the 
International  Bureau and papers from applicant.  Some of the papers from 
the International  Bureau are identified in this section with a brief note 
as to their importance  to the national stage application. The examiner 
should review each such paper  and the important aspect indicated. 

The  Pamphlet 

The Pamphlet includes (1) a cover page with the  applicant/inventor data, 
the  application data (serial number, filing date, etc.) and the Abstract 
(and,  if appropriate, a figure of drawing), (2) the description, claims 
and drawing  parts of the international application, and (3) the search 
report (Form PCT/ISA/210). 
 The cover page is important as a source of the correct application data, 
most  importantly the filing date and priority date accorded to the 
international  application. The description, claims and drawing parts of 
the international  application reflect the application subject matter on 
the international filing  date and are important for comparison with any 
amendments to check for new  matter.  The search report reflects the 
International Searching Authority's  opinion regarding the prior art. 

The International Preliminary Examination Report 

If the international application underwent preliminary examination, the 
International  Preliminary Examination Report (Form PCT/IPEA/409) reflects 
the International  Preliminary Authority's non-binding opinion regarding 
novelty, inventive step  and industrial applicability. The examiner may 
adopt any portion or all of  this opinion upon consideration in the 
national stage so long as it is consistent  with U.S. practice. The 
examiner should comment upon the Report in the first  Office action on the 
merits to reflect that the Report has been considered. 
 The comment may be a mere acknowledgement. 

The Priority Document 

See the discussion in MPEP w 1893.03(c). 

Notification of Withdrawal (PCT/IB/307) 

If the national stage application papers include a notification of 
withdrawal,  the examiner must check the date of receipt of the 35 U.S.C. 
371 requirements 
(the 371 date) on Form PCT/DO/EO/903 to be sure that the 371 date is not 
later  than the date of withdrawal.  If it is later, the national stage 
application  must be returned to the **>PCT Legal Office< for a decision 
regarding the propriety  of entry into the national stage. 


>1893.03(f)  Drawings and PCT Rule 11 


The drawings for the national stage application must comply with PCT Rule 
11.  The copy of the drawings provided by the International Bureau has 
already been  checked and should be in compliance with Rule 11. 
Accordingly, the drawing  provided by the International Bureau should be 
acceptable. Sometimes, applicant  submits a drawing for use in the 
national stage application and a check will  be made by the Official 
Draftsman.  The Official Draftsman may not impose requirements beyond 
those imposed by the  Patent Cooperation Treaty (e.g. PCT Rule 11). The 
examiner does indeed have  the authority to require new or more acceptable 
drawings if the drawings were  published without meeting all requirements 
under the PCT for drawings. Unless  the applicant requests the use of 
drawings which he or she has submitted, the  drawings to be employed in 
the national stage are those which are a part of  the Article 20 
communication. 


>1893.03(g)  Information Disclosure Statement in a National Stage 
Application 

An extensive discussion of Information Disclosure Statement practice is to 
 be found in MPEP w 609. Although not specifically stated therein, the 
duty  to disclose information material to patentability as defined in 37 
CFR 1.56  is placed on individuals associated with the filing and 
prosecution of a national  stage application in the same manner as for a 
domestic national application.  The declaration requires the same 
averments with respect to the duty under 
 37 CFR 1.56. 

When an international application is filed under the Patent Cooperation 
Treaty 
(PCT), prior art documents may be cited by the examiner in the 
international  search report and/or the international preliminary 
examination report. When  a national stage application is filed under 35 
U.S.C. 371, or a national application  is filed under 
35 U.S.C. 111 claiming benefit of the filing date of the international 
application,  it is often desirable to have the examiner consider the 
documents cited in  the international application when examining the 
national application. 
As a result of an agreement among the European Patent Office (EPO), 
Japanese  Patent Office (JPO), and the United States Patent Office 
(USPTO), copies of  documents cited in the international search report 
issued by any one of these  International Searching Authority Offices 
generally are being sent to  the  other Offices when designated in the 
international application. Accordingly,  in many national stage 
applications where the international search was conducted  by the  EPO, 
JPO, or USPTO, copies of the documents cited in the international  search 
report are made available to the examiner in the national stage 
application. 
When all the requirements for a national stage application have been 
completed,  applicant is notified (Form PCT/DO/EO/903) of the acceptance 
of the application  under 35 U.S.C. 371, including an itemized list of the 
items received. The  itemized list includes an indication of whether a 
copy of the international  search report and copies of the references 
cited therein are present in the  national stage file.  The examiner will 
consider the documents cited in the  international search report, without 
any further action by applicant under  37 CFR 1.97 and 1.98, when both the 
international search report and copies  of the documents are indicated to 
be present in the national stage file.  The  examiner will note the 
consideration in the first Office action. Otherwise,  applicant must 
follow the procedure set forth in 37 CFR 1.97 and 1.98 in order  to ensure 
that the examiner considers the documents cited in the international 
search report. 

This practice applies only to documents cited in the international search 
report  relative to a national stage application filed under 35 U.S.C. 
371.  It does  not apply to documents cited in an international 
preliminary examination report  that are not cited in the search report. 
It does not apply to applications  filed under 35 U.S.C. 111 claiming the 
benefit of an international application  filing date. 


>1895    A Continuation or Continuation-In-Part Application of a PCT 
Application Designating the United States [R-2] 

It is possible to file a U.S. national application under 
35 U.S.C. 111>(a)< during the pendency (prior to the abandonment) of an 
international  application which designates the United  States without 
completing the requirements  for entering the national stage under 35 
U.S.C. 371(c). The ability to take  such action is based on provisions of 
the United States patent law. 35 U.S.C.  363 provides that "[a]n 
international application designating the United States  shall have the 
effect, from its international filing date under article 11  of the 
treaty, of a national application for patent regularly filed in the 
Patent and Trademark Office...." 35 U.S.C. 371(d) indicates that failure 
to  timely comply with the requirements of 
35 U.S.C. 371(c)  shall be regarded as abandonment...by the parties 
thereof...  .  It is therefore clear that an international application 
which designates  the United States has the effect of a pending U.S. 
application from the international  application filing date until its 
abandonment as to the United States. The first sentence of 35 U.S.C. 
365(c) specifically  provides that "[i]n accordance with the conditions 
and requirements of section  120 of this title,... a national application 
shall be entitled to the benefit  of the filing date of a prior * 
international application designating the United  States." The condition 
of 35 U.S.C. 120 relating to the time of filing requires  the later 
application to be filed before the patenting or abandonment of or 
termination of proceedings on the first application.... The filing of 
continuations  and continuations-in-part of a PCT application designating 
the U.S. was used  primarily in instances where there was difficulty in 
obtaining a signed oath  or declaration by the expiration of the time for 
entry into the national stage. 
 Since applicants are now notified of missing or defective oaths or 
declarations  and/or translations, and are given a time period to respond 
which is extendable  under 
37 CFR 1.136(a), the use of this practice may well 
diminish. 

A continuing application under 35 U.S.C. 365(c) and 120 must be filed 
before  the abandonment or patenting of the prior application. 

To obtain benefit under 35 U.S.C. 120, the continuing U.S. national 
application  must (1) include an appropriate reference to the prior 
application, (2) be  copending with the prior application, and (3) have at 
least one inventor in  common with the prior application, MPEP # 201.11. A 
U.S. national application  is copending with an international application 
if the prior international application  was pending on the filing date of 
the subsequent U.S. national application. 


If the prior application is an international application, the examiner 
must  ascertain (2) and (3) above by either examining the national stage 
application  file of the international application, or by examining the 
international application  file, or requiring applicant to submit 
sufficient proof that the international  application was copending with 
the U.S. national (35 U.S.C. 111(a)) application  claiming benefit under 
35 U.S.C. 120. If the parent international application  was not copending 
(i.e., abandoned or withdrawn), benefit under 35 U.S.C. 120 is not possible. 

If priority is claimed under 35 U.S.C. 120 in a third U.S. national 
application  to a first national or international application via a second 
international  application, the examiner must examine the second 
international application  to see if it contains a proper reference for 
benefit under 35 U.S.C. 120 of  the first filed application. The second 
international application must include  an appropriate reference in the 
Request to the prior U.S. national application.  The appropriate reference 
in the Request should identify the parent application  and include an 
indication that it is a continuation or continuation-in-part  of the first 
filed U.S. application, PCT Rule 4.14.  In order for the examiner  to 
determine if the international application meets the above noted 
requirements,  the examiner should review the copy of the Request form in 
the international  application file or the cover page of the published 
international application.  If the copy is not in the file, the 
International Division may obtain a copy  from the International Bureau. 


>1895.01       Handling of and Considerations In the Handling of National 
Applications Under 35 U.S.C. 371 and 35 U.S.C. 111(a) Continuations and 
Continuations-In-Part of a PCT Application [R-2] 

A national application can be either a national stage application 
*>submitted<  under 35 U.S.C. 371 or a national application filed under 35 
U.S.C. 111(a). 
NATIONAL APPLICATIONS SUBMITTED 
UNDER 35 U.S.C. 371 

These applications are the result of an international application filed 
under  the PCT entering the national stage in the addition, a 
``Notification of Acceptance  of Application under 35 U.S.C. 371 and 37 
CFR 1.494 or 1.495" (Form PCT/DO/EO/903)  is placed in the file. 

A typical time line involving an international and a 
national stage application is illustrated as follows 

F18950124.bmp 



F18950124.end 

Although the illustrated time line is typical, there is no requirement 
that  there be a priority application, nor is there any requirement that 
the national  stage application be *>submitted< after the international 
application is published. 
National stage applications submitted under 35 U.S.C. 371 are treated 
differently  in certain respects than national applications filed under 35 
U.S.C. 111(a).  The following examples involve situations where treatment of 
35 U.S.C. 371 applications differs from treatment of 
35 U.S.C. 111(a) applications: 

1.  FILING DATE AS APPLICANT'S DATE OF 
        INVENTION 

By virtue of 35 U.S.C. 363, the U.S. filing date of a national stage 
application  is the international filing date (the filing date of the 
international application)  for the purpose of determining whether 
information is prior art (i.e., has  an effective date) relative to the 
invention claimed in the national stage  application. The date which 
appears in the  filing date  box on the front of  the file wrapper of a 
national stage application, however, is the date on which  the 
requirements of 35 U.S.C. 371(c) were complied with, and typically is not 
the same as the international filing date of the application. The 
international  filing date is the critical date for determining whether or 
not a particular  reference is available as prior art against the 
application. The international  filing date will appear next to the 
international application number in the  CONTINUING DATA  section on the 
file wrapper label and in the  Notification  of Acceptance of Application 
under 35 U.S.C. 371 and 37 CFR 1.494 or 1.495 
 (Form PCT/DO/EO/903). 

2.  35 U.S.C. 119 PRIORITY IN NATIONAL STAGE            APPLICATION 
The filing date of a national stage application is the international 
filing  date. Therefore, a priority claim is proper if (a) a claim for 
priority was  made in the international application, and (b) the 
application was filed within  12 months prior to the international filing 
date (assuming that the other conditions  of 35 U.S.C. 119 are satisfied). 
The examiner should acknowledge the priority  claim and priority document 
in the next Office action and on the file wrapper  as in any 35 U.S.C. 119 
situation, if appropriate. 

3.  PRIORITY DOCUMENT 

In national stage applications, a photocopy of the foreign priority 
document  is received from the International Bureau and placed in the 
national stage  application file.  This copy of the foreign priority 
document is sufficient  to satisfy the requirement of 35 U.S.C. 119(b) 
that a certified copy be provided.  The copy received from the 
International Bureau bears a  WIPO  stamp.  If a  copy of the foreign 
priority document is not in the national stage application  file, the 
examiner should consult the Group's Special Program Examiner.  A 
certified copy of a priority document filed as a U.S. provisional 
application  under 35 U.S.C. 111(b) is not required under 35 U.S.C. 119(e). 

4.  UNITY OF INVENTION 

Restriction practice in both international and national stage applications 
 is determined under unity of invention principles as set forth in 37 CFR 
1.475  and 1.499.  Restriction practice under 35 U.S.C. 121, as it applies 
to national  applications submitted under 35 U.S.C. 111(a), is not 
applicable to either  international or national stage applications. 
However, a continuing application  claiming benefit under 35 U.S.C. 365(c) 
to an international application or  to a national stage application is not 
a national stage application and, therefore,  the restriction practice 
under 35 U.S.C. 121 is applicable. 

5.  FILING DATE FOR PRIOR ART PURPOSES 
        UNDER 35 U.S.C. 102(e) 

Once a patent issues from a national stage application, the filing date 
for  prior art purposes under 35 U.S.C. 102(e) is not the international 
filing date,  but is the date on which the requirements of 35 U.S.C. 
371(c)(1), (2) and (4)  were met (copy of the international application 
with any necessary translation,  national fee and oath or declaration were 
filed). The 35 U.S.C. 102(e) date  for prior art purposes is listed on the 
first page of the patent.   An applicant  may establish a filing date for 
prior art purposes under 35 U.S.C. 102(e) by  satisfying the requirements 
of 35 U.S.C. 371 long before the expiration of  20 or 30 months from the 
priority date.  However, as the international application  is usually 
published approximately 18 months from the priority date, this publication 
 generally will have an earlier date for prior art purposes than the 35 
U.S.C.  102(e) date of the U.S. patent.  A copy of the published 
international application  can be obtained through the Foreign Patents 
Section of the Scientific and Technical  Information Center (STIC). The 
publication number and publication date appear  on the first page of the 
patent. 


>6.   INTERNATIONAL PUBLICATION NUMBER 
        AND THE PUBLICATION DATE 

The International Publication Number and the Publication Date MUST be in 
the  national stage application if the application is allowed.  The 
International  Publication Number and the Publication date can be found in 
the DO/US Worksheet  WIPO Publication block.  If the Publication Number 
and the Publication date  are not found on the worksheet or if the work 
sheet is missing, the information  may be taken either from the 
International Publication or the PCT Gazette page. 
 The Examiner should ensure that the International Publication Number and 
the  Publication date are in one of these three locations before the 
application  is sent to Issue Branch.< 

CONTINUATION, CIP, OR DIVISION OF 
INTERNATIONAL APPLICATION 

Rather than filing a national stage application, a  continuing application 
(i.e., continuation, C-I-P, or division) under 35 U.S.C. 111(a) of the 
international  application may be filed.  Pursuant to 35 U.S.C. 365(c), a 
regular national  application filed under 35 U.S.C. 111(a) and 37 CFR 1.53 
(not 37 CFR 1.60 or  1.62) may claim benefit of the filing date of an 
international application  which designates the United States. 

A typical time line involving a continuing application filed during the 
pendency  of an international application is illustrated as follows: 

F18960025.bmp 



F18960025.end 

The continuing application must be filed before the international 
application  becomes abandoned as to the U.S. as set forth in 37 CFR 1.494 
and 1.495.  An  appropriate sentence (such as ``This is a continuation of 
International Application  PCT/EP90/00000, with an international filing 
date of January 4, 1990, now abandoned.'')  must appear at the beginning 
of the specification. In addition, all other conditions  of 35 U.S.C. 120 
(such as having at least one common inventor) must be satisfied. 
 A copy of the international application (and an English translation) may 
be  required by the examiner to perfect the claim for benefit under 35 
U.S.C. 120  and 365(c) if necessary, for example, where an intervening 
reference is found  and applied in a rejection of one or more claims. 

A claim for foreign priority under 35 U.S.C. 119 must be made in the 
continuing  application in the same manner as in a national stage 
application.  In the  same manner as with a national stage application,  a 
foreign priority claim  is proper if (1) a claim for foreign priority was 
made in the international  application, and (2) the foreign application 
was filed within 12 months prior  to the international filing date.  A 
certified copy of any foreign priority  document must be provided by the 
applicant if the parent international application  has not entered the 
national stage under 35 U.S.C. 371 (the photocopy received  from the 
International Bureau cannot be used).  If the parent international 
application has entered the national stage under 35 U.S.C. 371, the 
applicant,  in the continuing application, may state that the priority 
document is contained  in the national stage application. 

35 U.S.C. 119  PRIORITY CLAIM TO 
INTERNATIONAL APPLICATION IN 
35 U.S.C. 111(a) NATIONAL APPLICATION 

An application filed under 35 U.S.C. 111(a) may make a claim for foreign 
priority  under 35 U.S.C. 119 to an international application which 
designates at least  one country other than  the United States (the U.S. 
may also be designated)  35 U.S.C. 365(c)).  In this situation, applicant 
must file a certified copy  of the international application in the 
application filed under 35 U.S.C. 111(a)  and the applicant must satisfy 
all other requirements of 35 U.S.C. 119.  A  typical time line for this 
situation is illustrated as follows: 

F18960026.bmp 



F18960026.end 

The examiner should acknowledge the priority claim and priority document 
in  the next Office action and on the file wrapper as in any 35 U.S.C. 119 
situation,  if appropriate. 


>1896    The Differences Between (1) a National Application Filed Under 35 
U.S.C. 111(a) and (2) a National Stage Application Under 35 U.S.C. 371 
[R-2] 

The following section describes the differences between a U.S. national 
application  filed under 35 U.S.C. 111(a), including those claiming 
benefit of a PCT application  under 35 U.S.C. 120 (a continuation or a 
continuation-in-part of a PCT application),  and a U.S. national stage 
application (filed under 35 U.S.C. 371). 
Chart of Some Common Differences 

B18960027.bmp 



B18960027.end 

The differences between a national application filed under 35 U.S.C. 
111(a)  and a national stage application filed under 35 U.S.C. 371 are 
often subtle,  but the differences are important. 

Filing Date  The filing date of a 35 U.S.C. 111(a) application is the date 
 when PTO receives a specification, claims, and any drawings filed in the 
name  of the inventors. 

The filing date of a PCT international application is the date applicant 
satisfies  Article 11 requirements; i.e., includes a specification, 
claims, U.S. residency  or nationality, prescribed language, designation 
of a contracting state, and  names of the applicant. 

In this regard, note that 35 U.S.C. 363  provides that, 

An international application designating the United States shall have the 
effect,  from its international filing date under Article 11 of the 
treaty, of a national  application for patent regularly filed in the 
Patent and Trademark Office except  as otherwise provided in section 
102(e) of this title. 

Similarly, PCT Article 11(3) provides that 

...an international filing date shall have the effect of a regular 
national  application in each designated State as of the international 
filing date, which  date shall be considered to be the actual filing date 
in each designated State. 


Effective Date as a reference.  When a U.S. national application filed 
under  35 U.S.C. 111(a) becomes a U.S. patent, its effective date as a 
prior art reference  against a pending application is its effective filing 
date; see 35 U.S.C. 102(e). 
 Thus if the 35 U.S.C. 111(a) application claims the benefit of a prior 
application,  e.g., a copending PCT international application or a 
copending provisional  application, its effective date as a reference will 
be the filing date of the  prior application. When a U.S. national stage 
application filed under 35 U.S.C.  371 becomes a U.S. patent, its 
effective date as a prior art reference against  a pending application is 
the date applicant fulfilled the requirements of 35  U.S.C. 371(c)(1) (the 
basic national fee), (c)(2) (copy of the international  application and a 
translation into English if filed in another language), and 
(c)(4) (an oath or declaration of the inventor), see 35 U.S.C. 102(e). 
35 U.S.C. 119 Priority Requirements.  The certified copy of the foreign 
priority  application must be provided to the Office by applicant in a 
U.S. national  application filed under 35 U.S.C. 111(a). Where applicant 
filed an international application claiming priority to an earlier filed 
national application,  the certified copy of the priority application is 
required to be provided to  the International Bureau by applicant during 
the international stage.  The  International Bureau (WIPO) then sends a 
copy of the certified copy of the  priority application to each designated 
office for inclusion in the national  stage application.  A U.S. national 
stage application filed under 35 U.S.C.  371 will have a photocopy of the 
priority document with the first page stamped  by the International Bureau 
to indicate that it is a priority document received  by WIPO and the date 
of such receipt.  Such a photocopy is acceptable in a  U.S. national stage 
application to meet the 35 U.S.C. 119(b) requirement for  a certified copy 
of the priority document.  If the photocopy is missing from  the national 
stage application file, either the document has been misplaced  or it was 
not provided due to a defect in priority during the international  stage. 
If the priority claim was not in accordance with PCT Rule 4.10 or the 
priority document was not provided in accordance with PCT Rule 17, the 
photocopy  of the priority document will not have been provided by the 
International Bureau. 
Unity of Invention.  U.S. national applications filed under 35 U.S.C. 
111(a)  are subject to restriction practice in accordance with 37 CFR 
1.141-1.146,  see MPEP 
w 803.  U.S. national stage applications filed under 35 


U.S.C. 371 are subject to unity of invention practice in accordance with 
37  CFR 1.475 & 1.499 (effective 01 May 1993). 

Filing Fees.  U.S. national applications filed under 
35 U.S.C. 111(a) are subject to the national application filing fees set 
forth  at 37 CFR 1.16.  U.S. national stage applications filed under 35 
U.S.C. 371  are subject to the national stage fees prescribed at 37 CFR 
1.492. 
Reference to application in declaration. Applicant's oath or declaration 
is  required to identify the specification to which it is directed (37 CFR 
1.63(a)(2)). 
 The specification may be identified in a U.S. national application filed 
under  35 U.S.C. 111(a) by reference to an attached specification or by 
reference  to the serial number and filing date of a specification 
previously filed in  the Office.  MPEP w 601.01>(a)< gives the minimum 
requirements for identification  of the specification. U.S. national stage 
applications filed under 35 U.S.C.  371 may identify the specification (in 
the oath or declaration) in the same  manner as applications filed under 
35 U.S.C. 111(a) and in  addition may identify  the specification by 
reference to the *>application< number and filing date  of the 
international application. 







Contents 

1901        Protest Under 37 CFR 1.291 

1901.01     Who Can Protest 

1901.02     Information Which Can Be Relied on in Protest 

1901.03     How Protest Is Submitted 

1901.04     When Should the Protest be Submitted 

1901.05     Initial Office Handling and Acknowledgment of Protest 
1901.06     Examiner Treatment of Protest 

1901.07     Protestor Participation in the Examination 

1901.07(a)  Service of Copies 

1901.07(b)  Protests Limited to Single Submission 

1902        Protestor Participation in Interviews 

1902.01     Guidelines for Inter Partes Interviews 

1902.01(a)  Justifying Circumstances for Inter Partes Interviews 

1902.01(b)  Circumstances Where Inter Partes Interviews 
            Would Normally Not Be Justified 

1902.01(c)  Notice of Interviews 

1903        Guidelines for Conducting Interviews 

1903.01     Record of Interviews 

1904        Protestor Participation Before the Board of Patent 
            Appeals and Interferences 

1906        Supervisory Review of an Examiner's Decision 
            Adverse to Protestor 

1907        Unauthorized Participation by Protestor 

1920        Citation of Prior Art Under 37 CFR 1.501(a) 


1901    Protest Under 37 CFR 1.291 [R-2] 


37 CFR 1.291    . Protests by the public against pending applications. 
        (a) Protests by a member of the public against pending 
applications  will be referred to the examiner having charge of the 
subject matter involved.  A protest specifically identifying the 
application to which the protest is  directed will be entered in the 
application file if: 

        (1) The protest is timely submitted; and 

        (2) The protest is either served upon the applicant in accordance 
with  w 1.248, or filed with the Office in duplicate in the event service 
is not  possible. Protests raising fraud or other inequitable conduct 
issues will be  entered in the application file, generally without comment 
on those issues.  Protests which do not adequately identify a pending 
patent application will  be disposed of and will not be considered by the 
Office. 

        (b) A protest submitted in accordance with the second sentence of 
paragraph 
(a) of this section will be considered by the Office if it includes (1) a 
listing  of the patents, publications or other information relied upon; 
(2) a concise  explanation of the relevance of each listed item; (3) a 
copy of each listed  patent or publication or other item of information in 
written form or at least  the pertinent portions thereof; and (4) an 
English language translation of  all the necessary and pertinent parts of 
any non-English language patent, publication,  or other item of 
information in written form relied upon. 

        (c) A member of the public filing a protest in an application 
under  paragraph (a) of this section will not receive any communications 
from the  Office relating to the protest, other than the return of >a< 
self-addressed  postcard which the member of the public may include with 
the protest in order  to receive an acknowledgement by the Office that the 
protest has been received.  The Office may communicate with the applicant 
regarding any protest and may  require the applicant to respond to 
specific questions raised by the protest.  In the absence of a request by 
the Office, an applicant has no duty to, and  need not, respond to a 
protest. The limited involvement of the member of the  public filing a 
protest pursuant to paragraph (a) of this section ends with  the filing of 
the protest, and no further submission on behalf of the protestor 

will be considered unless such submission raises new issues which could 
not  have been earlier presented. 

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

        (a) Service of papers must be on the attorney or agent of the 
party  if there be such or on the party if there is no attorney or agent, 
and may  be made in any of the following ways: 

        (1) By delivering a copy of the paper to the person served; 
        (2) By leaving a copy at >the<usual place of business of the 
person  served with someone in his employment; 

        (3) When the person served has no usual place of business, by 
leaving  a copy at the person's residence, with some person of suitable 
age and discretion  who resides there; 

        (4) Transmissions by first class mail. When service is by mail the 
 date of mailing will be regarded as the date of service. 

        (5) Whenever it shall be satisfactorily shown to the Commissioner 
that  none of the above modes of obtaining or serving the paper is 
practicable, service  may be by notice published in the Official Gazette. 

        (b) Papers filed in the Patent and Trademark Office which are 
required  to be served shall contain proof of service. Proof of service 
may appear on  or be affixed to papers filed. Proof of service shall 
include the date and  manner of service. In the case of personal service, 
proof of service shall  also include the name of any person served, 
certified by the person who made  service. Proof of service may be made 
by>:< (1) An acknowledgement of service  by or on behalf of the person 
served or (2) *>A< statement signed by the attorney  or agent containing 
the information required by this section. 

        (c) See w 1.646 for service of papers in interferences. 

        See 37 CFR 1.646 for service of papers in interferences. 

        37 CFR 1.291(a) gives recognition to the value of written protests 
 in bringing information to the attention of the Office and in avoiding 
the  issuance of invalid patents. 37 CFR 1.291(a) provides that public 
protests  against pending applications will be referred to the examiner 
having charge  of the subject matter involved and will, if timely 
submitted and either served  upon the applicant or filed in duplicate in 
the event service is not possible,  be entered in the application file. 
Paragraph (b) of 37 CFR 1.291 assures members  of the public that a 
protest will be fully considered by the Office if it is  submitted in 
accordance with 37 CFR 1.291(a) and includes (1) a listing of  the 
patents, publications, or other information relied on; (2) a concise 
explanation  of the relevance of each listed item; (3) a copy of each 
listed patent, publication,  or other item of information in written form, 
or at least the pertinent portions  thereof; and (4) an English language 
translation of all necessary and pertinent  parts of any non-English 
language document relied on. A party obtaining knowledge of an application 
pending in the Office may file  a protest against the application and may 
therein call attention to any facts  within protestor's knowledge which, 
in protestor's opinion, would make the  grant of a patent thereon improper. 

        A protestor does not, however, by the mere filing of a protest, 
obtain  the "right" to argue the protest before the Office. The degree of 
participation  allowed a protestor is, of course, solely within the 
discretion of the Commissioner  of Patents and Trademarks, and the 
Commissioner exercised his discretion to  restrict such participation 
effective December 8, 1981: "Interim Reissue, .  . . Protest, And 
Examination Procedures. . . .", 1013 O.G. 18-19; Final rule:  "Reissue, 
Reexamination, Protest and Examination Procedures in Patent Cases", 47 
Fed. Reg. 21746-21753, May 19, 1982. As provided effective December 8, 
1981  in said "Interim . . . Protest . . . Procedures", and in 37 CFR 
1.291(c), active participation by a protestor  "ends with the filing of 
the protest and no further submission on behalf of  the protestor will be 
considered unless such submission raises new issues which  could not have 
been earlier presented, and thereby constitutes a new protest."  37 CFR 
1.291(c) provides for the acknowledgment of the receipt of a protest  in 
an original or a reissue application file only if a self-addressed 
postcard is included with the protest (see MPEP w 1901.05).  The  question 
of whether or not a patent will issue is a matter between the applicant 
and the Office acting on behalf of the public. 


1901.01       Who Can Protest 


        Any member of the public, including private persons, corporate 
entities,  and government agencies, may file a protest under 37 CFR 1.291. 
 A protest  may be filed by an attorney or other representative on behalf 
of an unnamed  principal since 37 CFR 1.291 does not require that the 
principal be identified. 

1901.02        Information Which Can Be Relied on in Protest 


        Any information which, in the protestor's opinion, would make the 
grant  of a patent improper can be relied on in a protest under 37 CFR 
1.291(a).   While prior art documents, such as patents and publications, 
are most often  the subject of protests, 37 CFR 1.291(a) is not limited to 
prior art documents.  Protests may be based on any facts or information 
adverse to patentability.  The content and substance of the protest are 
more important than whether prior  art documents, or some other form of 
evidence adverse to patentability, are  being relied on.  The Office 
recognizes that when evidence other than prior  art documents is relied 
on, problems may arise as to authentication and the  probative value to 
assign to such evidence. However, the fact that such problems  may arise, 
and have to be resolved, does not preclude the Office from considering 
such evidence, nor does it mean that such evidence cannot be relied on in 
a  protest under 37 CFR 1.291. Information in a protest should be set 
forth in  the manner required by 37 CFR 1.291(b). 

        The following are examples of the kinds of information, in 
addition  to prior art documents, which can be relied on in a protest 
under 37 CFR 1.291(a): 
        (1) Information demonstrating that the subject matter to which the 
 protest is directed was publicly "known or used by others in this country 
.  . . before the invention thereof by the applicant for patent" and is 
therefore  barred under 35 U.S.C. 102(a) and/or 103. 

        (2) Information that the invention was "in public use or on sale 
in  this country, more than 1 year prior to the date of the application 
for patent  in the United States" (35 U.S.C. 102(b)). 

        (3) Information that the applicant "has abandoned the invention" 
(35  U.S.C. 102(c)) or "did not himself invent the subject matter sought 
to be patented" 
(35 U.S.C. 102(f)). 

        (4) Information relating to inventorship under 
35 U.S.C. 102(g). 

        (5) Information relating to sufficiency of disclosure or failure 
to  disclose best mode, under 35 U.S.C. 112. 

        (6) Any other information demonstrating that the application lacks 
 compliance with the statutory requirements for patentability. 

        (7) Information indicating "fraud" or "violation of the duty of 
disclosure"  under 37 CFR 1.56 may be the subject of a protest under 37 
CFR 1.291(a). 
        Different forms of evidence may accompany, or be submitted as a 
part  of a protest under 37 CFR 1.291(a).  Conventional prior art 
documents such  as patents and publications are the most common form of 
evidence.  However,  other forms of evidence can likewise be submitted. 
Some representative examples  of other forms of evidence are 
litigation-related materials such as complaints,  answers, depositions, 
answers to interrogatories, exhibits, transcripts of  hearings or trials, 
court orders and opinions, stipulations of the parties, etc.  Where only a 
portion of the  litigation-related materials is relevant to the protest, 
protestors are encouraged  to submit only the relevant portion(s). 

        In a protest based on an alleged public use or sale by, or on 
behalf  of, the applicant or applicant's assignee, evidence of such public 
use or sale  may be submitted along with affidavits or declarations 
identifying the source(s)  of the evidence and explaining its relevance 
and meaning.  Such evidence might  include documents containing offers for 
sale by applicant or applicant's assignee,  orders, invoices, receipts, 
delivery schedules, etc. The Office will make a  decision as to whether or 
not public use or sale has been established based  on the evidence the 
Office has available. If applicant denies the authenticity  of the 
documents and/or evidence, or if the alleged public use and/or sale  is by 
a party other than applicant or applicant's assignee, protestor may find 
it desirable or necessary to proceed via 37 CFR 1.292 (public use 
proceedings)  rather than by a protest under 37 CFR 1.291. 

        While the forms in which evidence and/or information may be 
submitted  with, or as a part of, a protest under 37 CFR 1.291(a) are not 
limited, protestors  must recognize that such submissions may encounter 
problems such as establishing  authenticity and/or the probative value to 
apply to the evidence.  Obviously,  the Office will have to evaluate each 
item of evidence and/or information submitted  with a view as to both its 
authenticity and what weight to give thereto. 
        Information which is subject to a court-imposed protective or 
secrecy  order may be submitted with, or as a part of, a protest under 37 
CFR 1.291(a).  Trade secret information which was obtained by a protestor 
through agreements  with others can likewise be submitted.  Such 
information, if submitted, will  be treated in accordance with the 
guidelines set forth in MPEP w 724 and will  be made public if a 
reasonable examiner would consider the information important  in deciding 
whether to allow the application to issue as a patent. 

1901.03       How Protest Is Submitted [R-2] 


        A protest under 37 CFR 1.291(a) must be submitted in writing, must 
 specifically identify the application to which the protest is directed by 
application  number or serial number and filing date, and should include a 
listing of all  patents, publications, or other information relied on; a 
concise explanation  of the relevance of each listed item; an English 
language translation of all  relevant parts of any non-English language 
document; and be accompanied by  a copy of each patent, publication, or 
other document relied on. Protestors  are encouraged to use form PTO-1449 
"Information Disclosure Citation" when  preparing a protest under 37 CFR 
1.291, especially the listing enumerated under  37 CFR 1.291(b)(1); see 
MPEP w 609.  In addition, the protest and any accompanying  papers should 
either (1) reflect that a copy of the same has been served upon  the 
applicant or upon the applicant's attorney or agent of record; or (2) be 
filed with the Office in duplicate in the event service is not possible. 
        It is important that any protest against a pending application 
specifically  identify the application to which the protest is directed 
with the identification  being as complete as possible. If possible, the 
following information should  be placed on the protest: 

        1. Name of Applicant(s). 

        2. Serial number of application (mandatory). 

        3. Filing date of application. 

        4. Title of invention. 

        5. Group art unit number. (If known) 

        6. Name of examiner to whom the application is assigned. (If 
known) 
        7. Current status and location of application. (If known) 
        8. The word "ATTENTION:" followed by the area of the Office to 
which  the protest is directed as set forth below. 

        In addition, to the above information, the protest itself should 
be  clearly identified as a "PROTEST UNDER 37 CFR 1.291(a)."  If the 
protest is  accompanied by exhibits or other attachments, these should 
also contain identifying  information thereon in order to prevent them 
from becoming inadvertently separated  and lost. 

        Any protest can be submitted by mail to the >Assistant< 
Commissioner  * >for< Patents **, Washington, D.C. 20231, and should be 
directed to the attention  of the director of the particular examining 
group in which the application  is pending.  If the protestor is unable to 
specifically identify the application  to which the protest is directed, 
but, nevertheless, believes such an application  to be pending, the 
protest should be directed to the attention of the Office  of 
**>Petitions<, Crystal Park *>1<, Room *>520<, along with as much 
identifying  data for the application as possible. 

        Where a protest is directed to a reissue application for a patent 
which  is involved in litigation, the outside envelope and the top 
right-hand portion  of the protest should be marked with the words 
"REISSUE LITIGATION."  The notations  preferably should be written in a 
bright color with a felt point marker.  Any  "REISSUE LITIGATION" protest 
mailed to the Office should be so marked and mailed  to BOX 7.  However, 
in view of the urgent nature of most "REISSUE LITIGATION"  protests, 
protestor may wish to hand-carry the protest to the appropriate area  in 
order to ensure prompt receipt and to avoid any unnecessary delays.  In 
litigation-type cases, all responses should be hand-carried to the 
appropriate  area in the Office. 

INITIAL PROTEST SUBMISSION MUST BE 
COMPLETE 

        It is extremely important that a protest be complete and contain a 
 copy of every document relied on by protestor, whether the document is a 
prior  art document, court litigation material, affidavit, or declaration, 
etc., since  under 37 CFR 1.291(c) protestor will not be given an 
opportunity to supplement  or complete any protest which is incomplete. 
Active participation by protestor  ends with the filing of the initial 
protest, as provided in 37 CFR 1.291(c),  and no further submission on 
behalf of protestor will be acknowledged or considered  unless such 
submission clearly raises new issues which could not have been  earlier 
presented, and thereby constitutes a new protest.  Protests which will 
not be entered in the application file include those further submissions 
in  violation of 37 CFR 1.291(c) by which protestor seeks to participate 
in the  examination process.  For example, mere arguments relating to an 
Office action  or an applicant's response would not qualify as a new 
protest.  Likewise, additional  comments seeking to bring in further or 
even new data or information with respect  to an issue previously raised 
by protestor would not qualify as a new protest. 
        Even new protests which also argue Office actions or responses or 
any  matter beyond the new issue should not be accepted. Improper protests 
will  be returned by the Examining Group Director. While improper protests 
will be  returned, a new protest by an earlier protestor will be proper 
and can be entered  if it is clearly limited to new issues which could not 
have been earlier presented,  and thereby constitutes a new protest. 

        As indicated in 37 CFR 1.291(b)(3), a protest must be accompanied 
by  a copy of each prior art document relied on in order to ensure 
consideration  by the examiner, although a protest without copies of prior 
art documents will  not necessarily be ignored. This requirement is 
similar to the requirement  of 37 CFR 1.98 that copies of written 
documents accompany information disclosure  statements. While a protest 
without copies of documents will not necessarily  be ignored, the 
submission of such documents with the protest will obviously  expedite and 
ensure consideration of the documents, which consideration might  not 
otherwise occur. Further, some documents which are available to protestor 
may not be otherwise available to the Office. 

        Every effort should be made by a protestor to effect service of 
the  protest upon the attorney or agent of record or upon the applicant if 
no attorney  or agent is of record. Of course, the copy served upon 
applicant or upon applicant's  attorney or agent should be a complete copy 
including a copy of each prior  art or other document relied on in the 
same manner as required by 37 CFR 1.291(a)  for the Office copy. The 
protest filed in the Office should reflect, by an  appropriate 
"Certificate of Service," that service has been made as provided  in 37 
CFR 1.291(a). Only in those instances where service is not possible should 
 the protest be filed in duplicate in order that the Office can attempt 
service. 

1901.04       When Should the Protest Be Submitted 


        A protest under 37 CFR 1.291(a) must be "timely submitted" in 
order  to be ensured of consideration.  As a practical matter, any protest 
should  be submitted as soon as possible after the protestor becomes aware 
of the existence  of the application to which the protest is to be 
directed.  By submitting a  protest early in the examination process, 
i.e., before the Office acts on the  application if possible, the 
protestor ensures that the protest will receive  maximum consideration and 
will be of the most benefit to the Office in its  examination of the 
application. 

        To ensure consideration, protests, whether in original or reissue 
applications,  must be timely submitted, i.e., before final rejection or 
allowance.  Consideration  of protests filed after final rejection or 
allowance will depend upon the nature of the issues raised, the 
materiality of any prior art  or other documents, and the point in time at 
which the protests and documents  are submitted.  Obviously, if the 
serious nature of the issues raised requires  further consideration, or if 
prior art documents clearly anticipate or render  obvious one or more 
claims, the protest will not knowingly be ignored.  It  must be 
recognized, however, that the likelihood of consideration of a protest 
decreases as the patent date approaches. If a protest is not timely 
submitted,  it will be acknowledged as set forth in MPEP w 1901.05 only if 
a self-addressed  postcard is included with the protest, and referred to 
the examiner having  charge of the subject matter involved for entry in 
the application file, for  such consideration as is warranted. 

        A protest with regard to a reissue application should be filed 
within  the 2-month period following announcement of the filing of the 
reissue application  in the Official Gazette. If, for some reason, the 
protest of the reissue application  cannot be filed within the 2-month 
period provided by 37 CFR 1.176, the protest  can be submitted at a later 
time, but protestor must be aware that reissue  applications are "special" 
and a later filed protest may be received after  action by the examiner. 
Any request by a protestor in a reissue application  for an extension of 
the 2-month period following the announcement in the Official  Gazette 
will be considered only if filed in the form of a petition under 37  CFR 
1.182 and accompanied by the petition fee set forth in 37 CFR 1.17(h). 
The petition must explain why the additional time is necessary and the 
nature  of the protest intended. A copy of such petition must be served 
upon applicant  in accordance with 
37 CFR 1.248. The petition should be directed to the appropriate examining 
 group. Any such petition will be critically reviewed as to demonstrated 
need  before being granted since the delay of examination of a reissue 
application  of another party is being requested. Accordingly, the 
requests should be made  only where necessary, for the minimum period 
required, and with a justification  establishing the necessity for the 
extension. 

        If the protest is a "REISSUE LITIGATION" protest, it is 
particularly  important that it be filed early if protestor wishes it 
considered at the time  the Office first acts on the application. 
Protestors should be aware that  the Office will entertain petitions under 
37 CFR 1.183, when accompanied by  the petition fee set forth in 
37 CFR 1.17(h), to waive the 2-month delay period of 37 CFR 1.176 in 
appropriate  circumstances. Accordingly, protestors to reissue 
applications cannot automatically  assume that the full 2-month delay 
period of 
37 CFR 1.176 will always be available. 


1901.05       Initial Office Handling and Acknowledgment of Protest 

Protests Referred to Examiner 

        37 CFR 1.291(a) provides that protests filed against pending 
applications  will be referred to the examiner having charge of the 
subject matter involved.  37 CFR 1.291(a) further provides that a protest 
specifically identifying the  application to which it is directed will be 
entered in the application file,  if (1) the protest is timely submitted 
(see MPEP w 1901.04) and (2) a copy  has been served on applicant in 
accordance with 37 CFR 1.248, or a duplicate  copy is filed with the 
Office in the event service is not possible. 
        A protest where the application is specifically identified which 
is  submitted in conformance with 37 CFR 1.291 (a) and (b), will be 
considered  by the Office. 

Protest Does Not Indicate Service 

        If the protest filed in the Office does not, however, indicate 
service  on applicant or applicant's attorney or agent, and is not filed 
in duplicate,  then the Office will undertake to determine whether or not 
service has been  made by contacting applicant or applicant's attorney or 
agent by telephone  or in writing to ascertain if service has been made. 
If service has not been  made and no duplicate has been filed, then the 
Office may request protestor  to file such a duplicate before the protest 
is referred to the examiner.  Alternatively,  if the protest involves only 
a few pages, the Office may, in its sole discretion,  elect to reproduce 
the protest rather than delay referring it to the examiner.  If duplicate 
protest papers are mailed to applicant or applicant's attorney  or agent 
by the Office, the application file should reflect that fact, either  by a 
letter transmitting the protest or, if no transmittal letter is used, 
simply by an appropriate notation in the "Contents" section of the 
application  file wrapper. 

Acknowledgement of Protest 

        37 CFR 1.291(c) provides that a protestor in an original or 
reissue  application will not receive any communications from the Office 
relating to  the protest, or to the application, other than the return of 
a self-addressed  postcard which protestor may include with the protest in 
order to receive an  acknowledgment that the protest has been received by 
the Office. 

Applications and Status Thereof Maintained in Secrecy 

        The postcard acknowledging receipt of a protest in other than a 
reissue  application will not and must not indicate whether such 
application in fact  exists or the status of any such application.  Office 
employees must exercise  care to ensure that matters relating to 
applications are not discussed with  protestor or communicated in writing 
to protestor.  Original applications are,  of course, required by 35 
U.S.C. 122 to be "kept in confidence by the . . .  Office and no 
information concerning the same given without authority of the  applicant 
or owner unless necessary to carry out the provisions of any Act  of 
Congress or in such special circumstances as may be determined by the 
Commissioner."  Thus, unless a protestor has been granted access to an 
original application,  the protestor is not entitled to obtain from the 
Office any information concerning  the same, including the mere fact that 
such an application exists. Petitions  for access to patent applications 
with the exception of applications involved  in or related to a proceeding 
before the Board of Patent Appeals or Interferences  are decided by the 
Office of the Assistant Commissioner for Patents pursuant  to delegation 
contained in MPEP w 1002.02(a). Reissue applications filed on,  or after, 
March 1, 1977, are pursuant to 37 CFR 1.11(b) "open to inspection  by the 
general public." 

        The Office will communicate with the applicant regarding any 
protest  entered in an application file and may require the applicant to 
supply information  pursuant to 37 CFR 1.291(c), and to 37 CFR 1.175(b) in 
reissue applications,  including responses to specific questions raised by 
the protest, in order for  the Office to decide any issues raised thereby. 
Under 37 CFR 1.291(c), the  examiner can require the applicant to respond 
to the protest and answer specific  questions raised by the protest. 


1901.06       Examiner Treatment of Protest [R-2] 


        Current Office practice as defined in 37 CFR 1.291(a) gives 
recognition  to the value of the written protests in avoiding the issuance 
of invalid patents.  However, the fact that one or more protests has been 
filed in an application,  whether the application is an original 
application or a reissue application,  does not relieve the examiner from 
conducting a normal examination on the merits,  including the required 
search. Evidence submitted in a protest will be considered  on the same 
basis as other ex parte evidence: In re Reuter, 210 USPQ 249, 255 
(C.C.P.A. 1981). 

Initial Review 

        An examiner initially receiving a protest will immediately review 
the  same for the following: 

        (1) To ensure that either the protest or the application file 
wrapper  indicates that a copy of the protest has been served on applicant 
or applicant's  attorney or agent.  If a copy is not indicated as having 
been served on applicant  or applicant's attorney and is not filed in 
duplicate, then the examiner should  undertake to determine whether or not 
service has been made by contacting applicant  or applicant's attorney or 
agent, but not protestor.  If it has, this should  be noted on the protest 
or on the application file.  If service hasn't been  made, the protest and 
application file should be brought to the attention of  the examining 
group director for appropriate action; see MPEP w 1901.05. 
        (2) A protest raising issues of "fraud," ``inequitable conduct," 
or  "violation of duty of disclosure" will be entered in the application 
file,  generally without comments on those issues. 

        If a protest is filed in a reissue application and the reissue 
application  is related to a patent involved in a pending interference 
proceeding, such  application should be referred to the Office of the 
Assistant Commissioner  for Patents before considering the protest and 
acting on the applications. 
Period for Comments by Applicant 

        If the primary examiner's initial review reveals that the protest 
is  ready for consideration during the examination, the examiner may 
nevertheless  consider it desirable, or necessary, to obtain applicant's 
comments on the protest before further action.  In such situations, the 
examiner will  offer applicant an opportunity to file comments within a 
set period, usually  1 month, unless circumstances warrant a longer period. 

        Form Paragraph 19.01 can be used to offer applicant an opportunity 
 to file comments on the protest: 

W 19.01       Period for Comments on Protest by Applicant 

        A protest against issuance of a patent based upon this application 
 has been filed under 37 CFR 1.291(a) on [1], and a copy [2]. Any comments 
or  response applicant desires to file before consideration of the protest 
must  be filed by [3]. 

Examiner Note: 

        1. Applicant is normally given one month to submit any comments, 
unless  circumstances in the case would warrant a longer period. 

        2. A copy of this Office action is not sent to the protestor. See 
37 CFR 1.291(c). 

        3. In bracket 2, insert either __ has been served on applicant __ 
or  is attached hereto-. 

        Where necessary or desirable to decide questions raised by the 
protest,  under 37 CFR 1.291(c) the primary examiner can require the 
applicant to respond  to the protest and answer specific questions raised 
by the protest. The primary  examiner cannot require response to questions 
relating to "fraud," ``inequitable  conduct," or "violation of the duty of 
disclosure" since those issues are generally  not commented by the Office. 
Any questions directed to applicant by the primary  examiner must be 
limited to seeking answers reasonably necessary in order for  the primary 
examiner to decide questions raised by the protest and which are  before 
the primary examiner for decision. The primary examiner is not permitted, 
under 37 CFR 1.291(c), to seek answers to questions which are not before 
the  primary examiner for decision.  The primary examiner must use care in 
requiring  information from applicant pursuant to 37 CFR 1.291(c) to 
ensure that the required  information is necessary to the decision to be made. 

        Form Paragraph 19.02 >can be used to require additional 
information  from applicant regarding issues raised by the protest.< 

W 19.02       Requirement for Information 

        The protest under 37 CFR 1.291 filed on [1] has been considered. 
In  order to reach a full and proper consideration of the issues raised 
therein,  it is necessary to obtain additional information from applicant 
regarding these  issues. In particular [2]. Applicant's response to this 
requirement for information  must be filed within ONE MONTH of the date of 
this requirement to avoid the  issue of abandonment of the application. 

Examiner Note: 

        While the examiner normally should not need further information 
from  applicant, under circumstances such as issues relating to prior use 
or sale  it may be necessary to seek additional information. 

Clarification Sought From Protestor With Access 

        If the protestor has access to the application, and the protestor 
has  participated in the proceedings before the Office prior to December 
8, 1981,  the examiner may communicate with the protestor in writing, with 
a copy to  applicant, to seek clarification and/or additional information 
necessary to  properly consider the protest. The following suggested 
format can be used by  the examiner to seek clarification and/or 
additional information from the protestor  having access to an application. 

"The protest, as filed on __ __ __ __ __ , has been noted. However, 
clarification  and/or additional information is desired. In particular 
(examiner explains).  Any submission of the requested information should 
be made within ONE MONTH  of the date of this letter and the submission 
must indicate service on applicant." 

Protestor Not Permitted To Complete Incomplete Protest 

        As amended July 1, 1982 and March 16, 1992, 37 CFR 1.291 does not 
permit  protestor to complete an incomplete protest, nor to further 
participate in,  or inquire as to the status of, any Office proceedings 
relating to the initial  protest. The examiner must not, therefore, 
communicate with protestor in any  way and will not consider a later 
submission by protestor unless such submission  raises new issues which 
could not have been earlier raised and constitutes  in effect a new 
protest (see MPEP w 1901.07). Improper protests will be returned  by the 
Examining Group Director. 

Treatment of Timely Submitted Protest 

        If the protest has been timely submitted; i.e., before final 
rejection  or allowance, the examiner must consider each of the prior art 
or other documents  submitted in conformance with 37 CFR 1.291(b).  At 
least those prior art documents  which the examiner relies on in rejecting 
claims will be made of record by  means of form PTO-892, unless protestor 
has listed such prior art or other  documents on form PTO-1449, in which 
case the examiner will place the examiner's  initials adjacent to the 
citations in the boxes provided on the form PTO-1449 
(see MPEP w 609). Where the prior art or other documents have not been 
cited on a PTO-892, or listed and initialed on  a PTO-1449, the examiner 
will place a notation in the protest paper adjacent  to the reference to 
the documents. The notation should include the examiner's  initials and 
the term "checked." The examiner will also indicate in the next  Office 
action that all documents submitted have been considered. 

        It is not intended that the examiner be overly technical in 
construing  37 CFR 1.291(b) and refuse consideration of a protest because 
it does not include  all of the contents enumerated by 37 CFR 1.291(b). 
The examiner should consider  the protest to the extent it is helpful and 
valid even though one or more of  the listed items is omitted. 

        Where prior art or other documents are considered by the examiner, 
 even though not submitted in full conformance with 37 CFR 1.291(b), the 
examiner  must, for all those documents considered but not listed on the 
form PTO-892, 
(1) mark "checked" and place the examiner's initials beside each citation, 
 or (2) where all the documents cited on a given page have been 
considered,  mark "All checked" and place the examiner's initials in the 
left-hand margin  beside the citations: see MPEP 
w 609. Where prior art or other documents are listed by protestor on form 
PTO-1449,  even though not submitted in full conformance with 37 CFR 
1.291(b), the examiner  must, for all those documents considered, place 
the examiner's initials adjacent  to the citations in the boxes provided 
on the form PTO-1449. Where the prior  art or other documents are listed 
by protestor on form PTO-1449, but are not  submitted in full compliance 
with 37 CFR 1.291(b), the examiner must, for all  those documents not 
considered, draw a line through the citation on the form  PTO-1449; see 
MPEP w 609. If a protest entered in an application file complies  with 37 
CFR 1.291(b), the examiner is required to fully consider all the issues, 
except for any issues of "fraud," "inequitable conduct," or "duty of 
disclosure"  raised by the protestor, and clearly state the examiner's 
position thereon  in detail. 

Protest Filed After Final Rejection or Allowance 

        If the protest is filed after final rejection or allowance of the 
application,  but prior to the date of issuance of the patent, it may be 
considered "timely"  for purpose of entry in the application file although 
it may not be considered  by the examiner in view of its late submission. 
No assurance can be given  that any protest submitted after final 
rejection or allowance will be considered,  although the examiner will not 
knowingly ignore documents which clearly anticipate  or render obvious one 
or more claims. Clearly, the extent of the consideration  given by the 
examiner will depend upon the relevance of the prior art documents 
submitted and the point in time at which they are submitted. See MPEP w 
1901.04.  Documents which clearly anticipate or render obvious one or more 
claims will  not be knowingly ignored. Prosecution of the application will 
be reopened where  necessary. 

Copies of Documents Not Submitted 

        If the protest is not accompanied by a copy of each prior art or 
other  document relied on as required by 
37 CFR 1.291(b), the examiner will consider the documents submitted. The 
protestor  cannot be assured that the examiner will consider the missing 
document(s).  However, if the examiner does so, the examiner will 
either cite the document on form PTO-892 or place a notation in the 
protest  paper adjacent to the reference to the document which will 
include the examiner's  initials and the term "checked." If the examiner 
considered a document not  submitted, the next Office action will so indicate. 

Consideration of Protestor's Arguments 

        In view of the value of written protests, it is necessary that the 
 examiner give careful consideration to the points and arguments made on 
behalf  of protestor. Any Office action by the examiner treating the 
merits of a timely  submitted protest complying with 37 CFR 1.291(b) must 
specifically consider  and make evident by detailed reasoning the 
examiner's position as to the major  arguments and points raised by the 
protestor. While it is not necessary for  the examiner to respond to each 
and every minute argument or point, the major  arguments and points must 
be specifically covered. The examiner will not, under  any circumstances, 
treat or discuss those arguments or points directed to "fraud," 
"inequitable conduct," or "violation of duty of disclosure." 

Results of Consideration Reported to Group Director 

        After the examiner has considered the protest, the examiner will 
report  the results of such consideration to the group director. 


1901.07       Protestor Participation in the Examination 


        The degree of protestor participation in the examination has been 
severely  restricted. Any protest 


against a pending application which is filed after December 8, 1981 will 
be  treated in accordance with the procedures set forth in the "Interim . 
. . Protest  . . . Procedures" published December 8, 1981 at 1013 O.G. 
18-19, and published  May 19, 1982 in 47 Fed. Reg. 21746-21753.  Any 
protest filed on or before December  8, 1981, including related protestor 
participation, will be handled in accordance  with practices in effect 
prior to December 8, 1981. 

        In accordance with the limited protestor participation in protests 
 filed after December 8, 1981, 37 CFR 1.291(c) was amended effective July 
1,  1982, and further amended on March 16, 1992, to provide that: 

"limited involvement of the member of the public filing a protest  . . . 
ends  with the filing of the protest, and no further submission on behalf 
of the  protestor will be considered unless such submission raises new 
issues which  could not have been earlier presented." 

        Mere arguments relating to an Office action or an applicant's 
response  would not qualify as a new issue.  The mere filing of a protest 
does not grant  access to protestor or relieve the Office of its 
obligations under 35 U.S.C.  122 to maintain applications "in confidence." 
Nor does the mere filing of a  protest automatically mean that protestor 
will have any "right" to participate  to any particular degree. 37 CFR 
1.291(c) does not permit protestor, or any  other member of the public, to 
contact or receive information from the Office  as to the disposition or 
status of the protest, or the application to which  it is directed, or to 
participate in any Office proceedings relating to the  protest. The 
disposition of the protest will, once it has been filed under  paragraph 
(c), be an ex parte matter between the Office and the applicant.  Where 
protestor has access to an application, for example, a reissue application 
 which is open to the public and may be inspected under 37 CFR 1.11, the 
proceedings  may thereby be monitored. 

        Under 37 CFR 1.291(c), applicant may be required by the Office to 
respond  to a protest. Any response thereto would be ex parte and would 
not be served  on protestor. The ex parte nature of the requirements for 
information under  paragraph (c) differs from past practice under which 
information could be required,  or requested, from applicant and one or 
more protestors. 


1901.07(a)  Service of Copies 


        In protests filed after December 8, 1981, the Office does not 
serve  copies of Office actions, or other documents mailed by the Office, 
on protestors;  and no longer requires applicants to serve copies of 
papers filed with the  Office on protestors: see "Interim . . . Protest . 
. . Procedures" published  December 8, 1981 at 1013 O.G. 18-19; 47 Fed. 
Reg. 21746-21753 published May  19, 1982; and 37 CFR 1.291 as amended July 
1, 1982 and March 16, 1992. In protests  filed on or before December 8, 
1981, service of copies will be handled under  the procedures in force 
prior to December 8, 1981. However, if an application,  in which said 
protest was filed on or before December 8, 1981, is abandoned  and a 
continuation application is filed, any protest filed in said continuation 
application will be treated as a new protest and will be governed by the 
procedures  in effect at the time said new protest is filed.  If said new 
protest was filed  after December 8, 1981, the Office does not serve 
copies, nor require applicant  to serve copies, on protestor. 

        A protestor who had access to an application and had filed a 
protest  in the application prior to December 8, 1981, can request the 
Office to supply  protestor with copies of Office actions or other 
documents mailed by the Office.  Protestor, however, has no right to 
copies of Office actions or other documents,  the granting or denying of 
such requests being within the sole discretion of,  and for the 
convenience of, the Office. Such a request is granted by the Office  of 
the Assistant Commissioner for Patents or the group director only where 
protestor has served copies of the protest and any subsequent papers on 
applicant.  The granting normally includes the requirement that each of 
the parties serve  copies of any papers filed on each other, and is, as 
set forth above, within  the sole discretion of, and for the convenience 
of, the 
Office. 

        When the protestor has been granted the right to receive all 
Office  correspondence, the name and address of the protestor should be 
added to the  front of the file at the correspondence box. 

        This will enable the clerical personnel to see that two envelopes 
are  needed and that dual mailing is required. The protestor's name and 
address  should be added in pencil or red ink. However, the first line 
should read "PROTESTOR." 

        Example:        PROTESTOR 

                James Jones 

                ABC Corp. 

                720 Avenue C 

                New York, New York zip 

        Failure to put the word "PROTESTOR" above the name and address 
could  cause the Publishing Division to assume that the first address was 
inadvertently  not cancelled and result in the Notice of Allowance being 
sent to the Protestor.  Use of the identifier "PROTESTOR" will result in 
the Publishing Division sending  the Notice of Allowance (multipart forms) 
to the Applicant and a single copy  to the protestor. 


1901.07(b)  Protests Limited to Single Submission 


Filing of Multiple Papers Relating to Same Issues 

        Previously, the filing of multiple papers by either the applicant 
and/or  protestor(s) with respect to a specific issue(s) has created 
problems in that  the application files became unduly expanded and 
unnecessary delays in the  examination were encountered. Therefore, 
applicants and protestors were encouraged  to make their first submission 
with regard to specific issues as complete as  possible in order to avoid 
the necessity of filing multiple papers. 
Protestors Limited to Single Submission 

        Where a protest is filed after December 8, 1981, protestor is 
limited  to a single submission and thus must make such submission as 
complete as possible:  see 
37 CFR 1.291(c) as amended July 8, 1982 and March 16, 1992; "Interim... 
Protest...  Procedures" published December 8,1981 at 1013 O.G. 18-19; and 
47 Fed. Reg.  21746-21753 published May 19, 1982. Under 37 CFR 1.291(c) 
protestor participation  ends with the filing of the initial protest, and 
protestor will not be allowed  to complete any protest that is incomplete. 
No further submission on behalf  of protestor will be considered unless 
such submission clearly raises new issues  which could not have been 
earlier presented. Protests which will not be entered  in the application 
file include those further submissions in violation of 37  CFR 1.291(c) by 
which protestor seeks to participate in the examination process.  For 
example, mere arguments relating to an Office action or an applicant's 
response would not qualify as a new issue.  Likewise, additional comments 
seeking  to bring in further or even new data or information with respect 
to an issue  previously raised by protestor would not qualify as a new 
issue. Even new protests  which also argue Office actions or responses or 
any matter beyond the new issue  should not be accepted. Improper protests 
will be refused consideration and  returned by the Examining Group 
Director. While improper protests will be returned,  a new protest by an 
earlier protestor will be proper and can be entered if  it is clearly 
limited to new issues which could not have been earlier presented. 

1902    Protestor Participation in Interviews 


        Under 37 CFR 1.291(c), protestor participation in interviews is 
not  permitted where the protest was filed after December 8, 1981: see 
"Interim...Protest...Procedures"  published December 8, 1981 at 1013 O.G. 
18-19; 47 Fed. Reg. 21746-21753 published  May 19, 1982. In protests filed 
on or before December 8, 1981, protestor participation  is governed by the 
rules and procedures in effect prior to December 8, 1981.  Any such 
participation rights, in an application where the protest was filed  on or 
before December 8, 1981, are limited to that application and do not carry 
forward to any continuing application.  Any protest filed in a continuing 
application  is treated as a new protest and will be governed by the 
procedures in effect  at the time said new protest is filed. 

        Where a protest has been filed in an application prior to December 
 8, 1981, a protestor having access to said application can request to be 
allowed  to participate in any interviews between applicants and the 
examiner, or could  request an interview with the examiner on protestor's 
own behalf. However,  interviews with a protestor, whether protestor 
initiated or not, will not be  permitted without applicant's presence. An 
examiner should never communicate  orally with protestor except for purely 
procedural matters unless applicant  is represented, and protestor must 
refrain, unless applicant is represented,  from oral communication with 
the examiner except to ask purely procedural questions  not related to the 
substance of the protest or the merits of the application.  No oral 
communications between the examiner and protestor are permitted if  the 
protest was filed after December 8, 1981. 

        Normally, protestor participation in interviews with examiners 
will  not be allowed unless special justifying circumstances exist. Where 
authorized,  participation by the protestor in an interview will be 
according to guidelines  set forth below in MPEP w 1902.01. 

        Where copies of Office actions are being sent to a protestor or 
where  protestor is present at an interview, a copy of the "Interview 
Summary Form"  and other 
records made at the interview (excluding any transcript) will be provided 
to  the protestor. Where protestor participates in an interview, protestor 
may,  or may not be 
required to, submit his or her own record of the interview which will be 
made  of record in the file. 


1902.01       Guidelines for Inter Partes Interviews 


        Subject to the restrictions noted in MPEP w 1902, the authority 
for  granting inter partes interviews resides with each Group Director. 
Protestor  participation in interviews with examiners will not ordinarily 
be permitted  unless protestor has access and justifying circumstances 
exist. Where authorized,  such participation will be according to the 
following guidelines. The "guidelines"  are being issued so as to provide 
some uniformity as to the propriety of interviews  and the manner in which 
any such interviews, if granted, are to be conducted. 

1902.01(a)  Justifying Circumstances for Inter Partes Interviews 

        As discussed in MPEP w 1902, protestors are not permitted to 
participate  in interviews in applications where the protest was filed 
after December 8,  1981. However, where a protest has been filed in an 
application on or before  December 8, 1981, a protestor having access to 
said application may request  to participate in interviews in said 
application. 

        Inter partes interviews are usually due to a request by: 

1.  the primary examiner who feels that an inter partes interview would be 
 useful, 

2.  the applicant who desires to have the protestor present, 

3.  the protestor who desires to be included at an interview, 

4.  the protestor who wishes to initiate an interview, or 

5.  a Court with related litigation which desires an interview be held. 
        Requests under categories 1, 2, and 5 should normally be granted 
since  it is the primary examiner who is requesting an inter partes 
interview, the  applicant desiring the presence of the protestor at an 
interview, or a Court  desiring that the parties be permitted to conduct 
an interview with the examiner.  In any of these situations, the group 
director should normally grant permission  for an inter partes interview 
unless other reasons are present which, in the  group director's opinion, 
would negate the desirability of any such interview. 
        Requests under category 3 are most often encountered insofar as 
inter  partes interviews are concerned.  Examples of situations in which 
an inter  partes interview should normally be granted include those in 
which: 
1.  the court has stayed the litigation and/or has invited or required 
defendant 
(or plaintiff in a declaratory judgment action) to participate in the 
reissue  proceedings and to be accorded "full participation" in the Patent 
and Trademark  Office deliberations; 

2.  the nature of the issues would appear to make such an interview 
desirable,  as for example, issues relating to public use, prior sale, 
inventorship and  complex prior art; and 

3.  for other reasons where the examiner and group director feel that the 
protestor's  participation would be helpful. 

        Requests under category 4 usually would not be granted since a 
protestor  cannot initiate an interview with the examiner or attend such 
an interview  absent an agreement by the applicant to also be present and 
participate. 
        In any event, for an inter partes interview to be conducted a 
protest  must have been filed in the application by the protestor prior to 
December  8, 1981, and the protestor must have access to the application. 


1902.01(b)  Circumstances Where Inter Partes Interviews Would Normally Not 
Be Justified 

        Many protests are filed wherein there is no court litigation 
involving  the parent patent. In these situations, the decision as to 
whether or not to  grant protestor's request to participate in an inter 
partes interview must  be considered from the particular facts of each 
application. 

        Normally, if only printed prior art of a noncomplex 
nature has been relied on in the protest to support allegations of 
unpatentability,  an inter partes interview would not be appropriate since 
the primary examiner  should be capable of interpreting the art. (However, 
in some circumstances,  protestor participation may be considered useful 
and justify participation). 
        Other issues which would not normally justify an inter partes 
interview  involve, for example, 35 U.S.C. 101, 251, and 112. 

        No interviews will be granted protestor where the protest was 
filed  in an application after December 8, 1981. 


1902.01(c)  Notice of Interviews 


        If the protestor participation at any interview has been 
previously  approved, applicant must thereafter 
request any interview in advance of the requested interview date and must 
represent  at that time that protestor has received actual notice (by 
telephone, if necessary)  of the interview request and been offered an 
opportunity to participate. Protestor  must also inform the Patent and 
Trademark Office in advance whether or not  protestor intends to 
participate in any scheduled interview. In those situations,  where 
protestor participation has been approved, the examiner will not hold  any 
interview relating to matters of substance with applicant or applicant's 
representative(s) unless the examiner is satisfied that protestor has 
received  actual and timely notice of the interview and has been offered 
an opportunity  to participate. Of course, this caveat does not relate to 
nonsubstantive matters  such as status inquiries, but does include 
subsequent interviews initiated  by the examiner or applicant even if only 
for minor amendments such as those  occurring in examiner amendments. For 
minor matters, conference calls may be  utilized if arranged by the parties. 

        For those interviews requested by the primary 
examiner and approved by the group director, the scheduling of the 
interview  should be coordinated by the 
examiner. 


1903    Guidelines for Conducting Interviews 


        Once an inter partes interview has been scheduled, the parties 
should  be provided with guidelines by, or at the direction of, the group 
director  as to the manner in which the interview will be conducted. These 
guidelines  should address the following points: 

1.  The issues the examiner desires particularly addressed. 

2.  A requirement that applicant or protestor identify to the examiner the 
 issues which applicant or protestor particularly wish to discuss prior to 
the  interview along with an indication that the other party has been 
apprised of  these issues. 

3.  A limitation as to the number of representatives from each party 
permitted  to participate at the interview (normally no more than 2 or 3). 

4.  State that the supervisory primary examiner or in the supervisory 
primary  examiner's absence, another primary examiner, will sit in on the 
interview. 
5.  The order in which the parties will discuss each of the issues (if 
appropriate  and/or desirable, a time limit per issue may also be set 
forth). 

6.  An indication that the primary examiner will not make any commitment 
on  substance during the interview, but will render a decision in writing 
after  having an opportunity to weigh all the comments submitted by the 
parties following  the interview. 

7.  That the primary examiner will not entertain any discussions relating 
to  issues of fraud and/or duty of disclosure. 

8.  That the interview will be controlled by the primary examiner and will 
 be terminated at the discretion of the primary examiner. 

9.  The guidelines may specify time limitations which may only be exceeded 
 in the examiner's discretion. 

10.   The location at which the interview will be held. 


1903.01       Record of Interviews 


        Following the interview, the primary examiner will require each of 
 the parties to submit, for the record and to the other parties, a short 
summary  of what the parties feel transpired at the interview, unless a 
court reporter  has been allowed at the interview. A period of 2 weeks 
should be ample time  for submission of the comments. 

        If the director determines that a court reporter's presence is 
desirable  at the interview (if requested and paid for by any of the 
parties), then a  transcript of the interview must be forwarded to the 
examiner as soon as it  is available and at no cost to the Patent and 
Trademark Office. The party or  parties requesting the court reporter must 
agree, in advance, to bear the total  cost of the same, including the 
costs of any transcripts, and must make all the necessary arrangements 
for securing the reporter. 

        If a court reporter is not present, the primary examiner must 
complete  "Interview Summary Form PTO-413" at the conclusion of the 
interview briefly  summarizing the issues discussed, without commitment 
thereon, and provide each  of the parties with a copy thereof. 

        If the protestor has not been granted permission to participate at 
 an inter partes interview, but has been granted service of all Office 
communications  of substance, it is appropriate that a copy of any 
interview summary be forwarded  to the protestor as soon as possible. 
Applicant still has the usual responsibility  to record the substance of 
the interview and protestor has the opportunity  to make any observations 
or comments in relation thereto. 


1904    Protestor Participation Before the Board of Patent Appeals and 
Interferences 


        A protestor cannot appeal a decision by the examiner adverse to 
the  protestor to the Board of Patent Appeals and Interferences. Further, 
where  the protest was filed after December 8, 1981 in an application, a 
protestor  is not permitted by 37 CFR 1.291(c) to participate in an appeal 
by applicant:  see "Interim . . . Protest . . . Procedures" published 
December 8, 1981, at  1013 O.G. 18-19; 47 Fed. Reg. 21746-21753 published 
May 19, 1982. 

        Where a protest has been filed in an application on or before 
December  8, 1981 and protestor has access to said application, the Office 
does permit  protestor participation in appeals filed by applicant under 
35 U.S.C. 134 and  37 CFR 1.191. Such protestor, with access to an 
application appealed to the  Board of Patent Appeals and Interferences, 
who intends to file comments or  a brief, without fee, in opposition to 
applicant's brief should file an indication  of such intention within 1 
month after the Notice of Appeal under 37 CFR 1.191  is filed and serve a 
copy of the same upon applicant. The indication of intention  should state 
that protestor agrees to file such comments or brief in triplicate, 
within 1 month after applicant's brief is filed, and also agrees to serve 
a  copy of the comments or brief upon applicant. If such an indication is 
not  filed and served, or the protestor's comments or brief is not timely 
filed  in triplicate and served, no assurance is given that the examiner 
will consider  the protestor's comments or brief during the preparation of 
the Examiner's  Answer. 

        Such protester who participates by the filing of comments or a 
brief  in opposition to the applicant's brief may also request, at the 
time of filing  the comments or brief, to appear at any oral hearing which 
may be requested  by the applicant.  If a protestor does not file such 
comments or brief, the  protestor cannot be present at any oral hearing. 
If a protestor does file  such a request, the Board of Patent Appeals and 
Interferences, in its discretion,  will decide whether or not the issues 
on appeal are such that protestor's participation  at the hearing would be 
helpful.  The Board of Patent Appeals and Interferences  will notify 
protestor whether or not the request to appear at the oral hearing  is 
granted and, if granted, how much time will be permitted. Of course, if 
applicant does not request an oral hearing, or provides timely 
notification  to the Board and protestor that applicant will not appear, 
the protestor will  not be heard. 

        In rare circumstances, the Office has on petition to the 
Commissioner  also permitted a protestor with access to the application to 
include, in protestor's  comments or brief, a request that the Board make 
one or more rejections under  37 CFR 1.196(b): note In re Khoury, 
207 USPQ 942 (Comm'r. Pats. 1980). 


1906    Supervisory Review of an Examiner's Decision Adverse to Protestor 

        As pointed out in MPEP w 1904, a protestor cannot appeal to the 
Board  of Patent Appeals and Interferences from an adverse decision of the 
examiner.  Further in an application where the protest was filed after 
December 8, 1981,  a decision by examiner adverse to a protestor is final, 
and under the restricted  protestor participation permitted under 37 CFR 
1.291(c) is not petitionable  to the Commissioner: see "Interim . . . 
Protest . . . Procedures" published  December 8, 1981 at 1013 O.G. 18-19; 
47 Fed. Reg. 21746-21753 published May  19, 1982. Where a protest was 
filed in an application on or before December  8, 1981, a decision by the 
examiner adverse to a protestor is final, except  in instances of clear 
error or abuse of discretion established by petition  to the Commissioner 
under 37 CFR 1.181.  Any such petition should be directed  to the 
appropriate group director. Also, consideration of the petition does  not 
represent acknowledgment of any right of review in the protestor. 

1907    Unauthorized Participation by Protestor 


        Office personnel must exercise care to ensure that substantive 
matters  relating to the application are not discussed ex parte with 
protestor or communicated  in writing ex parte to protestor. Where 
protestor has not filed a protest or  otherwise participated in an 
application prior to December 8, 1981, the examiner  must not communicate 
in any manner with protestor: note 37 CFR 1.291(c). 
        Where protestor has participated in the application on or before 
December  8, 1981 and has access to the application, the examiner may 
communicate in  writing with protestor, such as, to request clarification 
of a protest or additional  information. A copy of any examiner's letter 
or communication to a protestor  will be mailed to applicant at the same 
time it is mailed to the protestor.  Even  where communication in writing 
with protestor is permitted, the examiner  will not communicate orally 
with protestor, and protestor must refrain from oral communications with 
the examiner  except to ask purely procedural questions which have no 
relation to the substance  of the protest or the  merits of the 
application, unless specifically authorized  in writing by the Assistant 
Commissioner for Patents. 


1920    Citation of Prior Art Under 37 CFR 1.501(a) 


        37 CFR 1.501(a) permits any person at any time during the period 
of enforceability  of a patent to cite to the Office, in writing, prior 
art consisting of patent and printed publications  which that person 
states to be pertinent and applicable to the patent and believes  to have 
a bearing on the patentability of any claim(s) of the patent.  See  MPEP w 
2202 - w 2208. 



Contents 

2001        Duty of Disclosure, Candor, and Good Faith 

2001.01     Who Has Duty To Disclose 

2001.03     To Whom Duty of Disclosure Is Owed 

2001.04     Information Under 37 CFR 1.56(a) 

2001.05     Materiality Under 37 CFR 1.56(b) 

2001.06     Sources of Information 

2001.06(a)  Prior Art Cited in Related Foreign Applications 

2001.06(b)  Information Relating to or From Copending United 
            States Patent Applications 

2001.06(c)  Information From Related Litigation 

2001.06(d)  Information Relating to Claims Copied From a Patent 

2002        Disclosure __ By Whom and How Made 

2002.01     By Whom Made 

2002.02     Must be in Writing 

2003        Disclosure __ When Made 

2003.01     Disclosure After Patent Is Granted 

2004        Aids to Compliance With Duty of Disclosure 

2010        Office Handling of Duty of Disclosure/Inequitable 
            Conduct Issues 

2012        Reissue Applications Involving Issues of Fraud, 
            Inequitable Conduct, and/or Violation of Duty of 
            Disclosure 

2012.01     Collateral Estoppel 

2013        Protests Involving Issues of Fraud, Inequitable 
            Conduct, and/or Violation of Duty of Disclosure 

2014        Duty of Disclosure in Reexamination Proceedings 

2016        Fraud, Inequitable Conduct, or Violation of Duty of 
            Disclosure Affects All Claims 

2022.05     Determination of "Error Without Any Deceptive Intention" 
This Chapter deals with the duties owed toward the Patent and Trademark 
Office  by the inventor and every other individual who is substantively 
involved in  the preparation or prosecution of the application and who is 
associated with  the inventor or the inventor's assignee.  These duties, 
of candor and good  faith and disclosure, have been codified in 37 CFR 
1.56, as promulgated pursuant  to carrying out the duties of the 
Commissioner under Sections 6, 131, and 132  of Title 35 of the United 
States Code. 


2001    Duty of Disclosure, Candor, and Good Faith [R-2] 


37 CFR 1.5*>6<.       Duty to disclose information material to 
patentability. 
(a)   A  patent by its very nature is affected with a public interest. The 
 public interest is best served, and the most effective patent examination 
occurs  when, at the time an application is being examined, the Office is 
aware of  and evaluates the teachings of all information material to 
patentability.   Each individual associated with the filing and 
prosecution of a patent application  has a duty of candor and good faith 
in dealing with the Office, which includes  a duty to disclose to the 
Office all information known to that individual to  be material to 
patentability as defined in this section.  The duty to disclose 
information exists with respect to each pending claim until the claim is 
cancelled  or withdrawn from consideration, or the application becomes 
abandoned. Information  material to the patentability of a claim that is 
cancelled or withdrawn from  consideration need not be submitted if the 
information is not material to the  patentability of any claim remaining 
under consideration in the application.  There is no duty to submit 
information which is not material to the patentability  of any existing 
claim.  The duty to disclose all information known to be material  to 
patentability is deemed to be satisfied if all information known to be 
material  to patentability of any claim issued in a patent was cited by 
the Office or  submitted to the Office in the manner prescribed by ww 
1.97(b)-(d) and 1.98.  However, no patent will be granted on an 
application in connection with which  fraud on the Office was practiced or 
attempted or the duty of disclosure was  violated through bad faith or 
intentional misconduct. The Office encourages  applicants to carefully 
examine: 

(1)   prior art cited in search reports of a foreign patent office in a 
counterpart  application, and 

(2)   the closest information over which individuals associated with the 
filing  or prosecution of a patent application believe any pending claim 
patentably  defines, to make sure that any material information contained 
therein is disclosed  to the Office. 

(b)   Under this section, information is material to patentability when it 
 is not cumulative to information already of record or being made of 
record  in the application, and 

(1)   It establishes, by itself or in combination with other information, 
a  prima facie case of unpatentability of a claim; or 

(2)   It refutes, or is inconsistent with, a position the applicant takes 
in: 
(i)   Opposing an argument of unpatentability relied on by the Office, or 
(ii)            Asserting an argument of patentability. 

A prima facie case of unpatentability is established when the information 
compels  a conclusion that a claim is unpatentable under the preponderance 
of evidence,  burden-of-proof standard, giving each term in the claim its 
broadest reasonable  construction consistent with the specification, and 
before any consideration  is given to evidence which may be submitted in 
an attempt to establish a  contrary  conclusion of patentability. 

(c)   Individuals associated with the filing or prosecution of a patent 
application  within the meaning of this section are: 

(1)   Each inventor named in the application; 

(2)   Each attorney or agent who prepares or prosecutes the application; 
and 
(3)   Every other person who is substantively involved in the preparation 
or  prosecution of the application and who is associated with the 
inventor, with  the assignee or with anyone to whom there is an obligation 
to assign the application. 
(d)   Individuals other than the attorney, agent or inventor may comply 
with  this section by disclosing information to the attorney, agent, or 
inventor. 
37 CFR 1.56 defines the duty to disclose information to the Office. 

2001.01       Who Has Duty To Disclose 


 37 CFR 1.56     Duty to disclose information material to patentability. 
***** 

(c)   Individuals associated with the filing or prosecution of a patent 
application  within the meaning of this section are: 

(1)   Each inventor named in the application; 

(2)   Each attorney or agent who prepares or prosecutes the application; 
and 
(3)   Every other person who is substantively involved in the preparation 
or  prosecution of the application and who is associated with the 
inventor, with  the assignee or with anyone to whom there is an obligation 
to assign the application. 
Individuals having a duty of disclosure are limited to those who are 
"substantively  involved in the preparation or prosecution of the 
application."  This is intended  to make clear that the duty does not 
extend to typists, clerks, and similar  personnel who assist with an 
application. 

The word "with" appears before "the assignee" and "anyone to whom there is 
 an obligation to assign" to make clear that the duty applies only to 
individuals,  not to organizations. For instance, the duty of disclosure 
would not apply  to a corporation or institution as such. However, it 
would apply to individuals  within the corporation or institution who were 
substantively involved in the  preparation or prosecution of the 
application, and actions by such individuals  may affect the rights of the 
corporation or institution. 


2001.03       To Whom Duty of Disclosure Is Owed 


37 CFR 1.56(a) states that the "duty of candor and good faith" is owed "in 
 dealing with the Office" and that all such individuals have a "duty to 
disclose  to the Office" material information.  This duty "in dealing 
with" and "to"  the Office extends, of course, to all dealings which such 
individuals have  with the Office, and is not limited to representations 
to or dealings with  the examiner.  For example, the duty would extend to 
proceedings before the  Board of Patent Appeals and Interferences, the 
Office of the Assistant Commissioner  for Patents, etc. 


2001.04       Information Under 37 CFR 1.56(a) 


 37 CFR 1.56.     Duty to disclose information material to patentability. 
(a)   A  patent by its very nature is affected with a public interest. The 
 public interest is best served, and the most effective patent examination 
occurs  when, at the time an application is being examined, the Office is 
aware of  and evaluates the teachings of all information material to 
patentability. Each  individual associated with the filing and prosecution 
of a patent application  has a duty of candor and good faith in dealing 
with the Office, which includes  a duty to disclose to the Office all 
information known to that individual to  be material to patentability as 
defined in this section.  The duty to disclose  information exists with 
respect to each pending claim until the claim is cancelled  or withdrawn 
from consideration, or the application becomes abandoned. Information 
material to the patentability of a claim that is cancelled or withdrawn 
from  consideration need not be submitted if the information is not 
material to the  patentability of any claim remaining under consideration 
in the application.  There is no duty to submit information which is not 
material to the patentability  of any existing claim.  The duty to 
disclose all information known to be material  to patentability is deemed 
to be satisfied if all information known to be material  to patentability 
of any claim issued in a patent was cited by the Office or  submitted to 
the Office in the manner prescribed by ww 1.97(b)-(d) and 1.98.  However, 
no patent will be granted on an application in connection with which 
fraud on the Office was practiced or attempted or the duty of disclosure 
was  violated through bad faith or intentional misconduct. The Office 
encourages  applicants to carefully examine: 

(1)   prior art cited in search reports of a foreign patent office in a 
counterpart  application, and 

(2)   the closest information over which individuals associated with the 
filing  or prosecution of a patent application believe any pending claim 
patentably  defines, to make sure that any material information contained 
therein is  disclosed  to the Office. 

***** 

The language of 37 CFR 1.56 (and 37 CFR 1.555) has been modified effective 
 March 16, 1992 to emphasize that there is a duty of candor and good faith 
which  is broader than the duty to disclose material information.  37 CFR 
1.56 further  states that "no patent will be granted on an application in 
connection with  which fraud on the Office was practiced or attempted or 
the duty of disclosure  was violated through bad faith or intentional 
misconduct." 

The Office strives to issue valid patents. The Office has both an 
obligation  not to unjustly issue patents and an obligation not to 
unjustly deny patents.  Innovation and technological advancement are best 
served when an inventor is  issued a patent with the scope of protection 
that is deserved.  The rules as  adopted serve to remind individuals 
associated with the preparation and prosecution  of patent applications of 
their duty of candor and good faith in their dealings  with the Office, 
and will aid the Office in receiving, in a timely manner,  the information 
it needs to carry out effective and efficient examination of  patent 
applications. 

The amendment to 37 CFR 1.56 was proposed to address criticism concerning 
a  perceived lack of certainty in the materiality standard.  The rule as 
promulgated  will provide greater clarity and hopefully minimize the 
burden of litigation  on the question of inequitable conduct before the 
Office, while providing the  Office with the information necessary for 
effective and efficient examination of patent applications.  37 CFR 1.56 
has been amended to present a clearer and more objective defini-tion  of 
what information the Office considers material to patentability.  The 
rules  do not define fraud or inequitable conduct which have elements both 
of materiality  and of intent. 

The definition of materiality in 37 CFR 1.56 does not impose substantial 
new  burdens on applicants, but is intended to provide the Office with the 
information  it needs to make a proper and independent determination on 
patentability.   It is the patent examiner who should make the 
determination after considering  all the facts involved in the particular 
case. 

37 CFR 1.56 states that each individual associated with the filing and 
prosecution  of a patent application has a duty to disclose all 
information known to that  individual to be material to patentability as 
defined in the section.  Thus,  the duty applies to contemporaneously or 
presently known information. The fact  that information was known years 
ago does not mean that it was recognized that  the information is material 
to the present application. 

The term "information" as used in 37 CFR 1.56 means all of the kinds of 
information  required to be disclosed and includes any information which 
is "material to  patentability."  Materiality is defined in 37 CFR 1.56(b) 
and discussed herein  at MPEP w 2001.05. In  addition to prior art such as 
patents and publications,  37 CFR 1.56 includes, for example, information 
on possible prior public uses,  sales, offers to sell, derived knowledge, 
prior invention by another, inventorship  conflicts, and the like. 

The term "information" is intended to be all encompassing similar to the 
scope  of the term as discussed with respect to 37 CFR 1.291(a) (see MPEP 
w 1901.02). 37 CFR 1.56(a) also states: "The Office encourages applicants 
to carefully  examine: (1) prior art cited in search reports of a foreign 
patent office in  a counterpart application, and (2) the closest 
information over which individuals  associated with the filing or 
prosecution of a patent application believe any  pending claim patentably 
defines, to make sure that any material information  contained therein is 
disclosed to the Office." The sentence does not create  any new duty for 
applicants, but is placed in the text of the rule as helpful  guidance to 
individuals who file and prosecute patent applications. 
It should be noted that the rules are not intended to require information 
favorable  to patentability such as, for example, evidence of commercial 
success of the  invention. Similarly, the rules are not intended to 
require, for example, disclosure  of information concerning the level of 
skill in the art for purposes of determining  obviousness. 

37 CFR 1.56(a) states that the duty to disclose information exists until 
the  application becomes abandoned. The duty to disclose information, 
however, does  not end when an application becomes allowed but extends 
until a patent is granted  on that application. The rules provide for 
information being considered after  a notice of allowance is mailed and 
before the issue fee is paid (37 CFR 1.97(d))  and for an application to 
be withdrawn from issue because one or more claims  are unpatentable 
(37 CFR 313(b)(3)) or for an application to be withdrawn from issue and 
abandoned  so that information may be considered in a continuing 
application before a  patent issues (37 CFR 1.313(b)(5)). 

37 CFR 1.56 provides that the duty of disclosure can be met by submitting 
information  to the Office in the manner prescribed by 37 CFR 1.97 and 
1.98. 37 CFR 1.97  and 1.98 have been amended effective March 16, 1992 so 
that information will  be submitted to the Office in the manner and at the 
time which will facilitate  consideration by the examiner. Applicants are 
provided certainty as to when  information will be considered, and 
applicants will be informed when information  is not considered. The 
Office does not believe that courts should, or  will,  find violations of 
the duty of disclosure because of unintentional noncompliance  with 37 CFR 
1.97 and 1.98. If the noncompliance is intentional, however, the 
applicant will have assumed the risk that the failure to submit the 
information  in a manner that will result in its being considered by the 
examiner may be  held to be a violation. 

The Office does not anticipate any significant change in the quantity of 
information  cited to the Office. Presumably, applicants will continue to 
submit information  for consideration by the Office in applications rather 
than making and relying  on their own determinations of materiality. An 
incentive remains to submit  the information to the Office because it will 
result in a strengthened patent  and will avoid later questions of 
materiality and intent to deceive. In addition,  the new rules will 
actually facilitate the filing of information since the  burden of 
submitting information to the Office has been reduced by eliminating, in 
most  cases, the requirement for a concise statement of the relevance of 
each item  of information listed in an information disclosure statement. 
It should also  be noted that 37 CFR 1.97(h) states that the filing of an 
information disclosure  statement shall not be considered to be an 
admission that the information cited  in the statement  is, or is 
considered to be, material to patentability as  defined in 37 CFR 1.56. 


2001.05       Materiality Under 37 CFR 1.56(*>b<) [R-2] 


37 CFR 1.56.    Duty to disclose information material to patentability. 
***** 

(b)   Under this section, information is material to patentability when it 
 is not cumulative to information already of record or being made of 
record  in the application, and 

(1)   It establishes, by itself or in combination with other information, 
a  prima facie case of unpatentability of a claim; or 

(2)   It refutes, or is inconsistent with, a position the applicant takes 
in: 
(i) Opposing an argument of unpatentability relied on by the Office, or 
(ii) Asserting an argument of patentability. 

 A prima facie case of unpatentability is established when the information 
 compels a conclusion that a claim is unpatentable under the preponderance 
of  evidence, burden-of-proof standard, giving each term in the claim its 
broadest  reasonable construction consistent with the specification, and 
before any consideration  is given to evidence which may be submitted in 
an attempt to establish a contrary  conclusion of patentability. 

***** 

Under the rule, information is not material unless it comes within the 
definition  of 37 CFR 1.56(b)(1) or (2).  If information is not material, 
there is no duty  to disclose the information to the Office.  Thus, it is 
theoretically possible  for applicants to draft claims and a specification 
to avoid a prima facie case  of obviousness over a reference and then to 
be able to withhold the reference  from the examiner. The Office believes 
that most applicants will wish to submit  the information, however, even 
though they may not be required  to do so, to  strengthen the patent and 
avoid the risks of an incorrect judgment on their  part on materiality or 
that it may be held that there was an intent to deceive  the Office. 


2001.06       Sources of Information 


All individuals covered by 37 CFR 1.56 (reproduced in MPEP w 2001.01) have 
 a duty to disclose to the Patent and Trademark Office all material 
information  they are aware of regardless of the source of or how they 
become aware of the  information.  Materiality controls whether 
information must be disclosed to  the Office, not the circumstances under 
which or the source from which the  information is obtained.  If material, 
the information must be disclosed to  the Office. The duty to disclose 
material information extends to information  such individuals are aware of 
prior to or at the time of filing the application  or become aware of 
during the prosecution thereof. 

Such individuals may be or become aware of material information from 
various  sources such as, for example, co-workers, trade shows, 
communications from  or with competitors, potential infringers, or other 
third parties, related  foreign applications (see MPEP w 2001.06(a)), 
prior or copending United States  patent applications (see MPEP w 
2001.06(b)), related litigation (see MPEP w 2001.06(c)) and preliminary 
examination searches. 


2001.06(a)  Prior Art Cited in Related Foreign Applications 


Applicants and other individuals, as set forth in 
37 CFR 1.56, have a duty to bring to the attention of the Office any 
material  prior art or other information cited or brought to their 
attention in any related  foreign application.  The inference that such 
prior art or other information  is material is especially strong where it 
is the only prior art cited or where  it has been used in rejecting the 
same or similar claims in the foreign application. 
 See Gemveto Jewelry Company, Inc. v. Lambert Bros., Inc., 216 USPQ 976 
(S.D.  N.Y. 1982) wherein a patent was held invalid or unenforceable 
because patentee's  foreign counsel did not disclose to patentee's United 
States counsel or to  the Office prior art cited by the Dutch Patent 
Office in connection with the  patentee's corresponding Dutch application. 
 The Court stated, 216 USPQ at  985, 

 "Foreign patent attorneys representing applicants for U.S. patents 
through  local correspondent firms surely must be held to the same 
standards of conduct  which apply to their American counterparts; a double 
standard of accountability  would allow foreign attorneys and their 
clients to escape responsibility for  fraud or inequitable conduct merely 
by withholding from the local correspondent  information unfavorable to 
patentability and claiming  ignorance of United  States disclosure 
requirements." 


2001.06(b)  Information Relating to or From Copending United States Patent 
Applications 

The individuals covered by 37 CFR 1.56 have a duty to bring to the 
attention  of the examiner, or other Office official involved with the 
examination of  a particular application, information within their 
knowledge as to other copending  United States applications which are 
"material to patentability" of the application  in question.   As set 
forth by the Court in Armour & Co. v. Swift & Co.,175  USPQ 70, 79 (7th 
Cir. 1972), 

"we think that it is unfair to the busy examiner, no matter how diligent 
and  well informed he may be, to assume that he retains details of every 
pending  file in his mind when he is reviewing a particular application . 
. . [T]he  applicant has the burden of presenting the examiner with a 
complete and accurate  record to support the allowance of letters patent." 

See, also MPEP w 2004 at No. 9. 

Accordingly, the individuals covered by 37 CFR 1.56 cannot assume that the 
 examiner of a particular application is necessarily aware of other 
applications  "material to patentability" of the application in question, 
but must instead  bring such other applications to the attention of the 
examiner.  For example,  if a particular inventor has different 
applications pending in which similar  subject matter but patentably 
indistinct claims are present that fact must  be disclosed to the examiner 
of each of the involved applications.  Similarly,  the prior art 
references from one application must be made of record in another 
subsequent application if such prior art references are "material to 
patentability"  of the subsequent application. 

Normally, if the application under examination is identified as a 
continuation  or continuation-in-part of an earlier application, the 
examiner will consider  the prior art cited in the earlier application. 
The examiner must indicate  in the first Office action whether the prior 
art in a related earlier application  has been reviewed.  Accordingly, no 
separate citation of the same prior art  need be made in the later 
application. 


2001.06(c)  Information From Related Litigation 


Where the subject matter for which a patent is being sought is or has been 
 involved in litigation, the existence of such litigation and any other 
material  information arising therefrom must be brought to the attention 
of the Patent  and Trademark Office; such as, for example, evidence of 
possible prior public  use or sales, questions of inventorship, prior art, 
allegations of "fraud,"  "inequitable conduct," or violation of duty of 
disclosure. Such information  might arise during litigation in, for 
example, pleadings, admissions, discovery  including interrogatories, 
depositions, and other documents, and testimony. 
Where a patent for which reissue is being sought is, or has been, involved 
 in litigation which raised a question material to examination of the 
reissue  application, such as the validity of the patent, or any 
allegation of "fraud,"  "inequitable conduct," or "violation of duty of 
disclosure," the existence  of such litigation must be brought to the 
attention of the Office by the applicant  at the time of, or shortly 
after, filing the application, either in the reissue  oath or declaration, 
or in a separate paper, preferably accompanying the application,  as 
filed. Litigation begun after filing of the reissue application should be 
promptly brought to the attention of the Office.  The details and 
documents  from the litigation, insofar as they are  "material to 
patentability" of the  reissue application as defined in 37 CFR 1.56, 
should accompany the application  as filed, or be submitted as promptly 
thereafter as possible. 

For example, the defenses raised against validity of the patent, or 
charges  of "fraud" or  "inequitable conduct"  in the litigation, would 
normally be  "material to the examination" of the reissue application.  It 
would, in most  situations be appropriate to bring such defenses to the 
attention of the Office  by filing in the reissue application a copy of 
the court papers raising such  defenses.  As a minimum, the applicant 
should call the attention of the Office  to the litigation, the existence 
and the nature of any allegations relating  to validity and/or "fraud," or 
"inequitable conduct" relating to the original  patent, and the nature of 
litigation materials relating to these issues.  Enough  information should 
be submitted to clearly inform the Office of the nature  of these issues 
so that the Office can intelligently evaluate the need for  asking for 
further materials in the litigation.  See MPEP w 1442.04. 

2001.06(d)  Information Relating to Claims Copied From a Patent 


        Where claims are copied or substantially copied from a patent, 37 
CFR  1.607(c) requires applicant shall, at the time he or she presents the 
claim(s),  identify the patent and the numbers of the patent claims. 
Failure to comply with 37 CFR  1.607(c) may result in the issuance of a 
requirement for information as to  why an identification of the source of 
the copied claims was not made.  Clearly,  the information required by 37 
CFR 1.607(c) as to the source of copied claims  is material information 
under 37 CFR 1.56 and failure to inform the PTO of  such information may 
violate the duty of disclosure. 


2002    Disclosure - By Whom and How Made 


37 CFR 1.56. Duty to disclose information material to patent 
ability. 

***** 

(d)   Individuals other than the attorney, agent or inventor may comply 
with  this section by disclosing information to the attorney, agent, or 
inventor. 

2002.01       By Whom Made 


37 CFR 1.56(d) makes clear that information may be disclosed to the Office 
 through an attorney or agent of record or through a pro se inventor, and 
that  other individuals may satisfy their duty of disclosure to the Office 
by disclosing  information to such an attorney, agent, or inventor who 
then is responsible  for disclosing the same to the Office.  Information 
that is not material need  not be passed along to the Office. 


2002.02       Must be in Writing 


It is clear that the disclosures under 37 CFR 1.56 must be in writing as 
prescribed  by 37 CFR 1.2 which requires that 

[a]ll business with the Patent and Trademark Office should be transacted 
in  writing.  ***The action of the . . . Office will be based exclusively 
on the  written record in the Office. 

Further, as provided in 37 CFR 1.4(b), 

Since each application file should be complete in itself, a separate copy 
of  every paper to be filed in an application should be furnished for each 
application  to which the paper pertains, even though the contents of the 
papers filed in  two or more applications may be identical. 


2003    Disclosure  __ When Made 


In reissue applications, applicants are encouraged to file information 
disclosure  statements at the time of filing or within 2 months of filing, 
since reissue  applications are taken up "special": see MPEP w 1442 and w 
1442.03.  However,  in a reissue where waiver of the normal 
2 month delay period of 37 CFR 1.176 is being requested (see MPEP w 1441), 
 the statement should be filed at the time of filing the application, or 
as  soon thereafter as possible. 

The presumption of validity is generally strong when prior art was before 
and  considered by the Office and weak  when it was not: Bolkcom v. 
Carborundum  Co., 523 F.2d 492, 498 186 USPQ 466, 471, 472 (6th Cir. 1975). 


2003.01       Disclosure After Patent Is Granted 


 BY CITATIONS OF PRIOR ART UNDER 
37 CFR 1.501 

Where a patentee or any member of the public (including private persons, 
corporate  entities, and government agencies) has prior patents or printed 
publications  which the patentee or member of the public desires to have 
made of record in  the patent file, patentee or such member of the public 
may file a citation  of such prior art with the Patent and Trademark 
Office pursuant to 37 CFR 1.501. Such citations and papers will be entered 
without comment by  the Office. The Office does not of course consider the 
citation and papers  but merely places them of record in the patent file. 
Information which may  be filed under 37 CFR 1.501 is limited to prior art 
patents and printed publications.  Any citations which include items other 
than patents and printed publications  will not be entered in the patent 
file. See MPEP 
w 2202 through w 2206. 

 BY REEXAMINATION 

Where any person, including patentee, has prior art patents and/or printed 
 publications which said person desires to have the Patent and Trademark 
Office  consider after a patent has issued, such person may file a 
Request for Reexamination of the patent (see 37 CFR 1.510 and MPEP w 2209 
through  w 2220). 


2004    Aids to Compliance With Duty of Disclosure [R-2] 


While it is not appropriate to attempt to set forth procedures by which 
attorneys,  agents, and other individuals may ensure compliance with the 
duty of disclosure,  the items listed below are offered as examples of 
possible procedures which  could help avoid problems with the duty of 
disclosure. Though compliance with  these 
procedures may not be required, they are presented as helpful suggestions 
for  avoiding duty of disclosure problems. 

1.  Many attorneys, both corporate and private, are using letters and 
questionnaires  for applicants and others involved with the filing and 
prosecution of the application  and checklists for themselves and 
applicants to ensure compliance with the  duty of disclosure.  The letter 
generally explains the duty of disclosure and  what it means to the 
inventor and assignee. The questionnaire asks the inventor  and assignee 
questions about 

__ the origin of the invention and its point of departure  from what was 
previously  known and in the prior art, 

__ possible public uses and sales, 

__ prior publication, knowledge, patents, foreign patents, etc. 

The checklist is used by the attorney to ensure that the applicant has 
been  informed of the duty of disclosure and that the attorney has 
inquired of and  cited material prior art. 

The use of these types of aids would appear to be most helpful, though not 
 required, in identifying prior art and may well help the attorney and the 
client  avoid or more easily explain a potentially embarrassing and 
harmful "fraud"  allegation. 

2.  It is desirable to ask questions about inventorship.  Who is the 
proper  inventor?  Are there disputes or possible disputes about 
inventorship?  If  there are questions, call them to the attention of the 
Patent and Trademark  Office. 

3.  It is desirable to ask questions of the inventor about the disclosure 
of  the best mode.  Make sure that the best mode is described.  The 
disclosure  of the best mode may be raised in litigation.  See, for 
example, Carlson "The  Best Mode Disclosure Requirement in Patent 
Practice", Vol. 60, Journal of the  Patent Office Society, page 171 (1978). 

4.  It is desirable for an attorney or agent to make certain that the 
inventor,  especially a foreign inventor, recognizes his or her 
responsibilities in signing  the oath or declaration. Note that 37 CFR 
1.69 requires that, 

37 CFR 1.69.  Foreign language oaths and declarations. 

(a)   Whenever an individual making an oath or declaration cannot 
understand  English, the oath or declaration must be in a language that 
such individual  can understand and shall state that such individual 
understands the content  of any documents to which the oath or declaration 
relates. 

***** 

Note MPEP w 602.06 for a more detailed discussion. 

5.  It is desirable for an attorney or agent to carefully evaluate and 
explain  to the applicant and others involved the scope of the claims, 
particularly  the broadest claims.  Ask specific questions about possible 
prior art which  might be material in reference to the broadest claim or 
claims.  There is some  tendency to mistakenly evaluate prior art in the 
light of the gist of what  is regarded as the invention or narrower 
interpretations of the claims, rather  than measuring the art against the 
broadest claim with all of its reasonable  interpretations.  It is 
desirable to pick out the broadest claim or claims  and measure the 
materiality of prior art against a reasonably broad interpretation  of 
these claims. 

6.  It may be useful to evaluate the materiality of prior art or other 
information  from the viewpoint whether it is the closest prior art or 
other information.  This will tend to put the prior art or other 
information in better perspective. 
 However, 37 CFR 1.56 may still require the submission of prior art or 
other  information which is not as close as that of the record. 

7.  Care should be taken to see that prior art or other information cited 
in  a specification or in an information disclosure statement is properly 
described  and that the information is not incorrectly or incompletely 
characterized. 
 It is particularly important for an attorney or agent to review, before 
filing,  an application which was prepared by someone else; e.g., a 
foreign application. 
 It is also important that an attorney or agent make sure that foreign 
clients,  including foreign applicants, attorneys, and agents understand 
the requirements  of the duty of disclosure, and that the U.S. attorney or 
agent review any information  disclosure statements or citations to ensure 
that compliance with 37 CFR 1.56  is present.  See Gemveto Jewelry 
Company, Inc. v. Lambert Bros., Inc., 216  USPQ 976 (S.D. N.Y. 1982) 
wherein a patent was held invalid or unenforceable  because patentee's 
foreign counsel did not disclose to patentee's United States  counsel or 
to the Office prior art cited by the Dutch Patent Office in connection 
with the patentee's corresponding Dutch application.  The Court stated, 
216  USPQ at 985, 

Foreign patent attorneys representing applicants for U.S. patents through 
local  correspondent firms surely must be held to the same standards of 
conduct which  apply to their American counterparts; a double standard of 
accountability would  allow foreign attorneys and their clients to escape 
responsibility for fraud  or inequitable conduct merely by withholding 
from the local correspondent information  unfavorable to patentability and 
claiming ignorance of United States disclosure  requirements. 

8.  Care should be taken to see that inaccurate statements or inaccurate 
experiments  are not introduced into the specification, either 
inadvertently or intentionally.  For example, stating that an experiment 
"was run" or  "was conducted"  when  in fact the experiment was not run or 
conducted is a misrepresentation of the  facts.  No results should be 
represented as actual results unless they have  actually been achieved. 
Paper examples should not be described using the past  tense. See MPEP 
w 608.01(p) item D and w 707.07(l).  Also, misrepresentations can occur 
when  experiments which were run or conducted are inaccurately reported in 
the specification;  e.g., an experiment is changed by leaving out one or 
more ingredients.  See  Steierman v. Connelly, 192 USPQ 433 (* Bd. * Pat. 
Int. 1975); 192 USPQ 446 
(* Bd. * Pat. Int. 1976). 

9.  Do not rely on the examiner of a particular application to be aware of 
 other applications belonging to the same applicant or assignee.  It is 
desirable  to call such applications to the attention of the examiner even 
if there is  only a question that they might be "material to 
patentability" of the application  the examiner is considering.  It is 
desirable to be particularly careful that  prior art or other information 
in one application is cited to the examiner  in other applications to 
which it would be  material.   Do not assume that  an examiner will 
necessarily remember, when examining a particular application,  other 
applications which the examiner is examining, or has examined.  See Armour 
 & Co. v. Swift & Co., 
175 USPQ 70, 79 (7th Cir. 1972); Kangaroos U.S.A., Inc. v. Caldor, Inc., 
222  USPQ 703, 708, 713- 714 (S.D. N.Y.  1984). 

While vacating the summary judgment and remanding for trial in Kangaroos, 
the  Court, 228 USPQ 32 (Fed. Cir. 1985) stated at page 35 that a  "lapse 
on the  part of the examiner does not excuse the applicant." 

10.   When in doubt, it is desirable and safest to submit information. 
Even  though the attorney, agent, or applicant doesn't consider it 
necessarily material,  someone else may see it differently and 
embarrassing questions can be avoided.  The court in U.S. Industries v. 
Norton Co., 210 USPQ 94, 107 (N.D. N.Y. 1980)  stated "In short, the 
question of relevancy in close cases, should be left  to the examiner and 
not the applicant."  See also 
Labounty Mfg., Inc. v. U.S. Int'l Trade Comm., 958 F.2d 1066, 22 USPQ 2d 
1025 
(Fed. Cir. 1992). 

11.   It may be desirable to submit information about prior uses and sales 
 even if it appears that they may have been experimental, not involve the 
specifically  claimed invention, or not encompass a completed invention. 
Note Hycor Corp.  v. The Schleuter Co., 740 F.2d 1529, 222 USPQ 553, 
557-559 (Fed. Cir. 1984). 
 See also Labounty Mfg., Inc. v. U.S. Int'l Trade Comm., 958 F.2d 1066, 22 
USPQ 2d 1025 (Fed. Cir. 1992). 

12.   Submit information promptly. An applicant, attorney, or agent who is 
 aware of prior art or other information and its significance should 
submit  same early in prosecution; e.g., before the first action by the 
examiner, and  not wait until after allowance.  Potentially material 
information discovered  late in the prosecution should be immediately 
submitted. That the issue fee  has been paid is no reason or excuse for 
failing to submit information.  See  Elmwood Liquid Products, Inc. v. 
Singleton Packing Corp., 170 USPQ 398 (M.D.  Fla. 1971). 

13.   It is desirable to avoid the submission of long lists of documents 
if  it can be avoided.  Eliminate clearly irrelevant and marginally 
pertinent cumulative  information.  If a long list is submitted, highlight 
those documents which  have been specifically brought to applicant's 
attention and/or are known to  be of most significance.  Note Penn Yan 
Boats, Inc. v. Sea Lark Boats, Inc., 359 F. Supp. 948, 175 USPQ 260 (S.D. 
Fla. 1972), aff'd, 479 F.2d. 1338, 178  USPQ 577 (5th Cir. 1973), cert. 
denied 414 U.S. 874 (1974). 

14.   Watch out for continuation-in-part applications where intervening 
material  information or documents may exist; particularly watch out for 
foreign patents  and publications related to the parent application and 
dated more than 1 year  before the filing date of the CIP.  These and 
other intervening documents may  be material information:  In re Ruscetta, 
118 USPQ 101, 104 (C.C.P.A. 1958);  In re von Lagenhoven, 458 F.2d. 132, 
173 USPQ 426 (C.C.P.A. 1972); Chromalloy American Corp. v. Alloy Surfaces 
Co.,  Inc., 339 F. Supp. 859, 
173 USPQ 295 (D. Del. 1972). 

15.   Watch out for information that might be deemed to be prior art under 
 Section 102(f) and (g). 

Prior *>art< under 35 U.S.C. 102(f) may be combined with 35 U.S.C. 103; 
see  Corning Glass Works v. Schuyler, 169 USPQ 193 (D.D.C. 1971), aff'd in 
Corning  Glass Works v. Brenner, 175 USPQ 516, (D.C. Cir. 1975) 
where the District Court adopted defendant's post trial memorandum on 35 
U.S.C.  102(f) and 103; Halliburton v. Dow Chemical, 182 USPQ 178, 186 
(N.D.Okla. 1974);  Dale Electronics v. R.C.L. Electronics, 180 USPQ 225 
(1st Cir. 1973) and, Ex  parte Andresen, 212 USPQ 100 (Bd. App. 1981). 

Note also that prior invention under 35 U.S.C. 102(g), may be combined 
with  35 U.S.C. 103, such as in In re Bass, 474 F.2d 1276, 177 USPQ 178 
(C.C.P.A.  1973). 

Note 35 U.S.C. 103 >(c)<** disqualifies 35 U.S.C. 102(f)/103 or 102(g)/103 
 prior art which was, at the time the second invention was made, owned by 
or  subject to an obligation of assignment to, the person who owned the 
first invention*>.< 
 See 1050 O.G. 316. 

16.   Watch out for information picked up by the inventors and others at 
conventions,  plant visits, in-house reviews, etc.; see, for example, Dale 
Electronics, Inc.  v. R.C.L. Electronics, Inc., 180 USPQ 225, 228 (1st 
Cir. 1973). 

17.   Make sure that all of the individuals who are subject to the duty of 
 disclosure, such as spelled out in 
37 CFR 1.56 are informed of and fulfill their duty. 

18. Finally, if information was specifically considered and discarded as 
not  material, this fact might be recorded in an attorney's file or 
applicant's  file, including the reason for discarding it.  If judgment 
might have been  bad or something might have been overlooked 
inadvertently, a note made at the  time of evaluation might be an 
invaluable aid in explaining that the mistake  was honest and excusable. 
Though such records are not required, they could  be helpful in recalling 
and explaining actions in the event of a question of  "fraud" or 
"inequitable conduct" raised at a later time. 


2010    Office  Handling of Duty of Disclosure/Inequitable Conduct Issues 

Determination of inequitable conduct issues requires an evaluation of the 
intent  of the party involved.  While some court decisions have held that 
intent may  be inferred in some circumstances, consideration of the good 
faith of the party,  or lack thereof, is often required.  In several court 
decisions, a high level  of proof of intent to mislead the Office was 
required in order to prove inequitable  conduct under 37 CFR 1.56. See In 
re Harito, 
847 F.2d 801.6 USPQ 2D 1930 (Fed. Cir. 1988) and FMC Corp. v. Manitowoc 
Co.  Inc., 835 F.2d 1411, 5 USPQ 2d 1112 (Fed. Cir. 1988).  The Office is 
not the  best forum in which to determine whether there was an ``intent to 
mislead'',  such intent is best determined when the trier of facts can 
observe demeanor  of witnesses subjected to cross-examination.  A court, 
with subpoena power,  is presently the best forum to consider duty of 
disclosure issues under the  present evidentiary standard for finding an 
``intent to mislead''. The court  proceeding involves two participating 
adverse parties.  This is not the case  in the Office, since even 
``protesting'' parties are not permitted to participate  under the Rules. 
Also, it is the courts and not the Office that are in the  best position 
to fashion an equitable remedy to fit the precise facts in those  cases 
where inequitable conduct is established.  Furthermore, inequitable 
conduct  is not set by statute as a criteria for patentability but rather 
is a judicial  application of the doctrine of unclean hands which is 
appropriate to be handled  by the courts rather than by an administrative 
body.  Because of the lack of  tools in the Office to deal with this issue 
and because of its sensitive nature  and potential impact on a patent, 
Office determinations generally will not  deter subsequent litigation of 
the same issue in the courts on appeal or in  separate litigation.  Office 
determinations would significantly add to the  expense and time involved 
in obtaining a patent with little or no benefit to  the patent owner or 
any other parties with an interest. 

Accordingly, the Office does not investigate and reject original or 
reissue  applications under 37 CFR 1.56.  Likewise, the Office will not 
comment upon  duty of disclosure issues which are brought to the attention 
of the Office  in original or reissue applications except to note in the 
application, in appropriate  circumstances, that such issues are no longer 
considered by the Office during  its examination of patent applications. 
Examination of lack of deceptive intent  in reissue applications will 
continue but without any investigation of inequitable  conduct issues. 
Applicant's statement of lack of deceptive intent normally  will be 
accepted as dispositive except in special circumstances such as an 
admission or judicial determination of fraud or inequitable conduct. See 
MPEP  # 2022.5. 


2012    Reissue Applications Involving Issues of Fraud, Inequitable 
Conduct, and/or Violation of Duty of Disclosure 

Questions of  "fraud," "inequitable Conduct," or violation  of "duty of 
disclosure" or  "candor and good faith" can arise in  reissue applications. 

REQUIREMENT FOR "ERROR WITHOUT ANY DECEPTIVE INTENTION" 

Both 35 U.S.C. 251 and 37 CFR 1.175 promulgated pursuant thereto require 
that  the error must have arisen "without any deceptive intention." In re 
Heany,  1911 C.D. 138, 180, unequivocally states 

"Where such a condition [fraudulent or deceptive intention] is shown to 
exist  the right to reissue is forfeited. " 

Similarly, the court in In re Clark, 187 USPQ 209, 213 (C.C.P.A. 1975) 
indicated, 
"Reissue is not available to rescue a patentee who had presented claims 
limited  to avoid particular prior art and then had failed to disclose 
that prior art  . . . after that failure to disclose has resulted in 
invalidating of the claims." 

It is clear that "fraud" cannot be purged through the reissue process. 
See  conclusions of Law 89 and 91 in Intermountain Research and 
Engineering Co.,  Inc. v. 
Hercules Inc., 171 USPQ 577, 631, 632 (C.D. Cal. 1971). 

Clearly, where several patents or applications stem from an original 
application  which contained fraudulent claims ultimately allowed, the 
doctrine of unclean  hands bars allowance or enforcement of any of the 
claims of any of the applications  or patents: Keystone, Driller Co. v. 
General Excavator Co., 290 U.S. 240, 245,  19 USPQ 228, 230 (1933); East 
Chicago Machine Tool Corp. v. Stone Container  Corp., 181 USPQ 744, 748 
(N.D. Ill., 1974), modified, 185 USPQ 210.   See also  Chromalloy American 
Corp. v. Alloy Surfaces, Inc., 173 USPQ 295 (D.Del. 1972)  and Strong v. 
General Electric Co., 162 USPQ 141 (N.D. Ga. 1969), aff'd, 168  USPQ 8 
(5th Cir. 1970) where fraud of inequitable conduct affecting only certain 
claims or only one of related patents was held to affect the other claims 
or  patent.  Clearly, "fraud" practiced or attempted in an application 
which issues  as a patent is "fraud" practiced or attempted in connection 
with any subsequent  application to reissue that patent.  The reissue 
application and the patent  are inseparable as far as questions of 
"fraud,"  "inequitable conduct," or  "violation of the duty of disclosure" 
are concerned.  See In re Heany, supra;  and Norton v. Curtiss, 433 F.2d 779, 
167 USPQ 532, 543 (C.C.P.A. 1970), wherein the Court stated, 

"We take this to indicate that any conduct which will prevent the 
enforcement  of a patent after the patent issues should, if discovered 
earlier, prevent  the issuance of the patent." 

Clearly, if a reissue patent would not be enforceable after its issue 
because  of "fraud", "inequitable conduct" or  "violation of the duty of 
disclosure"  during the prosecution of the patent sought to be reissued, 
the reissue patent  application should not issue.  Under such 
circumstances, an  appropriate remedy  would be to reject the claims in 
the application in accordance with 35 U.S.C.  251, see MPEP #  2022.05 and 
Chapter 1400. 


2012.01       Collateral Estoppel 


The Supreme Court in Blonder-Tongue Laboratories, Inc. v. University of 
Illinois  Foundation 402 U.S. 313, 
169 USPQ 513 (1971) set forth the rule that once a patent has been 
declared  invalid via judicial inquiry, a collateral estoppel barrier is 
created against  further litigation involving the patent, unless the 
patentee-plaintiff can  demonstrate "that he did not have"  a full and 
fair chance to litigate the  validity of his patent in  "the earlier 
case."  See also Ex parte Varga, 189  USPQ 209 (Bd. App. 1973). As stated 
in Kaiser Industries Corp. v. Jones & Laughlin  Steel Corp., 185 USPQ 343, 
362 (3rd Cir. 1975), 

"In fashioning the rule of Blonder-Tongue, Justice White for a unanimous 
Court  made it clear that a determination of patent invalidity, after a 
thorough and  equitable judicial inquiry, creates a collateral estoppel 
barrier to further  litigation to enforce that patent." 

Under 35 U.S.C. 251, the Commissioner can reissue a patent only if there 
is  "error without any deceptive intention."  The Commissioner is without 
authority  to reissue a patent when "deceptive intention" was present 
during prosecution  of the parent application: In re Clark, 
187 USPQ 209 (C.C.P.A. 1975), and In re Heany, 1911 C.D. 138, 180. Thus, 
the  collateral estoppel barrier applies where reissue is sought of a 
patent which  has been held invalid or unenforceable for "fraud" or 
"violation of duty of  disclosure" in procuring of said patent. It was 
held in In re Kahn, 202 USPQ  772, 773 (Comr. Pats. 1979): 

"Therefore, since the Kahn patent was held invalid, inter alia, for 
"failure  to disclose material facts of which * * * [Kahn] was aware" 
this application  may be stricken under 37 CFR 1.56 via the doctrine of 
collateral estoppel as  set forth in Blonder-Tongue supra." 

***** 

"The Patent and Trademark Office . . . has found no clear justification 
for  not adhering to the doctrine of collateral estoppel under 
Blonder-Tongue in this case. Applicant has had his day in court. He 
appears  to have had a full and fair chance to litigate the validity of 
his patent." 
Note MPEP w 2259 for collateral estoppel in reexamination proceedings. 
37 CFR 1.291 permits protests by the public against pending applications. 

2013    Protests Involving Issues of Fraud, Inequitable Conduct, and/or 
Violation of Duty of Disclosure 

37 CFR 1.291 permits protests by the public against pending applications. 
Submissions under 37 CFR 1.291 are not limited to prior art documents such 
 as patents and publications, but are intended to include any information, 
which  in the protestor's opinion, would make or have made the grant of 
the patent  improper: see MPEP w 1901.02. This includes, of course, 
information indicating  the presence of "fraud" or "inequitable conduct" 
or "violation of the duty  of disclosure", which will be entered in the 
application file, generally without  comment, see MPEP w 1901.06. 

Protests should be in conformance with 37 CFR 1.291(a) and (b), and 
include  a statement of the alleged facts involved, the point or points to 
be reviewed,  and the action requested. Any briefs or memoranda in support 
of the petition,  and any affidavits, declarations, depositions, exhibits, 
or other material  in support of the alleged facts, should accompany the 
protest. 


2014    Duty of Disclosure in Reexamination Proceedings 


As provided in 37 CFR 1.555, the duty of disclosure in reexamination 
proceedings  applies to the patent owner. That duty is a continuing 
obligation on the part  of the patent owner throughout the proceedings. 
However, issues of  "fraud,"  " inequitable conduct," or  "violation of 
duty of disclosure" are not considered  in reexamination. See MPEP w 2280. 
If questions of "fraud" or  "inequitable  conduct"  or  "violation of the 
duty of disclosure" are discovered during reexamination  proceedings, the 
existence of such questions will be noted by the examiner  in an Office 
action, in which case the patent owner may desire to consider  the 
advisability of filing a reissue application to have such questions 
considered  and resolved.  See MPEP w 2258. 

For the patent owner's duty to disclose prior or concurrent proceedings in 
 which the patent is or was involved, see MPEP w 2282 and w 2001.06(c). 

2016    Fraud, Inequitable Conduct, or Violation of Duty of Disclosure 
Affects All Claims 


A finding of "fraud," " inequitable conduct," or violation of duty of 
disclosure  with respect to any claim in an application or patent, renders 
all the claims  thereof unpatentable or invalid: Chromalloy American Corp. 
v. Alloy Surfaces  Inc., 173 USPQ 295 (N. Del. 1972) and Strong v. General 
Electric Co., 162 USPQ  141 (N. D. Ga. 1969), aff'd, 168 USPQ 8 (5th Cir. 
1970).  In J. P. Stevens  & Co., v. Lex Tex Ltd., Inc., 223 USPQ 1089, 
1093-1094 (Fed. Cir. 1984), the  court stated, 

"Once a court concludes that inequitable conduct occurred, all the claims 
__ 
 not just the particular claims  in which the inequitable conduct is 
directly  connected __  are unenforceable.  See generally, cases collected 
in 4 Chisum,  PATENTS, paragraph 19.03[6] at 19-85 n. 10 (1984). 
Inequitable conduct "goes  to the patent right as a whole, independently 
of particular claims".  In re  Clark, 
522 F.2d 623, 187 USPQ 209, 212 (CCPA)." 

 The Court noted in Stevens that while in 

"In re Multiple Litigation Involving Frost Patent," 540 F.2d 601, 611, 191 
 USPQ 241, 249 (3rd. Cir. 1976), some claims were upheld despite 
nondisclosure  with respect to others. The case is not precedent in this 
court." 
As stated in Gemveto Jewelry Co. v. Lambert Bros., Inc., 542 F. Supp. 933, 
 216 USPQ 976, 984 (S. D. N. Y. 1984) 

"The gravement of the fraud defense is that the patentee has failed to 
discharge  his duty of dealing with the examiner in a manner free from the 
taint of "fraud  or other inequitable conduct". If such conduct is 
established in connection  with the prosecution of a patent, the fact that 
the lack of candor did not  directly affect all the claims in the patent 
has never been the governing principle.  It is the inequitable conduct 
that generates the unenforceability of the patent  and we  cannot  think 
of  cases where a patentee partially escaped the consequences  of his 
wrongful acts by arguing that he only committed acts of omission or 
commission with respect to a limited number of claims. It is an all or 
nothing  proposition." [Emphasis in original.] 


2022.05       Determination of "Error Without Any Deceptive Intention" 

If the application is a reissue application, the action by the examiner 
may  extend to a determination as to whether  the  "error" required by 35 
U.S.C. 251 has been alleged and shown.  Further, the examiner should 
determine whether applicant has averred in the  reissue oath or 
declaration, as required by 37 CFR 1.175(a)(6), that said "errors"  arose 
"without any deceptive intention." 


However, the examiner should not normally comment or question as to 
whether  in fact the averred statement as to lack of deceptive intention 
appears correct  or true.  See MPEP w 1414.04 and w 1444. 

D D D D D D D D D D D D D D D D D D D D D D D D D D D D D D D 


Contents 

2105        Patentable Subject Matter - Living Subject Matter 

2106        Patentable Subject Matter - **>Computer-Related Inventions< 
2106.01     Computer Programming and 35 U.S.C. 112, First Paragraph 
2106.02     Disclosure in Computer Programming Cases 

2107        General Principles Governing Utility Rejections 

2107.01     Procedural Considerations Related to Rejections for Lack 
            of Utility 

2107.02     Special Considerations for Asserted Therapeutic or 
            Pharmacological Utilities 

2111        Claim Interpretation; Broadest Reasonable Interpretation 
2111.01     Plain Meaning 

2111.02     Weight of Preamble 

>2111.03    Transitional Phrases< 

2112        Requirements of Rejection Based on Inherency; 
            Burden of Proof 

2112.01     Composition, Product, and Apparatus Claims 

2112.02     Process Claims 

2113        Product by Process Claims 

2114        Apparatus and Article Claims - Functional Language 

2115        Material or Article Worked Upon by Apparatus 

2116        Material Manipulated in Process 

2116.01     Novel, Unobvious Starting Material or End Product 

** 

** 

2121        Prior Art; General Level of Operability Required to 
            Make a Prima Facie Case 

2121.01     Use of Prior Art in Rejections Where Operability Is 
            in Question 

2121.02     Compounds and Compositions - What Constitutes 
            Enabling Prior Art 

2121.03     Plant Genetics - What Constitutes Enabling Prior Art 

2121.04     Apparatus and Articles - What Constitutes Enabling 
            Prior Art 

2122        Discussion of Utility in the Prior Art 

2123        Rejection Over Prior Art's Broad Disclosure Instead 
            of Preferred Embodiments 

2124        Exception to the Rule That the Critical Reference 
            Date Must Precede the Filing Date 

2125        Drawings as Prior Art 

2126        Availability of a Document as a "Patent" for Purposes of 
            Rejection Under 35 U.S.C. 102(a), (b), and (d) 

2126.01     Date of Availability of a Patent as a Reference 

2126.02     Scope of Reference's Disclosure Which Can Be 
            Used to Reject Claims When the Reference Is a 
            "Patent" but Not a "Publication" 

2127        Domestic and Foreign Patent Applications as Prior Art 
2128        "Printed Publications" as Prior Art 

2128.01     Level of Public Accessibility Required 

2128.02     Date Publication Is Available as a Reference 

2129        Admissions as Prior Art 

2131        Anticipation - Application of 35 U.S.C. 102(a), (b), and (e) 
2131.01     Multiple Reference 35 U.S.C. 102 Rejections 

2131.02     Genus-Species Situations 

2131.03     Anticipation of Ranges 

2131.04     Secondary Considerations 

2131.05     Nonanalogous Art 

2132        35 U.S.C. 102(a) 

2132.01     Publications as 35 U.S.C. 102(a) Prior Art 

2133        35 U.S.C. 102(b) 

2133.01     Rejections of Continuation-In-Part (CIP) Applications 
2133.02     Rejections Based on Publications and Patents 

2133.03     Rejections Based on "Public Use" or "On Sale" 

2133.03(a)  "Public Use" 

2133.03(b)  "On Sale" 

2133.03(c)  The "Invention" 

2133.03(d)  "In This Country" 

2133.03(e)  Permitted Activity; Experimental Use 

2133.03(e)(1)     Commercial Exploitation 

2133.03(e)(2)     Intent 

2133.03(e)(3)     "Completeness" of the Invention 

2133.03(e)(4)     Factors Indicative of an Experimental Purpose 

2133.03(e)(5)     Experimentation and Degree of Supervision and Control 
2133.03(e)(6)     Permitted Experimental Activity and Testing 

2133.03(e)(7)     Activity of an Independent Third Party Inventor 
2134        35 U.S.C. 102(c) 

2135        35 U.S.C. 102(d) 

2135.01     The Four Requirements of 35 U.S.C. 102(d) 

2136        35 U.S.C. 102(e) 

2136.01     Status of U.S. Patent as a Reference Before and After 
           Issuance 
2136.02     Content of the Prior Art Available Against the Claims 
2136.03     Critical Reference Date 

2136.04     Different Inventive Entity; Meaning of "By Another" 

2136.05     Overcoming a Rejection Under 35 U.S.C. 102(e) 

2137        35 U.S.C. 102(f) 

2137.01     Inventorship 

2137.02     Applicability of 35 U.S.C. 103 >(c)<** 

2138        35 U.S.C. 102(g) 

2138.01     Interference Practice 

2138.02     "The Invention Was Made in This Country" 

2138.03     "By Another Who Has Not Abandoned, Suppressed, 
            or Concealed It" 

2138.04     "Conception" 

2138.05     "Reduction to Practice" 

2138.06     "Reasonable Diligence" 

2141        35 U.S.C. 103; The Graham Factual Inquiries 

2141.01     Scope and Content of the Prior Art 

2141.01(a)  Analogous and Nonanalogous Art 

2141.02     Differences Between Prior Art and Claimed Invention 

2141.03     Level of Ordinary Skill in the Art 

2142        Legal Concept of Prima Facie Obviousness 

2143        Basic Requirements of a Prima Facie Case of Obviousness 
2143.01     Suggestion or Motivation to Modify the References 

2143.02     Reasonable Expectation of Success Is Required 

2143.03     All Claim Limitations Must Be Taught or Suggested 

2144        Sources of Rationale Supporting a Rejection Under 
            35 U.S.C. 103 

2144.01     Implicit Disclosure 

2144.02     Reliance on Scientific Theory 

2144.03     Reliance on Common Knowledge in the Art or "Well Known" 
            Prior Art 

2144.04     Legal Precedent as Source of Supporting Rationale 

2144.05     Obviousness of Ranges 

2144.06     Art Recognized Equivalence for the Same Purpose 

2144.07     Art Recognized Suitability for an Intended Purpose 

2144.08     Obviousness of Species When Prior Art Teaches Genus 

2144.09     Close Structural Similarity Between Chemical 
            Compounds (Homologs, Analogues, Isomers) 

2145        Consideration of Applicant's Rebuttal Arguments 

2146        35 U.S.C. 103>(c)<** 

2161        Three Separate Requirements for Specification 
            Under 35 U.S.C. 112, First Paragraph 

2162        Policy Underlying 35 U.S.C. 112, First Paragraph 

2163        The Written Description Requirement 

2163.01     Support for Claimed Subject Matter in Disclosure 

2163.02     Standard for Determining Compliance With the 
            Written Description Requirement 

2163.03     Typical Circumstances Where Adequate Written 
            Description Issue Arises 

2163.04     Burden on the Examiner With Regard to the Written 
            Description Requirement 

2163.05     Changes to the Scope of Claims 

2163.06     Relationship of Written Description Requirement to 
            New Matter 

2163.07     Amendments to Application Which Are Supported in 
            the Original Description 

2163.07(a)  Inherent Function, Theory, or Advantage 

2163.07(b)  Incorporation by Reference 

2164        The Enablement Requirement 

2164.01     Test of Enablement 

2164.02     Working Example 

2164.03     Relationship of Predictability of the Art and the 
            Enablement Requirement 

2164.04     Burden on the Examiner Under the Enablement Requirement 
2164.05     Determination of Enablement Based on Evidence as a Whole 
2164.05(a)  Specification Must Be Enabling as of the Filing Date 

2164.05(b)  Specification Must Be Enabling to Persons of 
            Ordinary Skill in the Art 

2164.06     Examples of Enablement Issues 

2164.07     Relationship of Enablement Requirement to Utility 
            Requirement of 35 U.S.C. 101 

2164.08     Enablement Commensurate in Scope with Claims 

2164.08(a)  Single Means Claim 

2164.08(b)  Inoperative Subject Matter 

2164.08(c)  Critical Feature Not Claimed 

2165        The Best Mode Requirement 

2165.01     Considerations Relevant to Best Mode 

2165.02     Best Mode Requirement Compared to Enablement Requirement 
2165.03     Requirements for Rejection for Lack of Best Mode 

2165.04     Examples of Evidence of Concealment 

2171        Two Separate Requirements for Claims Under 
            35 U.S.C. 112, Second Paragraph 

2172        Subject Matter Which Applicants Regard as Their 
            Invention 

2173        Claims Must Particularly Point Out and Distinctly 
            Claim the Invention 

2173.01     Claim Terminology 

2173.02     Clarity and Precision 

2173.03     Inconsistency Between Claim and Specification 
            Disclosure or Prior Art 

2173.04     Breadth Is Not Indefiniteness 

2173.05     Specific Topics Related to Issues Under 35 U.S.C. 112, 
            Second Paragraph 

2173.05(a)  New Terminology 

2173.05(b)  Relative Terminology 

2173.05(c)  Numerical Ranges and Amounts Limitations 

2173.05(d)  Exemplary Claim Language (for example, such as) 

2173.05(e)  Lack of Antecedent Basis 

2173.05(f)  Reference to Limitations in Another Claim 

2173.05(g)  Functional Limitations 

2173.05(h)  Alternative Limitations 

2173.05(i)  Negative Limitations 

2173.05(j)  Old Combination 

2173.05(k)  Aggregation 

2173.05(l)  Incomplete Claims 

2173.05(m)  Prolix 

2173.05(n)  Multiplicity 

2173.05(o)  Double Inclusion 

2173.05(p)  Claim Directed to Product-By-Process or 
            Product and Process 

2173.05(q)  "Use" Claims 

2173.05(r)  Omnibus Claim 

2173.05(s)  Reference to Figures or Tables 

2173.05(t)  Chemical Formula 

2173.05(u)  Trademarks and Trade Names in a Claim 

2173.05(v)  Mere Function of a Machine 

2173.06     Prior Art Rejection of Claim Rejected as Indefinite 

2174        Relationship Between the Requirements of the First 
            and Second Paragraphs of 35 U.S.C. 112 

2181        Identifying a 35 U.S.C. 112, Sixth Paragraph 
            Limitation 

2182        Scope of the Search and Identification of the 
            Prior Art 

2183        Making a Prima Facie Case of Equivalence 

2184        Determining Whether an Applicant Has Met the 
            Burden of Proving Nonequivalence After a 
            Prima Facie Case Is Made 

2185        Related Issues Under 35 U.S.C. 112, First or 
            Second Paragraphs 

2186        Avoid Confusion With the Doctrine of Equivalents 


2105        Patentable Subject Matter - Living Subject Matter [R-2] 

        The decision of the Supreme Court in Diamond v. Chakrabarty, 206 
USPQ  193 (1980), held that microorganisms produced by genetic engineering 
are not  excluded from patent protection by 35 U.S.C. 101. It is clear 
from the Supreme  Court decision and opinion that the question of whether 
or not an invention  embraces living matter is irrelevant to the issue of 
patentability. The test  set down by the Court for patentable subject 
matter in this area is whether  the living matter is the result of human 
intervention. 

        In view of this decision, the Office has issued these guidelines 
as  to how 35 U.S.C. 101 will be interpreted. 

        The Supreme Court made the following points in the Chakrabarty 
opinion: 

        1. "Guided by these cannons of construction, this Court has read 
the  term `manufacture' in w 101 in accordance with its dictionary 
definition to  mean `the production of articles for use from raw materials 
prepared by giving  to these materials new forms, qualities, properties, 
or combinations whether  by hand labor or by machinery.'" 

        2. "In choosing such expansive terms as `manufacture' and 
`composition  of matter,' modified by the comprehensive `any,' Congress 
plainly contemplated  that the patent laws would be given wide scope." 

        3. "The Act embodied Jefferson's philosophy that `ingenuity should 
 receive a liberal encouragement. `V Writings of Thomas Jefferson, at 
75-76.  See Graham v. John Deere Co., 
383 U.S. 1, 7-10 (1966). Subsequent patent statutes in 1836, 1870, and 
1874  employed this same broad language. In 1952, when the patent laws 
were recodified  Congress replaced the word `art' with `process,' but 
otherwise left Jefferson's  language intact. The Committee Reports 
accompanying the 1952 act inform us  that Congress intended statutory 
subject matter to `include any thing under  the sun that is made by man.' 
S. Rep. No. 1979, 82d Cong. 2d Sess., 5 (1952)." 

        4. "This is not to suggest that w 101 has no limits or that it 
embraces  every discovery. The laws of nature, physical phenomena, and 
abstract ideas  have been held not patentable." 

        5. "Thus, a new mineral discovered in the earth or a new plant 
found  in the wild is not patentable subject matter. Likewise, Einstein 
could not  patent his celebrated law that E=mc2 ; nor could Newton have 
patented the law  of gravity." 

        6. "His claim is not to a hitherto unknown natural phenomenon, but 
 to a non-naturally occurring manufacture or composition of matter __ a 
product  of human ingenuity `having a distinctive name, character [and] 
use.'" 
        7. "Congress thus recognized that the relevant distinction was not 
 between living and inanimate things, but between products of nature, 
whether  living or not, and human-made inventions. Here, respondent's 
microorganism  is the result of human ingenuity and research." 

        8. After reference to Funk Seed & Kalo Co., 333 U.S.127 (1948), 
"Here,  by contrast, the patentee has produced a new bacterium with 
markedly different  characteristics from any found in nature and one 
having the potential for significant  utility. His discovery is not 
nature's handiwork, but his own; accordingly  it is patentable subject 
matter under w 101." 

        A review of the Court statements above as well as the whole 
Chakrabarty  opinion reveals: 

        (1)   That the Court did not limit its decision to genetically 
engineered  living organisms, 

        (2)   The Court enunciated a very broad interpretation of 
"manufacture"  and "composition of matter" in Section 101 (Note esp. 
quotes 1, 2, and 3 above), 
        (3)   The Court set forth several tests for weighing whether 
patentable  subject matter under Section 101 is present stating (in Quote 
7 above) that: 
 "The relevant distinction was not between living and inanimate things but 
 between products of nature, whether living or not, and human-made 
inventions." 

        The tests set forth by the Court are (note especially the 
italicized  portions): 

        - "The laws of nature, physical phenomena and abstract ideas" are 
not  patentable subject matter. 

        - "A non-naturally occurring manufacture or composition of matter 
-  a product of human ingenuity -having a distinctive name, character, 
[and] use"  is patentable subject matter. 

        - "A new mineral discovered in the earth or a new plant found in 
the  wild is not patentable subject matter. Likewise, Einstein could not 
patent  his celebrated E=mc2; nor could Newton have patented the law of 
gravity. Such  discoveries are `manifestations of . . . nature, free to 
all men and reserved  exclusively to none.' '' 

        - "However, the production of articles for use from raw materials 
prepared  by giving to these materials new forms, qualities, properties, 
or combinations  whether by hand, labor or machinery (emphasis added) is a 
manufacture under  Section 101." 

        In analyzing the history of the Plant Patent Act of 1930, the 
Court  stated: "In enacting the Plant Patent Act, Congress addressed both 
of these  concerns [the belief that plants, even those artificially bred, 
were products  of nature for purposes of the patent law . . . were thought 
not amenable to  the written description]. It explained at length its 
belief that the work of  the plant breeder `in aid of nature' was 
patentable invention. S. Rep. No.  315, 71st Cong. 2d Sess. 6-8 (1930); 
H.R. Rep. No. 1129. 71st Cong. 2d Sess.  7-9 (1930)." 

        The Office will decide the questions as to patentable subject 
matter  under 35 U.S.C. 101 on a case-by-case basis following the tests 
set forth in  Chakrabarty; e.g., that "a non-naturally occurring 
manufacture or composition  of matter" is patentable, etc. It is 
inappropriate to try to attempt to set  forth here in advance the exact 
parameters to be followed. 

        The standard of patentability has not and will not be lowered. The 
 requirements of 35 U.S.C. 102 and 103 still apply. The tests outlined 
above  simply mean that a rational basis will be present for any 35 U.S.C. 
101 determination.  In addition, the requirements of 35 U.S.C. 112 must 
also be met. In this regard,  see MPEP w 608.01(p). 

        Following this analysis by the Supreme Court of the scope of 35 
U.S.C.  101, the Board of Patent Appeals and Interferences has determined 
that plant  subject matter or an animal may be protected under 35 U.S.C. 
101. In Ex Parte  Hibberd, 227 USPQ 443 (**>Bd. Pat. App. & 
Inter.< 1985) the Board held that plant subject matter may be the proper 
subject  of a patent under 35 U.S.C. 101 even though such subject matter 
may be protected  under the Plant Patent Act (35 U.S.C. 161 - 164) or the 
Plant Variety Protection  Act (7 U.S.C. 2321 et seq.). In Ex Parte Allen, 
2 USPQ2d 1425 (**>Bd. Pat.  App. & Inter.< 1987), the Board decided that a 
polyploid Pacific coast oyster  could have been the proper subject of a 
patent under 35 U.S.C. 101 if all the  criteria for patentability were 
satisfied. Shortly after the Allen decision,  the Commissioner of Patents 
and Trademarks issued a notice (Animals - Patentability,  1077 O.G. 24, 
April 21, 1987) that the Patent and Trademark Office would now  consider 
nonnaturally occurring, nonhuman multicellular living organisms, including 
 animals, to be patentable subject matter within the scope of 35 U.S.C. 
101. 
        >If the broadest reasonable interpretation of the claimed 
invention  as a whole encompasses a human being, then a rejection under 35 
U.S.C. 101  must be made indicating that the claimed invention is directed 
to nonstatutory  subject matter. Furthermore, the claimed invention must 
be examined with regard  to all issues pertinent to patentability, and any 
applicable rejections under  35 U.S.C. 102, 103, or 112 must also be made.< 


2106    Patentable Subject Matter - **>Computer-Related Inventions< [R-2] 

** 

>I.   Introduction 

        These Examination Guidelines for Computer-Related Inventions 
("Guidelines")  are to assist Office personnel in the examination of 
applications drawn to  computer-related inventions. "Computer-related 
inventions" include inventions  implemented in a computer and inventions 
employing computer-readable media. 
 The Guidelines are based on the Office's current understanding of the law 
 and are believed to be fully consistent with binding precedent of the 
Supreme  Court, the Federal Circuit and the Federal Circuit's predecessor 
courts. 
        These Guidelines do not constitute substantive rulemaking and 
hence  do not have the force and effect of law.  These Guidelines have 
been designed  to assist Office personnel in analyzing claimed subject 
matter for compliance  with substantive law.  Rejections will be based 
upon the substantive law and  it is these rejections which are appealable. 
 Consequently, any failure by  Office personnel to follow the Guidelines 
is neither appealable nor petitionable. 
        The Guidelines alter the procedures Office personnel will follow 
when  examining applications drawn to computer-related inventions and are 
equally  applicable to claimed inventions implemented in either hardware 
or software. 
 The Guidelines also clarify the Office's position on certain 
patentability  standards related to this field of technology. Office 
personnel are to rely  on these Guidelines in the event of any 
inconsistent treatment of issues between  these Guidelines and any earlier 
provided guidance from the Office. 
        The Freeman-Walter-Abele test (In re Abele, 684 F.2d 902, 905-07, 
214  USPQ 682, 685-87 (CCPA 1982); In re Walter, 618 F.2d 758, 767, 205 
USPQ 397,  406-07 (CCPA 1980); In re Freeman, 573 F.2d 1237, 1245, 197 
USPQ 464, 471 (CCPA  1978)) may additionally be relied upon in analyzing 
claims directed solely  to a process for solving a mathematical algorithm. 

        Office personnel have had difficulty in properly treating claims 
directed  to methods of doing business.  Claims should not be categorized 
as methods  of doing business.  Instead, such claims should be treated 
like any other process  claims, pursuant to these Guidelines when 
relevant.  See, e.g., In re Toma,  575 F.2d 872, 877-78, 197 USPQ 852, 857 
(CCPA 1978); In re Musgrave, 431 F.2d  882, 893, 167 USPQ 280, 289-90 
(CCPA 1970).  See also In re Schrader, 22 F.3d  290, 297-98, 30 USPQ2d 
1455, 1461-62 (Fed. Cir. 1994) (Newman, J., dissenting);  Paine, Webber, 
Jackson & Curtis, Inc. v. Merrill Lynch, Pierce, Fenner & Smith,  Inc., 
564 F. Supp. 1358, 1368-69, 218 USPQ 212, 220 (D. Del. 1983). 
        The appendix which appears at the end of this section includes a 
flow  chart of the process Office personnel will follow in conducting 
examinations  for computer-related inventions. 

II.   Determine What Applicant Has Invented and Is              Seeking to 
 Patent 

        It is essential that patent applicants obtain a prompt yet 
complete  examination of their applications.  Under the principles of 
compact prosecution,  each claim should be reviewed for compliance with 
every statutory requirement  for patentability in the initial review of 
the application, even if one or  more claims are found to be deficient 
with respect to some statutory requirement. 
 Thus, Office personnel should state all reasons and bases for rejecting 
claims  in the first Office action.  Deficiencies should be explained 
clearly, particularly  when they serve as a basis for a rejection. 
Whenever practicable, Office personnel  should indicate how rejections may 
be overcome and how problems may be resolved. 
 A failure to follow this approach can lead to unnecessary delays in the 
prosecution  of the application. 

        Prior to focusing on specific statutory requirements, Office 
personnel  must begin examination by determining what, precisely, the 
applicant has invented  and is seeking to patent, and how the claims 
relate to and define that invention. 
 (As the courts have repeatedly reminded the Office:  "The goal is to 
answer  the question " `What did applicants invent?' "  Abele, 684 F.2d at 
907, 214  USPQ at 687.  Accord, e.g., Arrhythmia Research Tech. v. 
Corazonix Corp., 958  F.2d 1053, 1059, 22 USPQ2d 1033, 1038 (Fed. Cir. 
1992).)  Consequently, Office  personnel will no longer begin examination 
by determining if a claim recites  a "mathematical algorithm."  Rather, 
they will review the complete specification,  including the detailed 
description of the invention, any specific embodiments  that have been 
disclosed, the claims and any specific utilities that have been  asserted 
for the invention. 

A.  Identify and Understand Any Practical 
        Application Asserted for the Invention 

        The subject matter sought to be patented must be a "useful" 
process,  machine, manufacture or composition of matter, i.e., it must 
have a practical  application.  The purpose of this requirement is to 
limit patent protection  to inventions that possess a certain level of 
"real world" value, as opposed  to subject matter that represents nothing 
more than an idea or concept, or  is simply a starting point for future 
investigation or research.  Brenner v.  Manson, 383 U.S. 519, 528-36, 148 
USPQ 689, 693-96 (1966); In re Ziegler, 992  F.2d 1197, 1200-03, 26 USPQ2d 
1600, 1603-06 (Fed. Cir. 1993).  Accordingly,  a complete disclosure 
should contain some indication of the practical application  for the 
claimed invention, i.e., why the applicant believes the claimed invention 
is useful. 

        The utility of an invention must be within the "technological" 
arts.  See, e.g., Musgrave, 431 F.2d at 893, 167 USPQ at 289-90, cited 
with approval  in Schrader, 22 F.3d at 297, 30 USPQ2d at 1461 (Newman, J., 
dissenting).  (The  definition of "technology" is the "application 
of science and engineering to the development of machines and procedures 
in  order to enhance or improve human conditions, or at least to improve 
human  efficiency in some respect."  Computer Dictionary 384 (Microsoft 
Press, 2d  ed. 1994).)  A computer-related invention is within the 
technological arts. 
 A practical application of a computer-related invention is statutory 
subject  matter.  This requirement can be discerned from the variously 
phrased prohibitions  against the patenting of abstract ideas, laws of 
nature or natural phenomena. 
 An invention that has a practical application in the technological arts 
satisfies  the utility requirement.  E.g., In re Alappat, 33 F.3d 1526, 
1543, 31 USPQ2d  1545, 1556-57 (Fed. Cir. 1994) (in banc) (quoting Diamond 
v. Diehr, 450 U.S.  175, 192, 209 USPQ 1, 10 (1981)).  See also Alappat at 
1569, 31 USPQ2d at 1578-79 
(Newman, J., concurring) ("unpatentability of the principle does not 
defeat  patentability of its practical applications") (citing O'Reilly v. 
Morse, 56  U.S. (15 How.) 62, 114-19 (1854)); Arrhythmia, 958 F.2d at 
1056, 22 USPQ2d  at 1036; Musgrave, 431 F.2d at 893, 167 USPQ at 289-90 
("All that is necessary,  in our view, to make a sequence of operational 
steps a statutory `process'  within 35 U.S.C. 101 is that it be in the 
technological arts so as to be in  consonance with the Constitutional 
purpose to promote the progress of `useful  arts.'  Const. Art. 1, sec. 8."). 

        The applicant is in the best position to explain why an invention 
is  believed useful.  Office personnel should therefore focus their 
efforts on  pointing out statements made in the specification that 
identify all practical  applications for the invention.  Office personnel 
should rely on such statements  throughout the examination when assessing 
the invention for compliance with  all statutory criteria.  An applicant 
may assert more than one practical application,  but only one is necessary 
to satisfy the utility requirement.  Office personnel  should review the 
entire disclosure to determine the features necessary to  accomplish at 
least one asserted practical application. 

B.  Review the Detailed Disclosure and Specific 
        Embodiments of the Invention to Determine What 
        the Applicant Has Invented 

        The written description will provide the clearest explanation of 
the  applicant's invention, by exemplifying the invention, explaining how 
it relates  to the prior art and explaining the relative significance of 
various features  of the invention.  Accordingly, Office personnel should 
begin their evaluation  of a computer-related invention as follows: 

- determine what the programmed computer does when it performs the 
processes  dictated by the software (i.e., the functionality of the 
programmed computer)(Arrhythmia,  958 F.2d at 1057, 22 USPQ at 1036, "It 
is of course true that a modern digital  computer manipulates data, 
usually in binary form, by performing mathematical  operations, such as 
addition, subtraction, multiplication, division, or bit  shifting, on the 
data.  But this is only how the computer does what it does. 
 Of importance is the significance of the data and their manipulation in 
the  real world, i.e., what the computer is doing."); 

- determine how the computer is to be configured to provide that 
functionality 
(i.e., what elements constitute the programmed computer and how those 
elements  are configured and interrelated to provide the specified 
functionality); and 
-   if applicable, determine the relationship of the programmed computer 
to  other subject matter outside the computer that constitutes the 
invention (e.g.,  machines, devices, materials, or process steps other 
than those that are part  of or performed by the programmed computer). 
(Many computer-related inventions  do not consist solely of a computer. 
Thus, Office personnel should identify  those claimed elements of the 
computer-related invention that are not part  of the programmed computer, 
and determine how those elements relate to the  programmed computer. 
Office personnel should look for specific information  that explains the 
role of the programmed computer in the overall process or  machine and how 
the programmed computer is to be integrated with the other  elements of 
the apparatus or used in the process.) 

        Patent applicants can assist the Office by preparing applications 
that  clearly set forth these aspects of a 
computer-related invention. 

C.  Review the Claims 

        The claims define the property rights provided by a patent, and 
thus  require careful scrutiny.  The goal of 
claim analysis is to identify the boundaries of the protection sought by 
the  applicant and to understand how the claims relate to and define what 
the applicant  has indicated is the invention.  Office personnel must 
thoroughly analyze the  language of a claim before determining if the 
claim complies with each statutory  requirement for patentability. 

        Office personnel should begin claim analysis by identifying and 
evaluating  each claim limitation.  For processes, the claim limitations 
will define steps  or acts to be performed.  For products, the claim 
limitations will define discrete  physical structures. Product claims are 
claims that are directed to either  machines, manufactures or compositions 
of matter. The discrete physical structures  may be comprised of hardware 
or a combination of hardware and software. 
        Office personnel are to correlate each claim limitation to all 
portions  of the disclosure that describe the claim limitation.  This is 
to be done in  all cases, i.e., whether or not the claimed invention is 
defined using means  or step plus function language.  The correlation step 
will ensure that Office  personnel correctly interpret each claim limitation. 

        The subject matter of a properly construed claim is defined by the 
 terms that limit its scope.  It is this subject matter that must be 
examined. 
 As a general matter, the grammar and intended meaning of terms used in a 
claim  will dictate whether the language limits the claim scope.  Language 
that suggests  or makes optional but does not require steps to be 
performed or does not limit  a claim to a particular structure does not 
limit the scope of a claim or claim  limitation.  (The following are 
examples of language that may raise a question  as to the limiting effect 
of the language in a claim: 

        (a) statements of intended use or field of use, 
        (b) "adapted to" or  "adapted for" clauses, 
        (c) "wherein" clauses, or 
        (d) "whereby" clauses. 

This list of examples is not intended to be exhaustive.) 

        Office personnel must rely on the applicant's disclosure to 
properly  determine the meaning of terms used in the claims.  Markman v. 
Westview Instruments,  52 F.3d 967, 980, 34 USPQ2d 1321, 1330 (Fed. Cir.) 
(in banc), aff'd, ** U.S.  **, 116 S. Ct. 1384 (1996).  An applicant is 
entitled to be his or her own  lexicographer, and in many instances will 
provide an explicit definition for  certain terms used in the claims. 
Where an explicit definition is provided  by the applicant for a term, 
that definition will control interpretation of  the term as it is used in 
the claim.  Office personnel should determine if  the original disclosure 
provides a definition consistent with any assertions  made by applicant. 
See, e.g., In re Paulsen, 30 F.3d 1475, 1480, 31 USPQ2d  1671, 1674 (Fed. 
Cir. 1994) (inventor may define specific terms used to describe 
invention, but must do so "with reasonable clarity, deliberateness, and 
precision"  and, if done, must "'set out his uncommon definition in some 
manner within  the patent disclosure' so as to give one of ordinary skill 
in the art notice  of the change" in meaning) (quoting Intellicall, Inc. 
v. Phonometrics, Inc.,  952 F.2d 1384, 1387-88, 21 USPQ2d 1383, 1386 (Fed. 
Cir. 1992)).  If an applicant  does not define a term in the 
specification, that term will be given its "common  meaning."  Paulsen at 
1480, 31 USPQ2d at 1674. 

        If the applicant asserts that a term has a meaning that conflicts 
with  the term's art-accepted meaning, Office personnel should encourage 
the applicant  to amend the claim to better reflect what applicant intends 
to claim as the  invention.  If the application becomes a patent, it 
becomes prior art against  subsequent applications.  Therefore, it is 
important for later search purposes  to have the patentee employ commonly 
accepted terminology, particularly for  searching text-searchable databases. 

        Office personnel must always remember to use the perspective of 
one  of ordinary skill in the art.  Claims and disclosures are not to be 
evaluated  in a vacuum.  If elements of an invention are well known in the 
art, the applicant  does not have to provide a disclosure that describes 
those elements.  In such  a case the elements will be construed as 
encompassing any and every art-recognized  hardware or combination of 
hardware and software technique for implementing  the defined requisite 
functionalities. 

        Office personnel are to give claims their broadest reasonable 
interpretation  in light of the supporting disclosure. See, e.g., In re 
Zletz, 893 F.2d 319,  321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989) 
("During patent examination the  pending claims must be interpreted as 
broadly as their terms reasonably allow.  . . .  The reason is simply that 
during patent prosecution when claims can  be amended, ambiguities should 
be recognized, scope 
and breadth of language explored, and clarification imposed. . . .  An 
essential  purpose of patent examination is to fashion claims that are 
precise, clear,  correct, and unambiguous.  Only in this way can 
uncertainties of claim scope  be removed, as much as possible, during the 
administrative process."). 
        Where means plus function language is used to define the 
characteristics  of a machine or manufacture invention, claim limitations 
must be interpreted  to read on only the structures or materials disclosed 
in the specification  and "equivalents thereof." (Two in banc decisions of 
the Federal Circuit have  made clear that the Office is to interpret means 
plus function language according  to 35 U.S.C. 112, sixth paragraph.  In 
the first, In re Donaldson, 16 F.3d  1189, 1193, 29 USPQ2d 1845, 1848 
(Fed. Cir. 1994), the court held: 
The plain and unambiguous meaning of paragraph six is that one construing 
means-plus-function  language in a claim must look to the specification 
and interpret that language  in light of the corresponding structure, 
material, or acts described therein,  and equivalents thereof, to the 
extent that the specification provides such  disclosure.  Paragraph six 
does not state or even suggest that the PTO is exempt  from this mandate, 
and there is no legislative history indicating that Congress  intended 
that the PTO should be.  Thus, this court must accept the plain and 
precise language of paragraph six. 

        Consistent with Donaldson, in the second decision, In re Alappat, 
33  F.3d at 1540, 31 USPQ2d at 1554, the Federal Circuit held: 

Given Alappat's disclosure, it was error for the Board majority to 
interpret  each of the means clauses in claim 15 so broadly as to "read on 
any and every  means for performing the function" recited, as it said it 
was doing, and then  to conclude that claim 15 is nothing more than a 
process claim wherein each  means clause represents a step in that 
process.  Contrary to suggestions by  the Commissioner, this court's 
precedents do not support the Board's view that  the particular apparatus 
claims at issue in this case may be viewed as nothing  more than process 
claims.) 

        Disclosure may be express, implicit or inherent.  Thus, at the 
outset,  Office personnel must attempt to correlate claimed means to 
elements set forth  in the written description.  The written description 
includes the specification  and the drawings.  Office personnel are to 
give the claimed means plus function  limitations their broadest 
reasonable interpretation consistent with all corresponding  structures or 
materials described in the specification and their equivalents. 
 Further guidance in interpreting the scope of equivalents is provided in 
MPEP 
 2181 through  2186. 

        While it is appropriate to use the specification to determine what 
 applicant intends a term to mean, a positive limitation from the 
specification  cannot be read into a claim that does not impose that 
limitation.  A broad  interpretation of a claim by Office personnel will 
reduce the possibility that  the claim, when issued, will be interpreted 
more broadly than is justified  or intended.  An applicant can always 
amend a claim during prosecution to better  reflect the intended scope of 
the claim. 

        Finally, when evaluating the scope of a claim, every limitation in 
 the claim must be considered.  Office personnel may not dissect a claimed 
invention  into discrete elements and then evaluate the elements in 
isolation.  Instead,  the claim as a whole must be considered.  See, e.g., 
Diamond v. Diehr, 450  U.S. at 188-89, 209 USPQ at 9 ("In determining the 
eligibility of respondents'  claimed process for patent protection under 
101, their claims must be considered  as a whole.  It is inappropriate to 
dissect the claims into old and new elements  and then to ignore the 
presence of the old elements in the analysis.  This  is particularly true 
in a process claim because a new combination of steps  in a process may be 
patentable even though all the constituents of the combination  were well 
known and in common use before the combination was made."). 
III.    Conduct a Thorough Search of the Prior Art 

        Prior to classifying the claimed invention under 35 U.S.C. 101, 
Office  personnel are expected to conduct a thorough search of the prior 
art.  Generally,  a thorough search involves reviewing both U.S. and 
foreign patents and nonpatent  literature.  In many cases, the result of 
such a search will contribute to  Office personnel's understanding of the 
invention.  Both claimed and unclaimed  aspects of the invention described 
in the specification should be searched  if there is a reasonable 
expectation that the unclaimed aspects may be later  claimed.  A search 
must take into account any structure or material described  in the 
specification and its equivalents which correspond to the claimed means 
plus function limitation, in accordance with 35 U.S.C. 112, sixth 
paragraph  and MPEP  2181 through  2186. 

IV.   Determine Whether the Claimed Invention 
        Complies with 35 U.S.C. 101 

A.  Consider the Breadth of 35 U.S.C. 101 Under 
        Controlling Law 

        As the Supreme Court has held, Congress chose the expansive 
language  of 35 U.S.C. 101 so as to include "anything under the sun that 
is made by man." 
 Diamond v. Chakrabarty, 447 U.S. 303, 308-09, 206 USPQ 193, 197 (1980). 
Accordingly,  section 101 of title 35, United States Code, provides: 

Whoever invents or discovers any new and useful process, machine, 
manufacture,  or composition of matter, or any new and useful improvement 
thereof, may obtain  a patent therefor, subject to the conditions and 
requirements of this title. 
        (In Diamond, 477 U.S. at 308-309, 206 USPQ at 197, the court 
stated: 
In choosing such expansive terms as "manufacture" and "composition of 
matter,"  modified by the comprehensive "any," Congress plainly 
contemplated that the  patent laws would be given wide scope.  The 
relevant legislative history also  supports a broad construction.  The 
Patent Act of 1793, authored by Thomas  Jefferson, defined statutory 
subject matter as "any new and useful art, machine,  manufacture, or 
composition of matter, or any new or useful improvement [thereof]." 
 Act of Feb. 21, 1793,  1, 1 Stat. 319.  The Act embodied Jefferson's 
philosophy  that "ingenuity should receive a liberal encouragement."  5 
Writings of Thomas  Jefferson 75-76 (Washington ed. 1871).  See Graham v. 
John Deere Co., 383 U.S.  1, 7-10 (1966).  Subsequent patent statutes in 
1836, 1870, and 1874 employed  this same broad language.  In 1952, when 
the patent laws were recodified, Congress  replaced the word "art" with 
"process," but otherwise left Jefferson's language  intact.  The Committee 
Reports accompanying the 1952 Act inform us that Congress  intended 
statutory subject matter to "include anything under the sun that is  made 
by man."  S. Rep. No. 1979, 82d Cong., 2d Sess. 5 (1952); H.R. Rep. No. 
1923, 82d Cong., 2d Sess. 6 (1952). 

      This perspective has been embraced by the Federal Circuit: 

The plain and unambiguous meaning of  101 is that any new and useful 
process,  machine, manufacture, or composition of matter, or any new and 
useful improvement  thereof, may be patented if it meets the requirements 
for patentability set  forth in Title 35, such as those found in ' 102, 
103, and 112.  The use of  the expansive term "any" in  101 represents 
Congress's intent not to place  any restrictions on the subject matter for 
which a patent may be obtained beyond  those specifically recited in  101 
and the other parts of Title 35. . . .   Thus, it is improper to read into 
 101 limitations as to the subject matter  that may be patented where the 
legislative history does not indicate that Congress  clearly intended such 
limitations.  [Alappat, 33 F.3d at 1542, 31 USPQ2d at  1556.]) 

        As cast, 35 U.S.C. 101 defines four categories of inventions that 
Congress  deemed to be the appropriate subject matter of a patent; namely, 
processes,  machines, manufactures and compositions of matter.  The latter 
three categories  define "things" while the first category defines 
"actions" (i.e., inventions  that consist of a series of steps or acts to 
be performed). See 35 U.S.C. 100(b) 
("The term `process' means process, art, or method, and includes a new use 
 of a known process, machine, manufacture, composition of matter, or 
material."). 
        Federal courts have held that 35 U.S.C. 101 does have certain 
limits. 
 First, the phrase "anything under the sun that is made by man" is limited 
 by the text of 
35 U.S.C. 101, meaning that one may only patent something that is a 
machine,  manufacture, composition of matter or a process.  E.g., Alappat, 
33 F.3d at  1542, 31 USPQ2d at 1556; In re Warmerdam, 33 F.3d 1354, 1358, 
31 USPQ2d 1754,  1757 (Fed. Cir. 1994).  Second, 35 U.S.C. 101 requires 
that the subject matter  sought to be patented be a "useful" invention. 
Accordingly, a complete definition  of the scope of 35 U.S.C. 101, 
reflecting Congressional intent, is that any  new and useful process, 
machine, manufacture or composition of matter under  the sun that is made 
by man is the proper subject matter of a patent.  Subject  matter not 
within one of the four statutory invention categories or which is  not 
"useful" in a patent sense is, accordingly, not eligible to be patented. 

        The subject matter courts have found to be outside the four 
statutory  categories of invention is limited to abstract ideas, laws of 
nature and natural  phenomena.  While this is easily stated, determining 
whether an applicant is  seeking to patent an abstract idea, a law of 
nature or a natural phenomenon  has proven to be challenging.  These three 
exclusions recognize that subject  matter that is not a practical 
application or use of an idea, a law of nature  or a natural phenomenon is 
not patentable.  See, e.g., Rubber-Tip Pencil Co.  v. Howard, 87 U.S. 498, 
507 (1874) ("idea of itself is not patentable, but  a new device by which 
it may be made practically useful is"); Mackay Radio  & Telegraph Co. v. 
Radio Corp. of America, 306 U.S. 86, 94 (1939) ("While a  scientific 
truth, or the mathematical expression of it, is not patentable invention, 
a novel and useful structure created with the aid of 
knowledge of scientific truth may be."); Warmerdam, 33 F.3d at 1360, 31 
USPQ2d  at 1759 ("steps of `locating' a medial axis, and `creating' a 
bubble hierarchy  . . . describe nothing more than the manipulation of 
basic mathematical constructs,  the paradigmatic `abstract idea'"). 

        Courts have expressed a concern over "preemption" of ideas, laws 
of  nature or natural phenomena.  The concern over preemption was 
expressed as  early as 1852.  See Le Roy v. Tatham, 55 U.S. 156, 175 
(1852) ("A principle,  in the abstract, is a fundamental truth; an 
original cause; a motive; these  cannot be patented, as no one can claim 
in either of them an exclusive right.");  Funk Brothers Seed Co. v. Kalo 
Inoculant Co., 333 U.S. 127, 132, 76 USPQ 280,  282 (1948) (combination of 
six species of bacteria held to be nonstatutory  subject matter).  The 
concern over preemption serves to bolster and justify  the prohibition 
against the patenting of such subject matter.  In fact, such  concerns are 
only relevant to claiming a scientific truth or principle.  Thus,  a claim 
to an "abstract idea" is nonstatutory because it does not represent  a 
practical application of the idea, not because it would preempt the idea. 
B.  Classify the Claimed Invention as to Its Proper 
Statutory  Category 

        To properly determine whether a claimed invention complies with 
the  statutory invention requirements of 
35 U.S.C. 101, Office personnel should classify each claim into one or 
more  statutory or nonstatutory categories.  If the claim falls into a 
nonstatutory  category, that should not preclude complete examination of 
the application  for satisfaction of all other conditions of 
patentability.  This classification  is only an initial finding at this 
point in the examination process that will  be again assessed after the 
examination for compliance with 
35 U.S.C. 102, 103, and 112 is completed and before issuance of any Office 
 action on the merits. 

        If the invention as set forth in the written description is 
statutory,  but the claims define subject matter that is not, the 
deficiency can be corrected  by an appropriate amendment of the claims. 
In such a case, Office personnel  should reject the claims drawn to 
nonstatutory subject matter under 35 U.S.C.  101, but identify the 
features of the invention that would render the claimed  subject matter 
statutory if recited in the claim. 

1.  Nonstatutory Subject Matter 

        Claims to computer-related inventions that are clearly 
nonstatutory  fall into the same general categories as nonstatutory claims 
in other arts,  namely natural phenomena such as magnetism, and abstract 
ideas or laws of nature  which constitute "descriptive material." 
Descriptive material can be characterized  as either "functional 
descriptive material" or "nonfunctional descriptive material." 
 In this context, "functional descriptive material" consists of data 
structures  and computer programs which impart functionality when encoded 
on a computer-readable  medium.  (The definition of "data structure" is "a 
physical or logical relationship  among data elements, designed to support 
specific data manipulation functions." 
 The New IEEE Standard Dictionary of Electrical and Electronics Terms 308 
(5th  ed. 1993).)  "Nonfunctional descriptive material" includes but is 
not limited  to music, literary works and a compilation or mere 
arrangement of data. 
        Both types of "descriptive material" are nonstatutory when claimed 
 as descriptive material per se. When functional descriptive material is 
recorded  on some computer-readable medium it becomes structurally and 
functionally interrelated  to the medium and will be statutory in most 
cases.  Compare In re Lowry, 32  F.3d 1579, 1583-84, 32 USPQ2d 1031, 1035 
(Fed. Cir. 1994) (claim to data structure  that increases computer 
efficiency held statutory) and Warmerdam, 33 F.3d at  1360-61, 31 USPQ2d 
at 1759 (claim to computer having specific memory held statutory 
product-by-process claim) with Warmerdam, 33 F.3d at 1361, 31 USPQ2d at 
1760 
(claim to a data structure per se held nonstatutory).  When nonfunctional 
descriptive  material is recorded on some 
computer-readable medium, it is not structurally and functionally 
interrelated  to the medium but is merely carried by the medium.  Merely 
claiming nonfunctional  descriptive material stored in a computer-readable 
medium does not make it  statutory.  Such a result would exalt form over 
substance.  In re Sarkar, 588  F.2d 1330, 1333, 200 USPQ 132, 137 (CCPA 
1978)("[E]ach invention must be evaluated  as claimed; yet semantogenic 
considerations preclude a determination based  solely on words appearing 
in the claims.  In the final analysis under  101,  the claimed invention, 
as a whole, must be evaluated for what it is.") (quoted  with approval in 
Abele, 684 F.2d at 
907, 214 USPQ at 687).  See also In re Johnson, 589 F.2d 1070, 1077, 200 
USPQ  199, 206 (CCPA 1978) ("form of the claim is often an exercise in 
drafting"). 
 Thus, nonstatutory music does not become statutory by merely recording it 
 on a compact disk.  Protection for this type of work is provided under 
the  copyright law. 

        Claims to processes that do nothing more than solve mathematical 
problems  or manipulate abstract ideas or concepts are more complex to 
analyze and are  addressed below.  See sections IV.B.2(d) and IV.B.2(e). 

(a)   Functional Descriptive Material:  "Data 
        Structures" Representing Descriptive Material 
        Per Se or Computer Programs Representing 
        Computer Listings Per Se 

        Data structures not claimed as embodied in computer-readable media 
 are descriptive material per se and are not statutory because they are 
neither  physical "things" nor statutory processes.  See, e.g., Warmerdam, 
33 F.3d at  1361, 31 USPQ2d at 1760 (claim to a data structure per se held 
nonstatutory). 
 Such claimed data structures do not define any structural and functional 
interrelationships  between the data structure and other claimed aspects 
of the invention which  permit the data structure's functionality to be 
realized.  In contrast, a claimed  computer-readable medium encoded with a 
data structure defines structural and  functional interrelationships 
between the data structure and the medium which  permit the data 
structure's functionality to be realized, and is thus statutory. 
        Similarly, computer programs claimed as computer listings per se, 
i.e.,  the descriptions or expressions of the programs, are not physical 
"things,"  nor are they statutory processes, as they are not "acts" being 
performed.   Such claimed computer programs do not define any structural 
and functional  interrelationships between the computer program and other 
claimed aspects of  the invention which permit the computer program's 
functionality to be realized. 
 In contrast, a claimed computer-readable medium encoded with a computer 
program  defines structural and functional interrelationships between the 
computer program  and the medium which permit the computer program's 
functionality to be realized,  and is thus statutory.  Accordingly, it is 
important to distinguish claims  that define descriptive material per se 
from claims that define statutory inventions. 
        Computer programs are often recited as part of a claim.  Office 
personnel  should determine whether the computer program is being claimed 
as part of an  otherwise statutory manufacture or machine.  In such a 
case, the claim remains  statutory irrespective of the fact that a 
computer program is included in the  claim.  The same result occurs when a 
computer program is used in a computerized  process where the computer 
executes the instructions set forth in the computer  program.  Only when 
the claimed invention taken as a whole is directed to a  mere program 
listing, i.e., to only its description or expression, is it descriptive 
material per se and hence nonstatutory. 

        Since a computer program is merely a set of instructions capable 
of  being executed by a computer, the computer program itself is not a 
process  and Office personnel should treat a claim for a computer program, 
without the  computer-readable medium needed to realize the computer 
program's functionality,  as nonstatutory functional descriptive material. 
 When a computer program is  claimed in a process where the computer is 
executing the computer program's  instructions, Office personnel should 
treat the claim as a process claim.   See Sections IV.B.2(b)-(e).  When a 
computer program is recited in conjunction  with a physical structure, 
such as a computer memory, Office personnel should  treat the claim as a 
product claim.  See Section IV.B.2(a). 

(b)   Nonfunctional Descriptive Material 

        Descriptive material that cannot exhibit any functional 
interrelationship  with the way in which computing processes are performed 
does not constitute  a statutory process, machine, manufacture or 
composition of matter and should  be rejected under 35 U.S.C. 101.  Thus, 
Office personnel should consider the  claimed invention as a whole to 
determine whether the necessary functional  interrelationship is provided. 

        Where certain types of descriptive material, such as music, 
literature,  art, photographs and mere arrangements or compilations of 
facts or data, are  merely stored so as to be read or outputted by a 
computer without creating  any functional interrelationship, either as 
part of the stored data or as part  of the computing processes performed 
by the computer, then such descriptive  material alone does not impart 
functionality either to the data 
as so structured, or to the computer.  Such "descriptive material" is not 
a  process, machine, manufacture or composition of matter.  (Data consists 
of  facts, which become information when they are seen in context and 
convey meaning  to people.  Computers process data without any 
understanding of what that data  represents.  Computer Dictionary 210 
(Microsoft Press, 2d ed. 1994).) 
        The policy that precludes the patenting of nonfunctional 
descriptive  material would be easily frustrated if the same descriptive 
material could  be patented when claimed as an article of manufacture. 
For example, music  is commonly sold to consumers in the format of a 
compact disc.  In such cases,  the known compact disc acts as nothing more 
than a carrier for nonfunctional  descriptive material.  The purely 
nonfunctional descriptive material cannot  alone provide the practical 
application for the manufacture. 

        Office personnel should be prudent in applying the foregoing 
guidance. 
 Nonfunctional descriptive material may be claimed in combination with 
other  functional descriptive material on a computer-readable medium to 
provide the  necessary functional and structural interrelationship to 
satisfy the requirements  of 35 U.S.C. 101.  The presence of the claimed 
nonfunctional descriptive material  is not necessarily determinative of 
nonstatutory subject matter.  For example,  a computer that recognizes a 
particular grouping of musical notes read from  memory and upon 
recognizing that particular sequence, causes another defined  series of 
notes to be played, defines a functional interrelationship among  that 
data and the computing processes performed when utilizing that data, and 
as such is statutory because it implements a statutory process. 

(c)   Natural Phenomena Such as Electricity and 
        Magnetism 

        Claims that recite nothing but the physical characteristics of a 
form  of energy, such as a frequency, voltage, or the strength of a 
magnetic field,  define energy or magnetism, per se, and as such are 
nonstatutory natural phenomena.  O'Reilly v. Morse, 56 U.S. (15 How.) at 
112-114.  However, a claim directed  to a practical application of a 
natural phenomenon such as energy or magnetism  is statutory.  Id. at 
114-119. 

2.  Statutory Subject Matter 

(a)   Statutory Product Claims 

(Products may be either machines, manufactures or compositions of matter. 
        A machine is: 

a concrete thing, consisting of parts or of certain devices and 
combinations  of devices. 

Burr v. Duryee, 68 U.S. (1 Wall.) 531, 570 (1863). 

        A manufacture is: 

the production of articles for use from raw or prepared materials by 
giving  to these materials new forms, qualities, properties or 
combinations, whether  by hand-labor or by machinery.  Diamond v. 
Chakrabarty, 447 U.S. at 308, 206  USPQ at 196-97 (quoting American Fruit 
Growers, Inc. v. Brogdex Co., 283 U.S.  1, 11 (1931). 

        A composition of matter is: 

a composition[] of two or more substances [or] . . . a[] composite 
article[],  whether . . . [it] be the result of chemical union, or of 
mechanical mixture,  whether . . . [it] be [a] gas[], fluid[], powder[], 
or solid[].  Diamond v.  Chakrabarty, 447 U.S. at 308, 206 USPQ at 197 
(quoting Shell Development Co.  v. Watson, 149 F. Supp. 279, 280, 113 USPQ 
265, 266 (D.D.C. 1957), aff'd per  curiam, 252 F.2d 861, 116 USPQ 428 
(D.C. Cir. 1958).) 

        If a claim defines a useful machine or manufacture by identifying 
the  physical structure of the machine or manufacture in terms of its 
hardware or  hardware and software combination, it defines a statutory 
product.  See, e.g.,  Lowry, 32 F.3d at 1583, 32 USPQ2d at 1034-35; 
Warmerdam, 33 F.3d at 1361-62,  31 USPQ2d at 1760. 

        A machine or manufacture claim may be one of two types:  (1) a 
claim  that encompasses any and every machine for performing the 
underlying process  or any and every manufacture that can cause a computer 
to perform the underlying  process, or (2) a claim that defines a specific 
machine or manufacture.  When  a claim is of the first type, Office 
personnel are to evaluate the underlying  process the computer will 
perform in order to determine the patentability of  the product. 

(i)   Claims that Encompass Any Machine or 
        Manufacture Embodiment of a Process 

        Office personnel must treat each claim as a whole.  The mere fact 
that  a hardware element is recited in a claim does not necessarily limit 
the claim  to a specific machine or manufacture. Cf. In re Iwahashi, 888 
F.2d 1370, 1374-75,  12 USPQ2d 1908, 1911-12 (Fed. Cir. 1989), cited with 
approval in Alappat, 33  F.3d at 1544 n.24, 31 USPQ2d at 1558 n.24.  If a 
product claim encompasses  any and every computer implementation of a 
process, when read in light of the  specification, it should be examined 
on the basis of the underlying process. 
 Such a claim can be recognized as it will: 

- define the physical characteristics of a computer or computer component 
exclusively  as functions or steps to be performed on or by a computer, and 

- encompass any and every product in the stated class (e.g., computer, 
computer-readable  memory) configured in any manner to perform that process. 

        Office personnel are reminded that finding a product claim to 
encompass  any and every product embodiment of a process invention simply 
means that the  Office will presume that the product claim encompasses any 
and every hardware  or hardware platform and associated software 
implementation that performs the  specified set of claimed functions. 
Because this is interpretive and nothing  more, it does not provide any 
information as to the patentability of the applicant's  underlying process 
or the product claim. 

        When Office personnel have reviewed the claim as a whole and found 
 that it is not limited to a specific machine or manufacture, they shall 
identify  how each claim limitation has been treated and set forth their 
reasons in support  of their conclusion that the claim encompasses any and 
every machine or manufacture  embodiment of a process.  This will shift 
the burden to applicant to demonstrate  why the claimed invention should 
be limited to a specific machine or manufacture. 
        If a claim is found to encompass any and every product embodiment 
of  the underlying process, and if the underlying process is statutory, 
the product  claim should be classified as a statutory product.  By the 
same token, if the  underlying process invention is found to be 
nonstatutory, Office personnel  should classify the "product" claim as a 
"nonstatutory product."  If the product  claim is classified as being a 
nonstatutory product on the basis of the underlying  process, Office 
personnel should emphasize that they have considered all claim 
limitations and are basing their finding on the analysis of the underlying 
 process. 

(ii)    Product Claims - Claims Directed to Specific            Machines 
and  Manufactures 

        If a product claim does not encompass any and every 
computer-implementation  of a process, then it must be treated as a 
specific machine or manufacture. 
 Claims that define a computer-related invention as a specific machine or 
specific  article of manufacture must define the physical structure of the 
machine or  manufacture in terms of its hardware or hardware and "specific 
software." ("Specific  software" is defined as a set of instructions 
implemented in a specific program  code segment.  See Computer Dictionary 
78 (Microsoft Press, 2d ed. 1994) for  definition of "code segment.")  The 
applicant may define the physical structure  of a programmed computer or 
its hardware or software components in any manner  that can be clearly 
understood by a person skilled in the relevant art.  Generally  a claim 
drawn to a particular programmed computer should identify the elements  of 
the computer and indicate how those elements are configured in either 
hardware  or a combination of hardware and specific software. 

        To adequately define a specific computer memory, the claim must 
identify  a general or specific memory and the specific software which 
provides the functionality  stored in the memory. 

        A claim limited to a specific machine or manufacture, which has a 
practical  application in the technological arts, is statutory.  In most 
cases, a claim  to a specific machine or manufacture will have a practical 
application in the  technological arts. 

(iii)     Hypothetical Machine Claims Which Illustrate 
Claims  of the Types Described in Sections 
IV.B.2(a)(i) and (ii) 
Two applicants present a claim to the following process: 

A process for determining and displaying the structure of a chemical 
compound  comprising: 

(a)   solving the wavefunction parameters for the compound to determine 
the  structure of a compound; and 

(b)   displaying the structure of the compound determined in step (a). 
Each applicant also presents a claim to the following apparatus: 

A computer system for determining the three dimensional structure of a 
chemical  compound comprising: 

(a)   means for determining the three dimensional structure of a compound; 
 and 

(b)   means for creating and displaying an image representing a 
three-dimensional  perspective of the compound. 

In addition, each applicant provides the noted disclosures to support the 
claims: 
(b)   Statutory Process Claims 

        A claim that requires one or more acts to be performed defines a 
process. 
 However, not all processes are statutory under 35 U.S.C. 101.  To be 
statutory,  a claimed computer-related process must either:  (1) result in 
a physical transformation  outside the computer for which a practical 
application in the technological  arts is either disclosed in the 
specification or would have been known to a  skilled artisan (discussed in 
(i) below), or (2) be limited by the language  in the claim to a practical 
application within the technological arts (discussed  in (ii) below).  See 
Diamond v. Diehr, 450 U.S. at 183-84, 209 USPQ at 6 (quoting  Cochrane v. 
Deener, 94 U.S. 780, 787-88 (1877)) ("A [statutory] process is  a mode of 
treatment of certain materials to produce a given result.  It is  an act, 
or a series of acts, performed upon the subject-matter to be transformed 
and reduced to a different state or thing. . . .  The process requires 
that  certain things should be done with certain substances, and in a 
certain order;  but the tools to be used in doing this may be of secondary 
consequence.").  See also Alappat, 33 F.3d at 1543, 31 USPQ2d at 1556-57 
(quoting Diamond v.  Diehr, 450 U.S. at 192, 209 USPQ at 10).  See also 
id. at 1569, 31 USPQ2d at  1578-79 (Newman, J., concurring) 
("unpatentability of the principle does not  defeat patentability of its 
practical applicants") (citing O`Reilly v. Morse,  56 U.S. (15 How.) at 
114-19). The claimed practical application must be a further  limitation 
upon the claimed subject matter if the process is confined to the 
internal operations of the computer.  If a physical transformation occurs 
outside  the computer, it is not necessary to claim the practical 
application.  A disclosure  that permits a skilled artisan to practice the 
claimed invention, i.e., to  put it to a practical use, is sufficient.  On 
the other hand, it is necessary  to claim the practical application if 
there is no physical transformation or  if the process merely manipulates 
concepts or converts one set of numbers into  another. 

        A claimed process is clearly statutory if it results in a physical 
 transformation outside the computer, i.e., falls into one or both of the 
following  specific categories ("safe harbors"). 

(i)   Safe Harbors 

- Independent Physical Acts (Post-Computer 
        Process Activity) 

        A process is statutory if it requires physical acts to be 
performed  outside the computer independent of and following the steps to 
be performed  by a programmed computer, where those acts involve the 
manipulation of tangible  physical objects and result in the object having 
a different physical attribute  or structure.  Diamond v. Diehr, 450 U.S. 
at 187, 209 USPQ at 8. Thus, if a  process claim includes one or more 
post-computer process steps that result  in a physical transformation 
outside the computer (beyond merely conveying  the direct result of the 
computer operation, see Section IV.B.2(d)(iii)), the  claim is clearly 
statutory. 

        Examples of this type of statutory process include the following: 
- A method of curing rubber in a mold which relies upon updating process 
parameters,  using a computer processor to determine a time period for 
curing the rubber,  using the computer processor to determine when the 
time period has been reached  in the curing process and then opening the 
mold at that stage. 

- A method of controlling a mechanical robot which relies upon storing 
data  in a computer that represents various types of mechanical movements 
of the  robot, using a computer processor to calculate positioning of the 
robot in  relation to given tasks to be performed by the robot, and 
controlling the robot's  movement and position based on the calculated 
position. 

- Manipulation of Data Representing Physical 
        Objects or Activities (Precomputer Process Activity) 

        Another statutory process is one that requires the measurements of 
 physical objects or activities to be transformed outside of the computer 
into  computer data (In re Gelnovatch, 595 F.2d 32, 41 n.7, 201 USPQ 136, 
145 n.7 
(CCPA 1979) (data-gathering step did not measure physical phenomenon)), 
where  the data comprises signals corresponding to physical objects or 
activities  external to the computer system, and where the process causes 
a physical transformation  of the signals which are intangible 
representations of the physical objects  or activities.  Schrader, 22 F.3d 
at 294, 30 USPQ2d at 1459 citing with approval  Arrhythmia, 958 F.2d at 
1058-59, 22 USPQ2d at 1037-38; Abele, 684 F.2d at 909,  214 USPQ at 688; 
In re Taner, 681 F.2d 787, 790, 214 USPQ 678, 681 (CCPA 1982). 
        Examples of this type of claimed statutory process include the 
following: 
- A method of using a computer processor to analyze electrical signals and 
 data representative of human cardiac activity by converting the signals 
to  time segments, applying the time segments in reverse order to a high 
pass filter  means, using the computer processor to determine the 
amplitude of the high  pass filter's output, and using the computer 
processor to compare the value  to a predetermined value.  In this example 
the data is an intangible representation  of physical activity, i.e., 
human cardiac activity.  The transformation occurs  when heart activity is 
measured and an electrical signal is produced.  This  process has real 
world value in predicting vulnerability to ventricular tachycardia 
immediately after a heart attack. 

- A method of using a computer processor to receive data representing 
Computerized  Axial Tomography ("CAT") scan images of a patient, 
performing a calculation  to determine the difference between a local 
value at a data point and an average  value of the data in a region 
surrounding the point, and displaying the difference  as a gray scale for 
each point in the image, and displaying the resulting image. 
 In this example the data is an intangible representation of a physical 
object,  i.e., portions of the anatomy of a patient.  The transformation 
occurs when  the condition of the human body is measured with X-rays and 
the X-rays are  converted into electrical digital signals that represent 
the condition of the  human body.  The real world value of the invention 
lies in creating a new CAT  scan image of body tissue without the presence 
of bones. 

- A method of using a computer processor to conduct seismic exploration, 
by  imparting spherical seismic energy waves into the earth from a seismic 
source,  generating a plurality of reflected signals in response to the 
seismic energy  waves at a set of receiver positions in an array, and 
summing the reflection  signals to produce a signal simulating the 
reflection response of the earth  to the seismic energy.  In this example, 
the electrical signals processed by  the computer represent reflected 
seismic energy.  The transformation occurs  by converting the spherical 
seismic energy waves into electrical signals which  provide a geophysical 
representation of formations below the earth's surface. 
 Geophysical exploration of formations below the surface of the earth has 
real  world value. 

        If a claim does not clearly fall into one or both of the safe 
harbors,  the claim may still be statutory if it is limited by the 
language in the claim  to a practical application in the technological arts. 

(ii)    Computer-Related Processes Limited to a 
        Practical Application in the Technological Arts 

        There is always some form of physical transformation within a 
computer  because a computer acts on signals and transforms them during 
its operation  and changes the state of its components during the 
execution of a process. 
 Even though such a physical transformation occurs within a computer, such 
 activity is not determinative of whether the process is statutory because 
such  transformation alone does not distinguish a statutory computer 
process from  a nonstatutory computer process.  What is determinative is 
not how the computer  performs the process, but what the computer does to 
achieve a practical application. 
 See Arrhythmia, 958 F.2d at 1057, 22 USPQ2d at 1036. 

        A process that merely manipulates an abstract idea or performs a 
purely  mathematical algorithm is nonstatutory despite the fact that it 
might inherently  have some usefulness.  (In Sarkar, 588 F.2d at 1335, 200 
USPQ at 139, the court  explained why this approach must be followed: 

        No mathematical equation can be used, as a practical matter, 
without  establishing and substituting values for the variables expressed 
therein.   Substitution of values dictated by the formula has thus been 
viewed as a form  of mathematical step.  If the steps of gathering and 
substituting values were  alone sufficient, every  mathematical  equation, 
formula, or algorithm having  any practical use would be per se subject to 
patenting as a "process" under 
 101.  Consideration of whether the substitution of specific values is 
enough  to convert the disembodied ideas present in the formula into an 
embodiment  of those ideas, or into an application of the formula, is 
foreclosed by the  current state of the law.) 

For such subject matter to be statutory, the claimed process must be 
limited  to a practical application of the abstract idea or mathematical 
algorithm in  the technological arts.  See Alappat, 33 F.3d at 1543, 31 
USPQ2d at 1556-57 
(quoting Diamond v. Diehr, 450 U.S. at 192, 209 USPQ at 10).  See also 
Alappat  at 1569, 31 USPQ2d at 1578-79 (Newman, J., concurring) 
("unpatentability of  the principle does not defeat patentability of its 
practical applications") 
(citing O'Reilly v. Morse, 56 U.S. (15 How.) at 114-19). For example, a 
computer  process that simply calculates a mathematical algorithm that 
models noise is nonstatutory. 
 However, a claimed process for digitally filtering noise employing the 
mathematical  algorithm is statutory. 

        Examples of this type of claimed statutory process include the 
following: 
- A computerized method of optimally controlling transfer, storage and 
retrieval  of data between cache and hard disk storage devices such that 
the most frequently  used data is readily available. 

- A method of controlling parallel processors to accomplish multi-tasking 
of  several computing tasks to maximize computing efficiency.  See, e.g., 
In re  Bernhart, 417 F.2d 1395, 1400, 163 USPQ 611, 616 (CCPA 1969). 

- A method of making a word processor by storing an executable word 
processing  application program in a general purpose digital computer's 
memory, and executing  the stored program to impart word processing 
functionality to the general purpose  digital computer by changing the 
state of the computer's arithmetic logic unit  when program instructions 
of the word processing program are executed. 
- A digital filtering process for removing noise from a digital signal 
comprising  the steps of calculating a mathematical algorithm to produce a 
correction signal  and subtracting the correction signal from the digital 
signal to remove the  noise. 

(c)   Nonstatutory Process Claims 

        If the "acts" of a claimed process manipulate only numbers, 
abstract  concepts or ideas, or signals representing any of the foregoing, 
the acts are  not being applied to appropriate subject matter.  Thus, a 
process consisting  solely of mathematical operations, i.e., converting 
one set of numbers into  another set of numbers, does not manipulate 
appropriate subject matter and  thus cannot constitute a statutory process. 

        In practical terms, claims define nonstatutory processes if they: 
- consist solely of mathematical operations without some claimed practical 
 application (i.e., executing a "mathematical algorithm"); or 

- simply manipulate abstract ideas, e.g., a bid (Schrader, 22 F.3d at 
293-94,  30 USPQ2d at 1458-59) or a bubble hierarchy (Warmerdam, 33 F.3d 
at 1360, 31  USPQ2d at 1759), without some claimed practical application. 

        A claimed process that consists solely of mathematical operations 
is  nonstatutory whether or not it is performed on a computer.  Courts 
have recognized  a distinction between types of mathematical algorithms, 
namely, some define  a "law of nature" in mathematical terms and others 
merely describe an "abstract  idea."  See, e.g., In re Meyer, 688 F.2d 
789, 794-95, 215 USPQ 193, 197 (CCPA  1982) ("Scientific principles, such 
as the relationship between mass and energy,  and laws of nature, such as 
the acceleration of gravity, namely, a = 32 ft./sec.2, can be represented 
in mathematical format.  However, some mathematical  algorithms and 
formulae do not represent scientific principles or laws of nature;  they 
represent ideas or mental processes and are simply logical vehicles for 
communicating possible solutions to complex problems.  The presence of a 
mathematical  algorithm or formula in a claim is merely an indication that 
a scientific principle,  law of nature, idea or mental process may be the 
subject matter claimed and,  thus, justify a rejection of that claim under 
35 USC  101; but the presence  of a mathematical algorithm or formula is 
only a signpost for further analysis."). 
 Cf. Alappat, 33 F.3d at 1543 n.19, 31 USPQ2d at 1556 n.19 in which the 
Federal  Circuit recognized the confusion: 

        The Supreme Court has not been clear . . . as to whether such 
subject  matter is excluded from the scope of  101 because it represents 
laws of nature,  natural phenomena, or abstract ideas. See Diehr, 450 U.S. 
at 186 (viewed mathematical  algorithm as a law of nature); Gottschalk v. 
Benson, 409 U.S. 63, 71-72 (1972) 
(treated mathematical algorithm as an "idea").  The Supreme Court also has 
 not been clear as to exactly what kind of mathematical subject matter may 
not  be patented.  The Supreme Court has used, among others, the terms 
"mathematical  algorithm," "mathematical formula," and "mathematical 
equation" to describe  types of mathematical subject matter not entitled 
to patent protection standing  alone.  The Supreme Court has not set 
forth, however, any consistent or clear  explanation of what it intended 
by such terms or how these terms are related,  if at all. 

        Certain mathematical algorithms have been held to be nonstatutory 
because  they represent a mathematical definition of a law of nature or a 
natural phenomenon.  For example, a mathematical algorithm representing 
the formula E = mc2 is  a "law of nature" - it defines a "fundamental 
scientific truth" (i.e., the  relationship between energy and mass).  To 
comprehend how the law of nature relates to any object, one invariably has 
to perform certain steps (e.g., multiplying  a number representing the 
mass of an object by the square of a number representing 

the speed of light).  In such a case, a claimed process which consists 
solely  of the steps that one must follow to solve the mathematical 
representation  of E = mc2 is indistinguishable from the law of nature and 
would "preempt"  the law of nature.  A patent cannot be granted on such a 
process. 
        Other mathematical algorithms have been held to be nonstatutory 
because  they merely describe an abstract idea.  An "abstract idea" may 
simply be any  sequence of mathematical operations that are combined to 
solve a mathematical  problem.  The concern addressed by holding such 
subject matter nonstatutory  is that the mathematical operations merely 
describe an idea and do not define  a process that represents a practical 
application of the idea. 

        Accordingly, when a claim reciting a mathematical algorithm is 
found  to define nonstatutory subject matter the basis of the 35 U.S.C. 
101 rejection  must be that, when taken as a whole, the claim recites a 
law of nature, a natural  phenomenon, or an abstract idea. 

(d)   Certain Claim Language Related to Mathematical        Operation 
Steps  of a Process 

(i)   Intended Use or Field of Use Statements 

        Claim language that simply specifies an intended use or field of 
use  for the invention generally will not limit the scope of a claim, 
particularly  when only presented in the claim preamble.  Thus, Office 
personnel should be  careful to properly interpret such language.  Walter, 
618 F.2d at 769, 205  USPQ at 409 (Because none of the claimed steps were 
explicitly or implicitly  limited to their application in seismic 
prospecting activities, the court held  that "[a]lthough the claim 
preambles relate the claimed invention to the art  of seismic prospecting, 
the claims themselves are not drawn to methods of or  apparatus for 
seismic prospecting; they are drawn to improved mathematical  methods for 
interpreting the results of seismic prospecting.").  Cf. Alappat,  33 F.3d 
at 1544, 31 USPQ2d at 1558.  When such language is treated as nonlimiting, 
 Office personnel should expressly identify in the Office action the claim 
language  that constitutes the intended use or field of use statements and 
provide the  basis for their findings.  This will shift the burden to 
applicant to demonstrate  why the language is to be treated as a claim 
limitation. 

(ii)    Necessary Antecedent Step to Performance of a 
        Mathematical Operation or Independent 
        Limitation on a Claimed Process 

        In some situations, certain acts of "collecting" or "selecting" 
data  for use in a process consisting of one or more mathematical 
operations will  not further limit a claim beyond the specified 
mathematical operation step(s). 
 Such acts merely determine values for the variables used in the 
mathematical  formulae used in making the calculations.   Walter, 618 F.2d 
at 769-70, 205  USPQ at 409.  In other words, the acts are dictated by 
nothing other than the  performance of a mathematical operation.  Sarker, 
588 F.2d at 1335, 200 USPQ  at 139. 

        If a claim requires acts to be performed to create data that will 
then  be used in a process representing a practical application of one or 
more mathematical  operations, those acts must be treated as further 
limiting the claim beyond  the mathematical operation(s) per se.  Such 
acts are data gathering steps not  dictated by the algorithm but by other 
limitations which require certain antecedent  steps and as such constitute 
an independent limitation on the claim. 
        Examples of acts that independently limit a claimed process 
involving  mathematical operations include: 

- a method of conducting seismic exploration which requires generating and 
 manipulating signals from seismic energy waves before "summing" the 
values  represented by the signals (Taner, 681 F.2d at 788, 214 USPQ at 
679); and 
- a method of displaying X-ray attenuation data as a signed gray scale 
signal  in a "field" using a particular algorithm, where the antecedent 
steps require  generating the data using a particular machine (e.g., a 
computer tomography  scanner).  Abele, 684 F.2d at 908, 214 USPQ at 687 
("The specification indicates  that such attenuation data is available 
only when an X-ray beam is produced  by a CAT scanner, passed through an 
object, and detected upon its exit.  Only  after these steps have been 
completed is the algorithm performed, and the resultant  modified data 
displayed in the required format."). 

        Examples of steps that do not independently limit one or more 
mathematical  operation steps include: 

- "perturbing" the values of a set of process inputs, where the subject 
matter  "perturbed" was a number and the act of "perturbing" consists of 
substituting the numerical values  of variables (Gelnovatch, 595 F.2d at 
41 n.7, 201 USPQ at 145 n.7 ("Appellants'  claimed step of perturbing the 
values of a set of process inputs (step 3),  in addition to being a 
mathematical operation, appears to be a data-gathering  step of the type 
we have held insufficient to change a nonstatutory method  of calculation 
into a statutory process. . . .  In this instance, the perturbed  process 
inputs are not even measured values of physical phenomena, but are 
instead derived by numerically changing the values in the previous set of 
process  inputs.")); and 

- selecting a set of arbitrary measurement point values (Sarkar, 588 F.2d 
at  1331, 200 USPQ at 135). 

        Such steps do not impose independent limitations on the scope of 
the  claim beyond those required by the mathematical operation limitation. 
(iii)     Post-Mathematical Operation Step Using 
        Solution or Merely Conveying Result of Operation 

        In some instances, certain kinds of post-solution "acts" will not 
further  limit a process claim beyond the performance of the preceding 
mathematical  operation step even if the acts are recited in the body of a 
claim.  If, however,  the claimed acts represent some "significant use" of 
the solution, those acts  will invariably impose an independent limitation 
on the claim.  A "significant  use" is any activity which is more than 
merely outputting the direct result  of the mathematical operation. 
Office personnel are reminded to rely on the  applicant's characterization 
of the significance of the acts being assessed  to resolve questions 
related to their relationship to the mathematical operations  recited in 
the claim and the invention as a whole.  See Sarkar, 588 F.2d at  1332 
n.6, 200 USPQ at 136 n.6 ("post-solution" construction that was being 
modeled by the mathematical process not considered in deciding 35 U.S.C. 
101  question because applicant indicated that such construction was not a 
material  element of the invention).  Thus, if a claim requires that the 
direct result  of a mathematical operation be evaluated and transformed 
into something else,  Office personnel cannot treat the subsequent steps 
as being indistinguishable  from the performance of the mathematical 
operation and thus not further limiting  on the claim.  For example, acts 
that require the conversion of a series of  numbers representing values of 
a wavefunction equation for a chemical compound  into values representing 
an image that conveys information about the three-dimensional  structure 
of the compound and the displaying of the three-dimensional structure 
cannot be treated as being part of the mathematical operations. 

        Office personnel should be especially careful when reviewing claim 
 language that requires the performance of "post-solution" steps to ensure 
that  claim limitations are not ignored. 

        Examples of steps found not to independently limit a process 
involving  one or more mathematical operation steps include: 

- step of "updating alarm limits" found to constitute changing the number 
value  of a variable to represent the result of the calculation (Parker v. 
Flook,  437 U.S. 584, 585, 198 USPQ 193, 195 (1978)); 

- final step of magnetically recording the result of a calculation 
(Walter,  618 F.2d at 770, 205 USPQ at 409 ("If  101 could be satisfied by 
the mere recordation  of the results of a nonstatutory process on some 
record medium, even the most  unskilled patent draftsman could provide for 
such a step.")); 

- final step of "equating" the process outputs to the values of the last 
set  of process inputs found to constitute storing the result of 
calculations (Gelnovatch,  595 F.2d at 41 n.7, 201 USPQ at 145 n.7); 

- final step of displaying result of a calculation "as a shade of gray 
rather  than as simply a number" found to not constitute distinct step 
where the data  were numerical values that did not represent anything 
(Abele, 684 F.2d at 909,  214 USPQ at 688 ("This claim presents no more 
than the calculation of a number  and display of the result, albeit in a 
particular format.  The specification  provides no greater meaning to 
`data in a field' than a matrix of numbers regardless  of by what method 
generated.  Thus, the algorithm is neither explicitly nor  implicitly 
applied to any certain process.  Moreover, that the result is displayed 
as a shade of gray rather than as simply a number provides no greater or 
better  information, considering the broad range of applications 
encompassed by the  claim.")); and 

- step of "transmitting electrical signals representing" the result of 
calculations 
(In re De Castelet, 562 F.2d 1236, 1244, 195 USPQ 439, 446 (CCPA 1977) 
("That the computer is instructed to transmit electrical signals, 
representing  the results of its calculations, does not constitute the 
type of `post solution  activity' found in Flook, [437 U.S. 584, 198 USPQ 
193 (1978)], and does not  transform the claim into one for a process 
merely using an algorithm.  The  final transmitting step constitutes 
nothing more than reading out the result  of the calculations.")). 

(e)   Manipulation of Abstract Ideas Without a Claimed        Practical 
Application 
        A process that consists solely of the manipulation of an abstract 
idea  without any limitation to a practical application is nonstatutory. 
E.g., Warmerdam,  33 F.3d at 1360, 31 USPQ2d at 1759.  See also Schrader, 
22 F.3d at 295, 30  USPQ2d at 1459.  Office personnel have the burden to 
establish a prima facie  case that the claimed invention taken as a whole 
is directed to the manipulation  of abstract ideas without a practical 
application. 

        In order to determine whether the claim is limited to a practical 
application  of an abstract idea, Office personnel must analyze the claim 
as a whole, in  light of the specification, to understand what subject 
matter is being manipulated  and how it is being manipulated.  During this 
procedure, Office personnel must  evaluate any statements of intended use 
or field of use, any data gathering  step and any post-manipulation 
activity.  See section IV.B.2(d) above for how  to treat various types of 
claim language.  Only when the claim is devoid of  any limitation to a 
practical application in the technological arts should  it be rejected 
under 35 U.S.C. 101.  Further, when such a rejection is made,  Office 
personnel must expressly state how the language of the claims has been 
interpreted to support the rejection. 

V.  Evaluate Application for Compliance with 
        35 U.S.C. 112 

        Office personnel should begin their evaluation of an application's 
 compliance with 35 U.S.C. 112 by considering the requirements of 35 
U.S.C.  112, second paragraph. The second paragraph contains two separate 
and distinct  requirements: (1) that the claim(s) set forth the subject 
matter applicants  regard as the invention, and (2) that the claim(s) 
particularly point out and  distinctly claim the invention. An application 
will be deficient under 35 U.S.C.  112, second paragraph when (1) evidence 
including admissions, other than in  the application as filed, shows 
applicant has stated that he or she regards  the invention to be different 
from what is claimed, or when (2) the scope of  the claims is unclear. 

        After evaluation of the application for compliance with 35 U.S.C. 
112,  second paragraph, Office personnel should then evaluate the 
application for  compliance with the requirements of 35 U.S.C. 112, first 
paragraph. The first  paragraph contains three separate and distinct 
requirements: (1) adequate written  description, (2) enablement, and (3) 
best mode. An application will be deficient  under 35 U.S.C. 112, first 
paragraph when the written description is not adequate  to identify what 
the applicant has invented, or when the disclosure does not  enable one 
skilled in the art to make and use the invention as claimed without  undue 
experimentation. Deficiencies related to disclosure of the best mode  for 
carrying out the claimed invention are not usually encountered during 
examination  of an application because evidence to support such a 
deficiency is seldom in  the record. 

        If deficiencies are discovered with respect to 
35 U.S.C. 112, Office personnel must be careful to apply the appropriate 
paragraph  of 35 U.S.C. 112. 

A.  Determine Whether the Claimed Invention 
        Complies with 35 U.S.C. 112, Second Paragraph 
        Requirements 

1.  Claims Setting Forth the Subject Matter Applicant           Regards as 
 Invention 

        Applicant's specification must conclude with claim(s) that set 
forth  the subject matter which the applicant regards as the invention. 
The invention  set forth in the claims is presumed to be that which 
applicant regards as the  invention, unless applicant considers the 
invention to be something different  from what has been claimed as shown 
by evidence, including admissions, outside  the application as filed. An 
applicant may change what he or she regards as  the invention during the 
prosecution of the application. 

2.  Claims Particularly Pointing Out and Distinctly 
Claiming  the Invention 

        Office personnel shall determine whether the claims set out and 
circumscribe  the invention with a reasonable degree of precision and 
particularity. In this  regard, the definiteness of the language must be 
analyzed, not in a vacuum, but always in light of the teachings of the 
disclosure as it would  be interpreted by one of ordinary skill in the 
art. Applicant's claims, interpreted  in light of the disclosure, must 
reasonably apprise a person of ordinary skill  in the art of the 
invention. However, the applicant need not explicitly recite  in the 
claims every feature of the invention. For example, if an applicant 
indicates that the invention is a particular computer, the claims do not 
have  to recite every element or feature of the computer. In fact, it is 
preferable  for claims to be drafted in a form that emphasizes what the 
applicant has invented 
(i.e., what is new rather than old). 

        A means plus function limitation is distinctly claimed if the 
description  makes it clear that the means corresponds to well-defined 
structure of a computer  or computer component implemented in either 
hardware or software and its associated  hardware platform. Such means may 
be defined as: 

- a programmed computer with a particular functionality implemented in 
hardware  or hardware and software; 

- a logic circuit or other component of a programmed computer that 
performs  a series of specifically identified operations dictated by a 
computer program;  or 

- a computer memory encoded with executable instructions representing a 
computer  program that can cause a computer to function in a particular 
fashion. 
        The scope of a "means" limitation is defined as the corresponding 
structure  or material (e.g., a specific logic circuit) set forth in the 
written description  and equivalents. See MPEP 2181 through 2186. Thus, a 
claim using means plus  function limitations without corresponding 
disclosure of specific structures  or materials that are not well-known 
fails to particularly point out and distinctly  claim the invention. For 
example, if the applicant discloses only the functions  to be performed 
and provides no express, implied or inherent disclosure of  hardware or a 
combination of hardware and software that performs the functions,  the 
application has not disclosed any "structure" which corresponds to the 
claimed means. Office personnel should reject such claims under 35 U.S.C. 
112,  second paragraph. The rejection shifts the burden to the applicant 
to describe  at least one specific structure or material that corresponds 
to the claimed  means in question, and to identify the precise location or 
locations in the  specification where a description of at least one 
embodiment of that claimed  means can be found. In contrast, if the 
corresponding structure is disclosed  to be a memory or logic circuit that 
has been configured in some manner to  perform that function (e.g., using 
a defined computer program), the application  has disclosed "structure" 
which corresponds to the claimed means. 

        When a claim or part of a claim is defined in computer program 
code,  whether in source or object code format, a person of skill in the 
art must  be able to ascertain the metes and bounds of the claimed 
invention. In certain  circumstances, as where self-documenting 
programming code is employed, use  of programming language in a claim 
would be permissible because such program  source code presents 
"sufficiently high-level language and descriptive identifiers"  to make it 
universally understood to others in the art without the programmer  having 
to insert any comments. See Computer Dictionary 353 (Microsoft Press, 
2ed. 1994) for a definition of "self-documenting code." Applicants should 
be  encouraged to functionally define the steps the computer will perform 
rather  than simply reciting source or object code instructions. 

B.  Determine Whether the Claimed Invention 
        Complies with 35 U.S.C. 112, First Paragraph 
        Requirements 

1.  Adequate Written Description 

        The satisfaction of the enablement requirement does not satisfy 
the  written description requirement. See In re Barker, 559 F.2d 588, 591, 
194 USPQ  470, 472 (CCPA 1977), cert. denied, Barker v. Parker, 434 U.S. 
1064 (1978) 
(a specification may be sufficient to enable one skilled in the art to 
make  and use the invention, but still fail to comply with the written 
description  requirement). See also In re DiLeone, 436 F.2d 1404, 1405, 
168 USPQ 592, 593 
(CCPA 1971). For the written description requirement, an applicant's 
specification  must reasonably convey to those skilled in the art that the 
applicant was in  possession of the claimed invention as of the date of 
invention. The claimed  invention subject matter need not be described 
literally, i.e., using the same  terms, in order for the disclosure to 
satisfy the description 
requirement. 

2.  Enabling Disclosure 

        An applicant's specification must enable a person skilled in the 
art  to make and use the claimed invention without undue experimentation. 
The fact  that experimentation is complex, however, will not make it undue 
if a person  of skill in the art typically engages in such complex 
experimentation. For  a computer-related invention, the disclosure must 
enable a skilled artisan  to configure the computer to possess the 
requisite functionality, and, where  applicable, interrelate the computer 
with other elements to yield the claimed  invention, without the exercise 
of undue experimentation. The specification  should disclose how to 
configure a computer to possess the requisite functionality  or how to 
integrate the programmed computer with other elements of the invention, 
unless a skilled artisan would know how to do so without such disclosure. 
See,  e.g., Northern Telecom v. Datapoint Corp., 908 F.2d 931, 941-43, 15 
USPQ2d  1321, 1328-30 (Fed. Cir.), cert. denied, Datapoint Corp. v. 
Northern Telecom,  498 U.S. 920 (1990) (judgment of invalidity reversed 
for clear error where  expert testimony on both sides showed that a 
programmer of reasonable skill  could write a satisfactory program with 
ordinary effort based on the disclosure);  DeGeorge v. Bernier, 768 F.2d 
1318, 1324, 226 USPQ 758, 762-63 (Fed. Cir. 1985) 
(superseded by statute with respect to issues not relevant here) 
(invention  was adequately disclosed for purposes of enablement even 
though all of the  circuitry of a word processor was not disclosed, since 
the undisclosed circuitry  was deemed inconsequential because it did not 
pertain to the claimed circuit);  In re Phillips, 608 F.2d 879, 882-83, 
203 USPQ 971, 975 (CCPA 1979) (computerized  method of generating printed 
architectural specifications dependent on use  of glossary of predefined 
standard phrases and error-checking feature enabled  by overall disclosure 
generally defining errors); In re Donohue, 550 F.2d 1269,  1271, 193 USPQ 
136, 137 (CCPA 1977) ("Employment of block diagrams and descriptions  of 
their functions is not fatal under 35 U.S.C. 112, first paragraph, 
providing  the represented structure is conventional and can be determined 
without undue  experimentation."); In re Knowlton, 481 F.2d 1357, 1366-68, 
178 USPQ 486, 493-94 
(CCPA 1973) (examiner's contention that a software invention needed a 
detailed  description of all the circuitry in the complete hardware system 
reversed). 

        For many computer-related inventions, it is not unusual for the 
claimed  invention to involve more than one field of technology. For such 
inventions,  the disclosure must satisfy the enablement standard for each 
aspect of the  invention. See In re Naquin, 398 F.2d 863, 866, 158 USPQ 
317, 319 (CCPA 1968) 
("When an invention, in its different aspects, involves distinct arts, 
that  specification is adequate which enables the adepts of each art, 
those who have  the best chance of being enabled, to carry out the aspect 
proper to their specialty.");  Ex parte Zechnall, 194 USPQ 461, 461 (Bd. 
App. 1973) ( "appellants' disclosure  must be held sufficient if it would 
enable a person skilled in the electronic  computer art, in cooperation 
with a person skilled in the fuel injection art,  to make and use 
appellants' invention"). As such, the disclosure must teach  a person 
skilled in each art how to make and use the relevant aspect of the 
invention without undue experimentation. For example, to enable a claim to 
 a programmed computer that determines and displays the three-dimensional 
structure  of a chemical compound, the disclosure must 

- enable a person skilled in the art of molecular modeling to understand 
and  practice the underlying molecular modeling processes; and 

- enable a person skilled in the art of computer programming to create a 
program  that directs a computer to create and display the image 
representing the three-dimensional  structure of the compound. 

In other words, the disclosure corresponding to each aspect of the 
invention  must be enabling to a person skilled in each respective art. 

        In many instances, an applicant will describe a programmed 
computer  by outlining the significant elements of the programmed computer 
using a functional  block diagram. Office personnel should review the 
specification to ensure that  along with the functional block diagram the 
disclosure provides information  that adequately describes each "element" 
in hardware or hardware and its associated  software and how such elements 
are interrelated. See In re Scarbrough, 500  F.2d 560, 565, 182 USPQ 298, 
301-02 (CCPA 1974) ("It is not enough that a person  skilled in the art, 
by carrying on investigations along the line indicated  in the instant 
application, and by a great amount of work eventually might  find out how 
to make and use the instant invention. The statute requires the 
application itself to inform, not to direct others to find out for 
themselves 
(citation omitted)."); Knowlton, 481 F.2d at 1367, 178 USPQ at 493 
(disclosure must constitute more than a "sketchy  explanation of flow 
diagrams or a bare group of program listings together with  a reference to 
a proprietary computer on which they might be run"). See also  In re Gunn, 
537 F.2d 1123, 1127-28, 190 USPQ 402, 405 (CCPA 1976); In re Brandstadter, 
 484 F.2d 1395, 1406-07, 17 USPQ 286, 294 (CCPA 1973); and In re Ghiron, 
442  F.2d 985, 991, 169 USPQ 723, 727-28 (CCPA 1971). 

VI.   Determine Whether the Claimed Invention 
        Complies with 35 U.S.C. 102 and 103 

        As is the case for inventions in any field of technology, 
assessment  of a claimed computer-related invention for compliance with 35 
U.S.C. 102 and  103 begins with a comparison of the claimed subject matter 
to what is known  in the prior art. If no differences are found between 
the claimed invention  and the prior art, the claimed invention lacks 
novelty and is to be rejected  by Office personnel under 35 U.S.C. 102. 
Once distinctions are identified between  the claimed invention and the 
prior art, those distinctions must be assessed  and resolved in light of 
the knowledge possessed by a person of ordinary skill  in the art. Against 
this backdrop, one must determine whether the invention  would have been 
obvious at the time the invention was made. If not, the claimed  invention 
satisfies 35 U.S.C. 103. Factors and considerations dictated by law 
governing 35 U.S.C. 103 apply without modification to computer-related 
inventions. 

        If the difference between the prior art and the claimed invention 
is  limited to descriptive material stored on or employed by a machine, 
Office  personnel must determine whether the descriptive material is 
functional descriptive  material or nonfunctional descriptive material, as 
described supra in Section  IV. Functional descriptive material is a 
limitation in the claim and must be  considered and addressed in assessing 
patentability under 35 U.S.C. 103. Thus,  a rejection of the claim as a 
whole under 35 U.S.C. 103 is inappropriate unless  the functional 
descriptive material would have been suggested by the prior  art. 
Nonfunctional descriptive material cannot render nonobvious an invention 
that would have otherwise been obvious. Cf. In re Gulack, 703 F.2d 1381, 
1385,  217 USPQ 401, 404 (Fed. Cir. 1983) (when descriptive material is 
not functionally  related to the substrate, the descriptive material will 
not distinguish the  invention from the prior art in terms of patentability). 

        Common situations involving nonfunctional descriptive material 
are: 
- a computer-readable storage medium that differs from the prior art 
solely  with respect to nonfunctional descriptive material, such as music 
or a literary  work, encoded on the medium, 

- a computer that differs from the prior art solely with respect to 
nonfunctional  descriptive material that cannot alter how the machine 
functions (i.e., the  descriptive material does not reconfigure the 
computer), or 

- a process that differs from the prior art only with respect to 
nonfunctional  descriptive material that cannot alter how the process 
steps are to be performed  to achieve the utility of the invention. 

Thus, if the prior art suggests storing a song on a disk, merely choosing 
a  particular song to store on the disk would be presumed to be well 
within the  level of ordinary skill in the art at the time the invention 
was made. The  difference between the prior art and the claimed invention 
is simply a rearrangement  of nonfunctional descriptive material. 

VII.    Clearly Communicate Findings, Conclusions and 
Their  Bases 

        Once Office personnel have concluded the above analyses of the 
claimed  invention under all the statutory provisions, including 35 U.S.C. 
101, 112,  102 and 103, they should review all the proposed rejections and 
their bases  to confirm their correctness. Only then should any rejection 
be imposed in  an Office action. The Office action should clearly 
communicate the findings,  conclusions and reasons which support them. 


2106.01       Computer Programming and 35 U.S.C. 112, First Paragraph 
[R-2] 

        The requirements for sufficient disclosure of inventions involving 
 computer programming is the same as for all inventions sought to be 
patented.  Namely, there must be an adequate written description, the 
original disclosure  should be sufficiently enabling to allow one to make 
and use the invention  as claimed, and there must be presentation of a 
best mode for carrying out  the invention. 

        The following guidelines, while applicable to a wide range of 
arts,  are intended to provide a guide for analyzing 35 U.S.C. 112, first 
paragraph,  issues in applications involving computer programs, software, 
firmware, or  block diagram cases wherein one or more of the "block 
diagram" elements are  at least partially comprised of a computer software 
component. It should be  recognized that sufficiency of disclosure issues 
in computer cases necessarily  will require an inquiry into both the 
sufficiency of the disclosed hardware  as well as the disclosed software 
due to the interrelationship and interdependence  of computer hardware and 
software. 

Written Description 

        The function of the description requirement is to ensure that the 
inventor  had possession of, as of the filing date of the application 
relied on, the  specific subject matter later claimed by him or her; how 
the specification  accomplishes this is not material. In re Herschler, 
200 USPQ 711, 717 (CCPA 1979) and further reiterated in In re Kaslow, 217 
USPQ  1089 (*>Fed. Cir.< 1983). >See also, MPEP w 2163 - w 2163.04.< 

Best Mode 

        While the purpose of the best mode requirement is to "restrain 
inventors  from applying for patents while at the same time concealing 
from the public  the preferred embodiments of their inventions which they 
have in fact conceived,"  In re Gay, 135 USPQ 311, 315 (CCPA 1962); "There 
is no objective standard by which to judge the adequacy of a best mode 
disclosure. Instead, only evidence of concealment (accidental or 
intentional)  is to be considered. That evidence, in order to result in 
affirmance of a best  mode rejection, must tend to show that the quality 
of an applicant's best mode  disclosure is so poor as to effectively 
result in concealment." In re Sherwood,  204 USPQ 537, 544 (CCPA 1980). 
Also, see White Consolidated 
Industries v. Vega Servo-Control, 214 USPQ 796, 824 (S.D. Michigan, S. 
Div.  1982)*>, aff'd< on other grounds*>,< 218 USPQ 961 (*>Fed. Cir.< 
1983). >See  also, MPEP 
w 2165 - w 2165.04.< 

 Enablement 

        When basing a rejection on the failure of the applicant's 
disclosure  to meet the enablement provisions of the first paragraph of 35 
U.S.C. 112,  the examiner must establish on the record that he has a 
reasonable basis for  questioning the adequacy of the disclosure to enable 
a person of ordinary skill  in the art to make and use the claimed 
invention without resorting to undue  experimentation. See In re Brown, 
177 USPQ 691 (CCPA 1973), In re Ghiron, 169  USPQ 723, (CCPA 1971). Once 
the examiner has advanced a reasonable basis for  questioning the adequacy 
of the disclosure, it becomes incumbent on the applicant  to rebut that 
challenge and factually demonstrate that his or her application 
disclosure is in fact sufficient. See In re Doyle, 179 USPQ at 
232 (CCPA 1973), In re Scarbrough, 182 USPQ 298, 302 (CCPA 1974), In re 
Ghiron,  supra. >See also, MPEP 
w 2106, V.B.2 and w 2164 - w 2164.08(c).< 


2106.02       Disclosure in Computer Programming Cases [R-1] 


        >To establish a reasonable basis for questioning the adequacy of a 
 disclosure, the examiner must present a factual analysis of a disclosure 
to  show that a person skilled in the art would not be able to make and 
use the  claimed invention without resorting to undue experimentation. 

        In computer cases, it is not unusual for the claimed invention to 
involve  two areas of prior art or more than one technology, (White 
Consolidated, supra,  214 USPQ at 821); e.g., an appropriately programmed 
computer and an area of  application of said computer. In regard to the 
"skilled in the art" standard,  in cases involving both the art of 
computer programming, and another technology,  the examiner must recognize 
that the knowledge of persons skilled in both technologies  is the 
appropriate criteria for determining sufficiency. See In re Naquin,  158 
USPQ 317, (CCPA1968); In re Brown, 177 USPQ 691 (CCPA 1973); and White 
Consolidated, supra at B22. 

        In a typical computer case, system components are often 
represented  in a "block diagram" format, i.e., a group of hollow 
rectangles representing  the elements of the system, functionally 
labelled, and interconnected by lines.  Such block diagram computer cases 
may be categorized into (1) systems which  include but are more 
comprehensive than a computer and (2) systems wherein  the block elements 
are totally within the confines of a computer. 

BLOCK ELEMENTS MORE COMPREHENSIVE THAN A COMPUTER 

        The first category of such block diagram cases involves systems 
which  include a computer as well as other system hardware and/or software 
components.  In order to meet his burden of establishing a reasonable 
basis for questioning  the adequacy of such disclosure, the examiner 
should initiate a factual analysis  of the system by focusing on each of 
the individual block element components.  More specifically, such an 
inquiry should focus on the diverse functions attributed  to each block 
element as well as the teachings in the specification as to how  such a 
component could be implemented. If based on such an analysis, the examiner 
 can reasonably contend that more than routine experimentation would be 
required  by one of ordinary skill in the art to implement such a 
component or components,  that component or components should specifically 
be challenged by the examiner  as part of a 35 U.S.C. 112, first paragraph 
rejection. Additionally, the examiner  should determine whether certain of 
the hardware or software components depicted  as block elements are 
themselves complex assemblages which have widely differing 
characteristics and which must be precisely coordinated with other complex 
 assemblages. Under such circumstances, a reasonable basis may exist for 
challenging  such a functional block diagram form of disclosure. See In re 
Ghiron, supra,  In re Brown, supra. Moreover, even if the applicant has 
cited prior art patents  or publications to demonstrate that particular 
block diagram hardware or software  components are old, it should not 
always be considered as self-evident how such components are to  be 
interconnected to function in a disclosed complex manner. See In re 
Scarbrough,  supra, at 301 and In re Forman, 175 USPQ 12, 16 (CCPA 1972). 
Furthermore, in  complex systems including a digital computer, a 
microprocessor, or a complex  control unit as one of many block diagram 
elements, timing between various  system elements may be of the essence 
and without a timing chart relating the  timed sequences for each element, 
an unreasonable amount of work may be required  to come up with the 
detailed relationships an applicant alleges that he has  solved. See In re 
Scarbrough, supra at 302. 

        For example, in a block diagram disclosure of a complex claimed 
system  which includes a microprocessor and other system components 
controlled by the  microprocessor, a mere reference to a prior art, 
commercially available microprocessor,  without any description of the 
precise operations to be performed by the microprocessor,  fails to 
disclose how such a microprocessor would be properly programmed to  either 
perform any required calculations or to coordinate the other system 
components in the proper timed sequence to perform the functions disclosed 
 and claimed. If, in such a system, a particular program is disclosed, 
such  a program should be carefully reviewed to ensure that its scope is 
commensurate  with the scope of the functions attributed to such a program 
in the claims.  See In re Brown, supra at 695. If the disclosure fails to 
disclose any program  and if more than routine experimentation would be 
required of one skilled in  the art to generate such a program, the 
examiner clearly would have a reasonable  basis for challenging the 
sufficiency of such a disclosure. The amount of experimentation  that is 
considered routine will vary depending on the facts and circumstances  of 
individual cases. No exact numerical standard has been fixed by the 
courts,  but the "amount of required experimentation must, however, be 
reasonable" (White  Consolidated, supra, at 963.) One court apparently 
found that the amount of  experimentation involved was reasonable where a 
skilled programmer was able  to write a general computer program, 
implementing an embodiment form, within  4 hours. (Hirschfield, supra, at 
279 et seq.). On the other hand, another court  found that, where the 
required period of experimentation for skilled programmers  to develop a 
particular program would run to 1# to 2 man years, this would  be "a 
clearly unreasonable requirement" (White Consolidated, supra at 963). 
BLOCK ELEMENTS WITHIN A COMPUTER 

        The second category of block diagram cases occurs most frequently 
in  pure data processing applications where the combination of block 
elements is  totally within the confines of a computer, there being no 
interfacing with  external apparatus other than normal input/output 
devices. In some instances,  it has been found that particular kinds of 
block diagram disclosures were sufficient  to meet the enabling 
requirement of 35 U.S.C. 112, first paragraph. See In  re Knowlton, 178 
USPQ 486 (CCPA 1973), In re Comstock and Gilmer, 178 USPQ  616 (CCPA 
1973). Most significantly, however, in both the Comstock and Knowlton 
cases, the decisions turned on the appellants disclosure of (1) a 
reference  to and reliance on an identified prior art computer system and 
(2) an operative  computer program for the referenced prior art computer 
system. Moreover, in  Knowlton the disclosure was presented in such a 
detailed fashion that the individual  program's steps were specifically 
interrelated with the operative structural  elements in the referenced 
prior art computer system. The Court in Knowlton  indicated that the 
disclosure did not merely consist of a sketchy explanation  of flow 
diagrams or a bare group of program listings together with a reference  to 
a proprietary computer in which they might be run. The disclosure was 
characterized  as going into considerable detail into explaining the 
interrelationships between  the disclosed hardware and software elements. 
Under such circumstances, the  Court considered the disclosure to be 
concise as well as full, clear, and exact  to a sufficient degree to 
satisfy the literal language of 35 U.S.C. 112, first  paragraph. It must 
be emphasized that because of the significance of the program  listing and 
the reference to and reliance on an identified prior art computer  system, 
absent either of these items, a block element disclosure within the 
confines of a computer should be scrutinized in precisely the same manner 
as  the first category of block diagram cases discussed above. 

        Regardless of whether a disclosure involves block elements more 
comprehensive  than a computer or block elements totally within the 
confines of a computer,  the examiner, when analyzing method claims, must 
recognize that the specification  must be adequate to teach how to 
practice the claimed method. If such practice  requires particular 
apparatus, it is axiomatic that the application must therefore  provide a 
sufficient disclosure of that apparatus if such is not already available. 
See In re Ghiron, supra at 727 and In re Gunn, 190 USPQ 402, 406 (CCPA 
1976).  When the examiner questions the adequacy of computer system or 
computer programming  disclosures, the examiner's reasons for finding the 
specification to be nonenabling  should be supported by the record as a 
whole. In this regard, it is also essential  for the examiner to 
reasonably challenge evidence submitted by the applicant.  For example, in 
In re Naquin, supra, affiant's statement unchallenged by the  examiner, 
that the average computer programmer was familiar with the subroutine 
necessary for performing the claimed process, was held to be a statement 
of  fact which rendered the examiner's rejection baseless. In other words, 
unless  the examiner presents a reasonable basis for challenging the 
disclosure in  view of the record as a whole, a 
35 U.S.C. 112, first paragraph rejection in a computer system or computer 
programming  case will not be sustained on appeal. See In re Naquin, 
supra, In re Morehouse  and Bolton, 192 USPQ 29, 32 (CCPA 1976). 

        While no specific universally applicable rule exists for 
recognizing  an insufficiently disclosed application involving computer 
programs, an examining  guideline to generally follow is to challenge the 
sufficiency of such disclosures  which fail to include either the computer 
program itself or a reasonably detailed  flowchart which delineates the 
sequence of operations the program must perform.  In programming 
applications software disclosure only includes a flowchart,  as the 
complexity of functions and the generality of the individual components 
of the flowchart increase, the basis for challenging the sufficiency of 
such  a flowchart becomes more reasonable because the likelihood of more 
than routine  experimentation being required to generate a working program 
from such a flowchart  also increases. 

        As stated earlier, once an examiner has advanced a reasonable 
basis  or presented evidence to question the adequacy of a computer system 
or computer  programming disclosure, the applicant must show that his or 
her specification  would enable one of ordinary skill in the art to make 
and use the claimed invention  without resorting to undue experimentation. 
In most cases, efforts to meet  this burden involve submitting affidavits, 
referencing prior art patents or  technical publications, arguments of 
counsel, or combinations of these approaches. 
AFFIDAVIT PRACTICE (37 CFR 1.132) 

        In computer cases, affidavits must be critically analyzed. 
Affidavit  practice usually initially involves analyzing the skill level 
and/or qualifications  of the affiant, which should be of the routineer in 
the art. When an affiant's  skill level is higher than that required by 
the routineer for a particular  application, an examiner may challenge the 
affidavit since it would not be  made by a routineer in the art, and 
therefore would not be probative as to  the amount of experimentation 
required by a routineer in the art to implement  the invention. An affiant 
having a skill level or qualifications above that  of the routineer in the 
art would require less experimentation to implement  the claimed invention 
than that for the routineer. Similarly, an affiant having  a skill level 
or qualifications below that of the routineer in the art would  require 
more experimentation to implement the claimed invention than that for  the 
routineer in the art. In either situation, the standard of the routineer 
in the art would not have been met. 

        In computer systems or programming cases, the problems with a 
given  affidavit, which relate to the sufficiency of disclosure issue, 
generally involve  affiants submitting few facts to support their 
conclusions or opinions. Some  affidavits may go so far as to present 
conclusions on the ultimate legal question  of sufficiency. In re 
Brandstadter, Kienzle and Sykes, 179 USPQ 286 (CCPA 1973)  illustrates the 
extent of the inquiry into the factual basis underlying an  affiant's 
conclusions or opinions. In Brandstadter, the invention concerned  a 
stored program controller (computer) programmed to control the storing, 
retrieving,  and forwarding of messages in a communications system. The 
disclosure consisted  of broadly defined block diagrams of the structure 
of the invention and no  flowcharts or program listings of the programs of 
the controller. The Court  quoted extensively from the Examiner's Office 
Actions and Examiner's Answer  in its opinion where it was apparent that 
the Examiner consistently argued  that the disclosure was merely a broad 
system diagram in the form of labelled  block diagrams along with 
statements of a myriad of desired results. Various  affidavits were 
presented in which the affiants stated that all or some of  the system 
circuit elements in the block diagrams were either well-known in the art 
or "could be constructed"  by the skilled design engineer, that the 
controller was "capable of being programmed"  to perform the stated 
functions or results desired, and that the routineer  in the art "could 
design or construct or was able to program" the system. The  Court did 
consider the affiants' statements as being some evidence on the ultimate 
legal question of enablement but concluded that the statements failed in 
their  purpose since they recited conclusions or opinions with few facts 
to support  or buttress these conclusions. With reference to the lack of a 
disclosed computer  program or even a flowchart of the program to control 
the message switching  system, the record contained no evidence as to the 
number of programmers needed,  the number of man-hours and the level of 
skill of the programmers to produce  the program required to practice the 
invention. 

        It should be noted also that it is not opinion evidence directed 
to  the ultimate legal question of enablement, but rather factual evidence 
directed  to the amount of time and effort and level of knowledge required 
for the practice  of the invention from the disclosure alone which can be 
expected to rebut a  prima facie case of nonenablement. See Hirschfield v. 
Banner, Commissioner  of Patents and Trademarks, 200 USPQ 276, 281 (D.D.C. 
1978). It has also been  held that where an inventor described the problem 
to be solved to an affiant,  thus enabling the affiant to generate a 
computer program to solve the problem,  such an affidavit failed to 
demonstrate that the application alone would have  taught a person of 
ordinary skill in the art how to make and use the claimed  invention. See 
In re Brown, supra at 695. The Court indicated that it was not  factually 
established that the applicant did not convey to the affiant vital  and 
additional information in their several meetings in addition to that set 
out in the application. Also of significance for an affidavit to be 
relevant  to the determination of enablement is that it must be probative 
of the level  of skill of the routineer in the art as of the time the 
applicant filed his  application. See In re Gunn, supra at, 406. In this 
case, each of the affiants  stated what was known at the time he executed 
the affidavit, and not what was  known at the time the applicant filed his 
application. 

REFERENCING PRIOR ART DOCUMENTS 

        Earlier, it had been discussed that citing in the specification 
the  commercial availability of an identified prior art computer system is 
very  pertinent to the issue of enablement. But in some cases, this 
approach may  not be sufficient to meet the applicant's burden. Merely 
citing in an affidavit  extracts from technical publications in order to 
satisfy the enablement requirement  is not sufficient if it is not made 
clear that a person skilled in the art  would know which, or what parts, 
of the cited circuits could be used to construct  the claimed device or 
how they could be interconnected to act in combination  to produce the 
required results. See In re Forman, supra at 16. This analysis  would 
appear to be less critical where the circuits comprising applicant's 
system are essentially standard components comprising an identified prior 
art  computer system and a standard device attached thereto. 

        Prior art patents are often relied on by applicants to show the 
state  of the art for purposes of enablement. However, these patents must 
have an  issue date earlier than the effective filing date of the 
application under  consideration. See In re Budnick, 190 USPQ 422, 
424 (CCPA 1976). An analogous point was made in In re Gunn, supra where 
the  court indicated that patents issued after the filing date of the 
applicant's  application are not evidence of subject matter known to any 
person skilled  in the art since their subject matter may have been known 
only to the patentees  and the Patent and Trademark Office. 

        Merely citing prior art patents to demonstrate that the challenged 
 components are old may not be sufficient proof since, even if each of the 
enumerated  devices or labelled blocks in a block diagram disclosure were 
old, per se,  this would not make it self-evident how each would be 
interconnected to function  in a disclosed complex combination manner. 
Therefore, the specification in  effect must set forth the integration of 
the prior art; otherwise, it is likely  that undue experimentation, or 
more than routine experimentation would be required  to implement the 
claimed invention. See In re Scarbrough, supra at 301. The  Court also 
noted that any cited patents which are used by the applicant to 
demonstrate that particular box diagram hardware or software components 
are  old must be analyzed as to whether such patents are germane to the 
instant  invention and as to whether such components provide better detail 
of disclosure  as to such components than an applicant's own disclosure. 
Also any patent or  publication cited to provide evidence that a 
particular programming technique is well-known in the programming art does 
 not demonstrate that one of ordinary skill in the art could make and use 
correspondingly  disclosed programming techniques unless both programming 
techniques are of  approximately the same degree or complexity. See In re 
Knowlton, supra at 37 
(CCPA 1974). 

ARGUMENTS OF COUNSEL 

        Arguments of counsel may be effective in establishing that an 
examiner  has not properly met his or her burden or has otherwise erred in 
his or her  position. In these situations, an examiner may have failed to 
set forth any  basis for questioning the adequacy of the disclosure or may 
not have considered  the whole specification, including the drawings and 
the written description.  However, it must be emphasized that arguments of 
counsel alone cannot take  the place of evidence in the record once an 
examiner has advanced a reasonable  basis for questioning the disclosure. 
See In re Budnick, supra at, 424; In  re Schulze, 145 USPQ 716 (CCPA 
1965); and In re Cole, 
140 USPQ 230 (CCPA 1964). For example, in a case where the record 
consisted  substantially of arguments and opinions of applicant's 
attorney, the Court  indicated that factual affidavits could have provided 
important evidence on  the issue of enablement. See In re Knowlton, supra 
at, 37 and In re Wiseman,  201 USPQ 658 (CCPA 1979).< 


2107    General Principles Governing Utility Rejections [R-1] 


>35 U.S.C. 101      Inventions patentable 

        Whoever invents or discovers any new and useful process, machine, 
manufacture,  or composition of matter, or any new and useful improvement 
thereof may obtain  a patent therefor, subject to the conditions and 
requirements of this title. 
        See MPEP # 706.03(a)(1) for guidelines for the examination of 
applications  for compliance with the utility requirement of 35 U.S.C. 101. 

        The Office must examine each application to ensure compliance with 
 the "useful invention" or utility requirement of 35 U.S.C. 101. In 
discharging  this obligation, however, Office personnel must keep in mind 
several general  principles that control application of the utility 
requirement. As interpreted  by the Federal courts, 35 U.S.C. 101 has two 
purposes. First, 35 U.S.C. 101  defines which categories of inventions are 
eligible for patent protection.  An invention that is not a machine, an 
article of manufacture, a composition  or a process cannot be patented. 
See Diamond v. Chakrabarty, 447 U.S. 303,  206 USPQ 193 (1980); Diamond v. 
Diehr, 450 U.S. 175, 209 USPQ 1 (1981). Second,  35 U.S.C. 101 serves to 
ensure that patents are granted on only those inventions  that are 
"useful." This second purpose has a Constitutional footing - Article  I, 
Section 8 of the Constitution authorizes Congress to provide exclusive 
rights  to inventors to promote the "useful arts." See Carl Zeiss Stiftung 
v. Renishaw  PLC, 945 F.2d 1173, 
20 USPQ2d 1094 (Fed. Cir. 1991). Thus, to satisfy the requirements of 35 
U.S.C.  101, an applicant must claim an invention that is statutory 
subject matter  and must show that the claimed invention is "useful" for 
some purpose either  explicitly or implicitly. Application of this latter 
element of 35 U.S.C. 101  is the focus of these guidelines. 

        Deficiencies under the "useful invention" requirement of 35 U.S.C. 
 101 will arise in one of two forms. The first is where it is not apparent 
why  the applicant believes the invention to be ``useful." This can occur 
when an  applicant fails to identify any specific utility for the 
invention or fails  to disclose enough information about the invention to 
make its usefulness immediately  apparent to those familiar with the 
technological field of the invention. Brenner  v. Manson, 383 U.S. 519, 
148 USPQ 689 (1966); In re Ziegler, 992 F.2d 1197,  26 USPQ2d 1600 (Fed. 
Cir. 1993). The second type of deficiency arises in the  rare instance 
where an assertion of specific utility for the invention made  by an 
applicant is not credible. 

a.  "Real world value" requirement 

        To satisfy 35 U.S.C. 101, an invention must be "useful." Courts 
have  recognized that the term "useful" used with reference to the utility 
requirement  can be a difficult term to define. Brenner v. Manson, 383 
U.S. 519, 529, 148  USPQ 689, 693 (1966) (simple everyday word like 
"useful" can be "pregnant with  ambiguity when applied to the facts of 
life."). Where an applicant has set  forth a specific utility, courts have 
been reluctant to uphold a rejection  under 35 U.S.C. 101 solely on the 
basis that the applicant's opinion as to  the nature of the specific 
utility was inaccurate. For example, in Nelson v.  Bowler, 626 F.2d 853, 
206 USPQ 881 (CCPA 1980), the CCPA reversed a finding  by the Office that 
the applicant had not set forth a "practical" utility under  35 U.S.C. 101 
despite the fact that the applicant asserted that the composition  was 
"useful" in a particular pharmaceutical application and provided evidence 
to support that assertion. Courts have used the labels  "practical 
utility" or "specific utility" to refer to this aspect of the "useful 
invention" requirement of 35 U.S.C. 101. As the Court of Customs and 
Patent  Appeals stated in Nelson v. Bowler: 

Practical utility is a shorthand way of attributing "real-world" value to 
claimed  subject matter. In other words, one skilled in the art can use a 
claimed discovery  in a manner which provides some immediate benefit to 
the public. 

Nelson v. Bowler, 626 F.2d 853, 856, 206 USPQ 881, 
883 (CCPA 1980). 

        Practical considerations require the Office to rely on the 
inventor's  understanding of his or her invention in determining whether 
and in what regard  an invention is believed to be "useful." Because of 
this, Office personnel  should focus on and be receptive to specific 
assertions made by the applicant  that an invention is "useful" for a 
particular reason. Office personnel should  distinguish between situations 
where an applicant has disclosed a specific  use for or application of the 
invention and situations where the applicant  merely indicates that the 
invention may prove useful without identifying with  specificity why it is 
considered useful. For example, indicating that a compound  may be useful 
in treating unspecified disorders, or that the compound has "useful 
biological" properties, would not be sufficient to define a specific 
utility  for the compound. Contrast the situation where an applicant 
discloses a specific  biological activity and reasonably correlates that 
activity to a disease condition.  Assertions falling within the latter 
category are sufficient to identify a  specific utility for the invention. 
Assertions that fall in the former category  are insufficient to define a 
specific utility for the invention, especially  if the assertion takes the 
form of a general statement that makes it clear  that a "useful" invention 
may arise from what has been disclosed by the applicant.  Knapp v. 
Anderson, 477 F.2d 588, 177 USPQ 688 (CCPA 1973). 

        Some confusion can result when one attempts to label certain types 
 of inventions as not being capable of having a specific utility based on 
the  setting in which the invention is to be used. One example are 
inventions to  be used in a research or laboratory setting. Many research 
tools such as gas  chromatographs, screening assays, and nucleotide 
sequencing techniques have  a clear, specific and unquestionable utility 
(e.g., they are useful in analyzing  compounds). An assessment that 
focuses on whether an invention is useful only  in a research setting thus 
does not address whether the specific invention  is in fact "useful" in a 
patent sense. Instead, Office personnel must distinguish  between 
inventions that have a specifically identified utility and inventions 
whose specific utility requires further research to identify or reasonably 
 confirm. Labels such as "research tool," "intermediate" or "for research 
purposes"  are not helpful in determining if an applicant has identified a 
specific utility  for the invention. 

        Office personnel also must be careful not to interpret the phrase 
"immediate  benefit to the public" or similar formulations in other cases 
to mean that  products or services based on the claimed invention must be 
"currently available"  to the public in order to satisfy the utility 
requirement. See, e.g., Brenner  v. Manson, 383 U.S. 519, 534-35, 148 USPQ 
689, 695 (1966). Rather, any reasonable  use that an applicant has 
identified for the invention that can be viewed as  providing a public 
benefit should be accepted as sufficient, at least with  regard to 
defining a "specific" utility. 

b.  Wholly inoperative inventions; "Incredible" utility 

        An invention that is "inoperative" (i.e., it does not operate to 
produce  the results claimed by the patent applicant) is not a "useful" 
invention in  the meaning of the patent law. See, e.g., Newman v. Quigg, 
877 F.2d 1575, 1581,  11 USPQ2d 1340, 1345 (Fed. Cir. 1989); In re 
Harwood, 390 F.2d 985, 989, 156 USPQ 673, 676 (CCPA 1968) ("An inoperative 
 invention, of course, does not satisfy the requirement of 35 U.S.C. 101 
that  an invention be useful."). However, as the Federal Circuit has 
stated, "[t]o  violate [35 U.S.C.] 101 the claimed device must be totally 
incapable of achieving  a useful result." Brooktree Corp. v. Advanced 
Micro Devices, Inc., 977 F.2d  1555, 1571, 24 USPQ2d 1401, 1412 (Fed. Cir. 
1992) (emphasis added). See also  E.I. du Pont De Nemours and Co. v. 
Berkley and Co., 620 F.2d 1247, 1260 n.17,  205 USPQ 1, 10 n.17 (8th Cir. 
1980) ("A small degree of utility is sufficient  . . . The claimed 
invention must only be capable of performing some beneficial  function . . 
. An invention does not lack utility merely because the particular 
embodiment disclosed in the patent lacks perfection or performs crudely . 
.  . A commercially successful product is not required . . . Nor is it 
essential  that the invention accomplish all its intended functions . . . 
or operate under all conditions . . . partial success being sufficient to 
demonstrate patentable  utility . . . In short, the defense of non-utility 
cannot be sustained without  proof of total incapacity." If an invention 
is only partially successful in  achieving a useful result, a rejection of 
the claimed invention as a whole  based on a lack of utility is not 
appropriate. See In re Brana, 51 F.3d 1560,  34 USPQ2d 1436 (Fed. Cir. 
1995); In re Gardner, 475 F.2d 1389, 
177 USPQ 396 (CCPA), reh'g denied, 480 F.2d 879 (CCPA 1973); In re 
Marzocchi,  439 F.2d 220, 169 USPQ 367 (CCPA 1971). 

        Situations where an invention is found to be "inoperative" and 
therefore  lacking in utility are rare, and rejections maintained solely 
on this ground  by a Federal court even rarer. In many of these cases, the 
utility asserted  by the applicant was thought to be "incredible in the 
light of the knowledge  of the art, or factually misleading" when 
initially considered by the Office.  In re Citron, 325 F.2d 248, 253, 139 
USPQ 516, 520 (CCPA 1963). Other cases  suggest that on initial 
evaluation, the Office considered the asserted utility  to be inconsistent 
with known scientific principles or "speculative at best"  as to whether 
attributes of the invention necessary to impart the asserted  utility were 
actually present in the invention. In re Sichert, 566 F.2d 1154,  196 USPQ 
209 (CCPA 1977). However cast, the underlying finding by the court  in 
these cases was that, based on the factual record of the case, it was 
clear  that the invention could and did not work as the inventor claimed 
it did. Indeed,  the use of many labels to describe a single problem 
(e.g., an assertion regarding  utility that is false) has led to some of 
the confusion that exists today with  regard to a rejection based on the 
"utility" requirement. Examples of such  cases include: an invention 
asserted to change the taste of food using a magnetic  field (Fregeau v. 
Mossinghoff, 776 F.2d 1034, 227 USPQ 848 (Fed. Cir. 1985)),  a perpetual 
motion machine (Newman v. Quigg, 877 F.2d 1575, 
11 USPQ2d 1340 (Fed. Cir. 1989)), a flying machine operating on "flapping 
or  flutter function" (In re Houghton, 433 F.2d 820, 167 USPQ 687 (CCPA 
1970)),  a method for increasing the energy output of fossil fuels upon 
combustion through  exposure to a magnetic field (In re Ruskin, 354 F.2d 
395, 148 USPQ 221 (CCPA  1966)), uncharacterized compositions for curing a 
wide array of cancers (In  re Citron, 325 F.2d 248, 139 USPQ 516 (CCPA 
1963)), a method of controlling  the aging process (In re Eltgroth, 419 
F.2d 918, 164 USPQ 221 (1970)), and  a method of restoring hair growth (In 
re Ferens, 417 F.2d 1072, 163 USPQ 609 
(CCPA 1969)). Thus, in view of the rare nature of such cases, Office 
personnel  should not label an asserted utility "incredible," 
"speculative" or otherwise  unless it is clear that a rejection based on 
"lack of utility" is proper. 
c.  Therapeutic or pharmacological utility 

        Inventions asserted to have utility in the treatment of human or 
animal  disorders are subject to the same legal requirements for utility 
as inventions  in any other field of technology. In re Chilowsky, 229 F.2d 
457, 461-2, 108  USPQ 321, 325 (CCPA 1956) ("There appears to be no basis 
in the statutes or  decisions for requiring any more conclusive evidence 
of operativeness in one  type of case than another. The character and 
amount of evidence needed may  vary, depending on whether the alleged 
operation described in the application  appears to accord with or to 
contravene established scientific principles or  to depend upon principles 
alleged but not generally recognized, but the degree  of certainty as to 
the ultimate fact of operativeness or inoperativeness should  be the same 
in all cases"); In re Gazave, 379 F.2d 973, 978, 154 USPQ 92, 96 
(CCPA 1967) ("Thus, in the usual case where the mode of operation alleged 
can  be readily understood and conforms to the known laws of physics and 
chemistry,  operativeness is not questioned, and no further evidence is 
required."). As  such, pharmacological or therapeutic inventions that 
provide any "immediate  benefit to the public" satisfy 35 U.S.C. 101. The 
utility being asserted in  Nelson related to a compound with 
pharmacological utility. Nelson v. Bowler,  626 F.2d 853, 856, 206 USPQ 
881, 883 (CCPA 1980). Office personnel should rely  on Nelson and other 
cases as providing general guidance when evaluating the  utility of an 
invention that is based on any therapeutic, prophylactic, or 
pharmacological activities of that invention. 

        Courts have repeatedly found that the mere identification of a 
pharmacological  activity of a compound that is relevant to an asserted 
pharmacological use  provides 


an "immediate benefit to the public" and thus satisfies the utility 
requirement.  As the CCPA held in Nelson v. Bowler: 

Knowledge of the pharmacological activity of any compound is obviously 
beneficial  to the public. It is inherently faster and easier to combat 
illnesses and alleviate symptoms when the medical profession  is armed 
with an arsenal of chemicals having known pharmacological activities. 
Since it is crucial to provide researchers with an incentive to disclose 
pharmacological  activities in as many compounds as possible, we conclude 
that adequate proof  of any such activity constitutes a showing of 
practical utility. 

Nelson v. Bowler, 626 F.2d 853, 856, 206 USPQ 881, 883 (CCPA 1980). 
        In Nelson v. Bowler, the CCPA addressed the practical utility 
requirement  in the context of an interference proceeding. Bowler 
challenged the patentability  of the invention claimed by Nelson on the 
basis that Nelson had failed to sufficiently  and persuasively disclose in 
his application a practical utility for the invention.  Nelson had 
developed and claimed a class of synthetic prostaglandins modeled  on 
naturally occurring prostaglandins. Naturally occurring prostaglandins are 
 bioactive compounds that, at the time of Nelson's application, had a 
recognized  value in pharmacology (e.g., the stimulation of uterine smooth 
muscle which  resulted in labor induction or abortion, the ability to 
raise or lower blood  pressure, etc.). To support the utility he 
identified in his disclosure, Nelson  included in his application the 
results of tests demonstrating the bioactivity  of his new substituted 
prostaglandins relative to the bioactivity of naturally  occurring 
prostaglandins. The Court concluded that Nelson had satisfied the 
practical utility requirement in identifying the synthetic prostaglandins 
as  pharmacologically active compounds. In reaching this conclusion, the 
court  considered and rejected arguments advanced by Bowler that attacked 
the evidentiary  basis for Nelson's assertions that the compounds were 
pharmacologically active. 
        In In re Jolles, 628 F.2d 1322, 206 USPQ 885 (CCPA 1980), an 
inventor  claimed protection for pharmaceutical compositions for treating 
leukemia. The  active ingredient in the compositions was a structural 
analog to a known anticancer  agent. The applicant provided evidence 
showing that the claimed analogs had  the same general pharmaceutical 
activity as the known anticancer agents. The  Court reversed the Board's 
finding that the asserted pharmaceutical utility  was "incredible," 
pointing to the evidence that showed the relevant pharmacological  activity. 

        In Cross v. Iizuka, 753 F.2d 1040, 224 USPQ 739 (Fed. Cir. 1985), 
the  Federal Circuit affirmed a finding by the Board of Patent Appeals and 
Interferences  that a pharmacological utility had been disclosed in the 
application of one  party to an interference proceeding. The invention 
that was the subject of  the interference count was a chemical compound 
used for treating blood disorders.  Cross had challenged the evidence in 
Iizuka's specification that supported  the claimed utility. However, the 
Federal Circuit relied extensively on Nelson  v. Bowler in finding that 
Iizuka's application had sufficiently disclosed a  pharmacological utility 
for the compounds. It distinguished the case from cases  where only a 
generalized "nebulous" expression, such as "biological properties,"  had 
been disclosed in a specification. Such statements, the court held, 
"convey  little explicit indication regarding the utility of a compound." 
Cross, 753  F.2d at 1048, 224 USPQ at 745 (citing In re Kirk, 376 F.2d 
936, 941, 153 USPQ  48, 52 (CCPA 1967)). 

        Similarly, courts have found utility for therapeutic inventions 
despite  the fact that an applicant is at a very early stage in the 
development of a  pharmaceutical product or therapeutic regimen based on a 
claimed pharmacological  or bioactive compound or composition. The Federal 
Circuit, in Cross v. Iizuka,  753 F.2d 1040, 1051, 224 USPQ 739, 747-48 
(Fed. Cir. 1985), commented on the  significance of data from in vitro 
testing that showed pharmacological activity: 
We perceive no insurmountable difficulty, under appropriate circumstances, 
 in finding that the first link in the screening chain, in vitro testing, 
may  establish a practical utility for the compound in question. 
Successful in vitro  testing will marshal resources and direct the 
expenditure of effort to further  in vivo testing of the most potent 
compounds, thereby providing an immediate  benefit to the public, 
analogous to the benefit provided by the showing of  an in vivo utility. 

Recently, the Federal Circuit reiterated that therapeutic utility 
sufficient  under the patent laws is not to be confused with the 
requirements of the FDA  with regard to safety and efficacy of drugs to 
marketed in the United States. 
FDA approval, however, is not a prerequisite for finding a compound useful 
 within the meaning of the patent laws. Scott [v. Finney], 34 F.3d 1058, 
1063,  32 USPQ2d 1115, 1120 [(Fed.Cir. 1994)]. Usefulness in patent law, 
and in particular  in the context of pharmaceutical inventions, 
necessarily includes the expectation  of further research and development. 
The stage at which an invention in this  field becomes useful is well 
before it is ready to be administered to humans.  Were we to require Phase 
II testing in order to prove utility, the associated  costs would prevent 
many companies from obtaining patent protection on promising  new 
inventions, thereby eliminating an incentive to pursue, through research 
and development, potential cures in many crucial areas such as the 
treatment  of cancer. 

In re Brana, 51 F.3d 1560, 34 USPQ2d 1436 (Fed. Cir. 1995). Accordingly, 
Office  personnel should not construe 35 U.S.C. 101, under the logic of 
"practical"  utility or otherwise, to require that an applicant 
demonstrate that a therapeutic  agent based on a claimed invention is a 
safe or fully effective drug for humans.  See, e.g., In re Sichert, 566 
F.2d 1154, 196 USPQ 209 (CCPA 1977); In re Hartop,  311 F.2d 249, 135 USPQ 
419 (CCPA 1962); In re Anthony, 414 F.2d 1383, 162 USPQ  594 (CCPA 1969); 
In re Watson, 517 F.2d 465, 186 USPQ 11 (CCPA 1975). 
        These general principles are equally applicable to situations 
where  an applicant has claimed a process for treating a human or animal 
disorder.  In such cases, the asserted utility is usually clear - the 
invention is asserted  to be useful in treating the particular disorder. 
If the asserted utility is  credible, there is no basis to challenge such 
a claim on the basis that it  lacks utility under 
35 U.S.C. 101. 

d.  Relationship between 35 U.S.C. 112, first paragraph, and 35 U.S.C. 101 
        A deficiency under 35 U.S.C. 101 also creates a deficiency under 
35  U.S.C. 112, first paragraph. See In re Brana, 51 F.3d 1560, 34 USPQ2d 
1436 
(Fed. Cir. 1995); In re Jolles, 628 F.2d 1322, 1326 n.10, 206 USPQ 885, 
889  n.11 (CCPA 1980); In re Fouche, 439 F.2d 1237, 1243, 169 USPQ 429, 
434 (CCPA  1971) ("If such compositions are in fact useless, appellant's 
specification  cannot have taught how to use them."). Courts have also 
cast the 
35 U.S.C. 101/35 U.S.C. 112 relationship such that 
35 U.S.C. 112 presupposes compliance with 35 U.S.C. 101 compliance. See In 
 re Ziegler, 992 F.2d 1197, 1200-1201, 26 USPQ2d 1600, 1603 (Fed. Cir. 
1993) 
("The how to use prong of section 112 incorporates as a matter of law the 
requirement  of 35 U.S.C. 101 that the specification disclose as a matter 
of fact a practical  utility for the invention. ... If the application 
fails as a matter of fact  to satisfy 35 U.S.C. # 101, then the 
application also fails as a matter of  law to enable one of ordinary skill 
in the art to use the invention under 35  U.S.C. # 112."); In re Kirk, 376 
F.2d 936, 942, 153 USPQ 48, 53 (CCPA 1967) 
("Necessarily, compliance with # 112 requires a description of how to use 
presently  useful inventions, otherwise an applicant would anomalously be 
required to  teach how to use a useless invention."). For example, the 
Federal Circuit recently  noted, "[o]bviously, if a claimed invention does 
not have utility, the specification  cannot enable one to use it." In re 
Brana, 51 F.3d 1560, 
34 USPQ2d 1436 (Fed. Cir. 1995). As such, a rejection properly imposed 
under  35 U.S.C. 101 should be accompanied with a rejection under 35 
U.S.C. 112, first  para graph. It is equally clear that a rejection based 
on "lack of utility,"  whether grounded upon 35 U.S.C. 101 or 
35 U.S.C. 112, first paragraph, rests on the same basis (i.e., the 
asserted  utility is not credible). To avoid confusion, any rejection that 
is imposed  on the basis of 
35 U.S.C. 101 should be accompanied by a rejection based on 35 U.S.C. 112, 
 first paragraph. The 35 U.S.C. 112, first paragraph, rejection should be 
set  out as a separate rejection that incorporates by reference the 
factual basis  and conclusions set forth in the 35 U.S.C. 101 rejection. 
The 35 U.S.C. 112,  first paragraph, rejection should indicate that 
because the invention as claimed  does not have utility, a person skilled 
in the art would not be able to use  the invention as claimed, and as 
such, the claim is defective under 35 U.S.C.  112, first paragraph. A 
35 U.S.C. 112, first paragraph, rejection should not be imposed or 
maintained  unless an appropriate basis exists for imposing a rejection 
under 35 U.S.C.  101. In other words, Office personnel should not impose a 
35 U.S.C. 112, first paragraph, rejection grounded on a "lack of utility" 
basis  unless a 35 U.S.C. 101 rejection is proper. In particular, the 
factual showing  needed to impose a rejection under 35 U.S.C. 101 must be 
provided if a rejection  under 35 U.S.C. 112, first paragraph, is to be 
imposed on "lack of utility"  grounds. 

        It is important to recognize that 35 U.S.C. 112, first paragraph, 
addresses  matters other than those related to the question of whether or 
not an invention  lacks utility. These matters include whether the claims 
are fully supported  by the disclosure (In re Vaeck, 947 F.2d 488, 495, 20 
USPQ2d 1438, 1444 (Fed.  Cir. 1991)), whether the applicant has provided 
an enabling disclosure of the  claimed subject matter (In re Wright, 999 
F.2d 1557, 1561-1562, 27 USPQ2d 1510,  1513 (Fed. Cir. 1993)), whether the 
applicant has provided an adequate written  description of the invention 
and whether the applicant has disclosed the best  mode of practicing the 
claimed invention (Chemcast Corp. v. Arco Industries  Corp., 
913 F.2d 923, 927-928, 16 USPQ2d 1033, 1036-1037 (Fed. Cir. 1990). See 
also  Transco Products Inc. v. Performance Contracting Inc., 38 F.3d 551, 
32 USPQ2d 1077 (Fed. Cir. 1994); Glaxo  Inc. v. Novopharm Ltd. 
52 F.3d 1043, 34 USPQ2d 1565 (Fed. Cir. 1995)). The fact that an applicant 
 has disclosed a specific utility for an invention and provided a credible 
basis  supporting that specific utility does not provide a basis for 
concluding that  the claims comply with all the requirements of 
35 U.S.C. 112, first paragraph. For example, if an applicant has claimed a 
 process of treating a certain disease condition with a certain compound 
and  provided a credible basis for asserting that the compound is useful 
in that  regard, but to actually practice the invention as claimed a 
person skilled  in the relevant art would have to engage in an undue 
amount of experimentation,  the claim may be defective under 35 U.S.C. 
112, but not 35 U.S.C. 101. To avoid  confusion during examination, any 
rejection under 35 U.S.C. 112, first paragraph,  based on grounds other 
than "lack of utility" should be imposed separately  from any rejection 
imposed due to "lack of utility" under 
35 U.S.C. 101 and 35 U.S.C. 112, first paragraph.< 


2107.01       Procedural Considerations Related to Rejections for Lack of 
Utility [R-2] 

a.  The claimed invention is the focus of the utility 
requirement 

        The claimed invention is the focus of the assessment of whether an 
 applicant has satisfied the utility requirement. Each claim (i.e., each 
"invention"),  therefore, must be evaluated on its own merits for 
compliance with all statutory  requirements. Generally speaking, however, 
a dependent claim will define an  invention that has utility if the claim 
from which it depends has defined an  invention having utility. An 
exception to this general rule is where the utility  specified for the 
invention defined in a dependent claim differs from that  indicated for 
the invention defined in the independent claim from which the  dependent 
claim depends. Where an applicant has established utility for a species 
that falls within a identified genus of compounds, and presents a generic 
claim  covering the genus, as a general matter, that claim should be 
treated as being  sufficient under 35 U.S.C. 101. Only where it can be 
established that other  species clearly encompassed by the claim do not 
have utility should a rejection  be imposed on the generic claim. In such 
cases, the applicant should be encouraged  to amend the generic claim so 
as to exclude the species that lack utility.  A claim that raises this 
question is likely to be deficient under 
35 U.S.C. 112, second paragraph, in terms of accurately defining the genus 
 to encompass species that are sufficiently similar to constitute the 
genus. 
        It is common and sensible for an applicant to identify several 
specific  utilities for an invention, particularly where the invention is 
a product (e.g.,  a machine, an article of manufacture or a composition of 
matter). However,  regardless of the category of invention that is claimed 
(e.g., product or process),  an applicant need only make one credible 
assertion of specific utility for  the claimed invention to satisfy 35 
U.S.C. 101 and 35 U.S.C. 112; additional  statements of utility, even if 
not "credible," do not render the claimed invention  lacking in utility. 
See, e.g., Raytheon v. Roper, 724 F.2d 951, 958, 220 USPQ 592, 598 (Fed. 
Cir. 1983), cert. denied, 
469 U.S. 835 (1984) ("When a properly claimed invention meets at least one 
 stated objective, utility under 
35 U.S.C. 101 is clearly shown." ); In re Gottlieb, 328 F.2d 1016, 1019, 
140  USPQ 665, 668 (CCPA 1964) ("Having found that the antibiotic is 
useful for  some purpose, it becomes unnecessary to decide whether it is 
in fact useful  for the other purposes `indicated' in the specification as 
possibly useful."  ); In re Malachowski, 530 F.2d 1402, 189 USPQ 432 (CCPA 
1976); Hoffman v. Klaus, 9 USPQ2d 1657 (Bd. Pat. App. & Inter. 1988). 
Thus, if applicant makes one credible  assertion of utility, utility for 
the claimed invention as a whole is established. 
        Statements made by the applicant in the specification or incident 
to  prosecution of the application before the Office cannot, standing 
alone, be  the basis for a lack of utility rejection under 35 U.S.C. 101 
or 35 U.S.C.  112. Tol-O-Matic, Inc. v. Proma Produkt-Und Mktg. 
Gesellschaft m.b.h., 945  F.2d 1546, 1553, 20 USPQ2d 1332, 1338 (Fed. Cir. 
1991) (It is not required  that a particular characteristic set forth in 
the prosecution history be achieved  in order to satisfy 35 U.S.C. 101.). 
An applicant may include statements in  the specification whose technical 
accuracy cannot be easily confirmed if those  statements are not necessary 
to support the patentability of an invention with  regard to any statutory 
basis. Thus, the Office should not require an applicant  to strike 
nonessential statements relating to utility from a patent disclosure, 
regardless of the technical accuracy of the statement or assertion it 
presents.  Office personnel should also be especially careful not to read 
into a claim unclaimed results, limitations  or embodiments of an 
invention. See Carl Zeiss Stiftung v. Renishaw PLC, 945  F.2d 1173, 20 
USPQ2d 1094 (Fed. Cir. 1991); In re Krimmel, 292 F.2d 948, 130  USPQ 215 
(CCPA 1961). Doing so can inappropriately change the relationship  of an 
asserted utility to the claimed invention and raise issues not relevant 
to examination of that claim. 

b.  Is there an asserted or well-established utility for the claimed 
invention? 
        Upon initial examination, the Examiner should review the 
specification  to determine if there are any statements asserting that the 
claimed invention  is useful for any particular purpose. A complete 
disclosure should include  a statement which identifies a specific utility 
for the invention. 
i.  An asserted utility must be specific, not general 

        A statement of specific utility should fully and clearly explain 
why  the applicant believes the invention is useful. Such statements will 
usually  explain the purpose of or how the invention may be used (e.g., a 
compound is  believed to be useful in the treatment of a particular 
disorder). Regardless  of the form of statement of specific utility, it 
must enable one ordinarily  skilled in the art to understand why the 
applicant believes the claimed invention  is useful. 

        Except where an invention has a well-established utility, the 
failure  of an applicant to specifically identify why an invention is 
believed to be  useful renders the claimed invention deficient under 35 
U.S.C. 101 and 35 U.S.C. 112, first paragraph. In such cases, the 
applicant has failed to  identify a "specific utility" for the claimed 
invention. For example, a statement  that a composition has an unspecified 
"biological activity" or that does not  explain why a composition with 
that activity is believed to be useful fails  to set forth a "specific 
utility." Brenner v. Manson, 383 US 519, 148 USPQ  689 (1966) (general 
assertion of similarities to known compounds known to be  useful without 
sufficient corresponding explanation why claimed compounds are  believed 
to be similarly useful insufficient under 35 U.S.C. 101); In re Ziegler, 
992 F.2d 1197, 1201, 26 USPQ2d 1600, 
1604 (Fed. Cir. 1993) (disclosure that composition is "plastic-like" and 
can  form "films" not sufficient to identify specific utility for 
invention); In  re Kirk, 376 F.2d 936, 153 USPQ 48 (CCPA 1967) (indication 
that compound is  "biologically active" or has "biological properties" 
insufficient standing  alone). See also In re Joly, 
376 F.2d 906, 153 USPQ 45 (CCPA 1967); Kawai v. Metlesics, 480 F.2d 880, 
890,  178 USPQ 158, 165 (CCPA 1973) (contrasting description of invention 
as sedative  which did suggest specific utility to general suggestion of 
"pharmacological  effects on the central nervous system" which did not). 
In contrast, a disclosure  that identifies a particular biological 
activity of a compound and explains  how that activity can be utilized in 
a particular therapeutic application of  the compound does contain an 
assertion of specific utility for the invention. 
        Situations where an applicant either fails to indicate why an 
invention  is considered useful, or where the applicant inaccurately 
describes the utility  should rarely arise. One reason for this is that 
applicants are required to  disclose the best mode known to them of 
practicing the invention at the time  they file their application. An 
applicant who omits a description of the specific  utility of the 
invention, or who incompletely describes that utility, may encounter 
problems with respect to the best mode requirement of 35 U.S.C. 112, first 
 paragraph. 

ii.   No statement of utility for the claimed invention in the 
specification  does not per se negate utility 

        Occasionally, an applicant will not explicitly state in the 
specification  or otherwise assert a specific utility for the claimed 
invention. If no statements  can be found asserting a specific utility for 
the claimed invention in the  specification, Office personnel should 
determine if the claimed invention has  a well-established utility. A 
well-established utility is one that would be  immediately apparent to a 
person of ordinary skill based upon disclosed features  or characteristics 
of the invention, or statements made by the applicant in  the written 
description of the invention. If an invention has a well-established 
utility, rejections under 35 U.S.C. 101 and 
35 U.S.C. 112, first paragraph, based on lack of utility should not be 
imposed.  In re Folkers, 344 F.2d 970, 
145 USPQ 390 (CCPA 1965). For example, if an application teaches the 
cloning  and characterization of the nucleotide sequence of a well-known 
protein such  as insulin, and those skilled in the art at the time of 
filing knew that insulin  had a well-established use, it would be improper 
to reject the claimed invention  as lacking utility solely because of the 
omitted statement of specific utility. 
        If a person of ordinary skill would not immediately recognize a 
specific  utility for the claimed invention (i.e., why it would be useful) 
based on the  characteristics of the invention or statements made by the 
applicant, the Examiner  should reject the application under 35 U.S.C. 101 
and under 35 U.S.C. 112,  first paragraph, as failing to identify a 
specific utility for the claimed  invention. The rejection should clearly 
indicate that the basis of the rejection  is that the application fails to 
identify a specific utility for the invention.  The rejection should also 
specify that the applicant must respond by indicating  why the invention 
is believed useful and where support for any subsequently  asserted 
utility can be found in the specification as filed. 

        If the applicant subsequently indicates why the invention is 
useful,  Office personnel should review that assertion according to the 
standards articulated  below for review of the credibility of an asserted 
utility. 

*>c<.     Evaluating the credibility of an asserted utility 

i.  An asserted utility creates a presumption of utility 

        In most cases, an applicant's assertion of utility creates a 
presumption  of utility that will be sufficient to satisfy the utility 
requirement of 35  U.S.C. 101. See, e.g., In re Jolles, 628 F.2d 1322, 206 
USPQ 885 (CCPA 1980);  In re Irons, 340 F.2d 974, 144 USPQ 351 (1965); In 
re Langer, 503 F.2d 1380,  183 USPQ 288 (CCPA 1974); In re Sichert, 566 
F.2d 1154, 1159, 196 USPQ 209,  212-13 (CCPA 1977). As the CCPA stated in 
In re Langer: 

As a matter of Patent Office practice, a specification which contains a 
disclosure  of utility which corresponds in scope to the subject matter 
sought to be patented  must be taken as sufficient to satisfy the utility 
requirement of # 101 for  the entire claimed subject matter unless there 
is a reason for one skilled  in the art to question the objective truth of 
the statement of utility or its  scope. 

In re Langer, 503 F.2d at 1391, 183 USPQ at 297 (emphasis in original). 
The  "Langer" test for utility has been used by both the Federal Circuit 
and the  CCPA in evaluation of rejections under 35 U.S.C. 112, first 
paragraph, where  the rejection is based on a deficiency under 
35 U.S.C. 101. In In re Brana, 51 F.3d 1560, 34 USPQ2d 1436 (Fed. Cir. 
1995),  the Federal Circuit explicitly adopted the CCPA's formulation of 
the "Langer"  standard for 35 U.S.C. 112, first paragraph rejections, as 
it was expressed  in a slightly reworded format in In re Marzocchi, 439 
F.2d 220, 223, 169 USPQ  367, 369 (CCPA 1971), namely: 

[A] specification disclosure which contains a teaching of the manner and 
process  of making and using the invention in terms which correspond in 
scope to those  used in describing and defining the subject matter sought 
to be patented must  be taken as in compliance with the enabling 
requirement of the first paragraph  of # 112 unless there is reason to 
doubt the objective truth of the statements  contained therein which must 
be relied on for enabling support. [emphasis added]. 
        Thus, Langer and subsequent cases direct the Office to presume 
that  a statement of utility made by an applicant is true. See In re 
Langer, 503  F.2d at 1391, 183 USPQ at 297; In re Malachowski, 530 F.2d 
1402, 1404, 189  USPQ 432, 435 (CCPA 1976); In re Brana, 51 F.3d 1560, 
34 USPQ2d 1436 (Fed. Cir. 1995). For obvious reasons of efficiency and in 
deference  to an applicant's understanding of his or her invention, when a 
statement of  utility is evaluated, Office personnel should not begin by 
questioning the  truth of the statement of utility. Instead, any inquiry 
must start by asking  if there is any reason to question the truth of the 
statement of utility. This  can be done by simply evaluating the logic of 
the statements made, taking into  consideration any evidence cited by the 
applicant. If the asserted utility  is credible (i.e., believable based on 
the record or the nature of the invention),  a rejection based on "lack of 
utility" is not appropriate. Clearly, Office  personnel should not begin 
an evaluation of utility by assuming that an asserted  utility is likely 
to be false, based on the technical field of the invention  or for other 
general reasons. 

        Compliance with 35 U.S.C. 101 is a question of fact. Raytheon v. 
Roper,  724 F.2d 951, 956, 220 USPQ 592, 
596 (Fed. Cir. 1983) cert. denied, 469 US 835 (1984). Thus, to overcome 
the  presumption of truth that an assertion of utility by the applicant 
enjoys,  Office personnel must establish that it is more likely than not 
that one of  ordinary skill in the art would doubt (i.e., "question") the 
truth of the statement  of utility. The evidentiary standard to be used 
throughout ex parte examination  in setting forth a rejection is a 
preponderance of the totality of the evidence  under consideration. In re 
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 
(Fed. Cir. 1992) ("After evidence or argument is submitted by the 
applicant  in response, patentability is determined on 
the totality of the record, by a preponderance of evidence with due 
consideration  to persuasiveness of argument."); In re Corkill, 771 F.2d 
1496, 1500, 226 USPQ 1005, 1008 (Fed.  Cir. 1985). A preponderance of the 
evidence exists when it suggests that it  is more likely than not that the 
assertion in question is true. Herman v. Huddleston,  459 U.S. 375, 390 
(1983). To do this, Office personnel must provide evidence  sufficient to 
show that the statement of asserted utility would be considered  "false" 
by a person of ordinary skill in the art. Of course, a person of ordinary 
skill must have the benefit of both facts and reasoning in order to assess 
 the truth of a statement. This means that if the applicant has presented 
facts  that support the reasoning used in asserting a utility, Office 
personnel must  present countervailing facts and reasoning sufficient to 
establish that a person  of ordinary skill would not believe the 
applicant's assertion of utility. In  re Brana, 51 F.3d 1560, 34 USPQ2d 
1436 (Fed. Cir. 1995). The initial evidentiary  standard used during 
evaluation of this question is a preponderance of the  evidence (i.e., the 
totality of facts and reasoning suggest that it is more  likely than not 
that the statement of the applicant is false). 

ii.   When is an asserted utility not credible? 

        Where an applicant has specifically asserted that an invention has 
 a particular utility, that assertion cannot simply be dismissed by Office 
personnel  as being "wrong," even when there may be reason to believe that 
the assertion  is not entirely accurate. Rather, Office personnel must 
determine if the assertion  of utility is credible (i.e., whether the 
assertion of utility is believable  to a person of ordinary skill in the 
art based on the totality of evidence  and reasoning provided). An 
assertion is credible unless (a) the logic underlying  the assertion is 
seriously flawed, or (b) the facts upon which the assertion  is based are 
inconsistent with the logic underlying the assertion. Credibility  as used 
in this context refers to the reliability of the statement based on  the 
logic and facts that are offered by the applicant to support the assertion 
 of utility. 

        One situation where an assertion of utility would not be 
considered  credible is where a person of ordinary skill would consider 
the assertion to  be "incredible in view of contemporary knowledge" and 
where nothing offered  by the applicant would counter what contemporary 
knowledge might otherwise  suggest. Office personnel should be careful, 
however, not to label certain  types of inventions as "incredible" or 
"speculative" as such labels do not  provide the correct focus for the 
evaluation of an assertion of utility. "Incredible  utility" is a 
conclusion, not a starting point for analysis under 35 U.S.C.  101. A 
conclusion that an asserted utility is incredible can be reached only 
after the Office has evaluated both the assertion of the applicant 
regarding  utility and any evidentiary basis of that assertion. The Office 
should be particularly  careful not to start with a presumption that an 
asserted utility is, per se,  "incredible" and the proceed to base a 
rejection under 35 U.S.C. 101 on that  presumption. 

        Rejections under 35 U.S.C. 101 have been rarely sustained by 
Federal  courts. Generally speaking, in these rare cases, the 35 U.S.C. 
101 rejection  was sustained either because the applicant failed to 
disclose any utility for  the invention or asserted a utility that could 
only be true if it violated  a scientific principle, such as the second 
law of thermodynamics, or a law  of nature, or was wholly inconsistent 
with contemporary knowledge in the art.  In re Gazave 379 F.2d 973, 978, 
154 USPQ 92, 96 (CCPA 1967). Special care therefore  should be taken when 
assessing the credibility of an asserted therapeutic utility  for a 
claimed invention. In such cases, a previous lack of success in treating 
a disease or condition, or the absence of a proven animal model for 
testing  the effectiveness of drugs for treating a disorder in humans, 
should not, standing  alone, serve as a basis for challenging the asserted 
utility under 35 U.S.C.  101. 

*>d<.     Initial burden is on the Office to establish a prima facie case 
and  provide evidentiary support thereof 

        To properly reject a claimed invention under 
35 U.S.C. 101, the Office must (a) make a prima facie showing that the 
claimed  invention lacks utility, and (b) provide a sufficient evidentiary 
basis for  factual assumptions relied upon in establishing the prima facie 
showing. In  re Gaubert, 524 F.2d 1222, 1224, 187 USPQ 664, 
666 (CCPA 1975) ("Accordingly, the PTO must do more than merely question 
operability  - it must set forth factual reasons which would lead one 
skilled in the art  to question the objective truth of the statement of 
operability."). If the  Office cannot develop a proper prima facie case 
and provide evidentiary support  for a rejection under 35 U.S.C. 101, a 
rejection on this ground should not  be imposed. See, e.g., In re Oetiker, 
977 F.2d 1443, 1445, 
24 USPQ2d 1443, 1444 (Fed. Cir. 1992) ( "[T]he examiner bears the initial 
burden,  on review of the prior art or on any other ground, of presenting 
a prima facie  case of unpatentability. If that burden is met, the burden 
of coming forward  with evidence or argument shifts to the applicant * * * 
* If examination at  the initial stage does not produce a prima facie case 
of unpatentability, then  without more the applicant is entitled to grant 
of the patent."). See also  Fregeau v. Mossinghoff, 776 F.2d 1034, 227 
USPQ 848 (Fed. Cir. 1985) (applying  prima facie case law to 35 U.S.C. 
101); In re Piasecki, 745 F.2d 1468, 223 USPQ 785 (Fed. Cir. 1984). 

        The prima facie showing must be set forth in a well-reasoned 
statement.  The statement must articulate sound reasons why a person of 
ordinary skill  in the art would conclude that it is more likely than not 
that an asserted  utility is not credible. The statement should 
specifically identify the scientific  basis of any factual conclusions 
made in the prima facie showing. The statement  must also explain why any 
evidence of record that supports the asserted utility  would not be 
persuasive to one of ordinary skill. 

        In addition to the statement setting forth the prima facie 
showing,  Office personnel must provide evidentiary support for the prima 
facie case.  In most cases, documentary evidence (e.g., articles in 
scientific journals,  or excerpts from patents or scientific treatises) 
can and should be cited to  support any factual conclusions made in the 
prima facie showing. Only when  documentary evidence is not readily 
available should the Examiner attempt to  satisfy the Office's requirement 
for evidentiary support for the factual basis  of the prima facie showing 
solely through an explanation of relevant scientific  principles. It is 
imperative that Office personnel use specificity in setting  forth an 
initial rejection under 35 U.S.C. 101 and support any factual conclusions 
made in the prima facie showing. For example, Office personnel should 
explain  why any in vitro or in vivo data supplied by the applicant would 
not be reasonably  predictive of an asserted therapeutic utility from the 
perspective of a person  of ordinary skill in the art. By using 
specificity, the applicant will be able  to identify the assumptions made 
by the Office in setting forth the rejection  and will be able to address 
those assumptions properly. 

*>e<.     Evidentiary requests by an examiner to support an asserted 
utility 
        In appropriate situations the Office may require an applicant to 
substantiate  an asserted utility for a claimed invention. See In re 
Pottier, 376 F.2d 328,  330, 153 USPQ 407, 408 (CCPA 1967) ("When the 
operativeness of any process  would be deemed unlikely by one of ordinary 
skill in the art, it is not improper  for the examiner to call for 
evidence of operativeness."). See also In re Jolles, 628 F.2d 1322, 1327, 
206 USPQ 885, 890 (CCPA 1980); In re Citron, 325 F.2d  248, 139 USPQ 516 
(CCPA 1963); In re Novak, 306 F.2d 924, 928, 134 USPQ 335,  337 
(CCPA1962). The purpose for this authority is to enable an applicant to 
cure an otherwise defective factual basis for the operability of an 
invention.  Because this is a curative authority (e.g., evidence is 
requested to enable  an applicant to support an assertion that is 
inconsistent with the facts of  record in the application), Office 
personnel should indicate not only why the  factual record is defective in 
relation to the assertions of the applicant,  but also, where appropriate, 
what type of evidentiary showing can be provided  by the applicant to 
remedy the problem. 

        Requests for additional evidence should be imposed rarely, and 
only  if necessary to support the scientific credibility of the asserted 
utility 
(e.g., if the asserted utility is not consistent with the evidence of 
record  and current scientific knowledge). As the Federal Circuit recently 
noted, "[o]nly  after the PTO provides evidence showing that one of 
ordinary skill in the art  would reasonably doubt the asserted utility 
does the burden shift to the applicant  to provide rebuttal evidence 
sufficient to convince such a person of the invention's  asserted 
utility." In re Brana, 51 F.3d 1560, 34 USPQ2d 1436 (Fed. Cir. 1995) 
(citing In re Bundy, 642 F.2d 430, 433, 
209 USPQ 48, 51 (CCPA 1981)). As courts have stated, "it is clearly 
improper  for the Examiner to make a demand for further test data, which 
as evidence  would be essentially redundant and would seem to serve for 
nothing except perhaps  to unduly burden the applicant." In re Isaacs, 347 
F.2d 887, 890, 146 USPQ  193, 196 (CCPA 1965). 

*>f<.     Consideration of a response to a prima facie 
rejection for lack of utility 

        If a rejection under 35 U.S.C. 101 has been properly imposed, 
along  with a corresponding rejection under 35 U.S.C. 112, first 
paragraph, the burden shifts to the applicant to rebut  the prima facie 
showing. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443,  1444 (Fed. 
Cir. 1992) ("The examiner bears the initial burden, on review of  the 
prior art or on any other ground, of presenting a prima facie case of 
unpatentability.  If that burden is met, the burden of coming forward with 
evidence or argument  shifts to the applicant. . . After evidence or 
argument is submitted by the  applicant in response, patentability is 
determined on the totality of the record,  by a preponderance of evidence 
with due consideration to persuasiveness of  argument."). An applicant can 
do this using any combination of the following:  amendments to the claims, 
arguments or reasoning, or new evidence submitted  in an affidavit or 
declaration under 37 CFR 1.132, or in a printed publication.  New evidence 
provided by an applicant must be relevant to the issues raised  in the 
rejection. For example, declarations in which conclusions are set forth 
without establishing a nexus between those conclusions and the supporting 
evidence,  or which merely express opinions, may be of limited probative 
value with regard  to rebutting a prima facie case. In re Grunwell, 609 
F.2d 486, 203 USPQ 1055 
(CCPA 1979); In re Buchner, 929 F.2d 660, 18 USPQ2d 1331 (Fed. Cir. 1991). 
 See MPEP # 716.01(a) through # 716.01(c). 

        Once a response has been provided, Office personnel must review 
the  complete record, including the claims, to determine if it is 
appropriate to  maintain the rejections under 35 U.S.C. 101 and 35 U.S.C. 
112. If the record  as a whole would make it more likely than not that the 
asserted utility for  the claimed invention would be considered credible 
by a person of ordinary  skill in the art, the Office cannot maintain the 
rejection. In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976). 

*>g<.     Evaluation of evidence related to utility 

        There is no predetermined amount or character of evidence that 
must  be provided by an applicant to support an asserted utility, 
therapeutic or  otherwise. Rather, the character and amount of evidence 
needed to support an  asserted utility will vary depending on what is 
claimed (Ex parte Ferguson,  117 USPQ 229 (Bd. App. 1957)), and whether 
the asserted utility appears to  contravene established scientific 
principles and beliefs. In re Gazave, 379  F.2d 973, 978, 154 USPQ 92, 96 
(CCPA 1967); In re Chilowsky, 229 F.2d 457,  462, 108 USPQ 321, 325 (CCPA 
1956). Furthermore, the applicant does not have  to provide evidence 
sufficient to establish that an asserted utility is true  "beyond a 
reasonable doubt." In re Irons 340 F.2d 974, 978, 144 USPQ 351, 354 
(CCPA 1965). Nor must an applicant provide evidence such that it 
establishes  an asserted utility as a matter of statistical certainty. 
Nelson v. Bowler,  626 F.2d 853, 856-57, 
206 USPQ 881, 883-84 (CCPA 1980) (reversing the Board and rejecting 
Bowler's  arguments that the evidence of utility was statistically 
insignificant. The  court pointed out that a rigorous correlation is not 
necessary when the test  is reasonably predictive of the response). See 
also Ray Bellet v. Englehard,  493 F.2d 1380, 181 USPQ 453 (CCPA 1974) 
(data from animal testing is relevant  to asserted human therapeutic 
utility if there is a "satisfactory correlation  between the effect on the 
animal and that ultimately observed in human beings").  Instead, evidence 
will be sufficient if, considered as a whole, it leads a  person of 
ordinary skill in the art to conclude that the asserted utility is  more 
likely than not true. 


2107.02       Special Considerations for Asserted Therapeutic or 
Pharmacological Utilities [R-1] 

        >The Federal courts have consistently reversed rejections by the 
Office  asserting a lack of utility for inventions claiming a 
pharmacological or therapeutic  utility where an applicant has provided 
evidence that reasonably supports such  a utility. In view of this, Office 
personnel should be particularly careful  in their review of evidence 
provided in support of an asserted therapeutic  or pharmacological utility. 

a.  A reasonable correlation between the evidence and the asserted utility 
 is sufficient 

        As a general matter, evidence of pharmacological or other 
biological  activity of a compound will be relevant to an asserted 
therapeutic use if there  is a reasonable correlation between the activity 
in question and the asserted  utility. Cross v. Iizuka, 753 F.2d 1040, 224 
USPQ 739 (Fed. Cir. 1985); In  re Jolles, 628 F.2d 1322, 
206 USPQ 885 (CCPA 1980); Nelson v. Bowler, 626 F.2d 853, 206 USPQ 881 
(CCPA  1980). An applicant can establish this reasonable correlation by 
relying on  statistically relevant data documenting the activity of a 
compound or composition,  arguments or reasoning, documentary evidence 
(e.g., articles in scientific journals), or any combination  thereof. The 
applicant does not have to prove that a correlation exists between  a 
particular activity and an asserted therapeutic use of a compound as a 
matter  of statistical certainty, nor does he or she have to provide 
actual evidence  of success in treating humans where such a utility is 
asserted. Instead, as  the courts have repeatedly held, all that is 
required is a reasonable correlation  between the activity and the 
asserted use Nelson v. Bowler, 626 F.2d 853, 857,  206 USPQ 881, 884 (CCPA 
1980). 

b.  Structural similarity to compounds with established utility 

        Courts have routinely found evidence of structural similarity to a 
 compound known to have a particular therapeutic or pharmacological 
utility  as being supportive of an assertion of therapeutic utility for a 
new compound.  In In re Jolles, 628 F.2d 1322, 206 USPQ 885 (CCPA 1980), 
the claimed compounds  were found to have utility based on a finding of a 
close structural relationship  to daunorubicin and doxorubicin and shared 
pharmacological activity with those  compounds, both of which were known 
to be useful in cancer chemotherapy. The  evidence of close structural 
similarity with the pharmacological activity with  those compounds, both 
of which were known to be useful in cancer chemotherapy.  The evidence of 
close structural similarity with the known compounds was presented  in 
conjunction with evidence demonstrating substantial activity of the 
claimed  compounds in animals customarily employed for screening 
anticancer agents.  Such evidence should be given appropriate weight in 
determining whether one  skilled in the art would find the asserted 
utility credible. Office personnel  should evaluate not only the existence 
of the structural relationship, but  also the reasoning used by the 
applicant or a declarant to explain why that  structural similarity is 
believed to be relevant to the applicant's assertion  of utility. 

c.  Data from in vitro or animal testing is generally sufficient to 
support  therapeutic utility 

        If reasonably correlated to the particular therapeutic or 
pharmacological  utility, data generated using in 
vitro assays, or from testing in an animal model or a combination thereof 
almost  invariably will be sufficient to establish therapeutic or 
pharmacological utility  for a compound, composition or process. A cursory 
review of cases involving  therapeutic inventions where 35 U.S.C. 101 was 
the dispositive issue illustrates  the fact that the Federal courts are 
not particularly receptive to rejections  under 35 U.S.C. 101 based on 
inoperability. Most striking is the fact that  in those cases where an 
applicant supplied a reasonable evidentiary showing  supporting an 
asserted therapeutic utility, almost uniformly the 35 U.S.C.  101-based 
rejection was reversed. See, e.g., In re Brana, 51 F.3d 1560, 34  USPQ 
1436 (Fed. Cir. 1995); Cross v. Iizuka, 753 F.2d 1040, 224 USPQ 739 (Fed. 
Cir. 1985); In re Jolles, 628 F.2d 1322, 206 USPQ 885 (CCPA 1980); Nelson 
v.  Bowler, 626 F.2d 853, 856, 206 USPQ 881, 883 (CCPA 1980); In re 
Malachowski,  530 F.2d 1402, 189 USPQ 432 (CCPA 1976); In re Gaubert, 530 
F.2d 1402, 189  USPQ 432 (CCPA 1975); In re Gazave, 379 F.2d 973, 154 USPQ 
92 (CCPA 1967);  In re Hartop, 311 F.2d 249, 135 USPQ 419 (CCPA 1962); In 
re Krimmel, 292 F.2d  948, 130 USPQ 215 (CCPA 1961). Only in those cases 
where the applicant was  unable to come forward with any relevant evidence 
to rebut a finding by the  Office that the claimed invention was 
inoperative was a 35 U.S.C. 101 rejection  affirmed by the court. In re 
Citron, 325 F.2d 248, 253, 139 USPQ 516, 520 (CCPA  1963) (therapeutic 
utility for an uncharacterized biological extract not supported  or 
scientifically credible); In re Buting, 418 F.2d 540, 543, 163 USPQ 689, 
690 (CCPA 1969) (record did not establish a credible basis for the 
assertion  that the single class of compounds in question would be useful 
in treating  disparate types of cancers); In re Novak, 306 F.2d 924, 134 
USPQ 335 (CCPA  1962) (claimed compounds did not have capacity to effect 
physiological activity  upon which utility claim based). Contrast, 
however, In re Buting to In re Gardner,  475 F.2d 1389, 177 USPQ 396 (CCPA 
1973), reh'g denied, 480 F.2d 879 (CCPA 1973),  in which the court held 
that utility for a genus was found to be supported  through a showing of 
utility for one species. In no case has a Federal court  required an 
applicant to support an asserted utility with data from human clinical 
trials. 

        If an applicant provides data, whether from in vitro assays or 
animal  tests or both, to support an asserted utility, and an explanation 
of why that  data supports the asserted utility, the Office will determine 
if the data and  the explanation would be viewed by one skilled in the art 
as being reasonably  predictive of the asserted utility. 

See, e.g., Ex parte Maas, 9 USPQ2d 1746 (Bd. Pat. App. & Inter. 1987); Ex 
parte  Balzarini, 21 USPQ2d 1892 (Bd. Pat. App. & Inter. 1991). Office 
personnel must  be careful to evaluate all factors that might influence 
the conclusions of  a person of ordinary skill in the art as to this 
question, including the test  parameters, choice of animal, relationship 
of the activity to the particular  disorder to be treated, characteristics 
of the compound or composition, relative  significance of the data 
provided and, most importantly, the explanation offered  by the applicant 
as to why the information provided is believed to support  the asserted 
utility. If the data supplied is consistent with the asserted  utility, 
the Office cannot maintain a rejection under 35 U.S.C. 101. 
        Evidence does not have to be in the form of data from an 
art-recognized  animal model for the particular disease or disease 
condition to which the asserted  utility relates. Data from any test that 
the applicant reasonably correlates  to the asserted utility should be 
evaluated substantively. Thus, an applicant  may provide data generated 
using a particular animal model with an appropriate  explanation as to why 
that data supports the asserted utility. The absence  of a certification 
that the test in question is an industry-accepted model  is not 
dispositive of whether data from an animal model is in fact relevant  to 
the asserted utility. Thus, if one skilled in the art would accept the 
animal  tests as being reasonably predictive of utility in humans, 
evidence from those  tests should be considered sufficient to support the 
credibility of the asserted  utility. In re Hartop, 311 F.2d 249, 135 USPQ 
419 (CCPA 1962); In re Krimmel,  292 F.2d 948, 953, 130 USPQ 215, 219 
(CCPA 1961); Ex parte Krepelka, 231 USPQ  746 (Bd. Pat. App. & Inter. 
1986). Office personnel should be careful not to  find evidence 
unpersuasive simply because no animal model for the human disease 
condition had been established prior to the filing of the application. See 
 In re Chilowsky, 229 F.2d 457, 461, 108 USPQ 321, 325 (CCPA 1956) ("The 
mere  fact that something has not previously been done clearly is not, in 
itself,  a sufficient basis for rejecting all applications purporting to 
disclose how  to do it."); In re Wooddy, 331 F.2d 636, 639, 141 USPQ 518, 
520 (CCPA 1964) 
("It appears that no one on earth is certain as of the present whether the 
 process claimed will operate in the manner claimed. Yet absolute 
certainty  is not required by the law. The mere fact that something has 
not previously  been done clearly is not, in itself, a sufficient basis 
for rejecting all applications  purporting to disclose how to do it." ). 

        d.  Human clinical data 

        Office personnel should not impose on applicants the unnecessary 
burden  of providing evidence from human clinical trials. There is no 
decisional law  that requires an applicant to provide data from human 
clinical trials to establish  utility for an invention related to 
treatment of human disorders (See In re  Isaacs, 347 F.2d 889, 146 USPQ 
193 (CCPA 1963); In re Langer, 503 F.2d 1380,  183 USPQ 288 (CCPA 1974)), 
even with respect to situations where no art-recognized  animal models 
existed for the human disease encompassed by the claims. Ex parte 
Balzarini, 21 USPQ2d 1892 (Bd. Pat. App. & Inter. 1991) (human clinical 
data  is not required to demonstrate the utility of the claimed invention, 
even though  those skilled in the art might not accept other evidence to 
establish the efficacy  of the claimed therapeutic compositions and the 
operativeness of the claimed  methods of treating humans). Before a drug 
can enter human clinical trials,  the sponsor, often the applicant, must 
provide a convincing rationale to those  especially skilled in the art 
(e.g., the Food and Drug Administration) that  the investigation may be 
successful. Such a rationale would provide a basis  for the sponsor's 
expectation that the investigation may be successful. In  order to 
determine a protocol for phase I testing, the first phase of clinical 
investigation, some credible rationale of how the drug might be effective 
or  could be effective would be necessary. Thus, as a general rule, if an 
applicant  has initiated human clinical trials for a therapeutic product 
or process, Office  personnel should presume that the applicant has 
established that the subject  matter of that trial is reasonably 
predictive of having the asserted therapeutic  utility. 

e.  Safety and efficacy considerations 

        The Office must confine its review of patent applications to the 
statutory  requirements of the patent law. Other agencies of the 
government have been  assigned the responsibility of ensuring conformance 
to standards established  by statute for the advertisement, use, sale or 
distribution of drugs. The FDA  pursues a two-prong test to provide 
approval for testing. Under that test,  a sponsor must show that the 
investigation does not pose an unreasonable and  significant risk of 
illness or injury and that there is an acceptable rationale  for the 
study. As a review matter, there must be a rationale for believing  that 
the compound could be effective. If the use reviewed by the FDA is not 
set forth in the specification, FDA review may not satisfy 35 U.S.C. 101. 
However,  if the reviewed use is one set forth in the specification, 
Office personnel  must be extremely hesitant to challenge utility. In such 
a situation, experts  at the FDA have assessed the rationale for the drug 
or research study upon  which an asserted utility is based and found it 
satisfactory. Thus, in challenging  utility, Office personnel must be able 
to carry their burden that there is  no sound rationale for the asserted 
utility even though experts designated  by Congress to decide the issue 
have come to an opposite conclusion. "FDA approval,  however, is not a 
prerequisite for finding a compound useful within the meaning  of the 
patent laws." In re Brana, 51 F.3d 1560, 34 USPQ2d 1436 (Fed. Cir. 1995) 
(citing Scott v. Finney, 34 F.3d 1058, 1063, 32 USPQ2d 1115, 1120 (Fed. 
Cir.  1994). 

        Thus, while an applicant may on occasion need to provide evidence 
to  show that an invention will work as claimed, it is improper for Office 
personnel  to request evidence of safety in the treatment of humans, or 
regarding the  degree of effectiveness. See In re Sichert, 566 F.2d 1154, 
196 USPQ 209 (CCPA  1977); In re Hartop, 311 F.2d 249, 135 USPQ 419 (CCPA 
1962); In re Anthony,  414 F.2d 1383, 162 USPQ 594 (CCPA 1969); In re 
Watson, 517 F.2d 465, 186 USPQ  11 (CCPA 1975); In re Krimmel, 292 F.2d 
948, 130 USPQ 215 (CCPA 1961); Ex parte  Jovanovics, 211 USPQ 907 (Bd. 
Pat. App. & Inter. 1981). 

f.  Treatment of specific disease conditions 

        Claims directed to a method of treating or curing a disease for 
which  there have been no previously successful treatments or cures 
warrant careful  review for compliance with 35 U.S.C. 101. The credibility 
of an asserted utility  for treating a human disorder may be more 
difficult to establish where current  scientific understanding suggests 
that such a task would be impossible. Such  a determination has always 
required a good understanding of the state of the  art as of the time that 
the invention was made. For example, in the 1960's,  there were a number 
of cases where an asserted use in treating cancer in humans  was viewed as 
"incredible." In re Jolles, 628 F.2d 1322, 206 USPQ 885 (CCPA  1980); In 
re Buting, 418 F.2d 540, 163 USPQ 689 (CCPA 1969); Ex parte Stevens,  16 
USPQ2d 1379 (Bd. Pat. App. & Inter. 1990); Ex parte Busse, 
1 USPQ2d 1908 (Bd. Pat. App. & Inter. 1986); Ex parte Krepelka, 231 USPQ 
746 
(Bd. Pat. App. & Inter. 1986); Ex parte Jovanovics, 211 USPQ 907 (Bd. Pat. 
 App. & Inter. 1981). The fact that there is no known cure for a disease, 
however,  cannot serve as the basis for a conclusion that such an 
invention lacks utility.  Rather, Office personnel must determine if the 
asserted utility for the invention  is credible based on the information 
disclosed in the application. Only those  claims for which an asserted 
utility is not credible should be rejected. In  such cases, the Office 
should carefully review what is being claimed by the  applicant. An 
assertion that the claimed invention is useful in treating a  symptom of 
an incurable disease may be considered credible by a person of ordinary 
skill in the art on the basis of a fairly modest amount of evidence or 
support.  In contrast, an assertion that the claimed invention will be 
useful in "curing"  the disease may require a significantly greater amount 
of evidentiary support  to be considered credible by a person of ordinary 
skill in the art. In re Sichert,  566 F.2d 1154, 
196 USPQ 209 (CCPA 1977); In re Jolles, 628 F.2d 1322, 206 USPQ 885 (CCPA 
1980).  See also Ex parte Ferguson, 117 USPQ 229 (Bd. Pat. App. & Inter. 
1957). 
        In these cases, it is important to note that the Food and Drug 
Administration  has promulgated regulations that enable a party to conduct 
clinical trials  for drugs used to treat life threatening and 
severely-debilitating illnesses,  even where no alternative therapy 
exists. See 21 CFR 312.80-88 (1994). Implicit  in these regulations is the 
recognition that experts qualified to evaluate  the effectiveness of 
therapeutics can and often do find a sufficient basis  to conduct clinical 
trials of drugs for incurable or previously untreatable  illnesses. Thus, 
affidavit evidence from experts in the art indicating that  there is a 
reasonable expectation of success, supported by sound reasoning,  usually 
should be sufficient to establish that such a utility is credible.< 

2111    Claim Interpretation; Broadest Reasonable Interpretation [R-1] 

>CLAIMS MUST BE GIVEN THEIR BROADEST REASONABLE INTERPRETATION 

        During patent examination, the pending claims must be "given the 
broadest  reasonable interpretation consistent with the specification." 
Applicant always has the opportunity to  amend the claims during 
prosecution and broad interpretation by the examiner  reduces the 
possibility that the claim, once issued, will be interpreted more  broadly 
than is justified. In re Prater, 162 USPQ 541, 550-51 (CCPA 1969) (Claim 
9 was directed to a process of analyzing data generated by mass 
spectrographic  analysis of a gas. The process comprised selecting the 
data to be analyzed  by subjecting the data to a mathematical 
manipulation. The examiner made rejections  under 35 U.S.C. 101 and 102. 
In the section 102 rejection, the examiner explained  that the claim was 
anticipated by a mental process augmented by pencil and  paper markings. 
The court agreed that the claim was not limited to using a  machine to 
carry out the process since the claim did not explicitly set forth  the 
machine. The court explained that "(reading a claim in light of the 
specification,  to thereby interpret limitations explicitly recited in the 
claim, is a quite  different thing from `reading limitations of the 
specification into a claim,'  to thereby narrow the scope of the claim by 
implicitly adding disclosed limitations  which have no express basis in 
the claim." The court found that applicant was  advocating the latter, 
e.g., the impermissible importation of subject matter  from the 
specification into the claim.).< 


2111.01       Plain Meaning [R-1] 


>THE WORDS OF A CLAIM MUST BE GIVEN THEIR "PLAIN MEANING" UNLESS THEY ARE 
DEFINED  IN THE SPECIFICATION 

        While the meaning of claims of issued patents are interpreted in 
light  of the specification, prosecution history, prior art and other 
claims, this  is not the mode of claim interpretation to be applied during 
examination. During  examination, the claims must be interpreted as 
broadly as their terms reasonably  allow. This means that the words of the 
claim must be given their plain meaning  unless applicant has provided a 
clear definition in the specification. In re  Zletz, 13 USPQ2d 1320, 1322 
(Fed. Cir. 1989)(discussed below). One must bear  in mind that, especially 
in nonchemical cases, the words in a claim are generally  not limited in 
their meaning by what is shown or disclosed in the specification.  It is 
only when the specification provides definitions for terms appearing  in 
the claims that the specification can be used in interpreting claim 
language.  In re Vogel, 164 USPQ 619, 622 (CCPA 1970). There is one 
exception and that  is when an element is claimed using language falling 
under the scope of 35  U.S.C. 112, 6th paragraph (often broadly referred 
to as means or step plus  function language). In that case, the 
specification must be consulted to determine  the structure, material, or 
acts corresponding to the function recited in the  claim. In re Donaldson, 
29 USPQ2d 1845 (Fed. Cir. 1994)(see MPEP w 2181- w  2186). 

        In In re Zletz, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989), the 
examiner  and the Board had interpreted claims reading "normally solid 
polypropylene"  and "normally solid polypropylene having a crystalline 
polypropylene content"  as being limited to "normally solid linear high 
homopolymers of propylene which  have a crystalline polypropylene 
content." The court ruled that limitations,  not present in the claims, 
were improperly imported from the specification.  See also In re Marosi, 
218 USPQ 289 (Fed. Cir. 1983) ("Claims are not to be read in a vacuum, and 
 limitations therein are to be interpreted in light of the specification 
in  giving them their `broadest reasonable interpretation.' " 218 USPQ at 
292 (quoting  In re Okuzawa, 537 F.2d 545, 548, 190 USPQ 464, 466 (CCPA 
1976))(emphasis in  original). The court looked to the specification to 
construe "essentially free  of alkali metal" as including unavoidable 
levels of impurities but no more.).  Compare In re Weiss, 26 USPQ2d 1885 
(Fed. Cir. 1993) (unpublished decision  - cannot be cited as precedent) 
(The claim related to an athletic shoe with  cleats that "break away at a 
preselected level of force" and thus prevent injury  to the wearer. The 
examiner rejected the claims over prior art teaching athletic  shoes with 
cleats not intended to break off and rationalized that the cleats  would 
break away given a high enough force. The court reversed the rejection 
stating that when interpreting a claim term which is ambiguous, such as `a 
 preselected level of force,' we must look to the specification for the 
meaning  ascribed to that term by the inventor." The specification had 
defined "preselected  level of force..." as that level of force at which 
the breaking away will prevent  injury to the wearer during athletic 
exertion. It should be noted that the  limitation was part of a means plus 
function element.) 

"PLAIN MEANING" REFERS TO THE MEANING GIVEN TO THE TERM BY THOSE OF 
ORDINARY  SKILL IN THE ART 

        When not defined by applicant in the specification, the words of a 
 claim must be given their plain meaning. In other words, they must be 
read as they would be interpreted by those of  ordinary skill in the art. 
In re Sneed, 218 USPQ 385 (Fed. Cir. 1983) (The  applicants had argued in 
an amendment after final rejection that the term "flexible  plastic pipe," 
as used in the claims, pertained only to pipes of 2-inch diameter  and 
3-inch diameter and not to a pipe of 1.5 inch diameter. This definition 
of "flexible" was also advanced in an affidavit. The prior art, however, 
described  1.5 inch pipe as flexible. The court held that the 
specification and the evidence 
(the prior art) failed to support the gloss appellants sought to put on 
the  term "flexible." Note that applicant had not defined "flexible 
plastic pipe"  in the specification.); In re Barr, 170 USPQ 330, 339 (CCPA 
1971) ("The specification  in this case attempts no definition of the 
claim language `a phenyl radical.'  Accordingly we must presume that the 
phrase was used in its commonly accepted  technical sense. ...[Applicants] 
have not referred us to any standard work  on chemistry which indicates 
that the commonly accepted technical meaning of  the words `a phenyl 
radical', without more, would encompass the hydroxyphenyl  radical. On the 
contrary, Hackh's [Chemical Dictionary] quite plainly defines  `phenyl' as 
`the monovalent radical ... derived from benzene ... or phenol.'  "). 

APPLICANT MAY BE OWN LEXICOGRAPHER 

        Applicant may be his or her own lexicographer as long as the 
meaning  assigned to the term is not repugnant to the term's well known 
usage. In re  Hill, 73 USPQ 482 (CCPA 1947).< 


2111.02       Weight of Preamble [R-1] 


>PREAMBLE IS NONLIMITING UNLESS IT BREATHES LIFE AND MEANING INTO THE 
CLAIM 
        The preamble is not given the effect of a limitation unless it 
breathes  life and meaning into the claim. In order to limit the claim, 
the preamble  must be "essential to point out the invention defined by the 
claim." Kropa  v. Robie, 88 USPQ 478, 481 (CCPA 1951) (discussed below). 
In claims directed  to articles and apparatus, any phraseology in the 
preamble that limits the  structure of that article or apparatus must be 
given weight. In re Stencel,  4 USPQ2d 1071 (Fed. Cir. 1987) (discussed 
below). On the other hand, a preamble  is generally not accorded any 
patentable weight where it merely recites the  purpose of a process or the 
intended use of a structure, and where the body  of the claim does not 
depend on the preamble for completeness but, instead,  the process steps 
or structural limitations are able to stand alone. In re  Hirao, 535 F.2d 
67, 190 USPQ 15 (CCPA 1976) (process claims, discussed below);  Kropa v. 
Robie, 88 USPQ 478, 481 (CCPA 1951)(claims directed to apparatus, 
products, chemical structure, etc., as discussed below). 

        In In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976), the claim 
preamble  set forth "A process for preparing foods and drinks sweetened 
mildly, and protected  against discoloration, Streckler's reaction, and 
moisture absorption." The  body of the claim recited two steps directed to 
the formation of high purity  maltose and a third step of adding the 
maltose to foods and drinks as a sweetener.  The court held that the 
preamble was only directed to the purpose of the process,  the steps could 
stand alone and did not depend on the preamble for completeness. 
        In Kropa v. Robie, 88 USPQ 478, 481 (CCPA 1951), a preamble 
reciting  "An abrasive article" was deemed essential to point out the 
invention defined  by claims to an article comprising abrasive grains and 
a hardened binder and  the process of making it. The court said that "it 
is only by that phrase that  it can be known that the subject matter 
defined by the claims is comprised  as an abrasive article. Every union of 
substances capable inter alia of use  as abrasive grains and a binder is 
not an `abrasive article.' " Id. at 481.  Therefore, the preamble served 
to further define the structure of the article  produced. 

        In In re Stencel, 4 USPQ2d 1071 (Fed. Cir. 1987), 
the claim was directed to a driver for setting a joint of a threaded 
collar.  The claim did not directly include the structure of the collar as 
part of the  claimed article. The preamble did set forth the structure of 
the collar but  the examiner had not given this recitation any weight. The 
court found that  the collar structure could not be ignored. While the 
claim was not directly  limited to the collar, the collar structure 
recited in the preamble did limit  the structure of the driver. The court 
stated that "the framework - the teachings  of the prior art - against 
which patentability is measured is not all drivers  broadly, but drivers 
suitable for use in combination with this collar, for  the claims are so 
limited." Id. at 1073. 

COMPOSITION CLAIMS - THE PREAMBLE IS GENERALLY NONLIMITING IF THE PREAMBLE 
 MERELY RECITES AN INHERENT PROPERTY 

        When the claim is directed to a product, the preamble is generally 
 nonlimiting if the body of the claim is directed to an old composition 
and  the preamble merely recites a property inherent in the old 
composition. Kropa  v. Robie, 88 USPQ 478, 480-81 (CCPA 1951) (discussed 
above). 

THE INTENDED USE MAY FURTHER LIMIT THE CLAIM IF IT DOES MORE THAN MERELY 
STATE  PURPOSE OR INTENDED USE 

        Intended use recitations and other types of functional language 
cannot  be entirely disregarded. However, in apparatus, article, and 
composition claims,  intended use must result in a structural difference 
between the claimed invention  and the prior art in order to patentably 
distinguish the claimed invention  from the prior art. If the prior art 
structure is capable of performing the  intended use, then it meets the 
claim. In a claim drawn to a process of making,  the intended use must 
result in a manipulative difference as compared to the  prior art. In re 
Casey, 152 USPQ 235 (CCPA 1967); In re Otto,136 USPQ 458,  459 (CCPA 1963) 
(The claims were directed to a core member for hair curlers  and a process 
of making a core member for hair curlers. Court held that the  intended 
use of hair curling was of no significance to the structure and process 
of making.)< 


>2111.03 Transitional Phrases [R-2] 


        The transitional phrases "comprising", "consisting essentially of" 
 and "consisting of" define the scope of a claim with respect to what 
unrecited  additional components or steps, if any, are excluded from the 
scope of the  claim. 

        The transitional term "comprising", which is synonymous with 
"including,"  "containing," or "characterized by," is inclusive or 
open-ended and does not  exclude additional, unrecited elements or method 
steps. Moleculon Research  Corp. v. CBS, Inc., 793 F.2d 1261, 229 USPQ 805 
(Fed. Cir. 1986) In re Baxter,  656 F.2d 679, 210 USPQ 795, 803 (CCPA 
1981); Ex parte Davis, 80 USPQ 448, 450 
(Bd. App. 1948)("comprising" leaves "the claim open for the inclusion of 
unspecified  ingredients even in major amounts"). 

        The transitional phrase "consisting of" excludes any element, 
step,  or ingredient not specified in the claim.  In re Gray, 53 F.2d 520, 
11 USPQ  225 (CCPA 1931); Ex parte Davis, 80 USPQ 448, 450 (Bd. App. 
1948)("consisting  of" defined as "closing the claim to the inclusion of 
materials other than  those recited except for impurities ordinarily 
associated therewith.").  Transitional  phrases such as "composed of," 
"having," or "being" must be interpreted in  light of the specification to 
determine whether open or closed claim language  is intended.  A claim 
which depends from a claim which "consists of" the recited  elements or 
steps cannot add an element or step.  When the phrase "consists  of" 
appears in a clause of the body of a claim, rather than immediately 
following  the preamble, it limits only the element set forth in that 
clause; other elements  are not excluded from the claim as a whole. 
Mannesmann Demag Corp. v. Engineered  Metal Products Co., 793 F.2d 1279, 
230 USPQ 45 (Fed. Cir. 1986). 

        The transitional phrase "consisting essentially of" limits the 
scope  of a claim to the specified materials or steps "and those that do 
not materially  affect the basic and novel characteristic(s)" of the 
claimed invention.  In  re Herz, 537 F.2d 549, 551-52, 190 USPQ 461, 463 
(CCPA 1976)(emphasis in original)(Prior  art hydraulic fluid required a 
dispersant which appellants argued was excluded  from claims limited to a 
functional fluid "consisting essentially of" certain  components.  In 
finding the claims did not exclude the prior art dispersant,  the court 
noted that appellants' specification indicated the claimed composition 
can contain any well-known additive such as a dispersant, and there was no 
 evidence that the presence of a dispersant would materially affect the 
basic  and novel characteristic of the claimed invention.  The prior art 
composition  had the same basic and novel characteristic (increased 
oxidation resistance)  as well as additional enhanced detergent and 
dispersant characteristics.). 
 See also Atlas Powder Co. v. E.I. duPont de Nemours & Co., 750 F.2d 1569, 
 224 USPQ 409 (Fed. Cir. 1984); In re Janakirama-Rao, 317 F.2d 951, 137 
USPQ  893 (CCPA 1963); Water Technologies Corp. v. Calco, Ltd., 850 F.2d 
660, 7 USPQ2d  1097 (Fed. Cir. 1988).  When an applicant contends that 
additional steps or  materials in the prior art are excluded by the 
recitation of "consisting essentially  of," applicant has the burden of 
showing that the introduction of additional  steps or components would 
materially change the characteristics of applicant's  invention.  In re De 
Lajarte, 337 F.2d 870, 143 USPQ 256 (CCPA 1964).  See  also Ex parte 
Hoffman, 12 USPQ2d 1061, 1063-64 (Bd. Pat. App. & Inter. 1989)("Although 
`consisting essentially  of' is typically used and defined in the context 
of compositions of matter,  we find nothing intrinsically wrong with the 
use of such language as a modifier  of method steps. . . [rendering] the 
claim open only for the inclusion of steps  which do not materially affect 
the basic and novel characteristics of the claimed  method.  To determine 
the steps included versus excluded the claim must be  read in light of the 
specification. . . .  [I]t is an applicant's burden to  establish that a 
step practiced in a prior art method is excluded from his  claims by 
`consisting essentially of' language."). < 


2112    Requirements of Rejection Based on Inherency; Burden of Proof 
[R-1] 

>SOMETHING WHICH IS OLD DOES NOT BECOME PATENTABLE UPON THE DISCOVERY OF A 
 NEW PROPERTY 

        The claiming of a new use, new function or unknown property which 
is  inherently present in the prior art does not necessarily make the 
claim patentable.  In re Best, 
195 USPQ 430, 433 (CCPA 1977). See also MPEP 
w 2112.01 with regard to inherency and product by process claims and MPEP 
w  2141.02 with regard to inherency and rejections under 35 U.S.C. 103. 
A REJECTION UNDER 35 U.S.C. 102/103 CAN BE MADE WHEN THE PRIOR ART PRODUCT 
 SEEMS TO BE IDENTICAL EXCEPT THAT THE PRIOR ART IS SILENT AS TO AN 
INHERENT  CHARACTERISTIC 

        Where applicant claims a composition in terms of a function, 
property  or characteristic and the composition of the prior art is the 
same as that  of the claim but the function is not explicitly disclosed by 
the reference,  the Examiner may make a rejection under both 35 U.S.C. 102 
and 103, expressed  as a 102/103 rejection. "There is nothing inconsistent 
in concurrent rejections  for obviousness under 35 U.S.C. 103 and for 
anticipation under 35 U.S.C. 102."  In re Best, 195 USPQ 430, 433 (CCPA 
1977). This same rationale should also  apply to product, apparatus, and 
process claims claimed in terms of function,  property or characteristic. 
Therefore, 35 U.S.C. 102/103 rejection is appropriate  for these types of 
claims as well as for composition claims. 

EXAMINER MUST PROVIDE RATIONALE OR EVIDENCE TENDING TO SHOW INHERENCY 
        "In relying upon the theory of inherency, the examiner must 
provide  a basis in fact and/or technical reasoning to reasonably support 
the determination  that the allegedly inherent characteristic necessarily 
flows from the teachings  of the applied prior art." Ex parte Levy, 
17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990) (emphasis in original) 
(Applicant's  invention was directed to a biaxially oriented, flexible 
dilation catheter  balloon (a tube which expands upon inflation) used, for 
example, in clearing  the blood vessels of heart patients). The examiner 
applied a U.S. patent to  Schjeldahl which disclosed injection molding a 
tubular preform and then injecting  air into the preform to expand it 
against a mold (blow molding). The reference  did not directly state that 
the end product balloon was biaxially oriented.  It did disclose that the 
balloon was "formed from a thin flexible inelastic,  high tensile 
strength, biaxially oriented synthetic plastic material." Id.  at 1462 
(emphasis in original). The examiner argued that Schjeldahl's balloon  was 
inherently biaxially oriented. The Board reversed on the basis that the 
examiner did not provide objective evidence or cogent technical reasoning 
to  support the conclusion of inherency.). 

ONCE A REFERENCE TEACHING PRODUCT 
APPEARING TO BE SUBSTANTIALLY IDENTICAL IS MADE THE BASIS OF A REJECTION 
AND  THE EXAMINER PRESENTS EVIDENCE OR REASONING TENDING TO SHOW 
INHERENCY, THE  BURDEN SHIFTS TO THE APPLICANT TO SHOW AN UNOBVIOUS DIFFERENCE 

        "The PTO can require an applicant to prove that the prior art 
products  do not necessarily possess the characteristics of his [or her] 
claimed product.  ***Whether the rejection is based on `inherency' under 
35 U.S.C. 102, on `prima  facie obviousness' under 35 U.S.C. 103, jointly 
or alternatively, the burden  of proof is the same." The burden of proof 
is similar to that required with  respect to product-by-process claims. In 
re Fitzgerald et al., 
205 USPQ 594 (CCPA 1980) (quoting In re Brown, 173 USPQ 685, 688 (CCPA 
1972)). 

        In In re Fitzgerald et al., 205 USPQ 594 (CCPA 1980), the claims 
were  directed to a self-locking screw-threaded fastener comprising a 
metallic threaded  fastener having patches of crystallizable thermoplastic 
bonded thereto. The claim  further specified that the thermoplastic had a 
reduced degree of crystallization  shrinkage. The specification disclosed 
that the locking fastener was made by  heating the metal fastener to melt 
a thermoplastic blank which is pressed against  the metal. After the 
thermoplastic adheres to the metal fastener, the end product  is cooled by 
quenching in water. The examiner made a rejection based on a U.S.  patent 
to Barnes. Barnes taught a self-locking fastener in which the patch  of 
thermoplastic was made by depositing thermoplastic powder on a metallic 
fastener which was then heated. The end product was cooled in ambient air, 
 by cooling air or by contacting the fastener with a water trough. The 
court  first noted that the two fasteners were identical or only slightly 
different  from each other. "Both fasteners possess the same utility, 
employ the same  crystallizable polymer (nylon 11), and have an adherent 
plastic patch formed  by melting and then cooling the polymer." Id. at 596 
n.1. The court then noted  that the Board had found that Barnes' cooling 
rate could reasonably be expected  to result in a polymer possessing the 
claimed crystallization shrinkage rate.  Applicant had not rebutted this 
finding with evidence that the shrinkage rate  was indeed different. They 
had only argued that the crystallization shrinkage  rate was dependent on 
the cool down rate and that the cool down rate of Barnes  was much slower 
than theirs. Because a difference in the cool down rate does  not 
necessarily result in a difference in shrinkage, objective evidence was 
required to rebut the 35 U.S.C. 102/103 prima facie case. 

        See MPEP w 2113 for more information on the analogous burden of 
proof  applied to product-by-process claims.< 


2112.01       Composition, Product, and Apparatus Claims [R-1] 


>PRODUCT AND APPARATUS CLAIMS - 
WHEN THE STRUCTURE RECITED IN THE 
REFERENCE IS SUBSTANTIALLY IDENTICAL TO THAT OF THE CLAIMS, CLAIMED 
PROPERTIES  OR FUNCTIONS ARE PRESUMED TO BE 
INHERENT 

        Where the claimed and prior art products are identical or 
substantially  identical in structure or composition, or are produced by 
identical or substantially  identical processes, a prima facie case of 
either anticipation or obviousness  has been established. In re Best, 195 
USPQ 430, 433 (CCPA 1977). "When the  PTO shows a sound basis for 
believing that the products of the applicant and  the prior art are the 
same, the applicant has the burden of showing that they  are not." In re 
Spada, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the  prima facie 
case can be rebutted by evidence showing that the prior art products  do 
not necessarily possess the characteristics of the claimed product. In re 
Best, 195 USPQ 430, 433 (CCPA 1977). 

        See also Titanium Metals Corp. v. Banner, 227 USPQ 773 (Fed. Cir. 
1985) 
(Claims were directed to a titanium alloy containing 0.2-0.4% Mo and 
0.6-0.9%  Ni having corrosion resistance. A Russian article disclosed a 
titanium alloy  containing 0.25% Mo and 0.75% Ni but was silent as to 
corrosion resistance.  The Federal Circuit held that the claim was 
anticipated because the percentages  of Mo and Ni were squarely within the 
claimed ranges. The court went on to  say that it was immaterial what 
properties the alloys had or who discovered  the properties because the 
composition is the same and thus must necessarily  exhibit the properties.); 

        In re Ludtke, 169 USPQ 563 (CCPA 1971) (Claim 1 was directed to a 
parachute  canopy having concentric circumferential panels radially 
separated from each  other by radially extending tie lines. The panels 
were separated "such that  the critical velocity of each successively 
larger panel will be less than the  critical velocity of the previous 
panel, whereby said parachute will sequentially  open and thus gradually 
decelerate." The court found that the claim was anticipated  by Menget. 
Menget taught a parachute having three circumferential panels separated 
by tie lines. The court upheld the rejection finding that applicant had 
failed  to show that Menget did not possess the functional characteristics 
of the claims.); 
        Northam Warren Corp. v. D. F. Newfield Co., 7 F.Supp. 773, 22 USPQ 
 313 (E.D.N.Y. 1934) (A patent to a pencil for cleaning fingernails was 
held  invalid because a pencil of the same structure for writing was found 
in the  prior art.). 

COMPOSITION CLAIMS - IF THE COMPOSITION IS PHYSICALLY THE SAME, IT MUST 
HAVE  THE SAME PROPERTIES 

        "Products of identical chemical composition can not have mutually 
exclusive  properties." A chemical composition and its properties are 
inseparable. Therefore,  if the prior art teaches the identical chemical 
structure, the properties applicant  discloses and/or claims are 
necessarily present. In re Spada, 15 USPQ2d 1655,  1658 (Fed. Cir. 1990) 
(Applicant argued that the claimed composition was a  pressure sensitive 
adhesive containing a tacky polymer while the product of  the reference 
was hard and abrasion resistant. "The Board correctly found that  the 
virtual identity of monomers and procedures sufficed to support a prima 
facie case of unpatentability of Spada's polymer latexes for lack of 
novelty.").< 

2112.02       Process Claims [R-1] 


>PROCESS CLAIMS - PRIOR ART DEVICE ANTICIPATES A CLAIMED PROCESS IF THE 
DEVICE  CARRIES OUT THE PROCESS DURING NORMAL OPERATION 

        Under the principles of inherency, if a prior art device, in its 
normal  and usual operation, would necessarily perform the method claimed, 
then the  method claimed will be considered to be anticipated by the prior 
art device.  When the prior art device is the same as a device described 
in the specification  for carrying out the claimed method, it can be 
assumed the device will inherently  perform the claimed process. In re 
King, 231 USPQ 136 (Fed. Cir. 1986) (The  claims were directed to a method 
of enhancing color effects produced by ambient  light through a process of 
absorption and reflection of the light off a coated  substrate. A prior 
art reference to Donley disclosed a glass substrate coated  with silver 
and metal oxide 200-800 angstroms thick. While Donley disclosed  using the 
coated substrate to produce architectural colors, the absorption  and 
reflection mechanisms of the claimed process were not disclosed. However, 
King's specification disclosed using a coated substrate of Donley's 
structure  for use in his process. The Federal Circuit upheld the Board's 
finding that  "Donley inherently performs the function disclosed in the 
method claims on  appeal when that device is used in `normal and usual 
operation' " and found  that a prima facie case of anticipation was made 
out. Id. at 138. It was up  to applicant to prove that Donley's structure 
would not perform the claimed  method when placed in ambient light.). 

        See also In re Best, 195 USPQ 430, 433 (CCPA 1977) (Applicant 
claimed  a process for preparing a hydrolytically-stable zeolitic 
aluminosilicate which  included a step of "cooling the steam zeolite ... 
at a rate sufficiently rapid  that the cooled zeolite exhibits a X-ray 
diffraction pattern ...." All the  process limitations were expressly 
disclosed by a U.S. patent to Hansford except  the cooling step. The court 
stated that any sample of Hansford's zeolite would  necessarily be cooled 
to facilitate subsequent handling. Therefore, a prima  facie case under 35 
U.S.C. 102/103 was made. Applicant had failed to introduce  any evidence 
comparing X-ray diffraction patterns showing a difference in cooling  rate 
between the claimed process and that of Hansford or any data showing that 
the process of Hansford would result in a product with a different X-ray 
diffraction.  Either type of evidence would have rebutted the prima facie 
case under 35 U.S.C.  102. A further analysis would be necessary to 
determine if the process was  unobvious under 35 U.S.C. 103.); 

        Ex parte Novitski, 26 USPQ2d 1389 (Bd. Pat. App. & Inter. 1993) 
(The  Board rejected a claim directed to a method for protecting a plant 
from plant  pathogenic nematodes by inoculating the plant with a nematode 
inhibiting strain  of P. cepacia. A U.S. patent to Dart disclosed 
inoculation using P. cepacia  type Wisconsin 526 bacteria for protecting 
the plant from fungal disease. Dart  was silent as to nematode inhibition 
but the Board concluded that nematode  inhibition was an inherent property 
of the bacteria. The Board noted that applicant  had stated in the 
specification that Wisconsin 526 possesses an 18% nematode  inhibition 
rating.). 

PROCESS OF USE CLAIMS - NEW AND UNOBVIOUS USES OF OLD STRUCTURES AND 
COMPOSITIONS  MAY BE PATENTABLE 

        The discovery of a new use for an old structure based on unknown 
properties  of the structure might be patentable to the discoverer as a 
process of using.  In re Huck, 114 USPQ 161, 163 (CCPA 1957). However, 
when the claim recites  using an old composition or structure and the 
"use" is directed to a result  or property of that composition or 
structure, then the claim is anticipated.  In re May, 197 USPQ 601, 607 
(CCPA 1978) (Claims 1 and 6, directed to a method  of effecting 
nonaddictive analgesia (pain reduction) in animals, were found to be 
anticipated by the applied prior  art which disclosed the same compounds 
for effecting analgesia but which was  silent as to addiction. The court 
upheld the rejection and stated that the  applicants had merely found a 
new property of the compound and such a discovery  did not constitute a 
new use. The court went on to reverse the rejection of  claims 2-5 and 
7-10 which recited a process of using a new compound. The court  relied on 
evidence showing that the nonaddictive property of the new compound  was 
unexpected.). 

        See also In re Tomlinson, 363 F.2d 928, 150 USPQ 623 (CCPA 1966) 
(The  claim was directed to a process of inhibiting light degradation of 
polypropylene  by mixing it with one of a genus of compounds, including 
nickel dithiocarbamate.  A reference taught mixing polypropylene with 
nickel dithiocarbamate to lower  heat degradation. The court held that the 
claims read on the obvious process  of mixing polypropylene with the 
nickel dithiocarbamate and that the preamble  of the claim was merely 
directed to the result of mixing the two materials.  "While the references 
do not show a specific recognition of that result, its  discovery by 
appellants is tantamount only to finding a property in the old  composition." 
363 F.2d at 934, 150 USPQ at 628 (emphasis in original).).< 


2113    Product by Process Claims [R-1] 


>PRODUCT-BY-PROCESS CLAIMS ARE NOT LIMITED TO THE MANIPULATIONS OF THE 
RECITED  STEPS, ONLY THE STRUCTURE IMPLIED BY THE STEPS 

        "Even though product-by process claims are limited by and defined 
by  the process, determination of patentability is based on the product 
itself.  The patentability of a product does not depend on its method of 
production.  If the product in the product-by-process claim is the same as 
or obvious from  a product of the prior art, the claim is unpatentable 
even though the prior  product was made by a different process." In re Thorpe, 
227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) (Claim was directed 
 to a novolac color developer. The process of making the developer was 
allowed.  The difference between the inventive process and the prior art 
was the addition  of metal oxide and carboxylic acid as separate 
ingredients instead of adding  the more expensive pre-reacted metal 
carboxylate. The product-by-process claim  was rejected because the end 
product, in both the prior art and the allowed  process, ends up 
containing metal carboxylate. The fact that the metal carboxylate  is not 
directly added, but is instead produced in-situ does not change the  end 
product.). 

ONCE A PRODUCT APPEARING TO BE SUBSTANTIALLY IDENTICAL IS FOUND AND A 35 
U.S.C. 102/103 REJECTION MADE, THE BURDEN SHIFTS TO THE APPLICANT TO SHOW 
AN UNOBVIOUS DIFFERENCE 

        "The Patent Office bears a lesser burden of proof in making out a 
case  of prima facie obviousness for product-by-process claims because of 
their peculiar  nature" than when a product is claimed in the conventional 
fashion. In re Fessmann,  180 USPQ 324, 326 (CCPA 1974). Once the Examiner 
provides a rationale tending  to show that the claimed product appears to 
be the same or similar to that  of the prior art, although produced by a 
different process, the burden shifts  to applicant to come forward with 
evidence establishing an unobvious difference  between the claimed product 
and the prior art product. In re Marosi, 218 USPQ  289, 292 (Fed. Cir. 
1983) (The claims were directed to a zeolite manufactured  by mixing 
together various inorganic materials in solution and heating the 
resultant gel to form a crystalline metal silicate essentially free of 
alkali  metal. The prior art described a process of making a zeolite 
which, after ion  exchange to remove alkali metal, appeared to be 
"essentially free of alkali  metal." The court upheld the rejection 
because the applicant had not come forward  with any evidence that the 
prior art was not "essentially free of alkali metal"  and therefore a 
different and unobvious product.). 

        Ex parte Gray, 10 USPQ2d 1922 (Bd. Pat. App. & Inter. 1989) (The 
prior  art disclosed human nerve growth factor ( -NGF) isolated from human 
placental  tissue. The claim was directed to -NGF produced through genetic 
engineering  techniques. The factor produced seemed to be substantially 
the same whether  isolated from tissue or produced through genetic 
engineering. While the applicant  questioned the purity of the prior art 
factor, no concrete evidence of an unobvious  difference was presented. 
The Board stated that the dispositive is-sue is whether  the claimed 
factor exhibits any unexpected properties compared with the factor 
disclosed by the prior art. The Board further stated that the applicant 
should have made  some comparison between the two factors to establish 
unexpected properties  since the materials appeared to be identical or 
only slightly different.). 
THE USE OF 35 U.S.C. 102/103 REJECTIONS FOR PRODUCT-BY-PROCESS CLAIMS HAS 
BEEN  APPROVED BY THE COURTS 

        "[T]he lack of physical description in a product-by-process claim 
makes  determination of the patentability of the claim more difficult, 
since in spite  of the fact that the claim may recite only process 
limitations, it is the patentability  of the product claimed and not of 
the recited process steps which must be established.  We are therefore of 
the opinion that when the prior art discloses a product  which reasonably 
appears to be either identical with or only slightly different  than a 
product claimed in a product-by-process claim, a rejection based 
alternatively  on either section 102 or section 103 of the statute is 
eminently fair and acceptable.  As a practical matter, the Patent Office 
is not equipped to manufacture products  by the myriad of processes put 
before it and then obtain prior art products  and make physical 
comparisons therewith." In re Brown, 173 USPQ 685, 688 (CCPA 1972).< 


2114    Apparatus and Article Claims - Functional Language [R-1] 


        >For a discussion of case law which provides guidance in 
interpreting  the functional portion of means-plus-function limitations 
see MPEP w 2181 -  w 2186. 

APPARATUS CLAIMS MUST BE STRUCTURALLY DISTINGUISHABLE FROM THE PRIOR ART 
        Claims directed to apparatus must be distinguished from the prior 
art  in terms of structure rather than function. In re Danley, 120 USPQ 
528, 531 
(CCPA 1959). "Apparatus claims cover what a device is, not what a device 
does."(emphasis  in original) Hewlett-Packard Co. v. Bausch & Lomb Inc., 
15 USPQ2d 1525, 1528 
(Fed. Cir. 1990). 

MANNER OF OPERATING THE DEVICE DOES NOT DIFFERENTIATE APPARATUS CLAIM FROM 
 THE PRIOR ART 

        A claim containing a "recitation with respect to the manner in 
which  a claimed apparatus is intended to be employed does not 
differentiate the claimed  apparatus from a prior art apparatus" if the 
prior art apparatus teaches all  the structural limitations of the claim. 
Ex parte Masham, 2 USPQ2d 1647 (Bd.  Pat. App. & Inter. 1987) (The 
preamble of claim 1 recited that the apparatus  was "for mixing flowing 
developer material" and the body of the claim recited  "means for mixing 
..., said mixing means being stationary and completely submerged  in the 
developer material". The claim was rejected over a reference which taught 
all the structural limitations of the claim for the intended use of mixing 
 flowing developer. However, the mixer was only partially submerged in the 
developer  material. The Board held that the amount of submersion is 
immaterial to the  structure of the mixer and thus the claim was properly 
rejected.). 
A PRIOR ART DEVICE CAN PERFORM ALL THE FUNCTIONS OF THE APPARATUS CLAIM 
AND  STILL NOT ANTICIPATE THE CLAIM 

        Even if the prior art device performs all the functions recited in 
 the claim, the prior art cannot anticipate the claim if there is any 
structural  difference. It should be noted, however, that means plus 
function limitations  are met by structures which are equivalent to the 
corresponding structures  recited in the specification. In re 
Ruskin, 146 USPQ 211 (CCPA 1965) as implicitly modified by In re 
Donaldson,  29 USPQ2d 1845 (Fed. Cir. 1994).< 


2115    Material or Article Worked Upon by Apparatus [R-1] 


>MATERIAL OR ARTICLE WORKED UPON DOES NOT LIMIT APPARATUS CLAIMS 
        "Expressions relating the apparatus to contents thereof during an 
intended  operation are of no significance in determining patentability of 
the apparatus  claim." Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 
1969). Furthermore,  "Inclusion of material or article worked upon by a 
structure being claimed  does not impart patentability to the claims." In 
re Young, 25 USPQ 69 (CCPA  1935) (as restated in In re Otto, 136 USPQ 
458, 459 (CCPA 1963). 

        In In re Young, 25 USPQ 69 (CCPA 1935), a claim to a machine for 
making  concrete beams included a limitation to the concrete reinforced 
members made  by the machine as well as the structural elements of the 
machine itself. The  court held that the inclusion of the article formed 
within the body of the  claim did not, without more, make the claim 
patentable. 

        In In re Casey, 152 USPQ 235 (CCPA 1967), an apparatus claim 
recited  "A taping machine comprising a supporting structure, a brush 
attached to said  supporting structure, said brush being formed with 
projecting bristles which  terminate in free ends to collectively define a 
surface to which adhesive tape  will detachably adhere, and means for 
providing relative motion between said  brush and said supporting 
structure while said adhesive tape is adhered to  said surface." An 
obviousness rejection was made over a reference to Kienzle  which taught a 
machine for perforating sheets. The court upheld the rejection  stating 
that "the references in claim 1 to adhesive tape handling do not expressly 
 or impliedly require any particular structure in addition to that of 
Kienzle."  The perforating device had the structure of the taping device 
as claimed, the  difference was in the use of the device, and "the manner 
or method in which  such machine is to be utilized is not germane to the 
issue of patentability  of the machine itself."). 

        Note that this line of cases is limited to claims directed to 
machinery  which works upon an article or material in its intended use, it 
does not apply  to product claims or kit claims (i.e., claims directed to 
a plurality of articles  grouped together as a kit).< 


2116    Material Manipulated in Process [R-1] 


>MATERIAL RECITED IN PROCESS CLAIM MUST BE CONSIDERED IN PATENTABILITY 
DETERMINATION 

        The materials on which a process is carried out must be accorded 
weight  in determining the patentability of a process. Ex parte Leonard, 
187 USPQ 122 
(Bd. App. 1974). 


2116.01       Novel, Unobvious Starting Material or End Product [R-2] 

** 

> All the limitations of a claim must be considered when weighing the 
differences  between the claimed invention and the prior art in 
determining the obviousness  of a process or method claim.  See MPEP  w 
2143.03. 

        In re Ochiai, 71 F.3d 1565, 37 USPQ2d 1127 (Fed. Cir. 1995) and In 
 re Brouwer, 77 F.3d 422, 37 USPQ2d 1663 (Fed. Cir. 1996) addressed the 
issue  of whether an otherwise conventional process could be patented if 
it were limited  to making or using a nonobvious product.  In both cases, 
the Federal Circuit  held that the use of per se rules is improper in 
applying the test for obviousness  under 35 U.S.C. 103.  Rather, 35 U.S.C. 
103 requires a highly fact-dependent  analysis involving taking the 
claimed subject matter as a whole and comparing  it to the prior art.  To 
support a rejection under 35 U.S.C. 103, the collective  teachings of the 
prior art must have suggested to one of ordinary skill in  the art that, 
at the time the invention was made, applicant's claimed invention  would 
have been obvious.  In applying this test to the claims on appeal in 
Ochiai and Brouwer, the court held that there simply was no suggestion or 
motivation  in the prior art to make or use novel, nonobvious products in 
the claimed processes. 
 Consequently, the court overturned the rejections based upon 35 U.S.C. 
103. 
        Interpreting the claimed invention as a whole requires 
consideration  of all claim limitations.  Thus, proper claim construction 
requires treating  language in a process claim which recites the making or 
using of a nonobvious  product as a material limitation. Motivation to 
make or use the nonobvious  product must be present in the prior art for a 
35 U.S.C. 103 rejection to be  sustained.  The decision in Ochiai 
specifically dispelled any distinction between  processes of making a 
product and methods of using a product with regard to  the effect of any 
product limitations in either type of claim. 

        As noted in Brouwer, 77 F.3d at 425, 37 USPQ2d at 1666, the 
inquiry  as to whether a claimed invention would have been obvious is 
"highly fact-specific  by design".  Accordingly obviousness must be 
assessed on a case-by-case basis. 
 The following decisions are illustrative of the lack of per se rules in 
applying  the test for obviousness under 35 U.S.C. 103 and of the fact 
intensive comparison  of claimed processes with the prior art: 

        In re Durden, 763 F.2d 1406, 226 USPQ 359 (Fed. Cir. 1985) (The 
examiner  rejected a claim directed to a process in which patentable 
starting materials  were reacted 


to form patentable end products.  The prior art showed the same chemical 
reaction  mechanism applied to other chemicals.  The court held that the 
process claim  was obvious over the prior art.); In re Albertson, 332 F.2d 
379, 141 USPQ 730 
(CCPA 1964)(Process of chemically reducing one novel, nonobvious material 
to  obtain another novel, nonobvious material was claimed.  The process 
was held  obvious because the reduction reaction was old.); In re Kanter, 
399 F.2d 249,  158 USPQ 331 (CCPA 1968)(Process of siliconizing a 
patentable base material  to obtain a patentable product was claimed. 
Rejection based on prior art teaching  the siliconizing process as applied 
to a different base material was upheld.); 
 Cf. In re Pleuddemann, 15 USPQ2d 1738 (Fed. Cir. 1990) (Methods of 
bonding  polymer and filler using a novel silane coupling agent held 
patentable even  though methods of bonding using other silane coupling 
agents were well known  because the process could not be conducted without 
the new agent); In re Kuehl,  475 F.2d 658, 177 USPQ 250 (CCPA 
1973)(Process of cracking hydrocarbons using  novel zeolite catalyst found 
to be patentable even though catalytic cracking  process was old." The 
test under  103 is whether in view of the prior art the  invention as a 
whole would have been obvious at the time it was made, and the  prior art 
here does not include the zeolite, ZK-22.  The obviousness of the  process 
of cracking hydrocarbons with ZK-22 as a catalyst must be determined 
without reference to knowledge of ZK-22 and its properties."  177 USPQ at 
255.);  and In re Mancy, 499 F.2d 1289, 182 USPQ 303 (CCPA 1974)(Claim to 
a process  for the production of a known antibiotic by cultivating a 
novel, unobvious  microorganism was found to be patentable.). < 

** 

** 


2121    Prior Art; General Level of Operability Required to Make a Prima 
Facie Case  [R-1] 

>PRIOR ART IS PRESUMED TO BE OPERABLE/ENABLING 

        When the reference relied on expressly anticipates or makes 
obvious  all of the elements of the claimed invention, the reference is 
presumed to  be operable. Once such a reference is found, the burden is on 
applicant to  provide facts rebutting the presumption of operability. In 
re Sasse, 207 USPQ  107 (CCPA 1980). See also MPEP w 716.07. 

WHAT CONSTITUTES AN "ENABLING DISCLOSURE" DOES NOT DEPEND ON THE TYPE OF 
PRIOR  ART THE DISCLOSURE IS CONTAINED IN 

        The level of disclosure required within a reference to make it an 
"enabling  disclosure" is the same no matter what type of prior art is at 
issue. It does  not matter whether the prior art reference is a U.S. 
patent, foreign patent,  a printed publication or other. There is no basis 
in the statute (35 U.S.C.  102 or 103) for discriminating either in favor 
of or against prior art references  on the basis of nationality. In re 
Moreton, 129 USPQ 227 (CCPA 1961).< 

2121.01       Use of Prior Art in Rejections Where Operability Is in 
Question [R-1] 

>A REJECTION IS APPROPRIATE IF ONE OF ORDINARY SKILL COULD PRACTICE THE 
CLAIMED  INVENTION GIVEN THE TEACHINGS OF THE REFERENCE COMBINED WITH 
KNOWLEDGE IN THE  ART 

        "In determining that quantum of prior art disclosure which is 
necessary  to declare an applicant's invention `not novel' or 
`anticipated' within section  102, the stated test is whether a reference 
contains an `enabling disclosure'...  ." In re Hoeksema, 158 USPQ 596 
(CCPA 1968). A reference contains an "enabling  disclosure" if the public 
was in possession of the claimed invention before  the date of invention. 
"Such possession is effected if one of ordinary skill  in the art could 
have combined the publication's description of the invention  with his [or 
her] own knowledge to make the claimed invention." In re Donohue,  226 
USPQ 619 (Fed. Cir. 1985). 

(a)   35 U.S.C. 102 Rejections and addition of evidence showing reference 
is  operable 

SECONDARY EVIDENCE SHOWING 
REFERENCE CONTAINS AN "ENABLING 
DISCLOSURE" CAN BE COMBINED WITH THE 
REFERENCE TO MAKE OUT A 35 U.S.C. 102 
REJECTION 

        It is possible to make a 35 U.S.C. 102 rejection even if the 
reference  does not itself teach one of ordinary skill how to practice the 
invention,  i.e., how to make or use the article disclosed. If the 
reference teaches every  claimed element of the article, secondary 
evidence, such as other patents or  publications, can be cited to show 
public possession of the method of making  and/or using. In re Donohue, 
226 USPQ 619, 621 (Fed. Cir. 1985). See MPEP w  2131.01 for more 
information on 35 U.S.C. 102 rejections using secondary references  to 
show that the primary reference contains an "enabling disclosure." 
(b)   35 U.S.C. 103 rejections - Use of inoperative prior art 

AN INOPERATIVE REFERENCE CAN BE USED IN A 35 U.S.C. 103 REJECTION FOR WHAT 
 IT DOES TEACH 

        "Even if a reference discloses an inoperative device, it is prior 
art  for all that it teaches." Beckman Instruments v. LKB Produkter AB, 13 
USPQ2d  1301, 1304 (Fed. Cir. 1989). Therefore, "a non-enabling reference 
may qualify  as prior art for the purpose of determining obviousness under 
35 U.S.C. 103."  Symbol Technologies Inc. v. Opticon Inc., 19 USPQ2d 1241, 
1247 (Fed. Cir. 1991).< 

2121.02       Compounds and Compositions - What Constitutes Enabling Prior 
Art [R-1] 

>ONE OF ORDINARY SKILL IN THE ART MUST BE ABLE TO MAKE OR SYNTHESIZE 
        Where a process for making the compound is not developed until 
after  the date of invention, the mere naming of a compound in a 
reference, without  more, cannot constitute a description of the compound. 
In re Hoeksema, 158  USPQ 596 (CCPA 1968). Note, however, that a reference 
is presumed operable  until applicant provides facts rebutting the 
presumption of operatibility.  In re Sasse, 207 USPQ 107 (CCPA 1980). 
Therefore, applicant must provide evidence  showing that a process for 
making was not known at the time of the invention.  See the following 
paragraph for the evidentiary standard to be applied. 
A REFERENCE DOES NOT CONTAIN AN "ENABLING DISCLOSURE" IF ATTEMPTS AT 
MAKING  THE COMPOUND OR COMPOSITION WERE UNSUCCESSFUL BEFORE THE DATE OF 
INVENTION 
        When a prior art reference merely discloses the structure of the 
claimed  compound, evidence showing that attempts to prepare that compound 
were unsuccessful  before the date of invention will be adequate to show 
inoperability. In re  Wiggins, 488 F.2d 538, 179 USPQ 421 (CCPA 1971). 
However, the fact that an  author of a publication did not attempt to make 
the compound disclosed, without  more, will not overcome a rejection based 
on that publication. In re Donohue,  226 USPQ 619 (Fed. Cir. 1985) (In 
this case, the examiner had made a rejection  under 35 U.S.C. 102(b) over 
a publication, which disclosed the claimed compound,  in combination with 
two patents teaching a general process of making the particular  class of 
compounds. The applicant submitted an affidavit stating that the authors 
of the publication had not actually synthesized the compound. The court 
held  that the fact that the publication's author did not synthesize the 
disclosed  compound was immaterial to the question of reference 
operability. The patents  were evidence that synthesis methods were well 
known. The court distinguished  Wiggins, in which a very similar rejection 
was reversed. In Wiggins, attempts  to make the compounds using the prior 
art methods were all unsuccessful.).  Compare In re Hoeksema, 158 USPQ 596 
(CCPA 1968) (A claim to a compound was  rejected over a patent to De Boer 
which disclosed compounds similar in structure  to those claimed (obvious 
homologs) and a process of making these compounds.  Applicant responded 
with an affidavit by an expert named Wiley which stated  that there was no 
indication in the De Boer patent that the process disclosed  in De Boer 
could be used to produce the claimed compound and that, he did not 
believe that the process disclosed in De Boer could be adapted to the 
production  of the claimed compound. The court held that the facts stated 
in this affidavit  were legally sufficient to overcome the rejection and 
that applicant need not  show that all known processes are incapable of 
producing the claimed compound  for this showing would be practically 
impossible.).< 


2121.03       Plant Genetics - What Constitutes Enabling Prior Art [R-1] 

>THOSE OF ORDINARY SKILL MUST BE ABLE TO GROW AND CULTIVATE THE PLANT 
        When the claims are drawn to plants, the reference, combined with 
knowledge  in the prior art, must enable one of ordinary skill in the art 
to reproduce  the plant. In re LeGrice, 133 USPQ 365 (CCPA 1962) (National 
Rose Society Annual  of England and various other catalogues showed color 
pictures of the claimed  roses and disclosed that applicant had raised the 
roses. The publications were  published more than 1 year before 
applicant's filing date. The court held that  the publications did not 
place the rose in the public domain. Information on  the grafting process 
required to reproduce the rose was not included in the  publications and 
such information was necessary for those of ordinary skill  in the art 
(plant breeders) to reproduce the rose.). Compare Ex parte Thompson,  24 
USPQ2d 1618 (Bd. Pat. App. & Inter. 1992)(Seeds were commercially 
available  more than 
1 year prior to applicant's filing date. One of ordinary skill in the art 
could  grow the claimed cotton cultivar from the commercially available 
seeds. Thus,  the publications describing the cotton cultivar had "enabled 
disclosures."  The Board distinguished LeGrice by finding that the 
catalogue picture of the  rose of LeGrice was the only evidence in that 
case. There was no evidence of  commercial availability in enabling form 
since the asexually reproduced rose  could not be reproduced from seed. 
Therefore, the public would not have possession  of the rose by its 
picture alone, but the public would have possession of the  cotton 
cultivar based on the publications and the availability of the seeds.).< 

2121.04       Apparatus and Articles - What Constitutes Enabling Prior Art 
[R-1] 

>PICTURES MAY CONSTITUTE AN "ENABLING DISCLOSURE" 

        Pictures and drawings may be sufficiently enabling to put the 
public  in the possession of the article pictured. Therefore, such an 
enabling picture  may be used to reject claims to the article. However, 
the picture must show  all the claimed structural features and how they 
are put together. Jockmus  v. Leviton, 28 F.2d 812 (2d Cir. 1928). See 
also MPEP w 2125 for a discussion  of drawings as prior art.< 


2122    Discussion of Utility in the Prior Art [R-1] 


>UTILITY NEED NOT BE DISCLOSED IN 
REFERENCE 

        In order to constitute anticipatory prior art, a reference must 
identically  disclose the claimed compound, but no utility need be 
disclosed by the reference.  In re Schoenwald, 22 USPQ2d 1671 (Fed. Cir. 
1992) (The application claimed  compounds used in ophthalmic compositions 
to treat dry eye syndrome. The examiner  found a printed publication which 
disclosed the claimed compound but did not  disclose a use for the 
compound. The court found that the claim was anticipated  since the 
compound and a process of making it was taught by the reference.  The 
court explained that "no utility need be disclosed for a reference to be 
anticipatory of a claim to an old compound." 22 USPQ2d at 1673. It is 
enough  that the claimed compound is taught by the reference.).< 


2123    Rejection Over Prior Art's Broad Disclosure Instead of Preferred 
Embodiments [R-1] 

>THE BROAD DISCLOSURE OF A REFERENCE IS RELEVANT PRIOR ART FOR ALL IT 
WOULD  HAVE SUGGESTED TO THOSE OF ORDINARY SKILL 

        A reference may be relied upon for all that it would have 
reasonably  suggested to one having ordinary skill the art, including 
nonpreferred embodiments.  Merck & Co. v. Biocraft Laboratories, 10 USPQ2d 
1843 (Fed. Cir. 1989). 
NONPREFERRED EMBODIMENTS 
CONSTITUTE PRIOR ART 

        Disclosed examples and preferred embodiments do not constitute a 
teaching  away from a broader disclosure or nonpreferred embodiments. In 
re Susi, 169  USPQ 423 (CCPA 1971). "A known or obvious composition does 
not become patentable  simply because it has been described as somewhat 
inferior to some other product  for the same use." In re Gurley, 31 USPQ2d 
1130, 1132 (Fed. 
Cir. 1994) (The invention was directed to a an epoxy impregnated 
fiber-reinforced  printed circuit material. The applied prior art 
reference taught a printed  circuit material similar to that of the claims 
but impregnated with polyester-imide  resin instead of epoxy. The 
reference, however, disclosed that epoxy was known  for this use, but that 
epoxy impregnated circuit boards have "relatively acceptable  dimensional 
stability" and "some degree of flexibility," but are inferior to  circuit 
boards impregnated with polyester-imide resins. The court upheld the 
rejection concluding that, while the reference did teach away from using 
epoxy,  the "teaching away" was insufficient to overcome the rejection 
since "Gurley  asserted no discovery beyond what was known in the art." 
Id. at 1132.) 
PATENTS ARE RELEVANT AS PRIOR ART FOR ALL THEY CONTAIN 

        "The use of patents as references is not limited to what the 
patentees  describe as their own inventions or to the problems with which 
they are concerned.  They are part of the literature of the art, relevant 
for all they contain."  In re Heck, 216 USPQ 1038, 1039 (Fed. Cir. 1983) 
(quoting In re Lemelson, 397  F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 
1968)).< 


2124    Exception to the Rule That the Critical Reference Date Must 
Precede the Filing Date [R-1] 

>IN SOME CIRCUMSTANCES A FACTUAL REFERENCE NEED NOT ANTEDATE THE FILING 
DATE 
        In certain circumstances, references cited to show a universal 
fact  need not be available as prior art before applicant's filing date. 
In re Wilson,  135 USPQ 442 (CCPA 1962). Such facts include the 
characteristics and properties  of a material or a scientific truism. Some 
specific examples in which later  publications showing factual evidence 
can be cited include situations where  the facts shown in the reference 
are evidence "that, as of an application's  filing date, undue 
experimentation would have been required, In re Corneil,  347 F.2d 563, 568, 
145 USPQ 702, 705 (CCPA 1965), or that a parameter absent from the claims 
was  or was not critical, In re Rainer, 305 F.2d 505, 507 n.3, 134 USPQ 
343, 345  n.3 (CCPA 1962), or that a statement in the specification was 
inaccurate, In  re Marzocchi, 439 F.2d 220, 223 n.4, 
169 USPQ 367, 370 n.4 (CCPA 1971), or that the invention was inoperative 
or  lacked utility, In re Langer, 503 F.2d 1380, 1391, 183 USPQ 288, 297 
(CCPA  1974), or that a claim was indefinite, In re Glass, 492 F.2d 
1228,1232 n.6,  181 USPQ 31, 34 n.6 (CCPA 1974), or that characteristics 
of prior art products  were known, In re Wilson, 311 F.2d 266, 135 USPQ 
442 (CCPA 1962)." In re Koller,  204 USPQ 702, 706 n.5 (CCPA 1980) 
(quoting In re Hogan, 194 USPQ 527, 537 n.17 
(CCPA 1977) (emphasis in original)). However, it is impermissible to use a 
 later factual reference to determine whether the application is enabled 
or  described as required under 35 U.S.C. 112, first paragraph. In re 
Koller, 204  USPQ 702, 706 n.5 (CCPA 1980). References which do not 
qualify as prior art  because they postdate the claimed invention may be 
relied upon to show the  level of ordinary skill in the art at or around 
the time the invention was  made. Ex parte 
Erlich, 22 USPQ 1463 (Bd. Pat. App. & Inter. 1992).< 


2125    Drawings as Prior Art [R-1] 


>DRAWINGS CAN BE USED AS PRIOR ART 

        Drawings and pictures can anticipate claims if they clearly show 
the  structure which is claimed. In re Marz, 173 USPQ 25 (CCPA 1972). 
However, the  picture must show all the claimed structural features and 
how they are put  together. Jockmus v. Leviton, 28 F.2d 812 (2d Cir. 
1928). The origin of the  drawing is immaterial. For instance, drawings in 
a design patent can anticipate  or make obvious the claimed invention as 
can drawings in utility patents. When  the reference is a utility patent, 
it does not matter that the feature shown  is unintended or unexplained in 
the specification. The drawings must be evaluated  for what they 
reasonably disclose and suggest to one of ordinary skill in the  art. In 
re Aslanian, 
200 USPQ 500 (CCPA 1979). See MPEP w 2121.04 for more information on prior 
 art drawings as "enabled disclosures." 

PROPORTIONS OF FEATURES IN A DRAWING ARE NOT EVIDENCE OF ACTUAL 
PROPORTIONS  WHEN DRAWINGS ARE NOT TO SCALE 

        When the reference does not disclose that the drawings are to 
scale  and is silent as to dimensions, arguments based on measurement of 
the drawing  features are of little value. However, the description of the 
article pictured can be relied  on, in combination with the drawings, for 
what they would reasonably teach  one of ordinary skill in the art. In re 
Wright, 193 USPQ 332 (CCPA 1977) ("We  disagree with the Solicitor's 
conclusion, reached by a comparison of the relative  dimensions of 
appellant's and Bauer's drawing figures, that Bauer `clearly  points to 
the use of a chime length of roughly 1/2 to 1 inch for a whiskey  barrel.' 
This ignores the fact that Bauer does not disclose that his drawings  are 
to scale. ... However, we agree with the Solicitor that Bauer's teaching 
that whiskey losses are influenced by the distance the liquor needs to 
`traverse  the pores of the wood' (albeit in reference to the thickness of 
the barrelhead)"  would have suggested the desirability of an increased 
chime length to one of  ordinary skill in the art bent on further reducing 
whiskey losses." Id. at  335-36.)< 


2126    Availability of a Document as a "Patent"    for Purposes of 
Rejection Under 35 U.S.C. 102(a), (b), and (d) [R-1] 

>THE NAME "PATENT" ALONE DOES NOT MAKE A DOCUMENT AVAILABLE AS A PRIOR ART 
 PATENT UNDER 35 U.S.C. 102(a) or (b) 

        What a foreign country designates to be a patent may not be a 
patent  for purposes of rejection under 
35 U.S.C. 102(a) and (b); it is the substance of the rights conferred and 
the  way information within the "patent" is controlled that is 
determinative. In  re Ekenstam 
118 USPQ 349 (CCPA 1958). See the next paragraph for further explanation 
with  respect to when a document can be applied in a rejection as a 
"patent." See  MPEP 
w 2135.01 for a further discussion of the use of "patents" in 35 U.S.C. 
102(d)  rejections. 

A SECRET PATENT IS NOT AVAILABLE AS A REFERENCE UNDER 35 U.S.C. 102(a) or 
(b)  UNTIL IT IS AVAILABLE TO THE PUBLIC BUT IT MAY BE AVAILABLE UNDER 35 
U.S.C.  102(d) AS OF GRANT DATE 

        Secret patents are defined as patents which are insufficiently 
accessible  to the public to constitute "printed publications." Decisions 
on the issue  of what is sufficiently accessible to be a "printed 
publication" are located  in MPEP w 2128 - w 2128.01. 

        Even if a patent grants an exclusionary right (is enforceable), it 
 is not available as prior art under 35 U.S.C. 102(a) or (b) if it is 
secret  or private. In re Carlson, 
25 USPQ2d 1207, 1211 (Fed. Cir. 1992). The document must be at least 
minimally  available to the public to constitute prior art. The patent is 
sufficiently  available to the public for the purposes of 35 U.S.C. 102(a) 
or (b) if it is  laid open for public inspection or disseminated in 
printed form. The date that  the patent is made available to the public is 
the date it is available as a  35 U.S.C. 102(a) or (b) reference. In re 
Ekenstam, 118 USPQ 349 (CCPA 1958).  But a period of secrecy after 
granting the patent has been held to have no  effect in connection with 35 
U.S.C 102(d). These patents are usable in rejections  under 35 U.S.C. 
102(d) as of the date patent rights are granted. In re Kathawala,  28 
USPQ2d 1789 (Fed. Cir. 1993). See MPEP w 2135 - w 2135.01 for more 
information  on 35 U.S.C. 102(d). 

        In re Carlson, 25 USPQ2d 1207, 1211 (Fed. Cir. 1992) ("We 
recognize  that Geschmacksmustern on display for public view in remote 
cities in a far-away  land may create a burden of discovery for one 
without the time, desire, or  resources to journey there in person or by 
agent to observe that which was  registered under German law. Such a 
burden, however, is by law imposed upon  the hypothetical person of 
ordinary skill in the art who is charged with knowledge  of all contents 
of the relevant prior art.")< 


2126.01       Date of Availability of a Patent as a Reference [R-2] 

DATE FOREIGN PATENT IS EFFECTIVE AS A REFERENCE IS USUALLY THE DATE PATENT 
 RIGHTS ARE FORMALLY AWARDED TO ITS 
APPLICANT 

        The date the patent is available as a reference is generally the 
date  that the patent becomes enforceable. This date is the date the 
sovereign formally  bestows patents rights to the applicant. In re Monks, 
588 F.2d 308, 200 USPQ  129 (CCPA 1978). There is an exception to this 
rule when the patent is secret  as of the date the rights are awarded. In 
re Ekenstam, 118 USPQ 349 (CCPA 1958). 

        Note that MPEP # 901.05 section F summarizes in tabular form dates 
 of patenting for many foreign patents. Chisum, Patents w 3.06[4] n.2 
gives  a good summary of decisions which specify reference availability 
dates for specific classes of  foreign patents. A copy of Chisum is kept 
in the law library of the Solicitor's  Office and in the **>Lutrelle F. 
Parker, Sr., Memorial Law Library< located  in CPK1-520. 


2126.02       Scope of Reference's Disclosure Which Can Be Used to Reject 
Claims When the Reference Is a "Patent" but Not a "Publication" [R-1] 

>OFTEN UNCLAIMED DETAILS FOUND IN THE PATENT SPECIFICATION CAN BE RELIED 
ON  EVEN IF PATENT IS SECRET 

        When the patented document is used as a patent and not as a 
publication,  the examiner is not restricted to the information conveyed 
by the patent claims  but may use any information provided in the 
specification which relates to  the subject matter of the patented claims 
when making a rejection under 35  U.S.C. 102(a), (b) or (d). 
Ex parte Ovist, 152 USPQ 709, 710 (Bd. App. 1963) (The claim of an Italian 
 patent was generic and thus embraced the species disclosed in the 
examples,  the Board added that the entire specification was germane to 
the claimed invention  and upheld the examiner's 35 U.S.C. 102(b) 
rejection.); In re Kathawala, 28  USPQ2d 1785 (Fed. Cir. 1993) (The claims 
at issue where rejected under 35 U.S.C. 102(d) by applicant's own parent 
applications in Greece and Spain.  The applicant argued that the 
"invention ... patented' in Spain was not the  same `invention' claimed in 
the U.S. application because the Spanish patent  claimed processes for 
making [compounds for inhibition of cholesterol biosynthesis]  and claims 
1 and 2 were directed to the compounds themselves." Id. at 1786.  The 
Federal Circuit held that "when an applicant files a foreign application 
fully disclosing his invention and having the potential to claim his 
invention  in a number of ways, the reference in section 102(d) to 
`invention ... patented'  necessarily includes all disclosed aspects of 
the invention." Id at 1789.) 
        In re Fuge, 124 USPQ 105 (CCPA 1959), does not conflict with the 
above  decisions. This decision simply states "that, at the least, the 
scope of the  patent embraces everything included in the [claim]." Id. at 
107. (emphasis  added). 

        Note that the courts have interpreted the phrase "invention ... 
patented"  in 102(a), (b), and (d) the same way and have cited decisions 
without regard  to which of these subsections of 35 U.S.C. 102 was at 
issue in the particular  case at hand. Therefore, it does not seem to 
matter to which subsection of  102 the cases are directed; the court 
decisions are interchangeable as to this  issue.< 


2127    Domestic and Foreign Patent Applications as Prior Art  [R-2] 

(a)   Abandoned applications, including provisional applications 

37 CFR 1.108.     Abandoned applications not cited 

        Abandoned applications as such will not be cited as references 
except  those which have been opened to inspection by the public following 
a defensive  publication. 

ABANDONED APPLICATIONS DISCLOSED TO THE PUBLIC CAN BE USED AS PRIOR ART 
        "An abandoned patent application may become evidence of prior art 
only  when it has been appropriately disclosed, as, for example, when the 
abandoned  patent is reference[d] in the disclosure of another patent, in 
a publication,  or by voluntary disclosure...." Lee 
Pharmaceutical v. Kreps, 198 USPQ 601, 605 (9th Cir. 1978). See also 37 
CFR  1.14(b). The abandoned patent application becomes available as prior 
art only  as of the date the public gains access to it as, for instance, 
when a patent  which incorporates it by reference is granted. Thus, the 
subject matter of  an abandoned application, including both provisional 
and nonprovisional applications,  referred to in a prior art U.S. patent 
cannot be relied on in a 35 U.S.C. 102(e)  rejection based on that patent 
since the disclosure of the abandoned application  is not public as of the 
filing date of the patent. In re Lund, 153 USPQ 625,  633 (CCPA 1967) (The 
court reversed a rejection over a patent which was a continuation-in-part 
of an abandoned application. Applicant's filing date preceded the issue 
date  of the patent reference. The abandoned application contained subject 
matter  which was essential to the rejection but which was not carried 
over into the  continuation-in-part. The court held that the subject 
matter of the abandoned  application was not available to the public as of 
either the parent's or the  child's filing dates and thus could not be 
relied on in the 102(e) rejection.). 
(b)   Applications which have issued into U.S. 
patents 

A 35 U.S.C 102(e) REJECTION CANNOT RELY ON MATTER WHICH WAS CANCELED FROM 
THE  APPLICATION AND THUS DID NOT GET PUBLISHED IN THE ISSUED PATENT 

        Canceled matter in the application file of a U.S. patent cannot be 
 relied upon in a rejection under 35 U.S.C. 102(e). In re Stalego, 154 
USPQ  52 (Bd. App. 1966). The canceled matter only becomes available as 
prior art  as of the date the application issues into a patent since this 
is the date  the application file wrapper becomes available to the public. 
In re Lund, 153  USPQ 625 (CCPA 1967). For more information on available 
prior art for use in 35 U.S.C. 102(e) rejections see MPEP w 2136.02. 

(c)   Foreign applications open for public inspection (laid open 
applications) 

LAID OPEN APPLICATIONS MAY CONSTITUTE "PUBLISHED" DOCUMENTS 

        When the specification is not issued in printed form but is 
announced  in an official journal and anyone can inspect or obtain copies, 
it is sufficiently  accessible to the public to constitute a "publication" 
within the meaning of  35 U.S.C. 102(a) and (b). See In re Wyer, 210 USPQ 
790 (CCPA 1981). 
        Older cases have held that laid open patent applications are not 
"published"  and cannot constitute prior art. Ex parte Haller, 103 USPQ 
332 (Bd. App. 1953).  However, whether or not a document is "published" 
for the purposes of 35 U.S.C.  102 and 103 depends on how accessible the 
document is to the public. As technology  has made reproduction of 
documents easier, the accessibility of the laid open  applications has 
increased. Items provided in easily reproducible form have  thus become 
"printed publications" as the phrase is used in 
35 U.S.C. 102. In re Wyer, 210 USPQ 790 (CCPA 1981) (laid open Australian 
patent  application held to be a "printed publication" even though only 
the abstract  was published because it was laid open for public 
inspection, microfilmed,  "diazo copies" were distributed to five 
suboffices having suitable reproduction  equipment and the diazo copies 
were available for sale.). The contents of a  foreign patent application 
should not be relied upon as prior art until the  date of publication 
(i.e., the insertion into the laid open application) can  be confirmed by 
an examiner's review of a copy of the document (MPEP w 901.05). 

(d)   Pending U.S. applications 

        As specified in 37 CFR 1.14(a), all pending U.S. applications are 
preserved  in secrecy except for reissue applications and applications in 
which a request  to open the complete application to inspection by the 
public has been granted  by the Office (37 CFR 1.11(b)). However, if two 
copending applications have  a common assignee or inventor, a rejection 
will be proper in some circumstances.  For instance, when the claims 
between the two applications are not independent  or distinct, a 
provisional double patenting rejection is made. See MPEP w 804.  If the 
copending applications differ by at least one inventor and at least  one 
of the applications is obvious in view of the other, a provisional 
rejection  over 35 U.S.C. 102(e) or 103 is made. See MPEP w 706.02(f) and 
*>706.02(k)<  for procedure. 


2128    "Printed Publications" as Prior Art [R-1] 


>A REFERENCE IS A "PRINTED PUBLICATION" IF IT IS ACCESSIBLE TO THE PUBLIC 
        A reference is proven to be a "printed publication" "upon a 
satisfactory  showing that such document has been disseminated or 
otherwise made available  to the extent that persons interested and 
ordinarily skilled in the subject  matter or art, exercising reasonable 
diligence, can locate it." In re Wyer,  210 USPQ 790 (CCPA 1981) (quoting 
I.C.E. Corp. v. Armco Steel Corp., 250 F.Supp. 738, 743, 148 USPQ 537, 540 
(SDNY 1966) ("We agree that `printed  publication' should be approached as 
a unitary concept. The traditional dichotomy  between `printed' and 
`publication' is no longer valid. Given the state of  technology in 
document duplication, data storage, and data retrieval systems,  the 
`probability of dissemination' of an item very often has little to do with 
 whether or not it is `printed' in the sense of that word when it was 
introduced  into the patent statutes in 1836. In any event, interpretation 
of the words  `printed' and `publication' to mean `probability of 
dissemination' and `public accessibility'  respectively, now seems to 
render their use in the phrase `printed publication'  somewhat redundant." 
In re Wyer, 210 USPQ at 794.). 

        See also Carella v. Starlight Archery, 231 USPQ 644 (Fed. Cir. 
1986) 
(Starlight Archery argued that Carella's patent claims to an archery sight 
 were anticipated under 35 U.S.C. 102(a) by an advertisement in a 
Wisconsin  Bow Hunter Association (WBHA) magazine and a WBHA mailer 
prepared prior to  Carella's filing date. However, there was no evidence 
as to when the mailer  was received by any of the addressees. Plus, the 
magazine had not been mailed  until 10 days after Carella's filing date. 
The court held that since there  was no proof that either the 
advertisement or mailer was accessible to any  member of the public before 
the filing date there could be no rejection under  35 U.S.C. 102(a).). 

EXAMINER NEED NOT PROVE ANYONE ACTUALLY LOOKED AT THE DOCUMENT 

        One need not prove someone actually looked at a publication when 
that  publication is accessible to the public through a library or patent 
office.  See In re Wyer, 210 USPQ 790 (CCPA 1981); In re Hall, 228 USPQ 
453 (Fed. Cir.  1986).< 


2128.01       Level of Public Accessibility  Required [R-1] 


>A THESIS PLACED IN A UNIVERSITY LIBRARY MAY BE PRIOR ART IF SUFFICIENTLY 
ACCESSIBLE  TO THE PUBLIC 

        A doctoral thesis indexed and shelved in a library is sufficiently 
 accessible to the public to constitute prior art as a "printed 
publication."  In re Hall, 228 USPQ 453 (Fed. Cir. 1986). Even if access 
to the library is  restricted, a reference will constitute a "printed 
publication" as long as  a presumption is raised that the portion of the 
public concerned with the art  would know of the invention. In re Bayer, 
196 USPQ 670 (CCPA 1978). 
        In In re Hall, 228 USPQ 453 (Fed. Cir. 1986), general library 
cataloging  and shelving practices showed that a doctoral thesis deposited 
in university  library would have been indexed, cataloged and shelved and 
thus available to  the public before the critical date. Compare In re 
Cronyn, 13 USPQ2d 1070 (Fed. Cir.1989) (The theses were shelved and 
indexed  by index cards filed alphabetically by student name and kept in a 
shoe box  in the chemistry library. The index cards only listed the 
student name and  title of the thesis. Two of three judges held that the 
students' theses were  not accessible to the public. The court reasoned 
that the theses had not been  either cataloged or indexed in a meaningful 
way since thesis could only be  found if the researcher's name was known, 
but the name bears no relationship  to the subject of the thesis. One 
judge, however, held that the fact that the  theses were shelved in the 
library was enough to make them sufficiently accessible  to the public. 
The nature of the index was not determinative. This judge relied  on prior 
Board decisions (Gulliksen v. Halberg, 75 USPQ 252, 257 (Bd. App.  1937) 
and Ex parte Hershberger, 96 USPQ 54, 56 (Bd. App. 1952)), which held 
that shelving a single copy in a public library makes the work a "printed 
publication."  It should be noted that these Board decisions have not been 
expressly overruled  but have been criticized in other decisions. See In 
re Tenney, 117 USPQ 348 
(CCPA 1958) (concurring opinion by J.Rich) (A document, of which there is 
but  one copy, whether it be handwritten, typewritten or on microfilm, may 
be technically  accessible to anyone who can find it. Such a document is 
not "printed" in the  sense that a printing press has been used to 
reproduce the document. If only  technical accessibility were required 
"logic would require the inclusion within  the term [printed] of all 
unprinted public documents for they are all `accessible.'  While some 
tribunals have gone quite far in that direction, as in the `college 
thesis cases,' I feel they have done so unjustifiably and on the wrong 
theory.  Knowledge is not in the possession of the public where there has 
been no dissemination,  as distinguished from technical accessibility." 
"The real significance of the  word `printed' " is grounded in the 
"probability of wide circulation."). See  also Deep Welding, Inc. v. 
Sciaky Bros., 163 USPQ 144 (7th Cir. 1969) (calling  the holding of Ex 
parte Hershberger "extreme"). Compare In re Bayer, 196 USPQ  670 (CCPA 
1978) (A reference will constitute a "printed publication" as long  as a 
presumption is raised that the portion of the public concerned with the 
art would know of the invention even if accessibility is restricted to 
only  this part of the public. But accessibility to applicant's thesis was 
restricted  to only three members of a graduate committee. There can be 
no presumption that those concerned with the art would have known of the 
invention  in this case.). 

ORALLY PRESENTED PAPER CAN CONSTITUTE A "PRINTED PUBLICATION" IF WRITTEN 
COPIES  ARE AVAILABLE WITHOUT RESTRICTION 

        A paper which is orally presented in a forum open to all 
interested  persons constitutes a "printed publication" if written copies 
are disseminated  without restriction. Massachusetts Institute of 
Technology v. AB Fortia, 774 F.2d 1104, 1109, 227 USPQ 428, 432 (Fed. Cir. 
1985) (Paper orally presented  to between 50 and 500 persons at a 
scientific meeting open to all persons interested  in the subject matter, 
with written copies distributed without restriction  to all who requested, 
is a printed publication. Six persons requested and obtained  copies.). 

INTERNAL DOCUMENTS INTENDED TO BE CONFIDENTIAL ARE NOT "PRINTED 
PUBLICATIONS" 
        Documents and items only distributed internally within an 
organization  which are intended to remain confidential are not "printed 
publications" no  matter how many copies are distributed. In re George, 
2 USPQ2d 1880 (Bd. Pat. App. & Inter. 1987) (Research reports disseminated 
 in-house to only those persons who understood the policy of 
confidentiality  regarding such reports are not printed publications even 
though the policy  was not specifically stated in writing.). Garret Corp. 
v. U.S., 422 F.2d 874,  878, 164 USPQ 521, 524 
(Ct. Cl.1970) ("While distribution to government agencies and personnel 
alone  may not constitute publication ... distribution to commercial 
companies without  restriction on use clearly does."). Northern Telecom 
Inc. v. 
Datapoint Corp., 15 USPQ2d 1321 (Fed. Cir. 1990) (Four reports on the 
AESOP-B  military computer system which were not under security 
classification were  distributed to about fifty organizations involved in 
the AESOP-B project. One  document contained the legend "Reproduction or 
further dissemination is not  authorized." The other documents were of the 
class that would contain this  legend. The documents were housed in Mitre 
Corporation's library. Access to  this library was restricted to those 
involved in the AESOP-B project. The court  held that public access was 
insufficient to make the documents "printed publications.").< 

2128.02       Date Publication Is Available as a Reference [R-1] 


>DATE OF ACCESSIBILITY CAN BE SHOWN THROUGH EVIDENCE OF ROUTINE BUSINESS 
PRACTICES 
        Evidence showing routine business practices can be used to 
establish  the date on which a publication became accessible to the 
public. Specific evidence  showing when the specific document actually 
became available is not always  necessary. Constant v. Advanced 
Micro-Devices, Inc., 7 USPQ2d 1057 (Fed. Cir.  1988) (Court held that 
evidence submitted by Intel regarding undated specification  sheets 
showing how the company usually treated such specification sheets was 
enough to show that the sheets were accessible by the public before the 
critical  date.); In re Hall, 228 USPQ 453 (Fed. Cir. 1986) (Librarian's 
affidavit establishing  normal time frame and practice for indexing, 
cataloging and shelving doctoral  theses established that the thesis in 
question would have been accessible by  the public before the critical 
date.). 

A JOURNAL ARTICLE OR OTHER PUBLICATION BECOMES AVAILABLE AS PRIOR ART ON 
DATE  OF IT IS RECEIVED BY A MEMBER OF THE 
PUBLIC 

        A publication disseminated by mail is not prior art until it is 
received  by at least one member of the public. Thus, a magazine or 
technical journal  is effective as of its date of publication (date when 
first person receives  it) not the date it was mailed or sent to the 
publisher. In re Schlittler,  234 F.2d 882, 110 USPQ 304 (CCPA 1956).< 


2129    Admissions as Prior Art [R-1] 


>ADMISSIONS BY APPLICANT CONSTITUTE PRIOR ART 

        When applicant states that something is prior art, it is taken as 
being  available as prior art against the claims. Admitted prior art can 
be used in  obviousness rejections. In re Nomiya, 184 USPQ 607, 610 (CCPA 
1975) (Figures  in the application labeled "prior art" held to be an 
admission that what was  pictured was prior art relative to applicant's 
invention.). 


A JEPSON CLAIM RESULTS IN AN IMPLIED 
ADMISSION THAT PREAMBLE IS PRIOR ART 

        "The preamble elements in a Jepson-type claim (i.e., a claim of 
the  type discussed in 37 CFR 1.75(e); see MPEP w 608.01(m)) are impliedly 
admitted  to be old in the art, but it is only an implied admission." In 
re Ehrreich,  200 USPQ 504, 510 (CCPA 1979) (emphasis in original) 
(citations omitted). Claims  must be read in light of the specification. 
Where the specification confirms  that the subject matter of the preamble 
was invented by another before applicant's  invention, the preamble is 
treated as prior art. However, certain art may be  prior art to one 
inventive entity, but not to the public in general. In re  Fout, 213 USPQ 
532, 535-36 (CCPA 1982). This is the case when applicant has  made an 
improvement on his or her own prior invention. An applicant's own 
foundational  work should not, unless there is a statutory bar, be treated 
as prior art solely  because knowledge of this work is admitted. 
Therefore, when applicant explains  that the Jepson format is being used 
to avoid a double patenting rejection  over their own copending 
application, the implication that the pre- amble is  admitted prior art is 
overcome. Reading & Bates Construction Co. v. Baker Energy,  223 USPQ 1168 
(Fed. Cir. 1984). In re Fout, 213 USPQ 532, 535-36 (CCPA 1982) 
(The court held that the preamble was admitted prior art because the 
specification  explained that 
Paglaro, a different inventor, had invented the subject matter described 
in  the preamble.).< 


2131    Anticipation - Application of 35 U.S.C. 102(a), (b), and (e) [R-1] 

>35 U.S.C. 102.       Conditions for patentability; novelty and loss of 
right  to patent. 

        A person shall be entitled to a patent unless -- 

        (a)   the invention was known or used by others in this country, 
or  patented or described in a printed publication in this or a foreign 
country,  before the invention thereof by the applicant for a patent, or 

        (b)   the invention was patented or described in a printed 
publication  in this or a foreign country or in public use or on sale in 
this country, more  than one year prior to the date of application for 
patent in the United States,  or 

        (c)   he has abandoned the invention, or 

        (d)   the invention was first patented or caused to be patented, 
or  was the subject of an inventor's certificate, by the applicant or his 
legal  representatives or assigns in a foreign country prior to the date 
of the application  for patent in this country on an application for 
patent or inventor's certificate  filed more than twelve months before the 
filing of the application in the United  States, or 

        (e)   the invention was described in a patent granted on an 
application  for patent by another filed in the United States before the 
invention thereof  by the applicant for patent, or on an international 
application by another  who has fulfilled the requirements of paragraphs 
(1), (2), and (4) of section  371(c) of this title before the invention 
thereof by the applicant for patent,  or 

        (f)   he did not himself invent the subject matter sought to be 
patented,  or (g) before the applicant's invention thereof the invention 
was made in this  country by another who had not abandoned, suppressed, or 
concealed it. In determining  priority of invention there shall be 
considered not only the respective dates  of conception and reduction to 
practice of the invention, but also the reasonable  diligence of one who 
was first to conceive and last to reduce to practice,  from a time prior 
to conception by the other. 

TO ANTICIPATE A CLAIM, THE REFERENCE MUST TEACH EVERY ELEMENT OF THE CLAIM 
        "A claim is anticipated only if each and every element as set 
forth  in the claim is found, either expressly or inherently described, in 
a single  prior art reference." 
Verdegaal Bros. v. Union Oil Co. of California, 2 USPQ2d 1051, 1053 (Fed. 
Cir.  1987). "The identical invention must be shown in as complete detail 
as is contained  in the ... claim." Richardson v. Suzuki Motor Co., 9 
USPQ2d 1913, 1920 (Fed.  Cir. 1989). The elements must be arranged as 
required by the claim, but this  is not an 
ipsissimis verbis test, i.e. identity of terminology is not required. In 
re  Bond, 15 USPQ2d 1566 (Fed. Cir. 1990). Note that, in some 
circumstances, it  is permissible to use multiple references in a 35 
U.S.C. 102 rejection. See  MPEP w 2131.01.< 


2131.01       Multiple Reference 35 U.S.C. 102 Rejections [R-1] 


>(a)    General rule 

IN SOME CIRCUMSTANCES MORE THAN ONE REFERENCE CAN BE USED IN A 102 
REJECTION 
        Normally, only one reference should be used in making a rejection 
under  35 U.S.C. 102. However, a 
35 U.S.C. 102 rejection over multiple references has been held to be 
proper  when the extra references are cited to (1) prove the primary 
reference contains  an "enabled disclosure"; (2) explain the meaning of a 
term used in the primary  reference; or (3) show that a characteristic not 
disclosed in the reference  is inherent. See paragraphs b-d below for more 
explanation of each circumstance. 
(b)   To prove reference contains an "enabled disclosure" 

EXTRA REFERENCES AND EXTRINSIC EVIDENCE CAN BE USED TO SHOW THE PRIMARY 
REFERENCE  CONTAINS AN "ENABLED DISCLOSURE" 

        When the claimed composition or machine is disclosed identically 
by  the reference, an additional reference may be relied on to show that 
the primary  reference has an "enabled disclosure." In re Samour, 197 USPQ 
1 (CCPA 1978)  and In re Donohue, 226 USPQ 619 (Fed. Cir. 1985) (Compound 
claims were rejected  under 35 U.S.C. 102(b) over a publication in view of 
two patents. The publication  disclosed the claimed compound structure 
while the patents taught methods of  making compounds of that general 
class. The applicant argued that there was  no motivation to combine the 
references because no utility was previously known  for the compound and 
that the 35 U.S.C. 102 rejection over multiple references  was improper. 
The court held that the publication taught all the elements of  the claim 
and thus motivation to combine was not required. The patents were  only 
submitted as evidence of what was in the public's possession before 
applicant's  invention.). 

(c)   To explain the meaning of a term used in the primary reference 
EXTRA REFERENCES OR OTHER EVIDENCE CAN BE USED TO SHOW MEANING OF A TERM 
USED  IN THE PRIMARY REFERENCE 

        Extrinsic evidence may be used to explain but not expand the 
meaning  of terms and phrases used in the reference relied upon as 
anticipatory of the  claimed subject matter. In re Baxter Travenol, 21 
USPQ2d 1281 (Fed. Cir. 1991) 
(Baxter Travenol's invention was directed to a blood bag system 
incorporating  a bag containing DEHP, an additive to the plastic which 
improved the bag's  red blood cell storage capability. The examiner 
rejected the claims over a  technical progress report by Becker which 
taught the same blood bag system  but did not expressly disclose the 
presence of DEHP. The report, however, did  disclose using commercial 
blood bags. It also disclosed the blood bag system  as "very similar to 
[Baxter] Travenol's commercial two bag blood container."  Extrinsic 
evidence (depositions, declarations and Baxter's own admissions)  showed 
that commercial blood bags, at the time Becker's report was written, 
contained DEHP. Therefore, one of ordinary skill in the art would have 
known  that "commercial blood bags" meant bags containing DEHP. The claims 
were thus  held to be anticipated.) 

(d)   To show that a characteristic not disclosed in the reference is 
inherent 

EXTRA REFERENCE OR EVIDENCE CAN BE USED TO SHOW AN INHERENT CHARACTERISTIC 
 OF THE THING TAUGHT BY THE PRIMARY REFERENCE 

        "To serve as an anticipation when the reference is silent about 
the  asserted inherent characteristic, such gap in the reference may be 
filled with  recourse to extrinsic evidence. Such evidence must make clear 
that the missing  descriptive matter is necessarily present in the thing 
described in the reference,  and that it would be so recognized by persons 
of ordinary skill." Continental  Can Co. USA v. Monsanto Co., 20 USPQ2d 
1746, 1749 (Fed. Cir. 1991)(The court  went on to explain that "this 
modest flexibility in the rule that `anticipation'  requires that every 
element of the claims appear in a single reference accommodates 
situations in which the common knowledge of technologists is not recorded 
in  the reference; that is, where technological facts are known to those 
in the  field of the invention, albeit not known to judges." Id. at 
1749-50.) Note  that, in other cases, the courts have held that there is 
no requirement that  those of ordinary skill in the art know of the 
inherent property. See MPEP w 2112 - w 2113 for case law on inherency. 
Also note that the critical date  of extrinsic evidence showing a 
universal fact need not antedate the filing  date. See MPEP 
w 2124.< 


2131.02       Genus-Species Situations [R-1] 


>A SPECIES WILL ANTICIPATE A CLAIM TO A GENUS 

        "A generic claim cannot be allowed to an applicant if the prior 
art  discloses a species falling within the claimed genus." The species in 
that  case will anticipate the genus. In re Slayter, 125 USPQ 345, 347 
(CCPA 1960);  In re 
Gosteli, 10 USPQ2d 1614 (Fed. Cir. 1989) (Gosteli claimed a genus of 21 
specific  chemical species of bicyclic thia-aza compounds in Markush 
claims. The prior  art reference applied against the claims disclosed two 
of the 
chemical species. The parties agreed that the prior art species would 
anticipate  the claims unless applicant was entitled to his foreign 
priority date.). 
A REFERENCE THAT CLEARLY NAMES THE CLAIMED SPECIES ANTICIPATES THE CLAIM 
NO  MATTER HOW MANY OTHER SPECIES ARE NAMED 

        A genus does not always anticipate a claim to a species within the 
 genus. However, when the species is clearly named, the species claim is 
anticipated  no matter how many other species are additionally named. Ex 
parte A, 17 USPQ2d  1716 (Bd. Pat. App. & Inter. 1990) (The claimed 
compound was named in a reference  which also disclosed 45 other 
compounds. The Board held that the comprehensiveness  of the listing did 
not negate the fact that the compound claimed was specifically  taught. 
The Board compared the facts to the situation in which the compound  was 
found in the Merck Index, saying that "the tenth edition of the Merck 
Index  lists ten thousand compounds. In our view, each and every one of 
those compounds  is `described' as that term is used in 
35 U.S.C. w 102(a), in that publication.") Id. at 1718; In re 
Sivaramakrishnan,  213 USPQ 441 (CCPA 1982) (The claims were directed to 
polycarbonate containing  cadmium laurate as an additive. The court upheld 
the Board's finding that a  reference specifically naming cadmium laurate 
as an additive amongst a list  of many suitable salts in polycarbonate 
resin anticipated the claims. The applicant  had argued that cadmium 
laurate was only disclosed as representative of the  salts and was 
expected to have the same properties as the other salts listed  while, as 
shown in the application, cadmium laurate had unexpected properties.  The 
court held that it did not matter that the salt was not disclosed as being 
 preferred, the reference still anticipated the claims and because the 
claim  was anticipated, the unexpected properties were immaterial.). 

A GENERIC CHEMICAL FORMULA WILL ANTICIPATE A CLAIMED SPECIES COVERED BY 
THE  FORMULA WHEN THE SPECIES CAN BE "AT ONCE ENVISAGED" FROM THE FORMULA 
        When the compound is not specifically named, but instead it is 
necessary  to select portions of teachings within a reference and combine 
them, e.g.,  select various substituents from a list of alternatives given 
for placement  at specific sites on a generic chemical formula to arrive 
at a specific composition,  anticipation can only be found if the classes 
of substituents are sufficiently  limited or well delineated. Ex parte A, 
17 USPQ2d 1716 (Bd. Pat. App. & Inter.  1990). If one of ordinary skill in 
the art is able to "at once envisage" the  specific compound within the 
generic chemical formula, the compound is anticipated.  One of ordinary 
skill in the art must be able to draw the structural formula  or write the 
name of each of the compounds included in the generic formula  before any 
of the compounds can be "at once envisaged." One may look to the 
preferred embodiments to determine which compounds can be anticipated. In 
re  Petering, 
133 USPQ 275 (CCPA 1962). 

        In In re Petering, 133 USPQ 275 (CCPA 1962), the prior art 
disclosed  a generic chemical formula "wherein X, Y, Z, P, and R' 
represent either hydrogen  or alkyl radicals, R a side chain containing an 
OH group." The court held that  this formula, without more, could not 
anticipate a claim to 7-methyl-9-[d,  l'-ribityl]-iso-alloxazine because 
the generic formula encompassed a vast number  and perhaps even an 
infinite number of compounds. However, the reference also  disclosed 
preferred substituents for X, Y, Z, R, and R' as follows: where X,  P, and 
R' are hydrogen, where Y and Z may be hydrogen or methyl, and where  R is 
one of eight specific isoalloxazines. The court determined that this more 
limited generic class consisted of about 20 compounds. The limited number 
of  compounds covered by the preferred formula in combination with the 
fact that  the number of substituents was low at each site, the ring 
positions were limited,  and there was a large unchanging structural 
nucleus, resulted in a finding  that the reference sufficiently described 
"each of the various permutations  here involved as fully as if he had 
drawn each structural formula or had written  each name." The claimed 
compound was 1 of these 20 compounds. Therefore, the  reference 
"described" the claimed compound and the reference anticipated the  claims. 

        In In re Schauman, 197 USPQ 5 (CCPA 1978), claims to a specific 
compound  were anticipated because the prior art taught a generic formula 
embracing a  limited number of compounds closely related to each other in 
structure and  the properties possessed by the compound class of the prior 
art was that disclosed  for the claimed compound. The broad generic 
formula seemed to describe an infinite  number of compounds but claim 1 
was limited to a structure 
with only one variable substituent R. This substituent was limited to low 
alkyl  radicals. One of ordinary skill in the art would at once envisage 
the subject  matter within claim 1 of the reference.). 

        Compare In re Meyer, 599 F.2d 1026, 202 USPQ 175 (CCPA 1979) (A 
reference  disclosing "alkaline chlorine or bromine solution" embraces a 
large number  of species and cannot be said to anticipate claims to 
"alkali metal hypochlorite.");  Akzo N.V. v. International Trade Comm'n, 1 
USPQ2d 1241 (Fed. Cir. 1986) (Claims  to a process for making aramid 
fibers using a 98% solution of sulfuric acid  were not anticipated by a 
reference which disclosed using sulfuric acid solution  but which did not 
disclose using a 98% concentrated sulfuric acid solution.).  See MPEP 
w 2144.08 for a discussion of obviousness in genus-species situations.< 

2131.03       Anticipation of Ranges [R-1] 


>A SPECIFIC EXAMPLE IN THE PRIOR ART WHICH IS WITHIN A CLAIMED RANGE 
ANTICIPATES  THE RANGE 

        "When, as by a recitation of ranges or otherwise, a claim covers 
several  compositions, the claim is `anticipated' if one of them is in the 
prior art."  Titanium Metals Corp. v. Banner, 227 USPQ 773 (Fed. Cir. 
1985) (citing In re  Petering, 301 F.2d 676, 682, 133 USPQ 275, 280 (CCPA 
1962))(emphasis in original) 
(Claims to titanium (Ti) alloy with 0.6-0.9% nickel (Ni) and 0.2-0.4% 
molybdenum 
(Mo) were held anticipated by a graph in a Russian article on Ti-Mo-Ni 
alloys  because the graph contained an actual data point corresponding to 
a Ti alloy  containing 0.25% Mo and 0.75% Ni and this composition was 
within the claimed  range of compositions.). 

PRIOR ART WHICH TEACHES A RANGE WITHIN, OVERLAPPING, OR TOUCHING THE 
CLAIMED  RANGE ANTICIPATES IF THE PRIOR ART RANGE DISCLOSES THE CLAIMED 
RANGE WITH "SUFFICIENT  SPECIFICITY" 

        When the prior art discloses a range which touches, overlaps or is 
 within the claimed range, but no specific examples falling within the 
claimed  range are disclosed, a case by case determination must be made as 
to anticipation.  In order to anticipate the claims, the claimed subject 
matter must be disclosed  in the reference with "sufficient specificity to 
constitute an anticipation  under the statute." What constitutes a 
"sufficient specificity" is fact dependent.  If the claims are directed to 
a narrow range, the reference teaches a broad  range, and there is 
evidence of unexpected results within the claimed narrow  range, depending 
on the other facts of the case, it may be reasonable to conclude  that the 
narrow range is not disclosed with "sufficient specificity" to constitute 
an anticipation of the claims. The unexpected results may also render the 
claims  unobvious. The question of "sufficient specificity" is similar to 
that of "clearly  envisaging" a species from a generic teaching. See MPEP 
w 2131.02. A 35 U.S.C.  102/103 combination rejection is permitted if it 
is unclear if the reference  teaches the range with "sufficient 
specificity." The examiner must, in this  case, provide reasons for 
anticipation as well as a motivational statement  regarding obviousness. 
Ex parte Lee, 
31 USPQ2d 1105 (Bd. Pat. App. & Inter. 1993) (expanded Board). For a 
discussion  of the obviousness of ranges see MPEP w 2144.05.< 


2131.04       Secondary Considerations [R-1] 


>EVIDENCE OF SECONDARY CONSIDERATIONS CANNOT OVERCOME A 35 U.S.C. 102 
REJECTION 
        Evidence of secondary considerations, such as unexpected results 
or  commercial success, is irrelevant to 
35 U.S.C. 102 rejections and thus cannot overcome a rejection so based. In 
 re Wiggins, 179 USPQ 421, 
425 (CCPA 1973).< 


2131.05       Nonanalogous Art [R-1] 


>ART CANNOT BE "NONANALOGOUS ART" WHEN IT ANTICIPATES THE CLAIM 

        "Arguments that the alleged anticipatory prior art is 
`nonanalogous  art' or `teaches away from the invention' or is not 
recognized as solving the  problem solved by the claimed invention, [are] 
not `germane' to a rejection  under section 102." Twin Disc, Inc. v. U. 
S., 231 USPQ 417, 424 (Cl. Ct. 1986) 
(quoting In re Self, 213 USPQ 1, 
7 (CCPA 1982)).< 


2132    35 U.S.C. 102(a) [R-1] 


>35 U.S.C. 102      Conditions for patentability; novelty and loss of 
right  to patent. 

        A person shall be entitled to a patent unless -- 

        (a)   the invention was known or used by others in this country, 
or  patented or described in a printed publication in this or a foreign 
country,  before the invention thereof by the applicant for a patent. 

***** 

(a)   "Known or used..." 

"KNOWN OR USED" MEANS PUBLICLY KNOWN OR USED 

        "The statutory language known or used by others in this country' 
(35  U.S.C. w 102(a)), means knowledge 
or use which is accessible to the public." Carella v. 
Starlight Archery, 231 USPQ 644 (Fed. Cir. 1986). The knowledge or use is 
accessible  to the public if there has been no deliberate attempt to keep 
it secret. W.  L. Gore & Assoc. v. Garlock, Inc., 220 USPQ 303 (Fed. Cir. 
1983). 
        See MPEP w 2128 - w 2128.02 for case law concerning public 
accessibility  of publications. 

ANOTHER'S SALE OF A PRODUCT MADE BY A SECRET PROCESS CAN BE A 35 U.S.C. 
102(a)  PUBLIC USE IF THE PROCESS CAN BE DETERMINED BY EXAMINING THE 
PRODUCT 
        "The nonsecret use of a claimed process in the usual course of 
producing  articles for commercial purposes is a public use." But a secret 
use of the  process coupled with the sale of the product does not result 
in a public use  of the process unless the public could learn the claimed 
process by examining  the product. Therefore, secret use of a process by 
another, even if the product  is commercially sold, cannot result in a 
rejection under 35 U.S.C. 102(a) if  an examination of the product would 
not reveal the process. W.L. Gore & Assoc.  v. Garlock, Inc., 220 USPQ 303 
(Fed. Cir. 1983). 

(b)   "In this country" 

ONLY KNOWLEDGE OR USE IN THE U.S. CAN BE USED IN A 35 U.S.C. 102(a) 
REJECTION 
        The knowledge or use relied on in a 35 U.S.C. 102(a) rejection 
must  be knowledge or use "in this country." Prior knowledge or use which 
is not  present in the United States, even if widespread in a foreign 
country, cannot  be the basis of a rejection under 35 U.S.C. 102(a). In re 
Ekenstam, 118 USPQ 349 (CCPA 1958). Note that the changes made to 35 
U.S.C. 104 by NAFTA 
(Public Law 103-182) and Uruguay Round Agreements Act (Public Law 103-465) 
 do not modify the meaning of "in this country" as used in 35 U.S.C. 
102(a)  and thus "in this country" still means in the United States for 
purposes of  35 U.S.C. 102(a) rejections. 

(c)   "By others" 

"OTHERS" MEANS ANY COMBINATION OF AUTHORS OR INVENTORS DIFFERENT THAN THE 
INVENTIVE  ENTITY 

        The term "others" in 35 U.S.C. 102(a) refers to any entity which 
is  different from the inventive entity. The entity need only differ by 
one person  to be "by others." This holds true for all types of references 
eligible as  prior art under 
35 U.S.C. 102(a) including publications as well as public knowledge and 
use.  Any other interpretation of 35 U.S.C. 102(a) "would negate the one 
year [grace]  period afforded under w 102(b)." In re Katz, 215 USPQ 14 
(CCPA 1982). 
(d)   "patented in this or a foreign country" 

        See MPEP w 2126 for information on the use of secret patents as 
prior  art.< 


2132.01       Publications as 35 U.S.C. 102(a) Prior Art [R-1] 


>35 U.S.C. 102(a) PRIMA FACIE CASE IS ESTABLISHED IF REFERENCE PUBLICATION 
 IS "BY OTHERS" 

        A prima facie case is made out under 35 U.S.C. 102(a) if, within 1 
 year of the filing date, the invention, or an obvious variant thereof, is 
described  in a "printed publication" whose authorship differs in any way 
from the inventive  entity unless it is stated within the publication 
itself that the publication  is describing the applicant's work. In re 
Katz, 215 USPQ 14 (CCPA 1982). See  MPEP w 2128 for case law on what 
constitutes a "printed publication." Note  that when the reference is a 
U.S. patent published within the year prior to  the application filing 
date, a 35 U.S.C. 102(e) rejection should be made. See  MPEP w 2136-w 
2136.05 for case law dealing with 102(e). 

APPLICANT CAN REBUT PRIMA FACIE CASE BY SHOWING REFERENCE'S DISCLOSURE WAS 
 DERIVED FROM APPLICANT'S OWN WORK 

        Applicant's disclosure of his or her own work within the year 
before  the application filing date cannot be used 
against him or her under 35 U.S.C. 102(a). In re Katz, 
215 USPQ 14 (CCPA 1982)(discussed below). Therefore, where the applicant 
is  one of the co-authors of a publication cited against his or her 
application,  the publication may be removed as a reference by the filing 
of affidavits made  out by the other authors establishing that the 
relevant portions of the publication  originated with, or were obtained 
from, applicant. Such affidavits are called  disclaiming affidavits. Ex 
parte Hirschler, 110 USPQ 384 (Bd. App. 1952). The  rejection can also be 
overcome by submission of a specific declaration by the  applicant 
establishing that the article is describing applicant's own work,  In re 
Katz, 215 USPQ 14 (CCPA 1982). However, if there is evidence that the 
co-author has refused to disclaim inventorship and believes himself or 
herself  to be an inventor, applicant's affidavit will not be enough to 
establish that  applicant is the sole inventor and the rejection will 
stand. Ex parte Kroger,  219 USPQ 370 (Bd. Pat. App. & Int. 1982) 
(discussed below). It is also possible  to overcome the rejection by 
adding the co-authors as inventors to the application  if the requirements 
of 35 U.S.C. 116, third paragraph are met. In re Searles,  164 USPQ 623 
(CCPA 1970). 

        In In re Katz, 215 USPQ 14 (CCPA 1982), Katz stated in a 
declaration  that the co-authors of the publication, Chiorazzi and Eshhar, 
"were students  working under the direction and supervision of the 
inventor, Dr. David H. Katz."  The court held that this declaration, in 
combination with the fact that the  publication was a research paper, was 
enough to establish Katz as the sole  inventor and that the work described 
in the publication was his own. In research  papers, students involved 
only with assay and testing are normally listed as  co-authors but are not 
considered co-inventors. 

        In Ex parte Kroger, 219 USPQ 370 (Bd. Pat. App. & Inter. 1982), 
Kroger,  Knaster and others were listed as authors on an article on 
photovoltaic power  generation. The article was used to reject the claims 
of an application listing  Kroger and Rod as inventors. Kroger and Rod 
submitted affidavits declaring  themselves to be the inventors. The 
affidavits also stated that Knaster merely  carried out assignments and 
worked under the supervision and direction of Kroger.  The Board stated 
that if this were the only evidence in the case, it would  be established, 
under In re Katz, that Kroger and Rod were the only inventors.  However, 
in this case, there was evidence that Knaster had refused to sign  an 
affidavit disclaiming inventorship and Knaster had introduced evidence 
into  the case in the form of a letter to the PTO in which he alleged that 
he was  a co-inventor. The Board held that the evidence had not been fully 
developed  enough to overcome the rejection. Note that the rejection had 
been made under  35 U.S.C. 102(f) but the Board treated the issue the same 
as if it had arisen  under 35 U.S.C. 102(a). See also case law dealing 
with overcoming 102(e) rejections  as presented in MPEP w 2136.05. Many of 
the issues are the same. 

A RULE 131 AFFIDAVIT CAN BE USED TO 
OVERCOME A 35 U.S.C. 102(a) REJECTION 

        When the reference is not a statutory bar under 
35 U.S.C. 102(b), (c), or (d), applicant can overcome the rejection by 
swearing  back of the reference through the submission of an affidavit 
under 37 CFR 1.131.  In re Foster, 145 USPQ (CCPA 1965). If the reference 
is disclosing applicant's  own work as derived from him or her, applicant 
may submit either a 37 CFR 1.131  affidavit to antedate the reference or a 
37 CFR 1.132 affidavit to show derivation  of the reference subject matter 
from applicant and invention by applicant.  In re Facius, 408 F.2d 1396, 
161 USPQ 294 (CCPA 1969). See MPEP w 715 for more  information on when an 
affidavit under 37 CFR 1.131 can be used to overcome  a reference and what 
evidence is required.< 


2133    35 U.S.C. 102(b) [R-1] 


>35 U.S.C. 102. Conditions for patentability; novelty and loss of right to 
 patent unless -- 

        A person shall be entitled to a patent unless -- 

**** 

        (b) the invention was patented or described in a printed 
publication  in this or a foreign country or in public use or on sale in 
this country, more  than one year prior to the date of application for 
patent in the United States. 
***** 

THE 1-YEAR GRACE PERIOD IS EXTENDED TO THE NEXT WORKING DAY IF IT WOULD 
OTHERWISE  END ON A HOLIDAY OR WEEKEND 

        Publications, patents, public uses and sales must occur "more than 
 one year prior to the date of application for patent in the United 
States"  in order to bar a patent under 35 U.S.C. 102(b). However, 
applicant's own activity  will not bar a patent if the 1-year grace period 
expires 
on a Saturday, Sunday, or Federal holiday and the application's U.S. 
filing  date is the next succeeding business day. Ex parte Olah, 131 USPQ 
41 (Bd. App.  1960). 

THE 1-YEAR TIME BAR IS MEASURED FROM THE U.S. FILING DATE 

        If one discloses his or her own work more than 1  year before the 
filing  of the patent application, that person is barred from obtaining a 
patent. In  re Katz, 
215 USPQ 14, 17 (CCPA 1982). The 1-year time bar is measured from the U.S. 
 filing date. Thus, applicant will be barred from obtaining a patent if 
the  public came into possession of the invention on a date before the 
1-year grace  period ending with the U.S. filing date. It does not matter 
how the public  came into possession of the invention. Public possession 
could occur by a public  use, public sale, a publication, a patent or any 
combination of these. In addition,  the prior art need not be identical to 
the claimed invention but will bar patentability  if it is an obvious 
variant thereof. In re Foster, 145 USPQ 166 (CCPA 1966).  See MPEP w 
706.02 regarding the effective U.S. filing date of an application.< 


2133.01       Rejections of Continuation-In-Part (CIP) Applications [R-1] 

>UNSUPPORTED CLAIMS IN A CONTINUATION-IN-PART CAN BE REJECTED UNDER 35 
U.S.C.  103 OR 35 U.S.C. 102(b) BY ANY REFERENCE AVAILABLE AS PRIOR ART 
MORE THAN 1  YEAR BEFORE THE CIP FILING DATE 

        When applicant files a continuation-in-part whose claims are not 
supported  by the parent application, the effective filing date is the 
filing date of  the child CIP. Any prior art disclosing the invention or 
an obvious variant  thereof having a critical reference date more than 1 
year prior to the filing  date of the child will bar the issuance of a 
patent under 35 U.S.C. 102(b),  Paperless Accounting v. Bay Area Rapid 
Transit System, 231 USPQ 649, 653 (Fed.  Cir. 1986).< 


2133.02       Rejections Based on Publications and Patents [R-1] 


>APPLICANT'S OWN WORK WHICH WAS AVAILABLE TO THE PUBLIC BEFORE THE GRACE 
PERIOD MAY BE USED IN A 35 U.S.C. 102(b) 
REJECTION 

        "Any invention described in a printed publication more than one 
year  prior to the date of a patent application is prior art under Section 
102(b),  even if the printed publication was authored by the patent 
applicant." De Graffenried  v. U.S., 16 USPQ2d 1321, 1330 n.7 (Cl. Ct. 
1990). "Once an inventor has decided  to lift the veil of secrecy from his 
[or her] work, he [or she] must choose  between the protection of a 
federal patent, or the dedication of his [or her]  idea to the public at 
large." Bonito Boats Inc. v. Thunder Craft Boats Inc.,  489 U.S. 141, 
9 USPQ2d 1847, 1851 (1989). 

A 35 U.S.C. 102(b) REJECTION CREATES A 
STATUTORY BAR TO PATENTABILITY OF 
THE REJECTED CLAIMS 

        A rejection under 35 U.S.C. 102(b) cannot be overcome by 
affidavits  and declarations under 37 CFR 1.131 (Rule 131 Declarations), 
foreign priority  dates, or evidence that applicant himself invented the 
subject matter. Outside  the 1-year grace period, applicant is barred from 
obtaining a patent containing  any anticipated or obvious claims. In re 
Foster, 145 USPQ 166, 170 (CCPA 1965).< 

2133.03       Rejections Based on "Public Use" or "On Sale" [R-1] 

        >35 U.S.C. 102(b) "contains several distinct bars to 
patentability,  each of which relates to activity or disclosure more than 
one year prior to  the date of the application. Two of these - the `public 
use' and the `on sale'  objections - are sometimes considered together 
although it is quite clear that  either may apply when the other does 
not." Dart Industries v. E.I. du Pont  de Nemours & Co., 179 USPQ 392, 396 
(7th Cir. 1973). There may be a public  use of an invention absent any 
sales activity. Likewise, there may be a nonpublic,  e.g., "secret," sale 
or offer to sell an invention which nevertheless constitutes  a statutory 
bar. Hobbs v. United States, 171 USPQ 713, 
720 (5th Cir. 1971). 

        In similar fashion, not all "public use" and "on sale" activities 
will  necessarily occasion the identical result. Although both activities 
affect  how an inventor may use an invention prior to the filing of a 
patent application,  "non-commercial" 35 U.S.C. 102(b) activity may not be 
viewed the same as similar  "commercial" activity. See MPEP w 2133.03(a) 
and w 2133.03(e)(1). Likewise, "public use" activity by an applicant may 
not be considered in the same light  as similar "public use" activity by 1 
other than an applicant. See MPEP w 2133.03(a)  and w 2133.03(e) (7). 
Additionally, the concepts of "completion" and "experimental  use" have 
differing significance in "commercial" and "non-commercial" environments. 
See MPEP w 2133.03(c) and w 2133.03(e) - w 2133.03(e)(6). 

        It should be noted that 35 U.S.C. 102(b) may create a bar to 
patentability  either alone, if the device in public use or placed on sale 
anticipates a later  claimed invention or, in conjunction with 35 U.S.C. 
103, if the claimed invention  would have been obvious from the device in 
conjunction with the prior art.  LaBounty Mfg. v. I.T.C., 22 USPQ2d 1025, 
1028 (Fed. Cir. 1992). 

 POLICY CONSIDERATIONS 

        (1)   "One policy underlying the [on-sale] bar is to obtain 
widespread  disclosure of new inventions to the public via patents as soon 
as possible."  RCA Corp. v. Data Gen. Corp., 12 USPQ2d 1449, 1454 (Fed. 
Cir. 1989). 
        (2)   The public use and on-sale bars are meant to prevent the 
inventor  from commercially exploiting the exclusivity of his [or her] 
invention substantially  beyond the statutorily authorized period. RCA 
Corp. v. Data Gen. Corp., 12  USPQ2d 1449, 1454 (Fed. Cir. 1989).  See 
MPEP w 2133.03(e)(1). 

        (3)   Another underlying policy for the public use and on-sale 
bars  is to discourage "the removal of inventions from the public domain 
which the  public justifiably comes to believe are freely available." 
Manville Sales Corp.  v. Paramount Sys. Inc., 16 USPQ2d 1587, 1591 (Fed. 
Cir. 1990).< 


2133.03(a)  "Public Use" [R-1] 


>ONE USE IN THE PUBLIC DOMAIN BY ONE PERSON MAY BAR A PATENT 

        "[T]o constitute the public use of an invention it is not 
necessary  that more than one of the patent articles should be publicly 
used. The use  of a great number may tend to strengthen the proof, but one 
well defined case  of such use is just as effectual to annul the patent as 
many." Likewise, it  is not necessary that more than one person use the 
invention. Egbert v. Lippmann,  104 U.S. 333, 
336 (1881). 

PUBLIC KNOWLEDGE IS NOT NECESSARILY PUBLIC USE UNDER 35 U.S.C. 102(b) 
        Mere knowledge of the invention by the public does not warrant 
rejection  under 35 U.S.C. 102(b). 35 U.S.C. 102(b) bars public use or 
sale, not public  knowledge. 
T.P. Lab. v. Professional Positions, Inc., 220 USPQ 577, 581 (Fed. Cir. 
1984). 
        Note, however, that public knowledge may provide grounds for 
rejection  under 35 U.S.C. 102(a). See MPEP w 2132 for information on 35 
U.S.C. 102(a). 

i.  Commercial versus noncommercial use and the impact of secrecy 
"PUBLIC USE" AND "NON-SECRET USE" ARE NOT NECESSARILY SYNONYMOUS 

        "Public" is not necessarily synonymous with "non-secret." The fact 
 "that non-secret uses of the device were made [by the inventor or someone 
connected  with the inventor] prior to the critical date is not itself 
dispositive of  the issue of whether activity barring a patent under 35 
U.S.C. 102(b) occurred.  The fact that the device was not hidden from view 
may make the use not secret,  but nonsecret use is not ipso facto `public 
use' activity. Nor, it must be  added, is all secret use ipso facto not 
`public use' within the meaning of  the statute," if the inventor is 
making commercial use of the invention under  circumstances which preserve 
its secrecy. TP Lab. v. Professional Positioners,  Inc., 220 USPQ 577, 583 
(Fed. Cir. 1983) (citations omitted). 

EVEN IF THE INVENTION IS HIDDEN, INVENTOR WHO PUTS MACHINE OR ARTICLE 
EMBODYING  THE INVENTION IN PUBLIC VIEW IS BARRED FROM OBTAINING A PATENT 
AS THE INVENTION  IS IN PUBLIC USE 

        When the inventor or someone connected to the inventor puts the 
invention  on display or sells it, there is a ``public use" within the 
meaning of 35 U.S.C.  102(b) even though by its very nature an invention 
is completely hidden from  view as part of a larger machine or article, if 
the invention is otherwise  used in its natural and intended way and the 
larger machine or article is accessible  to the public. In re Blaisdell, 
113 USPQ 289, 292 (CCPA 1957); Hall v. Macneale,  107 U.S. 90, 96-97 
(1882); Ex parte Kuklo, 25 USPQ2d 1387, 1390 (Bd. Pat. App.  & Inter. 
1992) (Display of equipment including the structural 
features of the claimed invention to visitors of laboratory is public use 
even  though public did not see inner workings of device. The person to 
whom the  invention is publicly disclosed need not understand the 
significance and technical  complexities of the invention.). 

THERE IS NO PUBLIC USE IF INVENTOR RESTRICTED USE TO LOCATIONS WHERE THERE 
 WAS A REASONABLE EXPECTATION OF PRIVACY AND THE USE WAS FOR HIS OR HER 
OWN  ENJOYMENT 

        An inventor's private use of the invention, for his or her own 
enjoyment  is not a public use. Moleculon Research Corp. v. CBS, Inc., 229 
USPQ 803, 809 
(Fed. Cir. 1986) (Inventor showed inventive puzzle to close friends while 
in  his dorm room and later the president of the company at which he was 
working  saw the puzzle on the inventor's desk and they discussed it. 
Court held that  the inventor retained control and thus these actions did 
not result in a "public  use."). 

ii.   Use by third parties deriving the invention from applicant 

AN INVENTION IS IN PUBLIC USE IF THE INVENTOR ALLOWS ANOTHER TO USE THE 
INVENTION  WITHOUT RESTRICTION OR OBLIGATION OF SECRECY 

        "Public use" of a claimed invention under 35 U.S.C. 102(b) occurs 
when  the inventor allows another person to use the invention without 
limitation,  restriction or obligation of secrecy to the inventor." In re 
Smith, 218 USPQ 976, 983 (Fed. Cir. 1983). The presence or absence of a 
confidentiality  agreement is not itself determinative of the public use 
issue, but is one factor  to be considered along with the time, place, and 
circumstances of the use which  show the amount of control the inventor 
retained over the invention. Moleculon  Research Corp. v. CBS, Inc., 229 
USPQ 803, 809 (Fed. Cir. 1986). See Ex parte  C, 27 USPQ2d 1492, 1499 (Bd. 
Pat. App. & Inter. 1992) (Inventor sold inventive  soybean seeds to 
growers who contracted and were paid to plant the seeds to  increase stock 
for later sale. The commercial nature of the use of the seed  coupled with 
the "on-sale" aspects of the contract and apparent lack of confidentiality 
 requirements rose to the level of a "public use" bar.); Egbert v. 
Lippmann,  104 U.S. 333, 336 (1881) (Public use found where inventor 
allowed another to  use inventive corset insert, though hidden from view 
during use, because he  did not impose an obligation of secrecy or 
restrictions on its use.). 
iii.    Use by independent third parties 

USE BY AN INDEPENDENT THIRD PARTY IS PUBLIC USE IF IT SUFFICIENTLY 
"INFORMS"  THE PUBLIC OF THE INVENTION OR A COMPETITOR COULD REASONABLY 
ASCERTAIN THE  INVENTION 

        Any "nonsecret" use of an invention by someone unconnected to the 
inventor,  such as someone who has independently made the invention, in 
the ordinary course  of a business for trade or profit may be a "public 
use," Bird Provisions Co.  v. Owens Country Sausage, 197 USPQ 134, 138-40 
(5th Cir. 1978). Additionally,  even a "secret" use by another inventor of 
a machine or process to make a product  is "public" if the details of the 
machine or process are ascertainable by inspection  or analysis of the 
product that is sold or publicly displayed, Gillman v. Stern,  46 USPQ 430 
(2d Cir. 1940); Dunlop Holdings v. Ram Golf Corp., 188 USPQ 481,  483-484 
(7th Cir. 1975). However, if the details of an inventive process are  not 
ascertainable from the product sold or displayed and the third party has 
kept the invention as a trade secret then that use is not a public use and 
 will not bar a patent issuing to someone unconnected to the user. W.L. 
Gore  & Assocs. v. Garlock, Inc., 220 USPQ 303, 310 (Fed. Cir. 1983). The 
extent  that the public becomes "informed" of  an invention involved in 
public use  activity by one other than an applicant depends upon the 
factual circumstances  surrounding the activity and how these comport with 
the policies underlying  the on sale and public use bars. Manville Sales 
Corp. v. Paramount Sys. Inc., 16 USPQ2d 1587, 1591 (Fed. Cir. 1990) 
(quoting King 
Instrument Corp. v. Otari Corp., 226 USPQ 402, 406 (Fed Cir. 1985)). By 
way  of example, in an allegedly "secret" use by a third party other than 
an applicant,  if a large number of employees of such a party, who are not 
under a promise  of secrecy, are permitted unimpeded access to an 
invention, with affirmative  steps by the party to educate other employees 
as to the nature of the invention,  the public is "informed." Chemithon 
Corp. v. Proctor & Gamble Co., 159 USPQ  139, 154 (D.Md. 1968), aff'd., 
165 USPQ 678 (4th Cir. 1970). 

        Even if public use activity by one other than an applicant is not 
sufficiently  "informing," there may be adequate grounds upon which to 
base a rejection under 35 U.S.C. 102(f) and 35 U.S.C. 102(g). See Dunlop 
Holdings v. Ram Golf Corp., 188 USPQ 481 (7th Cir. 1975). See MPEP w 2137 
and  w 2138 for more information on cases construing 35 U.S.C. 102(f) and 
102(g).< 

2133.03(b)  "On Sale" [R-1] 


THE BASIC TEST 

        >An impermissible sale has occurred if there was a definite sale, 
or  offer to sell, more than 1 year before the effective filing date of 
the U.S.  application and the subject matter of the sale, or offer to 
sell, fully anticipated  the claimed invention or would have rendered the 
claimed invention obvious  by its addition to the prior art. Ferag AG v. 
Quipp Inc., 33 USPQ2d 1512, 1514 
(Fed. Cir. 1995). 

i.  The meaning of "sale" 

        A sale is a contract between parties wherein the seller agrees "to 
 give and to pass rights of property" in re-turn for the buyer's payment 
or  promise "to pay the seller for the things bought or sold." In re 
Caveney, 226  USPQ 1, 4 (Fed. Cir. 1985). 

CONDITIONAL SALE MAY BAR A PATENT 

        An invention may be deemed to be "on sale" even though the sale 
was  conditional. The fact that the sale is conditioned on buyer 
satisfaction does  not, without more, prove that the sale was for an 
experimental purpose. Strong  v. General Elec. Co., 168 USPQ 8, 12 (5th 
Cir. 1970). 

NONPROFIT SALE MAY BAR A PATENT 

        A "sale" need not be for profit to bar a patent. If the sale was 
for  the commercial exploitation of the invention, it is "on sale" within 
the meaning  of 35 U.S.C. 102(b). In re Dybel, 187 USPQ 593, 599 (CCPA 
1975) ("Although  selling the devices for a profit would have demonstrated 
the purpose of commercial  exploitation, the fact that appellant realized 
no profit from the sales does  not demonstrate the contrary."). 

A SINGLE SALE OR OFFER TO SELL MAY BAR A PATENT 

        Even a single sale or offer to sell the invention may bar 
patentability  under 35 U.S.C. 102(b). Consolidated Fruit-Jar Co. v. 
Wright, 94 U.S. 92, 94 
(1876); Atlantic Thermoplastics Co. v. Faytex Corp., 23 USPQ2d 1481, 1483 
(Fed.  Cir. 1992). 

A SALE OF RIGHTS IS NOT A SALE OF THE INVENTION AND WILL NOT IN ITSELF BAR 
 A 
PATENT 

        "An assignment or sale of the rights, such as patent rights, in 
the  invention is not a sale of `the invention' within the meaning of 
section 102(b)."  The sale must involve the delivery of the physical 
invention itself. Moleculon  Research Corp. v. CBS, Inc., 229 USPQ 805, 
809 (Fed. Cir. 1986). 

BUYER MUST BE UNCONTROLLED BY THE SELLER OR OFFERER 

        A sale or offer for sale must take place between separate 
entities.  In re Caveney, 226 USPQ 1, 4 (Fed. Cir. 1985). "Where the 
parties to the alleged  sale are related, whether there is a statutory bar 
depends on whether the seller  so controls the purchaser that the 
invention remains out of the public's hands.  Ferag AG v. Quipp Inc., 33 
USPQ2d 1512, 1515 (Fed. Cir. 1995) ( Where the seller  is a parent company 
of the buyer company, but the President of the buyer company  had 
"essentially unfettered" management authority over the operations of the 
buyer company, the sale was a statutory bar.). 

ii.   Offers for sale 

A REJECTED OR UNRECEIVED OFFER FOR SALE IS ENOUGH TO BAR A PATENT 
        Since the statute creates a bar when an invention is placed "on 
sale,"  a mere offer to sell is sufficient commercial activity to bar a 
patent. In  re Theis, 204 USPQ 188, 192 (CCPA 1979). Even a rejected offer 
may create an  on sale bar. UMC Elecs. v. United States, 2 USPQ2d 1465, 
1469 (Fed. Cir. 1987).  In fact, the offer need not even be actually 
received by a prospective purchaser.  Wende v. Horine, 225 F. 501 (7th 
Cir. 1915). 



DELIVERY OF THE OFFERED ITEM IS NOT REQUIRED 

        "It is not necessary that a sale be consummated for the bar to 
operate."  Buildex v. Kason Indus., 7 USPQ2d 1325, 1327-28 (Fed. Cir. 
1988) (citations  omitted). 

SELLER NEED NOT HAVE THE GOODS "ON HAND" WHEN THE OFFER FOR SALE IS MADE 
        Goods need not be "on hand" and transferred at the time of the 
sale  or offer. The date of the offer for sale is the effective date of 
the "on sale"  activity. J. A. La Porte, Inc. v. Norfolk Dredging Co., 229 
USPQ 435, 438 (Fed.  Cir. 1986). However, the invention must be more than 
a mere conception and  at least close to completeness (see MPEP w 
2133.03(c)) before the critical  date. UMC Elecs. v. United States, 2 
USPQ2d 1465 (Fed. Cir. 1987). See also  Shatterproof Glass Corp. v. 
Libbey-Owens Ford Co., 225 USPQ 634 (Fed. Cir.  1985) (Where there was no 
evidence that the samples shown to the potential  customers were made by 
the new process and apparatus, the offer to sell did  not rise to the 
level of an on sale bar.). Compare Barmag Barmer Maschineenfabrik  AG v. 
Murata Mach., Ltd., 221 USPQ 561 (Fed. Cir. 1984) (Where a "make shift" 
model of the inventive product was shown to the potential purchasers in 
conjunction  with the offer to sell, the offer was enough to bar a patent 
under 35 U.S.C.  102(b).). 

iii.    Sale by inventor, assignee or others associated with the inventor 
in  the course of business 

SALE ACTIVITY NEED NOT BE PUBLIC 

        Unlike questions of public use, there is no requirement that "on 
sale"  activity be "public." "Public" as used in 35 U.S.C. 102(b) modifies 
"use" only.  "Public" does not modify "sale." Hobbs v. United States, 171 
USPQ 713, 720 
(5th Cir. 1971). 

INVENTOR'S CONSENT TO THE SALE IS NOT A PREREQUISITE TO FINDING AN ON SALE 
 BAR 

        If the invention was placed on sale by a third party who obtained 
the  invention from the inventor, a patent is barred even if the inventor 
did not  consent to the sale or have knowledge that the invention was 
embodied in the  sold article. Electric Storage Battery Co. v. Shimadzu, 
307 U.S. 5, 41 USPQ 155 (1938); In re Blaisdell, 
113 USPQ 289, 292 (CCPA 1957); C.T.S. Corp. v. Electro Mat'ls., 202 USPQ 
22,  38 (S.D.N.Y. 1979). 

OBJECTIVE EVIDENCE OF INTENT TO SELL IS NEEDED 

        In determining if a sale or offer to sell has occurred a key 
question  to ask is whether, under the totality of the circumstances, the 
inventor placed  his or her invention on sale, objectively manifested by a 
sale or offer for  sale of a product that embodies the invention claimed 
in the application. Objective  evidence such as a description of the 
inventive product in the contract of  sale or in another communication 
with the purchaser controls over an uncommunicated  intent by the seller 
to deliver the inventive product under the contract for  sale. Ferag AG v. 
Quipp Inc., 33 USPQ2d 1512, 1516 (Fed. Cir. 1995) (On sale  bar found 
where initial negotiations and agreement containing contract for  sale 
neither clearly specified nor precluded use of the inventive design but 
an order confirmation more than 1 year prior to filing of patent 
application  for the inventive design did specify use of inventive 
design.). The purchaser  need not have actual knowledge of the invention 
for it to be on sale. "For  example, merely offering to sell a product by 
way of an advertisement or invoice  may be evidence of a definite offer 
for sale or a sale of a claimed invention  even though no details are 
disclosed. That the offered product is in fact the  claimed invention may 
be established by any relevant evidence, such as memoranda,  drawings, 
correspondence, and testimony of witnesses." RCA Corp. v. Data Gen. 
Corp., 12 USPQ2d 1449, 1452 (Fed. Cir. 1989). However, "what the purchaser 
 reasonably believes the inventor to be offering is relevant to whether, 
on  balance, the offer objectively may be said to be of the patented 
invention."  Envirotech Corp. v. Westech Eng'g Inc., 15 USPQ2d 1230, 1234 
(Fed. Cir. 1990) 
(Where a proposal to supply a general contractor with a product did not 
mention  a new design but, rather, referenced a prior art design, the 
uncommunicated  intent of the supplier to supply the new design if awarded 
the contract did  not constitute an "on sale" bar to a patent on the new 
design, even though  the supplier's bid reflected the lower cost of the 
new design.). 

iv.   Sales by independent third parties 

SALES OR OFFERS FOR SALE BY INDEPENDENT THIRD PARTIES WILL BAR A PATENT 
        Sale or offer for sale of the invention by an independent third 
party  more than 1 year before the filing date of applicant's patent will 
bar applicant  from obtaining a patent. "An exception to this rule exists 
where a patented  method is kept secret and remains secret after a sale of 
the unpatented product  of the method. Such a sale prior to the critical 
date is a bar if engaged in  by the patentee or patent applicant, but not 
if engaged in by another." In  re Caveney, 226 USPQ 1, 3-4 (Fed. Cir. 1985). 

NONPRIOR ART PUBLICATIONS CAN BE USED AS EVIDENCE OF SALE BEFORE THE 
CRITICAL  DATE 

        Abstracts identifying a product's vendor containing information 
useful  to potential buyers such as whom to contact, price terms, 
documentation, warranties,  training and maintenance along with the date 
of product release or installation  before the inventor's critical date 
may provide sufficient evidence of prior  sale by a third party to support 
a rejection based on 35 U.S.C. 102(b) or 103.  In re Epstein, 31 USPQ2d 
1817 (Fed. Cir. 1994) (Examiner's rejection was based  on nonprior art 
published abstracts which disclosed software products meeting  the claims. 
The abstracts specified software release dates and dates of first 
installation which were more than 
1 year before applicant's filing date.).< 


2133.03(c)  The "Invention" [R-1] 


>35 U.S.C. 102. Conditions for patentability; novelty and loss of right to 
 patent. 

        A person shall be entitled to a patent unless - 

***** 

        (b) the invention was0in public use or on sale in this country, 
more  than one year prior to the date of the application for patent in the 
United  States 

***** 

i.  Level of completeness required 

        The level of completion required likely will differ in cases of 
"public  use" which are not intertwined with a sale. UMC Elecs. Co. v. 
United States,  2 USPQ2d 1465, 1468 n.6 (Fed. Cir. 1987)). The court 
decisions do not address  the level required in pure "public use" cases 
but it is unlikely that the invention  can be publicly used without a 
working embodiment. The case law presented below  is directed to "on sale" 
situations. 

THE INVENTION NEED NOT BE "COMPLETE" OR "REDUCED TO PRACTICE" AT THE TIME 
OF  THE SALE 

        If the invention was actually reduced to practice before being 
sold  or offered for sale more than 1 year before filing of the 
application, a patent  will be barred. In re Hamilton, 11 USPQ2d 1890, 
1893 (Fed. Cir. 1989). Actual  reduction to practice in this context 
usually requires testing under actual  working conditions in such a way as 
to demonstrate the practical utility of  an invention for its intended 
purpose beyond the probability of failure, unless  by virtue of the very 
simplicity of an invention its practical operativeness  is clear. Field v. 
Knowles, 
86 USPQ 373, 379 (CCPA 1950); Steinberg v. Seitz, 
186 USPQ 209, 212 (CCPA 1975). 

        A reduction to practice of the claimed invention is not an 
absolute  requirement of the on sale bar. KeyStone Retaining Wall Sys. 
Inc. v. Westrock  Inc., 27 USPQ2d 1297, 1303 (Fed. Cir. 1993). Sometimes 
"something less than  a complete embodiment of the invention will 
suffice." However, the offering  for sale of a mere conception of the 
invention before the critical date is  not enough. One must look at the 
totality of the circumstances and what they  show as to whether the 
inventor was attempting to commercialize the invention  and thereby 
impermissibly extend the patent term or other- wise contravene  any other 
of the policies furthered by the "on sale" bar. UMC Elecs. Co. v.  United 
States, 
2 USPQ2d 1465, 1471-72 (Fed. Cir. 1987). In UMC Elecs. Co., the court held 
 that the invention, while uncompleted before the critical date, was on 
sale  within the meaning of 35 U.S.C. 102(b) and enunciated several 
factors leading  to its decision. The development of the subject invention 
was far beyond a  mere conception. Much of the invention was embodied in 
tangible form. The prior  art devices embodied each element of the claimed 
invention, save one, and that  portion was and had been sufficiently 
tested to demonstrate to the satisfaction  of the inventor that the 
invention as ultimately claimed would work for its  intended purpose. 



DEPENDS ON HOW CERTAIN THE INVENTOR IS OF THE NATURE AND USEFULNESS OF THE 
DEVICE 
        Even if the inventor has not translated his or her invention into 
a  working device, the invention may be sufficiently complete to create an 
"on  sale" bar. Philco Corp. v. Admiral Corp., 131 USPQ 413, 430 (D. Del. 
1961).  "What is required is that the inventor have some certainty as to 
the nature  and usefulness of the finished product." In other words, "the 
invention must  have been `sufficiently tested to demonstrate that it will 
work for its intended  purpose.' " Shatterproof Glass Corp. v. 
Libbey-Owens Ford Co., 225 USPQ 634,  640 (Fed. Cir. 1985). 

Circumstances showing certainty 

        If, at the time the device is offered for sale, the inventor is 
close  to production of the device embodied in the claims and both the 
seller and  offerer know what is to be sold, the invention is sufficiently 
complete to  give rise to an on-sale bar. Philco Corp. v. Admiral Corp., 
131 USPQ 413, 430 (D. Del. 1961). 

        Where the evidence establishes that an inventor's confidence in an 
 invention is shared by a party to whom the inventor has shown specific 
drawings,  which in turn precipitated initial commercial activity relative 
to the invention  by the other party, the invention is sufficiently 
"complete" to invoke an "on  sale" bar. Langsett v. 
Marmet Corp., 141 USPQ 903, 910-11 (W.D. Wisc. 1964). However, where 
parties  enter into a contract to construct a device to meet certain 
performance factors,  a sufficient level of "completeness" may not be 
present until there is reasonable  agreement that the performance factors 
have in fact been met. 

        Even if an invention has been reduced "to a reality," the 
invention  is not necessarily "complete" enough to create an "on sale" bar 
unless one  would know how the invention would work upon installation, In 
re Dybel, 187 USPQ 593, 598 (CCPA 1975). However, such knowledge is not 
synonymous with  a lack of any expectation of "problems" upon 
installation. As long as the "problems"  are not due to "fundamental 
defects" in the invention, there will be sufficient  "completion." In re 
Theis, 
204 USPQ 188, 195 n. 11 (CCPA 1979); National Biscuit Co. v. Crown Baking 
Co.,  42 USPQ 214, 215 (1st Cir. 1939). 

        The invention need not be ready for satisfactory commercial 
marketing  for sale to bar a patent. Atlantic Thermoplastics Co. v. Faytex 
Corp., 23 USPQ2d  1481, 1483 (Fed. Cir. 1992). 

ii.   Inventor has submitted a 37 CFR 1.131 affidavit or declaration 
        Affidavits or declarations submitted under 37 CFR 1.131 to swear 
behind  a reference (MPEP w 715.10) may constitute, among other things, an 
admission  that an invention was "complete" more than 1 year before the 
filing of an application.  In re Foster, 145 USPQ 166, 173 (CCPA 1965); 
Dart Indus. v. E.I. duPont de  Nemours & Co., 179 USPQ 392, 396 (7th Cir. 
1973).< 


2133.03(d)  "In This Country" [R-1] 


        >For purposes of judging the applicability of the 
35 U.S.C. 102(b) bars, public use or on sale activity must take place in 
the  United States. The "on sale" bar does not generally apply where both 
manufacture  and delivery occur in a foreign country. Gandy v. Main 
Belting Co., 143 U.S.  587, 593 (1892). However, "on sale" status can be 
found if substantial activity  prefatory to a "sale" occurs in the United 
States. Robbins v. Lawrence Mfg.  Co., 178 USPQ 577, 583 (9th Cir. 1973). 
An offer for sale, made or originating  in this country, may be sufficient 
prefatory activity to bring the offer within  the terms of the statute, 
even though sale and delivery take place in a foreign  country. The same 
rationale applies to an offer by a foreign manufacturer which  is 
communicated to a prospective purchaser in the United States prior to the 
critical date. C.T.S. Corp. v. Piher Int'l Corp., 201 USPQ 649 (7th Cir. 
1979).< 

2133.03(e)  Permitted Activity; Experimental Use [R-1] 


        >The basic test is that experimentation must be the primary 
purpose  and any commercial exploitation must be incidental. 

        If the use or sale was experimental, there is no bar  under 35 
U.S.C.  102(b). "A use or sale is experimental for purposes of section 
102(b) if it  represents a bona fide effort to perfect the invention or to 
ascertain whether  it will answer its intended purpose.0If any commercial 
exploitation does occur,  it must be merely incidental to the primary 
purpose of the experimentation  to perfect the invention." LaBounty Mfg. 
v. I.T.C., 22 USPQ2d 1025, 1028 (Fed.  Cir. 1992) (quoting Pennwalt Corp. 
v. Akzona Inc., 222 USPQ 833, 838 (Fed.  Cir. 1984)). "The experimental 
use exception0does not include market testing where the inventor is 
attempting to gauge consumer demand for his claimed invention. The purpose 
 of such activities is commercial exploitation and not experimentation." 
In  re Smith, 218 USPQ 976, 983 (Fed. Cir. 1983).< 


2133.03(e)(1) Commercial Exploitation [R-1] 


>THERE MUST BE NO ATTEMPT AT MARKET PENETRATION BEFORE THE CRITICAL DATE 
        A strong policy of the on sale and public use bars is the 
prevention  of inventors from exploiting their inventions commercially 
more than 1 year  prior to the filing of a patent application. Therefore, 
if applicant's precritical  date activity is, at any level, an attempt at 
market penetration, a patent  is barred. Thus, even if there is bona fide 
experimental activity, an inventor  may not commercially exploit an 
invention more than 1 year prior to the filing  date of an application. In 
re Theis, 
204 USPQ 188, 194 (CCPA 1979). 

THE COMMERCIAL ACTIVITY MUST 
LEGITIMATELY ADVANCE DEVELOPMENT OF THE INVENTION TOWARDS COMPLETION 
        As the degree of commercial exploitation surrounding 35 U.S.C. 
102(b)  activity increases, the burden on an applicant to establish clear 
and convincing  evidence of experimental activity with respect to a public 
use becomes more  difficult. Where the examiner has found a prima facie 
case of a sale or an  offer to sell, this burden will rarely be met unless 
clear and convincing necessity  for the experimentation is established by 
the applicant. This does not mean,  of course, that there are no 
circumstances which would permit alleged experimental  activity in an 
atmosphere of commercial exploitation. In certain circumstances,  even a 
sale may be necessary to legitimately advance the experimental development 
 of an invention if the primary purpose of the sale is experimental. In re 
Theis,  204 USPQ 188, 194 (CCPA 1979); Robbins Co. v. Lawrence Mfg. Co., 
178 USPQ 577,  582 (9th Cir. 1973). However, careful scrutiny by the 
examiner of the objective  factual circumstances surrounding such a sale 
is essential. See Ushakoff v.  United States, 140 USPQ 341 (Ct.Cl. 1964); 
Cloud v. Standard Packaging Corp., 153 USPQ 317 (7th Cir. 1967). 

SIGNIFICANT FACTORS INDICATIVE OF "COMMERCIAL EXPLOITATION" 

        As discussed in MPEP w 2133.03, a policy consideration in 
questions  of 35 U.S.C. 102(b) activity is premature "commercial 
exploitation" of a "completed"  or nearly completed invention (see MPEP # 
2133.03(c)). The extent of commercial  activity which constitutes 
35 U.S.C. 102(b) "on sale" status depends upon the circumstances of the 
activity,  the basic indicator being the subjective intent of the inventor 
as manifested  through objective evidence. The following activities should 
be used by the  examiner as indicia of this subjective intent: 

        (1)   preparation of various contemporaneous "commercial" 
documents,  e.g., orders, invoices, receipts, delivery schedules, etc.; 

        (2)   preparation of price lists (Akron Brass v. Elkhart Brass 
Mfg.,  147 USPQ 301, 305 (7th Cir. 1965)) and distribution of price 
quotations (Amphenol  Corp. v. General. Time Corp., 158 USPQ 113, 117 (7th 
Cir. 1968)); 
        (3)   display of samples to prospective customers (Cataphote Corp. 
 v. DeSoto Chemical Coatings, 148 USPQ 527, 529 (9th Cir. 1966); Chicopee 
Mfg.  Corp. v. Columbus Fiber Mills Co., 118 USPQ 53, 65-67 (M.D.Ga. 
1958)); 
        (4)   demonstration of models or prototypes (General Elec. Co. v. 
United  States, 206 USPQ 260, 266-67 (Ct. Cl. 1979); Red Cross Mfg. v. 
Toro Sales Co.,  188 USPQ 241, 244-45 (7th Cir. 1975); Philco Corp. v. 
Admiral Corp., 131 USPQ  413; 429-30 (D.Del. 1961)), especially at trade 
conventions (Interroyal Corp.  v. Simmons Co., 204 USPQ 562, 563-65 (S.D. 
N.Y. 1979)), and even though no  orders are actually obtained (Monogram 
Mfg. v. F. & H. Mfg.,62 USPQ 409, 412 
(9th Cir. 1944)); 

        (5)   use of an invention where an admission fee is charged (In re 
 Josserand, 89 USPQ 371, 376 (CCPA 1951); Greenewalt v. Stanley, 12 USPQ 
122 
(3d Cir. 1931)); and 

        (6)   advertising in publicity releases, brochures, and various 
periodicals 
(In re Theis, 204 USPQ 188, 193 n. 6 (CCPA 1979); Interroyal Corp. v. 
Simmons  Co., 
204 USPQ 562, 564-66 (S.D.N.Y.1979); Akron Brass v. Elkhart Brass Mfg.,147 
 USPQ 301, 305 (7th Cir.1965); Tucker Aluminum Prods v. Grossman, 136 USPQ 
244,  245 (9th Cir. 1963)). 

        The above activities may be determinative of "commercial 
exploitation"  even though (1) prices are estimated rather than 
established, (2) no commercial  production runs have been made, and (3) 
the invention is 
never actually sold, Chromalloy Am. Corp. v. Alloy Surfaces Co., 173 USPQ 
295,  301-02 (D.Del. 1972).< 


2133.03(e)(2)     Intent [R-1] 


        >"When sales are made in an ordinary commercial environment and 
the  goods are placed outside the inventor's control, an inventor's 
secretly held  subjective intent to `experiment' even if true, is 
unavailing without objective  evidence to support the contention. Under 
such circumstances, the customer  at a minimum must be made aware of the 
experimentation." LaBounty Mfg. v. I.T.C.,  22 USPQ2d 1025, 1029 (Fed. 
Cir. 1992) (quoting Harrington Mfg. v. Co. v. Powell  Mfg. Co., 2 USPQ2d 
1364, 1366 n.3 (Fed. Cir. 1986); Paragon Podiatry Laboratory  Inc. v. KLM 
Labs., Inc., 984 F.2d 1182, 25 USPQ2d 1561 (Fed. Cir. 1993) (Paragon  sold 
the inventive units to the trade as completed devices without any 
disclosure  to either doctors or patients of their involvement in alleged 
testing. Evidence  of the inventor's secretly held belief that the units 
were not durable and  may not be satisfactory for consumers was not 
sufficient, alone, to avoid a  statutory bar.).< 


2133.03(e)(3)     "Completeness" of the Invention [R-1] 


>EXPERIMENTAL USE ENDS WHEN THE INVENTION IS ACTUALLY REDUCED TO PRACTICE 
        Experimental use "means perfecting or completing an invention to 
the  point of determining that it will work for its intended purpose." 
Therefore,  experimental use "ends with an actual reduction to practice." 
RCA Corp. v.  Data Gen. Corp., 12 USPQ2d 1449, 1453 (Fed. Cir. 1989). If 
the examiner concludes  from the evidence of record that an applicant was 
satisfied that an invention  was in fact "complete," awaiting approval by 
the applicant from an organization  such as Underwriters' Laboratories 
will not normally overcome this conclusion.  Interroyal Corp. v. Simmons 
Co., 204 USPQ 362, 366 (S.D.N.Y. 1979); Skill Corp.  v. Lucerne Prods, 178 
USPQ 562, 565 (N.D.Ill. 1973), aff'd., 183 USPQ 396,  399 (7th Cir. 1974), 
cert. denied, 183 USPQ 65 (1975). See MPEP 
w 2133.03(c) for more information of what constitutes a "complete" 
invention. 
        The fact that alleged experimental activity does not lead to 
specific  modifications or refinements of an invention is evidence, 
although not conclusive  evidence, that such activity is not within the 
realm permitted by the statute.  This is especially the case where the 
evidence of record clearly demonstrates  to the examiner that an invention 
was considered "complete" by an inventor  at the time of the activity. 
Nevertheless, any modifications or refinements  which did result from such 
experimental activity must at least be a feature  of the claimed invention 
to be of any probative value. In re Theis, 204 USPQ  188, 194 (CCPA 1979). 

DISPOSAL OF PROTOTYPES 

        Where a prototype of an invention has been disposed of by an 
inventor  before the critical date, inquiry by the examiner should focus 
upon the intent  of the inventor and the reasonableness of the disposal 
under all circumstances.  The fact that an otherwise reasonable disposal 
of a prototype involves incidental  income is not necessarily fatal. In re 
Dybel, 187 USPQ 593, 597 n. 5 (CCPA  1975). However, if a prototype is 
considered "complete" by an inventor and  all experimentation on the 
underlying invention has ceased, unrestricted disposal  of the prototype 
constitutes a bar under 35 U.S.C. 102(b). In re Blaisdell,  113 USPQ 289 
(CCPA 1957); 
contra, Watson v. Allen, 117 USPQ 68 (D.C.Cir. 1957).< 


2133.03(e)(4)     Factors Indicative of an Experimental Purpose [R-1] 

        >The Court in City of Elizabeth v. American Nicholson Pavement 
Co.,  97 U.S. 126 (1878) found several factors persuasive of experimental 
activity: 
        (a)   the nature of the invention was such that any testing had to 
 be to some extent public; 

        (b)   testing had to be for a substantial period of time; 
        (c)   testing was conducted under the supervision and control of 
the  inventor; and 

        (d)   the inventor regularly inspected the invention during the 
period  of experimentation. 

        Supreme Court decisions subsequent to City of Elizabeth identify 
other  significant factors which may be determinative of experimental 
purpose: 
        (e)   extent of any obligations or limitation placed on a user 
during  a period of experimental activity, as well as the extent of an 
testing actually  performed during such period (Egbert v. Lippmann, 104 
U.S. 333 (1881)); 
        (f)   conditional nature of any sale associated with experimental 
activity 
(Hall v. Macneale, 107 U.S. 90 (1882)); and 

        (g)   length of time and number of cases in which experimental 
activity  took place, viewed in light of what was reasonably necessary for 
an alleged  experimental purpose (International Tooth Crown Co. v. Gaylord, 
140 U.S. 55 (1891)). 

        Other judicial opinions have supplemented these factors by looking 
 to the extent of any: 

        (h)   explicit or implicit obligations placed upon a user to 
supply  an inventor with the results of any testing conducted during an 
experimental  period and the extent of inquiry made by the inventor 
regarding the testing 
(Robbins Co. v. Lawrence Mfg. Co., 178 USPQ 577, 583 (9th Cir. 1973)); 
        (i)   disclosure by an inventor to a user regarding what the 
inventor  considers as unsatisfactory operation of the invention (In re 
Dybel, 187 USPQ  593, 599 (CCPA 1975)); 

        (j)   effort on the part of an inventor to retrieve any 
experimental  samples at the end of an experimental period (Omark Indus. 
v. Carlton Co.,  201 USPQ 825, 830 (D.Ore. 1978)); and 

        (k)   a doctor-patient relationship where the inventor/doctor 
conducted  the experimentation (TP Lab. v. Professional Positioners, Inc., 
220 USPQ 577,  582 (Fed. Cir. 1984). 

        Summarizing the above, once alleged experimental activity is 
advanced  by an applicant to explain a prima 
facie case under 35 U.S.C. 102(b), the examiner must determine whether the 
 scope and length of the activity were reasonable in terms of the 
experimental  purpose intended by the applicant and the nature of the 
subject matter involved.  No one of, or particular combination of, 

factors (a) through (k) is necessarily determinative of this purpose.< 

2133.03(e)(5)     Experimentation and Degree of Supervision and Control 
[R-1] 

>THE INVENTOR MUST MAINTAIN SUFFICIENT CONTROL OVER THE INVENTION DURING 
TESTING  BY THIRD PARTIES 

        As discussed with reference to City of Elizabeth v. American 
Nicholson  Pavement Co., 97 U.S. 126 (1878), a significant determinative 
factor in questions  of experimental purpose is the extent of supervision 
and control maintained  by an inventor over an invention during an alleged 
period of experimentation.  Once a period of experimental activity has 
ended and supervision and control  has been relinquished by an inventor 
without any restraints on subsequent use  of an invention, an unrestricted 
subsequent use of the invention is a 35 U.S.C.  102(b) bar. In re 
Blaisdell, 113 USPQ 289, 293 (CCPA 1957).< 


2133.03(e)(6)     Permitted Experimental Activity and Testing [R-1] 

>DEVELOPMENTAL TESTING IS PERMITTED 

        Testing of an invention in the normal context of its technological 
 development is generally within the realm of permitted experimental 
activity.  Likewise, experimentation to determine utility, as that term is 
applied in  35 U.S.C. 101, may also constitute permissible activity. See 
General Motors  Corp. v. Bendix Aviation Corp., 
102 USPQ 58, 69 (N.D.Ind. 1954). For example, where an invention relates 
to  a chemical composition with no known utility, i.e., a patent 
application for  the composition could not be filed (35 U.S.C. 101; 35 
U.S.C. 112, first paragraph),  continued testing to find utility would 
likely be permissible under 35 U.S.C.  102(b), absent a sale of the 
composition or other evidence of commercial exploitation. 

MARKET TESTING IS NOT PERMITTED 

        Experimentation to determine product acceptance, i.e., market 
testing,  is typical of a trader's and not an inventor's experiment and is 
thus not within  the area of permitted experimental activity. Smith & 
Davis Mfg. Co. v. Mellon,  58 F. 705, 707 (8th Cir. 1893) Likewise, 
testing of an invention for the benefit  of appeasing a customer, or to 
conduct "minor `tune up' procedures not requiring  an inventor's skills, 
but rather the skills of a competent technician," are  also not within the 
exception. In re Theis, 204 USPQ 188, 193-94 (CCPA 1979). 
EXPERIMENTAL ACTIVITY IN THE CONTEXT OF DESIGN APPLICATIONS 

        The public use of an ornamental design which is directed toward 
generating  consumer interest in the aesthetics of the design is not an 
experimental use.  In re Mann, 861 F.2d 1581, 8 USPQ2d 2030 (Fed. Cir. 1988) 
(display of a wrought iron table at a trade show held to be public use). 
However,  "experimentation directed to functional features of a product 
also containing  an ornamental design may negate what otherwise would be 
considered a public  use within the meaning of section 102(b)." Tone 
Brothers, Inc. v. Sysco Corp.,  28 F.3d 1192, 31 USPQ2d 1321, 1326 (Fed. 
Cir. 1994) (A study wherein students  evaluated the effect of the 
functional features of a spice container design  may be considered an 
experimental use.).< 


2133.03(e)(7)     Activity of an Independent Third Party Inventor [R-1] 

>EXPERIMENTAL USE EXCEPTION IS PERSONAL TO AN APPLICANT 

        The statutory bars of 35 U.S.C. 102(b) are applicable even though 
public  use or on sale activity is by a party other than an applicant. 
Where an applicant  presents evidence of experimental activity by such 
other party, the evidence  will not overcome the prima facie case under 
35 U.S.C. 102(b) based upon the activity of such party unless the activity 
 was under the supervision and control of the applicant. Magnetics v. 
Arnold  Eng'g Co., 
168 USPQ 392, 394 (7th Cir. 1971), Bourne v. Jones, 
98 USPQ 206, 210 (S.D. Fla. 1951). aff'd., 98 USPQ 205 (5th Cir. 1953), 
cert.  denied, 99 USPQ 490 (1953); contra, Watson v. Allen, 117 USPQ 68 
(D.C.Cir.  1957). In other words, the experimental use activity exception 
is personal  to an applicant.< 


2134    35 U.S.C. 102(c) [R-1] 


>35 U.S.C. 102. Conditions for patentability; novelty and loss of right to 
 patent. 

        A person shall be entitled to a patent unless -- 

***** 

        (c) he has abandoned the invention. 

UNDER 35 U.S.C. 102(c), AN ABANDONMENT MUST BE INTENTIONAL 

        "Actual abandonment under 35 U.S.C. 102(c) requires that the 
inventor  intend to abandon the invention, and intent can be implied from 
the inventor's  conduct with respect to the invention. In re Gibbs, 437 
F.2d 486, 168 USPQ  578 (CCPA 1971). Such intent to abandon the invention 
will not be imputed,  and every reasonable doubt should be resolved in 
favor of the inventor." Ex  parte Dunne, 20 USPQ2d 1479 (Bd. Pat. App. & 
Inter. 1991). 

DELAY IN MAKING FIRST APPLICATION 

        Abandonment under 35 U.S.C. 102(c) requires a deliberate, though 
not  necessarily express, surrender of any rights to a patent. To abandon 
the invention  the inventor must intend a dedication to the public. Such 
dedication may be  either express or implied, by actions or inactions of 
the inventor. Delay alone  is not sufficient to infer the requisite intent 
to abandon. Moore v. U.S., 194 USPQ 423, 428 (Ct. Cl. 1977) (The drafting 
and retention in his own files  of two patent applications by inventor 
indicates an intent to retain his invention;  delay in filing the 
applications was not sufficient to establish abandonment);  but see Davis 
Harvester Co., Inc. v. Long Mfg. Co., 149 USPQ 420, 435-436 (E.D.  N.C. 
1966) (Where the inventor does nothing over a period of time to develop 
or patent his invention, ridicules the attempts of another to develop that 
 invention and begins to show active interest in promoting and developing 
his  invention only after successful marketing by another of a device 
embodying  that invention, the inventor has abandoned his invention under 
35 U.S.C. 102(c).). 
DELAY IN REAPPLYING FOR PATENT AFTER ABANDONMENT OF PREVIOUS PATENT 
APPLICATION 

        Where there is no evidence of expressed intent or conduct by 
inventor  to abandon his invention, delay in reapplying for patent after 
abandonment  of a previous application does not constitute abandonment under 
35 U.S.C. 102(c). Petersen v. Fee Int'l, Ltd., 381 F. Supp. 1071, 182 USPQ 
 264 (W.D. Okla. 1974). 

DISCLOSURE WITHOUT CLAIMING IN A PRIOR ISSUED PATENT 

        Any inference of abandonment (i.e., intent to dedicate to the 
public)  of subject matter disclosed but not claimed in a previously 
issued patent is  rebuttable by an application filed at any time before a 
statutory bar arises.  Accordingly, a rejection of a claim of a patent 
application under 35 U.S.C.  102(c) predicated solely on the issuance of a 
patent which discloses the subject  matter of the claim in the application 
without claiming it would be improper, regardless of whether there is 
copendency between the application at issue  and the application which 
issued as the patent. In re Gibbs, 437 F.2d 486,  168 USPQ 578 (CCPA 1971). 

ONLY WHEN THERE IS A PRIORITY CONTEST CAN A LAPSE OF TIME BAR A PATENT 
        The mere lapse of time will not bar a patent. The only exception 
is  when there is a priority contest under  35 U.S.C. 102(g) and applicant 
abandons,  suppresses or conceals the invention. Panduit Corp. v. Dennison 
Mfg. Co., 227  USPQ 337, 350 (Fed. Cir. 1985). Abandonment, suppression 
and concealment are  treated by the courts under 35 U.S.S. 102(g). See 
MPEP w 2138.03 for more information  on this issue.< 


2135    35 U.S.C. 102(d) [R-1] 


>35 U.S.C. 102. Conditions for patentability; novelty and loss of right to 
 patent. 

A person shall be entitled to a patent unless -- 

***** 

(d) the invention was first patented or caused to be patented, or was the 
subject  of an inventor's certificate, by the applicant or his legal 
representatives  or assigns in a foreign country prior to the date of the 
application for patent  in this country on an application for patent or 
inventor's certificate filed  more than twelve months before the filing of 
the application in the United  States. 

***** 

GENERAL REQUIREMENTS OF 35 U.S.C. 102(d) 

        35 U.S.C. 102(d) establishes four conditions which, if all are 
present,  establish a bar against the granting of a patent in this 
country: 
        (1)   The foreign application must be filed more than 12 months 
before  the effective U.S. filing date (See MPEP w 706.02 regarding 
effective U.S.  filing date of an application); 

        (2)   The foreign application must have been filed by the same 
applicant  as in the United States or by his or her legal representatives 
or assigns. 
        (3)   The foreign patent or inventor's certificate must be 
actually  granted (e.g., by sealing of the papers in Great Britain) before 
the U.S. filing  date. It need not be published. 

        (4)   The same invention must be involved. 

        If such a foreign patent or inventor's certificate is discovered 
by  the examiner, the rejection is made under 35 U.S.C. 102(d) on the 
ground of  statutory bar. The underlying issues developed in the case law 
will be addressed  in section b below for each requirement.< 


2135.01       The Four Requirements of 35 U.S.C. 102(d) [R-1] 


>(a)    Foreign application must be filed more than 12 months before the 
effective  U.S. filing date. 

AN ANNIVERSARY DATE ENDING ON A WEEKEND OR HOLIDAY RESULTS IN AN EXTENSION 
 TO THE NEXT BUSINESS DAY 

        The U.S. application is filed in time to prevent a 
35 U.S.C. 102(d) bar from arising if it is filed on the 1 year anniversary 
 date of the filing date of the foreign application. If this day is a 
Saturday,  Sunday or Federal holiday, the year would be extended to the 
following business  day, see Ex parte Olah, 131 USPQ 41 (Bd. App. 1960). 

A CONTINUATION-IN-PART BREAKS THE CHAIN OF PRIORITY AS TO FOREIGN AS WELL 
AS  U.S. PARENTS 

        In the case where applicant files a foreign application, later 
files  a U.S. application claiming priority based on the foreign 
application, and  then files a continuation-in-part (CIP) application 
whose claims are not entitled  to the filing date of the U.S. parent, the 
effective filing date is the filing  date of the CIP and applicant 
cannot obtain the benefit of either the U.S. parent or 
foreign application filing dates. In re Langenhoven,173 USPQ 426, 429 
(CCPA  1972). If the foreign application issues into a patent before the 
filing date  of the CIP, it may be used in a 35 U.S.C. 102(d)/103 
rejection if the subject  matter added to the CIP does not render the 
claims nonobvious over the foreign  patent. Ex parte Appeal No. 242-47, 
196 USPQ 828 (Bd. App. 1976) (Foreign patent  can be combined with other 
prior art to bar a U.S. patent in an obviousness  rejection based on 
35 U.S.C. 102(d)/103). 

(b)   Foreign application must have been filed by same applicant, his or 
her  legal representative or assigns. 

        Note that where the U.S. application was made by two or more 
inventors,  it is permissible for these inventors to claim priority from 
separate applications,  each to one of the inventors or a subcombination 
of inventors. 
For instance, a U.S. application naming inventors A and B may be entitled 
to  priority from one application to A and one to B filed in a foreign 
country. 
(c)   The foreign patent or inventor's certificate was actually granted 
before  the U.S. filing date. 

TO BE "PATENTED" AN EXCLUSIONARY RIGHT MUST BE AWARDED TO THE APPLICANT 
        "Patented" means "a formal bestowal of patent rights from the 
sovereign  to the applicant." In re Monks, 588 F.2d 308, 310, 200 USPQ 
129, 131 (CCPA  1978); American Infra-Red Radiant Co. v. Lambert Indus., 
149 USPQ 722 (8th Cir.), cert. denied, 385 US 920 (1966) (German 
Gebrauchsmuster  petty patent was held to be a patent usable in a 35 
U.S.C. 102(d) rejection.  Gebrauchmustern are not examined and only grant 
a 6 year patent term. However,  except as to duration, the exclusionary 
patent right granted is as extensive  as in the U.S.). 

A PUBLISHED APPLICATION IS NOT A "PATENT" 

        An application must issue into a patent before it can be applied 
in  a 35 U.S.C. 102(d) rejection. Ex parte Fujishiro, 199 USPQ 36 (Bd. 
App. 1977) 
("Patenting," within the meaning of 35 U.S.C. 102(d), does not occur upon 
laying  open of a Japanese utility model application (kokai or kohyo)); Ex 
parte Links,  184 USPQ 429 (Bd. App. 1974) (German applications, which 
have not yet been  published for opposition, are published in the form of 
printed documents called  Offenlegungsschriften 18 months after filing. 
These applications are unexamined  or in the process of being examined at 
the time of publication. The Board held  that an Offenlegungsschrift is 
not a patent under 35 U.S.C. 102(d) even though  some provisional rights 
are granted. The court explained that the provisional  rights are minimal 
and do not come into force if the application is withdrawn  or refused.). 

AN ALLOWED APPLICATION CAN BE A 
"PATENT" FOR PURPOSES OF 35 U.S.C. 102(d) AS OF THE DATE PUBLISHED FOR 
OPPOSITION  EVEN THOUGH IT HAS NOT YET BEEN GRANTED AS A PATENT 

        An examined application which has been allowed by the examiner and 
 published to allow the public to oppose the grant of a patent has been 
held  to be a "patent" for purposes of rejection under 35 U.S.C. 102(d) as 
of the  date of publication for opposition if substantial provisional 
enforcement rights  arise. Ex parte Beik, 161 USPQ 795 (Bd. App. 1968) 
(This case dealt with examined  German applications. After a determination 
that an application is allowable,  the application is published in the 
form of a printed document called an Auslegeschrift.  The publication 
begins a period of opposition were the public can present evidence 
showing unpatentability. Provisional patent rights are granted which are 
substantially  the same as those available once the opposition period is 
over and the patent  is granted. The Board found that an Auslegeschrift 
provides the legal effect  of a patent for purposes of rejection under 35 
U.S.C. 102(d).). 

GRANT OCCURS WHEN PATENT BECOMES 
ENFORCEABLE 

        The critical date of a foreign patent as a reference under 35 
U.S.C.  102(d) is the date the patent becomes enforceable (issued, sealed 
or granted).  In re Monks, 
588 F.2d 308, 310, 200 USPQ 129, 131 (CCPA 1978) (British reference became 
 available as prior art on date the patent was "sealed" because as of this 
date  applicant had the right to exclude others from making, using or 
selling the  claimed invention.). 

35 U.S.C. 102(d) APPLIES AS OF GRANT DATE EVEN IF THERE IS A PERIOD OF 
SECRECY AFTER PATENT GRANT 

        A period of secrecy after granting the patent, as in Belgium and 
Spain,  has been held to have no effect in connection with 35 U.S.C. 
102(d). These  patents are usable in rejections under 35 U.S.C. 102(d) as 
of the date patent  rights are granted. In re Kathawala, 28 USPQ2d 1789 
(Fed. Cir. 1993) (An invention  is "patented" for purposes of 35 U.S.C. 
102(d) when the patentees rights under  the patent become fixed. The fact 
that applicant's Spanish application was  not published until after the 
U.S. filing date is immaterial since the Spanish  patent was granted 
before U.S. filing.); Gramme Elec. Co. v. Arnoux and Hochhausen  Elec. 
Co., 17 Fed. 838, 1883 C.D. 418 (S.D.N.Y. 1883), (Rejection made under  a 
predecessor of 35 U.S.C. 102(d) based on an Austrian patent granted an 
exclusionary  right for 1 year but was kept secret, at the option of the 
patentee, for that  period. The court held that the Austrian patent grant 
date was the relevant  date under the statute for purposes of 
35 U.S.C. 102(d) but that the patent could not have been 
used to in a rejection under 35 U.S.C. 102(a) or (b).); In re Talbott, 443 
 F.2d 1397, 170 USPQ 281 (CCPA 1971) (Applicant cannot avoid a 35 U.S.C. 
102(d)  rejection by exercising an option to keep the subject matter of a 
German Gebrauchsmuster 
(petty patent) in secrecy until time of U.S. filing.). 

(d)   The same invention must be involved. 

"SAME INVENTION" MEANS THAT THE 
APPLICATION CLAIMS COULD HAVE BEEN PRESENTED IN THE FOREIGN PATENT 
        Under 35 U.S.C. 102(d), the "invention0patented" in the foreign 
country  must be the same as the invention sought to be patented in the 
U.S. When the  foreign patent contains the same claims as the U.S. 
application, there is no  question that "the invention was first patented 
0 in a foreign country." In  re Kathawala, 
28 USPQ2d 1785, 1787 (Fed. Cir. 1993). However, the claims need not be 
identical  or even within the same statutory class. If applicant is 
granted a foreign  patent which fully discloses the invention and which 
gives applicant a number  of different claiming options in the U.S., the 
reference in 35 U.S.C. 102(d)  to " `invention0patented' necessarily 
includes all the disclosed aspects of  the invention. Thus, the section 
102(d) bar applies regardless whether the  foreign patent contains claims 
to less than all aspects of the invention" Id.  at 1788. In essence, a 
35 U.S.C. 102(d) rejection applies if applicant's foreign application 
supports  the subject matter of the U.S. claims. In re Kathawala, 28 
USPQ2d 1785 (Fed.  Cir. 1993) (Applicant was granted a Spanish patent 
claiming a method of making  a composition. The patent disclosed 
compounds, methods of use and processes  of making the compounds. After 
the Spanish patent was granted, the applicant  filed a U.S. application 
with claims directed to the compound but not the process  of making it. 
The Federal Circuit held that it did not matter that the claims  in the 
U.S. application were directed to the composition instead of the process 
because the foreign specification would have supported claims to the 
composition.  It was immaterial that the formulations were unpatentable 
pharmaceutical compositions  in Spain.).< 


2136    35 U.S.C. 102(e) [R-1] 


>35 U.S.C. 102. Conditions for patentability; novelty and loss of right to 
 patent. 

A person shall be entitled to a patent unless-- 

***** 

(e) the invention was described in a patent granted on an application for 
patent  by another filed in the United States before the invention thereof 
by the applicant  for patent, or on an international application by 
another who has fulfilled  the requirements of paragraphs (1), (2), and 
(4) of section 371(c) of this  title before the invention thereof by the 
applicant for patent. 

***** 

ONLY U.S. PATENTS AND SIRS ARE ELIGIBLE AS PRIOR ART UNDER 35 U.S.C. 
102(e) 
        The reference must be a U.S. patent to be eligible for use in a 35 
 U.S.C. 102(e) rejection. Ex parte Smolka, 
207 USPQ 232 (Bd. App. 1980) (A foreign patent document with priority back 
 to an abandoned U.S. application cannot be the basis for a 35 U.S.C. 
102(e)  rejection. The foreign document cannot be prior art until it is 
patented or  published.). Statutory Invention Registrations can also be 
used in 35 U.S.C.  102(e) rejections as of their filing dates. 

DEFENSIVE PUBLICATIONS ARE NOT PRIOR ART AS OF THEIR FILING DATE 

        A defensive publication is not a patent, it is a publication. 
Therefore,  it is prior art only as of its publication date. Ex parte 
Osmond, 191 USPQ  334 (Bd. App. 1973) (Examiner rejected the claims over 
Defensive Publication  T-858,018 issued by the PTO to Jacobson. The 
examiner made a 35 U.S.C. 102(a)  rejection contending that a defensive 
publication can be used as a reference  under 35 U.S.C. 102(a) as of its 
filing date. This position was authorized  at that time by the MPEP and a 
Commissioner's Notice establishing the Defensive  Publication Program. The 
Board found that in order for a 35 U.S.C. 102(a) rejection  to apply, the 
reference must be of public knowledge and a Defensive publication  is not 
public knowledge at the time of its filing. Thus, the Board reversed  the 
rejection. The Board also found that 
35 U.S.C. 102(e) could not be used as a basis for rejection because the 
use  of Defensive Publications as of their filing dates was not supported 
by section  102(e).) See MPEP w 711.06(a) for more information on 
Defensive Publications  as references.< 


2136.01       Status of U.S. Patent as a Reference Before and After 
Issuance [R-1] 

>WHEN THERE IS NO COMMON ASSIGNEE OR INVENTOR, AN APPLICATION MUST ISSUE 
AS  A PATENT BEFORE IT IS AVAILABLE AS PRIOR ART UNDER 35 U.S.C. 102(e) 
        Generally, a U.S. patent must issue before it can be used as a 
reference  in a 35 U.S.C. 102(e) rejection. Ex parte Smolka, 207 USPQ 232 
(Bd. App. 1980) 
(An application to Smolka and Schwuger was rejected over 
35 U.S.C. 102(e) based on a pending U.S. application to Corkill whose 
filing  date antedated the Smolka et al. application. A German application 
corresponding  to the Corkill application had been published, but did not 
antedate the effective  filing date of the Smolka et al. application. The 
Board reversed the rejection  holding that a U.S. patent had to be issued 
to Corkill before it could become  available as prior art under 102(e). 
There was no common assignee nor any common  inventor between the two 
applications.). 

WHEN THERE IS A COMMON ASSIGNEE OR INVENTOR, A PROVISIONAL 35 U.S.C. 
102(e)  REJECTION OVER AN EARLIER FILED APPLICATION CAN BE MADE 

        Based on the assumption that an application will ripen into a U.S. 
 patent, it is permissible to provisionally reject a later application 
over  an earlier application under 35 U.S.C. 102(e). In re Irish, 167 USPQ 
764 (CCPA  1970). Such a provisional rejection "serves to put applicant on 
notice at the  earliest possible time of the possible prior art 
relationship between copending  applications" and gives applicant the 
fullest opportunity to overcome the rejection  by amendment or submission 
of evidence. In addition, since both applications  are pending and usually 
have the same assignee, more options are available  to applicant for 
overcoming the provisional rejection than if the other application  were 
already issued. Ex parte Bartfeld, 16 USPQ2d 1714 (Bd. Pat. App. & Int. 
1990) aff'd on other grounds In re Bartfeld, 17 USPQ2d 1885 (Fed. Cir. 
1991).  Note that provisional rejections over 
35 U.S.C. 102(e) are only authorized when there is a common inventor or 
assignee,  otherwise the copending application must remain confidential. 
MPEP w 706.02(f)  and # 706.02(k) discuss the procedures to be used in 
provisional rejections  over 35 U.S.C. 102(e) and 103.< 


2136.02       Content of the Prior Art Available Against the Claims [R-1] 

>A 35 U.S.C. 102(e) REJECTION MAY RELY ON ANY PART OF THE PATENT 
DISCLOSURE 

        Under 35 U.S.C. 102(e), the entire disclosure of a U.S. patent 
having  an earlier filing date can be relied on to reject the claims. Sun 
Studs, Inc.  v. ATA Equipment Leasing, 10 USPQ2d 1338, 1342 (Fed. Cir. 1989). 

U.S. PATENT REFERENCE MUST ITSELF 
CONTAIN THE SUBJECT MATTER RELIED ON IN THE REJECTION 

        When a U.S. patent is used to reject claims under 
35 U.S.C. 102(e), the disclosure relied on in the rejection must be 
present  in the issued patent. It is the filing date of the U.S. patent 
being relied  on as the critical reference date and subject matter not 
included in the patent  itself can only be used when that subject matter 
becomes public. Portions of  the patent application which were canceled 
are not part of the patent and thus  cannot be relied on in a 35 U.S.C. 
102(e) rejection over the issued patent.  In re Stalego, 154 USPQ 52 (Bd. 
App. 1966). Likewise, subject matter which  is disclosed in a parent 
application, but not included in the child continuation-in-part 
(CIP) cannot be relied on in a 35 U.S.C. 102(e) rejection over the issued 
CIP.  In re Lund, 153 USPQ 625 (CCPA 1967) (The examiner made a 35 U.S.C. 
102(e)  rejection over an issued U.S. patent which was a 
continuation-in-part (CIP).  The parent application of the U.S. patent 
reference contained an example II  which was not carried over to the CIP. 
The court held that the subject matter  embodied in the canceled example 
II could not be relied on as of either parent  or child filing date. Thus, 
the use of example II subject matter to reject  the claims under 
35 U.S.C. 102(e) was improper.) 

THE SUPREME COURT HAS AUTHORIZED 
35 U.S.C. 103 REJECTIONS BASED ON 35 U.S.C. 102(e) 

        U.S. patents may be used as of their filing dates to show that the 
 claimed subject matter is anticipated or obvious. Obviousness can be 
shown  by combining other prior art with the U.S. patent reference in a 35 
U.S.C. 103 rejection. Hazeltine  Research v. Brenner, 382 U.S. 252, 147 
USPQ 429 (1965).< 


2136.03       Critical Reference Date [R-2] 


(a)   Foreign priority date 

REFERENCE'S FOREIGN PRIORITY DATE 
UNDER 35 U.S.C. 119(A)-(D) CANNOT BE USED AS THE 35 U.S.C. 102(e) 
REFERENCE  DATE 

        A U.S. patent reference is effective prior art as of its U.S. 
filing  date. 35 U.S.C. 119(a)-(d) does not modify section 102(e) which is 
explicitly  limited to patent references "filed in the United States 
before the invention  thereof by the applicant" (emphasis added). 
Therefore, the foreign priority  date of the reference under 
35 U.S.C. 119(a)-(d) cannot be used to antedate the application filing 
date.  In contrast, applicant may be able to overcome the 35 U.S.C. 102(e) 
rejection  by proving he or she is entitled to his or her own 35 U.S.C. 
119 priority date  which is earlier than the reference's U.S. filing date. 
In re Hilmer, 359 F.2d  859, 149 USPQ 480 (CCPA 1966) (Hilmer I) 
(Applicant filed an application with  a right of priority to a German 
application. The examiner rejected the claims  over a U.S. patent to 
Habicht based on its Swiss priority date. The U.S. filing  date of Habicht 
was later than the application's German priority date. The  court held 
that the reference's Swiss priority date could not be relied on  in a 35 
U.S.C. 102(e) rejection. Because the U.S. filing date of Habicht was 
later than the earliest effective filing date (German priority date) of 
the  application, the rejection was reversed.). See MPEP 
# 201.15 for information on procedures to be followed in considering 
applicant's  right of priority. 

(b)   International (PCT) filing date 

REFERENCE'S INTERNATIONAL FILING DATE CAN BE USED AS THE 35 U.S.C. 102(e) 
REFERENCE DATE 

        When the U.S. patent reference is entitled to **>the benefit of< 
an  international application (PCT) >under 35 U.S.C. 120<, the 35 U.S.C. 
102(e)  critical date of the reference is the international filing date as 
defined  by 35 U.S.C. 363. Therefore, the international filing date of a 
U.S. patent  reference can be used to antedate the application being 
examined. Ex parte  Elrich, 3 USPQ2d 1009 (Bd. Pat. App. & Inter. 1987). 
See also MPEP w 715 and  w 1896. 

(c)   Priority from provisional application under 
35 U.S.C. 119(e) 

        The 35 U.S.C. 102(e) critical reference date of a U.S. patent 
entitled  to the benefit of the filing date of a provisional application 
under 35 U.S.C.  119(e) is the filing date of the provisional application, 
except in the case  of a U.S. patent granted on an international (PCT) 
application in which the  requirements of paragraphs (1), (2) and (4) of 
35 U.S.C. 371 have been fulfilled.  By the terms of 35 U.S.C. 102(e), the 
critical reference date of a U.S. patent  granted on such a 35 U.S.C. 371 
application is the date on which paragraphs 
(1), (2) and (4) have been fulfilled, not the filing date of the 
provisional  application. 

(d)   Parent's filing date when reference is a 
continuation-in-part of the parent 

FILING DATE OF U.S. PARENT APPLICATION CAN ONLY BE USED AS THE 35 U.S.C. 
102(e)  DATE IF IT SUPPORTS THE CLAIMS OF THE ISSUED CHILD 

        In order to carry back the 35 U.S.C. 102(e) critical date of the 
U.S.  patent reference to the filing date of a parent application, the 
parent application  must (1) have a right of priority to the earlier date 
under 35 U.S.C. 120 and 
(2) support the invention claimed as required by 
35 U.S.C. 112, first paragraph. "For if a patent could not theoretically 
have  issued the day the application was filed, it is not entitled to be 
used against  another as `secret prior art' " under 35 U.S.C. 102(e). In 
re Wertheim, 209  USPQ 554, 564 (CCPA 1981) (The examiner made a 35 U.S.C. 
103 rejection over  a U.S. patent to Pfluger. The Pfluger patent (Pfluger 
IV) was the child of  a string of abandoned parent applications (Pfluger 
I, the first application,  Pfluger II and III, both CIPs). Pfluger IV was 
a continuation of Pfluger III.  The court characterized the contents of 
the applications as follows: Pfluger  I - subject matter A, II-AB, 
III-ABC, IV-ABC. ABC anticipated the claims of  the examined application, 
but the filing date of III was later than the application  filing date. So 
the examiner reached back to "A" in Pfluger I and combined  this 
disclosure with another reference to establish obviousness. The court 
held that the examiner impermissibly carried over "A" and should have 
instead determined which of  the parent applications contained the subject 
matter which made Pfluger patentable.  Only if B and C were not claimed, 
or at least not critical to the patentability  of Pfluger IV, could the 
filing date of Pfluger I be used. The court reversed  the rejection based 
on a determination that Pfluger IV was only entitled to  the Pfluger III 
filing date. The added new matter (C) was critical to the claims  of the 
issued patent.). Note that In re Wertheim modified the holding of In  re 
Lund, 153 USPQ 625 (CCPA 1967) as to "carrying back" the subject matter 
to the parent applications. 

        See also Ex parte Gilderdale, 1990 Pat. App. LEXIS 25 (Bd. Pat. 
App.  & Inter. Appeal no. 89-0352) (The examiner made a 35 U.S.C. 102(e) 
rejection  over a U.S. patent to Hernandez et al. Hernandez et al. was a 
continuation  of a continuation-in-part. Both the parent and grandparent 
had been abandoned.  The parent listed a different inventive entity but 
supported the subject matter  of the child's claims. The parent was filed 
on the same day as the examined  application and thus no 35 U.S.C. 102(e) 
rejection could be made based on the  parent's filing date. The Board 
reversed the rejection, explaining that the  Hernandez patent was entitled 
to the filing date of its parent, as the parent  supported the patent 
claims and 35 U.S.C. 120 was satisfied. Under 35 U.S.C.  120, an 
application can claim the benefit of an earlier filing date even if  not 
all inventors are the same. However, Hernandez was not entitled to the 
grandparent filing date because the parent and child applications 
contained  new matter as compared to the grandparent.). 

        Compare Ex parte Ebata, 19 USPQ2d 1952 (Bd. Pat. App. & Inter. 
1991) 
(The claims were directed to a method of administering a salt of 
lysocellin  to animals. A 
35 U.S.C. 102(e) rejection was made over Martin. Martin was a continuation 
 of an application which was in turn a continuation-in-part of an 
abandoned  application. The grandparent application disclosed 
administering a manganese  complex of lysocellin to animals. The Board 
found that "the new matter relates  to additional forms of lysocellin 
which are useful in Martin's process, i.e.,  species or embodiments other 
than the manganese complex. This is far different  from adding limitations 
which are required or necessary for patentability."  Unlike the situation 
in In re Wertheim, Martin's invention was patentable as  presented in the 
grandparent application.). 

(e)   Date of conception or reduction to practice 

35 U.S.C. 102(e) REFERENCE DATE IS THE FILING DATE NOT DATE OF PATENTEE'S 
CONCEPTION  OR REDUCTION TO PRACTICE 

        If the U.S. patent applied as a 35 U.S.C. 102(e) reference 
discloses,  but does not claim the subject matter of the claims being 
examined or an obvious  variant, the patent is not prior art under 35 
U.S.C. 102(g). When the cases  are not in interference, the effective date 
of the reference U.S. patent as  prior art is its filing date in the 
United States, as stated in 35 U.S.C. 102(e).  The date that the prior art 
U.S. patent subject matter was conceived or reduced  to practice is of no 
importance when 35 U.S.C. 102(g) is not at issue. Sun  Studs, Inc. v. ATA 
Equipment Leasing, 10 USPQ2d 1338, 1342 (Fed. Cir. 1989) 
(The defendant sought to invalidate patents issued to Mason and Sohn 
assigned  to Sun Studs. The earliest of these patents issued in June 1973. 
A U.S. patent  to Mouat was found which issued in March 1976 and which 
disclosed the invention  of Mason and Sohn. While the patent to Mouat 
issued after the Mason and Sohn  patents, it was filed 7 months earlier 
than the earliest of the Mason and Sohn  patents. Sun Studs submitted 
affidavits showing conception in 1969 and diligence  to the constructive 
reduction to practice and therefore antedated the patent  to Mouat. The 
defendant sought to show that Mouat conceived the invention in  1966. The 
court held that conception of the subject matter of the reference  only 
becomes an issue when the claims of the conflicting patents cover 
inventions  which are the same or obvious over one another. When 35 U.S.C. 
102(e) applies  but not 35 U.S.C. 102(g), the filing date of the prior art 
patent is the earliest  date that can be used to reject or invalidate 
claims.). 


2136.04       Different Inventive Entity; Meaning of "By Another" [R-1] 

>IF THERE IS ANY DIFFERENCE IN THE INVENTIVE ENTITY, THE PATENT REFERENCE 
IS  "BY ANOTHER" 

        "Another" means other than applicants, In re Land, 151 USPQ 621 
(CCPA  1966), in other words, a different inventive entity. The inventive 
entity is  different if not all inventors are the same. The fact that the 
application  and patent have one or more inventors in common is 
immaterial. Ex parte DesOrmeaux,  25 USPQ2d 2040 (Bd. Pat. App. & Inter. 
1992) (The examiner made a 35 U.S.C.  102(e) rejection based on an issued 
U.S. patent to three inventors. The rejected  application was a 
continuation-in-part of the issued parent with an extra inventor.  The 
Board found that the patent was "by another" and thus could be used in  a 
35 U.S.C. 102(e)/103 rejection of the application.). 

A DIFFERENT INVENTIVE ENTITY IS PRIMA 
FACIE EVIDENCE THAT THE U.S. PATENT IS "BY ANOTHER" 

        As stated by the House and Senate reports on the bills enacting 
section  35 U.S.C. 102(e), this subsection of 102 codifies the Milburn 
rule of Milburn  v. 
Davis-Bournonville, 270 U.S. 390 (1926). The Milburn rule authorized the 
use  of a U.S. patent containing a disclosure of the invention as a 
reference against  a later filed application as of the U.S. patent filing 
date. The existence  of an earlier filed U.S. application containing the 
subject matter claimed  in the application being examined indicates that 
applicant was not the first  inventor. Therefore, a U.S. patent by a 
different inventive entity, whether  or not the application shares some 
inventors in common with the patent, is  prima facie evidence that the 
invention was made "by another" as set forth  in section 102(e). In re 
Mathews, 161 USPQ 276 (CCPA 1969); In re Facius, 161  USPQ 294 (CCPA 
1969); Ex parte DesOrmeaux, 25 USPQ2d 2040 (Bd. Pat. App. &  Inter. 1992). 
See MPEP w 2136.05 for discussion of methods of overcoming 102(e)  rejections. 
< 


2136.05       Overcoming a Rejection Under 35 U.S.C. 102(e) [R-2] 

A 35 U.S.C. 102(e) REJECTION CAN BE OVERCOME BY ANTEDATING THE FILING DATE 
 OR SHOWING THAT DISCLOSURE RELIED ON IS APPLICANT'S OWN WORK 

        When a prior U.S. patent is not a statutory bar, a 
35 U.S.C. 102(e) rejection can be overcome by antedating the filing date 
(see  MPEP w 2136.03 regarding critical reference date of a U.S. patent) 
of the U.S.  patent reference by submitting an affidavit or declaration under 
37 CFR 1.131 or by submitting an affidavit or declaration under 37 CFR 
1.132  establishing that the relevant disclosure is applicant's own work. 
In re Mathews, 161 USPQ 276 (CCPA 1969). The filing date can also be 
antedated by applicant's  earlier foreign priority application or 
provisional application if 35 U.S.C.  119 is met and the foreign 
application or provisional application "supports" 
(conforms to 35 U.S.C. 112, first paragraph requirements) all the claims 
of  the U.S. application. In re Gosteli, 10 USPQ2d 1614 (Fed. Cir. 1989). 
But a  prior application which was not copending with the application at 
issue cannot  be used to antedate a reference. In re Costello, 219 USPQ 
389 (Fed. Cir. 1983).  A terminal disclaimer also does not overcome a 35 
U.S.C. 102(e) rejection.  In re Bartfeld, 17 USPQ2d 1885 (Fed. Cir. 1991) 
(The examiner made a provisional  35 U.S.C. 102(e)/103 rejection over a 
commonly owned copending application  with a different inventive entity. 
The rejected application was a continuation-in-part 
(CIP) of the reference application. Applicants argued that the terminal 
disclaimer  they had submitted should be effective to overcome the 35 
U.S.C. 102(e)/103  rejection ** because Congress enacted ** 35 U.S.C. 
103>(c)< to foster free  exchange of ideas and concepts at universities 
and corporate research centers  by prohibiting the use of "secret prior 
art" in making obvious determinations  when the subject matter originates 
in the same organization. The court responded  by explaining that the 
plain language of 35 U.S.C. 103>(c)<** says that "subject  matter 
developed by another person, which qualifies as prior art only under 
subsection (f) or (g) of section 102 does not preclude patentability" 
(emphasis  added). Therefore, rejections under 35 U.S.C. 102(e) are not 
covered by 35  U.S.C. 103>(c)<** and a terminal disclaimer will not remove 
the 35 U.S.C. 102(e)/103  rejection.). 

        See MPEP w 706.02(b) for a list of methods which can be used to 
overcome  rejections based on 35 U.S.C. 102(e) rejections. For information 
on the required  contents of a 37 CFR 1.131 affidavit or declaration and 
the situations in which  such affidavits and declarations are permitted 
see MPEP w 715. An affidavit  or declaration is not appropriate if the 
reference describes applicant's own  work. In this case, applicant must 
submit an affidavit or declaration under  37 CFR 1.132. See the next 
paragraph for more information concerning the requirements  of 37 CFR 
1.132 affidavits and declarations. 

A 102(e) REJECTION CAN BE OVERCOME BY SHOWING THE PATENT IS DESCRIBING 
APPLICANT'S OWN WORK 

        "The fact that an application has named a different inventive 
entity  than a patent does not necessarily make that patent prior art." 
Applied Materials  Inc. v. Gemini Research Corp., 15 USPQ2d 1816 (Fed. 
Cir. 1988). The issue turns  on what the evidence of record shows as to 
who invented the subject matter.  In re Whittle, 172 USPQ 535, 537 (CCPA 
1972). In fact, even if applicant's  work was publicly disclosed prior to 
his or her application, applicant's own  work may not be used against him 
or her unless there is a time bar under 35  U.S.C. 102(b). In re DeBaun, 
214 USPQ 933 (CCPA 1982) (citing In re Katz, 215  USPQ 14 (CCPA 1982)). 
Therefore, when the unclaimed subject matter of a patent  is applicant's 
own invention, applicant may overcome a prima facie case based  on the 
patent by showing that the patent disclosure is a description of 
applicant's  own previous work. Such a showing can be made by proving that 
the patentee  was associated with applicant (e.g. worked for the same 
company) and learned  of applicant's invention from applicant. In re 
Mathews, 161 USPQ 276 (CCPA  1969). In the situation where one application 
is first filed by inventor X  and then a later application is filed by 
X&Y, it must be proven that the joint  invention was made first, was 
thereafter described in the sole applicant's  patent and then the joint 
application was filed. In re Land, 151 USPQ 621 (CCPA  1966). 

        In In re Land, 151 USPQ 621 (CCPA 1966), separate U.S. patents to 
Rogers  and to Land were used to reject a joint application to Rogers and 
Land under  35 U.S.C. 102(e)/103. The inventors worked for the same 
company (Polaroid)  and in the same laboratory. All the patents flowed 
from the same research.  In addition, the patent applications were 
prepared by the same attorneys, were  interrelated and contained 
cross-references to each other. The court affirmed  the rejection because 
(1) the inventive entities of the patents (one to Rogers  and one to Land) 
were different from the inventive entity of the joint application 
(Rogers and Land) and (2) Land and Rogers brought their knowledge of their 
 individual work with them when they made the joint invention. There was 
no  indication that the portions of the references relied on disclosed 
anything  they did jointly. Neither was there any showing that what they 
did jointly  was done before the filing of the reference patent applications. 

        See also In re Carreira, 189 USPQ 461 (CCPA 1976) (The examiner 
rejected  claims to a joint application to Carreira, Kyrakakis, Solodar, 
and Labana under 35 U.S.C. 102(e) and 103 in view of a U.S. patent issued 
to Tulagin and Carreira  or a patent issued to Clark. The applicant 
(Carreira et al.) submitted declarations  under 37 CFR 1.132 by Tulagin 
and Clark in which each declarant stated he was  "not the inventor of the 
use of compounds having a hydroxyl group in a position  ortho to an azo 
linkage." The court held that these statements were vague and 
inconclusive because the declarants did not disclose the use of this 
generic  compound but rather species of this generic compound in their 
patents and it  was the species which met the claims. The declaration that 
each did not invent  the use of the generic compound does not establish 
that Tulagin and Clark did  not invent the use of the species.) 

        MPEP w 715.01(a), w 715.01(c), and w 716.10 set forth more 
information  pertaining to the contents and uses of affidavits and 
declarations under 37  CFR 1.132 for antedating references. 

APPLICANT NEED NOT SHOW DILIGENCE 
OR REDUCTION TO PRACTICE WHEN THE 
SUBJECT MATTER DISCLOSED IN THE 
REFERENCE IS APPLICANT'S OWN WORK 

        When the U.S. patent reference reflects applicant's own work, 
applicant  need not prove diligence or reduction to practice to establish 
that he or she  invented the subject matter disclosed in the patent 
reference. A showing that  the reference disclosure arose from applicant's 
work coupled with a showing  of conception by the applicant before the 
filing date of the reference will  overcome  the 35 U.S.C. 102(e) 
rejection. The showing can be made by submission  of an affidavit by the 
inventor under 37 CFR 1.132. The other patentees need  not submit an 
affidavit disclaiming inventorship, but, if submitted, a disclaimer  by 
all other patentees should be considered by the examiner. In re DeBaun, 
214 USPQ 933 (CCPA 1982) (Declaration submitted by DeBaun stated that he 
was  the inventor of subject matter disclosed in the U.S. patent reference 
of DeBaun  and Noll. Exhibits were attached to the declaration showing 
conception and  included drawings Debaun had prepared and given to counsel 
for purposes of  preparing the application which issued as the reference 
patent. The court held  that, even though the evidence was not sufficient 
to antedate the 
prior art patent under 37 CFR 1.131, diligence and/or reduction to 
practice  was not required to show DeBaun invented the subject matter. 
Declarant's statement  that he conceived the invention first was enough to 
overcome the 35 U.S.C.  102(e) rejection.). 

CLAIMING OF INDIVIDUAL ELEMENTS OR SUBCOMBINATIONS IN A COMBINATION CLAIM 
OF  THE REFERENCE PATENT DOES NOT ITSELF ESTABLISH THAT THE PATENTEE 
INVENTED THOSE ELEMENTS 

        The existence of combination claims in a U.S. patent is not 
evidence  that the patentee invented the individual elements or 
subcombinations included  if the elements and subcombinations are not 
separately claimed apart from the  combination. In re DeBaun, 214 USPQ 933 
(CCPA 1982) (citing In re Facius, 161  USPQ 294, 301 (CCPA 1969)). 

        See also In re Mathews, 161 USPQ 276 (CCPA 1969) (On September 15, 
 1961, Dewey filed an application disclosing and claiming a time delay 
protective  device for an electric circuit. In disclosing the invention, 
Dewey completely  described, but did not claim, a "gating means 19" 
invented by Mathews which  was usable in the protective device. Dewey and 
Mathews were coworkers at General  Electric Company, the assignee. Mathews 
filed his application on March 7, 1963,  before the Dewey patent issued 
but almost 18 months after its filing. The Mathews  application disclosed 
that "one illustration of a circuit embodying the present  invention is 
shown in copending patent application S.N. 138,476-Dewey." The  examiner 
used Dewey to reject all the Mathews claims under 
35 U.S.C. 102(e). In response, Mathews submitted an affidavit by Dewey 
under  37 CFR 1.132. In the affidavit, Dewey stated that he did not invent 
the gating  means 19 but had learned of the gating means through Mathews 
and that GE attorneys  had advised that the gating means be disclosed in 
Dewey's application to comply  with 
35 U.S.C. 112, first paragraph. The examiner argued that the only way to 
overcome  a 35 U.S.C. 102(e) rejection was by submitting an affidavit or 
declaration  under 
37 CFR 1.131 to antedate the filing date of the reference. The court 
reversed  the rejection, holding that the totality of the evidence on 
record showed that  Dewey derived his knowledge from Mathews who is "the 
original, first and sole  inventor."). 


2137    35 U.S.C. 102(f) [R-1] 


>35 U.S.C. 102. Conditions for patentability; novelty and loss of right to 
 patent. 

A person shall be entitled to a patent unless -- 

***** 

(f) he did not himself invent the subject matter sought to be patented. 
***** 

        Where it can be shown that an applicant "derived" an invention 
from  another, a rejection under 35 U.S.C. 102(f) is proper. Ex parte 
Kusko, 215  USPQ 972, 974 (Bd. App. 1981) ("most, if not all, 
determinations under section  102(f) involve the question of whether one 
party derived an invention from  another"). 

        While derivation will bar the issuance of a patent to the deriver, 
 MPEP w 2325, a disclosure by the deriver, absent a bar under 35 U.S.C. 
102(b),  will not bar the issuance of a patent to the party from which the 
subject matter  was derived. In re Costello, 219 USPQ 389,390-91 (Fed. 
Cir. 1983) ("[a] prior  art reference that is not a statutory bar may be 
overcome by two generally  recognized methods": an affidavit under 37 CFR 
1.131, or an affidavit under  37 CFR 1.132 "showing that the relevant 
disclosure is a description of the  applicant's own work"); In re Facius, 
161 USPQ 294,302 (CCPA 1969) (subject  matter incorporated into a patent 
that was brought to the attention of the  patentee by applicant, and hence 
derived by the patentee from the applicant,  is available for use against 
applicant unless applicant had actually invented  the subject matter 
placed in the patent). 

        Where there is a published article identifying the authorship 
(MPEP  w 715.01(c)) or a patent identifying the  inventorship (MPEP w 
715.01(a)) that  discloses subject matter being claimed in an application 
undergoing examination,  the designation of authorship or inventorship 
does not raise a presumption  of inventorship with respect to the subject 
matter disclosed in the article  or with respect to the subject matter 
disclosed but not claimed in the patent  so as to justify a rejection 
under 35 U.S.C. 102(f). However, it is incumbent  upon the inventors named 
in the application, in response to an inquiry regarding  the appropriate 
inventorship under subsection (f), or to rebut a rejection  under 35 
U.S.C. 102(a) or (e), to provide a satisfactory showing by way of 
affidavit under  37 CFR 1.132 that the inventorship of the application is 
correct in that the  reference discloses subject matter invented by the 
applicant rather than derived  from the author or patentee notwithstanding 
the authorship of the article or  the inventorship of the patent. In re 
Katz, 215 USPQ 14,18 (CCPA 1982) (inquiry  is appropriate to clarify any 
ambiguity created by an article regarding inventorship,  and it is then 
incumbent upon the applicant to provide "a satisfactory showing  that 
would lead to a reasonable conclusion that [applicant] is the0inventor" 
of the subject matter disclosed in the article and claimed in the 
application). 
DERIVATION REQUIRES COMPLETE CONCEPTION BY ANOTHER AND COMMUNICATION TO 
THE  ALLEGED DERIVER 

        "The mere fact that a claim recites the use of various components, 
 each of which can be argumentatively assumed to be old, does not provide 
a  proper basis for a rejection under 35 U.S.C. 102(f)." Ex parte 
Billottet, 192 USPQ 413, 415 (Bd. App. 1976). Derivation requires complete 
conception  by another and communication of that conception by any means 
to the party charged  with derivation prior to any date on which it can be 
shown that the one charged  with derivation possessed knowledge of the 
invention, Kilbey v. Thiele, 199  USPQ 290, 294 (Bd. Pat. Inter. 1978). 

        See also New England Braiding Co., Inc. v. A.W. Chesterton Co., 23 
 USPQ2d 1622, 1626 (Fed. Cir. 1992) ("[t]o invalidate a patent for 
derivation  of invention, a party must demonstrate that the named inventor 
in the patent  acquired knowledge of the claimed invention from another, 
or at least so much  of the claimed invention as would have made it 
obvious to one of ordinary skill  in the art"); and Ex parte Andresen, 212 
USPQ 100, 102 (Bd. App. 1981) ("[S]ection  102(f) would only be applicable 
to an applicant who has acquired particular  subject matter or information 
from another, and thereafter seeks to patent  either the same or obvious 
variants of that acquired subject matter or information."). 
PARTY ALLEGING DERIVATION DOES NOT HAVE TO PROVE AN ACTUAL REDUCTION TO 
PRACTICE,  DERIVATION OF PUBLIC KNOWLEDGE, OR DERIVATION IN THIS COUNTRY 

        The party alleging derivation "need not prove an actual reduction 
to  practice in order to show derivation." Scott v. Brandenburger, 216 
USPQ 326,  327 (Bd. App. 1982). Furthermore, the application of subsection 
(f) is not  limited to public knowledge derived from another, and "the 
site of derivation  need not be in this country to bar a deriver from 
patenting the subject matter."  Ex parte Andresen, 212 USPQ 100, 102 (Bd. 
App. 1981). 

DERIVATION DISTINGUISHED FROM PRIORITY OF INVENTION 

        Although derivation and priority of invention both focus on 
inventorship,  derivation addresses originality (i.e., who invented the 
subject matter), whereas  priority focuses on which party first invented 
the subject matter. Price v.  Symsek, 26 USPQ2d 1031, 1033 (Fed. Cir. 1993). 

35 U.S.C. 102(f) MAY APPLY WHERE 35 U.S.C. 102(a) AND 35 U.S.C. 102(e) ARE 
 NOT AVAILABLE STATUTORY GROUNDS FOR REJECTION 

        35 U.S.C. 102(f) does not require an inquiry into the relative 
dates  of a reference and the application, and therefore may be applicable 
where subsections 
(a) and (e) are not available for references having an effective date 
subsequent  to the effective date of the application being examined. 
However for a reference  having a date later than the date of the 
application some evidence may exist  that the subject matter of the 
reference was derived from the applicant in  view of the relative dates. 
Ex parte Kusko, 215 USPQ 972,974 (Bd. App. 1981) 
(The relative dates of the events are important in determining derivation; 
 a publication dated more than a year after applicant's filing date that 
merely  lists as literary coauthors individuals other than applicant is 
not the strong  evidence needed to rebut a declaration by the applicant 
that he is the sole  inventor.).< 


2137.01         Inventorship [R-2] 


        The requirement that the applicant for a patent be the inventor is 
 a characteristic of U.S. patent law not generally shared by other 
countries.  Consequently, foreign applicants may misunderstand U.S. law 
regarding naming  of the actual inventors causing an error in the 
inventorship of a U.S. application  that may claim priority to a previous 
foreign application under 35 U.S.C. 119.  A petition under 37 CFR 1.48(a) 
is required to correct any error in naming  the inventors in the U.S. 
application as filed. MPEP w 201.03. Foreign applicants may need to be 
reminded of the requirement  for identity of inventorship between a U.S. 
application and a 35 U.S.C. 119  priority application. MPEP w 201.13. 

        If a determination is made that the inventive entity named in a 
U.S.  application is not correct, such as when a petition under 37 CFR 
1.48(a) is  not granted or is not entered for technical reasons, but the 
admission therein  regarding the error in inventorship is uncontroverted, 
a rejection under 35  U.S.C. 102(f) should be made. 

EXECUTORS OF OATH OR DECLARATION 
UNDER 37 CFR 1.63 ARE PRESUMED TO BE THE INVENTORS 

        The party or parties executing an oath or declaration under 37 CFR 
 1.63 are presumed to be the inventors. Driscoll v. Cebalo, 5 USPQ2d 1477, 
1481 
(Bd. Pat. Inter. 1982); In re DeBaun, 214 USPQ 933, 936 (CCPA 1982) (The 
inventor  of an element, per se, and the inventor of that element as used 
in a combination  may differ. "The existence of combination claims does 
not evidence inventorship  by the patentee of the individual elements or 
subcombinations thereof if the  latter are not separately claimed apart 
from the combination." 214 USPQ at  936 (quoting In re Facius, 161 USPQ 
294, 301 (CCPA 1969) (emphasis in original).);  Brader v. Schaeffer, 
193 USPQ 627, 631 (Bd. Pat. Inter. 1976) (in regard to an inventorship 
correction:  "[a]s between inventors their word is normally taken as to 
who are the actual  inventors" when there is no disagreement). 

AN INVENTOR MUST CONTRIBUTE TO THE CONCEPTION OF THE INVENTION 

        The definition for inventorship can be simply stated: "The 
threshold  question in determining inventorship is who conceived the 
invention. Unless  a person contributes to the conception of the 
invention, he is not an inventor.  0 Insofar as defining an inventor is 
concerned, reduction to practice, per  se, is irrelevant [except for 
simultaneous conception and reduction to practice,  Fiers v. Revel, 25 
USPQ2d 1601, 1604-05 (Fed. Cir. 1993)]. One must contribute  to the 
conception to be an inventor." In re Hardee, 223 USPQ 1122, 1123 (Dep. 
Asst. Comm'r Pat. 1984). See also Ex parte Smernoff, 215 USPQ 545, 547 
(Bd.  App. 1982) ("one who suggests an idea of a result to be 
accomplished, rather  than the means of accomplishing it, is not an 
coinventor"). See MPEP w 2138.04  - w 2138.05 for a discussion of what 
evidence is required to establish conception  or reduction to practice. 

AS LONG AS THE INVENTOR MAINTAINS 
INTELLECTUAL DOMINATION OVER MAKING THE INVENTION, IDEAS, SUGGESTIONS, AND 
 MATERIALS MAY BE ADOPTED FROM OTHERS 

        "In arriving at 0 conception [the inventor] may consider and adopt 
 ideas and materials derived from many sources 0 [such as] a suggestion 
from  an employee, or hired consultant 0 so long as he maintains 
intellectual domination  of the work of making the invention down to the 
successful testing, selecting  or rejecting as he goes0even if such 
suggestion [or material] proves to be  the key that unlocks his problem." 
Morse v. Porter, 
155 USPQ 280, 283 (Bd. Pat. Inter. 1965). See also New England Braiding 
Co.,  Inc. v. A.W. Chesterton Co., 
23 USPQ2d 1622, 1626 (Fed. Cir. 1992) (Adoption of the ideas and materials 
 from another can become a derivation.). 

THE INVENTOR IS NOT REQUIRED TO REDUCE THE INVENTION TO PRACTICE 

        Difficulties arise in separating members of a team effort, where 
each  member of the team has contributed something, into those members 
that actually  contributed to the conception of the invention, such as the 
physical structure  or operative steps, from those members that merely 
acted under the direction  and supervision of the conceivers. Fritsch v. 
Lin, 21 USPQ2d 1737, 1739 (Bd.  Pat. App. & Inter. 1991) (The inventor 
"took no part in developing the procedures0for  expressing the EPO gene in 
mammalian host cells and isolating the resulting  EPO product." However, 
"it is not essential for the inventor to be personally  involved in 
carrying out process  steps0where implementation of those steps  does not 
require the exercise of inventive skill."); In re DeBaun, 214 USPQ 933, 
936 (CCPA 1982) ("there is no requirement that the inventor be  the one to 
reduce the invention to practice so long as the reduction to practice  was 
done on his behalf"). 

        See also Mattor v. Coolegem, 189 USPQ 201, 204 (CCPA 1976) (one 
following  oral instructions is viewed as merely a technician); Tucker v. 
Naito, 188 USPQ  260, 263 (Bd. Pat. Inter. 1975) (inventors need not 
"personally construct and  test their invention"); Davis v. Carrier, 28 
USPQ 227, 229 (CCPA 1936) (noninventor's work was merely that of a skilled 
 mechanic carrying out the details of a plan devised by another). 
REQUIREMENTS FOR JOINT INVENTORSHIP 

        The inventive entity for a particular application is based on some 
 contribution to at least one of the claims made by each of the named 
inventors.  "Inventors may apply for a patent jointly even though (1) they 
did not physically  work together or at the same time, (2) each did not 
make the same type or amount  of contribution, or (3) each did not make a 
contribution to the subject matter  of every claim of the patent." 35 
U.S.C.116. "[T]he statute neither states  nor implies that two inventors 
can be `joint inventors' if they have had no  contact whatsoever and are 
completely unaware of each other's work." What is  required is some 
"quantum of collaboration or connection." In other words,  "[f]or persons 
to be joint inventors under Section 116, there must be some  element of 
joint behavior, such as collaboration or working under common direction, 
one inventor seeing a relevant report and building upon it or hearing 
another's  suggestion at a meeting." Kimberly-Clark Corp. v. Procter & 
Gamble Distributing,  23 USPQ2d 1921, 1925-26 (Fed. Cir. 1992); Moler v. 
Purdy, 131 USPQ 276, 279 
(Bd. Pat. Inter. 1960) ("it is not necessary that the inventive concept 
come  to both [joint inventors] at the same time"). 

INVENTORSHIP IS GENERALLY "TO ANOTHER" WHERE THERE ARE DIFFERENT INVENTIVE 
 ENTITIES WITH AT LEAST ONE INVENTOR IN COMMON 

        "[A] joint application or patent and a sole application or patent 
by  one of the joint inventors are [by] different legal entities and 
accordingly,  the issuance of the earlier filed application as a patent 
becomes a reference  for everything it discloses" (Ex parte Utschig, 156 
USPQ 156, 157 (Bd. App.  1966)) except where: 

        (1)   the claimed invention in a later filed application is 
entitled  to the benefit of an earlier filed application under 35 U.S.C. 
120 (an overlap  of inventors rather than an identical inventive entity is 
permissible). In  this situation, a rejection under 35 U.S.C. 102(e) is 
precluded. See Applied  Materials Inc. v. Gemini Research Corp., 15 USPQ2d 
1816, 1818 (Fed. Cir. 1988) 
("The fact that an application has named a different inventive entity than 
 a patent does not necessarily make that patent prior art."); and 
        (2)   the subject matter developed by another person and the 
claimed  subject matter were, at the time the invention was made, owned by 
the same  person or subject to an obligation of assignment to the same 
person. In this  situation, a rejection under 35 U.S.C. 102(f)/103 or 
102(g)/103 is precluded  by ** 35 U.S.C. 103>(c)<. 

        For case law relating to inventorship by "another" involving 
different  inventive entities with at least one inventor in common see Ex 
parte DesOrmeaux,  25 USPQ2d 2040 (Bd. Pat. App. & Inter. 1992) (the 
presence of a common inventor  in a reference patent and a pending 
application does not preclude the determination  that the reference 
inventive entity is to "another" within the meaning of 35  U.S.C. 102(e)) 
and the discussion of prior art available under 35 U.S.C. 102(e)  in MPEP 
w 2136.04. 


2137.02       Applicability of 35 U.S.C. 103>(c)<** [R-2] 


        The last sentence of 35 U.S.C. 103 states that subsection (f) of 
35  U.S.C. 102 will not preclude patentability where subject matter 
developed by  another person, that would otherwise qualify under 
subsection (f), and the  claimed invention of an application under 
examination were owned by the same  person or subject to an obligation of 
assignment to the same person at the  time the invention was made. See 
MPEP w 706.02(l) and w 2146. 


2138    35 U.S.C. 102(g) [R-1] 


>35 U.S.C. 102. Conditions for patentability; novelty and loss of right to 
 patent. 

A person shall be entitled to a patent unless -- 

***** 

(g) before the applicant's invention thereof the invention was made in 
this  country by another who had not abandoned, suppressed, or concealed 
it. In determining  priority of invention there shall be considered not 
only the respective dates  of conception and reduction to practice of the 
invention, but also the reasonable  diligence of one who was first to 
conceive and last to reduce to practice,  from a time prior to conception 
by the other. 

        35 U.S.C. 102(g) issues such as conception, reduction to practice 
and  diligence, while more commonly applied to interference matters, also 
arise  in other contexts. New Idea Farm Equipment Corp. v. Sperry Corp., 
916 F.2d 1561, 16 USPQ2d 1424, 1428 (Fed. Cir. 1990). For example, 35 
U.S.C.  102(g) and 35 U.S.C. 103 have been combined in the context of an 
ex parte rejection  entirely divorced from the award of priority in an 
interference. In re Bass,  474 F.2d 1276, 177 USPQ 178, 183 (CCPA 1973) 
(in an unsuccessful attempt to  utilize a 
37 CFR 1.131 affidavit relating to a combination application, applicants 
admitted  that the subcombination screen of a copending application which 
issued as a  patent was earlier conceived than the combination). See also 
Du Pont de Nemours  v. Phillips Petroleum Co., 849 F.2d 1430, 7 USPQ2d 
1129, 1132 (Fed. Cir.),  cert. denied, 488 U.S. 986 (1988) (determining 
whether patent claims were novel  under 35 U.S.C. 102(g) in an 
infringement proceeding); In re Costello, et al.,  717 F.2d 1346, 219 USPQ 
389 (Fed. Cir. 1983) (discussing the concepts of conception  and 
constructive reduction to practice in the context of a declaration under 
37 CFR 1.131); Kawai v. Metlesics, 480 F.2d 880, 178 USPQ 158 (CCPA 1973) 
(holding  constructive reduction to practice for priority under 35 U.S.C. 
119 requires  meeting the requirements of 35 U.S.C. 101 and 35 U.S.C 112).< 


2138.01       Interference Practice [R-1] 


>35 U.S.C. 102(g) IS THE BASIS OF INTERFERENCE PRACTICE 

        Subsection (g) of 35 U.S.C. 102 is the basis of interference 
practice  for determining priority of invention between two parties. 
Bigham v. Godtfredsen,  857 F.2d 1415, 8 USPQ2d 1266, 1267 (Fed. Cir. 
1988), 35 U.S.C. 135, 37 CFR  1.601+ and MPEP chapter 2300. An 
interference is an inter partes proceeding  directed at determining the 
first to invent as among the parties to the proceeding,  involving two or 
more pending applications naming different inventors or one  or more 
pending applications and one or more unexpired patents naming different 
inventors (37 CFR 1.601(i)). The United States is unusual in having a 
first  to invent rather than a first to file system. Paulik v. Rizkalla, 
760 F.2d  1270, 226 USPQ 224, 225 (Fed. Cir. 1985) (reviews the 
legislative history of  the subsection in a concurring opinion by Judge 
Rich). The first of many to  reduce an invention to practice around the 
same time will be the sole party  to obtain a patent, Radio Corporation of 
America v. Radio Engineering Laboratories,  Inc., 21 USPQ 353, 353-4 
(1934), unless another was the first to conceive and  couple a 
later-in-time reduction to practice with diligence from a time just  prior 
to when the second conceiver entered the field to the first conceiver's 
reduction to practice. Hull v. Davenport, 33 USPQ 506, 508 (CCPA 1937). 
See  the priority time charts below illustrating this point. Upon 
conclusion of  an interference, subject matter claimed by the losing party 
that was the basis  of the interference is rejected under 35 U.S.C. 
102(g), unless the acts showing  prior invention were not in this country. 

        It is noted that 35 U.S.C. 101 requires that whoever invents or 
discovers  is the party who may obtain a patent for the particular 
invention or discovery.  35 U.S.C. 111 (applicant) or 35 U.S.C. 116 
(applicants) set forth the requirement  that the actual inventor(s) be the 
party who applies for a patent or that a  patent be applied for on behalf 
of the inventor. Where it can be shown that  an applicant has "derived" an 
invention from another, a rejection under 35  U.S.C. 102(f) is proper. Ex 
parte Kusko, 
215 USPQ 972, 974 (Bd. App. 1981) ("most, if not all, determinations under 
 Section 102(f) involve the question of whether one party derived an 
invention  from another"). Price v. Symsek, 26 USPQ2d 1031,1033 (Fed. Cir. 
1993) (Although  derivation and priority of invention both focus on 
inventorship, derivation  addresses originality, i.e., who invented the 
subject matter, whereas priority  focuses on which party invented the 
subject matter first.). 

PRIORITY TIME CHARTS 

        The following priority time charts illustrate the award of 
invention  priority in several situations. The time charts apply to 
interference proceedings  and are also applicable to declarations or 
affidavits filed under 37 CFR 1.131  to antedate references which are 
available as prior art under 35 U.S.C. 102(a)  or 102(e). Note, however, 
in the context of 37 CFR 1.131, an applicant does  not have to show that 
the invention was not abandoned, suppressed, or concealed  from the time 
of an actual reduction to practice to a constructive reduction  to 
practice because the length of time taken to file a patent application 
after  an actual reduction to practice is generally of no consequence 
except in an  interference proceeding. Paulik v. Rizkalla, 226 USPQ 224 
(Fed. Cir. 1985).  See the discussion of abandonment, suppression, and 
concealment in MPEP w 2138.03. 
        For purposes of analysis under 37 CFR 1.131, the conception and 
reduction  to practice of the reference to be antedated are both 
considered to be on the  effective filing date of domestic patent or 
foreign patent or the date of printed  publication. 

        In the charts, C = conception, R = reduction to practice (either 
actual  or constructive), Ra = actual reduction to practice, Rc = 
constructive reduction  to practice, and TD = commencement of diligence. 

I. 

                C Rc 

A S         >S 
                C   R 
B   S       >S 

        A is awarded priority in an interference, or antedates B as a 
reference  in the context of a declaration or affidavit filed under 37 CFR 
1.131, because  A conceived the invention before B and constructively 
reduced the invention  to practice before B reduced the invention to 
practice. The same result would  be reached if the conception date was the 
same for both inventors A and B. 

II. 

        C TD            Rc 
A S   |             >S 
                C R 
B   S     >S 

        A is awarded priority in an interference, or antedates B as a 
reference  in the context of a declaration or affidavit filed under 37 CFR 
1.131, if A  can show reasonable diligence from TD (a point just prior to 
B's conception)  until Rc because A conceived the invention before B, and 
diligently constructively  reduced the invention to practice even though 
this was after B reduced the  invention to practice. 

III. 

        C   Ra          Rc 
A S         >       >S 
                C   R 
B   S       >S 

        A is awarded priority in an interference in the absence of 
abandonment,  suppression, or concealment from Ra to Rc, because A 
conceived the invention  before B, actually reduced the invention to 
practice before B reduced the invention  to practice, and did not abandon, 
suppress, or conceal the invention after  actually reducing the invention 
to practice and before constructively reducing  the invention to practice. 

        A antedates B as a reference in the context of a declaration or 
affidavit  filed under 37 CFR 1.131 because A conceived the invention 
before B and actually  reduced the invention to practice before B reduced 
the invention to practice. 
IV. 

        C TD                            Ra      Rc 
A S   |                         |   >S 
                C       R 
B   S           >S 

        A is awarded priority in an interference if A can show reasonable 
diligence  from TD (a point just prior to B's conception) until Ra in the 
absence of abandonment,  suppression, or concealment from Ra to Rc, 
because A conceived the invention  before B, diligently actually reduced 
the invention to practice (after B reduced  the invention to practice), 
and did not abandon, suppress, or conceal the invention  after actually 
reducing the invention to practice and before constructively  reducing the 
invention to practice. 

        A antedates B as a reference in the context of a declaration or 
affidavit  filed under 37 CFR 1.131 because A conceived the invention 
before B, and diligently  actually reduced the invention to practice, even 
though this was after B reduced  the invention to practice. 

37 CFR 1.131 DOES NOT APPLY IN 
INTERFERENCE PROCEEDINGS 

        Interference practice operates to the exclusion of ex parte 
practice  under 37 CFR 1.131 which permits an applicant to show an actual 
date of invention  prior to the effective date of a patent or literature 
reference applied under 35 U.S.C.  102(a) or (e), as long as the patent is 
not a domestic patent claiming the  same patentable invention. Ex parte 
Standish, 10 USPQ2d 1454, 1457 (Bd. Pat.  App. & Inter. 1988) (An 
application claim to the "same patentable invention"  claimed in a 
domestic patent requires interference rather than an affidavit  under 
37 CFR 1.131 to antedate the patent. The term "same patentable invention" 
encompasses  a claim that is either anticipated by or obvious in view of 
the subject matter  recited in the patent claim.). Subject matter which is 
available as prior art  only under 35 U.S.C. 102(g) is by definition made 
before the applicant made  his invention and is therefore not open to 
further inquiry under 37 CFR 1.131. 
LOST COUNTS IN AN INTERFERENCE ARE NOT, PER SE, STATUTORY PRIOR ART 
        Loss of an interference count alone does not make its subject 
matter  statutory prior art to losing party; however, lost count subject 
matter that  is available as prior art under 35 U.S.C. 102 may be used 
alone or in combination  with other references under 35 U.S.C. 103. But 
see In re Deckler, 977 F.2d  1449, 24 USPQ2d 1448 (Fed. Cir. 1992) (Under 
the principles of res judicata  and 
collateral estoppel, Deckler was not entitled to claims that were 
patentably  indistinguishable from the claim lost in interference even 
though the subject  matter of the lost count was not available for use in 
an obviousness rejection  under 35 U.S.C. 103.).< 


2138.02       "The Invention Was Made in This Country" [R-1] 


        >An invention is made when there is a conception and a reduction 
to  practice. Dunn v. Ragin, 50 USPQ 472, 474 (Bd. Pat. Inter. 1941). 
Prior art  under subsection (g) is limited to an invention that is made. 
In re Katz, 687  F.2d 450, 215 USPQ 14, 17 (CCPA 1982) (the publication of 
an article, alone,  is not deemed a constructive reduction to practice, 
and therefore its disclosure  does not prove that any invention within the 
meaning of subsection (g) has  ever been made). 

        Subject matter under subsection (g) is available only if made in 
this  country. 35 U.S.C. 104. Kondo v. Martel, 220 USPQ 47 (Bd. Pat. 
Inter. 1983) 
(acts of conception, reduction to practice and diligence must be 
demonstrated  in this country). Compare Colbert v. Lofdahl, 
21 USPQ2d 1068, 1071 (Bd. Pat. App. & Inter. 1991) ("[i]f the invention is 
 reduced to practice in a foreign country and knowledge of the invention 
was  brought into this country and disclosed to others, the inventor can 
derive  no benefit from the work done abroad and such knowledge is merely 
evidence  of conception of the invention"). 

        Note, however, that 35 U.S.C. 104, as amended by GATT (Public Law 
103-465,  108 Stat. 4809 (1994)) and NAFTA (Public Law 103-182, 107 Stat. 
2057 (1993)),  provides that an applicant can establish a date of 
invention in a NAFTA member  country on or after December 8, 1993 or in 
WTO member country other than a  NAFTA member country on or after January 
1, 1996. Accordingly, an interference  count may be won or lost on the 
basis of establishment of invention by one  of the parties in a NAFTA or 
WTO member country, thereby rendering the subject  matter of that count 
unpatentable to the other party under the principles of  res judicata and 
collateral estoppel, even though such subject matter is not  available as 
statutory prior art under 35 U.S.C. 102(g). See MPEP w 2138.01  regarding 
lost interference counts which are not statutory prior art.< 

2138.03       "By Another Who Has Not Abandoned, Suppressed, or Concealed 
It" [R-1] 

        >35 U.S.C. 102(g) generally makes available as prior art within 
the  meaning of 35 U.S.C. 103, the prior invention of another who has not 
abandoned,  suppressed or concealed it. In re Bass, 474 F.2d 1276, 177 
USPQ 178 (CCPA 1973)).  See also MPEP # 2332. In re Suska, 589 F.2d 527, 
200 USPQ 497 (CCPA 1979) (The  result of applying the suppression and 
concealment doctrine is that the inventor  who did not conceal (but was 
the de facto last inventor) is treated legally  as the first to invent, 
while the de facto first inventor who suppressed or  concealed is treated 
as a later inventor. The de facto first inventor, by his  suppression and 
concealment, lost the right to rely on his actual date of invention  not 
only for priority purposes, but also for purposes of avoiding the 
invention  of the counts as prior art.). 

        "The courts have consistently held that an invention, though 
completed,  is deemed abandoned, suppressed, or concealed if, within a 
reasonable time after completion, no steps are taken  to make the 
invention publicly known. Thus failure to file a patent application;  to 
describe the invention in a publicly disseminated document; or to use the 
invention publicly, have been held to constitute abandonment, suppression, 
 or concealment." Correge v. Murphy, 217 USPQ 753, 756 (Fed. Cir. 1983) 
quoting  International Glass Co. v. United States, 408 F.2d 395, 159 USPQ 
434, 441 (Ct.  Cl. 1969) (An invention was actually reduced to practice, 7 
months later there  was a public disclosure of the invention, and 8 months 
thereafter a patent  application was filed. The court held filing a patent 
application within 1  year of a public disclosure is not an unreasonable 
delay, therefore reasonable  diligence must only be shown between the date 
of the actual reduction to practice  and the public disclosure to avoid 
the inference of abandonment.). 
DURING AN INTERFERENCE PROCEEDING, AN INFERENCE OF SUPPRESSION OR 
CONCEALMENT  MAY ARISE FROM DELAY IN FILING 
PATENT APPLICATION 

        Once an invention is actually reduced to practice an inventor need 
 not rush to file a patent application. 
Shindelar v. Holdeman, 207 USPQ 112, 116 (CCPA 1980). The length of time 
taken  to file a patent application after an actual reduction to practice 
is generally  of no consequence except in an interference proceeding. 
Paulik v. Rizkalla,  226 USPQ 225, 226 (Fed. Cir. 1985) (suppression or 
concealment may be deliberate  or may arise due to an inference from a 
"too long" delay in filing a patent  application). Peeler v. Miller, 190 
USPQ 117,124 (CCPA 1976) ("mere delay,  without more, is not sufficient to 
establish suppression or concealment." "What  we are deciding here is that 
Monsanto's delay is not `merely delay' and that  Monsanto's justification 
for the delay is inadequate to overcome the inference  of suppression 
created by the excessive delay." The word "mere" does not imply  a total 
absence of a limit on the duration of delay. Whether any delay is "mere" 
is decided only on a case-by-case basis.) 

        Where a junior party in an interference relies upon an actual 
reduction  to practice to demonstrate first inventorship, and where the 
hiatus in time  between the date for the junior party's asserted reduction 
to practice and  the filing of its application is unreasonably long, the 
hiatus may give rise  to an inference that the junior party in fact 
suppressed or concealed the invention  and the junior party will not be 
allowed to rely upon the earlier actual reduction  to practice. Young v. 
Dworkin, 180 USPQ 388, n.3 and 391 (CCPA 1974) (suppression  and 
concealment issues are to be addressed on a case-by-case basis). 
SUPPRESSION OR CONCEALMENT NEED NOT BE ATTRIBUTED TO INVENTOR 

        Suppression or concealment need not be attributed to the inventor. 
 Peeler v. Miller, 190 USPQ 117, 122 (CCPA 1976) ("four year delay from 
the  time an inventor 0 completes his work 0 and the time his 
assignee-employer  files a patent application is, prima facie, 
unreasonably long in an interference  with a party who filed first"); 
Shindelar v. Holdeman 207 USPQ 112, 116-17 
(CCPA 1980) (A patent attorney's workload will not preclude a holding of 
an  unreasonable delay-a total of 3 months was identified as possible of 
excuse  in regard to the filing of an application.). 

INFERENCE OF SUPPRESSION OR CONCEALMENT IS REBUTTABLE 

        Notwithstanding a finding of suppression or concealment, a 
constructive  reduction to practice such as renewed activity just prior to 
other party's  entry into field coupled with the diligent filing of an 
application would still  cause the junior party to prevail. Lutzker v. Plet, 
6 USPQ2d 1370, 1371-72 (Fed. Cir. 1988) (activities directed towards 
commercialization  not sufficient to rebut inference); Holmwood v. 
Cherpeck, 2 USPQ2d 1942, 1945 
(Bd. Pat. App. & Inter. 1986) (the inference of suppression or concealment 
 may be rebutted by showing activity directed to perfecting the invention, 
preparing  the application, or preparing other compounds within the scope 
of the generic  invention); Engelhardt v. Judd, 
151 USPQ 732, 735 (CCPA 1966) ("We recognize that an inventor of a new 
series  of compounds should not be forced to file applications piecemeal 
on each new  member as it is synthesized, identified and tested for 
utility. A reasonable  amount of time should be allowed for completion of 
the research project on  the whole series of new compounds, and a further 
reasonable time period should  then be allowed for drafting and filing the 
patent application(s) thereon");  Bogoslowsky v. Huse, 61 USPQ 349, 351 
(CCPA 1944) (The doctrine of suppression  and concealment is not 
applicable to conception without an actual reduction  to practice.). 

ABANDONMENT 

        A finding of suppression or concealment may not amount to a 
finding  of abandonment wherein a right to a patent is lost. Steierman v. 
Connelly,  197 USPQ 288, 289 (Comm'r Pat. 1976); Correge v. Murphy, 217 
USPQ 753, 755 
(Fed. Cir. 1983) (an invention cannot be abandoned until it is first 
reduced  to practice).< 


2138.04       "Conception" [R-1] 


        >Conception has been defined as "the complete performance of the 
mental  part of the inventive act" and it is "the formation in the mind of 
the inventor  of a definite and permanent idea of the complete and 
operative invention as  it is thereafter to be applied in practice0." 
Townsend v. Smith, 4 USPQ 269,271 
(CCPA 1930). "[C]onception is established when the invention is made 
sufficiently  clear to enable one skilled in the art to reduce it to 
practice without the  exercise of extensive experimentation or the 
exercise of inventive skill."  Hiatt v. Ziegler, 179 USPQ 757,763 (Bd. 
Pat. Inter. 1973). Conception has also  been defined as a disclosure of an 
invention which enables one skilled in the  art to reduce the invention to 
a practical form without "exercise of the inventive  faculty." Gunter v. 
Stream, 197 USPQ 482 (CCPA 1978). See also Coleman v. Dines,  224 USPQ 857 
(Fed. Cir. 1985) (It is settled that in establishing conception  a party 
must show possession of every feature recited in the count, and that 
every limitation of the count must have been known to the inventor at the 
time  of the alleged conception. Conception must be proved by 
corroborating evidence.);  Hybritech Inc. v. Monoclonal 
Antibodies Inc., 802 F. 2d 1367, 1376, 231 USPQ 81, 87 (Fed. Cir. 1986) 
(Conception  is the "formation in the mind of the inventor, of a definite 
and permanent  idea of the complete and operative invention, as it is 
hereafter to be applied  in practice."). 

CONCEPTION MUST BE DONE IN THE MIND OF THE INVENTOR 

        The inventor must form a definite and permanent idea of the 
complete  and operable invention to establish conception. Bosies v. 
Benedict, 30 USPQ2d  1862, 1865 (Fed. Cir. 1994) (Testimony by a 
noninventor as to the meaning of  a variable of a generic compound 
described in an inventor's notebook was insufficient  as a matter of law 
to establish the meaning of the variable because the testimony  was not 
probative of what the inventors conceived.). 

AS LONG AS THE INVENTOR MAINTAINS 
INTELLECTUAL DOMINATION OVER MAKING THE INVENTION, IDEAS, SUGGESTIONS, AND 
 MATERIALS MAY BE ADOPTED FROM OTHERS 

        An inventor may consider and adopt ideas, suggestions and 
materials  derived from many sources: a suggestion from an employee, a 
hired consultant  or a friend even if the adopted material proves to be 
the key that unlocks  the problem so long as the inventor "maintains 
intellectual domination of the  work of making the invention down to the 
successful testing, selecting or rejecting0."  Morse v. Porter, 155 USPQ 
280, 283 (Bd. Pat. Inter. 1965); Staehelin v. Secher,  24 USPQ2d 1513,1522 
(Bd. Pat. App. & Inter. 1992) ("evidence of conception  naming only one of 
the actual inventive entity inures to the benefit of and  serves as 
evidence of conception by the complete inventive entity"). 
CONCEPTION REQUIRES CONTEMPORANEOUS RECOGNITION AND APPRECIATION OF THE 
INVENTION 

        There must be a contemporaneous recognition and appreciation of 
the  invention for there to be conception. Silvestri v. Grant, 181 USPQ 
706,708 
(CCPA 1974) ("an accidental and unappreciated duplication of an invention 
does  not defeat the patent right of one who, though later in time was the 
first  to recognize that which constitutes the inventive subject matter"); 
Langer  v. Kaufman, 175 USPQ 172,174 (CCPA 1972) (new form of catalyst was 
not recognized  when it was first produced; conception cannot be 
established nunc pro tunc).  However, an inventor does not need to know 
that the invention will work for  there to be complete conception. 
Burroughs Wellcome Co. v. Barr Labs. Inc.,  32 USPQ2d 1915, 1919 (Fed. 
Cir. 1994) (Draft patent application disclosing  treatment of AIDS with 
AZT reciting dosages, forms, and routes of administration  was sufficient 
to collaborate conception whether or not the inventors believed  the 
inventions would work based on initial screening tests.). 

        While conception of a species within a genus may constitute 
conception  of the genus, conception of one species and the genus may not 
constitute conception  of another species in the genus. Oka v. Youssefyeh, 
7 USPQ2d 1169 (Fed. Cir. 1988) (conception of a chemical requires both the 
 idea of the structure of the chemical and possession of an operative 
method  of making it). See also Amgen v. Chugai, 18 USPQ2d 1016, 1021 
(Fed. Cir. 1991) 
(in the isolation of a gene, defining a gene by its principal biological 
property  is not sufficient for conception absent an ability to envision 
the detailed  constitution as well as a method for obtaining it); Fiers v. 
Revel (formerly  Sugano), 25 USPQ2d 1601, 1605 (Fed. Cir. 1993) ("[b]efore 
reduction to practice,  conception only of a process for making a 
substance, without conception of  a structural or equivalent definition of 
that substance, can at most constitute  a conception of the substance 
claimed as a process" but cannot constitute conception  of the substance; 
as "conception is not enablement," conception of a purified  DNA sequence 
coding for a specific protein by function and a method for its  isolation 
that could be carried out by one of ordinary skill in the art is  not 
conception of that material). 

        On rare occasions conception and reduction to practice occur 
simultaneously.  Alpert v. Slatin, 134 USPQ 296, 299 (CCPA 1962). "[I]n 
some unpredictable areas  of chemistry and biology, there is no conception 
until the invention has been  reduced to practice." MacMillan v. Moffett, 
167 USPQ 550, 552-553 (CCPA 1970).  See also Dunn v. Ragin, 50 USPQ 472, 
475 (Bd. Pat. Inter. 1941) (a new variety  of asexually reproduced plant 
is conceived and reduced to practice when it  is grown and recognized as a 
new variety). Under these circumstances, conception  is not complete if 
subsequent experimentation reveals factual uncertainty which  "so 
undermines the specificity of the inventor's idea that it is not yet a 
definite and permanent reflection of the complete invention as it will be 
used  in practice." Burroughs Wellcome Co. v. Barr Labs. Inc., 32 USPQ2d 
1915, 1920 
(Fed. Cir. 1994). 

A PREVIOUSLY ABANDONED APPLICATION WHICH WAS NOT COPENDING WITH A 
SUBSEQUENT  APPLICATION IS EVIDENCE ONLY OF CONCEPTION 

        An abandoned application with which no subsequent application was 
copending  serves to abandon benefit of the application's filing as a 
constructive reduction  to practice and the abandoned application is 
evidence only of conception. In  re Costello, 219 USPQ 389, 392 (Fed. Cir. 
1983).< 


2138.05       "Reduction to Practice" [R-1] 


        >Reduction to practice may be an actual reduction or a 
constructive  reduction to practice, i.e., filing of a patent application. 
Dunn v. Ragin,  50 USPQ 472, 474 (Bd. Pat. Inter. 1941) (asexually 
reproduced plants require  an actual reduction to practice). A reduction 
to practice can be done by another  on behalf of the inventor. De Solms v. 
Schoenwald, 15 USPQ2d 1507, 1510 (Bd.  Pat. App. & Inter. 1990). "While 
the filing of the original application theoretically  constituted a 
constructive reduction to practice at the time, the subsequent 
abandonment of that application also resulted in an abandonment of the 
benefit  of that filing as a constructive reduction to practice. The 
filing of the original  application is, however, evidence of conception of 
the invention. In re Costello,  219 USPQ 389, 392 (Fed. Cir. 1983). 

CONSTRUCTIVE REDUCTION TO PRACTICE REQUIRES COMPLIANCE WITH 35 U.S.C. 112, 
 FIRST PARAGRAPH 

        Proof of a constructive reduction to practice requires sufficient 
disclosure  under the "how to use" and "how to make" requirements of 35 
U.S.C. 112, first  paragraph. Kawai v. Metlesics, 178 USPQ 158, 163 (CCPA 
1973) (A constructive  reduction to practice is not proven unless the 
specification discloses a practical  utility where one would not be 
obvious. Prior art which disclosed an anticonvulsant  compound which 
differed from the claimed compound only in the absence of a  -CH2- group 
connecting two functional groups was not sufficient to establish  utility 
of the claimed compound because the compounds were not so closely related 
that they could be presumed to have the same utility.). See also Bigham v. 
 Godtfredsen, 8 USPQ2d 1266, 1268 (Fed. Cir. 1988) ("[t]he generic term 
halogen  comprehends a limited number of species, and ordinarily 
constitutes a sufficient  written description of the common halogen 
species," except where the halogen  species are patentably distinct). 

        The first conceiver may rely on earlier filed applications under 
35  U.S.C. 120 (Ginos v. Nedelec, 220 USPQ 831, 833 (Bd. Pat. Inter. 
1983)) provided  the earlier application satisfies 35 U.S.C. 112, first 
paragraph (Suh v. Hoefle,  23 USPQ2d 1321, 1325 (Bd. Pat. App. & Inter. 
1992)). 

REQUIREMENTS TO ESTABLISH ACTUAL REDUCTION TO PRACTICE 

        The same evidence sufficient for a constructive reduction to 
practice  may be insufficient to establish an actual reduction to 
practice, which requires  a showing of the invention in a physical or 
tangible form that shows every  element of the count. Wetmore v. Quick, 
190 USPQ 223, 227 (CCPA 1976). For  an actual reduction to practice, the 
invention must have been sufficiently  tested to demonstrate that it will 
work for its intended purpose, but it need  not be in a commercially 
satisfactory stage of development. If a device is  so simple, and its 
purpose and efficacy so obvious, construction alone is sufficient  to 
demonstrate workability. King Instrument Corp. v. Otari Corp., 226 USPQ 
402, 407 (Fed. Cir. 1985). 

        For additional cases pertaining to the requirements necessary to 
establish  actual reduction to practice see DSL Dynamic Sciences Ltd. v. 
Union Switch  & Signal, 
18 USPQ2d 1152, 1155 (Fed. Cir. 1991) ("events occurring after an alleged 
actual  reduction to practice can call into question whether reduction to 
practice  has in fact occurred."); Corona v. Dovan, 273 U.S. 692, 1928 CD 
252 (1928) 
("A process is reduced to practice when it is successfully performed. A 
machine  is reduced to practice when it is assembled, adjusted and used. A 
manufacture  [i.e., article of manufacture] is reduced to practice when it 
is completely  manufactured. A composition of matter is reduced to 
practice when it is completely  composed." 1928 C.D. at 262-263 (emphasis 
added).); Fitzgerald v. Arbib, 122  USPQ 530, 531-32 (CCPA 1959) ("the 
reduction to practice of a three-dimensional  design invention requires 
the production of an article embodying that design"  in "other than a mere 
drawing"). 

TESTING REQUIRED TO ESTABLISH AN 
ACTUAL REDUCTION TO PRACTICE 

        "The nature of testing which is required to establish a reduction 
to  practice depends on the particular facts of each case, especially the 
nature  of the invention." Gellert v. Wanberg, 181 USPQ 648, 652 (CCPA 
1974) ("an invention  may be tested sufficiently 0 where less than all of 
the conditions of actual  use are duplicated by the tests"); Wells v. 
Fremont, 177 USPQ 22, 24-5 (Bd.  Pat. Inter. 1972) ("even where tests are 
conducted under `bench' or laboratory  conditions, those conditions must 
`fully duplicate each and every condition  of actual use' or if they do 
not, then the evidence must establish a relationship  between the subject 
matter, the test condition and the intended functional  setting of the 
invention," but it is not required that all the conditions of  all actual 
uses be duplicated, such as rain, snow, mud, dust and submersion  in 
water). 

REDUCTION TO PRACTICE REQUIRES RECOGNITION AND APPRECIATION OF THE 
INVENTION 
        The invention must be recognized and appreciated for a reduction 
to  practice to occur. Alsenz v. Hargraves, 13 USPQ2d 1371, 1374 (Bd. Pat. 
App.  & Int. 1989) (a reduction to practice cannot be established nunc pro 
tunc);  Meitzner v. Corte, 190 USPQ 407, 410 (CCPA 1976) (there can be no 
conception  or reduction to practice of a new form or of a process using 
such a new form  of an otherwise old composition where there has been no 
recognition or appreciation  of the existence of the new form); Parker v. 
Frilette, 174 USPQ 321, 324 (CCPA  1972) ("[an] inventor need not 
understand precisely why his invention works  in order to achieve an 
actual reduction to practice"). 

IN AN INTERFERENCE PROCEEDING, ALL 
LIMITATIONS OF A COUNT MUST BE REDUCED TO PRACTICE 

        The device reduced to practice must include every limitation of 
the  count. Fredkin v. Irasek, 397 F.2d 342, 158 USPQ 280, 285 (CCPA 
1968); every  limitation in a count is material and must be proved to 
establish an actual  reduction to practice. Meitzner v. Corte, 190 USPQ 
407, 410. See also Hull  v. Bonis, 214 USPQ 731, 734 (Bd. Pat. Inter. 
1982) (no doctrine of equivalents-remedy  is a preliminary motion to amend 
the count to conform to the proofs). 
CLAIMED INVENTION IS NOT ACTUALLY 
REDUCED TO PRACTICE UNLESS THERE IS A KNOWN UTILITY 

        Utility for the invention must be known at the time of the 
reduction  to practice. Wiesner v. Weigert, 
212 USPQ 721, 726 (CCPA 1981) (except for plant and design inventions); 
Azar  v. Burns, 188 USPQ 601, 604 (Bd. Pat. Inter. 1975) (a composition 
and a method  cannot be actually reduced to practice unless the 
composition and the product  produced by the method have a practical 
utility); Ciric v. Flanigen, 185 USPQ  103, 105-6 (CCPA 1975) ("when a 
count does not recite any particular utility, evidence  establishing a 
substantial utility for any purpose is sufficient to prove a  reduction to 
practice"; "the demonstrated similarity of ion exchange and adsorptive 
properties between the newly discovered zeolites and known crystalline 
zeolites  0 have established  utility for the zeolites of the count"); 
Engelhardt v.  Judd, 151 USPQ 732, 735 (CCPA 1966) (When considering an 
actual reduction to  practice as a bar to patentability for claims to 
compounds, it is sufficient  to successfully demonstrate utility of the 
compounds in animals for somewhat  different pharmaceutical purposes than 
those asserted in the specification  for humans.); Rey-Bellet v. 
Engelhardt, 181 USPQ 453, 455 (CCPA 1974) (Two  categories of tests on 
laboratory animals have been considered adequate to  show utility and 
reduction to practice: first, tests carried out to prove utility  in 
humans where there is a satisfactory correlation between humans and 
animals,  and second, tests carried out to prove utility for treating 
animals.). 
A PROBABLE UTILITY MAY NOT BE SUFFICIENT TO ESTABLISH UTILITY 

        A probable utility does not establish a practical utility, which 
is  established by actual testing or where the utility can be "foretold 
with certainty."  Bindra v. Kelly, 206 USPQ 570, 575 (Bd. Pat. Inter. 
1979) (Reduction to practice  was not established for an intermediate 
useful in the preparation of a second  intermediate with a known utility 
in the preparation of a pharmaceutical. The  record established there was 
a high degree of probability of a successful preparation  because one 
skilled in the art may have been motivated, in the sense of 35  U.S.C. 
103, to prepare the second intermediate from the first intermediate. 
However, a strong probability of utility is not sufficient to establish 
practical  utility.); Wu v. Jucker, 
167 USPQ 467, 472 (Bd. Pat. Inter. 1968) (screening test where there was 
an  indication of possible utility is insufficient to establish practical 
utility).  But see Nelson v. Bowler, 206 USPQ 881, 885 (CCPA 1980) 
(Relevant evidence  is judged as a whole for its persuasiveness in linking 
observed properties  to suggested uses. Reasonable correlation between the 
two is sufficient for  an actual reduction to practice.).< 


2138.06       "Reasonable Diligence" [R-1] 


        >The diligence of 35 U.S.C. 102(g) relates to reasonable 
"attorney-diligence"  and "engineering-diligence" (Keizer v. Bradley, 123 
USPQ 215, 216 (CCPA 1959)),  which does not require that "an inventor or 
his attorney 0 drop all other work  and concentrate on the particular 
invention involved0." Emery v. Ronden, 188 USPQ 264, 268 (Bd. Pat. Inter. 
1974). 

CRITICAL PERIOD FOR ESTABLISHING 
DILIGENCE BETWEEN ONE WHO WAS FIRST TO CONCEIVE BUT LATER TO REDUCE TO 
PRACTICE THE INVENTION 

        The critical period for diligence for a first conceiver but second 
 reducer begins not at the time of conception of the first conceiver but 
just  prior to the entry in the field of the party who was first to reduce 
to practice  and continues until the first conceiver reduces to practice. 
Hull v. Davenport,  33 USPQ 506, 508 (CCPA 1937) ("lack of diligence from 
the time of conception  to the time immediately preceding the conception 
date of the second conceiver  is not regarded as of importance except as 
it may have a bearing upon his subsequent  acts"). What serves as the 
entry date into the field of a first reducer is  dependent upon what is 
being relied on by the first reducer, e.g., conception  plus reasonable 
diligence to reduction to practice (Fritsch v. Lin, 21 USPQ2d  1731, 1734 
(Bd. Pat. App. & Inter. 1991), (Emery v. Ronden, 188 USPQ 264, 268 
(Bd. Pat. Inter. 1974); an actual reduction to practice or a constructive 
reduction  to practice by the filing of either a U.S. application 
(Rebstock v. Flouret, 191 USPQ 342, 345 (Bd. Pat. Inter. 1975)) or 
reliance upon priority under 35  U.S.C. 119 of a foreign application 
(Justus v. Appenzeller, 177 USPQ 332, 339 
(Bd. Pat. Inter. 1971) (chain of priorities under 35 U.S.C. 119 and 120, 
priority  under 35 U.S.C. 119 denied for failure to supply certified copy 
of the foreign  application during pendency of the application filed 
within the twelfth month)). 

THE ENTIRE PERIOD DURING WHICH 
DILIGENCE IS REQUIRED MUST BE 
ACCOUNTED FOR BY EITHER AFFIRMATIVE ACTS OR ACCEPTABLE EXCUSES 

        An applicant must account for the entire period during which 
diligence  is required. Gould v. Schawlow, 150 USPQ 634, 643 (CCPA 1966) 
(Merely stating that there were no weeks or months  that the invention was 
not worked on is not enough.); In re Harry, 142 USPQ  164, 166 (CCPA 1964) 
(statement that the subject matter "was diligently reduced  to practice" 
is not a showing but a mere pleading). A 2-day period lacking  activity 
has been held to be fatal. In re Mulder, 219 USPQ 189, 193  (Fed.  Cir. 
1983) (37 CFR 1.131 issue); Fitzgerald v. Arbib, 122 USPQ 530, 532 (CCPA 
1959) (Less than 1 month of inactivity during critical period. Efforts to 
exploit  an invention commercially do not constitute diligence in reducing 
it to practice.  An actual reduction to practice in the case of a design 
for a three-dimensional  article requires that it should be embodied in 
some structure other than a  mere drawing.); Kendall v. Searles, 81 USPQ 
363,369 (CCPA 1949) (Diligence  requires that applicants must be specific 
as to dates and facts.); 
        The period during which diligence is required must be accounted 
for  by either affirmative acts or acceptable excuses. Rebstock v. 
Flouret, 191  USPQ 342, 345 (Bd. Pat. Inter. 1975); Rieser v. Williams, 
118 USPQ 96,100 (CCPA  1958) (Being last to reduce to practice, party 
cannot prevail unless he has  shown that he was first to conceive and that 
he exercised reasonable diligence  during the critical period from just 
prior to opponent's entry into the field);  Griffith v. Kanamaru, 2 USPQ2d 
1361 (Fed. Cir. 1987) (Court generally reviewed  cases on excuses for 
inactivity including vacation extended by ill health and  daily job 
demands, and held lack of university funding and personnel are not 
acceptable excuses); Litchfield v. Eigen, 190 USPQ 113 (CCPA 1976) 
(budgetary  limits and availability of animals for testing not 
sufficiently described);  Morway v. Bondi, 97 USPQ 318,323 (CCPA 1953) 
(voluntarily laying aside inventive  concept in pursuit of other projects 
is generally not an acceptable excuse  although there may be circumstances 
creating exceptions); Anderson v. Crowther,  152 USPQ 504, 512 (Bd. Pat. 
Inter. 1965) (preparation of routine periodic reports  covering all 
accomplishments of the laboratory insufficient to show diligence);  Wu v. 
Jucker, 167 USPQ 467, 472-73 (Bd. Pat. Inter. 1968) (applicant improperly 
allowed test data sheets to accumulate to a sufficient amount to justify 
interfering  with equipment then in use on another project); Tucker v. 
Natta, 171 USPQ 494,498 
(Bd. Pat. Inter. 1971) ("[a]ctivity directed toward the reduction to 
practice  of a genus does not establish, prima facie, diligence toward the 
reduction  to practice of a species embraced by said genus"); Justus v. 
Appenzeller, 177  USPQ 332, 340-1 (Bd. Pat. Inter. 1971) (Although it is 
possible that patentee  could have reduced the invention to practice in a 
shorter time by relying on  stock items rather than by designing a 
particular piece of hardware, patentee  exercised reasonable diligence to 
secure the required hardware to actually  reduce the invention to 
practice. "[I]n deciding the question of diligence  it is immaterial that 
the inventor may not have taken the expeditious course0."). 
WORK RELIED UPON TO SHOW REASONABLE DILIGENCE MUST BE DIRECTLY RELATED TO 
THE  REDUCTION TO PRACTICE 

        The work relied upon to show reasonable diligence must be directly 
 related to the reduction to practice of the invention in issue. Naber v. 
Cricchi,  196 USPQ 294,296 (CCPA 1977), cert. denied, 439 U.S. 826 (1978). 
"[U]nder some  circumstances an inventor should also be able to rely on 
work on closely related  inventions as support for diligence toward the 
reduction to practice on an  invention in issue." Ginos v. Nedelec, 220 
USPQ 831, 836 (Bd. Pat. Inter. 1983) 
(work on other closely related compounds that were considered to be part 
of  the same invention and which were included as part of a grandparent 
application).  "The work relied upon must be directed to attaining a 
reduction to practice  of the subject matter of the counts. It is not 
sufficient that the activity  relied on concerns related subject matter." 
Gunn v. Bosch, 181 USPQ 758, 761 
(Bd. Pat. Inter. 1973) (An actual reduction to practice of the invention 
at  issue which occurred when the inventor was working on a different 
invention  "was fortuitous, and not the result of a continuous intent or 
effort to reduce  to practice the invention here in issue. Such 
fortuitousness is inconsistent  with the exercise of diligence toward 
reduction to practice of that invention."  181 USPQ at 761. Furthermore, 
evidence drawn towards work on improvement of  samples or specimens 
generally already in use at the time of conception that  are but one 
element of the oscillator circuit of the count does not show diligence 
towards the construction and testing of the overall combination.); Broos 
v.  Barton, 61 USPQ 447, 448 (CCPA 1944) (preparation of application in 
U.S. for  foreign filing constitutes diligence); De Solms v. Schoenwald, 
15 USPQ2d 1507 
(Bd. Pat. App. & Inter. 1990) (principles of diligence must be given to 
inventor's circumstances  including skill and time; requirement of 
corroboration applies only to testimony  of inventor); Huelster v. Reiter, 
78 USPQ 82 (CCPA 1948) (if inventor was not  able to make an actual 
reduction to practice of the invention, he must also  show why he was not 
able to constructively reduce the invention to practice  by the filing of 
an application). 

DILIGENCE REQUIRED IN PREPARING AND FILING PATENT APPLICATION 

        The diligence of attorney in preparing and filing patent 
application  inures to the benefit of the inventor. Conception was 
established at least  as early as the date a draft of a patent application 
was finished by a patent  attorney on behalf of the inventor. Conception 
is less a matter of signature  than it is one of disclosure. Attorney does 
not prepare a patent application  on behalf of particular named persons, 
but on behalf of the true inventive  entity. Six days to execute and file 
application is acceptable. Haskell v.  Coleburne, 213 USPQ 192,195 (CCPA 
1982). Bey v. Kollonitsch, 231 USPQ 967 (Fed.  Cir. 1986) (Reasonable 
diligence is all that is required of the attorney. Reasonable  diligence 
is established if attorney worked reasonably hard on the application 
during the continuous critical period. If the attorney has a reasonable 
backlog  of unrelated cases which he takes up in chronological order and 
carries out  expeditiously, that is sufficient. Work on a related case(s) 
that contributed  substantially to the ultimate preparation of an 
application can be credited  as diligence.). 

END OF DILIGENCE PERIOD IS MARKED BY 
EITHER ACTUAL OR CONSTRUCTIVE 
REDUCTION TO PRACTICE 

"[I]t is of no moment that the end of that period [for diligence] is fixed 
 by a constructive, rather than an actual, reduction to practice." Justus 
v.  Appenzeller, 177 USPQ 332, 340-1 (Bd. Pat. Inter. 1971).< 


2141    35 U.S.C. 103; The Graham Factual Inquiries [R-2] 


35 U.S.C. 103.      Conditions for patentability; non-obvious 
subject matter. 

        >(a)<A patent may not be obtained though the invention is not 
identically  disclosed or described as set forth in section 102 of this 
title, if the differences  between the subject matter sought to be 
patented and the prior art are such  that the subject matter as a whole 
would have been obvious at the time the  invention was made to a person 
having ordinary skill in the art to which said  subject matter pertains. 
Patentability shall not be negatived by the manner  in which the invention 
was made. 

        >(b)(l) Notwithstanding subsection (a), and upon timely election 
by  the applicant for patent to proceed under this subsection, a 
biotechnological  process using or resulting in a composition of matter 
that is novel under section  102 and nonobvious under subsection (a) of 
this section shall be considered  nonobvious if-- 

        (A) claims to the process and the composition of matter are 
contained  in either the same application for patent or in separate 
applications having  the same effective filing date; and 

        (B) the composition of matter, and the process at the time it was 
invented,  were owned by the same person or subject to an obligation of 
assignment to  the same person. 

        (2) A patent issued on a process under paragraph (1)-- 

        (A) shall also contain the claims to the composition of matter 
used  in or made by that process, or 

        (B) shall, if such composition of matter is claimed in another 
patent,  be set to expire on the same date as such other patent, 
notwithstanding section  154. 

        (3) For purposes of paragraph (1), the term `biotechnological 
process'  means-- 

        (A) a process of genetically altering or otherwise inducing a 
single-  or multi-celled organism to-- 

                        (i) express an exogenous nucleotide sequence, 
                        (ii) inhibit, eliminate, augment, or alter 
expression  of an endogenous nucleotide sequence, or 

                        (iii) express a specific physiological 
characteristic  not naturally associated with said organism; 

        (B) cell fusion procedures yielding a cell line that expresses a 
specific  protein, such as a monoclonal antibody; and 

        (C) a method of using a product produced by a process defined by 
subparagraph 
(A) or (B), or a combination of subparagraphs (A) and (B).< 

        >(c)< Subject matter developed by another person, which qualifies 
as  prior art only under subsection (f) or (g) of section 102 of this 
title, shall  not preclude patentability under this section where the 
subject matter and  the claimed invention were, at the time the invention 
was made, owned by the  same person or subject to an obligation of 
assignment to the same person. 
STANDARD OF PATENTABILITY TO BE APPLIED IN OBVIOUSNESS REJECTIONS 
        Patent examiners carry the responsibility of making sure that the 
standard  of patentability enunciated by the Supreme Court and by the 
Congress is applied  in each and every case. The Supreme Court in Graham 
v. John Deere, 383 U.S.  1, 148 USPQ 459 (1966), stated that, 

        "Under w 103, the scope and content of the prior art to be 
determined;  differences between the prior art and the claims at issue are 
to be ascertained;  and the level of ordinary skill in the pertinent art 
resolved. Against this  background, the obviousness or nonobviousness of 
the subject matter is determined.  Such secondary considerations as 
commercial success, long felt but unsolved  needs, failure of others, 
etc., might be utilized to give light to the circumstances  surrounding 
the origin of the subject matter sought to be patented. As indicia  of 
obviousness or nonobviousness, these inquires may have relevancy. . . 
        "This in not to say, however, that there will not be difficulties 
in  applying the nonobviousness test. What is obvious is not a question 
upon which  there is likely to be uniformity of thought in every given 
factual context.  The difficulties, however, are comparable to those 
encountered daily by the  courts in such frames of reference as negligence 
and scienter, and should be  amenable to a case-by-case development. We 
believe that strict observance of  the requirements laid down here will 
result in that uniformity and definitiveness  which Congress called for in 
the 1952 Act. 

        Office policy has consistently been to follow Graham v. John Deere 
 Co. in the consideration and determination of obviousness under 35 U.S.C. 
103.  As quoted above, the four factual inquires enunciated therein as a 
background  for determining obviousness are briefly as follows: 

        (1)   Determining of the scope and contents of the prior art; 
        (2)   Ascertaining the differences between the prior art and the 
claims  in issue; 

        (3)   Resolving the level of ordinary skill in the pertinent art; 
and 

        (4)   Evaluating evidence of secondary considerations. 

        The Supreme Court reaffirmed and relied upon the Graham three 
pronged  test in its consideration and determination of obviousness in the 
fact situations  presented in both the Sakraida v. Ag Pro, Inc., 425 U.S. 273, 
189 USPQ 449, reh'g denied, 426 U.S. 955 (1976) and Anderson's-Black Rock, 
 Inc. v. Pavement Salvage Co., 396 U.S. 57, 163 USPQ 673 (1969) decisions. 
In  each case, the Court went on to discuss whether the claimed 
combinations produced  a "new or different function"  and a "synergistic 
result," but clearly decided  whether the claimed inventions were 
unobvious on the basis of the three-way  test in Graham. Nowhere in its 
decisions in those cases does the Court state  that the "new or different 
function" and "synergistic result" tests supersede  a finding of 
unobviousness or obviousness under the Graham test. 

        Accordingly, examiners should apply the test for patentability 
under  35 U.S.C. 103 set forth in Graham. See below for a detailed 
discussion of each  of the Graham factual inquiries. It should be noted 
that the Supreme Court's  application of the Graham test to the fact 
circumstances in Ag Pro was somewhat  stringent, as it was in Black Rock. 
Note Republic Industries, Inc. v. Schlage  Lock Co., 592 F.2d 963, 200 
USPQ 769 (7th Cir. 1979). The Court of Appeals  for the Federal Circuit 
stated in Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d  1530, 218 USPQ 
871, 880 (Fed. Cir. 1983) that 

        A requirement for synergism or a synergistic effect is nowhere 
found  in the statute, 35 U.S.C. When present, for example in a chemical 
case, synergism  may point toward nonobviousness, but its absence has no 
place in evaluating  the evidence on obviousness. The more objective 
findings suggested in Graham,  supra, are drawn from the language of the 
statute and are fully adequate guides  for evaluating the evidence 
relating to compliance with 35 U.S.C. 103. Bowser  Inc. v. United States, 
388 F. 2d 346, 156 USPQ 406 (Ct. Cl. 1967). 
BASIC CONSIDERATIONS WHICH APPLY TO 
OBVIOUSNESS REJECTIONS 

        When applying 35 U.S.C. 103, the following tenets of patent law 
must  be adhered to: 

        (1) the claimed invention must be considered as a whole; 
        (2) the references must be considered as a whole and must suggest 
the  desirability and thus the obviousness of making the combination; 
        (3) the references must be viewed without the benefit of 
impermissible  hindsight vision afforded by the claimed invention and 

        (4) reasonable expectation of success is the standard with which 
obviousness  is determined. Hodosh v. Block Drug Co., Inc., 786 F.2d 1136, 
1143 n.5, 229 USPQ 182, 187, n.5 (Fed. Cir. 1986). 

OBJECTIVE EVIDENCE MUST BE CONSIDERED 

        Objective evidence or secondary considerations such as unexpected 
results,  commercial success, long-felt need, failure of others, copying 
by others, licensing,  and skepticism of experts are relevant to the issue 
of obviousness and must  be considered in every case in which they are 
present. When evidence of any  of these secondary considerations is 
submitted, the examiner must evaluate  the evidence. The weight to be 
accorded to the evidence depends on the individual  factual circumstances 
of each case. Stratoflex, Inc. v. Aeroquip Corp., 713  F.2d 1530, 218 USPQ 
871 (Fed. Cir. 1983); Hybritech, Inc. v. Monoclonal Antibodies,  Inc., 802 
F.2d 1367, 231 USPQ 81 (Fed. Cir. 1986), cert. denied, 480 U.S. 947 
(1987). The ultimate determination on patentability is made on the entire 
record.  In re Oetiker, 977 F.2d 1443,24 USPQ2d 1443, 1445 (Fed. Cir. 
1992). 
        See MPEP w 716- w 716.06 for a discussion of objective evidence 
and  its role in the final legal determination of whether a claimed 
invention would  have been obvious under 35 U.S.C. 103. 


2141.01       Scope and Content of the Prior Art [R-2] 


(a)   Prior art available under 35 U.S.C. 102 is available under 35 U.S.C. 
 103 

        "Before answering Graham's `content' inquiry, it must be known 
whether  a patent or publication is in the prior art under 35 U.S.C. w 
102." Panduit  Corp. v. Dennison Manufacturing Co., 810 F.2d 1561, 1 
USPQ2d 1593,1597 (Fed.  Cir.), cert. denied, 481 U.S. 1052 (1987). Subject 
matter that is prior art  under 35 U.S.C. 102 can be used to support a 
rejection under section 103. Ex  parte Andresen, 212 USPQ 100, 102 (Bd. 
Pat. App. & Inter. 1981) ("it appears  to us that the commentator [of 
35 U.S.C.A.] and the [congressional] committee viewed section 103 as 
including  all of the various bars to a patent as set forth in section 
102."). 
        A 35 U.S.C. 103 rejection is based on 35 U.S.C. 102(a), 102(b), 
102(e),  etc. depending on the type of prior art reference used and its 
publication  or issue date. For instance, an obviousness rejection over a 
U.S. patent which  was issued more than 1 year before the filing is said 
to be a statutory bar  just as if it anticipated the claims under 102(b). 
Analogously, an obviousness  rejection based on a publication which would 
be applied under 102(a) if it  anticipated the claims can be overcome by 
swearing behind the publication date  of the reference by filing an 
affidavit or declaration under 37 CFR 1.131. 
        For an overview of what constitutes prior art under 35 U.S.C. 102 
see  MPEP w 901 - w 901.06(d) and 
w 2121 - w 2129. 

(b)   Substantive content of the prior art 

        See MPEP w 2121 - w 2129 for case law relating to the substantive 
content  of the prior art (e.g., availability of inoperative devices, 
extent to which  prior art must be enabling, broad disclosure rather than 
preferred embodiments,  admissions, etc.). 

(c)   Content of the prior art is determined at the time the invention was 
 made to avoid hindsight 

        Requirement for "at the time the invention was made" is to avoid 
impermissible  hindsight. See MPEP 
w 2145, paragraph (j) for a discussion of rebutting applicants' arguments 
that  a rejection is based on hindsight. 

        "It is difficult but necessary that the decisionmaker forget what 
he  or she has been taught . . . about the claimed invention and cast the 
mind  back to the time the invention was made (often as here many years), 
to occupy  the mind of one skilled in the art who is presented only with 
the references,  and who is normally guided by the then-accepted wisdom in 
the art." W.L. Gore  & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 
220 USPQ 303, 313 (Fed.  Cir. 1983), cert. denied, 469 U.S. 851 (1984). 

(d)   35 U.S.C. 103>(c)<** - evidence required to show conditions of 35 
U.S.C.  103 apply 

        An applicant who wants to avail himself or herself of the benefits 
 of **>35 U.S.C. 103(c)< has the burden of establishing that subject 
matter  which qualifies as prior art under subsection (f) or (g) of 
section 102 and  the claimed invention were, at the time the invention was 
made, owned by the  same person or subject to an obligation of assignment 
to the same person. Ex  parte Yoshino, 227 USPQ 52 (Bd. Pat. App. & Inter. 
1985). Note that **>35 U.S.C.  103(c)< is limited on its face to subject 
matter developed by another person  which qualifies as prior art only 
under subsection (f) or (g) of section 102.  In re Bartfeld, 925 F.2d 
1450, 17 USPQ2d 1885 (Fed. Cir. 1991) (Applicant attempted  to overcome a 
35 U.S.C. 102(e)/103 rejection with a terminal disclaimer by  alleging 
that the public policy intent of 35 U.S.C 103>(c)<** was to prohibit  the 
use of "secret" prior art in obviousness determinations. The court 
rejected  this argument, holding "We may not disregard the unambiguous 
exclusion of w  102(e) from the statute's purview." 17 USPQ2d at 1888.). 

        See MPEP w 706.02(l) for the requirements which must be met to 
establish  common ownership. 


2141.01(a)  Analogous and Nonanalogous Art [R-1] 


>TO RELY ON A REFERENCE UNDER 35 U.S.C. 103, IT MUST BE ANALOGOUS PRIOR 
ART 
        The examiner must determine what is "analogous prior art" for the 
purpose  of analyzing the obviousness of the subject matter at issue. "In 
order to rely  on a reference as a basis for rejection of an applicant's 
invention, the reference  must either be in the field of applicant's 
endeavor or, if not, then be reasonably pertinent to the particular 
problem with  which the inventor was concerned." In re Oetiker, 977 F.2d 
1443, 24 USPQ2d  1443, 1445 (Fed. Cir. 1992). See also In re Deminski, 796 
F.2d 436, 230 USPQ 313 (Fed. Cir. 1986); In re Clay, 966 F.2d 656, 659, 23 
USPQ2d 1058,  1060-61 (Fed. Cir. 1992) ("A reference is reasonably 
pertinent if, even though  it may be in a different field from that of the 
inventor's endeavor, it is  one which, because of the matter with which it 
deals, logically would have  commended itself to an inventor's attention 
in considering his problem.");  and Wang Laboratories Inc. v. Toshiba 
Corp., 993 F.2d 858, 26 USPQ2d 1767 (Fed.  Cir. 1993). 

PTO CLASSIFICATION IS SOME EVIDENCE OF ANALOGY, BUT SIMILARITIES AND 
DIFFERENCES  IN STRUCTURE AND FUNCTION CARRY MORE WEIGHT 

        While Patent Office classification of references and the 
cross-references  in the official search notes are some evidence of 
"nonanalogy" or "analogy"  respectively, the court has found "the 
similarities and differences in structure  and function of the inventions 
to carry far greater weight." In re Ellis, 476  F.2d 1370, 177 USPQ 526, 
527 (CCPA 1973) (The structural similarities and functional  overlap 
between the structural gratings shown by one reference and the shoe 
scrapers of the type shown by another reference were readily apparent, and 
 therefore the arts to which the reference patents belonged were 
reasonably  pertinent to the art with which appellant's invention dealt 
(pedestrian floor  gratings).); In re Clay, 
966 F.2d 656, 23 USPQ2d 1058 (Fed. Cir. 1992) (Claims were directed to a 
process  for storing a refined liquid hydrocarbon product in a storage 
tank having a  dead volume between the tank bottom and its outlet port 
wherein a gelled solution  filled the tank's dead volume to prevent loss 
of stored product while preventing  contamination. One of the references 
relied upon disclosed a process for reducing  the permeability of natural 
underground hydrocarbon bearing formations using  a gel similar to that of 
applicant to improve oil production. The court disagreed  with the PTO's 
argument that the reference and claimed inventions were part  of the same 
endeavor, "maximizing withdrawal of petroleum stored in petroleum 
reserves," and found that the inventions involved different fields of 
endeavor  since the reference taught the use of the gel in a different 
structure for  a different purpose under different temperature and 
pressure conditions, and  since the application related to storage of 
liquid hydrocarbons rather than  extraction of crude petroleum. The court 
also found the reference was not reasonably  pertinent to the problem with 
which the inventor was concerned because a person  having ordinary skill 
in the art would not reasonably have expected to solve  the problem of 
dead volume in tanks for refined petroleum by considering a  reference 
dealing with plugging underground formation anomalies.). 
ANALOGY IN THE CHEMICAL ARTS 

        See, for example, Ex parte Bland, 3 USPQ2d 1103 (Bd. Pat App. & 
Inter.  1986) (Claims were drawn to a particulate composition useful as a 
preservative  for an animal foodstuff (or a method of inhibiting fungus 
growth in an animal  foodstuff therewith) comprising verxite having 
absorbed thereon propionic acid.  All references were concerned with 
absorbing biologically active materials  on carriers, and therefore the 
teachings in each of the various references  would have been pertinent to 
the problems in the other references and the invention  at hand.); 

        Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 
218 USPQ 871 (Fed. Cir. 1983) (Problem confronting inventor was preventing 
 electrostatic buildup in PTFE tubing caused by hydrocarbon fuel flow 
while  precluding leakage of fuel. Two prior art references relied upon 
were in the  rubber hose art, both referencing the problem of 
electrostatic buildup caused  by fuel flow. The court found that because 
PTFE and rubber are used by the  same hose manufacturers and experience 
the same and similar problems, a solution  found for a problem experienced 
with either PTFE or rubber hosing would be  looked to when facing a 
problem with the other.); 

        In re Mlot-Fijalkowski, 676 F.2d 666, 213 USPQ 713 (CCPA 1982) 
(Problem  faced by appellant was enhancement and immobilization of dye 
penetrant indications.  References which taught the use of dyes and finely 
divided developer materials  to produce colored images preferably in, but 
not limited to, the duplicating  paper art were properly relied upon 
because the court found that appellant's  problem was one of dye 
chemistry, and a search for its solution would include  the dye arts in 
general.). 

ANALOGY IN THE MECHANICAL ARTS 

        See, for example, In re Oetiker, 977 F.2d 1443, 
24 USPQ2d 1443 (Fed. Cir. 1992) (Applicant claimed an improvement in a 
hose  clamp which differed from the prior art in the presence of a 
preassembly "hook"  which maintained the preassembly condition of the 
clamp and disengaged automatically  when the clamp was tightened. The 
Board relied upon a reference which disclosed  a hook and eye fastener for 
use in garments, reasoning that all hooking problems  are analogous. The 
court held the reference was not within the field of applicant's 
endeavor, and was not reasonably pertinent to the particular problem with 
which  the inventor was concerned because it had not been shown that a 
person of ordinary  skill, seeking to solve a problem of fastening a hose 
clamp, would reasonably  be expected or motivated to look to fasteners for 
garments. The Commissioner  further argued in the brief on appeal that a 
disengageable catch is a common  everyday mechanical concept, however the 
court held that the Commissioner did  not explain why a "catch" of 
unstated structure is such a concept, and why  it would have made the 
claimed invention obvious.). Compare Stevenson v. International  Trade 
Commission, 612 F.2d 546, 204 USPQ 276 (CCPA 1979) ("In a simple 
mechanical  invention a broad spectrum of prior art must be explored and 
it is reasonable  to permit inquiry into other areas where one of ordinary 
skill in the art would  be aware that similar problems exist." 204 USPQ at 
280.); 

        In re Deminski, 796 F.2d 436, 230 USPQ 313 (Fed. Cir. 1986) 
(Applicant's  claims related to double-acting high pressure gas 
transmission line compressors  in which the valves could be removed easily 
for replacement. The  Board relied  upon references which taught either a 
double-acting piston pump or a double-acting  piston compressor. The court 
agreed that since the cited pumps and compressors  have essentially the 
same function and structure, the field of endeavor includes  both types of 
double-action piston devices for moving fluids.); 

        Pentec, Inc. v. Graphic Controls Corp., 776 F.2d 309, 227 USPQ 766 
(Fed. Cir. 1985) (Claims at issue were directed to an instrument marker 
pen  body, the improvement comprising a pen arm holding means having an 
integrally  molded hinged member for folding over against the pen body. 
Although the patent  owners argued the hinge and fastener art was 
nonanalogous, the court held that  the problem confronting the inventor 
was the need for a simple holding means  to enable frequent, secure 
attachment and easy removal of a marker pen to and  from a pen arm, and 
one skilled in the pen art trying to solve that problem  would have looked 
to the fastener and hinge art.); 

        Ex parte Goodyear Tire & Rubber Co., 230 USPQ 357 (Bd. Pat. App. & 
 Inter. 1985) (A reference in the clutch art was held reasonably pertinent 
to  the friction problem faced by applicant, whose claims were directed to 
a braking  material, because brakes and clutches utilize interfacing 
materials to accomplish  their respective purposes.). 

ANALOGY IN THE ELECTRICAL ARTS 

        See, for example, Wang Laboratories Inc. v. Toshiba Corp., 993 
F.2d  858, 26 USPQ2d 1767 (Fed. Cir. 1993) (Patent claims were directed to 
single  in-line memory modules (SIMMs) for installation on a printed 
circuit motherboard  for use in personal computers. Reference to a SIMM 
for an industrial controller  was not necessarily in the same field of 
endeavor as the claimed subject matter  merely because it related to 
memories. Reference was found to be in a different  field of endeavor 
because it involved memory circuits in which modules of varying  sizes may 
be added or replaced, whereas the claimed invention involved compact 
modular memories. Furthermore, since memory modules of the claims at issue 
 were intended for personal computers and used dynamic 
random-access-memories,  whereas reference SIMM was developed for use in 
large industrial machine controllers  and only taught the use of static 
random-access-memories or read-only-memories, the finding that the 
reference was nonanalogous  was supported by substantial evidence.); 

        Medtronic, Inc. v. Cardiac Pacemakers, 721 F.2d 1563, 220 USPQ 97 
(Fed.  Cir. 1983) (Patent claims were drawn to a cardiac pacemaker which 
comprised,  among other components, a runaway inhibitor means for 
preventing a pacemaker  malfunction from causing pulses to be applied at 
too high a frequency rate.  Two references disclosed circuits used in high 
power, high frequency devices  which inhibited the runaway of pulses from 
a pulse source. The court held that  one of ordinary skill in the 
pacemaker designer art faced with a rate-limiting  problem would look to 
the solutions of others faced with rate 
limiting problems, and therefore the references were in an analogous 
art.). 
EXAMPLES OF ANALOGY IN THE DESIGN ARTS 

        See MPEP w 1504.03(a) (1) for a discussion of the relevant case 
law  setting forth the general requirements for analogous art in design 
applications. 
        For examples of analogy in the design arts, see In re Rosen, 673 
F.2d  388, 213 USPQ 347 (CCPA 1982) (The design at issue was a coffee 
table of contemporary  styling. The court held designs of contemporary 
furniture other than coffee  tables, such as the desk and circular glass 
table top designs of the references  relied upon, would reasonably fall 
within the scope of the knowledge of the  designer of ordinary skill.); 

        Ex parte Pappas, 23 USPQ2d 1636 (Bd. Pat. App. & Inter. 1992) (At 
issue  was an ornamental design for a feed bunk with an inclined corner 
configuration.  Examiner relied upon references to a bunk lacking the 
inclined corners claimed  by appellant and the Architectural Precast 
Concrete Drafting Handbook. The  Board found the Architectural Precast 
Concrete Drafting Handbook was analogous  art, noting that a bunk may be a 
wood or concrete trough, and that both references  relied upon "disclose 
structures in which at least one upstanding leg is generally 
perpendicular to a base portion to define a corner configuration between 
the  leg and base portion."); 

        In re Butera, 28 USPQ2d 1399 (Fed. Cir. 1993) (unpublished - not 
citable  as precedent) (The claimed invention, a spherical design for a 
combined insect  repellant and air freshener, was rejected by the Board as 
obvious over a single  reference to a design for a metal ball anode. The 
court reversed, holding the  reference design to be nonanalogous art. "A 
prior design is of the type claimed  if it has the same general use as 
that claimed in  the design patent application  . . . . One designing a 
combined insect repellant and air freshener would therefore  not have 
reason to know of or look to a design for a metal ball anode." 28  USPQ at 
1400.).< 


2141.02       Differences Between Prior Art and Claimed Invention [R-2] 

        Ascertaining the differences between the prior art and the claims 
at  issue requires interpreting the claim language, and considering both 
the invention  and the prior art references as a whole. See MPEP w 2111 - 
w *>2116.01< for case law pertaining to claim interpretation. 
THE CLAIMED INVENTION AS A WHOLE MUST BE CONSIDERED 

        In determining the differences between the prior art and the 
claims,  the question under 35 U.S.C. 103 is not whether the differences 
themselves  would have been obvious, but whether the claimed invention as 
a whole would  have been obvious. Stratoflex, Inc. v. Aeroquip Corp., 713 
F.2d 1530, 218 USPQ  871 (Fed. Cir. 1983); Schenck v. Nortron Corp., 713 
F.2d 782, 218 USPQ 698 
(Fed. Cir. 1983) (Claims were directed to a vibratory testing machine (a 
hard-bearing  wheel balancer) comprising a holding structure, a base 
structure, and a supporting  means which form "a single integral and 
gaplessly continuous piece." Nortron  argued the invention is just making 
integral what had been made in four bolted  pieces, improperly limiting 
the focus to a structural difference from the prior  art and failing to 
consider the invention as a whole. The prior art perceived  a need for 
mechanisms to dampen resonance, whereas the inventor eliminated  the need 
for dampening via the one-piece gapless support structure. "Because  that 
insight was contrary to the understandings and expectations of the art, 
the structure effectuating it would not have been obvious to those skilled 
 in the art." 218 USPQ at 700 (citations omitted).). 

        See also In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) (Claims 
 were directed to a three step process for preparing sweetened foods and 
drinks.  The first two steps were directed to a process of producing high 
purity maltose 
(the sweetener), and the third was directed to adding the maltose to foods 
 and drinks. The parties agreed that the first two steps were unobvious 
but  formed a known product and the third step was obvious. The Solicitor 
argued  the preamble was directed to a process for preparing foods and 
drinks sweetened  mildly and thus the specific method of making the high 
purity maltose (the  first two steps in the claimed process) should not be 
given weight, analogizing  with product-by-process claims. The court held 
"due to the admitted unobviousness  of the first two steps of the claimed 
combination of steps, the subject matter  as a whole would not have been 
obvious to one of ordinary skill in the art  at the time the invention was 
made." 190 USPQ at 17 (emphasis in original).  The preamble only recited 
the purpose of 
the process and did not limit the body of the claim. Therefore, the 
claimed  process was a three step process, not the product formed by two 
steps of the  process or the third step of using that product.). 

DISTILLING THE INVENTION DOWN TO A "GIST" OR "THRUST" OF AN INVENTION 
DISREGARDS  "AS A WHOLE" REQUIREMENT 

        Distilling an invention down to the "gist" or "thrust" of an 
invention  disregards the requirement of analyzing the subject matter "as 
a whole." W.L.  Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 
220 USPQ 303 (Fed.  Cir. 1983), cert. denied, 469 U.S. 851 (1984) 
(restricting consideration of  the claims to a 10% per second rate of 
stretching of unsintered PTFE and disregarding  other limitations resulted 
in treating claims as though they read differently  than allowed); Bausch 
& Lomb v. Barnes-Hind/Hydrocurve, Inc., 796 F.2d 443,  230 USPQ 416, 419, 
420 (Fed. Cir. 1986), cert. denied, 484 U.S. 823 (1987) 
(District court focused on the "concept of forming ridgeless depressions 
having  smooth rounded edges using a laser beam to vaporize the material," 
but "disregarded  express limitations that the product be an ophthalmic 
lens formed of a transparent  cross-linked polymer and that the laser 
marks be surrounded by a smooth surface  of unsublimated polymer."). See 
also Jones v. Hardy, 727 F.2d 1524, 220 USPQ  1021, 1026 (Fed. Cir. 1984) 
("treating the advantage as the invention disregards  statutory 
requirement that the invention be viewed `as a whole' "); Panduit  Corp v. 
Dennison Manufacturing Co., 810 F.2d 1561, 1 USPQ2d 1593, (Fed. Cir.), 
cert. denied, 481 U.S. 1052 (1987) (district court improperly distilled 
claims  down to a one word solution to a problem). 

DISCOVERING SOURCE/CAUSE OF A PROBLEM IS PART OF "AS A WHOLE" INQUIRY 
        "[A] patentable invention may lie in the discovery of  the source 
of  a problem even though the remedy may be obvious once the source of the 
problem  is identified. This is part of the `subject matter as a whole' 
which should  always be considered in determining the obviousness of an 
invention under 35  U.S.C. w 103." In re Sponnoble, 405 F.2d 578, 585, 160 
USPQ 237, 243 (CCPA  1969). However, "discovery of the cause of a problem 
. . does not always result  in a patentable invention. . . . [A] different 
situation exists where the solution  is obvious from prior art which 
contains the same solution for a similar problem."  In re Wiseman, 596 
F.2d 1019, 201 USPQ 658, 661 (CCPA 1979) (emphasis in original). 

        In In re Sponnoble, the claim was directed to a plural compartment 
 mixing vial wherein a center seal plug was placed between two 
compartments  for temporarily isolating a liquid-containing compartment 
from a solids-containing  compartment. The claim differed from the prior 
art in the selection of butyl  rubber with a silicone coating as the plug 
material instead of natural rubber.  The prior art recognized that leakage 
from the liquid to the solids compartment  was a problem, and considered 
the problem to be a result of moisture passing  around the center plug 
because of microscopic fissures inherently present in  molded or blown 
glass. The court found the inventor discovered the cause of  moisture 
transmission was through the center plug, and there was no teaching  in 
the prior art which would suggest the necessity of selecting applicant's 
plug material which was more impervious to liquids than the natural rubber 
 plug of the prior art. 

        In In re Wiseman, claims directed to grooved carbon disc brakes 
wherein  the grooves were provided to vent steam or vapor during a braking 
action to  minimize fading of the brakes were rejected as obvious over a 
reference showing  carbon disc brakes without grooves in combination with 
a reference showing  grooves in noncarbon disc brakes for the purpose of 
cooling the faces of the  braking members and eliminating dust, thereby 
reducing fading of the brakes.  The court affirmed the rejection, holding 
that even if applicants discovered  the cause of a problem, the solution 
would have been obvious from the prior  art which contained the same 
solution (inserting grooves in disc brakes) for  a similar problem. 

APPLICANTS ALLEGING DISCOVERY OF A SOURCE OF A PROBLEM MUST PROVIDE 
SUBSTANTIATING EVIDENCE 

        Applicants who allege they discovered the source of a problem must 
 provide evidence substantiating the allegation, either by way of 
affidavits  or declarations, or by way of a clear and persuasive assertion 
in the specification.  In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 
1979) (unsubstantiated statement  of counsel was insufficient to show 
appellants discovered source of the problem);  In re Kaslow, 707 F.2d 
1366, 217 USPQ 1089 (Fed. Cir. 1983) (Claims were directed  to a method 
for redeeming merchandising coupons which contain a UPC "5-by-5" bar code 
wherein, among other steps, the memory at each supermarket  would identify 
coupons by manufacturer and transmit the data to a central computer  to 
provide an audit thereby eliminating the need for clearinghouses and 
preventing  retailer fraud. In challenging the propriety of an obviousness 
rejection, appellant  argued he discovered the source of a problem 
(retailer fraud and manual clearinghouse  operations) and its solution. 
The court found appellant's specification did  not support the argument 
that he discovered the source of the problem with  respect to retailer 
fraud, and that the claimed invention failed to solve the  problem of 
manual clearinghouse operations.). 

DISCLOSED INHERENT PROPERTIES ARE PART OF "AS A WHOLE" INQUIRY 

        "In determining whether the invention as a whole would have been 
obvious  under section 103, we must first delineate the invention as a 
whole. In delineating  the invention as a whole, we look not only to the 
subject matter which is literally  recited in the claim in question. . . 
but also those properties of the subject  matter that are inherent in the 
subject matter and are disclosed in the specification.  . . Just as we 
look to a chemical and its properties when we examine the obviousness  of 
a composition of matter claim, it is this invention as a whole, and not 
some part of it, which must be obvious under section 103." In re Antonie, 
559  F.2d 618, 195 USPQ 6,8 (CCPA 1977) (emphasis in original) (citations 
omitted) 
(The claimed wastewater treatment device had a tank volume to contractor 
area  of 0.12 gal./sq. ft. The court found the invention as a whole was 
the ratio  of 0.12 and its inherent property that the claimed devices 
maximized treatment  capacity regardless of other variables in the 
devices. The prior art did not  recognize that treatment capacity was a 
function of the tank volume to contractor  ratio, and therefore the 
parameter optimized was not recognized in the art  to be a 
result-effective variable.). See also In re Papesch, 315 F.2d 381,  137 
USPQ 42, 51 (CCPA 1963) ("From the standpoint of patent law, a compound 
and all its properties are inseparable."). 

        Obviousness cannot be predicated on what is not known at the time 
an  invention is made, even if the inherency of a certain feature is later 
established.  In re Rijckaert, 9 F.2d 1531, 28 USPQ2d 1955 (Fed. Cir. 
1993). See MPEP # 2112  for the requirements of rejections based on inherency. 

PRIOR ART MUST BE CONSIDERED IN ITS 
ENTIRETY, INCLUDING DISCLOSURES THAT TEACH AWAY FROM THE CLAIMS 

        A prior art reference must be considered in its entirety, i.e., as 
 a whole, including portions that would lead away from the claimed 
invention.  W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 
220 USPQ 303 
(Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984) (Claims were directed 
to  a process of producing a porous article by expanding shaped, 
unsintered, highly  crystalline poly(tetrafluoroethylene) (PTFE) by 
stretching said PTFE at a 100%  per second rate to more than five times 
the original length. The prior art  teachings with regard to unsintered 
PTFE indicated the material does not respond  to conventional plastics 
processing, and the material should be stretched slowly.  A reference 
teaching rapid stretching of conventional plastic polypropylene  with 
reduced crystallinity combined with a reference teaching stretching 
unsintered  PTFE would not suggest rapid stretching of highly crystalline 
PTFE, in light  of the disclosures in the art that teach away from the 
invention, i.e. that  the conventional polypropylene should have reduced 
crystallinity before stretching,  and that PTFE should be stretched slowly.). 


2141.03       Level of Ordinary Skill in the Art [R-1] 


>FACTORS TO CONSIDER IN DETERMINING LEVEL OF ORDINARY SKILL 

        "Factors that may be considered in determining level of ordinary 
skill  in the art include (1) the educational level of the inventor; (2) 
type of problems  encountered in the art; (3) prior art solutions to those 
problems; (4) rapidity  with which innovations are made; (5) 
sophistication of the technology; and 
(6) educational level of active workers in the field." Environmental 
Designs,  Ltd. v. Union Oil Co., 713 F.2d 693, 218 USPQ 865, 868 (Fed. 
Cir. 1983), cert.  denied, 464 U.S. 1043 (1984). 

        The "hypothetical `person having ordinary skill in the art' to 
which  the claimed subject matter pertains would, of necessity have the 
capability  of understanding the scientific and engineering principles 
applicable to the  pertinent art." Ex parte Hiyamizu, 10 USPQ2d 1393, 1394 
(Bd. Pat. App. & Inter.  1988) (The Board disagreed with the examiner's 
definition of one of ordinary skill in the art (a doctorate  level 
engineer or scientist working at least 40 hours per week in semiconductor 
research or development), finding that the hypothetical person is not 
definable  by way of credentials, and that the evidence in the application 
did not support  the conclusion that such a person would require a 
doctorate or equivalent knowledge  in science or engineering.). 

        References which do not qualify as prior art because they postdate 
 the claimed invention may be relied upon to show the level of ordinary 
skill  in the art at or around the time the invention was made. Ex parte 
Erlich, 22 USPQ 1463 (Bd. Pat. App. & Inter. 1992). 

SPECIFYING A PARTICULAR LEVEL OF SKILL IS NOT NECESSARY WHERE THE PRIOR 
ART ITSELF REFLECTS AN APPROPRIATE LEVEL 

        If the only facts of record pertaining to the level of skill in 
the  art are found within the prior art of record, the court has held that 
an invention  may be held to have been obvious without a specific finding 
of a particular  level of skill where the prior art itself reflects an 
appropriate level. Chore-Time  Equipment, Inc. v. Cumberland Corp., 713 
F.2d 774, 218 USPQ 673 (Fed. Cir.  1983). 

ASCERTAINING LEVEL OF ORDINARY SKILL IS NECESSARY TO MAINTAIN OBJECTIVITY 
        "The importance of resolving the level of ordinary skill in the 
art  lies in the necessity of maintaining objectivity in the obviousness 
inquiry."  Ryko Manufacturing Co. v. Nu-Star Inc., 950 F.2d 714, 21 USPQ2d 
1053, 1057 
(Fed. Cir. 1991). The examiner must ascertain what would have been obvious 
 to one of ordinary skill in the art at the time the invention was made, 
and  not to the inventor, a judge, a layman, those skilled in remote arts, 
or to  geniuses in the art at hand. Environmental Designs, Ltd. v. Union 
Oil Co.,  713 F.2d 693, 218 USPQ 865 (Fed. Cir. 1983), cert. denied, 464 
U.S. 1043 (1984).< 


2142    Legal Concept of Prima Facie Obviousness [R-1] 


        >The legal concept of prima facie obviousness is a procedural tool 
 of examination which applies broadly to all arts. It allocates who has 
the  burden of going forward with production of evidence in each step of 
the examination  process. See In re Rinehart, 531 F.2d 1048, 189 USPQ 143 
(CCPA 1976); In re  Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972); In re 
Saunders, 444 F.2d 599, 170 USPQ 213 (CCPA 1971); In re Tiffin, 443 F.2d 
394, 170 USPQ 80 (CCPA 1971),  amended, 448 F.2d 791, 
171 USPQ 294 (CCPA 1971); In re Warner, 379 F.2d 1011, 154 USPQ 173 (CCPA 
1967),  cert. denied, 389 U.S. 1057 (1968). The examiner bears the initial 
burden of  factually supporting any prima facie conclusion of obviousness. 
If the examiner  does not produce a prima facie case, the applicant is 
under no obligation to  submit evidence of nonobviousness. If, however, 
the examiner does produce a  prima facie case, the burden of coming 
forward with evidence or arguments shifts  to the applicant who may submit 
additional evidence of nonobviousness, such  as comparative test data 
showing that the claimed invention possesses improved  properties not 
expected by the prior art. The initial evaluation of prima facie 
obviousness thus relieves both the examiner and applicant from evaluating 
evidence  beyond the prior art and the evidence in the specification as 
filed until the  art has been shown to suggest the claimed invention. 

        To reach a proper determination under 35 U.S.C. 103, the examiner 
must  step backward in time and into the shoes worn by the hypothetical 
"person of  ordinary skill in the art" when the invention was unknown and 
just before it  was made. In view of all factual information, the examiner 
must then make a  determination whether the claimed invention "as a whole" 
would have been obvious  at that time to that person. Knowledge of 
applicant's disclosure must be put  aside in reaching this determination, 
yet kept in mind in order to determine  the "differences," conduct the 
search and evaluate the "subject matter as a  whole" of the invention. The 
tendency to resort to "hindsight" based upon applicant's  disclosure is 
often difficult to avoid due to the very nature of the examination 
process. However, impermissible hindsight must be avoided and the legal 
conclusion  must be reached on the basis of the facts gleaned from the 
prior art. 
ESTABLISHING A PRIMA FACIE CASE OF 
OBVIOUSNESS 

        To establish a prima facie case of obviousness, three basic 
criteria  must be met. First, there must be some suggestion or motivation, 
either in  the references themselves or in the knowledge generally 
available to one of  ordinary skill in the art, to modify the reference or 
to combine reference  teachings. Second, there must be a reasonable 
expectation of success. Finally,  the prior art reference (or references 
when combined) must teach or suggest all the claim  limitations. The 
teaching or suggestion to make the claimed combination and  the reasonable 
expectation of success must both be found in the prior art,  and not based 
on applicant's disclosure. In re Vaeck, 947 F.2d 488, 20 USPQ2d  1438 
(Fed. Cir. 1991). See MPEP w 2143 - w 2143.03 for decisions pertinent  to 
each of these criteria. 

        The initial burden is on the examiner to provide some suggestion 
of  the desirability of doing what the inventor has done. "To support the 
conclusion  that the claimed invention is directed to obvious subject 
matter, either the  references must expressly or impliedly suggest the 
claimed invention or the  examiner must present a convincing line of 
reasoning as to why the artisan  would have found the claimed invention to 
have been obvious in light of the  teachings of the references." Ex parte 
Clapp, 227 USPQ 972, 973 (Bd. Pat. App.  & Inter. 1985). See MPEP w 2144 - 
w 2144.09 for examples of reasoning supporting  obviousness rejections. 

        When the motivation to combine the teachings of the references is 
not  immediately apparent, it is the duty of the examiner to explain why 
the combination  of the teachings is proper. Ex parte Skinner, 2 USPQ2d 
1788 (Bd. Pat. App.  & Inter. 1986). A statement of a rejection that 
includes a large number of  rejections must explain with reasonable 
specificity at least one rejection,  otherwise the examiner procedurally 
fails to establish a prima facie case of  obviousness. Ex parte Blanc, 13 
USPQ2d 1383 (Bd. Pat. App. & Inter. 1989) (Rejection  based on nine 
references which included at least 40 prior art rejections without 
explaining any one rejection with reasonable specificity was reversed as 
procedurally  failing to establish a prima facie case of obviousness.). 

        If the examiner determines there is factual support for rejecting 
the  claimed invention under 35 U.S.C. 103, the examiner must then 
consider any  evidence support ing the patentability of the claimed 
invention, such as any  evidence in the specification or any other 
evidence submitted by the applicant.  The ultimate determination of 
patentability is based on the entire record,  by a preponderance of 
evidence, with due consideration to the persuasiveness  of any arguments 
and any secondary evidence. In re Oetiker, 977 F.2d 1443,  24 USPQ2d 1443 
(Fed. Cir. 1992). The legal standard of "a preponderance of  evidence" 
requires the evidence to be more convincing than the evidence which  is 
offered in opposition to it. With regard to rejections under 35 U.S.C. 
103,  the examiner must provide evidence which as a whole shows that the 
legal determination  sought to be proved (i.e., the reference teachings 
establish a prima facie  case of obviousness) is more probable than not. 

        When an applicant submits evidence, whether in the specification 
as  originally filed or in response to a rejection, the examiner must 
reconsider  the patentability of the claimed invention. The decision on 
patentability must  be made based upon consideration of all the evidence, 
including the evidence  submitted by the examiner and the evidence 
submitted by the applicant. A decision  to make or maintain a rejection in 
the face of all the evidence must show that  it was based on the totality 
of the evidence. Facts established by rebuttal  evidence must be evaluated 
along with the facts on which the conclusion of  obviousness was reached, 
not against the conclusion itself. In re Eli Lilly  & Co., 902 F.2d 943, 
14 USPQ2d 1741 (Fed. Cir. 1990). 

        See In re Piasecki, 745 F.2d 1468, 223 USPQ 785 (Fed. Cir. 1984) 
for  a discussion of the proper roles of the examiner's prima facie case 
and applicant's  rebuttal evidence in the final determination of 
obviousness. See MPEP w 706.02(j)  for a discussion of the proper contents 
of a rejection under 35 U.S.C. 103.< 

2143    Basic Requirements of a Prima Facie Case of Obviousness [R-1] 

        >To establish a prima facie case of obviousness, three basic 
criteria  must be met. First, there must be some suggestion or motivation, 
either in  the references themselves or in the knowledge generally 
available to one of  ordinary skill in the art, to modify the reference or 
to combine reference  teachings. Second, there must be a reasonable 
expectation of success. Finally,  the prior art reference (or references 
when combined) must teach or suggest  all the claim limitations. 

        The teaching or suggestion to make the claimed combination and the 
 reasonable expectation of success must both be found in the prior art, 
not  in applicant's disclosure. In re Vaeck, 947 F.2d 488, 20 USPQ2d 1438 
(Fed.  Cir. 1991).< 


2143.01       Suggestion or Motivation to Modify the References [R-1] 

>THE PRIOR ART MUST SUGGEST THE DESIRABILITY OF THE CLAIMED INVENTION 
        "In determining the propriety of the Patent Office case for 
obviousness  in the first instance, it is necessary to ascertain whether 
or not the reference  teachings would appear to be sufficient for one of 
ordinary skill in the relevant  art having the reference before him to 
make the proposed substitution, combination,  or other modification." In 
re Linter, 458 F.2d 1013, 173 USPQ 560, 562 (CCPA  1972). 

        Obviousness can only be established by combining or modifying the 
teachings  of the prior art to produce the claimed invention where there 
is some teaching,  suggestion, or motivation to do so found either in the 
references themselves  or in the knowledge generally available to one of 
ordinary skill in the art.  In re Fine, 
837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988); In re Jones, 958 F.2d 347, 
21  USPQ2d 1941 (Fed. Cir. 1992). 

        In In re Fine, the claims were directed to a system for detecting 
and  measuring minute quantities on nitrogen compounds comprising a gas 
chromatograph,  a converter which converts nitrogen compounds into nitric 
oxide by combustion,  and a nitric oxide detector. The primary reference 
disclosed a system for monitoring  sulfur compounds comprising a 
chromatograph, combustion means, and a detector,  and the secondary 
reference taught nitric oxide detectors. The examiner and  Board asserted 
that it would have been within the skill of the art to substitute  one 
type of detector for another in the system of the primary reference, 
however  the court found there was no support or explanation of this 
conclusion and  reversed. 

        In In re Jones, the claimed invention was the 
2-(2'-aminoethoxy)ethanol  salt of dicamba, a compound with herbicidal 
activity. The primary reference  disclosed inter alia the substituted 
ammonium salts of dicamba as herbicides,  however the reference did not 
specifically teach the claimed salt. Secondary  references teaching the 
amine portion of the salt were directed to shampoo  additives and a 
byproduct of the production of morpholine. The court found  there was no 
suggestion to combine these references to arrive at the claimed 
 invention. 

WHERE THE TEACHINGS OF THE PRIOR ART CONFLICT, THE EXAMINER MUST WEIGH THE 
 SUGGESTIVE POWER OF EACH REFERENCE 

        The test for obviousness is what the combined teachings of the 
references  would have suggested to one of ordinary skill in the art, and 
all teachings  in the prior art must be considered to the extent that they 
are in analogous  arts. Where the teachings of two or more prior art 
references conflict, the  examiner must weigh the power of each reference 
to suggest solutions to one  of ordinary skill in the art, considering the 
degree to which one reference  might accurately discredit another. In re 
Young, 
18 USPQ2d 1089 (Fed. Cir. 1991) (Prior art patent to Carlisle disclosed 
controlling  and minimizing bubble oscillation for chemical explosives 
used in marine seismic  exploration by spacing seismic sources close 
enough to allow the bubbles to  intersect before reaching their maximum 
radius so the secondary pressure pulse  was reduced. An article published 
several years later by Knudsen opined that  the Carlisle technique does 
not yield appreciable improvement in bubble oscillation  suppression. 
However, the article did not test the Carlisle technique under  comparable 
conditions because Knudsen did not use Carlisle's spacing or seismic 
source. Furthermore, where the Knudsen model most closely approximated the 
 patent technique there was a 30% reduction of the secondary pressure 
pulse.  On these facts, the court found that the Knudsen article would not 
have deterred  one of ordinary skill in the art from using the Carlisle 
patent teachings.). 
FACT THAT REFERENCES CAN BE COMBINED OR MODIFIED IS NOT SUFFICIENT TO 
ESTABLISH  PRIMA FACIE OBVIOUSNESS 

        The mere fact that references can be combined or modified does not 
 render the resultant combination obvious unless the prior art also 
suggests  the desirability of the combination. In re Mills, 916 F.2d 680, 
16 USPQ2d 1430 
(Fed. Cir. 1990) (Claims were directed to an apparatus for producing an 
aerated  cementitious composition by drawing air into the cementitious 
composition by  driving the output pump at a capacity greater than the 
feed rate. The prior  art reference taught that the feed means can be run 
at a variable speed, however the court found that this does  not require 
that the output pump be run at the claimed speed so that air is  drawn 
into the mixing chamber and is entrained in the ingredients during 
operation.  Although a prior art device "may be capable of being modified 
to run the way  the apparatus is claimed, there must be a suggestion or 
motivation in the reference  to do so." 16 USPQ2d at 1432.). See also In 
re Fritch, 972 F.2d 1260, 23 USPQ2d  1780 (Fed. Cir. 1992) (flexible 
landscape edging device which is conformable  to a ground surface of 
varying slope not suggested by combination of prior  art references). 

FACT THAT THE CLAIMED INVENTION IS WITHIN THE CAPABILITIES OF ONE OF 
ORDINARY  SKILL IN THE ART IS NOT SUFFICIENT BY 
ITSELF TO ESTABLISH PRIMA FACIE OBVIOUSNESS 

        A statement that modifications of the prior art to meet the 
claimed  invention would have been " `well within the ordinary skill of 
the art at the  time the claimed invention was made' " because the 
references relied upon teach  that all aspects of the claimed invention 
were individually known in the art  is not sufficient to establish a prima 
facie case of obviousness without some  objective reason to combine the 
teachings of the references. Ex parte Levengood,  28 USPQ2d 1300 (Bd. Pat. 
App. & Inter. 1993). 

THE PROPOSED MODIFICATION CANNOT RENDER THE PRIOR ART UNSATISFACTORY FOR 
ITS  INTENDED PURPOSE 

        If proposed modification would render the prior art invention 
being  modified unsatisfactory for its intended purpose, then there is no 
suggestion  or motivation to make the proposed modification. In re Gordon, 
733 F.2d 900,  221 USPQ 1125 (Fed. Cir. 1984) (Claimed device was a blood 
filter assembly  for use during medical procedures wherein both the inlet 
and outlet for the  blood were located at the bottom end of the filter 
assembly, and wherein a  gas vent was present at the top of the filter 
assembly. The prior art reference  taught a liquid strainer  for removing 
dirt and water from gasoline and other  light oils wherein the inlet and 
outlet were at the top of the device, and  wherein a pet-cock (stopcock) 
was located at the bottom of the device for periodically  removing the 
collected dirt and water. The reference further taught that the 
separation is assisted by gravity. The Board concluded the claims were 
prima  facie obvious, reasoning that it would have been obvious to turn 
the reference  device upside down. The court reversed, finding that if the 
prior art device  was turned upside down it would be inoperable for its 
intended purpose because  the gasoline to be filtered would be trapped at 
the top, the water and heavier  oils sought to be separated would flow out 
of the outlet instead of the purified  gasoline, and the screen would 
become clogged.). 

THE PROPOSED MODIFICATION CANNOT CHANGE THE PRINCIPLE OF OPERATION OF A 
REFERENCE 
        If the proposed modification or combination of the prior art would 
 change the principle of operation of the prior art invention being 
modified,  then the teachings of the references are not sufficient to 
render the claims  prima facie obvious. In re Ratti, 270 F.2d 810, 123 
USPQ 349 (CCPA 1959) (Claims  were directed to an oil seal comprising a 
bore engaging portion with outwardly  biased resilient spring fingers 
inserted in a resilient sealing member. The  primary reference relied upon 
in a rejection based on a combination of references  disclosed an oil seal 
wherein the bore engaging portion was reinforced by a  cylindrical sheet 
metal casing. Patentee taught the device required rigidity  for operation, 
whereas the claimed invention required resiliency. The court  reversed the 
rejection holding the "suggested combination of references would  require 
a substantial reconstruction and redesign of the elements shown in  [the 
primary reference] as well as a change in the basic principle under which 
the [primary reference] construction was designed to operate." 123 USPQ at 
 352.).< 


2143.02       Reasonable Expectation of Success Is Required [R-1] 

>OBVIOUSNESS REQUIRES ONLY A REASONABLE EXPECTATION OF SUCCESS 

        The prior art can be modified or combined to reject claims as 
prima  facie obvious as long as there is a reasonable expectation of 
success. In re  Merck & Co., Inc., 
800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986) 
(Claims directed to a method of treating depression with 
amitriptyline (or nontoxic salts thereof) were rejected as prima facie 
obvious  over prior art disclosures that amitriptyline is a compound known 
to possess  psychotropic properties and that imipramine is a structurally 
similar psychotropic  compound known to possess antidepressive properties, 
in view of prior art suggesting  the aforementioned compounds would be 
expected to have similar activity because  the structural difference 
between the compounds involves a known bioisosteric  replacement and 
because a research paper comparing the pharmacological properties  of 
these two compounds suggested clinical testing of amitriptyline as an 
antidepressant.  The court sustained the rejection, finding that the 
teachings of the prior  art provide a sufficient basis for a reasonable 
expectation of success.); Ex  parte Blanc, 13 USPQ2d 1383 (Bd. Pat. App. & 
Inter. 1989) (Claims were directed  to a process of sterilizing a 
polyolefinic composition with high-energy radiation  in the presence of a 
phenolic polyester antioxidant to inhibit discoloration  or degradation of 
the polyolefin. Appellant argued that it is unpredictable  whether a 
particular antioxidant will solve the problem of discoloration or 
degradation. However, the Board found that because the prior art taught 
that  appellant's preferred antioxidant is very efficient and provides 
better results  compared with other prior art antioxidants, there would 
have been a reasonable  expectation of success.). 

AT LEAST SOME DEGREE OF PREDICTABILITY IS REQUIRED; APPLICANTS MAY PRESENT 
EVIDENCE SHOWING THERE WAS NO REASONABLE EXPECTATION OF SUCCESS 

        Obviousness does not require absolute predictability, however, at 
least  some degree of predictability is required. Evidence showing there 
was no reasonable  expectation of success may support a conclusion of 
nonobviousness. In re Rinehart,  531 F.2d 1048, 189 USPQ 143 (CCPA 1976) 
(Claims directed to a method for the  commercial scale production of 
polyesters in the presence of a solvent at superatmospheric  pressure were 
rejected as obvious over a reference which taught the claimed  method at 
atmospheric pressure in view of a reference which taught the claimed 
process except for the presence of a solvent. The court reversed, finding 
there  was no reasonable expectation that a process combining the prior 
art steps  could be successfully scaled up in view of unchallenged 
evidence showing that  the prior art processes individually could not be 
commercially scaled up successfully.).  See also Amgen, Inc. v. Chugai 
Pharmaceutical Co., 927 F.2d 1200, 18 USPQ2d  1016 (Fed. Cir.), cert. 
denied, 502 U.S. 856 (1991) (In the context of a biotechnology  case, 
testimony supported the conclusion that the references did not show that 
there was a reasonable expectation of success. 18 USPQ2d at 1022, 1023.); 
In  re O'Farrell, 853 F.2d 894, 7 USPQ2d 1673, 1681 (Fed. Cir. 1988) (The 
court  held the claimed method would have been obvious over the prior art 
relied upon  because one reference contained a detailed enabling 
methodology, a suggestion  to modify the prior art to produce the claimed 
invention, and evidence suggesting  the modification would be successful.). 

PREDICTABILITY IS DETERMINED AT THE TIME THE INVENTION WAS MADE 

        Whether an art is predictable or whether the proposed modification 
 or combination of the prior art has a reasonable expectation of success 
is  determined at the time the invention was made. Ex parte Erlich, 3 
USPQ2d 1011 
(Bd. Pat. App. & Inter. 1986) (Although an earlier case reversed a 
rejection  because of unpredictability in the field of monoclonal 
antibodies, the court  found "in this case at the time this invention was 
made, one of ordinary skill  in the art would have been motivated to 
produce monoclonal antibodies specific  for human fibroplast interferon 
using the method of [the prior art] with a  reasonable expectation of 
success." 3 USPQ2d at 1016 (emphasis in original).).< 


2143.03       All Claim Limitations Must Be Taught or Suggested [R-1] 

        >To establish prima facie obviousness of a claimed invention, all 
the  claim limitations must be taught or suggested by the prior art. In re 
Royka,  490 F.2d 981, 
180 USPQ 580 (CCPA 1974). "All words in a claim must be considered in 
judging  the patentability of that claim against the prior art." In re 
Wilson, 424 F.2d  1382, 
165 USPQ 494, 496 (CCPA 1970). If an independent claim is nonobvious under 
 35 U.S.C. 103, then any claim depending therefrom is nonobvious. In re 
Fine,  837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988). 

INDEFINITE LIMITATIONS MUST BE 
CONSIDERED 

        A claim limitation which is considered indefinite cannot be 
disregarded.  If a claim is subject to more than one interpretation, at 
least one of which  would render the claim unpatentable over the prior 
art, the examiner should  reject the claim as indefinite under 35 U.S.C. 
112, second paragraph (see MPEP  w 706.03(d)) and should reject the claim 
over the prior art based on the interpretation  of the claim that renders 
the prior art applicable. Ex parte Ionescu, 222 USPQ  537 (Bd. Pat. App. & 
Inter. 1984) (Claims on appeal were rejected on indefiniteness  grounds 
only; the rejection was reversed and the case remanded to the examiner 
for consideration of pertinent prior art.). Compare In re Wilson, 165 USPQ 
 494 (CCPA 1970) (if no reasonably definite meaning can be ascribed to 
certain  claim language, the claim is indefinite, not obvious) and In re 
Steele, 305  F.2d 859, 
134 USPQ 292 (CCPA 1962) (it is improper to rely on speculative 
assumptions  regarding the meaning of a claim and then base a rejection 
under 35 U.S.C.  103 on these assumptions). 

LIMITATIONS WHICH DO NOT FIND SUPPORT IN THE ORIGINAL SPECIFICATION MUST 
BE  CONSIDERED 

        When evaluating claims for obviousness under 
35 U.S.C. 103, all the limitations of the claims must be considered and 
given  weight, including limitations which do not find support in the 
specification  as originally filed (i.e., new matter). Ex parte Grasselli, 
231 USPQ 393 (Bd.  App. 1983) aff'd mem. 738 F.2d 453 (Fed. Cir. 1984) 
(Claim to a catalyst expressly  excluded the presence of sulfur, halogen, 
uranium, and a combination of vanadium  and phosphorous. Although the 
negative limitations excluding these elements  did not appear in the 
specification as filed, it was error to disregard these  limitations when 
determining whether the claimed invention would have been  obvious in view 
of the prior art.).< 


2144    Sources of Rationale Supporting a Rejection Under 35 U.S.C. 103 
[R-1] 

>RATIONALE MAY BE IN A REFERENCE, OR REASONED FROM COMMON KNOWLEDGE IN 
THE ART, SCIENTIFIC PRINCIPLES, ART-RECOGNIZED EQUIVALENTS, OR LEGAL 
PRECEDENT 
        The rationale to modify or combine the prior art does not have to 
be  expressly stated in the prior art; the rationale may be expressly or 
impliedly  contained in the prior art or it may be reasoned from knowledge 
generally available  to one of ordinary skill in the art, established 
scientific principles, or  legal precedent established by prior case law. 
In re Fine, 837 F.2d 1071, 5  USPQ2d 1596 (Fed. Cir. 1988); In re Jones, 
958 F.2d 347, 21 USPQ2d 1941 (Fed.  Cir. 1992). See also In re Eli Lilly & 
Co., 
902 F.2d 943, 14 USPQ2d 1741 (Fed. Cir. 1990) (discussion of reliance on 
legal  precedent); In re Nilssen, 
851 F.2d 1401, 7 USPQ2d 1500, 1502 (Fed. Cir. 1988) (references do not 
have  to explicitly suggest combining teachings); Ex parte Clapp, 227 USPQ 
972 (Bd.  Pat. App. & Inter. 1985) (examiner must present convincing line 
of reasoning  supporting rejection); and Ex parte Levengood, 28 USPQ2d 
1300 (Bd. Pat. App.  & Inter. 1993) (reliance on logic and sound 
scientific reasoning). 
THE EXPECTATION OF SOME ADVANTAGE IS THE STRONGEST RATIONALE FOR COMBINING 
 REFERENCES 

        The strongest rationale for combining references is a recognition, 
 expressly or impliedly in the prior art or drawn from a convincing line 
of  reasoning based on established scientific principles or legal 
precedent, that  some advantage or expected beneficial result would have 
been produced by their  combination. In re Sernaker, 
702 F.2d 989, 217 USPQ 1, 5-6 (Fed. Cir. 1983). 

LEGAL PRECEDENT CAN PROVIDE THE 
RATIONALE SUPPORTING OBVIOUSNESS ONLY IF THE FACTS IN THE CASE ARE 
SUFFICIENTLY  SIMILAR TO THOSE IN THE APPLICATION 

        The examiner must apply the law consistently to each application 
after  considering all the relevant facts. If the facts in a prior legal 
decision  are sufficiently similar to those in an application under 
examination, the  examiner may use the rationale used by the court. If the 
applicant has demonstrated the criticality of a specific limitation, it 
would  not be appropriate to rely solely on case law as the rationale to 
support an  obviousness rejection. "The value of the exceedingly large 
body of precedent  wherein our predecessor courts and this court have 
applied the law of obviousness  to particular facts, is that there has 
been built a wide spectrum of illustrations  and accompanying reasoning, 
that have been melded into a fairly consistent  application of law to a 
great variety of facts." In re Eli Lilly & Co., 902  F.2d 943, 14 USPQ2d 
1741 (Fed. Cir. 1990). 

RATIONALE DIFFERENT FROM APPLICANT'S IS PERMISSIBLE 

        The reason or motivation to modify the reference may often suggest 
 what the inventor has done, but for a different purpose or to solve a 
different  problem. It is not necessary that the prior art suggest the 
combination to  achieve the same advantage or result discovered by 
applicant. In re Linter,  458 F.2d 1013, 173 USPQ 560 (CCPA 1972) 
(discussed below); In re Dillon, 919  F.2d 688, 
16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991) 
(discussed  below). Although Ex parte Levengood, 28 USPQ2d 1300, 1302 (Bd. 
Pat. App. &  Inter. 1993) states that obviousness cannot be established by 
combining references  "without also providing evidence of the motivating 
force which would impel  one skilled in the art to do what the patent 
applicant has done" (emphasis  added), reading the quotation in context it 
is clear that while there must  be motivation to make the claimed 
invention, there is no requirement that the  prior art provide the same 
reason as the applicant to make the claimed invention. 
        In In re Linter the claimed invention was a laundry composition 
consisting  essentially of a dispersant, cationic fabric softener, sugar, 
sequestering  phosphate, and brightener in specified proportions. The 
claims were rejected  over the combination of a primary reference which 
taught all the claim limitations  except for the presence of sugar, and 
secondary references which taught the  addition of sugar as a filler or 
weighting agent in compositions containing  cationic fabric softeners. 
Appellant argued that in the claimed invention,  the sugar is responsible 
for the compatibility of the cationic softener with  the other detergent 
components. The court sustained  the rejection, stating  "The fact that 
appellant uses sugar for a different purpose does not alter  the 
conclusion that its use in a prior art composition would be [sic, would 
have been] prima facie obvious from the purpose disclosed in the 
references."  173 USPQ at 562. 

        In In re Dillon, applicant claimed a composition comprising a 
hydrocarbon  fuel and a sufficient amount of a tetra-orthoester of a 
specified formula to  reduce the particulate emissions from the combustion 
of the fuel. The claims  were rejected as obvious over a reference which 
taught hydrocarbon fuel compositions  containing tri-orthoesters for 
dewatering fuels, in combination with a reference  teaching the 
equivalence of tri-orthoesters and tetra-orthoesters as water  scavengers 
in hydraulic (nonhydrocarbon) fluids. The Board affirmed the rejection 
finding "there was a `reasonable expectation' that the tri- and 
tetra-orthoester  fuel compositions would have similar properties based on 
`close structural  and chemical similarity' between the tri- and 
tetra-orthoesters and the fact  that both the prior art and Dillon use 
these compounds `as fuel additives'."  16 USPQ2d at 1900. The court held 
"it is not necessary in order to establish  a prima facie case of 
obviousness . . . that there be a suggestion or expectation  from the 
prior art that the claimed [invention] will have the same or a similar 
utility as one newly discovered by applicant," and concluded that here a 
prima  facie case was established because "[t]he art provided the 
motivation to make  the claimed compositions in the expectation that they 
would have similar properties."  16 USPQ2d at 1901 (emphasis in original). 

        See MPEP w 2145, paragraph (b) for case law pertaining to the 
presence  of additional advantages or latent properties not recognized in 
the prior art.< 

2144.01       Implicit Disclosure [R-1] 


        >"[I]n considering the disclosure of a reference, it is proper to 
take  into account not only specific teachings of the reference but also 
the inferences  which one skilled in the art would reasonably be expected 
to draw therefrom."  In re Preda, 401 F.2d 825, 159 USPQ 342, 344 (CCPA 
1968) (A process for catalytically  producing carbon disulfide by reacting 
sulfur vapor and methane in the presence  of charcoal at a temperature of 
"about 750#-830#C" was found to be met by a  reference which expressly 
taught the same process at 700#C because the reference  recognized the 
possibility of using temperatures greater than 750#C. The reference 
disclosed that catalytic processes  for converting methane with sulfur 
vapors into carbon disulfide at temperatures  greater than 750#C (albeit 
without charcoal) was known, and that 700#C was  "much lower than had 
previously proved feasible."); In re Lamberti, 545 F.2d  747, 192 USPQ 
278, 280 (CCPA 1976) (Reference disclosure of a compound where  the R-S-R' 
portion has "at least one methylene group attached to the sulfur  atom" 
implies that the other R group attached to the sulfur atom can be other 
than methylene and therefore suggests asymmetric dialkyl moieties.).< 

2144.02       Reliance on Scientific Theory [R-1] 


        >The rationale to support a rejection under 35 U.S.C. 103 may rely 
 on logic and sound scientific principle. In re Soli, 317 F.2d 941, 137 
USPQ  797 (CCPA 1963). However, when an examiner relies on a scientific 
theory, evidentiary  support for the existence and meaning of that theory 
must be provided. In re  Grose, 592 F.2d 1161, 
201 USPQ 57 (CCPA 1979) (Court held that different crystal forms of 
zeolites  would not have been structurally obvious one from the other 
because there was  no chemical theory supporting such a conclusion. The 
known chemical relationship  between structurally similar compounds 
(homologs, analogs, isomers) did not  support a finding of prima facie 
obviousness of claimed zeolite over the prior  art because a zeolite is 
not a compound but a mixture of compounds related  to each other by a 
particular crystal structure.). Although the theoretical  mechanism of an 
invention may be explained by logic and sound scientific reasoning,  this 
fact does not support an obviousness determination unless logic and 
scientific  reasoning would have led one of ordinary skill in the art t 
make the claimed  invention. Ex parte Levengood, 
28 USPQ2d 1300 (Bd. Pat. App. & Inter. 1993).< 


2144.03       Reliance on Common Knowledge in the Art or "Well Known" 
Prior Art [R-1] 

        >The rationale supporting an obviousness rejection may be based on 
 common knowledge in the art or "well-known" prior art. The examiner may 
take  official notice  of facts outside of the record which are capable of 
instant  and unquestionable demonstration as being "well- known"  in the 
art. In re  Ahlert, 424 F.2d 1088, 165  USPQ 

418, 420 (CCPA 1970) (Board properly took judicial notice that "it is 
common  practice to postheat a weld after the welding operation is 
completed" and that  "it is old to adjust the intensity of a flame in 
accordance with the heat requirements.").  See also In re Seifreid, 407 
F.2d 897, 160 USPQ 804 (CCPA 1969) (Examiner's  statement that 
polyethylene terephthalate films are commonly known to be shrinkable  is a 
statement of common knowledge in the art, supported by the references  of 
record.). 

        If justified, the examiner should not be obliged to spend time to 
produce  documentary proof. If the knowledge is of such notorious 
character that judicial  notice can be taken, it is sufficient so to 
state. In re Malcolm, 
129 F.2d 529, 54 USPQ 235 (CCPA 1942). If the applicant traverses such an 
assertion  the examiner should cite a reference in support of his or her 
position. 
        If applicant does not seasonably traverse the well known statement 
 during examination, then the object of the well known statement is taken 
to  be admitted prior art. In re Chevenard, 139 F.2d 71, 60 USPQ 239 (CCPA 
1943).  A seasonable challenge constitutes a demand for evidence made as 
soon as practicable  during prosecution. Thus, applicant is charged with 
rebutting the well known  statement in the next response after the Office 
Action in which the well known  statement was made. This is necessary 
because the examiner must be given the  opportunity to provide evidence in 
the next Office Action or explain why no  evidence is required. If the 
examiner adds a reference to the rejection in  the next action after 
applicant's rebuttal, the newly cited reference, if it  is added merely as 
evidence of the prior well known statement, does not result  in a new 
issue and thus the action can potentially be made final. If no amendments 
are made to the claims, the examiner must not rely on any other teachings 
in  the reference if the rejection is made final. 

        When a rejection is based on facts within the personal knowledge 
of  the examiner, the data should be stated as specifically as possible, 
and the  facts must be supported, when called for by the applicant, by an 
affidavit  from the examiner. Such an affidavit is subject to 
contradiction or explanation  by the affidavits of the applicant and other 
persons. See 37 CFR 1.107. 
        Applicant must also seasonably challenge well known statements and 
 statements based on personal knowledge when they are made by the Board of 
Patent  Appeals and Interferences. In re Selmi, 156 F.2d 96, 
70 USPQ 197 (CCPA 1946); In re Fischer, 125 F.2d 725, 
52 USPQ 473 (CCPA 1942). See also In re Boon, 439 F.2d 724, 169 USPQ 231 
(CCPA  1971) (a challenge to the taking of judicial notice must contain 
adequate information  or argument to create on its face a reasonable doubt 
regarding the circumstances  justifying the judicial notice). 

        For further views on official notice, see In re Ahlert, 424 F.2d 
1088,  165 USPQ 418, 420-421 (CCPA 1970) ("[A]ssertions of technical facts 
in areas  of esoteric technology must always be supported by citation of 
some reference  work" and "allegations concerning specific `knowledge' of 
the prior art, which  might be peculiar to a particular art should also be 
supported." Furthermore  the applicant must be given the opportunity to 
challenge the correctness of  such assertions and allegations. "The facts 
so noticed serve to `fill the gaps'  which might exist in the evidentiary 
showing" and should not comprise the principle  evidence upon which a 
rejection is based.). See also In re Barr, 444 F.2d 588,  170 USPQ 330 
(CCPA 1971) (scientific journal references were not used as a  basis for 
taking judicial notice that controverted phrases were art-recognized 
because the court was not sure that the meaning of the term at issue was 
indisputable  among reasonable men); and In re Eynde, 480 F.2d 470, 
178 USPQ 470,474 (CCPA 1973) ("The facts constituting the state of the art 
 are normally subject to the possibility of rational disagreement among 
reasonable  men and are not amenable to the taking of [judicial] notice.").< 


2144.04       Legal Precedent as Source of Supporting Rationale [R-1] 

        >As discussed in MPEP w 2144, if the facts in a prior legal 
decision  are sufficiently similar to those in an application under 
examination, the  examiner may use the rationale used by the court. 
Examples directed to various  common practices which the court has held 
normally require only ordinary skill  in the art and hence are considered 
routine expedients are discussed below.  If the applicant has demonstrated 
the criticality of a specific limitation,  it would not be appropriate to 
rely solely on case law as the rationale to  support an obviousness rejection. 

(a) Aesthetic design changes 

        In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947) (Claim was 
directed  to an advertising display device comprising a bottle and a 
hollow member in  the shape of a human figure from the waist up which was 
adapted to  fit over  and cover the neck of the bottle, wherein the hollow 
member and the bottle  together give the impression of a human body. 
Appellant argued that certain  limitations in the upper part of the body, 
including the arrangement of the  arms, were not taught by the prior art. 
The court found that matters relating  to ornamentation only which have no 
mechanical function cannot be relied upon  to patentably distinguish the 
claimed invention from the prior art.). But see  Ex parte Hilton, 148 USPQ 
356 (Bd. App. 1965) (Claims were directed to fried  potato chips with a 
specified moisture and fat content, whereas the prior art  was directed to 
french fries having a higher moisture content. While recognizing  that in 
some cases the particular shape of a product is of no patentable 
significance,  the Board held in this case the shape (chips) is important 
because it results  in a product which is distinct from the reference 
product (french fries).). 

(b) Elimination of a step or an element and its function 

OMISSION OF AN ELEMENT AND ITS FUNCTION IS OBVIOUS IF THE FUNCTION OF THE 
ELEMENT  IS NOT DESIRED 

        Ex parte Wu, 10 USPQ 2031 (Bd. Pat. App. & Inter. 1989). (Claims 
at  issue were directed to a method for inhibiting corrosion on metal 
surfaces  using a composition consisting of epoxy resin, petroleum 
sulfonate, and hydrocarbon  diluent. The claims were rejected over a 
primary reference which disclosed  an anticorrosion composition of epoxy 
resin, hydrocarbon diluent, and polybasic  acid salts wherein said salts 
were taught to be beneficial when employed in  a freshwater environment, 
in view of secondary references which clearly suggested  the addition of 
petroleum sulfonate to corrosion inhibiting compositions. The  Board 
affirmed the rejection, holding that it would have been obvious to omit 
the polybasic acid salts of the primary reference where the function 
attributed  to such salt is not desired or required, such as in 
compositions for providing  corrosion resistance in environments which do 
not encounter fresh water.).  See also In re Larson, 340 F.2d 965, 144 
USPQ 347 (CCPA 1965) 

(Omission of additional framework and axle which served to increase the 
cargo  carrying capacity of prior art mobile fluid carrying unit would 
have been obvious  if this feature was not desired.); and In re Kuhle, 526 
F.2d 553, 188 USPQ  7 (CCPA 1975) (deleting a prior art switch member and 
thereby eliminating its  function was an obvious expedient). 

OMISSION OF AN ELEMENT WITH RETENTION OF THE ELEMENT'S FUNCTION IS AN 
INDICIA  OF UNOBVIOUSNESS 

        Note that the omission of an element and retention of its function 
 is an indicia of unobviousness. In re Edge, 359 F.2d 896, 149 USPQ 556 
(CCPA  1966) (Claims at issue were directed to a printed sheet having a 
thin layer  of erasable metal bonded directly to the sheet wherein said 
thin layer obscured  the original print until removal by erasure. The 
prior art disclosed a similar  printed sheet which further comprised an 
intermediate transparent and erasure-proof  protecting layer which 
prevented erasure of the printing when the top layer  was erased. The 
claims were found unobvious over the prior art because the  although the 
transparent layer of the prior art was eliminated, the function  of the 
transparent layer was retained since appellant's metal layer could be 
erased without erasing the printed indicia.). 

(c) Automating a manual activity 

        In re Venner, 262 F.2d 91, 120 USPQ 193, 194 (CCPA 1958) 
(Appellant  argued that claims to a permanent mold casting apparatus for 
molding trunk  pistons were allowable over the prior art because the 
claimed invention combined  "old permanent-mold structures together with a 
timer and solenoid which automatically  actuates the known pressure valve 
system to release the inner core after a  predetermined time has elapsed." 
The court held that broadly providing an automatic  or mechanical means to 
replace a manual activity which accomplished the same  result is not 
sufficient to distinguish over the prior art.). 

(d)   Changes in size, shape, or sequence of adding ingredients 

CHANGES IN SIZE/PROPORTION 

        In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) (Claims 
directed  to a lumber package "of appreciable size and weight requiring 
handling by a  lift truck" where held unpatentable over prior art lumber 
packages which could  be lifted by hand because limitations relating to 
the size of the package were  not sufficient to patentably distinguish 
over the prior art.); In re Rinehart,  531 F.2d 1048, 189 USPQ 143 (CCPA 
1976) ("mere scaling up of a prior art process  capable of being scaled 
up, if such were the case, would not establish patentability  in a claim 
to an old process so scaled." 189 USPQ at 148.). 

        In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 
220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 
(1984),  the Federal Circuit held that, where the only difference between 
the prior  art and the claims was a recitation of relative dimensions of 
the claimed device  and a device having the claimed relative dimensions 
would not perform differently  than the prior art device, the claimed 
device was not patentably distinct from  the prior art device. 

CHANGES IN SHAPE 

  In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that 
 the configuration of the claimed disposable plastic nursing container was 
a  matter of choice which a person of ordinary skill in the art would have 
found  obvious absent persuasive evidence that the particular 
configuration of the  claimed container was significant.). 

CHANGES IN SEQUENCE OF ADDING 
INGREDIENTS 

        Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) (Prior art reference 
disclosing  a process of making a laminated sheet wherein a base sheet is 
first coated  with a metallic film and thereafter impregnated with a 
thermosetting material  was held to render prima facie obvious claims 
directed to a process of making  a laminated sheet by reversing the order 
of the prior art process steps.).  See also In re Burhans, 154 F.2d 690, 
69 USPQ 330 (CCPA 1946) (selection of  any order of performing process 
steps is prima facie obvious in the absence  of new or unexpected 
results); In re Gibson, 5 USPQ 230 (CCPA 1930) (Selection  of any order of 
mixing ingredients is prima 
facie obvious.). 

(e)   Making portable, integral, separable, adjustable, or continuous 
MAKING PORTABLE 

        In re Lindberg, 194 F.2d 732, 93 USPQ 23 (CCPA 1952) (Fact that a 
claimed  device is portable or movable is not sufficient by itself to 
patentably distinguish  over an otherwise old device unless there are new 
or unexpected results.). 
MAKING INTEGRAL 

        In re Larson, 340 F.2d 965, 144 USPQ 347, 349 (CCPA 1965) (A claim 
 to a fluid transporting vehicle was rejected as obvious over a prior art 
reference  which differed from the prior art in claiming a brake drum 
integral with a  clamping means, whereas the brake disc and clamp of the 
prior art comprise  several parts rigidly secured together as a single 
unit. The court affirmed  the rejection holding, among other reasons, 
"that the use of a one piece construction  instead of the structure 
disclosed in [the prior art] would be merely a matter  of obvious 
engineering choice."); but see Schenck v. Nortron Corp., 713 F.2d  782, 
218 USPQ 698 (Fed. Cir. 1983) (Claims were directed to a vibratory testing 
 machine (a hard-bearing wheel balancer) comprising a holding structure, a 
base  structure, and a supporting means which form "a single integral and 
gaplessly  continuous piece." Nortron argued that the invention is just 
making integral  what had been made in four bolted pieces. The court found 
this argument unpersuasive  and held that the claims were patentable 
because the prior art perceived a  need for mechanisms to dampen 
resonance, whereas the inventor eliminated the  need for dampening via the 
one-piece gapless support structure, showing insight  that was contrary to 
the understandings and expectations of the art.). 
MAKING SEPARABLE 

        In re Dulberg, 289 F.2d 522, 129 USPQ 348, 349 (CCPA 1961) (The 
claimed  structure, a lipstick holder with a removable cap, was fully met 
by the prior  art except that in the prior art the cap is "press fitted" 
and therefore not  manually removable. The court held that "if it were 
considered desirable for  any reason to obtain  access to the end of [the 
prior art's] holder to which  the cap is applied, it would be obvious to 
make the cap removable for that  purpose."). 

MAKING ADJUSTABLE 

        In re Stevens, 212 F.2d 197, 101 USPQ 284 (CCPA 1954) (Claims were 
 directed to a handle for a fishing rod wherein the handle has a 
longitudinally  adjustable finger hook, and the hand grip of the handle 
connects with the body  portion by means of a universal joint. The court 
held that adjustability, where  needed, is not a patentable advance, and 
because there was an art-recognized  need for adjustment in a fishing rod, 
the substitution of a universal joint  for the single pivot of the prior 
art would have been obvious.). 

MAKING CONTINUOUS 

        In re Dilnot, 319 F.2d 188, 138 USPQ 248 (CCPA 1963) (Claim 
directed  to a method of producing a cementitious structure wherein a 
stable air foam  is introduced into a slurry of cementitious material 
differed from the prior  art only in requiring the addition of the foam to 
be continuous. The court  held the claimed continuous operation would have 
been obvious in light of the  batch process of the prior art.). 

(f)   Reversal, duplication, or rearrangement of parts 

REVERSAL OF PARTS 

        In re Gazda, 219 F.2d 449, 104 USPQ 400 (CCPA 1955) (Prior art 
disclosed  a clock fixed to the stationary steering wheel column of an 
automobile while  the gear for winding the clock moves with steering 
wheel; mere reversal of  such movement, so the clock moves with wheel, was 
held to be an obvious expedient.). 
DUPLICATION OF PARTS 

        In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960) (Claims at 
issue  were directed to a water-tight masonry structure wherein a water 
seal of flexible  material fills the joints which form between adjacent 
pours of concrete. The  claimed water seal has a "web" which lies 
perpendicular to the workface and  in the joint, and a plurality of "ribs" 
which are parallel to the workface,  forming the following shape . The 
prior art disclosed a flexible water stop  for preventing passage of water 
between masses of concrete in the shape of  a plus sign  (+). Although the 
reference did not disclose a plurality of ribs,  the court held that mere 
duplication of parts has no patentable significance  unless a new and 
unexpected result is produced). 

REARRANGEMENT OF PARTS 

        In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) (Claims to a 
hydraulic  power press which read on the prior art except with regard to 
the position  of the starting switch were held unpatentable because 
shifting the position  of the starting switch would not have modified the 
operation of the device.);  In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 
1975) (the particular placement  of a contact in a conductivity measuring 
device was held to be an obvious matter  of design choice). However, "The 
mere fact that a worker in the art could rearrange  the parts of the 
reference device to meet the terms of the claims on appeal  is not by 
itself sufficient to support a finding of obviousness. The prior  art must 
provide a motivation or reason for the worker in the art, without  the 
benefit of appellant's specification, to make the necessary changes in 
the reference device." Ex parte Chicago Rawhide Manufacturing Co., 223 
USPQ  351, 353 (Bd. Pat. App. & Inter. 1984). 

(g) Purifying an old product 

        Pure materials are novel vis-a-vis less pure or impure materials 
because  there is a difference between pure and impure materials. 
Therefore, the issue  is whether claims to a pure material are unobvious 
over the prior art. In re  Bergstrom, 427 F.2d 1394, 166 USPQ 256 (CCPA 
1970). Purer forms of known products  may be patentable, but the mere 
purity of a product, by itself, does not render  the product unobvious. Ex 
parte Gray, 
10 USPQ2d 1922 (Bd. Pat. App. & Inter. 1989). 

        Factors to be considered in determining whether a purified form of 
 an old product is obvious over the prior art include whether the claimed 
chemical  compound or composition has the same utility as closely related 
materials in  the prior art, and whether the prior art suggests the 
particular form or structure  of the claimed material or suitable methods 
of obtaining that form or structure.  In re Cofer, 354 F.2d 664, 148 USPQ 
268 (CCPA 1966) (Claims to the free-flowing  crystalline form of a 
compound were held unobvious over references disclosing  the viscous 
liquid form of the same compound because the prior art of record  did not 
suggest the claimed compound in crystalline form or how to obtain such 
crystals.). 

        See also Ex parte Stern, 13 USPQ2d 1379 (Bd. Pat. App. & Inter. 
1987) 
(Claims to interleukin 2 (a protein with a molecular weight of over 
12,000)  purified to homogeneity were held unpatentable over references 
which recognized  the desirability of purifying interleukin 2 to 
homogeneity in a view of a reference  which taught a method of purifying 
proteins having molecular weights in excess  of 12,000 to homogeneity 
wherein the prior art method was similar to the method  disclosed by 
appellant for purifying interleukin 2.). 

        Compare Ex parte Gray, 10 USPQ2d 1922 (Bd. Pat. App. & Inter. 
1989) 
(Claims were directed to human nerve growth factor b-NGF free from other 
proteins  of  human origin, and the specification disclosed making the 
claimed factor  through the use of recombinant DNA technology. The claims 
were rejected as  prima facie obvious in view of two references disclosing 
b-NGF isolated from  human placental tissue. The Board applied case law 
pertinent to product-by-process  claims, reasoning that the prior art 
factor appeared to differ from the claimed  factor only in the method of 
obtaining the factor. The Board held that the  burden of persuasion was on 
appellant to show that the claimed product exhibited  unexpected 
properties compared with that of the prior art. The Board further  noted 
that "no objective evidence has been provided establishing that no method 
was known to those skilled in this field whereby the claimed material 
might  have been synthesized." 10 USPQ2d at 1926.).< 


2144.05       Obviousness of Ranges [R-1] 


        >See MPEP # 2131.03 for case law pertaining to rejections based on 
 the anticipation of ranges under 35 U.S.C. 102 and 35 U.S.C. 102/103. 
(a) Overlap of ranges 

        In the case where the claimed ranges "overlap or lie inside ranges 
 disclosed by the prior art" a prima facie case of obviousness exists. In 
re  Wertheim, 541 F.2d 257, 
191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 
(Fed.  Cir. 1990) (The prior art taught carbon monoxide concentrations of 
"about 1-5%"  while the claim was limited to "more than 5%." The court 
held that "about 1-5%"  allowed for concentrations slightly above 5% thus 
the ranges overlapped). Similarly,  a prima facie case of obviousness 
exists where the claimed ranges and prior  art ranges do not overlap but 
are close enough that one skilled in the art  would have expected them to 
have the same properties. Titanium Metals Corporation  of America v. 
Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper 
a rejection  of a claim directed to an alloy of "having 0.8% nickel, 0.3% 
molybdenum, up  to 0.1% iron, balance titanium" as obvious over a 
reference disclosing alloys  of 0.75% nickel, 0.25% molybdenum, balance 
titanium and 0.94% nickel, 0.31%  molybdenum, balance titanium.). 

(b) Optimization of ranges 

OPTIMIZATION WITHIN PRIOR ART 
CONDITIONS OR THROUGH ROUTINE 
EXPERIMENTATION 

        Generally, differences in concentration or temperature will not 
support  the patentability of subject matter encompassed by the prior art 
unless there  is evidence indicating such concentration or temperature is 
critical. "[W]here  the general conditions of a claim are disclosed in the 
prior art, it is not  inventive to discover the optimum or workable ranges 
by routine experimentation."  In re Aller, 220 F.2d 454, 105 USPQ 233, 235 
(CCPA 1955) (Claimed process which  was performed at a temperature between 
40_C and 80_C and an acid concentration  between 25 and 70% was held to be 
prima facie obvious over a reference process  which differed from the 
claims only in that the reference process was performed  at a temperature 
of 100_C and an acid concentration of 10%.). See also In re  Hoeschele, 
406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes 
 which fell within the broad scope of the references were held to be 
unpatentable  thereover because, among other reasons, there was no 
evidence of the criticality  of the claimed ranges of molecular weight or 
molar proportions.). For more  recent cases applying this principle, see 
Merck & Co. Inc. v. Biocraft Laboratories  Inc., 874 F.2d 804, 10 USPQ2d 
1843 (Fed. Cir.), cert. denied, 493 U.S. 975 
(1989), and In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990). 
ONLY RESULT-EFFECTIVE VARIABLES CAN BE OPTIMIZED 

        A particular parameter must first be recognized as a 
result-effective  variable, i.e., a variable which achieves a recognized 
result, before the determination  of the optimum or workable ranges of 
said variable might be characterized as  routine experimentation. In re 
Antonie, 
559 F.2d 618, 195 USPQ 6 (CCPA 1977) (The claimed wastewater treatment 
device  had a tank volume to contractor area of 0.12 gal./sq. ft. The 
prior art did  not recognize that treatment capacity is a function of the 
tank volume to contractor  ratio, and therefore the parameter optimized 
was not recognized in the art  to be a result-effective variable.). See 
also In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA  1980) (prior art 
suggested proportional balancing to achieve desired results  in the 
formation of an alloy). 

(c) Obviousness rebuttable with secondary evidence 

  Applicants can rebut a prima facie case of obviousness based on 
overlapping  ranges by showing unexpected results or the criticality of 
the claimed range.  "The law is replete with cases in which the difference 
between the claimed  invention and the prior art is some range or other 
variable within the claims.  . . . In such a situation, the applicant must 
show that the particular range  is critical, generally by showing that the 
claimed range achieves unexpected  results relative to the prior art 
range." In re Woodruff, 919 F.2d 1575, 16  USPQ2d 1934 (Fed. Cir. 1990). 
See MPEP # 716.02 - # 716.02(g) for a discussion  of criticality and 
unexpected results.< 


2144.06       Art Recognized Equivalence for the Same Purpose [R-1] 

>COMBINING EQUIVALENTS KNOWN FOR THE SAME PURPOSE 

        "It is prima facie obvious to combine two compositions each of 
which  is taught by the prior art to be useful for the same purpose, in 
order to form  a third composition to be used for the very same purpose. . 
. . [T]he idea  of combining them flows logically from their having been 
individually taught  in the prior art." In re Kerkhoven, 
626 F.2d 846, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) (Claims 
to  a process of preparing a spray-dried detergent by mixing together two 
conventional  spray-dried detergents were held to be prima 
facie obvious.). See also In re Crockett, 279 F.2d 274, 
126 USPQ 186 (CCPA 1960) (Claims directed to a method and material for 
treating  cast iron using a mixture comprising calcium carbide and 
magnesium oxide were  held unpatentable over prior art disclosures that 
the aforementioned components  individually promote the formation of a 
nodular structure in cast iron.); and  Exparte Quadranti, 25 USPQ2d 1071 
(Bd. Pat. App. & Inter. 1992) (mixture of two  known herbicides held prima 
facie obvious). But see In re Geiger, 815 F.2d  686, 2 USPQ2d 1276 (Fed. 
Cir. 1987) ("Based upon the prior art and the fact  that each of the three 
components of the composition used in the claimed method  is 
conventionally employed in the art for treating cooling water systems, the 
 board held that it would have been prima facie obvious, within the 
meaning  of 35 U.S.C. 103, to employ these components in combination for 
their known  functions and to optimize the amount of each additive.... 
Appellant argues  ... hindsight reconstruction or at best, ... `obvious to 
try'.... We agree  with appellant."). 

SUBSTITUTING EQUIVALENTS KNOWN FOR THE SAME PURPOSE 

        In order to rely on equivalence as a rationale supporting an 
obviousness  rejection, the equivalency must be recognized in the prior 
art, and cannot  be based on applicant's disclosure or the mere fact that 
the components at  issue are functional or mechanical equivalents. In re 
Ruff, 256 F.2d 590, 118  USPQ 340 (CCPA 1958) (The mere fact that 
components are claimed as members  of a Markush group cannot be relied 
upon to establish the equivalency of these  components. However, an 
applicant's express recognition of an art-recognized  or obvious 
equivalent may be used to refute an argument that such equivalency  does 
not exist.); In re Scott, 323 F.2d 1016, 139 USPQ 297 (CCPA 1963) (Claims 
were drawn to a hollow fiberglass shaft for archery and a process for the 
production  thereof where the shaft differed from the prior art in the use 
of a paper tube  as the core of the shaft as compared with the light wood 
or hardened foamed  resin core of the prior art. The Board found the 
claimed invention would have  been obvious, reasoning that the prior art 
foam core is the functional and  mechanical equivalent of the claimed 
paper core. The court reversed, holding  that components which are 
functionally or mechanically equivalent are not necessarily  obvious in 
view of one another, and in this case, the use of a light wood or 
hardened foam resin core does not fairly suggest the use of a paper 
core.);  Smith v. Hayashi, 209 USPQ 754 (Bd. of Pat. Inter. 1980) (The 
mere fact that  phthalocyanine and selenium function as equivalent 
photoconductors in the claimed  environment was not sufficient to 
establish that one would have been obvious  over the other. However, there 
was evidence that both phthalocyanine and selenium  were known 
photoconductors in the art of electrophotography. "This, in our  view, 
presents strong evidence of obviousness in substituting one for the other 
in an electrophotographic environment as a photoconductor." 209 USPQ at 
759.). 
        An express suggestion to substitute one equivalent component or 
process  for another is not necessary to render such substitution obvious. 
In re Fout,  675 F.2d 297, 213 USPQ 532 (CCPA 1982).< 


2144.07       Art Recognized Suitability for an Intended Purpose [R-1] 

        >"The motivation to combine [prior art references] can arise from 
the  expectation that the prior art elements will perform their expected 
functions  to achieve their expected results when combined for their 
common known purpose."  In re Floyd, Appeal No. 94-1071, slip op. at page 
4 (Fed. Cir. July 20, 1994) 
(unpublished-not citable as precedent). The selection of a known material 
based  on its suitability for its intended use supported a prima facie 
obviousness  determination in Sinclair & Carroll Co., Inc. v. 
Interchemical Corp., 325 U.S.  327, 
65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having 
the  vapor pressure characteristics of butyl carbitol so that the ink 
would not  dry at room temperature but would dry quickly upon heating were 
held invalid  over a reference teaching a printing ink made with a 
different solvent that  was nonvolatile at room temperature but highly 
volatile when heated in view  of an article which taught the desired 
boiling point and vapor pressure characteristics  of a solvent for 
printing inks and a catalog teaching the boiling point and  vapor pressure 
characteristics of butyl carbitol. "Reading a list and selecting  a known 
compound to meet known requirements is no more ingenious than selecting 
the last piece to put in the last opening in a jig-saw puzzle." 65 USPQ at 
 301.). 

        See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) 
(selection  of a known plastic to make a container of a type made of 
plastics prior to  the invention was held to be obvious); Ryco, Inc. v. 
Ag-Bag Corp., 857 F.2d 1418, 8 USPQ2d 1323 (Fed. Cir. 1988) (Claimed 
agricultural bagging  machine, which differed from a prior art machine 
only in that the brake means  were hydraulically operated rather than 
mechanically operated, 
was held to be obvious over the prior art machine in view of references 
which  disclosed hydraulic brakes for performing the same function, albeit 
in a different  environment.).< 


2144.08       Obviousness of Species When Prior Art Teaches Genus [R-1] 

        >The determination of the patentability of claims to a species 
within  a prior art genus is highly fact dependent. Such claims must be 
analyzed on  a case-by-case basis. See, for example, In re Baird, 16 F.2d 
380, 29 USPQ2d  1550 (Fed. Cir. 1994); In re Bell, 991 F.2d 781, 
26 USPQ2d 1529 (Fed. Cir. 1993); In re Jones, 958 F.2d 347, 21 USPQ2d 1941 
(Fed. Cir. 1992); Merck & Co. v. Biocraft Labs., 874 F.2d 804, 10 USPQ2d 
1843 
(Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Susi, 
440 F.2d 442, 169 USPQ 423 (CCPA 1971); In re Lemin, 332 F.2d 839, 141 
USPQ  814 (CCPA 1964); and In re Rosicky, 276 F.2d 656, 125 USPQ 341 (CCPA 
1960). 
        In In re Baird, 16 F.3d 380, 29 USPQ2d 1550 (Fed. Cir. 1994), the 
court  held that a prior art reference which disclosed a generic formula 
encompassing  about 100 million diphenols including the claimed species 
(bisphenol A) was  not sufficient to establish prima facie obviousness of 
the claimed species  within that generic formula because the reference did 
not suggest the selection  of specific variables to formulate bisphenol A. 
The reference specifically  disclosed diphenols that are different from, 
and more complex than, bisphenol  A thus indicating a preference leading 
away from the claimed species. 
        In Merck & Co. v. Biocraft Labs., 874 F.2d 804, 
10 USPQ 1843 (Fed. Cir.), cert. denied, 493 U. S. 975 (1989), the claims 
at  issue were directed to diuretic formulations comprising amiloride 
hydrochloride  and hydrochlorothiazide in a weight ratio of about 1:1 to 
1:10. The prior art  reference teaches that the disclosed 
pyrazinoyl-guanidines (one of which is  amiloride) selectively enhance the 
excretion of sodium ions without causing  an increase in excretion of 
potassium ions, and that when said pyrazinoylguanidines  are 
coadministered with other diuretics known to enhance the limitation of 
potassium ions along with sodium ions (one of which is 
hydrochlorothiazide),  the invention will reduce the excretion of 
potassium ions and overcome this  undesirable property of other diuretic 
agents. The court found the claims obvious  reasoning that the patent 
"instructs the artisan that any of the 1200 disclosed  combinations will 
produce a diuretic formulation with desirable sodium and  potassium 
eliminating properties. That the [prior  art] patent discloses a 
multitude of effective combinations does not render any particular 
formulation  less obvious. This is especially true because the claimed 
composition is used  for the identical purpose taught by the prior art." 
10 USPQ2d at 1846. 
        In In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971), the claims 
were  directed to ultraviolet light stabilized polymers wherein a 
benzylidene malonate  acid diester was present as the stabilizing agent. 
The prior art disclosed  plastic compositions containing ultraviolet light 
absorbers of a generic formula  which overlaps with the claimed 
benzylidene malonate acid diesters. The obviousness  rejection was 
affirmed, the court reasoning that the prior art "disclosure  is huge, but 
it undeniably includes at least some of the compounds recited  in 
appellant's generic claims and it is of a class of chemicals to be used 
for the same purpose as appellant's additives." 
169 USPQ at 425. 

        Compare In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992) 
(Claim was to a substituted ammonium salt of dicamba, specifically the 
2-(2'-amino-ethoxy)ethanol  salt (a primary, linear amine with an ether 
linkage). The primary reference  disclosed dicamba and, among other forms, 
the substituted ammonium salts thereof  such as the diethanolamino salt (a 
secondary amine), the morpholino salt (a  cyclic amine with an ether 
linkage), and the isopropylamino salt (a branched  chain primary amine). 
Although it fell within the genus of the reference, the  claimed salt was 
not specifically recited. Merck was distinguished on the grounds  that 
although the reference and claimed compositions are used for the same 
purpose (herbicides), the reference in this case discloses the 
"potentially  infinite genus of `substituted ammonium salts' of dicamba," 
lists several such  salts but does not recite the claimed salt, and does 
not specifically disclose  a salt sufficiently similar in structure as to 
render the claimed salt prima  facie obvious.).< 


2144.09       Close Structural Similarity Between Chemical Compounds 
(Homologs, Analogues, Isomers) [R-1] 

>REJECTION BASED ON CLOSE STRUCTURAL SIMILARITY IS FOUNDED ON THE 
EXPECTATION  THAT COMPOUNDS SIMILAR IN STRUCTURE WILL HAVE SIMILAR 
PROPERTIES 

        A prima facie case of obviousness may be made when chemical 
compounds  have very close structural similarities and similar utilities. 
"An obviousness  rejection based on similarity in chemical structure and 
function entails the  motivation of one skilled in the art to make a 
claimed compound, in the expectation  that compounds similar in structure 
will have similar properties." In re Payne,  606 F.2d 303, 203 USPQ 245, 
254 (CCPA 1979). See In re Papesch, 315 F.2d 381,  137 USPQ 43 (CCPA 1963) 
(discussed in more detail below) and In re Dillon,  919 F.2d 688, 16 
USPQ2d 1897 (Fed. Cir. 1991) (discussed below and in MPEP  # 2144) for an 
extensive review of the case law pertaining to obviousness based  on close 
structural similarity of chemical compounds. 

HOMOLOGY AND ISOMERISM ARE FACTS WHICH MUST BE CONSIDERED WITH ALL OTHER 
RELEVANT FACTS IN DETERMINING OBVIOUSNESS 

        Compounds which are position isomers (compounds having the same 
radicals  in physically different positions on the same nucleus) or 
homologs (compounds  differing regularly by the successive addition of the 
same chemical group,  e.g., by -CH2- groups) are generally of sufficiently 
close structural similarity  that there is a presumed expectation that 
such compounds possess similar properties.  In re Wilder, 563 F.2d 457, 
195 USPQ 426 (CCPA 1977). See also In re May, 574  F.2d 1082, 
197 USPQ 601 (CCPA 1978) (stereoisomers prima facie obvious). 

        Isomers having the same empirical formula but different structures 
 are not necessarily considered equivalent by chemists skilled in the art 
and  therefore are not necessarily suggestive of each other. Ex parte 
Mowry, 91 USPQ 219 (Bd. App. 1950) (claimed cyclohexylstyrene not prima 
facie obvious  over prior art isohexylstyrene). Similarly, homologs which 
are far removed  from  adjacent homologs may not be expected to have 
similar properties. In  re Mills, 281 F.2d 218, 126 USPQ 513 (CCPA 1960) 
(prior art disclosure of C8  to C12 alkyl sulfates was not sufficient to 
render prima facie obvious claimed  C1 alkyl sulfate). 

        Homology and isomerism involve close structural similarity which 
must  be considered with all other relevant facts in determining the issue 
of obviousness.  In re Mills, 281 F.2d 218, 126 USPQ 513 (CCPA 1960); In 
re Wiechert, 370 F.2d  927, 152 USPQ 247 (CCPA 1967); Homology should not 
be automatically equated  with prima facie obviousness because the claimed 
invention and the prior art  must each be viewed "as a whole." In re 
Langer, 465 F.2d 896, 175 USPQ 169 
(CCPA 1972) (Claims to a polymerization process using a sterically 
hindered  amine were held unobvious over a similar prior art process 
because the prior  art disclosed a large number of unhindered amines and 
only one sterically hindered  amine (which differed from a claimed amine 
by 3 carbon atoms), and therefore  the reference as a whole did not 
apprise the ordinary artisan of the significance  of hindered amines as a 
class.). 

PRESENCE OF A TRUE HOMOLOGOUS ORISOMERIC RELATIONSHIP IS NOT CONTROLLING 
        Prior art structures do not have to be true homologs or isomers to 
 render structurally similar compounds prima facie obvious. In re Payne, 
606  F.2d 303, 203 USPQ 245 (CCPA 1979) (Claimed and prior art compounds 
were both  directed to heterocyclic carbamoyloximino compounds having 
pesticidal activity.  The only structural difference between the claimed 
and prior art compounds  was that the ring structures of the claimed 
compounds had two carbon atoms  between two sulfur atoms whereas the prior 
art ring structures had either one  or three carbon atoms between two 
sulfur atoms. The court held that although  the prior art compounds were 
not true homologs or isomers of the claimed compounds,  the similarity 
between the chemical structures and properties is sufficiently  close that 
one of ordinary skill in the art would have been motivated to make  the 
claimed compounds in searching for new pesticides.). 

        See also In re Merck & Co., Inc., 800 F.2d 1091, 
231 USPQ 375 (Fed. Cir. 1986) (claimed and prior art compounds used in a 
method  of treating depression would have been expected to have similar 
activity because the structural difference  between the compounds involved 
a known bioisosteric replacement) (see MPEP  # 2144.08 for a more detailed 
discussion of the facts in the Merck case); In  re Dillon, 919 F.2d 688, 
16 USPQ2d 1897 (Fed. Cir. 1991) (The tri-orthoester  fuel compositions of 
the prior art and the claimed tetra-orthoester fuel compositions  would 
have been expected to have similar properties based on close structural 
and chemical similarity between the orthoesters and the fact that both the 
 prior art and applicant used the orthoesters as fuel additives) (see MPEP 
#  2144 for a more detailed discussion of the facts in the Dillon case.). 
        Compare In re Grabiak, 769 F.2d 729, 226 USPQ 871 (Fed. Cir. 1985) 
(substitution of a thioester group for an ester group in an herbicidal 
safener  compound was not suggested by the prior art); In re Bell, 991 
F.2d 781, 26 USPQ2d 1529 (Fed. Cir. 1993) (The established relationship 
between a nucleic  acid and the protein it en- codes in the genetic code 
does not render a gene  prima facie obvious over its corresponding protein 
in the same way that closely  related structures in chemistry may create a 
prima facie case because there  are a vast number of nucleotide sequences 
that might encode for a specific  protein as a result of degeneracy in the 
genetic code (i.e., the fact that  most amino acids are specified by more 
than one nucleotide sequence or codon).);  In re Deuel, 94-1202 (Fed. Cir. 
1995) ("A prior art disclosure of the amino  acid sequence of a protein 
does not necessarily render particular DNA molecules  encoding the protein 
obvious because the redundancy of the genetic code permits  one to 
hypothesize an enormous number of DNA sequences coding for the protein." 
The existence of a general method of gene cloning in the prior art is not 
sufficient,  without more, to render obvious a particular cDNA molecule.). 

CLAIMED COMPOUNDS ARE UNOBVIOUS WHERE PRIOR ART DOES NOT TEACH OR SUGGEST 
A  METHOD FOR MAKING THE CLAIMED COMPOUND 

        "[I]f the prior art of record fails to disclose or render obvious 
a  method for making a claimed compound, at the time the invention was 
made, it  may not be legally concluded that the compound itself is in the 
possession  of the public. In this context, we say that the absence of a 
known or obvious  process for making the claimed compounds overcomes a 
presumption that the compounds  are obvious, based on the close 
relationships between their structures and  those of prior art compounds." 
In re Hoeksema, 399 F.2d 269, 158 USPQ 597,  601 (CCPA 1968). See also In 
re Payne, 606 F.2d 303, 203 USPQ 245 (CCPA 1979)  for a general discussion 
of circumstances under which the prior art suggests  methods for making 
novel compounds which are of close structural similarity  to compounds 
known in the prior art. 

PRESUMPTION OF OBVIOUSNESS BASED ON STRUCTURAL SIMILARITY IS OVERCOME 
WHERE  THERE IS NO REASONABLE EXPECTATION OF SIMILAR PROPERTIES 

        The presumption of obviousness based on a reference disclosing 
structurally  similar compounds may be overcome where there is evidence 
showing there is  no reasonable expectation of similar properties in 
structurally similar compounds.  In re May, 574 F.2d 1082, 
197 USPQ 601 (CCPA 1978) (appellant produced sufficient evidence to 
establish  a substantial degree of unpredictability in the pertinent art 
area, and thereby  rebutted the presumption that structurally similar 
compounds have similar properties);  In re Schechter, 205 F.2d 185, 98 
USPQ 144 (CCPA 1953). See also Ex parte Blattner, 2 USPQ2d 2047 (Bd. Pat. 
App. & Inter. 1987) (Claims directed to compounds  containing a 7-membered 
ring were rejected as prima facie obvious over a reference  which taught 
5- and 6-membered ring homologs of the claimed compounds. The  Board 
reversed the rejection because the prior art taught that the compounds 
containing a 5-membered ring possessed the opposite utility of the 
compounds  containing the 6-membered ring, undermining the examiner's 
asserted prima facie  case arising from an expectation of similar results 
in the claimed compounds  which contain a 7-membered ring.). 

IF PRIOR ART COMPOUNDS HAVE NO UTILITY, OR UTILITY ONLY AS INTERMEDIATES, 
CLAIMED  STRUCTURALLY SIMILAR COMPOUNDS MAY NOT BE prima facie OBVIOUS 
OVER THE PRIOR  ART 

        If the prior art does not teach any specific or significant 
utility  for the disclosed compounds, then the prior art is not sufficient 
to render  structurally similar claims prima facie obvious because there 
is no motivation for one of ordinary skill  in the art to make the 
reference compounds, much less any structurally related  compounds. In re 
Stemniski, 444 F.2d 581, 170 USPQ 343 (CCPA 1971). 
        Where structurally similar "prior art compounds `cannot be 
regarded  as useful' for the sole use disclosed [by the reference], . . . 
a person having  ordinary skill in the art would lack the `necessary 
impetus' to make the claimed  compounds." In re Albrecht, 514 F.2d 1389, 
185 USPQ 585, 590 (CCPA 1975) (prior art reference studied the local 
anesthetic  activity of various compounds, and taught that compounds 
structurally similar  to those claimed were irritating to human skin and 
therefore "cannot be regarded  as useful anesthetics." 
185 USPQ at 587.) 

        Similarly, if the prior art merely discloses compounds as 
intermediates  in the production of a final product, one of ordinary skill 
in the art would  not have been motivated to stop the reference synthesis 
and investigate the  intermediate compounds with an expectation of 
arriving at claimed compounds  which have different uses. In re Lalu, 747 
F.2d 703, 223 USPQ 1257 (Fed. Cir.  1984). 

prima facie CASE REBUTTABLE BY EVIDENCE OF SUPERIOR OR UNEXPECTED RESULTS 
        A prima facie case of obviousness based on structural similarity 
is  rebuttable by proof that the claimed compounds possess unexpectedly 
advantageous  or superior properties. In re Papesch, 315 F.2d 381, 137 
USPQ 43 (CCPA 1963) 
(Affidavit evidence which showed that claimed triethylated compounds 
possessed  anti-inflammatory activity whereas prior art trimethylated 
compounds did not  was sufficient to overcome obviousness rejection based 
on the homologous relationship  between the prior art and claimed 
compounds.); In re Wiechert, 370 F.2d 927,  152 USPQ 247 (CCPA 1967) (a 
7-fold improvement of activity over the prior art  held sufficient to 
rebut prima facie obviousness based on close structural  similarity). 

        However, a claimed compound may be obvious because it was 
suggested  by, or structurally similar to, a prior art compound even 
though a particular  benefit of the claimed compound asserted by patentee 
is not expressly disclosed  in the prior art. It is the differences in 
fact in their respective properties  which are determinative of 
nonobviousness. If the prior art compound does in  fact possess a 
particular benefit, even though the benefit  is not recognized  in the 
prior art, applicant's recognition of the benefit is not in itself 
sufficient  to distinguish the claimed compound from the prior art. In re 
Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1991). 

        See MPEP # 716.02 - # 716.02(g) for a discussion of evidence 
alleging  unexpectedly advantageous or superior results.< 


2145    Consideration of Applicant's Rebuttal Arguments [R-2] 


(a)   Argument does not replace evidence where evidence is necessary 
        Attorney argument is not evidence unless it is an admission, in 
which  case, an Examiner may use the admission in making a rejection. See 
MPEP # 2129  and 
# 2144.03 for a discussion of admissions as prior art. 

        The arguments of counsel cannot take the place of evidence in the 
record.  In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). 
See MPEP #  716.01(c) for examples of attorney statements which are not 
evidence and which  must be supported by an appropriate affidavit or 
declaration. 

(b) Arguing additional advantages or latent properties 

prima facie OBVIOUSNESS IS NOT REBUTTED BY MERELY RECOGNIZING ADDITIONAL 
ADVANTAGES  OR LATENT PROPERTIES PRESENT IN THE PRIOR ART 

        Mere recognition of latent properties in the prior art does not 
render  nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 
1019, 201  USPQ 658 (CCPA 1979) (Claims were directed to grooved carbon 
disc brakes wherein  the grooves were provided to vent steam or vapor 
during a braking action. A  prior art reference taught noncarbon disc 
brakes which were grooved for the  purpose of cooling the faces of the 
braking members and eliminating dust. The  court held the prior art 
references when combined would overcome the problems  of dust and 
overheating solved by the prior art and would inherently overcome  the 
steam or vapor cause of the problem relied upon for patentability by 
applicants.  Granting a patent on the discovery of an unknown but inherent 
function (here  venting steam or vapor) "would remove from the public that 
which is in the public domain by virtue of its inclusion  in, or 
obviousness from, the prior art." 201 at 661.); In re Baxter Travenol  Labs., 
952 F.2d 388, 21 USPQ2d 1281 (Fed. Cir. 1991) (Appellant argued that the 
presence  of DEHP as the plasticizer in a blood collection bag 
unexpectedly suppressed  hemolysis and therefore rebutted any prima facie 
showing of obviousness, however  the closest prior art utilizing a DEHP 
plasticized blood collection bag inherently  achieved same result, 
although this fact was unknown in the prior art.). 
        "The fact that appellant has recognized another advantage which 
would  flow naturally from following the suggestion of the prior art 
cannot be the  basis for patentability when the differences would 
otherwise be obvious." Ex  parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & 
Inter. 1985) (The prior art  taught combustion fluid analyzers which used 
labyrinth heaters to maintain  the samples at a uniform temperature. 
Although appellant showed an unexpectedly  shorter response time was 
obtained when a labyrinth heater was employed, the  Board held this 
advantage would flow naturally from following  the suggestion  of the 
prior art.). See also Lantech Inc. v. Kaufman Co. of Ohio Inc., 878  F.2d 
1446, 12 USPQ2d 1076, 1077 (Fed. Cir. 1989), cert. denied, 493 U.S. 1058 
(1990) (unpublished - not citable as precedent) ("The recitation of an 
additional  advantage associated with doing what the prior art suggests 
does not lend patentability  to an otherwise unpatentable invention."). 

        In re Lintner, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) and In re 
Dillon,  16 USPQ2d 1897 (Fed. Cir. 1990) discussed in MPEP # 2144 are also 
pertinent  to this issue. 

        See MPEP # 716.02 - # 716.02(g) for a discussion of declaratory 
evidence  alleging unexpected results. 

(c) Arguing that prior art devices are not physically combinable 

        "The test for obviousness is not whether the features of a 
secondary  reference may be bodily incorporated into the structure of the 
primary reference.  . . . Rather, the test is what the combined teachings 
of those references would  have suggested to those of ordinary skill in 
the art." In re Keller, 642 F.2d  413, 208 USPQ 871, 881 (CCPA 1981). See 
also In re Sneed, 710 F.2d 1544, 218 USPQ 385, 389 (Fed. Cir. 1983) ("it 
is not necessary that the inventions  of the references be physically 
combinable to render obvious the invention  under review."); and In re 
Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973) 
("Combining the teachings of references does not involve an ability to 
combine  their specific structures."). 

        However, the claimed combination cannot change the principle of 
operation  of the primary reference or render the reference inoperable for 
its intended  purpose. See MPEP # 2143.01. 

(d) Arguing against references individually 

        One cannot show nonobviousness by attacking references 
individually  where the rejections are based on combinations of 
references. In re Keller,  642 F.2d 413, 
208 USPQ 871 (CCPA 1981); In re Merck & Co., Inc., 
800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). 

(e) Arguing about the number of references combined 

        Reliance on a large number of references in a rejection does not, 
without  more, weigh against the obviousness of the claimed invention. In 
re Gorman,  933 F.2d 982, 18 USPQ2d 1885 (Fed. Cir. 1991) (Court affirmed 
a rejection of  a detailed claim to a candy sucker shaped like a thumb on 
a stick based on  thirteen prior art references.). 

(f)   Arguing limitations which are not claimed 

        Although the claims are interpreted in light of the specification, 
 limitations from the specification are not read into the claims. In re 
Van  Geuns, 988 F.2d 1181, 
26 USPQ2d 1057 (Fed. Cir. 1993) (Claims to a superconducting magnet which 
generates  a "uniform magnetic field" were not limited to the degree of 
magnetic field  uniformity required for Nuclear Magnetic Resonance (NMR) 
imaging. Although  the specification disclosed that the claimed magnet may 
be used in an NMR apparatus,  the claims were not so limited.); Constant 
v. Advanced Micro-Devices, Inc.,  848 F.2d 1560, 
7 USPQ2d 1057, 1064-1065 (Fed. Cir.), cert. denied, 
488 U.S. 892 (1988) (Various limitations on which appellant relied were 
not  stated in the claims; the specification did not provide evidence 
indicating  these limitations must be read into the claims to give meaning 
to the disputed  terms.); Ex parte McCullough, 7 USPQ2d 1889, 1891 (Bd. 
Pat. App. & Inter. 1987) 
(Claimed electrode was rejected as obvious despite assertions that 
electrode  functions differently than would be expected when used in 
nonaqueous battery since "although the demonstrated results may be germane 
 to the patentability of a battery containing appellant's electrode, they 
are  not germane to the patentability of the invention claimed on 
appeal."). 
        See MPEP # 2111 - # *>2116.01<, for additional case law relevant 
to  claim interpretation. 

(g) Arguing economic infeasibility 

        The fact that a combination would not be made by businessmen for 
economic  reasons does not mean that a person of ordinary skill in the art 
would not  make the combination because of some technological 
incompatibility. In re Farrenkopf,  713 F.2d 714, 219 USPQ 1 (Fed. Cir. 
1983) (Prior art reference taught that  addition of inhibitors to 
radioimmunoassay is the most convenient, but costliest  solution to 
stability problem. The court held that the additional expense associated 
with the addition of inhibitors would not discourage one of ordinary skill 
 in the art from seeking the convenience expected therefrom.). 

(h) Arguing about the age of references 

        "The mere age of the references is not persuasive of the 
unobviousness  of the combination of their teachings, absent evidence 
that, notwithstanding  knowledge of the references, the art tried and 
failed to solve the problem."  In re Wright, 569 F.2d 1124, 193 USPQ 332, 
335 (CCPA 1977) (One hundred year  old patent was properly relied upon in 
a rejection based on a combination of  references.). See also Ex parte 
Meyer, 6 USPQ2d 1966 (Bd. Pat. App. & Inter.  1988) (length of time 
between the issuance of prior art patents relied upon 
(1920 and 1976) was not persuasive of unobviousness). 

(i)   Arguing that prior art is nonanalogous 

        A prior art reference is analogous if the reference is in the 
field  of applicant's endeavor or, if not, the reference is reasonably 
pertinent to  the particular problem with which the inventor was 
concerned. In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443, 1445 (Fed. Cir. 
1992). 

        See MPEP # 2141.01(a) for case law pertaining to analogous art. 
(j)   Arguing improper rationales for combining references 

(1)   Impermissible hindsight 

        Applicants may argue that the examiner's conclusion of obviousness 
 is based on improper hindsight reasoning. However, "[a]ny judgement on 
obviousness  is in a sense necessarily a reconstruction based on hindsight 
reasoning, but  so long as it takes into account only knowledge which was 
within the level  of ordinary skill in the art at the time the claimed 
invention was made and  does not include knowledge gleaned only from 
applicant's disclosure, such a  reconstruction is proper." In re 
McLaughlin 443 F.2d 1392, 170 USPQ 209, 212 
(CCPA 1971). 

(2)   Obvious to try rationale 

        An applicant may argue the examiner is applying an improper 
"obvious  to try" rationale in support of an obviousness rejection. 

        "The admonition that `obvious to try' is not the standard under # 
103  has been directed mainly at two kinds of error. In some cases, what 
would have  been `obvious to try' would have been to vary all parameters 
or try each of  numerous possible choices until one possibly arrived at a 
successful result,  where the prior art gave either no indication of which 
parameters were critical  or no direction as to which of many possible 
choices is likely to be successful.  . . . In others, what was `obvious to 
try' was to explore a new technology  or general approach that seemed to 
be a promising field of experimentation,  where the prior art gave only 
general guidance as to the particular form of  the claimed invention or 
how to achieve it." In re O'Farrell, 853 F.2d 894,  7 USPQ2d 1673, 1681 
(Fed. Cir. 1988) (citations omitted) (The court held the  claimed method 
would have been obvious over the prior art relied upon because  one 
reference contained a detailed enabling methodology, a suggestion to 
modify  the prior art to produce the claimed invention, and evidence 
suggesting the  modification would be successful.). See the cases cited in 
O'Farrell for examples  of decisions where the court discussed an improper 
"obvious to try" approach.  See also In re Eli Lilly & Co., 902 F.2d 943, 
14 USPQ2d 1741 (Fed. Cir. 1990) and In re Ball Corp., 
18 USPQ2d 1491 (Fed. Cir. 1991) (unpublished) for examples of cases where 
appellants  argued that an improper "obvious to try" standard was applied, 
but the court  found that there was proper motivation to modify the 
references. 

(3)   Lack of suggestion to combine references 

        As discussed in MPEP # 2143.01, there must be some suggestion or 
motivation,  either in the references themselves or in the knowledge 
generally available  to one of ordinary skill in the art, to modify or 
combine reference teachings.  The Federal Circuit has produced a number of 
decisions overturning obviousness  rejections due to a lack of suggestion 
in the prior art of the desirability  of combining references, as 
discussed in the aforementioned section. 
(4)   References teach away from the invention or render prior art 
unsatisfactory  for intended purpose 

        In addition to the material below, see MPEP 
# 2141.02 (prior art must be considered in its entirety, including 
disclosures  that teach away from the claims) and MPEP # 2143.01 (proposed 
modification  cannot render the prior art unsatisfactory for its intended 
purpose or change  the principle of operation of a reference). 

THE NATURE OF THE TEACHING IS HIGHLY RELEVANT 

        A prior art reference that "teaches away" from the claimed 
invention  is a significant factor to be considered in determining 
obviousness; however,  "the nature of the teaching is highly relevant and 
must be weighed in substance.  A known or obvious composition does not 
become patentable simply because it  has been described as somewhat 
inferior to some other product for the same  use." In re Gurley, 27 F.3d 
551, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994) (Claims  were directed to an 
epoxy resin based printed circuit material. A prior art  reference 
disclosed a polyester-imide resin based printed circuit material,  and 
taught that although epoxy resin based materials have acceptable stability 
 and some degree of flexibility, they are inferior to polyester-imide 
resin  based materials. The court held the claims would have been obvious 
over the  prior art because the reference taught epoxy resin based 
material was useful  for applicant's purpose, applicant did not 
distinguish the claimed epoxy from  the prior art epoxy, and applicant 
asserted no discovery beyond what was known  to the art.). 

REFERENCES CANNOT BE COMBINED WHERE REFERENCE TEACHES AWAY FROM THEIR 
COMBINATION 
        It is improper to combine references where the references teach 
away  from their combination. In re Grasselli, 713 F.2d 731, 218 USPQ 769, 
779 (Fed.  Cir. 1983) (The claimed catalyst which contained both iron and 
an alkali metal  was not suggested by the combination of a reference which 
taught the interchangeability  of antimony and alkali metal with the same 
beneficial result, combined with  a reference expressly excluding antimony 
from, and adding iron to, a catalyst.). 

PROCEEDING CONTRARY TO ACCEPTED 
WISDOM IS EVIDENCE OF NONOBVIOUSNESS 

        The totality of the prior art must be considered, and proceeding 
contrary  to accepted wisdom in the art is evidence of nonobviousness. In 
re Hedges,  783 F.2d 1038, 228 USPQ 685 (Fed. Cir. 1986) (Applicant's 
claimed process for  sulfonating diphenyl sulfone at a temperature above 
127_C was contrary to accepted  wisdom because the prior art as a whole 
suggested using lower temperatures  for optimum results as evidenced by 
charring, decomposition, or reduced yields  at higher temperatures.) 

        Furthermore, "[k]nown disadvantages in old devices which would 
naturally  discourage search for new inventions may be taken into account 
in determining  obviousness." United States v. Adams, 383 U.S. 39, 148 
USPQ 479, 484 (1966). 

2146    35 U.S.C. 103>(c)<** [R-2] 


35 U.S.C. 103 Conditions of patentability; non-obvious subject matter 
***** 

        >(c)<Subject matter developed by another person, which qualifies 
as  prior art only under subsection (f) or (g) of section 102 of this 
title, shall  not preclude patentability under this section where the 
subject matter and  the claimed invention were, at the time the invention 
was made, owned by the  same person or subject to an obligation of 
assignment to the same person. 
        ** 35 U.S.C. 103>(c)< provides that subject matter developed by 
another  which qualifies as "prior art" only under 35 U.S.C. 102(f) or (g) 
is not to  be considered when determining whether an invention sought to be 
patented is obvious under 35 U.S.C. 103, provided the subject matter and 
the  claimed invention were commonly owned at the time the invention was 
made. 35 U.S.C.>103(c)<** applies only to subject matter which qualifies 
as prior  art under 35 U.S.C. 103; it does not affect subject matter which 
qualifies  as prior art under 35 U.S.C. 102, i.e., anticipatory prior art. 
See MPEP # 706.02(l) regarding Office practice with respect to 
** 35 U.S.C. 103>(c)<. 


2161    Three Separate Requirements for Specification Under 35 U.S.C. 112, 
First Paragraph [R-1] 

>THE SPECIFICATION MUST INCLUDE A WRITTEN DESCRIPTION OF THE INVENTION, 
ENABLEMENT,  AND BEST MODE OF CARRYING OUT THE CLAIMED INVENTION 

        The first paragraph of 35 U.S.C. 112 provides: 

        The specification shall contain a written description of the 
invention,  and of the manner and process of making and using it, in such 
full, clear,  concise, and exact terms as to enable any person skilled in 
the art to which  it 

pertains, or with which it is most nearly connected, to make and use the 
same,  and shall set forth the best mode contemplated by the inventor of 
carrying  out his invention. (emphasis added). 

        This section of the statute requires that the specification 
include  the following: 

        (1)   a written description of the invention; 

        (2)   the manner and process of making and using the invention 
(the  enablement requirement); and 

        (3)   the best mode contemplated by the inventor of carrying out 
his  invention. 

THE THREE REQUIREMENTS ARE SEPARATE AND DISTINCT FROM EACH OTHER 

        The written description requirement is separate and distinct from 
the  enablement requirement. In re Barker, 559 F.2d 588, 194 USPQ 470 
(CCPA 1977),  cert. denied, 434 U.S. 1064 (1978); Vas-Cath, Inc. v. Mahurkar, 
935 F.2d 1555, 19 USPQ2d 1111, 1115 (Fed. Cir. 1991) (While acknowledging 
that  some of its cases concerning the written description requirement and 
the enablement  requirement are confusing, the Federal Circuit reaffirmed 
that under 35 U.S.C.  112, first paragraph, the written description 
requirement is separate and distinct  from the enablement requirement and 
gave an example thereof). An invention  may be described without the 
disclosure being enabling (e.g., a chemical compound  for which there is 
no disclosed or apparent method of making), and a disclosure  could be 
enabling without describing the invention (e.g., a specification 
describing  a method of making and using a paint composition made of 
functionally defined  ingredients within broad ranges would be enabling 
for formulations falling  within the description but would not describe 
any specific formulation). See  In re Armbruster, 512 F.2d 676, 677, 185 
USPQ 152, 153 (CCPA 1975) ("[A] specification  which `describes' does not 
necessarily also `enable' one skilled in the art  to make or use the 
claimed invention."). Best mode is a separate and distinct  requirement 
from the enablement requirement. In re Newton, 414 F.2d 1400, 163  USPQ 34 
(CCPA 1969).< 


2162    Policy Underlying 35 U.S.C. 112, First Paragraph [R-1] 


        >To obtain a valid patent, a patent application must be filed that 
 contains a full and clear disclosure of the invention in the manner 
prescribed  by 35 U.S.C. 112, first paragraph. The requirement for an 
adequate disclosure  ensures that the public receives something in return 
for the exclusionary rights  that are granted to the inventor by a patent. 
The grant of a patent helps to  foster and enhance the development and 
disclosure of new ideas and the advancement  of scientific knowledge. Upon 
the grant of a patent in the U.S., information  contained in the patent 
becomes a part of the information available to the  public for further 
research and development, subject only to the patentee's  right to exclude 
others during the life of the patent. 

        In exchange for the patent rights granted, 35 U.S.C. 112, first 
paragraph  sets forth the minimum requirements for the quality and 
quantity of information  that must be contained in the patent to justify 
the grant. As will be discussed  in more detail below, the patentee must 
disclose in the patent sufficient information  to put the public in 
possession of the invention and to enable those skilled  in the art to 
make and use the invention and must not conceal from the public  the best 
way of practicing the invention that was known to the patentee at  the 
time of filing the patent application. Failure to fully comply with the 
disclosure requirements could result in the denial of a patent, or in a 
holding  of invalidity of an issued patent.< 


2163    The Written Description Requirement [R-1] 


        >The written description requirement has several policy 
objectives.  "[T]he `essential goal' of the description of the invention 
requirement is  to clearly convey the information that an applicant has 
invented the subject  matter which is claimed." In re Barker, 559 F.2d 588, 
592 n.4, 194 USPQ 470, 473 n.4 (CCPA 1977), cert. denied, 434 U.S. 1064 
(1978).  Another objective is to put the public in possession of what the 
applicant  claims as the invention so that the public may ascertain if the 
patent applicant  claims anything that is in common use, or already known. 
Evans v. Eaton, 20  U.S. (7 Wheat.) 356 (1822). 

        An applicant's specification must convey with reasonable clarity 
to  those skilled in the art that, as of the filing date sought, he or she 
was  in possession of the invention, i.e., whatever is now claimed. 
Vas-Cath Inc.  v. Mahurkar, 935 F.2d 1555, 19 USPQ2d 1111, 1117 (Fed. Cir. 
1991). The written  description requirement prevents an applicant from 
claiming subject matter  that was not described in the application as 
filed, and the proscription against  the introduction of new matter in a 
patent application (35 U.S.C. 132 and 251)  serves to prevent an applicant 
from adding to the informational content of  a patent application after it 
is filed.< 


2163.01       Support for the Claimed Subject Matter in Disclosure [R-1] 

        >A written description requirement issue generally involves the 
question  of whether the subject matter of a claim is supported by 
[conforms to] the  disclosure of an application as filed. If the examiner 
concludes that the claimed  subject matter is not supported [described] in 
an application as filed, this  would result in a rejection of the claim on 
the ground of a lack of written  description under 35 U.S.C. 112, first 
paragraph or denial of the benefit of  the filing date of a previously 
filed application. The claim should not be  rejected or objected to on the 
ground of new matter. As framed by the court  in In re Rasmussen, 650 F.2d 
1212, 211 USPQ 323 (CCPA 1981), the concept of  new matter is properly 
employed as a basis for objection to amendments to the  abstract, 
specification or drawings attempting to add new disclosure to that 
originally presented. While the test or analysis of description 
requirement  and new matter issues is the same, the examining procedure 
and statutory basis  for addressing these issues differ. See MPEP # 2163.06.< 


2163.02       Standard for Determining Compliance With the Written 
Description Requirement [R-1] 

        >The courts have described the essential question to be addressed 
in  a description requirement issue in a variety of ways. An objective 
standard  for determining compliance with the written description 
requirement is, "does  the description clearly allow persons of ordinary 
skill in the art to recognize  that he or she invented what is claimed." 
In re Gosteli, 872 F.2d 1008, 1012,  10 USPQ2d 1614, 1618 (Fed. Cir. 
1989). Under Vas-Cath, Inc. v. Mahurkar, 935  F.2d 1555, 19 USPQ2d 1111, 
1117 (Fed. Cir. 1991), to satisfy the written description  requirement, an 
applicant must convey with reasonable clarity to those skilled  in the art 
that, as of the filing date sought, he or she was in possession  of the 
invention, and that the invention, in that context, is whatever is now 
claimed. The test for sufficiency of support in a parent application is 
whether  the disclosure of the application relied upon "reasonably conveys 
to the artisan  that the inventor had possession at that time of the later 
claimed subject  matter." Ralston Purina Co. v. Far-Mar-Co., Inc., 772 
F.2d 1570, 1575, 227  USPQ 177, 179 (Fed. Cir. 1985) (quoting In re 
Kaslow, 707 F.2d 1366, 1375,  217 USPQ 1089, 1096 (Fed. Cir. 1983)). 

        Whenever the issue arises, the fundamental factual inquiry is 
whether  a claim defines an invention that is clearly conveyed to those 
skilled in the  art at the time the application was filed. The subject 
matter of the claim  need not be described literally (i.e., using the same 
terms or in haec verba)  in order for the disclosure to satisfy the 
description requirement. If a claim  is amended to include subject matter, 
limitations, or terminology not present  in the application as filed, 
involving a departure from, addition to, or deletion  from the disclosure 
of the application as filed, the examiner should conclude  that the 
claimed subject matter is not described in that application. This 
conclusion will result in the rejection of the claims affected under 35 
U.S.C.112,  first paragraph - description requirement, or denial of the 
benefit of the filing date of a  previously filed application, as appropriate. 
< 


2163.03       Typical Circumstances Where Adequate Written Description 
Issue Arises [R-1] 

        >A description requirement issue can arise in a number of 
different  circumstances where it must be determined whether the subject 
matter of a new  or amended claim is supported in an application as filed. 
The following circumstances  are typical: 

(a)   Amendment affecting a claim 

        An amendment to the claims or the addition of a new claim must be 
supported  by the description of the invention in the application as 
filed. In re Wright,  866 F.2d 422, 9 USPQ2d 1649 (Fed. Cir. 1989). 
Original claims constitute their  own description. In re Koller, 613 F.2d 
819, 204 USPQ 702 (CCPA 1980). An amendment  to the specification (e.g., a 
change in the definition of a term used both  in the specification and 
claim) may indirectly affect a claim even though no  actual amendment is 
made to the claim. 

(b)   Reliance on filing date of parent application under 35 U.S.C. 120 
        Under 35 U.S.C. 120, the claims in a U.S. application are entitled 
 to the benefit of the filing date of an earlier filed U.S. application if 
the  subject matter of the claim is disclosed in the manner provided by 35 
U.S.C.  112, first paragraph in the earlier filed application. In re 
Scheiber, 587  F.2d 59, 199 USPQ 782 (CCPA 1978). 

(c)   Reliance on priority under 35 U.S.C. 119 

        Under 35 U.S.C. 119 (a) or (e), the claims in a U.S. application 
are  entitled to the benefit of a foreign priority date or the filing date 
of a  provisional application if the corresponding foreign application or 
provisional  application supports the claims in the manner required by 35 
U.S.C. 112, first  paragraph. In re Ziegler, 992 F.2d 1197, 1200, 26 
USPQ2d 1600, 1603 (Fed. Cir.  1993); Kawai v. Metlesics, 480 F.2d 880, 178 
USPQ 158 (CCPA 1973); In re Gosteli,  872 F.2d 1008, 10 USPQ2d 1614 (Fed. 
Cir. 1989). 

(d)   Support for a claim corresponding to a count in an interference 
        A broad generic disclosure to a class of compounds was not a 
sufficient  written description of a specific compound within the class. 
Fields v. Conover,  443 F.2d 1386, 170 USPQ 276 (CCPA 1970).< 


2163.04       Burden on the Examiner With Regard to the Written 
Description Requirement [R-1] 

        >The inquiry into whether the description requirement is met must 
be  determined on a case-by-case basis and is a question of fact. In re 
Wertheim,  541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976). The examiner 
has the initial  burden of presenting evidence or reasons why persons 
skilled in the art would  not recognize in an applicant's disclosure a 
description of the invention defined  by the claims. In re Wertheim, 541 
F.2d 257, 265, 191 USPQ 90, 98 (CCPA 1976);  Ex parte Sorenson, 3 USPQ2d 
1462, 1463 (Bd. Pat. App. & Inter. 1987). 
(a)   Statement of rejection requirements 

        Any time an examiner bases a rejection of a claim or the denial of 
 the effect of a filing date of a previously filed application on the lack 
of  a written description, the examiner should: 

        (1)   identify the claim limitation not described; and 

        (2)   provide reasons why persons skilled in the art at the time 
the  application was filed would not have recognized the description of 
this limitation  in the disclosure of the application as filed. A typical 
reason points out  the differences between what is disclosed and what is 
claimed. A simple statement  that "There does not appear to be a written 
description of the claim limitation  `______' in the application as 
filed." may be sufficient where the support  is not apparent and the 
applicant has not pointed out where the limitation  is supported. 

(b)   Response to amendments 

        If applicant amends the claims and points out where and/or how the 
 originally filed disclosure supports the amendment(s), and the examiner 
finds  that the disclosure does not reasonably convey that the inventor 
had possession  of the subject matter of the amendment at the time of the 
filing of the application, the examiner has the initial burden  of 
presenting evidence or reasoning to explain why persons skilled in the art 
 would not recognize in the disclosure a description of the invention 
defined  by the claims. Accordingly, the examiner should identify what 
portion(s) of  the amendment lack support in the originally filed 
disclosure, and should fully  explain the basis for the examiner's 
finding. The examiner also should comment  on the substance of applicant's 
remarks. Any affidavits attesting to what one  of ordinary skill in the 
art would consider disclosed by the application as  originally filed must 
be thoroughly analyzed and discussed in the Office action.< 

2163.05       Changes to the Scope of Claims [R-1] 


        >The failure to meet the written description requirement of 35 
U.S.C.  112, first paragraph, commonly arises when the claims are changed 
after filing  to either broaden or narrow the breadth of the claim 
limitations, or to alter  a numerical range limitation or to use claim 
language which is not synonymous  with the terminology used in the 
original disclosure. 

(a)   Broadening claim 

        In a reissue application, a claim to a display device was 
broadened  by removing the limitations directed to the specific tapered 
shape of the tips  without violating the written description requirement. 
The shape limitation  was considered to be unnecessary since the 
specification, as filed, did not  describe the tapered shape as essential 
or critical to the operation or patentability  of the claim. In re Peters, 
723 F.2d 891, 221 USPQ 952 (Fed. Cir. 1983). 
        However, in In re Wilder, 736 F.2d 1516, 222 USPQ 369 (Fed. Cir. 
1984),  the Federal Circuit affirmed that part of a Board of Appeals 
decision rejecting  reissue claims for a recording apparatus which omitted 
a limitation that required  indexing means to scan an array of light 
emitting diodes "in synchronism" with  the scanning of the record medium 
by scanning means. The court held that the  generic invention represented 
by the reissue claims (i.e., covering scanning  means and indexing means 
not in synchronism) was not supported by the original  patent's disclosure 
in such a way as to indicate possession, as of the original  filing date, 
of that generic invention. 

        The benefit of foreign priority was denied in In re Gosteli, 872 
F.2d  1008, 10 USPQ2d 1614 (Fed. Cir. 1989), because claims in the U.S. 
application  were not supported in the foreign priority application. In 
the claims of the  U.S. application, chemical compounds representing 
antibiotics were generically  claimed via reference to a structure with 
varying moieties and were also claimed  subgenerically in a Markush 
format. The foreign application disclosed only  2 of the species presented 
in the broad generic claim and in the 21 compounds  listed in the Markush 
claims. The court concluded that the additional subject  matter in the 
U.S. application was not adequately described in the foreign  document. 

(b)   Narrowing or subgeneric claim 

        The introduction of claim changes which involve narrowing the 
claims  by introducing elements or limitations which are not supported by 
the as-filed  disclosure is a violation of the written description 
requirement of 35 U.S.C. 112, first paragraph. In Ex parte Ohshiro, 
14 USPQ2d 1750 (Bd. Pat. App. & Inter. 1989), the Board affirmed the 
rejection  under 35 U.S.C. 112, first paragraph, of claims to an internal 
combustion engine  which recited "at least one of said piston and said 
cylinder (head) having  a recessed channel." The Board held that the 
application which disclosed a  cylinder head with a recessed channel and a 
piston without a recessed channel  did not specifically disclose the 
"species" of a channeled piston. 
        While this and other cases find that recitation of an undisclosed 
species  may violate the description requirement, a change involving 
subgeneric terminology  may or may not be acceptable. Applicant was not 
entitled to the benefit of  a parent filing date when the claim was 
directed to a subgenus (a specified  range of molecular weight ratios) 
where the parent application contained a  generic disclosure and a 
specific example that fell within the recited range  because the court 
held that subgenus range was not described in the parent  application. In 
re Lukach, 442 F.2d 967, 169 USPQ 795 (CCPA 1971). On the other  hand, in 
Ex parte Sorenson, 3 USPQ2d 1462 (Bd. Pat. App. & Inter. 1987), the 
subgeneric language of "aliphatic carboxylic acid" and "aryl carboxylic 
acid"  did not violate the written description requirement because species 
falling  within each subgenus were disclosed as well as the generic 
carboxylic acid.  See also In re Smith, 458 F.2d 1389, 1395, 173 USPQ 679, 
683 (CCPA 1972) ("Whatever may be the viability  of an inductive-deductive 
approach to arriving at a claimed subgenus, it cannot  be said that such a 
subgenus is necessarily described by a genus encompassing  it and a 
species upon which it reads." (emphasis added)). Each case must be 
decided on its own facts in terms of what is reasonably communicated to 
those  skilled in the art. In re Wilder, 736 F.2d 1516, 1520, 222 USPQ 
369, 372 (Fed.  Cir. 1984). 

(c)   Range limitations 

        With respect to changing numerical range limitations, the analysis 
 must take into account which ranges one skilled in the art would consider 
inherently  supported by the discussion in the original disclosure. In the 
decision in  In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976), the 
ranges described  in the original specification included a range of "25%- 
60%" and specific examples  of "36%" and "50%." A corresponding new claim 
limitation to "at least 35%"  did not meet the description requirement 
because the phrase "at least" had  no upper limit and caused the claim to 
read literally on embodiments outside  the "25% to 60%" range, however a 
limitation to "between 35% and 60%" did meet  the description requirement.< 


2163.06       Relationship of Written  Description Requirement to New 
Matter [R-1] 

        >Lack of written description is an issue that generally arises 
with  respect to the subject matter of a claim. If an applicant amends or 
attempts  to amend the abstract, specification or drawings of an 
application, an issue  of new matter will arise if the content of the 
amendment is not described in  the application as filed. Stated another 
way, information contained in any  one of the specification, claims or 
drawings of the application as filed may  be added to any other part of 
the application without introducing new matter. 
        There are two statutory provisions that prohibit the introduction 
of  new matter: 35 U.S.C. 132 - No amendment shall introduce new matter 
into the  disclosure of the invention; and, similarly providing for a 
reissue application,  35 U.S.C. 251 - No new matter shall be introduced 
into the application for  reissue. 

(a)   Treatment of new matter 

        The regulations provide for the treatment of new matter as 
follows: 

37 CFR 1.118 Amendment of disclosure. 

        (a) No amendment shall introduce new matter into the disclosure of 
 an application after the filing date of the application, see 37 CFR 
1.53(b).  All amendments to the specification, including the claims and 
the drawings  filed after the filing date of the application must conform 
to at least one  of them as it was at the time of the filing of the 
application. Matter not  found in either, involving a departure from or an 
addition to the original  disclosure, cannot be added to the application 
after its filing date even though  supported by an oath or declaration in 
accordance with 37 CFR 1.63 or 37 CFR  1.67 filed after the filing date of 
the application. 

        (b) If it is determined that an amendment filed after the filing 
date  of the application introduces new matter, claims containing new 
matter will  be rejected and deletion of the new matter in the 
specification and drawings  will be required even if the amendment is 
accompanied by an oath or declaration  in accordance with 37 CFR 1.63 or 
37 CFR 1.67. 

        If new subject matter is added to the disclosure, whether it be in 
 the abstract, the specification, the drawings, or the claims, the 
examiner  should object to the introduction of new matter under 35 U.S.C. 
132 or 251  as appropriate, and require applicant to cancel the new 
matter. If new matter  is added to the claims, the examiner should reject 
the claims under 35 U.S.C.  112, first paragraph - written description 
requirement. In re Rasmussen, 650  F.2d 1212, 211 USPQ 323 (CCPA 1981). 
The examiner should still consider the  subject matter added to the claim 
in making rejections based on prior art since  the new matter rejection 
may be overcome by applicant. 

        In an instance in which the claims have not been amended, per se, 
but  the specification has been amended to add new matter, a rejection of 
the claims  under 35 U.S.C. 112, first paragraph should be made whenever 
any of the claim  limitations are affected by the added material. 

        Whenever an objection or rejection is made based on 35 U.S.C. 112, 
 first paragraph, the examiner should in the interest of expeditious 
prosecution  call attention to 37 CFR 1.118. 

        When an amendment is filed in response to an objection or 
rejection  based on 35 U.S.C. 112, first paragraph, a study of the entire 
application  is often necessary to determine whether or not "new matter" 
is involved. Applicant  should therefore specifically point out the 
support for any amendments made  to the disclosure. 

(b)   Review of new matter objections and/or rejections 

        A rejection of claims is reviewable by the Board of Patent Appeals 
 and Interferences, whereas an objection and requirement to delete new 
matter  is subject to supervisory review by petition under 37 CFR 1.181. 
If both the  claims and specification contain new matter either directly 
or indirectly,  and there has been both a rejection and objection by the 
examiner, the issue  becomes appealable and should not be decided by petition. 

(c)   Claimed subject matter not disclosed in remainder of specification 
        The claims as filed in the original specification are part of the 
disclosure  and therefore, if an application as originally filed contains 
a claim disclosing  material not disclosed in the remainder of the 
specification, the applicant  may amend the specification to include the 
claimed subject matter. In re Benno,  768 F.2d 1340, 226 USPQ 683 (Fed. 
Cir. 1985). Form paragraph 7.44 may be used  where originally claimed 
subject matter lacks proper antecedent basis in the  specification.< 


2163.07       Amendments to Application Which Are Supported in the 
Original Description [R-1] 

        >Amendments to an application which are supported in the original 
description  are NOT new matter. 

(a)   Rephrasing 

        Mere rephrasing of a passage does not constitute new matter. 
Accordingly,  a rewording of a passage where the same meaning remains 
intact is permissible.  In re Anderson, 471 F.2d 1237, 176 USPQ 331 (CCPA 
1973). The mere inclusion  of dictionary or art recognized definitions 
known at the time of filing an  application would not be considered new 
matter. If there are multiple definitions  for a term and a definition is 
added to the application, it must be clear from  the application as filed 
that applicant intended a particular definition, in  order to avoid an 
issue of new matter and/or lack of written description. 
(b)   Obvious errors 

        An amendment to correct an obvious error does not constitute new 
matter  where one skilled in the art would not only recognize the 
existence of error  in the specification, but also the appropriate 
correction. In re Oda, 443 F.2d 1200, 170 USPQ 260 (CCPA 1971). 

        Where a non-English foreign priority document under 35 U.S.C. 119 
is  of record in the application file, applicant may not rely on the 
disclosure  of that document to support correction of an error in the 
pending application.  Ex parte Bondiou, 132 USPQ 356 (Bd. App. 1961). This 
prohibition would apply  regardless of the language of the foreign 
priority documents because a claim  for priority is simply a claim for the 
benefit of an earlier filing date for  subject matter that is common to 
two or more applications, and does not serve  to incorporate the content 
of the priority document in the application in which  the claim for 
priority is made. This prohibition does not apply in a situation  where 
the original application is in a non-English language (37 CFR 1.52(d)), 
or where the original application explicitly incorporates a non-English 
language  document by reference.< 


2163.07(a)  Inherent Function, Theory, or Advantage [R-1] 


        >By disclosing in a patent application a device that inherently 
performs  a function or has a property, operates according to a theory or 
has an advantage,  a patent application necessarily discloses that 
function, theory or advantage,  even though it says nothing explicit 
concerning it. The application may later  be amended to recite the 
function, theory or advantage without introducing  prohibited new matter. 
In re Reynolds, 443 F.2d 384, 
170 USPQ 94 (CCPA 1971), In re Smythe, 480 F. 2d 1376, 178 USPQ 279 (CCPA 
1973).< 

2163.07(b)  Incorporation by Reference [R-1] 


        >Instead of repeating some information contained in another 
document,  an application may attempt to incorporate the content of 
another document or  part thereof by reference to the document in the text 
of the specification.  The information incorporated is as much a part of 
the application as filed  as if the text was repeated in the application, 
and should be treated as part  of the text of the application as filed. 
Replacing the identified material  incorporated by reference with the 
actual text is not new matter. See MPEP  # 608.01(p) for Office policy 
regarding incorporation by reference.< 

2164    The Enablement Requirement [R-1] 


        >The enablement requirement refers to the requirement of 35 U.S.C. 
 112, first paragraph that the specification describe how to make and how 
to  use the invention. The invention that one skilled in the art must be 
enabled  to make and use is that defined by the claim(s) of the particular 
application  or patent. 

        The purpose of the requirement that the specification describe the 
 invention in such terms that one skilled in the art can make and use the 
claimed  invention is to ensure that the invention is communicated to the 
interested  public in a meaningful way. The information contained in the 
disclosure of  an application must be sufficient to inform those skilled 
in the relevant art  how to both make and use the claimed invention. 
Detailed procedures for making  and using the invention may not be 
necessary if the description of the invention  itself is sufficient to 
permit those skilled in the art to make and use the  invention. A patent 
claim is invalid if it is not supported by an enabling  disclosure.< 


2164.01       Test of Enablement [R-1] 


        >Any analysis of whether a particular claim is supported by the 
disclosure  in an application requires a determination of whether that 
disclosure, when  filed, contained sufficient information regarding the 
subject matter of the  claims as to enable one skilled in the pertinent 
art to make and use the claimed  invention. The test of enablement is 
whether one skilled in the art could make  or use the claimed invention 
from the disclosures in the patent coupled with  information known in the 
art without undue experimentation. United States v.  Telectronics, Inc., 
857 F.2d 778, 8 USPQ2d 1217 (Fed. Cir. 1988); In re Stephens,  529 F.2d 
1343, 188 USPQ 659 (CCPA 1976). A patent need not teach, and preferably 
omits, what is well known in the art. Spectra-Physics, Inc. v. Coherent, 
Inc.,  827 F.2d 1524, 3 USPQ2d 1737 (Fed. Cir. 1987). Determining 
enablement is a  question of law based on underlying factual findings. In 
re Vaeck, 947 F.2d  488, 495, 
20 USPQ2d 1438, 1444 (Fed. Cir. 1991); Atlas Powder Co. v. E.I. duPont de 
Nemours  & Co., 750 F.2d 1569, 
224 USPQ 409 (Fed. Cir. 1984). 

UNDUE EXPERIMENTATION 

        The fact that experimentation may be complex does not necessarily 
make  it undue, if the art typically engages in such experimentation. 
M.I.T. v. A.B.  Fortia, 774 F.2d 1104, 227 USPQ 428 (Fed. Cir. 1985). The 
test of enablement  is not whether any experimentation is necessary, but 
whether, if experimentation  is necessary, it is undue. In re Angstadt, 
537 F.2d 498, 190 USPQ 214 (CCPA  1976). 

FACTORS TO CONSIDER IN DETERMINING WHETHER UNDUE EXPERIMENTATION IS REQUIRED 

        Whether undue experimentation is needed is not based upon a single 
 factor, but rather a conclusion reached by weighing many factors. Many of 
these  factors have been summarized in In re Wands, 858 F.2d 731, 
8 USPQ2d 1400 (Fed. Cir. 1988) as follows: 

(1)   The quantity of experimentation necessary (time and expense); 
(2)   The amount of direction or guidance presented; 

(3)   The presence or absence of working examples of the invention; 
(4)   The nature of the invention; 

(5)   The state of the prior art; 

(6)   The relative skill of those in the art; 

(7)   The predictability or unpredictability of the art; and 

(8)   The breadth of the claims. 

It is not necessary that every enablement analysis consider all of the 
factors.< 


2164.02       Working Example [R-1] 


        >Compliance with the enablement requirement of 
35 U.S.C. 112, first paragraph does not turn on whether an example is 
disclosed.  An example may be "working" or "prophetic." A working example 
is based on work  actually performed. A prophetic example describes an 
embodiment of the invention  based on predicted results rather than work 
actually conducted or results actually  achieved. 

        An applicant need not have actually reduced the invention to 
practice  prior to filing. In Gould v. Quigg, 
822 F.2d 1074, 1078, 3 USPQ 2d 1302, 1304 (Fed. Cir. 1987), as of Gould's 
filing  date, no person had built a light amplifier or measured a 
population inversion  in a gas discharge. The Court held that "The mere 
fact that something has not  previously been done clearly is not, in 
itself, a sufficient basis for rejecting all applications purporting to 
disclose  how to do it." 

        The specification need not contain an example if the invention is 
otherwise  disclosed in such manner that one skilled in the art will be 
able to practice  it without an undue amount of experimentation. In re 
Borkowski, 
422 F.2d 904, 164 USPQ 642 (CCPA 1970). 

        Lack of a working example, however, is a factor to be considered, 
especially  in a case involving an unpredictable and undeveloped art. But 
because only  an enabling disclosure is required, applicant need not 
describe all actual  embodiments.< 


2164.03       Relationship of Predictability of the Art and the Enablement 
Requirement [R-1] 

        >The scope of the required enablement varies inversely with the 
degree  of predictability involved, but even in unpredictable arts, a 
disclosure of  every operable species is not required. A single embodiment 
may provide broad  enablement in cases involving predictable factors, such 
as mechanical or electrical  elements. In re Vickers, 141 F.2d 522, 61 
USPQ 122 (CCPA 1944); In re Cook,  439 F.2d 730, 169 USPQ 298 (CCPA 1971). 
However, in applications directed to  inventions in arts where the results 
are unpredictable, the disclosure of a  single species usually does not 
provide an adequate basis to support generic  claims. In re Soll, 97 F.2d 
623, 38 USPQ 189 (CCPA 1938). In cases involving  unpredictable factors, 
such as most chemical reactions and physiological activity,  more may be 
required. In re Fisher, 427 F.2d 833, 


166 USPQ 18 (CCPA 1970) (contrasting mechanical and electrical elements 
with  chemical reactions and physiological activity). See also In re 
Wright, 999  F.2d 1557, 
27 USPQ2d 1510 (Fed. Cir. 1993); In re Vaeck, 947 F.2d 488, 20 USPQ2d 1438 
(Fed. Cir. 1991). This is because it is not obvious from the disclosure of 
 one species, what other species will work. In re Dreshfield, 110 F.2d 
235, 45 USPQ 36 (CCPA 1940), gives this general rule: "It is well settled 
that in  cases involving chemicals and chemical compounds, which differ 
radically in  their properties it must appear in an applicant's 
specification either by the  enumeration of a sufficient number of the 
members of a group or by other appropriate  language, that the chemicals 
or chemical combinations included in the claims  are capable of 
accomplishing the desired result." The article "Broader than  the 
Disclosure in Chemical Cases," 31 J.P.O.S. 5, by Samuel S. Levin covers 
this subject in detail.< 


2164.04       Burden on the Examiner Under the Enablement Requirement 
[R-1] 

        >In order to make a rejection, the examiner has the initial burden 
 to establish a reasonable basis to question the enablement provided for 
the  claimed invention. In re Wright, 999 F.2d 1557, 27 USPQ2d 1510 (Fed. 
Cir. 1993) 
(examiner must provide a reasonable explanation as to why the scope of 
protection  provided by a claim is not adequately enabled by the 
disclosure). A specification  disclosure which contains a teaching of the 
manner and process of making and  using an invention in terms which 
correspond in scope to those used in describing  and defining the subject 
matter sought to be patented must be taken as being  in compliance with 
the enablement requirement  of 35 U.S.C. 112, first paragraph,  unless 
there is a reason to doubt the objective truth of the statements contained 
 therein which must be relied on for enabling support. Assuming that 
sufficient  reason for such doubt exists, a rejection for failure to teach 
how to make  and/or use will be proper on that basis. In re Marzocchi, 439 
F.2d 220, 169 USPQ 367 (CCPA 1971). As stated by the court, "it is 
incumbent upon the  Patent Office, whenever a rejection on this basis is 
made, to explain why it  doubts the truth or accuracy of any statement in 
a supporting disclosure and  to back up assertions of its own with 
acceptable evidence or reasoning which  is inconsistent with the contested 
statement. Otherwise, there would be no  need for the applicant to go to 
the trouble and expense of supporting his presumptively  accurate 
disclosure." 169 USPQ at 370. 

        According to In re Bowen, 492 F.2d 859, 181 USPQ 48 (CCPA 1974) 
the  minimal requirement is for the examiner to give reasons for the 
uncertainty  of the enablement. This standard is applicable even when 
there is no evidence  in the record of operability without undue 
experimentation beyond the disclosed  embodiments. See also In re Brana et 
al., 51 F.3d 1560, 34 USPQ2d 1436 (Fed.  Cir. 1995) (citing In re Bundy, 
642 F.2d 430, 433, 209 USPQ 48, 51 (CCPA 1981)) 
(Discussed in MPEP 
# 2164.07,(a) (2), regarding the relationship of the enablement 
requirement  to the utility requirement of 
35 U.S.C. 101).< 


2164.05       Determination of Enablement Based on Evidence as a Whole 
[R-1] 

        >Once the examiner has established a reasonable basis to question 
the  enablement provided for the claimed invention, the burden falls on 
applicant  to present persuasive arguments, supported by suitable proofs 
where necessary,  that one skilled in the art would be able to make and 
use the claimed invention  using the disclosure as a guide. In re 
Brandstadter, 484 F.2d 1395, 179 USPQ  286 (CCPA 1973). In making the 
determination of enablement, the examiner shall  consider the original 
disclosure and all evidence in the record, weighing evidence  that 
supports enablement against evidence that the specification is not 
enabling. 
        Applicant may attempt to overcome the examiner's doubt about 
enablement  by pointing to details in the disclosure but may not add new 
matter. Applicant  may also submit factual affidavits under 37 CFR 1.132 
or cite references to  show what one skilled in the art knew at the time 
of filing the application.< 

2164.05(a)  Specification Must Be Enabling as of the Filing Date [R-1] 

        >The state of the art existing at the filing date of the 
application  is used to determine whether a particular disclosure is 
enabling as of the  filing date. Publications dated after the filing date 
providing information  publicly first disclosed after the filing date 
generally cannot be used to  show what was known at the time of filing. In 
re Gunn, 537 F.2d 1123, 190 USPQ  402 (CCPA 1976). While a later dated 
publication cannot supplement an insufficient  disclosure in a prior dated 
application to make it enabling, applicant can  offer the testimony of an 
expert based on the publication as evidence of the  level of skill in the 
art at the time the application was filed. Gould v. Quigg,  822 F.2d 1074, 
3 USPQ2d 1302 (Fed. Cir. 1987). 

        Likewise, the examiner can use later appearing art as evidence of 
the  state of the art existing on the filing date of the application. In 
re Hogan,  559 F.2d 595, 
194 USPQ 527 (CCPA 1977). In In re Wright, 27 USPQ2d 1510 (Fed. Cir. 1993) 
 an article published 5 years after the filing date of the application 
adequately  supported the examiner's position that the physiological 
activity of certain  viruses was sufficiently unpredictable so that a 
person skilled in the art  would not have believed that the success with 
one virus and one animal could  be extrapolated successfully to all 
viruses with all living organisms. Claims  not directed to the specific 
virus and the specific animal were held nonenabled.< 

2164.05(b)  Specification Must Be Enabling to Persons Skilled in the Art 
[R-1] 

        >Where different arts are involved in the invention, the 
specification  is enabling if it enables persons skilled in each art to 
carry out the aspect  of the invention applicable to their specialty. In 
re Naquin, 398 F.2d 863, 158 USPQ 317 (CCPA 1968). 

        When an invention, in its different aspects, involves distinct 
arts,  the specification is enabling if it enables those skilled in each 
art, to carry  out the aspect proper to their specialty. "If two distinct 
technologies are  relevant to an invention, then the disclosure will be 
adequate if a person  of ordinary skill in each of the two technologies 
could practice the invention  from the disclosures." 
Technicion Instruments Corp. v. Alpkem Corp., 2 USPQ 2d 1729, 1742 (D. 
Ore.  1986), aff'd in part, vacated in part, rev'd in part, 837 F. 2d 1097 
(Fed.  Cir. 1987) (unpublished opinion), appeal after remand, 866 F. 2d 
417, 9 USPQ 2d 1540 (Fed. Cir. 1989). In Ex parte Zechnall, 194 USPQ 461 
(Bd. App.  1973), the Board stated "appellants' disclosure must be held 
sufficient if  it would enable a person skilled in the electronic computer 
art, in cooperation  with a person skilled in the fuel injection art, to 
make and use appellants'  invention." < 


2164.06       Examples of Enablement Issues [R-1] 


        >It is common that the doubt arises about enablement because 
information  is missing about one or more essential parts or relationships 
between parts  which one skilled in the art could not develop without 
undue experimentation.  In such a case, the examiner should specifically 
identify what information  is missing and why the missing information is 
needed to provide enablement. 
(a)   Electrical and mechanical devices or processes 

        For example, a disclosure of an electrical circuit apparatus, 
depicted  in the drawings by block diagrams with functional labels, was 
held to be nonenabling  in In re Gunn, 537 F.2d 1123, 190 USPQ 402 (CCPA 
1976). 

There was no indication in the specification as to whether the parts 
represented  by boxes were "off the shelf" or must be specifically 
constructed or modified  for applicant's system. Also there were no 
details in the specification of  how the parts should be interconnected, 
timed and controlled so as to obtain  the specific operations desired by 
the applicant. In In re Donohue, 550 F.2d  1269, 193 USPQ 136 (CCPA 1977), 
the lack of enablement was caused by lack of  information in the 
specification about a single block labelled "LOGIC" in the  drawings. 

        In re Ghiron, 442 F.2d 985, 169 USPQ 723 (CCPA 1971), involved a 
method  of facilitating transfers from one subset of program instructions 
to another  which required modification of prior art "overlap mode" 
computers. The Board  rejected the claims on the basis, inter alia, that 
the disclosure was insufficient  to satisfy the requirements of 35 U.S.C. 
112, first paragraph and was affirmed.  The Board focused on the fact that 
the drawings were "block diagrams, i.e.,  a group of rectangles 
representing the elements of the system, functionally  labelled and 
interconnected by lines." 169 USPQ at 727. The specification did  not 
particularly identify each of the elements represented by the blocks or 
the relationship therebetween, nor did it specify particular apparatus 
intended  to carry out each function. The Board further questioned whether 
the selection  and assembly of the required components could be carried 
out routinely by persons  of ordinary skill in the art. 

        An adequate disclosure of a device may require details of how 
complex  components are constructed and perform the desired function. The 
claim before  the court in In re Scarbrough, 500 F.2d 560, 182 USPQ 298 
(CCPA 1974) was directed  to a system which comprised several component 
parts (e.g., computer, timing  and control mechanism, A/D converter, etc.) 
only by generic name and overall  ultimate function. The court concluded 
that there was not an enabling disclosure  because the specification did 
not describe how "complex elements known to perform  broadly recited 
functions in different systems  would be adaptable for use  in Appellant's 
particular system with only a reasonable amount of experimentation"  and 
that "an unreasonable amount of work would be required to arrive at the 
detailed relationships appellant says that he has solved." 182 USPQ at 
302. 
(b)   Microorganisms 

        Patent applications involving living biological products, such as 
microorganisms,  as critical elements in the process of making the 
invention, present a unique  question with regard to availability. The 
issue was raised in a case involving  claims drawn to a fermentative 
method of producing two novel antibiotics using  a specific microorganism 
and claims to the novel antibiotics so produced. In  re Argoudelis, 434 
F.2d 1390, 168 USPQ 99 (CCPA 1970). As stated by the court,  "a unique 
aspect of using microorganisms as starting materials is that a sufficient 
description of how to obtain the microorganism from nature cannot be 
given."  168 USPQ at 102. It was determined by the court that availability 
of the biological  product via a public depository provided an acceptable 
means of meeting the  written description and the enablement requirements 
of 35 U.S.C. 112, first  paragraph. 

        To satisfy the enablement requirement a deposit must be made 
"prior  to issue" but need not be made prior to filing the application. In 
re Lundak,  773 F.2d 1216, 227 USPQ 90 (Fed. Cir. 1985). 

        The availability requirement of enablement must also be considered 
 in light of the scope or breadth of the  claim limitations. The Board of 
Appeals  considered this issue in an application which claimed a 
fermentative method  using microorganisms belonging to a species. 
Applicants had identified three  novel individual strains of 
microorganisms that were related in such a way  as to establish a new 
species of microorganism, a species being a broader classification  than a 
strain. The three specific strains had been appropriately deposited.  The 
issue focused on whether the specification enabled one skilled in the art 
to make any member of the species other than the three strains which had 
been  deposited. The Board concluded that the verbal description of the 
species was  inadequate to allow a skilled artisan to make any and all 
members of the claimed  species. Ex parte Jackson, 
217 USPQ 804 (Bd. App. 1982). 

(c)   Drug Cases 

        See MPEP # 2107 - # 2107.02 for a discussion of the utility 
requirement  under 35 U.S.C. 112, first paragraph, in drug cases.< 


2164.07       Relationship of Enablement Requirement to Utility 
Requirement of 35 U.S.C. 101 [R-1] 

        >The requirement of 35 U.S.C. 112, first paragraph as to how to 
use  the invention is different from the utility requirement of 35 U.S.C. 
101. The  requirement of 
35 U.S.C. 101 is that some use be set forth for the invention, and that 
the  use be provable and not against public policy. On the other hand, 35 
U.S.C.  112, first paragraph requires an indication of how the use 
(required by section  101) can be carried out, i.e., how the invention can 
be used. 

(a)   When utility requirement is not satisfied 

(1)   Not useful or operative 

        If a claim fails to meet the utility requirement of 
35 U.S.C. 101 because it is shown to be nonuseful or inoperative, then it 
necessarily  fails to meet the how-to-use aspect of the enablement 
requirement of 35 U.S.C.  112, first paragraph. As noted in In re Fouche, 
439 F.2d 1237, 169 USPQ 429 
(CCPA 1971), if "compositions are in fact useless, appellant's 
specification  cannot have taught how to use them." 169 USPQ at 434. The 
examiner should make  both rejections (i.e., a rejection under 
35 U.S.C. 112, first paragraph and a rejection under 
35 U.S.C. 101) where the subject matter of a claim has been shown to be 
nonuseful  or inoperative. 

        The 35 U.S.C. 112, first paragraph, rejection should indicate that 
 because the invention as claimed does not have utility, a person skilled 
in  the art would not be able to use the invention as claimed, and as 
such, the  claim is defective under 35 U.S.C. 112, first paragraph. A 
35 U.S.C. 112, first paragraph, rejection should not be imposed or 
maintained  unless an appropriate basis exists for imposing a rejection 
under 35 U.S.C.  101. In other words, Office personnel should not impose a 
35 U.S.C. 112, first paragraph, rejection grounded on a "lack of utility" 
basis  unless a 35 U.S.C. 101 rejection is proper. In particular, the 
factual showing  needed to impose a rejection under 35 U.S.C. 101 must be 
provided if a 35 U.S.C.  112, first paragraph, is to be imposed on "lack 
of utility" grounds. See MPEP  # 706.03(a)(1) and 
# 2107 - # 2107.02 for a more detailed discussion of the utility 
requirements  of 35 U.S.C. 101 and 112, first paragraph. 

        The fact that an applicant has disclosed a specific utility for an 
 invention and provided a credible basis supporting that specific utility 
does  not provide a basis for concluding that the claims comply with all 
the requirements  of 35 U.S.C. 112, first paragraph. For example, if an 
applicant has claimed  a process of treating a certain disease condition 
with a certain compound and  provided a credible basis for asserting that 
the compound is useful in that  regard, but to actually practice the 
invention as claimed a person skilled  in the relevant art would have to 
engage in an undue amount of experimentation,  the claim may be defective 
under 35 U.S.C. 112, but not 
35 U.S.C. 101. To avoid confusion during examination, any rejection under 
35  U.S.C. 112, first paragraph, based on grounds other than "lack of 
utility"  should be imposed separately from any rejection imposed due to 
"lack of utility"  under 35 U.S.C. 101 and 35 U.S.C. 112, first paragraph. 

(2)   Contradicts scientific principles 

        When the examiner concludes that an application is describing an 
invention  that contradicts known scientific principles, the burden is on 
the examiner  to provide a reasonable basis to support this conclusion. 
Rejections based  on 35 U.S.C. 112, first paragraph and 35 U.S.C. 101 
should be made. 
EXAMINER HAS INITIAL BURDEN TO SHOW THAT ONE OF ORDINARY SKILL IN THE ART 
WOULD  REASONABLY DOUBT THE ASSERTED UTILITY 

        The examiner has the initial burden of challenging an asserted 
utility.  Only after the examiner has provided evidence showing that one 
of ordinary  skill in the art would reasonably doubt the asserted utility 
does the burden  shift to the applicant to provide rebuttal evidence 
sufficient to convince  one of ordinary skill in the art of the 
invention's asserted utility. In re  Brana et al., 51 F.3d 1560, 34 USPQ2d 
1436 (Fed. Cir. 1995) (citing In re Bundy,  642 F.2d 430, 433, 209 USPQ 
48, 51 (CCPA 1981)). 

GREATER DEGREE OF EVIDENCE IS REQUIRED WHERE ALLEGED UTILITY IS NOT 
CONSISTENT  WITH CURRENT SCIENTIFIC KNOWLEDGE 

        A greater degree of evidence will be needed where there is 
sufficient  reason to challenge the alleged use, i.e., if the utility is 
"incredible in  the light of knowledge of the art, or factually 
misleading" when considered  by the examiner. In re Citron, 325 F.2d 248, 
139 USPQ 516, 519 (CCPA 1963).  In In re Citron, the court required a 
heavy burden of evidence, which was not  met, to prove that the invention 
would cure cancer. The Court emphasized that  a heavy burden was required 
"in view of the art knowledge of the lack of a  cure for cancer and the 
absence of any clinical data to substantiate the allegation." 
(emphasis in original). The Court thus established a higher burden on the 
applicant  where the statement of use is incredible or misleading. In such 
a case, the  examiner should challenge the use and require sufficient 
evidence of operativeness.  But see In re Brana et al., 51 F.3d 1560, 34 
USPQ2d 1436 (Fed. Cir. 1995) (Citing  In re Jolles, 
628 F.2d 1322, 1327, 206 USPQ 885, 890 (CCPA 1980), the Court pointed out 
that  the purpose of treating cancer with chemical compounds does not 
suggest, per  se, an incredible utility. Where the prior art disclosed 
"structurally similar  compounds to those claimed by applicants which have 
been proven in vivo to  be effective as chemotherapeutic agents against 
various tumor models . . .,  one skilled in the art would be without basis 
to reasonably doubt applicants'  asserted utility on its face." Moreover, 
even if one skilled in the art would  have reasonably doubted the asserted 
utility on its face, applicants' submission  of evidence of test results 
showing that several compounds within the scope  of the claims showed 
significant antitumor activity in vivo should have been  sufficient to 
overcome any such doubt.). See the discussion in (4) below regarding  the 
utility requirement in drug cases. 

(3)   Rebuttal by applicant 

        The burden then shifts to applicant to rebut this position by 
showing  either that the invention as claimed does not violate accepted 
principles or  that the accepted principles are erroneous. Patent claims 
directed to energy  generation having a higher energy output than input 
were not enabled under  35 U.S.C. 112, first paragraph because there was 
no evidence to support applicant's  theory of energy production. Newman v. 
Quigg, 
681 F.Supp. 16, 5 USPQ2d 1880 (D.D.C. 1988). 

(b) When utility requirement is satisfied 

        In some instances, the use will be provided, but the skilled 
artisan  will not know how to effect that use. In such a case, no 
rejection will be  made under 35 U.S.C. 101, but a rejection will be made 
under 35 U.S.C. 112,  first paragraph. As pointed out in Mowry v. Whitney, 
81 U.S. (14 Wall.) 620 (1871), an invention may in fact have great 
utility,  i.e., may be "a highly useful invention," but the specification 
may still fail  to "enable any person skilled in the art or science" to 
use the invention,  81 U.S. (14 Wall.) at 644. The degree of evidence 
needed to deal with the challenge  to the utility of the claimed invention 
will also be a function of what the  invention is stated to accomplish. 
Thus, in Ex parte Ferguson, 117 USPQ 229 
(Bd. App. 1957), the test evidence only needed to show that the subjects 
felt  better after using applicant's novel drug, because the disclosure 
only alleged  the drug to provide relief from the pain of ulcers. A higher 
burden would have  been required if a cure for ulcers had been alleged.< 


2164.08       Enablement Commensurate in Scope With the Claims [R-1] 

        >As concerns the breadth of a claim relevant to enablement, the 
only  relevant concern should be whether the scope of enablement provided 
to one  skilled in the art by the disclosure is commensurate with the 
scope of protection  sought by the claims. In re Moore, 439 F.2d 1232, 169 
USPQ 236 (CCPA 1971). 
        The determination of the propriety of a rejection  based upon the 
scope  of a claim relative to the scope of the enablement involves two 
stages of inquiry.  The first is to determine how broad the claim is with 
respect to the disclosure.  The entire claim must be considered. The 
second inquiry is to determine if  one skilled in the art is enabled to 
make and use the entire scope of the claimed  invention without undue 
experimentation. 

        How a teaching is set forth, by specific example or broad 
terminology,  is not important. In re Marzocchi, 439 F.2d 220, 169 USPQ 
367 (CCPA 1971).  A rejection of a claim under 112 as broader than the 
enabling disclosure is  a first paragraph enablement rejection and not a 
second paragraph definiteness  rejection. Claims are not rejected as 
unduly broad under 35 U.S.C. 112 for  noninclusion of limitations dealing 
with factors which must be 
presumed to be within the level of ordinary skill in the art; the claims 
need  not recite such factors where one of ordinary skill in the art to 
whom the  specification and claims are directed would consider them 
obvious. In re Skrivan,  427 F.2d 801, 166 USPQ 85 (CCPA 1970). 

        Where applicant claimed a composition suitable for the treatment 
of  arthritis having a potency of "at least" a particular value, the court 
held  that the claim was not commensurate in scope with the enabling 
disclosure be  cause the disclosure was not enabling for compositions 
having a slightly higher  potency. Simply because applicant was the first 
to achieve a composition beyond  a particular threshold potency did not 
justify or support a claim that would  dominate every composition that 
exceeded that threshold value. In re Fisher,  427 F.2d 833, 166 USPQ 18 
(CCPA 1970). Given the relative incomplete understanding  in the 
biotechnological field involved, and the lack of a reasonable correlation 
between the narrow disclosure in the specification and the broad scope of 
protection  sought in the claims, a rejection under 35 U.S.C. 112, first 
paragraph for  lack of enablement was appropriate. In re Vaeck, 947 F.2d 
448, 20 USPQ2d 1438 
(Fed. Cir. 1991). 

        If a rejection is made based on the view that the enablement is 
not  commensurate in scope with the claim, the examiner should identify 
the subject  matter that is considered to be enabled.< 


2164.08(a)  Single Means Claim [R-1] 


        >A single means claim, i.e., where a means recitation does not 
appear  in combination with another recited element of means, is subject 
to an undue  breadth rejection under 35 U.S.C. 112, first paragraph. In re 
Hyatt, 708 F.2d  712, 218 USPQ 195 (Fed. Cir. 1983) (A single means claim 
which covered every  conceivable means for achieving the stated purpose 
was held nonenabling for  the scope of the claim because the specification 
disclosed at most only those  means known to the inventor.). When claims 
depend on a recited property, a  fact situation comparable to Hyatt is 
possible, where the claim covers every  conceivable structure (means) for 
achieving the stated property (result) while  the specification discloses 
at most only those known to the inventor. Although  the court in Fiers v. 
Sugano, 984 F.2d 164, 25 USPQ2d 1601 (Fed. Cir. 1993)  did not decide the 
enablement issue, it did suggest that a claim directed to  all DNAs that 
code for a specified polypeptide is analogous to a single means  claim.< 


2164.08(b)  Inoperative Subject Matter [R-1] 


        >Although, typically, inoperative embodiments are excluded by 
language  in a claim (e.g., preamble), the scope of the claim may still 
not be enabled  where undue experimentation is involved in determining 
those embodiments that  are operable. A disclosure of a large number of 
operable embodiments and the  identification of a single inoperative 
embodiment did not render a claim broader  than the enabled scope because 
undue experimentation was not involved in determining  those embodiments 
that were operable. In re Angstadt, 
537 F.2d 498, 502-503, 190 USPQ 214, 218 (CCPA 1976). However, claims 
reading  on significant numbers of inoperative embodiments would render 
claims nonenabled  when the specification does not clearly identify the 
operative embodiments  and undue experimentation is involved in 
determining those that are operative.  In re Cook, 439 F.2d 730, 169 USPQ 
298 (CCPA 1971).< 


2164.08(c)  Critical Feature Not Claimed [R-1] 


        >A feature which is taught as critical in a specification and is 
not  recited in the claims should result in a rejection of such claim 
under the  enablement provision section of 35 U.S.C. 112. See In re 
Mayhew, 527 F.2d 1229,  188 USPQ 356 (CCPA 1976). In determining whether 
an unclaimed feature is critical,  the entire disclosure must be 
considered. Features which are merely preferred  are not to be considered 
critical. In re Goffe, 542 F.2d 564,191 USPQ 429 (CCPA  1976).< 


2165    The Best Mode Requirement [R-1] 


        >A third requirement of the first paragraph of 
35 U.S.C. 112 is that: 

                The specification . . . shall set forth the best mode 
                contemplated by the inventor of carrying out his 
                invention. 

        The best mode requirement is a safeguard against the desire on the 
 part of some people to obtain patent protection without making a full 
disclosure  as required by the statute. The requirement does not permit 
inventors to disclose  only what they know to be their second-best 
embodiment, while retaining the best for themselves. In re Nelson, 280 
F.2d 172, 126 USPQ 242 (CCPA 1960). 

        The failure to disclose a better method will not invalidate a 
patent  if the inventor, at the time of filing the application, did not 
know of the  better method OR did not appreciate that it was the best 
method. All applicants  are required to disclose for the claimed subject 
matter the best mode "contemplated  by the inventor even though applicant 
may not have been the discoverer of that  mode." Benger Laboratories Ltd. 
v. R.K. Laros Co., 209 F. Supp. 639, 135 USPQ  11 (E.D. Pa. 1966). 

ACTIVE CONCEALMENT OR GROSSLY INEQUITABLE CONDUCT IS NOT REQUIRED TO 
ESTABLISH  FAILURE TO DISCLOSE THE BEST MODE 

        Failure to disclose the best mode need not rise to the level of 
active  concealment or grossly inequitable conduct in order to support a 
rejection  or invalidate a patent. Where an inventor knows of a specific 
material that  will make possible the successful reproduction of the 
effects claimed by the  patent, but does not disclose it, speaking instead 
in terms of broad categories,  the best mode requirement has not been 
satisfied. Union Carbide Corp. v. Borg-Warner,  550 F.2d 555, 193 USPQ 1 
(6th Cir. 1977). 

        If the failure to set forth the best mode in a patent disclosure 
is  the result of inequitable conduct (e.g., where the patent 
specification omitted  crucial ingredients and disclosed a fictitious and 
inoperable slurry as Example  1), not only is that patent in danger of 
being held unenforceable, but other  patents dealing with the same 
technology that are sought to be enforced in  the same cause of action are 
subject to being held unenforceable. Consolidated  Aluminum Corp. v. 
Foseco Inc., 
910 F.2d 804, 15 USPQ2d 1481 (Fed. Cir. 1990).< 


2165.01       Considerations Relevant to Best Mode [R-1] 


>(a)    What is the invention 

        Determine what the invention is - the invention is defined in the 
claims.  The specification need not set forth details not relating to the 
essence of  the invention. In re Bosy, 360 F.2d 972, 149 USPQ 789 (CCPA 
1966). 
(b)   Specific example is not required 

        There is no statutory requirement for the disclosure of a specific 
 example - a patent specification is not intended nor required to be a 
production  specification. In re Gay, 309 F.2d 768, 135 USPQ 311 (CCPA 
1962). 
        The absence of a specific working example is not necessarily 
evidence  that the best mode has not been disclosed, nor is the presence 
of one evidence  that it has. Best mode may be represented by a preferred 
range of conditions  or group of reactants. In re Honn, 364 F.2d 454, 150 
USPQ 652 (CCPA 1966). 
(c)   Designation as best mode is not required 

        There is no requirement in the statute that applicants point out 
which  of their embodiments they consider to be their best; that the 
disclosure includes  the best mode contemplated by applicants is enough to 
satisfy the statute.  Ernsthausen v. Nakayama, 1 USPQ 2d 1539 (Bd. Pat. 
App. & Inter. 1985). 
(d)   Updating best mode is not required 

        There is no requirement to update in the context of a foreign 
priority  application under 35 U.S.C. 119, Standard Oil Co. v. Montedison, 
S.p.A., 494  F.Supp. 370, 206 USPQ 676 (D.Del. 1980) (better catalyst 
developed between  Italian priority and U.S. filing dates), and continuing 
applications claiming  the benefit of an earlier filing date under 35 
U.S.C. 120, Transco Products,  Inc. v. Performance Contracting Inc., 38 
F.3d 551, 32 USPQ2d 1077 (Fed. Cir.  1994) (continuation under 37 CFR 
1.60); Sylgab Steel and Wire Corp. v. Imoco-Gateway  Corp., 357 F.Supp. 
657, 178 USPQ 22 (N.D. Ill. 1973) (continuation); Johns-Manville  Corp. v. 
Guardian Industries Corp., 586 F.Supp. 1034, 221 USPQ 319 (E.D. Mich. 
1983) (continuation and C-I-P). In the last cited case, the court stated 
that  applicant would have been obliged to disclose an updated refinement 
if it were  essential to the successful practice of the invention and it 
related to amendments  to the C-I-P that were not present in the parent 
application. In Carter-Wallace,  Inc. v. Riverton Laboratories, Inc., 433 
F.2d 1034, 167 USPQ 656 (2d Cir. 1970),  the court assumed, but did not 
decide, that an applicant must update the best  mode when filing a C-I-P 
application. 

(e)   Defect in best mode cannot be cured by new matter 

        If the best mode contemplated by the inventor at the time of 
filing  the application is not disclosed, such a defect cannot be cured by 
submitting  an amendment seeking to put into the specification something 
required to be  there when the patent application was originally filed. In 
re Hay, 534 F.2d  917, 189 USPQ 790 (CCPA 1976). 

        Any proposed amendment of this type (adding a specific mode of 
practicing  the invention not described in the application as filed) 
should be treated  as new matter. New matter under 35 U.S.C. 132 and 251 
should be objected to  and coupled with a requirement to cancel the new 
matter.< 


2165.02       Best Mode Requirement Compared to Enablement Requirement 
[R-1] 

        >The best mode requirement is a separate and distinct requirement 
from  the enablement requirement of the first paragraph of 35 U.S.C. 112. 
In re Newton, 414 F.2d 1400, 163 USPQ 34 (CCPA 1969). 

        The best mode provision of 35 U.S.C. 112 is not directed to a 
situation  where the application fails to set forth any mode - such 
failure is equivalent  to nonenablement. In re Glass, 492 F.2d 1228, 181 
USPQ 31 (CCPA 1974). 
        The enablement requirement looks to placing the subject matter of 
the  claims generally in the possession of the public. If, however, the 
applicant  develops specific instrumentalities or techniques which are 
recognized by the  applicant at the time of filing as the best way of 
carrying out the invention,  then the best mode requirement imposes an 
obligation to disclose that information  to the public as well. 
Spectra-Physics v. Coherent, 827 F.2d 1524, 3 USPQ 2d  1737 (Fed. Cir.), 
cert. denied, 484 U.S. 954 (1987).< 


2165.03       Requirements for Rejection for Lack of Best Mode [R-1] 

>ASSUME BEST MODE IS DISCLOSED UNLESS THERE IS EVIDENCE TO THE CONTRARY 
        The examiner should assume that the best mode is disclosed in the 
application,  unless evidence is presented that is inconsistent with that 
assumption. It  is extremely rare that a best mode rejection properly 
would be made in ex parte  prosecution. The information that is necessary 
to form the basis for a rejection  based on the failure to set forth the 
best mode is rarely accessible to the  examiner, but is generally 
uncovered during discovery procedures in interference,  litigation, or 
other inter partes proceedings. 

EXAMINER MUST DETERMINE WHETHER THE INVENTOR KNEW THAT ONE MODE WAS BETTER 
 THAN ANOTHER, AND IF SO, WHETHER THE DISCLOSURE IS ADEQUATE TO ENABLE ONE 
OF  ORDINARY SKILL IN THE ART TO PRACTICE THE BEST MODE 

        According to the approach used by the Court in Chemcast Corp. v. 
Arco  Industries, 913 F. 2d 923, 
16 USPQ 2d 1033 (Fed. Cir. 1990), a proper best mode analysis has two 
components: 
        (1)   Determine whether, at the time the application was filed, 
the  inventor knew of a mode of practicing the claimed invention that the 
inventor  considered to be better than any other. 

                        The first component is a subjective inquiry 
because  it focuses on the inventor's state of mind at the time the 
application was  filed. Unless the examiner has evidence that the 
inventors had information  in their possession 

                        (a)   at the time the application was filed 
                        (b)   that a mode was considered to be better 
                             than  any others by the inventors 

there is no reason to address the second component and there is no proper 
basis  for a best mode rejection. If the facts satisfy the first 
component, then,  and only then, is the following second component analyzed: 

        (2)   Compare what was known in (1) with what was disclosed - is 
the  disclosure adequate to enable one skilled in the art to practice the 
best mode? 
        Assessing the adequacy of the disclosure in this regard is largely 
 an objective inquiry that depends on the level of skill in the art. Is 
the  information contained in the specification disclosure sufficient to 
enable  a person skilled in the relevant art to make and use the best 
mode? 
        A best mode rejection is proper only when the first inquiry can be 
 answered in the affirmative, and the second inquiry answered in the 
negative  with reasons to support the conclusion that the specification is 
nonenabling  with respect to the best mode.< 


2165.04       Examples of Evidence of Concealment [R-1] 


        >In determining the adequacy of a best mode disclosure, only 
evidence  of concealment (accidental or intentional) is to be considered. 
That evidence  must tend to show that the quality of an applicant's best 
mode disclosure is  so poor as to effectively result in concealment. 

(a)   Examples - Best mode requirement satisfied 

        In one case, even though the inventor had more information in his 
possession  concerning the contemplated best mode than was disclosed (a 
known computer  program) the specification was held to delineate the best 
mode in a manner  sufficient to require only the application of routine 
skill to produce a workable  digital computer program. In re Sherwood, 613 
F.2d 809, 204 USPQ 537 (CCPA  1980). 

        In another case, the claimed subject matter was a time controlled 
thermostat,  but the application did not disclose the specific Quartzmatic 
motor which was  used in a commercial embodiment. The Court concluded that 
failure to disclose  the commercial motor did not amount to concealment 
since similar clock motors  were widely available and widely advertised. 
There was no evidence that the  specific Quartzmatic motor was superior 
except possibly in price. Honeywell  v. Diamond, 208 USPQ 452 (D.D.C. 1980). 

        There was held to be no violation of the best mode requirement 
even  though the inventor did not disclose the only mode of calculating 
the stretch  rate for plastic rods that he used because that mode would 
have been employed  by those of ordinary skill in the art at the time the 
application was filed.  W.L. Gore & Assoc. Inc. v. Garlock Inc., 721 F.2d 
1540, 220 USPQ 303 (Fed.  Cir. 1983). 

        There was no best mode violation where there was no evidence that 
the  monoclonal antibodies used by the inventors differed from those 
obtainable  according to the processes described in the specification. It 
was not disputed  that the inventors obtained the antibodies used in the 
invention by following  the procedures in the specification, that these 
were the inventors' preferred  procedures, and that the data reported in 
the specification was for the antibody  that the inventors had actually 
used. Scripps Clinic and Research Foundation  v. Genentech Inc., 927 F.2d 
1565, 18 USPQ 2d 1001 (Fed. Cir. 1991). 
        Where an organism was created by the insertion of genetic material 
 into a cell obtained from generally available sources, all that was 
required  to satisfy the best mode requirement was an adequate description 
of the means  for carrying out the invention, not deposit of the cells. As 
to the observation  that no scientist could ever duplicate exactly the 
cell used by applicants,  the court observed that the issue is whether the 
disclosure is adequate, not  that an exact duplication is necessary. Amgen 
Inc. v. Chugai Pharmaceutical  Co. Ltd., 927 F.2d 1200, 
18 USPQ 2d 1016 (Fed. Cir. 1991). 

        There was held to be no violation of the best mode requirement 
where  the Solicitor argued that concealment could be inferred from the 
disclosure  in a specification that each analog is "surprisingly and 
unexpectedly more  useful than one of the corresponding prostaglandins . . 
. for at least one  of the pharmacological purposes." It was argued that 
appellant must have had  test results to substantiate this statement and 
this data should have been  disclosed. The court concluded that no 
withholding could be inferred from general  statements of increased 
selectivity and narrower spectrum of potency for these  novel analogs, 
conclusions which could be drawn from the elementary pharmacological 
testing of the analogs. In re Bundy, 642 F.2d 430, 435, 209 USPQ 48, 52 
(CCPA  1981). 

(b)   Examples - Best mode requirement not 
satisfied 

        The best mode requirement was held to be violated where inventors 
of  a laser failed to disclose details of their preferred TiCuSil brazing 
method  which were not contained in the prior art and were contrary to 
criteria for  the use of TiCuSil as contained in the literature. 
Spectra-Physics, Inc. v.  Coherent, Inc., 827 F.2d 1524, 
3 USPQ 2d 1737 (Fed. Cir. 1987). 

        The best mode requirement was violated because an inventor failed 
to  disclose whether to use a specific surface treatment that he knew was 
necessary  to the satisfactory performance of his invention, even though 
how to perform  the treatment itself was known in the art. The argument 
that the best mode  requirement may be met solely by reference to what was 
known in the prior art  was rejected as incorrect. Dana Corp. v. IPC Ltd. 
Partnership, 860 F.2d 415,  8 USPQ 2d 1692 (Fed. Cir. 1988).< 


2171    Two Separate Requirements for Claims Under 35 U.S.C. 112, Second 
Paragraph           [R-1] 

        >The second paragraph of 35 U.S.C. 112 is directed to requirements 
 for the claims: 

The specification shall conclude with one or more claims particularly 
pointing  out and distinctly claiming the subject matter which the 
applicant regards  as his invention. 

There are two separate requirements set forth in this paragraph: 

(1)   the claims must set forth the subject matter that         applicants 
 regard as their invention; and 

(2)   the claims must particularly point out and distinctly define the 
metes  and bounds of the subject matter that will be protected by the 
patent grant. 
The first requirement is a subjective one because it is dependent on what 
the  applicants for a patent regard as their invention. The second 
requirement is  an objective one because it is not dependent on the views 
of applicant or any  particular individual, but is evaluated in the 
context of whether the claim  is definite - i.e., whether the scope of the 
claim is clear to a hypothetical  person possessing the ordinary level of 
skill in the pertinent art. 
        Although an essential purpose of the examination process is to 
determine  whether or not the claims define an invention that is both 
novel and nonobvious  over the prior art, another essential purpose of 
patent examination is to determine  whether or not the claims are precise, 
clear, correct, and unambiguous. The  uncertainties of claim scope should 
be removed, as much as possible, during  the examination process. 

        The inquiry during examination is patentability of the invention 
as  applicant regards it. If the claims do not particularly point out and 
distinctly  claim that which applicants regard as their invention, the 
appropriate action  by the examiner is to reject the claims under 35 
U.S.C. 112, second paragraph.  In re Zletz, 893 F.2d 319, 
13 USPQ2d 1320 (Fed. Cir. 1989). If a rejection is based on 35 U.S.C. 112, 
 second paragraph, the examiner should further explain whether the 
rejection  is based on indefiniteness or on the failure to claim what 
applicants regard  as their invention. Ex parte Ionescu, 222 USPQ 537, 539 
(Bd. App. 1984).< 

2172    Subject Matter Which Applicants Regard as Their Invention [R-1] 

>(a)    Focus for examination 

        A rejection based on the failure to satisfy this requirement is 
appropriate  only where applicant has stated, somewhere other than in the 
application as  filed, that the invention is something different from what 
is de fined by the  claims. In other words, the invention set forth in the 
claims must be presumed,  in the absence of evidence to the contrary, to 
be that which applicants regard  as their invention. In re Moore, 439 F.2d 
1232, 169 USPQ 236 (CCPA 1971). 
(b)   Evidence to the contrary 

        Evidence that shows that a claim does not correspond in scope with 
 that which applicant regards as applicant's invention may be found, for 
example,  in contentions or admissions contained in briefs or remarks 
filed by applicant,  In re Prater, 415 F.2d 1393, 162 USPQ 541 (CCPA 
1969), or in affidavits filed  under 37 CFR 1.132, In re Cormany, 476 F.2d 
998, 177 USPQ 450 (CCPA 1973).  The content of applicant's specification 
is not used as evidence that the scope  of the claims is inconsistent with 
the subject matter which applicants regard  as their invention. As noted 
in In re Ehrreich, 590 F.2d 902, 200 USPQ 504 
(CCPA 1979), agreement, or lack thereof, between the claims and the 
specification  is properly considered only with respect to 35 U.S.C. 112, 
first paragraph;  it is irrelevant to compliance with the second paragraph 
of that section. 
(c)   Shift in claims permitted 

        The second paragraph of 35 U.S.C. 112 does not prohibit applicants 
 from changing what they regard as their invention during the pendency of 
the  application. In re Saunders, 444 F.2d 599, 170 USPQ 213 (CCPA 1971) 
(Applicant  was permitted to claim and submit comparative evidence with 
respect to claimed  subject matter which originally was only the preferred 
embodiment within much  broader claims (directed to a method).). The fact 
that claims in a continuation  application were directed to originally 
disclosed subject matter which applicants  had not regarded as part of 
their invention when the parent application was  filed was held not to 
prevent the continuation application from receiving benefits  of the 
filing date of the parent application under 35 U.S.C. 120. In re Brower, 
433 F.2d 813, 167 USPQ 684 (CCPA 1970).< 


2173    Claims Must Particularly Point Out and Distinctly Claim the 
Invention [R-1] 

        >The primary purpose of this requirement of definiteness of claim 
language  is to ensure that the scope of the claims is clear so the public 
is informed  of the boundaries of what constitutes infringement of the 
patent. A secondary  purpose is to provide a clear measure of what 
applicants regard as the invention  so that it can be determined whether 
the claimed invention meets all the criteria  for patentability and 
whether the specification meets the criteria of 35 U.S.C.  112, first 
paragraph with respect to the claimed invention.< 


2173.01       Claim Terminology [R-1] 


        >A fundamental principle contained in 35 U.S.C. 112, second 
paragraph  is that applicants are their own lexicographers. They can 
define in the claims  what they regard as their invention essentially in 
whatever terms they choose  so long as the terms are not used in ways that 
are contrary to accepted meanings  in the art. Applicant may use 
functional language, alternative expressions,  negative limitations, or 
any style of expression or format of claim which makes  clear the 
boundaries of the subject matter for which protection is sought.  As noted 
by the Court in In re Swinehart, 439 F.2d 210. 160 USPQ 226 (CCPA  1971), 
a claim may not be rejected solely because of the type of language used 
to define the subject matter for which patent protection is sought.< 

2173.02       Clarity and Precision [R-1] 


        >The examiner's focus during examination of claims for compliance 
with  the requirement for definiteness of 35 U.S.C. 112, second paragraph 
is whether  the claim meets the threshold requirements of clarity and 
precision, not whether  more suitable language or modes of expression are 
available. When the examiner  is satisfied that patentable subject matter 
is disclosed, and it is apparent  to the examiner that the claims are 
directed to such patentable subject matter,  he or she should allow claims 
which define the patentable subject matter with  a reasonable degree of 
particularity and distinctness. Some latitude in the  manner of expression 
and the aptness of terms should be permitted even though  the claim 
language is not as precise as the examiner might desire. Examiners  are 
encouraged to suggest claim language to applicants to improve the clarity 
or precision of the language used, but should not reject claims or insist 
on  their own preferences if other modes of expression selected by 
applicants satisfy  the statutory requirement. 

        The essential inquiry pertaining to this requirement is whether 
the  claims set out and circumscribe a particular subject matter with a 
reasonable  degree of clarity and particularity. Definiteness of claim 
language must be  analyzed, not in a vacuum, but in light of (1) the 
content of the particular  application disclosure, (2) the teachings of 
the prior art, and (3) the claim  interpretation that would be given by 
one possessing the ordinary level of  skill in the pertinent art at the 
time the invention was made. If the scope  of the invention sought to be 
patented cannot be determined from the language  of the claims with a 
reasonable degree of certainty, a rejection of the claims  under 35 U.S.C. 
112, second paragraph is appropriate. In re Wiggins, 488 F.2d  538, 179 
USPQ 421 (CCPA 1973).< 


2173.03       Inconsistency Between Claim and Specification Disclosure or 
Prior Art [R-1] 

        >Although the terms of a claim may appear to be definite, 
inconsistency  with the specification disclosure or prior art teachings 
may make an otherwise  definite claim take on an unreasonable degree of 
uncertainty. In re Cohn, 438  F.2d 989, 169 USPQ 95 (CCPA 1971); In re 
Hammack, 427 F.2d 1378, 166 USPQ 204 
(CCPA 1970). In Cohn, the claim was directed to a process of treating a 
surface  with a corroding solution until the metallic appearance is 
supplanted by an  "opaque" appearance. Noting that no claim may be read 
apart from and independent  of the supporting disclosure on which it is 
based, the court found that the  description, definitions and examples set 
forth in the specification relating  to the appearance of the surface 
after treatment were inherently inconsistent  and rendered the claim 
indefinite.< 


2173.04       Breadth Is Not Indefiniteness [R-1] 


        >Breadth of a claim is not to be equated with indefiniteness. In 
re  Miller, 441 F.2d 689, 169 USPQ 597 (CCPA 1971). If the scope of the 
subject  matter embraced by the claims is clear, and if applicants have 
not otherwise indicated that they intend  the invention to be of a scope 
different from that defined in the claims, then  the claims comply with 35 
U.S.C. 112, second paragraph. 

        Undue breadth of the claim may be addressed under different 
statutory  provisions, depending on the reasons for concluding that the 
claim is too broad.  If the claim is too broad because it does not set 
forth that which applicants  regard as their invention as evidenced by 
statements outside of the application  as filed, a rejection under 35 
U.S.C. 112, second paragraph would be appropriate.  If the claim is too 
broad because it is not supported by the original description  or by an 
enabling disclosure, a rejection under 35 U.S.C. 112, first paragraph 
would be appropriate. If the claim is too broad because it reads on the 
prior  art, a rejection under either 35 U.S.C. 102 or 103 would be 
appropriate.< 

2173.05       Specific Topics Related to Issues Under 35 U.S.C. 112, 
Second Paragraph [R-1] 

        >The following sections are devoted to a discussion of specific 
topics  where issues under 35 U.S.C. 112, second paragraph have been 
addressed. These  sections are not intended to be an exhaustive list of 
the issues that can arise  under 35 U.S.C. 112, second paragraph, but are 
intended to provide guidance  in areas that have been addressed with some 
frequency in recent examination  practice. The court and Board decisions 
cited are representative. As with all  appellate decisions, the results 
are largely dictated by the facts in each  case. The use of the same 
language in a different context may justify a different  result.< 


2173.05(a)  New Terminology [R-1] 


>THE MEANING OF EVERY TERM SHOULD BE APPARENT 

        The meaning of every term used in a claim should be apparent from 
the  prior art or from the specification and drawings at the time the 
application  is filed. Applicants need not confine themselves to the 
terminology used in  the prior art, but are required to make clear and 
precise the terms that are  used to define the invention whereby the metes 
and bounds of the claimed invention  can be ascertained. During patent 
examination, the pending claims must be given  the broadest reasonable 
interpretation consistent with the specification. In  re Prater, 
162 USPQ 541 (CCPA 1969). See also MPEP 
# 2111 - # 2111.01. When the specification states the meaning that a term 
in  the claim is intended to have, the claim is examined using that 
meaning, in  order to achieve a complete exploration of the applicant's 
invention and its  relation to the prior art. In re Zletz, 893 F.2d 319, 
13 USPQ2d 1320 (Fed.  Cir. 1989). 

THE REQUIREMENT FOR CLARITY AND PRECISION MUST BE BALANCED WITH THE 
LIMITATIONS  OF THE LANGUAGE 

        Courts have recognized that it is not only permissible, but often 
desirable,  to use new terms that are frequently more precise in 
describing and defining  the new invention. In re Fisher, 427 F.2d 833, 
166 USPQ 18 (CCPA 1970). Although  it is difficult to compare the claimed 
invention with the prior art when new  terms are used that do not appear 
in the prior art, this does not make the  new terms indefinite. 

        New terms are often used when a new technology is in its infancy 
or  is rapidly evolving. The requirements for clarity and precision must 
be balanced  with the limitations of the language and the science. If the 
claims, read in  light of the specification, reasonably apprise those 
skilled in the art both  of the utilization and scope of the invention, 
and if the language is as precise  as the subject matter permits, the 
statute (35 U.S.C. 112, second paragraph)  demands no more. Shatterproof 
Glass Corp. v. Libbey Owens Ford Co., 758 F.2d  613, 225 USPQ 634 (Fed. 
Cir. 1985) (interpretation of "freely supporting" in  method claims 
directed to treatment of a glass sheet); Hybritech, Inc. v. Monoclonal 
Antibodies, Inc., 802 F.2d 1367, 231 USPQ 81 (Fed. Cir. 1986) 
(interpretation  of a limitation specifying a numerical value for antibody 
affinity where the  method of calculation was known in the art at the time 
of filing to be imprecise).  This does not mean that the examiner must 
accept the best effort of applicant.  If the proposed language is not 
considered as precise as the subject matter  permits, the examiner should 
provide reasons to support the conclusion of indefiniteness  and is 
encouraged to suggest alternatives that are free from objection. 
A TERM MAY NOT BE GIVEN A MEANING REPUGNANT TO ITS USUAL MEANING 

        While a term used in the claims may be given a special meaning in 
the  description of the invention, generally no term may be given a 
meaning repugnant  to the usual meaning of the term. In re Hill, 161 F.2d 
367, 73 USPQ 482 (CCPA  1947). However, it has been stated that consistent 
with the well-established  axiom in patent law that a patentee is free to 
be his or her own lexicographer,  a patentee may use terms in a manner 
contrary to or inconsistent with one or  more of their ordinary meanings. 
Hormone Research Foundation Inc. v. Genentech  Inc., 904 F.2d 1558, 15 
USPQ2d 1039 (Fed. Cir. 1990). Accordingly, when there  is more than one 
definition for a term, it is incumbent upon applicant to make  clear which 
definition is being relied upon to claim the invention. Until the  meaning 
of a term or phrase used in a claim is clear, a rejection under 35  U.S.C. 
112, second paragraph is appropriate. It is appropriate to compare the 
meaning of terms given in technical dictionaries in order to ascertain the 
 accepted meaning of a term in the art. In re Barr, 444 F.2d 588, 170 USPQ 
330 
(CCPA 1971).< 


2173.05(b)  Relative Terminology [R-1] 


        >The fact that claim language, including terms of degree, may not 
be  precise, does not automatically render the claim indefinite under 35 
U.S.C.  112, second paragraph. Seattle Box Co., v. Industrial Crating & 
Packing, Inc.,  731 F.2d 818, 221 USPQ 568 (Fed. Cir. 1984). Acceptability 
of the claim language  depends on whether one of ordinary skill in the art 
would understand what is  claimed, in light of the specification. 

WHEN A TERM OF DEGREE IS PRESENT, DETERMINE WHETHER A STANDARD IS 
DISCLOSED  OR WHETHER ONE OF ORDINARY SKILL IN THE ART WOULD BE APPRISED 
OF THE SCOPE  OF THE CLAIM 

        When a term of degree is presented in a claim, first a 
determination  is to be made as to whether the specification provides some 
standard for measuring  that degree. If it does not, a determination is 
made as to whether one of ordinary  skill in the art, in view of the prior 
art and the status of the art, would  be nevertheless reasonably apprised 
of the scope of the invention. Even if  the specification uses the same 
term of degree as in the claim, a rejection  may be proper if the scope of 
the term is not understood when read in light  of the specification. 
While, as a general proposition, broadening modifiers  are standard tools 
in claim drafting in order to avoid reliance on the doctrine  of 
equivalents in infringement actions, when the scope of the claim is 
unclear  a rejection under 35 U.S.C. 112, second paragraph is proper. See 
In re Wiggins,  488 F. 2d 538, 541, 179 USPQ 421, 423 (CCPA 1973). 

        When relative terms are used in claims wherein the improvement 
over  the prior art rests entirely upon size or weight of an element in a 
combination  of elements, the adequacy of the disclosure of a standard is 
of greater criticality. 
REFERENCE TO AN OBJECT THAT IS VARIABLE MAY RENDER A CLAIM INDEFINITE 
        A claim may be rendered indefinite by reference to an object that 
is  variable. For example, the Board has held that a limitation in a claim 
to a  bicycle that recited "said front and rear wheels so spaced as to 
give a wheelbase  that is between 58 percent and 75 percent of the height 
of the rider that the  bicycle was designed for" was indefinite because 
the relationship of parts  was not based on any known standard for sizing 
a bicycle to a rider, but on  a rider of unspecified build. Ex parte 
Brummer, 12 USPQ2d 1653 (Bd. Pat. App.  & Inter. 1989). On the other hand, 
a claim limitation specifying that a certain  part of a pediatric 
wheelchair be "so dimensioned as to be insertable through  the space 
between the doorframe of an automobile and one of the seats" was  held to 
be definite. Orthokinetics, Inc. v. Safety Travel Chairs Inc., 806  F.2d 
1565, 1 USPQ2d 1081 (Fed. Cir. 1986). The court stated that the phrase 
"so dimensioned" is as accurate as the subject matter permits, noting that 
 the patent law does not require that all possible lengths corresponding 
to  the spaces in hundreds of different automobiles be listed in the 
patent, let  alone that they be listed in the claims. 

(a)   About 

        The term "about" used to define the area of the lower end of a 
mold  as between 25 to about 45% of the mold entrance was held to be 
clear, but flexible.  Ex parte Eastwood, 163 USPQ 316 (Bd. App. 1968). 
Similarly, in W.L. Gore &  Associates, Inc. v. Garlock, Inc., 721 F.2d 
1540, 220 USPQ 303 (Fed. Cir. 1983),  the court held that a limitation 
defining the stretch rate of a plastic as  "exceeding about 10% per 
second" is definite because infringement 
could clearly be assessed through the use of a stopwatch. However, the 
court  held that claims reciting "at least about" were invalid for 
indefiniteness  where there was close prior art and there was nothing in 
the specification,  prosecution history, or the prior art to provide any 
indication as to what  range of specific activity is covered by the term 
"about." Amgen v. Chugai  Pharmaceutical Co. Ltd., 927 F.2d 1200, 18 
USPQ2d 1016 (Fed. Cir. 1991). 
(b)   Essentially 

        The phrase "a silicon dioxide source that is essentially free of 
alkali  metal" was held to be definite because the specification contained 
guidelines  and examples that were considered sufficient to enable a 
person of ordinary  skill in the art to draw a line between unavoidable 
impurities in starting  materials and essential ingredients. In re Marosi, 
710 F.2d 799, 218 USPQ 289 
(CCPA 1983). The court further observed that it would be impractical to 
require  applicants to specify a particular number as a cutoff between 
their invention  and the prior art. 

(c)   Similar 

        The term "similar" in the preamble of a claim that was directed to 
 a nozzle "for high-pressure cleaning units or similar apparatus" was held 
to  be indefinite since it was not clear what applicant intended to cover 
by the  recitation "similar" apparatus. Ex parte Kristensen, 
10 USPQ2d 1701 (Bd. Pat. App. & Inter. 1989). 

        A claim in a design patent application which read: "The ornamental 
 design for a feed bunk or similar structure as shown and described." was 
held  to be indefinite because it was unclear from the specification what 
applicant  intended to cover by the recitation of "similar structure." Ex 
parte Pappas,  23 USPQ2d 1636 (Bd. Pat. App. & Inter. 1992). 

(d)   Substantially 

        The term "substantially" is often used in conjunction with another 
 term to describe a particular characteristic of the claimed invention. It 
is  a broad term. In re Nehrenberg, 280 F.2d 161, 126 USPQ 383 (CCPA 
1960). The  court held that the limitation "to substantially increase the 
efficiency of  the compound as a copper extractant" was definite in view 
of the general guidelines  contained in the specification. In re Mattison, 
509 F.2d 563, 184 USPQ 484 
(CCPA 1975). The court held that the limitation "which produces 
substantially  equal E and H plane illumination patterns" was definite 
because one of ordinary  skill in the art would know what was meant by 
"substantially equal." Andrew  Corp. v. Gabriel Electronics, 847 F.2d 819, 
6 USPQ2d 2010 (Fed. Cir. 1988). 
(e)   Type 

        The addition of the word "type" to an otherwise definite 
expression 
(e.g., Friedel-Crafts catalyst) extends the scope of the expression so as 
to  render it indefinite. Ex parte Copenhaver, 109 USPQ 118 (Bd. App. 
1955). Likewise,  the phrase "ZSM-5-type aluminosilicate zeolites" was 
held to be indefinite  because it was unclear what "type" was intended to 
convey. The interpretation  was made more difficult by the fact that the 
zeolites defined in the dependent  claims were not within the genus of the 
type of zeolites defined in the independent  claim. Ex parte Attig, 7 
USPQ2d 1092 (Bd. Pat. App. & Inter. 1986). 
(f)   Other terms 

        The phrases "relatively shallow," "of the order of," "the order of 
 about 5mm," and "substantial portion" were held to be indefinite because 
the  specification lacked some standard for measuring the degree intended 
and, therefore,  properly rejected as indefinite under 
35 U.S.C. 112, second paragraph. Ex parte Oetiker, 
23 USPQ2d 641 (Bd. Pat. App & Inter. 1992). 

        The term "or like material" in the context of the limitation 
"coke,  brick, or like material" was held to render the claim indefinite 
since it was  not clear how the materials other than coke or brick had to 
resemble the two  specified materials to satisfy the limitations of the 
claim. Ex parte Caldwell,  1906 Comm'r Dec. 58 (Comm'r Pat. 1906). 

        The terms "comparable" and "superior" were held to be indefinite 
in  the context of a limitation relating the characteristics of the 
claimed material  to other materials - "properties that are superior to 
those obtained with comparable"  prior art materials. Ex parte Anderson, 
21 USPQ2d 1241 (Bd. Pat. App. & Inter. 1991). It was not clear from the 
specification  which properties had to be compared and how comparable the 
properties would have to be to determine infringement issues. Further, 
there was no guidance  as to the meaning of the term "superior."< 


2173.05(c)  Numerical Ranges and Amounts Limitations [R-1] 


        >Generally, the recitation of specific numerical ranges in a claim 
 does not raise an issue of whether a claim is definite. 

(a)   Narrow and broader ranges in the same claim 

        Use of a narrow numerical range that falls within a broader range 
in  the same claim may render the claim indefinite when the boundaries of 
the claim  are not discernible. Description of examples and preferences is 
properly set  forth in the specification rather than in the claims. If 
stated in the claims,  examples and preferences lead to confusion over the 
intended scope of a claim.  In those instances where it is not clear 
whether the claimed narrower range  is a limitation, a rejection under 
35 U.S.C. 112, second paragraph should be made. The Examiner should 
analyze  whether the metes and bounds of the claim are clearly set forth. 
Examples of  claim language which have been held to be indefinite are (1) 
"a temperature  of between 45 and 78 degrees Celsius, preferably between 
50 and 60 degrees  Celsius"; and (2) "a predetermined quantity, for 
example, the maximum capacity." 
(b)   Open-ended numerical ranges 

        Open-ended numerical ranges should be carefully analyzed for 
definiteness.  For example, when an independent claim recites a 
composition comprising "at  least 20% sodium" and a dependent claim sets 
forth specific amounts of nonsodium  ingredients which add up to 100%, 
apparently to the exclusion of sodium, an  ambiguity is created with 
regard to the "at least" limitation (unless the percentages  of the 
nonsodium ingredients are based on the weight of the nonsodium 
ingredients).  On the other hand, the court held that a composition 
claimed to have a theoretical  content greater than 100% (i.e., 20-80% of 
A, 20-80% of B, and 1-25% of C)  was not indefinite simply because the 
claims may be read in theory to include  compositions that are impossible 
in fact to formulate. It was observed that  subject matter which cannot 
exist in fact can neither anticipate nor infringe  a claim. In re Kroekel, 
504 F.2d 1143, 183 USPQ 610 (CCPA 1974). 

        In a claim directed to a chemical reaction process, a limitation 
required  that the amount of one ingredient in the reaction mixture should 
"be maintained  at less than 7 mole percent" based on the amount of 
another ingredient. The  examiner argued that the claim was indefinite 
because the limitation sets only  a maximum amount and is inclusive of 
substantially no ingredient resulting  in termination of any reaction. The 
court did not agree be- cause the claim  was clearly directed to a 
reaction process which did not warrant distorting  the overall meaning of 
the claim to preclude performing the claimed process.  In re Kirsch, 498 
F.2d 1389, 182 USPQ 286 (CCPA 1974). 

        Some terms have been determined to have the following meanings in 
the  factual situations of the reported cases: the term "up to" includes 
zero as  a lower limit, In re Mochel, 470 F.2d 638, 176 USPQ 194 (CCPA 
1974); and "a  moisture content of not more than 70% by weight" reads on 
dry material, Ex  parte Khusid, 174 USPQ 59 (Bd. App. 1971). 

(c) "Effective amount" 

        The common phrase "an effective amount" may or may not be 
indefinite.  The proper test is whether or not one skilled in the art 
could determine specific  values for the amount based on the disclosure. 
See In re Mattison, 509 F.2d  563, 184 USPQ 484 (CCPA 1975). The phrase 
"an effective amount . . . for growth  stimulation" was held to be 
definite where the amount was not critical and  those skilled in the art 
would be able to determine from the written disclosure,  including the 
examples, what an effective amount is. In re Halleck, 422 F.2d  911, 
164 USPQ 647 (CCPA 1970). The phrase "an effective amount" has been held 
to  be indefinite when the claim fails to state the function which is to 
be achieved  and more than one effect can be implied from the 
specification or the relevant  art. In re Fredericksen 213 F.2d 547, 102 
USPQ 35 (CCPA 1954). The more recent  cases have tended to accept a 
limitation such as "an effective amount" as being  definite when read in 
light of the supporting disclosure and in the absence  of any prior art 
which would give rise to uncertainty about the scope of the  claim. In Ex 
parte Skuballa, 12 USPQ2d 1570 (Bd. Pat. App. & Inter. 1989),  the Board 
held that a pharmaceutical composition claim which recited an "effective 
amount of a compound of claim 1" without stating the function to be 
achieved was definite, particularly when read in light of the  supporting 
disclosure which provided guidelines as to the intended utilities  and how 
the uses could be effected.< 


2173.05(d)  Exemplary Claim Language (for example, such as) [R-1] 

        >Description of examples or preferences is properly set forth in 
the  specification rather than the claims. If stated in the claims, 
examples and  preferences lead to confusion over the intended scope of a 
claim. In those  instances where it is not clear whether the claimed 
narrower range is a limitation,  a rejection under 35 U.S.C. 112, second 
paragraph should be made. The Examiner  should analyze whether the metes 
and bounds of the claim are clearly set forth.  Examples of claim language 
which have been held to be indefinite because the  intended scope of the 
claim was unclear are: 

        (1)   "R is halogen, for example, chlorine"; 

        (2)   "material such as rock wool or asbestos" Ex parte Hall, 83 
USPQ  38 (Bd. App. 1949); 

        (3)   "lighter hydrocarbons, such, for example, as the vapors or 
gas  produced" Ex parte Hasche, 86 USPQ 481 (Bd. App. 1949); and 

        (4)   "normal operating conditions such as while in the container 
of  a proportioner" Ex parte Steigerwald, 131 USPQ 74 (Bd. App. 1961).< 

2173.05(e)  Lack of Antecedent Basis [R-1] 


        >A claim is indefinite when it contains words or phrases whose 
meaning  is unclear. The lack of clarity could arise where a claim refers 
to "said lever"  or "the lever," where the claim contains no earlier 
recitation or limitation  of a lever and where it would be unclear as to 
what element the limitation  was making reference. Similarly, if two 
different levers are recited earlier  in the claim, the recitation of 
"said lever" in the same or subsequent claim  would be unclear where it is 
uncertain which of the two levers was intended.  A claim which refers to 
"said aluminum lever," but recites only "a lever" earlier  in the claim, 
is indefinite because it is uncertain as to the lever to which  reference 
is made. Obviously, however, the failure to provide explicit antecedent 
basis for terms does not always render a claim indefinite. If the scope of 
 a claim would be reasonably ascertainable by those skilled in the art, 
then  the claim is not indefinite. Ex parte Porter, 25 USPQ2d 1144, 1145 
(Bd. Pat.  App. & Inter. 1992) ("controlled stream of fluid" provided 
reasonable antecedent  basis for "the controlled fluid"). Inherent 
components of elements recited  have antecedent basis in the recitation of 
the components themselves. For example,  the limitation "the outer surface 
of said sphere" would not require an antecedent  recitation that the 
sphere has an outer surface. 

EXAMINER SHOULD SUGGEST CORRECTIONS TO ANTECEDENT PROBLEMS 

        Antecedent problems in the claims are typically drafting 
oversights  that are easily corrected once they are brought to the 
attention of applicant.  The examiner's task of making sure the claim 
language complies with the requirements  of the statute should be carried 
out in a positive and constructive way, so  that minor problems can be 
identified and easily corrected, and so that the  major effort is expended 
on more substantive issues. However, even though indefiniteness  in claim 
language is of semantic origin, it is not rendered unobjectionable  simply 
because it could have been corrected. In re Hammack, 427 F.2d 1384 n.5, 
166 USPQ 209 n.5 (CCPA 1970). 

A CLAIM TERM WHICH HAS NO ANTECEDENT BASIS IN THE DISCLOSURE IS NOT 
NECESSARILY  INDEFINITE 

        The mere fact that a term or phrase used in the claim has no 
antecedent  basis in the specification disclosure does not mean, 
necessarily, that the  term or phrase is indefinite. There is no 
requirement that the words in the  claim must match those used in the 
specification disclosure. Applicants are  given a great deal of latitude 
in how they choose to define their invention  so long as the terms and 
phrases used define the invention with a reasonable  degree of clarity and 
precision.< 


2173.05(f)  Reference to Limitations in Another Claim [R-1] 


        >A claim which makes reference to a preceding claim to define a 
limitation  is an acceptable claim construction which should not 
necessarily be rejected  as improper or confusing under 35 U.S.C. 112, 
second paragraph. For example,  claims which read: "The product produced 
by the method of claim 1." or "A method  of producing ethanol comprising 
contacting amylose with the culture of claim 1  under the following 
conditions ....." are not indefinite under 35 U.S.C. 112,  second 
paragraph, merely because of the reference to another claim. See also  Ex 
parte Porter, 25 USPQ2d 1144 (Bd. Pat. App. & Inter. 1992) where reference 
 to "the nozzle of claim 7" in a method claim was held to comply with 35 
U.S.C.  112, second paragraph. However, where the format of making 
reference to limitations  recited in another claim results in confusion, 
then a rejection would be proper  under 35 U.S.C. 112, second paragraph.< 


2173.05(g)  Functional Limitations [R-1] 


        >A functional limitation is an attempt to define something by what 
 it does, rather than by what it is (e.g., as evidenced by its specific 
structure  or specific ingredients). There is nothing inherently wrong 
with defining some  part of an invention in functional terms. Functional 
language does not, in  and of itself, render a claim improper. In re 
Swinehart, 439 F.2d 210, 169  USPQ 
226 (CCPA 1971). 

        A functional limitation must be evaluated and considered, just 
like  any other limitation of the claim, for what it fairly conveys to a 
person of  ordinary skill in the pertinent art in the context in which it 
is used. A functional  limitation is often used in association with an 
element, ingredient, or step  of a process to define a particular 
capability or purpose that is served by  the recited element, ingredient 
or step. Whether or not the functional limitation  complies with 35 U.S.C. 
112, second paragraph is a different issue from whether  the limitation is 
properly supported under 35 U.S.C. 112, first paragraph or  is 
distinguished over the prior art. A few examples are set forth below to 
illustrate situations where the issue of whether a functional limitation 
complies  with 35 U.S.C. 112, second paragraph was considered. 

        It was held that the limitation used to define a radical on a 
chemical  compound as "incapable of forming a dye with said oxidizing 
developing agent"  although functional, was perfectly acceptable because 
it set definite boundaries  on the patent protection sought. In re Barr, 
444 F.2d 588, 170 USPQ 33 (CCPA  1971). 

        In a claim that was directed to a kit of component parts capable 
of  being assembled, the Court held that limitations such as "members 
adapted to  be positioned" and "portions . . . being resiliently dilatable 
whereby said  housing may be slidably positioned" serve to precisely 
define present structural  attributes of interrelated component parts of 
the claimed assembly. In re Venezia, 530 F.2d 956, 189 USPQ 149 (CCPA 1976).< 


2173.05(h)  Alternative Limitations [R-1] 


>(a)    Markush groups 

        Alternative expressions are permitted if they present no 
uncertainty  or ambiguity with respect to the question of scope or clarity 
of the claims.  One acceptable form of alternative expression, which is 
commonly referred to  as a Markush group, recites members as being 
"selected from the group consisting  of A, B and C." See Ex parte Markush, 
1925 C.D. 126 (Comm'r Pat. 1925). 
        Ex parte Markush sanctions claiming a genus expressed as a group 
consisting  of certain specified materials. Inventions in metallurgy, 
refractories, ceramics,  pharmacy, pharmacology and biology are most 
frequently claimed under the Markush  formula but purely mechanical 
features or process steps may also be claimed  by using the Markush style 
of claiming, see Ex parte Head, 214 USPQ 551 (Bd.  App. 1981); In re 
Gaubert, 524 F.2d 1222, 187 USPQ 664 (CCPA 1975); and In  re Harnisch, 631 
F.2d 716, 206 USPQ 300 (CCPA 1980). It is improper to use  the term 
"comprising" instead of "consisting of." Ex parte Dotter, 12 USPQ  382 
(Bd. App. 1931). 

        The use of Markush claims of diminishing scope should not, in 
itself,  be considered a sufficient basis for objection to or rejection of 
claims. However,  if such a practice renders the claims indefinite or if 
it results in undue  multiplicity, an appropriate rejection should be made. 

        Similarly, the double inclusion of an element by members of a 
Markush  group is not, in itself, sufficient basis for objection to or 
rejection of  claims. Rather, the facts in each case must be evaluated to 
determine whether  or not the multiple inclusion of one or more elements 
in a claim renders that  claim indefinite. The mere fact that a compound 
may be embraced by more than  one member of a Markush group recited in the 
claim does not necessarily render  the scope of the claim unclear. For 
example, the Markush group, "selected from  the group consisting of amino, 
halogen, nitro, chloro and alkyl" should be  acceptable even though 
"halogen" is generic to "chloro." 

        The materials set forth in the Markush group ordinarily must 
belong  to a recognized physical or chemical class or to an art-recognized 
class. However, when the Markush group occurs  in a claim reciting a 
process or a combination (not a single compound), it  is sufficient if the 
members of the group are disclosed in the specification  to possess at 
least one property in common which is mainly responsible for  their 
function in the claimed relationship, and it is clear from their very 
nature or from the prior art that all of them possess this property. While 
 in the past the test for Markush-type claims was applied as liberally as 
possible,  present practice which holds that claims reciting Markush 
groups are not generic  claims (MPEP # 803) may subject the groups to a 
more stringent test for propriety  of the recited members. Where a Markush 
expression is applied only to a portion  of a chemical compound, the 
propriety of the grouping is determined by a consideration  of the 
compound as a whole, and does not depend on there being a community  of 
properties in the members of the Markush expression. 

        When materials recited in a claim are so related as to constitute 
a  proper Markush group, they may be recited in the conventional manner, 
or alternatively.  For example, if "wherein R is a material selected from 
the group consisting  of A, B, C and D" is a proper limitation, then 
"wherein R is A, B, C or D"  shall also be considered proper. 

SUBGENUS CLAIM 

        A situation may occur in which a patentee has presented a number 
of  examples which, in the examiner's opinion, are sufficiently 
representative  to support a generic claim and yet a court may 
subsequently hold the claim  invalid on the ground of undue breadth. Where 
this happens the patentee is  often limited to species claims which may 
not provide him with suitable protection. 
        The allowance of a Markush-type claim under a true genus claim 
would  appear to be beneficial to the applicant without imposing any undue 
burden  on the Patent and Trademark Office or in any way detracting from 
the rights  of the public. Such a subgenus claim would enable the 
applicant to claim all  the disclosed operative embodiments and afford 
applicant an intermediate level  of protection in the event the true genus 
claims should 
be subsequently held invalid. 

        The examiners are therefore instructed not to reject a 
Markush-type  claim merely because of the presence of a true genus claim 
embracive thereof. 
        See also MPEP # 608.01(p) and # 715.03. 

        See MPEP # 803 for restriction practice re Markush-type claims. 
(b)   "Or" terminology 

        Alternative expressions using "or" are acceptable, such as 
"wherein  R is A, B, C, or D." The following phrases were each held to be 
acceptable  and not in violation of 35 U.S.C. 112, second paragraph in In 
re Gaubert, 524  F.2d 1222, 187 USPQ 664 (CCPA 1975): "made entirely or in 
part of"; "at least  one piece"; and "iron, steel or any other magnetic 
material." 

(c)   "Optionally" 

        An alternative format which requires some analysis before 
concluding  whether or not the language is indefinite involves the use of 
the term "optionally."  In Ex parte Cordova, 10 USPQ2d 1949 (Bd. Pat. App. 
& Inter. 1989) the language  "containing A, B, and optionally C" was 
considered acceptable alternative language  because there was no ambiguity 
as to which alternatives are covered by the  claim. A similar holding was 
reached with regard to the term "optionally" in  Ex parte Wu, 10 USPQ2d 
2031 (Bd. Pat. App. & Inter. 1989). In the instance  where the list of 
potential alternatives can vary and ambiguity arises, then  it is proper 
to make a rejection under 
35 U.S.C. 112, second paragraph and explain why there is confusion.< 

2173.05(i)  Negative Limitations [R-1] 


        >The current view of the courts is that there is nothing 
inherently  ambiguous or uncertain about a negative limitation. So long as 
the boundaries  of the patent protection sought are set forth definitely, 
albeit negatively,  the claim complies with the requirements of 
35 U.S.C. 112, second paragraph. Some older cases were critical of 
negative  limitations because they tended to define the invention in terms 
of what it  was not, rather than pointing out the invention. Thus, the 
court observed that  the limitation "R is an alkenyl radical other than 
2-butenyl and 2,4-pentadienyl"  was a negative limitation that rendered 
the claim indefinite because it was  an attempt to claim the invention by 
excluding what the inventors did not invent  rather than distinctly and 
particularly pointing out what they did invent.  In re Schechter, 205 F.2d 
185, 98 USPQ 144 (CCPA 1953). 

        A claim which recited the limitation "not in excess of 10% . . . 
structure"  in order to exclude the characteristics of the prior art 
product, was considered  definite because each recited limitation was 
definite. In re Wakefield, 422 F.2d 897, 164 USPQ 636 (CCPA 1970). In 
addition, the court found that the  negative limitation "incapable of 
forming a dye with said oxidized developing  agent" was definite because 
the boundaries of the patent protection sought  were clear. In re Barr, 
444 F.2d 588, 
170 USPQ 330 (CCPA 1971). 

        Any negative limitation or exclusionary proviso must have basis in 
 the original disclosure. See Ex parte Grasselli, 231 USPQ 393 (Bd. App. 
1983)  aff'd mem., 
738 F.2d 453 (Fed. Cir. 1984). The mere absence of a positive recitation 
is  not basis for an exclusion. Any claim containing a negative limitation 
which  does not have basis in the original disclosure should be rejected 
under 35 U.S.C. 112, first paragraph as failing to comply with the written 
description  requirement. Note that a lack of literal basis in the 
specification for a negative  limitation may not be sufficient to 
establish a prima facie case for lack of  descriptive support. Ex parte 
Parks, 30 USPQ2d  1234, 1236 (Bd. Pat. App. &  Inter. 1993). See MPEP 
# 2163 - # 2163.07(b) for a discussion of the written description 
requirement  of 35 U.S.C. 112, first paragraph.< 


2173.05(j)  Old Combination [R-1] 


>A CLAIM SHOULD NOT BE REJECTED ON THE GROUND OF OLD COMBINATION 

        With the passage of the 1952 Patent Act, the courts and the Board 
have  taken the view that a rejection based on the principle of old 
combination is  NO longer valid. Claims should be considered proper so 
long as they comply  with the provisions of 35 U.S.C. 112, second 
paragraph. 

        A rejection on the basis of old combination was based on the 
principle  applied in Lincoln Engineering Co. v. Stewart-Warner Corp., 303 
U.S. 545, 37  USPQ 1 (1938). The principle was that an inventor who made 
an improvement or  contribution to but one element of a generally old 
combination, should not  be able to obtain a patent on the entire 
combination including the new and  improved element. A rejection required 
the citation of a single reference which  broadly disclosed a combination 
of the claimed elements functionally cooperating  in substantially the 
same manner to produce substantially the same results  as that of the 
claimed combination. The case of In re Hall, 208 F.2d 370, 100  USPQ 46 
(CCPA 1953) illustrates an application of this principle. 

        The CCPA pointed out in In re Bernhardt, 417 F.2d 1395, 163 USPQ 
611 
(CCPA 1969) that the statutory language (particularly point out and 
distinctly  claim) is the only proper basis for an old combination 
rejection, and in applying  the rejection, that language determines what 
an applicant has a right and obligation  to do. A majority opinion of the 
Board of Appeals held that Congress removed  the underlying rationale of 
Lincoln Engineering in the 1952 Patent Act, and  thereby effectively 
legislated that decision out of existence. Ex parte Barber,  187 USPQ 244 
(Bd. App. 1974). Finally, the Court of Appeals for the Federal  Circuit, 
in Radio Steel and Mfg. Co. v. MTD Products, Inc., 731 F.2d 840, 221  USPQ 
657 (Fed. Cir. 1984), followed the Bernhardt case, and ruled that a claim 
was not invalid under Lincoln Engineering because the claim complied with 
the  requirements of 35 U.S.C. 112, second paragraph. Accordingly, a claim 
should  not be rejected on the ground of old combination.< 


2173.05(k)  Aggregation [R-1] 


        >Rejections on the ground of aggregation should be based upon a 
lack  of cooperation between the elements of the claim. 

        Example of aggregation: A washing machine associated with a dial 
telephone. 
        A claim is not necessarily aggregative because the various 
elements  do not function simultaneously, e.g., a typewriter. In re 
Worrest, 201 F.2d  930, 96 USPQ 381 (1953). Neither is a claim necessarily 
aggregative merely  because elements which do cooperate are set forth in 
specific detail. 
        A rejection on aggregation should be made only after consideration 
 of the court's comments in In re Gustafson, 331 F.2d 905, 141 USPQ 585 
(1964),  wherein the court indicated it is improper to reject claims as 
"aggregative"  without specifying the statutory basis of the rejection, 
i.e., an applicant  is entitled to know whether his claims are being 
rejected under 35 U.S.C. 101,  103, or 112. In Gustafson, the court found 
that the real objection to the claims  was that they failed to comply with 
35 U.S.C. 112, second paragraph.< 


2173.05(l)  Incomplete Claims [R-1] 


        >A claim can be rejected as incomplete if it omits essential 
elements,  steps or necessary structural cooperative relationship of 
elements, such omission  amounting to a gap between the elements, steps or 
necessary structural connections.  See In re Collier, 397 F.2d 1003, 
158 USPQ 266 (CCPA 1968) (Claim recited "For use in a ground connection, 
[1]  a connector member for engaging shield means . . . said connector 
member comprising  a . . . ferrule-forming member having a series of 
perforations . . . said ferrule-forming  means being crimpable onto said 
shield means . . . and [2] ground wire means  for disposition between said 
ferrule-forming member and said shield means upon  the ferrule forming 
member being crimped onto the shield means . . . ." 158  USPQ at 267 
(emphasis in original). The court interpreted the claim as directed  to a 
crimpable perforated ferrule and a ground wire without any particular 
relationship to each other. Although the claim language recited intended 
uses,  capabilities, and structure which would result upon the performance 
of future  acts as indicated by the emphasized claim language, such claim 
language was  not a positive structural limitation on the claim. Because 
appellant argued  that the invention was not merely directed to a 
crimpable perforated ferrule  and a ground wire, the court held that 
appellant failed to particularly point  out and distinctly claim the 
subject matter which appellant regarded as his  invention.). However the 
breadth of a claim is not to be equated with indefiniteness.  See MPEP # 
2173.04. 

        The claim should also be rejected under the first paragraph of 35 
U.S.C.  112 as based upon a disclosure which is not enabling. In re 
Mayhew, 527 F.2d  1229, 
188 USPQ 356 (CCPA 1976). See MPEP # 2164.08(c). 

        Greater latitude is permissible with respect to the definition in 
a  claim of matters not essential to novelty or operability than with 
respect  to matters essential 
thereto.< 


2173.05(m)  Prolix [R-1] 


        >Examiners should reject claims as prolix only when they contain 
such  long recitations or unimportant details that the scope of the 
claimed invention  is rendered indefinite thereby. Claims are rejected as 
prolix when they contain  long recitations or unimportant details which 
hide or obscure the invention.  Ex parte Iagan, 1911 C.D. 10, 162 O.G. 538 
(Comm'r Pat. 1910), expresses the  thought that very long detailed claims 
setting forth so many elements that  invention cannot possibly reside in 
the combination should be rejected as prolix.  See also In re Ludwick, 4 
F.2d 959, 1925 C.D. 306, 339 O.G. 393 (D.C. Cir.  1925).< 


2173.05(n)  Multiplicity [R-1] 


>37 CFR 1.75 Claim(s). 

        (a) The specification must conclude with a claim particularly 
pointing  out and distinctly claiming the subject matter which the 
applicant regards  as his invention or discovery. 

        (b) More than one claim may be presented provided they differ 
substantially  from each other and are not unduly multiplied. 

        (c) One or more claims may be presented in dependent form, 
referring  back to and further limiting another claim or claims in the 
same application.  Any dependent claim which refers to more than one other 
claim ("multiple dependent  claim") shall refer to such other claims in 
the alternative only. A multiple  dependent claim shall not serve as a 
basis for any other multiple dependent  claim. For fee calculation 
purposes under # 1.16, a multiple dependent claim  will be considered to 
be that number of claims to which direct reference is  made therein. For 
fee calculation purposes, also, any claim depending from  a multiple 
dependent claim will be considered to be that number of claims to  which 
direct reference is made in that multiple dependent claim. In addition  to 
the other filing fees, any original application which is filed with, or 
is amended to include, multiple dependent claims must have paid the fee 
set  forth in # 1.16(d). Claims in dependent form shall be construed to 
include  all the limitations of the claim incorporated by reference into 
the dependent  claim. A multiple dependent claim shall be construed to 
incorporate by reference  all the limitations of each of the particular 
claims In relation to which it  is being considered. 

(d) (1) The claim or claims must conform to the invention as set forth in 
the  remainder of the specification and the terms and phrases used in the 
claims  must find clear support or antecedent basis in the description so 
that the  meaning of the terms may be ascertained by reference to the 
description (See  # 1.58(a)). 

        (2) See ## 1.141 to 1.146 as to claiming different inventions in 
one  application. 

        (e) Where the nature of the case admits, as in the case of an 
improvement,  any independent claim should contain in the following order, 
(1) a preamble  comprising a general description of all elements or steps 
of the claimed combination  which are conventional or known, (2) a 

phrase such as "wherein the improvement comprises," and (3) those 
elements,  steps, and/or relationships which constitute that portion of 
the claimed combination  which the applicant regards as the new or 
improved portion. 

        (f) If there are several claims, they shall be numbered 
consecutively  in Arabic numerals. 

        (g) All dependent claims should be grouped together with the claim 
 or claims to which they refer to the extent possible. 

        An unreasonable number of claims, that is, unreasonable in view of 
 the nature and scope of applicant's invention and the state of the art, 
may  afford a basis for a rejection on the ground of multiplicity. A 
rejection on this ground should  include all the claims in the case 
inasmuch as it relates to confusion of the  issue. 

        To avoid the possibility that an application which has been 
rejected  on the ground of undue multiplicity of claims may be appealed to 
the Board  of Patent Appeals and Interferences prior to an examination on 
the merits of  at least some of the claims presented, the examiner should, 
at the time of  making the rejection on the ground of multiplicity of 
claims, specify the number  of claims which in his or her judgment is 
sufficient to properly define applicant's  invention and require the 
applicant to select certain claims, not to exceed  the number specified, 
for examination on the merits. The examiner should be  reasonable in 
setting the number to afford the applicant some latitude in claiming  the 
invention. 

        The earlier views of the Court of Customs and Patent Appeals on 
multiplicity  were set forth in In re Chandler, 45 CCPA 911, 117 USPQ 361 
(1958) and In re  Chandler, 50 CCPA 1422, 138 USPQ 138 (1963) (Applicants 
latitude in stating  their claims in regard to number and phraseology 
employed "should not be extended  to sanction that degree of repetition 
and multiplicity which beclouds definition  in a maze of confusion." 138 
USPQ at 148.). These views have been somewhat  revised by its views in In 
re Flint, 411 F.2d 1353, 162 USPQ 228 (CCPA 

1969) ("The [42] claims differed from one another and we have no 
difficulty  in understanding the scope of protection. Nor is it clear, on 
this record,  that the examiner or board was confused by the presentation 
of claims in this  case or that the public will be." 162 USPQ at 231.) and 
In re Wakefield, 422  F.2d 897, 164 USPQ 636 (CCPA 1970) ("Examination of 
forty claims in a single  application may be tedious work, but this is no 
reason for saying that the  invention is obscured by the large number of 
claims. We note that the claims  were clear enough for the examiner to 
apply references against all of them  in his first action." 164 USPQ at 
639.). 

        If a rejection on multiplicity is in order the examiner should 
make  a telephone call explaining that the claims are unduly multiplied 
and will  be rejected on that ground. Note MPEP # 408. The examiner should 
request selection  of a specified number of claims for purposes of 
examination. 

        If time for consideration is requested arrangements should be made 
 for a second telephone call, preferably within three working days. 
        When claims are selected, a formal multiplicity rejection is made, 
 including a complete record of the telephone interview, followed by an 
action  on the selected claims. 

        When applicant refuses to comply with the telephone request, a 
formal  multiplicity rejection is made. The applicant's response to a 
formal multiplicity  rejection of the examiner, to be complete, must either: 

(1)   Reduce the number of claims presented to those selected previously 
by  telephone, or if no previous selection has been made to a number not 
exceeding  the number specified by the examiner in the Office action, thus 
overcoming  the rejection based upon the ground of multiplicity, or 

(2)   In the event of a traverse of said rejection applicant, besides 
specifically  pointing out the supposed errors of the multiplicity 
rejection, is required  to confirm the selection previously made by 
telephone, or if no previous selection  has been made, select certain 
claims for purpose of examination, the number  of which is not greater 
than the number specified by the examiner. 
        If the rejection on multiplicity is adhered to, all claims 
retained  will be included in such rejection and the selected claims only 
will be additionally  examined on their merits. This procedure preserves 
applicant's right to have  the rejection on multiplicity reviewed by the 
Board of Patent Appeals and Interferences. 

        Also, it is possible to reject one claim on an allowed claim if 
they  differ only by subject matter old in the art. This ground of 
rejection is set  forth in Ex parte Whitelaw, 1915 C.D. 18; 219 O.G. 1237. 
The Ex parte Whitelaw  doctrine is restricted to cases where the claims 
are unduly multiplied or are  substantial duplicates. Ex parte Kochan, 131 
USPQ 204, 206 (Bd. App. 1961).< 

2173.05(o)  Double Inclusion [R-1] 


        >While the concept that double inclusion of an element in members 
of  a Markush group recited in a claim is, per se, objectionable and 
renders a  claim indefinite is supported by some of the older cases like 
Ex parte White,  759 O.G. 783 (Bd. App. 1958) and Ex parte Clark, 
174 USPQ 40 (Bd. App. 1971), other decisions clearly hold that there is no 
 per se rule of indefiniteness concerning overlapping members where 
alternatives  are recited in a claim - e.g., members of a Markush group. 
In re Kelly, 305  F.2d 909, 134 USPQ 397 (CCPA 1962). 

        The facts in each case must be evaluated to determine whether or 
not  the multiple inclusion of one or more elements in a claim gives rise 
to indefiniteness  in that claim. The mere fact that a compound may be 
embraced by more than one  member of a Markush group recited in the claim 
does not lead to any uncertainty  as to the scope of that claim for either 
examination or infringement purposes.  On the other hand, where a claim 
directed to a device can be read to include  the same element twice, the 
claim may be indefinite. Ex parte Kristensen, 10  USPQ2d 1701 (Bd. Pat. 
App. & Inter. 1989).< 


2173.05(p)  Claim Directed to Product-By-Process or Product and Process 
[R-1] 

>(a) Product-by-process 

        There are many situations where claims are permissively drafted to 
 include a reference to more than one statutory class of invention. A 
product-by-process  claim, which is a product claim that defines the 
claimed product in terms of  the process by which it is made, is proper. 
In re Moeller, 28 CCPA 932, 48  USPQ 542, 
1941 C.D. 316; In re Luck, 177 USPQ 523 (CCPA 1973); In re Steppan, 156 
USPQ  143 (CCPA 1967); and In re Pilkington, 162 USPQ 145 (CCPA 1969). A 
claim to  a device, apparatus, manufacture, or composition of matter may 
contain a reference  to the process in which it is intended to be used 
without being objectionable  under 
35 U.S.C. 112, second paragraph, so long as it is clear that the claim is 
directed  to the product and not the process. 

        The fact that it is necessary for an applicant to describe his 
product  in product-by-process terms does not prevent him from presenting 
claims of  varying scope, Ex parte Pantzer and Feier, 176 USPQ 141 (Bd. 
App. 1972). 
(b) Product and process in the same claim 

        A single claim which claims both an apparatus and the method steps 
 of using the apparatus is indefinite under 35 U.S.C. 112, second 
paragraph.  In Ex parte Lyell, 
17 USPQ2d 1548 (Bd. Pat. App. & Inter. 1990), a claim directed to an 
automatic  transmission workstand and the method steps of using it was 
held to be ambiguous  and properly rejected under 35 U.S.C. 112, second 
paragraph. 

        Such claims should also be rejected under 35 U.S.C. 101 based on 
the  theory that the claim is directed to neither a "process" nor a 
"machine," but  rather embraces or overlaps two different statutory 
classes of invention set  forth in 35 U.S.C. 101 which is drafted so as to 
set forth the statutory classes  of invention in the alternative only. Id. 
at 1551.< 


2173.05(q)  "Use" Claims [R-1] 


        >Attempts to claim a process without setting forth any steps 
involved  in the process generally raises an issue of indefiniteness under 
35 U.S.C.  112, second paragraph. For example, a claim which read: "A 
process for using  monoclonal antibodies of claim 4 to isolate and purify 
human fibroblast interferon."  was held to be indefinite because it merely 
recites a use without any active,  positive steps delimiting how this use 
is actually practiced. Ex parte Erlich,  3 USPQ2d 1011 (Bd. Pat. App. & 
Inter. 1986). 

        Other decisions suggest that a more appropriate basis for this 
type  of rejection is 35 U.S.C. 101. In Ex parte Dunki, 153 USPQ 678 (Bd. 
App. 1967),  the Board held the following claim to be an improper 
definition of a process:  "The use of a high carbon austenitic iron alloy 
having a proportion of free  carbon as a vehicle brake part subject to 
stress by sliding friction." In Clinical  Products Ltd. v. Brenner, 255 
F.Supp. 131, 149 USPQ 475 (D.D.C. 1966), the  district court held the 
following claim was definite, but that it was not a  proper process claim 
under 
35 U.S.C. 101: "The use of a sustained release therapeutic agent in the 
body  of ephedrine absorbed upon polystyrene sulfonic acid." 

        Although a claim should be interpreted in light of the 
specification  disclosure, it is generally considered improper to read 
limitations contained  in the specification into the claims. See In re 
Prater, 415 F.2d 1393, 162 USPQ 541 (CCPA 1969) and In re Winkhaus, 527 
F.2d 637, 188 USPQ 129 (CCPA  1975), which discuss the premise that one 
cannot rely on the specification  to impart limitations to the claim that 
are not recited in the claim. 
A "USE" CLAIM SHOULD BE REJECTED UNDER ALTERNATIVE GROUNDS BASED ON 35 
U.S.C  101 AND 112 

        In view of the split of authority as discussed above, the most 
appropriate  course of action would be to reject a "use" claim under 
alternative grounds based on 35 U.S.C. 101 and 112. 

BOARD HELD STEP OF "UTILIZING" WAS NOT INDEFINITE 

        It is often difficult to draw a fine line between what is 
permissible,  and what is objectionable from the perspective of whether a 
claim is definite.  In the case of Ex parte Porter, 25 USPQ2d 1144 (Bd. 
Pat. App. & Inter. 1992),  the Board held that a claim which clearly 
recited the step of "utilizing" was  not indefinite under 35 U.S.C. 112, 
second paragraph. (Claim was to "A method  for unloading nonpacked, 
nonbridging and packed, bridging flowable particle  catalyst and bead 
material from the opened end of a reactor tube which comprises  utilizing 
the nozzle of claim 7.") < 


2173.05(r)  Omnibus Claim [R-2] 


        Some applications are filed with an omnibus claim which reads as 
follows:  A device substantially as shown and described. This claim should 
be rejected  under 
35 U.S.C. 112, second paragraph because it is indefinite in that it fails 
to  point out what is included or excluded by the claim language. See Ex 
parte  Fressola, 27 USPQ2d 1608 (Bd. Pat. App. & Inter. 1993), for a 
discussion of  the history of omnibus claims and an explanation of why 
omnibus claims do not  comply with the requirements of 
35 U.S.C. 112, second paragraph. 

        Such a claim can be rejected using form paragraph 7.35 (reproduced 
 in MPEP # 706.03>(d)<). 

        For cancellation of such a claim by examiner's amendment, see MPEP 
 # 1302.04(b). 


2173.05(s)  Reference to Figures or Tables [R-1] 


        >Where possible, claims are to be complete in themselves. 
Incorporation  by reference to a specific figure or table "is permitted 
only in exceptional  circumstances where there is no practical way to 
define the invention in words  and where it is more concise to incorporate 
by reference than duplicating a  drawing or table into the claim. 
Incorporation by reference is a necessity  doctrine, not for applicant's 
convenience." Ex parte Fressola, 
27 USPQ2d 1608, 1609 (Bd. Pat. App. & Inter. 1993) (citations omitted). 
        Reference characters corresponding to elements recited in the 
detailed  description and the drawings may be used in conjunction with the 
recitation  of the same element or group of elements in the claims. See MPEP 
# 608.01(m).< 


2173.05(t)  Chemical Formula [R-1] 


        >Claims to chemical compounds and compositions containing chemical 
 compounds often use formulas that depict the chemical structure of the 
compound.  These structures should not be considered indefinite nor 
speculative in the  absence of evidence that the assigned formula is in 
error. The absence of corroborating  spectroscopic or other data cannot be 
the basis for finding the structure indefinite.  See Ex parte Morton et al., 
134 USPQ 407 (Bd. App. 1961) and Ex parte Sobin et al., 139 USPQ 528 (Bd. 
App.  1962) in this regard. 

        A claim to a chemical compound is not indefinite merely because a 
structure  is not presented or because a partial structure is presented. 
For example,  the claim language at issue in In re Fisher, 427 F.2d 833, 
166 USPQ 18 (CCPA  1970) referred to a chemical compound as a "polypeptide 
of at least 24 amino  acids having the following sequence." A rejection 
under 35 U.S.C. 112, second  paragraph for failure to identify the entire 
structure was reversed and the  court held: "While the absence of such a 
limitation obviously broadens the  claim and raises questions of 
sufficiency of disclosure, it does not render  the claim indefinite." 
Chemical compounds may be claimed by a name that adequately  describes the 
material to one skilled in the art. See Martin v. Johnson, 454  F.2d 746, 
172 USPQ 391 (CCPA 1972). A compound of unknown structure may be  claimed 
by a combination of physical and chemical characteristics. See Ex parte 
Brian et al., 118 USPQ 242 (Bd. App. 1958). A compound may also be claimed 
 in terms of the process by which it is made without raising an issue of 
indefiniteness.< 


2173.05(u)  Trademarks or Trade Names in a Claim [R-2] 


        The presence of a trademark or trade name in a claim is not, per 
se,  improper under 35 U.S.C. 112, second paragraph, but the claim should 
be carefully  analyzed to determine how the mark or name is used in the 
claim. It is important  to recognize that a trademark or trade name is 
used to identify a source of  goods, and not the goods themselves. Thus a 
trademark or trade name does not identify or describe the goods associated 
with the trademark or trade name.  See definitions of trademark and trade 
name in MPEP # 608.01(v). A list of  some trademarks is found in Appendix I. 

        If the trademark or trade name is used in a claim as a limitation 
to  identify or describe a particular material or product, the claim does 
not comply  with the requirements of the 35 U.S.C. 112, second paragraph. 
Ex parte Simpson,  218 USPQ 1020 (Bd. App. 1982). The claim scope is 
uncertain since the trademark  or trade name cannot be used properly to 
identify any particular material or  product. In fact, the value of a 
trademark would >be lost to the extent that  it became descriptive of a< 
product, rather than used as an identification  of a source or origin of a 
product. Thus, the use of a trademark or trade name  in a claim to 
identify or describe a material or product would not only render  a claim 
indefinite, but would also constitute an improper use of the trademark  or 
trade name. 

        If a trademark or trade name appears in a claim and is not 
intended  as a limitation in the claim, the question of why it is in the 
claim should  be addressed. Does its presence in the claim cause confusion 
as to the scope  of the claim? If so, the claim should be rejected under 
35 U.S.C. 112, second paragraph. 


2173.05(v)  Mere Function of Machine [R-1] 


        >In view of the decision of the Court of Customs and Patent 
Appeals  in In re Tarczy-Hornoch, 397 F.2d 856, 158 USPQ 141 (CCPA 1968) 
process or  method claims are not subject to rejection by Patent and 
Trademark Office examiners  under 35 U.S.C. 112, second paragraph, solely 
on the ground that they define  the inherent function of a disclosed 
machine or apparatus. The court in Tarczy-Hornoch  held that a process 
claim, otherwise patentable, should not be rejected merely  because the 
application of which it is part discloses apparatus which will  inherently 
carry out the recited steps.< 


2173.06       Prior Art Rejection of Claim Rejected as Indefinite [R-1] 

        >All words in a claim must be considered in judging the 
patentability  of a claim against the prior art. In re Wilson, 424 F.2d 
1382, 165 USPQ 494 
(CCPA 1970). The fact that terms may be indefinite does not make the claim 
 obvious over the prior art. When the terms of a claim are considered to 
be  indefinite, at least two approaches to the examination of an 
indefinite claim  relative to the prior art are possible. 

         First, where the degree of uncertainty is not great, and where 
the  claim is subject to more than one interpretation and at least one 
interpretation  would render the claim unpatentable over the prior art, an 
appropriate course  of action would be for the examiner to enter two 
rejections: (1) a rejection  based on indefiniteness under 35 U.S.C. 112, 
second paragraph; and (2) a rejection  over the prior art based on the 
interpretation of the claims which renders  the prior art applicable. Ex 
parte Ionescu, 222 USPQ 537 (Bd. App. 1984). When  making a rejection over 
prior art in these circumstances, it is important for  the examiner to 
point out how the claim is being interpreted. Second, where  there is a 
great deal of confusion and uncertainty as to the proper interpretation 
of the limitations of a claim, it would not be proper to reject such a 
claim  on the basis of prior art. As stated in In re Steele, 305 F.2d 859, 
134 USPQ  292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be 
based on considerable  speculation about the meaning of terms employed in 
a claim or assumptions that  must be made as to the scope of the claims. 

        The first approach is recommended from an examination standpoint 
because  it avoids piecemeal examination in the event that the examiner's 
35 U.S.C.  112, second paragraph rejection is not affirmed, and may give 
applicant a better  appreciation for relevant prior art if the claims are 
redrafted to avoid the  35 U.S.C. 112, second paragraph rejection.< 


2174    Relationship Between the Requirements of the First and Second 
Paragraphs of 35 U.S.C. 112 [R-2] 

        The requirements of the first and second paragraphs of 35 U.S.C. 
112  are separate and distinct. If a description or the enabling 
disclosure of a  specification is not commensurate in scope with the 
subject matter encompassed  by a claim, that fact alone does not render 
the claim imprecise or indefinite  or otherwise not in compliance with 35 
U.S.C. 112, second paragraph; rather,  the claim is based on an 
insufficient disclosure (35 U.S.C. 112, first paragraph)  and should be 
rejected on that ground. In re Borkowski, 422 F.2d 904, 164 USPQ  642 
(CCPA 1970). If the specification discloses that a particular feature or 
element  is critical or essential to the practice of the invention, 
failure to recite  or include that particular feature or element in the 
claims may provide a basis  for a rejection based on the ground that those 
claims are not supported by  an enabling disclosure. In re Mayhew, 527 
F.2d 1229, 188 USPQ 356 (CCPA 1976).  In Mayhew, the examiner argued that 
the only mode of operation of the process  disclosed in the specification 
involved the use of a cooling zone at a particular  location in the 
processing cycle. The claims were rejected because they failed  to specify 
either a cooling step or the location of the step in the process.  The 
court was convinced that the cooling bath and its location were essential, 
 and held that claims which failed to recite the use of a cooling zone, 
specifically  located, were not supported by an enabling disclosure (35 
U.S.C. 112, first  paragraph). 

        In addition, if a claim is amended to include an invention that is 
 not described in the application as filed, a rejection of that claim 
under  35 U.S.C. 112, first paragraph as being directed to subject matter 
that is  not described in the specification as filed may be appropriate. 
In re Simon,  302 F.2d 737, 133 USPQ 524 (CCPA 1962); In re Panagrossi, 
277 F.2d 181, 125  USPQ 410 (CCPA 1960). In Simon, which involved a 
reissue application containing  claims to a >reaction product of a< 
composition, applicant presented claims  to a >reaction product of a< 
composition comprising the subcombination A+B+C,  whereas the original 
claims and description of the invention were directed  to a composition 
comprising the combination A+B+C+D+E. The court found no significant 
support for the argument that ingredients D+E were not essential to the 
claimed  *>reaction product< and concluded that claims directed to the 
>reaction product  of a< subcombination A+B+C were not described (35 
U.S.C. 112, first paragraph)  in the application as filed. 


2181    Identifying a 35 U.S.C. 112, Sixth Paragraph Limitation [R-1] 

        >The purpose of this section is to set forth guidelines for the 
examination  of 35 U.S.C. 112, sixth paragraph "means or step plus 
function" limitations  in a claim. The Court of Appeals for the Federal 
Circuit, in its en banc decision  In re Donaldson Co., 16 F.3d 1189, 29 
USPQ2d 1845 (Fed. Cir. 1994), decided  that a 
"means-or-step-plus-function" limitation should be interpreted in a 
manner different than patent examining practice had previously dictated. 
The  Donaldson decision affects only the manner in which the scope of a 
"means or  step plus function" limitation in accordance with 35 U.S.C. 
112, sixth paragraph,  is interpreted during examination. Donaldson does 
not directly affect the manner  in which any other section of the patent 
statutes is interpreted or applied. 
        When making a determination of patentability under 35 U.S.C. 102 
or  103, past practice was to interpret a "means or step plus function" 
limitation  by giving it the "broadest reasonable interpretation." Under 
the PTO's long-standing  practice this meant interpreting such a 
limitation as reading on any prior  art means or step which performed the 
function specified in the claim without  regard for whether the prior art 
means or step was equivalent to the corresponding  structure, material or 
acts described in the specification. However, in Donaldson  the Federal 
Circuit stated that: 

Per our holding, the "broadest reasonable interpretation" that an examiner 
 may give means-plus-function language is that statutorily mandated in 
paragraph  six. Accordingly, the PTO may not disregard the structure 
disclosed in the  specification corresponding to such language when 
rendering a patentability  determination. 29 USPQ2d at 1850. 

Thus, examiners must interpret a 35 U.S.C. 112, sixth paragraph "means or 
step  plus function" limitation in a claim as limited to the corresponding 
structure,  materials or acts described in the specification and 
equivalents thereof in  accordance with the following guidelines. 

LANGUAGE FALLING WITHIN 35 U.S.C. 112, SIXTH PARAGRAPH 

        Although there is no magic language that must appear in a claim in 
 order for it to fall within the scope of 
35 U.S.C. 112, sixth paragraph, it must be clear that the element in the 
claim  is set forth, at least in part, by the function it performs as 
opposed to the  specific structure, material, or acts that perform the 
function. Limitations  that fall within the scope of 35 U.S.C. 112, sixth 
paragraph include: 
(1)   a jet driving device so constructed and located on the rotor as to 
drive  the rotor . . . ["means" unnecessary]. The term "device" coupled 
with a function  is a proper definition of structure in accordance with 
the last paragraph of  35 U.S.C. 112. The addition of the words "jet 
driving" to the term "device"  merely renders the latter more definite and 
specific. Ex parte Stanley, 121  USPQ 621 (Bd. App. 1958); 

(2)   "printing means" and "means for printing" which would have the same 
connotations.  Ex parte Klumb, 159 USPQ 694 (Bd. App. 1967). However, the 
terms "plate" and  "wing," as modifiers for the structureless term 
"means," specify no function  to be performed, and do not fall under the 
last paragraph of 35 U.S.C. 112; 
(3)   force generating means adapted to provide . . . . De Graffenreid v. 
U.S.,  20 Ct. Cl. 458, 16 USPQ2d 1321 (Ct. Cl. 1990); 

(4)   call cost register means, including a digital display for providing 
a  substantially instantaneous display for . . . . Intellicall Inc. v. 
Phonometrics,  Inc., 952 F.2d 1384, 21 USPQ2d 1383 (Fed. Cir. 1992); 

(5)   reducing the coefficient of friction of the resulting film [step 
plus  function; "step" unnecessary], In re Roberts, 470 F.2d 1399, 176 
USPQ 313 (CCPA  1973); and 

(6)   raising the pH of the resultant pulp to about 5.0 to precipitate . . 
 . . Ex parte Zimmerley, 153 USPQ 367 (Bd. App. 1966). 

In the event that it is unclear whether the claim limitation falls within 
the  scope of 35 U.S.C. 112, sixth paragraph, a rejection under 35 U.S.C. 
112, second  paragraph may be appropriate. 

        SINGLE MEANS CLAIMS 

        Donaldson does not affect the holding of In re Hyatt, 708 F.2d 
712,  218 USPQ 195 (Fed. Cir. 1983) to the effect that a single means 
claim does  not comply with the enablement requirement of 35 U.S.C. 112, 
first paragraph.  As Donaldson applies only to an interpretation of a 
limitation drafted to correspond  to 35 U.S.C. 112, sixth paragraph, which 
by its terms is limited to "an element  in a claim to a combination," it 
does not affect a limitation in a claim which  is not directed to a 
combination.< 


2182    Scope of the Search and Identification of the Prior Art [R-1] 

        >As noted in MPEP # 2181, in In re Donaldson Co., 
16 F.3d 1189, 29 USPQ2d 1845 (Fed. Cir. 1994) the Federal Circuit 
recognized  that it is important to retain the principle that claim 
language should be  given its broadest reasonable interpretation. This 
principle is important because  it helps insure that the statutory 
presumption of validity attributed to each  claim of an issued patent is 
warranted by the search and examination conducted  by the examiner. It is 
also important from the standpoint that the scope of  protection afforded 
by patents issued prior to Donaldson are not unnecessarily  limited by the 
latest interpretation of this statutory provision. Finally,  it is 
important from the standpoint of avoiding the necessity for a patent 
specification to become a catalogue of existing technology. A patent 
specification  need not teach, and preferably omits, what is well known in 
the art. Hybritech  Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 
1384, 231 USPQ 81, 94 (Fed.  Cir. 1986). 

        The Donaldson decision thus does not substantially alter examining 
 practice and procedure relative to the scope of the search. Both before 
and  after Donaldson, the application of a prior art reference to a means 
or step  plus function limitation requires that the prior art element 
perform the identical  function specified in the claim. However, if a 
prior art reference teaches  identity of function to that specified in a 
claim, then under 
Donaldson an examiner carries the initial burden of proof for showing that 
 the prior art structure or step is the same as or equivalent to the 
structure,  material, or acts described in the specification which has 
been identified  as corresponding to the claimed means or step plus function. 

        The "means or step plus function" limitation should be interpreted 
 in a manner consistent with the specification disclosure. If the 
specification  defines what is meant by the limitation for the purposes of 
the claimed invention,  the examiner should interpret the limitation as 
having that meaning. If no  definition is provided, some judgment must be 
exercised in determining the  scope of the limitation.< 


2183    Making a Prima Facie Case of Equivalence [R-1] 


        >If the examiner finds that a prior art element performs the 
function  specified in the claim, and is not excluded by any explicit 
definition provided  in the specification for an equivalent, the examiner 
should infer from that  finding that the prior art element is an 
equivalent, and should then conclude  that the claimed limitation is 
anticipated by the prior art element. The burden  then shifts to applicant 
to show that the element shown in the prior art is  not an equivalent of 
the structure, material or acts disclosed in the application.  In re 
Mulder, 716 F.2d 1542, 219 USPQ 189 (Fed. Cir. 1983). No further analysis 
of equivalents is  required of the examiner until applicant disagrees with 
the examiner's conclusion,  and provides reasons why the prior art element 
should not be considered an  equivalent. See also, In re Walter, 618 F.2d 
758, 768, 205 USPQ 397, 407-08 
(C.C.P.A. 1980) (a case treating 35 U.S.C. 112, sixth paragraph, in the 
context  of a determination of statutory subject matter and noting "If the 
functionally-defined  disclosed means and their equivalents are so broad 
that they encompass any  and every means for performing the recited 
functions . . . the burden must  be placed on the applicant to demonstrate 
that the claims are truly drawn to  specific apparatus distinct from other 
apparatus capable of performing the  identical functions"); In re 
Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226,  229 (C.C.P.A. 1971) (a 
case in which the CCPA treated as improper a rejection  under 35 U.S.C. 
112, second paragraph, of functional language, but noted that  "where the 
Patent Office has reason to believe that a functional limitation  asserted 
to be critical for establishing novelty in the claimed subject matter 
may, in fact, be an inherent characteristic of the prior art, it possesses 
 the authority to require the applicant to prove that the subject matter 
shown  to be in the prior art does not possess the characteristics relied 
on"); and  In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980) (a case 
indicating  that the burden of proof can be shifted to the applicant to 
show that the subject  matter of the prior art does not possess the 
characteristic relied on whether  the rejection is based on inherency 
under 35 U.S.C. 102 or obviousness under  35 U.S.C. 103). 

        See MPEP # 2184 for the factors to be considered when determining 
whether  the applicant has successfully 

met the burden of proving that the prior art element is not equivalent to 
the  structure, material or acts described in the applicant's 
specification. 
IF NONEQUIVALENCE SHOWN, EXAMINER MUST CONSIDER OBVIOUSNESS 

        However, even where the applicant has met that burden of proof and 
 has shown that the prior art element is not equivalent to the structure, 
material  or acts described in the applicant's specification, the examiner 
must still  make a 35 U.S.C. 103 analysis to determine if the claimed 
means or step plus  function is obvious from the prior art to one of 
ordinary skill in the art.  Thus, while a finding of nonequivalence 
prevents a prior art element from anticipating  a means or step plus 
function limitation in a claim, it does not prevent the  prior art element 
from rendering the claim limitation obvious to one of ordinary  skill in 
the art. Because the exact scope of an "equivalent" may be uncertain,  it 
would be appropriate to apply a 35 U.S.C. 102/103 rejection where the 
balance  of the claim limitations are anticipated by the prior art relied 
on. A similar  approach is authorized in the case of product-by-process 
claims because the  exact identity of the claimed product or the prior art 
product cannot be determined  by the examiner. In re Brown, 450 F.2d 531, 
173 USPQ 685 (CCPA 1972). In addition,  although it is normally the best 
practice to rely on only the best prior art  references in rejecting a 
claim, alternative grounds of rejection may be appropriate  where the 
prior art shows elements that are different from each other, and 
different from the specific structure, material or acts described in the 
specification,  yet perform the function specified in the claim.< 


2184    Determining Whether an Applicant Has Met the Burden of Proving 
Nonequivalence After a Prima Facie Case Is Made [R-1] 

        >If the applicant disagrees with the inference of equivalence 
drawn  from a prior art reference, the applicant may provide reasons why 
the applicant  believes the prior art element should not be considered an 
equivalent 
to the specific structure, material or acts disclosed in the 
specification.  Such reasons may include, but are not limited to: 

        (1)   teachings in the specification that particular prior art is 
not  equivalent, 

        (2)   teachings in the prior art reference itself that may tend to 
 show nonequivalence, or 

        (3)   Rule 132 affidavit evidence of facts tending to show 
nonequivalence. 
TEACHINGS IN APPLICANT'S SPECIFICATION 

        When the applicant relies on teachings in applicant's own 
specification,  the examiner must make sure that the applicant is 
interpreting the "means or  step plus function" limitation in the claim in 
a manner which is consistent  with the disclosure in the specification. If 
the specification defines what  is meant by "equivalents" to the disclosed 
embodiments for the purpose of the claimed means or step plus function, 
the examiner should interpret the limitation as having that meaning. If no 
 definition is provided, some judgment must be exercised in determining 
the  scope of "equivalents." Generally, an "equivalent" is interpreted as 
embracing  more than the specific elements described in the specification 
for performing  the specified function, but less than any element that 
performs the function  specified in the claim. To interpret "means plus 
function" limitations as limited  to a particular means set forth in the 
specification would nullify the provisions  of 35 U.S.C. 112 requiring 
that the limitation shall be construed to cover  the structure described 
in the specification and equivalents thereof. D.M.I.,  Inc. v. Deere & 
Co., 755 F.2d 1570, 1574, 
225 USPQ 236, 238 (Fed. Cir. 1985). 

        The scope of equivalents embraced by a claim limitation is 
dependent  on the interpretation of an "equivalent." The interpretation 
will vary depending  on how the element is described in the supporting 
specification. The claim  may or may not be limited to particular 
structure, material or acts (e.g.,  steps) as opposed to any and all 
structure, material or acts performing the  claimed function, depending on 
how the specification treats that question. 

        If the disclosure is so broad as to encompass any and all 
structure,  material or acts for performing the claimed function, the 
claims must be read  accordingly when determining patentability. When this 
happens the limitation  otherwise provided by "equivalents" ceases to be a 
limitation on the scope  of the claim in that an equivalent would be any 
structure, material or act  other than the ones described in the 
specification that perform the claimed  function. For example, this 
situation will often be found in cases where (1)  the claimed invention is 
a combination of elements, one or more of which are  selected from 
elements that are old, per se, or (2) apparatus claims are treated  as 
indistinguishable from method claims. See, for example, In re Meyer, 688 
F.2d 789, 
215 USPQ 193 (1982); In re Abele, 684 F.2d 902, 909, 
214 USPQ 682, 688 (C.C.P.A. 1982); In re Walter, 618 F.2d 758, 767, 205 
USPQ  397, 406-07 (C.C.P.A. 1980); In re Maucorps, 609 F.2d 481, 203 USPQ 
812 (C.C.P.A.  1979); In re Johnson, 589 F.2d 1070, 200 USPQ 199 (C.C.P.A. 
1978); and In re  Freeman, 573 F.2d 1237, 1246, 197 USPQ 464, 471 
(C.C.P.A. 1978). 

        On the other end of the spectrum, the "equivalents" limitation as 
applied  to a claim may also operate to constrict the claim scope to the 
point of covering  virtually only the disclosed embodiments. This can 
happen in circumstances  where the specification describes the invention 
only in the context of a specific  structure, material or act that is used 
to perform the function specified in  the claim. 

FACTORS TO BE CONSIDERED IN DECIDING EQUIVALENCE 

        When deciding whether an applicant has met the burden of proof 
with  respect to showing nonequivalence of a prior art element that 
performs the  claimed function, the following factors may be considered. 
First, unless an  element performs the identical function specified in the 
claim, it cannot be  an equivalent for the purposes of 35 U.S.C. 112, 
sixth paragraph. Pennwalt  Corp. v. 
Durand-Wayland, Inc., 833 F.2d 931, 4 USPQ2d 1737 (Fed. Cir. 1987), cert. 
denied,  484 U.S. 961 (1988). 

        Second, while there is no litmus test for an "equivalent" that can 
 be applied with absolute certainty and predictability, there are several 
indicia  that are sufficient to support a conclusion that one element is 
or is not an  "equivalent" of a different element in the context of 
35 U.S.C. 112, sixth paragraph. Among the indicia that will support a 
conclusion  that one element is or is not an equivalent of another are: 

        (1)   Whether the prior art element performs the function 
specified  in the claim in substantially the same way, and produces 
substantially the  same results as the corresponding element disclosed in 
the specification. Lockheed  Aircraft Corporation v. United States, 
193 USPQ 449, 461 (Ct. Cl. 1977). The concepts of equivalents as set forth 
 in Graver Tank & Mfg. Co. v. Linde Air Products, 339 U.S. 605, 85 USPQ 
328 
(1950) are relevant to any "equivalents" determination. Polumbo v. Don-Joy 
 Co., 762 F.2d 969, 975, n. 4, 226 USPQ 5, 8-9, n. 4 (Fed. Cir. 1985). 
        (2)   Whether a person of ordinary skill in the art would have 
recognized  the interchangeability of the element shown in the prior art 
for the corresponding  element disclosed in the specification. Lockheed 
Aircraft Corporation v. United  States, 193 USPQ 449, 461 (Ct. Cl. 1977); 
Data Line Corp. v. Micro Technologies,  Inc., 813 F.2d 1196, 1 USPQ2d 2052 
(Fed. Cir. 1987). 

        (3)   Whether the prior art element is a structural equivalent of 
the  corresponding element disclosed in the specification being examined. 
In re  Bond, 910 F.2d 831, 15 USPQ2d 1566 (Fed. Cir. 1990). That is, the 
prior art  element performs the function specified in the claim in 
substantially the same  manner as the function is performed by the 
corresponding element described  in the specification. 

        (4)   Whether the structure, material or acts disclosed in the 
specification  represents an insubstantial change which adds nothing of 
significance to the  prior art element. Valmont Industries. Inc. v. Reinke 
Manufacturing Co. Inc.,  983 F.2d 1039, 25 USPQ2d 1451 (Fed. Cir. 1993). 

        These examples are not intended to be an exhaustive list of the 
indicia  that would support a finding that one element is or is not an 
equivalent of  another element for the purposes of 35 U.S.C. 112, sixth 
paragraph. A finding  according to any of the above examples would 
represent a sufficient, but not  the only possible, basis to support a 
conclusion that an element is or is not  an equivalent. There could be 
other indicia that also would support the conclusion. 
MERE ALLEGATIONS OF NONEQUIVALENCE ARE NOT SUFFICIENT 

        In determining whether arguments or 37 CFR 1.132 evidence 
presented  by an applicant are persuasive that the element shown in the 
prior art is not  an equivalent, the examiner should consider and weigh as 
many of the above-indicated  or other indicia as are presented by 
applicant, and should determine whether,  on balance, the applicant has 
met the burden of proof to show nonequivalence.  However, under no 
circumstance should an examiner accept as persuasive a bare  statement or 
opinion that the element shown in the prior art is not an equivalent 
embraced by the claim limitation. Moreover, if an applicant argues that 
the  "means" or "step" plus function language in a claim is limited to 
certain specific  structural or additional functional characteristics (as 
opposed to "equivalents"  thereof) where the specification does not 
describe the invention as being only  those specific characteristics, the 
claim should not be allowed until the claim  is amended to recite those 
specific structural or additional functional characteristics.  Otherwise, 
a claim could be allowed having broad functional language which,  in 
reality, is limited to only the specific structure or steps disclosed in 
the specification. This would be contrary to public policy of granting 
patents  which provide adequate notice to the public as to a claim's true 
scope. 
APPLICANT MAY AMEND CLAIMS 

        Finally, as in the past, applicant has the opportunity during 
proceedings  before the Office to amend the claims so that the claimed 
invention meets all  the statutory criteria for patentability. An 
applicant may choose to amend  the claim by further limiting the function 
so that there is no longer identity  of function with that taught by the 
prior art element, or the applicant may  choose to replace the claimed 
means plus function limitation with specific  structure, material or acts 
that are not described in the prior art.< 

2185    Related Issues Under 35 U.S.C. 112, First   or Second Paragraphs 
[R-1] 

        >Interpretation of claims as set forth in MPEP 
# 2181 may create some uncertainty as to what applicant regards as the 
invention.  If this issue arises, it should be addressed in a rejection 
under 35 U.S.C.  112, second paragraph. While 35 U.S.C. 112, sixth 
paragraph permits a particular  form of claim limitation, it cannot be 
read as creating an exception either  to the description, enablement or 
best mode requirements of the 1st paragraph  or the definiteness 
requirement of the second paragraph of 35 U.S.C. 112. In  re Knowlton, 481 
F.2d 1357, 178 USPQ 486 (CCPA 1973). 

        If a "means or step plus function" limitation recited in a claim 
is  not supported by corresponding structure, material or acts in the 
specification  disclosure, the following rejections should be considered: 

        (1)   under 35 U.S.C. 112, first paragraph, as not being supported 
 by an enabling disclosure because the person skilled in the art would not 
know  how to make and use the invention without a description of elements 
to perform  the function. The description of an apparatus with block 
diagrams describing  the function, but not the structure, of the apparatus 
is not fatal under the  enablement requirement of 35 U.S.C. 112, first 
paragraph, as long as the structure  is conventional and can be determined 
without an undue amount of experimentation.  In re Ghiron, 442 F.2d 985, 
991, 169 USPQ 723, 727 (CCPA 1971); 

        (2)   under 35 U.S.C. 112, second paragraph, as being indefinite 
because  the element or step is not defined in the specification by 
corresponding structure,  material or acts; and 

        (3)   under 35 U.S.C. 102 or 103 where the prior art anticipates 
or  renders obvious the claimed subject matter including the means or step 
that  performs the function specified in the claim, the theory being that 
since there  is no corresponding structure, etc. in the specification to 
limit the means  or step plus function limitation, an equivalent is any 
element that performs  the specified function.< 


2186    Avoid Confusion With the Doctrine of Equivalents [R-1] 


        >An "equivalent" for the purposes of 35 U.S.C. 112, sixth 
paragraph,  should not be confused with the doctrine of equivalents. The 
doctrine of equivalents,  most often associated with Graver Tank & Mfg. 
Co. v. Linde Air Products, 339  U.S. 605, 85 USPQ 328 (1950), is sometimes 
applied to do equity among the parties  before the court in an 
infringement action involving an issued patent. The  doctrine typically 
involves a three-part inquiry - whether an accused device  performs 
substantially the same function, in substantially the same way, to  obtain 
substantially the same result as the claimed invention. 

        35 U.S.C. 112, sixth paragraph limits the scope of the broad 
language  of "means or step plus function" limitations, in a claim to a 
combination,  to the structures, materials and acts described in the 
specification and equivalents  thereof. The doctrine of equivalents 
equitably expands exclusive patent rights  beyond the literal scope of a 
claim. Valmont Industries Inc. v. Reinke Manufacturing  Co., Ind., 983 
F.2d 1039, 1043, 1044, 25 USPQ2d 1451, 1455 (Fed. Cir. 1993). 
Accordingly, decisions involving the doctrine of equivalents should not 
unduly  influence a determination under 35 U.S.C. 112, sixth paragraph 
during ex parte  examination.< 


Contents 

2201        Introduction 

2202        Citation of Prior Art 

2203        Persons Who May Cite Prior Art 

2204        Time for Filing Prior Art Citation 

2205        Content of Prior Art Citation 

2206        Handling of Prior Art Citation 

2207        Entry of Court Decision in Patent File 

2208        Service of Citation on Patent Owner 

2209        Reexamination 

2210        Request for Reexamination 

2211        Time for Requesting Reexamination 

2212        Persons Who May File a Request 

2213        Representative of Requester 

2214        Content of Request 

2215        Fee for Requesting Reexamination 

2216        Substantial New Question of Patentability 

2217        Statement Applying Prior Art 

2218        Copies of Prior Art 

2219        Copy of Printed Patent 

2220        Certificate of Service 

2221        Amendments Included in Request by Patent Owner 

2222        Address of Patent Owner 

2223        Withdrawal ** of Attorney >or Agent< 

2224        Correspondence 

2225        Untimely Paper Filed Prior to Order 

2226        Initial Processing of Request 

2227        Incomplete Request 

2228        Informal Request 

2229        Notice of Request in Official Gazette 

2230        Constructive Notice to Patent Owner 

2231        Processing of Request Corrections 

2232        Public Access 

2233        Processing in Examining Group 

2234        Entry of Amendments 

2235        Record Systems 

2236        Assignment of Reexamination 

2237        Transfer Procedure 

2238        Time Reporting 

2239        Reexamination Ordered at the Commissioner's Initiative 
2240        Decision on Request 

2241        Time for Deciding Request 

2242        Criteria for Deciding Request 

2243        Claims Considered in Deciding Request 

2244        Prior Art on Which the Determination Is Based 

2245        Processing of Decision 

2246        Decision Ordering Reexamination 

2247        Decision on Request for Reexamination Denied 

2248        Petition From Denial of Request 

2249        Patent Owner's Statement 

2250        Amendment by Patent Owner 

2250.01     Correction of Patent Drawings 

2251        Reply by Requester 

2252        Consideration of Statement and Reply 

2253        Consideration by Examiner 

2254        Conduct of Reexamination Proceedings 

2255        Who Reexamines 

2256        Prior Art Patents and Printed Publications Considered by 
            Examiner in Reexamination 

2257        Listing of Prior Art 

2258        Scope of Reexamination 

2259        Collateral Estoppel in Reexamination Proceedings 

2260        Office Actions 

2260.01     Dependent Claims 

2261        Special Status for Action 

2262        Form and Content of Office Action 

2263        Time for Response 

2264        Mailing of Office Action 

2265        Extension of Time 

2266        Responses 

2267        Handling of Inappropriate or Untimely Filed Papers 

2268        Petition for Entry of Late Papers 

2269        Reconsideration 

2270        Clerical Handling 

2271        Final Action 

2272        After Final Practice 

2273        Appeal in Reexamination 

2274        Appeal Brief 

2275        Examiner's Answer 

2276        Oral Hearing 

2277        Board of Patent Appeals and Interferences Decision 

2278        Action Following Decision 

2279        Appeal to Courts 

2280        Information Material to Patentability in Reexamination 
            Proceeding 

2281        Interviews In Reexamination Proceedings 

2282        Notification of Existence of Prior or Concurrent 
            Proceedings and Decisions Thereon 

2283        Multiple Copending Reexamination Proceedings 

2284        Copending Reexamination and Interference 
            Proceedings 

2285        Copending Reexamination and Reissue Proceedings 

2286        Reexamination and Litigation Proceedings 

2287        Conclusion of Reexamination Proceeding 

2288        Issuance of Reexamination Certificate 

2289        Reexamination Review 

2290        Format of Certificate 

2291        Notice of Certificate Issuance in Official Gazette 

2292        Distribution of Certificate 

2293        Intervening Rights 

2294        Terminated Reexamination Files 


2201    Introduction 


        Statutory basis for citation of prior patents or printed 
publications  in patent files and reexamination of patents 



became available on July 1, 1981, as a result of new sections 301-307 of 
title  35 United States Code which were added by Public Law 96-517 enacted 
on December  12, 1980. The rules of practice in patent cases relating to re- 

examination were initially promulgated on April 30, 1981, at 46 Fed. Reg. 
24179-24180  and on May 29, 1981, at 46 Fed. Reg. 29176-29187. 



A22010001.bmp 



A22010001.end 



        This chapter is intended to be primarily a guide for Patent and 
Trademark  Office personnel on the processing of prior art citations and 
reexamination  requests. Secondarily, it is to also serve as a guide on 
the formal requirements  for filing such documents in the Office. 

        The flowchart shows the general provisions of both the citation of 
 prior art and reexamination proceedings including reference to the 
pertinent  rule sections. 


2202    Citation of Prior Art 


35 U.S.C. 301.          Citation of prior art. 

        Any person at any time may cite to the Office in writing prior art 
 consisting of patents or printed publications which that person believes 
to  have a bearing on the patentability of any claim of a particular 
patent. If  the person explains in writing the pertinency and manner of 
applying such prior  art to at least one claim of the patent, the citation 
of such prior art and  the explanation thereof will become a part of the 
official file of the patent.  At the written request of the person citing 
the prior art, his or her identity  will be excluded from the patent file 
and kept confidential. 

37 CFR 1.501.     Citation of prior art in patent files. 

        (a)   At any time during the period of enforceability of a patent, 
 any person may cite to the Patent and Trademark Office in writing prior 
art  consisting of patents or printed publications which that person 
states to be  pertinent and applicable to the patent and believes to have 
a bearing on the  patentability of any claim of a particular patent. If 
the citation is made  by the patent owner, the explanation of pertinency 
and applicability may include  an explanation of how the claims differ 
from the prior art. Citations by the  patent owner under w 1.555 and by a 
reexamination requester under either w  1.510 or w 1.535 will be entered 
in the patent file during a reexamination  proceeding. The entry in the 
patent file of citations submitted after the date  of an order to 
reexamine pursuant to 
w 1.525 by persons other than the patent owner, or a reexamination 
requester  under either w 1.510 or w 1.535, will be delayed until the 
reexamination proceedings  have been terminated. 

        (b)   If the person making the citation wishes his or her identity 
 to be excluded from the patent file and kept confidential, the citation 
papers  must be submitted without any identification of the person making 
the submission. 
        (c)   Citation of patents or printed publications by the public in 
 patent files should either (1) reflect that a copy of the same has been 
mailed  to the patent owner at the address as provided for in w 1.33(c); 
or in the  event service is not possible (2) be filed with the Office in 
duplicate. 
***** 

        Prior art in the form of patents or printed publications may be 
cited  to the Patent and Trademark Office for placement into the patent 
files. Such  citations may be made without payment of a fee. Citations of 
prior art may  be made separate from and without a request for reexamination. 

        The basic purpose for citing prior art in patent files is to 
inform  the patent owner and the public in general that such patents or 
printed publications  are in existence and should be considered when 
evaluating the validity of the  patent claims. Placement of citations in 
the patent file along with copies  of the cited prior art will also ensure 
consideration thereof during any subsequent  reissue or reexamination 
proceeding. 

        The citation of prior art provisions of 35 U.S.C. 301 and 37 CFR 
1.501  do not apply to citations or protests filed in pending 
applications. 

2203    Persons Who May Cite Prior Art 


        The patent owner or any member of the public may submit prior art 
citations  of patents or printed publications to the Patent and Trademark 
Office. 35 U.S.C.  301 states that "Any person at any time may cite to the 
Office . . . ." 
        "Any person" may be corporate and governmental entities as well as 
 individuals. 

        If a person citing prior art desires his or her identity to be 
kept  confidential, such a person need not identify himself or herself. 
        "Any person" includes patentees, licensees, reexamination 
requesters,  real parties in interest, persons without a real interest, 
and persons acting  for real parties in interest without a need to 
identify the real party of interest. 
        The statute indicates that "at the written request of the person 
citing  the prior art, his or her identity will be excluded from the 
patent file and  kept confidential". Although an attempt will be made to 
exclude any such papers  from the public files, since the review will be 
mainly clerical in nature,  complete assurance of such exclusion cannot be 
given. Persons citing art who  desire to remain confidential are, 
therefore advised to not identify themselves  anywhere in their papers. 

        Confidential citations should include at least an unsigned 
statement  indicating that the patent owner has been sent a copy of the 
citation papers.  In the event that it is not possible to serve a copy on 
the patent owner, a  duplicate copy should be filed with the Office. 

        Patent examiners should not, at their own initiative, place or 
forward  for placement in the patent file any citations of prior art. 
Patent examiners  are charged with the responsibility of making decisions 
as to patentability  for the Commissioner. Any activity by examiners which 
would appear to indicate  that patent claims are not patentable, outside 
of those cases pending before  them, is considered to be inappropriate. 




2204    Time for Filing Prior Art Citation 


        Citations of prior art may be filed "at any time" under 
35 U.S.C. 301. However, this period has been defined by rule (37 CFR 
1.501(a))  to be "any time during the period of enforceability of a 
patent". The period  of enforceability is the length of the term of the 
patent (normally 17 years for a utility patent) plus the 6 years under the 
statute of limitations  for bringing an infringement action. In addition, 
if litigation is instituted  within the period of the statute of 
limitations, citations may be submitted  after the statute of limitations 
has expired, as long as the patent is still  enforceable against someone. 
Also, while citations of prior art may be filed  at any time during the 
period of enforceability of the patent, citations submitted  after the 
date of any order to reexamine by persons other than the patent owner,  or 
a reexamination requester who also submits the fee and other documents 
required  under 37 CFR 1.510, or in a response under 37 CFR 1.535, will 
not be entered  into the patent file until the pending reexamination 
proceeding has been terminated 
(37 CFR 1.501(a)). Therefore, if prior art cited by a third party is to be 
 considered without the payment of another reexamination fee, it must be 
presented  before reexamination is ordered. 

        The purpose of this rule is to prevent harassment of the patent 
owner  due to frequent submissions of prior art citations during 
reexamination proceedings. 

2205    Content of Prior Art Citation 


        The type of prior art which may be submitted under 
35 U.S.C. 301 is limited to "written prior art consisting of patents or 
printed  publications". 

        An explanation is required of how the person submitting the prior 
art  considers it to be pertinent and applicable to the patent, as well as 
an explanation  why it is believed that the prior art has a bearing on the 
patentability of  any claim of the patent. Citations of prior art by 
patent owners may also include  an explanation of how the claims of the 
patent differ from the prior art cited. 
        It is preferred that copies of all the cited prior patents or 
printed  publications and any necessary English translation be included so 
that the  value of the citations may be readily determined by persons 
inspecting the  patent files and by the examiner during any subsequent 
reexamination proceeding. 
        All prior art citations filed by persons other than the patent 
owner  must either indicate that a copy of the citation has been mailed 
to, or otherwise  served on, the patent owner at the correspondence 
address as defined under  37 CFR 1.33(c), or if for some reason service on 
the patent owner is not possible,  a duplicate copy of the citation must 
be filed with the Office along with an  explanation as to why the service 
was not possible. The most recent address  of the attorney of record may 
be obtained from the Office's register of registered  patent attorneys and 
agents maintained by the Office of Enrollment and Discipline  pursuant to 
37 CFR 10.5 and 10.11(a). 

        All citations submitted should identify the patent in which the 
citation  is to be placed by the patent number, issue date, and patentee. 

        A cover sheet with an identification of the patent should have 
firmly  attached to it all other documents 
relating to the citation so that the documents will 
not become separated during processing. The documents should also contain, 
 or have placed thereon, an identification of the patent for which they 
are  intended. 

        Affidavits or declarations relating to the prior art documents 
submitted  which explain the contents or pertinent dates in more detail 
may accompany  the citation. 

        A commercial success affidavit tied in with a particular prior art 
 document may also be acceptable. 

        No fee is required for the submission of citations under 37 CFR 
1.501. 
        A prior art citation is limited to the citation of patents and 
printed  publications and an explanation of the pertinency and 
applicability of the  patents and printed publications. This may include 
an explanation by the patent  owner as to how the claims differ from the 
prior art. It may also include affidavits  and declarations. The prior art 
citation cannot include any issue which is  not directed to patents and 
printed publications. Thus, for example, a prior  art citation cannot 
include a statement as to the claims violating 35 U.S.C.  112, a statement 
as to the public use of the claimed invention, or a statement  as to the 
conduct of the patent owner.  A prior art citation must be directed  to 
patents and printed publications and cannot discuss what the patent owner 
did, or failed to do, with respect to submitting and/or describing patents 
 and printed publications, because that would be a statement as to the 
conduct  of the patent owner. The citation 
also should not contain argument and discussion of 




references previously treated in the prosecution of the invention which 
matured  into the patent or references previously treated in a 
reexamination proceeding  as to the patent. 

        If the prior art citation contains even one issue not directed to 
patents  and printed publications, it should not be entered into the 
patent file, despite  the fact that it 


may otherwise contain a complete submission of patents  and printed 
publications  with an explanation of the pertinency and applicability. 
Rather, the prior  art citation should be returned to the sender as 
described in MPEP # 2206. 

        Examples of letters submitting prior art under 
37 CFR 1.501 follow. 



 IN THE UNITED STATES 
PATENT AND TRADEMARK OFFICE 

In re patent of 

Joseph Smith 

Patent No. 4,444,444 

Issued: July 7, 1977 

For: Cutting Tool 

Submission of Prior Art Under 37 CFR 1.501 

Hon. Commissioner of Patents and Trademarks 

Washington, D. C. 20231 

Sir: 

The undersigned herewith submits in the above identified patent the 
following  prior art (including copies thereof) which is pertinent and 
applicable to the  patent and is believed to have a bearing on the 
patentability of at least claims  1 - 3 thereof: 

Weid et al  U.S       2,585,416       April 15,1933 

McGee     U.S     2,722,794   May 1, 1934 

Paulk et al   U.S 3,625,291   June 16, 1936 

More particularly, each of the references discloses a cutting tool 
strikingly  similar to the device of Smith in having pivotal handles with 
cutting blades  and a pair of dies. It is felt that each of the references 
has a bearing on  the patentability of claims 1-3 of the Smith patent. 

Insofar as claims 1 and 2 are concerned, each of the references clearly 
anticipates  the claimed subject matter under 35 U.S.C 102. 

As to claim 3, the differences between the subject matter of this claim 
and  the cutting tool of Weid et al are shown in the device of Paulk et 
al. Further,  Weid et al suggests that different cutting blades can be 
used in their device.  A person of ordinary skill in the art at the time 
the invention was made would  have been led by the suggestion of Weid et 
al to the cutting blades of Paulk  et al as obvious substitutes for the 
blades of Weid et al. 



Respectfully submitted, 

(Signed) 



John Jones 



Certificate of Service 

I hereby certify on this first day of June 1982, that a true and correct 
copy  of the foregoing "Submission of Prior Art" was mailed by first-class 
mail,  postage paid, to: 

        Joseph Smith 

        555 Emery Lane 

        Arlington, VA 22202 

(Signed) 



John Jones 



IN THE UNITED STATES 
PATENT AND TRADEMARK OFFICE 

In re patent of 

Joseph Smith 

Patent No. 4,444,444 

Issued: July 7, 1977 

For: Cutting Tool 

Submission of Prior Art Under 37 CFR 1.501 

Hon. Commissioner of Patents and Trademarks 

Washington, D. C. 20231 

Sir: 

The undersigned herewith submits in the above identified patent the 
following 



prior art (including copies thereof) which is pertinent and applicable to 
the  patent and is believed to have a bearing on the patentability of at 
least claims  1 - 3 thereof: 

Weid et al  U.S       2,585,416       April 15,1933 

McGee     U.S     2,722,794   May 1, 1934 

Paulk et al   U.S 3,625,291   June 16, 1936 

More particularly, each of the references discloses a cutting tool 
strikingly  similar to the device of Smith in having pivotal handles with 
cutting blades  and a pair of dies. While it is felt that each of the 
references has a bearing  on the patentability of claims 1-3 of the Smith 
patent, the subject matter  claimed differs from the references and is 
believed patentable thereover 
Insofar as claims 1 and 2 are concerned, none of the references show the 
particular  dies claimed and the structure of these claimed dies would not 
have been obvious  to a person of ordinary skill in the art at the time 
the invention was made. 
As to claim 3, while the cutting blades required by this claim are shown 
in  Paulk et al, the remainder of the claimed structure is found only in 
Weid et  al. A person of ordinary skill in the art at the time the 
invention was made  would not have found it obvious to substitute the 
cutting blades of Paulk et  al for those of Weid et al. In fact, the 
disclosure of Weid et al would lead  a person of ordinary skill in the art 
away from the use of cutting blades such  as shown in Paulk et al. 

The reference to McGee, while generally similar, lacks the particular 
cooperation  between the elements which is specifically set forth in each 
of claims 1-3. 
Respectfully submitted, 

(Signed) 



William Green 

Attorney for Patent Owner 




2206    Handling of Prior Art Citation 


        Prior art citations received in the Patent and Trademark Office 
will  be forwarded by the Correspondence and Mail Division to the 
Reexamination Preprocessing  Unit for handling. 

        If the prior art citation relates to a patent currently undergoing 
 reexamination, the Reexamination Preprocessing Unit should promptly 
forward  the prior art citation to the examining group assigned with the 
reexamination  proceeding. 

        It is the responsibility of the Reexamination Preprocessing Unit 
personnel  where no reexamination proceeding is present, or the examining 
group personnel  where a reexamination proceeding is present, to 
immediately determine whether  a citation forwarded to them meets the 
requirements of the law and rules and  to enter it into the patent file at 
the appropriate time if it is proper. 
        If a proper citation is filed after the date of an order for 
reexamination,  the citation is retained in the examining group by the 
group's reexamination  clerk until the reexamination is terminated. Note 
37 CFR 1.501(a) and MPEP  w 2294. At that time, the citations are 
processed for placement in the patent  file. Citations filed after the 
date of an order for reexamination will not  be considered by the examiner 
during the reexamination. 

 CITATION QUALIFIES FOR ENTRY UNDER 
37 CFR 1.501 

I.  Citations by third party 

A. Prior to Order in Any Pending Reexamination Proceeding 

        If the citation is proper (i.e., limited to patents and printed 
publications)  and is filed prior to an order in a reexamination 
proceeding, it should be  immediately entered into the patent file. If the 
citation includes an indication  of service on the patent owner, the 
citation is merely timely entered and no  notice of such entry is 




sent to any party.  If the citation does not include an indication of 
service,  the patent owner should be notified that a citation of prior art 
has been entered  into the patent file. If a duplicate copy of the 
citation was filed, the duplicate  copy should be sent to the patent owner 
along with the notification. If no  duplicate copy is present, no copy 
will be sent with the notification. Wording  similar to the following 
should be used: 

        A citation of prior art under 35 U.S.C. 301 and 
37 CFR 1.501 has been filed on ____ in your patent number ____ 
entitled________. 
        This notification is being made to inform you that the citation of 
 prior art has been placed in the file wrapper of the above identified 
patent. 
        The person submitting the prior art: 

        1. [  ] was not identified 

        2. [  ] is confidential 

        3. [  ] is ____________. 

B.  After the Order in Any Pending Reexamination 
Proceeding 

        If the citation is proper but is filed after an order for 
reexamination  in a pending reexamination, the citation is not entered at 
the time because  of the ongoing reexamination. The patent owner and 
sender (if known) should  be alerted of this fact. Such notification is impor- 

tant to enable the patent owner to consider submitting the prior art under 
 37 CFR 1.555 during the reexamination. Such notification will also enable 
the  third party sender to consider the desirability of filing a separate 
request  for reexamination. If the citation does not include service of a 
copy on the  patent owner and a duplicate copy is submitted, the duplicate 
copy should be  sent to the patent owner along with the notification. If a 
duplicate copy is  not present, no copy will accompany the notification to 
the patent owner. In  this situation, the original copy (in storage) 
should be made available for  copying by the patent owner.  If the 
citation includes service of a copy on  the patent owner, the citation is 
placed in storage and not entered until the  reexamination is terminated. 
The patent owner and third party sender (if known)  should be given notice 
of this action. 

II.   Citation filed by patent owner 

        If a proper prior art citation is filed by the patent owner, it 
should  be entered in the file.  This is true whether the citation is 
filed prior to  or after an order for reexamination has been mailed. No 
notification to the  patent owner is necessary. 

        The following diagram shows the various situations which can occur 
 when a proper prior art citation is filed and the action to be taken for 
each  alternative situation: 



B22060002.bmp 



B22060002.bmp 

 CITATION QUALIFIES FOR ENTRY UNDER 
37 CFR 1.501 

  I.    Citation by third party 

        If the citation is not proper (i.e., it is not limited to patented 
 or printed publications), it should not be entered in the patent file. 
The  sender (if known) and the patent owner in all cases should be 
notified that  the citation is improper and that it is not being entered 
in the patent file.  The handling of the citation will vary depending on 
the particular following  situation. 

A.  Service of Copy Included 

        Where the citation includes an indication of service of copy on 
the  patent owner and the identity of the third party sender is known, the 
original  citation paper should be returned to the third party sender 
along with the  notification of nonentry.  If the identity of the third 
party sender is not  known, the original citation papers should be discarded. 

B.  Service of Copy Not Included; Identity of Third Party Sender Known 
        Where the citation does not include an indication of service on 
the  patent owner, the identity of the third party sender is known, and a 
duplicate  copy of the citation is present, the original citation papers 
should be returned  to the third party sender and the duplicate copy 
should be sent to the patent  owner along with the notification of 
nonentry. If the duplicate copy required  in 
37 CFR 1.501(c) is not present, the original citation papers should be 
sent  to the PATENT OWNER along with the notification of nonentry. 



C.  Service of Copy Not Included; Identity of Third Party Sender Not Known 
        Where the citation does not include an indication of service, the 
identity  of the third party sender is not known, and a duplicate copy of 
the citation  is or is not present, the duplicate copy (if present) should 
be discarded and  the original citation papers should be sent to the 
patent owner along with  the notification of nonentry. 

II.   Citation filed by the patent owner 

        If an improper prior art citation is filed by the patent owner, it 
 should not be entered in the file. This is true whether the citation is 
filed  prior to or after an order for reexamination. 

        The patent owner should be notified of the nonentry, and the 
citation  papers should be returned to the patent owner along with the 
notification. 




        The following diagram shows the various situations which can occur 
 when an improper prior art citation is filed and the action to be taken 
for  each alternative situation. Any unusual problems should be brought to 
the attention  of the Office of the Assistant Commissioner for Patents. 



A22060003.bmp 





A22060003.end 




2207    Entry of Court Decision in Patent File 


        The Solicitor's Office processes notices under 
35 U.S.C. 290 received from the clerks of the various courts and enters 
them  in the patent file. 

        It is, however, considered desirable to all parties concerned that 
 the entire court decision be supplied to the Patent and Trademark Office 
for  entry into the patent file. Such entry of submitted court decisions 
is performed  by the Files Repository personnel unless a reexamination 
proceeding is pending. 
        It is important for the Office to be aware of any prior court 
proceedings  in which a patent undergoing reexamination is or was 
involved, and any results  of such proceedings. 37 CFR 1.565(a) requires 
the patent owner to provide the  Office with information regarding the 
existence of any such proceedings and  the results thereof, if known. 
Ordinarily, no submissions of any kind by third  parties filed after the 
date of the order are placed in the reexamination or  patent file while 
the reexamination proceeding is pending. However, in order  to ensure a 
complete file, with updated status information regarding prior 
proceedings regarding a patent undergoing reexamination, the Office will 
accept  at any time copies of notices of suits and other proceedings 
involving the  patent and copies. of decisions or other court papers, or 
papers filed in the  court, from litigations or other proceedings 
involving the patent from the  parties involved or third parties for 
placement in the patent file. However,  such submissions must be without 
additional comment. Persons making such submissions  must limit the 
submission to the notification and not include further arguments  or 
information. Any proper submission will be promptly placed on record in 
the patent file. See MPEP 
w 2240 and w 2242 for handling of requests for reexamination of patents 
involved  in litigation. 


2208    Service of Citation on Patent Owner 


        A copy of any submission of a citation of prior art patents or 
printed  publications in a patent file should be served on the patent 
owner so that  the patent owner is fully informed as to the content of his 
or her patent file  wrapper. See MPEP w 2206 for handling of prior art 
citations. 

        The service to the patent owner should be addressed to the 
correspondence  address as set forth in 37 CFR 1.33(c). 


2209    Reexamination 


        Procedures for reexamination of issued patents began on July 1, 
1981,  the date when the reexamination provisions of Public Law 96-517 
came into effect. 
        The reexamination statute and rules permit any person to file a 
request  for reexamination containing certain elements and the fee 
required under 37  CFR 1.20(c).  The Patent and Trademark Office initially 
determines if "a substantial  new question of patentability" (35 U.S.C. 
303(a)) is presented. If such a new  question has been presented, 
reexamination will be ordered. The reexamination  proceedings which follow 
the order for reexamination are very similar to regular  examination 
procedures in patent applications except for certain limitations  as to 
the kind of rejections which may be made, 
special reexamination forms to be used, and time periods set to provide 
``special  dispatch." When the reexamination proceedings are terminated, a 
certificate  is issued which indicates the status of all claims following 
the reexamination. 
        The following sections of this chapter explain the details of 
reexamination. 
        The intent of the reexamination procedures covered in this chapter 
 include the following: 

1.  To provide procedures for reexamination of patents. 

2.  To implement reexamination in an essentially ex parte manner. 
3.  To minimize the processing costs and complexities of reexamination. 
4.  To maximize respect for the reexamined patent. 

5.  To provide procedures for prompt and timely 
determinations by the Office in accordance with the 
"special dispatch" requirements of 35 U.S.C. 305. 

        The basic characteristics of reexamination are as follows: 
1.  Anyone can request reexamination at any time during the period of 
enforceability  of the patent. 

2.  Prior art considered during reexamination is limited to prior art 
patents  or printed publications applied under the appropriate parts of 35 
U.S.C. 102  and 103. 

3.  A substantial new question of patentability must be presented for 
reexamination  to be ordered. 

4.  If ordered, the actual reexamination proceeding is ex parte in nature. 


5.  Decision on the request must be made within three months from initial 
filing  and remainder of proceedings must proceed with "special dispatch." 
6.  If ordered, a reexamination proceeding will be conducted to conclusion 
 and issuance of certificate. 

7.  The scope of a claim cannot be enlarged by amendment. 

8.  All reexamination and patent files are open to the public. 


2210    Request for Reexamination 


35 U.S.C. 302.      Request for reexamination. 

        Any person at any time may file a request for reexamination by the 
 Office of any claim of a patent on the basis of any prior art cited under 
the  provisions of section 301 of this title.  The request must be in 
writing and  must be accompanied by payment of a reexamination fee 
established by the Commissioner  of Patents pursuant to the provisions of 
section 41 of this title. The request  must set forth the pertinency and 
manner of applying cited prior art to every  claim for which reexamination 
is requested. Unless the requesting person is  the owner of the patent, 
the Commissioner promptly will send a copy of the  request to the owner of 
record of the patent. 

37 CFR 1.510.     Request for reexamination. 

        (a)   Any person may, at any time during the period of 
enforceability  of a patent, file a request for reexamination by the 
Patent and Trademark Office  of any claim of the patent on the basis of 
prior art patents or printed publications  cited under w 1.501. The 
request must be accompanied by the fee for requesting  reexamination set 
in w 1.20(c). 

        (b)   Any request for reexamination must include the following 
parts: 
        (1)   A statement pointing out each substantial new question of 
patentability  based on prior patents and printed publications. 

         (2)    An identification of every claim for which reexamination 
is  requested, and a detailed explanation of the pertinency and manner of 
applying  the cited prior art to every claim for which reexamination is 
requested. If  appropriate, the party requesting reexamination may also 
point out how claims  distinguish over cited prior art. 

         (3)    A copy of every patent or printed publication relied upon 
or  referred to in paragraph (b) (1) and (2) of this section accompanied 
by an  English language translation of all the necessary and pertinent 
parts of any  non-English language patent or printed publication. 

         (4)    The entire specification (including claims) and drawings 
of  the patent for which reexamination is requested must be furnished in 
the form  of cut-up copies of the original patent with only a single 
column of the printed  patent securely mounted or reproduced in permanent 
form on one side of a separate  paper. A copy of any disclaimer, 
certificate of correction, or reexamination  certificate issued in the 
patent must also be included. 

         (5)    A certification that a copy of the request filed by a 
person  other than the patent owner has been served in its entirety on the 
patent owner  at the address as provided for in w 1.33(c). The name and 
address of the party  served must be indicated. If service was not 
possible, a duplicate copy must  be supplied to the Office. 

        (c)   If the request does not include the fee for requesting 
reexamination  or all of the parts required by paragraph (b) of this 
section, the person identified  as requesting reexamination will be so 
notified and given an opportunity to  complete the request within a 
specified time.  If the fee for requesting reexamination  has been paid 
but the defect in the request is not corrected within the specified  time, 
the determination whether or not to institute reexamination will be made 
on the request as it then exists. If the fee for requesting reexamination 
has  not been paid, no determination will be made and the request will be 
placed  in the patent file as a citation if it complies with the 
requirements of w  1.501(a). 

        (d)   The filing date of the request is: (1) the date on which the 
 request including the entire fee for requesting reexamination is received 
in  the Patent and Trademark Office; or (2) the date on which the last 
portion  of the fee for requesting reexamination is received. 

        (e)   A request filed by the patent owner, may include a proposed 
amendment  in accordance with w 1.121(f). 

        (f)   If a request is filed by an attorney or agent identifying 
another  party on whose behalf the request is being filed, the attorney or 
agent must  have a power of attorney from that party or be acting in a 
representative capacity  pursuant to w 1.34(a). 

        Any person, at any time during the period of enforceability of a 
patent,  may file a request for reexamination by the Patent and Trademark 
Office of  any claim of the patent based on prior art patents or printed 
publications.  The request must include the elements set forth in 
37 CFR 1.510(b) (see MPEP w 2214) and be accompanied by the fee as set 
forth  in 37 CFR 1.20(c).  No attempt will be made to maintain a 
requester's name  in confidence. 

        After the request for reexamination, including the entire fee for 
requesting  reexamination, is received in the Patent and Trademark Office, 
no abandonment,  withdrawal, or striking, of the request is possible, 
regardless of who requests  the same. In some limited circumstances after 
a court decision; e.g., where  all of the claims are finally held invalid, 
a reexamination order may be vacated,  see MPEP w 2286. 


2211    Time for Requesting Reexamination [R-1] 


        Under 37 CFR 1.510(a), any person may, at any time during the 
period  of enforceability of a patent, file a request for reexamination. 
This period  was set by rule since no useful purpose was seen for 
expending Office resources  on deciding patent validity questions in 
patents which cannot be enforced.  In this regard see Patlex Corporation 
v. Mossinghoff, 225 USPQ 243, 249 (Fed.  Cir. 1985). ** >The period of 
enforceability is determined by adding 6 years  to the date on which the 
patent expires.  The patent expiration date for a  utility patent, for 
example, is determined by taking into account the term  of the patent, 




whether maintenance fees have been paid for the patent, and whether any 
disclaimer  was filed as to the patent to shorten  its term. Any other 
relevant information  should also be taken into account.< In addition, if 
litigation is instituted  within the period of the statute of limitations, 
requests for reexamination  may be filed after the statute of limitations 
has expired, as long as the patent  is still enforceable against someone. 


2212    Persons Who May File a Request 


        35 U.S.C. 302 and 37 CFR 1.510(a) both indicate that "any person" 
may  file a request for reexamination of a patent. Accordingly, there are 
no persons  who are excluded from being able to seek reexamination. 
Corporations and/or  governmental entities are included within the scope 
of the term "any person".  The patent owner can ask for reexamination 
which will be limited to an ex parte  consideration of prior patents or 
printed publications. If the patent owner  wishes to have a wider 
consideration of issues by the Office, including matters  such as prior 
public use or sale, the patent owner may file a reissue application.  It 
is also possible for the Commissioner to initiate reexamination on the 
Commissioner's  own initiative under 37 CFR 1.520. Reexamination will be 
initiated by the Commissioner  on a very limited basis such as where a 
general public policy question is at  issue and there is no interest by 
"any other person." Some of the persons likely  to use reexamination are 
patentees, 
licensees, potential licensees, attorneys without identification of their 
real  client in interest, infringers, potential exporters, patent 
litigants, interference  applicants, and International Trade Commission 
respondents. The name of the  person who files the request will not be 
maintained in confidence. 

2213    Representative of Requester 


        Where an attorney or agent files a request for an identified 
client 
(the requester), he or she may act under either a power of attorney, or 
act  in a representative capacity under 37 CFR 1.34(a), 37 CFR 1.510(f). 
While the  filing of the power of attorney is desirable, processing of the 
reexamination  request will not be delayed due to its absence. 

        If any question of authority to act is raised, proof of authority 
may  be required by the Office. 

        All correspondence for a requester other than the patent owner 
should  be addressed to the representative of the requester unless a 
specific indication  is made to forward correspondence to another address. 

        If the request is filed by a person on behalf of the patent owner, 
 correspondence will be directed to the patent owner at the address as 
indicated  in 37 CFR 1.33(c), regardless of the address of the person 
filing the request. 
 See MPEP w 2222 for a discussion of who receives correspondence on behalf 
 of a patent owner and how changes in the correspondence address are to be 
made. 
        A patent owner may not be represented during a reexamination 
proceeding  by an attorney or other person who is not registered to 
practice before the  Office since those individuals are prohibited by 37 
CFR 1.33(c) from signing  amendments and other papers filed in a 
reexamination proceeding on behalf of  the patent owner. 


2214    Content of Request 


37 CFR 1.510.       Request for reexamination. 

        (a)   Any person may, at any time during the period of 
enforceability  of a patent, file a request for reexamination by the 
Patent and Trademark Office  of any claim of the patent on the basis of 
prior art patents or printed publications  cited under w 1.501. The 
request must be accompanied by the fee for requesting  reexamination set 
in w 1.20(c). 

***** 

        37 CFR 1.510(a) requires the payment of a fee specified in 37 CFR 
1.20(c). 
        37 CFR 1.510(b) sets forth the required elements of a request for 
reexamination.  The elements are as follows: 

        "(1)    a statement pointing out each substantial new question of 
patentability  based on prior patents and printed publications." 

        This statement should clearly point out what the requester 
considers  to be the substantial new question of patentability which would 
warrant a reexamination.  The cited prior art should be listed on a form 
PTO-1449 by the requester.   See also MPEP w 2217. 

        "(2)    An identification of every claim for which reexamination 
is  requested, and a detailed explanation of the pertinency and manner of 
applying  the cited prior art to every claim for which reexamination is 
requested. If  appropriate the party requesting reexamination may also 
point out how claims  distinguish over cited prior art." 

        The request should apply the cited prior art to every claim for 
which  reexamination is requested. If the 




request is filed by the patent owner, he or she may also indicate how the 
claims  distinguish from the cited prior art patents and printed 
publications. 
        "(3) A copy of every patent or printed publication relied upon or 
referred  to in paragraph (b)(1) and (2) of this section accompanied by an 
English language  translation of all the necessary and pertinent parts of 
any non-English language  patent or printed publication." 

        A copy of each cited patent or printed publication, as well as a 
translation  of each non-English document is required so that all 
materials will be available  to the examiner for full consideration.  See 
MPEP w 2218. 

        "(4) The entire specification (including claims) and drawings of 
the  patent for which reexamination is requested must be furnished in the 
form of  cut-up copies of the original patent with only a single column of 
the printed  patent securely mounted or reproduced in permanent form on 
one side of a separate  paper. A copy of any disclaimer, certificate of 
correction, or reexamination  certificate issued in the patent must also 
be included." 

        A copy of the patent, for which reexamination 
is requested, should be provided in a single column 


paste-up format so that amendments can be easily entered and to ease 
printing. 
 See also MPEP w 2219. 

        "(5) A certification that a copy of the request filed by a person 
other  than the patent owner has been served in its entirely on the patent 
owner at  the address as provided for in w 1.33(c).  The name and address 
of the party  served must be indicated.  If service was not possible, a 
duplicate copy must  be supplied to the Office." 

        If the request is filed by a person other than the patent owner, a 
 certification that a copy of the request papers has been served on the 
patent  owner must be included. The request should be as complete as 
possible since  there is no guarantee that the examiner will consider 
other prior art when  making the decision on the request. Also, if no 
statement is filed by the patent  owner, no later reply may be filed by 
the requester. See also MPEP w 2220. 
        Form PTO-1465 should be helpful to persons filing requests for 
reexamination.  The use of this form is encouraged but its use is not a 
requirement of the  law nor the rules. 



A22140004.bmp 



A22140004.end 



A22140005.bmp 



A22140005.end 



                                                Attachment to Form PTO-1445 
                                                requesting information of 
                                                Pat. No. 4,444,444 
Sir: 

Reexamination under 35 U.S.C. 302 - 307 and 37 CFR 1.510 is requested of 
United  States patent number 4,444,444 which issued on July 7, 1977, to 
Joseph Smith.  This patent is still enforceable. 

Claims for which reexamination is requested 

Reexamination is requested of claims 1-3 of the Smith patent in view of 
the  earlier United States Patent document number 594,225 to Berridge 
which is listed  on attached form PTO-1499 and of which a copy is enclosed. 

Reexamination is also requested of claim 4 of the Smith patent in view of 
the  earlier Swiss Patent document 80,555 to Hotopp in view of the 
disclosure in  "American Machinist" magazine, October 16, 1950, issue, on 
page 169. An English  translation of the German language Swiss document is 
enclosed. Copies of the  Hotopp and "American Machinist" documents are 
also enclosed. 

Explanation of pertinency and manner of applying cited prior art to every 
claim  for which reexamination is requested 

Claims 1-3 of the Smith patent are considered to be fully anticipated 
under  35 U.S.C. 102 by the prior art patent document to Berridge. 

Claim 3 of the Smith patent, which is more specific than claims 1 and 2 in 
 all features, is set forth below with an explanation as to how the prior 
art  patent document to Berridge meets all the recited features. 

Smith, claim 3: 

"In a cutting and crimping tool"                (Berridge page 1, lines 10-13 
                                         states his invention is 
                                        "an improved tool for crimping 
                                        metal which in its preferred 
                                        form of embodiment is combined 
                                        with a cutting-tool or shears, 
                                        forming therewith a combination- 
                                        tool.") 

"the combination with the cutting   (elements 4 and 5 in Berridge) blades" 


"and their pivoted handles"         (elements 1 and 2 in Berridge) 
"of bosses arranged at an angle             ("bosses" as used in the to 
and offset from the plane of             Smith claim is used to mean  the 
shear blades"               a projection. The dies 
                                        6 and 7 of the Berridge prior 
                                        art patent document are arranged 
                                        at the same angle to the plane 



                                - 2 -           Pat. No. 4,444,444 
                                        of the shear blades and are 
                                        arranged at an angle in the 
                                        same manner as shown in the 
                                        drawing figures of the Smith 
patent.) 
"and crimping dies formed on            (The dies 6 and 7 (bosses) of the 
meeting faces of said bosses"   Berridge have meeting 
                                        die-faces 12 and 13 (page 1, 
                                        line 63) for performing crimping 
                                        operations (page 1, lines 70 - 
74.1)) 
Claim 4 of the Smith patent is considered to be unpatentable under 35 
U.S.C.103  in view of the prior art Swiss patent document to Hotopp and 
further in view  of the prior art magazine publication on page 169 of the 
October 16, 1950 issue  of American Machinist magazine. 

Claim 4 of Smith reads as quoted below 

"In a cutting and crimping tool,"   (The prior art Swiss patent 
                                        document to Hotopp discloses 
                                        cutting jaws (column 1, line 8) 
                                        and dies "b" and "c" which 
                                        may be used for crimping.) 
"the combination of a pair of       (elements "a" and "e" in the 
pivoted handles"                                prior art document to 
Hotopp). 
"with cutting jaws at one end       (The prior art document to 
and crimping dies on the opposite       Hotopp discloses cutting jaws 
side of the pivot"                      (column 1 line 8) and crimping 
                                        dies "b" and "c" on the opposite 
                                        side of pivot "d" from the cutting 

                                        jaws.) 


"and rounded prongs projecting          (Rounded prongs are not 
from said cutting jaws"                 specifically disclosed by Hotopp 
                                        but are shown to be old in the 
                                        art by the illustration in 
                                        "American Machinist" magazine 
                                        under the title "Double-Purpose 
                                        Pliers Don't Break Insulation". 
                                        To provide the cutting jaws of 
                                        Hotopp with rounded prongs as 
                                        shown in the "American Machinist" 
                                        magazine is considered to be a 
                                        matter which would have been 
                                        obvious to a person having 
                                        ordinary skill in the art at the 
                                        time the invention was made.) 


                                - 3 -           Pat. No. 4,444,444 
Statement pointing out substantial new question of patentability 

The prior art documents referred to above were not of record in the file 
of  the Smith patent. Since the claims in the Smith patent are not 
allowable over  these prior art documents, a substantial new question of 
patentability is raised.  Further, these prior art documents are closer to 
the subject matter of Smith  than any prior art which was cited during the 
prosecution of the Smith patent. 


                                                John Doe 

                                                Attorney for requester 



2215    Fee for Requesting Reexamination 


        In order for a request to be accepted, be given a filing date, and 
 be published in the Official Gazette, it is necessary that the fee 
required  under 37 CFR 1.20(c) for filing a request for reexamination be 
paid. If the  fee is not paid, the request will be considered to be 
incomplete. 
        If the request for reexamination is denied or vacated, a refund in 
 accordance with 37 CFR 1.26(c) will be made to the identified requester. 
        As stated in 37 CFR 1.510 (c) and (d): 

***** 

        (c)   If the request does not include the fee for requesting 
reexamination  or all of the parts required by paragraph (b) of this 
section, the person identified  as requesting reexamination will be so 
notified and given an opportunity to  complete the request within a 
specified time.  If the fee for requesting reexamination  has been paid 
but the defect in the request is not corrected within the specified  time, 
the determination whether or not to institute reexamination will be made 
on the request as it then exists.  If the fee for requesting reexamination 
 has not been paid, no determination will be made and the request will be 
placed  in the patent file as a citation if it complies with the 
requirements of w  1.501(a). 

        (d)   The filing date of the request is: (1) the date on which the 
 request including the entire fee for requesting reexamination is received 
in  the Patent and Trademark Office; or (2) the date on which the last 
portion  of the fee for requesting reexamination is received. 

***** 

        Where the entire filing fee is not paid, the request, if otherwise 
 proper, should be treated as a citation of prior art under 37 CFR 1.501. 

2216    Substantial New Question of Patentability 


        37 CFR 1.510(b)(1) requires that the request include "a statement 
pointing  out each substantial new question of patentability based on 
prior patents and  printed publications." Under 35 U.S.C. 304 the Office 
must determine whether  "a substantial new question of patentability" 
affecting any claim of the patent  has been raised. If such a new question 
is found, an order for reexamination  of the patent is issued. It is 
therefore clear that it is extremely important  that the request clearly 
set forth in detail exactly what the requester considers  the "substantial 
new question of patentability" to be in view of prior patents  and printed 
publications. The request should point out how any questions of 
patentability raised are substantially different from those raised in the 
earlier  prosecution of the patent before the Office.  If a substantial 
new question  of patentability is found as to one claim, all claims will 
be reexamined during  the ex parte reexamination process.  See also MPEP w 
2242. 

        Questions relating to grounds of rejection other than those based 
on  prior patents or printed publications, such as on public use, on sale, 
or fraud  should not be included in the request and will not be considered 
by the examiner  if included. 

        Affidavits or declarations which explain the contents or pertinent 
 dates of prior patents or printed publications in more detail may be 
considered  in reexamination. See MPEP w 2258. 


2217    Statement Applying Prior Art [R-2] 


        The third sentence of 35 U.S.C. 302 indicates that the "request 
must  set forth the pertinency and manner of applying cited prior art to 
every claim  for which reexamination is requested." 37 CFR 1.510(b)(2) 
requires that the  request include "An identification of every claim for 
which reexamination is  requested, and a detailed explanation of the 
pertinency and manner of applying  the cited prior art to every claim for 
which reexamination is requested." If  the request is filed by the patent 
owner, the request for reexamination may  also point out how claims 
distinguish over cited prior art. 

        The prior art applied may only consist of prior patents or printed 
 publications. Substantial new questions of patentability may be based 
upon  the following portions of 35 U.S.C. 102: 

        "(a) . . . patented or described in a printed publication in this 
or  a foreign country, before the invention thereof by the applicant for 
patent,  or" 

        "(b) the invention was patented or described in a printed 
publication  in this or a foreign country . . . more than one year prior 
to the date of  the application for patent in the United States, or" 

***** 

        "(d) the invention was first patented or caused to be patented, or 
 was the subject of an inventor's certificate, by the applicant or his 
legal  representatives or assigns in a foreign country prior to the date 
of the application  for patent in this country on an application for 
patent or inventor's certificate  filed more than twelve months before the 
filing of the application in the United  States, or" 

        "(e) the invention was described in a patent granted on an 
application  for patent by another filed in the United States before the 
invention thereof  by the applicant for patent, or on an international 
application by another  who has fulfilled the requirements of paragraphs 



(1), (2), and (4) of section 371(c) of this title before the invention 
thereof  by the applicant for patent, or" 

***** 

        Similarly, substantial new questions of patentability may also be 
made  under 35 U.S.C. 103 which are based on the above indicated portions 
of 35 U.S.C.  102. Public Law 98-622 enacted on November 8, 1984, changed 
a complex body  of case law and amended 35 U.S.C. 103 by adding a new 
sentence which provides  that the subject matter developed by another 
which qualifies as prior art only  under 35 U.S.C. 102(f) or (g) shall not 
preclude patentability under 35 U.S.C.  103, provided the subject matter 
and the claimed invention were commonly owned  at the time the invention 
was made. This change overrules the practice under  In re Bass, 177 USPQ 
178, (CCPA 1973) wherein an earlier invention by a co-employee  was 
treated as 35 U.S.C. 103 prior art and applies through 35 U.S.C. 102(g), 
and possibly through 35 U.S.C. 102(f) with respect to a later invention 
made  by another employee of the same organization. However, the Federal 
Circuit  held in DuPont v. Phillips, 
7 USPQ2d 1129, 1134-1135 (Fed. Cir. 1988), that the prior work of another 
under  35 U.S.C. 102(g), except as qualified by 35 U.S.C. 103 with respect 
to certain  commonly owned subject matter, can be used as 35 U.S.C. 103 
prior art so long  as it has not been abandoned, suppressed, or concealed. 
Accordingly, substantial  new questions of patentability may be found 
under 35 U.S.C. 102(f)/103 or (g)/103  based on the prior invention of 
another disclosed in a patent or printed publication.  See Chapter 2100. 

        Substantial new questions of patentability based on matters other 
than  patents or printed publications, such as public use or sale, 
inventorship,  35 U.S.C. 101, 35 U.S.C. 112, fraud, etc. will not be 
considered when making  the determination on the request and should not be 
presented in the request.  A prior patent or printed publication cannot be 
properly applied as a ground  for reexamination if it is merely used as 
evidence of alleged prior public  use or sale, insufficiency of 
disclosure, etc. The prior patent or printed  publication must be applied 
directly to claims under 35 U.S.C. 103 and/or an  appropriate portion of 
35 U.S.C. 102 or relate to the application of other  prior patents or 
printed publications to claims on such grounds. 

        The statement applying the prior art may, where appropriate, point 
 out that claims in the patent for which reexamination is requested are 
entitled  only to the filing date of the patent and are not supported by 
an earlier foreign  or United States patent application whose filing date 
is claimed. For example,  under 35 U.S.C. 120, the effective date of the 
claims would be the filing date  of the application which resulted in the 
patent Therefore, intervening patents  or printed publications are 
available as prior art under In re Ruscetta, 118  USPQ 101 (CCPA 1958). 

        * >Under limited circumstances, e.g., where new or amended claims 
are  presented, double< patenting ** >may be raised< in >a< reexamination 
>proceeding<. 
        The mere citation of new patents or printed publications without 
an  explanation does not comply with 37 CFR 1.510(b)(2). An explanation of 
how  the cited patents or printed publications are applied to all claims 
which the  requester considers to merit reexamination should be presented. 
This not only  sets forth the requester's position to the Office, but also 
to the patent owner. 
        Affidavits or declarations which explain the contents or pertinent 
 dates of prior patents or printed publications in more detail may be 
considered  in reexamination. See MPEP w 2258. 

ADMISSIONS 

I.  Initial Reexamination Determination and Order 

        The consideration under 35 U.S.C. 303 of a request for 
reexamination  is limited to prior patents and printed publications. See 
Ex parte McGaughey,  6 USPQ2d 1334, 1337 (Bd. Pat. App. & * >Inter.< 
1988). Thus an admission, per  se, may not be the basis for establishing a 
substantial new question of patentability.  However, an admission by the 
patent owner of record in the file or in a court  record may be utilized 
in combination with a patent or printed publication. 
II.   Reexamination Examination on Merits 

        After reexamination has been ordered, the examination on the 
merits  is dictated by 35 U.S.C. 305, see Ex parte McGaughey, 6 USPQ2d 
1334, 1337 (Bd.  Pat. App. & * >Inter.< 1988). 

        Admissions by the patent owner in the record as to matters 
affecting  patentability may be utilized in a reexamination proceeding; 
see 37 CFR 1.106(c). 
        The rules, 37 CFR 1.106(c), provides that admissions by the patent 
 owners as to matters affecting patentability may be utilized in a 
reexamination  proceeding. The Su- 




preme Court when discussing 35 U.S.C. 103 in Graham v. John Deere Co., 383 
 U.S. 1, 148 USPQ 459 
(1966) stated, inter alia, "the scope and content of the prior art are to 
be  determined". Accordingly, a proper evaluation of the scope and content 
of the  prior art in determining obviousness would require a utilization 
of any "admission"  by the patent owner whether such admission results 
from a patent or printed  publication or from some other source. An 
admission as to what is in the prior  art is simply that, an admission, 
and requires no independent proof.  It is  an acknowledged, declared, 
conceded, or recognized fact or truth, Ex parte  McGaughey, 
6 USPQ2d 1334, 1337 (Bd. Pat. App. & * >Inter.< 1988). While the scope and 
 content of the admission may sometimes have to be determined, this can be 
done  from the record and from the paper file in the same manner as with 
patents  and printed publications. To ignore an admission by the patent 
owner, from  any source, and not use the admission as part of the prior 
art in conjunction  with patents and printed publications in reexamination 
would make it impossible  for the examiner to properly determine the scope 
and content of the prior art  as required by Graham, supra. 

        The Board of Appeals upheld the use of an admission in a 
reexamination  proceeding in Ex parte Seiko Koko Kabushiki Kaisha, 225 
USPQ 1260 (>Bd. Pat.  App. & Inter.< 1984), Ex parte Kimbell, 226 USPQ 688 
(>Bd. Pat. App. & Inter.<  1985) and in Ex parte McGaughey, 
6 USPQ2d 1334 (Bd. Pat. App. & * >Inter.< 1988).  In Seiko, the Board 
relied  on In re Nomiya, 184 USPQ 607 (CCPA 1975) holding an admission of 
prior art  in the specification of the parent undergoing reexamination is 
considered prior  art which may be considered for any purpose, including 
use as evidence of obviousness  under 35 U.S.C. 103. In Kimbell the Board 
referred to the patent specification  and noted the admission by appellant 
that an explosion-proof housing was well-known  at the time of the invention. 

        In Ex parte McGaughey, 6 USPQ2d 1334, 1337 (Bd. Pat. App. & * 
>Inter.<  1988), the Board held that any equivocal admission relating to 
prior art is  a fact which is part of the scope and content of the prior 
art and that prior  art admissions established in the record are to be 
considered in reexamination.  The Board expressly overruled the prior 
Board decision in Ex parte Horton, 226 USPQ 697 (Bd. Pat. App. & *>Inter.< 
1985) which held that admissions which  are used as a basis for a 
rejection in reexamination must relate to patents  and printed publications. 

        The admission can reside in the patent file (made of record during 
 the prosecution of the patent application) or may be presented during the 
pendency  of the reexamination proceeding or in litigation.  Admissions by 
the patent  owner as to any matter affecting patentability may be utilized 
to determine  the scope and content of the prior art in conjunction with 
patents and printed  publications in a prior art rejection whether such 
admissions result from patents  or printed publications or from some other 
source.  An admission relating to  any prior art (i.e., on sale, public 
use, etc.) established in the record or  in court may be used by the 
examiner in combination with patents or printed  publications in a 
reexamination proceeding. The admission must stand on its  own. 
Information supplementing or further defining the admission would be 
improper. Any admission submitted by the patent owner is proper.  A third 
party,  however, may not submit admissions of the patent owner made 
outside the record  or the court.  Such a submission would be outside the 
scope of reexamination. 

2218    Copies of Prior Art 


        It is required that a copy of each patent or printed publication 
relied  on or referred to in the request be filed with the request (37 CFR 
1.510(b)(3)).  If any of the documents are not in the English language, an 
English language  translation of all necessary and pertinent parts is also 
required. An English  language summary or abstract of a non-English 
language document is usually  not sufficient. 

        It is also helpful to include copies of the prior art considered 
during  earlier prosecution of the patent for which reexamination is 
requested. The  presence of both the old and the new prior art allows a 
comparison to be made  to determine whether a substantial new question of 
patentability is indeed  present. Copies of parent applications should 
also be submitted if the parent  application relates to the alleged 
substantial new question of patentability;  for example, if the patent is 
a continuation-in-part and the question of patentability  relates to an In 
re Ruscetta, 255 F. 2d 687, 118 USPQ 101 (CCPA 1958) type  rejection where 
support in the parent application is relevant. 




2219    Copy of Printed Patent 


        The Patent and Trademark Office will prepare a separate file 
wrapper  for each reexamination request which will become part of the 
patent file. Since  in some instances, it may not be possible to obtain 
the patent file promptly  and in order to provide a format which can be 
amended and used for printing,  requesters are required under 37 CFR 
1.510(b)(4) to include a copy of the entire  specification (including 
claims) and drawings of the patent for which reexamination  is requested 
in the form of a cut-up copy of the original printed patent with  only a 
single column of the patent securely mounted or reproduced in permanent 
form on one side of a sheet of paper. A copy of any disclaimer, 
certificate  of correction, or reexamination certificate issued in the 
patent must also  be included so that a complete history of the patent is 
before the Office for  consideration. A copy of any Federal court 
decision, complaint in a pending  civil action, or interference decision 
should also be submitted. 


2220    Certificate of Service 


        If the requester is a person other than the patent owner, the 
owner  of the patent must be served with a copy of the request in its 
entirety. The  service should be made to the correspondence address as 
indicated in 37 CFR 1.33(c). The name and address of the person served and 
the certificate  of service should be indicated on the request. 

        The most recent address of the attorney or agent of record can be 
determined  by checking the Office's register of patent attorneys and 
agents maintained  by the Office of Enrollment and Discipline pursuant to 
37 CFR 10.5 and 10.11(a).  See also MPEP w 2249 regarding service on 
requester. 


2221    Amendments Included in Request by Patent Owner 


        Under 37 CFR 1.510(e), a patent owner may include a proposed 
amendment  with his or her request, if he or she so desires. Any such 
amendment must be  in accordance with 37 CFR 1.121(f).  See MPEP w 2250. 
Amendments may also  be proposed by patent owners in a statement under 37 
CFR 1.530 or during the  actual ex parte reexamination prosecution (37 CFR 
1.550(b)). See also MPEP  w 2234 and w 2250. 

        The request should be decided on the wording of the claims without 
 the amendments. The decision on the request will be made on the basis of 
the  patent claims as though the amendment had not been presented. 
However, if  the request for reexamination is granted, the ex parte 
reexamination prosecution  should be on the basis of the claims as 
amended. 


2222    Address of Patent Owner 


37 CFR 1.33.    Correspondence respecting patent applications, 
reexamination  proceedings, and other proceedings. 

***** 

        (c)   All notices, official letters, and other communications for 
the  patent owner or owners in a reexamination proceeding will be directed 
to the  attorney or agent of record (see w1.34(b)) in the patent file at 
the address  listed on the register of patent attorneys and agents 
maintained pursuant to  w 10.5 and w 10.11 or, if no attorney or agent is 
of record, to the patent  owner or owners at the address or addresses of 
record. Amendments and other  papers filed in a reexamination proceeding 
on behalf of the patent owner must  be signed by the patent owner, or if 
there is more than one owner by all the  owners, or by an attorney or 
agent of record in the patent file, or by a registered  attorney or agent 
not of record who acts in a representative capacity under  the provisions 
of w 1.34(a). Double correspondence with the patent owner or  owners and 
the patent owner's attorney or agent, or with more than one attorney  or 
agent, will not be undertaken. If more than one attorney or agent is of 
record and a correspondence address has not been specified, correspondence 
 will be held with the last attorney or agent made of record. 

***** 

        37 CFR 1.33(c) indicates which correspondence address is to be 
normally  used to direct correspondence to the patent owner. In most 
instances, this  will be the address of the first named, most recent 
attorney or agent in the  patent file at his or her current address. As a 
general rule, the attorney-client  relationship terminates when the 
purpose for which the attorney was employed  is accomplished; e.g., the 
issuance of a patent to the client.  However, apart  from the 
attorney-client relationship, the Office has, by regulation, 37 CFR 
10.23(c)(8), made it the responsibility of every "practitioner," by virtue 
 of his/her registration, "to inform a client or former client ... of 
correspondence  received from the Office ... when the correspondence (1) 
could have a significant  effect on a matter pending before the Office, 
(ii) is received by the practitioner  on behalf of a client or former 
client, and (iii) is correspondence of which  a reasonable practitioner 
would believe under the circumstances the client  or former client should 
be notified." (Emphasis added.) 



This responsibility of a practitioner to a former client manifestly is not 
 eliminated by withdrawing as an attorney of record. The practitioner if 
he/she  so desires, canminimize the need for forwarding correspondence 
concerning issued  patents by having the correspondence address changed 
after the patent issues  if the correspondence address is the 
practitioner's address, which frequently  is the case where the 
practitioner is the attorney of record. 

        Further, 37 CFR 10.23(c)(8) requires a practitioner to "timely 
notify  the Office of an inability to notify a client or former client of 
correspondence  received from the Office" (Emphasis added.) As the 
language of this requirement  clearly indicates, the duty to notify the 
Office is a consequence, not of any  attorney-client relationship, but 
rather arises by virtue of the practitioner's  status as a registered 
attorney or agent. 

        If the patent owner desires that a different attorney or agent 
receive  correspondence, then a new power of attorney must be filed. 
Correspondence  will continue to be sent to the attorney or agent of 
record in the patent file  absent a revocation of the same by the patent 
owner. If the attorney or agent  of record specifies a correspondence 
address to which correspondence is to  be directed, such direction should 
be followed. However, since a change in  the correspondence address does 
not withdraw a power of attorney, a change  of the correspondence address 
by the patent owner does not prevent the correspondence  from being 
directed to the attorney or agent of record in the patent file under  37 
CFR 1.33(c). 

        A form for changing correspondence address or power of attorney is 
 set forth below. Such forms should be addressed to the Commissioner of 
Patents  and Trademarks, Box Reexam, Washington, D.C. 20231. 

CHANGE OF POWER OF ATTORNEY OR 
CORRESPONDENCE ADDRESS IN U.S. PATENT 

Address to: 

Commissioner of Patents and Trademarks 

Office of Public Records, Records Maintenance Branch 

Washington D.C. 20231 

        To the Commissioner of Patents and Trademarks: 

        In United States patent number ____, granted ____ to ____ (list 
first  inventor) please make the following change: 

        [ ]  1. Change the address of the attorney(s) of record to: 



        [  ]  2. Change the correspondence address of the patent owner to: 



        [  ]  3. Add a power of attorney to and address any future 
correspondence  to the first named person below 



who I hereby appoint to transact all business in the Patent and Trademark 
Office. 
who I hereby appoint to transact all business in the Patent and Trademark 
Office. 
        [ ] *4. Remove all previous powers of attorney which I hereby 
revoke  and enter a power of attorney and address any future 
correspondence to 



        It is certified that the person whose signature appears below has 
the  authority to make the requested changes in the patent. 


. . . . . . . . . . .  . 

        Date    Authorized Signature 

        [  ] Attorney/Agent  Reg. No. 

        [  ] Patent Owner 

*Requires signature of patent owner. 


2223    Withdrawal ** of Attorney >or Agent< [R-1] 


        Any request ** >by an attorney or agent of record to withdraw< 
from  a patent will normally only be approved if at least 30 days remain 
in any running  period for response.  See also MPEP w 402.06. 


2224    Correspondence 


37 CFR 1.1.   All communications to be addressed to Commissioner of 
Patents  and Trademarks. 

        (a)   All letters and other communications intended for the Patent 
 and Trademark Office must be addressed to "Commissioner of Patents and 
Trademarks,"  Washington, D.C. 20231.  When appropriate, a letter should 
also be marked for  the attention of a particular officer or individual. 

***** 

        (c)   Requests for reexamination should be additionally marked 
"Box  Reexam." 

***** 

        All requests for reexamination mailed to the Patent and Trademark 
Office  should be additionally marked "Box Reexam." on the face of the 
outer envelope.  Such mail will not be opened by the Correspondence and 
Mail Division but will  be sorted out immedi- 



ately and processed by the Reexamination Preprocessing Unit. The use of 
"Box  Reexam" is limited to the filing of the original request for 
reexamination.  Subsequent correspondence should not be marked "Box 
Reexam." It should be directed  to the examining group art unit indicated 
on the Office letters. Any correction  or change of correspondence address 
for a United States patent should be addressed  to the Office at Box 
"Patent Address Change." 

        A request for reexamination may not be sent by facsimile 
transmission.  See 37 CFR 1.6(d)(5). 

        Letters sent to the Patent and Trademark Office relating to a 
reexamination  proceeding should identify the proceeding by the number of 
the patent undergoing  reexamination, the reexamination request control 
number assigned, examining  group art unit, and the name of the examiner. 
The certificate of mailing practice 
(37 CFR 1.8) and "Express Mail" with certificate (37 CFR 1.10) may be used 
 to file any paper in a reexamination proceeding. 

        Communications from the Patent and Trademark Office to the patent 
owner  will be directed to the first named, most recent attorney or agent 
of record  in the patent file at the current address on the Office's 
register of patent  attorneys and agents or to the patent owner's address 
if no attorney or agent  is of record, 37 CFR 1.33(c). 

        Amendments and other papers filed on behalf of patent owners must 
be  signed by the patent owners, or the registered attorney or agent of 
record  in the patent file, or any registered attorney or agent acting in 
a representative  capacity under 37 CFR 1.34(a). See MPEP w 2213. 

        Double correspondence with the patent owners and the attorney or 
agent  normally will not be undertaken by the Office. 

        Where no correspondence address is otherwise specified, 
correspondence  will be with the most recent attorney or agent made of record. 

        Note MPEP w 2220 on certificate of service. 


2225    Untimely Paper Filed Prior to Order 


        After filing of a request, no papers other than (1) citations of 
patents  or printed publications under 37 CFR 1.501; (2) another complete 
request under  37 CFR 1.510; or (3) notifications pursuant to MPEP w 2282, 
should be filed  with the Office by the requester, patent owner, or third 
parties prior to the  date of the decision on the request for 
reexamination. Any papers other than  those under 37 CFR 1.501 or 1.510 or 
MPEP 
w 2282 filed prior to the decision on the request will be returned to the 
sender  by the group director without consideration. A copy of the letter 
accompanying  the returned papers will be made of record in the patent 
file.  However, no  copy of the returned papers will be retained by the 
Office. If the submission  of the returned papers is appropriate later in 
the proceedings, they will be  accepted by the Office at that time. See In 
re Amp Inc., 
212 USPQ 826 (Comm'r Pat. 1981); In re Knight, 
217 USPQ 294 (Comm'r Pat.1982) and Patlex Corporation v. Mossinghoff, 226 
USPQ  985, 989 (Fed. Cir. 1985). 


2226    Initial Processing of Request 


        The opening of all mail marked "Box Reexam" and all initial 
clerical  processing of requests for reexamination will be performed by 
the Reexamination  Preprocessing Unit in the Office of National and 
International 
Application Review. 


2227    Incomplete Request 


37 CFR 1.510.     Request for reexamination 

***** 

        (c) If the request does not include the fee for requesting 
reexamination  or all of the parts required by paragraph (b) of this 
section, the person identified  as requesting reexamination will be so 
notified and given an opportunity to  complete the request within a 
specified time. If the fee for requesting reexamination  has been paid but 
the defect in the request is not corrected within the specified  time, the 
determination whether or not to institute reexamination will be made  on 
the request as it then exists. If the fee for requesting reexamination has 
 not been paid, no determination will be made and the request will be 
placed  in the patent file as a citation if it complies with the 
requirements of w  1.501(a). 

        (d)   The filing date of the request is: (1) the date on which the 
 request including the entire fee for requesting reexamination is received 
in  the Patent and Trademark Office; or (2) the date on which the last 
portion  of the fee for requesting reexamination is received. 

***** 

        If the required fee under 37 CFR 1.20(c) is not paid in full, the 
request  is considered to be incomplete, 37 CFR 1.510(c), and will not be 
considered  on its merits or have a notice of its filing announced in the 
Official Gazette. 
 The request is considered to have a "filing date" under 37 CFR 1.510(d) 
only  when the entire fee is paid. 

        If no fee, or only a portion of the fee is received, the 
Reexamination  Preprocessing Unit will notify the re- 




quester of the defect and give the requester a specified time, normally 1 
month,  to complete the request. A 
telephone call may also be made to the requester indicating the amount of 
the  insufficient fee. If the request is not timely completed, any partial 
fee will  be returned and the request will be treated as a citation under 
37 CFR 1.501(a) if it complies therewith. 


2228    Informal Request 


        If the fee under 37 CFR 1.20(c) has been paid, but the request 
does  not contain all the elements called for by 37 CFR 1.510(b), the 
request is  considered to be informal. All requests which are accompanied 
with the entire  fee will be assigned a filing date from which the 3-month 
period for making  a decision on the request will be computed. Notice of 
filing of all complete  requests will be published in the Official 
Gazette, approximately 4-5 weeks  after filing. 

        The Reexamination Preprocessing Unit will attempt to notify the 
requester  of any informality in the request in order to give the 
requester time to respond  before a decision is made on the request. If 
the requester does not respond  and correct the informality, the decision 
on the request will be made on the  information presented. If the 
information presented does not present "a substantial  new question of 
patentability," the request for reexamination will be denied. 

2229    Notice of Request in Official Gazette 


37 CFR 1.11.    Files open to the public 

***** 

        (c)   All requests for reexamination for which the fee under w 
1.20(c) has been paid, will be announced in the Official Gazette. Any 
reexaminations  at the initiative of the Commissioner pursuant to 
w 1.520 will also be announced in the Official Gazette. The announcement 
shall  include at least the date of the request, if any, the reexamination 
request  control number or the Commissioner initiated order control 
number, patent number,  title, class and subclass, name of the inventor, 
name of the patent owner of  record, and the examining group to which the 
reexamination is assigned. 
        (d)   All papers or copies thereof relating to a reexamination 
proceeding  which have been entered of record in the patent or 
reexamination file are open  to inspection by the general public, and 
copies may be furnished upon paying  the fee therefor. 

***** 

        Under 37 CFR 1.11(c), reexamination requests with sufficient fees 
and  any Commissioner initiated orders made without a request will be 
announced  in the Official Gazette. The Reexamination Preprocessing Unit 
will complete  a form with the information needed to print the notice. The 
forms are forwarded  at the end of each week to the Office of Publications 
for printing in the Official  Gazette. 

        In addition, a record of requests filed will be located in the 
Public  Search Room and in the Reexamination Preprocessing Unit. Office 
personnel may  use the PALM system to determine if a request for 
reexamination has been filed  in a particular patent. The Official Gazette 
notice will appear in the notice  section of the Official Gazette under 
the heading of Reexamination Requests  Filed and will include the name of 
any requestor along with the other items  set forth in 37 CFR 1.11(c). 


2230    Constructive Notice to Patent Owner 


        In some instances, it may not be possible to deliver mail to the 
patent  owner because no current address is available. If all efforts to 
correspond  with the patent owner fail, the reexamination proceeding will 
proceed without  the patent owner. The publication in the Official Gazette 
of the notice of  the filing of a request or the ordering of reexamination 
at the initiative  of the Commissioner will serve as constructive notice 
to the patent owner in  such an instance. 


2231    Processing of Request Corrections 


        Any payment of insufficient request filing fee should be marked 
"Box  Reexam" so that the fee may be promptly forwarded to the 
Reexamination Preprocessing  Unit.  If the fee payment completes the 
payment of the required fee, the request  will be processed, notice will 
be published in the Official Gazette, and the  request will be forwarded 
to the appropriate examining group for determination. 
        Any correction of a defect other than the fee should be directed 
to  the examining group where the file is located. The group clerical 
personnel  process any timely corrections and enter them in the file of 
the reexamination. 

2232    Public Access [R-1] 


        The reexamination folders will be stored in a separate central 
location  >(or other designated storage area)<  in the patent examining 
group unless  being acted upon by the examiner or a communication is being 
processed by the  group clerical personnel. In view of the 




desire to conduct the reexamination proceeding with special dispatch, the 
reexamination  folder may NOT be available to the public when it is in the 
Reexamination Preprocessing  Unit, and when the examiner has started 
consideration of some matter until  an action is mailed.  However, all 
areas should be as reasonable as possible  in allowing access and copying 
of the file. At times other than those identified  above, the 
reexamination file will be made available to members of the public  upon 
request. Inspection will be permitted in the patent examining group.   If 
a copy of the file is requested, it may be ordered from the Certification 
Branch of the Examination Services Division or the file wrapper may be 
hand-carried  by a member of the group to the Record Room and left with a 
member of the Record  Room staff. The file will be dispatched by using 
PALM transaction 1034-921.  A charge card PTOL-472 will be stapled to the 
file identifying the Reexamination  Control Number, Art Unit Number, 
Reexamination Clerk's name and phone number. 
        A member of the Record Room staff should call the reexamination 
clerk  in the group when copying is completed, and the file can then be 
retrieved  by a member of the group. The group should maintain a tickler 
record of the  location of the file wrapper by some system. 

        Similar procedures should be utilized in the event that an 
associated  patent file is requested for inspection and/or copying. Access 
to the patent  file wrapper should be restricted only when the examiner is 
preparing an action  in the reexamination folder which requires 
consideration of the patent file. 
E22330006.bmp 



E22330006.end 

Sale of Copies of Reexamination Requests 

        Copies of reexamination requests, all cited references, and the 
file  wrapper and contents of the patent file for which reexamination is 
requested  are available at the standard charge per page. Orders for such 
copies must  indicate the control number assigned the reexamination 
request. Orders should  be addressed to the Commissioner of Patents and 
Trademarks, Washington, D.C.  20231, Attention: Examination Services Division. 

TO DETERMINE ON PALM IF A 
REEXAMINATION REQUEST HAS BEEN 
FILED FOR A GIVEN PATENT NUMBER 

        Assume Patent Number Is 4104156 

        -Clear PALM Terminal 

        -Key In: 3110 and Press Send 

        -When Screen Fills 

        Enter: PAT NO. 4104156 (In Family Name) 

        Press: TAB 

        Enter: $ (In Given Name) 

        Press: TAB 

        Enter: Y 

        Press: SEND 

        Any reexamination for the patent number will be listed on the 
return  screen. 

        There will be about a ten (10) day lag between filing and data 
entry. 

2233    Processing in Examining Group [R-1] 


        Each examining group has designated at least one ** >legal 
instrument  examiner< and one backup clerk to act as * >a< reexamination 
clerk and has  assigned to that person those clerical duties and 
responsibilities which are  unique to reexamination. * >Regular< docket 
clerks will still perform their  normal duties and responsibilities in 
handling papers and records during the  actual reexamination process. The 
reexamination clerk has sole responsibility  for clerical processing until 
such time as the request is either granted or  denied.  If a request is 
granted, the responsibility for all docket activities  relating to ex 
parte examination is assigned to the regular ** >legal instrument 
examiner. A Group may designate all of its legal instrument examiners as 
reexamination  clerks. The Group Special Program Examiner and Paralegal 
will have the responsibility  to oversee clerical processing and will 
serve as a resource for questions.< 


FEES 

        Under reexamination, there are no fees due other than for the 
request  and any appeal, brief, and oral hearing fees under 37 CFR 1.191, 
1.192 and  1.194(b).  No fees are required for additional claims added or 
for issue of  the certificate. Any petitions filed under 35 U.S.C. 133 or 
37 CFR 1.182 or  1.183 relating to a reexamination proceeding require fees 
(37 CFR1.17(h) and 
(l)). Small entity reductions are available to the patent owner for the 35 
U.S.C. 133, appeal, brief, and oral hearing fees. Small entity reductions 
in fees are not available for the reexamination filing fee nor for 
petition  fees for petitions filed under 37 CFR 1.182 and 1.183. When a 
fee is required  in a merged proceeding, only a single fee is needed even 
though multiple copies  of the submissions (one for each file) are 
required. 
MAILING 

        A transmittal form with the requester's address will be used to 
forward  copies of Office actions to the requester. Whenever an Office 
action is issued,  a copy of this form will be made and attached to a copy 
of the Office action.  The use of this form removes the need to retype the 
requester's address each  time a mailing is required. When the patent 
owner is the requester, no such  form is needed. 

        The following steps should be taken when processing reexamination 
requests  in the examining groups. 

1.  Report receipt of the reexamination file in the group on the PALM 
terminal  and forward the file to the group's reexamination clerk. 

2.  Date stamp the date of receipt in the group on the reexamination file. 
3.  Charge file to the supervisory primary examiner of the group art unit 
indicated  on the reexamination file on the PALM terminal and forward the 
file to the  supervisory primary examiner. 

4.  The supervisory primary examiner promptly reviews the subject matter 
of  the patent in which reexamination was requested and either transfers 
the request  file (which should rarely occur) or assigns it to a primary 
examiner. The primary  examiner is informed and the request file is 
returned to the group's reexamination  clerk for entry of the examiner's 
name into PALM. 

5.  At about 6 weeks after the filing of the request, the request file 
should  be given to the examiner and charged to him or her on PALM. 

6.  The primary examiner then drafts a decision on the request and returns 
 it to be typed on a "special" basis, normally within 8 weeks after the 
filing  date of the request. 

7.  The typed decision is forwarded to the primary examiner for signature. 
 After signing, the file is returned to the group clerical unit for 
mailing  and PALM update, normally within 10 weeks after the filing date 
of the request. 
        The initial reexamination files were regular patent application 
files  which had orange tape applied to the face. The current 
reexamination file wrappers  have an orange color for easy identification. 


2234    Entry of Amendments 


37 CFR 1.121.       Manner of making amendments. 

***** 

        (f) Proposed amendments presented in patents involved in 
reexamination  proceedings must be presented in the form of a full copy of 
the text of: (1)  Each claim which is amended and (2) each paragraph of 
the description which  is amended. Matter deleted from the patent shall be 
placed between brackets  and matter added shall be underlined. Copies of 
the printed claims from the  patent may be used with any additions being 
indicated by carets and deleted  material being placed between brackets. 
Claims must not be renumbered and the  numbering of the claims added for 
reexamination must follow the number of the  highest numbered patent 
claim. No amendment may enlarge the scope of the claims  of the patent. No 
new matter may be introduced into the patent. 

        Amendments which comply with 37 CFR 1.121(f) are entered in the 
reexamination  file wrapper. An amendment is given a Paper No. and is 
designated by consecutive  letters of the alphabet (A, B, C, etc.). 

        The amendment will be entered by drawing a line in red ink through 
 the claim(s) or paragraph(s) canceled or amended, and the substituted 
copy  being indicated by reference letter. Claims must not be renumbered 
and the  numbering of the claims added during reexamination must follow 
the number of  the highest numbered patent claim. 

        ALL amendments in reexamination proceedings must be presented in 
the  form of a full copy of the text of each claim which is amended and 
each paragraph  of the description which is amended. 

        If a portion of the text is amended more than once, each amendment 
 should indicate ALL of the changes (insertions and deletions) in relation 
to  the current text of the patent under reexamination. 



        Examples of proper claim amendment format are as follows: 
1.  Patent claim: 

        A cutting means having a handle portion and a blade portion. 
2.  Proper first amendment format: 

        A [cutting means] knife having a bone handle portion and a notched 
 blade portion. 

3.  Proper second amendment format: 

        A [cutting means] knife having a handle portion and a serrated 
blade  portion. 

        Note that the second amendment includes the changes presented in 
the  first amendment; i.e. [cutting means] knife, as well as the changes 
presented  in the second amendment; i.e., serrated. However, the term 
notched which was  presented in the first amendment and  replaced by the 
term serrated in the  second amendment and the term bone which was 
presented in the first amendment  and deleted in the second amendment are 
NOT shown in brackets; i.e., [notched]  and [bone], in the second 
amendment. This is because the terms [notched] and  [bone] would not be 
changes from the current patent text and, therefore, are  not shown. In 
both the first and the second amendments, the entire claim is  presented 
with all the changes from the current patent text. 

        Although amendments will be entered for purposes of examination, 
the  amendments are not legally effective until the certificate is issued. 
        See MPEP w 2250 for manner of making amendments by patent owner. 
See  also MPEP w 2221. For entry of amendments in a merged proceeding see 
MPEP w 2283 and w 2285. 


2235    Record Systems 


PALM  - MONITORING SYSTEMS 

        The Patent Access and Location Monitoring (PALM) system is used to 
 support the reexamination process. The sections below delineate PALM 
related  activities. 

        1.  Reexamination File Data on PALM  - The routine PALM retrieval 
transactions  are used to obtain data on reexamination files. The user 
keys in the retrieval  transaction code (2952, 2962, etc.) the 
reexamination series code (90) and  the reexamination control number. 
Almost all data displayed for reexamination  files has the same meaning as 
for regular patent applications. Two changes  should be noted. In the 
first named applicant location (normally upper left  corner, abbreviation 
APPL) the patent number being reexamined will appear for  reexamination 
files. For a patent undergoing reexamination the number of the  proceeding 
can be determined on the 2953 retrieval screen. The pertinent 
reexamination  number(s) will appear in the "Details" section of the 
screen as a six digit  number preceded by an "R". If no "R" number is 
present then no reexamination  has been filed. 

        2.  Reexamination File Location Control  - The location of a 
reexamination  file is monitored in the same manner as regular patent 
application files. All  PALM transactions are equally applicable to 
regular patent applications and  reexamination files. 

        3.  Patent File Location Control  - The movement of patent files 
related  to requests for reexamination throughout the Office is monitored 
by the PALM  system in the normal fashion. Within the groups, the 
reexamination file and  patent file will be kept together, from initial 
receipt until the reexamination  is assigned to an examiner for 
determination. At this point, the patent file  will be charged to the 
examiner assigned the reexamination file (use transaction  1036) and will 
be kept in the examiner's room until the proceeding is terminated.  After 
the reexamination proceeding has been terminated, the patent file should 
be forwarded with the reexamination file to the Office of Publications via 
 the appropriate office. Publishing Division will forward the patent file 
and  the reexamination file to the Record Room after printing of the 
certificate. 
        4.  Reporting Events to PALM  - The PALM system is used to monitor 
 major events that take place in processing reexamination proceedings. 
During  initial processing all major pre-ex parte examination events are 
reported. 
 During the ex parte phase the mailing of examiner's actions are reported 
as  well as owner's responses thereto. The group reexamination clerk is 
responsible  for reporting these events using the bar code reader (BCR) 
initiated 2920 cathode-ray  tube (CRT) update screen display. The events 
that will be reported are as follows: 


        Determination Mailed  - Denial of request for reexamination. 
        Determination Mailed  - Grant of request for reexamination. 
        Petition for reconsideration of determination received. 

        Decision on petition mailed  - Denied. 

        Decision on petition mailed  - Granted. 

        Owner response to determination received. 

        Requester response to determination received. 

        The mailing of all examiner actions. 

        The receipt of owner's responses to examiner's actions and Office 
receipt  date. 

        Each of these events, as well as additional events reported by the 
 Reexamination Preprocessing Unit will be permanently recorded and 
displayed  in the "Contents" portion of PALM. In addition, status 
representative of these  events will also be displayed. 

        5.  Status Reports  - Various weekly "tickler" reports can be 
generated  for each group given the event reporting discussed above. The 
primary purpose  of these computer outputs is to assure that 
reexaminations are, in fact, processed  with "special dispatch." 

PALM Reports  - A number of automated reports generated from the PALM 
system  are provided to the groups at the beginning of each week. These 
reports serve  to indicate to the groups when certain deadlines are 
approaching. Each report  is subdivided by group and lists the requests in 
control number sequence. The  following reports have been identified. 

Requests Not Yet Received in Group -  This report serves to indicate to a 
group  those requests assigned to it for which preprocessing has not been 
completed  and which have not yet been received in the group.  This report 
provides an  indicator of future workload as well as identifying 
potential, problem stragglers. 
Requests Not Yet Assigned to an Examiner  - This report serves to 
highlight  those requests which have not been assigned to an examiner by 
the 6-week anniversary  of their filing. Requests appearing on this report 
should be located and docketed  immediately. 

Requests Which Should Be Taken Up for Determination  - This report lists 
those  requests which have been assigned to an examiner and in which no 
determination  has been mailed and the 6-week anniversary of their filing 
is past. Requests  on this report should be taken up for determination by 
the examiner. 
Requests for Which Determinations Should be Prepared - This report lists 
those  requests which have been assigned to an examiner and in which no 
determination  has been mailed and the 2-month anniversary of their filing 

is past. Determinations for requests on this report should be in the final 
 stages of preparation. 

*Requests for Which Determinations Should Have Been Mailed - This report 
lists  those requests which have been assigned to an examiner and in which 
no determination  has been mailed and the 10-week anniversary of their 
filing is past. Determinations  for requests on this report should be 
mailed immediately. 

*Overdue Determinations - This report lists those requests in which no 
determination  has been mailed and the 3-month anniversary of their filing 
is past. This report  should always be zero. 

Overdue Petitions for Reconsideration of a Denial  - This report lists 
those  requests in which the determination denied reexamination and no 
petition has  been received and 6 weeks have passed since the 
determination was mailed. Requests  on this report should be terminated. 

Overdue Owner Responses to Determinations - This report lists those 
requests  in which the determination ordered reexamination and the owner 
has not filed  a response and 10 weeks have passed since the mailing of 
the determination.  These requests should be taken up for immediate ex 
parte action by the examiner. 
Overdue Requester Responses to Statements -  This report lists those 
requests  in which a proper OWNER statement was received and NO requester 
reply has been  received and 10 weeks have passed since the receipt of the 
owner response.  These requests should be taken up for immediate action. 

*Overdue First Ex Parte Actions - This report lists those requests in 
which  reexamination has been ordered and a first action has not been 
mailed and 6 weeks have passed since the request became available for ex 
parte prosecution.  These requests should be taken up for immediate action 
by the examiner. 
*Overdue Action or Examiner's Answer - This report lists those 
reexaminations  which are up for 




second or subsequent action by the examiner and no such action has been 
mailed  and 2 months have passed since the filing of an owner response to 
a previous  action. 

*Overdue Advisory Action - This report lists those reexaminations which 
are  up for action by the examiner and no such action has been mailed and 
1 month  has passed since the filing of an owner response to a previous 
final action. 
*Overdue Owner Response - This report lists those requests in which there 
has  been an action rendered and 4 months have passed without an owner 
response. 
*Overdue Certificates - This report lists those requests in which a Notice 
 of Intent to Issue a Reexamination Certificate has been mailed and 3 
months  have passed since its mailing and no issue date has been assigned. 
*Requests With Prolonged Prosecution - This report lists pending requests 
which  have not matured into a certificate and 15 months have passed since 
the date  of filing. 

*Asterisk items require immediate action and followup, if appropriate. 
        6.  Historical Reporting - A variety of historical reports are 
possible  given the event recording described above. Thus, such statistics 
as the number  of requests filed and determinations made in a specified 
period or number or  kind of reexaminations in which an appeal was filed 
can be made available. 

2236    Assignment of Reexamination 


        Reexamination requests should normally be assigned to the art unit 
 which examines the class and subclass in which the patent to be 
reexamined  is currently classified as an original and to the primary 
examiner most familiar  with the claimed subject matter of the patent. 
Where no knowledgeable primary  examiner is available, the reexamination 
may be assigned to an assistant examiner.  In such an instance the 
supervisory primary examiner must sign all actions  and take 
responsibility for all actions taken. 


2237    Transfer Procedure 


        Although the number of reexamination requests which must be 
transferred  should be very small, the following procedures have been 
established for an  expeditious resolution of any such problems. 

        No transfer inquiry forms (PTO-447A) should be used in 
reexamination  situations. All reexamination requests in which a transfer 
is desired must  be hand-carried with the patent file by the supervisory 
primary examiner to  the supervisory primary examiner of the group art 
unit to which a transfer  is desired. Any conflict which cannot be 
resolved by the supervisory primary  examiners will be resolved by the 
group directors involved. 

        If the reexamination request is accepted in the "new" art unit, 
the  "new" supervisory primary examiner assigns the request to an examiner 
and the  "new" group's reexamination clerk PALMs in the request. 


2238    Time Reporting 


A. Clerical time reporting 

        Both the Program Management System (PMS) and Payroll systems now 
used  to monitor clerical time have been modified to report reexamination 
activities.  Time devoted to processing actual reexamination files in the 
groups should  be reported using the appropriate PMS Code and Project 
Code. It should be noted  that all clerical time consumed by reexamination 
activities must be reported  in the above manner. Such activities as 
supervision, copying, typing, and docketing  should be included. 

B. Professional time reporting 

        Reexamination fees are based on full cost recovery and it is 
essential  that all time expended on reexamination activities be reported 
accurately.  Thus, directors, supervisory patent examiners and board 
members as well as  examiners should report time spent on reexamination on 
their individual Time  and Attendance Report using the following Project 
Codes: 

        119051 - Used to report all activities related to a specific 
reexamination  proceeding up until the time ex parte prosecution is begun. 

        119052 - Used to report all activities related to a specific 
reexamination  proceeding from the time it is taken up for first, ex 
parte, action until the  issuance of a certificate takes place. 

        Examiners and SPE's will use the above codes to report their time 
for  reexamination activities on the Examiner's Biweekly Time Worksheet 
(PTO-690E)  by making appropriate entries in the Item 16 space. 



        Time reported using codes 119051 and 119052 will also be reported 
in  the Examiner Production System as "Other" time. 


2239    Reexamination Ordered at the Commissioner's Initiative 


37 CFR 1.520.     Reexamination at the initiative of the Commissioner. 
        The Commissioner, at any time during the period of enforceability 
of  a patent, may determine whether or not a substantial new question of 
patentability  is raised by patents or printed publications which have 
been discovered by  the Commissioner or which have been brought to the 
Commissioner's attention  even though no request for reexamination has 
been filed in accordance with  w 1.510. The Commissioner may initiate 
reexamination without a request for  reexamination pursuant to w 1.510. 
Normally requests from outside the Patent  and Trademark Office that the 
Commissioner undertake reexamination on his own  initiative will not be 
considered. Any determination to initiate reexamination  under this 
section will become a part of the official file of the patent and  will be 
given or mailed to the patent owner at the address as provided for  in w 
1.33(c). 

        The Commissioner may initiate reexamination without a request 
being  filed and without a fee being paid.  Such reexamination may be 
ordered at any  time during the period of enforceability of the patent. 

        The decision to order reexamination at the Commissioner's 
initiative  is normally made by the Deputy Assistant Commissioner for 
Patents after a review  of all the facts concerning the patent. It may be 
made by the Commissioner  of Patents and Trademarks, Deputy Commissioner 
or Assistant Commissioner for  Patents. The number of such Commissioner 
initiated orders is expected to be  very small. 

        If an Office employee becomes aware of an unusual fact situation 
in  a patent which he or she considers to clearly warrant reexamination, a 
memorandum  setting forth these facts along with the patent file and any 
prior art patents  or printed publications should be forwarded to the 
Deputy Assistant Commissioner  for patents through the supervisory chain 
of command. 

        If an order to reexamine is to be issued, the decision is prepared 
 and signed by the Deputy Assistant Commissioner for Patents, and the 
patent  file is forwarded to the Reexamination Preprocessing Unit for 
preparation of  the reexamination file and Official Gazette notice. 

        The decision to order reexamination made in the Office of the 
Deputy  Assistant Commissioner for Patents is NOT mailed by that Office. 
The Reexamination  Preprocessing Unit, once the reexamination file has 
been prepared and the Control  Number assigned, will mail the decision 
letter to the patent owner. Prosecution  will then proceed without further 
communication with anyone but the owner. 
        If the Deputy Assistant Commissioner for Patents refuses to issue 
an  order for reexamination, no record of any consideration of the matter 
will  be placed in the patent file and the patent owner will not be 
notified. 
        The Commissioner will not normally consider requests to order 
reexamination  at the Commissioner's initiative received from members of 
the public. If a  member of the public desires reexamination, a request 
and fee should be filed  in accordance with 37 CFR 1.510. 


2240    Decision on Request 


35 U.S.C. 303     .   Determination of issue by Commissioner. 

        (a)   Within three months following the filing of a request for 
reexamination  under the provisions of section 302 of this title, the 
Commissioner will determine  whether a substantial new question of 
patentability affecting any claim of  the patent concerned is raised by 
the request, with or without consideration  of other patents or printed 
publications. On his own initiative, and any time,  the Commissioner may 
determine whether a substantial new question of patentability  is raised 
by patents and publications discovered by him or cited under the 
provisions of section 301 of this title. 

        (b)   A record of the Commissioner's determination under 
subsection 
(a) of this section will be placed in the official file of the patent, and 
 a copy promptly will be given or mailed to the owner of record of the 
patent  and to the person requesting reexamination, if any. 

        (c)   A determination by the Commissioner pursuant to subsection 
(a)  of this section that no substantial new question of patentability has 
been  raised will be final and nonappealable. Upon such a determination, 
the Commissioner  may refund a portion of the reexamination fee required 
under section 302 of  this title. 

37 CFR 1.515.     Determination of the request for reexamination. 
        (a)   Within three months following the filing date of a request 
for  reexamination, an examiner will consider the request and determine 
whether  or not a substantial new question of patentability affecting any 
claim of the  patent is raised by the request and the prior art cited 
therein, with or without  consideration of other patents or printed 
publications. The examiner's determination  will be based on the claims in 
effect at the time of the determination and  will become a part of the 
official file of the patent and will be given or  mailed to the patent 
owner at the address as provided for in w 1.33(c) and  to the person 
requesting reexamination. 

        (b)   Where no substantial new question of patentability has been 
found,  a refund of a portion of the fee for requesting reexamination will 
be made  to the requester in accordance with w 1.26(c). 

        (c)   The requester may seek review by a petition to the 
Commissioner  under w 1.181 within one month of the mailing date of the 
examiner's determination  refusing reexamination. Any such petition must 
comply with w 1.181(b). If no  petition is timely filed or if the decision 
on petition affirms that no substantial  new question of patentability has 
been raised, the determination shall be final  and nonappealable. 



        Prior to making a determination on the request for reexamination, 
the  examiner must request a litigation computer search by the STIC 
(Scientific  Library) to check if the patent has been, or is, involved in 
litigation. The  "Litigation Review" box on the reexamination file wrapper 
should be completed  to indicate that the review was conducted and the 
results thereof. A copy of  the STIC search should be hole-punched and 
placed on the right side of the  reexamination file. Additional 
information or guidance as to the litigation  search may be obtained from 
the library of the Office of the Solicitor, if  necessary. If the patent 
is or was involved in litigation, and a paper referring  to the court 
proceeding has been filed, reference to the paper by number should  be 
made in the "Litigation Review" box as "litigation; see paper #1C". If a 
litigation records search is already noted on the file, the examiner need 
not  repeat or update it. 

        If litigation has concluded or is taking place in the patent on 
which  a request for reexamination has been filed, the request must be 
promptly brought  to the attention of the Group Director, who should 
review the decision on the  request and any examiner's action to ensure it 
conforms to the current Office  litigation policy and guidelines.  See 
MPEP w 2286. 

        35 U.S.C. 303 requires that the Commissioner determine whether or 
not  a "substantial new question of patentability" affecting any claim of 
the patent  of which reexamination is desired, is raised in the request 
within a time period  of 3 months following the filing date of a request. 
See also MPEP w 2241. 
 Such a determination may be made with or without consideration of other 
patents  or printed publications in addition to those cited in the 
request. No input  from the patent owner is considered prior to the 
determination unless the patent  owner filed the request. See Patlex 
Corporation v. Mossinghoff, 226 USPQ 985 
(Fed, Cir. 1985). 

        The claims in effect at the time of the determination will be the 
basis  for deciding whether a substantial new question of patentability 
has been raised. 
(37 CFR 1.515(a)). Amendments which have been presented with the request 
if  by the patent owner or which have been filed in a pending 
reexamination proceeding  in which the certificate has not been issued, or 
amendments which have been  submitted in a reissue application on which no 
reissue patent has been issued,  will not be considered or commented upon 
when deciding requests. 

        The decision on the request for reexamination has as its main 
object  either the granting or denial of an order for reexamination. This 
decision  is based on whether or not "a substantial new question of 
patentability" is  found. The final decision as to unpatentability will be 
made during any reexamination  proceedings. Accordingly no prima facie 
case of unpatentability need be found  to grant an order for 
reexamination. It must be noted, however, that a decision  to deny an 
order for reexamination is equivalent to a holding that the patent  claims 
are patentable over the cited prior art. Where there have been prior 
decisions relating to the patent, see MPEP w 2242. 

        It is only necessary to establish that a substantial new question 
of  patentability exists as to one of the patent claims to order 
reexamination.  In a reexamination, normally all patent claims will be 
reexamined. However,  where there has been a prior Federal court decision 
as to some claims, see  MPEP w 2242. The decision should discuss ALL 
patent claims in order to inform  the patent owner of the examiner's 
position so that a response thereto may  be made in the patent owner's 
statement. 

        The examiner should indicate, insofar as possible, his or her 
initial  position on all the issues identified in the request or by the 
requester so  that comment thereon may be received in the patent owner's 
statement and in  the requester's reply. However, the examiner SHOULD NOT 
reject claims in the  order for reexamination. 

        The Commissioner of Patents and Trademarks has the authority to 
order  reexamination only in those cases which raise a substantial new 
question of  patentability. The substantial new question of patentability 
requirement protects  patentees from having to respond to, or participate 
in unjustified reexaminations,  Patlex Corporation v. Mossinghoff, 226 
USPQ 985, 989 (Fed. Cir. 1985). 
SECOND OR SUBSEQUENT REQUEST FILED 
DURING REEXAMINATION 

        If a second or subsequent request for reexamination is filed (by 
any  party) while a reexamination is pending, the presence of a 
substantial new  question of patentability depends on the prior art cited 
by the second or subsequent  requester. If the requester includes in the 
second or subsequent request prior  art which raised a substantial new 
question in the pending reexamination, 



reexamination should generally be ordered. This is because the prior art 
which  raised a substantial new question of patentability resulting in an 
order for  reexamination continues to raise a substantial new question of 
patentability  until the pending reexamination is concluded. However, in 
aggravated situations  where it appears clear that the second or 
subsequent request was filed for  purposes of harassment, the request 
should be denied. The grant of such a request  would unduly prolong the 
conclusion of the pending reexamination and be inconsistent  with the 
requirement that reexamination proceeding be conducted with special 
dispatch. If the second or subsequent requester does not include the prior 
 art which raised a substantial new question of patentability in the 
pending  reexamination, reexamination may or may not be ordered depending 
on whether  the different prior art raises a substantial new question of 
patentability.  The second or subsequent request should be determined on 
its own merits without  reference to the pending reexamination. 

        Where a reexamination is pending at the time a second or 
subsequent  request for reexamination is to be 
decided, see MPEP w 2283. 


2241    Time for Deciding Request 


        The determination whether or not to reexamine must be made within 
3  months following the filing date of a request. See 35 U.S.C. 303(a) and 
37  CFR 1.515(a). The examiner should pick up a request for decision about 
6 weeks after the request was filed. The decision should be mailed within 
10  weeks of the filing date of the request. A determination to reexamine 
may be  made at the initiative of the Commissioner at any time during the 
period of  enforceability of a patent. See 35 U.S.C. 303(a) and 37 CFR 
1.520. 

2242    Criteria for Deciding Request [R-2] 


SUBSTANTIAL NEW QUESTION OF PATENTABILITY 

        The presence or absence of "a substantial new question of 
patentability"  determines whether or not reexamination is ordered. The 
meaning and scope of  the term "a substantial new question of 
patentability" is not defined in the  statute and must be developed to 
some extent on a case-by-case basis. If the  prior art patents and printed 
publications raise a substantial new question  of patentability of at 
least one claim of the patent, then a substantial new  question of 
patentability is present, unless it is clear to the examiner that  the 
same question of patentability has already been decided by (1) a final 
holding of invalidity by a Federal Court or (2) by the Office either in 
the  original examination, the examination of a reissue patent, or an 
earlier concluded  reexamination. The answer to the question of whether a 
"substantial new question  of patentability" exists, and therefore whether 
reexamination may be had, is  decided by the Commissioner, and, as 35 
U.S.C. 303 provides, that determination  is final, i.e., not subject to 
appeal. See In re Etter, 225 USPQ 1 (Fed. Cir.  1985). 

        A prior art patent or printed publication raises a substantial new 
 question of patentability where there is a substantial likelihood that a 
reasonable  examiner would consider the prior art patent or printed 
publication important  in deciding whether or not the claim is patentable. 
Thus, in making the determination  on the request, the examiner should 
consider the prior art patents and/or printed  publications and, if there 
is a substantial likelihood that a reasonable examiner  would consider 
them important, should find ``a substantial new question of 
patentability" unless the same question of patentability has already been 
decided  as to the claim in a final holding of invalidity by a Federal 
court or favorably  by the Office.  For example, the same question of 
patentability may have already  been decided by the Office where the 
examiner finds the additional prior art  patents or printed publications 
are merely cumulative to similar prior art  already fully considered by 
the Office in a previous examination of the claim. 

        For "a substantial new question of patentability" to be present, 
it  is only necessary that (1) the prior art patents and/or printed 
publications  raise a substantial new question of patentability regarding 
at least one claim  and (2) the same question of patentability as to the 
claim has not been decided  by the Office in a previous examination or in 
a final holding of invalidity  by the Federal Courts in a decision on the 
merits involving the claim. It is  not necessary that a "prima facie" case 
of unpatentability exist as to the  claim in order for "a substantial new 
question of patentability" to be present  as to the claim. Thus, "a 
substantial new question of patentability" as to  a patent claim could be 
present even if the examiner would not necessarily  reject the claim as 
either fully anticipated by, 



or obvious in view of, the prior patents or printed publications. The 
difference  between "a substantial new question of patentability" and a 
"prima facie" case  of unpatentability is important. See generally In re 
Etter, 
225 USPQ 1, 4 (Fed. Cir. 1985) (footnote 5). 

        In order to further clarify the meaning of "a substantial new 
question  of patentability" certain situations are outlined below which, 
if present,  should be considered when making a decision as to whether or 
not "a substantial  new question of patentability" is present. 

POLICY IN SPECIFIC SITUATIONS 

1.  Prior Favorable Decisions by the Patent and Trademark Office on the 
Same  or Substantially Identical Prior Art in Relation to the Same Patent. 

        **>A "substantial new question of patentability" is not raised if 
the  Office has previously considered the same question of patentability 
as to a  patent claim favorable to the patent owner based on the same 
prior art patents  or printed publications.  In re Recreative 
Technologies, 83 F.3d 1394, 38 USPQ2d  1776 (Fed. Cir. 1996).  For this 
purpose, the same question of patentability  was "previously considered" 
if the grounds of rejection based on the question  of patentability: 

1.  Would apply to the same claimed subject matter as a previous rejection 
 in the examination of the original patent or earlier concluded 
reexamination; 
2.  Would rely on the same combination of patents and printed publications 
 as the previous rejection; and 

3.  Would apply the same statutory basis as the previous rejection. 
In an unusual fact situation, application of the above-stated test may be 
difficult  or yield a questionable result.  Cf. Ex parte Chicago Rawhide, 
223 USPQ 351 
(Bd. Pat. App. & Inter. 1984) and Ex parte Gould, 231 USPQ 943, 946 (Bd. 
Pat.  App. & Inter. 1986). In such a situation, the examiner should 
consult with  the Group Director to determine the appropriate action.  See 
also MPEP w 2258.< 
        2. Prior Adverse Decisions by the Office on the Same or 
Substantially  Identical Prior Art in the Same Patent. 

        A prior decision adverse to the patentability of a claim of a 
patent  by the Office based upon prior art patents or printed publications 
would usually  mean that "a substantially new question of patentability" 
is present. Such  an adverse decision by the Office could arise from a 
reissue application which  was abandoned after rejection of the claim and 
without disclaiming the patent  claim. 

        3.  Prior Adverse Reissue Application Final Decision by the 
Commissioner  or the Board of Patent Appeals and Interferences Based Upon 
Grounds Other Than  Patents or Printed Publications. 

        Any prior adverse final decision by the Commissioner, or the Board 
 of Patent Appeals and Interferences, on an application seeking to reissue 
the  same patent on which reexamination is requested will be considered by 
the examiner  when determining whether or not a "substantial new question 
of patentability"  is present. To the extent that such prior adverse final 
decision was based  upon grounds other than patents or printed 
publications, the prior adverse  final decision will not be considered in 
determining whether or not a "substantial  new question of patentability" 
is present. 

        4.  Prior Favorable or Adverse Decisions on the Same or 
Substantially  Identical Prior Patents or Printed Publications in Other 
Cases not Involving  the Patent. 

        While the Office would consider decisions involving substantially 
identical  patents or printed publications in determining whether a 
"substantial new question  of patentability" is raised, the weight to be 
given such decisions will depend  upon the circumstances. For example, if 
the Office has used the same or substantially  identical prior art to 
reject the same or similar claims in another application  or patent under 
reexamination, this would be considered as being material in  making a 
determination. Similarly, if a foreign patent office or a foreign  court 
has used the same or substantially identical prior art to reject or 
invalidate  the same or similar claims, this would be considered as being 
material in making  the determination. Likewise, if a United States Court 
has invalidated similar  claims in another patent based on the same or 
substantially identical prior  patents or printed publications, this would 
be considered as being material  in making the determination. Favorable 
decisions on the same or substantially  identical prior patents or printed 
publications in other cases would be considered  but would not be controlling. 



POLICY WHERE A FEDERAL COURT 
DECISION HAS BEEN ISSUED ON THE PATENT 

        When the initial question as to whether the prior art raises a 
substantial  new question of patentability as to a patent claim is under 
consideration,  the existence of a final court decision of claim validity 
in view of the same  or different prior art does not necessarily mean that 
no new question is present,  in view of the different standards of proof 
employed by the district courts  and the Office.  Thus, while the Office 
may accord deference to factual findings  made by the court, the 
determination of whether a substantial new question  of patentability 
exists will be made independently of the court's decision  on validity as 
it is not controlling on the Office. A non-final holding of  claim 
invalidity or unenforceability will not be controlling on the question  of 
whether a substantial new question of patentability is present. However, 
a final holding of claim invalidity or unenforceability is controlling on 
the  Office. In such cases, a substantial new question of patentability 
would not  be present as to the claims finally held invalid or 
unenforceable. See Ethicon  v. Quigg, 7 USPQ2d 1152 (Fed. Cir. 1988). 

        Any situations requiring clarification should be brought to the 
attention  of the Office of the Assistant Commissioner for Patents. 


2243    Claims Considered in Deciding Request 


        The claims in effect at the time of the determination will be the 
basis  for deciding whether "a substantial new question of patentability" 
is present 
(37 CFR 1.515(a)).  While the examiner will ordinarily concentrate on 
those  claims for which reexamination is requested, the finding of "a 
substantial  new question of patentability" can be based upon a claim of 
the patent other  than the ones for which reexamination is requested. For 
example, the request  might seek reexamination of particular claims, but 
the examiner is not limited  to those claims and can make a determination 
that "a substantial new question  of patentability" is present as to other 
claims in the patent without necessarily  finding "a substantial new 
question" with regard to the claims requested. If  a substantial new 
question of patentability is found as to any claim, reexamination  will be 
ordered and will normally cover all claims except where some claims  have 
been finally held invalid in a Federal court decision on the merits. The 
decision should discuss all patent claims in order to inform the patent 
owner  of the examiner's position. See MPEP w 2242 for patent claims which 
have been  the subject of a prior decision. Amendments or new claims will 
not be considered  or commented upon when deciding a 
request. 


2244    Prior Art on Which the Determination Is Based 


        The determination whether or not "a substantial new question of 
patentability"  is present can be based upon any prior art patents or 
printed publications.  Section 303(a) of the statute and 37 CFR 1.515(a) 
provide that the determination  on a request will be made "with or without 
consideration of other patents or  printed publications," i.e., other than 
those relied upon in the request.   The examiner is not limited in making 
the determination to the patents and  printed publications relied on in 
the request.  The examiner can find "a substantial  new question of 
patentability" based upon the prior art patents or printed  publications 
relied on in the request, a combination of the prior art relied  on in the 
request and other prior art found elsewhere, or based entirely on 
different patents or printed publications. The primary source of patents 
and  printed publications used in making the determination are those 
relied on in  the request. However, the examiner can also consider the 
prior art of record  in the patent file from the earlier examination or a 
reexamination and any  patents and printed publications of record in the 
patent file from submissions  under 37 CFR 1.501 which are in compliance 
with 37 CFR 1.98 in making the determination.  If the examiner believes 
that additional prior art patents and publications  can be readily 
obtained by searching to supply any deficiencies in the prior  art cited 
in the request, the examiner can perform such an additional search.  Such 
a search should be limited to that area most likely to contain the 
deficiency  of the prior art previously considered and should be made only 
where there  is a reasonable likelihood that prior art can be found to 
supply any deficiency  necessary to "a substantial new question of 
patentability." 

        The determination should be made on the claims in effect at the 
time  the decision is made (37 CFR 1.515(a)). 

        The Commissioner of Patents and Trademarks has the authority to 
order  reexamination only in those cases which raise a substantial new 
question of  patentability. The substantial new question of patentability 
requirement protects  patentees from having to respond to, or 




participate in unjustified reexaminations, Patlex Corporation v. 
Mossinghoff,  226 USPQ 985, 989 (Fed. Cir. 1985). 


2245    Processing of Decision 


        After the examiner has prepared the decision and proofread and 
signed  the typed version, the reexamination file and decision are given 
to the group's  reexamination clerk for processing. 

        The reexamination clerk then prints the heading on the decision by 
 using the computer terminal and makes 3 copies of any prior art documents 
not  already supplied by or to the patent owner or requester, if the 
request was  made by a party other than the patent owner.  If the patent 
owner filed the  request, only 2 copies are required. 

        A copy of the decision is then mailed to the requester and the 
patent  owner, along with any required copies of prior art documents. The 
original  signed copy of the decision and a copy of any prior art enclosed 
is made of  record in the reexamination file. 

        The file is returned to the special storage area in the examining 
group. 

2246    Decision Ordering Reexamination 


35 U.S.C. 304     .   Reexamination order by Commissioner. 

        If, in a determination made under the provisions of subsection 
303(a)  of this title, the Commissioner finds that a substantial new 
question of patentability  affecting any claim of a patent is raised, the 
determination will include an  order for reexamination of the patent for 
resolution of the question. The patent  owner will be given a reasonable 
period, not less than two months from the  date a copy of the 
determination is given or mailed to him, within which he  may file a 
statement on such question, including any amendment to his patent  and new 
claim or claims he may wish to propose, for consideration in the 
reexamination.  If the patent owner files such a statement, he promptly 
will serve a copy of  it on the person who has requested reexamination 
under the provisions of section  302 of this title. Within a period of two 
months from the date of service,  that person may file and have considered 
in the reexamination a reply to any  statement filed by the patent owner. 
That person promptly will serve on the  patent owner a copy of any reply 
filed. 

37 CFR 1.525.     Order to reexamine. 

        (a)   If a substantial new question of patentability is found 
pursuant  to w 1.515 or w 1.520, the determination will include an order 
for reex- amination  of the patent for resolution of the question. If the 
order for reexamination  resulted from a petition pursuant to 
w 1.515(c), the reexamination will ordinarily be conducted by an examiner 
other  than the examiner responsible for the initial determination under w 
1.515(a). 
        (b)   If the order for reexamination of the patent mailed to the 
patent  owner at the address as provided for in w 1.33(c) is returned to 
the Office  undelivered, the notice published in the Official Gazette under 
w 1.11(c) will be considered to be constructive notice and reexamination 
will  proceed. 

        If the request is granted, the examiner will conclude that a 
substantial  new question of patentability has been raised by identifying 
all claims and  issues, the patents or printed publications relied on, and 
a brief statement  of the rationale supporting each new question. In a 
simple case, this may entail  adoption of the reasons provided by the 
requester. The references relied on  by the examiner should be cited on a 
PTO-892, unless already listed on a form  PTO-1449 by the requester, and a 
copy of the reference supplied only where  it has not been previously 
supplied to the owner and requester. 

        The decision granting the request is made on a decision form and 
will  remind the owner and requester of the statutory time periods that 
they have  in which to respond. 

        The wording of Form Paragraph 22.01 should be used at the end of 
each  decision letter. 

W 22.01       New Question of Patentability 

        A substantial new question of patentability affecting claim [1] of 
 United States Patent Number [2] is raised by the request for 
reexamination. 
        Extensions of time under 37 CFR 1.136(a) will not be permitted in 
reexamination  proceedings because the provisions of 37 CFR 1.136 apply 
only to "an applicant"  and not to parties in a reexamination proceeding. 
Additionally, 35 U.S.C. 305  requires that reexamination proceedings "will 
be conducted with special dispatch" 
(37 CFR 1.550(a)). Extension of time in reexamination proceedings are 
provided  for in 37 CFR 1.550(c). 

        Upon determination that a substantial new question of 
patentability  is present, either pursuant to a request under 35 U.S.C. 
302 and 37 CFR 1.515,  or a sua sponte determination under 35 U.S.C. 
303(a), second sentence, and  37 CFR 1.520, the Commissioner issues an 
order to reexamine. The statutory  wording is that: 

        [T]he determination [that a substantial new question of 
patentability  is raised] will include an order for reexamination of the 
patent for resolution  of the question. [35 U.S.C. w 304, first sentence] 

        If the request is granted, the examiner must identify at least one 
 substantial new question of patentability and explain how the prior art 
patents  or printed publications raise such a question. The examiner 
should indicate  insofar as possible, his or her initial position on all 
the issues identified  in the request or by the requester (without 
rejecting claims) so that comment  thereon may be received in the patent 
owner's statement and in the requester's  reply. The prior art relied 




on should be listed by the examiner on a form PTO-892 if it is not already 
 listed on a form PTO-1449 by the requester. 

        If arguments are presented as to grounds not based on prior 
patents  or printed publications, such as those based on public use or 
sale, or abandonment  under 
35 U.S.C. 102(c), the examiner should note that such grounds are improper 
for  reexamination and are not considered or commented upon. See 37 CFR 
1.552(c). 
        Copies of any patents or printed publications relied on, which 
have  not been previously supplied to the owner and requester, should be 
included  with the decision. 

        The decision granting a request must set forth the time periods 
for  the patent owner and requester to file their statement and any reply 
thereto. 
        Neither the patent owner nor the requester has any right to 
petition  or request reconsideration of a decision to grant a request for 
reexamination  even if the decision grants reexamination for reasons other 
than those urged  by the requester or on less than all the grounds urged 
by the requester. However,  in cases where no discretion to grant a 
request for reexamination exists, such  as where the grant is not based on 
patents or printed publications "appropriate  circumstances" under 37 CFR 
1.181(a)(3) exist to vacate the grant of such a  request. 

        Any prior art citations under 37 CFR 1.501 submitted after the 
date  of the decision on the order should be retained in a separate file 
by the reexamination  clerk and stored until the reexamination proceeding 
is terminated, at which  time the prior art citation 
is then entered of record on the patent file. See MPEP 
w 2206. 


2247    Decision on Request for Reexamination Denied 


        The request for reexamination will be denied if a substantial new 
question  of patentability is not found based on patents or printed 
publications. 
        If the examiner concludes that no substantial new question of 
patentability  has been raised, the examiner should indicate why the 
claims are clearly patentable  in a manner similar to that used to 
indicate reasons for allowance (MPEP w  1302.14). The examiner should also 
respond to the substance of each argument  raised by the requester which 
is based on patents or printed publications.  If arguments are presented 
as to grounds not based on prior patents or printed  publications, such as 
those based on public use or sale, or abandonment under 35 U.S.C. 102(c), 
the examiner should note that such grounds are improper for  reexamination 
and are not considered or commented upon. See 37 CFR 1.552(c). 
        A copy of any denied request and the decision thereon are made 
part  of the official patent file. 

        If the denial of the request is not overturned by a petition 
decision,  a refund will be made to the requester under 37 CFR 1.26(c) 
after the period  for petition has expired. 

        Use Form Paragraph 22.02 as the introductory paragraph in a 
decision  denying reexamination. 

W 22.02       No New Question of Patentability 

        No substantial new question of patentability is raised by the 
request  for reexamination and prior art cited therein for the reasons set 
forth below. 


A22470007.bmp 



A22470007.end 



DECISION 

        A substantial new question of patentability affecting Claims 1-3 
of  United States Patent Number 9.999.999 to Key is raised by the request 
for reexamination. 
        Extensions of time under 37 CFR 1.136(a) will not be permitted in 
these  proceedings because the provisions of 37 CFR 1.136 apply only to 
``an applicant''  and not to parties in a reexamination proceeding. 
Additionally, Office policy  requires that reexamination proceedings 
``will be conducted with special dispatch'' 
(37 CFR 1.550(a)) and provides for extensions of time in reexamination 
proceedings  as set forth in 37 CFR 1.550(c). 

        The request indicates that Requester considers that Claims 1-3 are 
 unpatentable over Smith taken with Jones. 

        The request further indicates that Requester considers that Claim 
4  is unpatentable over the Horn publication. 

        It is agreed that the consideration of Smith raises a substantial 
new  question of patentability as to Claims 1-3 of the Key patent. As 
pointed out  on pages 2-3 of the request, Smith teaches using an extruder 
supported on springs  at a 30 degree angle to the horizontal but does not 
teach the specific polymer  of Claims 1-3 which is extruded. The teaching 
as to spring-supporting the extruder  at 30 degrees was not present in the 
prosecution of the application which became  the Key patent. Further, 
there is a substantial likelihood that a reasonable  examiner would 
consider this teaching important in deciding whether or not  the claim is 
patentable. Accordingly, Smith raises a substantial new question  of 
patentability as to Claims 1-3, which question has not been decided in a 
previous examination of the Key patent. 

        The Horn publication does not raise a new question of 
patentability  as to Claim 4 because its teaching as to the extrusion die 
is a substantial  equivalent of the teaching of the die by the Dorn patent 
which was considered  in the prosecution of the application which became 
the Key patent. However,  Claim 4 will be reexamined along with Claims 1-3 
of the Key patent. 
                                                Kenneth Schor 
                                                Examiner, Gp 1300 


A22470008.bmp 



A22470008.end 



DECISION 

        No substantial new question of patentability is raised by the 
request for reexamination and prior art cited therein for the reasons set 
forth  below. 

        The request indicates that Requester considers that Claims 1-2 are 
 unpatentable over Smith taken with Jones. 

        The request further indicates that Requester considers that Claim 
3 is unpatentable over Smith taken with Jones and when further taken with 
the  Horn publication. 

        The claims of the Key patent, for which reexamination is 
requested,  require that an extruder be supported on springs at an angle 
of 30 degrees  to the horizontal, while a specific chlorinated polymer is 
extruded through  a specific extrusion die. 

        The Smith patent does not raise a substantial new question of 
patentability  as to the Key claims. Smith's teaching as to the extruder 
being spring-supported  at 30 degrees is a substantial equivalent of the 
teaching of same by the Dorn  patent which was considered in the 
prosecution of the application which became  the Key patent. 

        In the request for reexamination, it is argued that Jones teaches 
the  extrusion die. However, Jones was also used in the prosecution of the 
Key application  to teach the extrusion die. Further, there is no argument 
in the reexamination  request that Jones is being applied in a manner 
different than in the prosecution  of the Key application. 

        The Horn publication has been argued to show the connection of the 
 support means to the extruder via bolts, as recited in Claim 3 of the Key 
patent.  Although this teaching was not provided in the prosecution of the 
Key application,  the teaching would not be considered to be important to 
a reasonable examiner  in deciding whether or not the Key claims are 
patentable. 

        The references set forth in the request have been considered both 
alone  and in combination. They fail to raise a substantial new question 
of patentability  as to any one of the Key patent claims. Accordingly, the 
request for reexamination  is DENIED. 

                                                        Kenneth Schor 
                                                        Examiner, Gp 1300 



2248    Petition From Denial of Request 


37 CFR 1.515    . Determination of the request for reexamination. 
***** 

        (c)   The requester may seek review by a petition to the 
Commissioner  under w 1.181 within one month of the mailing date of the 
examiner's determination  refusing reexamination. Any such petition must 
comply with w 1.181(b). If no  petition is timely filed or if the decision 
on petition affirms that no substantial  new question of patentability has 
been raised, the determination shall be final  and nonappealable. 

PROCESSING OF PETITION UNDER 
37 CFR 1.515(c) 

        Once the request for reexamination has been denied, the 
reexamination  file will be stored in the group central files to await a 
petition. If no petition  is filed within one (1) month, the file is 
forwarded to the Office of Finance  for a refund. If a petition is filed, 
it is forwarded to the office of the  group director for decision. 

        The director's review will be de novo. Each decision by the group 
director  will conclude with the paragraph: 

        "This decision is final and nonappealable. 37 CFR 1.515(c). No 
further  communication on this matter will be acknowledged or considered." 
        If the petition is granted, the decision of the group director 
should  include a sentence setting a 2-month period for filing a statement 
under 37  CFR 1.530; the reexamination file will then be returned to the 
supervisory  primary examiner of the art unit that will handle the 
reexamination for consideration  of reassignment to another examiner. 

        Reassignment will be the general rule and only in exceptional 
circumstances  where no other examiner is available and capable to give a 
proper examination  will the case remain with the original examiner. If 
the original determination  is signed by the supervisory primary examiner, 
the reexamination ordered by  the director will be assigned to a primary 
examiner. 

        The requester may seek review of a denial of a request for 
reexamination  by petitioning the Commissioner under 37 CFR 1.515(c) and 
1.181 within 1 month  of the mailing date of the decision denying the 
request for reexamination.  A request for an extension of the time period 
to file a petition from the denial  of a request for reexamination can 
only be entertained by filing a petition  under 37 CFR 1.183 with 
appropriate fee to waive the time provisions of 37  CFR 1.515(c). Except 
for the limited exception described in MPEP w 2246, no  petition may be 
filed requesting review of a decision granting a request for 
reexamination even if the decision grants the request for reasons other 
than  those advanced by requester or as to claims other than those for 
which requester  sought reexamination. No right to review exists if 
reexamination is ordered  in such a case because all claims will be 
reexamined in view of all prior art  during the reexamination under 37 CFR 
1.550. 

        After the time for petition has expired without a petition having 
been  filed, or a petition has been filed and the decision thereon affirms 
the denial  of the request, a partial refund of the filing fee for 
requesting reexamination  will be made to the requester. (35 U.S.C. 303(c) 
and 37 CFR 1.26(c)). A decision  on a petition is final and is not appealable. 


2249    Patent Owner's Statement 


37 CFR 1.530.       Statement and amendment by patent owner. 

        (a)   Except as provided in w 1.510(e), no statement or other 
response  by the patent owner shall be filed prior to the determinations 
made in accordance  with ww 1.515 or 1.520. If a premature statement or 
other response is filed  by the patent owner it will not be acknowledged 
or considered in making the  determination. 

        (b)   The order for reexamination will set a period of not less 
than  two months from the date of the order within which the patent owner 
may file  a statement on the new question of patentability including any 
proposed amendments  the patent owner wishes to make. 

        (c)   Any statement filed by the patent owner shall clearly point 
out  why the subject matter as claimed is not anticipated or rendered 
obvious by  the prior art patents or printed publications, either alone or 
in any reasonable  combinations. Any statement filed must be served upon 
the reexamination requester  in accordance with w 1.248. 

        (d)   Any proposed amendments to the description and claims must 
be  made in accordance with w 1.121(f). No amendment may enlarge the scope 
of the  claims of the patent or introduce new matter. No amendment or new 
claims may  be proposed for entry in an expired patent. Moreover, no 
amended or new claims  will be incorporated into the patent by certificate 
issued after the expiration  of the patent. 

        (e)   Although the Office actions will treat proposed amendments 
as  though they have been entered, the proposed amendments will not be 
effective  until the reexamination certificate is issued. 

        The patent owner has no right to file a statement subsequent to 
the  filing of the request but prior to the order for reexamination. Any 
such premature  statement will not be acknowledged or considered by the 
Office when making  the decision on the request. See MPEP w 2225 and 
Patlex Corp. v. Mossinghoff,  226 USPQ 985 (Fed. Cir. 1985). 



        If reexamination is ordered, the decision will set a period of not 
 less than 2 months within which period the patent owner may file a 
statement  and any narrowing amendments to the patent claims. If 
necessary, an extension  of time beyond the 2 months may be requested 
under 37 CFR 1.550(c) by the patent  owner. Such request is decided by the 
Group Director. 

        Any statement filed must clearly point out why the patent claims 
are  believed to the patentable, considering the cited prior art patents 
or printed  publications alone or in any reasonable combination. 

        A copy of the statement must be served on the requester, if the 
request  was not filed by the patent owner. 

        In the event the decision is made to reexamine, the patent statute 
(35 U.S.C. 304) provides that the owner will have a period, not less than 
2  months (minimum time), to file a statement directed to the issue of 
patentability.  Since the 2-month period is the minimum provided by 
statute, first extensions  may be granted up to one (1) month based upon 
good and sufficient reasons.  Further extensions should be granted only in 
the most extraordinary situations;  e.g., death or incapacitation of the 
representative or owner. 

        Lack of proof of service poses a problem especially where the 
patent  owner fails to indicate that he or she has served the requester in 
the statement  subsequent to the order for reexamination (37 CFR 
1.530(c)). In this situation,  the Reexamination Clerk should immediately 
contact the patent owner by telephone  to see whether the indication of 
proof of service was inadvertently omitted  from the patent owner's 
response. If it was, the patent owner should be advised  to submit a 
supplemental paper indicating the manner and date of service on 
requester. If the patent owner cannot be contacted, the Reexamination 
Clerk  will then contact the requester to verify that service has in fact 
been made  by the patent owner and indicate that acknowledgment of proof 
of service should  accompany requester's reply (37 CFR 1.248(b)(1)). If 
the 2-month period for  response under 37 CFR 1.530 has expired and 
requester has not been served,  the patent owner's statement is considered 
inappropriate (37 CFR 1.248) and  may be denied consideration; see MPEP w 
2267. 

        It should be noted that the period for response by requester for a 
 reply under 37 CFR 1.535 is 2 months from the owner's service date and 
not  2 months from the date the patent owner's statement was received in 
the Patent  and Trademark Office. 


2250    Amendment by Patent Owner [R-1] 


37 CFR 1.121.     Manner of making amendments. 

***** 

        (f)   Proposed amendments presented in patents involved in 
reexamination  proceedings must be presented in the form of a full copy of 
the text of (1)  each claim which is amended and (2) each paragraph of the 
description which  is amended. Matter deleted from the patent shall be 
placed between brackets  and matter added shall be underlined. Copies of 
the printed claims from the  patent may be used with any additions being 
indicated by carets and deleted  material being placed between brackets. 
Claims must not be renumbered and the  numbering of the claims added for 
reexamination must follow the number of the  highest numbered patent 
claim. No amendment may enlarge the scope of the claims  of the patent. No 
new matter may be introduced into the patent. 

        Amendments to the patent may be filed by the patent owner.  See 
MPEP  w 2221. Such amendments, however, may not enlarge the scope of a 
claim of the  patent or introduce new matter. Amended or new claims which 
broaden or enlarge  the scope of a claim of the patent should be rejected 
under 35 U.S.C. 305.  The test for when an amended or ``new claim enlarges 
the scope of an original  claim under 35 U.S.C. 305 is the same as that 
under the 2-year limitation for  reissue applications adding enlarging 
claims under 35 U.S.C. 251, last paragraph." 
 In re Freeman, 31 USPQ2d 1444, 1447 (Fed. Cir. 1994). See MPEP w 1412.03 
 For handling of new matter, see MPEP w 2270.  Additional claims may also 
be  added by amendment without any fee.  Any amendment proposed will 
normally be  entered and be considered to be entered for purposes of 
prosecution before  the Office; however, the amendments do not become 
effective in the patent until  the certificate under 35 U.S.C. 307 is issued. 

        No amendment will be permitted where the certificate issues after 
expiration  of the patent.  See 37 CFR 1.530 (d) 
and (e). >The patent expiration date for a utility patent, for example, is 
 determined by taking into account the term of the patent, whether 
maintenance  fees have been paid for the patent, and whether any 
disclaimer was filed as  to the patent to shorten its term.  Any other 
relevant information should also  be taken into account.< 

        Amendment Entry  - Amendments which comply with 37 CFR 1.121(f) 
will  be entered in the reexamination file wrapper. An amendment will be 
given a  Paper Number and be designated by consecutive letters of the 
alphabet (A, B,  C, etc.). The amendment will be entered 



by drawing a line in red ink through the claim(s) or paragraph(s) canceled 
 or amended, and the substituted copy being indicated by reference letter. 
  See MPEP w 2234. 

        ALL amendments in reexamination proceedings must be presented in 
the  form of a full copy of the text of each claim which is amended and 
each paragraph  of the description which is amended. 

        If a portion of the text is amended more than once, each amendment 
 should indicate ALL of the changes (insertions and deletions) in relation 
to  the current text of the patent under reexamination. 

        Examples of proper claim amendment format are as follows: 
1.  Patent claim: 

A cutting means having a handle portion and a blade portion. 

2.  Proper first amendment format: 

A [cutting means] knife having a bone handle portion and a notched blade 
portion. 
3.  Proper second amendment format: 

A [cutting means] knife having a handle portion and a serrated blade 
portion. 
        Note that the second amendment includes the changes presented in 
the  first amendment; i.e., [cutting means] knife, as well as the changes 
presented  in the second amendment; i.e., serrated. However, the term 
notched which was  presented in the first amendment and replaced by the 
term serrated in the second  amendment and the term bone which was 
presented in the first amendment and  deleted in the second amendment are 
not shown in brackets; i.e., [notched]  and [bone], in the second 
amendment. This is because the terms [notched] and  [bone] would not be 
changes from the current patent text and therefore are  not shown. In both 
the first and the second amendments, the entire claim is  presented with 
all the changes from the current patent text. 

        No renumbering of patent claims is permitted. 

        New claims added during reexamination must be underlined and 
follow  consecutively the number of the highest numbered patent claim. If 
a new claim  is amended during prosecution, any material which is deleted 
will NOT appear  in brackets because such deleted material would not be a 
change to the current  patent text. The deleted material would not appear 
in any fashion. Further,  the new claim as amended will be COMPLETELY 
underlined as required by 37 CFR  1.121(f). If the patent expires during 
the ex parte reexamination procedure  and the patent claims have been 
amended, the Office will hold the amendments  as being improper and all 
subsequent reexamination will be on the basis of  the unamended patent 
claims. This procedure is necessary since no amendments  will be 
incorporated into the patent by certificate after the expiration of  the 
patent. 

        For entry of amendment in a merged proceeding, see MPEP w 2283 and 
 w 2285. 

        For handling a dependent claim in reexamination proceedings, see 
MPEP  w 2260.01. 


2250.01       Correction of Patent Drawings 


        In the reexamination proceeding the copy of the patent drawings 
submitted  pursuant to w 1.510(b)(4) will be used for reexamination 
purposes provided  no change whatsoever is made to the drawings. If there 
is to be ANY change  in the drawings, a new sheet of drawing for each 
sheet changed must be submitted. 
 The change may NOT be made on the original patent drawings. 

        The new sheets of drawings must be submitted and approved prior to 
 forwarding the reexamination file to the Office of Publications for 
issuance  of the certificate. The new sheets of drawings should be entered 
in the reexamination  file. 


2251    Reply by Requester 


37 CFR 1.535.     Reply by requester. 

        A reply to the patent owner's statement under w 1.530 may be filed 
 by the reexamination requester within two months from the date of service 
of  the patent owner's statement. Any reply by the requester must be 
served upon  the patent owner in accordance with w 1.248. If the patent 
owner does not file  a statement under w 1.530, no reply or other 
submission from the reexamination  requester will be considered. 

        If the patent owner files a statement in a timely manner, the 
requester  is given a period of 2 months from the date of service to 
reply. Since the  statute (Section 304) did not provide this as a minimum 
time period, there  will be no extensions of time granted. 

        The reply need not be limited to the issues raised in the 
statement.  The reply may include additional prior art patents and printed 
publications  and raise any issue appropriate for reexamination. 

        If no statement is filed by the patent owner, no reply is 
permitted  from the requester. 



        A copy of any reply by the requester must be served on the patent 
owner. 
        The requester is not permitted to file any further papers after 
his  or her reply to the patent owner's statement. Any further papers will 
not be  acknowledged or considered. The patent owner cannot file papers on 
behalf of  the requester and thereby circumvent the rules. 


2252    Consideration of Statement and Reply 


37 CFR 1.540.       Consideration of responses. 

        The failure to timely file or serve the documents set forth in w 
1.530  or in w 1.535 may result in their being refused consideration. No 
submissions  other than the statement pursuant to w 1.530 and the reply by 
the requester  pursuant to w 1.535 will be considered prior to examination. 

        Although 37 CFR 1.540 would appear to be discretionary in stating 
that  late responses "may result in their being refused consideration," 
patent owners  and requesters can expect consideration to be refused if 
the statement and/or  reply is not timely filed. 37 CFR 1.540 restricts 
the number and kind of submissions  to be considered prior to examination 
to those expressly provided for in 37  CFR 1.530 and 1.535. Untimely 
submissions will ordinarily not be considered.  Untimely submissions, 
other than untimely papers filed by the patent owner  after the period set 
for response, will not be placed of record in the reexamination  file but 
will be returned to the sender. 

        Papers filed in which no proof of service is included and proof of 
 service is required may be denied consideration. Where no proof of 
service  is included, inquiry should be made of the sender by the 
reexamination clerk  as to whether service was in fact made. If no service 
was made, the paper is  placed in the reexamination file but is not 
considered; see MPEP w 2267. 

2253    Consideration by Examiner 


        Once reexamination is ordered, any submissions properly filed and 
served  in accordance with 37 CFR 1.530 and 1.535 will be considered by 
the primary  examiner when preparing the first Office action. The examiner 
will be guided  in his or her consideration by the provisions of 37 CFR 
1.121(f) with respect  to any proposed amendments by the patent owner to 
the description and claims  and by 37 CFR 1.530(c) regarding the patent 
owner's statement.  If the requester's  reply to the patent owner's 
statement raises issues not previously presented,  such issues will be 
treated by the examiner in an Office action pursuant to  37 CFR 1.552(c), 
if not within the scope of reexamination. 

        For handling of new matter, see MPEP w 2270. 


2254    Conduct of Reexamination Proceedings [R-2] 


35 U.S.C. 305.          Conduct of reexamination proceedings. 

        After the times for filing the statement and reply provided for by 
 section 304 of this title have expired, reexamination will be conducted 
according  to the procedures established for initial examination under the 
provisions  of sections 132 and 133 of this title. In any reexamination 
proceeding under  this chapter, the patent owner will be permitted to 
propose any amendment to  his patent and a new claim or claims thereto, in 
order to distinguish the invention  as claimed from the prior art cited 
under the provisions of section 301 of  this title, or in response to a 
decision adverse to the patentability of a  claim of a patent. No proposed 
amended or new claim enlarging the scope of  a claim of the patent will be 
permitted in a reexamination proceeding under  this chapter. All 
reexamination proceedings under this section, including any  appeal to the 
Board of Patent Appeals and Interferences, will be conducted  with special 
dispatch within the Office. 

37 CFR 1.550.     Conduct of reexamination proceedings. 

        (a)   All reexamination proceedings, including any appeals to the 
Board  of Patent Appeals and Interferences, will be conducted with special 
dispatch  within the Office. After issuance of the reexamination order and 
expiration  of the time for submitting any responses thereto, the 
examination will be conducted  in accordance with ww 1.104-1.119 and will 
result in the issuance of a reexamination  certificate under 
w 1.570. 

        (b)   The patent owner will be given at least 30 days to respond 
to  any Office action. Such response may include further statements in 
response  to any rejections and/or proposed amendments or new claims to 
place the patent  in a condition where all the claims, if amended as 
proposed, would be patentable. 
        (c)   The time for taking any action by a patent owner in a 
reexamination  proceeding will be extended only for sufficient cause, and 
for a reasonable  time specified. Any request for such extension must be 
filed on or before the  day on which action by the patent owner is due, 
but in no case will the mere  filing of the request effect any extension. See 
w 1.304(a) for extensions of time for filing a notice of appeal to the 
U.S.  Court of Appeals for the Federal Circuit or for commencing a civil 
action. 
        (d)   If the patent owner fails to file a timely and appropriate 
response  to any Office action, the reexamination proceeding will be 
terminated and the  Commissioner will proceed to issue a certificate under 
w 1.570 in accordance  with the last action of the Office. 

        (e)   The reexamination requester will be sent copies of Office 
actions  issued during the reexamination proceeding. Any document filed by 
the patent  owner must be served on the requester in the manner provided 
in w 1.248. The  document must reflect service or the document may be 
refused consideration  by the Office. The active participation of the 
reexamination requester ends  with the reply pursuant to w 1.535, and no 
further submissions on behalf of  the reexamination requester will be 
acknowledged or considered. Further, no  submissions on behalf of any 
third parties will be acknowledged or considered  unless such submissions 
are (1) in accordance with w 1.510 or (2) entered in  the patent file 
prior to the date of the order to reexamine pursuant to w 1.525. 
Submissions by 



third parties, filed after the date of the order to reexamine pursuant to 
w 1.525, must meet the requirements of and will be treated in accordance 
with  w 1.501(a). 

        Once reexamination is ordered and the times for submitting any 
responses  thereto have expired, no further active participation by a 
reexamination requester  is allowed and no third party submissions will be 
acknowledged or considered  unless they are in accordance with 37 CFR 
1.510. The reexamination proceedings  will be ex parte because this was 
the intention of the legislation. The patent  owner cannot file papers on 
behalf of the requester and thereby circumvent  the intent of the 
legislation and the rules. >The Federal Circuit held in Emerson  Electric 
Co. v. Davoil, Inc., 96-1202 (Fed. Cir. July 9, 1996) that a federal 
district court does not have the authority to order a patent owner to file 
 papers prepared by a third party in addition to the patent owner's own 
submission  in a patent reexamination proceeding. Such papers prepared by 
the third party  and filed by the patent owner will not be entered, and 
the entire submission  will be returned to the patent owner as an 
inappropriate response. See MPEP  w 2266 and w 2267.< Ex parte proceedings 
also prevent extra proceedings and  reduce possible harassment of the 
patent owner.  The examination will be conducted  in accordance with 37 
CFR 1.104-1.119 (35 U.S.C. 132 and 133) and will result  in the issuance 
of a reexamination certificate under 37 CFR 1.570. The proceeding  shall 
be conducted with special dispatch within the Office pursuant to 35 U.S.C. 
 305, last sentence.  A full search will not be made routinely by the 
examiner. 
 The reexamination requester will be sent copies of Office actions and the 
 patent owner must serve responses on the requester.  Citations submitted 
in  the patent file prior to issuance of an order for reexamination will 
be considered  by the examiner during the reexamination. Reexamination 
will proceed even if  the order is returned undelivered. The notice under 
37 CFR 1.11(c) is constructive  notice and lack of response from the 
patent owner will not delay reexamination. 

2255    Who Reexamines 


        The examination will ordinarily be conducted by the same primary 
examiner  in the examining groups who made the decision on whether the 
reexamination  request should be granted.  See MPEP w 2236. 

        However, if a petition under 37 CFR 1.515(c) is granted, the 
reexamination  will normally be conducted by another examiner; see MPEP w 
2248. 


2256    Prior Art Patents and Printed Publications Considered by Examiner 
in Reexamination 

        The primary source of prior art will be the patents and printed 
publications  cited in the request. 

        The examiner must also consider patents and printed publications 
        -cited by a reexamination requester under 37 CFR 1.510 

        -cited in patent owner's statement under 37 CFR 1.530 or a 
requester's  reply under 37 CFR 1.535 if they comply with 37 CFR 1.98 

        -cited by patent owner under a duty of disclosure 
        (37 CFR 1.555) in compliance with 37 CFR 1.98 

        -discovered by the examiner in searching 

        -of record in the patent file from earlier examination 

        -of record in patent file from 37 CFR 1.501 submission prior to 
date  of an order if it complies with 37 CFR 1.98. The reexamination file 
must indicate  which prior art patents and printed publications the 
examiner has considered  during ex parte examination. 


2257    Listing of Prior Art 


        The examiner must list on a form PTO-892, if not already listed on 
 a form PTO-1449, all prior patents or printed publications which have 
been  properly: 

1.  cited by the reexamination requester in the request under 37 CFR 
1.510, 
2.  cited by the patent owner in the statement under 
37 CFR 1.530 if the citation complies with 37 CFR 1.98, 

3.  cited by the reexamination requester in the reply under 37 CFR 1.535 
if  the citation complies with 37 CFR 1.98, and 

4.  cited by the patent owner under the duty of disclosure requirements of 
 37 CFR 1.555 if the citation complies with 37 CFR 1.98. 

        The examiner must also list on a form PTO-892, if not already 
listed  on a form PTO-1449, all prior patents or printed publications 
which have been  cited in the decision on the request, or applied in 
making rejections or cited  as being pertinent during the reexamination 
proceedings. Such prior patents  or printed publications may have come to 
the examiners' attention because: 


1.  they were of record in the patent file due to a prior art submission 
under  37 CFR 1.501 which was received prior to the date of the order, 

2.  they were of record in the patent file as result of earlier 
examination  proceedings, or 

3.  they were discovered by the examiner during a prior art search. 
        In instances where the examiner considers but does not wish to 
cite  documents of record in the patent file, notations should be made in 
the reexamination  file in the manner set forth in MPEP w 717.05, items 
B5, C1 and C2. 
        All citations listed on form PTO-892 and all citations not lined 
out  on any form PTO-1449 will be printed on the reexamination certificate 
under  "References cited." 


2258    Scope of Reexamination [R-2] 


37 CFR 1.552.       Scope of reexamination in reexamination proceedings. 
        (a)   Patent claims will be reexamined on the basis of patents or 
printed  publications. 

        (b)   Amended or new claims presented during a reexamination 
proceeding  must not enlarge the scope of the claims of the patent and 
will be examined  on the basis of patents or printed publications and also 
for compliance with  the requirements of 35 U.S.C. 112 and the new matter 
prohibition of 35 U.S.C.  132. 

        (c)   Questions other than those indicated in paragraphs (a) and 
(b)  of this section will not be resolved in a reexamination proceeding. 
If such  questions are discovered during a reexamination proceeding, the 
existence of  such questions will be noted by the examiner in an Office 
action, in which  case the patent owner may desire to consider the 
advisability of filing a reissue  application to have such questions 
considered and resolved. 

        Rejections on prior art in reexamination proceedings may only be 
made  on the basis of prior patents or printed publications. Prior art 
rejections  may be based upon the following portions of 35 U.S.C. 102: 

        "(a) . . . patented or described in a printed publication in this 
or  a foreign country, before the invention thereof by the applicant for 
patent,  or" 

        "(b) the invention was patented or described in a printed 
publication  in this or a foreign country . . . more than one year prior 
to the date of  the application for patent in the United States, or" 

***** 

        "(d) the invention was first patented or caused to be patented, or 
 was the subject of an inventor's certificate, by the applicant or his 
legal  representatives or assigns in a foreign country prior to the date 
of the application  for patent in this country on an application for 
patent or inventor's certificate  filed more than twelve months before the 
filing of the application in the United  States, or" 

        "(e) the invention was described in a patent granted on an 
application  for patent by another filed in the United States before the 
invention there  of by the applicant for patent, or on an international 
application by another  who has fulfilled the requirements of paragraphs 
(1), (2), and (4) of section  371(c) of this title before the invention 
thereof by the applicant for patent". 
***** 

        Similarly, substantial new grounds of patentability may also be 
made  under 35 U.S.C. 103 which are based on the above indicated portions 
of 35 U.S.C.  102. 

        Public Law 98-622 enacted on November 8, 1984, changed a complex 
body  of case law and amended 
35 U.S.C. by adding a new sentence which provides that subject matter 
developed  by another which qualifies as prior art only under 35 U.S.C. 
102 (f) or (g)  shall not preclude patentability under 35 U.S.C. 103 
provided the subject matter  and the claimed invention were commonly owned 
at the time the invention was  made. This change overrules the practice 
under In re Bass, 
177 USPQ 178, (CCPA 1973) wherein an earlier invention by a co-employee 
was  treated as prior art under 35 U.S.C. 102(g) and possibly w 102(f) 
with respect  to a later invention made by another employee of the same 
organization.  However,  the Federal Circuit held in DuPont v. Phillips, 7 
USPQ2d 1129, 1134-1135 (Fed.  Cir. 1988), that the prior work of another 
under 35 U.S.C. 102(g), except as  qualified by 35 U.S.C. 103 with respect 
to certain commonly owned subject matter,  can be used as 
35 U.S.C. 103 prior art so long as it has not been abandoned, suppressed, 
or  concealed. Accordingly, a substantial new question of patentability 
may be  found under 35 U.S.C. 102(f) or (g)/103 based on the prior 
invention of another  disclosed in a patent or printed publication.  See 
Chapter 2100. 

        Once reexamination is ordered based on a proper substantial new 
question  of patentability, **>grounds of rejection previously considered 
by the Office  may not be raised by the examiner.  In re Recreative 
Technologies, 83 F.3d  1394, 38 USPQ2d 1776 (Fed. Cir. 1996).  For this 
purpose, a ground of rejection  was "previously considered" if it: 

1.  is applied to the same claimed subject matter as a previous rejection 
in  the examination of the original patent or earlier concluded 
reexamination; 
2.  relies on the same combination of patents and printed publications as 
the  previous rejection; and 

3.  applies the same statutory basis as the previous rejection. 



In an unusual fact situation, application of the above-stated test may be 
difficult  or yield a questionable result. Cf. Ex parte Chicago Rawhide, 
223 USPQ 351 
(Bd. Pat. App. & Inter. 1984) and Ex parte Gould, 231 USPQ 943, 946 (Bd. 
Pat.  App. & Inter. 1986).  In such a situation, the examiner should 
consult with  the Group Director to determine the appropriate action.< 

        Rejections will not be based on matters other than patents or 
printed  publications, such as public use or sale, inventorship, 35 U.S.C. 
101, fraud,  etc. In this regard, see In re Lanham, 1 USPQ2d 1877 (Comm'r 
Pat. 1986), and  Stewart Systems v. Comr. of Patents and Trademarks, 1 
USPQ2d 1879 (E.D. Va.  1986). A rejection on prior public use or sale, 
insufficiency of disclosure,  etc., cannot be made even if it relies on a 
prior patent or printed publication.  Prior patents or printed 
publications must be applied under an appropriate  portion of 35 U.S.C. 
102 and/or 103 when making a rejection. 

        Rejections may be made in reexamination proceedings based on 
intervening  patents or printed publications where the patent claims under 
reexamination  are entitled only to the filing date of the patent and are 
not supported by  an earlier foreign or United States patent application 
whose filing date is  claimed. For example, under 35 U.S.C. 120, the 
effective date of the claims  would be the filing date of the application 
which resulted in the patent. Intervening  patents or printed publications 
are available as prior art under In re Ruscetta,  118 USPQ 101 (CCPA 1958). 

        * >Under limited circumstances, e.g., where new or amended claims 
are  presented, double< patenting ** >may be raised< in >a< reexamination 
proceeding<. 
 ** As is the case for an application, a nonstatutory double patenting 
rejection  can be overcome by the filing of a terminal disclaimer in 
accordance with 37  CFR 1.321(c). 

        Affidavits or declarations which explain the contents or pertinent 
 dates of prior patents or printed publications in more detail may be 
considered  in reexamination, but any rejection must be based upon the 
prior patents or  printed publications as explained by the affidavits or 
declarations. The rejection  in such circumstances cannot be based on the 
affidavits or declarations as  such, but must be based on the prior 
patents or printed publications. 
ADMISSIONS 

I.  Initial Reexamination Determination and Order 

        The consideration under 35 U.S.C. 303 of a request for 
reexamination  is limited to prior patents and printed publications.  See 
Ex parte McGaughey,  6 USPQ2d 1334, 1337 (Bd. Pat. App. & * >Inter.< 
1988).  Thus an admission,  per  se, may not be the basis for establishing 
a substantial new question of  patentability. However, an admission by the 
patent owner of record in the file  or in a court record may be utilized 
in combination with a patent or printed  publication. 

II.   Reexamination Examination on Merits 

        After reexamination has been ordered, the examination on the 
merits  is dictated by 35 U.S.C. 305, see Ex parte McGaughey, 6 USPQ2d 
1334, 1337 (Bd.  Pat. App. & * >Inter.< 1988). 

        Admissions by the patent owner in the record as to matters 
affecting  patentability may be utilized in a reexamination proceeding; 
see 37 CFR 1.106(c). 
        37 CFR 1.106(c) provides that admissions by the patent owners as 
to  matters affecting patentability may be utilized in a reexamination 
proceeding.  The Supreme Court when discussing 35 U.S.C. 103 in Graham v. 
John Deere Co.  , 383 U.S. 6, 148 USPQ 459 (1966) stated, inter alia, "the 
scope and content  of the prior art are to be determined." Accordingly, a 
proper evaluation of  the scope and content of the prior art in 
determining obviousness would require  a utilization of any "admission" by 
the patent owner whether such admission  results from a patent or printed 
publication or from some other source. An  admission as to what is in the 
prior art is simply that, an admission, and  requires no independent 
proof.  It is an acknowledged, declared, conceded,  or recognized fact or 
truth, Ex parte McGaughey, 6 USPQ2d 1334, 1337 (Bd. Pat.  App. & * 
>Inter.< 1988).  While the scope and content of the admission may 
sometimes have to be determined, this can be done from the record and from 
 the paper file in the same manner as with patents and printed 
publications.  To ignore an admission by the patent owner, from any 
source, and not use the  admission as part of the prior art in conjunction 
with patents and printed  publications in reexamination would make it 
impossible for the examiner to  properly determine the scope and content 
of the prior art as required by Graham,  supra. 



        The Board of Appeals upheld the use of an admission in a 
reexamination  proceeding in Ex parte Seiko Koko Kabushiki Kaisha, 225 
USPQ 1260 (** >Bd.  Pat. App. & Inter.< 1984), Ex parte Kimbell, 226 USPQ 
688 (** >Bd. Pat. App.  & Inter.< 1985) and in Ex parte McGaughey, 6 
USPQ2d 1334 (Bd. Pat. App. & *  >Inter.< 1988).  In Seiko, the Board 
relied on In re Nomiya, 184 USPQ 607 (CCPA  1975) holding an admission of 
prior art in the specification of the parent  undergoing reexamination 
isconsidered prior art which may be considered for  any purpose, including 
use as evidence of obviousness under 35 U.S.C. 103. 
 In Kimbell the Board referred to the patent specification and noted the 
admission  by appellant that an explosion-proof housing was well known at 
the time of  the invention. In Ex parte McGaughey, 6 USPQ2d 1334, 1337 
(Bd. Pat. App. &  Int. 1988) the Board held that any equivocal admission 
relating to prior art  is a 
fact which is part of the scope and content of the prior art and that 
prior  art admissions established in the record are to be considered in 
reexamination.  The Board expressly overruled the prior Board decision in 
Ex parte Horton,  226 USPQ 697 (** >Bd. Pat. App. & Inter.< 1985) which 
held that admissions  which are used as a basis for a rejection in 
reexamination must relate to patents  and printed publications. 

        The admission can reside in the patent file (made of record during 
 the prosecution of the patent application) or may be presented during the 
pendency  of the reexamination proceeding or in litigation.  Admissions by 
the patent  owner as to any matter affecting patentability may be utilized 
to determine  the scope and content of the prior art in conjunction with 
patents and printed  publications in a prior art rejection whether such 
admissions result from patents  or printed publications or from some other 
source.  An admission relating to  any prior art (i.e., on sale, public 
use, etc.) established in the record or  in court may be used by the 
examiner in combination with patents or printed  publications in a 
reexamination proceeding. The admission must stand on its  own. 
Information supplementing or further defining the admission would be 
improper.  Any admission submitted by the patent owner is proper. A third 
party, however,  may not submit admissions of the patent owner made 
outside the record or the  court.  Such a submission would be outside the 
scope of reexamination. 
        Original patent claims will be examined only on the basis of prior 
 art patents or printed publications applied under the appropriate parts 
of  35 U.S.C. 102 and 103.  See MPEP w 2217. During reexamination, claims 
are given  the broadest reasonable interpretation consistent with the 
specification and  limitations in the specification are not read into the 
claims (In re Yamamoto  et al. 222 USPQ 934 (Fed. Cir. 1984)). In a 
reexamination proceeding involving  claims of an expired patent, which are 
not subject to amendment, a policy of  liberal (i.e., narrow) construction 
should be applied. Such a policy favors  a construction of a patent claim 
that will render it valid; i.e., a narrow  construction, over a broad 
construction that would render it invalid. See In  re Papst-Motoren, 
1 USPQ2d 1659 (Bd. Pat. App. & * >Inter.< 1986).  The statutory 
presumption  of validity, 35 U.S.C. 282, has no application in 
reexamination (In re Etter,  225 USPQ 1 (Fed. Cir. 1985)). 

        Where some of the patent claims in a patent being reexamined have 
been  the subject of a prior Office or court decision, see MPEP w 2242. 
Where other  proceedings involving the patent are copending with the 
reexamination proceeding,  see MPEP w 2282 - w 2286. New claims will be 
examined on the basis of prior  art patents or printed publications and 
for compliance with 35 U.S.C. 112 including  the new matter prohibitions. 
Amended claims will be examined on the basis of  prior art patents and 
printed publications and for compliance with 35 U.S.C.  112 to the extent 
that the amendatory matter raises an issue under 35 U.S.C.  112. 

        The examiner should be aware that new or amended claims are to be 
examined  for compliance with 35 U.S.C. 112 and that consideration of 35 
U.S.C. 112 issues  should be limited to the amendatory (i.e., new 
language) matter. For example,  a claim which is amended or a new claim 
which is presented containing a limitation  not found in the original 
patent claim should be considered for compliance  under 35 U.S.C. 112 only 
with respect to that limitation. To go further would  be inconsistent with 
the statute to the extent that 35 U.S.C. 112 issues would  be raised as to 
matter in the original patent claim. Thus, a term in a patent  claim which 
the examiner might deem to be too broad cannot be considered as  too broad 
in a new or amended claim unless the amendatory matter in the new  or 
amended claim creates the issue. 

        Although a request for reexamination may not specify all claims as 
 presenting a substantial new question, each claim of the patent normally 
will  be reexamined. The resulting reexamination certificate will indicate 



the status of all of the patent claims and any added patentable claims. 
        Restriction requirements cannot be made in a reexamination 
proceeding  since no statutory basis exists therefor, and no new or 
amended claims enlarging  the scope of a claim of the patent are permitted. 

        There are matters ancillary to reexamination which are necessary 
and  incident to patentability which will be considered. Amendments  may 
be made  to the specific- 

tion to correct, for example, an inadvertent failure to claim foreign 
priority  or the continuing status of the patent relative to a parent 
application if  such correction is necessary to overcome a reference 
applied against a claim  of the patent. No renewal of previously made 
claims for foreign priority under  35 U.S.C. 119 or continuing status of 
the application under 35 U.S.C. 120,  is necessary during reexamination. 
Correction of inventorship may also be made  during reexamination. 

        Affidavits under 37 CFR 1.131 and 1.132 may be utilized in a 
reexamination  proceeding. Note, however, that an affidavit under 37 CFR 
1.131 may not be  used 
to "swear back" of a reference patent if the reference patent is claiming 
the  same invention as the patent undergoing reexamination.  In such a 
situation,  the patent owner may, if appropriate, seek to raise this issue 
in an interference  proceeding via an appropriate reissue application if 
such a reissue application  may be filed. 

        Patent claims not subject to reexamination because of their prior 
adjudication  by a court should be identified.  See MPEP w 2242. 

        For handling a dependent claim in reexamination proceedings, see 
MPEP  w 2260.01. All added claims will be examined. 

        Where grounds set forth in a prior Office or Federal Court 
decision,  which are not based on patents or printed publications clearly 
raise questions  as to the claims, the examiner's Office action should 
clearly state that the  claims have *>not< been examined as to those 
grounds not based on patents or  printed publications stated in the prior 
decision.  See 37 CFR 1.552(c).  See  In re Knight, 217 USPQ 294 (Comm'r 
Pat. 1982).  All claims under reexamination  should, however, be 
reexamined on the basis of prior patents and printed publications. 
        If questions other than those indicated above (for example, 
questions  of patentability based on the public use or sale, fraud, 
abandonment under  35 U.S.C. 102(c), etc.) are discovered during a 
reexamination proceeding, the  existence of such questions will be noted 
by the examiner in an Office action,  in which case the patent owner may 
desire to consider the advisability of filing  a reissue application to 
have such questions considered and resolved. Such  questions could arise 
in a reexamination requester's 37 CFR 1.510 request or  in a 37 CFR 1.535 
reply by the requester. Note Form Paragraph 22.03. 
W 22.03       Issue Not Within Scope of Reexamination 

        It is noted that an issue not within the scope of reexamination 
proceedings  has been raised. [1]. The issue will not be considered in a 
reexamination proceeding.  37 CFR 1.552(c). While this issue is not within 
the scope of reexamination,  the patentee is advised that it may be 
desirable to consider filing a reissue  application provided that the 
patentee believes one or more claims to be partially  or wholly 
inoperative or invalid based upon the issue. 

Examiner Note: 

        1. In bracket 1, identify the issues. 

        2. This paragraph may be used either when the request for 
reexamination  is based upon issues such as public use or sale, fraud, or 
abandonment of the  invention, or when questions are discovered during a 
reexamination proceeding. 
        Where a request for reexamination is filed on a patent after a 
reissue  patent for the patent has already issued, reexamination will be 
denied because  the patent on which the request for reexamination is based 
has been surrendered.  Should reexamination of the reissued patent be 
desired, a new request for reexamination  including and based on the 
specification and claims of the reissue patent must  be filed. Where the 
reissue patent issues after the filing of a request for  reexamination, 
see MPEP w 2285. 


2259    Collateral Estoppel In Reexamination Proceedings 


        MPEP w 2242 and w 2286 relate to the Office policy controlling the 
 determination on a request for reexamination and subsequent reexamination 
where  there has been a Federal Court decision on the merits as to the 
patent for  which reexamination is requested. Since claims finally held 
invalid by a Federal  court will be withdrawn from consideration and not 
reexamined during a reexamination  proceeding, no rejection on the grounds 
of collateral estoppel will be appropriate  in reexamination. 




2260    Office Actions 


37 CFR 1.104.       Nature of examination, examiner's action reads  in part: 

        (a)   On taking up . . . a patent in a reexamination proceeding, 
the  examiner shall make a thorough study thereof and shall make a 
thorough investigation  of the available prior art relating to the subject 
matter of 

the claimed invention. The examination shall be complete with respect both 
 to compliance of the. . . patent under reexamination with the applicable 
statutes  and rules and to the patentability of the invention as claimed, 
as well as  with respect to matters of form, unless otherwise indicated. 

        (b)    . . . in the case of a reexamination proceeding, both the 
patent  owner and the requester, will be notified of the examiner's 
action. The 

reasons for any adverse action or any objection or requirement will be 
stated  and such information or references will be given as may be useful 
in aiding  the . . . patent owner, to judge the propriety of continuing 
prosecution. 
***** 

        It is intended that the examiner's first ex parte action on the 
merits  be the primary action to establish the issues which exist between 
the examiner  and the patent owner insofar as the patent is concerned.  At 
the time the first  action is issued, the patent owner has already been 
permitted to file a statement  and an amendment pursuant to 37 CFR 1.530; 
and the reexamination requester,  if the requester is not the patent 
owner, has been permitted to reply thereto  pursuant to 37 CFR 1.535. 
Thus, at this point, the issues should be sufficiently  focused to enable 
the examiner to make a definitive first ex parte action on  the merits 
which should clearly establish the issues which exist between the 
examiner and the patent owner insofar as the patent is concerned. In view 
of  the fact that the examiner's first action will clearly establish the 
issues,  the first action should include a statement cautioning the patent 
owner that  a complete response should be made to the action since the 
next action is expected  to be a final rejection. The first action should 
further caution the patent  owner that the requirements of 37 CFR 1.116(b) 
will be strictly enforced after  final rejection and that any amendments 
after final rejection must include  "a showing of good and sufficient 
reasons why they are necessary and were not  earlier presented" in order 
to be considered  The language of Form Paragraph  22.04 is appropriate for 
inclusion in the first Office action: 

W 22.04       Papers to be Submitted in Response to Action 

        In order to ensure full consideration of any amendments, 
affidavits  or declarations, or other documents as evidence of 
patentability, such documents  must be submitted in response to this 
Office action. Submissions after the  next Office action, which is 
intended to be a final action, will be governed  by the requirements of 37 
CFR 1.116, which will be strictly enforced. 

2260.01       Dependent Claims 


        If a base patent claim has been rejected or canceled, any claim 
which  is directly or indirectly dependent thereon should be allowed if it 
is otherwise  allowable.  The dependent claim should not be objected to or 
rejected merely  because it depends on a rejected or canceled claim. No 
requirement should be  made for rewriting the dependent claim in 
independent form. As the original  patent claim numbers are not changed in 
a reexamination proceeding, the content  of the canceled base claim would 
remain in the printed patent and would be  available to be read as a part 
of the allowed dependent claim. 

        If a new claim (a claim other than a claim appearing in a patent) 
has  been canceled in a reexamination proceeding, a claim which depends 
thereon  should be rejected as incomplete. If a new base claim is 
rejected, a claim  dependent thereon should be objected to if it is 
otherwise allowable and a  requirement made for rewriting the dependent 
claim in independent form. 

2261    Special Status For Action 


35 U.S.C. 305. Conduct of reexamination proceedings. 

***** 

        All reexamination proceedings under this section, including any 
appeal  to the Board of Patent Appeals and Interferences, will be 
conducted with special  dispatch within the Office. 

        In view of the requirement for "special dispatch," reexamination 
proceedings  will be "special" throughout  their pendency in the Office. 
The examiner's  first action on the merits should be completed within 1 
month of the filing  date of the requester's reply (37 CFR 1.535), or 
within 1 month of the filing  date of the patent owner's statement (37 CFR 
1.530) if there is no requester  other than the patent owner.  If no 
submissions are made under either 37 CFR  1.530 or 37 CFR 1.535, the first 
action on the merits should be completed within  one month of any due date 
for such submission. Mailing of the first action  should occur within 6 
WEEKS after the appropriate filing or due date of any  statement and any 
reply thereto. 

        Any cases involved in litigation, whether they are reexamination 
proceedings  or reissue applications, will have priority over all other 
cases. Reexamination  proceedings not involved in litigation will have 
priority over all other cases  except reexaminations or reissues involved 
in litigation. 




2262    Form and Content of Office Action 


        The examiner's first Office action will be a statement of the 
examiner's  position and should be so complete that the second Office 
action can properly  be made a final action.  See MPEP w 2271. 

        All Office actions are to be written or dictated and then typed. 
The  first Office action must be sufficiently detailed that the pertinency 
and manner  of applying the cited prior art to the claims is clearly set 
forth therein. 
 If the examiner concludes in any Office action that one or 

more of the claims are patentable over the cited patents or printed 
publications,  the examiner should indicate why the claim(s) is clearly 
patentable in a manner  similar to that used to indicate reasons for 
allowance (MPEP 
w 1302.14).  If the record is clear why the claim(s) is clearly 
patentable,  the examiner may refer to the particular portions of the 
record which clearly  establish the patentability of the claim(s). The 
first action should also respond  to the substance of each argument raised 
by the 


patent owner and requester pursuant to 37 CFR 1.510, 1.530, and 1.535.  If 
 arguments are presented which are inappropriate in reexamination, they 
should  be treatedin accordance with 37 CFR 1.552(c).  It is especially 
important that  the examiner's action in reexamination be thorough and 
complete in view of  the finality of a reexamination proceeding and the 
patent owner's inability  to file a continuation proceeding. 

        Normally, the title will not need to be changed during 
reexamination.  If a change of the title is necessary, it should be done 
as early as possible  in the prosecution as a part of an Office Action. 
If all of the claims are  allowed and a Notice of Intent to Issue a 
Reexamination Certificate has been  or is to be mailed, a change to the 
title of the invention by the examiner  may only be done by way of an 
Examiner's Amendment. Changing the title and  merely initiating the change 
is NOT permitted in reexamination. 

        A sample of a first Office action of reexamination proceedings is 
set  forth below. 



A22620009.bmp 



A22620009.end 



        Claims 1-3 of the Smith patent are not being reexamined in view of 
 the final decision in the ABC Corp. v. Smith, 999 USPQ 99 (Fed. Cir. 
1999).  Claims 1-3 were held not valid by the Court. 

        The following is a quotation of 35 U.S.C. 103 which forms the 
basis  for all obviousness rejections set forth in this Office action: 

A patent may not be obtained though the invention is not identically 
disclosed  or described as set forth in section 102 of this title, if the 
differences  between the subject matter sought to be patented and the 
prior art are such  that the subject matter as a whole would have been 
obvious at the time the  invention was made to a person having ordinary 
skill in the art to which said  subject matter pertains. Patentability 
shall not be negatived by the manner  in which the invention was made. 

Subject matter developed by another person, which qualifies as prior art 
only  under subsection (f) or (g) of section 102 of this title, shall not 
preclude  patentability under this section where the subject matter and 
the claimed invention  were, at the time the invention was made, owned by 
the same person, or subject  to an obligation of assignment to the same 
person. 

        Claims 4 and 6 are rejected under 35 U.S.C. 103 as being 
unpatentable  over Berridge in view of McGee. 

        Berridge teaches extruding a chlorinated polymer using the same 
extrusion  structure recited in Claims 4 and 6 of the Smith patent. 
However, Berridge  does not show supporting the extrusion barrel at 30 
degrees to the horizontal,  using spring supports. McGee teaches spring 
supporting an extrusion barrel  at an angle of 25-35 degrees, in order to 
decrease imperfections in extruded  chlorinated polymers. It would have 
been obvious to one of ordinary skill in  the polymer extrusion art to 
support the extrusion barrel of Berridge on springs  and at an angle of 30 
degrees because McGee teaches this to be known in the  polymer extrusion 
art for decreasing imperfections in extruded chlorinated  polymers. 

        Claim 5 is patentable over the prior art patents and printed 
publications  because of the specific extrusion die used with the Claim 4 
spring-supported  barrel. This serves to even further reduce imperfections 
in the extruded chlorinated  polymers and is not taught by the art of 
record, alone or in combination. 


        It is noted that an issue not within the scope of reexamination 
proceedings  has been raised. In the above-cited final Court decision, a 
question is raised  as to the possible public use of the invention of 
Claim 6. This question was  also raised by requester in the reply to the 
owner's statement. The issue will  not be considered in a reexamination 
proceeding (37 CFR 1.552(c)). While this  issue is not within the scope of 
reexamination, the patentee is advised that  it may be desirable to 
consider filing a reissue application provided that  the patentee believes 
one or more claims to be partially or wholly inoperative  or invalid based 
upon the issue. 

        Swiss Patent 80555 and the American Machinist article are cited to 
 show cutting and forming extruder apparatus somewhat similar to that 
claimed  in the Smith patent. 

        In order to ensure full consideration of any 
amendments,affidavits,  or declarations, or other documents as evidence of 
patentability, such documents  must be submitted in response to this 
Office action. Submissions after the  next Office action, which is 
intended to be a final action, will be governed  by the requirements of 37 
CFR 1.116 which will be strictly enforced. 
        Any inquiry concerning this communication should be directed to 
Kenneth  Schor at telephone number (703) 308-3606. 

                                                        /s/ 
                                                        Kenneth Schor 
                                                        Examiner, Gp 1300 
Reviewed for procedure 
MPEP 2286 

        /s/ 
Group Director, Gp 1300 



A22620010.bmp 



A22620010.end 



A22620011.bmp 



A22620011.end 




2263    Time for Response 


        A shortened statutory period of 2 MONTHS will be set for response 
to  Office actions, except where the reexamination results from a court 
order or  litigation is stayed for purposes of reexamination, in which 
case the shortened  statutory period will be set at 1 month.  See MPEP w 
2286. Note, however, that  this 1-month policy does NOT apply to the 
2-month period for the filing of  a statement under 37 CFR 1.530, which 
2-month period is set by 35 U.S.C. 304. 
        Where a reexamination proceeding has been stayed because of a 
copending  reissue application, and the reissue application is abandoned, 
all actions  in the reexamination after the stay has been removed will set 
a one month shortened  statutory period unless a longer period for 
response is clearly warranted by  nature of the examiner's action; see 
MPEP w 2285. 


2264    Mailing of Office Action 


        All forms will be structured so that the printer can be used to 
print  the identifying information for the reexamination file and the 
owner's name  and address - usually the legal representative, and only the 
first owner where  there are multiple owners. The forms granting or 
denying the request for reexamination  will have the requester's name and 
address at the bottom left hand corner so  as to provide the patent owner 
with requester's name and address. All actions  will have a courtesy copy 
mailed to the requester by typing "cc Requester"  at the bottom of each 
action. A transmittal form PTOL-465 is used for each  requester and owner 
in addition to the one named on the top of the Office action. 
        The transmittal form will be used as a master to make a copy to be 
 sent with the Office action to the requester and any additional owner. 
The  number of transmittal form(s) provide a ready reference for the 
number of copies  to be made with each action and allow use of the window 
envelopes.  When the  requester is the patent owner, the reexamination 
clerk will indicate on the  file wrapper: No copies needed - Requester is 
Owner.  A transmittal form could  also be placed inside the file with a 
similar notation to alert typists, the  examiner, and anyone else taking 
part in the processing of the reexamination  that no additional copies are 
needed. 


2265    Extension of Time 


        The provisions of 37 CFR 1.136 (a) and (b) are NOT applicable to 
reexamination  proceedings under any circumstances. Public Law 97-247 
amended 35 U.S.C. 41  to authorize the Commissioner to charge fees for 
extensions of time to take  action in an "application."  A reexamination 
proceeding does not involve an  "application."  37 CFR 1.136 authorizes 
extensions of the time period only  in an application in which an 
applicant must respond or take action.  There  is neither an 
"application," nor an "applicant" involved in a reexamination  proceeding. 
 Requests for an extension of time in a reexamination proceeding  will be 
considered only after the decision to grant or deny reexamination is 
mailed.  Any request filed before that decision will be denied.  The 
certificate  of mailing (37 CFR 1.8) and "Express Mail" with certificate 
(37 CFR 1.10) procedures  may be used to file any paper in a reexamination 
proceeding (see MPEP w 2266). 

        With the exception of an automatic 1-month extension of time to 
take  further action which will be granted upon filing a first timely 
response to  a final Office action, all requests for extensions of time to 
file a patent  owner statement under 37 CFR 1.530 or respond to any 
subsequent Office action  in a reexamination proceeding must be filed 
under 37 CFR 1.550(c) and will  be decided by the group director of the 
patent examining group conducting the  reexamination proceeding. These 
requests for an extension of time will be granted  only for sufficient 
cause and must be filed on or before the day on which action  by the 
patent owner is due.  In no case will mere filing of a request for 
extension  of time automatically effect any extension.  Evaluation of 
whether sufficient  cause has been shown for an extension must be made in 
the context of providing  the patent owner with a fair opportunity to 
present an argument against any  attack on the patent, and the requirement 
of the statute (35 U.S.C. 305) that  the proceedings be conducted with 
special dispatch. In no case, except in the  after final practice noted 
above, will the mere filing of a request effect  any extension. 

        Any request for an extension of time in a reexamination proceeding 
 must fully state the reasons therefor.  All requests must be submitted in 
a  separate paper which will be forwarded to the group director for 
action. A  request for an extension of the time period to file a petition 
from the denial  of a request for reexamination can only be entertained by 
filing a petition  under 37 CFR 1.183 




with appropriate fee to waive the time provisions of 
37 CFR 1.515(c). Since the reexamination examination process is intended 
to  be essentially ex parte, the party requesting reexamination can 
anticipate  that requests for an extension of time to file a petition 
under 37 CFR 1.515(c)  will be granted only in extraordinary situations. 
No extensions will be permitted  to the time for filing a reply under 37 
CFR 1.535 by the requester in view  of the 2-month statutory period. 

        Ex parte prosecution will be conducted by initially setting either 
 a 1-month or a 2-month shortened period for response, see MPEP w 2263. 
The  patent owner also will be given a 2-month statutory period after the 
order  for reexamination to file a statement. See 37 CFR 1.530(b).  First 
requests  for extensions of these statutory time periods will be granted 
for sufficient  cause, and for a reasonable time specified - usually 1 
month.  The reasons  stated in the request will be evaluated by the group 
director, and the requests  will be favorably considered where there is a 
factual accounting of reasonably  diligent behavior by all those 
responsible for preparing a response within  the statutory time period. 
Second or subsequent requests for extensions of  time or requests for more 
than 1 month will be granted only in extraordinary  situations.  Any 
request for an extension of time in a reexamination proceeding  to file a 
notice of appeal, a brief or reply brief, or a request for reconsideration 
 or rehearing will be considered under the provisions of 37 CFR 1.550(c). 
The  time for filing the notice and reasons of appeal to the U.S. Court of 
Appeals  for the Federal Circuit or for commencing a civil action will be 
considered  under the provisions of 37 CFR 1.304. 

FINAL ACTION - TIME FOR RESPONSE 

        The after-final practice in reexamination proceedings did not 
change  October 1, 1982, and the automatic extension of time policy for 
response to  a final rejection and associated practice are still in effect 
in reexamination  proceedings. 

        The filing of a timely first response to a final rejection having 
a  shortened statutory period for response is construed as including a 
request  to extend the shortened statutory period for an additional month, 
which will  be granted even if previous extensions have been granted, but 
in no case may  the period for response exceed 
6 months from the date of the final action.  Even if pre- 


vious extensions have been granted, the primary examiner is authorized to 
grant  the request for extension of time which is implicit in the filing 
of a timely  first response to a final rejection.  An object of this 
practice is to obviate  the necessity for appeal merely to gain time to 
consider the examiner's position  in reply to an amendment timely filed 
after final rejection. Accordingly, the  shortened statutory period for 
response to a final rejection to which a proposed  first response has been 
received will generally be extended one month. Note  that the Office 
policy of construing a response after final as inherently including  a 
request for a 1-month extension of time applies only to the first response 
 to the final rejection. 

        Normally, examiners will complete a response to an amendment after 
 final rejection within 5 days after receipt thereof.  In those rare 
situations  where the advisory action cannot be mailed in sufficient time 
for the patent  owner to consider the examiner's position with respect to 
the proposed first  response before termination of the proceeding, the 
granting of additional time  to complete the response to the final 
rejection or to take other appropriate  action would be appropriate. See 
Groz & Sohme v. Quigg, 10 USPQ 2d 1787 (D.D.C.  1988).  The advisory 
action form (PTOL-303) states that "THE 
PERIOD FOR RESPONSE IS EXTENDED TO RUN ___ MONTHS FROM THE DATE OF THE 
FINAL  REJECTION."  The blank before "MONTHS" should be filled in with an 
integer 
(2, 3, 4, 5, or 6); fractional months should not be indicated.  In no case 
 can the period for reply to the final rejection be extended to exceed six 
months  from the mailing date thereof. An appropriate response (e.g., a 
second or subsequent  amendment or a notice of appeal) must be filed 
within the extended period for  response.  If patent owner elects to file 
a second or subsequent amendment,  it must place the reexamination in 
condition for allowance or the reexamination  proceeding stands terminated 
under 37 CFR 1.550(d) unless an appropriate notice  of appeal was filed 
before the expiration of the response period. 

EXTENSIONS OF TIME TO SUBMIT 
AFFIDAVITS AFTER FINAL REJECTION 

        Frequently, patent owners request an extension of time, stating as 
 a reason therefor that more time is needed in which to submit an 
affidavit. 
 When such a request is filed after final rejection, the granting of the 
request 



for extension of time is without prejudice to the right of the examiner to 
 question why the affidavit is now necessary and why it was not earlier 
presented.  If the patent  owner's showing is insufficient, the examiner 
may deny entry  of the affidavit, notwithstanding the previous grant of an 
extension of time  to submit it.  The grant of an extension of time in 
these circumstances serves  merely to keep the proceeding from becoming 
terminated while allowing the patent  owner the opportunity to present the 
affidavit or to take other appropriate  action. Moreover, prosecution of 
the reexamination to save it from termination  must include such timely, 
complete and proper action as required by 37 CFR  1.113. The admission of 
the affidavit for purposes other than allowance of  the claims, or the 
refusal to admit the affidavit, and any proceedings relative,  thereto, 
shall not operate to save the proceeding from termination. 
        Implicit in the above practice is the fact that affidavits 
submitted  after final rejection are subject to the same treatment as 
amendments submitted  after final rejection, In re Affidavit Filed After 
Final Rejection, 152 USPQ  292, 1966 C.D. 53 (Comm'r Pat. 1966). 


2266    Responses [R-2] 


        >The patent owner cannot file papers on behalf of a third party. 
37  CFR 1.550(e). If a third party paper accompanies or is submitted as 
part of  a timely filed response, the response and third party paper are 
considered  to be an improper submission under 37 CFR 1.550(e), and the 
entire submission  shall be returned to the patent owner since the Office 
will not determine which  portion of the submission is the third party 
paper. The third party paper will  not be considered. The decision 
returning the improper response and the third  party paper should provide 
an appropriate extension of time under 37 CFR 1.550(c)  to refile the 
patent owner response without the third party paper. See MPEP  w 2254 and 
w 2267.< 

        If the patent owner fails to file a timely and appropriate 
response  to any Office action, the reexamination proceeding will be 
terminated and the  Commissioner will proceed to issue a reexamination 
certificate. The certificate  will normally issue indicating the status of 
the claims as indicated in the  last Office action. All rejected claims 
should be canceled. 

        The patent owner may request reconsideration of the position 
stated  in the Office action, with or without amendment to the claims. 
Any request  for reconsideration must be in writing and must distinctly 
and specifically  point out the supposed errors in the examiner's action. 
A general allegation  that the claims define a patentable invention 
without specifically pointing  out how the language of the claims 
patentably distinguishes them over the references  is inadequate and is 
not in compliance with 37 CFR 1.111(b). 

        Affidavits under 37 CFR 1.131 and 1.132 may be utilized in a 
reexamination  proceeding. Note, however, that an affidavit under 37 CFR 
1.131 may not be  used to "swear back" of a reference patent if the 
reference patent is claiming  the same invention as the patent undergoing 
reexamination. In such a situation  the patent owner may, if appropriate, 
seek to raise this issue in an interference  proceeding via an appropriate 
reissue application if such a reissue application  may be filed. 

        The certificate of mailing procedures (37 CFR 1.8 and 1.10) may be 
 used to file any paper in a reexamination proceeding. 


2267    Handling of Inappropriate or Untimely Filed Papers [R-2] 


        The applicable regulations (37 CFR 1.501(a), 1.550(e)) provide 
that  certain types of correspondence will not be considered or 
acknowledged unless  timely received. In every case, a decision is 
required as to the type of paper  and whether it is timely. 

        The return of inappropriate submissions complies with the 
regulations  that certain papers will not be considered and also reduces 
the amount of paper  which would ultimately have to be stored with the 
patent file. 

DISPOSITION OF PAPERS 

        Where papers are filed during reexamination proceedings which are 
inappropriate  because of some defect, such papers will either be returned 
to the sender or  forwarded to one of three files, the "Reexamination 
File," the "Patent File,"  or the "Storage File."  Any papers returned to 
the sender from an examining  group must be accompanied by a letter 
indicating signature and approval of  the group director. 



TYPES OF PAPERS RETURNED WITH 
COMMISSIONER'S OR GROUP DIRECTOR'S 
APPROVAL REQUIRED 

Filed by Owner      A. Premature Response by Owner 

w 1.530     Where the patent owner is NOT the re-               quester, w 
 1.540 any response or amendment                         filed by owner 
prior  to an order to reexamine 
                is premature and will be returned and will not 
                be considered. 

>w 1.550(e)   B. Paper Submitted on Behalf of Third Party 
                Submission filed on behalf of a third party 
                will be returned and will not be considered. 
                Where third party paper is submitted as part 
                of a patent owner response, see MPEP 
                w 2254 and w 2266.< 

Filed by Requester    A. No Statement Filed by Owner 

w 1.535         If a patent owner fails to file a statement 
             within  the prescribed limit, any reply by the 
  requester is inappropriate  and will be re- 
turned and will not be considered. 


                B. Late Response by Requester 

w 1.535       Any response subsequent to two months from w 1.540  the date 
 of service of the patent owner's 


                statement will be returned and will not be 
     considered. 
                C. Additional Response by Requester 

w 1.550(e)    The active participation of the reexamina- 
             tion  requester ends with the reply pursuant 
        to # 1.535. 
 Any further submission on behalf               of requester will be 
returned  and will not be 
                considered. 

Filed by Third Party 

w 1.501       Unless a paper submitted by a third party 
w 1.565(a)  raises only issues appropriate under 
                w 1.501, or consists solely of a prior decision 
             on  the patent by another forum, e.g., a court 
(see  MPEP w 2207,  w 2282, and w 2286), it 
 will be returned to  an identified third party or        destroyed if the 
submitter is unidentified. 
        The "Reexamination File" and the "Patent File" will remain 
together  in central storage area prior to a determination to reexamine 
but once an order  to reexamine is mailed, the "Patent File" will be 
maintained in the assigned  examiner's room. 

TYPES OF DEFECTIVE PAPERS TO BE 
LOCATED IN THE "REEXAMINATION FILE" 

Filed by Owner        A. Unsigned Papers 

w 1.33      Papers filed by owner which are unsigned or 
     signed  by less than all of the owners (no 
                attorney of record or acting in representative 
     capacity). 
                B. No Proof of Service 

w 1.248         Papers filed by the patent owner in which no 
proof  of service on requester is included and 
proof of service  is required, may be denied 
consideration. 
                C. Untimely Papers 

w 1.530(b)            Where owner has filed a paper which is 

w 1.540       untimely, that is, it was filed after the 

                period set for response, the paper will not be 
     considered. 


Filed by Requester  A. Unsigned Papers 

    Papers filed by requester which are unsigned        will not be 
considered. 


                B. No Proof of Service 

w 1.510(b)(5)     Papers filed by requester in which no proof 

w 1.33      of service on owner is included and where 

w 1.248       proof of service is required may be denied 
consideration. 
        The  "Storage Filed" will be maintained separate and apart from 
the  other two files and at a location selected by the group director. 
For example,  the group director may want to locate the "Storage File" in 
a central area  in the group as with the reexamination clerk or in his own 
room. 

 PAPERS LOCATED IN THE "STORAGE FILE" 

w 1.501       Citations by Third Parties 

w 1.550(e)    Submissions by third parties based solely on 
prior  art patents or publications filed after 
    the  date of the order to reexamine are not 
entered into  the patent file but delayed until               the 
reexamination proceedings  have been                       terminated. 

  Proper timely filed citations by third parties are placed in the "Patent 
 File." 


2268    Petition for Entry of Late Papers 


        Due to the "special dispatch" provision of 35 U.S.C. 305, it is 
necessary  and appropriate that the Office adhere strictly to the time 
limit set by the  Rules. However, due to the fact substantial property 
rights are involved in  patents undergoing reexamination, the Office will 
consider, in appropriate  circumstances, petitions showing unavoidable 
delay under 35 U.S.C. 133 where  untimely papers are filed subsequent to 
the order for reexamination (37 CFR  1.525). Such petitions will be 
decided by the Assistant Commissioner for Patents. 
 Any such petition must detail the specific circumstances necessitating 
the  showing of unavoidable delay and provide evidence to support the 
request. 
        Under ordinary circumstances, the failure to timely file a 
statement  pursuant to 37 CFR 1.530 or a reply pursuant to 37 CFR 1.535 
would not constitute  adequate basis to justify a showing of unavoidable 
delay regardless of 



the reasons for the failure since no rights are lost by the failure to 
file  these documents. However, the failure to timely respond to an Office 
action  rejecting claims may, in rare circumstances, justify such a 
showing since rights  may be lost by the failure to timely respond. In 
this regard see In re Katrapat,  6 USPQ2d 1863 (Comm'r Pat. 1988) and In 
re Egbers, 6 USPQ2d 1869 (Comm'r Pat.  1988). 


2269    Reconsideration 


        After response by the patent owner (37 CFR 1.111), the patent 
under  reexamination will be reconsidered and the patent owner notified if 
claims  are rejected or objections or requirements made. The patent owner 
may respond  to such Office action with or without amendment and the 
patent under reexamination  will be again considered, and so on repeatedly 
unless the examiner has indicated  that the action is final. See 37 CFR 
1.112.  Any amendment after the second  Office action, which will normally 
be final as provided for in MPEP w 2271,  must ordinarily be restricted to 
the rejection or to the objection or requirement  made. 


2270    Clerical Handling 


        The person designated as the reexamination clerk will handle most 
of  the initial clerical processing of the reexamination file. 

        Amendments which comply with 37 CFR 1.121(f) will be entered for 
purposes  of reexamination in the reexamination file wrapper.  See MPEP w 
2234 and w  2250 for manner of entering amendments. 

        For entry of amendments in a merged reissue- 
reexamination proceeding, see MPEP w 2283 and w 2285. 

        All amendments to the specification prior to final action will be 
entered  for purposes of the reexamination proceeding even though they do 
not have legal  effect until the certificate is issued. Any "new matter" 
amendment will be  required to be canceled from the description, and 
claims containing new matter  will be rejected under 35 U.S.C. 112.  A 
"new matter" amendment to the drawing  is ordinarily not entered. See MPEP 
w 608.04, 
w 608.04 (a) and (c). 


2271    Final Action 


        Before a final action is in order, a clear issue should be 
developed  between the examiner and the patent owner. To bring the 
prosecution to a speedy  conclusion and at the same time deal justly with 
the patent owner and the public,  the examiner will twice provide the 
patent owner with such information and  references as may be useful in 
defining the position of the Office as to unpatentability  before the 
action is made final. Initially, the decision ordering reexamination  of 
the patent will contain an identification of the new questions of 
patentability  that the examiner considers to be raised by the prior art 
considered. In addition,  the first Office action will reflect the 
consideration of any arguments and/or  amendments contained in the 
request, the owner's statement filed pursuant to  37 CFR 1.530, and any 
reply thereto by the requester, and should fully apply  all relevant 
grounds of rejection to the claims. 

        The statement which the patent owner may file under 
37 CFR 1.530 and the response to the first Office action should completely 
 respond to and/or amend with a view to avoiding all outstanding grounds 
of  rejection. 

        It is intended that the second Office action in the reexamination 
proceeding  following the decision ordering reexamination will be made 
final in accordance  with the guidelines set forth in MPEP w 706.07(a). 
The examiner should not  prematurely cut off the prosecution with a patent 
owner who is seeking to define  the invention in claims that will offer 
the patent protection to which the  patent owner is entitled.  However, 
both the patent owner and the examiner  should recognize that a 
reexamination proceeding may result in the final cancellation  of claims 
from the patent and that the patent owner does not have the right  to 
renew or continue the proceedings by refiling under 37 CFR 1.60 or 1.62. 
Complete and thorough actions by the examiner coupled with complete 
responses  by the patent owner, including early presentation of evidence 
under 37 CFR  1.131 or 1.132, will go far in avoiding such problems and 
reaching a desirable  early termination of the reexamination proceeding. 
In making a final rejection,  all outstanding grounds of rejection of 
record should be carefully reviewed  and any grounds or rejection relied 
on should be reiterated. The grounds of  rejection must (in the final 
rejection) be clearly developed to such an extent  that the patent owner 
may readily judge the advisability of an appeal. However,  where a single 
previous Office action contains a complete statement of a ground  of 
rejection, the final rejection may refer to such a statement and also 
should  include a rebuttal of any arguments raised in the patent owner's 
re- 



sponse. The final rejection letter should conclude with a statement that: 
"The  above rejection is made FINAL." 

        As with all other Office correspondence on the merits in a 
reexamination  proceeding, the final Office action must be signed by a 
primary examiner. 

2272    After Final Practice 


        It is intended that prosecution before the examiner in a 
reexamination  proceeding will be concluded with the final action. Once a 
final rejection  that is not premature has been entered in a reexamination 
proceeding, the patent  owner no longer has any right to unrestricted 
further prosecution. Consideration  of amendments submitted after final 
rejection will be governed by the strict  standards of 37 CFR 1.116. Note, 
however, the patent owner is entitled to know  the examiner's ruling on a 
timely response filed after final rejection before  being required to file 
a notice of appeal. Accordingly, the period for response  to the final 
rejection should be appropriately extended in the examiner's advisory 
action. See Groz & Sohne v. Quigg, 10 USPQ2d 1787 (D.D.C. 1988). The 
period  for response may not be extended to run past 6 months from the 
date of the  final rejection. Both the examiner and the patent owner 
should recognize that  substantial patent rights will be at issue with no 
opportunity for the patent  owner to refile under 37 CFR 1.60 or 1.62 in 
order to continue prosecution.  Accordingly, both the examiner and the 
patent owner should identify and develop  all issues prior to the final 
Office action, including the presentation of  evidence under 37 CFR 1.131 
and 1.132. 

FINAL REJECTION - TIME FOR RESPONSE 

        The statutory period for response in a reexamination proceeding 
will  normally be two (2) months. If a response to the final rejection is 
filed,  the period for response typically will be extended to run 3 months 
from the  date of the final rejection in the advisory action unless a 
previous extension  of time has been granted or the advisory action cannot 
be mailed in sufficient  time. See also MPEP w 2265. 

ACTION BY EXAMINER 

        It should be kept in mind that a patent owner cannot, as a matter 
of  right, amend any finally rejected claims, add new claims after a final 
rejection,  or reinstate previously canceled claims. A showing under 37 
CFR 1.116(b) is  required and will be evaluated by the examiner for all 
proposed amendments  after final rejection except where an amendment 
merely cancels claims, adopts  examiner's suggestions, removes issues for 
appeal, or in some other way requires  only a cursory review by the 
examiner. An amendment filed at any time after  final rejection but before 
an appeal brief is filed, may be entered upon or  after filing of an 
appeal provided the total effect of the amendment is to 
(1) remove issues for appeal, and/or (2) adopt examiner suggestions. 
        The first proposed amendment after final action in a reexamination 
 proceeding will be given sufficient consideration to determine whether it 
places  all the claims in condition where they are patentable and/or 
whether the issues  on appeal are reduced or simplified. Unless the 
proposed amendment is entered  in its entirety, the examiner will briefly 
explain the reasons for not entering  a proposed amendment. For example, 
if the claims as amended present a new issue  requiring further 
consideration or search, the new issue should be identified  and a brief 
explanation provided as to why a new search or consideration is 
necessary. The patent owner should be notified if certain portions of the 
amendment  would be entered if a separate paper was filed containing only 
such amendment. 
        Any second or subsequent amendment after final will be considered 
only  to the extent that it removes issues for appeal or puts a claim in 
obvious  patentable condition. 

        Since patents undergoing reexamination cannot become abandoned and 
 cannot be refiled, and since the holding of claims unpatentable and 
canceled  in a certificate is absolutely final, it is appropriate that the 
examiner consider  the feasibility of entering amendments touching the 
merits after final rejection  or after appeal has been taken, where there 
is a showing why the amendments  are necessary and a suitable reason is 
given why they were not earlier presented. 

2273    Appeal in Reexamination 


35 U.S.C. 306.          Appeal. 

        The patent owner involved in a reexamination proceeding under this 
 chapter may appeal under the provisions of section 134 of this title, and 
may  seek court review under the provisions of sections 141 to 145 of this 
title,  with respect to any decision adverse to the patentability of any 
original or  proposed amended or new claim of the patent. 

        A patent owner who is dissatisfied with the primary examiner's 
decision  in the second or final rejection of his or her claims may appeal 
to the Board  of Patent Appeals 




and Interferences for review of the rejection by filing a Notice of Appeal 
 within the required time. A Notice of Appeal must be signed by the patent 
owner  or his or her attorney or agent, and be submitted along with the 
fee required  by 37 CFR 1.17(e), (37 CFR 1.191(a)). 

        The period for filing the Notice of Appeal is the period set for 
response  in the last Office action which is normally two (2) months. The 
timely filing  of a first response to a final rejection having a shortened 
statutory period  for response is construed as including a request to 
extend the period for response  an additional month, even if an extension 
has been previously granted, as long  as the period for response does not 
exceed six (6) months from the date of  the final rejection. The normal ex 
parte appeal procedures set forth at 37  CFR 1.191-1.198 apply in 
reexamination. The requester cannot appeal or otherwise  participate in 
the appeal. 

        The reexamination statute does not provide for review of a 
patentability  decision favoring the patentee, Greenwood v. Seiko 
Instruments, 8 USPQ2d 1455 
(D.D.C. 1988). 


2274    Appeal Brief 


        Where the brief is not filed, but within the period allowed for 
filing  the brief an amendment is presented which places the claims of the 
patent under  reexamination in a patentable condition, the amendment may 
be entered. Amendments  should not be included in the appeal brief. 

        The time for filing the appeal brief is two (2) months from the 
date  of the appeal or alternatively, within the time allowed lowed for 
response  to the action appealed from, if such time is later. 

        In the event that the patent owner finds that he or she is unable 
to  file a brief within the time allowed by the rules, he or she may file 
a petition  without any fee, to the examining group, requesting additional 
time (usually  one month), and give reasons for the request. The petition 
should be filed  in duplicate and contain the address to which the 
response is to be sent. If  sufficient cause is shown and the petition is 
filed prior to the expiration  of the period sought to be extended (37 CFR 
1.192), the group director is authorized  to grant the extension for up to 
1 month. Requests for extensions of time for  more than 1 month will also 
be decided by the group director, but will not  be granted unless 
extraordinary circumstances are involved; e.g., death or  incapacitation 
of the patent owner. The time extended is added to the last  calendar day 
of the original period, as opposed to being added to the day it  would 
have been due when said last day is a Saturday, Sunday, or Federal 
holiday. 
        Failure to file the brief within the permissible time will result 
in  dismissal of the appeal. The reexamination proceeding is then 
terminated and  a certificate is issued indicating the status of the 
claims at the time of  appeal. 

        A fee as set forth in 37 CFR 1.17(f) is required when the appeal 
brief  is filed for the first time in a particular reexamination 
proceeding, 35 U.S.C.  41(a). 37 CFR 1.192 provides that the appellant 
shall file a brief of the authorities  and arguments on which he or she 
will rely to maintain his or her appeal, including  a concise explanation 
of the invention which must refer to the specification  by page and line 
number, and to the drawing, if any, by reference characters,  and a copy 
of the claims involved. 37 CFR 1.192(a) requires the submission  of 
3 copies of the appeal brief. 

        For the sake of convenience, the copy of the claims involved 
should  be double spaced and should start on a new page. 

        The brief, as well as every other paper relating to an appeal, 
should  indicate the number of the examining group to which the 
reexamination is assigned  and the reexamination control number. When the 
brief is received, it is forwarded  to the examining group where it is 
entered in the file and referred to the  examiner. 

        Patent owners are reminded that their briefs in appeal cases must 
be  responsive to every ground of rejection stated by the examiner.  A 
reply brief  should be filed in response to any new grounds stated in the 
examiner's answer. 
        Where an appellant fails to respond by way of brief or reply brief 
 to any ground of rejection, and it appears that the failure is 
inadvertent,  appellant should be notified by the examiner that he or she 
is allowed 1 month to correct the defect by filing a supplemental brief. 
Where this procedure  has not been followed, the Board of Patent Appeals 
and Interferences should  remand the reexamination file to the examiner 
for compliance. When the record  clearly indicates intentional failure to 
respond by brief to any ground of  rejection, for example, the examiner 
should inform the Board of Patent Appeals  and Interferences of this fact 
in his or her answer and merely specify the  claim affected. 



        Where the failure to respond by brief appears to be intentional, 
the  Board of Patent Appeals and Interferences may dismiss the appeal as 
to the  claims involved.  Oral argument at a hearing will not remedy such 
deficiency  of a brief. 

        The mere filing of any paper whatever entitled as a brief cannot 
necessarily  be considered as compliance with 37 CFR 1.192. The rule 
requires that the brief  must set forth the authorities and arguments 
relied on, and to the extent that  it fails to do so with respect to any 
ground of rejection, the appeal as to  that ground may be dismissed. 

        It is essential that the Board of Patent Appeals and Interferences 
 should be provided with a brief fully stating the position of the 
appellant  with respect to each issue involved in the appeal so that no 
search of the  record is required in order to determine that position. The 
fact 

that appellant may consider a ground to be clearly improper does not 
justify  a failure on the part of the appellant to point out to the Board 
the reasons  for that view in the brief. 

        A distinction must be made between the lack of any argument and 
the  presentation of arguments which carry no conviction. In the former 
case dismissal  is in order, while in the latter case a decision on the 
merits is made, although  it may well be merely an affirmance based on the 
grounds relied on by the examiner. 
        Appellant must traverse every ground of rejection set forth in the 
 final rejection. Oral argument at the hearing will not remedy such a 
deficiency  in the brief.  Ignoring or acquiescing in any rejection, even 
one based upon  formal matters which could be cured by subsequent 
amendments, will invite a  dismissal of the appeal. The reexamination 
proceedings are considered terminated  as of the date of the dismissal. 


2275    Examiner's Answer 


        MPEP w 1208 - w 1208.02 relate to preparation of examiner's 
answers  in appeals. The procedures covered in these sections apply to 
appeals in both  patent applications and patents undergoing reexamination 
proceedings. 

2276    Oral Hearing 


        If appellant desires an oral hearing, appellant must file a 
written  request for such hearing accompanied by the fee set forth in 37 
CFR 1.17(g)  within 1 month after the date of the examiner's answer. 

        Where the appeal involves patents undergoing reexamination, oral 
hearings  are open to the public as observers unless the appellant 
requests that the  hearing not be open to the public and presents valid 
reasons for such a request. 
        MPEP w 1209 relates to oral hearings in appeals in both patent 
applications  and patents undergoing reexamination. 


2277    Board of Patent Appeals and Interferences Decision 


        MPEP w 1213 - w 1213.02 relate to decisions of the Board of Patent 
 Appeals and Interferences. 


2278    Action Following Decision 


        MPEP w 1214.01 - w 1214.07 relate to the handling of applications 
and  patents undergoing reexamination after the appeal has been concluded. 

2279    Appeal to Courts 


        The normal appeal route provided to the United States Court of 
Appeals  for the Federal Circuit is available to a patent owner not 
satisfied with the  decision of the Board of Patent Appeals and 
Interferences. A third party may  not seek judicial review, Yuasa Battery 
v. Comr., 3 USPQ2d 1143 (D.D.C. 1987). 
        The normal remedy by civil action under 
35 U.S.C. 145 is provided for the owner of a patent in a reexamination 
proceeding. 
        While the reexamination statutory provisions do not provide for 
participation  by requester during any court review, the courts have 
permitted intervention  in appropriate circumstances; see Read v. Quigg, 
230 USPQ 62 (D.C.D.C. 1986)  and In re Etter, 225 USPQ 1 (Fed. Cir. 1985). 
See also MPEP # 1216, # 1216.01,  and 
# 1216.02. A requester who is permitted to intervene in a civil action has 
 no standing to appeal the court's decision, Boeing Co. v. Comr., 7 USPQ2d 
1487 
(Fed. Cir. 1988). 




2280    Information Material to Patentability in Reexamination Proceeding 

37 CFR 1.555.     Information material to patentability in reexamination 
proceedings. 
        (a)   A patent by its very nature is affected with a public 
interest.  The public interest is best served, and the most effective 
reexamination occurs  when, at the time a reexamination proceeding is 
being conducted, the Office  is aware of and evaluates the teachings of 
all information material to patentability  in a reexamination proceeding. 
Each individual associated with the patent owner  in a reexamination 
proceeding has a duty of candor and good faith in dealing  with the 
Office, which includes a duty to disclose to the Office all information 
known to that individual to be material to patentability in a 
reexamination  proceeding. The individuals who have a duty to disclose to 
the Office all information  known to them to be material to patentability 
in a reexamination proceeding  are the patent owner, each attorney or 
agent who represents the patent owner,  and every other individual who is 
substantively involved on behalf of the patent  owner in a reexamination 
proceeding. The duty to disclose the information exists  with respect to 
each claim pending in the  reexamination proceeding until the  claim is 
cancelled. Information material to the patentability of a cancelled  claim 
need not be submitted if the information is not material to patentability 
of any claim remaining under consideration in the reexamination 
proceeding.  The duty to disclose all information known to be material to 
patentability  in a reexamination proceeding is deemed to be satisfied if 
all information  known to be material to patentability of any claim in the 
patent after issuance  of the reexamination certificate was cited by the 
Office or submitted to the  Office in an information disclosure statement. 
However, the duties of candor,  good faith, and disclosure have not been 
complied with if any fraud on the  Office was practiced or attempted or 
the duty of disclosure was violated through  bad faith or intentional 
misconduct by, or on behalf of, the patent owner in  the reexamination 
proceeding. Any information disclosure statement must be  filed with the 
items listed in w 1.98(a) as applied to individuals associated  with the 
patent owner in a reexamination proceeding, and should be filed within 
two months of the date of the order for reexamination, or as soon 
thereafter  as possible. 

        (b)   Under this section, information is material to patentability 
 in a reexamination proceeding when it is not cumulative to information of 
record  or being made of record in the reexamination proceeding, and 

        (1)   It is a patent or printed publication that establishes, by 
itself  or in combination with other patents or printed publications, a 
prima facie  case of unpatentability of a claim; or 

        (2)   It refutes, or is inconsistent with, a position the patent 
owner  takes in: 

                (i)   Opposing an argument of unpatentability relied on by 
 the Office, or 

                (ii)    Asserting an argument of patentability. 

A prima facie case of unpatentability of a claim pending in a 
reexamination  proceeding is established when the information compels a 
conclusion that a  claim is unpatentable under the preponderance of 
evidence, burden-of-proof  standard, giving each term in the claim its 
broadest reasonable construction  consistent with the specification, and 
before any consideration is given to  evidence which may be submitted in 
an attempt to establish a contrary conclusion  of patentability. 

        (c)   The responsibility for compliance with this section rests 
upon  the individuals designated in paragraph (a) of this section and no 
evaluation  will be made by the Office in the reexamination proceeding as 
to compliance  with this section. If questions of compliance with this 
section are discovered  during a reexamination proceeding, they will be 
noted as unresolved questions  in accordance with w 1.552(c). 

        The duty of disclosure in reexamination proceedings applies to the 
 patent owner; to each attorney or agent who represents the patent owner, 
and  to every other individual who is substantially involved on behalf of 
the patent  owner. That duty is a continuing obligation on all such 
individuals throughout  the proceeding. The continuing obligations during 
the reexamination proceeding  is that any such individual who is aware of 
or becomes aware of, patents or  printed publications which are material 
to patentability in a reexamination  proceeding which have not previously 
been made of record in the patent file  must bring such patents or printed 
publications to the attention of the Office. 
        Such individuals are strongly encouraged to file information 
disclosure  statements, preferably in accordance with 37 CFR 1.98, within 
two months of  the date of the order to reexamine, or as soon thereafter 
as possible, in order  to bring the patents or printed publications to the 
attention of the Office.  An information disclosure statement filed under 
37 CFR 1.555 by the patent  owner after the order for reexamination and 
before the first action on the  merits may be submitted as part of the 
statement under 37 CFR 1.530 or may  be filed as a separate paper. If the 
information disclosure statement is filed  as part of a statement under 37 
CFR 1.530, the submission may include a discussion  of the patentability 
issues in the reexamination. If, however, the submission  is filed as a 
separate paper, not part of a statement under 37 CFR 1.530, the 
submission must be limited to a listing of the information disclosed and 
an  explanation of its relevance. See 37 CFR 1.98. Any discussion of the 
information  disclosed relating to patentability issues in the 
reexamination would be improper. 
        Any individual substantially involved in the reexamination 
proceeding  may satisfy his or her duty by disclosing the information to 
the attorney or  agent having responsibility for the reexamination 
proceeding or to a 



patent owner acting in his or her own behalf. A patent owner may satisfy 
his  or her duty by disclosing the information to the attorney or agent 
having responsibility  for the reexamination proceeding. An attorney, 
agent, or patent owner who receives  information has no duty to submit 
such information if it is not material to  patentability in the 
reexamination proceeding. See 37 CFR 1.555(b) for the  definition of 
"material to patentability." 

        The responsibility of compliance with 37 CFR 1.555 rests on all 
such  individuals. Any fraud practiced or attempted on the Office or any 
violation  of the duty to disclosure through bad faith or intentional 
misconduct by any  such individual results in noncompliance with 
37 CFR 1.555(a). This duty of disclosure is consistent with the duty 
placed  on patent applicants by 37 CFR 1.56.  Any such issues discovered 
during a reexamination  proceeding will merely be noted as unresolved 
questions under 37 CFR 1.552(c). 
        All such individuals who fail to comply with 37 CFR 1.555(a) do so 
 at the risk of diminishing the quality and reliability of the patent 
reexamination  certificate issuing from the proceeding. 

        For the patent owner's duty to disclose prior or concurrent 
proceedings  in which the patent is or was involved, see MPEP w 2282. 


2281    Interviews In Reexamination Proceedings 


37 CFR 1.560    . Interviews in reexamination proceedings. 

        (a)   Interviews in reexamination proceedings pending before the 
Office  between examiners and the owners of such patents or their 
attorneys or agents  of record must be had in the Office at such times, 
within Office hours, as  the respective examiners may designate. 
Interviews will not be permitted at  any other time or place without the 
authority of the Commissioner. Interviews  for the discussion of the 
patentability of claims in patents involved in reexamination  proceedings 
will not be had prior to the first official action thereon. Interviews 
should be arranged for in advance. Requests that reexamination requesters 
participate  in interviews with examiners will not be granted. 

        (b)   In every instance of an interview with an examiner, a 
complete  written statement of the reasons presented at the interview as 
warranting favorable  action must be filed by the patent owner. An 
interview does not remove the  necessity for response to Office actions as 
specified in w 1.111. 

        Only ex parte interviews between the examiner and patent owner 
and/or  the patent owner's representative are permitted. Requests by 
reexamination  requesters to participate in or to attend interviews will 
not be granted. 
        Unless the Deputy Assistant Commissioner for Patents authorizes 
otherwise,  interviews between examiner and the owners of patents 
undergoing reexamination  or their attorneys or agents must be had in the 
Office at such times, within  Office hours, as the respective examiners 
may designate. 

        Interviews for the discussion of the patentability of claims in 
patents  involved in reexamination proceedings will not be had prior to 
the first official  action following the order for reexamination and any 
submissions pursuant to  37 CFR 1.530 and 1.535. 

        However, questions on purely procedural matters may be answered by 
 the examiner. Except for questions on strictly procedural matters, an 
examiner  will not conduct personal or telephone interviews with 
requesters or other  third parties with respect to a patent in which a 
request for reexamination  has been filed. Questions by third parties 
(requester or otherwise relating  to when the next Office action will be 
rendered are improper as they relate  to the merits of the proceeding. 

        In every instance of an interview with the examiner, a complete 
written  statement of the reasons presented at the interview as warranting 
favorable  action must be filed by the patent owner. This requirement may 
not be waived  by the examiner. Patent owners are encouraged to submit 
such written statement  as soon after the interview as is possible, but no 
later than the next communication  to the Office. Service of the written 
statement of the interview on the requester  is required. 

        The examiner must complete Interview Summary form PTOL-474 for 
each  interview held where a matter of substance has been discussed (see 
MPEP w 713.04). 
 A copy of the form should be given to the patent owner at the conclusion 
of  the interview. The original should be made of record in the 
reexamination file  and a copy mailed to the requester. 

        The general procedure for conducting interviews and recording same 
 are described at MPEP w 713.01 - 
w 713.04. 


2282    Notification of Existence of Prior or Concurrent Proceedings and 
Decisions Thereon 

37 CFR 1.565.     Concurrent Office proceedings. 

        (a)   In any reexamination proceeding before the Office, the 
patent  owner shall call the attention of the Office to any prior or 
concurrent proceedings  in which the patent is or was involved such as 
interferences, reissue, reexaminations,  or litigation and the results of 
such proceedings. 



***** 

        It is important for the Office to be aware of any prior or 
concurrent  proceedings in which a patent undergoing reexamination is or 
was involved,  such as interferences, reissues, reexaminations or 
litigations, and any results  of such proceedings. 37 CFR 1.565(a) 
requires the patent owner to provide the  Office with information 
regarding the existence of any such proceedings, and  the results thereof, 
if known. Ordinarily, no submissions of any kind by third  parties filed 
after the date of the order are placed in the reexamination or  patent 
file while the reexamination proceeding is pending. However, in order  to 
ensure a complete file, with updated status information regarding prior 
or concurrent proceedings regarding the patent under reexamination, the 
Office  will accept at any time copies of notices of suits and other 
proceedings involving  the patent and copies of decisions or papers filed 
in the court from litigations  or other proceedings involving the patent 
from the parties involved or third  parties for placement in the patent 
file. Persons making such submissions must  limit the submissions to the 
notification and not include further arguments  or information. Any proper 
submissions will be promptly placed of record in  the patent file. See 
MPEP w 2286 for Office investigation for prior or concurrent  litigation. 


2283    Multiple Copending Reexamination Proceedings 


37 CFR 1.565.     Concurrent Office proceedings. 

***** 

        (c)   If reexamination is ordered while a prior reexamination 
proceeding  is pending, the reexamination proceedings will be consolidated 
and result in  the issuance of a single certificate under w 1.570. 

***** 

        See MPEP w 2240 for a discussion as to whether a substantial new 
question  of patentability is raised by the prior art cited in a second or 
subsequent  request for reexamination filed while a reexamination 
proceeding is pending. 
        If reexamination is ordered on a request for reexamination while a 
 prior reexamination proceeding is still pending, the decision on whether 
or  not to combine the proceedings will be made by the group director of 
the examining  group where the reexamination is pending.  No decision on 
combining the reexaminations  should be made until such time as 
reexamination is actually ordered in the  later filed request for 
reexamination. 

PROCEEDINGS MERGED 

        If a second request is filed where the first certificate will 
issue  after 3 months from the filing of the second request, the 
proceedings normally  will be merged. In this situation the second request 
is decided based on the  original patent claims and if reexamination is 
ordered, the reexamination proceedings  normally would be merged. If the 
first certificate is in issue it will be withdrawn  from issue. The second 
reexamination proceeding will be merged with the first  reexamination 
proceeding and prosecution will continue after the patent owner  and 
second requester have been given an opportunity to file a statement and 
reply, respectively. 

        If the second request is based upon essentially the same patents 
or  publications as in the first request or on patents or printed 
publications  which raise essentially the same issues as those raised in 
the first request,  and if reexamination is ordered, the examination of 
the merged proceeding will  continue at the point reached in the first 
reexamination proceeding. If, however,  new patents or printed 
publications are presented in the second request which  raise different 
questions than those raised in the first request, then prosecution  in the 
merged reexamination proceeding will be reopened ,if applicable, to  the 
extent necessary to fully treat the questions raised. 

        The patent owner will be provided with an opportunity to respond 
to  any new rejection in a merged reexamination proceeding prior to the 
action  being made final. See MPEP w 2271.  If the reexamination 
proceedings are combined,  a single certificate will be issued based upon 
the combined proceedings, 37  CFR 1.565(c). 

 SUSPENSIONS 

        It may also be desirable in certain situations to suspend a 
proceeding  for a short and specified period of time. For example, a 
suspension of a first  reexamination proceeding may be issued to allow 
time for the patent owner's  statement and the requester's reply in a 
second proceeding prior to merging.  Further, after the second proceeding 
has been ordered, it may be desirable  to suspend the second proceeding 
where the first proceeding is presently on  appeal before a Federal court 
to await the court's decision prior to merging. 
 A suspension will only 



be granted in exceptional instances because of the statutory requirements 
that  examination proceed with "special dispatch" and must be with the 
express written  approval of the group director. Suspension will not be 
granted when there is  an outstanding Office action. 

MERGER OF REEXAMINATIONS 

        The following guidelines should be observed when two requests for 
reexamination  directed to a single patent have been filed. 

        The second request (Request 2) should be processed as quickly as 
possible  and assigned to the same examiner to which the first request 
(Request 1) is  assigned. Request 2 should be decided immediately without 
waiting the usual  period.  If Request 2 is denied, ex parte prosecution 
of Request 1 should continue.  If Request 2 is granted and the proceedings 
are merged, combined prosecution  should be carried out once the patent 
owner's statement and any reply by the  requester have been received in 
Request 2. 

        If ex parte prosecution has not begun on Request 1, it should be 
processed  up to that point and then normally held until Request 2 is 
ready for ex parte  action following 

the statement and reply or until Request 2 is denied.  Request 2 should be 
 determined on its own merits without reference to Request 1. 

        The decision by the group director merging the reexamination 
proceedings  should include a requirement that the patent owner maintain 
identical claims  in both files. Any responses by the patent owner must 
consist of a single response,  addressed to both files, filed in duplicate 
each bearing an original signature,  for entry in both files. Both files 
will be maintained as separate complete  files. 

        When ex parte prosecution is appropriate in merged proceedings, a 
single  combined examiner's action will be prepared. Each action will 
cross-reference  the two proceedings. A separate action cover form for 
each proceeding will  be printed by the PALM printer for each 
reexamination request control number.  Each requester will get a copy of 
the action with the appropriate cover form. 
 The patent owner will get a copy of each cover form and the body of the 
action. 
        When a "Notice Of Intent To Issue A Reexamination  Certificate" 
(NIRC)  is appropriate, plural notices will be printed. Both reexamination 
files will  then be processed. The group should prepare the file of the 
concurrent proceedings  in the manner specified in MPEP w 2287 before 
release to Office of Publications. 
        The above guidelines should be extended to those situations where 
more  than two requests are filed for a single patent. 

PROCEEDINGS NOT MERGED 

        If a second request is filed where the first reexamination 
certificate  will issue within 3 months from the filing of the second 
request, the proceedings  normally will not be merged. If the certificate 
on the first reexamination  proceeding will issue before the decision on 
the second request must be decided,  the reexamination certificate is 
allowed to issue. The second request is then  considered based upon the 
claims in the patent as indicated in the issued reexamination  certificate 
rather than the original claims of the patent. In such situations  the 
proceedings will not be merged. In NO case should a decision on the second 
 request be delayed beyond its 3-month deadline. 

FEES IN MERGED PROCEEDINGS 

        Where the proceedings have been merged and a paper is filed which 
requires  payment of a fee (e.g., petition fee, appeal fee, brief fee, 
oral hearing fee),  only a single fee need be paid.  For example, only one 
fee need be paid for  an appeal brief even though the brief relates to 
merged multiple proceedings  and copies must be filed for each file in the 
merged proceeding. 

PETITION TO MERGE MULTIPLE COPENDING 
REEXAMINATION PROCEEDINGS 

        No petition to merge multiple reexamination proceedings is 
necessary  since the Office will generally, sua sponte, make a decision as 
to whether  or not it is appropriate to merge the multiple reexamination 
proceedings. If  any petition to merge the proceedings is filed prior to 
the determination (  37 CFR 1.515) and order to reexamine ( 37 CFR 1.525) 
on the second request,  it will not be considered but will be returned to 
the party submitting the  same by the examining group director. The 
decision returning such a premature  petition will be made of record in 
both reexamination files, but no copy of  the petition will be retained by 
the Office.  See MPEP w 2267. 



        While the patent owner can file a petition to merge the 
proceedings  at any time after the order to reexamine ( 37 CFR 1.525) on 
the second request,  the better practice would be to include any such 
petition with the patent owner's  statement under 37 CFR 1.530, in the 
event the examining group director has  not acted prior to that date to 
merge the multiple reexamination proceedings.  If the requester of any of 
the multiple reexamination proceedings is not the  patent owner, that 
party may petition to merge the proceedings as a part of  a reply pursuant to 
37 CFR 1.535 in the event the examining group director has not acted prior 
 to that date to merge the multiple proceedings. A petition to merge the 
multiple  proceedings which is filed by a party other than the patent 
owner or one of  the requesters of the reexamination will not be 
considered but will be returned  to that party by the examining group 
director as being improper under 37 CFR  1.550(e). 

        All decisions on the merits of petitions to merge multiple 
reexamination  proceedings will be made by the examining group director. 


2284    Copending Reexamination and Interference Proceedings 


37 CFR 1.565.     Concurrent Office proceedings. 

***** 

        (b)   If a patent in the process of reexamination is or becomes 
involved  in litigation or a reissue application for the patent is filed 
or pending,  the Commissioner shall determine whether or not to stay the 
reexamination or  reissue proceeding. 

***** 

        (e)   If a patent in the process of reexamination is or becomes 
involved  in an interference, the Commissioner may stay reexamination or 
the interference.  The Commissioner will not consider a request to stay an 
interference unless  a motion (w1.635) to stay the interference has been 
presented to, and denied  by, an examiner-in-chief and the request is 
filed within ten (10) days of a  decision by an examiner-in-chief denying 
the motion for a stay or such other  time as the examiner-in-chief may set. 

        The general policy of the Office is that a reexamination 
proceeding  will not be delayed, or stayed, because of an interference or 
the possibility  of an interference. The reasons for this policy are (1) 
the relatively long  period of time usually required for interferences and 
(2) the requirement of  35 U.S.C. 305 that all reexamination proceedings 
be conducted with "special  dispatch" within the Office. In general, the 
Office will follow the practice  of making the required and necessary 
decisions in the reexamination proceeding  and, at the same time, proceed 
with the interference to the extent desirable.  Decisions in the 
interference will take into consideration the status of the  reexamination 
and what is occurring therein. The decision as to what actions  are taken 
in the interference will, in general, be taken in accordance with  normal 
interference practice. 

ATTEMPTING TO PROVOKE AN 
INTERFERENCE WITH A PATENT 
INVOLVED IN A REEXAMINATION 
PROCEEDING 

        An interference will not be declared between an application and a 
patent  which is involved in a reexamination proceeding except upon 
specific authorization  from the Office of the Assistant Commissioner for 
Patents.  When an amendment  seeking to provoke an interference with a 
patent involved in a reexamination  proceeding is filed in a pending 
application, the owner of the patent must  be notified (see 37 CFR 
1.607(d)). The applicant must identify the patent under  reexamination 
with which interference is sought. The corresponding application  claims 
may be rejected on any applicable ground including, if appropriate,  the 
prior art cited in the reexamination proceeding. Prosecution of the 
application  should continue as far as possible, but if the application is 
placed in condition  for allowance and still contains claims which 
interfere with claims of the  patent under reexamination, further action 
on the application should be suspended  until the certificate on the 
reexamination proceeding has been issued. 
MOTION TO SUSPEND INTERFERENCE 
UNDER 37 CFR 1.635 PENDING THE OUTCOME OF A REEXAMINATION PROCEEDING 
        A motion under 37 CFR 1.635 to suspend an interference pending the 
 outcome of a reexamination proceeding may be made at any time during the 
interference  by any party thereto. The motion must be presented to the 
examiner-in-chief  who will decide the motion based on the particular fact 
situation. However,  no consideration will be given such a motion unless 
and until a reexamination  order is issued, nor will suspension of the 
interference normally be permitted  until after any motions have been 
disposed of. If the motion is denied by the  examiner-in-chief, a request 
to stay the interference may be made to the Commissioner  under 37 CFR 
1.565(e). 



REQUEST BY THE EXAMINER FOR ACTION 
PURSUANT TO 37 CFR 1.641 

        Normally, examiners should not have to alert the examiner-in-chief 
 for action under 37 CFR 1.641 while the reexamination proceeding is 
pending  but should rely on the parties of the interference to file a 
notice under 37 CFR 1.660. 

REQUEST FOR REEXAMINATION FILED 
DURING INTERFERENCE 

        In view of the provisions of 37 CFR 1.510(a), "Any person may, at 
any  time during the period of enforceability of a patent" file a request 
for reexamination.  The patent owner must notify the Board of Patent 
Appeals and Interferences  under 37 CFR 1.660 within 10 days of receiving 
notice that the request was  filed. Such requests for reexamination will 
be processed in the normal manner.  No delay, or stay, of the 
reexamination will occur because the requester is  not a party to the 
interference. 


If the examiner orders reexamination pursuant to 
37 CFR 1.525 and subsequently rejects a patent claim corresponding to a 
count  in the interference, the attention of the examiner-in-chief shall 
be called  thereto and appropriate action may be taken under 37 CFR 1.641. 

PETITION TO STAY REEXAMINATION 
PROCEEDING BECAUSE OF INTERFERENCE 

        Any petition to stay a reexamination proceeding, because of an 
interference,  which is filed prior to the determination (37 CFR 1.515) 
and order to reexamine 
(37 CFR 1.525) will not be considered, but will be returned to the party 
submitting  the same. The decision returning such a premature petition 
will be made of  record in the reexamination file, but no copy of the 
petition will be retained  by the Office. A petition to stay the 
reexamination proceeding because of the  interference may be filed by the 
patent owner as a part of the patent owner's  statement under 37 CFR 1.530 
or subsequent thereto. If a party to the interference,  other than the 
patent owner, is a requester of the reexamination, that party  may 
petition to stay the reexamination proceeding as a part of a reply 
pursuant  to 37 CFR 1.535.  If the other party to the interference is not 
the requester,  any petition by that party is improper under 37 CFR 
1.550(e) and will not be  considered. Any such improper petitions will be 
returned to the party submitting  the same. Premature petitions to stay 
the reexamination proceedings; i.e.,  those filed prior to the 
determination (37 CFR 1.515) and order to reexamine 
(37 CFR 1.525) will be returned by the examining group director as 
premature.  Petitions to stay filed subsequent to the date of the order 
for reexamination  will be referred to the Office of the Assistant 
Commissioner for Patents for  decision. All decisions on the merits of 
petitions to stay a reexamination  proceeding because of an interference 
will be made in the Office of the Assistant  Commissioner for Patents. 

ACTION IN INTERFERENCE FOLLOWING 
REEXAMINATION 

        If one or more claims of a patent which is involved in an 
interference  are canceled or amended by the issuance of a reexamination 
certificate, appropriate  action will be taken by the examiner-in-chief 
under 37 CFR 1.641. 

        Upon issuance of the reexamination certificate, the patent owner 
must  notify the examiner-in-chief 
thereof. 


2285    Copending Reexamination and Reissue Proceedings 


37 CFR 1.565.     Concurrent Office proceedings. 

***** 

        (d)   If a reissue application and a reexamination proceeding on 
which  an order pursuant to w 1.525 has been mailed are pending 
concurrently on a  patent, a decision will normally be made to merge the 
two proceedings or to  stay one of the two proceedings. Where merger of a 
reissue application and  a reexamination proceeding is ordered, the merged 
examination will be conducted  in accordance with 
ww 1.171-1.179 and the patent owner will be required to place and maintain 
 the same claims in the reissue application and the reexamination 
proceeding  during the pendency of the merged proceeding. The examiner's 
actions and any  responses by the patent owner in a merged proceeding will 
apply to both the  reissue application and the reexamination proceeding 
and be physically entered  into both files. Any reexamination proceeding 
merged with a reissue application  shall be terminated by the grant of the 
reissued patent. 

***** 

        The general policy of the Office is that a reissue application 
examination  and a reexamination proceeding will not be conducted 
separately at the same  time as to a particular patent. The reason for 
this policy is to permit timely  resolution of both proceedings to the 
extent possible and to prevent inconsistent,  and possibly conflicting, 
amendments from being introduced into the two 



proceedings on behalf of the patent owner.  Accordingly, if both a reissue 
 application and a reexamination proceeding are pending concurrently on a 
patent,  a decision will normally be made to merge the two proceedings or 
to stay one  of the two proceedings. The decision as to whether the 
proceedings are to be  merged, or which proceeding, if any, is to be 
stayed is made in the Office  of the Assistant Commissioner for Patents. 
See In re Onda, 229 USPQ 235 (Comm'r  Pat. 1985). 

TIME FOR MAKING DECISION ON MERGING 
OR STAYING THE PROCEEDINGS 

        A decision whether or not to merge the reissue application 
examination  and the reexamination proceeding, or to stay one of the two 
proceedings, will  not be made prior to the mailing of an order to 
reexamine the patent pursuant  to 37 CFR 1.525. Until such time as 
reexamination is ordered, the examination  of the reissue application will 
proceed. A determination on the request 
must not be delayed because of the existence of a copending reissue 
application  since 35 U.S.C. 304 and 
37 CFR 1.515 require a determination within 3 months following the filing 
date  of the request.  See MPEP 
w 2241.  If the decision on the request denies reexamination (MPEP w 
2247),  the examination or the reissue applications should be continued. 
If reexamination  is ordered (MPEP w 2246), the reexamination file, the 
reissue application,  and the patent file should be delivered to the 
Office of the Assistant Commissioner  for Patents promptly following the 
mailing of the decision ordering reexamination.  The delivery of the files 
to the Office of the Assistant Commissioner should  not be delayed 
awaiting the filing of any statement under 
37 CFR 1.530 and any reply under 37 CFR 1.535. 

        If a reissue application is filed during the pendency of a 
reexamination  proceeding, the reexamination file, the reissue 
application, and the patent  file should be delivered to the Office of the 
Assistant Commissioner for Patents  as promptly as possible after the 
reissue application reaches the examining  group. 

        The decision on whether or not the proceedings are to be merged, 
or  which proceeding, if any, is to be stayed will generally be made as 
promptly  as possible after receipt of all of the files in the Office of 
the Assistant  Commissioner for Patents. However, the decision on merging 
or staying the proceedings  may in certain situations be delayed until any 
submissions under 37 CFR 1.530  and 37 CFR 1.535 have been filed. Until a 
decision is mailed merging the proceedings  or staying one of the 
proceedings, the two proceedings will continue and be  conducted 
simultaneously, but separately. 

        The Office may in certain situations issue a certificate at the 
termination  of a reexamination proceeding, even if a copending reissue 
application or another  reexamination request has already been filed. 

CONSIDERATIONS IN DECIDING WHETHER TO MERGE THE PROCEEDINGS OR WHETHER TO 
STAY  A PROCEEDING 

        The decision on whether to merge the proceedings or stay a 
proceeding  will be made on a case-by-case basis based upon the status of 
the various proceedings  with due consideration being given to the 
finality of the reexamination requested. 
1.  Reissue about to issue, reexamination requested. 

        If the reissue patent will issue before the determination on the 
reexamination  request must be made, the determination on the request 
should normally be delayed  until after the granting of the reissue patent 
and then be decided on the basis  of the claims in the reissue patent. 
The reexamination, if ordered, would  then be on the reissue patent claims 
rather than the original patent claims.  Since the reissue application 
would no longer be pending, the reexamination  would be processed in a 
normal manner. 

        Where a reissue patent has been issued, the determination on the 
request  for reexamination should point out to the requester and patent 
owner that the  determination has been made on the claims of the reissue 
patent and not on  the claims of the original patent.  If a reissue patent 
issues on the patent  under reexamination after reexamination is ordered 
the next action from the  examiner in the reexamination should point out 
that further proceedings in  the reexamination will be based on the claims 
of the reissue patent and not  on the patent surrendered. Form Paragraph 
22.05 may be used in the Office action. 
W 22.05       Reexamination Based on Reissue Claims 

        In view of the surrender of original patent [1] and the granting 
of  reissue patent [2] which has been issued on [3], all subsequent 
proceedings  in this reexamination will be based on the reissue patent 
claims. 


        Where the reissue patent has issued prior to the filing of a 
request  for reexamination of the parent patent, see MPEP w 2258. 

2.  Reissue pending, reexamination request filed. 

        Where a reissue patent will not be granted prior to the expiration 
 of the 3-month period for making the determination, a decision will be 
made  as to whether the proceedings are to be merged or which proceeding, 
if any,  is to be stayed after an order to reexamine has been issued.  The 
general policy  of the Office is to merge the more narrow reexamination 
proceeding with the  broader reissue application examination whenever it 
is desirable to do so in  the interests of expediting the conduct of both 
proceedings.  In making a decision  on whether or not to merge the two 
proceedings, consideration will be given  to the status of the reissue 
application examination at the time the order  to reexamination the patent 
pursuant to 37 CFR 1.525 is mailed.  For example,  if examination of the 
reissue application has not begun, or if a rejection  of the primary 
examiner has not been appealed to the Board of Patent Appeals  and 
Interferences pursuant to 37 CFR 1.191, it is likely that a merger of the 
reissue application examination and the reexamination proceeding will be 
ordered  by the Office of the Assistant Commissioner for Patents. If, 
however, the reissue  application is on appeal to the Board of Patent 
Appeals and Interferences or  the courts, that fact would be considered in 
making a decision whether to merge  the proceedings or stay one of the 
proceedings. See In re Stoddard, 213 USPQ  386 (Comm'r Pat. 1982); and In 
re Scragg, 
215 USPQ 715 (Comm'r Pat. 1982). 

        If such a merger of the proceedings is ordered, the order merging 
the  proceedings will also require that the patent owner place the same 
claims in  the reissue application and in the reexamination proceeding for 
purposes of  the merged proceedings.  An amendment may be required to be 
filed to do this  within a specified time set in the order merging the 
proceedings. 
        If the reissue application examination has progressed to a point 
where  a merger of the two proceedings is not desirable at that time, then 
the reexamination  proceeding will generally be stayed until the reissue 
application examination  is complete on the issues then pending.  After 
completion of the examination  on the issues then pending in the reissue 
application examination, the stay  of the reexamination proceeding will be 
removed and the proceedings either  merged or the reexamination proceeding 
will be conducted separately if the  reissue application has become 
abandoned. The reissue application examination  will be reopened, if 
necessary, for merger of the reexamination proceeding  therewith. 

        If a stay of a reexamination proceeding has been removed following 
 a reissue application examination, the first Office action will be given 
a  shortened statutory period for response of 1 month unless a longer 
period for  response clearly is warranted by the nature of the examiner's 
action. The second  Office action will normally be final and also have a 
1-month period for response.  These shortened periods are considered 
necessary to prevent undue delay in  terminating the proceedings and also 
to proceed with "special dispatch" in  view of the earlier stay. 

        If the reissue application examination and the reexamination 
proceeding  are merged, the issuance of the reissue patent will also serve 
as the certificate  under 
37 CFR 1.570 and the reissue patent will so indicate. 

3. Reexamination proceedings underway, reissue application filed. 
        When a reissue application is filed after a reexamination 
proceeding  has begun following an order therefor, the reexamination, 
patent, and the reissue  files should be forwarded to the Office of the 
Assistant Commissioner for Patents  for consideration as to whether or not 
to merge the proceedings or stay one  proceeding. 

        Where reexamination has already been ordered prior to the filing 
of  a reissue application, the following factors may be considered in 
deciding  whether to merge the proceedings or stay one proceeding: 

a.  The status of the reexamination proceeding: For example, has a 
statement  and reply been received, a first Office action been mailed, a 
final rejection  been given, or printing of certificate begun? 

b.  The nature and scope of the reissue application: For example, are the 
issues  presented in the proceeding the same, overlapping, or completely 
separate;  and are the reissue claims broadening or related to issues 
other than rejections  based on patents or printed publications? 



CONDUCT OF MERGED REISSUE 
APPLICATION EXAMINATION AND 
REEXAMINATION PROCEEDINGS 

        If a reissue application examination and a reexamination 
proceeding  are merged, the merged examination will be conducted on the 
basis of the rules  relating to the broader reissue application 
examination. Amendments should  be submitted in accordance with the 
reissue practice under 37 CFR 1.121(e);  see MPEP w 1455.  The examiner, 
in examining the merged proceeding, will apply  the reissue statute, 
rules, and case law to the merged proceeding. This is  appropriate in view 
of the fact that the statutory provisions for reissue applications  and 
reissue application examination include, inter alia, provisions equivalent 
 to 35 U.S.C. 305 relating to the conduct of reexamination proceedings. 
        In any merged reissue application and reexamination proceeding, 
the  examiner's actions will take the form of a single action which 
jointly applies  to both the reissue application and the reexamination 
proceeding. The action  will contain identifying data for both the reissue 
application and the reexamination  proceeding and will be physically 
entered into both files, which will be maintained  as separate files. Any 
responses by the applicant/patent owner in such a merged  proceeding must 
consist of a single response, filed in duplicate, for entry  in both files 
and service of copy must be made on the reexamination requester. 
 A copy of all Office actions will be mailed to the reexamination 
requester  but not to any other third party. 

        If the applicant/patent owner in such a merged proceeding fails to 
 file a timely and appropriate response to any Office action, the merged 
proceeding  will be terminated, the reissue application held abandoned, 
and the Commissioner  will proceed to issue a reexamination certificate 
under 37 CFR 1.570 in accordance  with the last action of the Office 
unless further action is clearly needed  in view of the difference in 
rules relating to reexamination and reissue proceedings. 
        If the applicant/patent owner in such a merged proceeding files an 
 express abandonment of the reissue application pursuant to 37 CFR 1.138, 
the  next Office action of the examiner will accept the express 
abandonment, dissolve  the merged proceeding, and continue the 
reexamination proceeding. Any grounds  of rejection which are not 
applicable under reexamination should be withdrawn 
(e.g., based on public use or sale) and any new grounds of rejection which 
 are applicable under reexamination (e.g., improper broadened claims) 
should  be made by the examiner upon dissolution of the merged proceeding. 
The existence  of any questions remaining which cannot be considered under 
reexamination following  dissolution of the merged proceeding would be 
noted by the examiner as not  being proper under reexamination pursuant to 
37 CFR 1.552(c). 

PETITION TO MERGE REISSUE APPLICATION 
EXAMINATION AND REEXAMINATION 
PROCEEDINGS OR TO STAY EITHER 
PROCEEDING BECAUSE OF THE 
EXISTENCE OF THE OTHER 

        No petition to merge the proceedings, or stay one of them, is 
necessary  since the Office will generally, sua sponte, make a decision to 
merge the proceedings  or stay one of them.  If any petition to merge the 
proceedings, or to stay  one proceeding because of the other, is filed 
prior to the determination (37  CFR 1.515) and order to reexamine (37 CFR 
1.525), it will not be considered,  but will be returned to the party 
submitting the same by the examining group  director, regardless of 
whether the petition is filed in the reexamination  proceeding, the 
reissue application, or both. This is necessary to prevent  premature 
papers relating to the reexamination proceeding from being filed. 
 The decision returning such a premature petition will be made of record 
in  both the reexamination file and the reissue application file, but no 
copy of  the petition will be retained by the Office.  See MPEP w 2267. 

        The patent owner may file a petition under 37 CFR 1.182 to merge 
the  proceedings, or stay one proceeding because of the other, at the time 
the patent  owner's statement under 37 CFR 1.530 is filed or subsequent 
thereto in the  event the Office has not acted prior to that date to merge 
the proceedings  or stay one of them.  If the requester of the 
reexamination is not the patent  owner, that party may petition to merge 
the proceedings, or stay one proceeding  because of the other, as a part 
of a reply pursuant to 37 CFR 1.535, in the  event the Office has not 
acted prior to that date to merge the proceedings  or stay one of them.  A 
petition to merge the proceedings, or stay one of them  because of the 
other, which is filed by a party other than the patent owner  or the 
requester of the reexamination will not be considered, but will be 
returned  to that party by the examining group director as being improper 
under 37 CFR  1.550(e). 



        All decisions on the merits or petitions to merge the reissue 
application  examination and the reexamination proceeding, or to stay one 
proceeding because  of the other, will be made in the Office of the 
Assistant Commissioner for  Patents.  Such petitions to merge the 
proceedings, or stay one of the proceedings  because of the other, which 
are filed by the patent owner or the requester  subsequent to the date of 
the order for reexamination will be referred to the  Office of the 
Assistant Commissioner of Patents for decision. 

FEES IN MERGED PROCEEDINGS 

        Where the proceedings have been merged and a paper is filed which 
requires  payment of a fee (e.g., petition fee, appeal fee, brief fee, 
oral hearing fee),  only a single fee need be paid.  For example, only one 
fee need be paid for  an appeal brief even though the brief relates to 
merged multiple proceedings  and copies must be filed for each file in the 
merged proceeding. 


2286    Reexamination and Litigation Proceedings [R-2] 


        The Federal courts and the Patent and Trademark Office are jointly 
 responsible for the overall administration of the patent system. 
        35 U.S.C. 302 permits a request for reexamination to be filed "at 
any  time."  Thus, requests for reexamination are frequently filed where 
the patent  for which reexamination is requested is involved in concurrent 
litigation.  The guidelines set forth below will generally govern Office 
handling of reexamination  requests where there is concurrent litigation 
in the Federal courts. 
COURT ORDERED REEXAMINATION 
PROCEEDING OR LITIGATION STAYED 
FOR REEXAMINATION 

        Any request for reexamination which indicates that it is filed as 
a  result of an order by a court or that litigation is stayed for the 
filing of  a reexamination request will be taken up by the examiner for 
decision 6 weeks  after the request was filed.  See MPEP w 2241.  If 
reexamination is ordered,  the examination following the statement by the 
patent owner under 37 CFR 1.530  and the reply by the requester under 37 
CFR 1.535 will be expedited to the  extent possible. Office actions in 
these reexamination proceedings will normally  set a 1 month shortened 
statutory period for response rather than the 2 months  usually set in 
reexamination proceedings. See MPEP w 2263.  This 1-month period  may be 
extended only upon a showing of sufficient cause.   See MPEP w 2265. 
 See generally Raytek, Inc. v. Solfan Systems Inc., 211 USPQ 405 (N. D. 
Cal.,  1981); Dresser Industries, Inc. v. Ford Motor Co., et al, 211 USPQ 
1114 (N.  D., Texas, 1981); Digital Magnetic Systems, Inc. v. Ansley, 213 
USPQ 290 (W.  D. Okla., 1982); Gould v. Control Laser Corp., 217 USPQ 985 
(Fed. Cir. 1983);  The Toro Co. v. R.L. Nelson Corp., 223 USPQ 636 (C.D. 
Ill. 1984); In re Vamco  Machine and Tool, Inc., 224 USPQ 617 (Fed. Cir. 
1985); and Laffland Bros. Co.  v. Mid-Western Energy Corp., 225 USPQ 886 
(W.D. Okla. 1985). 

FEDERAL COURT DECISION KNOWN 
TO EXAMINER AT THE TIME THE 
DETERMINATION ON THE REQUEST 
FOR REEXAMINATION IS MADE 

        If a Federal Court decision on the merits of a patent is known to 
the  examiner at the time the determination on the request for 
reexamination is  made, the following guidelines will be followed by the 
examiner, whether or  not the person who filed the request was a party to 
the litigation. When the  initial question as to whether the prior art 
raises a substantial new question  of patentability as to a patent claim 
is under consideration, the existence  of a final court decision of claim 
validity in view of the same or different  prior art does not necessarily 
mean that no new question is present, in view  of the different standards 
of proof employed by the district courts and the  Office. Thus, while the 
Office may accord deference to factual findings made  by the court, the 
determination of whether a substantial new question of patentability 
exists will be made independently of the court's decision on validity as 
it  is not controlling on the Office. A non-final holding of claim 
invalidity or  unenforceability will not be controlling on the question of 
whether a substantial  new question of patentability is present. A final 
holding of claim invalidity  or unenforceability, however, is controlling 
on the Office. In such cases,  a substantial new question of patentability 
would not be present as to the  claims held invalid or unenforceable. See 
Ethicon v. Quigg, >849 F.2d 1422,<  7 USPQ2d 1152 (Fed. Cir. 1988). 

        All determinations on requests for reexamination which the 
examiner  makes after a Federal Court decision must be reviewed by the 
examining group  director to 




ensure it conforms to the current Office litigation policy and guidelines. 
 See MPEP w 2240.  This review is a procedural review and not a review of 
the  merits of the decision. 

        For a discussion of the policy in specific situations where a 
Federal  court decision has been issued, see MPEP w 2242. 

REEXAMINATION WITH CONCURRENT 
LITIGATION BUT ORDERED PRIOR TO 
FEDERAL COURT DECISION 

        In view of the statutory mandate to make the determination on the 
request  within 3 months, the determination on the request based on the 
record before  the examiner will be made without awaiting a decision by 
the Federal court. 
 It is not realistic to attempt to determine what issues will be treated 
by  the Federal Court prior to the court decision. Accordingly, the 
determination  on the request will be made without considering the issues 
allegedly before  the court. If reexamination is ordered, the 
reexamination will continue until  the Office becomes aware that a court 
decision has issued.  At such time, the  request will be reviewed in 
accordance with the guidelines set forth below.  The patent owner is 
required by 
37 CFR 1.565(a) to call the attention of the Office to any prior or 
concurrent  proceeding in which the patent is or was involved and thus has 
an obligation  to promptly notify the Office that a decision has been 
issued in the Federal  Court. 

FEDERAL COURT DECISION ISSUES AFTER 
 REEXAMINATION ORDERED 

        Pursuant to 37 CFR 1.565(a), the patent owner in a reexamination 
proceeding  must promptly notify the Office of any Federal court decision 
involving the  patent.  Where the reexamination proceeding is currently 
pending and the court  decision issues, or the Office becomes aware of a 
court decision relating to  a pending reexamination proceeding, the order 
to reexamine is reviewed to see  if a substantial new question of 
patentability is still present. If no substantial  new question of 
patentability is still present, the order to reexamine is vacated  by the 
examining group director and reexamination is terminated. ** 
        A non-final district court decision concerning a patent under 
reexamination  shall have no binding effect on a reexamination proceeding. 

        The issuance of a final district court decision upholding validity 
 during a reexamination also will have no binding effect on the 
examination  of the reexamination.  This is because the Court states in 
Ethicon v. Quigg, >849 F.2d 1422, 1428,< 7 USPQ2d 1152, 1157 (Fed. Cir. 
1988) that the Office  is not bound by a court's holding of patent 
validity and should continue the  reexamination. The Court notes that 
district courts and the Office use different  standards of proof in 
determining invalidity and thus on the same evidence  could quite 
correctly come to different conclusions. Specifically, invalidity  in a 
district court must be shown by "clear and convincing" evidence, whereas 
in the Office it is sufficient to show nonpatentability by a 
"preponderance"  of evidence.  Since the "clear and convincing" standard 
is harder to satisfy  than the "preponderance standard," deference will 
ordinarily be accorded to  the factual findings of the court where the 
evidence before the Office and  the court is the same.  If sufficient 
reasons are present, claims held valid  by the court may be rejected in 
reexamination. 

        On the other hand, the Court states that a final holding of 
invalidity  is binding on the Office and the reexamination may be 
discontinued.  Upon the  issuance of a holding of claim invalidity or 
unenforceability by a district  court, reexamination of those claims will 
continue in the Office until the  court's decision becomes final.  Upon 
the issuance of a final holding of invalidity  or unenforceability, the 
claims held invalid or unenforceable will be withdrawn  from consideration 
in the reexamination.  The reexamination will continue as  to any 
remaining claims.  If all of the claims are finally held invalid or 
unenforceable, the reexamination will be vacated as no longer containing a 
 substantial new question of patentability. 

LITIGATION REVIEW AND GROUP 
DIRECTOR APPROVAL 

        In order to ensure that the Office is aware of prior or concurrent 
 litigation, the examiner is responsible for conducting a reasonable 
investigation  for evidence as to whether the patent for which 
reexamination is requested  has been or is involved in litigation. The 
investigation will include a review  of the reexamination file, the patent 
file, and the results of the litigation  computer search by the STIC. 

        If the examiner discovers, at any time during the reexamination 
proceeding,  that there is litigation or that 




there has been a Federal court decision on the patent, the fact will be 
brought  to the attention of the group director prior to any further 
action by the examiner.  The group director must review any action taken 
by the examiner in such circumstances  to ensure current Office litigation 
policy is being followed. This review is  a procedural review and not a 
review of the merits of the decision. 
FEDERAL COURT DECISION CONTROLLING IN REEXAMINATION PROCEEDING 

        Once a Federal court has ruled upon the merits of a patent and 
reexamination  is still appropriate under the guidelines set forth above, 
the Federal court  decision will be considered controlling and will be 
followed as to claims finally  held to be invalid by the court. 


2287    Conclusion of Reexamination Proceeding [R-2] 


        Upon conclusion of the reexamination proceedings, the examiner 
must  complete a "Notice of Intent to Issue a Reexamination Certificate 
and/or Examiner's  Amendment" (NIRC) and prepare the reexamination file so 
that the Office of  Publications can prepare and issue a certificate in 
accordance with 37 CFR  1.570 and 35 U.S.C. 307 setting forth the results 
of the reexamination proceeding  and the content of the patent following 
the proceeding.  See MPEP w 2288. 
        The rules do not provide for an amendment to be filed in a 
reexamination  proceeding after prosecution has been closed. 37 CFR 1.312 
does not apply in  reexamination. Any amendment, information disclosure 
statement, or other paper  related to the merits of the reexamination 
proceeding filed after prosecution  has been closed must be accompanied by 
a petition under 
37 CFR 1.182 to have the amendment considered. 

        Normally the title will not need to be changed during 
reexamination.  If a change of the title is necessary, it should be done 
as early as possible  in the prosecution as a part of an Office action. 
If all of the claims are  allowed and a "Notice of Intent to Issue A 
Reexamination Certificate" has been  or is to be mailed, a change to the 
title of the invention by the examiner  may only be done by way of an 
Examiner's Amendment. Changing the title and  merely initialing the change 
is not permitted in reexamination. 

        If all of the claims are disclaimed in a patent under 
reexamination,  a certificate under 37 CFR 1.570 will be issued indicating 
that fact. 
        In preparing the reexamination file for publication of the 
certificate,  the examiner must review the reexamination and patent files 
to be sure that  all the appropriate parts are completed. The review 
should include completion  of the following items: 

a.  the "Reexamination Field of Search" and the "Search Notes" -  to be 
sure  the file wrapper is filled in with the classes and subclasses that 
were actually  searched and other areas consulted. 

b.  the "Claim No. For O.G." box -  to be sure that a representative claim 
 which has been reexamined is indicated for publication in the Official 
Gazette. 
c.  the "Drawing Fig. For Certificate and For O.G." box -  to be sure that 
 an appropriate drawing figure is indicated for printing on the 
certificate  cover sheet and in the Official Gazette. 

d.  the "Litigation Review" box -  to be sure that the Office is aware of 
prior  or concurrent litigation. 

e.  the face of the file -  to be sure that the necessary data is included 
 thereon. 

f.  the "Index of Claims" box  -  to be sure the status of each claim is 
indicated  and the final claim numbers are indicated. 

        The claims or claims should be selected in accordance with the 
following  instructions: 

1.  The broadest claim should be selected. 

2.  Examiners should ordinarily designate but one claim on each invention, 
 although when a plurality of inventions are claimed in one application, 
additional  claims up to a maximum of five may be designated for 
publication. In the case  of reexamination, the examiner must select only 
one claim. 

3. A dependent claim should not be selected unless the independent claim 
from  which it depends is also printed. In the case where a multiple 
dependent claim  is selected, the entire chain of claims for one 
embodiment should be listed.  In the case of reexamination, a dependent 
patent claim may be selected where  the independent original patent claim 
has been canceled; in such a case, the  dependent claim would be printed 
while the independent claim would not be printed. 



4.  In reissue applications, the broadest claim with changes or the 
broadest  additional reissue claim should be selected for printing. 

        When recording this information in the box provided, the following 
 items should be kept in mind: 

1.  Write the claim number clearly in black ink. 

2.  If multiple claims are selected, the claim numbers should be separated 
 by commas. 

3.  The claim designated must be referred to by using the renumbered 
patent  claim number rather than the original application claim number. 

        The examiner must in all cases fill out a blue issue slip form 
PTO-270  or design issue slip form PTO-328 and include the current 
international classification 
(except design patents) and U.S. classification for both the original 
classification  and all cross-references. An issue slip is required even 
if all of the claims  are canceled. 

        If any new cross-references are added, the examiner must order a 
copy  of the patent by using form PTO-14B and place the copy in the search 
file so  that the certificate may be attached thereto when it issues. 

        If the patent owner desires the names of the attorneys or agents 
to  be printed on the certificate, a separate paper limited to this issue 
which  lists the names and positively states that they should be printed 
on the certificate  must be filed.  A mere power of attorney or change of 
address is not a request  that the name appear on the certificate. 

        If a proper paper has been submitted by the patent owner 
indicating  the names of the attorneys or agents to be published on the 
certificate, that  paper should be physically placed on top of the other 
papers in the center  of the reexamination file at the conclusion of the 
proceedings. 

        The examiner must also complete a checklist, form PTO-1516, for 
the  reexamination file which will be forwarded to the Office of 
Publications identifying: 
a.  Any amendments to the abstract and description 

b.  Any amendments to the drawings 

c.  Any terminal disclaimer or dedication filed during reexamination. 
d.  Any certificate(s) of correction to the patent. 

e.  The patentability of claim(s)____ (and) ____ is confirmed. 

f.  Claim(s) _____ (and) ____ was (were) previously canceled. (Relates to 
a  prior proceeding) 

g.  Claim(s) _____ (and) ____ was (were) previously disclaimed. 

h.  Claim(s) _____ (and) ____ is (are) now disclaimed. 

i.  Claim(s) _____ (and) ____, having been finally determined to be 
unpatentable,  is (are) canceled. 

 j.   Claim(s) _____ (and) ____ is (are) determined to be patentable as 
amended. 
(Note: these claim(s) to be printed on certificate.) 

k.  Claim(s) _____ (and) ____, dependent on an amended claim, is (are) 
determined  to be patentable. (Note: to be used for claims which are not 
amended.  Amended  claims must be listed in j above). 

l.  New claim(s) _____ (and) ____ is (are) added and determined to be 
patentable. 
(Note: these claim(s) to be printed on certificate.) 

m.  Claim(s) _____ (and) ____ was (were) not reexamined. 

n.  Other (identify claims and status) __________  . 

o.  Any decision of the Patent and Trademark Office, Federal court or 
other  forum which may affect the validity of the patent but which have 
not been considered  during reexamination. 

        A clean copy of the patent being reexamined should also be 
provided  to be forwarded out of Group with the file. The examiner should 
inspect the  title report in the file (usually paper two or three). If the 
title report  indicates a title in the inventors, but the patent copy 
shows an assignment  to an assignee, a telephone call can be made to the 
Patent Owner, and the Patent  Owner can be asked to submit a Certificate 
under 37 CFR 3.73(b) indicating  that title is in the Assignee (i.e. it 
has not reverted back to the inventors).  See MPEP w 320. 

        After the examiner has completed the review and the reexamination 
and  patent files have been turned in, the reexamination clerk will 
complete the  Reexamination Clerk Checklist Form PTO-1517. The 
reexamination clerk will revise  and update the files and forward the 
reexamination file, the patent file, clean  copy of the patent, the 
Examiner Checklist-Reexamination PTO-1516, and the  Reexamination Clerk 
Checklist PTO-1517 to the Office of Publications for printing  via the 
appropriate Office. 

        The clerk should check to see if any changes in especially: 
a.  the title, 

b.  the inventor, 

c.  the assignee, 

d.  the continuing data, 



e.  the foreign priority, 

f.  the address of the owner's attorney, or 

g.  the requester's address have been properly entered on the face of the 
reexamination  and patent files and in the PALM data base. 

>REEXAMINATION PROCEEDINGS IN WHICH ALL THE CLAIMS ARE CANCELED 

        There will be instances that all claims in the reexamination 
proceeding  shall be canceled and an NIRC issued indicating that fact. 
This would occur  where the patent owner fails to timely respond to an 
Office action, and all  live claims in the reexamination proceeding are 
under rejection. It would also  occur where all live claims in the 
reexamination proceeding are to be canceled  as a result of a Board 
decision affirming the examiner, and the time for appeal  to the court and 
for requesting reconsideration or modification has expired. 
        Prior to canceling the claims and issuing the NIRC, the examiner 
should  telephone the patent owner to inquire if a timely response, timely 
appeal,  etc., was filed with the Office so as to make certain that a 
timely response  has not been misdirected within the Office. Where the 
patent owner indicates  that no such filing was made, or where the patent 
owner cannot be reached,  the examiner will proceed to issue a NIRC 
terminating prosecution. 
        As an attachment to the NIRC, the examiner will draft an 
examiner's  amendment canceling all live claims in the reexamination 
proceeding. In the  examiner's amendment, the examiner should point out 
why the claims have been  canceled. For example, the examiner might state 
one of the two following examples,  as is appropriate: 

        "Claims 1-5 and 6-8 were subject to rejection in the last Office 
action  mailed 9/9/99. Patent owner failed to timely respond to that 
Office action.  Accordingly claims 1-5 and 6-8 have been canceled. See 37 
CFR 1.550(d) and  MPEP 2266." 

        "The rejection of claims 1-5 and 6-8 has been affirmed in the 
Board  decision of 9/9/99 and no timely appeal to the court has been 
filed. Accordingly  claims 1-5 and 6-8 have been canceled." 

        If the patent owner was reached by telephone and indicated that 
there  was no timely filing (as discussed above), the attachment to the 
NIRC will  make the telephone interview of record. 

        In order to cancel the live claims, brackets should be placed 
around  all the live claims. All other claims in the proceeding should 
have been either  replaced or canceled. 

        The examiner will designate a cancelled original patent claim, to 
be  printed in the Official Gazette, on the file wrapper in the 
appropriate place  for the claim chosen.< 

REEXAMINATION REMINDERS 

        The following items deserve special attention. The examiner should 
 ensure they have been correctly completed or followed before passing the 
case  for issue. 

1.  All patent claims must be examined. See MPEP 
w 2243. 

2.  No renumbering of patent claims is permitted.  New claims may require 
renumbering.  See MPEP 
w 2250. 

3.  Amendments to the description and claims must conform to requirements 
of  37 CFR 1.121(f). This includes any changes made by Examiner's 
Amendment. If  a portion of the text is amended more than once, each 
amendment should indicate  all of the changes (insertions and deletions) 
in relation to the current text  in the patent under reexamination.  See 
MPEP w 2250. 

4.  The prior art must be listed on a PTO-892 or PTO-1449 form. These 
forms  must be properly completed.  See MPEP w 2257. 

5.  The examiner and clerk checklists PTO-1516 and 1517 must be entirely 
and  properly completed. A careful reading of the instructions contained 
in these  checklists is essential. The clerical checklist is designed as a 
check and  review of the examiner's responses on the examiner checklist. 
Accordingly,  the clerk should personally review the file before 
completing an item. The  clerk should check to make certain that the 
responses to all related items  on both checklists are in agreement. 

6.  Multiple pending reexamination proceedings must be merged.  See MPEP w 
 2283. 

7.  Reasons for allowance are required for each allowed claim.  See MPEP w 
 2262. 

8.  There is no issue fee in reexamination. See MPEP w 2233. 

9.  The patent claims may not be amended nor new claims added after 
expiration  of the patent. See MPEP 
w 2250. 

10.   Original drawings cannot be physically changed.  All drawing 
amendments  must be presented on new sheets. The new sheets must be 
approved by the Office  Draftsman before the case is forwarded for issue. 
See MPEP w 2250.01. 


11.   An amended or new claim may not enlarge the scope of a patent claim. 
 See MPEP w 2250. 


2288    Issuance of Reexamination Certificate 


35 U.S.C. 307.          Certificate of patentability, unpatentability, and 
 claim cancellation 

        (a)   In a reexamination proceeding under this chapter, when the 
time  for appeal has expired or any appeal proceeding has terminated, the 
Commissioner  will issue and publish a certificate canceling any claim of 
the patent finally  determined to be unpatentable, confirming any claim of 
the patent determined  to be patentable, and incorporating in the patent 
any proposed amended or new  claim determined to be patentable. 

***** 

37 CFR 1.570.       Issuance of reexamination certificate after 
reexamination  proceedings. 

        (a)   Upon the conclusion of reexamination proceedings, the 
Commissioner  will issue a certificate in accordance with 35 U.S.C. 307 
setting forth the  results of the reexamination proceeding and the content 
of the patent following  the reexamination proceeding. 

        (b)   A certificate will be issued in each patent in which a 
reexamination  proceeding has been ordered under w 1.525. Any statutory 
disclaimer filed by  the patent owner will be made part of the certificate. 

        (c)   The certificate will be mailed on the day of its date to the 
 patent owner at the address as provided for in w 1.33(c). A copy of the 
certificate  will also be mailed to the requester of the reexamination 
proceeding. 
        (d)   If a certificate has been issued which cancels all of the 
claims  of the patent, no further Office proceedings will be conducted 
with regard  to that patent or any reissue applications or reexamination 
requests relating  thereto. 

        (e)   If the reexamination proceeding is terminated by the grant 
of  a reissued patent as provided in w 1.565(d), the reissued patent will 
constitute  the reexamination certificate required by this section and 
35 U.S.C. 307. 

        (f)   A notice of the issuance of each certificate under this 
section  will be published in the Official Gazette on its date of 
issuance. 
        Since abandonment is not possible in a reexamination proceeding, a 
 certificate will be issued at the conclusion of the proceeding in each 
patent  in which a reexamination proceeding has been ordered under 37 CFR 
1.525 except  where the reexamination has been terminated by the grant of 
a reissue patent  on the same patent. 

        Where the reexamination is terminated for a failure to timely 
respond  to an Office Action, see MPEP w 2266. 

        The certificate will set forth the results of the proceeding and 
the  content of the patent following the reexamination proceeding. The 
certificate  will: 

a.  cancel any claims determined to be unpatentable; 

b.  confirm any patent claims determined to be patentable; 

c.  incorporate into the patent any amended or new claims determined to be 
 patentable; 

d.  make any changes in the description approved during reexamination; 
e.  include any statutory disclaimer filed by the patent owner; 

f.  refer to unamended claims held invalid on final holding by another 
forum  on grounds not based on patents or printed publications; 

g.  refer to any patent claims not reexamined; 

h.  be  mailed  on  the  day  of  its  date  to  the  patent owner  at 
address 
 provided   for   in   37   CFR   1.33(c)  and  a   copy  to   the 
requester; 
  and 

i.  refer to patent claims, dependent on amended claims, determined to be 
patentable. 
        If a certificate issues which cancels all of the claims of the 
patent,  no further Office proceedings will be conducted with regard to 
that patent  or any reissue application or reexamination request directed 
thereto. 
        If a reexamination proceeding is terminated by the grant of a 
reissued  patent as provided for in 37 CFR 1.565(b), the reissued patent 
will constitute  the reexamination certificate required by 35 U.S.C. 307 
and this section. 
        A notice of the issuance of each reexamination certificate will be 
 published in the Official Gazette on its date of issuance in a format 
similar  to that used for reissue patents.  See MPEP w 2291. 


2289    Reexamination Review 


        All reexamination cases are screened for obvious errors and proper 
 preparation in order to issue a certificate. A patentability review will 
be  made in a sample of reexamination cases by the Quality Review 
Examiners.  This  review is an appropriate vehicle to provide information 
on the uniformity of  practice and to help identify problem areas. 


2290    Format of Certificate 


        The reexamination certificate is formatted much the same as the 
title  page of current U.S. patents. The certificate is titled 
"Reexamination Certificate"  and includes the patent number of the 
original patent preceded by the letter  "B" and the number of the 
reexamination proceeding of that patent. For example,  "1" for first 
reexamination certificate and "2" for the second reexamination 
certificate. The letter designation distinguishes the 



certificate as being a reexamination certificate. Thus, a second 
reexamination  certificate for the same patent would be designated as "B2" 
followed by the  patent number. 

        The certificate denotes the date the certificate was issued at 
INID  code [45] (see MPEP w 901.04).  The title, name of inventor, 
international  and U.S. classification, the abstract, and the list of 
prior art documents  appear at their respective INID code designations 
much the same as is presently  done in utility patents. 

        The primary differences, other than as indicated above, are: 
1.  the filing date and number of the request is preceded by 
"Reexamination  Request;" 

2.  the patent for which the certification is now issued is identified 
under  the heading "Reexamination Certificate for"; and 

3.  the prior art documents cited at INID code [56] will be only those 
which  are part of the reexamination file and cited on forms PTO-1449 (and 
have not  been crossed out because they were not considered) and PTO-892. 

        Finally, the certificate will specify the claims confirmed as 
patentable  and those canceled. Any new claims will be printed and any 
amended claims will  be printed indicating the amendments thereto. Any 
prior court decisions will  be identified as well as the citation of the 
court decisions. 


2291    Notice of Certificate Issuance in Official Gazette 


        The Official Gazette notice will include bibliographic 
information,  and an indication of the status of each claim following 
reexamination. Additionally,  a representative claim will be published 
along with an indication of any changes  to the specification or drawing. 


2292    Distribution of Certificate 


        A copy of the reexamination certificate should be stapled to each 
copy  of the patent in the search files. A copy of the certificate will 
also be made  a part of any patent copies prepared by the Office 
subsequent to the issuance  of the certificate. 

        A copy of the certificate will also be forwarded to all depository 
 libraries and to those foreign offices which have an exchange agreement 
with  the U.S. Patent and Trademark Office. 


2293    Intervening Rights [R-1] 


35 U.S.C. 307.      Certificate of patentability, unpatentability, and 
claim  cancellation. 

***** 

        ** >(b)       Any proposed amended or new claim determined to be 
patentable  and incorporated into a patent following a reexamination 
proceeding will have  the same effect as that specified in section 252 of 
this title for reissued  patents on the right of any person who made, 
purchased, or used within the  United States, or imported into the United 
States, anything patented by such  proposed amended or new claim, or who 
made substantial preparation for the  same, prior to issuance of a 
certificate under the provisions of subsection 
(a) of this section.< 

        The situation of intervening rights resulting from reexamination 
proceedings  parallel those resulting from reissue proceedings and the 
rights detailed in  35 U.S.C. 252 apply equally in reexamination and 
reissue situations. See Kaufman  v. Lantech, 1 USPQ2d 1202, 1206 (Fed. 
Cir. 1986); Fortal Corp. v. Phone-Mate,  3 USPQ2d 1771 (Fed. Cir. 1987); 
Tennant v. Hako Minuteman, 
4 USPQ2d 1167 (N.D. Ill. 1987); and Key Mfg. v. Microdot, 4 USPQ2d (E.D. 
Mich.  1987). 


2294    Terminated Reexamination Files 


        Terminated reexamination files in which reexamination has been 
denied  should be forwarded to the Files Repository (Location Code 920) 
for storage  with the patent file. 

        The files sent to the Files Repository must have either (1) a 
certificate  date and number (i.e., a Reexamination Certificate has 
issued), or (2) the  word "Terminated" written in green ink on the face of 
the file at the top between  the word "Reexam" and the patent number.  The 
Reexam Clerk in each group should  make sure that an appropriate refund 
has been made before the word "Terminated"  is placed on the file, and the 
files sent to the Files Repository. 


A22940012.bmp 



A22940012.end 



A22940013.bmp 



A22940013.end 



A22940014.bmp 



A22940014.end 




Contents 

2300.01     Introduction 

2300.02     Outline of Interference Procedure 

2301.01     Preliminaries to an Interference 

2301.01(a)  In Different Groups 

2301.01(b)  The Interference Search 

2301.02     Definitions 

2301.03     Filing Papers in Interferences 

2302        Ownership of Applications and Patents Involved in an 
            Interference 

2303        Interference Between Applications 

2304        Applicant Requests Interference Between Applications 

2305        Examiner Suggests Claim to Applicant 

2305.01     Action To Be Made at Time of Suggesting Claims 

2305.02     Time Limit Set for Presenting Suggested Claims 

2305.03     Suggested Claims Presented After Period for Response 
            Running Against Case 

2305.04     Suggestion of Claims, Application in Issue or in 
           Interference 
2306        Interference Between an Application and a Patent 

2307        Applicant Requests Interference With a Patent 

2307.01     Presentation of Claims Corresponding to Patent Claims 
            Not a Response to Last Office Action 

2307.02     Rejection of Claims Corresponding to Patent Claims 

2307.03     Presentation of Claims for Interference With a Patent, 
            After Prosecution of Application is Closed 

2307.04     Presentation of Claims For Interference With a Patent 
            Involved in a Reexamination Proceeding 

2307.05     Corresponding Patent Claims Not Identified 

2307.06     Presentation of Claims for Interference With a Patent, 
            Patentee Must be Notified 

2308        Interference Between an Application and a Patent; Prima 
            Facie Showing by Applicant 

2308.01     Patent Has Filing Date Earlier Than Application 

2308.02     Showing Under 37 CFR 1.608(b) 

2308.03     Patent Has Filing Date Later Than Application 

2309        Preparation of Interference Papers by Examiner 

2309.01     Formulation of Counts 

2309.02     Preparation of Papers - Initial Memorandum 

2309.03     Affidavits and Declarations Retained in File 

2309.04     Record in Each Interference Complete 

2309.05     Consultation With Examiner-in-Chief 

2309.06     Interfering Subject Matter in "Secrecy Order" Cases 

2310        Handling by Examiner-in-Chief 

2311        Declaration of Interference 

2312        Access to Applications in Interference 

2313        Lead Attorney or Agent 

2314        Jurisdiction Over Interference 

2315        Suspension of Ex Parte Prosecution 

2315.01     Suspension-Overlapping Applications 

2316        Sanctions For Failure to Comply With Rules or Order 

2317        Summary Judgment Against Applicant 

2318        Return of Unauthorized Papers 

2321        Preliminary Statement, Time for Filing 

2322        Preliminary Statement, Invention Made by Whom and 
            Where 

2323        Preliminary Statement; Invention Made in United States 
2324        Preliminary Statement, Invention Made Abroad 

2325        Preliminary Statement, Derivation by an Opponent 

2326        Preliminary Statement, Earlier Application 

2327        Preliminary Statement, Sealing and Opening 

2328        Preliminary Statement, Correction of Error 

2329        Preliminary Statement, Effect of 

2330        Reliance on Earlier Application 

2331        Preliminary Statement Access 

2332        Abandonment, Suppression or Concealment To Be 
            Argued 

2333        Preliminary Motions 

2333.01     Preliminary Motions-Related to Application Not 
            Involved in Interference 

2333.02     Preliminary Motions-Benefit of Foreign Filing Date 

2334        Motions to Correct Inventorship 

2335        Miscellaneous Motions 

2336        Time for Filing Motions 

2337        Motion Content 

2338        Opposition and Reply 

2339        Evidence in Support of Motion, Opposition, or Reply 

2340        Motions, Hearing and Decision 

2341        Unpatentability  Discovered 

2342        Addition to Interference 

2343        Prosecution by Assignee 

2344        Petitions 

2345        Extension of Time 

2346        Service of Papers 

2347        Translations 

2351        Times for Discovery and Testimony 

2352        Judgment for Failure To Take Testimony or File Record 
2353        Records and Exhibits 

2354        Final Hearing 

2355        Final Decision, Matters Considered 

2356        Briefs for Final Hearing 

2357        Burden of Proof 

2358        Final Decision 

2359        Board Recommendation 

2360        Notice of Reexamination, Reissue, Protest, or Litigation 
2361        Termination of Interference After Judgment 

2362        Request for Entry of Adverse Judgment 

2363        Action After Interference 

2363.01     No Interference  In Fact 

2363.02     The Winning Party 

2363.03     The Losing Party 

2364        Entry of Amendments 

2364.01     Amendments Filed During Interference 

2365        Second Interference 

2366        Interference Settlement Agreement 

2371        Evidence 

2372        Manner of Taking Testimony 

2373        Notice of Examination of Witness 

2374        Persons Depositions Taken Before 

2375        Examination of Witness 

2376        Filing Transcript of Deposition 

2377        Form of Transcript of Deposition 

2378        Time for Filing Transcript of Deposition 

2379        Inspection of Transcript 

2382        Official Records and Printed Publications 

2383        Testimony From Another Interference or Proceeding 

2384        Testimony in a Foreign Country 

2385        Errors in Deposition 

2387        Additional Discovery 

2388        Use of Discovery 

2390        Arbitration of Interferences 


2300.01       Introduction 


Title II of the Patent Law Amendments Act of 1984 (Public Law 98-622) 
combined  the Patent and Trademark Board of Appeals and Board of Patent 
Interferences  into a new Board, the Board of Patent Appeals and 
Interferences (Board), and  amended 35 U.S.C. 135(c) to provide that in an 
interference the jurisdiction  of the new Board would extend not only to 
priority of invention, but also to  questions of patentability.  These 
provisions took effect on February 8, 1985.  On the next working day, 
February 11, 1985, the former interference rules,  37 CFR 1.201 to 1.288, 
were replaced with a new set of rules, 37 CFR 1.601  to 1.688.  With a few 
exceptions, the new rules apply to all interferences  declared on or after 
the date of their adoption; interferences declared prior  to that date 
will continue to be governed by the old rules covered in Chapter  1100 of 
this manual. 

The notice promulgating the new rules, which was published in the Federal 
Register  on December 12, 1984 (49 F.R. 48416) and in the Official Gazette 
on January  29, 1985 (1050 O.G. 385), included not only the text of the 
rules, but also  a discussion of the rules and analysis of the comments 
received, which serve  as the "legislative history" of the rules.  A 
practitioner who is or may become  involved in an interference under the 
new rules would be well advised to study  this notice closely. 

Attention is also directed to the correction notice published in the 
Federal  Register on May 31, 1985 (50 F.R. 23122) and in the Official 
Gazette on October  22, 1985 (1059 O.G.  27). 

It is believed that the statutory changes, and the new rules, will result 
in  a more rapid determination of the rights of the parties, and avoid the 
lengthy  proceedings which have characterized some interferences in the 
past.  Since  the Board has been given jurisdiction to decide 
patentability, it will no longer  be necessary to decide whether or not an 
issue is "ancillary to priority". 
  The Board can now decide all patentability issues in the interference, 
if  properly raised by the parties, without the necessity for dissolving 
the interference  and pursuing patentability questions ex parte (in which 
case a reversal of  the ex parte rejection would require reinstatement of 
the interference). Each  interference under the new rules is assigned to 
an examiner-in-chief, who is  expected to exercise such control over the 
interference that it will not normally  be pending before the Board more 
than 2 years (37  CFR 1.610).  37 CFR 1.616  provides that appropriate 
sanctions may be imposed by an examiner-in-chief  against  a party who 
fails to comply with the interference rules or an order  of the 
examiner-in-chief or Board.  The ultimate sanction, entry of adverse 
judgment against the party, may be imposed by the Board in an extreme 
case. 
The interference practice is based on 35 U.S.C. 135, as amended by P.L. 
98-622. 
35 U.S.C. 135.      Interferences. 

(a)   Whenever an application is made for a patent which, in the opinion 
of  the Commissioner, would interfere with any pending application, or 
with any  unexpired patent, an interference may be declared and the 
Commissioner shall  give notice of such declaration to the applicants, or 
applicant and patentee,  as the case may be.   The Board of Patent Appeals 
and Interferences shall determine  questions of priority of the inventions 
and may determine questions of patentability. 
 Any final decision, if adverse to the claim of an applicant, shall 
constitute  the final refusal by the Patent and Trademark Office of the 
claims involved,  and the Commissioner may issue a patent to the applicant 
who is adjudged the  prior inventor.   A final judgment adverse to a 
patentee from which no appeal  or other review has been or can be taken or 
had shall constitute cancellation  of the claims involved in the patent, 
and notice of such cancellation shall  be endorsed on copies of the patent 
distributed after such cancellation by  the Patent and Trademark Office. 

(b)   A claim which is the same as, or for the same or substantially the 
same  subject matter as, a claim of an issued patent may not be made in 
any application  unless such a claim is made prior to one year from the 
date on which the patent  was granted. 

(c)   Any agreement or understanding between parties to an interference, 
including  any collateral agreements referred to therein, made in 
connection with or in  contemplation of the termination of the 
interference, shall be in writing and  a true copy thereof filed in the 
Patent and Trademark Office before the termination  of the interference as 
between the said parties to the agreement or understanding. 
 If any party filing the same so requests, the copy shall be kept separate 
 from the file of the interference, and made available only to Government 
agencies  on written request, or to any person on a showing of good cause. 
Failure to  file the copy of such agreement or understanding shall render 
permanently unenforceable  such agreement or understanding and any patent 
of such parties involved in  the interference or any patent subsequently 
issued on any application of such  parties so involved. The Commissioner 
may, however, on a showing of good cause  for failure to file within the 
time prescribed, permit the filing of the agreement  or understanding 
during the six month period subsequent to the termination  of the 
interference as between the parties to the agreement or understanding. 
The Commissioner shall give notice to the parties or their attorneys of 
record,  a reasonable time prior to said termination, of the filing 
requirement of this  section. If the Commissioner gives such notice at a 
later time, irrespective  of the right to file such agreement or 
understanding within the six-month period  on a showing of good cause, the 
parties may file such agreement or understanding  within sixty days of the 
receipt of such notice. 

Any discretionary action of the Commissioner under this subsection shall 
be  reviewable under section 10 of the Administrative Procedure Act. 

(d)   Parties to a patent interference, within such time as may be 
specified  by the Commissioner by regulation, may determine such contest 
or any aspect  thereof by arbitration.   Such arbitration shall be 
governed by the provisions  of title 9 to the extent such title is not 
inconsistent with this section. 
  The parties shall give notice of any arbitration award to the 
Commissioner,  and such award shall, as between the parties to the 
arbitration, be dispositive  of the issues to which it relates. The 
arbitration award shall be unenforceable  until such notice is given. 
Nothing in this subsection shall preclude the Commissioner  from 
determining patentability of the invention involved in the interference. 
The Patent and Trademark Office (PTO) conducts interference proceedings to 
 determine who as between two or more applicants for patent or one or more 
applicants  and one or more patentees is the first inventor of a 
patentable invention. 
 Prior to February 11, 1985, the determination was made by a Board of 
Patent  Interferences. The Patent Law Amendments Act of 1984, Public Law 
98-622. w  201 - w 202 combined the Board of Appeals and the Board of 
Patent Interferences  into a single Board of Patent Appeals and 
Interferences (Board) and authorized  the Board to consider priority and 
patentability in interference cases. 
In view of the discretion given the Board under 35 U.S.C. 135(a), as 
amended  by Public Law 98-622 ("The Board . . . . may determine questions 
of patentability  . . . ."), the rules set forth in this chapter will 
apply to all interferences  declared on or after February 11, 1985, except 
in special circumstances, such  as: (1) interferences which are declared 
as a result of a motion in another  interference which was pending before 
the Board before February 11, 1985 (e.g.,  an interference declared as a 
result of a motion under 37 CFR 1.231 to declare  an additional 
interference); (2) an  interference related to another interference 
declared prior to February 11, 1985 (e.g., an interference involving a 
method  of using a compound where an interference involving the same 
parties and the  compound was declared prior to February 11, 1985); and 
(3) an interference  reinstituted after having been dissolved under the 
old rules (37 CFR 1.201  - 1.288) (e.g., an interference reinstituted 
after having been dissolved as  a result of a motion under 37 CFR 1.231 to 
dissolve on the grounds of unpatentability  where the applicant has 
obtained allowance of the claims held unpatentable  in the decision on 
motions). For these interferences the provisions of MPEP  Chapter 1100 
remain in effect. 

Through the rules and provisions of this chapter, the PTO seeks to improve 
 interference procedure so that the rights of parties in interferences are 
determined  at an early date and the overall process of examining patent 
applications which  become involved in interferences is simplified. 

The new rules for interferences are set forth herein in 37 CFR 1.601 
through  1.688. The new rules replace entirely the previous interference 
rules (37 CFR  1.201 through 1.288). A  "six hundred" number series is 
used for the new rules.  The use of a six hundred number series for the 
new rules will permit interested  individuals to research published 
decisions (e.g., F.2d, USPQ) or computerized  legal research services 
(e.g., LEXIS) citing the new rules. 

An index of the headings of 37 CFR 1.601 - 1.688 and a table correlating 
37  CFR 1.201 through 1.288 (former rules) to 37 CFR 1.601 through 1.688 
(revised  rules) appears below. 

Rule Correlation Table 

Former Rule   Revised Rule 

1.201(a)        1.601(i) 

1.201(b)        1.601(i) 

1.201(c)        1.602 

1.202     none 

1.203(a)        1.603 

1.203(b)        1.605(a) 

1.203(c)        1.605(b) 

new         1.604(a) 

1.203(d)        1.604(b) 

1.204(a)        none 

1.204(b)        1.608(a) 

1.204(c)        1.608(b) 

1.205(a)        1.606 

1.205(b)        1.607(a), (c) 

1.205(c)        1.607(d) 

new   1       .608(a) 

1.206(a)  1.607(b) 

1.207(a)        1.609 

new         1.610 

1.207(b)        1.611 

1.208     1.613(b) 

1.211     1.614 

1.212     1.615 

new         1.616 

1.228     1.617 

new         1.618 

1.215(a)        1.621(a) 

1.215(b)        1.621(b) 

1.215(c)        1.629(c) 

1.216(a)        1.622(a), (b) 

1.216(a)(1)-(6)       1.623(a) 

1.216(b)        1.623(c), 1.624(c), 1.625(c) 

1.216(c)        1.666 

1.217(a)        1.624(a), 1.625(a) 

1.217(b)        1.623(a) 

1.218     1.621(a) 

1.219     1.627 

1.222     1.628 

1.223     1.629 

1.224     1.630 

1.225     1.640(d), (e), and 1.651(c)(4) 

1.226     1.612 

1.227     1.631 

Former Rule   Revised Rule 

new         1.632 

1.231     1.633, 1.634 

1.237     1.641 

1.238     1.642 

1.242     1.643 

1.243     1.635, 1.636, 1.637(b), 
                1.638 through 1.640 

1.244     1.644 

1.245     1.645(a) 

1.246     1.645(b) 

1.247     1.646 

1.248     1.646 

new         1.647 

1.251     1.651 

1.252     1.652 

1.253     1.653 

1.254     1.656 

1.255     1.656(c) 

1.256     1.654 

1.257(a)        1.657 

1.257(b)        1.658(c) 

1.258     1.655 

1.259     1.659 

new         1.660 

1.262     1.662(a) 

1.263     1.622(c) 

1.264     1.662(b) 

new         1.662(e) 

1.265     1.663 

1.266     1.664 

1.267     1.665 

1.268     1.666 

1.271     1.671(h) 

new         1.671(g) 

1.272(a)  1.672(a), (b) 

1.272(b)        1.672(d) 

1.272(c)        1.672(e), (f) 

1.273(a)        1.673(a), (c), (d) 

new         1.673(e) 

1.273(b)        1.673(f) 

1.274     1.674 

1.275     1.675 

1.276     1.676 

1.277     1.677 

1.278     1.678 

1.279     1.679 

1.281     1.645(a) 

1.282     1.682 

1.283     1.683 

Former Rule   Revised Rule 

1.285     1.685 

1.286     eliminated 

1.287(a)(1)(i),(ii)   1.673(b) 

1.287(a)(1)(iii)        1.673(a) 

1.287(a)(2),(3)       eliminated 

1.287(b)        1.687(b) 

1.287(c)        1.687(c) 

1.287(d)(1)   1.673(c) 

1.287(d)(2)   1.616 

1.287(e)        1.687(d) 

1.288     1.688 


2300.02       Outline of Interference Procedure 


The following statement appears in a "section-by-section" analysis 
submitted  for the Record by Representative Kastenmeier during discussion 
of H.R. 6286 
(Pub. L. 98-622) on the floor of the House (130 Cong. Rec. H10528, columns 
 2 and 3): 

"It is expected that interferences will become simpler, more expeditious, 
and  less costly.  Under the bill, all issues of patentability and 
priority which  arise in an interference can be decided in a single 
proceeding rather than  in a series of complicated inter partes and ex 
parte proceedings." 
Under the revised rules, interferences are decided by the Board.  The 
Board  has jurisdiction to determine (1) priority of invention, (2) 
patentability  of any claim corresponding to a count both as to applicants 
and patentees, 
(3) any issue of interference-in-fact as to any count, and (4) any other 
issue  necessary to resolve the interference.  The rules permit an 
interference to  be declared on the basis of a single count defining one 
patentable invention  in interferences involving patents as well as 
applications. The Board also  has jurisdiction to determine whether counts 
are patentably distinct. 
When an interference is declared, an examiner-in-chief is assigned to 
handle  the interlocutory stages of the  interference.  An examiner having 
full signatory  authority determines when one or more applications or one 
or more applications  and a patent claim the same patentable invention. 
When the examiner makes such  determination, the examiner will forward any 
involved applications or patents  to the Board. The examiner will 
designate, at the time the involved applications  or patents are sent to 
the Board, the claims of any application and patent  which correspond to 
each count. The examiner-in-chief can subsequently designate  additional 
claims to correspond to the count. The examiner-in-chief assigned  to 
handle the interference will issue a notice to the parties declaring the 
interference. 

The object of the interference will be to resolve all controversies as to 
all  interfering subject matter defined by one or more counts.  A final 
decision  in the interference will determine who, if anyone, is entitled 
to claims which  correspond to a count.  Any decision adverse to an 
applicant by the Board will  constitute a final refusal by the PTO to that 
applicant of the claims involved. 
 Any decision adverse to a patentee constitutes cancellation from the 
patent  of the claims involved. 

Any decision by the Board on any issue is binding on the examiner and will 
 govern further proceedings in the PTO. 

The designation of a single examiner-in-chief to handle the interlocutory 
phases  of an interference will permit better management of, and control 
over, interference  proceedings. The rules provide that times be set and 
the examiner-in-chief  exercise control over proceedings in the 
interference such that pendency of  the interference before the Board from 
declaration to final decision will not  normally exceed 24 months. The 
examiner-in-chief should be familiar with the  history of the interference 
and will be accessible to counsel for the parties.  For example, an 
examiner-in-chief, when appropriate, may conduct telephone  conference 
calls to obtain agreement of the parties on the setting of schedules.  The 
rules also permit the examiner-in-chief to hold hearings in the PTO or  by 
conference telephone call in order to expedite or settle interlocutory 
issues  in interferences. Any hearing can be transcribed by a court 
reporter under  such conditions as an examiner-in-chief or the Board deems 
appropriate. The  examiner-in-chief, where appropriate, will be available 
by phone to rule on  the admissibility of evidence in the event parties 
encounter unusual problems  during the taking of depositions. The 
examiner-in-chief will also be available  to rule on requests for 
production of documents which take place during cross-examination.  Oral 
orders given by phone will be followed by written orders. 

At the time an interference is declared, the examiner-in-chief will set a 
time  for filing preliminary motions. The preliminary motions can include: 
(1)   A motion for judgment on the ground that a claim corresponding to 
the  count is not patentable to an opponent under 35 U.S.C. 102, 103, 112, 
or any  other provision of law. 

(2)   A motion for judgment on the ground that there is no 
interference-in-fact  between the claims of the opponents in the interference. 

(3)   A motion to add or to substitute new counts, to amend a claim 
corresponding  to a count, to designate an application or patent claim to 
correspond to a  count, to designate an application or patent claim as not 
corresponding to  a count, or to require an applicant to present a claim 
to be designated to  correspond to a count. 

(4)   A motion to substitute another application for the application 
involved  in the interference or to add an application for reissue to the 
interference. 
(5)   A motion to declare another interference. 

(6)   A motion to be accorded the benefit of an earlier application or to 
attack  the benefit of an earlier application which has been accorded to 
an opponent. 
Other motions are permitted as necessary, such as a motion to amend the 
count  and/or a claim corresponding to the count in response to a 
preliminary motion  for judgment. 

Oppositions to motions are permitted if filed within a time set by the 
examiner-in-chief. 
 Replies are also authorized. Papers which are not authorized by the rules 
 or requested by the examiner-in-chief can be returned unfiled. 

A preliminary statement will be filed prior to or concurrently with the 
preliminary  motions outlined above. 

Motions will be decided by an examiner-in-chief, who may consult with an 
examiner  on questions of patentability which have not previously been 
decided by the  examiner. The examiner-in-chief may grant a motion, deny a 
motion, defer consideration  on the merits of a motion to final hearing, 
or take such other action with  respect to a motion as may be appropriate; 
e.g., dismiss an entirely inappropriate  motion. 

At the time preliminary motions are decided, the preliminary statements 
will  be opened.  If a decision on a motion or an inspection of the 
preliminary statement  results in entry of an order to show cause why a 
judgment should not be entered,  the party against whom judgment might be 
entered can request a hearing before  the examiner-in-chief and two 
additional examiners-in-chief. The decision will  govern further 
proceedings.  If adverse, the decision will constitute a final  agency 
action.  If favorable, the interference will proceed before the 
examiner-in-chief. 
After preliminary motions are decided and assuming judgment does not 
result,  a period may be set for the parties to file motions for 
additional discovery.  The scope of the additional discovery would be the 
same as under current practice. 
When a time period is set for filing discovery motions, or after discovery 
 has closed, the examiner-in-chief will set a period for taking testimony. 
  Any party wishing to take testimony of a witness can elect to have the 
testimony  of the witness taken by deposition or presented by affidavit. 
A transcript  of an ex parte deposition can be used as an affidavit. If an 
affidavit is presented,  the opposing party  may then cross-examine on 
oral deposition.  Any redirect  will take place at the deposition. The 
party calling the witness is responsible  for securing a court reporter 
and filing the transcript and record associated  with cross-examination of 
its witness. 

In the event a party needs testimony from a third-party who will not 
appear  unless a subpoena is issued, including a hostile witness, direct 
and cross-examination  testimony may be taken on oral deposition.  The 
rules provide that prior authorization  of an examiner-in-chief is 
required before a party can take testimony by issuance  of a subpoena 
under 35 U.S.C. 24.  The revised rule thus adopts the policy  of Sheehan 
v. Doyle, 513 F.2d 895, 898, 185 USPQ 489, 492 (1st Cir.) cert.  denied, 
423 U.S. 874 (1975), and Sheehan v. Doyle, 529 F.2d 38, 40, 188 USPQ  545, 
546 (1st Cir.), cert. denied, 429 U.S. 870 (1976), rehearing denied, 429 
U.S. 987 (1976), and rejects the policy announced in Brown v. Braddick, 
595  F.2d 961, 967, 203 USPQ 95, 101-102 (5th Cir. 1979).  Testimony 
obtained in  other proceedings; e.g., another interference or an 
infringement action, may  be used if otherwise admissible. 

        Under the rules, the Federal Rules of Evidence are made applicable 
 to interferences, except for those portions which relate to criminal 
actions,  juries, and other matters not relevant to interferences. Those 
portions include: 
(1)   Rule 103(c) 

(2)   Rule 104(c), (d), and (e) 

(3)   The language in Rule 105 which reads "and instruct the jury 
accordingly." 

(4)   Rule 201(g) 

(5)   The language in Rule 403 which reads "or misleading the jury." 
(6)   Rule 404(a)(1) and (2). 

(7)   The word "charge" in Rule 405(b). 

(8)   The language "or criminal" and proviso (ii) in Rule 410. 

(9)   Rule 412 

(10)    Rule 606 

(11)    The language "whether by an accused" and  "other" in the last 
sentence  of Rule 607. 

(12)    The provisions of the first sentence of Rule 611(c) relating to 
leading  questions on direct examination do not apply to statements made 
in an affidavit  authorized to be filed under the rules. 

(13)    The language "Except as otherwise provided in criminal proceedings 
 by section 3500 of Title 18, United States Code" and "except that in 
criminal  cases when the prosecution elects not to comply, the order shall 
be one striking  the testimony or, if the court in its discretion 
determines that the interests  of justice so require, declaring a 
mistrial" in Rule 612. 

(14)    Rule 614. 

(15)    Rule 706 

(16)    The language "excluding, however, in criminal cases matters 
observed  by police officers and other law enforcement personnel" and "and 
against the  Government in criminal cases" in Rule 803(8). 

(17)    The language "but not including, when offered by the Government in 
 a criminal prosecution for purposes other than impeachment, judgments 
against  persons other than the second" in Rule 803(22). 

(18)    The language "prosecution for homicide or in a" in Rule 804(b)(2). 
(19)    The language "A statement tending to expose the declarant to 
criminal  liability and offered to exculpate the accused is not admissible 
unless corroborating  circumstances clearly indicate the trustworthiness 
of the statement" in Rule  804(b)(3). 

(20)    Rule 1101(a), (b), (d)(3), and (e). 

The examiner-in-chief will set a period for filing the record and briefs. 
 Oral hearings normally will be held before a panel consisting of the 
examiner-in-chief  assigned to the interference and two other 
examiners-in-chief. The panel will  render a final decision in the 
interference. Requests for reconsideration are  permitted. 

In rendering its decision, the Board will consider only that evidence 
which  can be made available to the public under 37 CFR 1.11(a). 
Accordingly, the  Board will not consider evidence which is submitted 
under a protective order  issued by a court if release of that evidence 
under 37 CFR 1.11(a) would be  inconsistent with the terms of the court's 
order. 

A final decision of the Board is reviewable in the U.S. Court of Appeals 
for  the Federal Circuit or an appropriate U.S. district court.  Any 
reviewing court  can review all aspects of the decision including 
patentability, priority, and  all relevant interlocutory orders, such as 
denials of discovery. 

Except as noted above, the revised rules are applicable to all 
interferences  declared on or after February 11, 1985.  Interferences 
declared prior to February  11, 1985 continue to be governed by the prior 
rules (37 CFR 1.201 - 1.288,  July 1, 1984) and will be decided by 
personnel of the Board of Patent Appeals  and Interferences.  Actions 
previously taken by a patent interference examiner  or examiners of 
interference will be taken by an examiner-in-chief. 
An anticipated time schedule for a two-party interference follows: 
                        Event in Interference     Time from last 
Total  time in 
                        event in        interference 
                        interference 



Interference declared (1.611) 

Filing of preliminary statements (1.621) 

        and preliminary motions (1.633)       3 months      3 mths 
Filing oppositions of preliminary 

        motions (1.638(a)).   2/3 month       32/3 mths 

Filing replies to  oppositions (1.638(b)) 2/3 month   41/3 mths 

Decision on preliminary motions (1.640(b)(1)) 

        open preliminary statements (1.631), 

        set times for filing motions for discovery 

        (1.687(c) and testimony (1.651(a)).   1 month     51/3 mths 
Filing of motions of discovery (1.635, 

        1.651(a), 1.687(c)).      1 month 6 1/3 mths 

Filing of opposition to motion for discovery 

        (1.638(a)).   2/3 month       7 mths 

Filing reply to opposition to motion for 

discovery (1.638(b))    2/3 month 7 2/3 mths 

Decision on motion for discovery        2/3 month 8 /3 mths 

Time for compliance with any discovery      2/3 month     9 mths 

Junior party testimony (case-in-chief; 

        1.672(b)): Testimony    2 months        11 mths 

Senior party cross-examination of 

        affiants if needed  1 month   12 mths 

Senior party testimony (case-in-chief and 

        case-in rebuttal, 1.672(b): Testimony     1 2/3 mths    13 2/3 
mths 
Junior party cross-examination of affiants 

        if needed 1 month 14 2/3 mths 

Junior party testimony (case-in rebuttal): 

        Testimony 1 1/3 mths    16 mths 

Senior party cross-examination of affiants 

        if needed 2/3 months    16 2/3 mths 

Filing of record (1.653(c))   1 1/3 mths        18 mths 

Brief for junior party (1.656)      1 month   19 mths 

Brief for senior party (1.656)      1 month   20 mths 

Reply brief for junior party (1.656)    2/3 month 20 2/3 mths 

Final hearing (1.654)     1 month 21 2/3 mths 

Decision (1.658)        2 months  23 2/3 mths 




2301.01       Preliminaries to an Interference 


An interference is often an expensive and time-consuming proceeding.  Yet, 
 it is necessary to determine priority when two applicants, or an 
applicant  and a patentee, are claiming the same patentable subject matter 
and their filing  dates are close together that there is a reasonable 
possibility that the first  to file is not the first inventor.  The fact 
that an application is a reissue  application does not preclude it from 
being involved in an interference. 
The greatest care must therefore be exercised both in the search for 
interfering  applications and in determining whether an interference 
should be declared. 
 Also the claims in recently issued patents, especially those used as 
references  against the application claims, should be considered for 
possible interference. 
The question of the propriety of initiating an interference in any given 
case  is affected by so many factors that a discussion of them here is 
impracticable. 
 Some circumstances which render an interference unnecessary are hereafter 
 noted, but each instance must be carefully considered if serious errors 
are  to be avoided. 

In determining whether an interference is necessary, a claim should be 
given  the broadest interpretation which it reasonably will support, 
bearing in mind  the following general principles: 

(a)   The interpretation should not be strained. 

(b)   Express limitations in the claim should not be ignored nor should 
limitations  be read therein. 

(c)   Before a claim (unless it is a patented claim) is considered as the 
basis  for the count of an interference the claim should be allowable and 
in good  form. No pending claim which is indefinite, ambiguous or 
otherwise defective  should be the basis for a count of an interference. 

(d)   A claim copied from a patent, if ambiguous, should be interpreted in 
 the light of the patent in which it originated. 

(e)   Since an interference between cases having a common assignee is not 
normally  instituted, all cases must be submitted to the Assignment 
Division for a title  report. 

(f)   If doubts exist as to whether there is an interference, an 
interference  should not be declared. 


2301.01(a)  In Different Groups 


An interference between applications assigned to different groups is 
declared  by the group where the controlling interfering claim would be 
classified.   Appropriate transfer of one of the applications is made. 
After termination  of the interference, further transfer may be necessary 
depending upon the outcome. 

2301.01(b)  The Interference Search 


The search for interfering applications must not be limited to the class 
or  subclass in which the application is classified, but must be extended 
to all  classes, in and out of the examining group, which it has been 
necessary to  search in the examination of the application.  See MPEP w 
1302.08. 
Moreover, the possibility of the existence of interfering applications 
should  be kept in mind throughout the prosecution.  Where the examiner at 
any time  finds that two or more applications are claiming the same 
invention and the  examiner does not deem it expedient to institute 
interference proceedings at  that time, the examiner should make a record 
of the possible interference as  on the face of the file wrapper in the 
space reserved for class and subclass  designations.  Such notations, 
however, if made on the file wrapper or drawings,  must not be such as to 
give any hint to the applicants, who may inspect their  own applications 
at any time, of the date or identity of a supposedly interfering 
application.  Serial numbers or filing dates of conflicting applications 
must  never be placed upon drawings or file wrappers.  A book of 
"Prospective Interferences" should be maintained containing complete data 
concerning possible  interferences and the page and line of this book 
should be referred to on the  respective file wrappers or drawings. For 
future reference, this book may include  notes as to why prospective 
interferences were not declared. 

In determining whether an interference exists, the primary examiner must 
decide  the question. An examiner-in-chief may, however, be consulted for 
advice. 
The group director should be consulted if it is believed that the 
circumstances  justify an interference between applications neither of 
which is ready for  allowance. 


2301.02       Definitions 


37 CFR 1.601.     Scope of rules, definitions. 

This subpart governs the procedure in patent interferences in the Patent 
and  Trademark Office. This subpart shall be construed to secure the just, 
speedy,  and inexpensive determination of every interference. For the 
meaning of terms  in the Federal Rules of Evidence as applied to 
interferences, see w 1.671(c).  Unless otherwise clear from the context, 
the following definitions apply to  this subpart: 

(a)   "Additional discovery" is discovery to which a party may be entitled 
 under w 1.687 in addition to discovery to which the party is entitled as 
a  matter of right under w 1.673(a) and (b). 

(b)   "Affidavit" means affidavit, declaration under w 1.68, or statutory 
declaration  under 28 U.S.C. 1746. A transcript of an ex parte deposition 
may be used as  an affidavit. 

(c)   "Board" means the Board of Patent Appeals and Interferences. 
(d)     "Case-in-chief" means that portion of a party's case where the 
party  has the burden of going forward with evidence. 

(e)   "Case-in-rebuttal" means that portion of a party's case where the 
party  presents evidence in rebuttal to the case-in-chief of another 
party. 
(f)     A "count" defines the interfering subject matter between (1) two 
or  more applications or (2) one or more applications and one or more 
patents.  When there is more than one count, each count shall define a 
separate patentable  invention. Any claim of an application or patent 
which corresponds to a count  is a claim involved in the interference 
within the meaning of 35 U.S.C. 135(a).  A claim of a patent or 
application which is identical to a count is said to  "correspond exactly" 
 to the count. A claim of a patent or application which  is not identical 
to a count, but which defines the same patentable invention  as the count, 
is said to "correspond substantially"  to the count. When a count  is 
broader in scope than all claims which correspond to the count, the count 
is a "phantom count."  A phantom count is not patentable to any party. 
(g)   The "effective filing date" of an application or a patent is the 
filing  date of an earlier application accorded to the application or 
patent under  35 U.S.C. 119, 120, or 365. 

(h)   In the case of an application, "filing date" means the filing date 
assigned  to the application.  In the case of  a patent, "filing date" 
means the filing  date assigned to the application which issued as the patent. 

(i)   An "interference" is a proceeding instituted in the Patent and 
Trademark  Office before the Board to determine any question of 
patentability and priority  of invention between two or more parties 
claiming the same patentable invention.  An interference may be declared 
between two or more pending applications naming  different inventors when, 
in the opinion of an examiner, the applications contain  claims for the 
same patentable invention. An interference may be declared between  one or 
more pending applications and one or more unexpired patents naming 
different  inventors when, in the opinion of an examiner, any application 
and any unexpired  patent contain claims for the same patentable invention. 

(j)   An "interference-in-fact" exists when at least one claim of a party 
which  corresponds to a count and at least one claim of an opponent which 
corresponds  to the count define the same patentable invention. 

(k)   A "lead" attorney or agent is a registered attorney or agent of 
record  who is primarily responsible for prosecuting an interference on 
behalf of a  party and is the attorney or agent whom an examiner-in-chief 
may contact to  set times and take other action in the interference. 

(l)   A "party" is (1) an applicant or patentee involved in the 
interference  or (2) a legal representative or an assignee of an applicant 
or patentee involved  in an interference. Where acts of a party are 
normally performed by an attorney  or agent, "party" may be construed to 
mean the attorney or agent. An "inventor"  is the individual named as 
inventor in an application involved in an interference  or the individual 
named as inventor in a patent involved in an interference. 
(m)   A "senior  party" is the party with earliest effective filing date 
as  to all counts or, if there is no party with the earliest effective 
filing date  as to all counts, the party with the earliest filing date. A 
"junior party"  is any other party. 

(n)   Invention "A" is the "same patentable invention" as an invention "B" 
 when invention "A" is the same as (35 U.S.C.102) or is obvious (35 U.S.C. 
 103) in view of invention "B" assuming invention "B" is prior art with 
respect  to invention "A". Invention "A" is a "separate patentable 
invention" with respect  to invention "B" when invention "A" is new (35 
U.S.C. 102) and non-obvious 
(35 U.S.C. 103) in view of invention "B" assuming invention "B"  is prior 
art  with respect to invention "A". 

(o)   "Sworn" means sworn or affirmed. 

(p)   "United States" means the United States of America, its territories 
and  possessions. 

Under 37 CFR 1.601, the rules shall be construed to secure the just, 
speedy,  and inexpensive determination of  interferences.  37 CFR 1.601 
defines various  terms used in Subpart E of the Rules of Practice 
including "additional discovery," 
 "affidavit," "case-in-chief," "case-in-rebuttal," "count,"  "effective 
filing  date," "filing date," "interference," "interference-in-fact," 
"junior party,"  "lead attorney," "party,"  "phantom count," "same 
patentable invention," "separate  patentable invention," "senior party," 
"sworn," and "United States".   "Affidavits"  include declarations under 
35 U.S.C. 25 and 37 CFR 1.68 as well as statutory  declarations under 28 
U.S.C. 1746.  The definition "United States" is the same  as the 
definition of United States in 35 U.S.C. 100(c). 

The definition of "interference" permits an interference between one or 
more  applications and one or more patents. Thus, the revised rules follow 
the policy  of Wilson v. Yakel, 1876 C.D. 245 (Comm'r. Pat. 1876) and, to 
the extent inconsistent  therewith, do not follow the policy announced in 
Touval v. Newcombe, 194 USPQ  509 (Comm'r. Pat. 1976).  However, in view 
of the statutory requirement for  the presence of at least one application 
in an interference, if an applicant  were to concede priority or otherwise 
be terminated from an interference involving  only one application and 
more than one patent, the interference would have  to be terminated for 
lack of subject matter jurisdiction unless one or more  of the patentees 
filed an application for reissue which could be added to the interference 
under 37 CFR 1.633(h). 

A "count" defines interfering subject matter. An interference may have two 
 counts only if the second count defines a "separate patentable invention" 
from  the first count. The reason the second count must define a separate 
patentable  in- vention is to permit the PTO to lawfully issue separate 
patents to different  parties in an interference when a single party does 
not prevail as to all counts.  A "separate patentable invention" is 
defined in 37 CFR 1.601(n): 

Invention (A) is a "separate patentable invention" with respect to 
invention 
(B) when invention (A) is new (35 U.S.C. 102) and unobvious (35 U.S.C. 
103)  in view of invention (B) assuming invention (B) is prior art with 
respect to  invention (A).  application or patent involved in an 
interference, should be  marked ``Box Interference.''  See 37 CFR 1.1(e) 
and MPEP w 501. 


2301.03       Filing Papers In Interferences 


All papers filed by the parties in an interference may be filed using the 
certificate  of mailing or transmission procedure (37 CFR 1.8), except for 
(1) papers which  an examiner-in-chief has ordered the parties to file by 
hand or by ``Express  Mail," or (2) copies of agreements between the 
parties filed pursuant to 35  U.S.C. 135(c) and 37 CFR 1.666.  See MPEP 
# 2366.  Mail containing papers relating to an interference, or to an 
application  or patent involved in an interference, should be marked ``Box 
Interference." 
 See 37 CFR 1.1(e) and MPEP # 501. 

Any paper which may be filed in an interference using the certificate of 
mailing  or transmission procedure may be transmitted to the PTO by 
facsimile (``fax"),  except for the following, which may not be 
transmitted by facsimile, and, if  submitted by facsimile, will not be 
accorded a date of receipt: 

(1)   a preliminary statement under 37 CFR 1.621 (MPEP # 2321 to # 2326); 


(2)   a transcript of a deposition under 37 CFR 1.676 (MPEP # 2376); 
(3)   a transcript of interrogatories, cross-interrogatories, or recorded 
answers  under 37 CFR 1.684(c) (MPEP w 2384). 

(4)   an evidentiary record and exhibits under 37 CFR 1.653 (MPEP # 2353). 
When transmitting an interference paper to the PTO by facsimile, the 
procedure  specified in MPEP # 502.01 must be followed. The number of the 
interference  should be entered as a part of the sender's identification 
on a facsimile cover  sheet.  The original of the paper which is 
transmitted to the PTO should not  be filed but should be retained as 
evidence of proper execution in the event  that questions arise about the 
authenticity of the signature reproduced on  the facsimile-transmitted 
copy.  See CFR 1.4(d)(2). 

See MPEP # 2309.04 concerning the filing of papers in two or more related 
interferences. 

2302    Ownership of Applications and Patents Involved in an Interference 

37 CFR 1.602.     Interest in applications and patents involved in an 
interference. 
(a)   Unless good cause is shown, an interference shall not be declared or 
 continued between (1) applications owned by a single party or (2) 
applications  and an unexpired patent owned by a single party. 

(b)   The parties, within 20 days after an interference is declared, shall 
 notify the Board of any and all right, title, and interest in any 
application  or patent involved or relied upon in the interference unless 
the right, title,  and  interest is set forth in the notice declaring the 
interference. 
(c)   If a change of any right, title, and interest in any application or 
patent  involved or relied upon in the interference occurs after notice is 
given declaring  the interference and before the time expires for seeking 
judicial review of  a final decision of the Board, the parties shall 
notify the Board of the change  within 20 days of the change. 

37 CFR 1.602 continues the previous PTO practice (37 CFR 1.201(c)) of not 
declaring  or continuing an interference between (1) two or more 
applications owned by  the same party or (2) an application and a patent 
owned by a single party unless  good cause is shown. A corporation and its 
wholly owned subsidiary are considered  a "single party" within the 
meaning of 37 CFR 1.602(a). Under prior rules,  when a patent and an 
application involved in an interference became commonly  owned, the 
interference was not "dissolved." Rather, the PTO required that  the 
interference be terminated with a judgment. Chillas v. Weisberg, 1928 C.D. 
 24 (Comm'r Pat. 1928); Malone v. Toth, 202 USPQ 397 (Comm'r Pat. 1978); 
and  Morehouse v. Armbuster,  209 USPQ 514 (Comm'r Pat. 1980). Under the 
revised  rules, all interferences, including those involving only 
applications, will  be terminated with a judgment. As noted in Chillas v. 
Weisberg, supra  at 25  "the common owner can allow a judgment against the 
junior party to be rendered  by default or it can file a concession of 
priority from one party to the other." 
 Paragraphs (b) and (c) of 
37 CFR 1.602 continue the previous PTO practice (37 CFR 1.201(c)) of 
requiring  a party to notify the PTO of any real party in interest not 
apparent on the  face of the notice declaring the interference (see 37 CFR 
1.611) or of any  change in the real party in interest after the 
interference is declared. The  PTO needs to know the identity of any real 
party in interest to properly enforce  37 CFR 1.602(a) and to enable an 
examiner-in-chief to determine whether refusal  is necessary or 
appropriate. A new requirement, in paragraph (b) and (c) of  37 CFR 1.602, 
not present in 37 CFR 1.201(c) is a 20-day time period for advising  the 
PTO of the identity of, or any change in, the real party in interest. 
COMMON OWNERSHIP 

Where applications by different inventive entities but of common ownership 
 claim the same subject matter or subject matter that is not patentably 
different: 
I.  Interference therebetween is normally not instituted since there is no 
 conflict of interest. Elimination of conflicting claims from all except 
one  case should usually be required, 37 CFR 1.78(c). The common assignee 
must determine  the application in which the conflicting claims are 
properly placed. Treatment  by rejection is set forth in  MPEP w 804.03. 

II.   Where an  interference with a third party is found to exist, the 
commonly  owned application having the earliest effective filing date will 
be placed  in interference with the third party. The common assignee may 
move during the  interference under 37 CFR 1.633(d) to substitute the 
other commonly owned application,  if desired. 


2303    Interference Between Applications 


37 CFR 1.603.     Interference between applications; subject matter of the 
 interference. 

Before an interference is declared between two or more applications, the 
examiner  must be of the opinion that there is interfering subject matter 
claimed in  the applications which is patentable to each applicant subject 
to a judgment  in the interference. The interfering subject matter shall 
be defined by one  or more counts. Each count shall define a separate 
patentable invention.  Each  application must contain, or be amended to 
contain, at least one claim which  corresponds to each count.  All claims 
in the applications which define the  same patentable invention as a count 
shall be designated to correspond to the  count. 

Where two or more applications are found to be claiming the same 
patentable  invention, they may be put in interference, dependent on the 
status of the  respective applications and the difference between their 
filing dates. One  of the applications should be in condition for 
allowance. Unusual circumstances  may justify an exception to this if the 
approval of the group director is obtained. 
Interferences will not be declared between pending applications if there 
is  a difference of more than 3 months in the effective filing dates of 
the oldest  and the next oldest applications, in the case of inventions of 
a simple character,  or a difference of more than 6 months in the 
effective filing dates of the  applications in other cases, except in 
exceptional situations, as determined  and approved by the group director. 
 One such exceptional situation would be  where one application has the 
earliest effective filing date based on foreign  priority and the other 
application has the earliest effective United States  filing date.  If an 
interference is declared, all applications having the interfering  subject 
matter should be included. 

Before taking any steps looking to the formation of an interference, it is 
 essential that the examiner make certain that each of the prospective 
parties  is claiming the same patentable invention (as defined in 37 CFR 
1.601(n)) and  that at least one claim of each party corresponds to each 
count of the interference  and is clearly readable upon the disclosure of 
that party and allowable in  its application. 

It is to be noted that while the claims of two or more applicants may not 
be  identical, yet if directed to the same patentable invention, an 
interference  exists.  But mere disclosure by an applicant of an invention 
which he or she  is not claiming does not afford a ground for suggesting 
to that applicant a  claim for the said invention based upon claims from 
another application that  is claiming the invention.  The intention of the 
parties to claim the same  patentable invention, as expressed in the 
summary of the invention or elsewhere  in the disclosure or in the claims, 
is an essential in every instance. 
Where the subject matter found to be allowable in one application is 
disclosed 
 and claimed in another application, but the claims therein to such 
subject  matter are either nonelected or subject to election, the question 
of interference  should be considered.  The requirement of 37 CFR 1.601(i) 
that the conflicting  applications shall contain claims for the same 
patentable invention should  be interpreted as meaning generally that the 
conflicting claimed subject matter  is sufficiently supported in each 
application and is patentable to each applicant  over the prior art. The 
statutory requirement of first inventorship is of transcendent  importance 
and every effort should be made to avoid the improvident issuance  of a 
patent where there is an adverse claimant. 

Following are illustrative situations where the examiner should take 
action  toward instituting interference: 

A.  Application filed with claims to divisible inventions I and II. Before 
 action requiring restriction is made, examiner discovers another case 
having  claims to invention I. 

The situation is not altered by the fact that a requirement for 
restriction  had actually been made but had not been responded to.  Nor is 
the situation  materially different if an election of noninterfering 
subject matter had been  made without traverse but no action given on the 
merits of the elected invention. 
B.  Application filed with claims to divisible inventions I and II and in 
response  to a requirement for restriction, applicant traverses the same 
and elects invention  I. Examiner gives an action on the merits of I. 
Examiner subsequently finds  an application to another containing allowed 
claims to invention II and which  is ready for issue. 

The situation is not altered by the fact that the election is made without 
 traverse and the nonelected claims possibly cancelled. 

C.  Application filed with generic claims and claimed species a, b, c, d, 
and  e.  Generic claims rejected and election of a single species 
required. Applicant  elects species a, but continues to urge allowability 
of generic claims. Examiner  finds another application claiming species b 
which is ready for issue. 
The allowability of generic claims in the first case is not a condition 
precedent  to setting up interference. 

D.  Application filed with generic claims and claims to five species and 
other  species disclosed but not specifically claimed. Examiner finds 
another application  the disclosure and claims of which are restricted to 
one of the unclaimed species  and have been found allowable. 

The prosecution of generic claims is taken as indication of an intention 
to  cover all species disclosed which come under the generic claim. 

In all the above situations, the applicant has shown an intention to claim 
 the subject matter which is actually being claimed in another 
application. 
 These are to be distinguished from situations where a distinct invention 
is  claimed in one application but merely disclosed in another application 
without  evidence of an intent to claim the same. The question of 
interference should  not be considered in the latter instance. However, if 
the application disclosing  but not claiming the invention is senior, and 
the junior application is ready  for issue, the matter should be discussed 
with the group director to determine  the action to be taken. 


2304    Applicant Requests Interference Between Applications 


37 CFR 1.604.       Request for interference between applications by an 
applicant. 
(a)   An applicant may seek to have an interference declared with an 
application  of another by (1) suggesting a proposed count and presenting 
at least one claim  corresponding to the proposed count or identifying at 
least one claim in his  or her application that corresponds to the 
proposed count, (2) identifying  the other application and, if known, a 
claim in the other application which  corresponds to the proposed count, 
and (3) explaining why an interference should  be declared. 

(b)   When an applicant presents a claim known to the applicant to define 
the  same patentable invention claimed in a pending application of 
another, the  applicant shall identify that pending application, unless 
the claim is presented  in response to a suggestion by the examiner. The 
examiner shall notify the  Commissioner of any instance where it appears 
an applicant may have failed  to comply with the provisions of this paragraph. 


2305    Examiner Suggests Claim to Applicant 


37 CFR 1.605.     Suggestion of claim to applicant by examiner. 

(a)   The examiner may suggest that an applicant present a claim in an 
application  for the purpose of an interference with another application 
or a patent. The  applicant to whom the claim is suggested shall amend the 
application by presenting  the suggested claim within a time specified by 
the examiner, not less than  one month.  Failure or refusal of an 
applicant to timely present the suggested  claim shall be taken without 
further action as a disclaimer by the applicant  of the invention defined 
by the suggested claim. At the time the suggested  claim is presented, the 
applicant may also (1) call the examiner's attention  to other claims 
already in the application or which are presented with the  suggested 
claim and (2) explain why the other claims would be more appropriate  to 
be included in any interference which may be declared. 

(b)   The suggestion of a claim by the examiner for the purpose of an 
interference  will not stay the period for response to any outstanding 
Office action.  When  a suggested claim is timely presented, ex parte 
proceedings in 

the application will be stayed pending a determination of whether an 
interference  will be declared. 

Although the subject of suggesting claims is treated in detail at this 
point  in the discussion of a prospective interference between 
applications, essentially  the same practice here outlined is also 
applicable to a prospective interference  with a patent. 

If the applications contain claims covering the entire interfering subject 
 matter, the examiner proceeds under 37 CFR 1.609 to form the 
interference;  otherwise, proper claims must be suggested to some or all 
of the parties. 
Under 37 CFR 1.605, timely filing of an amendment  presenting a claim 
suggested  by the examiner for purposes of an interference would stay ex 
parte proceedings  in the application in which the claim is presented 
pending a determination  by the examiner of whether an interference will 
be declared. Also under 37  CFR 1.605(a), when an examiner suggests a 
claim, the applicant will be required  to copy verbatim the suggested 
claim.  At the time the suggested claim is copied,  however, the applicant 
may also (1) call the examiner's attention to other  claims already in the 
application or which are presented with the copied claim  and (2) explain 
why the other claims would be more appropriate to be included  in any 
interference which may be declared. 

It should be noted at this point that if an applicant presents a claim 
which  corresponds exactly or substantially to a claim in another 
application or patent  without suggestion by the examiner, 37 CFR 1.604(b) 
and 37 CFR 1.607(c) require  him or her to identify the other application 
or patent.  See MPEP  w 2308. 
The question of what claim or claims to suggest in the interfering 
application  is one of great importance, and failure to suggest such 
claims as will define  clearly the matter in issue leads to confusion and 
to prolongation of the contest. 
Before deciding what claim or claims to suggest to an applicant, the 
examiner  should decide what the count or counts of the prospective 
interference will  be, keeping in mind that the count must be patentable 
over the prior art and  define the parties' common invention (see MPEP w 
2309 regarding the formation  of counts).  The claim suggested to the 
applicant need not be identical to  the prospective count, but rather 
should be the broadest claim within the scope  of the prospective count 
which the applicant's disclosure will support, and which  is otherwise 
patentable to the applicant. 

A response to the examiner's suggestion of a claim is not complete unless 
it  includes an amendment adding the exact claim suggested to the 
application. 
 Even though the applicant may consider the suggested claim unpatentable, 
too  narrow, or otherwise unsuitable, it must be presented; otherwise, the 
invention  defined by the suggested claim is considered to be disclaimed. 
The applicant  must make known any such objections to the examiner, and 
may at the same time  present other claims, or call the examiner's 
attention to other claims already  in the application, and explain why 
those claims would be more appropriately  included in the interference. 

If, in copying a suggested claim, an error is introduced by the applicant, 
 the examiner should correct the applicant's claim to correspond to the 
suggested  claim. 

Notification of the fact that the parties have the same attorney should be 
 given to both parties at the time claims are suggested even though claims 
are  suggested to only one party. See also MPEP w 2313.01.  Notation of 
the persons  to whom this letter is mailed should be made on all copies. 

The following sentence is usually added to the letter suggesting claims 
where  the same attorney or agent is of record in applications of 
different ownership  which have conflicting subject matter: 

        Attention is called to the fact that the attorney (or agent) in 
this  application is also the attorney (or agent) in an application of 
another party  and of different ownership claiming substantially the same 
patentable invention  as claimed in the above-identified application. 

The attention of the Commissioner is not called to the fact that two 
conflicting  parties have the same attorney until actual interference is 
set up and then  it is done by notifying the examiner-in-chief as 
explained in MPEP w 2308.01. 
Form Paragraphs 11.04 and 11.05 may be used to suggest claims for purposes 
 of interference to applicants. 

W 11.04       Suggestion of Claim 

The following allowable claim is suggested for the purpose of an 
interference: 
[1] 

The suggested claim must be copied exactly, although other claims may be 
proposed  under 37 CFR 1.605(a). 

APPLICANT SHOULD MAKE THE SUGGESTED CLAIM WITHIN ONE MONTH FROM THE DATE 
OF  THIS LETTER.   FAILURE TO DO SO WILL BE CONSIDERED A DISCLAIMER OF THE 
SUBJECT  MATTER OF THIS CLAIM UNDER THE PROVISIONS OF 37 CFR 1.605(a). 
THE PROVISIONS  OF  37 CFR 1.136(a) DO NOT APPLY TO THIS TIME PERIOD. 

Claim [2] considered unpatentable over this additionally suggested claim. 
Examiner Note: 

1.  In bracket 1, insert the suggested claim. 

2.  In bracket 2, list all claims pending in the application not 
considered  to be patentably distinct from the suggested claim. 

3.  Only one claim should be suggested unless claims to separate 
patentably  distinct inventions are present. 37 CFR 1.601(n). To suggest 
an additional  claim to a separate distinct invention, form paragraph 
11.05 should follow  this paragraph. 

4.  If the Office action addresses other issues, such as a rejection of 
other  claims, paragraph 11.06 should be included at the end of the 
action. 
W 11.05       Suggestion of Additional Claim for a Distinct Invention 
The following claim is considered allowable and directed to a separate 
patentable  invention from the claim suggested above: 

[1] 

The additionally suggested claim must be copied exactly, although other 
claims  may be proposed under 37 CFR  1.605(a). 

APPLICANT MUST ALSO MAKE THIS ADDITIONALLY SUGGESTED CLAIM WITHIN ONE 
MONTH  FROM THE DATE OF THIS LETTER.  FAILURE TO DO SO WILL BE CONSIDERED 
A DISCLAIMER  OF THE SUBJECT MATTER OF THIS CLAIM UNDER THE PROVISIONS OF 
37 CFR 1.605(a).  THE PROVISIONS OF 37 CFR 1.136(a) DO NOT APPLY TO THIS 
TIME PERIOD. 
Claim [2] considered unpatentable over this additionally  suggested claim. 
Examiner  Note: 

This paragraph must be preceded by paragraph 11.04 and should only be used 
 to suggest a patentably distinct claim from the one suggested in 
paragraph  11.04. 

W 11.06       Suggestion of Claims - Prosecution Suspended 

Applicant need not respond to the remaining issues in this action if a 
suggested  claim is copied for the purpose of an interference within the 
time limit specified  above. 37 CFR 1.605(b). 

Examiner  Note: 

This paragraph should be used at the end of any Office action where claims 
 are suggested using either paragraph 11.04 or 11.08 and where additional 
issues 
(e.g., a rejection of other claims) are addressed in the action that will 
be  suspended should applicant copy the suggested claim. 


2305.01       Action To Be Made at Time of Suggesting Claims 


At the same time that the claims are suggested, an action is made on each 
of  the applications that are up for action by the examiner, whether they 
be new  or amended cases.  In this way, possible motions under 37 CFR 
1.633(c) and 
(d) may be forestalled. That is, the action on the new or amended case may 
 bring to light patentable claims that should be included as corresponding 
to  the count of, or as forming the basis for, an additional count of the 
interference,  and, on the other hand, the rejection of unpatentable 
claims will serve to  indicate to the opposing parties the position of the 
examiner with respect  to such claims. 

When an examiner suggests that an applicant present a claim for 
interference,  the examiner should state which of the claims already in 
the case are, in his  or her opinion, unpatentable over the claim 
suggested. This statement does  not constitute a formal rejection of the 
claims, but if the applicant presents the suggested claim but disagrees 
with the examiner's statement, the  applicant should so state on the 
record, not later than the time the claim  is presented, In re Bandel, 348 
F.2d 563, 146 USPQ 389 (CCPA 1965).  If the  applicant does not present 
the suggested claim by the expiration of the period  fixed for its 
presentation, the examiner should then reject those claims which  were 
previously stated as being unpatentable over the suggested claim on the 
basis that the failure to present constituted a concession that the 
subject  matter of those claims is the prior invention of another in this 
country under  35 U.S.C. 102(g)  and thus prior art to the applicant under 
35 U.S.C. 103.  In re Oguie, 517 F.2d 1382, 186 USPQ 227 (CCPA 1975).  If 
the applicant does  present the suggested claim, when the interference is 
declared, the claims  stated to be unpatentable over the suggested claim 
will be designated as corresponding  to the count. 


2305.02       Time Limit Set for Presenting Suggested Claims 


Where claims are suggested for interference, a limited period determined 
by  the examiner, not less than one month, is set for reply.  See MPEP w 
710.02(c). 
Should any one of the applicants fail to present the claim or claims 
suggested  within the time specified, all claims not patentable thereover 
are rejected  on the ground that the applicant has disclaimed the 
invention to which they  are directed. If the applicant presents the 
suggested claims later they will  be rejected on the same ground.  See 
MPEP w 706.03(u). 


2305.03       Suggested Claims Presented After Period for Response Running 
Against Case 

If suggested claims are presented within the time specified for making the 
 claims, the applicant may ignore any outstanding rejections in the 
application. 
  Even if claims are suggested in an application near the end of the 
period  for response running against the case, and the time limit for 
presenting the  claims extends beyond the end of the period, such claims 
will be admitted if  filed within the time limit even though outside the 
period for response to  the rejection (usually a 3-month shortened 
statutory period) and even though  no amendment was filed responsive to 
the Office action outstanding against  the case at the time of suggesting 
the claims.  No portion of the case is abandoned  provided the applicant 
presents the suggested claims within the time specified. 
 However, if the suggested claims are not thus presented within the 
specified  time, the case becomes abandoned in the absence of a responsive 
amendment filed  within the period for response to the rejection, 37 CFR 
1.605(b). 

2305.04       Suggestion of Claims, Application in Issue or in 
Interference 

An application will not be withdrawn from issue for the purpose of 
suggesting  claims for an interference.  When an application pending 
before the examiner  contains one or more claims defining an invention to 
which claims may be  presented  in a case in issue, the examiner may write 
a letter suggesting such claims  to the applicant whose case is in issue, 
stating that if such claims be presented  within a certain specified time, 
the case will be withdrawn from issue, the  amendment entered and the 
interference declared. Such letters must be submitted  to the group 
director.  If the suggested claims are not presented in the application 
in issue, it may be necessary to withdraw it from issue for the purpose of 
 rejecting other claims on the implied disclaimer resulting from the 
failure  to present the suggested claims. 

When the examiner suggests one or more claims for the purpose of 
interference  with a case in issue to an applicant whose case is pending 
before him or her,  the case in issue will not be withdrawn for the 
purpose of interference unless  the suggested claims shall be presented in 
the pending application within the  time specified by the examiner.  The 
letter suggesting claims should be submitted  to the group director for 
approval. 

In either of the above cases, the Publishing Division should be notified 
when  the claims are suggested, so that in case the issue fee is paid 
during the  time in which the suggested claims may be presented, proper 
steps may be taken  to prevent the issue fee from being applied. 

The examiner should borrow the allowed application from the Publishing 
Division  and hold the file until the claims are presented or the time 
limit expires. 
 This avoids any possible issuance of the application as a patent should 
the  issue fee be paid.  To further ensure against issuance of the 
application,  the examiner may pencil in the blank space labeled, "Date 
paid" in the lower  right-hand corner of the file wrapper, the initialed 
request: ``Defer for interference." 
 The issue fee is not applied to such an application until the following 
procedure  is carried out. 

When notified that the issue fee has been received, the examiner shall 
prepare  a memo to the Publishing Division requesting that issue of the 
patent be deferred  for a period of 3-months due to possible interference. 
 This allows a period  of 2 months to complete any action needed.   At the 
end of this 2-month period,  the application must either be released to 
the Publishing Division or be withdrawn  from issue. 

When an application is found claiming an invention for which claims are to 
 be suggested to other applications already involved in interference, to 
form another interference, the primary examiner  borrows the last named 
applications from the Service Branch of the Board of  Patent Appeals and 
Interferences.  In case the application is to be added to  an existing 
interference, the primary examiner need only send the application  and 
form PTO-850 (illustrated in MPEP w 2309.02) properly filled out as to 
the additional application and identifying the interference, to the 
examiner-in-chief  in charge of the interference who will determine the 
action to be taken. Also,  see MPEP w 2342. 

W 11.07       Suggestion of Claims - Application in Issue 

This application has been withdrawn from issue for consideration of a 
potential  interference based on the claims suggested in this action. 

Examiner Note: 

1. If a conflicting application is in issue, it should be withdrawn using 
paragraphs  10.01 or 10.02 prior to suggesting claims for interference. 

2. Either paragraph 11.04 or 11.08 must be used in conjunction with this 
paragraph 
W 11.08       Requirement To Copy Patent Claim 

The following claim number [1] from U.S. patent no. [2] is suggested to 
applicant  under 35 U.S.C. 135(a) for the purpose of an interference: 

[3] 

The suggested claim must be copied exactly, although other claims may be 
proposed  under 37 CFR 1.605(a). 

APPLICANT MUST COPY THE PATENT CLAIM WITHIN ONE MONTH FROM THE DATE OF 
THIS  LETTER. THE EXTENSION OF TIME PROVISIONS OF w 1.136(a) DO NOT APPLY 
TO THIS  TIME PERIOD. FAILURE TO COPY THE CLAIM WILL BE TAKEN AS A 
CONCESSION THAT THE  SUBJECT MATTER OF THIS CLAIM IS THE PRIOR INVENTION 
OF ANOTHER UNDER 35 U.S.C.  102(g) AND THUS ALSO PRIOR ART UNDER 35 U.S.C. 
103. In re Oguie, 186 USPQ 227 
(CCPA 1975). 

Examiner Note: 

1.  In bracket 1, insert the number from the patent of the suggested 
claim. 
2.  In bracket 2, insert the number of the patent. 

3.  In bracket 3, insert a copy of the patent claim. 

4.  Only one claim from the patent should be suggested for interference 
unless  other claims to a separate patentably distinct invention are 
claimed in the  patent and can be made by the applicant. To suggest an 
additional claim, paragraph  11.09 should follow this paragraph. 

5.  If the Office action addresses other issues, such as a rejection of 
the  claims, paragraph 11.06 should be included at the end of the Office 
action. 
W 11.09       Copying Additional Patent Claim for a Distinct Invention 
Claim number [1] from U.S. patent no. [2] is suggested under 35 U.S.C. 
135(a)  in addition to claim [3] of the patent, suggested above. The 
inventions defined  by these patent claims are considered to be "separate 
patentable  inventions"  under 37 CFR 1.601(n) that could form the basis 
for plural counts in an interference. 
The suggested patent claim, reproduced below, must be copied exactly, 
although  other claims may be proposed under 37 CFR 1.605(a): 

[4] 

APPLICANT MUST COPY THE ADDITIONAL PATENT CLAIM WITHIN ONE MONTH FROM THE 
DATE  OF THIS LETTER. THE EXTENSION OF TIME PROVISIONS OF w 1.136(a) DO 
NOT APPLY  TO THIS TIME PERIOD.  FAILURE TO COPY THIS ADDITIONAL CLAIM 
WILL BE TAKEN AS  A CONCESSION THAT THE SUBJECT MATTER OF THIS CLAIM IS 
THE PRIOR INVENTION OF  ANOTHER UNDER 35 U.S.C.102(g) AND THUS ALSO PRIOR 
ART UNDER 35 U.S.C. 103. 
Examiner Note: 

1.  In bracket 1, insert the number of the patent claim that is patentably 
 distinct from the claim specified in paragraph 11.08. 

2.  This paragraph must follow paragraph 11.08 and should only be used in 
those  rare instances where both the patent and the application claim 
distinct, interfering  inventions. 

W 11.11       Failure to Apply Terms of Copied Claim to the Disclosure 
Claim [1] of this application has been copied from U.S. patent [2] for the 
 purpose of an interference. 

Applicant has failed to specifically apply the terms of the copied claim 
to  the disclosure of the application, as required under 37 CFR 
1.607(a)(3). 
APPLICANT IS REQUIRED TO CORRECT THIS DEFICIENCY WITHIN ONE MONTH FROM THE 
 DATE OF THIS LETTER, THE EXTENSION OF TIME PROVISIONS OF 37 CFR 1.136(a) 
DO  NOT APPLY TO THIS TIME PERIOD. 

W 11.18       Foreign Priority Not Substantiated 

Should applicant desire to obtain the benefit of foreign priority under 35 
 U.S.C. 119 prior to declaration of an interference, a sworn translation 
of  the foreign application should be submitted under 37 CFR 1.55 in 
response to  this action. 

Examiner Note: 

This paragraph may be used when claims are suggested to applicant from 
either  an application or a patent and applicant has a claim for priority 
not substantiated  by a sworn translation. 


2306    Interference Between an Application and a Patent 


37 CFR 1.606.     Interference between an application and a patent; 
subject  matter of the interference. 

Before an interference is declared between an application and an unexpired 
 patent, an examiner must determine that there is interfering subject 
matter  claimed in the application and the patent which is patentable to 
the applicant  subject to a judgment in the interference. The interfering 
subject matter will  be defined by one or more counts.  Each count shall 
define a separate patentable  invention. Any application must contain, or 
be amended to contain, at least  one claim which corresponds to each 
count. All claims in the application and  patent which define the same 
patentable invention as a count shall be designated  to  correspond to the 
count. At the time an interference is initially declared 
(w 1.611), a count shall not be narrower in scope than any patent claim 
which  corresponds to the count and any single patent claim will be 
presumed, subject  to a motion under w 1.633(c), not to contain separate 
patentable inventions. 


An interference may be declared between an application and a patent if the 
 application and patent are claiming the same patentable invention, and at 
least  one of the applicant's claims to that invention are patentable to 
the applicant. 
 Since at least one of the applicant's claims must be patentable, an 
interference  between an application and a patent cannot be declared if: 

1.  The patent is a statutory bar against the application under 35 U.S.C. 
102(b); 
2.  The applicant's claims are not supported by the application 
disclosure,  or otherwise do not comply with 35 U.S.C. 112; 

3.  The applicant was not claiming the same or substantially the same 
invention  as claimed in the patent within 1 year after the date on which 
the patent was  issued (35 U.S.C. 135(b)); 

4.  The patent is a reference against the application under 35 U.S.C. 
102(e),  unless the applicant has filed a showing under 37 CFR 1.608.  See 
MPEP w 2307  concerning the rejection of claims in an application which 
correspond to claims  of a patent. 

Since the claims of a patent may not be altered (except by reissue or 
reexamination),  the applicant must claim the same patentable invention as 
is claimed in one  or more claims of a patent in order to provoke an 
interference with the patent.  The fact that the patent may disclose 
subject matter claimed by the applicant  is not a basis for interference 
if the patent does not claim that subject matter. 
The practice followed prior to the adoption of 37 CFR 1.606, wherein each 
patent  claim formed the basis for a separate count of the interference, 
no longer  applies.  Under present practice, the counts of the 
interference are formulated  in essentially the same manner regardless of 
whether a patent is involved.  As stated in 37 CFR 1.606, each count 
"shall define a separate patentable invention." 
  Therefore, instead of having the same number of counts as copied patent 
claims,  the examiner determines how many separate patentable inventions 
are claimed  by the applicant and the patentee.  When the interference is 
declared, there  will be only one count for each separate patentable 
invention, with all the  claims of the applicant and of the patentee which 
claim each invention designated  as corresponding to the count for that 
invention. See MPEP w 2309 for a more  detailed discussion of the 
formulation of counts. 

An interference between an application and a patent may  arise in one of 
the  following ways: 

1.  During examination of an application, the examiner may determine that 
the  application contains one or more allowable claims which are drawn to 
the same  invention as claimed in a patent.  In that event, the examiner 
may proceed  to initiate the interference as described in MPEP w 2305. 

2.  The examiner may discover a patent which claims an invention which is 
disclosed  by the applicant and to which the applicant could present 
patentable claims.  In that event, the examiner may suggest to the 
applicant a claim which would  define the same invention and would be 
patentable to the applicant.  See MPEP  w 2305. 

3.  The applicant may provoke an interference with a patent by presenting 
a  proposed count and either presenting a claim corresponding to the 
proposed  count, or identifying a claim already in the application that 
corresponds to  the proposed counts.  See 37 CFR 1.607. 

The requirement that the claims of the application and of the patent 
define  the same patentable invention in order for an interference to 
exist does not  mean that the application claim or claims must necessarily 
be identical to  the corresponding claim or claims of the patent.  All 
that is required under  present practice is that a claim of the 
application be drawn to the same patentable  invention as a claim of the 
patent.  An application claim is considered to  be drawn to the same 
patentable invention as a patent claim if it recites subject  matter which 
is the same as (35 U.S.C. 102) or obvious in view of (35 U.S.C.  103), the 
subject matter recited in the patent claim. 37 CFR 1.601(n).  The  test is 
analogous to that applied for double patenting; i.e., if the applicant's 
claims would have been subject to a double patenting rejection of the 
"same  invention"  or "obviousness" type (see MPEP w 804) if the patent 
and application  were by the same inventive entity, then the application 
and patent claim are  directed to the same invention.   In all cases, the 
examiner should keep in  mind the fundamental principle that the issuance 
of two patents for inventions  which are either identical to or not 
patentably distinct from each other must  be avoided,  Aelony  v. Arni, 
547 F.2d 566, 192 USPQ 486 (CCPA 1977). 
37 CFR 1.601(i) includes the possibility that an interference may include 
more  than one unexpired patent.  The PTO does not have jurisdiction to 
determine  interferences involving only patents, since 35 U.S.C. 291 
grants the jurisdiction  to the courts.  However, if the examiner 
discovers two or more patents which  are claiming the same invention as an 
application, an interference may be instituted  between the application 
and the patents.  The group director's approval must  be obtained before 
an interference involving multiple patents will be declared. 
When an interference with a patent is proposed, it should be ascertained 
before  any steps are taken whether there is common ownership.  Note MPEP 
w 804.03. 
 A title report must be placed in both the application and the patented 
file 


when the papers for an interference between an application and a  patent 
are  forwarded.  To this end the examiner, before initiating an 
interference involving  a patent, should refer both the application and 
the patented file to the Assignment  Division for notation as to ownership. 

PATENT IN DIFFERENT GROUP 

When an applicant seeks to provoke an interference with a patent 
classified  in another group, the propriety of declaring the interference 
is decided by  and the interference is initiated by the group where the 
patent is classified. 
 In such a case, it may be necessary to transfer the application, 
including  the drawings, temporarily to the group which will initiate the 
interference. 
Under 37 CFR 1.606, at the time an interference is declared, a rebuttable 
presumption  will exist that any patent claim designated to correspond to 
a count does not  embrace separate patentable inventions.  Moreover, at 
the time the interference  is declared, no count will be narrower in scope 
than the broadest patent claim  designated to correspond to that count. 
The presumption is rebuttable and may  be challenged and overcome by a 
motion under 37 CFR 1.633(c). 


2307    Applicant Requests Interference With a Patent 


37 CFR 1.607.     Request by applicant for interference with patent. 
(a)   An applicant may seek to have an interference declared between an 
application  and an unexpired patent by, 

(1)   identifying the patent, 

(2)   presenting a proposed count, 

(3)   identifying at least one claim in the patent corresponding to the 
proposed  count, 

(4)   presenting at least one claim corresponding  to the proposed count 
or  identifying at least one claim already pending in his or her 
application that  corresponds to the proposed count, and, if any claim of 
the patent or application  identified as corresponding to the proposed 
count does not correspond exactly  to the proposed count, explaining why 
each such claim corresponds to the proposed  count, and 

(5)   applying the terms of any application claim 

(i)   identified as corresponding to the count and 

(ii)    not previously in the application to the disclosure of the 
application. 
(b)   When an applicant seeks an interference with a patent, examination 
of  the application, including any appeal to the Board, shall be conducted 
with  special dispatch within the Patent and Trademark Office.  The 
examiner shall  determine whether there is interfering subject matter 
claimed in the application  and the patent which is patentable to the 
applicant subject to a judgment in  an interference. If the examiner 
determines that there is any in- interfering  subject matter, an 
interference will be declared.  If the examiner determines  that there is 
no interfering subject matter, the examiner shall state the reasons  why 
an interference is not being declared and otherwise act on the 
application. 
(c)   When an applicant presents a claim which corresponds exactly or 
substantially  to a claim of a patent, the applicant shall identify the 
patent and the number  of the patent claim, unless the claim is presented 
in response to a suggestion  by the examiner. The examiner shall notify 
the Commissioner of any instance  where an applicant fails to identify the 
patent. 

(d)   A notice that an applicant is seeking to provoke an interference 
with  a patent will be placed in the file of the patent and a copy of the 
notice  will be sent to the patentee. The identity of the applicant will 
not be disclosed  unless an interference is declared. If a final decision 
is made not to declare  an interference, a notice to that effect will be 
placed in the patent file  and will be sent to the patentee. 

Special Dispatch 

Examiners should note that 37 CFR 1.607 requires that examination of a 
application  in which applicant seeks an interference with a patent "shall 
be conducted with special dispatch." 
See MPEP w 708.01. 


2307.01       Presentation of Claims Corresponding to Patent Claims Not a 
Response to Last Office Action 

The presentation of claims corresponding to claims of a patent when not 
suggested  by the Office does not constitute a response to the last Office 
action unless  the last Office action relied solely on the patent for the 
rejection of all  the claims rejected in that action. 

Under 37 CFR 1.615, upon declaration of an interference, ex parte 
prosecution  of an application involved in the interference is suspended 
and any outstanding  Office actions are considered as withdrawn by 
operation of the rule, Ex parte  Peterson, 49 USPQ 119 (Comm'r Pat 1941). 
Upon termination of the interference,  the examiner will reinstate the 
action treated as withdrawn by operation of  37 CFR 1.615 and set a 
statutory period for response. 


2307.02       Rejection of Claims Corresponding to Patent Claims 

When claims corresponding to claims of a patent are presented, the 
application  is taken up at once and the examiner must determine whether 
the presented claims  are patentable to the applicant.  If they are not, 
they should be rejected  on the appropriate ground(s).  However, as long 
as one of the presented claims  is patentable to the applicant and is 
claiming the same invention as at least  one claim of the patent, an 
interference should be declared. 

The ground of rejection of the patented claims may or may not also be 
applicable  to the claims in the patent; if it is,  any letter including 
the rejection  must have the approval of the group director.  See MPEP 
1003, item 10. 


An interference will not be declared where the examiner is aware of a 
reference  for the claims which correspond to the patent claims, even if 
it would also  be applicable to the patent. If such a reference is 
discovered while an interference  involving a patent is pending, the 
examiner should call the reference to the  attention of the 
examiner-in-chief in charge of the interference, for possible  action 
under 37 CFR 1.641. 

Examples of  grounds of rejection which would not also be applicable to 
the  patent are insufficient disclosure in the application, a reference 
whose date  is junior to that of the patent, or because the claims are 
barred to applicant  by the second paragraph of 35 U.S.C. 135, which 
reads: "(b) A claim which is  the same as, or for the same or 
substantially the same subject matter as, a  claim of an issued patent may 
not be made in any application unless such a  claim is made prior to one 
year from the date on which the patent was granted." 
  See  Ex  parte  Fine, 217 USPQ 76 (Bd. App. 1981). The anniversary date 
of  the issuance of a patent is "prior to one year from the date on which 
the patent  was granted", Switzer v. Sockman, 333 F.2d 935, 142 USPQ 226 
(CCPA 1964).   It should be noted that an applicant is permitted to copy a 
patent claim outside  the year period if he or she has been claiming 
substantially the same subject  matter within the year limit.  See 
Thompson v. Hamilton, 152 F.2d 994, 68 USPQ  161 (CCPA 1946); In re Frey, 
182 F.2d 184, 86 USPQ 99 (CCPA 1950); Andrews  v. Wickenden, 194 F.2d 729, 
93 USPQ 27 (CCPA 1952); In re Tanke, 213 F.2d 551,  102 USPQ 93 (CCPA 
1954); Emerson v. Beach, 215 F.2d 290, 103 USPQ 45 (CCPA  1955); Rieser v. 
Williams, 255 F.2d 419, 118 USPQ 96 (CCPA 1958); Stalego v.  Heymes, 263 
F.2d 334, 120 USPQ 473 (CCPA 1959); Corbett v. Chisholm, 568 F.2d  759, 
196 USPQ 337 (CCPA 1977). 

If the patent has a filing date earlier than the application, see MPEP w 
2308.01. 
37 CFR 1.607(b) requires that "When an applicant seeks an interference 
with  a patent, examination of the application, including any appeal to 
the Board,  shall be conducted with special dispatch within the Patent and 
Trademark Office."  Therefore, when all the claims presented are rejected 
the examiner sets a time  limit for reply, not less than 30 days, and all 
subsequent actions, including  action of the Board  on appeal, are 
special.  Failure to respond or appeal,  as the case may be, within the 
time fixed, will, in the absence of a satisfactory  showing, be deemed a 
disclaimer of  the invention claimed. 

While the time limit for an appeal from the final rejection of a claim 
corresponding  to a patent claim is usually set under the provisions of 37 
CFR 1.607(b), where  the remainder of the case is ready for final action, 
it may be advisable to  set a shortened statutory period for the entire 
case in accordance with 37  CFR 1.134. 

The distinction between a limited time for reply under 37 CFR 1.607(b) and 
 a shortened statutory period under 37 CFR 1.134 should not be lost sight 
of. 
 The penalty resulting from failure to reply within the time limit under 
37  CFR 1.607(b) is loss of the claim or claims involved, on the doc- 
trine of  disclaimer, and this is appealable; while failure to respond 
within the set  statutory period (37 CFR 1.134) results in abandonment of 
the entire application. 
 This is not appealable. 

The rejection of claims presented for interference with a patent sometimes 
 creates a situation where two different periods for response are running 
against  the application - one, the statutory period dating from the last 
full action  on the case; the other, the limited period set for the 
response to the rejection 
(either first or final) of the presented claims.  This condition should be 
 avoided where possible as by setting a shortened period for the entire 
case,  but where unavoidable, it should be emphasized in the examiner's 
letter. 
In this connection it is to be noted that a reply to a rejection or an 
appeal  from the final rejection of the presented claims will not stay the 
running  of the regular statutory period if there is an unanswered Office 
action in  the case at the time of reply or appeal, nor does such reply or 
appeal relieve  the examiner from the duty of acting on the case if it is 
up for action, when  reached in its regular order. 

Where an Office action sets a time limit for response to or appeal from 
that  action or a portion thereof, the examiner should note at the end of 
the letter  the date when the time limit period ends and also the date 
when the statutory  period ends.  See MPEP w 710.04. 

W 11.12       Rejection of Claim Corresponding to Proposed Count 

Claim [1] of this application has been copied by the applicant from U.S. 
patent  No. [2]. This claim is not patentable to the applicant because 
[3]. 
An interference cannot be initiated since a prerequisite for interference 
under  37 CFR 1.606 is that the claim be patentable to the applicant 
subject to a  judgment in the interference. 

Examiner Note: 

This paragraph must be preceded by a rejection of the claim. 

W 11.13       Claims Not Copied Within One Year 

Claim [1] rejected under 35 U.S.C. 135(b) as not being  made prior to one 
year  from the date on which U.S. patent [2] was granted. 

W 11.14       Copied Claims Drawn to Different Invention 

Claim [1] of this application is asserted by applicant to correspond to 
claims  of U.S. patent [2]. 

The examiner does not consider this claim to be directed to the same 
invention  as that of U.S. patent [3] because [4]. Accordingly, an 
interference cannot  be initiated based upon this claim. 




2307.03       Presentation of Claims for Interference With a Patent, After 
Prosecution of Application is Closed 

An amendment presenting a claim to provoke an interference in an 
application  not in issue is usually admitted and promptly acted on. 
However, if the case  had been closed to further prosecution as by final 
rejection or allowance of  all the claims, or by appeal, such amendment is 
not entered as a matter of  right. 

An interference may result when an applicant presents claims to provoke an 
 interference with a patent which provided the basis for final rejection. 
Where  this occurs, if the rejection in question has been appealed, the 
Board of Patent  Appeals and Interferences should be notified of the 
withdrawal of this rejection  so that the appeal may be dismissed as to 
the involved claims. 

Where the prosecution of the application is closed and the presented 
claims  relate to an invention distinct from that claimed in the 
application, entry  of the amendment may be denied (Ex parte Shohan, 1941 
C.D. 1 (Comm'r Pat. 1940)).  Admission of the amendment may very properly 
be denied in a closed application,  if prima facie, the claims are not 
supported by the applicant's disclosure. 
 An applicant may not have recourse to presenting a claim corresponding to 
 a patent claim which applicant has no right to make as a means to reopen 
or  prolong the prosecution of his or her case.  See MPEP w 714.19(4). 
AFTER NOTICE OF ALLOWANCE 

When an amendment which includes one or more claims presented to provoke 
an  interference with a patent is received after the Notice of Allowance 
and the  examiner finds one or more of the claims patentable to the 
applicant and an  interference to exist, the examiner should prepare a 
letter, requesting that  the application be withdrawn from issue for the 
purpose of interference. This  letter, which should designate the claims 
to be involved, together with the  file and the proposed amendments, 
should be sent to the group director. 
When an amendment which includes one or more claims presented to provoke 
an  interference with a patent is received after Notice of Allowance, and 
the examiner  finds basis for refusing the interference on any ground, the 
examiner should  make an oral report to the supervisory primary examiner 
of the reasons for  refusing the requested interference.  Notification to 
applicant is made on  Form PTOL-271 if the entire amendment or a portion 
of the amendment (including  all the presented claims) is refused.  Form 
paragraph 11.01 should be employed  to express the adverse recommendation 
as to the entry of the presented claims. 

2307.04       Presentation of Claims For Interference With a Patent 
Involved in a Reexamination Proceeding 

An interference will not be declared with a patent which is involved in a 
reexamination  proceeding except upon specific authorization from the 
Office of the Assistant  Commissioner for Patents. When an amendment is 
filed in a pending application  presenting claims for the purpose of 
interference with a patent involved in  a reexamination proceeding, the 
owner of the patent must be notified (see 37  CFR 1.607(d)). The applicant 
must identify the patent under reexamination with  which interference is 
sought. The claims may be rejected on any applicable  ground, including, 
if appropriate, the prior art cited in the reexamination  proceeding. 
Prosecution of the application should continue as far as possible,  but if 
the application is placed in condition for allowance and still contains 
claims which interfere with the patent under reexamination, further action 
 on the application should be suspended until the reexamination proceeding 
is  terminated.  See MPEP w 2284. 

W 11.15       Patent Claims Undergoing Reexamination 

This application contains claims which conflict with the claims of U.S. 
patent  No. [1], now involved in a reexamination proceeding. 

Prosecution in this application is SUSPENDED UNTIL TERMINATION OF THE 
REEXAMINATION  PROCEEDING. 

Applicant should inquire as to the status of this application six months 
from  the date of this letter. 

Examiner's Note: 

This paragraph should only be used when the application is otherwise in 
condition  for allowance. 


2307.05       Corresponding Patent Claims Not Identified 



37 CFR 1.607(c) requires that "when an applicant pre-sents a claim which 
corresponds  exactly or substantially to a claim of a patent, the 
applicant shall identify  the patent and the number of the patent claim, 
unless the claim is presented  in response to a suggestion by the 
examiner." 

This requirement of 37 CFR 1.607(c) applies to claims presented in an 
application  at the time of filing as well as  to claims presented in an 
amendment to a  pending application. If an applicant, attorney, or agent 
presents a claim corresponding  exactly or substantially to a patent claim 
without complying with 37 CFR 1.607(c)  the examiner may be led into 
making an action different from what would have  been made had the 
examiner been in possession of all the facts. Therefore,  failure to 
comply with 37 CFR 1.607, when presenting a 



claim corresponding to a patent claim, may result in the issuance of a 
requirement  for information as to why an identification of the source of 
the claim was  not made. 

The examiner should require the applicant to supply a full identification 
of  the copied patent claims by using Form Paragraph 11.10. 

W 11.10       Failure to Identify Source of Patent Claims 

Claim [1] of this application has apparently been copied from a U.S. 
patent  without being suggested by the examiner. The patent number and the 
number of  the copied claim have not been properly identified. 37 CFR 
1.607(c). 
Applicant is required to identify the patent and claim numbers and supply 
information  explaining why a complete identification of the copied patent 
claim(s) has  not been presented. Following applicant's response to this 
requirement or the  abandonment thereof, the application will be forwarded 
by the examiner to the  Office of the Assistant Commissioner for Patents 
for appropriate review as  noted under 37 CFR 1.607(c). 

APPLICANT IS REQUIRED TO RESPOND TO THIS REQUIREMENT WITHIN ONE MONTH FROM 
 THE DATE OF THIS LETTER TO AVOID ANY QUESTION OF ABANDONMENT. 

Examiner's Note: 

The primary examiner must refrain from commenting as to the reasons for 
applicant's  failure to disclose the U.S. patent identification. 

After the applicant's response or abandonment of the application, the 
examiner  is required to "notify the Commissioner of any instance where an 
applicant  fails to identify the patent" under 37 CFR 1.607(c).  The 
examiner's notification  should be in the form of a memorandum directed to 
the Office of the Assistant  Commissioner for Patents.  The memorandum 
must be accompanied by the application  and a copy of the patent from 
which the claim(s) was copied. 


2307.06       Presentation of Claims for Interference with a Patent, 
Patentee Must Be Notified 

When an applicant seeks to provoke an interference with a patent, 37 CFR 
1.607(d)  requires that the patentee be notified (1) when the attempt to 
provoke the  interference is first made, and (2) if an interference is not 
declared of the  final decision not to declare an interference. 

This regulation provides a patentee with notice as soon as an applicant 
attempts  to provoke an interference with the patent so that the patentee 
can preserve  the invention records  from the moment the notice is 
received until the time,  in some instances many years later, when the 
interference is ultimately declared  between the patentee and the applicant. 

Form Paragraphs 11.19 and 11.20 should be used to notify the patentee. 
W 11.19       Notice to Patentee, Interference Sought 

        You are hereby notified under 37 CFR 1.607(d) that an applicant is 
 seeking to provoke an interference with your patent No. [1]. 

The identity of the applicant will not be disclosed unless an interference 
 is declared. 

If a final decision is made not to declare an interference, a notice to 
that  effect will be placed in the patent file and will be sent to the 
patentee. 
If a n interference is declared, notice thereof will be made under 37 CFR 
1.611. 
W 11.20       Notice to Patentee, Interference Not Declared 

Notice was communicated to you under 37 CFR 1.607(d) on [1] that an 
applicant  was seeking to provoke an interference with your U.S. patent 
No. [2]. 
A final determination of this issue has resulted in a decision not to 
declare  an interference. 

No inquiries regarding the identity of the applicant will be entertained. 
Examiner's Note: 

In bracket 1, insert the date of mailing of the earlier notice that claims 
 had been copied from the patent. 

It is anticipated that patentees may make inquiries as to the status of 
the  application after the first notification has  been received.  Since 
the group  having responsibility for the application will be indicated on 
the letter and  the letter will not contain any information pertaining to 
that application,  it will be necessary for each examining group to 
establish and maintain some  type of permanent record.  The type of 
permanent record is left to the discretion  of the group director.  This 
permanent record must be independent of the application  file and the 
patented file in order to provide adequate information for patentee 
inquiries relative to nonreceipt of either a second notice or a notice of 
declaration  of interference either before or after either is mailed from 
the Patent and  Trademark Office.  Additionally, the permanent record must 
associate the appropriate  patent number and the serial number of the 
application.  This record could  be a separate group file for 37 CFR 
1.607(d) notices sent to patentees having  appropriate identification of 
the patent and application. 

In summary, a 37 CFR 1.607(d) notice (Form Paragraph  11.19) is prepared 
by  a person in the group having jurisdiction over the application 
attempting to  provoke an interference with a patent.  The original is 
placed of record in  the patented file, one copy is sent to the patentee, 
and an entry is made in  the permanent group record for 37 CFR 1.607(d) 
notices.  If a final decision  is made that no interference will be 
declared, a primary examiner will prepare  and sign a 37 CFR 1.607(d) 
notice (Form Paragraph 11.20). 

The original of this notice is entered of record in the patented file, one 
 copy is sent to the patentee, and another entry is made in the permanent 
record  for 37 CFR 1.607(d) notices. If an interference is to be 
instituted, the declaration  of interference notice will be sent by an 
examiner-in-chief and no additional  form will be sent by the examiner. 



ALTHOUGH THE PERMANENT RECORD FOR 37 CFR 1.607(d) NOTICES INCLUDES 
IDENTIFICATION  BOTH OF THE PATENT AND APPLICATION, THE  PATENTEE CANNOT 
AND SHOULD NOT BE  GIVEN ANY INFORMATION CONCERNING THE PARTY OR 
APPLICATION ATTEMPTING TO PROVOKE  AN INTERFERENCE UNLESS AND UNTIL AN 
INTERFERENCE IS DECLARED. 35 U.S.C. 122. 

2308    Interference Between an Application and a Patent; Prima Facie 
Showing by Applicant 

37 CFR 1.608.     Interference between an application and a patent; prima 
facie  showing by applicant. 

(a)   When the earlier of the filing date or effective filing date of an 
application  is three months or less after the earlier of the filing date 
or effective filing  date of a patent, the applicant, before an 
interference will be declared, shall  file an affidavit alleging that 
there is a basis upon which applicant is entitled  to a judgment relative 
to the patentee. 

(b)   When the earlier of the filing date or the effective filing date of 
an  application is more than three months after the earlier of the filing 
date  or the effective filing date under 35 U.S.C. 120 of a patent, the 
applicant,  before an interference will be declared, shall file (1) 
evidence which may  consist of patents or printed publications, other 
documents, and one or more  affidavits which demonstrate that applicant is 
prima facie entitled to a judgment  relative to the patentee and (2) an 
explanation stating with particularity  the basis upon which the applicant 
is prima facie entitled to the judgment. 
 Where the basis upon which an applicant is entitled to judgment relative 
to  a patentee is priority of invention, the evidence shall include 
affidavits  by the applicant, if possible, and one or more corroborating 
witnesses, supported  by documentary evidence, if available, each setting 
out a factual description  of acts and circumstances performed or observed 
by the affiant, which collectively  would prima facie entitle the 
applicant to judgment on priority with respect  to the earlier of the 
filing date or effective filing date of the patent.  To facilitate 
preparation of a record (w 1.653 (g) and (h)) for final hearing,  an 
applicant should file affidavits on paper which is 8 1/2 x 11 inches (21.8 
 by 27.9 cm.).  The significance of any printed publication or other 
document  which is self-authenticating within the meaning of Rule 902 of 
the Federal  Rules of Evidence or w 1.671(d) and any patent shall be 
discussed in an affidavit  or the explanation. Any printed publication or 
other document which is not  self-authenticating shall be authenticated 
and discussed with particularity  in an affidavit.  Upon a showing of 
sufficient cause, an affidavit may be based  on information and belief. If 
an examiner finds an application to be in condition  for declaration of an 
interference, the examiner will consider the evidence  and explanation 
only to the extent of determining whether a basis upon which  the 
application would be entitled to a judgment relative to the patentee is 
alleged and, if a basis is alleged, an interference may be declared. 
Under 37 CFR 1.608, the PTO will continue the previous practice under 
deleted  37 CFR 1.204(c) of requiring an applicant seeking to provoke an 
interference  with a patent to submit evidence which demonstrates that the 
applicant is prima  facie entitled to a judgment relative to the patentee. 
 Evidence would be submitted  only when the earlier of the filing date or 
effective filing date of the application  is more than 3 months after the 
earlier of the filing date or effective filing  date under 35 U.S.C. 120 
of the patent.  The evidence may relate to patent-  ability and need not 
be restricted to priority. When the evidence (1) consists  of prior 
printed publications and patents and (2) shows that the claims of  the 
application are not patentable, the claims in the application would be 
rejected and the applicant could file a request for reexamination of the 
patent. 

2308.01       Patent Has Filing Date Earlier Than Application 



When an applicant attempts to provoke an interference with a patent, the 
examiner  must determine the effective filing dates of the application and 
of the patent;  only the patent's effective United States filing date will 
be considered. Any  claim of foreign priority by the patentee under 35 
U.S.C. 119 will not be taken  into account when determining whether or not 
an interference should be declared,  in order to be consistent with the 
holding in In re Hilmer, 359 F.2d 859, 149  USPQ 480 (CCPA 1966) to the 
effect that the effective date of a United States  patent as a reference 
is not effected by the foreign filing date to which the patentee is 
entitled under 35 U.S.C. 119.  If  the patentee is determined to be 
entitled to the benefit of a prior United  States application as to 
claimed subject matter involved in the interference,  that application 
must be listed on the PTO-850 form (see MPEP w 2309). 
If the effective date of the applicant is 3 months or less than that of 
the  patented application, the applicant must submit an affidavit or 
declaration  alleging that there is a basis  upon which applicant is 
entitled to a judgment  relative to the patentee, 37 CFR 1.608(a).  The 
affidavit or declaration may  be made by persons other than the applicant. 
 See MPEP w 715.04. 

If the effective filing date of the application is more than 3 months 
after  the effective filing date of the patent, 37 CFR 1.608(b) requires 
that the  applicant must file (1) evidence, such as patents, publications 
and other documents,  and one or more affidavits or declarations which 
demonstrate that applicant  is prima facie entitled to a judgment relative 
to the patentee, and (2) an  explanation stating with particularity the 
basis upon which the applicant is  prima facie entitled to the judgment. 

If an applicant is claiming the same invention as a patent which has an 
earlier  effective United States filing date but there is not a statutory 
bar against  the application, and the applicant has not submitted the 
items required by  37 CFR 1.608(a) and (b), as appropriate, the 
application should be rejected  under 35 U.S.C. 102(e)/103.  A statement 
should be included in the rejection  that the patent cannot be overcome by 
an affidavit or declaration under 37  CFR 1.131 but only through 
interference proceedings.  Note, however, 35 U.S.C.  135(b) and MPEP w 
2307.02.  The applicant should also be advised that an affidavit  under 37 
CFR 1.608(b) or evidence and an explanation under 37 CFR 1.608(b),  as 
appropriate, must 



be submitted and it should be stated, if applicable, that the patentee has 
 been accorded the benefit of an earlier U.S. application. 

If the applicant does not agree he or she is claiming the same invention 
as  the patent, and files an affidavit under 37 CFR 1.131, the rejection 
should  be repeated and made final. The rejection should specify what the 
count or  counts of the interference between the application and the 
patent would be.  If the applicant still disagrees with the examiner, the 
rejection may be appealed  to the Board of Patent Appeals and 
Interferences, and the question of whether  the application and the 
reference patent are claiming the same invention may  be argued on appeal, 
inasmuch as the 37 CFR 1.131 affidavit cannot be considered  unless the 
applicant is found to be claiming an invention which is patentably 
distinct from that claimed in the patent. See In re Hidy, 303 F.2d 954, 
133  USPQ 650 (CCPA 1962) and In re Clark, 457 F.2d 1004, 173 USPQ 359 
(CCPA 1972). 

2308.02       Showing Under 37 CFR 1.608(b) 


The showing under 37 CFR 1.608(b) must be such as to show that the 
applicant  is prima facie entitled to a judgment relative to the patentee. 
 Since 35 U.S.C.  135(a), as amended  by Public Law 98-622, now gives the 
Board jurisdiction  in an interference proceeding over questions of both 
priority and patentability,  the 37 CFR 1.608(b) showing need not attempt 
to show prior invention by the  applicant, but may instead demonstrate 
that the applicant would be entitled  to a judgment against the patentee 
on a ground of unpatentability (as, for  example, that the claims of the 
patent which will correspond to the count or  counts are unpatentable over 
prior art or prior public use, or that the patent  does not comply with 35 
U.S.C. 112). 

An applicant in preparing affidavits or declarations under 37 CFR 1.608(b) 
 to provoke an interference with a patentee whose effective U.S. filing 
date  antedates the applicant's by more than 3 months, should have in mind 
the provisions  of 37 CFR 1.617, and especially the following: 

1.  That after these affidavits or declarations are forwarded by the 
primary  examiner for the declaration of an interference, they will be 
examined by an  examiner-in-chief. 

2.  If the affidavits or declarations fail to establish that applicant 
would  prima facie be entitled to a judgment relative to the patentee, an 
order will  be issued concurrently with the notice of interference, 
requiring applicant  to show cause why summary judgment should not be 
entered against the applicant. 
3.  Additional evidence in response to such order will not be considered 
unless  justified by a showing under the provisions of 37 CFR 1.617(b). 
If the applicant  responds, the applicant must serve the patentee and any 
other opponents with  a copy of the original showing under 37 CFR 1.608(b) 
and of the response, and  they will be entitled to present their views 
with respect thereto (37 CFR 1.617(d)). 
4.  All affidavits or declarations submitted must describe acts which the 
affiants  performed or observed or circumstances observed, such as 
structure used and  results of use or test, except on a proper showing as 
provided in 37 CFR 1.608(b).  Statements of conclusion, for example, that 
the invention of the counts was  reduced to practice, are generally 
considered to be not acceptable.  It should  also be kept in mind that 
documentary exhibits which are not self-authenticated  must be 
authenticated and discussed with particularity by an affiant having 
direct knowledge of the matters involved.   However, it is not necessary 
that  the exact date of conception or reduction to practice be revealed in 
the affidavits,  declarations, or exhibits if the affidavits or 
declarations aver observation  of the necessary acts and facts, including 
documentation when available, before  the patentee's effective filing 
date.  On the other hand, where reliance is  placed upon diligence, the 
affidavits or declarations and documentation should  be precise as to 
dates from a date just prior to patentee's effective filing  date. The 
showing should relate to the essential factors in the determination  of 
the question of priority of invention as set out in 35 U.S.C. 102(g). 
5.  The explanation required by 37 CFR 1.608(b) should be in the nature of 
 a brief or explanatory remarks accompanying  an amendment, and should set 
forth  the manner in which the requirements of the counts are satisfied 
and how the  requirements for conception, reduction to practice, or 
diligence are met, or  otherwise explain the basis on which the applicant 
is prima facie entitled  to a judgment. 

6.  Published decisions of the Court of Customs and Patent Appeals and the 
 Board of Patent Interferences concerning the quantum of proof required by 
an  applicant to make out a prima facie showing entitling the applicant to 
an award  of priority with respect to the filing date of a patent so as to 
allow the  interference to proceed, 37 CFR 1.617(a), second sentence, 
include Kistler  v. Weber, 412 F.2d 280, 162 USPQ 214 (CCPA 1969); Schwab 
v. Pittman, 451 F.2d  637, 172 USPQ 69 (CCPA 1971); Murphy v. Eiseman, 166 
USPQ 149 (Bd. Pat. Int.  1970);  Golota v. Strom, 489 F.2d 1287, 180 USPQ 
396 (CCPA 1974); Horvitz v.  Pritchard, 182 USPQ 505 (Bd. Pat. Int. 1974); 
Azar v. Burns, 188 USPQ 601 (Bd.  Pat. Int. 1975) and Wetmore v. Quick, 
536 F. 2d 937, 190 USPQ 223 (CCPA 1976). 
As noted above, the evaluation of a showing under 37 CFR 1.608(b) is made 
by  an examiner-in-chief.  However, when a showing under 37 CFR 1.608(b) 
is filed,  the examiner must inspect it to determine whether the applicant 
is relying upon prior invention  or unpatentability as a basis for the 
showing. If the applicant alleges prior  invention, the examiner should 
merely determine that (1) at least one date  prior to the effective filing 
date of the patent is alleged and (2) the showing  contains at least one 
affidavit or declaration by a corroborating witness;  i.e., by someone 
other than a named inventor; if so, the examiner should proceed  to 
institute the interference as described in MPEP w 2309. If the showing is 
based on alleged unpatentability of the patent claim or claims, the 
examiner  should determine whether any ground of unpatentability alleged 
is such that  it would also apply to the applicant; for example, if the 
applicant alleges  that the claims of the patent are statutorily barred by 
a reference which would  also be a bar to the applicant.  If the examiner 
finds that an alleged ground  of unpatentability would also apply to the 
applicant, the interference should  not be declared and the applicant's 
claims which are drawn to the same invention  as the claims of the patent 
should be rejected on this admission of unpatentability,  without regard 
to the merits of the matter. Compare Ex parte Grall, 202 USPQ  701 (Bd. 
App. 1978).  Although the applicant may wish to contest the question  of 
whether the common invention is patentable to the patentee, an 
interference  cannot be declared unless the common invention is patentable 
to the applicant.  Hilborn v. Dann, 546 F.2d 401, 192 USPQ 132 (CCPA 
1976).  If the alleged unpatentability  is based on patents or printed 
publications, the applicant may still be able  to file a request for 
reexamination of the patent under 35 U.S.C. 302. 

2308.03       Patent Has Filing Date Later Than Application 


Although a patent which has an effective U.S. filing date later than the 
effective  filing date of an application is not prior art against that 
application, the  application should not be issued if the application and 
patent contain claims  to the same patentable invention.  In order to 
avoid the issuance of two patents  to the same patentable invention, the 
examiner should take steps to institute  an interference between the 
application and the patent. 

If the application contains at least one allowable claim drawn to the same 
 patentable invention as at least one patent claim, the examiner may 
initiate  the interference by proceeding as described in MPEP w 2305. 

If the application discloses, but does not claim, an invention claimed in 
the  patent, so that a patent could be granted to the applicant without an 
interference  proceeding, the patent should only be cited to the 
applicant.  The applicant  can then determine whether to present claims to 
provoke an interference with  the patent. 


2309    Preparation of Interference Papers by Examiner 


37 CFR 1.609.     Preparation of interference papers by examiner. 
When the examiner determines that an interference should be declared, the 
examiner  shall forward to the Board: 

(a)   All relevant application and patent files and 

(b)   A statement identifying: 

(1)   The proposed count or counts; 

(2)   The claims of any application or patent which correspond to each 
count,  stating whether the claims correspond exactly or substantially to 
each count; 
(3)   The claims in any application which are deemed by the examiner to be 
 patentable over any count; and 

(4)   Whether an applicant or patentee is entitled to the benefit of the 
filing  date of an earlier application and, if so, sufficient information 
to identify  the earlier application. 

37 CFR 1.609 sets forth what an examiner shall forward to the Board when 
an  interference is declared.  For the most part, 37 CFR 1.609 continues 
previous  practice.  However, under 37 CFR 1.609(b)(3), the examiner must 
identify all  claims of an application which the examiner believes are 
patentable over the  proposed counts.  Thus, a claim in an application 
will either correspond to  a count or will be indicated as being 
patentable over the count.  For instance,  in example 3, MPEP w 2309.01, 
the examiner must indicate that (1) claims 1  and 2 of application E and 
claims 11 and 12 of application F correspond to  the count and (2) claim 3 
of application E defines a separate patentable invention  from the count. 


2309.01       Formulation of Counts 


Before preparing the "Interference-Initial Memorandum" (Form PTO-850), the 
 examiner must determine precisely what the count or counts of the 
interference  will be.  Unlike previous practice, under the revised rules 
(37 CFR 1.601 -  1.688) the question of whether the interference involves 
a patent is essentially  irrelevant to the formation of the counts. 

In formulating the count or counts, the examiner must decide two 
interrelated  questions: (1) how many counts will there be, and (2) what 
will the scope of  each count be.  The following principles should be kept 
in mind: 

1.  Each count must be drawn to a separate patentable invention, that is 
to  say, the invention defined in each count must not be the same as, or 
obvious  over, the invention defined in any other count.  However, a count 
may properly  be included if it is unobvious over another count, even 
though the reverse  might not be true. For example, a count to a species 
and a count to a genus  might properly both be included in the 
interference if the species is patentable  over the genus, even though the 
genus might not be patentable, given the species. 


It is expected that most interferences will involve only one count or a 
very  small number of counts, in view of the requirement of separate 
patentability. 
2.  A count should normally be sufficiently broad as to encompass the 
broadest  corresponding patentable claim of each of the parties.  However, 
a situation  may arise where the examiner considers that an applicant's 
corresponding claim  includes not only the common invention, but also 
another invention; in that  case, the count should be limited to the 
common invention, and may be narrower  than the corresponding claim which 
recites the additional invention.  Note  that 37 CFR 1.606 provides that a 
count may not initially be narrower in scope  than any patent claim which 
corresponds to it; this does not preclude later  substitution of a count 
which is narrower than the patent claim, as a result  of a preliminary 
motion under 37 CFR 1.633(c). 

3.  A count may not be so broad as to be unpatentable over the prior art. 
If  a count cannot be made sufficiently broad in scope as to embrace the 
broadest  corresponding patentable claims of the parties without being 
unpatentable,  that would indicate either that the parties' corresponding 
claims are unpatentable  or perhaps, if the parties' claims do not 
overlap, that they are drawn to two  separately patentable inventions and 
there is no interference in fact between  them. 

The following examples illustrate how counts should be formulated. An 
examiner-in-chief  should be consulted in unusual situations which do not 
fit any of the examples. 
Example 1: Application A contains patentable claim 1 (engine). Application 
 B contains patentable claim 8  (engine). If an interference is declared, 
there  will be one count (engine). Claim 1 of application A and claim 8 of 
application  B would be designated to correspond to the count. 

Example 2: Application C contains patentable claim 1 (engine) and 2 
(6-cylinder  engine). Application D contains patentable claim 8 (engine). 
An engine and  a 6-cylinder engine define the same patentable invention. 
If an interference  is declared, there will be one count (engine). Claims 
1 and 2 of application  C and claim 8 of application D would be designated 
to correspond to the count. 
Example 3: Application E contains patentable claims 1 (engine), 2 
(6-cylinder  engine) and 3 (engine with a platinum piston). Application F 
contains patentable  claims 11 (engine) and 12 (8-cylinder engine). Claims 
1 and 2 of application  E and claims 11 and 12 of application F define the 
same patentable invention.  Claim 3 of application E defines a patentable 
invention from claims 1 and 2  of application E and claims 11 and 12 of 
application F. If an interference  is declared, there will be one count 
(engine). Claims 1 and 2 of application  E and claims 11 and 12 of 
application F would be designated to correspond to  the count. Claim 3 of 
application E would not be designated to correspond to  the count. 

Example 4: Application G contains patentable claim 1 (engine), 2 
(6-cylinder  engine) and 3 (engine with a platinum piston). Application H 
contains patentable  claims 11 (engine) and 15 (engine with a platinum 
piston). Claims 1 and 2 of  application G and claim 11 of application H 
define the same patentable invention.  Claim 3 of application G and claim 
15 of application H define a patentable  invention from claims 1 and 2 of 
application G and claims 11 of application  H. If an interference is 
declared, there will be two counts: Count 1 (engine)  and count 2 (engine 
with a platinum piston). Claims 1 and 2 of application  G and claim 11 of 
application H would be designated to correspond to the Count  1. Claim 3 
of application G and claim 15 of application H would be designated  to 
correspond to Count 2. 

Example 5: Application J contains patentable claim 1 (engine), 2 
(combination  of an engine and a carburetor) and 3 (combination of an 
engine, a carburetor,  and a catalytic converter). Application K contains 
patentable claims 31 (engine),  32 (combination of an engine and a 
carburetor), and 33 (combination of an engine,  a carburetor, and an air 
filter). The engine, com- bination of an engine and  carburetor, and 
combination of an engine, carburetor, and air filter define  the same 
patentable invention. The combination of an engine, carburetor, and 
catalytic convertor define a separate patentable invention from the 
engine.  If an interference is declared, there will be one count (engine). 
Claims 1  and 2 of application J and claims 31, 32 and 33 of application K 
would be designated  to correspond to the Count. Claim 3 of application J 
would not be designated  as corresponding to the count. 

Example 6:  The PTO will continue to follow Weldeck v. Lewis, 120 USPQ 88 
(Comm'r  Pat. 1955). Application L contains patentable claims 1 (Markush 
group of benzene  or toluene), 2  (benzene), and 3 (toluene). Application 
M contains patentable  claims 11 (benzene). Benzene and toluene define the 
same patentable invention.  If an interference is declared, there will be 
one count (Markush group of benzene  or toluene). Claims 1, 2 and 3 of 
application L and claim 11 of application  M would be designated to 
correspond to the count. 

Example 7: Application N contains patentable claim 1 (benzene). 
Application  P contains patentable claim 11 (xylene). benzene and xylene 
define the same  patentable invention. If an interference is declared, 
there will be one count 
(benzene or xylene). Claim 1 of application N and claim 11 of application 
P  would be designated to correspond to the count. 

Example 8: Application Q contains patentable claims 1 (Markush group of 
benzene  or chloroform), 2  (benzene), and 3 (chloroform). Application R 
contains patentable  claims 33 (benzene). If benzene and chloroform define 
the same patentable invention  and an interference is declared, there will 
be one count (Markush group of  benzene or chloroform). Claims 1, 2 and 3 
of application Q and claim 33 of  application R would be designated to 
correspond to the count. If chloroform  defines a separate patentable 
invention from benzene and an interference is  declared, there will be one 
count (benzene). Claims 1 and 2 of application  Q and claim 33 of 
application R would be designated to correspond to the count.  Claim 3 of 
application Q would not be  designated to correspond to the count. 
Example 9: Application S contains patentable claims 1 (Markush group of 
benzene  or chloroform), 2  (benzene), and 3 (chloroform). Application T 
contains patentable  claims 11 (Markush group of benzene or chloroform), 
12 (benzene), and 13 (chloroform).  If benzene and chloroform define the 
same patentable invention and an interference  is declared, there will be 
one count (Markush group of benzene or chloroform).  Claims 1, 2 and 3 of 
application S and claims 11, 12 and 13 of application  T would be 
designated to correspond to the count. The PTO will continue to  adhere to 
Becker v. Patrick, 47 USPQ 314 (Comm'r. Pat. 1939). An interference  can 
have two counts only if one count defines a separate patentable invention 
from another count. If chloroform defines a separate patentable invention 
from  benzene and an interference is declared, there will be two counts: 
Count 1 
(benzene) and Count 2 (chloroform). Claims 1 and 2 of application S and 
claims  11 and 12 of application T would be designated to correspond to 
Count 1. Claims  1 and 3 of application S and claims 11 and 13 of 
application T would be designated  to correspond to Count 2. 

Example 10: Patent A contains claim 1 (engine). Application U contains 
patentable  claim 11 (engine). If an interference is declared, there will 
be one count 
(engine). Claim 1 of patent A and claim 11 of application U would be 
designated  to correspond to the count. 



Example 11:  Patent B contains claims 1 (engine) and 2 (6-cylinder 
engine).  Application V contains patentable claim 8 (engine). An engine 
and a  6-cylinder  engine define the same patentable invention. If an 
interference is declared,  there will be one count (engine). Claims 1 and 
2 of patent B and claim 8 of  application V would be designated to 
correspond to the count. 

Example 12:  Patent C contains claims 1 (engine), 2 (6-cylinder engine), 
and  3 (engine with a platinum piston). Application W contains patentable 
claims  11 (engine) and 12 (8-cylinder engine). Claims 1 and 2 of patent C 
and claims  11 and 12 of application W define the same patentable 
invention. Claim 3 of  patent C defines a separate patentable invention 
from claims 1 and 2 of patent  C and claims 11 and 12 of application W. If 
an interference is declared, there  will be one count (engine). Claims 1 
and 2 of patent C and claims 11 and 12  of application W would be 
designated to correspond to the count. Claim 3 of  patent C would not be 
designated to correspond to the count. 

Example 13: Patent D contains claims 1 (engine), 2 (6-cylinder engine), 
and  3 (engine with a platinum piston). Application X contains patentable 
claims  11 (engine) and 15 (engine with a platinum piston ). Claims 1 and 
2 of patent  D and claim 11 of application X define the same patentable 
invention. Claim  3 of patent D and claim 15 of application X define a 
separate patentable invention  from claims 1 and 2 of patent D and claims 
11 and 12 of application X. If an  interference is declared, there will be 
two counts. Count 1 (engine) and Count  2 (engine with a platinum piston). 
Claims  1 and 2 of patent D and claim 11  of application X would be 
designated to correspond to Count 1. Claim 3 of patent  D and claim 15 of 
application X would be designated to correspond to Count  2. 

Example 14:  Patent E contains claim 1 (Markush group of benzene or 
toluene),  2 (benzene), and 3 (toluene). Application Y contains patentable 
claim 11 (benzene).  Benzene and toluene define the same patentable 
invention. If an interference  is declared, there will be one count 
(Markush group of benzene or toluene).  Claims 1, 2 and 3 of patent E and 
claim 11 of application Y would be designated  to correspond to the count. 

Example 15:  In this example, the claims of patent E and application Y of 
example  14 are reversed. Patent E contains claim 1 (benzene). Application 
Y contains  patentable claim 11 (Markush group of benzene or toluene), 12 
(benzene), and  13 (toluene). If an interference is declared, the count 
will be the same as  the count in Example 14 - (Markush group of benzene 
or toluene). Claim 1 of  patent E and claims 11, 12 and 13 of application 
Y would be designated to correspond  to the count. 

Example 16: The PTO will continue to follow cases such as Case v. CPC 
International  Inc., 730 F.2d 745, 221 USPQ 196 (Fed. Cir. 1984), cert. 
denied, 105 S. Ct.  233, 224 USPQ 736 (1984); Aelony v. Arni, 547 F.2d 
566, 192 USPQ 486 (CCPA  1977); and Notz v. Ehrenreich, 537 F.2d 539, 190 
USPQ 413 (CCPA 1976), and  declare interferences where interfering patent 
and application claims are mutually  exclusive provided the claims define 
the same patentable invention. Patent  F contains claim 1 (benzene). 
Application Z contains patentable claim 11 (xylene).  Benzene and xylene 
define the same patentable invention. If an interference  is declared, 
there will be one count (benzene or xylene). Claim 1 of patent  F and 
claim 11 of application Z would be designated to correspond to the count. 
Example 17:  It will be the practice of the PTO under 37 CFR 1.606 to 
initially  declare interferences with counts which are identical to or 
broader than patent  claims which correspond to the counts. A single 
patent claim will be presumed,  subject to a motion under 37 CFR 1.633(c), 
not to define separate patentable  inventions. Patent G contains claims 1 
(Markush group of benzene and chloroform),  2 (benzene), and 3 
(chloroform). Application AA contains patentable claim 33 
(benzene). If an interference is declared, initially it will be presumed 
by  the PTO, subject to a later motion under 37 CFR 1.633(c), that benzene 
and  chloroform define the same patentable invention. 

There will  be one count (Markush group of benzene or chloroform). Claims 
1,  2 and 3 of patent G and claim 33 of application AA would be designated 
to correspond  to the count. If a party believes benzene and chloroform 
define separate patentable  inventions, that party could file a motion 
under 37 CFR 1.633(c) to redefine  the count and the claims corresponding 
to the counts. 

Example 18: Patent H contains claims 1 (Markush group of  benzene and 
chloroform),  2 (benzene), and 3 (chloroform). Application AB contains 
patentable claims  11 (Markush group of benzene and chloroform), 12 
(benzene) and 13 (chloroform).  Benzene and chloroform initially would be 
presumed, subject to a motion under  37 CFR 1.633(c), to define the same 
patentable invention, because they were  recited as a Markush group in a 
single patent claim. If an interference is  declared, there will  be one 
count (Markush group of benzene or chloroform).  Claims 1, 2 and 3 of 
patent H and 

claims 11, 12 and 13 of application AB would be designated to correspond 
to  the count. If a party believes benzene and chloroform define separate 
patentable  inventions, the party could move under 37 CFR 1.633(c) to 
substitute a count 
(benzene) for (Markush group of benzene or chloroform) and to add a count 
(chloroform). 
Example 19: Under 37 CFR 1.606, the PTO will continue to follow the 
practice  announced in Ex parte Card and Card, 1904 C.D. 383 (Comm r. 
Pat.). Patent J  contains claim 1 (method of mixing, grinding, and 
heating). 

Application AC contains patentable claim 8 (method of mixing and heating) 
and  does not disclose or claim a grinding step. In the context of the 
inventions  disclosed in patent J and application AC, a method of mixing, 
grinding, and  heating is the same patentable invention as a method of 
mixing and heating.  Under current practice, it would be said that 
"grinding" is an "immaterial" 
 limitation in claim 1 of patent J. Under 37 CFR 1.606, the fact 
application  AC does not disclose grinding would not preclude an 
interference. If an interference  is declared, there will be one count 
(method of mixing and heating). Claim  1 of patent J and claim 8 of 
application AC would be designated to correspond  to the count. 

Example 20:  The facts in this example are the same as Example 18. Assume 
that  applicant AB believes that benzene and chloroform define separate 
patentable  inventions. Applicant AB would file a motion under 37 CFR 
1.633(c)(1) to substitute  Count 2 (benzene) for Count 1 (Markush group of 
benzene or chloroform) and  add Count 3 (chloroform). If the 
examiner-in-chief grants the motion, the interference  would be redeclared 
by deleting Count 1 and substituting in its place Counts  2 and 3. Claims 
1 and 2 of the patent H and claims 11 and 12 of application  AB will be 
designated to correspond to Count 2. Claims 1 and 3 of patent H  and 
claims 11 and 12 of application AB will be designated to correspond to 
Count 3. If one party proves priority with respect to both benzene and 
chloroform,  that party would be entitled to all claims in its application 
or patent corresponding  to Counts 2 and 3. The other party would not be 
entitled to a patent containing  any claim corresponding to Counts 2 and 
3. If patentee H proves priority with  respect to benzene and applicant AB 
proves priority with respect to chloroform 
(assuming there was no issue raised at final hearing with respect to the 
patentable  distinctness of benzene and chloroform), the judgment will 
provide that patentee  H is not entitled to a patent with claims 1 and 3, 
but is entitled to a patent  with claim 2 and that applicant AB is not 
entitled to a patent with claims  11 and 12, but is entitled to a patent 
with claim 13. If an issue is properly  raised at final hearing as to 
whether benzene and chloroform are the same patentable  invention and the 
Board holds that they are the same patentable invention,  the party 
proving the earliest priority as to either benzene or chloroform  would 
prevail as to all claims. Thus, if patentee H invented benzene before 
applicant AB invented benzene or chloroform, patentee H would be entitled 
to  a patent containing claims 1 through 3 even if applicant AB invented 
chloroform  before patentee H invented chloroform. Applicant AB would not 
be entitled to  a patent with claims 11 through 13. 




2309.02       Preparation of Papers - Initial Memorandum 



The only paper prepared by the examiner is the Initial Memorandum (Form 
PTO-850)  addressed to the Board which provides authorization for 
preparation of the  declaration notices. The later papers are prepared in 
the Service Branch of  the Board. 

A sample of a filled-out Form PTO-850 is shown below. 

A separate form is used for each count of the interference. The form  need 
 not be typed unless the count is not identical to any claim of any of the 
parties.  If the count is identical to a claim of one of the parties, the 
number of  that claim is circled. If the count is not identical to any 
claim of any of  the parties, the count should be typed in the space 
provided on the form (an  additional plain sheet may be attached if needed). 

The files to be included in the interference should be listed by last name 
(of the first listed inventor if application is joint), serial number and 
filing  date irrespective of whether an application or a patent is 
involved. 
The sequence of the listed applications is completely immaterial.  If the 
examiner  has determined that a party is entitled to the benefit of the 
filing date of  one or more applications (or patents) as to the counts, 
the blanks provided  on the form for indicating this fact should be filled 
in as to all such applications.  It is particularly important to list all 
intermediate applications necessary  to provide continuity of pendency to 
the earliest benefit application to which  a party is entitled. 

An applicant will be accorded the benefit of a foreign application on the 
Form  PTO-850 and the declaration notices only if the papers required by 
37 CFR 1.55,  including a sworn translation, have been filed and the 
primary examiner has  determined that the applicant is in fact entitled to 
the benefit of such application.  A patentee may be accorded the benefit 
of the filing date of a foreign application  in the notice of interference 
provided he or she has complied with the requirements  of 37 CFR 1.55, has 
filed a sworn translation, and the primary examiner has  determined that 
at least one species within the count involved in the interference  is 
supported by the disclosure of the foreign application. Note, however, 
that  a patentee should not be  accorded the benefit of a foreign 
application if  an application in the interference has an effective filing 
date subsequent  to the filing date of the foreign application. See MPEP w 
2308.01. 
The claims in each party's case which correspond and do not correspond to 
the  count must be listed in the spaces provided on the form.  A claim 
corresponds  to a count if, considering the count as prior art, the claim 
would be unpatentable  over the count under 35 U.S.C. 102 or 103.  If the 
examiner is in doubt as  to whether a party's claim does or does not 
correspond to a count, it should  be listed as corresponding to the count. 
 If the party disagrees with this  listing, a motion may be filed under 37 
CFR 1.633(c)(4) during the interference  to designate the claim as not 
corresponding to the count. 

Note that for each count, every claim in a party's application or patent 
must  be designated as either corresponding or not corresponding to the 
count.  The  fact that a claim may be under rejection does not mean that 
it should not be  designated. For every claim of an application which is 
listed on the form,  the examiner must indicate whether or not that claim 
is allowable by writing  ``(allowable)" or  ``(not allowable)"  next to 
the claim number(s).  At least  one of the claims designated as 
corresponding to the count must be allowable. 
If an involved case contains multiple dependent claims, the examiner 
should  be careful to indicate which embodiments of each multiple 
dependent claim correspond  or do not correspond to each count.  An 
embodiment of a multiple dependent  claim should not be circled on form 
PTO-850 as being the count, but rather,  the embodiment should be written 
out in independent form in the space provided. 
After Form PTO-850 is filled out for each count of the proposed 
interference,  it must be signed by the primary examiner in the space 
provided.  The form  must also be signed by the group director, if the 
director's approval is required 
(as when the interference involves two applications whose effective filing 
 dates are more than 6 months apart). 

When the form or forms are signed, they are forwarded to the Board 
together  with file of each U.S. application or patent listed on the 
form(s), including  all applications or patents of which benefit is being 
claimed. 

If two of the parties have the same attorney or agent, the examiner will 
in  a separate memorandum call the attention of the Board to that fact 
when the  Initial Memorandum is forwarded.  The examiner-in-chief, when 
the interference  is declared, can then take such action as may be 
appropriate under 37 CFR 1.613(b). 


A23090201.bmp 



A23090201.end 




2309.03       Affidavits and Declarations Retained in File 


When there are of record in the file of the application affidavits or 
declarations  under 37 CFR 1.131 or 1.608, they should not be sealed but 
should be left in  the file for consideration by the Board.  If the 
interference proceeds normally,  these affidavits or declarations will be 
removed and sealed up by the Service  Branch of the Board and retained 
with the interference. 

Affidavits and declarations under 37 CFR 1.131 and 1.608 are available for 
 inspection by an opposing party to an interference after the preliminary 
motions  under 37 CFR 1.633 are decided.  See 37 CFR 1.612(b). 

Affidavits or declarations in the file of a patent are not removed, 
inasmuch  as they are available to the public since the date the patent 
issued. 

2309.04       Record in Each Interference Complete 


When there are two or more related interferences pending in the Patent and 
 Trademark Office, in order that the record of the proceedings in each 
particular  interference may be separate and distinct, all motions and 
papers sought to  be filed therein must be titled in and relate only to 
the particular interference  to which they belong, and no motion or paper 
can be filed in any interference  which relates to, or in which is joined, 
another interference or matter affecting  another interference. 


2309.05       Consultation With Examiner-in-Chief 


The examiner should consult with one of the examiners-in-chief in any case 
 of doubt or where the practice appears to be obscure or confused.  In 
view  of their specialized experience they may be able to suggest a course 
of action  which will avoid considerable difficulty in the future 
treatment of the case. 

2309.06       Interfering Subject Matter in "Secrecy Order" Cases 

37 CFR 5.3.   Prosecution of application under secrecy order; withholding 
patent. 
***** 

(b)   An interference will not be declared involving national applications 
 under secrecy order. However, if an applicant whose application under 
secrecy  order copies claims from an issued patent, a notice of that fact 
will be placed  in the file wrapper of the patent. (See w 1.205(c)). 

Since declaration of an interference gives immediate access to 
applications  by opposing parties, no interference will be declared 
involving an application  which has a security status therein (see MPEP ww 
107 and 107.02).  Claims will  be suggested so that all parties will be 
claiming substantially identical subject  matter. When all applications 
contain the claims suggested, the following letter  will be sent to all 
parties: 

"Claims 1, 2, etc. (including the conflicting claims and claims not 
patentable  over the application under security status) conflict with 
those of another  application. However, the security status (of the other 
application/of your  application) does not permit the declaration of an 
interference. Accordingly,  action on the application is suspended for so 
long as this situation continues. 
"Upon removal of the security status from all applications, an 
interference  will be declared." 

The letter should also indicate the allowability of the remaining claims, 
if  any. 

A notice that claims have been presented in a "security type" application 
for  the purpose of interference with a patent should be placed in the 
patented  file.  Also, in accordance with 37 CFR 1.607(d), the patentee 
should be notified.  The question of an interference is taken up upon 
termination of the "security  status" of the application in which patent 
claims are presented. The suggested  notices should be modified accordingly. 

The notices should be signed by the primary examiner. The copy of the 
notice  retained separately in the examining group should, in addition, 
contain the  identification of the applications and patents involved and 
the interfering  claims. 


2310    Handling by Examiner-in-Chief 


37 CFR 1.610.     Assignment of interference to examiner-in-chief, time 
period  for completing interference. 

(a)   Each interference will be declared by an examiner-in-chief who may 
enter  all interlocutory orders in the interference, except that only a 
panel consisting  of at least three members of the Board shall (1) hear 
oral argument at final  hearing, (2) enter a decision under ww 1.617, 
1.640(c) or (e), 1.652, 1.656(i)  or 1.658 or (3) enter any other order 
which terminates the interference. 
(b)   As necessary, another examiner-in-chief may act in place of the one 
who  declared the interference. Unless otherwise provided in this section, 
at the  discretion of the examiner-in-chief assigned to the interference, 
a panel consisting  of two or more members of the Board may enter 
interlocutory orders. 
(c)   Unless otherwise provided in this subpart, times for taking action 
by  a party in the interference will be set on a case-by-case basis by the 
examiner-in-chief  assigned to the interference. Times for taking action 
shall be set and the  examiner-in-chief shall exercise control over the 
interference such that the  pendency of the interference before the Board 
does not normally exceed two  years. 



(d)   An examiner-in-chief may hold a conference with the parties to 
consider: 
(1) Simplification of any issues, (2) the necessity or desirability of 
amendments  to counts, (3) the possibility of obtaining admissions of fact 
and genuineness  of documents which will avoid unnecessary proof, (4) any 
limitations on the  number of expert witnesses, (5) the time and place for 
conducting a deposition 
(w 1.673(g)), and (6) any other matter as may aid in the disposition of 
the  interference. After a conference, the examiner-in-chief may enter any 
order  which may be appropriate. 

(e)   The examiner-in-chief may determine a proper course of conduct in an 
 interference for any situation not specifically covered by this part. 
Under 37 CFR 1.610, each interference will be declared by an 
examiner-in-chief.  The examiner-in-chief enters all interlocutory orders 
in the interference.  As necessary, another examiner-in-chief may act in 
place of the examiner-in-chief  assigned to the interference. At the 
discretion of the examiner-in-chief assigned  to the interference, a panel 
of two or more examiners-in-chief may enter an  interlocutory order. The 
examiner-in-chief will set times and control proceedings  such that 
pendency of the interference normally will not exceed 24 months.  Under 37 
CFR 1.610(d), the examiner-in-chief is authorized to hold conferences. 
Any conference can be by a telephone conference call. Under 37 CFR 
1.610(e),  an examiner-in-chief is authorized to determine a proper course 
of conduct  for any situation not specifically covered by the rules. 


2311    Declaration of Interference 


37 CFR 1.611.     Declaration of interference. 

(a)   Notice of declaration of an interference will be sent to each party. 
(b)   When a notice of declaration is returned to the Patent and Trademark 
 Office undelivered, or in any other circumstance where appropriate, an 
examiner-in-chief  may (1) send a copy of the notice to a patentee named 
in a patent involved  in an interference or the patentee`s assignee of 
record in the Patent and Trademark  Office or (2) order publication of an 
appropriate notice in the Official Gazette. 
(c)   The notice of declaration shall specify: 

(1)   The name and residence of each party involved in the interference. 
(2)   The name and address of record of any attorney or agent of record in 
 any application or patent involved in the interference; 

(3)   The name of any assignee of record in the Patent and Trademark 
Office; 
(4)   The identity of any application or patent involved in the 
interference; 
(5)   Where a party is accorded the benefit of the filing date of an 
earlier  application, the identity of the earlier application; 

(6)   The count or counts; 

(7)   The claim or claims of any application or any patent which 
correspond  to each count; and 

(8)   The order of the parties. 

        d)  The notice of declaration may also specify the time for: (1) 
Filing  a preliminary statement as provided in w 1.621(a); (2) serving 
notice that  a preliminary statement has been filed as provided in w 
1.621(b); and (3) filing  preliminary motions authorized by w 1.633, 
oppositions to the motions, and  replies to the oppositions. 

(e)   Notice may be given in the Official Gazette that an interference has 
 been declared involving a patent. 

Upon receipt of the Interference Initial Memorandum (Form PTO-850) and the 
 case files from the primary examiner, the interference is assigned to an 
examiner-in-chief,  who is thereafter responsible for handling it during 
its pendency before the  PTO. Under the revised rules, the 
examiner-in-chief has wide discretion as  to what actions he or she may 
take, particularly with regard to the setting  of times, and in studying 
the rules it will be noted that many of their provisions  are modified by 
a qualification such as "unless otherwise ordered by an 
examiner-in-chief."  Therefore, it may well be that different 
examiners-in-chief will follow somewhat  different procedures in the 
interferences assigned to them. 

PREPARATION OF DECLARATION NOTICE 

The papers necessary in declaring an interference are prepared at the 
Board.  The notices to the parties and the declaration sheet are signed by 
the examiner-in-chief,  who declares the interference by mailing the 
notices to the several parties  to the proceeding. Thereafter the 
applications and interference files are kept  at the Board where they are 
also recorded in a card index. 

The fact that an application that has been made special by the 
Commissioner  becomes involved in an interference does not entitle that 
interference to be  taken up out of turn, Strickland v. Glazer, 214 USPQ 
549 (Comm'r Par. 1980).  The parties may expedite the proceeding by taking 
action promptly when times  are set, and by requesting that certain time 
periods be reduced or eliminated. 
Under 37 CFR 1.611(a), the PTO will normally notify each party at its 
correspondence  address (37 CFR 1.33(a)) that an interference is declared. 

Under 37 CFR 1.611(a), the PTO could, in appropriate circumstance, also 
send  a notice to a patentee or an assignee.  An appropriate circumstance 
for sending  an additional notice would be a situation where a patent was 
issued on the  basis of an application filed under 37 CFR 1.47.  The 
matters to be specified  in a notice declaring an interference are set out 
in 37 CFR 1.611(c).  One  item to be set out is the "order of the 
parties," meaning the order in which  the parties will take testimony. The 
"order of the parties" is a procedural  tool.  It indicates the "style" of 
the case__which practitioners are encouraged  to use. If there are two 
counts and one party is "senior"  as to one count  and "junior" as to 
another count, the party has the burden of proof as to that  count to 
which the party is "junior."  See 37 CFR 1.657.  Appropriate testimony 
periods will be set (37 CFR 1.651(b)) to accommodate differing burdens of 
proof  in cases where a party is "senior" on one count and "junior" on 
another count. 


If Jones is the junior party and Smith is the senior party, the order of 
the  parties is: Jones v. Smith. The order of the parties may change as a 
result  of the granting of a motion under 37 CFR 1.633(d), (f), or (g). 
Under 37 CFR  1.611(d), the notice declaring the interference may also set 
dates for filing  preliminary statements, notices that preliminary 
statements have been filed,  motions under 37 CFR 1.633, oppositions to 
those motions, and replies to the  oppositions. 

In setting the times for filing preliminary statements and preliminary 
motions,  the examiner-in-chief may follow different procedures.  Some may 
hold a telephone  conference with the lead attorneys to work out times 
acceptable to all parties,  while others may specify times in the 
declaration notices and state that those  times will be final unless a 
lead attorney requests by a certain date that  they be changed. In either 
event, the times, once finally set, will not be  changed except for good 
cause shown.  Any motion to extend time must reach  the examiner-in-chief 
before expiration of the time period to be extended,  and may not be 
granted even if it is unopposed. Note that 37 CFR 1.645 specifically 
provides that "The press of other business arising after an 
examiner-in-chief  sets a time for taking action will not normally 
constitute good cause." 
Once an interference is declared involving an application, ex parte 
prosecution  of the application is suspended, and the applicant need not 
respond to any  PTO action outstanding as of the date the interference is 
declared. 

2312    Access to Applications in Interference 


37 CFR 1.612.     Access to applications. 

(a)     After an interference is declared, each party shall have access to 
 and may obtain copies of the files of any application set out in the 
notice  declaring the interference, except for affidavits filed under w 
1.131 and any  evidence and explanation under w 1.608 filed separate from 
an amendment. A  party seeking access to any abandoned or pending 
application referred to in  the opposing party's  involved application or 
access to any pending application  referred to in the opposing party's 
patent must file a motion under w 1.635. 
(b)   After preliminary motions under w 1.633 are decided (w 1.640(b)), 
each  party shall have access to and may obtain copies of any affidavit 
filed under  w 1.131 and any evidence and explanation filed under w 1.608 
in any application  set out in the notice declaring the interference. 

(c)   Any evidence and explanation filed under w 1.608 in the file of any 
application  identified in the notice declaring the interference shall be 
served when required  by w 1.617(b). 

(d)   The parties at any time may agree to exchange copies of papers in 
the  files of any application identified in the notice declaring the 
interference. 
Request for Access by Interference Party 

37 CFR 1.612(a) requires an interference party seeking access either to a 
pending  or abandoned application referred to in an opposing party's 
involved application  or to a pending application referred to in an 
opposing party's involved patent,  to file a motion under 37 CFR 1.635. 
Such a motion is decided by an examiner-in-chief 
(37 CFR 1.640(b)). 

A party seeking access to file a motion under 37 CFR 1.635 must first 
confer  with the opposing party in an effort to resolve the issue of 
access as required  by 37 CFR 1.637(b). The examiner-in-chief will not 
decide the issue unless  it cannot be resolved by the parties. 

Under 37 CFR 1.612, except for affidavits under 37 CFR 1.131 and any 
evidence  and explanation under 37 CFR 1.608(b) filed separate from an 
amendment, each  party has access to the file of every other party after 
an interference is  declared. The files of applications and patents 
involved in an interference  are maintained in the Service Branch of the 
Board  for inspection and copying.  Any explanation which is filed as part 
of an amendment or an amendment which  discusses details contained in an 
affidavit under 37 CFR 1.131 is not to be  sealed under 37 CFR 1.612(a). 
Thus, 37 CFR 1.612(a) continues the practice  discussed in Moorman v. 
Martin, 103 USPQ 273 (Comm'r Pat. 1950) and Calvert,  An Overview of 
Interference Practice, 62 J. Pat. Off. Soc'y. 209, 293  (1980).  Under 37 
CFR 1.612(b), each party has access to an opponent's affidavit under  37 
CFR 1.131 or an opponent's evidence and explanation under 37 CFR 1.608(b) 
when a decision is rendered on motions under 37 CFR 1.633.  Under 37 CFR 
1.612(c),  a party is required to serve any evidence and explanation under 
37 CFR 1.608(b)  if an order to show cause is issued under 37 CFR 1.617(a) 
and the party responds  to the order under 37 CFR 1.617(b).  Under 37  CFR 
1.612(d), the parties may  agree to exchange copies of their respective files. 


2313    Lead Attorney or Agent 


37 CFR 1.613.     Lead attorney, same attorney representing different 
parties  in an interference, withdrawal of attorney or agent. 

(a)   Each party may be required to designate one attorney or agent of 
record  as the lead attorney or agent. 

(b)   The same attorney or agent or members of the same firm of attorneys 
or  agents may not represent two or more parties in an interference except 
as may  be permitted under this Chapter. 

(c)   An examiner-in-chief may make necessary inquiry to determine whether 
 an attorney or agent should be disqualified from representing a party in 
an  interference. If an examiner-in-chief is of the opinion that an 
attorneyor  agent should be disqualified, the examiner-in-chief shall 
refer the matter  to the Commissioner. The Commissioner will make a final 
decision as to whether  any attorney or agent should be disqualified. 

(d)   No attorney or agent of record in an interference may withdraw as 
attorney  or agent of record except with the approval of an 
examiner-in-chief and after  reasonable notice to the party on whose 
behalf the attorney or agent has appeared.  A request to withdraw as 
attorney or agent of record in an interference shall  be made by motion (w 
1.635). 



Under 37 CFR 1.613(a), when a party has appointed more than one attorney 
or  agent of record, the party may be required to designate a "lead" 
attorney or  agent. A "lead" attorney or agent is a registered attorney or 
agent of record  who is primarily responsible for prosecuting an 
interference on behalf of a  party and is the individual whom an 
examiner-in-chief can contact to set times  and take other action in the 
interference. 37 CFR 1.613(b) continues the practice  of not permitting 
the same attorney or agent to represent two or more parties  in an 
interference except as permitted by Chapter 1; see, for example, 37 CFR 
1.344. Under 37 CFR 1.613(c), an examiner-in-chief can make an appropriate 
 inquiry to determine whether an attorney or agent should be disqualified 
from  representing a party. A final decision to disqualify an attorney or 
agent is  made by the Commissioner under 35 U.S.C. 32. 


2314    Jurisdiction Over Interference 


37 CFR 1.614.     Jurisdiction over interference. 

(a)   The Board shall assume jurisdiction over an interference when the 
interference  is declared under w 1.611. 

(b)   When the interference is declared the interference is a contested 
case  within the meaning of 35 U.S.C. 24. 

(c)   The examiner shall have jurisdiction over any pending application 
until  the interference is declared. An examiner-in-chief, where 
appropriate, may  for a limited purpose restore jurisdiction to the 
examiner over any application  involved in the interference. 

37 CFR 1.614 specifies when the Board gains jurisdiction over an 
interference.  The section also indicates when an interference becomes a 
contested case within  the meaning of 35 U.S.C. 24.  A remand to the 
examiner is authorized and may  be useful in certain situations, such as, 
when a party moves under 37 CFR 1.633(c)  to add a proposed count which is 
broader than any count in an interference. 
 Alternatively, an examiner-in-chief can obtain informal opinions from 
examiners  during the course of an interference.  Nothing in the rules, 
however, is intended  to authorize informal conferences between an 
examiner-in-chief and an examiner  with respect to the merits of an 
application before the Board in an ex parte  appeal from an adverse 
decision of the examiner. 

Where an interference is declared, all questions involved therein are to 
be  determined inter partes. This includes not only the question of 
priority of  invention but all questions relative to the patentability to 
each of the parties  of the claims in issue or of any claim suggested to 
be added to the issue. 
Examiners are admonished that inter partes questions should not be 
discussed  ex parte with any of the interested parties and that they 
should so inform  applicants or their attorneys if any attempt is made to 
discuss ex parte these  inter parte questions. 

The interference is declared when the examiner-in-chief mails the notices 
of  interference to the parties.  The interference is thus technically 
pending  before the Board of Patent Appeals and Interferences from the 
date on which  the notices are mailed, and from that date the files of the 
various applications  set out in the notices are opened to inspection by 
the other parties to the  extent provided in 37 CFR 1.612. 

Obvious minor errors in the counts or corresponding claims of an 
application  may be corrected by the examiner-in-chief before the 
declaration notices are  mailed.  The changes will be made in red ink and 
initialled in the margin by  the examiner-in-chief. 

Throughout the interference, the interference and application files 
involved  are in the keeping of the Service Branch of the Board except at 
such times  that action is required, such as for concurrent prosecution, 
when they are  temporarily in possession of the tribunal before whom the 
particular question  is pending. 

If, independent of the interference, action as to one or  more of the 
applications  becomes necessary, the examiner should consult the 
examiner-in-chief in charge  of the interference. 

The examiner merely borrows a patent file, if needed, as where the patent 
is  to be involved in a new interference. 


2315    Suspension of Ex Parte Prosecution 


37 CFR 1.615.     Suspension of ex parte prosecution. 

(a)   When an interference is declared, ex parte prosecution of an 
application  involved in the interference is suspended. Amendments and 
other papers related  to the application received during pendency of the 
interference will not be  entered or considered in the interference 
without the consent of an examiner-in-chief. 
(b)   Ex parte prosecution as to specified matters may be continued 
concurrently  with the interference with consent of the examiner-in-chief. 

The treatment of amendments filed during an interference is considered in 
detail  in MPEP w 2364. 

Ex parte prosecution of an appeal under 37 CFR 1.191 may proceed 
concurrently  with an interference proceeding involving the same 
application with the consent  of the examiner-in-chief provided the 
primary examiner who forwards the appeal  certifies, in a memorandum to be 
placed in the file, that the subject matter  of the interference does not 
conflict with the subject matter of the appealed  claims.  The approval of 
the examiner-in-chief in charge of the interference  must be obtained 
before undertaking any concurrent prosecution of the application. 

2315.01       Suspension - Overlapping Applications 


Where one of several applications of the same inventor or assignee which 
contain  overlapping claims gets into an interference, the prosecution of 
all the cases not in the interference should be carried  as far as 
possible, by treating as prior art the counts of the interference  and by 
insisting on proper lines of division or distinction between the 
applications.  In some instances, suspension of action by the Office 
cannot be avoided.   See MPEP w 709.01. 

Where an application involved in an interference includes, in addition to 
the  subject matter of the interference, a separate and divisible 
invention, prosecution  of the second invention may be had during the 
pendency of the interference  by filing a divisional application for the 
second invention or by filing a  divisional application for the subject 
matter of the interference and moving  to substitute the latter divisional 
application for the application originally  involved in the interference. 
However, the application for the second invention  may not be passed to 
issue if it contains claims broad enough to dominate matter  claimed in 
the application involved in the interference. 

W 11.16       Rejection Based on Count of an Interference 

The rejection of claim [1] above based upon count [2] of interference No. 
[3],  to which applicant is a party, is a provisional rejection for the 
purpose of  resolving all remaining issues in this application. The 
provisional assumption  that the count is prior art under 35 U.S.C. 102(g) 
against this application  may or may not be true, and prosecution in this 
case will be suspended pending  final determination of priority in the 
interference if and when no other issues  remain. 

Examiner Note: 

1.  This paragraph must follow all rejections under 35 U.S.C. 102 or 103 
using  the count of an interference as prior art. 

2.  This paragraph is applicable only to an application that is commonly 
owned  by a party in the interference but is not involved in the 
interference. 
W 11.17       Suspension of Prosecution Pending Outcome of Interference 
The outcome of interference No. [1] has a material bearing on the 
patentability  of the claims in this application. Prosecution in this 
application is SUSPENDED  pending a final judgment in the interference. 

Applicant should call this case up for action upon termination of the 
interference. 
Examiner Note: 

This paragraph should only be used in an application that is not in the 
interference  but is commonly owned by one of the parties thereto. 


2316    Sanctions for Failure to Comply With Rules or Order 



37 CFR 1.616.     Sanctions for failure to comply with rules or order. 
An examiner-in-chief or the Board may impose an appropriate sanction 
against  a party who fails to comply with the regulations of this part or 
any order  entered by an examiner-in-chief or the Board. An appropriate 
sanction may include  among others entry of an order: 

(a)   Holding certain facts to have been established in the interference; 
(b)   Precluding a party from filing a motion or a preliminary statement; 
(c)   Precluding a party from presenting or contesting a particular issue; 
(d)   Precluding a party from requesting, obtaining, or opposing 
discovery;  or 

(e)   Granting judgment in the interference. 

37 CFR 1.616 permits an examiner-in-chief or the Board to impose 
appropriate  sanctions against a party who fails to comply with the rules 
or with an order  entered in the interference. Paragraphs (a) through (e) 
of 37 CFR 1.616 set  forth some of the possible sanctions which can be 
entered.  The particular  sanction to be entered will depend on the facts 
of a given case and ordinarily  will not be entered prior to giving the 
affected party an opportunity to present  its views. An individual 
examiner-in-chief cannot impose a sanction granting  judgment inasmuch as 
entry of a judgment requires action by the Board.  See  37 CFR 1.610(a). 
A party desiring sanctions imposed against an opponent can  move under 37 
CFR 1.635 for entry of an order imposing sanctions. 

For examples of cases where sanctions are warranted, see Woods  v. 
Tsuchiya,  207 USPQ 228 (Comm'r Pat. 1979) and Tezel v. Bellantoni, 188 
USPQ 688 (Bd.  Pat. Int. 1975). 


2317    Summary Judgment Against Applicant 


37 CFR 1.617.     Summary judgment against applicant. 

(a)   An examiner-in-chief shall review any evidence filed by an applicant 
 under w 1.608(b) to determine if the applicant is prima facie entitled to 
a  judgment relative to the patentee. If the examiner-in-chief determines 
that  the evidence shows the applicant is prima facie entitled to a 
judgment relative 
to the patentee, the interference shall proceed in the normal manner under 
 the regulations of this part. If in the opinion of the examiner-in-chief 
the  evidence fails to show that the applicant is prima facie entitled to 
a judgment  relative to the patentee, the examiner-in-chief shall, 
concurrently with the  notice declaring the interference, enter an order 
stating the reasons for the  opinion and directing the applicant, within a 
time set in the order, to show  cause why summary judgment should not be 
entered against the applicant. 
(b)   The applicant may file a response to the order and state any reasons 
 why summary judgment should not be entered. Any request by the applicant 
for  a hearing before the Board shall be made in the response. Additional 
evidence  shall not be presented by the applicant or considered by the 
Board unless the  applicant shows good cause why any additional evidence 
was not initially presented  with the evidence filed under w 1.608(b). At 
the time an applicant files a  response, the applicant shall serve on each 
opponent a copy of any evidence  filed under w 1.608(b) and this paragraph. 

(c)   If a response is not timely filed by the applicant, the Board shall 
enter  a final decision granting summary judgment against the applicant. 
(d)   If a response is timely filed by the applicant, all opponents may 
file  a statement within a time set by the examiner-in-chief. The 
statement may set  forth views as to why summary judgment should be 
granted against the applicant,  but the statement shall be limited to 
discussing why all the evidence presented  by the applicant does not 
overcome the reasons given by the examiner-in-chief  for issuing the order 
to show cause. Evidence shall not be filed by any opponent.  An opponent 
may not request a hearing. 

(e)   Within a time authorized by the examiner-in-chief, an applicant may 
file  a reply to any statement filed by any opponent. 



(f)   When more than two parties are involved in an interference, all 
parties  may participate in summary judgment proceedings under this 
section. 
(g)   If a response by the applicant is timely filed, the 
examiner-in-chief  or the Board shall decide whether the evidence 
submitted under w 1.608(b) 
and any additional evidence properly submitted under paragraph (b) of this 
 section shows that the applicant is prima facie entitled to a judgment 
relative  to the patentee. If the applicant is not prima facie entitled to 
a judgment  relative to the patentee, the Board shall enter a final 
decision granting summary  judgment against the applicant. Otherwise, an 
interlocutory order shall be  entered authorizing the interference to 
proceed in the normal manner under  the regulations of this subpart. 

(h)   Only an applicant who filed evidence under w 1.608(b) may request a 
hearing.  If that applicant requests a hearing, the Board may hold a 
hearing prior to  entry of a decision under paragraph (g) of this section. 
The examiner-in-chief  shall set a date and time for the hearing.  Unless 
otherwise ordered by the  examiner-in-chief or the Board, the applicant 
and any opponent will each be  entitled to no more than 30 minutes of oral 
argument at the hearing. 
37 CFR 1.617 provides for summary judgment proceedings in those cases 
where  a junior party applicant is required to file evidence and an 
explanation under  37 CFR 1.608(b). To avoid summary judgment, the junior 
party applicant must  establish that it is prima facie entitled to 
judgment relative to the senior  party patentee.  For the most part, 
practice under 37 CFR 1.617 will be the  same as the previous practice 
under 37 CFR 1.228. The major changes from the  previous practice are the 
following: 

(1)   A prima facie case can be based on patentability as well as 
priority. 
(2)   A stricter standard will be imposed for presenting additional 
evidence  after entry of an order to show cause. Under previous practice 
(37 CFR 1.228,  now deleted), additional evidence could be submitted with 
a response to an  order to show cause "when a showing in excuse of ..[its] 
omission from the  original" showing is made. The "good  cause" showing 
required by 37 CFR 1.617(b)  imposes a stricter standard than was required 
under the prior rules. The stricter  standard is considered necessary in 
order to encourage applicants copying claims  from a patent to better 
prepare the initial showings under 37 CFR 1.608(b).  Under previous 
practice, the Board of Patent Interferences found that substantial  time 
was lost in issuing orders to show cause based on an inadequate initial 
showing only to have an adequate showing made with the response to the 
order  to show cause. Under the "good cause"  standard, ignorance by a 
party or counsel  of the provisions of the rules or the substantive 
requirements of the law will  not constitute good cause. 

(3)   When an interference involves more than two parties, all opponents 
are  permitted to participate in summary judgment proceedings.  Thus, the 
revised  rules overrule Chan v. Akiba v. Clayton, 189 USPQ 621 (Comm'r 
Pat. 1975). 
(4)   Previously, an applicant had to file two copies of its initial 
showing  under 37 CFR 1.204(c). Under 37 CFR 1.608(b), a party need only 
file one copy  of the showing.  However, any party responding to an order 
to show cause must  serve a copy of its initial showing under 37 CFR 
1.608(b) with any response  to the order to show cause. 

(5)   A single examiner-in-chief may order an interference to proceed 
after  issuance of an order to show cause under 37 CFR 1.608(b) and the 
filing of  a response by an applicant under 37 CFR 1.617(b).  Only the 
Board, however,  may enter summary judgment.  See 37 CFR 1.617(b). 

Any opponent may attack the sufficiency of an applicant's showing under 37 
 CFR 1.608(b) when that showing is presented as evidence under 37 CFR 
1.672.  In summary judgment proceedings, all an applicant need do is make 
out a prima  facie case.  If the interference is allowed to proceed  in 
the normal manner,  the applicant must prove priority by a preponderance 
of evidence (when the  application and the patent are copending) or beyond 
a reasonable doubt (when  the application was filed after the patent 
issued).  Manifestly, the burden  in summary judgment proceedings is not 
as strict as the burden in proceedings  following summary judgment. Brewer 
v. DeMarinis, 558 F.2d 22, 28, 194 USPQ  308, 313 (CCPA 1977) and Schwab 
v. Pittman, 451 F.2d 637, 640, 172 USPQ 69,  71 (CCPA 1971). 

The second sentence of 37 CFR 1.617(d) is intended to make clear that 
opponents  may file statements in response to an applicant's "response" 
but the statement  "shall be limited to discussing why all the evidence 
presented by the applicant  does not overcome the reasons given by the 
examiner-in-chief for issuing the  order to show cause."  The PTO does not 
intend to expand summary judgment proceedings  into a "mini-interference." 
 An applicant presents evidence under 37 CFR 1.608(b).  If the 
examiner-in-chief finds that evidence insufficient, an order to show 
cause stating the reasons for the insufficiency is issued. An applicant 
may  respond and, if appropriate, file "additional evidence."  The PTO 
intends to  be rather strict in permitting the filing of new evidence. 
After the applicant  responds (with or without  additional evidence), any 
opponent may file a statement,  the opponent should be free to comment on 
all the evidence (original and additional)  which the applicant presents. 
Compare In re Plockinger, 481 F.2d 1327, 179  USPQ 103 (CCPA 1973). Under 
37 CFR 1.617(d) the opponent may not urge a rationale  for summary 
judgment which does not appear in the order to show cause issued  by the 
examiner-in-chief.  However, it is not the PTO's intent to interpret  37 
CFR 1.617(d) in the narrow manner the Court of Customs and Patent Appeals 
interpreted 37 CFR 1.204(c) in Kahl v. Scoville, 609 F.2d 991, 995 - 996, 
203  USPQ 652, 656 [headnote 6] (CCPA 1979).  An example will illustrate 
how the  PTO intends to interpret 37 CFR 1.617(d). 



Example. An applicant copies claims from a patent and is required to 
submit  a showing under 37 CFR 1.608(b)  Upon review of the showing under 
37 CFR 1.608(b),  the examiner-in-chief concludes that the showing fails 
to make out a prima  facie  case of priority, because applicant has failed 
to show an actual reduction  to practice. Applicant files a response and 
includes additional evidence which  purports to show an actual reduction 
to practice. The patentee then files a  statement in which two arguments 
are made.  First, patentee argues that the  additional evidence has not 
been properly authenticated. Second, patentee argues  that even if 
applicant has shown an actual reduction to practice, summary judgment  is 
nevertheless appropriate because applicant suppressed and concealed after 
the actual reduction to practice.  The first argument is proper, but the 
second  argument is not.  A patentee may comment on the sufficiency of the 
applicant's  evidence. Fairness, however, dictates that summary judgment 
be granted only  after fair notice in the order to show cause. 
Accordingly, summary judgment  will not be based on a rationale raised by 
a patentee in a statement which  does not correspond to the rationale used 
by the examiner-in-chief in the order  to show cause. 

Once summary judgment proceedings have concluded, an interference will 
proceed  "in the normal manner."  The change is intended to codify the 
decisions in  Walsh v. Sakai, 167 USPQ 465 (Comm'r. Pat. 1967) and Ing v. 
Chiou, 207 USPQ  321 (Comm'r. Pat. 1979). 


2318    Return of Unauthorized Papers 


37 CFR 1.618.     Return of unauthorized papers. 

(a)   The Patent and Trademark Office shall return to a party any paper 
presented  by the party when the filing of the paper is not authorized by, 
or is not in  compliance with the requirements of, this subpart. Any paper 
returned will  not thereafter be considered by the Patent and Trademark 
Office in the interference.  A party may be permitted to file a corrected 
paper under such conditions as  may be deemed appropriate by an 
examiner-in-chief. 

(b)   When presenting a paper in an interference, a party  shall not 
submit  with the paper a copy of a paper previously filed in the 
interference. 
Under 37 CFR 1.618, the PTO has authority to return to a party any paper 
presented  in an interference which is not authorized by, or is not in 
compliance with  the requirements of, Subpart E of the Rules of Practice. 
When an improper  paper is filed, a party may be given an opportunity to 
file a proper paper  under such conditions as an examiner-in-chief may 
deem appropriate. Two examples  of improper papers are: (1) replies to 
replies which are not authorized by  the rules and (2) papers presented 
which have attached thereto a paper previously  filed in the interference. 


2321    Preliminary Statement, Time for Filing 


37 CFR 1.621.     Preliminary statement, time for filing, notice of 
filing. 
(a)   Within the time set for filing preliminary motions under w 1.633, 
each  party may file a preliminary statement. The preliminary statement 
may be signed  by any individual having knowledge of the facts recited 
therein or by an attorney  or agent of record. 

(b)   When a party files a preliminary statement, the party shall also 
simultaneously  file and serve on all opponents in the interference a 
notice stating that a  preliminary statement has been filed. A copy of the 
preliminary statement need  not be served until ordered by the 
examiner-in-chief. 

37 CFR 1.621 through 1.629 govern preliminary statements which continue to 
 be required in interference cases. 

Under 37 CFR 1.621, a preliminary statement can be signed by an individual 
 having knowledge of the facts (e.g., the inventor) or by an attorney or 
agent  of record.  Permitting an attorney or agent of record to sign a 
preliminary  statement eliminates unnecessary mailing of papers between 
parties and their  attorney or agent. 

A preliminary statement serves several useful purposes in an interference: 
(1) it serves to limit a party's proofs as to time, (2) it serves as a 
vehicle  for permitting the examiner-in-chief or the Board to issue orders 
to show cause  in those cases where it would be futile to take testimony, 
and (3) it serves  as notice to an opponent of the case which is alleged 
by a party. Under the  rules, the issues which will be raised and decided 
by the Board at final hearing  are made known during the interlocutory 
stage through (a) the preliminary statement, 
(b) motions under 37 CFR 1.633 and decisions thereon, and (c) notices 
under  37 CFR 1.632 of a  party's intent to argue abandonment, 
suppression, or concealment. 
The preliminary statements must be filed within the time set for filing 
preliminary  motions, and the opposing parties notified of their filing. 
However, they  are not served until ordered by the examiner-in-chief after 
preliminary motions 
(if any) have been decided. 

A preliminary statement cannot be transmitted by facsimile (37 CFR 1.6 (d) 
(9)). 


2322    Preliminary Statement, Invention Made by Whom and Where 


37 CFR 1.622.     Preliminary statement, who made invention, where 
invention  made. 

(a)   A party's preliminary statement must identify the inventor who made 
the  invention defined by each count and must state on behalf of the 
inventor the  facts required by paragraph (a) of ww 1.623, 1.624, and 
1.625 as may be appropriate.  When an inventor identified in the 
preliminary statement is not an inventor  named in the party's application 
or patent, the party shall file a motion under  w 1.634 to correct 
inventorship. 

(b)   The preliminary statement shall state whether the invention was made 
 in the United States or abroad. If made abroad, the preliminary statement 
shall  state whether the party is entitled to the benefit of the second 
sentence of  35 U.S.C. 104. 

Under 37 CFR 1.622, the preliminary statement must identify the inventive 
entity  who made the invention defined by each count.  If one of the 
inventors included  in the inventive entity identified in the preliminary 
statement is not an inventor  named in the application or patent involved 
in the interference, a motion under  37 CFR 1.634 must be diligently filed 
to correct the inventorship. 



2323    Preliminary Statement; Invention Made in United States 


37 CFR 1.623.     Preliminary statement; invention made in United States. 
(a)   When the invention was made in the United States or a party is 
entitled  to the benefit of the second sentence of 35 U.S.C. 104, the 
preliminary statement  must state the following facts as to the invention 
defined by each count: 
(1)   The date on which the first drawing of the invention was made. 
(2)   The date on which the first written description of the invention was 
 made. 

(3)   The date on which the invention was first disclosed by the inventor 
to  another person. 

(4)   The date on which the invention was first conceived by the inventor. 
(5)   The date on which the invention was first actually reduced to 
practice.  If the invention was not actually reduced to practice by or on 
behalf of the  inventor prior to the party's filing date, the preliminary 
statement shall  so state. 

(6)   The date after the inventor's conception of the invention when 
active  exercise of reasonable diligence toward reducing the invention to 
practice  began. 

(b)   If a party intends to prove derivation, the preliminary statement 
must  also comply with w 1.625. 

(c)   When a party alleges under paragraph (a)(1) of this section that a 
drawing  was made, a copy of the first drawing shall be filed with and 
identified in  the preliminary statement. When a party alleges under 
paragraph (a)(2) of this  section that a written description of the 
invention was made, a copy of the  first written description shall be 
filed with and identified in the preliminary  statement. See w 1.628(b) 
when a copy of the first drawing or written description  cannot be filed 
with the preliminary statement. 

37 CFR 1.623, 1.624, and 1.625, respectively, set out the allegations 
which  should be made in and the attachments which should accompany, a 
preliminary  statement when (1) the invention was made in the United 
States, (2) the invention  was made abroad and was introduced into the 
United States, and (3) derivation  by an opponent from a party is to be an 
issue. 


2324    Preliminary Statement, Invention Made Abroad 


37 CFR 1.624.     Preliminary statement; invention made abroad. 

(a)   When the invention was made abroad and a party intends to rely on 
introduction  of the invention into the United States, the preliminary 
statement must state  the  following facts as to the invention defined by 
each count. 

        (1)   The date on which a drawing of the invention was first 
introduced  into the United States. 

(2)   The date on which a written description of the invention was first 
introduced  into the United States. 

(3)   The date on which the invention was first disclosed to another 
person  in the United States. 

(4)   The date on which the inventor's conception of the invention was 
first  introduced into the United States. 

(5)   The date on which an actual reduction to practice of the invention 
was  first introduced into the United States. If an actual reduction to 
practice  of the invention was not introduced into the United States, the 
preliminary  amendment shall so state. 

(6)   The date after introduction of the inventor's conception into the 
United  States when active exercise of reasonable diligence in the United 
States toward  reducing the invention to practice began. 

(b)   If a party intends to prove derivation, the preliminary statement 
must  also comply with w 1.625. 

(c)   When a party alleges under paragraph (a)(1) of this section that a 
drawing  was introduced into the United States a copy of that drawing 
shall be filed  with and identified in the preliminary statement. When a 
party alleges under  paragraph (a)(2) of this section that a written 
description of the invention  was introduced into the United States a copy 
of that written description shall  be filed with and identified in the 
preliminary statement. See w 1.628(b) when  a copy of the first drawing or 
first written description introduced in the  United States cannot be filed 
with the preliminary statement. 

Brewer  v. DeMarinis, 558  F.2d 22, 194 USPQ 308 (CCPA 1971), illustrates 
a  case where an actual reduction to practice abroad was introduced into 
the United  States. 


2325    Preliminary Statement, Derivation by an Opponent 


37 CFR 1.625.     Preliminary statement; derivation by an opponent. 
(a)   When the invention was made in the United States or abroad and a 
party  intends to prove derivation by an opponent from the party, the 
preliminary  statement must state the following as to the invention 
defined by each count: 
(1)   The name of the opponent. 

(2)   The date on which the first drawing of the invention was made. 
(3)   The date on which the first written description of the invention was 
 made. 

(4)   The date on which the invention was first disclosed by the inventor 
to  another person. 

(5)   The date on which the invention was first conceived by the inventor. 
(6)   The date on which the invention was first communicated to the 
opponent. 
(b)   If a party intends to prove priority, the preliminary statement must 
 also comply with w 1.623 or w 1.624. 

(c)   When a party alleges under paragraph (a)(2) of this section that a 
drawing  was made, a copy of the first drawing shall be filed with and 
identified in  the preliminary statement. When a party alleges under 
paragraph (a)(3) of this  section that a written description of the 
invention was made, a copy of the  first written description shall be 
filed with and identified in the preliminary  statement. See w 1.628(b) 
when a first drawing or first written description  cannot be filed with 
the preliminary statement. 

A party does not have to allege derivation in a preliminary statement 
where  the party does not know derivation occurred until the testimony 
period. 37  CFR 1.625 requires a party to file a preliminary statement 
when derivation  is an issue.  If derivation is not known or discovered 
prior to the date the  preliminary statement is due, a party must move to 
amend the preliminary statement  and allege derivation promptly after 
existence of derivation is discovered. 

2326    Preliminary Statement, Earlier Application 


37 CFR 1.626.     Preliminary statement; earlier application. 

When a party does not intend to present evidence to prove a conception or 
an  actual reduction to practice and the party intends to rely solely on 
the 


filing date of an earlier application filed in the United States or abroad 
 to prove a constructive reduction to practice, the preliminary statement 
may  so state and identify the earlier application with particularity. 
37 CFR 1.626 permits a party to file a preliminary statement which states 
that  the party only intends to rely on the filing date of an earlier 
United States  or foreign application. Ordinarily, a junior party who 
fails to file a preliminary  statement is not entitled to access to any 
other preliminary statement filed 
(see 37 CFR 1.631(b)).  37 CFR 1.626 permits a junior party who only 
intends  to rely on an earlier application to have access to any 
opponent's preliminary  statement. 


2327    Preliminary Statement, Sealing and Opening 


37 CFR 1.627.     Preliminary statement, sealing before filing,  opening 
of  statement. 

(a)   The preliminary statement and copies of any drawing or written 
description  shall be filed in a sealed envelope bearing only the name of 
the party filing  the statement and the style (e.g., Jones v. Smith) and 
number of the interference.  The sealed envelope should contain only the 
preliminary statement and copies  of any drawing or written description. 
If the preliminary statement is filed  through the mail, the sealed 
envelope should be enclosed in an outer envelope  addressed to the 
Commissioner of Patents and Trademarks in accordance with  w 1.1(e). 

(b)   A preliminary statement may be opened only at the direction of an 
examiner-in-chief. 

2328    Preliminary Statement, Correction of Error 


37 CFR 1.628.     Preliminary statement, correction of error. 

(a)   A material error arising through inadvertence or mistake in 
connection  with (1) a preliminary statement or (2) drawings or a written 
description submitted  therewith or omitted therefrom, may be corrected by 
a motion (w 1.635) for  leave to file a corrected statement. The motion 
shall be supported by an affidavit  and shall show that the correction is 
essential to the ends of justice and  shall be accompanied by the 
corrected statement. The motion shall be filed  as soon as practical after 
discovery of the error. 

(b)   When a party cannot attach a copy of a drawing or a written 
description  to the party's preliminary statement as required by ww 
1.623(c), 1.624(c),  or 1.625(c), the party (1) shall show good cause and 
explain in the preliminary  statement why a copy of the drawing or written 
description cannot be attached  to the preliminary statement and (2) shall 
attach to the preliminary statement  the earliest drawing or written 
description made in or introduced into the  United States which is 
available. The party shall file a motion (w 1.635) to  amend its 
preliminary statement promptly after the first drawing, first written 
description, or drawing or written description, first introduced into the 
United  States becomes available. A copy of the drawing or written 
description may  be obtained, where appropriate, by a motion (w 1.635) for 
additional discovery  under w 1.687 or during a testimony period. 

37 CFR 1.628 sets out how an error in a preliminary statement may be 
corrected. 
37 CFR 1.628(b) covers the possibility that a drawing might not be 
available,  e.g., a drawing destroyed in  "a fire."  37 CFR 1.628(b) 
permits a party to  allege a date when a first drawing or a first written 
description was made  in those circumstances where the first drawing or 
first written description  is not available.  The party is required  (1) 
to show good cause and explain  in the preliminary statement why a copy of 
the drawing or written description  cannot be attached to the preliminary 
statement and (2) attach to the preliminary  statement the earliest 
drawing or written description made in or introduced  into the United 
States which is available. The party is also required to file  a motion to 
amend its preliminary statement promptly after the drawing or written 
description becomes available.  It is the PTO's intent by the amendment to 
 37 CFR 1.628(b) to overrule the holding of headnote [1] of Reddy v. 
Davis,  187 USPQ 386, 388 (Comm'r. Pat. 1975). 


2329    Preliminary Statement, Effect of 


37 CFR 1.629.     Effect of preliminary statement. 

(a)   A party shall be strictly held to any date alleged in the 
preliminary  statement. Doubts as to (1) definiteness or sufficiency of 
any allegation in  a preliminary statement or (2) compliance with formal 
requirements will be  resolved against the party filing the statement by 
restricting the party to  the earlier of its filing date or effective 
filing date or to the latest date  of a period alleged in the preliminary 
statement as may be appropriate. A party  may not correct a preliminary 
statement except as provided in w 1.628. 
(b)   Evidence which shows that an act alleged in the preliminary 
statement  occurred prior to the date alleged in the statement shall 
establish only that  the act occurred as early as the date alleged in the 
statement. 

(c)   If a party does not file a preliminary statement, the party: 
(1)   Shall be restricted to the earlier of the party's filing date or 
effective  filing date and 

(2)   Will not be permitted to prove that: 

        (i)   The party made the invention prior to the party's filing 
date  or 

        (ii)    Any opponent derived the invention from the party. 
(d)   If a party files a preliminary statement which contains an 
allegation  of a date of first drawing or first written description and 
the party does  not file a copy of the first drawing or written 
description with the preliminary  statement as required by w 1.623(c),  w 
1.624(c), or w 1.625(c), the party  will be restricted to the earlier of 
the party's filing date or effective filing  date as to that allegation 
unless the party com- plies with w 1.628(b). The  content of any drawing 
or written description submitted with a preliminary  statement will not 
normally be evaluated or considered by the Board. 
(e)   A preliminary statement shall not be used as evidence on behalf of 
the  party filing the statement. 

37 CFR 1.629 sets out the effect of a preliminary statement.  A party who 
fails  to file a preliminary statement will not be permitted to prove (1) 
that the  party made the invention defined by the count prior to the 
party's filing date  or (2) that an opponent derived the invention from 
the party. 


2330    Reliance on Earlier Application 


37 CFR 1.630.     Reliance on earlier application. 

A party shall not be entitled to rely on the filing date of an earlier 
application  filed in the United States or abroad unless (a) the earlier 
application is  identified (w 1.611(c)(5)) in the notice declaring the in- 
terference or (b)  the party files a preliminary motion under  w 1.633 
seeking the benefit of  the filing date of the earlier application. 




2331    Preliminary Statement Access 


37 CFR 1.631.     Access to preliminary statement, service of preliminary 
statement. 
(a)   Unless otherwise ordered by an examiner-in-chief, concurrently with 
entry  of a decision by the examiner-in-chief on preliminary motions filed 
under w  1.633, any preliminary statement filed under w 1.621(a) shall be 
opened to  inspection by the senior party and any junior party who filed a 
preliminary  statement. Within a time set by the examiner-in-chief, a 
party shall serve  a copy of its preliminary statement on each opponent 
who served a notice under  w 1.621(b). 

(b)   A junior party who does not file a preliminary statement shall not 
have  access to the preliminary statement of any other party. 

(c)   If an interference is terminated before the preliminary statements 
have  been opened, the preliminary statements will remain sealed and will 
be returned  to the respective parties who submitted the statements. 

Under 37 CFR 1.631, preliminary statements normally will  be opened for 
inspection  when an examiner-in-chief decides preliminary motions filed 
under 37 CFR 1.633.  A junior party who does not file a preliminary 
statement is not entitled to  access to a preliminary statement of any 
other party.  When an interference  is terminated before preliminary 
statements are opened, any preliminary statement  which has been filed 
will be returned unopened to the party who submitted the  statement.  The 
rules do not require all parties to file a preliminary statement.  If a 
junior party does not file a preliminary statement, it will be denied 
access to any other preliminary statement which is filed.  A senior party, 
 however, is always entitled to access to any preliminary statement filed 
by  a junior party.  See 37 CFR 1.631(b).  However, a junior party is only 
required  to serve a senior party who files a statement. 


2332    Abandonment, Suppression, or Concealment To Be Argued 


37 CFR 1.632.     Notice of intent to argue abandonment, suppression or 
concealment  by opponent. 

A notice shall be filed by a party who intends to argue that an opponent 
has  abandoned, suppressed, or concealed an actual reduction to practice 
(35 U.S.C.  102(g)). A party will not be permitted to argue abandonment, 
suppression, or  concealment by an opponent unless the notice is timely 
filed.  Unless authorized  otherwise by an examiner-in-chief, a notice is 
timely when filed within ten 
(10) days of the close of the testimony-in-chief of the opponent. 
Under 37 CFR 1.632, a notice must be filed by a party who intends to argue 
 that an opponent abandoned, suppressed, or concealed an actual reduction 
to  practice, 35 U.S.C. 102(g).  A party will not be permitted to brief 
(37 CFR  1.656) or argue at final hearing (37 CFR 1.654) that an opponent 
abandoned,  suppressed, or concealed an actual reduction to practice 
unless the notice  is timely filed.  A notice is timely if filed within 
ten (10) days after the  close of the testimony-in-chief period of an 
opponent.  While a party has the  burden of proving that an opponent 
abandoned, suppressed, or concealed, the  burden may be discharged on the 
basis of the opponent's evidence alone, Shindelar  v. Holdeman, 628 F.2d 
1337, 207 USPQ 112 (CCPA 1980). See also Correge v. Murphy,  705 F.2d 
1326, 217 USPQ 753 (Fed. Cir. 1983); Horwath v. Lee, 564 F.2d 948,  195 
USPQ701 (CCPA 1977); and Peeler v. Miller, 535 F.2d 647, 190 USPQ 117 
(CCPA  1976).  Under previous practice where notice was not required, it 
was possible  that a party might learn for the first time that 
abandonment, suppression,  or concealment was an issue when the party 
received an opponent's brief at  final hearing. See Klug v. Wood, 212 USPQ 
767, 771  n. 2 (Bd. Pat. Int. 1981).  At that point, it was often too late 
to reopen proceedings in an interference.  The purpose of requiring the 
notice under 37 CFR 1.632 is to make the parties  and the Board aware 
during the interlocutory stage of an interference that  abandonment, 
suppression, or concealment may be an issue in the interference.  Early 
notice permits the parties to ask for and the examiner-in-chief to set 
appropriate testimony periods for a party to present evidence related to 
abandonment,  suppression, and concealment, particularly in those cases 
where long unexplained  delays tend to prove the allegation of suppression 
or concealment.  Early notice  also eliminates the need for the party 
moving to reopen the testimony period,  Klug v. Wood, supra. 


2333    Preliminary Motions 


37 CFR 1.633.     Preliminary motions. 

A party may file the following preliminary motions: 

(a)   A motion for judgment on the ground that an opponent's claim 
corresponding  to a count is not patentable to the opponent. In 
determining a 

motion filed under this paragraph, a claim may be construed by reference 
to  the prior art of record.  A motion under this paragraph shall not be 
based  on: (1) priority of invention of the subject matter of a count by 
the moving  party as against any opponent or (2) derivation of the subject 
matter of a  count by an opponent from the moving party. See w 1.637(a). 

(b)   A motion for judgment on the ground that there is no 
interference-in-fact.  A motion under this paragraph is proper only if: 
(1) The interference involves  a design application or patent or a plant 
application or patent or (2) no claim  of a party which corresponds to a 
count is identical to any claim of an opponent  which corresponds to that 
count. See w 1.637(a). 

(c)   A motion to redefine the interfering subject matter by (1) adding or 
 substituting a count, (2) amending an application claim corresponding to 
a  count or adding a claim in the moving party's application to be 
designated  to correspond to a count, (3) designating an application or 
patent claim to  correspond to a count, (4) designating an application or 
patent claim as not  corresponding to a count, or (5) requiring an 
opponent who is an applicant to add a claim and to designate the claim to 
correspond to a count. See w 1.637(a)  and (c). 

(d) A motion to substitute a different application owned by a party for an 
 application involved in the interference. See w 1.637(a) and (d). 
(e)   A motion to declare an additional interference (1) between an 
additional  application not involved in the interference and owned by a 
party and an opponent's  application or patent involved in the 
interference or (2) 



when an interference involves three or more parties, between less than all 
 applications and any patent involved in the interference. See w  1.637 
(a)  and (e). 

(f)   A motion to be accorded the benefit of the filing date of an earlier 
 application filed in the United States or  abroad.  See w 1.637 (a) and 
(f). 
(g)   A motion to attack the benefit accorded an opponent in the notice 
declaring  the interference of the filing date of an earlier application 
filed in the  United States or abroad. See w 1.637 (a) and (g). 

(h)   When a patent is involved in an interference and the patentee has on 
 file or files an application for reissue under w 1.171, a motion to add 
the  application for reissue to the interference.  See w 1.637(a) and (h). 
(i)   When a motion is filed under paragraph (a), (b), or (g) of this 
section,  an opponent, in addition to opposing the motion, may file a 
motion to redefine  the interfering subject matter under paragraph (c) of 
this section or a motion  to substitute a different application under 
paragraph (d) of this section. 
(j)   When a motion is filed under paragraph (c)(1) of this section an 
opponent,  in addition to opposing the motion, may file a motion for 
benefit under paragraph 
(f) of this section as to the count to be added or substituted. 

Under 37 CFR 1.633, a party may file preliminary motions for judgment to 
redefine  the interference, to substitute a different application in the 
interference,  to declare an additional interference, to be accorded the 
benefit of an earlier  application, to attack benefit previously accorded 
an opponent, or to add a  reissue application to an interference.  The 
motions are called "preliminary  motions" in order to distinguish the 
motions from other motions which might  be filed during the course of an 
interference.  The preliminary motions replace  motions authorized by 
former 37 CFR 1.231, now deleted. 

It was particularly important, under previous practice, to review one's 
proofs  in advance and bring such motions under 37 CFR 1.231 as might be 
necessary  to conform the counts to the proofs and to avoid 
post-interference estoppel.  See Torchin, The Pitfall of Interference 
Practice: 37 CFR 1.231. 60 J.P.O.S.  579 (1978).  Close attention to the 
preliminary motions is even more necessary  under the new rules, in view 
of the more stringent estoppel provisions imposed  by 37 CFR 1.658(c), 
discussed below in the "Final Hearing" section. 
Under 37 CFR 1.633(a), a party can file a motion for judgment on the 
ground  that an opponent's claim corresponding to a count is unpatentable 
to the opponent.  With two exceptions, unpatentability can be based on 
prior art (35 U.S.C.  102, 103), insufficiency of disclosure (35 U.S.C. 
112, first paragraph), indefiniteness  of claims (35 U.S.C. 112, second 
paragraph), double patenting, estoppel, or  any other ground which would 
support a holding that claims corresponding to  a count are not 
patentable.   The two exceptions are (1) priority of invention  of the 
subject matter of a count by the moving party as against any opponent  and 
(2) derivation of the subject matter of a count by the opponent from the 
moving party.  The two exceptions are directed to issues which are 
traditional  "priority" issues; e.g., which inventor made the invention 
defined by a count  first or, when derivation is an issue, who made the 
invention.  Resolution  of those "priority" issues almost always requires 
the taking of testimony.  A motion for judgment, however, is proper when a 
party believes an individual  not involved in the interference made the 
invention defined by the count prior  to an opponent in the interference, 
but subsequent to the moving party.   Thus,  a patentability issue, such 
as that raised under 35 U.S.C. 102(g) in Sutter  Products Co. v. Pettibone 
Mulliken Corp. 428 F.2d 639, 166 USPQ 100 (7th Cir.  1970), can properly 
be raised with a motion for judgment under 37 CFR 1.633(a).  Derivation by 
an opponent from an individual not involved in the interference  can also 
be raised under 37 CFR 1.633(a). 

Under 37 CFR 1.633(b), a party can move for a judgment when the party 
believes  there is no interference-in-fact.  A motion for judgment on the 
ground of no  interference-in-fact is only proper under one of three 
conditions: (1) when  an interference involves designs, (2) when the 
interference involves plant  applications or a plant application and plant 
patent, or (3) when no claim  of a party which corresponds to a count is 
identical to any claim of an opponent  which corresponds to that count. 
An example illustrates when a motion under  37 CFR 1.633(b) is proper. 

Example 1. Application AD contains patentable claim 1 (6-cylinder engine). 
 Application AE contains patentable claim 3 (8-cylinder engine). An 
interference  is declared with a single count (6- or 8- cylinder engine). 
Claim 1 of application  AD and claim 3 of application AE are designated to 
correspond to the count.  Applicant AD believes that a 6-cylinder engine 
is a  "separate patentable  invention" (see 37 CFR 1.601(n)) from an 
8-cylinder engine.  Applicant AD can  file a motion under 37 CFR 1.633(b) 
for a judgment on the ground of no interference-in-fact  stating why a 
6-cylinder engine is patentably distinct from an 8-cylinder engine.  If 
the Board ultimately  agrees  with  applicant  AD,  a  patent  can  issue 
to  AD  containing claim 1 of application AD and a second patent can issue 
 to AE containing claim 3 of application AE. 

Under 37 CFR 1.633(c), a party may move to redefine interfering subject 
matter.  One way to redefine interfering subject matter is to add or 
substitute a count.  When a party seeks to add a count, the party is 
required to demonstrate that  the proposed count to be added is directed 
to a "separate patentable invention"  from every other count in the 
interference. 

A motion may be filed to amend an application claim which has already been 
 designated to correspond to a count. See 37 CFR 1.633(c)(2).  Such a 
motion  may be filed when a party believes an application claim designated 
to correspond  to a count is unpatentable and the amended claim is 
believed to be patentable. 
An applicant may move to add a claim to the applicant's application and to 
 designate the claim to be added to  correspond to a count.   See 37 CFR 
1.633(c)(2).  Such a motion may be filed when the applicant discloses 
specific subject  matter which is not claimed, wants to claim the subject 
matter, and have the subject  matter involved in the interference. 

Another way to redefine interfering subject matter is to designate a claim 
 as corresponding or not corresponding to a count.  See 37 CFR 1.633(c)(3) 
and 
(c)(4).  The following examples illustrate this later point. 

Example 2.  Application AF contains patentable claim 1 (engine). Patent K 
contains  claims 3 (engine) and 5 ( 6-cylinder engine). Claim 1 of 
application AF and  claim 3 of patent K are designated to correspond to 
the count. Applicant AF  believes a 6-cylinder is the "same patentable 
invention"  (see 37 CFR 1.601(n))  as engine. Applicant AF can file a 
motion under 37 CFR 1.633(c)(3) to designate  claim 5 of patent K as 
corresponding to the count. If the motion is granted  and applicant AF 
prevails in the interference, judgment will be entered against  patentee K 
and both claims 3 and 5 of patent K will be cancelled under 35 U.S.C.  135(a). 

Example 3. Application AG contains patentable claim 1 (engine). Patent L 
contains  claim 3 (engine) and 5 (8-cylinder engine). An interference is 
declared with  one count (engine). Claim 1 of application AG and claims 3 
and 5 of patent  L are designated to correspond to the count. Patentee L 
believes that an 8-cylinder  engine defines a "separate patentable 
invention" (see 37 CFR 1.601(n)) from  engine. Patentee L should file a 
motion under 37 CFR 1.633(c)(4) to designated  claim 5 of patent L as "not 
corresponding" to the count. If the motion is granted  and an adverse 
judgment is entered against patentee L, only claim 3 will be  cancelled 
from the patent pursuant to 35 U.S.C. 135(a). 

A motion to redefine the interfering subject matter may also request that 
an  opponent who is an applicant be required to add a claim to the 
opponent's application  and to designate the claim to correspond to a 
count.  See 37 CFR 1.633(c)(5).  Such a motion may be filed when a party 
sees that the opponent discloses, but  does not claim, subject matter 
which the party believes should be involved  in the interference. 

37 CFR 1.633(i) continues the previous practice (from 37 CFR 1.231) of 
allowing  a party to move to redefine the subject matter of the 
interference or substitute  a different application when an opponent moves 
for judgment (see 37 CFR 1.633(a)  and (b)) or to attack benefit (see 37 
CFR 1.633(g)). 

Paragraph (j) of 37 CFR 1.633 permits an opponent to move for benefit when 
 a party moves to add or substitute a count.  Thus, when a motion to add a 
count  is filed by a party and an opponent wants benefit of an earlier 
application  in the event the motion to add is granted, the opponent 
should file a motion  under 37 CFR 1.633(j) to be accorded benefit. The 
mere fact that the opponent  had been accorded benefit of an earlier 
application when the interference was  declared does not mean the opponent 
will be accorded benefit as to some other  count which may be added on 
motion of some other party. 

37 CFR 1.633(e) adopts the estoppel rule approved by the Court of Customs 
and  Patent Appeals in Avery v. Chase, 101 F.2d 205, 40 USPQ 343 (CCPA 
1939), cert.  denied, 307 U.S. 638 (1939). 

The following comment by the CCPA in its opinion in In re Shimer, 69 F.2d 
556,  558, 21 USPQ 161, 163 (CCPA 1934), accurately expresses the intent 
of the PTO  in promulgating 37 CFR 1.633(e) and 1.658(c): 

"It may be stated that this rule works no hardship on him who is diligent 
in  pursuit of his rights.  When an interference is declared, the files of 
his  contestants are open to him.  He has full cognizance of their 
disclosures and  claims.  So advised, it becomes his duty to put forward 
every claim he has.  [37 CFR 1.633(e)] . . . affords him the opportunity. 
If the rule be not enforced  or enforceable, then delays and litigation 
are greatly increased.  It is quite  obvious that the doctrine of 
estoppel, as applied in these cases, results in  the better conduct of the 
business of the Patent [and Trademark] Office and  in the public good." 

If a party believes that an opponent has committed "fraud" or has engaged 
in  "inequitable conduct," the party may file a motion under 37 CFR 
1.633(a) for  judgment on the basis of "fraud" or  "inequitable conduct" 
and  must make out  a case by clear and convincing evidence. The 
examiner-in-chief has sufficient  authority under the rules to preclude a 
party from proceeding in an interference  on a baseless charge of  "fraud" 
or "inequitable conduct."  See also 37 CFR  10.23(c)(18). 

Motion for Judgment, Prior Art Applicable to Movant 

When a party files a preliminary motion for judgment under 37 CFR 1.633(a) 
 against an opponent in an interference on the ground that the claim(s) 
corresponding  to a count are unpatentable over prior art, and, based upon 
the effective filing  date(s) of the application(s)/patent(s) involved in 
the interference, the prior  art would also be applicable to the moving 
party, the following will apply: 
1.  The mere filing of the motion will not be construed as an admission by 
 the moving party [See Commissioner's Notice of May 23, 1990, 1115 O.G. 31 
(June  19, 1990), discussing Winkler v. Guglielmino, Appeal No. 89-1571 
(Fed. Cir.  May 9, 1990) (unpublished)]. 

2.  When a motion for judgment based on unpatentability         over prior 
 art is filed, the examiner-in-chief will determine (i) whether the 
date(s)  of the cited prior art are such that it would on its face appear 
to apply to  the moving  party, and (ii) if so, whether the motion 
includes an explanation  as to why the prior art would not be applicable 
to the movant. If the motion  does not contain an explanation, the 
examiner-in-chief will send a letter to  the moving party.  The letter must: 



(a)   inform the movant that the prior art appears to be applicable 
against  the movant; (b) set a time period to provide an explanation as to 
why the prior  art does not apply to the movant; (c) state that unless a 
sufficient explanation 
(and evidence, if appropriate; e.g.,affidavit under 37 CFR 1.132) is filed 
 within the time set,  the movant will not be permitted to rely on any 
such  explanation (and evidence) in response to or in any subsequent 
action in the  interference. 

3.  If the movant provides no explanation, or an insufficient explanation, 
 as to why the cited prior art would not apply to the movant, the 
examiner-in-chief  will determine whether or not the prior art cited in 
support of the motion  renders the count (claims corresponding to the 
count) unpatentable to the moving  party as well as each of the other 
parties. If the examiner-in-chief concludes  that the claims are 
unpatentable, an order to show cause under 37 CFR 1.640  will be issued 
against all parties to whom the prior art is applicable without  regard to 
the dates alleged in the preliminary statements. (The suggestion  in 
Goutzoulis v. Athale. 15 USPQ2d 1461 (Comm'r Pat. 1990) that a preliminary 
 statement might be considered to determine whether an order to show cause 
should  be issued,    will not be followed.) Note that if the moving party 
expressly  admits that the prior art renders his corresponding claims 
unpatentable, the  examiner-in-chief must still determine whether the 
corresponding claims of  the other parties are unpatentable over that art. 

4.  In response to the order to show cause, the parties have the options 
set  forth in the Commissioner's Notice of December  8, 1986, 1074 O.G. 4 
(January  6, 1987), and/or  may move under 37 CFR 1.651(c)(4) for a 
testimony period,  if appropriate. However, the following should be noted: 

A.  If the party who filed the motion for judgment is under the order to 
show  cause, the party's showing and/or request for testimony in response 
to the  order to show cause may not be based upon any reasons which could 
have been,  but were not, given in explanation of why the cited prior art 
would not apply  to the party. 

B.  If the prior art is not a statutory bar to a party and the allegations 
 in that party's preliminary statement, if proven, would antedate the 
effective  date(s) of the prior art, an appropriate response to the order 
to show cause  would be a request to take testimony to antedate the prior 
art, as well as  to prove priority  of invention.  If applicable, this 
option may be specified  in the order to show cause. 

C.  A request for a testimony period to remove the prior art based upon 
other  reasons; e.g., inoperativeness of a reference, unexpected results, 
etc., must  meet the criteria set forth in Hanagan v. Kimura. 
Interference No. 102,150,  16 USPQ2d 1791  (Comm'r Pat. Apr. 5, 1990). 

D.  Even assuming corroboration, the evidence necessary to antedate a 
reference  is not necessarily the same as that required to prove priority 
of invention.  Cf. Anderson v. Norman. 185 USPQ 371 (Comm'r Pat. 1968). 
Therefore, depending  on the circumstances, a request to take priority 
testimony may not be adequate  to cover taking testimony to antedate the 
reference, and vice versa.  Some  examples of such differences are: 

E23330002.bmp 



E23330002.end 


2333.01       Preliminary Motions - Related to Application Not Involved in 
Interference 

Whenever a party in interference brings a motion under 37 CFR 1.633(d) or 
(e)  concerning an application not already included in the interference, 
the examiner-in-chief  should at once send the primary examiner a written 
notice of such motion and  the primary examiner should place this notice 
in said application file. 
The notice is customarily sent to the examining group which declared the 
interference  since the application referred 



to in the motion is generally examined in the same group. However, if the 
application  is not being examined in the same group, then the correct 
examining group should  be ascertained and the notice forwarded to that group. 

This notice serves useful and essential purposes, and due attention must 
be  given to it by the examiner when it is received.  First, the examiner 
is cautioned  by this notice not to consider ex parte, questions which are 
pending before  the Office in inter partes proceedings involving the same 
applicant or party  in interest.  Second, if the application which is 

the subject of the motion is in issue and the last date for paying the 
issue  fee will not permit determination of the motion, it will be 
necessary to withdraw  the application from issue.  Third, if the 
application contains an affidavit  or declaration under 37 CFR 1.131 or 
1.608, this must be sealed because the  opposing parties have access to 
the application. 


2333.02       Preliminary Motions - Benefit of Foreign Filing Date 

If a request for the benefit of a foreign filing date under 35 U.S.C. 119 
is  filed while an application is involved in interference, the papers are 
to be  placed in the application file in the same manner as amendments 
received during  interference, and appropriate action taken after the 
termination of the interference. 
A party who desires to be accorded the benefit of a foreign filing date 
which  was not accorded in the declaration papers should file a motion for 
benefit  of that filing date under 37 CFR 1.633(f) and the matter will be 
considered  on an inter partes basis. 


2334    Motions to Correct Inventorship 


37 CFR 1.634.     Motion to correct inventorship. 

A party may file a motion to (a) amend its application involved in an 
interference  to correct inventorship as provided by w 1.48 or (b) correct 
inventorship of  its patent involved in an interference as provided in w 
1.324. See w 1.637(a). 
37 CFR 1.634 authorizes a motion to correct inventorship in an application 
(see 37 CFR 1.48) or a patent (see 37 CFR 1.324) involved in an 
interference. 
A party who wishes to change the named inventive entity of its application 
 or patent involved in an interference must do so by way of a motion under 
37  CFR 1.634.  Such a motion must be accompanied by the items required by 
37 CFR  1.48 (in the case of an application) or 37 CFR 1.324 (in the case 
of a patent),  and decided by the examiner-in-chief. If the primary 
examiner becomes aware  that papers under 37 CFR 1.48 or 1.324 have been 
filed in an application or  patent, respectively, involved in an 
interference, the examiner should call  them to the attention of the 
examiner-in-chief in charge of the interference. 

2335    Miscellaneous Motions 


37 CFR 1.635.     Miscellaneous motions. 

A party seeking entry of an order relating to any matter other than a 
matter  which may be raised under w 1.633 or 1.634 may file a motion 
requesting entry  of the order. See w 1.637 (a) and (b). 

37 CFR 1.635 authorizes the filing of motions other than those specified 
in  37 CFR 1.633 or 1.634.  Motions filed under 37 CFR 1.635 will be 
referred to  as "miscellaneous motions" to distinguish from "preliminary 
motions" under  37 CFR 1.633.  Instances where a miscellaneous motion can 
be filed include  motions to correct an error in a preliminary statement, 
to extend time for  taking action or to seek judicial review, to obtain 
permission to proceed under  35 U.S.C. 24, or to obtain additional discovery. 


2336    Time for Filing Motions 


37 CFR 1.636.     Motions, time for filing. 

(a)   A preliminary motion under w 1.633 (a) through (h) shall be filed 
within  a time period set by an examiner-in-chief. 

(b)   A preliminary motion under w 1.633 (i) or (j) shall be filed within 
20  days of the service of the preliminary motion under w 1.633 (a), (b), 
(c)(1),  or (g) unless otherwise ordered by an examiner-in-chief. 

(c)   A motion under w 1.634 shall be diligently filed after an error is 
discovered  in the inventorship of an application or patent involved in an 
interference  unless otherwise ordered by an examiner-in-chief. 

(d)   A motion under w 1.635 shall be filed as specified in this subpart 
or  when appropriate unless otherwise ordered by an examiner-in-chief. 
37 CFR  1.636 sets out the times within which a motion can be filed. 
A party must exercise diligence in correcting inventorship. Van Otteren v. 
 Hafner, 278 F.2d 738, 126 USPQ 151 (CCPA 1960). 


2337    Motion Content 


37 CFR 1.637.     Content of motions. 

(a)   Every motion shall include (1) a statement of the precise relief 
requested, 
(2) a statement of the material facts in support of the motion, and (3) a 
full  statement of the reasons why the relief requested should be granted. 
(b)   A motion under w 1.635 shall contain a certificate by the moving 
party  stating that the moving party has conferred with all opposing 
parties in an  effort in good faith to resolve by agreement the issues 
raised by the motion.  A moving party shall indicate in the motion whether 
any other party plans  to oppose the motion. The provisions of this 
paragraph do not apply to a motion  to suppress evidence  (w 1.656(h)). 

(c)   A preliminary motion under w 1.633(c) shall explain why the 
interfering  subject matter should be redefined. 

(1)   A preliminary motion seeking to add or substitute a count shall: 
        (i)   Propose each count to be added or substituted. 

        (ii)    When the moving party is an applicant, show the 
patentability  to the applicant of all claims in, or proposed to be added 
to, the party's  application which correspond to each proposed count and 
apply the terms of 


the claims to the disclosure of the party's application; when necessary a 
moving  party applicant shall file with the motion an amendment adding any 
proposed  claim to the application. 

        (iii)     Identify all claims in an opponent's application which 
should  be designated to correspond to each proposed count; if an 
opponent's application  does not contain such a claim, the moving party 
shall propose a claim to be  added to the opponent's application. The 
moving party shall show the patentability  of any proposed claims to the 
opponent and apply the terms of the claims to  the disclosure of the 
opponent's application. 

        (iv)    Designate the claims of any patent involved in the 
interference  which define the same patentable invention as each proposed 
count. 
        (v)   Show that each proposed count defines a separate patentable 
invention  from every other count in the interference. 

        (vi)    Be accompanied by a motion under w 1.633(f) requesting the 
 benefit of the filing date of any earlier application filed in the United 
States  or abroad. 

(2)   A preliminary motion seeking to amend an application claim 
corresponding  to a count or adding a claim to be designated to correspond 
to a count shall: 
        (i)   Propose an amended or added claim. 

        (ii)    Show that the proposed or added claim defines the same 
patentable  invention as the count. 

        (iii)     Show the patentability to the applicant of each amended 
or  added claim and apply the terms of the amended or added claim to the 
disclosure  of the application; when necessary a moving party applicant 
shall file with  the motion an amendment making the amended or added claim 
to the application. 
        (iv)    Be accompanied by a motion under w 1.633(f) requesting the 
 benefit of the filing date of any earlier  application filed in the 
United  States or abroad. 

(3)   A preliminary motion seeking to designate an application or patent 
claim  to correspond to a count shall: 

        (i)   Identify the claim and the count. 

        (ii)    Show the claim defines the same patentable invention as 
the  count. 

        (iii) Be accompanied by a motion under w 1.633(f) requesting the 
benefit  of the filing date of any earlier application filed in the United 
States or  abroad. 

(4)   A preliminary motion seeking to designate an application or patent 
claim  as not corresponding to a count shall: 

        (i)   Identity the claim and the count. 

        (ii)    Show the claim does not define the same patentable 
invention  as any other claim designated in the notice declaring the 
interference as corresponding  to the count. 

(5)   A preliminary motion seeking to require an opponent who is an 
applicant  to add a claim and designate the claim as corresponding to a 
count shall: 
        (i)   Propose a claim to be added by the opponent. 

        (ii)    Show the patentability to the opponent of the claim and 
apply  the terms of the claim to the disclosure of the opponent's 
application. 
        (iii)     Identify the count to which the claim shall be 
designated  to correspond. 

        (iv)    Show the claim defines the same patentable invention as 
the  count to which it will be designated to correspond. 

(d)   A preliminary motion under w 1.633(d) to substitute a different 
application  shall: 

(1)   Identify the different application. 

(2)   Certify that a complete copy of the file of the different 
application,  except for documents filed under w 1.131 or w 1.608, has 
been served on all  opponents. 

(3)   Show the patentability to the applicant of all claims in, or 
proposed  to be added to, the different application which correspond to 
each count and  apply the terms of the claims to the disclosure of the 
different application;  when necessary the applicant shall file with the 
motion an amendment adding  a claim to the different application. 

(4)   Be accompanied by a motion under w 1.633(f) requesting the benefit 
of  the filing date of an earlier application filed in the United States 
or abroad. 
(e)   A preliminary motion to declare an additional interference under w 
1.633(e) shall explain why an additional interference is necessary. 
(1)   When the preliminary motion seeks an additional interference under w 
 1.633(e)(1), the motion shall: 

        (i)   Identify the additional application. 

        (ii)    Certify that a complete copy of the file of the additional 
 application, except for documents filed under w 1.131 or w 1.608, has 
been  served on all opponents. 

        (iii)     Propose a count for the additional interference. 
        (iv)    Show the patentability to the applicant of all claims in, 
or  proposed to be added to, the additional  application which correspond 
to each  proposed count for the additional interference and apply the 
terms of the claims  to the disclosure of the additional application; when 
necessary the applicant  shall file with the motion an amendment adding 
any claim to the additional  application. 

        (v)   When the opponent is an applicant, show the patentability to 
 the opponent of any claims in, or proposed to be added to, the opponent's 
application  which correspond to the proposed count and apply the terms of 
the claims to  the disclosure of the opponent's application. 

        (vi)    Identify all claims in the opponent's application or 
patent  which should be designated to correspond to each proposed count; 
if the opponent's  application does not contain any such claim, the motion 
shall propose a claim  to be added to the opponent's application. 

        (vii) Show that each proposed count for the additional 
interference  defines a separate patentable invention from all counts of 
the interference  in which the motion is filed. 

        (viii) Be accompanied by a motion under w 1.633(f) requesting the 
benefit  of the filing date of an earlier application filed in the United 
States or  abroad. 

(2)   When the preliminary motion seeks an additional interference under w 
 1.633(e)(2), the motion shall: 

        (i)   Identify any application or patent to be involved in the 
additional  interference. 

        (ii)    Propose a count for the additional interference. 

        (iii)     When the moving party is an applicant, show the 
patentability  to the applicant of all claims in, or proposed to be added 
to, the party's  application which correspond to each proposed count and 
apply the terms of  the claims to the disclosure of the party's 
application; when necessary a moving  party applicant shall file with the 
motion an amendment adding any proposed  claim to the application. 

        (iv)    Identify all claims in any opponent's application which 
should  be designated to correspond to each proposed count; if an 
opponent's application  does not contain such a claim the moving party 
shall propose a claim to be  added to the opponent's application. The 
moving party shall show the patentability  of any proposed claim to the 
opponent and apply the terms of the claim to the  disclosure of the 
opponent's application. 

        (v)   Designate the claims of any patent involved in the 
interference  which define the same patentable invention as each proposed 
count. 
        (vi)    Show that each proposed count for the additional 
interference  defines a separate patentable invention from all counts in 
the interference  in which the motion is filed. 

        (vii) Be accompanied by a motion under  w 1.633(f) requesting the 
benefit  of the filing date of an earlier application filed in the United 
States or  abroad. 

(f) A preliminary motion for benefit under w 1.633(f) shall: 

(1) Identify the earlier application. 



(2) When the earlier application is an application filed in the United 
States,  certify that a complete copy of the file of the earlier 
application, except  for documents filed under w 1.131 or w 1.608, has 
been served on all opponents.  When the earlier application is an 
application filed abroad, certify that a  copy of the application filed 
abroad has been served on all opponents. If the  earlier application filed 
abroad is not in English, the requirements of w 1.647 must also be met. 

(3) Show that the earlier application constitutes a constructive re- 
duction  to practice of each count. 

(g) A preliminary motion to attack benefit under w 1.633(g) shall explain, 
 as to each count, why an opponent should not be accorded the benefit of 
the  filing date of the earlier application. 

(h)   A preliminary motion to add an application for reissue under w 
1.633(h) shall: 

(1)   Identify the application for reissue. 

(2)   Certify that a complete copy of the file of the application for 
reissue  has been served on all opponents. 

(3)   Show the patentability of all claims in, or proposed to be added to, 
 the application for reissue which correspond to each count and apply the 
terms  of the claims to the disclosure of the application for reissue; 
when necessary  a moving applicant for reissue shall file with the motion 
an amendment adding  any proposed claim to the application for reissue. 

(4)   Be accompanied by a motion under w 1.633(f) requesting the benefit 
of  the filing date of an earlier application filed in the United States 
or abroad. 
Motion to Declare Additional Interference 

37 CFR 1.637(e)(1)(vi) requires that a motion to declare an additional 
interference  under 37 CFR 1.633(e)(1) between an additional application 
not involved in  the interference and owned by a party and an opponent's 
application or patent  involved in the interference either (1) designate 
the claims of the opponent's  application or patent which define the same 
patentable invention defined by  the proposed count, or (2) if the 
opponent's application does not contain any  such claim, the moving party 
must propose a claim to be added to the opponent's  application. 

37 CFR 1.637 sets out the content of motions.  In prior interference 
practice,  parties and their counsel have had difficulty meeting all the 
"unwritten" requirements  for motions under former 37 CFR 1.231.  37 CFR 
1.637 is quite specific in setting  out the requirements for each type of 
motion, particularly the preliminary  motions.  By setting out with 
specificity the requirements for each type of  motion, it is intended to 
minimize disposition of motions on technicalities. 
37 CFR 1.637 sets out the requirements of a motion under 37 CFR 
1.633(c)(5).  Those requirements are the moving party must (1) propose a 
claim to be added  to the opponent's application, (2) show the 
patentability of the claim to the  opponent and apply the terms of the 
claim to the disclosure of the opponent's  application, (3) identify the 
count to which the proposed claim shall be designated  to correspond, and 
(4) show that the proposed claim defines the same patentable  invention as 
the count to which it will be designated to correspond.  The following 
example illustrates how practice under 37 CFR 1.633(c)(5) and 37 CFR 
1.637(c)(5)  is expected to occur. 

Example. Application AV discloses engines and in particular a 6-cylinder 
engine.  Application AV contains only claim 1 (engine). Application AW 
discloses engines  in general, but does not specifically disclose a 
6-cylinder engine. Application  AW contains only a single claim 3 
(engine). Seeing that application AV specifically  discloses a 6-cylinder 
engine and believing that a 6-cylinder is the same patentable  invention 
as "engine," AW could move under 37 CFR 1.633(c)(5) to require applicant 
AV to add a claim (6-cylinder engine) and to have the claim designated to 
correspond  to the count (engine). Applicant AV could oppose on the ground 
that a 6-cylinder  engine is not the "same patentable invention" as 
"engine." If the motion is  granted, applicant AV would be required to a 
add a claim to 6-cylinder engine  and the claim would be designated to 
correspond to the count. If applicant  AV loses the interference, the 
judgment would preclude applicant AV from obtaining  a patent with claims 
to "engine" or "6-cylinder engine." If the motion is denied  on the basis 
that a 6-cylinder engine is not the same patentable invention,  applicant 
AV would not be required to present a claim to a 6-cylinder engine  and 
would be able to pursue such a claim ex parte even if applicant AV loses 
the interference. 

If an applicant is ordered by an examiner-in-chief to file an amendment to 
 present a claim and the applicant fails or refuses to timely present the 
amendment,  the failure or refusal will be taken without further action as 
a disclaimer  by the applicant of the subject matter of the claim.  See 
the second sentence  of 37 CFR 1.640(b)(1). 

Under the rules, it is not the intent of the PTO to allow a senior party 
to  test the sufficiency of the case-in-chief of a junior party prior to 
final  hearing. Thus, a "motion for a directed verdict" (see Rule 50(a) of 
the Federal  Rules of Civil Procedure) at the conclusion of the junior 
party's case-in-chief  and prior to a senior party's case-in-chief is not 
authorized under the rules.  If a senior party believes the case-in-chief 
of the junior party is insufficient  as a matter of law, the senior party 
may elect to proceed immediately to final  hearing. If the senior party is 
incorrect, however, the senior party will have  waived any right to 
present any case-in-chief or rebuttal.  See; e.g., Comstock  v. Kroekel, 
200 USPQ 548, 550, n. 4 (Comm'r Pat. 1978); Lorenian v. Winstead,  127 
USPQ 501, 508 (Bd. Pat. Int. 1959); and more recently, Burson v. 
Carmichael,  731 F.2d 849, 221 USPQ 664 (Fed. Cir. 1984) ("There is no 
support in the law  for repeated bites at the apple").  This would be true 
even if the only evidence  relied upon by the junior party is a showing 
under 37 CFR 1.608(b). In this  respect, the rules codify the decision in 
Walsh v. Sakai, 167 USPQ 465 (Comm'r  Pat. 1970). 


2338    Opposition and Reply 


37 CFR 1.638.     Opposition and reply, time for filing opposition and 
reply. 
(a)   Unless otherwise ordered by the examiner-in-chief, any opposition to 
 any motion shall be filed within 20 days after service of the motion.  An 
opposition  shall (1) identify any material fact set forth in the motion 
which is 


in dispute and (2) include an argument why the relief requested in the 
motion  should be denied. 

(b)    Unless otherwise ordered by an examiner-in-chief, a reply shall  be 
 filed within 15 days after service of the opposition. A reply shall be 
directed  only to new points raised in the opposition. 

37 CFR 1.638 authorizes oppositions to motions.  Any opposition must 
identify  any material fact in dispute.  A reply to an opposition is 
authorized for all  motions. A reply to a reply is not authorized. 


2339    Evidence in Support of Motion, Opposition, or Reply 


37 CFR 1.639.     Evidence in support of motion, opposition, or reply. 
(a)   Proof of any material fact alleged in a motion, opposition, or reply 
 must be filed and served with the motion, opposition, or reply unless the 
proof  relied upon is part of the interference file or the file of any 
patent or application  involved in the interference or any earlier 
application filed in the  United  States of which a party has been 
accorded or seeks to be accorded benefit. 
(b)   Proof may be in the form of patents, printed publications, and 
affidavits. 
(c)   When a party believes the testimony is necessary to support or 
oppose  a preliminary motion under w 1.633 or a motion to correct 
inventorship under  w 1.634, the party shall describe the nature of the 
testimony needed. If the  examiner-in-chief finds that testimony is needed 
to decide the motion, the  examiner-in-chief may grant appropriate 
interlocutory relief and enter an order  authorizing the  taking of 
testimony and deferring a decision on the motion  to final hearing. 

37 CFR 1.639 sets forth the evidence which may accompany a motion, 
opposition,  or reply.  Every material fact alleged in a motion, 
opposition, or a reply  must be supported by proof.  37 CFR 1.639(b) 
authorizes affidavits to be used  as proof for any motion.  The affidavit 
may later  be used by a party during  the testimony period (see  37 CFR 
1.671(e) and 1.672(b)).  When a party believes  that testimony is 
necessary to decide a motion under 37 CFR 1.633 or 1.634,  the party must 
describe the nature of the testimony needed.  If an examiner-in-chief 
agrees that testimony is needed, appropriate interlocutory relief will be 
granted  and testimony will be ordered. 

It should be noted that if affidavits cannot be timely prepared to be 
filed  with a motion, the moving party may wish to take advantage of 
paragraph (c)  of 37 CFR 1.639 which requires a party to specify any 
testimony needed to resolve  a motion.  A moving party or an opponent may 
describe any testimony needed  to resolve a motion under either 37 CFR 
1.633 or 1.634.  Often, testimony is  needed to resolve inventorship 
disputes.  Accordingly, a party may describe  testimony needed to resolve 
motions to correct inventorship under 37 CFR 1.634.  It should be noted 
that if a party relies solely on affidavits in support  of a motion (under 
37 CFR 1.633 or 1.634) and the issue raised in the motion  is to be 
considered at final hearing, the party must comply with 37 CFR 1.671(e). 
Example. An interference is declared with one count between application AH 
 and application AJ. Applicant AH files a preliminary motion under 37 CFR 
1.633(c)(1)  to redefine the interference by adding a second count. In 
order to succeed,  applicant AH must show that the proposed count to be 
added is directed to a  "separate patentable invention" (see 37 CFR 
1.601n)) from the count already  in the interference. In the motion, 
applicant AH sets forth in detail the testimony  which will be required to 
prove that the subject matter of the proposed count  is to a separate 
patentable invention from the subject matter of the count  in the 
interference. Applicant AJ opposes the motion on the ground that the 
proposed and present counts define the "same patentable invention" (see 37 
 CFR 1.608(n)). An examiner-in-chief determines that a material fact is in 
dispute  and that the applicant AH has established testimony is needed to 
properly rule  on the motion. Under the circumstances, the motion will be 
deferred to final  hearing and a testimony period will be ordered. The 
question of (1) whether  the proposed and present counts define the same 
patentable invention and (2)  priority will be decided at final hearing. 


2340    Motions, Hearing and Decision 


37 CFR 1.640.     Motions, hearing and decision, redeclaration of inter- 
ference,  order to show cause. 

(a)   A hearing on a motion may be held in the discretion of the 
examiner-in-chief.  The examiner-in-chief shall set the date and time for 
any hearing. The length  of oral argument at a hearing on a motion is a 
matter within the discretion  of the examiner-in-chief. An 
examiner-in-chief may direct that a hearing take  place by telephone. 

(b)   Motions will be decided by an examiner-in-chief. An 
examiner-in-chief  may consult with an examiner in deciding motions 
involving a question of patentability.  An examiner-in-chief may grant or 
deny any motion or take such other action  which will secure the just, 
speedy, and inexpensive determination of the interference. 
(1)   When preliminary motions under w 1.633 are decided, the 
examiner-in-chief  will, when necessary, set a time for filing any 
amendment to an application  involved in the interference and for filing a 
supplemental preliminary statement  as to any new counts involved in the 
interference. Failure or refusal of a  party to timely present an 
amendment required by an examiner-in-chief shall  be taken without further 
action as a disclaimer by that party of the invention  involved. A 
supplemental preliminary statement shall meet the requirements  specified 
in w 1.623, w 1.624, w 1.625, or w 1.626, but need not be filed if  a 
party states that it intends to rely on a preliminary statement previously 
 filed under w 1.621(a). After the time expires for filing any amendment 
and  supplemental preliminary statement, the examiner-in-chief will, if 
necessary,  redeclare the interference. 

(2)   After a decision is entered on preliminary motions filed under w 
1.633,  a further motion under w 1.633 will not be considered except as 
provided by  w 1.655(b). 

(c)   When a decision on any motion under w 1.633, w 1.634, or w 1.635 is 
entered  which does not result in the issuance of an order to show cause 
under paragraph 
(d) of this section, a party may file a request for reconsideration within 
 14 days after the date of the decision. The filing of a request for 
reconsideration  will not stay any time period set by the decision. The 
request for reconsideration  shall specify with particularity the points 
believed to have been misapprehended  or overlooked in rendering the 
decision. No opposition to a request for reconsideration  shall be filed 
unless requested by an examiner-in-chief or the Board. A decision  of a 
single examiner-in-chief will not ordinarily be modified unless an 
opposition  has been requested by an examiner-in-chief or the Board.  The 
request for reconsideration  shall be acted on by a panel of the Board 
consisting of at least three examiners-in-chief,  one of whom will 
normally be the examiner-in-chief who decided the motion. 
(d)   An examiner-in-chief may issue an order to show cause why judgment 
should  not be entered against a party when: 

(1)   A decision on a motion is entered which is  dispositive of the 
interference  against the party as to any count; 

(2)   The party is a junior party who fails to file a preliminary 
statement;  or 

(3)   The party is a junior party whose preliminary statement fails to 
overcome  the earlier of the filing date or effective filing date of 
another party. 
(e)   When an order to show cause is issued under paragraph (d) of this 
section,  the Board shall enter a judgment in accordance with the order 
unless, within  20 days after the date of the order, the party against 
whom the order 
issued files a paper which shows good cause why judgment should not be 
entered  in accordance with the order. Any other party may file a response 
to the paper  within 20 days of the date of service of the paper. If the 
party against whom  the order was issued fails to show good cause, the 
Board shall enter judgment  against the party.  If a party wishes to take 
testimony in response to an order  to show cause, the party's response 
should be accompanied by a motion (w 1.635)  requesting the testimony 
period. See w 1.651(c)(4). 

Under 37 CFR 1.640, an examiner-in-chief will decide all motions.  A 
hearing 
(in  person  or  by telephone)  may be  held on a motion in the discretion 
 of an examiner-in-chief.  Where appropriate, an examiner-in-chief may 
consult  with an examiner on a question of patentability which arises in 
the first instance  in the interference.  For example, a party may allege 
unpatentability over  a reference not previously considered, or may 
attempt to add a count drawn  to subject matter which was not previously 
examined.  Consultation will not  be necessary where the examiner had 
already ruled on the patentability question  which comes before the 
examiner-in-chief or the Board. 

The extent of the consultation will be determined by the 
examiner-in-chief;  the examiner may be consulted merely on one point of 
patentability, or may  be asked to conduct a search of newly-presented 
counts or claims.  The consultation  may be informal, as by a telephone 
call, or may be by a more formal written  memorandum to the examiner. 

It should be noted that nothing in 37 CFR 1.640 authorizes conferences 
between  examiners-in-chief and examiners in ex parte appeals under 35 
U.S.C. 134 from  an adverse decision of an examiner. 

In rendering a decision, the examiner-in-chief is not limited to granting 
or  denying a motion, but is also empowered to "take such other action 
which will  secure the just, speedy, and inexpensive determination of the 
interference."  37 CFR 1.640(b). 

A party is entitled to request reconsideration of a decision on a motion 
by  a single examiner-in-chief.  An opposition to a request for 
reconsideration  may not be filed unless ordered by an examiner-in-chief 
or the Board, but the  decision by the single examiner-in-chief will not 
normally be modified unless  an opposition has been requested.  The 
request for reconsideration will be  acted on by a panel of the Board 
consisting of at least three examiners-in-chief,  one of whom will 
normally be the examiner-in-chief who decided the motion.  It is believed 
that parties in interference cases will feel that their requests  for 
reconsideration are being more fully considered if more than one person 
considers their request. The two additional examiners-in-chief can consult 
 with the examiner-in-chief most familiar with the case, but can control 
the  decision on reconsideration by a majority vote.  Use of the 
examiner-in-chief  who decided the motion and two additional 
examiners-in-chief (1) minimizes  delay which would occur if three new 
examiners-in-chief were used who were  unfamiliar with the record and (2) 
minimizes the possibility that reversible  error occurred if only the 
examiner-in-chief who decided the motion also individually  decided the 
request for reconsideration. 

After the decision on motion is rendered, the interference may take a 
number  of different courses.  If a motion for judgment is granted, the 
examiner-in-chief  will issue an order to show cause against the party or 
parties to whom the  motion applies.  Judgment will be entered against the 
party or parties by the  Board if they do not respond to the order. If a 
motion for judgment is not  granted an order to show cause will be issued 
against the junior party who  did not file a preliminary statement, or 
whose statement fails to overcome  another party's effective filing date; 
otherwise, the interference proceeds  to the testimony stage. 

The former rules (37 CFR 1.231(d)) provided that a request for 
reconsideration  of a decision on 37 CFR 1.231 motions would not be 
entertained; however, a  party could petition the Commissioner under 37 
CFR 1.244 for the exercise of  supervisory authority with respect to the 
motion decision.  The revised rules  effectively reverse this arrangement 
by providing that a party may request  that the Board reconsider an 
examiner-in-chief's decision on any  motion, except  a decision granting a 
motion for judgment (37 CFR 1.640(c)).  On the other  hand, the ability to 
petition a decision on motion is sharply curtailed by  the provision of 37 
CFR 1.644(a)(2) that petitions seeking to invoke the supervisory 
authority of the Commissioner may not be filed prior to a decision by the 
Board  awarding judgment. 


2341    Unpatentability Discovered 


37 CFR 1.641.     Unpatentability discovered by examiner-in-chief. 
During the pendency of an interference, if the examiner-in-chief becomes 
aware  of a reason why a claim corresponding to a count may not be 
patentable, the  examiner-in-chief may notify the parties of the reason 
and set a time within  which each party may present its views. After 
considering any 



timely filed views, the  examiner-in-chief shall decide how the 
interference  shall proceed. 

If the examiner, while the interference is pending, discovers a reference 
or  other reason which he or she believes would render one or more of the 
parties'  claims corresponding to the count(s) unpatentable, the reference 
or other reason  should be brought to the attention of the 
examiner-in-chief in charge of the  interference.  The examiner-in-chief 
will determine what action, if any, should  be taken in the interference. 


2342    Addition to Interference 


37 CFR 1.642.     Addition of application or patent to interference. 
During the pendency of an interference, if the examiner-in-chief becomes 
aware  of an application or a patent not involved in the interference 
which claims  the same patentable invention as a count in the 
interference, the examiner-in-chief  may add the application or patent to 
the interference on such terms as may  be fair to all parties. 

37 CFR 1.642 permits an examiner-in-chief to add a newly discovered 
patent,  as well as newly discovered applications, to an interference 
since 35 U.S.C.  135(a) authorizes interferences between applications and 
patents. 
EXAMINER DISCOVERS ANOTHER APPLICATION OR PATENT DURING INTERFERENCE 
If, during the pendency of an interference, the examiner discovers another 
 application or patent claiming subject matter which is the same as, or 
not  patentably distinct from, the invention defined in a count of the 
interference,  the examiner should bring the application or patent to the 
attention of the  examiner-in-chief in charge of the interference. The 
examiner-in-chief will  determine what action, if any, should be taken in 
the interference. 
If the application in question is for reissue of a patent involved in the 
interference,  see MPEP w 2360. 


2343    Prosecution by Assignee 


37 CFR 1.643.     Prosecution of interference by assignee. 

(a)   An assignee of record in the Patent and Trademark Office of the 
entire  interest in an application or patent involved in an interference 
is entitled  to conduct prosecution of the interference to the exclusion 
of the inventor. 
(b)   An assignee of a part interest in an application or patent involved 
in  an interference may file a motion (w 1.635) for entry of an order 
authorizing  it to prosecute the interference. The motion shall show (1) 
the inability or  refusal of the inventor to prosecute the interference or 
(2) other cause why  the ends of justice require that the assignee of a 
part interest be permitted  to prosecute the interference. The 
examiner-in-chief may allow the assignee  of a part interest to prosecute 
the interference upon such terms as may be  appropriate. 


2344    Petitions 


37 CFR 1.644.     Petitions in interferences. 

(a)   There is no appeal to the Commissioner in an interference from a 
decision  of an examiner-in-chief or a panel consisting of more than one 
examiner-in-chief.  The Commissioner will not consider a petition in an 
interference unless: 
(1)   The petition is from a decision of an examiner-in-chief or a panel 
and  the examiner-in-chief or the panel shall be of the opinion (i) that 
the decision  involves a controlling question of procedure or an 
interpretation of a rule  to which there is a substantial ground for a 
difference of opinion and (ii)  that an immediate decision on petition by 
the Commissioner may materially advance  the ultimate termination of the 
interference; 

(2)   The petition seeks to invoke the supervisory authority of the 
Commissioner  and is not filed prior to the decision of the Board awarding 
judgment and does  not relate to (i) the merits of priority of invention 
or patentability or (ii)  the admissibility of evidence under the Federal 
Rules of Evidence; or 
(3)   The petition seeks relief under w 1.183. 

(b)   A petition under paragraph (a)(1) of this section filed more than 15 
 days after the date of the decision of the examiner-in-chief or the panel 
may  be dismissed as untimely. A petition under paragraph (a)(2) of this 
section  shall not be filed prior to decision by the Board awarding 
judgment. Any petition  under paragraph (a)(3) of this section shall be 
timely if it is made as part  of, or simultaneously with, a proper motion 
under w 1.633, w 1.634, or w 1.635.  Any opposition to a petition shall be 
filed within 15 days of the date of service  of the petition. 

(c)   The filing of a petition shall not stay the proceeding unless a stay 
 is granted in the discretion of the examiner-in-chief, the panel, or the 
Commissioner. 
(d)   Any petition must contain a statement of the facts involved and the 
point  or points to be reviewed and the action requested. Briefs or 
memoranda, if  any, in support of the petition or opposition shall 
accompany or be embodied  therein. The petition will be decided on the 
basis of the  record made before  the examiner-in-chief or the panel and 
no new evidence will be considered by  the Commissioner in deciding the 
petition.  Copies of documents already of  record in the interference 
shall not be submitted with the petition or opposition. 
(e)   Any petition under paragraph (a) of this section shall be 
accompanied  by the petition fee set forth in w 1.17(h). 

(f)   Any request for reconsideration of a decision by the Commissioner 
shall  be filed within 15 days of the decision of the Commissioner and 
must be accompanied  by the fee set forth in w 1.17(h). No opposition to a 
request for reconsideration  shall be filed unless requested by the 
Commissioner.  The decision will not  ordinarily be modified unless such 
an opposition has been requested by the  Commissioner. 

(g)   Where reasonably possible, service of any petition, opposition, or 
request  for reconsideration shall be such that delivery is accomplished 
within one  working day.  Service by hand or "Express Mail" complies with 
this paragraph. 
(h)   An oral hearing on the petition will not be granted except when 
considered  necessary by the Commissioner. 

(i)   The Commissioner may delegate to appropriate Patent and Trademark 
Office  employees the determination of petitions under this section. 

Under 37 CFR 1.644, petitions to the Commissioner are authorized in 
interference  cases under certain restricted conditions.  Petitions in 
interferences have  in the past been the source of substantial delay.  37 
CFR 1.644 attempts to  minimize those delays.  37 CFR 1.644 authorizes a 
petition to the 



Commissioner from a decision of an examiner-in-chief or a panel when the 
examiner-in-chief  or the panel shall be of the opinion (1) that the 
decision involves a controlling  question of procedure or an 
interpretation of a rule as to which there is a  substantial ground for a 
difference of opinion and (2) that an immediate decision  on petition 
would materially advance the ultimate termination of the interference. 
The standard is intended to be analogous to that of a district court 
certifying  a question to a court of appeals under 28 U.S.C. 1292(b). A 
petition can be  filed seeking to invoke the supervisory authority of the 
Commissioner.  However,  the petition cannot be filed prior to entry of 
judgment and cannot relate to  the merits of priority or patentability or 
the admissibility of evidence under  the Federal Rules of Evidence.  A 
petition may also be filed seeking waiver  of a rule.  A fee as set forth 
in 37 CFR 1.17(h) is charged for each petition  and for each request for 
reconsideration of a decision on petition.  Any petition  can be decided 
on the record made before the examiner-in-chief or the Board  and 
additional evidence cannot be submitted with the petition.  An opposition 
cannot  be filed unless ordered by the Commissioner.  Where reasonably 
possible,  service of a petition must be such that delivery is 
accomplished within 1 day.  Service by hand or "Express Mail" complies 
with this requirement. 

When a PTO employee is granted authority to decide a petition under 37 CFR 
 1.644(i) in an interference case, the employee will not be the 
examiner-in-chief  handling the interference or an employee on a panel of 
the Board deciding the  petition.  It is expected that an employee 
deciding a petition by delegation  of authority will be one who could 
exercise independent judgment on the petition  bearing in mind that a 
petition will be decided on the record made before the  examiner-in-chief 
or the panel.  In connection with this later point, findings  of fact by 
an examiner-in-chief or the Board will be presumed to be correct  unless 
shown to be clearly erroneous.  Discretionary action by an 
examiner-in-chief  or the Board will not be overturned unless it is shown 
that an abuse of discretion  occurred. 

A petition under 37 CFR 1.644(a)(2) cannot be filed until after the Board 
has  entered judgment and the petition cannot relate to the merits of 
priority of  invention or patentability or a question of whether evidence 
is admissible  under Federal Rules of Evidence. 

The provisions of 37 CFR 1.644(g) apply only to petitions filed under 37 
CFR  1.644; those provisions do not apply to oppositions under 37 CFR 
1.638. 
The CCPA has stated that, "in performing his duties, the Commissioner 
cannot  usurp the functions or impinge upon the jurisdiction of the Board 
. . . established  by 35 U.S.C. 135."  In re Dickinson, 299 F.2d 954, 958, 
133 USPQ 39, 43 (CCPA  1962). See also Myers v. Feigelman, supra, 455 F.2d 
at 599, n. 8, 172 USPQ  at 583 n. 8.  However, it is also true that the 
Commissioner "shall superintend  or perform all duties required by law 
respecting the granting of patents. .  . ." 35 U.S.C. 6; Kingsland v. 
Carter Carburetor Corp., 83 U.S. App. D.C. 266,  168 F.2d 565, 77 USPQ 499 
(D.C. Cir. 1948); In re Staeger, 189 USPQ 284, 285  n. 2 (Comm'r Pat. 
1974).  The Commissioner, subject to approval of the Secretary  of 
Commerce, establishes the procedure by which the examiner-in-chief and the 
 Board will consider interference cases, 35 U.S.C. 6.  See also 35 U.S.C. 
23  relating to affidavits and depositions. 

Under the rules, the Commissioner will not determine on petition either 
"priority  of invention" or "patentability."  See 37 CFR 1.644(a)(2). 
Likewise, the Commissioner  will not consider whether evidence should have 
been admitted or excluded under  the Federal Rules of Evidence.  The PTO 
believes that the Federal courts, which  routinely rule on admissibility 
under the Federal Rules, are in a better position  to determine whether 
the Board properly interpreted the Federal Rules of Evidence. 
While the Commissioner will not decide "priority of invention" or 
"patentability"  under 35 U.S.C. 135(a), it does not follow that the 
Commissioner is precluded  from interpreting PTO rules on procedural 
matters, including procedural matters  related to the admissibility of 
evidence on some basis other than the Federal  Rules of Evidence, e.g., 
whether a party has complied with a PTO rule such  as 37 CFR 1.671(c) 
(procedure for relying on affidavits) or 37 CFR 1.671(g) 
(permission required for obtaining evidence by subpoena). 


2345    Extension of Time 


37 CFR 1.645.     Extension of time, late papers, stay of proceedings. 
(a)   Except to extend the time for filing a notice of appeal to the U.S. 
Court  of Appeals for the Federal Circuit or for commencing a civil 
action, a party  may file a motion (w 1.635) seeking an extension of time 
to take action in  an interference. See w 1.304(a) for extensions of time 
for filing a notice  of appeal to the U.S. Court of Appeals for the 
Federal Circuit or for commencing  a civil action. The motion shall be 
filed within sufficient time to actually  reach the examiner-in-chief 
before expiration of the time for taking action.  A moving party should 
not assume that the motion will be granted even if there  is no objection 
by any other party.  The motion will be denied unless the moving  party 
shows good cause why an extension should be granted. The press of other 
business arising after an examiner-in-chief sets a time for  taking action 
 will not normally constitute good cause. A motion seeking additional time 
to  take testimony because a party has not been able to procure the 
testimony of  a witness shall set forth the name of the witness, any steps 
taken to procure  the testimony of the witness, the dates on which the 
steps were taken, and  the facts expected to be proved through the witness. 



(b)   Any paper belatedly filed will not be considered except upon motion 
(w  1.635) which shows sufficient cause why the paper was not timely 
filed. See  w 1.304(a) for exclusive procedures relating to belated filing 
of a notice  of appeal to the U.S. Court of Appeals for the Federal 
Circuit or belated commencement  of a civil action. 

(c)   The provisions of w 1.136 do not apply to time periods in 
interferences. 
(d)   In an appropriate circumstance, an examiner-in-chief may stay 
proceedings  in an interference. 

37 CFR 1.645 permits a party to file a motion to seek an extension of time 
 to take action in an interference. The motion must be filed within 
sufficient  time to actually reach an examiner-in-chief prior to 
expiration of the time  for taking action. Under 37 CFR 1.645, a moving 
party cannot assume that a  motion for extension of time will be granted. 
Under 37 CFR 1.610(d)(6), a request  for an extension of time can be made 
orally and an appropriate order will then  be entered thus eliminating 
considerable paper work. The order will be the  written record of the 
request and decision. See 37 CFR 1.2. Extensions of time  have in the past 
caused  numerous delays in interference cases. Under previous 
interference practice, some delays were caused because attorneys and 
agents  on many occasions, unexpectedly received orders setting times. 
Under the revised  practice, attorneys and agents can expect times to be 
set for filing preliminary  statements, preliminary motions, motions for 
additional discovery, testimony,  and briefs after a conference call. It 
is expected that use of conference calls  will permit an examiner-in-chief 
and attorneys or agents for parties to set  a time schedule which is 
mutually satisfactory.  A motion to extend time will  not be granted 
unless a party shows good cause.  The use of conference calls  will allow 
schedules to be set before orders setting times are entered and  therefore 
the press of other business which arises after the examiner-in-chief  and 
attorneys and agents agree to times will not normally be considered good 
cause. 

37 CFR 1.645(a) specifies the procedure to be used when a written motion 
is  filed. It should be noted that an examiner-in-chief may require a 
written motion  notwithstanding a conference call. 

When counsel and an examiner-in-chief agree to a schedule and times are 
set,  the parties are expected to adhere to the schedule unless there are 
unusual  circumstances. Apart from work that counsel may have in an 
interference, an  examiner-in-chief has a docket and must manage not only 
the interference involving  counsel, but numerous other interferences. 
The U.S. Court of Appeals for the  Federal Circuit said the following in 
Rosemount Inc. v. Beckman Instruments,  Inc., 727 F.2d 1540, 1549 - 1550, 
221 USPQ 1, 10 (Fed. Cir. 1984): 
"The conduct of a trial, granting of continuances and the like, is not, 
however,  solely or entirely a matter of balancing conveniences of the 
parties. The Federal  Rules of Civil Procedure recognize another 
consideration - the need for the  exercise of discretion by the trial 
court in carrying out its duty of managing  the judicial process, the 
business of the court, and the administration of  justice." 

However, the rules recognize the need for the exercise of discretion of an 
 examiner-in-chief in carrying out his or her duty of managing the 
interference 
(37 CFR 1.610), the business of the PTO (37 CFR 1.610), and the 
administration  of justice (37 CFR 1.610). 

Extensions of time to seek judicial review of a decision of the Board are 
determined  by the Commissioner, under the provisions of 37 CFR 1.304(a). 
See MPEP w 1216. 

2346    Service of Papers 


37 CFR 1.646.     Service of papers, proof of service. 

(a)   A copy of every paper filed in the Patent and Trademark Office in an 
 interference or an application or patent involved in the interference 
shall  be served upon all other parties except: 

(1)   Preliminary statements when filed under w 1.621;  preliminary 
statements  shall be served when service is ordered by an examiner-in-chief. 

(2)   Certified transcripts and exhibits which accompany the transcripts 
filed  under ww 1.676 or 1.684; copies of transcripts shall be served as 
part of a  party's record under w 1.653(c). 

(b)   Service shall be on an attorney or agent for a party. If there is no 
 attorney or agent for the party, service shall be on the party.  An 
examiner-in-chief  may order additional service or waive service where 
appropriate. 

(c)   Unless otherwise ordered by an examiner-in-chief, or except as 
otherwise  provided by this subpart, service of a paper shall be made as 
follows: 
(1)   By handing a copy of the paper to the person served. 

(2)     By leaving a copy of the paper with someone employed by the person 
 at the person's usual place of business. 

(3)   When the person served has no usual place of business, by leaving a 
copy  of the paper at the person's residence with someone of suitable age 
and discretion  then residing therein. 

(4)   By mailing a copy of the paper by first class mail; when service is 
by  mail the date of mailing is regarded as the date of service. 

(5)   When it is shown to the satisfaction of an examiner-in-chief that 
none  of the above methods of obtaining or serving the copy of the paper 
was successful,  the examiner-in-chief may order service by publication of 
an appropriate notice  in the Official Gazette. 

(d)   An examiner-in-chief may order that a paper be served by hand or 
"Express  Mail". 

(e)   Proof of service must be made before a paper will be considered in 
an  interference. Proof of service may appear on or be affixed to the 
paper.  Proof  of service shall include the date and manner of service. 
In the case of personal  service under paragraphs (c)(1) through (c)(3) of 
this section, proof of service  shall include the names of any person 
served and the person who made the service.  Proof of service may be made 
by an acknowledgment of service by or on behalf  of the person served or a 
statement signed by the party or the party's attorney  or agent containing 
the information required by this section. A statement of  an attorney or 
agent attached to, or appearing in, the paper stating the date  and manner 
of service will be accepted as prima facie proof of service. 



2347    Translations 


37 CFR 1.647.     Translation of document in foreign language. 

When a party relies on a document in a language other than English, a 
translation  of the document into English and an affidavit attesting to 
the accuracy of  the translation shall be filed with the document. 

Under 37 CFR 1.647, when a party relies on a document in a non-English 
language,  an English language translation of the document and an 
affidavit attesting  to the accuracy of the translation will be required. 
The rule applies to any  document, including evidence submitted with 
motions, foreign applications for  which a party seeks benefit, testimony 
and exhibits introduced in evidence  during testimony. 


2351    Times for Discovery and Testimony 


37 CFR 1.651.     Setting times for discovery and taking testimony, 
parties  entitled to take testimony. 

(a)   At an appropriate stage in an interference, an examiner-in-chief 
shall  set (1) a time for filing motions (w 1.635) for additional 
discovery under w 1.687(c) and (2) testimony periods for taking any 
necessary testimony. 
(b)   Where appropriate, testimony periods will be set to permit a party 
to: 
(1)   Present its case-in-chief and/or case-in-rebuttal and/or 

(2)   Cross-examine an opponent's case-in-chief and/or a case-in-rebuttal. 
(c)   A party is not entitled to take testimony to present a case-in-chief 
 unless: 

(1)   The examiner-in-chief orders the taking of testimony under w 
1.639(c); 
(2)   The party alleges in its preliminary statement a date of invention 
prior  to the earlier of the filing date or effective filing date of the 
senior party; 
(3)   A testimony period has been set to permit an opponent to prove a 
date  of invention prior to the earlier of the filing date or effective 
filing date  of the party and the party has filed a preliminary statement 
alleging a date  of invention prior to that date; or 

(4)   A motion (w 1.635) is filed showing good cause why a testimony 
period  should be set. 

(d)   Testimony shall be taken during the testimony periods set under 
paragraph 
(a) of this section. 

Under 37 CFR 1.651, after a decision is entered on preliminary motions, an 
 examiner-in-chief sets times for filing motions for additional discovery 
and  for taking testimony. Any motion for additional discovery will be to 
obtain  answers to interrogatories, requests for admissions, and documents 
and things  necessary for a party to prepare its case-in-chief. 


2352    Judgment for Failure To Take Testimony or   File Record 

37 CFR 1.652.     Judgment for failure to take testimony or file record. 
If a junior party fails to timely take testimony authorized under w 1.651, 
 or file a record under w 1.653(c), an examiner-in-chief, with or without 
a  motion (w 1.635) by another party, may issue an order to show cause why 
judgment  should not be entered against the junior party. When an order is 
issued under  this section, the Board shall enter judgment in accordance 
with the order unless,  within 15 days after the date of the order, the 
junior party files a paper  which shows good cause why judgment should not 
be entered in accordance with  the order. Any other party may file a 
response to the paper within 15 days  of the date of service of the paper. 
If the party against whom the order was  issued fails to show good cause, 
the Board shall enter judgment against the  party. 


2353    Records and Exhibits 


37 CFR 1.653.     Record and exhibits. 

(a)   Testimony shall consist of affidavits under w 1.672 (b) and (e), 
transcripts  of depositions under ww 1.672 (b) and (c), agreed statements 
of fact under  w 1.672(f), and transcripts of interrogatories, 
cross-interrogatories, and  recorded answers under w 1.684(c). 

(b)   An affidavit shall be filed as set forth in w 1.672 (b) or (e).  A 
certified  transcript of a deposition including a deposition 
cross-examining an affiant,  shall be filed as set forth in w 1.676. An 
original agreed statement shall  be filed as set forth in w 1.672(f). A 
transcript of interrogatories, cross-interrogatories,  and recorded 
answers shall be filed as set forth under w 1.684(c). 
(c)   In addition to the items specified in paragraph (b) of this section 
and  within a time set by an examiner-in-chief each party shall file three 
copies  and serve one copy of a record consisting of: 

(1)   An index of the names of each witness giving the pages of the record 
 where the direct testimony and cross-examination of each witness begins. 
(2)   An index of exhibits briefly describing the nature of each exhibit 
and  giving the page of the record where each exhibit is first identified 
and offered  into evidence. 

(3)   The count or counts. 

(4)   Each (i) affidavit, (ii) transcript, including transcripts of 
cross-examination  of any affiant, (iii) agreed statement relied upon by 
the party, and (iv) transcript  of interrogatories, cross-interrogatories, 
and recorded answers filed under  paragraph (b) of this section. 

(5)   Each notice, official record, and publication relied upon by the 
party  and filed under w 1.682(a). 

(6)   Any evidence from another interference, proceeding, or action relied 
 upon by the party under w 1.683. 

(7)   Each request for an admission and the admission and each written 
interrogatory  and the answer upon which a party  intends to rely under w 
1.688. 
(d)   The pages of the record shall be consecutively numbered. 

(e)   The name of each witness shall appear at the top of each page of 
each  affidavit or transcript. 

(f)   The record may be typewritten or printed. 

(g)   When the record is printed, it may be produced by standard 
typographical  printing or by any process capable of producing a clear 
black permanent image.  All printed matter except on covers must appear in 
at least 11 point type on  opaque, unglazed paper. Margins must be 
justified.  Footnotes may not be printed  in type smaller than 9 point. 
The page size shall be 8 1/2 by 11 inches (21.8  by 27.9 cm.) with type 
matter 6 1/2 by 9 1/2 inches (16.5 by 24.1 cm.). The  record shall be 
bound to lie flat when open. 

(h)   When the record is typewritten, it must be clearly legible on 
opaque,  unglazed, durable paper approximately 8 1/2 by 11 inches (21.8 by 
27.9 cm.)  in size (letter size). Typing shall be double-spaced on one 
side of the paper  in not smaller than pica-type with a margin of 1 1/2 
(3.8 cm.) on the left-hand  side of the page. The pages of the record 
shall be bound with covers at their  left edges in such manner to lie flat 
when open in one or more volumes of convenient  size (approximately 100 
pages per volume is suggested). Multigraphed or otherwise  reproduced 
copies conforming to the standards specified in this paragraph may  be 
accepted. 

(i)   Each party shall file its exhibits with the record specified in 
paragraph 
(c) of this section.  One copy of each documentary exhibit shall be 
served.  Documentary exhibits shall be filed in an envelope or folder and 
shall not  be bound as part of the record. Physical exhibits, if not filed 
by an officer 


under w 1.676(d), shall be filed with the record. Each exhibit shall 
contain  a label which identifies the party submitting the exhibit and an 
exhibit number,  the style of the interference (e.g., Jones v. Smith), and 
the interference  number.  Where possible, the label should appear at the 
bottom right-hand corner  of each documentary exhibit. Upon termination of 
an interference, an examiner-in-chief  may return an exhibit to the party 
filing the exhibit. When any exhibit is  returned, the examiner-in-chief 
shall enter an appropriate order indicating  that the exhibit has been 
returned. 

(j)   Any testimony, record, or exhibit which does not comply with this 
section  may be returned under w 1.618(a). 

37 CFR 1.653 sets out what shall be in the record to be considered by the 
Board  at final hearing.  The record continues to be printed or typed on 
paper 8 1/2  inches by 11 inches in size. 

Accordingly, when a party files an affidavit, the party should use 8 1/2 
by  11 inch paper for the affidavit. 

The evidentiary record and exhibits cannot be transmitted by facsimile; 
(37  CFR1.6(d)(9)). 


2354    Final Hearing 


37 CFR 1.654.     Final hearing. 

(a)   At an appropriate stage of the interference, the parties will be 
given  an opportunity to appear before the Board to present oral argument 
at a final  hearing. An examiner-in-chief shall set a date and time for 
final hearing.  Unless otherwise ordered by an examiner-in-chief or the 
Board, each party will  be entitled to no more than 60 minutes of oral 
argument at final hearing. 
(b)   The opening argument of a junior party shall include a fair 
statement  of the junior party's case and the junior party's position with 
respect to  the case presented on behalf of any other party.  A junior 
party may reserve  a portion of its time for rebuttal. 

(c)   A party shall not be entitled to argue that an opponent abandoned, 
suppressed,  or concealed an actual reduction to practice unless a notice 
under w 1.632  was timely filed. 

(d)   After final hearing, the interference shall be taken under 
advisement  by the Board. No further paper shall be filed except under w 
1.658(b) or as  authorized by an examiner-in-chief or the Board. No 
additional oral argument  shall be had unless ordered by the Board. 

37 CFR 1.654 continues the practice of holding a final hearing where oral 
argument  may be presented by all parties. No fee is charged for appearing 
at oral argument  at final hearing in an interference. 


2355    Final Decision, Matters Considered 


37 CFR 1.655.     Matters considered in rendering a final decision. 
(a)   In rendering a final decision, the Board may consider any properly 
raised  issue including (1) priority of invention, (2) derivation by an 
opponent from  a party who filed a preliminary statement under w 1.625, 
(3) patentability  of the invention, (4) admissibility of evidence, (5) 
any interlocutory matter  deferred to final hearing, and (6) any other 
matter necessary to resolve the  interference. The Board may also consider 
whether any interlocutory order was  manifestly erroneous or an abuse of 
discretion. All interlocutory orders shall  be presumed to have been 
correct and the burden of showing manifest error or  an abuse of 
discretion shall be on the party attacking the order. 

(b)   A party shall not be entitled to raise for consideration at final 
hearing  a matter which properly could have been raised by a motion under 
ww 1.633 or  1.634 unless (1) the motion was properly filed, (2) the 
matter was properly  raised by a party in an opposition to a motion under 
ww 1.633 or 1.634 and  the motion was granted over the  opposition, or (3) 
the party shows good cause  why the issue was not timely raised by motion 
or opposition. 

(c)   To prevent manifest injustice, the Board may consider an issue even 
though  it would not otherwise be entitled to consideration under this 
section. 
37 CFR 1.655 specifies the matters which can be considered in rendering a 
final  decision.  Patentability is an issue which may be raised.  The 
Board can also  consider whether any interlocutory order was manifestly 
erroneous or an abuse  of discretion, although any interlocutory order 
will be presumed to be correct  and the burden of showing error shall be 
on the party attacking the order.  This last procedural provision permits 
the Board to correct any manifest error  before a party seeks judicial 
review of an interlocutory order along with judicial  review of the 
Board's final decision. 

Patentability will initially be determined by a single examiner-in-chief. 
 See 37 CFR 1.610(a) and 1.640(b).  If the examiner-in-chief determines 
that  a claim of a party is unpatentable to that party, an order to show 
cause why  judgment should not be entered as to that claim will be issued 
to that party.  See 37 CFR 1.640(d).  If a response to the order to show 
cause is filed,  a decision will be entered by the Board.  See 37 CFR 
1.610(a) and 1.640(e).  If the Board determines that the claim is not 
patentable to the party, a final  decision and judgment will be entered 
holding the claim to be unpatentable.  Review of the final decision and 
judgment is by judicial review under 35  U.S.C. 141 or 146.  It should be 
noted, however, that if there are other claims  in the party's application 
or patent which are deemed to be patentable, an  interlocutory order will 
be entered holding only that certain claims are unpatentable.  A final 
order holding those claims unpatentable will be entered after final 
hearing on other issues.  Such a practice will avoid piecemeal judicial 
review. 

2356    Briefs for Final Hearing 


37 CFR 1.656  Briefs for final hearing. 

(a)   Each party shall be entitled to file briefs for final hearing. The 
examiner-in-chief  shall determine the briefs needed and shall set the 
time and order for filing  briefs. 

(b)   The opening brief of a junior party shall contain under appropriate 
headings  and in the order indicated: 

(1)   A table of contents, with page references, and a table of cases 
(alphabetically  arranged), statutes, and other authorities cited, with 
references to the pages  of the brief where they are cited. 

(2)   A statement of the issues presented for decision in the 
interference. 

(3)     A statement of the facts relevant to the issues  presented for 
decision  with appropriate references to the record. 

(4)   An argument, which may be preceded by a summary, which shall contain 
 the contentions of the party with respect to the issues to be decided, 
and  the reasons therefor, with citations to the cases, statutes, other 
authorities,  and parts of the record relied on. 

(5)   A short conclusion stating the precise relief requested. 

(6)   An appendix containing a copy of the counts. 



(c)   The opening brief of the senior party shall conform to the 
requirements  of paragraph (b) of this section except: 

(1)     A statement of the issues and of the facts need not be made unless 
 the party is dissatisfied with the statement in the opening brief of the 
junior  party and 

(2)   An appendix containing a copy of the counts need not be included if 
the  copy of the counts in the opening brief of the junior party is 
correct. 
(d)   Briefs may be printed or typewritten. If typewritten, legal-size 
paper  may be used. The opening brief of each party in excess of 50 
legal-size double-spaced  typewritten pages or any other brief in excess 
of 25 legal-size double-spaced  typewritten pages shall be printed unless 
a satisfactory reason be given why  the brief should not be printed.  Any 
printed brief shall comply with the requirements  of w 1.653(g). Any 
typewritten brief shall comply with the requirements of  w 1.653(h), 
except legal-size paper may be used and the binding and covers  specified 
are not required. 

(e)   An original and three copies of each brief must be filed. 

(f)   Any brief which does not comply with the requirements of this 
section  may be returned under w 1.618(a). 

(g)   Any party, separate from its opening brief, but filed concurrently 
therewith,  may file an original and three copies of concise proposed 
findings of fact  and conclusions of law. Any proposed findings of fact 
shall be supported by  specific references to the record.  Any proposed 
conclusions of law shall be  supported by citation of cases, statutes, or 
other authority. Any opposing  party, separate from its opening or reply 
brief, but filed concurrently therewith,  may file a paper accepting or 
objecting to any proposed findings of fact or  conclusions of law; when 
objecting, a reason must be given. The Board may adopt  the proposed 
findings of fact and conclusions of law in whole or in part. 
(h)   If a party wants the Board in rendering its final decision to rule 
on  the admissibility of any evidence, the party shall file with its 
opening brief  an original and three copies of a motion (w 1.635) to 
suppress the evidence.  The provisions of w 1.637(b) do not apply to a 
motion to suppress under this  paragraph. Any objection previously made to 
the admissibility of an opponent's  evidence is waived unless the motion 
required by this paragraph is filed. An  original and three copies of an 
opposition to the motion may  be filed with  an opponent's opening brief 
or reply brief as may be appropriate. 

(i)   When a junior party fails to timely file an opening brief, an order 
may  issue requiring the junior party to show cause why the Board should 
not treat  failure to file the brief as a concession of priority. If the 
junior party  fails to respond within a time period set in the order, 
judgment may be entered  against the junior party. 

Once the parties have filed their evidentiary records, times will be set 
for  filing briefs, and then the case will be set for hearing.  37 CFR 
1.656 is  specific as to the contents of the briefs. 

In large measure, 37 CFR 1.656 follows the requirements of Rule 28 of the 
Federal  Rules of Appellate Procedure.  An original and three copies of a 
brief are  required.  Under 37 CFR 1.656(h), if a party wants the Board in 
rendering its  final decision to rule that any evidence is inadmissible, 
the party must file  with its opening brief an original and three copies 
of a motion to suppress  the evidence.  Any previous objections to the 
admissibility of evidence is  waived unless the motion to suppress is 
filed.  This procedural provision makes  clear that an objection to the 
admissibility of evidence must be renewed at  final hearing and will be 
considered by the Board in rendering its final decision. 
If a junior party fails to timely file an opening brief, an order to show 
cause  may be issued against the party, in accordance with 37 CFR 
1.656(f). 

2357    Burden of Proof 


37 CFR 1.657.     Burden of proof as to date of invention. 

A rebuttable presumption shall exist that, as to each count, the inventors 
 made their invention in the chronological order of the earlier of their 
filing  dates or effective filing dates. The burden of proof shall be upon 
a party  who contends otherwise. 


2358    Final Decision 


37 CFR 1.658.     Final decision. 

(a)   After final hearing, the Board shall enter a decision resolving the 
issues  raised at final hearing. The decision may (1) enter judgment, in 
whole or in  part, (2) remand the interference to an examiner-in-chief for 
further proceedings,  or (3) take further action not inconsistent with 
law.  A judgment as to a count  shall state whether or not each party is 
entitled to a patent containing the  claims in the party's patent or 
application which correspond to the count.  When the Board enters a 
decision awarding judgment as  to all counts, the decision  shall be 
regarded as a final decision. 

(b)   Any request for reconsideration of a decision under paragraph (a) of 
 this section shall be filed within one month after the date of the 
decision.  The request for reconsideration shall specify with 
particularity the points  believed to have been misapprehended or 
overlooked in rendering the decision.  Any reply to a request for 
reconsideration shall be filed within 14 days of  the date of service of 
the request for reconsideration. Where reasonably possible,  service of 
the request for reconsideration shall be such that delivery is 
accomplished  by hand or  "Express Mail." The Board shall enter a decision 
on the request  for reconsideration. If the Board shall be of the opinion 
that the decision  on the request for reconsideration significantly 
modifies its original decision  under paragraph (a) of this section, the 
Board may designate the decision on  the request for reconsideration as a 
new decision. 

(c)   A judgment in an interference settles all issues which (1) were 
raised  and decided in the interference, (2) could have been properly 
raised and decided  in the interference by a motion under w 1.633 (a) 
through (d) and (f) through 
(j) or w 1.634 and (3) could have been properly raised and decided in an 
additional  interference with a motion under w 1.633(e). A losing party 
who could have  properly moved, but failed to move, under ww 1.633 or 
1.634, shall be estopped  to take ex parte or inter partes action in the 
Patent and Trademark Office  after the interference which is inconsistent 
with that party's failure to properly  move, except that a losing party 
shall not be estopped with respect to any  claims which correspond, or 
properly could have corresponded, to a count as  to which that party was 
awarded a favorable judgment. 

Filing of Reissue Application During Interference 

37 CFR 1.658(c) incorporates the guidelines set forth in the interference 
rules  correction notice (50 Fed. Reg. 23122, May 31, 1985, 1059 Official 
Gazette  27, October 22, 1985) for the application of the doctrine of 
interference estoppel  under 37 CFR l.658(c) with respect to a losing 
party's failure to move under  37 CFR 1.633(e) to declare an "additional 
interference" between an additional  application not involved in the 
interference and owned by the party and an  opponent's application or 
patent involved in the interference on a separate patentable invention. 
The notice states that generally a losing party will be estopped for 
failure  to move when the separate patentable invention (subject matter) 
which could  have been the subject of the "additional interference" was 
claimed (during  the pendency of the interference) (1) in the opponent's 
involved application  or patent or (2) in a noninvolved application owned 
by the party during the  pendency of the interference. 

Should a losing party after the termination of the interference acquire an 
 application which discloses or claims the separate patentable invention 
and which could have been the subject of the "additional  interference", 
estoppel would not apply because the party did not own the application 
during the pendency of the interference. The correction notice illustrates 
 the general applicability of interference estoppel in certain situations 
where  a losing party fails to move under 37 CFR 1.633(e) to declare an 
"additional  interference" on a separate patentable invention as follows: 

E23580003.bmp 



        Winning Opponent's    Losing Party's        Non-Involved 
Application 
        Involved application                                            or 
 Patent        Estoppel 



Claimed             Claimed   Yes   Disclosed     Claimed Yes 
Claimed         Disclosed 
(Application)     Yes 

                                (Patent)        No 

Disclosed Disclosed   No 



E235890003.end 

An invention disclosed and not claimed in a winning  opponent's patent 
would  not form the basis for a count because the patent does not contain 
a claim  which can be designated to correspond to the count.  Thus, a 
motion to declare  an additional interference under 37 CFR 1.633(e) could 
not have been properly  brought, and interference estoppel, therefore, 
would not apply. 

It has been found that a patentee involved in an interference may file a 
reissue  application for some other reason not contemplated by the rule, 
and for which  the entry of judgment or a motion under 37 CFR 1.633(h) 
would not be appropriate.  For example, the patentee might file a reissue 
application for the purpose  of amending claims of the patent which are 
directed to an invention which is  patentably distinct from the issue of 
the interference and which is not disclosed  by the opposing party.  In 
such a situation, addition of the reissue application  to the interference 
would be unnecessary.  37 CFR 1.662(b) accommodates this  third 
possibility by providing that, instead of filing a motion under 37 CFR 
1.633(h) to add the reissue application to the interference, a patentee 
may  show good cause why such a motion would not be appropriate under the 
particular  circumstances involved. 

In its final decision, the Board can (1) enter judgment, in whole or in 
part, 
(2) remand the interference to an examiner-in-chief, or (3) take further 
action  not inconsistent with law. A judgment as to a count will state 
whether or not  each party is entitled to a patent containing claims which 
correspond to the  count.  When judgment is entered as to all counts, the 
decision of the Board  is considered final for the purpose of judicial 
review.  37 CFR 1.658(c) defines  the doctrine of interference estoppel as 
it is to be applied in the PTO after  an interference is terminated.  The 
definition of interference estoppel is  designed to encourage parties in 
interference cases to settle as many issues  as possible in one 
proceeding.  37 CFR 1.658(c) creates an estoppel both as  to senior and 
junior parties unlike the previous practice (37 CFR 1.257) which  limited 
estoppel in some instances to junior parties.  An estoppel will not  apply 
with respect to any claims which correspond, or which properly could  have 
corresponded, to a count as to which the party is awarded a favorable 
judgment. 

After the Board has rendered a final decision in an interference, the 
losing  party may either appeal to the Court of Appeals for the Federal 
Circuit, under  35 U.S.C. 141, or file a civil action in a United States 
district court, under  35 U.S.C. 146.  Upon the filing of an appeal to the 
Court of Appeals for the  Federal Circuit, the opposing party may elect to 
have the proceeding conducted  in a district court.  In either event, the 
files will be retained at the Board  until the court proceeding has 
terminated.  (The PTO may, but normally does  not, issue the application 
of a winning party in an interference involving  only applications, 
notwithstanding the filing of a civil action under 35 U.S.C.  146 by the 
losing party.  See Monaco v. Watson, 270 F.2d 335, 122 USPQ 564 
(D.C.  Cir. 1959).)   See MPEP w 1216. 


2359    Board Recommendation 


37 CFR 1.659.     Recommendation. 

(a)   Should the Board have knowledge of any ground for rejecting any 
application  claim not involved in the judgment of the interference, it 
may include in its  decision a recommended rejection of the claim. Upon 
resumption of ex parte  prosecution of the application, the examiner shall 
be bound by the recommendation  and shall enter and maintain the 
recommended rejection unless an amendment  or showing of facts not 
previously of record is filed which, in the opinion  of the examiner, 
overcomes the recommended rejection. 

(b)   Should the Board have knowledge of any ground for reexamination of a 
 patent involved in the interference as to a patent claim not involved in 
the  judgment of the interference, it may include in its decision a 
recommendation  to the Commissioner that the patent be reexamined. The 
Commissioner will determine  whether reexamination will be ordered. 



(c)   The Board may make any other recommendation to the examiner or the 
Commissioner  as may be appropriate. 

Under 37 CFR 1.659, the Board can make recommendations to examiners and 
the  Commissioner, including recommendations that application claims not 
involved  in the interference be rejected and that a patent be reexamined 
as to patent  claims not involved in the interference. 

When a patent is involved in an interference each claim of the patent will 
 be designated to (1) correspond to a count or (2) not correspond to a 
count.  All claims which are ultimately determined to correspond to a 
count will be  involved in the judgment of the interference. Inasmuch as 
they are involved  in the judgment of the  interference, there is no need 
to recommend reexamination  of those claims. The claims involved in the 
interference are either patentable  or unpatentable based on the final 
decision of the Board. 37 CFR 1.659(b) merely  authorizes the Board to 
recommend reexamination of patent claims which (1)  are not involved in 
the judgment and (2) for one reason or another neither  party saw fit to 
move to designate as corresponding to a count. 


2360    Notice of Reexamination, Reissue, Protest, or Litigation 

37 CFR 1.660.     Notice of reexamination, reissue, protest or litigation. 
(a)   When a request for reexamination of a patent involved in an 
interference  is filed, the patent owner shall notify the Board within 10 
days of receiving  notice that the request was filed. 

(b)   When an application for reissue is filed by a patentee involved in 
an  interference, the patentee shall notify the Board within 10 days of 
the day  the application for reissue  is filed. 

(c)   When a protest under w 1.291 is filed against an application 
involved  in an interference, the applicant shall notify the Board within 
10 days of  receiving notice that the protest was filed. 

(d)   A party in an interference shall notify the Board promptly of any 
litigation  related to any patent or application involved in an 
interference, including  any civil action commenced under 35 U.S.C. 146. 

Under 37 CFR 1.660, a party is required to notify the Board when the 
party's  patent or application becomes involved in other PTO proceedings 
(reexamination,  reissue, or protest) or litigation.  The requirements of 
37 CFR 1.660 are designed  to keep the PTO and a party's opponent informed 
of activity which is relevant  to an interference.  These rules attempt, 
to the extent possible, to eliminate  procedural surprise. Inasmuch as 
mail delays occur and the PTO cannot react  instantaneously to every paper 
filed in connection with every application or  patent, the provisions of 
37 CFR 1.660 are believed helpful in preventing surprise  on the part of 
opponents and unnecessary work by examiners-in-chief or the  Board due to 
a lack of knowledge of relevant activity which may be taking place  in the 
PTO. 

REISSUE APPLICATION FILED WHILE PATENT IS IN INTERFERENCE 

37 CFR 1.660(b) requires the patentee involved in the interference to 
notify  the Board of the filing of the reissue application within 10 days 
of its filing  date. 

The reissue application may be the subject of a motion under 37 CFR 
1.633(h),  or may have been filed under 37 CFR 1.662(b) for the purpose of 
avoiding the  interference.  Before taking any action on the reissue, the 
primary examiner  should consult the examiner-in-chief in charge of the 
interference. It is particularly  important that the reissue application 
not be granted without the approval  of the examiner-in-chief. 


2361    Termination of Interference After Judgment 


37 CFR 1.661.     Termination of interference after judgment. 

After a final decision is entered by the Board, an interference is 
considered  terminated when no appeal (35 U.S.C. 141) or other review (35 
U.S.C. 146) has  been or can be taken or had. 

37 CFR 1.661 sets forth when an interference is considered terminated 
after  a judgment is entered in the interference. For the purpose of 
filing copies  of settlement agreements under 35 U.S.C. 135(c), if an 
appeal or civil action  is not filed, the interference is considered 
terminated as of the date the  time for filing an appeal or civil action 
expired, 37 CFR 1.661; Tallent v.  Lamoine, 204 USPQ 1058 (Comm'r Pat. 
1979). See also Nelson v. Bowler, 212 USPQ  760 (Comm'r Pat. 1981).  If an 
appeal is taken to the Court of Appeals for  the Federal Circuit, the 
interference terminates on the date of receipt of  the court's mandate by 
the Patent and Trademark Office. See MPEP w 1216.01.  If a civil action is 
filed, and the decision of the district court is not  appealed, the 
interference terminates on the date the time for filing an appeal  from 
the court's decision expires, Hunter v. Beissbarth, 15 USPQ2d 1343 
(Comm'r.  Pat. 1990). 


2362    Request for Entry of Adverse Judgment 


37 CFR 1.662.     Request for entry of adverse judgement; reissue filed by 
 patentee. 

(a)   A party may, at any time during an interference, request and agree 
to  entry of an adverse judgment. The filing by an applicant or patentee 
of a written  disclaimer of the invention defined by a count, concession 
of priority or unpatentability  of the subject matter of a count, 
abandonment of the invention defined by a  count, or abandonment of the 
contest as to a count will be treated as a request  for entry of an 
adverse judgment against the applicant or patentee as to all  claims which 
correspond to the count. Abandonment of an application by an applicant, 
other than an applicant for reissue having a claim of the patent sought to 
 be reissued involved in the interference, will be 



treated as a request for entry of an adverse judgment against the 
applicant  as to all claims corresponding to all counts. Upon the filing 
by a party of  a re quest for entry of an adverse judgment, the Board may 
enter judgment against  the party. 

(b)   If a patentee involved in an interference files an application for 
reissue  during the interference and omits all claims of the patent 
corresponding to  the counts of the interference for the purpose of 
avoiding the interference,  judgment may be entered against the patentee. 
A patentee who files an application  for reissue other than for the 
purpose of avoiding the interference shall timely  file a preliminary 
motion under  w 1.633 (h) or show good cause why the motion  could not 
have been timely filed or would not be appropriate. 

(c)   The filing of a statutory disclaimer under 35 U.S.C. 253 by a 
patentee  will delete any statutorily disclaimed claims from being 
involved in the interference.  A statutory disclaimer will not be treated 
as a request for entry of an adverse  judgment against the patentee unless 
it results in the deletion of all patent  claims corresponding to a count. 

37 CFR 1.662 provides that a party may request that an  adverse judgment 
be  entered. The section also provides that when a written disclaimer (not 
a statutory  disclaimer), concession of priority or unpatentability, 
abandonment of the  invention, abandonment of the application, or 
abandonment of the contest is  filed, the disclaimer, concession, or 
abandonment will be treated as a request  for entry of an adverse 
judgment. 37 CFR 1.622(b) provides that when a patentee  files a reissue 
application and omits all claims of a patent corresponding  to the counts 
of an interference for the purpose of avoiding the interference,  judgment 
will be entered against the patentee. If the reissue application is  not 
filed for the purpose of avoiding the interference, the patentee must 
either  file a timely motion under 37 CFR 1.633(h) to add it to the 
interference, or  show good cause (1) why the motion could not have been 
timely filed or (2)  why such a motion would not be appropriate. Addition 
of the reissue application  to the interference might not be appropriate, 
for example, if the reissue application  was filed for the purpose of 
amending claims which are directed to an invention  patentably distinct 
from the issue of the interference and not disclosed by  the opposing 
party.  Under 37 CFR 1.622(c), the filing of a statutory disclaimer  will 
not be treated as a request for entry of an adverse judgment unless all 
patent claims corresponding to a count are disclaimed. Under 37 CFR 
1.662(d),  if after entry of a judgment or after filing of a statutory 
disclaimer no interference  exists, the interference will be terminated as 
to any party against whom judgment  has not been entered and any further 
prosecution of any application involved  in the interference will be ex 
parte before the examiner. 

When some of the patent claims corresponding to a count are disclaimed, 
the  interference proceeds on the basis of the remaining claims which 
correspond  to the count. If all patent claims corresponding to a count 
are disclaimed,  judgment will be entered. The third sentence of 37 CFR 
1.662(a) does not apply  to an application which is not involved in an 
interference. If an applicant  files a continuation-in-part application 
and successfully moves (37 CFR 1.633(d))  to substitute the 
continuation-in-part for the application involved in the  interference, 
abandonment of the application originally involved in the interference 
would have no bearing on the interference. 


2363    Action After Interference 


37 CFR 1.664.     Action after interference. 

(a)   After termination of an interference, the examiner will promptly 
take  such action in any application previously involved in the 
interference as may  be necessary. Unless entered by order of an 
examiner-in-chief, amendments presented  during the interference shall not 
be entered, but may be subsequently presented  by the applicant subject to 
the provisions of this subpart provided prosecution  of the application is 
not otherwise closed. 

(b)   After judgement, the application of any party may be held subject to 
 further examination, including an interference with another application. 
The files are not returned to the examining group until after termination 
of  the interference. Jurisdiction of the examiner is automatically 
restored with  the return of the files, and the cases of all parties are 
subject to such ex  parte action as their respective conditions may 
require. The date when the  priority decision becomes final does not mark 
the beginning of a statutory  period for response by the applicant. See Ex 
parte Peterson, 49 USPQ 119, 1941  C.D. 8 (Comm'r Pat. 1941). 

The action to be taken by the examiner following termination of the 
interference  depends upon how the interference was terminated, and in 
some instances, the  basis of the termination.  All interferences 
conducted under rules 37 CFR 1.601  - 1.688 will be terminated by judgment. 

When the files are returned to the examining group after termination of 
the  interference, the primary examiner is required to make an entry on 
the index  in the interference file on the next vacant line that the 
decision has been  noted, such as by the words "Decision Noted" and the 
primary examiner's initials.  The interference file is then returned to 
the Service Branch of the Board  when the examiner is through with it. 
There it will be checked to see that  such note has been made and 
initialed before filing away the interference record. 
If an application has been withdrawn from issue for interference and is 
again  passed to issue, a notation "Re-examined and passed for issue" is 
placed on  the file wrapper together with a new signature of the primary 
examiner in the  box provided for this purpose.  Such notation will be 
relied on by the Publishing  Division as showing that the application is 
intended to be passed for issue  and makes it possible to screen out those 
applications which are mistakenly  forwarded to the Publishing Division 
during the pendency of the interference. 


See MPEP w 1302.12 with respect to listing references discussed in motion 
decisions,  and MPEP w 2364 concerning the entry of amendments. 

Form Paragraph 11.02 may be used to resume ex parte prosecution. 

W 11.02       Ex parte Prosecution is Resumed 

Interference No. [1] has been terminated by a decision [2] to applicant. 
Ex  parte prosecution is resumed. 

Examiner Note: 

In bracket 2, insert whether favorable or unfavorable. 


2363.01       No Interference in Fact 


The Board may, if it finds that there is no interference in fact, award 
judgment  to both parties.  In such a case, each party-applicant may be 
granted a patent  on the claims of the application designated to 
correspond to the count, if those claims are otherwise patentable. 

2363.02       The Winning Party 


If prosecution of the winning party's case had not been closed, the 
winning  party generally may be allowed additional and broader claims to 
the common  patentable subject matter. Note, however, In re Hoover Co., 
134 F.2d 624, 57  USPQ 111 (CCPA 1943).  The winning party of the 
interference is not denied  anything he or she was in possession of prior 
to the interference, nor does  he or she acquire any additional rights as 
a result of the interference.  His  or her case thus stands as it was 
prior to the interference. If the application  was under final rejection 
as to some of its claims at the time the interference  was formed, the 
institution of the interference acted to suspend, but not vacate,  the 
final rejection.  After termination of the interference, a letter is 
written  the applicant, as in the case of any other action unanswered at 
the time the  interference was instituted, setting a shortened period of 2 
months within  which to file an appeal or cancel the finally rejected claims. 

W 11.03       Office Action Unanswered 

This application contains an unanswered Office action mailed on [1]. 
A SHORTENED STATUTORY PERIOD FOR RESPONSE TO SUCH ACTION IS SET TO EXPIRE 
[2]  FROM THE DATE OF THIS LETTER. 

Examiner Note: 

This paragraph should be preceded by paragraph 11.02. 

In bracket [2] insert date, days or months. 


2363.03       The Losing Party 


37 CFR 1.663.     Status of claim of defeated applicant after 
interference. 
Whenever an adverse judgment is entered as to a count against an applicant 
 from which no appeal (35 U.S.C. 141) or other review (35 U.S.C. 146) has 
been  or can be taken or had, the claims of the application corresponding 
to the  count stand finally disposed of without further action by the 
examiner.  Such  claims are not open to further ex parte prosecution. 

The Board's judgment in an interference conducted under 37 CFR 1.601 - 
1.688  will state that the losing party is not entitled to a patent 
containing the  claims corresponding to  the count or counts.  Under 37 
CFR 1.663, such claims  "stand finally disposed of without further action 
by the examiner."  See also  35 U.S.C. 135(a).  When the files are 
returned to the examining group after  termination of the interference, a 
pencil line should be drawn through the  claims as to which a judgment of 
priority adverse to an applicant has been  rendered, and the notation "37 
CFR 1.663" should be written in the margin to  indicate the reason for the 
pencil line.  If these claims have not been cancelled  by the applicant 
and the case is otherwise ready for issue, these notations  should be 
replaced by a line in red ink and the notation "37 CFR 1.663" in  red ink 
before passing the case to issue, and the applicant notified of the 
cancellation by an Examiner's Amendment.  If an action is necessary in the 
 application after the interference, the applicant should also be informed 
that  "Claims (designated by numerals), as to which a judgment adverse to 
the applicant  has been rendered, stand finally disposed of in accordance 
with 37 CFR 1.663." 

If all the claims in the application are eliminated, a letter should be 
written  informing the applicant that all the claims in the application 
have been disposed  of, indicating the circumstances, that no claims 
remain subject to prosecution,  and that the application will be sent to 
the abandoned files with the next  group of abandoned applications. 
Proceedings are terminated as of the date  the interference terminated. 
See MPEP w 2361, third paragraph of text. 
If the losing party's case was under rejection at the time the 
interference  was declared, such rejection is ordinarily repeated (either 
in full or by reference  to the previous action) and, in addition, any 
other suitable rejections, as  discussed below, are made.  If the losing 
party's application was under final  rejection or ready for issue, his or 
her right to reopen the prosecution is  restricted to subject matter 
related to the issue of the interference. 
Where the losing party failed to get a copy of the opponent's drawing or 
specification  during the interference, the losing party may order a copy 
thereof to enable  said party to respond to a rejection based on the 
successful party's disclosure.  Such order is referred to the 
examiner-in-chief who has authority to approve  orders of this nature. 

In addition to repeating any outstanding rejection, the examiner should 
consider  whether any remaining claims in the losing party's application 
should be rejected  on the ground of unpatentability under 35 U.S.C. 
102/103, or on the ground  of estoppel. 



1. UNPATENTABILITY UNDER 35 U.S.C. 102/103 

The examiner should determine from the Board's decision the basis on which 
 judgment was rendered against the applicant.  If the judgment was that 
applicant  was not the first inventor of the subject matter in issue, the 
application  claims may be rejected under 35 U.S.C. 102(g)/103 as 
unpatentable over the  lost counts.  If the judgment was based on a 
holding that applicant derived  the invention from another, a rejection of 
claims as unpatentable over the  lost counts under 35 U.S.C. 102(f)/103 
may be in order.  Where the Board rendered  judgment against the applicant 
because his or her claims were unpatentable  over prior art, under 35 
U.S.C. 112, or on other grounds, the other claims  in the application 
should be reviewed to determine whether any of those grounds may be 
applicable to them. 
2. ESTOPPEL 

Claims which cannot be rejected as unpatentable over the lost counts may 
still  be subject to rejection on the ground of estoppel.  As stated in 37 
CFR 1.658(c),  a losing party who could have properly moved under 37 CFR 
1.633 or 1.634, but  failed to do so, is estopped to take subsequent 
action in the PTO which is  inconsistent with the party's failure to 
properly move.  However, in the event  of a "split award," the losing 
party is not estopped as to claims which corresponded,  or properly could 
have corresponded, to a count which he or she won. 
The following examples illustrate the application of estoppel to the 
losing  party: 

Example 1.  Junior party applicant AL and senior party applicant AK both 
disclose  separate patentable inventions "A" and "B" and claim only 
invention A in their  respective applications.  An interference is 
declared with a single count to  invention A. Neither party files a motion 
under 37 CFR 1.633(c)(1) to add a  count to invention B.  Judgment as to 
all of AL`s claims corresponding to the  sole count is awarded to junior 
party applicant AL. Senior party applicant  AK will be estopped to 
thereafter obtain a patent containing claims to invention  B, because 
applicant AK failed to move to add a count to invention B in the 
interference.  Junior party applicant AL will not be estopped to obtain a 
patent  containing claims to invention B. 

Example 2. In this example, the facts are the same as in example 1 except 
that  judgment is awarded as to all AK's claims corresponding to the count 
to senior  party applicant AK. Junior party applicant AL will be estopped 
to obtain a  patent containing claims to invention B in the interference. 
Senior party applicant  AK will not be estopped to obtain a patent 
containing claims to invention B. 
Example 3. Junior party applicant AM and senior party applicant AP both 
disclose  separate patentable inventions "C", "D", and "E" and claim 
inventions C and  D in their respective applications. An interference is 
declared with two counts.  Count 1 is to invention C and Count 2 is to 
invention D. Neither party files  a preliminary motion to add a proposed 
Count 3 to invention E. judgment as  to all AM's claims corresponding to 
Counts 1 and 2 is awarded to junior party  AM. Senior party applicant AP 
will be estopped to  thereafter obtain a patent  containing claims to 
invention E, because applicant AP failed to move to add  a count to 
invention E to the interference. Junior party applicant AM will  not be 
estopped to obtain a patent containing a claim to invention E. 
Example 4.  In this example, the facts are the same as in Example 3 except 
 that judgment is awarded as to all AP's claims corresponding to Counts 1 
and  2 to senior party applicant AP. Junior party applicant AM will be 
estopped  to obtain a patent containing claims to invention E, because 
applicant AM failed  to move to add a count to invention E in the 
interference. Senior party applicant  AP will not be estopped to obtain a 
patent containing claims to invention E. 
Example 5.  In this example, the facts are the same as in Example 3 except 
 that judgment is awarded on all of AM s claims corresponding to Count 1 
to  junior party applicant AM and judgment is awarded to all AP's claims 
corresponding  to Count 2 to senior party applicant AP. Both parties will 
be estopped to obtain  a patent containing claims to invention E, because 
neither moved to add a count  to invention E  during the interference. 
Assume that junior party AM could  have  properly moved under 37 CFR 
1.633(f) to be accorded the benefit of an  earlier application, but did 
not do so during the interference. Junior party  AM will not be estopped 
in subsequent ex parte prosecution from asking for  benefit of the earlier 
application as to the invention defined by Count 1.  Accordingly, if the 
examiner were to reject junior party AM's claim corresponding  to Count 1 
on the basis of some newly discovered art, junior party AM could  properly 
antedate the prior art by seeking the benefit under 35 U.S.C. 120  of the 
earlier application. Thus even though junior party AM was a "losing 
party" as to Count 2 (an adverse judgment as to junior party AM's claims 
corresponding  to Count 2 having been entered), junior party AM was 
awarded a favorable judgment 
(37 CFR 1.658(c)) as to  Count 1. Junior party AM will be estopped in 
subsequent  ex parte prosecution from attempting to be accorded the 
benefit of the earlier  application as to the invention of Count 2. 

Example 6. Applicant AQ discloses and claims invention "F." Applicant AR 
discloses  and claims separate patentable inventions "F" and "G." The 
assignee of applicant  AQ also owns an application AS which discloses and 
claims invention "G." An  interference is declared between applicant AQ 
and applicant AR. The sole count  is directed to invention F. No motion is 
filed by applicant AQ or its assignee  to declare an additional 
interference between applicant AR and applicant AS  with a count to 
invention G. A judgment as to all AR's claims corresponding  to the sole 
count is awarded to applicant AR. Applicant AS and the assignee  will be 
estopped to obtain a patent containing claims to invention G, because 
applicant AQ and the assignee failed to move to declare an additional 
interference  with a count to invention G. 

Example 7. The facts in this example are the same as the facts in Example 
6  except that judgment as to all of AQ's claims corresponding to the sole 
count  is awarded to applicant AQ. Applicant AS and the assignee would not 
be estopped,  because applicant AQ was not a "losing party" (37 CFR 1.658(c)). 

Example 8. Applicant AT discloses a generic invention to "solvent" and a 
species  to "benzene." Application AT contains a patentable claim 1 
(solvent) and no  other claims. Applicant AU discloses the generic 
invention to "solvent" and  species to "benzene" and "toluene." 
Application AU contains patentable claim  3 (solvent) and no other claims. 
An interference is declared with a single  count (solvent). Claim 1 of 
application AT and claim 3 of application AU are  designated to correspond 
to the count. No preliminary motions are filed. A  judgment is entered in 
favor of applicant AT on the claim corresponding to  the sole count. 
Applicant AU would be estopped to obtain a patent containing  a claim to 
benzene, because applicant AU failed to file a preliminary motion  under 
37 CFR 1.633(c)(1) seeking to add a count to benzene and benzene was 
disclosed in winning party AT's application. Applicant AU would also be 
estopped  to obtain a patent containing a claim to toluene, unless 
"toluene" defines  a "separate patentable invention" from  "solvent." A 
basis for interference  estoppel (37 CFR 1.658(c)) exists if  "toluene" 
and  "solvent"  define the  "same patentable invention" because a 



claim to "toluene" could properly have been added and designated to 
correspond  to the count. See 37 CFR 1.633(c)(2). 

The following two examples illustrate the application of estoppel against 
an  applicant who lost the interference based solely on the fact that the 
applicant  was unable to establish a date of invention prior to the 
opponent's foreign  filing date (see Ex parte Tytgat, 225 USPQ 907 (Bd. 
App. 1985)): 

Example 9.  Application AV discloses engines in general and in particular 
a  6-cylinder engine. Application AV contains only claim 1 (engine). 
Application  AW discloses engines in general, but does not specifically 
disclose a 6-cylinder  engine. Application AW contains only a single claim 
3 (engine). The U.S. "filing  date" (37 CFR 1.601(h) of the AV application 
is prior to the U.S. filing date  of the AW application, but the AW 
application claims a foreign priority date  under 35 U.S.C. 119 based on 
an application filed in a foreign country prior  to the filing date of the 
AV application. An interference 

is declared.  The sole count of the interference is to "an engine." Claim 
1  of the AV application and claim 3 of the AW application are designated 
to correspond  to the count. During the interference, applicant AV does 
not move under 37  CFR 1.633(c)(2) to add a claim to a 6-cylinder engine 
and to designate the  claim to correspond to the count. Applicant AW is 
awarded a judgment in the  interference based on the earlier filing date 
of the foreign application. After  the interference, applicant AV adds 
claim 2 (6-cylinder engine) to the AV application.  Whether AV would be 
entitled to a patent containing a claim to a 6-cylinder  engine will 
depend solely on whether a 6-cylinder engine is a "separate patentable 
invention" from "engine" - the subject matter of the count. If a 
6-cylinder  engine is a "separate patentable invention" within the meaning 
of 37 CFR 1.601(n),  applicant AV could not have successfully moved under 
37 CFR 1.633(c)(2) to  add claim 2 and to designate it to correspond to 
the count. Therefore applicant  AV could obtain a patent containing claim 
2. If, on the other hand, a 6-cylinder  engine is not a "separate 
patentable invention,"  claim 2 of the AV application  would be rejected 
on the basis of interference estoppel because claim 2 could  have been 
added by a motion under 37 CFR 1.633(c)(2). See 37 CFR 1.658(c). 
Example 10.  This example is basically the same as Example 9, except that 
application  AV initially contains claim 1 (engine) and claim 2 
(6-cylinder engine). When  the interference is declared, both claims 1 and 
2 of application AV are designated  to correspond to the count. During the 
interference,  applicant AV does not  move under 37 CFR 1.633(c)(4) to 
designate claim 2 as not corresponding to  the count. A judgment in the 
interference is entered for applicant AW based  on the earlier filing date 
of the foreign patent application. After the interference,  applicant AV 
would not be able to obtain a patent containing claim 2, because  the 
claim was designated to correspond to a count and entry of the judgment 
constitutes a final decision by the PTO refusing to grant applicant AV a 
patent  containing claim 2. 

ALLOWANCE OF LOSING PARTY'S APPLICATION 

Before allowing a losing party's application, the examiner should 
carefully  consider whether the grounds of estoppel have been fully 
applied.  In order  to promote uniform  application of the doctrines of 
lost counts and estoppel,  the examiner must consult the examiner-in-chief 
who was in charge of the interference  before allowing the losing party's 
case. 


2364    Entry of Amendments 


Under 37 CFR 1.637(c)(1) and (2), (d)(3), (e)(1) and (2), or (h), a moving 
 party is required to submit with his or her motion as a separate paper, 
an  amendment embodying the proposed claims if the claims are not already 
in the  application concerned.  In the case of an application involved in 
the interference,  this amendment is not entered at that time but is 
placed in the application  file. 

An amendment filed in connection with a motion to add or substitute counts 
 in an interference must include any claim or claims to be added and be 
accompanied  by the appropriate fees (or fee authorization), if any, which 
would be due  if the amendment were to be entered, even though it may be 
that the amendment  will never be entered. Only upon the granting of the 
motion may it be necessary  for the other party or parties to present 
claims, but the fees  (or fee authorization)  must be paid whenever claims 
are presented.  Claims which have been submitted  in response to a 
suggestion by the Office for inclusion in an application must  be 
accompanied by the fee due (or fee authorization), if any.  Money paid in 
connection with the filing of a proposed amendment will not be refunded by 
 reason of the nonentry of the amendment. 

If the motion is granted, the amendment is entered at the time decision on 
 the motion is rendered.  If the motion is not granted, the amendment, 
though  left in the file, is not entered and is so marked. 

If the motion is granted only in part and denied as to another part, only 
so  much of the amendment as is covered in the grant of the motion is 
entered,  the remaining part being indicated and marked "not entered" in 
pencil.  See  37 CFR 1.644. 

In each instance, the applicant is informed of the disposition of the 
amendment  in the first action in the case following the termination of 
the interference.  If the case is otherwise ready for issue, the applicant 
is notified that the  application is allowed and the Notice of Allowance 
will be sent in due course,  that prosecution is closed, and to what 
extent the amendment has been entered. 
As a corollary to this practice, it follows that where prosecution of the 
winning  application had been closed prior to the declaration of the 
interference, as  by being in condition for issue, that application may 
not be reopened to further  prosecution following the interference, even 
though additional claims had been  presented in connection with a motion 
in the interference. 

It should be noted at this point that, under 37 CFR 1.663, the entry of an 
 adverse judgment against a party who requests 



same pursuant to 37 CFR 1.662(a) finally disposes of all claims of that 
party's  application which are designated as corresponding to the count. 


2364.01       Amendments Filed During Interference 


If the amendment is filed in response to a letter by the primary examiner, 
 suggesting a claim or claims for interference with another party and for 
the  purpose of declaring an additional interference, the examiner enters 
the amendment  and takes the proper steps to initiate the second interference. 

OTHER AMENDMENTS 

When an amendment to an application involved in an interference is 
received,  the examiner inspects the amendment 

and, if necessary, the application, to determine whether or not the 
amendment  affects the pending or any prospective interference.  If the 
amendment is an  ordinary one properly responsive to the last regular ex 
parte action preceding  the declaration of the interference and does not 
affect the pending or any  prospective interference, the amendment is 
marked in pencil "not entered" and  placed in the file, a corresponding 
entry being endorsed in ink in the contents  column of the wrapper.  After 
termination of the interference, the amendment  may be permanently entered 
and considered as in the case of ordinary amendments  filed during the ex 
parte prosecution of the case. 

If the amendment is one filed in a case where ex parte prosecution of an 
appeal  to the Board of Patent Appeals and Interferences is being 
conducted concurrently  with an interference proceeding (see MPEP w 2314 
and if it relates to the appeal,  it should be treated like any similar 
amendment in an ordinary appealed case. 
When an amendment filed during interference purports to put the 
application  in condition for another interference either with a pending 
application or  with a patent, the primary examiner must personally 
consider the amendment  sufficiently to determine whether, in fact, it 
does so. 

If the amendment presents allowable claims directed to an invention 
claimed  in a patent or in another pending application in issue or ready 
for issue,  the examiner borrows the file, enters the amendment, and takes 
the proper steps  to initiate the second interference. 

Where in the opinion of the examiner, the proposed amendment does not put 
the  application in condition for interference with another application 
not involved  in the interference, the amendment is placed in the file and 
marked "not entered"  and the applicant is informed why it will not be now 
entered and acted upon. 
When the amendment seeks to provoke an interference with a patent not 
involved  in the interference and the examiner believes that the claims 
presented are  not patentable to the applicant, and where the application 
is open to further  ex  parte prosecution, the file should be obtained, 
the amendment entered,  and the claims rejected, setting a time limit for 
response.  If reconsideration  is requested and rejection made final, a 
time limit for appeal should be set.  Where the application at the time of 
forming the interference was closed to  further ex parte prosecution and 
the disclosure of the application will prima  facie, not support the claim 
presented, or where the claims presented are drawn  to a nonelected 
invention, the amendment will not be entered and the applicant  will be so 
informed giving very briefly the reason for the nonentry of the  amendment. 


2365    Second Interference 


37 CFR 1.665.     Second interference. 

A second interference between the same parties will not be declared upon 
an  application not involved in an earlier interference for an invention 
defined  by a count of the earlier interference.  See w 1.658(c). 


2366    Interference Settlement Agreement 


37 CFR 1.666.     Filing of interference settlement agreements. 

(a)   Any agreement or understanding between parties to an interference, 
including  any collateral agreements referred to therein, made in 
connection with or in  contemplation of the termination of the 
interference, must be in writing and  a true copy thereof must be filed 
before the termination of the interference 
(w 1.661) as between the parties to the agreement or understanding. 
(b)   If any party filing the agreement or understanding under paragraph 
(a)  of this section so requests, the copy will be kept separate from the 
file of  the interference, and made available only to Government agencies 
on written  request, or to any person upon petition accompanied by the fee 
set forth in  w 1.17(i) and on a showing of good cause. 

(c)   Failure to file the copy of the agreement or understanding under 
paragraph 
(a) of this section will render permanently unenforceable such agreement 
or  understanding and any patent of the parties involved in the 
interference or  any patent subsequently issued on any application of the 
parties so involved.  The Commissioner may, however, upon petition 
accompanied by the fee set forth  in w 1.17(h) and on a showing of good 
cause for failure to file within the  time prescribed, permit the filing 
of the agreement or understanding during  the six month period subsequent 
to the termination of the interference as between  the parties to the 
agreement or understanding. 

37 CFR 1.666 sets out the procedure for filing  settlement agreements in 
interference  cases.  The PTO is merely a repository for copies of 
agreements filed under  35 U.S.C. 135(c) and does not undertake to rule on 
whether the statute requires  that a copy of any particular agreement be 
filed. Nelson v. Bowler, 212 USPQ  760 (Comm'r Pat. 1981). 

A Certificate of Mailing under 37 CFR 1.8 cannot be used for the purpose 
of  filing a settlement agreement, nor can the settlement agreement be 
transmitted  by facsimile, (37 CFR 1.6(d)(3) and 1.8(a)(2)(i)(C)). 




2371    Evidence 


37 CFR 1.671.     Evidence must comply with rules. 

(a)   Evidence consists of testimony and exhibits, official records and 
publications  filed under w 1.682, evidence from another interference, 
proceeding, or action  filed under w 1.683, and discovery relied upon 
under w 1.688, and the specification 
(including claims) and drawings of any application or patent: 

(1)   Involved in the interference. 

(2)   To which a party has been accorded benefit in the notice declaring 
the  interference or by a preliminary motion granted under w 1.633. 

(3)   For which a party has sought, but has not been denied, benefit by a 
preliminary  motion under w 1.633. 

(4)   For which benefit was rescinded by a preliminary motion granted 
under  w 1.633. 

(b)   Except as otherwise provided in this subpart, the Federal Rules of 
Evidence  shall apply to interference proceedings. Those portions of the 
Federal Rules  of Evidence relating to criminal actions, juries, and other 
matters not relevant  to interferences shall not apply. 

(c)   Unless the context is otherwise clear, the following terms of the 
Federal  Rules of Evidence shall be construed as follows: 

(1)   "Courts of the United States,"  "U.S. Magistrate," "court," "trial 
court,"  or "trier of fact" means examiner-in-chief or Board as may be 
appropriate. 
(2)   "Judge" means examiner-in-chief. 

(3)   "Judicial notice" means official notice. 

(4)   "Civil action," "civil proceeding," "action," or "trial" mean 
interference. 
(5)   "Appellate court" means United States Court of Appeals for the 
Federal  Circuit or a United States district court when judicial review is 
under 35  U.S.C. 146. 

(6)   "Before the hearing" in Rule 703 means before giving testimony by 
oral  deposition or affidavit. 

(7)   "The trial or hearing " in Rules 803(24) and 804(5) means the taking 
 of testimony by oral deposition. 

(d)   Certification is not necessary as a condition to admissibility when 
the  record is a record of the Patent and Trademark Office to which all 
parties  have access. 

(e)   A party may not rely on an affidavit filed by that party during ex 
parte  prosecution of an application, an affidavit under w 1.608, or an 
affidavit  under w 1.639(b) unless: (1) a copy of the affidavit is or has 
been served  and (2) a written notice is filed prior to the close of the 
party's relevant  testimony period stating that the party intends to rely 
on the affidavit. When  proper notice is  given under this paragraph, the 
affidavit shall be deemed  filed under w 1.672(b). A copy of the affidavit 
shall be included in the record 
(w 1.653). 

(f)   The significance of documentary and other exhibits shall be 
discussed  with particularity by a witness during oral deposition or in an 
affidavit. 
        g)  A party must file a motion (w 1.635) seeking permission from 
an  examiner-in-chief prior to taking testimony or seeking documents or 
things  under 35 U.S.C. 24. The motion shall describe the general nature 
and the relevance  of the testimony, document, or thing. 

(h)   Evidence which is not taken or sought and filed in accordance with 
this  subpart shall not be admissible. 

37 CFR 1.671 sets out what will be considered evidence. 

37 CFR 1.671(b) and (c) provide that the Federal Rules of Evidence apply 
to  interference proceedings to the extent indicated in the rule.  It 
should be  noted that this provision does not eliminate the well-settled 
requirement for  independent corroboration of prior inventive acts 
performed by a party. 
Under 37 CFR 1.671(e), a party cannot rely on a previously filed affidavit 
 such as an affidavit under 37 CFR 1.131, 1.132, 1.608(b) or 1.639(b) 
unless  the affidavit is served and notice is given that the party intends 
to rely  on the affidavit. The purpose for the notice is to permit an 
opponent to determine  whether a deposition for cross-examination is 
necessary (see 37 CFR 1.672(b)  and 1.673(e)). 

37 CFR 1.671(e) is intended to overrule prior construction of PTO rules in 
 Holmes v. Kelly, 586 F.2d 234, 237 n. 7, 199 USPQ 778, 782 n. 2 (CCPA 
1978)  and Brecker v. Jennings, 204 USPQ 663 (Bd. Pat. Int. 1978), which 
considered  a 37 CFR 1.132 affidavit in the file of an involved 
application to be part  of the "record" of an interference.  Under 37 CFR 
1.671(e), a party intending  to rely on such an affidavit must give notice 
and serve a copy of the affidavit  on the opponent. 

Even though the affidavit may have been considered by the 
examiner-in-chief  in deciding a preliminary motion, it may not be 
considered by the Board at  final hearing unless 37 CFR 1.671(e) has been 
complied with.  Similarly, while 37 CFR 1.671(a) provides that 
specification (including claims) and drawings  of the involved and certain 
other cases are in evidence, other papers in those  files are not in 
evidence unless specifically introduced as exhibits. 
Under 37 CFR 1.671(f), the significance of documentary and other exhibits 
must  be discussed with particularity by a witness during oral deposition 
or in an  affidavit. 37 CFR 1.671(f) sets  out in the regulations an 
evidentiary requirement  imposed by precedent. See Popoff v. Orchin, 144 
USPQ 762 (Bd. Pat. Int. 1963) 
(unexplained experimental date should not be considered); Chandler v. 
Mock,  150 F.2d 563, 66 USPQ 209 (CCPA 1945) (records standing alone were 
held to  be meaningless), and Smith v. Bousquet, 111 F.2d 157, 45 USPQ 347 
(CCPA 1940) 
(unexplained tests in stipulated testimony are entitled to little weight). 
 See also In re Borkowski, 505 F.2d 713, 184 USPQ 29 (CCPA 1974) and 
Triplett  v. Steinmayer, 129 F.2d 869, 54 USPQ 409 (CCPA 1942).  Under 
37 CFR 1.671(g), a party is required to obtain permission from an 
examiner-in-chief  prior to proceeding under 35 U.S.C. 24. This 
requirement ensures that a subpoena  is necessary (e.g., a subpoena 
ordinarily should not be necessary where testimony  of an opponent is 
sought) and that testimony sought through a 35 U.S.C. 24  subpoena is 
relevant before a subpoena is issued. The motion seeking permission  to 
proceed under 35 U.S.C. 24, any opposition thereto, and the order of an 
examiner-in-chief authorizing the moving party to proceed under 
35 U.S.C. 24 will be of assistance to a Federal court in the event a party 
 is required to resort to a court to enforce the subpoena or to compel 
answers to questions propounded at any deposition where  a witness is 
appearing pursuant to a subpoena.  See Sheehan v. Doyle, 529 F.2d  38, 188 
USPQ 545 (1st Cir. ), cert. denied, 429 U.S. 870 (1976), rehearing 
denied, 429 U.S. 987 (1976). 

Under 37 CFR 1.671(h), any evidence which is not taken or sought and filed 
 in accordance with the regulations will not be admissible. 

The courts have articulated a rule of law which the PTO will continue to 
apply  in determining admissibility of laboratory notebooks under the 
"shop book",  Rule 803(b)(6) of the Federal Rules of Evidence.  See; e.g., 
Alpert v. Slatin,  305 F.2d 891, 134 USPQ 296 (CCPA 1962) and Elliott v. 
Barker, 481 F.2d 1337,  179 USPQ 100 (CCPA 1973). 

Ordinarily, the examiner-in-chief can order a party to produce an 
individual  for a deposition as long as the individual is a party or is 
under the control  of the party; e.g., an employee of an assignee. Where 
so called "third parties"  are concerned, however, issuance of a subpoena 
may be necessary, because the  PTO has no authority to compel attendance 
of third parties. 


2372    Manner of Taking Testimony 


37 CFR 1.672.     Manner of taking testimony. 

(a)   Testimony of a witness may be taken by oral deposition or affidavit 
in  accordance with this subpart. 

(b)   A party wishing to take the testimony of a witness whose testimony 
will  not be compelled under 35 U.S.C. 24 may elect to present the 
testimony of the  witness by affidavit or deposition. A party electing to 
present testimony of  a witness by affidavit shall, prior to the close of 
the party's relevant testimony  period, file and serve an affidavit of the 
witness or, where appropriate, a  notice under w 1.671(e). To facilitate 
preparation of the record (w 1.653 (g)  and (h)), a party should file an 
affidavit on  paper which is 8 1/2 by 11 inches 
(21.8 by 27.9 cm). A party shall not be entitled to rely on any document 
referred  to in the affidavit unless a copy of the document is filed with 
the affidavit.  A party shall not be entitled to rely on any thing 
mentioned in the affidavit  unless the opponent is given reasonable access 
to the thing. A thing is something  other than a document. After the 
affidavit is filed and within a time set by  an examiner-in-chief, any 
opponent may file a request to cross-examine the  witness on oral 
deposition. If any opponent requests cross-examination of an  affiant, the 
party shall notice a deposition under w 1.673(e) for the purpose  of 
cross-examination by any opponent. Any redirect and recross shall take 
place  at the deposition. At any deposition for the purpose of 
cross-examination of  a witness whose testimony is presented by affidavit, 
the party shall not be  entitled to rely on any document or thing not 
mentioned in one or more of the  affidavits filed under this paragraph, 
except to the extent necessary to conduct  proper redirect. A party 
electing to present testimony of a witness by deposition  shall notice a 
deposition of the witness under w 1.673(a). The party who gives  notice of 
a deposition shall be responsible for obtaining a court reporter  and for 
filing a certified transcript of the deposition as required by w 1.676. 
(c)   A party wishing to take the testimony of a witness whose testimony 
will  be compelled under 35 U.S.C. 24 must first obtain permission from an 
examiner-in-chief  under w 1.671(g). If permission is granted, the party 
shall notice a deposition  of the witness under w 1.673 and may proceed 
under 35 U.S.C. 24. The testimony  of the witness shall be taken on oral 
deposition. 

(d)   Notwithstanding the provisions of this subpart, if the parties agree 
 in writing, a deposition may be taken before any person authorized to 
administer  oaths, at any place, upon any notice, and in any manner, and 
when so taken  may be used like any other depositions. 

(e)   If the parties agree in writing, the testimony of any witness may be 
 submitted in the form of an affidavit without opportunity for 
cross-examination.  The affidavit of the witness shall be filed in the 
Patent and Trademark Office. 
(f)   If the parties agree in writing, testimony may be submitted in the 
form  of an agreed statement setting forth: (1) How a particular witness 
would testify  if called or (2) the facts in the case of one or more of 
the parties. The agreed  statement shall be filed in the Patent and 
Trademark Office. See w 1.653(a). 
37 CFR 1.672 sets forth the manner in which testimony shall be taken. 
Testimony  can be taken by deposition or affidavit at the election of the 
party presenting  the testimony.  A party presenting testimony by 
affidavit must file and serve  the affidavit.  If the party presents 
testimony by affidavit and an opponent  elects to  cross-examine the 
affiant, the party is required to notice a deposition  for the purpose of 
cross-examination.  Re-direct and re-cross will take place  at the 
deposition.  Where the parties agree, testimony can be presented by 
affidavit without opportunity for cross-examination (see 
37 CFR 1.672(e)) or by stipulated testimony or an agreed statement of 
facts 
(see 37 CFR 1.672(f)). 

An affidavit may be used only when a witness agrees to sign the affidavit. 
 If an individual refuses to sign an affidavit or voluntarily appear at a 
deposition  the party calling the witness will have to comply attendance 
at a deposition  by a subpoena under 35 U.S.C. 24 after receiving 
permission from an examiner-in-chief. 
Before setting the times for discovery, taking testimony, and filing the 
record,  the examiner-in-chief in charge of the interference will in all 
likelihood  hold a pre-trial conference with the parties  lead attorneys. 
At this conference,  the attorneys should be prepared to discuss whether 
they intend to take testimony,  and whether the testimony will be by oral 
deposition, by affidavit or otherwise;  the issues to be determined; the 
time which will be required; and other matters  relevant to the conduct of 
the testimony.  Following the conference, the examiner-in-chief  will 
normally issue an order setting the times for discovery, taking testimony, 
 and filing the record, and making such other rulings as may be necessary 
in  the particular case. 

Former rule 37 CFR 1.287(a) required that a party provide discovery by 
serving  copies of documents and lists within a specified time before 
taking testimony.  The essence of this requirement is carried forward in 
37 CFR 1.673 where the  testimony of a witness is to be by deposition.  If 
a witness' testimony will  be by affidavit, prior service of documents and 
lists is not required, but  copies of documents referred to in the 
affidavit must be filed and served therewith,  and the opponent 



must be given reasonable access to any thing mentioned therein, 37 CFR 
1.672(b). 

2373    Notice of Examination of Witness 


37 CFR 1.673.     Notice of examination of witness. 

(a)   A party electing to take testimony of a witness by deposition shall, 
 after complying with paragraphs (b) and (g) of this section, file and 
serve  a single notice of deposition stating the time and place of each 
deposition  to be taken. Depositions may be noticed for a reasonable time 
and place in  the United States. Unless the parties agree in writing, a 
deposition may not  be noticed for any other place without approval of an 
examiner-in-chief (see w 1.684). The notice shall specify the name and 
address of each witness and  the general nature of the testimony to be 
given by the witness. If the name  of a witness is not known, a general 
description sufficient to identify the  witness or a particular class or 
group to which the witness belongs may be  given instead. 

(b)   Unless the parties agree otherwise, a party shall serve, but not 
file,  at least three days prior to the conference required by paragraph 
(g) of this  section, if service is made by hand or "Express Mail," or at 
least ten days  prior to the conference if service is made by any other 
means, the following: 
(1)   A list and copy of each document in the party's possession, custody, 
 or control and upon which the party intends to rely at any deposition and 
(2)   A list of and a proffer of reasonable access to things in the 
party's  possession, custody, or control and upon which the party intends 
to rely at  the deposition. 

(c)   A party shall not be permitted to rely at any deposition on any 
witness  not listed in the notice, or any document not served or any thing 
not listed  as required by paragraph (b) of this section: (1) Unless all 
opponents agree  in writing or on the record to permit the party to rely 
on the witness, document,  or thing or (2) except upon a motion (w 1.635) 
promptly filed which is accompanied  by any proposed notice, additional 
documents, or lists and which shows sufficient  cause why the notice, 
documents, or lists were not served in accordance with  this section. 

(d)   Each opposing party shall have a full opportunity to attend a 
deposition  and cross-examine. If an opposing party attends a deposition 
of a witness not  named in a notice and cross-examines the witness or 
fails to object to the  taking of the deposition, the opposing party shall 
be deemed to have waived  any right to object to the taking of the 
deposition for lack of proper notice. 
(e)   A party electing to present testimony by affidavit and who is 
required  to notice depositions for the purpose of cross-examination under 
w 1.672(b),  shall, after complying with paragraph (g) of this section, 
file and serve a  single notice of deposition stating the time and place 
of each cross-examination  deposition to be taken. 

(f)   The parties shall not take depositions in more than one place at the 
 same time or so nearly at the same time that reasonable opportunity to 
travel  from one place of deposition to another cannot be had. 

(g)   Before serving a notice of deposition and after complying with 
paragraph 
(b) of this section, a party shall have an oral conference with all 
opponents  to attempt to agree on a mutually acceptable time and place for 
conducting  the deposition. A certificate shall appear in the notice 
stating that the oral  conference took place or explaining why the 
conference could not be had. If  the parties cannot agree to a mutually 
acceptable place and time for conducting  the deposition at the 
conference, the parties shall contact an examiner-in-chief  who shall then 
designate the time and place for conducting the deposition. 
(h)   A copy of the notice of deposition shall be attached to the 
certified  transcript of the deposition filed under w 1.676(a). 

37 CFR 1.673 sets out how a deposition must be noticed. A deposition can 
be  noticed at any reasonable place in the United States.  The extent to 
which  parties, witnesses, and attorneys or agents have to travel may be 
considered  in determining whether a place is reasonable.  Prior to 
serving a notice of  deposition, a party is required to take two 
procedural steps. Under 37 CFR  1.673(b), a party is required to serve a 
copy of the documents and a list of  the things in its possession, 
custody, and control upon which it intends to  rely.  Under 37 CFR 
1.673(g), the party is required to have an oral conference 
(in person or by telephone) with all opponents to attempt to agree on a 
mutually  acceptable time and place for taking the deposition.  An 
examiner-in-chief  may set the time and place if agreement is not reached. 
 A single notice listing  all the witnesses and the general nature of 
their expected testimony is then  served.  Under 37 CFR 1.673(c) and 
except as provided, a party can not rely  on any witness not mentioned in 
the notice, any document not served, or any  thing not listed.  Under 37 
CFR 1.673(h), a copy of any notice must be attached  to the certified 
transcript of each deposition filed. 


2374    Persons Depositions Taken Before 


37 CFR 1.674.     Persons before whom depositions may be taken. 

(a)   Within the United States or a territory or insular possession of the 
 United States a deposition shall be taken before an officer authorized to 
administer  oaths by the laws of the United States or of the place where 
the examination  is held. 

(b)   Unless the parties agree in writing, the following persons shall not 
 be competent to serve as an officer: (1) A relative or employee of a 
party, 
(2) a relative or employee of an attorney or agent of a party, or (3) a 
person  interested, directly or indirectly, in the interference either as 
counsel,  attorney, agent, or otherwise. 

37 CFR 1.674 sets out the persons before whom depositions can be taken. 

2375    Examination of Witness 


37 CFR 1.675.     Examination of witness, reading and signing transcript 
of  deposition. 

(a)   Each witness before giving an oral deposition shall be duly sworn 
according  to law by the officer before whom the deposition is to be taken. 

(b)   The testimony shall be taken in answer to interrogatories with any 
questions  and answers recorded in their regular order by the officer or 
by some other  person, who shall be subject to the provisions of w 
1.674(b), in the  presence  of the officer unless the presence of the 
officer is waived on the record by  agreement of all parties. 

(c)   All objections made at the time of the deposition to the 
qualifications  of the officer taking the deposition, the manner of taking 
it, the evidence  presented, the conduct of any party, and any other 
objection to the proceeding  shall be noted on the record by the officer. 
Evidence objected to shall be  taken subject to any objection. 

(d)   Unless the parties agree in writing or waive reading and signature 
by  the witness on the record at the deposition, when the testimony has 
been transcribed  a transcript of the deposition shall be read by the 
witness and then signed  by the witness in the form of: (1) An affidavit 
in the presence of any notary  or (2) a declaration. 

37 CFR 1.675 sets out how a deposition is to be taken. 




2376    Filing Transcript of Deposition 


37 CFR 1.676.     Certification and filing by officer, marking exhibits. 
(a)   The officer shall prepare a certified transcript of the deposition 
by  attaching to a transcript of the deposition a copy of the notice of 
deposition,  any exhibits to be annexed to the certified transcript, and a 
certificate signed  and sealed by the officer and showing: 

(1)   The witness was duly sworn by the officer before commencement of 
testimony  by the witness. 

(2)   The transcript is a true record of the testimony given by the 
witness. 
        (3)  The name of the person by whom the testimony was recorded 
and,  if not recorded by the officer, whether the testimony was recorded 
in the presence  of the officer. 

(4)   The presence or absence of any opposing party. 

(5)   The place where the deposition was taken and the day and hour when 
the  deposition began and ended. 

(6)   The officer is not disqualified under w 1.674. 

        (b)   If the parties waived any of the requirements of paragraph 
(a)  of this section, the certificate shall so state. 

        (c)   The officer shall note on the certificate the circumstances 
under  which a witness refuses to sign a transcript. 

        (d)   Unless the parties agree otherwise in writing or on the 
record  at the deposition, the officer shall securely seal the certified 
transcript  in an envelope endorsed with the style of the interference 
(e.g., Smith v.  Jones), the interference number, the name of the witness, 
and the date of sealing  and shall promptly forward the envelope to BOX 
INTERFERENCE, Commissioner of  Patents and Trademarks, Washington, D.C. 
20231. Documents and things produced  for inspection during the 
examination of a witness, shall, upon  request of  a party, be marked for 
identification and annexed to the certified transcript,  and may be 
inspected and copied by any party, except that if the person producing 
the documents and things desires to retain them, the person may: (1) Offer 
 copies to be marked for identification and annexed to the certified 
transcript  and to serve thereafter as originals if the person affords to 
all parties fair  opportunity to verify the copies by comparison with the 
originals or (2) offer  the originals to be marked for identification, 
after giving each party an opportunity  to inspect and copy them, in which 
event the documents and things may be used  in the same manner as if 
annexed to the certified transcript. The exhibits  shall then be filed as 
specified in w 1.653(i). If the weight or bulk of a  document or thing 
shall reasonably prevent the document or thing from being  annexed to the 
certified transcript, it shall, unless waived on the record  at the 
deposition of all parties, be authenticated by the officer and forwarded 
to the Commissioner in a separate package marked and addressed as provided 
 in this paragraph. 

37 CFR 1.676 sets out how a court reporter should prepare and file a 
certified  transcript of a deposition.  37 CFR 1.676(d) sets out how 
exhibits are to be  marked for identification, used at deposition, and 
filed.  Provisions similar  to those of Rule 30(f)1)(A) and (B) of the 
Federal Rules of Civil Procedure  are applicable to interferences. 

A transcript of a deposition cannot be transmitted by facsimile, (37 CFR 
1.6(d)(9)). 

2377    Form of Transcript of Deposition 


37 CFR 1.677.     Form of a transcript of deposition. 

(a)     A transcript of a deposition must be typewritten on opaque, 
unglazed,  durable paper approximately 8 1/2 by 11 inches (21.8 by 27.9 
cm.) in size (letter  size).  Typing shall be double-spaced on one side of 
the paper in not smaller  than pica-type with a margin of 1 1/2 inches 
(3.8 cm.) on the left-hand side  of the page. The pages must be 
consecutively numbered throughout the entire  record of each party (w 
1.653(d)) and the name of the witness must be typed  at the top of each 
page (w 1.653(e)). The questions propounded to each witness  must be 
consecutively numbered unless paper with numbered lines is used and  each 
question must be followed by its answer. 

(b)   Exhibits must be numbered consecutively and each must be marked as 
required  by w 1.653(i). 

37 CFR 1.677 sets out the form of a transcript of a deposition. 


2378    Time for Filing Transcript of Deposition 


37 CFR 1.678.     Transcript of deposition must be filed. 

Unless otherwise ordered by an examiner-in-chief, a certified transcript 
of  a deposition must be filed in the Patent and Trademark Office within 
45 days  from the date of deposition. If a party refuses to file a 
certified transcript,  the examiner-in-chief or the Board may take 
appropriate action under w 1.616.  If a party refuses to file a certified 
transcript, any opponent may move for  leave to file the certified 
transcript and include a copy of the transcript  as part of the opponent's 
record. 

Under 37 CFR 1.678, a transcript of a deposition must be filed in the PTO 
within  45 days of the date of the deposition. 


2379    Inspection of Transcript 


37 CFR 1.679.     Inspection of transcript. 

A certified transcript filed in the Patent and Trademark Office may be 
inspected  by any party. The certified transcript may not be removed from 
the Patent and  Trademark Office for printing (w 1.653(g)) unless 
authorized by an examiner-in-chief  upon such terms as may be appropriate. 


2382    Official Records and Printed Publications 


37 CFR 1.682.     Official records and printed publications. 

(a)   A party may introduce into evidence, if otherwise admissible, any 
official  record or printed publication not identified on the record 
during the taking  of testimony of a witness, by filing a notice offering 
the official record  or publication into evidence. If the evidence relates 
to the party's case-in-chief,  the notice shall be filed prior to close of 
testimony of the party's case-in-chief.  If the evidence relates to 
rebuttal, the notice shall be filed prior to the  close of testimony of 
the party's case-in-rebuttal. The notice shall: (1) Identify  the official 
record or printed publication, (2) identify the portion thereof  to be 
introduced in evidence, (3) indicate generally the relevance of the 
portion  sought to be introduced in evidence, and (4) where appropriate, 
be accompanied  by a certified copy of the official record or a copy of 
the printed publication 
(w 1.671(d)). 

(b)   A copy of the notice, official record, and publication shall be 
served. 
(c)   Unless otherwise ordered by an examiner-in-chief, any written 
objection  to the notice or to the admissibility of the official record or 
printed publication  shall be filed within 15 days of service of the 
notice.  See also w 1.656(h). 
37 CFR  1.682 sets out how a party may introduce in evidence, if otherwise 
 admissible, official records or printed publications.  When a notice is 
served,  a party is also required to serve (but not file) copies of the 
official records  and printed publications.  Any objection to the notice 
or to the admissibility  of any official record or publication must be 
filed within 15 days of the date  of service of the notice. 



If an official record or printed publication is made an exhibit during a 
deposition  or in an affidavit, it need not be submitted under 37 CFR 
1.682.  37 CFR 1.682  permits a party to make an official record or 
printed publication part of the  evidence being considered at final 
hearing without calling a witness.  The  official record or printed 
publication must, however, be self-authenticating.  On the other hand, a 
party may 

present the official record or printed publication as an exhibit during 
testimony.  When this latter course is followed, there is no need to take 
advantage of  the provisions of 37 CFR 1.682. 


2383    Testimony From Another Interference or Proceeding 



37 CFR 1.683.     Testimony in another interference, proceeding, or 
action. 
(a)   Prior to close of a party's appropriate testimony period or within 
such  time as may be set by an examiner-in-chief, a party may file a 
motion (w 1.635)  for leave to use in an interference testimony of a 
witness from another interference,  proceeding, or action involving the 
same parties, subject to such conditions  as may be deemed appropriate by 
an examiner-in-chief. The motion shall specify  with particularity the 
exact testimony to be used and shall demonstrate its  relevance. 

(b)   Any objection to the admissibility of the testimony of the witness 
shall  be made in an opposition to the motion. See also w 1.656(h). 

37 CFR 1.683 sets out how a party may use testimony from another 
interference  or proceeding. 


2384    Testimony in a Foreign Country 


37 CFR 1.684.     Testimony in a foreign country. 

(a)   An examiner-in-chief may authorize testimony of a witness to be 
taken  in a foreign country. A party seeking to take testimony in a 
foreign country  shall, prior to the close of the party's appropriate 
testimony period or within  such time as may be set by an examiner- 
in-chief, file a  motion (w 1.635): 
(1)   Naming the witness. 

(2)   Describing the particular facts to which it is expected that the 
witness  will testify. 

(3)   Stating the grounds on which the moving party believes that the 
witness  will so testify. 

(4)   Demonstrating that the expected testimony is relevant. 

(5)   Demonstrating that the testimony cannot be taken in this country at 
all  or cannot be taken in this country without hardship to the moving 
party greatly  exceeding the hardship to which all opposing parties will 
be exposed by the  taking of the testimony in a foreign country. 

(6)   Accompanied by an affidavit stating that the motion is made in good 
faith  and not for the purpose of delay or harassing any party. 

        (7)   Accompanied by written interrogatories to be asked of the 
witness. 
(b)   Any opposition under w 1.638(a) shall state any objection to the 
written  interrogatories and shall include any cross-interrogatories to be 
asked of  the witness. A reply under w 1.638(b) may be filed and shall be 
limited to  stating any objection to any cross-interrogatories proposed in 
the opposition. 
(c)   If the motion is granted, the moving party shall be responsible for 
obtaining  answers to the interrogatories and cross-interrogatories before 
an officer  qualified to administer oaths in the foreign country under the 
laws of the  United States or the foreign country. The officer shall 
prepare a transcript  of the interrogatories, cross-interrogatories, and 
recorded answers to the  interrogatories and cross-interrogatories and 
shall transmit the transcript  to BOX INTERFERENCE, Commissioner of 
Patents and Trademarks, Washington, D.C.  20231, with a certificate signed 
and sealed by the officer and showing: 
(1)   The witness was duly sworn by the officer before answering the 
interrogatories  and cross)interrogatories. 

(2)   The recorded answers are a true record of the answers given by the 
witness  to the interrogatories and cross-interrogatories. 

(3)   The name of the person by whom the answers were recorded and, if not 
 recorded by the officer, whether the answers were recorded in the 
presence  of the officer. 

(4)   The presence or absence of any party. 

(5)   The place, day, and hour that the answers were recorded. 

(6)   A copy of the recorded answers was read by or to the witness before 
the  witness signed the recorded answers and that the witness signed the 
recorded  answers in the presence of the officer.  The officer shall state 
the circumstances  under which a witness refuses to read or sign recorded 
answers. 

(7)   The officer is not disqualified under w 1.674. 

(d)   If the parties agree in writing, the testimony may be taken before 
the  officer on oral deposition. 

(e)   A party taking testimony in a foreign country shall have the burden 
of  proving that false swearing in the giving of testimony is punishable 
as perjury  under the laws of the foreign country. Unless false swearing 
in the giving  of testimony before the officer shall be punishable as 
perjury under the laws  of the foreign country where testimony is taken, 
the testimony shall not be  entitled to the same weight as testimony taken 
in the United States.  The weight  of the testimony shall be determined in 
each case. 

37 CFR 1.684 sets out how a party may take testimony in a foreign country. 
37 CFR 1.684 does not apply to cross-examination.  If a party submits an 
affidavit  under 37 CFR 1.672(b) or intends to rely on an affidavit under 
37 CFR 1.617(e),  the party must make the affiant available for 
cross-examination at a deposition. 
 See 37 CFR 1.673(e).  A deposition may be noticed only  "for a reasonable 
 time and place in the United States." See 37 CFR 1.673(a).  Accordingly, 
it  is not expected that 37 CFR 1.684(a) will be used to cross-examine 
affiants  residing in foreign countries. The party filing the affidavit 
will be required  to make the affiant available for cross-examination in 
the United States. 
Interrogatories, cross-interrogatories, or recorded answers under 37 CFR 
1.684(c)  cannot be transmitted by facsimile, (37 CFR 1.6(d)(9)). 


2385    Errors in Deposition 


37 CFR 1.685.     Errors and irregularities in depositions. 

(a)   An error in a notice for taking a deposition is waived unless a 
motion 
(w 1.635) to quash the notice is filed as soon as the error is, or could 
have  been, discovered. 

(b)   An objection to a qualification of an officer taking a deposition is 
 waived unless: 

(1)   The objection is made on the record of the deposition before a 
witness  begins to testify. 

(2)   If discovered after the deposition, a motion (w 1.635) to suppress 
the  deposition is filed as soon as the objection is, or could have been, 
discovered. 


(c)   An error in irregularity in the manner in which testimony is 
transcribed,  a certified transcript is signed by a witness, or a 
certified transcript is  prepared, signed, certified, sealed, endorsed, 
forwarded, filed, or otherwise  handled by the officer is waived unless a 
motion (w 1.635) to suppress the  deposition is filed as soon as the error 
of irregularity is, or could have  been, discovered. 

(d)   An objection to the competency of a witness, admissibility of 
evidence,  manner of taking the deposition, the form of questions and 
answers, any oath  or affirmation, or conduct of any party at the 
deposition is waived unless  an objection is made on the record at the 
deposition stating the specific ground  of objection. Any objection which 
a party wishes considered by the Board at  final hearing shall  be 
included in a motion to suppress under 
w 1.656(h). 

(e)   Nothing in this section precludes taking notice of plain errors 
affecting  substantial rights although they were not brought to the 
attention of an examiner-in-chief  or the Board. 

37 CFR 1.685 sets out how objections during the taking of depositions must 
 be raised.  Under 37 CFR 1.685(a), an error in a notice of deposition is 
waived  unless a motion to quash the notice is filed as soon as the error 
is, or could  have been, discovered.  Under 37 CFR 1.685(b), any objection 
to the qualifications  of the officer is waived unless (1) the objection 
is noted on the record of  the deposition before the witness begins to 
testify or (2) if discovered after  the deposition, a motion to suppress 
is filed as soon as the objection is,  or could have been, discovered. 
Under 37 CFR 1.685(c), any error in the manner  in which testimony is 
transcribed, the transcript is signed by a witness, or  the transcript is 
prepared or otherwise handled by the court reporter is waived  unless a 
motion to suppress is filed as soon as the error is, or could have  been, 
discovered. Under 37 CFR 1.685(d), any objection on the merits to the 
admissibility of evidence (e.g., under the Federal Rules of Evidence) is 
waived  unless an objection is made on the record at the deposition 
stating the specific  ground of objection.  Often objections are cured by 
subsequent testimony. Accordingly,  any objection which a party wants the 
Board to consider at final hearing must  also be made the subject of a 
motion under 37 CFR 1.656(h). 

37 CFR 1.685(d) requires an objection to be stated on the record. An 
objection  to the admissibility of evidence must be stated on the record 
and a motion  under 37 CFR 1.656(h) renewing the objection at final 
hearing must be filed.  No longer will a party be permitted to attend a 
deposition and fail to enter  an objection only to raise the objection at 
final hearing. 

A single examiner-in-chief may rule on admissibility of evidence "where 
appropriate"  and in "unusual" circumstances. There are times during 
interferences where  a motion in limine can be helpful.  For example, a 
junior party during its  case-in-chief may wish to examine a witness on a 
document which was not served  as required by 37 CFR 1.673(b)(1).  The 
senior party objects and realizes that  if the junior party is permitted 
to examine the witness on the document, extensive  cross-examination using 
numerous documents would be necessary.  In order to  avoid wasting 
considerable time, the parties could contact the examiner-in-chief  by 
phone for a determination in limine on whether the junior party should be 
able to examine the witness on the document. Under the circumstances 
outlined,  the examiner-in-chief in his or her discretion could enter an 
order excluding  the document from evidence. The order would be subject to 
a request for reconsideration.  See 37  CFR 1.640(c).  Ordinarily, 
however, it would be expected that parties  would pre-sent evidence 
subject to objection. See 37 CFR 1.675(c), last sentence.  It is not 
envisioned that a single examiner-in-chief will routinely rule on  the 
admissibility of evidence. 


2387    Additional Discovery 


37 CFR 1.687.     Additional discovery. 

(a)   A party is not entitled to discovery except as authorized in this 
subpart. 
(b)   Where appropriate, a party may obtain production of documents and 
things  during cross-examination of an opponent's witness or during the 
testimony period  of the party's case-in-rebuttal. 

(c)   Upon a motion (w 1.635) brought by a party within the time set by an 
 examiner-in-chief under w 1.651 or thereafter as authorized by w 1.645 
and  upon a showing that the interest of justice so requires, an 
examiner-in-chief  may order additional discovery, as to matters under the 
control of a party  within the scope of the Federal Rules of Civil 
Procedure, specifying the terms  and conditions of such additional discovery. 

(d)   The parties may agree to discovery among themselves at any time. In 
the  absence of an agreement, a motion for additional discovery shall not 
be filed  except as authorized by this subpart. 

37 CFR 1.687 sets out how a party could seek and obtain additional 
discovery.  "Additional discovery" is defined in 37 CFR 1.601(a).  37 CFR 
1.687(c) does  not change the standard ("interest of justice") for 
obtaining discovery. 
Additional discovery obtained under a protective order issued by either 
the  PTO or a district court will not be admitted in evidence in the PTO 
in determining  the interference.  All evidence submitted in an 
interference must be made available  to the public under the provisions of 
37 CFR 1.11(a). Accordingly, any protective  orders have to be vacated 
before a document  could be admitted in evidence  in the PTO which is 
subject to a protective order. The following example illustrates  how the 
practice would work. 

Example. An interference involves party X and party Y. During the 
interference,  party X files a motion for additional discovery under 37 
CFR 1.687(c) asking  that party Y be required to produce certain 
documents. Party Y opposes on the  sole ground that the documents contain 
trade secret and confidential information.  Party Y indicates that it has 
no objection to producing the documents for inspection  by counsel for 
party X, but insists that party X not be permitted to inspect  the 
documents. Accordingly, party Y asks the examiner-in-chief to authorize 
the discovery subject to entry of a protective order. Party Y  argues, 
however,  that the sanctions of 37 CFR 1.616 are not sufficient in the 
event of a violation  of the protective order. An 



examiner-in-chief concludes that additional discovery should be ordered, 
that  a protective order is appropriate, and that the sanctions of 37 CFR 
1.616 are  not sufficient in the event of a violation of the protective 
order. Under the  circumstances, the examiner-in-chief would enter an 
order directing party Y  to produce the documents for inspection by 
counsel of party X on the condition  that party X seek production of the 
documents by a subpoena duces secum under  35 U.S.C. 24. Upon issuance of 
any subpoena, party Y could move the district  court for entry of a 
protective order. If the district court enters the protective  order, 
party Y can produce the documents to counsel for party X. If the 
protective  order of the examiner-in-chief is violated, an appropriate 
sanction up to and  including judgment may be entered by the Board. In 
addition, party Y would  be in a position to seek contempt or sanctions in 
the district court. The documents  produced for interference (until the 
protective order is vacated), because  those  documents are not documents 
which can be made available to the public  under 37 CFR 1.11(a). 


2388    Use of Discovery 


37 CFR 1.688.     Use of discovery. 

(a)   If otherwise admissible a party may introduce into evidence, an 
answer  to a written request for an admission or an answer to a written 
interrogatory  obtained by discovery under w 1.687 by filing a copy of the 
request for admission  or the written interrogatory and the answer.  If 
the answer relates to a party's  case-in-chief, the answer shall be filed 
prior to the close of testimony of  the party's case-in-chief. If the 
answer relates to the examiner-in-chief,  any written objection to the 
admissibility of an answer shall be filed within  15 days of service of 
the answer. 

(b)   A party may not rely upon any other matter obtained by discovery 
unless  it is introduced into evidence under this subpart. 

37 CFR 1.688 sets out how a party can introduce into evidence admissions 
and  answers to interrogatories obtained as a result of additional 
discovery. 

2390    Arbitration of Interferences 


35 U.S.C. 135.      Interferences 

***** 

(d)   Parties to a patent interference, within such time as  may be 
specified  by the Commissioner by regulation, may determine such contest 
or any aspect  thereof by arbitration. Such arbitration shall be governed 
by the provisions  of title 9 to the extent such title is not inconsistent 
with this section.  The parties shall give notice of any arbitration award 
to the Commissioner,  and such award shall, as between the parties to the 
arbitration, be dispositive  of the issues to which it relates. The 
arbitration award shall be unenforceable  until such notice is given. 
Nothing in this subsection shall preclude the Commissioner  from 
determining patentability of the invention involved in the interference. 
37 CFR 1.690.     Arbitration of interferences. 

(a)   Parties to a patent interference may determine the interference or 
any  aspect thereof by arbitration. Such arbitration shall be governed by 
the provisions  of Title 9, United States Code. The parties must notify 
the Board in writing  of their intention to arbitrate. An agreement to 
arbitrate must be in writing,  specify the issues to be arbitrated, the 
name of the arbitrator or a date not  more than thirty (30) days after the 
execution of the agreement for the selection  of the arbitrator, and 
provide that the arbitrator's award shall be binding  on the parties and 
that judgment thereon can be entered by the Board. A copy  of the 
agreement must be filed within twenty (20) days after its execution.  The 
parties shall be solely responsible for the selection of the arbitrator 
and the rules for conducting proceedings before the arbitrator. Issues not 
 disposed of by the arbitrator will be resolved in accordance with the 
procedures  established in 37 CFR, Subpart E of Part 1, as determined by 
the examiner-in-chief. 
(b)   An arbitration proceeding under this section shall be conducted 
within  such time as may be authorized on a case-by-case basis by an 
examiner-in-chief. 
(c)   An arbitration award will be given no consideration unless it is 
binding  on the parties, is in writing and states in a clear and definite 
manner (1)  the issue or issues arbitrated and (2) the disposition of each 
issue. The award  may include a statement of the grounds and reasoning in 
support thereof. Unless  otherwise ordered by an examiner-in-chief, the 
parties shall give notice to  the Board of an arbitration award by filing 
within twenty (20) days from the  date of the award signed by the 
arbitrator or arbitrators. When an award is  timely filed, the award 
shall, as to the parties to the arbitration, be dispositive  of the issue 
or issues to which it relates. 

(d)   An arbitration award shall not preclude the Office from determining 
patentability  of any invention involved in the interference. 

Under 37 CFR 1.690 the arbitrator can determine issues of patentability as 
 between the parties but a determination by him or her that the subject 
matter  is patentable would not be binding upon the PTO.  If the 
arbitrator's award  holds that a party's claims corresponding to the count 
are unpatentable over  prior art or under 35 U.S.C. 112, that 
determination would be binding on that  party vis-a-vis the party's 
opponent and would result in a judgment adverse  to that party. The 
judgment, however, would not discharge the duty that each  party has under 
37 CFR 1.56 to bring to the attention of the examiner in charge  of its 
respective application any prior art and/or reason relied on by the 
arbitrator in the determination of unpatentability. 

It is the longstanding practice of the PTO to favor the settlement of 
interferences  and the PTO looks with favor on all proper efforts in that 
direction as being  conducive to the termination of the proceeding.  See 4 
Rivise and Caesar, Interference  Law and Practice, # 861, p. 2956 (Michie 
Co. 1948) and the Commissioner's Notice  of November 9, 1976, titled, 
"Extensions of time and Filing of Papers in Interferences,"  953 Official 
Gazette 2 (December 7, 1976).  In this regard, the notice states  that: 

. . .stipulations or motions for extensions of time under 37 CFR 1.245 
will  not henceforth be approved or granted, respectively, unless 
accompanied by  a detailed showing of facts sufficient to establish that 
the action for which  the extension is sought could not have been or 
cannot be taken or completed  during the time previously set therefor, and 
that the entire extension appears  necessary for the taking or completion 
of that action.  Since the Office favors  the amicable settlement of 
interferences, the foregoing requirement will be  liberally applied in the 
case of a first request for extension of time for  the purpose of 
negotiating settlement. 

Consequently, the examiner-in-chief may give favorable consideration to a 
motion  for an extension of time for purposes of settlement; however, a 
further motion  for an extension for that purpose would not be granted 
unless it is accompanied  by a schedule of specific dates showing that the 
parties will make a good faith  effort to promptly terminate the 
proceeding.  If preliminary motions under 37 CFR 1.633 have not been 
filed, the  examiner-in-chief would not normally extend the time for their 
filing merely  for purposes of settlement.  In these circumstances, the 
examiner-in-chief  would require that the preliminary motions be filed or 
that their filing be  waived. 

If the proceeding is in the testimony stage, the examiner-in-chief could 
grant  the parties' motion to extend all the unexpired testimony times to 
close concurrently  on the date the record is due provided they file a 
stipulation that any evidence  to be submitted will be in one of the forms 
specified in 37 CFR 1.672(e) and 
(f); i.e., affidavit testimony or a stipulation either as to what a 
particular  witness would testify to if called or the facts in the case of 
any party. 
Analogously, the aforesaid practice would apply to arbitration.  37 CFR 
1.690  requires that parties who intend to arbitrate an interference 
notify the examiner-in-chief  in writing of their intention to arbitrate 
and file a copy of the arbitration  agreement within 20 days of its 
execution. Pursuant to 35 U.S.C. 135(c), an  agreement to arbitrate is 
considered to be one "made in connection with and  in contemplation of the 
termination of the interference".   The agreement must  be in writing and 
a copy filed in the PTO within 20 days after its execution.  The 
notification of intention to arbitrate must be made in a separate paper. 
Merely incorporating the notification in the agreement is not sufficient 
is  comply with 37 CFR 1.690(a).  The parties also will be required to 
adhere to  a time schedule approved by the examiner-in-chief such that the 
interference  proceeding can be expeditiously resolved so as to prevent 
the unnecessary postponement  of the beginning of the running of the term 
of any patent resulting from an  application involved in the interference, 
Pritchard v. Loughlin, 361 F.2d 483,  149 USPQ 841 (CCPA 1966). 

If the parties desire to arbitrate an interference prior to the close of 
the  motion period, the examiner-in-chief will not normally grant an 
extension of  time for that purpose.  The parties will be required to file 
their preliminary  motions under 37 CFR 1.633.  After the motions are 
filed, the examiner-in-chief  could grant an extension only upon 
compliance with 37 CFR 1.645 which requires  a showing of "good cause." 
Such a "good cause" showing would normally include  a schedule, agreed to 
by the parties, setting forth, inter alia, the dates  for (1) executing 
the arbitration agreement, (2) determining priority, and 
(3) terminating the interference. 

37 CFR 1.690(a) requires that an arbitration agreement include the 
following: 
(1)   The name of the arbitrator or a date certain (not more than 30 days 
after  the execution of the agreement) for his or her selection. 

(2)   The issues to be decided by the arbitrator. 

(3)   A provision that the arbitrator's award is binding on the parties 
and  that the Board can enter a judgment based thereon. 

37 CFR 1.690(c) requires that a copy of the arbitration award be filed 
within  20 days from the date of the award or by a date set by the 
examiner-in-chief. 
If the proceeding is in the testimony stage and the parties desire to 
arbitrate,  the examiner-in-chief could grant a reasonable extension for 
that purpose.  A motion for a further extension for that purpose would not 
be granted unless  it were accompanied by a schedule, agreed to by the 
parties, setting forth,  inter alia, the dates for (1) executing the 
arbitration agreement, (2) determining  priority, and (3) terminating the 
interference. If the parties were to submit  the required schedule, a 
motion for a further extension could be granted.   If the parties file a 
copy of the arbitration agreement and they agree that  any evidence 
submitted in the proceeding will be in one of the forms specified  by 37 
CFR 1.672(e) or (f), the examiner-in-chief could give favorable 
consideration  to the parties' motion that all the unexpired times be 
extended to close concurrently  on the date the record is due.  By that 
date, the parties would be required  to file the arbitrator's award and 
their records, if necessary, for the resolution  of any issue not decided 
by the arbitrator.  If the award is not dispositive  of all the issues in 
the interference, the examiner-in-chief would set brief  times so that the 
parties could explain their evidence relating to any issues  which the 
arbitrator did not, or was unable to, decide.  For example, the award 
might be dispositive of the issue of priority between the parties and 
leave  for the Board's determination the question of substituting a new 
count raised  in a preliminary motion under 37 CFR 1.633. 

The arbitration award, filed by the parties, would be in the nature of a 
final  decision and should include the following: 

(1)   The style (e.g., Jones  v. Smith), the number of the interference 
and  the names of the real parties in interest. 

(2)   The subject matter in issue, i.e., the counts and a table of counts, 
 if necessary, indicating the relationship of the parties' claims 
corresponding  to each count and those claims not corresponding thereto. 

(3)   The issues for decision before the arbitrator. 

(4)   The arbitrator's decision. The decision may also include a statement 
 of the grounds and reasoning in support thereof. 

(5)   A summary, if appropriate, indicating, inter alia, that judgment 
should  be awarded to one of the parties. 

Any party to the arbitration can attack the award only in the manner 
provided  by 9 U.S.C. and 11.9 U.S.C. 10 reads as follows: 



In either of the following cases the United States court in and for the 
district  wherein the award was made may make an order vacating the award 
upon the application  of any party to the arbitration__ 

(a)   Where the award was procured by corruption, fraud, or undue means. 
(b)   Where there was evident partiality or corruption in the arbitrators, 
 or either of them. 

(c)   Where the arbitrators were guilty of misconduct in refusing to 
postpone  the hearing, upon sufficient cause shown, or in refusing to hear 
evidence pertinent  and material to the controversy; or of any other 
misbehavior by which the rights  of any party have been prejudiced. 

(d)   Where the arbitrators exceeded their powers, or so imperfectly 
executed  them that a mutual, final, and definite award upon the subject 
matter submitted  was not made. 

(e)   Where an award is vacated and the time within which the agreement 
required  the award to be made has not expired the court may, in its 
discretion, direct  a rehearing by the arbitrators. 

9 U.S.C 11 reads as follows: 

In either of the following cases the United States court in and for the 
district  wherein the award was made may make an order modifying or 
correcting the a  ward upon the application of any party to the arbitration__ 

(a)   Where there was an evident material miscalculation of figures or an 
evident  material mistake in the description of any person, thing, or 
property referred  to in the award. 

(b)   Where the arbitrators have awarded upon a matter not submitted to 
them,  unless it is a matter not affecting the merits of the decision upon 
the matter  submitted. 

(c)   Where the award is imperfect in matter of form not affecting the 
merits  of the controversy. 

The order may modify and correct the award, so as to effect the intent 
thereof  and promote justice between the parties. 

See, for example, Fairchild and Co., Inc. v. Richmond, F. and P.R. Co., 
516  F.Supp. 1305 (D.D.C. 1981).  If such an attack were to be made by one 
of the  parties while the interference is pending before the Board, the 
Board would  not stay the interference.  Rather, the Board would issue its 
judgment in accordance  with the award.  So long as the award is in 
compliance with 37 CFR 1.690, it  would carry the presumption that the 
arbitrator acted correctly in making his  or her decision and accordingly 
the party designated by the award as the prevailing  party would be 
entitled prima facie to a judgment in its favor.  If the dissatisfied 
party brings an action in an appropriate United States district court and 
if  the court vacates, modifies, or corrects the award, the Board would 
take action  consistent with the court's findings.  No action would lie in 
the PTO to vacate  or correct an arbitration award, unless all parties 
agreed in writing. 
The following examples illustrate the proposed practice of the PTO 
concerning  arbitration. 

EXAMPLE 1 

Arbitration Practice - Preliminary Stage 

An interference is declared on or after February 11, 1985.  The 
examiner-in-chief  sets a time in accordance with 37 CFR 1.611 for filing 
preliminary motions  under 37 CFR 1.633 and preliminary statements.  The 
parties decided to arbitrate  the interference in accordance with 37 CFR 
1.690 and file a motion for an extension  of time so that they can 
"freely" arbitrate the interference, but do not file  a waiver of their 
right to file motions. 

The examiner-in-chief would deny the motion because the parties' intention 
 to arbitrate, in and of itself, does not constitute a showing of "good 
cause"  within the means of 37 CFR 1.645(a).  Even if the parties file an 
agreement  to arbitrate, the PTO would not grant any extension of time to 
permit the parties  to "freely" arbitrate an interference prior to the 
expiration of the time  for filing preliminary motions. 

EXAMPLE 2 

Arbitration Practice - Testimony Stage 

An interference is declared on or after February 11, 1985.  The 
examiner-in-chief  sets a time in accordance with 37 CFR 1.611 for filing 
preliminary motions  under 37 CFR 1.633.  The parties file preliminary 
motions; the examiner-in-chief  renders a decision thereon and sets the 
testimony times.  The parties file  a notice of intent to arbitrate the 
interference under 37 CFR 1.690(a) and  a motion for a one month extension 
of the testimony times.  The examiner-in-chief  could grant the motion, 
but would indicate that if the parties file another  motion for an 
extension for that purpose, the motion must be accompanied by  a schedule, 
agreed to by the parties, setting forth the dates for (1) executing  the 
arbitration agreement, (2) determining priority and (3) terminating the 
interference. 

The parties file a motion for an additional one month extension of time to 
 permit the parties to arbitrate the interference.  Accompanying the 
motion  is a proposed schedule of times and a copy of the arbitration 
agreement which  provides, inter alia, (i) the name of the arbitrator or a 
date certain for  his selection, (ii) that the arbitrator's award will be 
binding on the parties, 
(iii) the issues to be decided by the arbitrator and (iv) that the award 
will  be filed by the date the record is due.  The parties also indicate 
that the  evidence to be filed in the proceeding will be in one of the 
forms specified  by 37 CFR 1.672(e) or (f).  The examiner-in-chief could 
grant the motion and  indicate that he or she will give favorable 
consideration to a motion to extend  all the unexpired times to close 
concurrently on the date the record is due  should the parties request such. 

On the date for filing the record, the parties file the arbitrator's award 
 and their evidentiary records, if necessary.  The award states (i) the 
style  and number of the interference and the real parties in interest, 
(ii) the subject  matter in issue and the parties' claims which correspond 
thereto and which  do not correspond thereto, (iii) the issues for 
decision before the arbitrator, 
(iv) the arbitrator's decision (which may include a statement of the 
grounds  and reasoning in support thereof) and (v) that judgment should be 
awarded to  one of the parties.  The examiner-in chief examines the award 
to ensure that  it complies with 37 CFR 1.690 and is dispositive of the 
issues in the interference  which can be decided by the arbitrator.  If 
the award is otherwise acceptable,  the Board would issue a judgment based 
on the award.  If the award is not dispositive  of all the issues in the 
interference, the examiner-in-chief would determine  how the interference 
will proceed. 

EXAMPLE 3 

Arbitration Practice - Award Decides Interference-in-Fact Issue and Junior 
 Party Takes No Testimony 

An interference is declared on or after February 11, 1985.  The 
examiner-in-chief  sets a time in accordance with 37 CFR 1.611 for filing 
preliminary motions  under 37 CFR 1.633 and preliminary statements.  The 
junior party files a motion  for judgment under 37 CFR 1.633(b) on the 
grounds that there is no interference-in-fact  between his claims 
corresponding to the count and his opponent's claims corresponding 
thereto.  The examiner-in-chief denies the motion, examines the 
preliminary  statements and sets the testimony times. 



During the testimony period, the parties decide to arbitrate the 
interference,  notify the examiner-in-chief of their intent to arbitrate 
and file an arbitration  agreement which is approved by the 
examiner-in-chief.  On the date for filing  the record, the junior party 
files the award together with a motion requesting  that the interference 
be terminated in view of the award.  He or she does not  file a record. 
In his or her award the arbitrator holds that no interference-in-fact 
exists between the parties' claims corresponding to the count. 

The motion would be denied because the award decides a matter of 
patentability  which would not result in a judgment adverse to one of the 
parties.  Consequently,  the junior party would be placed under an order 
to show cause why judgment  under 37 CFR 1.652 should not be entered 
against him or her for his or her  failure to file an evidentiary record 
by the time set therefor.  In response  to the order, the junior party 
requests final hearing to review the examiner-in-chief's  denial of the 
motion for judgment and a testimony period to show no 
interference-in-fact.  The examiner-in-chief would grant the junior 
party's request to the extent  that final hearing is set and would deny 
the request for testimony because  the junior party already had the 
opportunity to take testimony on the matter. 
EXAMPLE 4 

Arbitration Practice __ Cannot Decide Patentability 

An interference is declared on or after February 11, 1985. The 
examiner-in-chief  sets a time in accordance with 37 CFR 1.611 for filing 
preliminary motions  under 37 CFR 1.633 and preliminary statements.  The 
junior party files a motion  for judgment under 37 CFR 1.633(a) on the 
ground that the claims corresponding  to the count are unpatentable over 
prior art.  In his or her decision on motions,  the examiner-in-chief 
grants the motion and places both parties under an order  pursuant to 37 
CFR 1.640(d)(1) to show cause why judgment should not be entered  against 
them as to the count.  In response to the order, the senior party files  a 
paper in accordance with 37 CFR 1.640(e) purportedly showing good cause 
why  judgment should not be entered in accordance with the order and a 
motion requesting  permission to arbitrate the patentability issue.  The 
examiner-in-chief would  deny the motion. The arbitrator is without 
authority to established vis-a-vis  the public that the subject matter of 
the count is patentable.  Thus, the arbitration  will serve no useful 
purpose.  The Board would consider the senior party's  paper and enter an 
appropriate order. 

EXAMPLE 5 

Arbitration Practice __ Award After Decision on Motions 

An interference is declared on or after February 11, 1985. The 
examiner-in-chief  sets a time in accordance with 37 CFR 1.611 for filing 
preliminary motions  under 37 CFR 1.633 and preliminary statements.  The 
junior party files a motion  for judgment under 37 CFR 1.633(a) on the 
ground that the claims corresponding  to counts 1 and 2 are unpatentable 
over prior art.  In his or her decision  on motions, the examiner-in-chief 
grants the motion with respect to count 1,  denies the motion with respect 
to count 2 and places both parties under an  order pursuant to 37 CFR 
1.640(d)(1) to show cause why judgment should not  be entered against them 
as to count 1.  The senior party files a paper in accordance  with 37 CFR 
1.640(e); the junior party, a response thereto.  The Board considers  the 
paper and the response thereto and based on the record enters judgment 
adverse to both parties as to count 1. Thereafter, the examiner-in-chief 
examines  the preliminary statements and sets dates for taking  testimony 
and filing  the record. 

During the testimony period, the parties decide to arbitrate the 
interference,  notify the examiner-in-chief of their intent to arbitrate 
and file an arbitration  agreement which is approved by the 
examiner-in-chief.  In his or her award,  the arbitrator decides that 
judgment should be awarded to the junior party.  On the date for filing 
the record, both parties file the award together with  a motion requesting 
that the interference be terminated in view of the award.  No record is filed. 

The motion would be granted and accordingly it would be held that the 
senior  party is not entitled to a patent containing claims corresponding 
to count  2. 

EXAMPLE 6 

Arbitration Practice__Award Decides Patentability 

An interference is declared on or after February 11, 1985.  The 
examiner-in-chief  sets a time in accordance with 37 CFR 1.611 for filing 
preliminary motions  under 37 CFR 1.633 and preliminary statements. No 
motions for judgment under  37 CFR 1.633 are filed and after the 
examination of the preliminary statements,  the examiner-in-chief sets the 
testimony times. 

During the testimony period, the parties decide to arbitrate the 
interference,  notify the examiner-in-chief of their intent to arbitrate 
and file an arbitration  agreement which is approved by the 
examiner-in-chief.  In the award, the arbitrator  finds (1) that the 
evidence is insufficient to establish a prior public use  bar under 35 
U.S.C. 102(b) against the junior party, (2) that the claims of  the junior 
party corresponding to the count are patentable under 35 U.S.C.  103 over 
the prior art cited by the senior party to the junior  party, and 
(3) that judgment on priority should be awarded to junior party. On the 
date  for filing the record, the parties file their records and the award 
together  with a motion requesting that the interference to be terminated 
in view of  the award. 

The motion would be granted and accordingly it would be held that the 
senior  party is not entitled to a patent containing his or her claims 
corresponding  to the count.  After the termination of the proceeding, 
each party has the  duty under 37 CFR 1.56 to bring before the primary 
examiner the evidence concerning  the purported public use bar and the 
prior art cited by the senior party and/or  considered by the arbitrator. 

EXAMPLE 7 

Arbitration Practice__Award Grants Priority to Junior Party Contingent 
upon  Granting of Preliminary Motion Under 37 CFR 1.633(c) 

An interference is declared on or after February 11, 1985.  The 
examiner-in-chief  sets a time in accordance with 37 CFR 1.611 for filing 
Preliminary motions  under 37 CFR 1.633 and preliminary statements. The 
junior party files a motion  under 37 CFR 1.633(c)(1) to substitute 
another count.  The examiner-in-chief  denies the motion, examines the 
preliminary statements and sets the testimony  times. 

During the testimony period, the parties decide to arbitrate the 
interference,  notify the examiner-in-chief of their intention to 
arbitrate and enter into  an arbitration agreement which is approved by 
the examiner-in-chief.  The agreement  provides that any evidence to be 
submitted by the parties will be in the form  of a stipulation under 37 
CFR1.672(e) and (f).  The parties file a motion requesting  that all the 
unexpired testimony times be extended to close concurrently on  the date 
the record is due.  The motion would be granted. 

On the date for filing the record, the junior party files his or her 
record  and the award.  The award states, inter alia, that if the Board at 
final hearing  should grant the junior party's motion under 37 CFR 
1.633(c)(1) to substitute  a new count, judgment should be awarded to the 
junior party based on the evidence.  Otherwise, the award states that 
judgment should be awarded to the senior  party. 



The examiner-in-chief sets the brief times and after the filing thereof 
the  interference would be set for final hearing so that the Board can 
review the  examiner-in-chief's denial of the junior party's motion under 
37 CFR 1.633(c)  and issue an appropriate judgment based on the award. 

EXAMPLE 8 

Arbitration Practice__Award Attacked 

An interference is declared on or after February 11, 1985.  The 
examiner-in-chief  sets a time in accordance with 37 CFR 1.611 for filing 
preliminary motions  under 37 CFR 1.633 and preliminary statements.  No 
preliminary motions are  filed.  The examiner-in-chief examines the 
preliminary statements and sets  the testimony times. 

During the testimony period, the parties decide to arbitrate the 
interference,  notify the examiner-in-chief of their intention to 
arbitrate and file an arbitration  agreement which is approved by the 
examiner-in-chief. 

On the date for filing the record, both parties file their records.  The 
junior  party files the award which states that judgment should be awarded 
to him or  her and a motion for judgment based on that award.  The senior 
party files  an opposition to the motion for judgment on the grounds (i) 
that the award  contains errors of law, (ii) that the award was procured 
by "corruption,  fraud  or undue means" in violation of 9 U.S.C 10(a), and 
(iii) that the arbitrator  exhibited "evident partiality" in violation of 
9 U.S.C. 10(b) and was "guilty  of misconduct ... in refusing to hear 
evidence pertinent and material" to the  interference, citing 9 U.S.C. 10(c). 

The Board would grant the judgment based on the award, holding that the 
senior  party is not entitled to a patent containing claims corresponding 
to the count.  So long as the award is in compliance with the provisions 
of 37 CFR 1.690,  it would carry a presumption that the arbitrator acted 
properly in all respects.  Consequently, before the PTO the award is 
binding upon the parties and the  junior party is prima facie entitled to 
a judgment in its favor.  Thus, no  action lies in the PTO as regards the 
matter raised by the senior party.  The  senior party's action lies in an 
appropriate United States district court and  the PTO would take any 
action consistent with the court's decision. 
EXAMPLE 9 

Arbitration Practice __ Award Cannot Modify Board's Final Decision 
An interference is declared on or after February 11, 1985. The 
examiner-in-chief  sets a time in accordance with 37 CFR 1.611 for filing 
preliminary motions  under 37 CFR 1.633 and preliminary statements.  No 
motions are filed. The examiner-in-chief  examines the preliminary 
statements and sets the testimony times. 

During the testimony period, the parties decide to arbitrate the 
interference  and enter into an arbitration agreement.  neither party 
notifies the examiner-in-chief  of their intent to arbitrate nor do they 
file a copy of the  agreement in the  interference. Both parties timely 
file their records and briefs. Both waive  oral argument. The Board enters 
a final decision after consideration of the  evidence in favor of the 
senior party. 

The junior party requests reconsideration of the Board's final deci- sion, 
 submits a copy of the arbitration award and moves that the Board set 
aside  its final decision and enter judgment in his favor based on the 
award.  In  support of its request, the junior party cites 9 U.S.C. 9 , 
which provides  that "any party to the arbitration may apply to the court 
so specified for  an order confirming the award" and 35 U.S.C. 135(d) 
which provides that title  9 applies to interference arbitrations. 

The Board would deny the motion to set aside.  The parties did not comply 
with  37 CFR 1.690(a), i.e., notify the examiner-in-chief in writing of 
their intention  to arbitrate and file a copy of the arbitration agreement 
within twenty (20)  days of its execution.  The denial of the motion is an 
appropriate sanction  under 37 CFR 1.616. Such action by the Board is 
considered consistent with  long-standing interference practice. Cf. 
Humphrey v. Fickert., 1904 C.D. 447 
(Comm'r Pats. 1904) wherein the Board, after it had considered the 
evidence,  refused to set aside its award of priority to Fickert and act 
upon the Fickert's  concession of priority in favor of Humphrey, the 
losing party. 

EXAMPLE 10 

Arbitration Award Filed With Record __ No Notice to Examiner-in-Chief 
An interference is declared on or after February 11, 1985.  The 
examiner-in-chief  sets a time in accordance with 37 CFR 1.611 for filing 

preliminary motions under 37 CFR 1.633 and preliminary statements.  No 
motions  are filed.  The examiner-in-chief examines the preliminary 
statements and sets  the testimony times. 

During the testimony period, the parties decide to arbitrate the 
interference  and enter into an arbitration agreement.  Neither party 
notifies the examiner-in-chief  of the agreement.  The junior party timely 
files its record together with a  copy of the arbitration award and a 
motion for judgment based on the award. 
The motion would be denied. Under the provisions of 37 CFR 1.616, the 
examiner-in-chief  would place both parties under an order to show cause 
why judgment should not  be rendered against them for their failure to 
comply with 37 CFR 1.690(a),  i.e., failing to notify him or her of their 
intent to arbitrate and file a  copy of the arbitration agreement. 



Contents 

2401        Introduction 

2402        The Deposit Rules 

2403        Deposit of Biological Material 

2403.01     Material Capable of Self-Replication 

2403.02     Plant Material 

2404        Need or Opportunity To Make a Deposit 

2404.01     Biological Material That Is Known and Readily 
            Available to the Public 

2404.02     Biological Material That Can Be Made or Isolated 
            Without Undue Experimentation 

2404.03     Reference to a Deposit in the Specification 

2405        Acceptable Depository 

2406        Time of Making an Original Deposit 

2406.01     Description in Application Specification 

2406.02     Deposit After Filing Date - Corroboration 

2406.03     Possible Loss of U.S. Filing Date in Other Countries 

2407        Replacement or Supplement of Deposit 

2407.01     In a Pending Application 

2407.02     After a Patent Has Issued 

2407.03     Failure To Replace 

2407.04     Treatment of Replacement 

2407.05     Exemption From Replacement 

2407.06     Replacement May Not Be Recognized 

2408        Term of Deposit 

2409        Viability of Deposit 

2410        Furnishing of Samples 

2410.01     Conditions of Deposit 

2410.02     Certification of Accessibility of Deposit 

2411        Examination Procedures 

2411.01     Rejections Based on Deposit Issue 

2411.02     Responses to Rejections Based on Deposit Issue 

2411.03     Application in Condition for Allowance Except for 
            Deposit 

2411.04     After a Patent Has Been Granted 

2411.05     Content of Application With Respect to Deposited 
            Material 

2420        The Requirements for Patent Applications Containing 
            Nucleotide Sequence and/or Amino Acid Sequence 
            Disclosures - the Sequence Rules 

2421        Overview of the Sequence Rules 

2421.01     Applications Affected 

2421.02     Summary of the Requirements of the Sequence Rules 

2421.03     Notification of a Failure To Comply 

2421.04     Future Changes to the Sequence Rules 

2422        Nucleotide and/or Amino Acid Sequence Disclosures 
            in Patent Applications 

2422.01     Definitions of Nucleotide and/or Amino Acids for 
            Purpose of Sequence Rules 

2422.02     The Requirement for Exclusive Conformance; 
            Sequences Presented in Drawing Figures 

2422.03     The Requirements for a Sequence Listing and 
            Sequence Identifiers; Sequences Embedded in 
            Application Text; Variants of a Presented Sequence 

2422.04     The Requirement for a Computer Readable Copy of 
            the Official Paper Copy of the Sequence Listing 

2422.05     Reference to Previously Filed Identical Computer 
            Readable Form; Continuing or Derivative Applications 
            Request for Transfer of Computer Readable Form 

2422.06     Requirement for Statement Regarding Content of Paper 
            and Computer Readable Copies of Sequence Listing 

2422.07     Requirements for Compliance, Statements Regarding 
            New Matter, and Sanctions for Failure to Comply 

2422.08     Presumptions Regarding Compliance 

2422.09     Box Sequence; Hand Delivery of Sequence Listings 
            and Computer Readable Forms 

2423        Symbols and Format To Be Used for Nucleotide and/or 
            Amino Acid Sequence Data 

2423.01     Format and Symbols To Be Used in Sequence Listings 

2423.02     Depiction of Coding Regions 

2423.03     Presentation and Enumeration of Sequences 

2424        Requirements for Nucleotide and/or Amino Acid 
            Sequences as Part of the Application Papers 

2424.01     Informational Requirements for the Sequence Listing 

2424.02     Categories of Information Items 

2424.03     Additional Miscellaneous Requirements 

2425        Form and Format for Nucleotide and/or Amino Acid 
            Sequence Submissions in Computer Readable Form 

2426        Amendments to or Replacement of Sequence Listing 
            and Computer Readable Copy Thereof 

2427        Form Paragraphs and Notice To Comply 

2427.01     Form Paragraphs 

2427.02     Notice To Comply 

2428        Sample Statements 

2429        Helpful Hints for Compliance 

2430        PatentIn Information; Utilities Programs; Training 

2431        Sample Sequence Listing 

2432        Sequence Listing Headings 

2433        Sequence Listing Headings for Mandatory Items 


2401    Introduction 


This chapter provides guidance on the practices and procedures for 
implementation  of the deposit rules (37 CFR 1.801 - 1.809) and the 
sequence rules (37 CFR  1.821 - 1.825).  The final rule for deposits of 
biological materials for patent  purposes was published in the Federal 
Register, 54 Fed. Reg. 34864 (August  22, 1989) and in the Official 
Gazette, 1106 O.G. 37 (September 12, 1989).   The deposit rules went into 
effect on January 1, 1990. 

The final rule for the requirements for patent applications containing 
nucleotide  sequence and/or amino acid sequence disclosures was published 
in the Federal  Register, 55 Fed. Reg. 18230 (May 1, 1990) and in 
theOfficial Gazette, 1114  O.G. 29 (May 15, 1990).  The sequence rules 
went into effect on  October  1,  1990. 

Additional information regarding the development of the deposit rules can 
be  obtained in the text of the draft policy statement, published in BNA's 
Patent,  Trademark and Copyright Journal, 32 PTCJ 781 at 76, 90 (May 22, 
1986),  the 
 advanced   notice  of   proposed    rulemaking, published in the Federal 
Register,  52 Fed. Reg. 34080 (September 9, 1987), and in the 
Official Gazette, 1082 O.G. 47 (September 29, 1987) and in the notice of 
proposed  rulemaking, published in the Federal Register, 53 Fed. Reg. 
39420 (October  6, 1988), and in the Official Gazette, 1095 O.G. 47 
(October 25, 1988).  Additional  information regarding the development of 
the sequence rules can be obtained  in the text of the notice of proposed 
rulemaking, published in the Federal Register, 54 Fed. Reg. 18671 (May 2, 
1989) and in the Official Gazette,  1102 O.G. 34 (May 16, 1989). 


2402    The Deposit Rules 


Every patent must contain a written description of the invention 
sufficient  to enable a person skilled in the art to which the invention 
pertains to make  and use the invention.  Where the invention involves a 
biological material  and words alone cannot sufficiently describe how to 
make and use the invention  in a reproducible manner, access to the 
biological material may be necessary  for the satisfaction of the 
statutory requirements for patentability under  35 U.S.C. 112.  Courts 
have recognized the necessity and desirability of permitting  an applicant 
for a patent to supplement the written disclosure in an application  with 
a deposit of biological material which is essential to meet some 
requirement  of the statute with respect to the claimed invention.  Merck 
and Co., Inc.  v. Chase Chemical Co., 273 F. Supp. 68, 155 USPQ 139 (D. 
N.J. 1967); In re  Argoudelis, 434 F.2d 666, 168 USPQ 99 (CCPA 1970).  To 
facilitate the recognition  of deposited biological material in patent 
applications throughout the world,  the Budapest Treaty on the 
International Recognition of the Deposit of Micro-organisms  for the 
Purposes of Patent Procedure was established in 1977, and became 
operational  in 1981.  The Treaty requires signatory countries, like the 
United States,  to recognize a deposit with any depository which has been 
approved by the World  Intellectual Property Organization (WIPO). 

The deposit rules (37 CFR 1.801 - 1.809) set forth examining procedures 
and  conditions of deposit which must be satisfied in the event a deposit 
is required. 
 The rules do not address the substantive issue of whether a deposit is 
required  under any particular set of facts. 

The rules are effective for all applications filed on or after January 1, 
1990,  and for all reexamination proceedings in which the request for 
reexamination  was filed on or after January 1, 1990, except that deposits 
made prior to the  effective date which were acceptable under the then 
current practice will be  acceptable in such applications and 
proceedings.  Since most of the provisions  of the rules reflect policy 
and practice existing prior to 
January 1, 1990, little change in practice or burden on applicants for 
patent  and patent owners relying on the deposit of biological material 
has occurred. 
 Applicants and patent owners are encouraged to comply with these rules 
even  if their applications and reexamination proceedings were filed prior 
to January  1, 1990.  The current text of MPEP w 608.01(p) (C) is 
controlling practice  for applications filed before January 1, 1990. 


2403    Deposit of Biological Material 


37 CFR 1.801  Biological material. 

For the purposes of these regulations pertaining to the deposit of 
biological  material for purposes of patents for inventions under 
35 U.S.C. 101, the term biological material shall include material that is 
 capable of self-replication either directly or indirectly. 
Representative  examples include bacteria, fungi including yeast, algae, 
protozoa, eukaryotic  cells, cell lines, hybridomas, plasmids, viruses, 
plant tissue cells, lichens  and seeds.  Viruses, vectors, cell organelles 
and other non-living material  existing in and reproducible from a living 
cell may be deposited by deposit  of the host cell capable of reproducing 
the non-living material. 

37 CFR 1.801 indicates that the rules pertaining to deposits for purposes 
of  patents for inventions under 35 U.S.C. 101 are intended to relate to 
biological  material.  For the purposes of these rules, the term 
"biological material"  is defined in terms of a non-exhaustive list of 
representative materials which  can be deposited in accordance with the 
procedures defined in these rules. 
 These rules are intended to address procedural matters in the deposit of 
biological  material for patent purposes.  They are not designed to decide 
substantive  issues such as whether a deposit of a particular organism or 
material  would be recognized or necessary for the purposes of satisfying 
the statutory  requirements for patentability under 35 U.S.C. 112. 
Although the issue of  the need to make a deposit of biological material 
typically arises under the  enablement requirement of the first paragraph 
of 35 U.S.C. 112, the issue could  also arise under the description 
requirement (35 U.S.C. 112, first paragraph),  best mode requirement (35 
U.S.C. 112, first paragraph) or the requirements  of the second paragraph of 
35 U.S.C. 112 with respect to the claims. 

37 CFR 1.801 does not attempt to identify what biological material either 
needs  to be or may be deposited to comply with the requirements of 35 
U.S.C. 112. 
 For the most part, this issue must be addressed on a case-by-case basis. 
 Thus, while the Office does not currently contemplate that there  would 
be  any situations where a material that is not capable of 
self-replication either  directly or indirectly would be acceptable as a 
deposit, an applicant is clearly  not precluded by these rules from 
attempting to show in any given application  why the deposit of such a 
material should be acceptable to satisfy the requirements  of 35 U.S.C. 112. 


2403.01       Material Capable of Self-Replication 


Biological material includes material that is capable of self-replication 
either  directly or indirectly.  Direct self-replication includes those 
situations  where the biological material reproduces by itself. 
Representative examples  of materials capable of self-replication are 
defined in the rule.  Indirect  self-replication is meant to include those 
situations where the biological  material is only capable of replication 
when another self-replicating biological  material is present. 
Self-replication after insertion in a host is one example  of indirect 
self-replication.  Examples of indirect replicating biological  materials 
include viruses, phages, plasmids, symbionts, and replication defective 
cells.  The list of representative examples of each type of replicating 
material  includes 
viruses to demonstrate that the two lists in the rule are not intended to 
be  mutually exclusive. 


2403.02       Plant Material 


Although plant material is included within the scope of the definition of 
biological  material for purposes of patents for plant inventions under 35 
U.S.C. 101,  the rules on deposits are not applicable to applications 
filed under the Plant  Patent Act (35 U.S.C. 161-164).  The Office is of 
the view that a deposit is  not required under the present provisions of 
35 U.S.C. 162.  Thus, a deposit  is not necessary for the grant of a plant 
patent under the provisions of 35  U.S.C. 161-164.  As with other 
biological material deposited for purposes of  patents for inventions 
under 35 U.S.C. 101, the deposit of plant material together  with the 
written specification must enable those skilled in the art to make  and 
use the claimed invention, in accordance with the requirements of 35 
U.S.C.  112. 

As with some types of reproducible biological material, seeds can be 
reproduced  only after a growing season which may be relatively long. 
Although the rules  do not specify a specific number of seeds to be 
deposited to meet the requirements  of these rules, the Office will 
consider 2500 to be a minimum number in the  normal case, but will give an 
applicant the opportunity to provide justification  why a lesser number 
would be suitable under the circumstances of a particular  case.  The 
Department of Agriculture requires a deposit of 2500 seeds for the  grant 
of a Plant Variety Protection Certificate under the Plant Variety 
Protection 
 Act (7 U.S.C. 2321 et seq.).  As the reproduction of seeds will often 
take  a substantial period of time, the Office will require, at a minimum 
for the  grant of a patent, a number of seeds that is likely to satisfy 
demand for samples  once the patent is granted.  In one instance, the 
Office accepted a deposit  of 600 seeds coupled with an undertaking to 
deposit 1900 more seeds with due  diligence.  The particular situation 
involved a  "seedless" vegetable with  very few seeds per "fruit;" about 
two growing seasons were required to provide  the additional 1900 seeds. 


2404    Need or Opportunity to Make a Deposit 


37 CFR 1.802  Need or Opportunity to make a deposit. 

(a)  Where an invention is, or relies on, a biological material, the 
disclosure  may include reference to a deposit of such biological material. 

(b)  Biological material need not be deposited unless access to such 
material  is necessary for the satisfaction of the statutory requirements 
for patentability  under 35 U.S.C. 112.  If a deposit is necessary, it 
shall be acceptable if  made in accordance with these regulations. 
Biological material need not be  deposited, inter alia, if it is known and 
readily available to the public or  can be made or isolated without undue 
experimentation.  Once deposited in a  depository complying with these 
regulations, a biological material will be  considered to be readily 
available even though some requirement of law or regulation  of the United 
States or of the country in which the depository institution  is located 
permits access to the material only under conditions imposed for  safety, 
public health or similar reasons. 

(c)  The reference to a biological material in a specification disclosure 
or  the actual deposit of such material by an applicant or patent 
owner does not create any presumption that such material is necessary to 
satisfy  35 U.S.C. 112 or that deposit in accordance with these 
regulations is or was  required. 

37 CFR 1.802(a) permits a deposit of a biological material to be 
referenced  in a patent application where an invention is, or relies on, a 
biological material. 
 The invention may rely on a biological material for the purposes of 
making  or using the invention, either as a preferred mode or an 
alternative mode of  operation. A reference to a deposit may be included 
in a specification even  though the deposit is not required to satisfy the 
requirements of 35 U.S.C.  112. 

There is no necessary implication or presumption that can or should be 
made  about the need for a deposit simply because reference to a deposit 
is made  in an application disclosure, as noted in paragraph (c).  As 
noted in paragraph 
(b), biological material need not be deposited  unless access to such 
material  is necessary for the satisfaction of the statutory requirements 
for patentability  under 35 U.S.C. 112 and that access is not otherwise 
available in the absence  of a deposit.  Where a deposit is required to 
provide the necessary access,  a deposit is acceptable for patent purposes 
only where it is made in accordance  with these regulations.  Even where 
access to biological material is required  to satisfy these statutory 
requirements, a deposit may not be necessary if  access sufficient to 
satisfy these requirements is otherwise available. 

2404.01       Biological Material that is Known and Readily Available to 
the Public 

In an application where the invention required access to specific 
biological  material, an applicant could show that the biological material 
is accessible  because it is known and readily available to the public. 
The concepts of "known  and readily available" are considered to reflect a 
level of public accessibility  to a necessary component of an invention 
disclosure that is consistent with  an ability to make and use the 
invention.  To avoid the need for a deposit  on this basis, the biological 
material must be both known and readily available  - neither concept alone 
is sufficient.  A material may be known in the sense  that its existence 
has been published, but is not available to those who wish  to obtain that 
particular known biological material.  Likewise, a biological  material 
may be available in the sense that those having possession of it would 
make it available upon request, but no one has been informed of its 
existence. 
The Board of Patent Appeals and Interferences has held that a description 
of  the precise geographic location of marine tunicates, as a biological 
material,  used in a claimed invention was adequate to satisfy the 
enablement requirement  of 35 U.S.C. 112.   Ex Parte Rinehart, 10 USPQ2d 
1719 (Bd Pat. App. & Int.  1985).  The term "readily" used in the phrase 
"known and readily available"  is considered appropriate to define that 
degree of availability which would  be reasonable under the circumstances. 
 If the biological material and its  natural location can be adequately 
described so that one skilled in the art  could obtain it using ordinary 
skill in the art, the disclosure would appear  to be sufficient to meet 
the enablement requirement of 35 U.S.C. 112 without  a deposit so long as 
its degree of availability is reasonable under the circumstances. 

By  showing that a biological material is known and readily available or 
by  making a deposit in accordance with these rules, applicant does not 
guarantee  that such biological material will be available forever. 
Public access during  the term of the patent may affect the enforceability 
of the patent.  Although  there is a public interest in the availability 
of a deposited biological material  during and  after the period of 
enforceability of the patent, there should  not be any undue concern about 
continued access to the public.  Unless there  is a reasonable basis to 
believe that the biological material will cease to  be available during 
the enforceable life of the patent, current availability  would satisfy 
the requirement.  The incentives provided by the patent system  should not 
be constrained by the mere possibility that a disclosure that was  once 
enabling would become non-enabling over a period of time through no fault 
of the patentee.  In re Metcalfe, 410 F.2d 1378, 161 USPQ 789 (CCPA 1969). 
If an applicant has adequately established that a biological material is 
known  and readily available, the Office will accept that showing.  In 
those instances,  however, the applicant takes the risk that the material 
may cease to be known  and readily available.  Such a defect cannot be 
cured by reissue after the  grant of a patent. 

On the other hand, Ex parte Humphreys, 24 USPQ2d 1255 (Bd Pat. App. & Int. 
 1992), held that the only manner in which applicants could satisfy their 
burden  of assuring public access to the needed biological material, 
and, thereby, compliance with the enablement requirement of 35 U.S.C. 112, 
 was by making an appropriate deposit.  The fact that applicants and other 
members  of the public were able to obtain the material in question from a 
given depository  prior to and after the filing date of the application in 
issue did not establish  that upon issuance of a patent on the application 
that such material would  continue to be accessible to the public.  The 
applicants did not make of record  any of the facts and circumstances 
surrounding their access to the material  in issue from the depository, 
nor was there any evidence as to the depository's  policy regarding the 
material if a patent would have been granted.  Further,  there was no 
assurance that the depository would have allowed unlimited access  to the 
material if the application had matured into a patent. 

There are many factors that may be used as indicia that a biological 
material  is known and readily available to the public.  Relevant factors 
include commercial  availability, references to the biological material in 
printed publications,  declarations of accessibility by those working in 
the field, evidence of predictable  isolation techniques, or an existing 
deposit made in accordance with these  rules.  Each factor may or may not 
be sufficient alone to demonstrate that  the biological material is known 
and readily available.  Those applicants that  rely on evidence of 
accessibility other than a deposit take the risk that the  patent may no 
longer be enforceable if the biological material necessary to  satisfy the 
requirements of 35 U.S.C. 112 ceases to be accessible. 
The Office will accept commercial availability as evidence that a 
biological  material is known and readily available only when the evidence 
is clear and  convincing that the public has access to the material.  A 
product could be  commercially available but only at a price that 
effectively  eliminates accessibility  to those desiring to obtain a 
sample.  The relationship between the applicant  relying on a biological 
material and the commercial supplier is one factor  that would be 
considered in determining whether the biological material was  known and 
readily available.  However, the mere fact that the biological material 
is commercially available only through the patent holder or the patent 
holder's  agents or assigns shall not, by itself, justify a finding that 
the necessary  material is not readily available, absent reason to believe 
that access to  the biological material would later be improperly restricted. 

The mere reference to a deposit or the biological material itself in any 
document  or publication does not necessarily mean that the deposited 
biological material  is readily available.  Even a deposit made under the 
Budapest Treaty and referenced  in a United States or foreign patent 
document would not necessarily meet the  test for known and readily 
available unless the deposit was made under conditions  that are 
consistent with those specified in these rules, including the provision 
that requires, with one possible exception, that all restrictions on the 
accessibility  be irrevocably removed by the applicant upon the granting 
of the patent.  Ex  parte 
Hildebrand, 15 USPQ2d 1662 (Bd Pat. App. & Int. 1990). 

A Budapest Treaty deposit cited in a U.S. patent need not be made 
available  if it was not required to satisfy 35 U.S.C. 112.  Thus, a 
reference to a deposit  will not be certified available unless either (1) 
the deposit was necessary  to overcome a rejection under 35 U.S.C. 112, or 
(2) there is, in the record,  a statement by the examiner that a rejection 
under 35 U.S.C. 112 would have  been made "but for" the deposit (assumes 
deposit information in record, as  filed).  Otherwise, public access 
cannot be certified and the deposit cannot  be relied upon for other 
purposes, e.g., the deposit cannot be relied upon  by a third party to 
establish "known" and "readily available" in another application.  See 37 
CFR 1.808 and MPEP w 2410 andw 2410.02. 

Once a deposit is made in a depository complying with these rules, and 
under  conditions complying with these rules, a biological material will 
be considered  to be readily available even though some requirement of law 
or regulation in  the United States or in the country where the depository 
institution is located  permits access to the material only under 
conditions imposed for health, safety  or similar reasons.  This provision 
is consistent with the Budapest Treaty 
(Article 5) and is designed to permit the patenting of inventions 
involving  materials having restricted distribution, where the 
restrictions are imposed  for the public, as opposed to the private, 
 welfare. 


2404.02       Biological Material that Can be Made or Isolated Without 
Undue Experimentation 

Applicant may show that a deposit is not necessary even though specific 
biological  materials are required to practice the invention if those 
biological materials can be made or isolated  without undue 
experimentation. Deposits may be required to support the claims  if an 
isolation procedure requires undue experimentation to obtain the desired 
biological material. Ex Parte Jackson, 
217 USPQ 804 (Bd App. 1982).  No deposit is required, however,where the 
required  biological materials can be obtained from publicly available 
material with  only 
routine experimentation and a reliable screening test.  Tabuchi v. Nubel, 
559  F.2d 1183, 194 USPQ 521 (CCPA 1977);  Ex Parte Hata, 6 USPQ 2d 1652 
(Bd Pat.  App. & Int. 1987). 


2404.03       Reference to a Deposit in the Specification 


37 CFR 1.802(c) specifically provides that the mere reference to a 
biological  material in the specification disclosure or the actual deposit 
of such material  does not create any presumption that such referenced or 
deposited material  is necessary to satisfy 35 U.S.C. 112, or that a 
deposit in accordance with  these regulations is or was required.  It 
should be noted, however, that a  reference to a biological material, 
present in an application upon filing,  may form the basis for making a 
deposit, where 
required, after the filing date of a given application 
but that the reference to the biological material, 
itself, cannot be added after filing without risking the prohibited 
introduction  of new matter (35 U.S.C. 132).  See the discussion of the 
Lundak application  in MPEP 
w 2406.01. 


2405    Acceptable Depository 


37 CFR 1.803.       Acceptable depository. 

(a)  A deposit shall be recognized for the purposes of these regulations 
if  made in 

(1)  any International Depositary Authority (IDA) as established under the 
 Budapest Treaty on the International Recognition of the Deposit of 
Micro-organisms  for the Purposes of Patent Procedure, or 

(2)  any other depository recognized to be suitable by the Office. 
Suitability  will be determined by the Commissioner on the basis of the 
administrative and  technical competence, and agreement of the depository 
to comply with the terms  and conditions applicable to deposits for patent 
purposes.  The Commissioner  may seek the advice of impartial consultants 
on the suitability of a depository. 
 The depository must: 

(i)  Have a continuous existence; 

(ii)  Exist independent of the control of the depositor; 

(iii)  Possess the staff and facilities sufficient to examine the 
viability  of a deposit and store the deposit in a manner which ensures 
that it is kept  viable and uncontaminated; 

(iv)  Provide for sufficient safety measures to minimize  the risk of 
losing  biological material deposited with it; 

(v)  Be impartial and objective; 

(vi)  Furnish samples of the deposited material in an expeditious and 
proper  manner; and 

(vii)  Promptly notify depositors of its inability to furnish samples, and 
 the reasons why. 

(b)  A depository seeking status under paragraph (a)(2) of this section 
must  direct a communication to the Commissioner which shall: 

(1)  Indicate the name and address of the depository to which the 
communication  relates; 

(2)  Contain detailed information as to the capacity of the depository to 
comply 
 with  the requirements  of  paragraph  (a) (2) of  this  section, 
including  information  on  its  legal  status,  scientific  standing, 
staff  and  facilities; 
(3)  Indicate  that  the  depository  intends  to  be  available,  for 
the  purposes  of  deposit, to any depositor under these same conditions; 
(4)  Where the depository intends to accept for deposit only certain kinds 
 of biological material, specify such kinds; 

(5)  Indicate the amount of any fees that the depository will, upon 
acquiring  the status of suitable depository under paragraph (a) (2) of 
this section,  charge for storage, viability statements and furnishings of 
samples of the  deposit. 

(c)  A depository having status under paragraph (a)(2) of this section 
limited  to certain kinds of biological material may extend such status to 
additional  kinds of biological material by directing a communication to 
the Commissioner  in accordance with paragraph (b) of this section.  If a 
previous communication  under paragraph (b) of this section is of record, 
items in common with the  previous communication may be incorporated by 
reference. 

 (d)  Once a depository is recognized to be suitable by the Commissioner 
or  has defaulted or discontinued its performance under this section, 
notice thereof  will be published in the Official Gazette of the Patent 
and Trademark Office. 
37 CFR 1.803 indicates that a depository will be recognized as acceptable 
for  the purposes of these regulations if it is either an International 
Depository  Authority (IDA) established under the Budapest Treaty, or if 
it is a depository  recognized as suitable by the Commissioner.  After the 
effective date of these  regulations, a deposit of biological material 
which is made in a depository  which is not recognized as acceptable under 
this regulation will not be considered  as satisfying the requirements of 
35 U.S.C. 112.  See Ex parte Humphreys, 24 USPQ2d 1255 (Bd Pat. App. & 
Int. 1992).  On the other hand, if a deposit  is not required to satisfy 
the requirements of 35 U.S.C. 112, it is permissible  to make reference to 
such a  deposit even though it may not be in a depository  or made under 
the conditions which are acceptable under these regulations.  As new 
depositories are accepted under the Budapest Treaty or are recognized as 
suitable by the Commissioner,  their identity will be announced in the 
Official Gazette. 

An organization may be recognized as suitable by the Office if the 
procedure  and conditions specified in 
37 CFR 1.803(a)(2) and 37 CFR 1.803(b) are followed.  Generally, it is not 
 the intention of the Office to recognize as suitable any organization 
where  the need for a suitable depository for patent purposes is being met 
by depositories  recognized as IDAs under the Budapest Treaty. 
Suitability will be judged by  the Commissioner, based on need and the 
information supplied by the organization  seeking status, and information 
obtained from other sources that may be consulted. 
While there is a desire to provide flexibility to a patent applicant in 
selecting  an appropriate depository, these rules are not intended to 
permit each patent  applicant to become its own depository since both the 
patent owner and the  public have an interest in the continued 
availability and accessibility of  the deposit during the enforceable life 
of the patent, and the public has a  continuing interest in its 
availability when the patent is no longer enforceable. 
 The concept of a depository independent of the control of the depositor 
or  an IDA as an acceptable depository is based on the need and desire to 
ensure  the safe and reliable storage of a deposited biological material 
under circumstances  that are substantially free of the opportunity for 
intentional mishandling  or negligent handling of the deposited material. 
The use of an independent  depository or internationally recognized 
depository will tend to preserve the  integrity of the deposit process 
against those that may accidentally alter  the deposited material, may 
wish to tamper with the deposited material or may  wish to resume control 
of its availability when the patent is no longer enforceable,  and will 
tend to preserve the interest of the public in the access to the 
biological  material once the term of the patent expires. 

When a depository having status under 37 CFR 1.803(a)(2) seeks to change 
the  kinds of biological materials that it will accept and maintain for 
the purposes  of these rules, a communication requesting such a change 
should be directed  to the Commissioner containing the information 
requested in 37 CFR 1.803(b). 
 When such a change is requested, the requesting depository should provide 
 a complete list of the kinds of biological materials it will accept. 
37 CFR 1.803(d) indicates that once a depository is recognized as suitable 
 for the purposes of this rule, or has defaulted or discontinued its 
performance  under this section, notice thereof will be published in the 
Official Gazette  of the Patent and Trademark Office.  A current list (as 
of January, 1993) of  IDAs recognized under the Budapest  Treaty, with 
addresses, is included below. 
 The mere fact that a deposit has been made in one of these depositories 
does  not mean that the terms of the deposit meet either the requirements 
of the  Budapest Treaty or the deposit regulations.  Many of the 
depositories recognized  under the Budapest Treaty have many different 
arrangements under which biological  material may be stored. 

The World Intellectual Property Organization (WIPO) publishes a Guide to 
the  Deposit of Micro-organisms under the Budapest Treaty (WIPO 
Publication No.  661 (E)) on the procedures and requirements concerning 
the deposit of biological  material, including procedures for obtaining a 
sample of deposited material,  in each of the international depositary 
authorities. 

CURRENT IDAs 

The following constitutes the list of IDAs recognized under the Budapest 
Treaty. 
 The list is current as of January, 1993. 

Agricultural Research Service Culture Collection (NRRL) 

1815 North University Street 

Peoria, Illinois  61604 

USA 

All-Union Institute of Genetics and Industrial Cultivation of 
Micro-organisms  of the Corporation Pharmindustry (VKPM) 

Dorozhnaya Street No. 8 

113545 Moscow 

Russian Federation 

All-Union Scientific Center of Antibiotics (VNIIA) 

Nagatinskaya Street 3-a 

113105 Moscow 

Russian Federation 

American Type Culture Collection (ATCC) 

12301 Parklawn Drive 

Rockville, Maryland  20852 

USA 

Australian Government Analytical Laboratories (AGAL) 

The New South Wales Regional Laboratory 

1, Suakin Street 

Pymble, NSW  2073 

Australia 

Belgian Coordinated Collections of Micro-organisms (BCCM) 

Prime Minister's Services 

Science Policy Office 

Rue de la Science 8 

B-1040 Brussells 

Belgium 

Centraalbureau Voor Schimmelcultures (CBS) 

Oosterstraat 1 

Postbus 273 

NL-3740 AG Baarn 

Netherlands 

Colleci#n Espa#ola de Cultivos Tipo (CECT) 

Microbiology Department 

Biological Science Faculty 

46100 Burjasot (Valencia) 

Spain 

Collection Nationale De Culture De Micro-organismes (CNCM) 

Institut Pasteur 

28, rue du Dr Roux 

75724 Paris C#dex 15 

France 

Culture Collection of Algae and Protozoa (CCAP) 

Institute of Freshwater Ecology 

Windermere laboratory 

Ambleside, Cumbria LA22 0LP 

United Kingdom 

and Dunstaffnage Marine Laboratory 

P.O. Box 3 

Oban, Argyll PA34 4AD 

United Kingdom 

Czech Collection of Micro-organisms (CCM) 

Ceskoslovensk# sb#rka mikroorganismu 

Masarykovy university 

ul. Tvrd#ho c. 14 

602 00 Brno 

Czech Republic 

Czechoslovak Collection of Yeasts (CCY) 

Ceskoslovensk# sb#rka kvasinek pri Chemick#m #stavu 
Slovensk# akademie ved 

D#bravsk# cesta 9 

842 38 Bratislava, 

Slovak Republic 

DSM - Deutsche Sammlung Von Mikroorganismen und ZellKulturen GmbH (DSM) 
Mascheroder Weg 1b 

D-3300 Braunschweig 

Germany 

European Collection of Animal Cell Cultures (ECACC) 

Vaccine Research and Production Laboratory 

Public Health Laboratory Service 

Centre for Applied Microbiology and Research 

Porton Down 

Salisbury, Wiltshire SP4 0JG 

United Kingdom 

Institute of Biochemistry and Physiology of Micro- 
organisms of the Russian Academy of Science 
(IBFM-VKM) 

Pushchino-na-Oke 

142292 Moscow Region 

Russian Federation 

International Mycological Institute (IMI) 

Bakeham Lane 

Englefield Green 

Egham, Surrey TW20 9TY 

United Kingdom 

Korea Institute of Science and Technology 

305-333, I Oun-Dong 

Yusong-Gu 

Taejon 

Republic of Korea 

Korean Culture Center of Micro-organisms (KCCM) 

College of Engineering 

Yonsei University 

Sodaemun gu 

Seoul 

120-749 

Republic of Korea 

National Bank for Industrial Micro-organisms and Cell Cultures (NBIMCC) 
125, Lenin Blvd. 

Block 2 

Sofia 

Bulgaria 

National Collection of Agricultural and Industrial Micro-organisms (NCAIM) 
Department of Microbiology and Biotechnology 

University of Horticulture and the Food Industry 

Soml#i #t 14-16 

H-1118 Budapest 

Hungary 

National Collection of Food Bacteria (NCFB) 

AFRC Institute of Food Research 

Reading Laboratory 

Shinfield 

Reading RG2 9AT 

United Kingdom 

National Collection of Type Cultures (NCTC) 

Central Public Health Laboratory 

61 Colindale Avenue 

London, NW9 5HT 

United Kingdom 

National Collection of Yeast Cultures (NCYC) 

AFRC Institute of Food Research 

Norwich Laboratory 

Colney Lane 

Norwich NR4 7UA 

United Kingdom 

National Collections of Industrial and Marine Bacteria Limited (NCIMB) 
23 St. Machar Drive 

Aberdeen AB2 1RY 

Scotland 

United Kingdom 

National Institute of Bioscience and Human Technology (NIBHT) 

(formerly the Fermentation Research Institute (FRI)) 

Agency of Industrial Science and Technology 

Ministry of International Trade and Industry 

1-3, higashi 1-chome 

Tsukuba-shi 

Ibaraki-ken 305 

Japan 


2406    Time of Making an Original Deposit 


37 CFR 1.804  Time of making an original deposit. 

(a)  Whenever a biological material is specifically identified in an 
application  for patent as filed, an original deposit thereof may be made 
at any time before  filing the application for patent or, subject to w 
1.809, during pendency of  the application for patent. 

(b)  When the original deposit is made after the effective filing date of 
an  application for patent, the applicant shall promptly submit a verified 
statement  from a person in a position to corroborate the fact, and shall 
state, that  the biological material which is deposited is a  biological 
material specifically  identified in the application as filed, except if 
the person is an attorney  or agent registered to practice before the 
Office, in which case the statement  need not be verified. 

37 CFR 1.804 specifies the time for making an original deposit to fulfill 
the  requirements of 35 U.S.C. 112.  For the reasons discussed throughout 
this section,  it is recommended that a deposit be made before the filing 
date of the application. 
 However, for the purposes of complying with the requirements of 35 U.S.C. 
 112, a deposit of a biological material may be made at any time before 
filing 
 the application for patent or during the pendency of the application 
subject  to the conditions of 
37 CFR 1.809.  Where a deposit is needed to satisfy the requirements of 35 
 U.S.C. 112 and it is made during the pendency of the application, it must 
be  made no later than the time period set by the examiner at the time the 
Notice  of Allowance and Issue Fee Due is mailed.  A necessary deposit 
need not be  made by an applicant until the application is in condition 
for allowance so  long as the applicant provides a written assurance that 
an acceptable deposit  will be made on or before the payment of the issue 
fee. This written assurance  must provide sufficiently detailed 
information to convince the examiner that  there is no outstanding issue 
regarding deposits that needs to be resolved. 

These rules are equally applicable in the cases of international and 
national  stage applications filed under the Patent Cooperation Treaty. 
Insofar as the  rules do not permit post-issuance original deposits, the 
failure to make an  original deposit in an application cannot be cured by 
filing a reissue application  or instituting a reexamination proceeding. 
However, if an amendment of claims  in a reexamination proceeding raises 
the need for a deposit, an original deposit  may be made during the 
reexamination proceeding. 


2406.01       Description in Application Specification 


37 CFR 1.804(a) specifies not only a permissible time frame for making an 
original  deposit, but also specifies that the biological material 
deposited must be  specifically identified in the application for patent 
as filed. The requirement  for a specific identification is consistent 
with the description requirement  of the first paragraph of 35 U.S.C. 112 
and provides an antecedent basis for  the biological material which either 
has been or will be deposited before the  patent is granted. 

The description in the Lundak application as filed (now patent 4,594,325) 
provides  a suitable illustration of the specific identification and 
description which  are required in an application as filed.  In that 
application, an immortal  B-cell line was disclosed and claimed.  The cell 
line was referred to in the  application, as filed, as WI-L2-729 HF2.  The 
methods of obtaining and using  this cell line were also described in the 
application as filed.  A deposit  of the cell line was made with the 
American Type Culture Collection (ATCC)  about a week after the 
application was filed in the United States.  The United  States Court of 
Appeals for the Federal Circuit held that the requirements  of access by 
the Office to a sample of the cell line during pendency, and public 
access after grant, were met by Lundak's procedures.  The Court further 
held  that the addition of information designating the depository, 
accession number,  and deposit date of the deposited cell line in ATCC 
after the filing date did  not violate the  prohibition against new matter 
in 35 U.S.C. 132.  In re Lundak,  773 F.2d 1216, 227 USPQ 90 (Fed. Cir. 
1985).  However, it must be clear from  the application as filed that the 
invention claimed and described in the specification  "was fully capable 
of being reduced to practice (i.e., no technological problems,  the 
resolution of which would require more than ordinary skill and reasonable 
time, remained in order to obtain an operative, useful process)."  Feldman 
 v. Aunstrup, 
517 F.2d 1351, 1355, 186 USPQ 108, 113 (CCPA 1975), cert. denied, 424 U.S. 
 912 (1976). 


2406.02       Deposit after Filing Date Corroboration 


When the original deposit is made after the effective filing date of an 
application  for patent, an applicant is required to promptly submit a 
verified statement  from a person in a position to corroborate that the 
biological material which  is deposited is a biological material 
specifically identified in the application 
(the filing date of which is relied upon) as filed.  The nature of this 
corroboration  will depend on the circumstances in the particular 
application under consideration,  including the length of time between the 
application filing date and the date  of deposit.  While few, if any, 
situations can be imagined where the description  requirement of 35 U.S.C. 
112 can be satisfied where the biological material  was not in existence 
at the time of filing, the rules will not preclude such  a situation as 
there is no requirement in the patent law that an actual reduction  to 
practice occur as a condition precedent to filing a patent application. 
The requirement for a verified statement is not necessary under 
37 CFR 1.804(b) if the person making the statement is an attorney or agent 
 registered to practice before the 
Office. 


2406.03       Possible Loss of U.S. Filing Date in Other 

Countries 

Those applicants intending to file patent applications in a country 
foreign  to the United States relying upon biological material that must 
be deposited  to satisfy the requirements of 35 U.S.C. 112 when the 
application is filed  in the United States are cautioned that in many 
countries the deposit must  be made before the filing date of the priority 
application in order to obtain  foreign priority rights.  Thus, while the 
deposit of a biological material  subsequent to the effective filing date 
of a United States application is sufficient  to comply with 
35 U.S.C. 112, an applicant may not be able to rely on the filing date of 
such  a U.S. application if a patent is sought in certain countries 
foreign to the  United States. 


2407    Replacement or Supplement of Deposit 


37 CFR 1.805  Replacement or supplement of deposit. 

(a)  A depositor, after receiving notice during the pendency of an 
application  for patent, application for reissue patent or reexamination 
proceeding, that  the depository possessing a deposit either cannot 
furnish samples thereof or  can furnish samples thereof but the deposit 
has become contaminated or has  lost its capability to function as 
described in the specification, shall notify  the Office in writing, in 
each application for patent or patent affected.   In such a case, or where 
the Office otherwise learns, during the pendency of  an application for 
patent, application for reissue patent or reexamination  proceeding, that 
the depository possessing a deposit either cannot furnish  samples thereof 
or can furnish samples thereof but the deposit has become contaminated  or 
has lost its capability to function as described in the specification, the 
 need for making a replacement or supplemental deposit will be governed by 
the same considerations governing the need for  making an original deposit 
under the provisions set forth in w 1.802(b).  A  replacement or 
supplemental deposit made during the pendency of an application  for 
patent shall not be accepted unless it meets the requirements for making 
an original deposit under these regulations, including the requirement set 
 forth under 
w 1.804(b).  A replacement or supplemental deposit made in connection 

with a patent, whether or not made during the pendency of an application 
for  reissue patent or a reexamination proceeding or both, shall not be 
accepted  unless a certificate of correction under w 1.323 is requested by 
the patent  owner  which  meets  the terms  of paragraphs  (b)  and  (c) 
of  this  section. 
(b)  A request for certificate of correction under this section shall not 
be  granted unless the certificate identifies: 

(1) The accession number for the replacement or supplemental deposit; 
(2) The date of the deposit; and 

(3) The name and address of the depository. 

(c)  A request for a certificate of correction under this section shall 
not  be granted unless the request is made promptly after the replacement 
or supplemental  deposit has been made and: 

(1) Includes a verified statement of the reason for making the replacement 
 or supplemental deposit; 

(2) Includes a verified statement from a person in a position to 
corroborate  the fact, and shall state, that the replacement or 
supplemental deposit is  of a biological material which is identical to 
that originally deposited; 
(3)  Includes a verified showing that the patent owner acted diligently 
(i)  In the case of a replacement deposit, in making the deposit after 
receiving  notice that samples could no longer be furnished from an 
earlier deposit, or 
(ii)  In the case of a supplemental deposit, in making  the deposit after 
receiving  notice that the earlier deposit had become contaminated or had 
lost its capability  to function as described in the specification; 

(4)  Includes a verified statement that the term of the replacement or 
supplemental  deposit expires no earlier than the term of the deposit 
being replaced or supplemented;  and 

(5)  Otherwise establishes compliance with these regulations, except that 
if  the person making one or more of the required statements or showing is 
an attorney  or agent registered to practice before the Office, that 
statement or showing  need not be verified. 

(d)  A depositor s failure to replace a deposit, or in the case of a 
patent,  to diligently replace a deposit and promptly thereafter request a 
certificate  of correction which meets the terms of paragraphs (b) and (c) 
of this section,  after being notified that the depository possessing the 
deposit cannot furnish  samples thereof, shall cause the application or 
patent involved to be treated  in any Office proceeding as if no deposit 
were made. 

(e)  In the event a deposit is replaced according to these regulations, 
the  Office will apply a rebuttable presumption of identity between the 
original  and the replacement deposit where a patent making reference to 
the deposit  is relied upon during any Office proceeding. 

(f)  A replacement or supplemental deposit made during the pendency of an 
application  for patent may be made for any reason. 

(g) In no case is a replacement or supplemental deposit of a biological 
material  necessary where the biological material, in accordance with w 
1.802(b), need  not be deposited. 

(h)  No replacement deposit of a biological material is necessary where a 
depository  can furnish samples thereof but the depository for national 
security, health  or environmental safety reasons is unable to provide 
samples to requesters  outside of the jurisdiction where the depository is 
located. 

(i)  The Office will not recognize in any Office proceeding a replacement 
deposit  of a biological material made by a patent owner where the 
depository could  furnish samples of the deposit being replaced. 

37 CFR 1.805 relates to the deposit of a biological material to replace or 
 supplement a previous deposit.  The term "replacement" is directed to 
those  situations where one deposit is being substituted for another.  An 
applicant  may have greater latitude in replacing a deposit during the 
pendency of an  application than after the patent is granted.  Replacement 
will typically take  place where the earlier deposit is no longer viable. 
The term "supplement"  is directed to those situations where the earlier 
deposit is still viable in  the sense that it is alive and capable of 
replication either directly or indirectly,  but has lost a  quality (e.g., 
purity, functionality) it allegedly possessed  at the time the application 
was filed.  The procedures in these rules contemplate  that only the 
original depositor would have a right to replace or supplement  the 
original deposit. 


2407.01       In a Pending Application 


37 CFR 1.805(a) relates to the procedure for replacing or supplementing a 
deposit  with respect to a pending application or a patent.  An applicant 
or patent  owner is required to notify the Office when it obtains 
information that the  depository possessing a deposit cannot furnish 
samples of the deposit to satisfy  the requirements of 35 U.S.C. 112. 
When the Office is so informed or otherwise  becomes aware that samples of 
the deposited material cannot be furnished by  the depository, the 
examiner will treat the application or reexamination proceeding, 
whichever is applicable, as if no deposit existed.  A replacement or 
supplemental  deposit will be accepted if it meets all the requirements 
for making an original  deposit. 

It should be noted that in a pending application, an applicant need not 
replace  the identical material previously deposited, but may make an 
original deposit  of a biological material which is specifically 
identified and described in  the application as filed.  Whether this 
alternative deposit will meet the requirements  of 35 U.S.C. 112 with 
respect to the claimed subject matter must be resolved  by the examiner on 
a case-by-case basis.  The conditions in 37 CFR 1.802(b) and 37 CFR 1.804 
(b) must be satisfied. 

2407.02       After a Patent Has Issued 


A replacement deposit made in connection with an application for reissue 
patent  or a reexamination proceeding or both shall not be accepted unless 
a certificate  of correction is requested which meets the terms of 
37 CFR 1.805(b) and 37 CFR 1.805 (c)  for replacement deposits.  Any 
correction  made to the original patent will be automatically incorporated 
into the reissued  or reexamined patent unless changes are made during 
examination of the reissue  application or reexamination proceeding. 

37 CFR 1.805(b) and 37 CFR 1.805(c), specify the procedures that a patent 
owner  may follow to ensure that a patent contains the appropriate 
information about  a deposited biological  material  in  the event that  a 
 replacement or supplemental  deposit is made after the patent is granted. 
 37 CFR 1.805(b) describes the  information which must be contained in the 
certificate of correction, whereas  37 CFR 1.805(c) de -scribes the 
information which must be provided in the request  to make the correction. 


2407.03       Failure to Replace 


37 CFR 1.805(d) sets forth the Office position that the  failure to make a 
 replacement deposit in a case pending before the Office, for example a 
reissue  or reexamination proceeding, where a deposit is considered to be 
necessary  to satisfy the requirements of 35 U.S.C. 112, shall cause the 
application or  patent involved to be treated in any Office proceeding as 
if no deposit were  made.  The provisions of 37 CFR 1.805(g) indicate that 
a replacement need not  be made where, at the point in time when 
replacement  would otherwise be necessary,  access to the necessary 
biological material was otherwise available.  For example,  a replacement 
deposit would not be required under the circumstances where access  to the 
necessary biological material was established through commercial 
suppliers. 


2407.04       Treatment of Replacement 


37 CFR 1.805(e) indicates that the Office will apply a rebuttable 
presumption  of identity between the replacement deposit and an original 
deposit where a  patent making reference to the deposit is relied on 
during any Office proceeding. 
 This means that where a replacement deposit is permitted and made, the 
examiner  will assume that the same material as described in the patent is 
accessible  from the identified depository unless evidence to the contrary 
comes to the  attention of the 
Office. 

An applicant for patent may make a replacement deposit during the pendency 
 of the application for any reason.  The provisions of 37 CFR 1.805(f) 
recognize  that since an original deposit may be made during the pendency 
of the application  subject to the conditions of 
37 CFR 1.809, a replacement deposit logically cannot be held to any higher 
 standard or any further requirements. 


2407.05       Exemption from Replacement 


The provisions of 37 CFR 1.805(h) indicate that a replacement deposit is 
not  required even though the depository cannot furnish samples, under 
certain conditions,  to those requesting a sample outside of the 
jurisdiction where the depository  is located.  The conditions are 
specified in this paragraph as being limited  to national security, health 
or environmental safety reasons. 


2407.06       Replacement May Not be Recognized 


Finally, 37 CFR 1.805(i) indicates that the Office will not recognize in 
any  Office proceeding a replacement deposit made by the patent owner 
where the  depository could furnish samples of the original deposit being 
replaced.  The  best evidence of what was originally deposited should not 
be lost through destruction  or replacement if made in association with an 
existing patent.  A supplemental  deposit may be  accepted in an Office 
proceeding, however, depending on the  circumstances in each case. 


2408    Term of Deposit  [R-1] 


37 CFR 1.806  Term of deposit. 

A deposit made before or during pendency of an application for patent 
shall  be made for a term of at least thirty (30) years and at least five 
(5) years  after the most recent request for the furnishing of a sample of 
the deposit  was received by the depository.  In any case, samples must be 
stored under  agreements that would make them available beyond the 
enforceable life of the  patent for which the deposit was made. 

The term of deposit must satisfy the requirements of the Budapest Treaty 
which  sets a term of at least 30 years from the date of deposit and at 
least five 
(5) years after the most recent request for the furnishing of a sample of 
the  deposit was received by the depository. In the event 

that the 30-year term covers the 17-year  term  > or 20-year term < of the 
 patent plus six (6) years to include the Statute of Limitations, no 
further  requirement is necessary.  Unless applicant indicates that the 
deposit has  been made under the Budapest Treaty, applicant must indicate 
the term for which  the deposit has been made.  The mere possibility of 
patent term extension or  extended litigation involving the patent should 
not be considered in this analysis. 
In the event that the 30-year term of deposit measured from the date of 
deposit  would necessarily terminate within the period of enforceability 
of the patent 
(the normal 17-year term  >or 20-year term< plus six (6) years to include 
the  Statute of Limitations), samples must be stored under agreements that 
would  make them available beyond the enforceable life of the patent 
(i.e., until  23  > or 26 < years after issuance) for which the deposit 
was made.  No requirement  should be made as to any particular period of 
time beyond the enforceable life  of the patent.  The purpose of the 
requirement is to insure that a deposited  biological material necessary 
for the practice of a patented invention would  be available to the public 
after expiration of the patent for which the deposit  was made.  The term 
of the deposit must comply with the requirements of each  sentence of 37 
CFR 1.806 whether or not the deposit is made under the BudapestTreaty. 
 A specific statement that the deposit complies with the second sentence 
of  this section is required only where the 30-year term would terminate 
within  the enforceable life of the patent. 


2409    Viability of Deposit 


37 CFR 1.807.       Viability of deposit. 

(a)   A deposit of biological material that is capable of self-replication 
 either directly or indirectly must be  viable at the time of deposit and 
during  the term of deposit.  conclude only that the deposited material is 
capable  of Viability may be tested by the depository. The test must 
reproduction.   No evidence is necessarily required regarding the ability 
of the deposited  material to perform any function described in the patent 
application. 
(b)   A viability statement for each deposit of a biological material 
defined  in paragraph (a) of this section not made under the Budapest 
Treaty on the  International Recognition of the Deposit of Micro-organisms 
for the Purposes  of Patent Procedure must be filed in the application and 
must contain: 
(1)   The name and address of the depository; 

(2)    The name and address of the depositor; 

(3)   The date of deposit; 

(4)   The identity of the deposit and the accession number given by 
the  depository; 

(5)   The date of the viability test; 

(6)   The procedures used to obtain a sample if the test is not done 
by  the depository; and 

(7)   A statement that the deposit is capable of reproduction. 

(c)  If a viability test indicates that the deposit is not viable upon 
receipt,  or the examiner cannot, for scientific or other valid reasons, 
accept the statement  of viability received from the applicant, the 
examiner shall proceed as if  no deposit has been made.  The examiner will 
accept the conclusion set forth  in a viability statement issued by a 
depository recognized under w 1.803(a). 
37 CFR 1.807 requires that the deposit of biological material that is 
capable  of self-replication either directly or indirectlymust be viable 
at the time  of deposit and during the term of deposit.  This requirement 
for viability  is essentially a requirement that the deposited material is 
capable of reproduction. 
 For the purpose of making a deposit under these rules, there is no 
requirement  that evidence be provided that the deposited material is 
capable or has the  ability to perform any function described in the 
patent application.  However,  as with any other issue of description or 
enablement, if the examiner has evidence  or reason to question the 
objective statements made in the patent application,  applicants may be 
required to demonstrate that the deposited biological material  will 
perform in the manner described. 

Under the Budapest Treaty, there is a requirement that the deposit be 
tested  for viability before it is accepted.  Thus, a mere statement by an 
applicant,  an authorized representative of applicant or the assignee that 
the deposit  has been accepted under the Budapest Treaty would satisfy 37 
CFR 1.807. 
For each deposit which is not made under the Budapest Treaty, a viability 
statement  must be filed in the patent  application and contain the 
information listed  in paragraph (b) of this section.  Under 37 CFR 
1.807(c), the examiner will  accept the conclusion set forth in a 
viability statement which is issued by  a depository recognized under 37 
CFR 1.803(a).  If the viability test indicates  that the deposit is not 
viable upon receipt, or the examiner cannot, for scientific  or other 
valid reasons, accept the statement of viability received from the 
applicant, the examiner shall so notify the applicant stating the reasons 
for  not accepting the statement and proceed with the examination process 
as if  no deposit had been made. 


2410    Furnishing of Samples 


37 CFR 1.808     Furnishing of samples. 

(a)  A deposit must be made under conditions that assure that: 

(1)  Access to the deposit will be available during pendency of the patent 
 application making reference to the deposit to one determined by the 
Commissioner  to be entitled thereto under w 1.14 and 35 U.S.C. 122, and 

(2)  Subject to paragraph (b) of this section, all restrictions imposed by 
 the depositor on the availability to the public of the deposited material 
will  be irrevocably removed upon the granting of the patent. 

(b)  The depositor may contract with the depository to require that 
samples  of a deposited biological material shall be furnished only if a 
request for  a sample, during the term of the patent: 

(1)  Is in writing or other tangible form and dated; 

(2)  Contains the name and address of the requesting party and the 
accession  number of the deposit; and 

(3)  Is communicated in writing by the depository to the depositor along 
with  the date on which the sample was furnished and the name and address 
of the  party to whom the sample was furnished. 

(c)  Upon request made to the Office, the Office will certify whether a 
deposit  has been stated to have been made under conditions which make it 
available  to the public as of the issue date of the patent grant provided 
the request  contains: 

(1)  The name and address of the depository; 

(2)  The accession number given to the deposit; 

(3)  The patent number and issue date of the patent referring to the 
deposit;  and 

(4)  The name and address of the requesting party. 


2410.01       Conditions of Deposit 


37 CFR 1.808 requires that the deposit of biological material be made 
under  two (2) conditions: 

(1) access to the deposit will be available during pendency of the patent 
application  making reference to the  deposit to one determined by the 
Commissioner to be  entitled thereto under 37 CFR 1.14 and 35 U.S.C. 122, and 

(2) with one exception, that all restrictions imposed by the depositor on 
the  availability to the public of the deposited biological material be 
irrevocably  removed upon the granting of the patent. 

The one exception that is permitted is specified in 
37 CFR 1.808(b)which permits the depositor to contract with the depository 
 to require that samples of a deposited biological material shall be 
furnished  only if a request for a sample, during the term of the patent, 
meets  any 
 one  or all  of the three conditions specified in this paragraph.  These 
conditions  are: 

(1) the request is in writing or other tangible form and dated; and/or 
(2) the request contains the name and address of the requesting party and 
the  accession number of the deposit; and/or 

(3) the request is communicated in writing by the depository to the 
depositor  along with the date on which the sample was furnished and the 
name and address  of the party to whom the sample was furnished. 

It should be noted that this exception to the general rule that all 
restrictions  will be removed must be strictly followed and that no 
variations of this explicit  exception will be accepted as meeting the 
conditions of this section.  Although  this exception is consistent with 
the provisions in the Budapest Treaty and  its implementing regulations 
(Rule 11.4), other conditions on accessibility  are permitted under the 
Budapest Treaty as prescribed by national law.  Consequently,  the mere 
indication that a deposit has been made under conditions prescribed  by 
the Budapest Treaty would satisfy all conditions of these regulations 
except  the requirement that all restrictions on access be removed on 
grant of the  patent. 
Ex parte Hildebrand, 15 USPQ2d 1662 (Bd Pat. App. & Int. 1990). 


2410.02       Certification of Accessibility of Deposit 


Since the mere description of a deposit or identity of a deposit in a 
patent  specification is not necessarily an indication that a requirement 
for deposit  was made or that a deposit which complies with these rules 
has been made, accessibility  to a deposited material referenced in a 
patent may depend on the satisfaction  of conditions not apparent on the 
face of the patent.  For these reasons, and  upon request made to the 
Patent and Trademark Office, the Office will certify  whether a deposit 
has been stated to have been made under conditions which  would make it 
available to the public as of the issue date of the patent grant  provided 
the request is made to the Director of Patent Examining Group 1800,  and 
contains the following information: 

(1) the name and address of the depository; 

(2) the accession number given to the deposit; 

(3) the patent number and issue date of the patent referring to the 
deposit;  and 

(4) the name and address of the requesting party. 

For those deposits made pursuant to the Budapest Treaty, the World 
Intellectual  Property Organization provides a form (Form BP-12) for 
requesting a certification of the availability of samples of deposited 
micro-organisms pursuant  to Rule 11.3(a) of the Regulations under the 
Budapest Treaty.  Copies of this  form are available from the Director of 
Patent Examining Group 1800. 

2411    Examination Procedures 


37 CFR 1.809.       Examination procedures. 

(a) The examiner shall determine pursuant to w 1.104 in each application 
for  patent, application for reissue patent or reexamination proceeding if 
a deposit  is needed, and if needed, if a deposit actually made is 
acceptable for patent  purposes.  If a deposit is needed and has not been 
made or replaced or supplemented  in accordance with these regulations, 
the examiner, where appropriate, shall  reject the affected claims under 
the appropriate provision of 35 U.S.C. 112,  explaining why a deposit is 
needed and/or why a deposit actually made cannot  be accepted. 

(b)  The applicant for patent or patent owner shall respond to a rejection 
 under paragraph (a) of this section by- 

(1) In the case of an applicant for patent, making an acceptable original 
or  replacement or supplemental deposit or assuring the Office in writing 
that  an acceptable deposit will be made on or before the date of payment 
of the  issue fee, or, in the case of a patent owner, requesting a 
certificate of correction  of the patent which meets the terms of 
paragraphs (b) and (c) of w 1.805, or 
(2)  Arguing why a deposit is not needed under the circumstances of the 
application  or patent considered and/or why a deposit actually made 
should be accepted. 
 Other replies to the examiner s action shall be considered 
non-responsive. 
 The rejection will be repeated until either paragraph (b) (1) of this 
section  is satisfied or the examiner is convinced that a deposit is not 
needed. 
(c)  If an application for patent is otherwise in condition for allowance 
except  for a needed deposit and the Office has received a written 
assurance that an  acceptable deposit will be made on or before payment of 
the issue fee, the  Office will mail to the applicant a Notice of 
Allowance and Issue Fee Due together  with a requirement that the needed 
deposit be made within three months.  The  period for satisfying this 
requirement is extendible under w 1.136.  Failure  to make the needed 
deposit in accordance with this requirement will result  in abandonment of 
the application for failure to prosecute. 

(d)  For each deposit made pursuant to these regulations, the 
specification  shall contain: 

(1)  The accession number for the deposit; 

(2)  The date of the deposit; 

(3)  A description of the deposited biological material sufficient to 
specifically  identify it and to permit examination; and 

(4)  The name and address of the depository. 

37 CFR 1.809 sets forth procedures that will be used by the examiner to 
address  a deposit issue.  The burden is initially on the Office to 
establish that access  to a biological material is necessary for the 
satisfaction of the statutory  requirements for patentability under 35 
U.S.C. 112.  Once the Office has met  this burden, the burden shifts to 
the applicant or patent owner to demonstrate  that access to such 
biological material either is not necessary or is, either,  already 
available or that a deposit of such material will be made in accordance 
with these regulations. 


2411.01       Rejections Based on Deposit Issue 


Under 37 CFR 1.809(a), once the examiner has determined that access to a 
biological  material is necessary, and there is no information that would 
support the conclusion  that access is currently available in accordance 
with these regulations, the  examiner should make an appropriate rejection 
under 35 U.S.C. 112 until such  time as a deposit in accordance with these 
regulations is actually made or  a written assurance is received in the 
patent application that such a deposit  will be made upon an indication of 
allowability of the application.  The examiner  should clearly indicate 
the statutory basis for the rejection and the reasons  that are relied 
upon by the examiner to conclude that the application does  not comply 
with some requirement of 35 U.S.C. 112.  Although not exhaustive,  the 
following grounds of rejection may be applicable in appropriate 
circumstances: 
(1)  35 U.S.C. 112, first paragraph - lack of an enabling disclosure 
without  access to a specific biological material.  This ground of 
rejection should  be accompanied by evidence of scientific reasoning to 
support the conclusion  that a person skilled in the art could not make or 
use the invention defined  in and commensurate with the claims without 
access to the specific biological  material. 

(2)  35 U.S.C. 112, first paragraph - description requirement.  This 
ground  of rejection typically arises in the context that the application 
as filed  does not contain a description to support an amendment to the 
specification  or claims.  An amendment to the claims that is not 
described in the application  as filed would justify a rejection of the 
affected claims under 35 U.S.C. 112,  first paragraph.  If an amendment is 
made to the application, other than the  claims, that is not described in 
the application as filed, this would justify  an objection under 
35 U.S.C. 112, first  paragraph and/or 35 U.S.C. 132 (prohibition against 
the  introduction of new matter) and a requirement that the amendment be 
canceled. 
(3) 35 U.S.C. 112, first paragraph - best mode requirement.  This ground 
of  rejection will be rare in the ex parte examination process because it 
requires 
(i) a finding by the examiner that, at the time the application was filed, 
 the inventor(s) knew of a specific material that was considered by the 
inventor(s)  to be better than any other, and (ii) if a best mode was 
contemplated at that  time, that the inventor(s) concealed the best mode 
(accidentally or intentionally)  by failing to adequately describe that 
best mode.  See Chemcast Corp. v. Arco  Industries Corp., 913 F.2d 923, 16 
USPQ2d 1033 (Fed. Cir. 1990).  The Court  of Appeals for the Federal 
Circuit has twice resolved a best mode issue arising  in the context of a 
biotechnology invention in favor of the patentee.  See  Scripps Clinic and 
Research Foundation v. Genentech Inc., 927 F.2d 1565, 18  USPQ2d 1001 
(Fed. Cir. 1991) with respect to monoclonal antibodies, and Amgen  Inc. v. 
Chugai Pharmaceutical Co. Ltd., 927 F.2d 1200, 
18 USPQ2d 1016 (Fed. Cir. 1991) with respect to mammalian host cells. 
(4)  35 U.S.C. 112, second paragraph - indefiniteness.  This ground of 
rejection,  as applied to a deposit issue, requires the examiner to 
provide reasons why  the terms in the claims and/or scope of the invention 
are unclear because of  an incomplete or inaccurate description or the 
absence of a reference to a  biological material. 

(5)  35 U.S.C. 112, second paragraph - claims do not set forth what 
applicants  regard as their invention.  This ground of rejection requires 
the citation  of some evidence, not contained in the application as filed, 
that the claims  do not set forth what applicants regard as their 
invention.  In re Prater,  415 F.2d 1393, 162 USPQ 541 (CCPA 1969).  Any 
disagreement between the content  of the application disclosure and the 
scope of the claims should be addressed  under 35 U.S.C. 112, first 
paragraph.  See In re Ehrreich, 590 F.2d 902, 200  USPQ 504 (CCPA 1979). 

Where a deposit is required to satisfy 35 U.S.C. 112, a deposit must be 
made  in accordance with these regulations.  A deposit accepted in any IDA 
under  the Budapest Treaty shall be accepted for patent purposes if made 
under conditions  which comply with 37 CFR 1.806 and 37 CFR 1.808(a) 
concerning term of deposit  and permissible conditions on access once the 
patent is granted. 


2411.02       Responses to Rejections Based on Deposit Issue 


Once a rejection under 35 U.S.C. 112 has been made by the examiner 
directed  to the absence of access to a biological material, applicant may 
respond, pursuant  to 
37 CFR 1.809 (b)(1), by either making an acceptable original or 
replacement  deposit in accordance with these regulations, or assuring the 
Office in writing  that an acceptable deposit  will be made on or before 
the date of payment of  the issue fee, or by submitting an argument of why 
a deposit is not required  under the circumstances of the application 
being considered.  Other replies  to such a rejection by the examiner 
shall be considered non-responsive and  may result in abandonment of the 
application.  The rejection will be repeated  and made final until the 
requirements of 37 CFR 1.809(b)(1) are satisfied or  the examiner is 
convinced that a deposit is not required for the claimed subject  matter. 
Once the rejection is made final, the requirements of 37 CFR 1.116  apply 
to further submissions.  The written assurance will be accepted by the 
Office if it clearly states that an acceptable deposit will be made within 
 the required time and under conditions which satisfy these rules.  In the 
case  that an acceptable written assurance has been made by the applicant, 
the rejection 
 under 35 U.S.C 112 directed to the absence of access to the biological 
material  should be removed. 


2411.03       Application in Condition for Allowance 

Except for Deposit 

As set forth in 37 CFR 1.809(c), in the event that an application for 
patent  is otherwise in condition for allowance except for a required 
deposit and the  Office has received a written assurance that an 
acceptable deposit will be  made, the  Office will mail to the applicant a 
requirement that the required  deposit be made within three (3) months 
together with the Notice of Allowance  and Issue Fee Due.  Although the 
period for paying the issue fee cannot be  extended under the provisions 
of 37 CFR 1.136, the period for satisfying the  requirement to make an 
acceptable deposit may be extended under the provisions  of that section. 
Failure to make the needed deposit in accordance with this  requirement 
may be considered a failure to prosecute the application under  35 U.S.C. 
133 and result in abandonment of the application.  Once the deposit  has 
been made, information regarding the deposit, such as the name of the 
depository,  the accession number and the date of the deposit, that is to 
be added to the  specification must be added by means of filing an 
amendment under the provisions  of 37 CFR 1.312.  A petition and fee are 
required if the 37 CFR 1.312 amendment  is filed after the issue fee has 
been paid. 


2411.04       After a Patent Has Been Granted 


In a proceeding involving a patent, it may not be possible to request a 
certificate  of correction of the patent which meets the terms of 37 CFR 
1.805(b) and 37 CFR 1.805(c).  For example,  if the patent owner is on 
notice that samples of an original deposit can no  longer be furnished by 
the depository, failure to diligently make a replacement  deposit will 
preclude grant of a certificate of correction.  A  replacement  deposit 
subsequently made will not be recognized by the Office nor will a request 
for certificate of correction, even if made promptly thereafter, be 
granted. 
 It would also not be possible to request a certificate of correction of 
the  patent which meets the terms of 37 CFR 1.805(b) and 37 CFR 1.805(c) 
where no  original deposit was made before or during the pendency of the 
application  which matured into the patent. 

A patent defective because of lack of a necessary deposit is necessarily 
fatally  defective for failure to comply with the first paragraph of 35 
U.S.C. 112. 
 Reissue is not available in such cases.  See In re Hay, 534 F.2d 917, 189 
USPQ 790 (CCPA 1976).  Whether reissue is available where a biological 
material necessary for compliance with 35 U.S.C. 112 was known and readily 
 available at the time of issuance of the patent and subsequently ceased 
to  be readily available is problematic.  Nevertheless, the rules do not 
provide  for post-issuance original deposits. 

Where an applicant for patent has any doubt as to whether access to a 
biological  material specifically identified in the specification is 
necessary to satisfy  35 U.S.C. 112 or whether such a material, while 
currently freely available,  may become unavailable in the future, the 
applicant would be well-advised to  make a deposit thereof before any 
patent issues.  Similarly, where a patent  owner has any doubt whether a 
deposit referred to in the specification is a  biological material 
necessary to satisfy 35 U.S.C. 112 and, if the material  is necessary, 
whether it is otherwise known and readily available, the patent  owner 
would be well-advised to follow the procedures set forth in 37 CFR 
1.805(b)  and 37 CFR 1.805(c) after receiving the notice specified in 
those paragraphs. 

2411.05       Content of Application with Respect to Deposited 

Material 

37 CFR 1.809(d) sets forth the requirements for the content of the 
specification  with respect to a deposited biological material. 
Specifically, the specification  shall contain the accession number for 
the deposit, the date of the deposit,  the name and address of the 
depository, and a description of the deposited  biological material 
sufficient to specifically identify it and to permit examination. 
 The description also must be sufficient to permit verification that the 
deposited  biological material is in fact that disclosed.  Once the patent 
issues, the  description must be sufficient to aid in the resolution of 
questions of infringement. 
 As a general rule, the more information that is provided about a 
particular  deposited biological material, the better the examiner will be 
able to compare  the identity and characteristics of the deposited 
biological material with  the prior art. 


2420    The Requirements for Patent Applications Containing Nucleotide 
Sequence and/or  Amino Acid Sequence Disclosures - the Sequence Rules 

Prior to the effective date (October 1, 1990) and implementation of the 
sequence  rules (37 CFR 1.821 through 1.825), applications for patents 
that included  nucleotide or amino acid sequence information posed special 
problems for the  Office.  While not related to the disclosure 
requirements of an invention,  problems existed in the presentation, 
examination and printing of  nucleotide  and amino acid sequence data that 
appeared in patent applications because of  the lack of uniformity in 
submission of sequence data to the Office and the  impracticality of 
properly searching and examining sequences submitted in paper  form.  In 
summary, the diversity and complexity of nucleotide and amino acid 
sequence data resulted in searching and analysis difficulties both within 
the  Office and outside the Office, decreased accuracy of search and 
reproduction  and increased costs.  These difficulties made the 
development and implementation  of the sequence rules a critical necessity 
for the Office.  As such, the Office  amended its regulations to establish 
a standardized format for descriptions  of nucleotide and amino acid 
sequence data submitted as a part of patent applications,  in conjunction 
with the required submission of that data in computer readable  form.  The 
final rules were published in the Federal Register at 55 FR 18230 
(May 1, 1990) and in the 
Official Gazette at 1114 O.G. 29 (May 15, 1990).  The sequence rules went 
into  effect on October 1, 1990. 


2421    Overview of the Sequence Rules 



2421.01       Applications Affected 


The sequence rules require the use of standard symbols and a standard 
format  for sequence data in most sequence-type patent applications.  They 
further  require the submission of that data in computer readable form. 
Compliance  is required for most disclosures of sequence data in new 
applications.  For  the purpose of the sequence rules, the term "new" 
with regard to applications  means: 

- For regular US applications, the application must have been filed on or 
after  October 1, 1990.  Continuing applications that claim a date prior 
to October  1, 1990, under 35 U.S.C. 120, except continuations-in-part 
(CIPs) filed on  or after October 1, 1990, where material added includes a 
sequence, are not 
 new  applications. 

- For PCT applications, the international filing date must be on or after 
October  1, 1990, and the US must be one of the designated states and the 
US must be  the International Searching Authority and/or the International 
Preliminary  Examining Authority.  For national stage applications, the 
international filing  date, not the 371 date, is used.  For international 
applications, the international  filing date, not the U.S. or foreign 
priority date, is used. 

- Not applicable to reissues or reexams filed after October 1, 1990, 
unless  application which matured into patent was also subject to rules. 

- Not applicable to continuations or divisionals filed after October 1, 
1990,  unless parent application was also subject to rules. 

- Will apply to CIPs where parent application subject to rules or where 
new  material includes sequence information that falls within rules. 
Where a CIP  is filed on or  after  October 1, 1990, and claims the 
benefit of a filing  date prior to October 1, 1990, under 35 U.S.C. 120 
and material added includes 
 a sequence, the requirement for compliance is limited to the newly added 
sequence  material.  Full compliance, for all sequence information in the 
CIP is, however,  encouraged. 

The Office encourages voluntary compliance for applications not subject to 
 rules, but all aspects of the rules must be complied with before data 
will  be entered into the database.  This includes submission of all 
statements required  by the rules.  In exceptional circumstances, it 
should be noted that the Office  may waive the rules via a 37 CFR 1.183 
petition. 


2421.02       Summary of the Requirements of the Sequence Rules 



Basically, the sequence rules define a set of symbols and procedures that 
are  both mandatory and the only way that an applicant is permitted to 
describe  information about a sequence that falls within the definitions 
used in the  rules.  Thus, 37 CFR 1.821 of the rules defines a sequence 
for the purpose  of the rules, the requirements for specific symbols, 
formats, paper and computer  readable copies of the sequence, and the 
deadlines for complying with the requirements. 
 37 CFR 1.822 to 37 CFR 1.824 set forth detailed descriptions of the 
requirements  that are mandatory for the presentation of sequence data, 
and 37 CFR 1.825  sets forth procedures that are available to an applicant 
in the event that  amendments to the sequence information or replacement 
of the computer readable  copy become necessary. 

The sequence rules embrace all unbranched nucleotide sequences with ten or 
 more bases and all unbranched, non-D amino acid sequences with four or 
more  amino acids.  The rules apply to all sequences in a given 
application, whether  claimed or not.  All such sequences are relevant for 
the purposes of building  a comprehensive database and properly assessing 
prior art.  It is therefore  essential that all sequences, whether only 
disclosed or also claimed, be included  in the database. 


2421.03       Notification of a Failure to Comply 


With respect to the Office's determination of compliance  with  the 
sequence 
 rules and  the  opportunities  afforded applicants to satisfy the 
requirements  of the rules, applicants will be notified of easily 
detectable deficiencies  early in the application process.  Deficiencies 
of a more sophisticated nature  will likely only be detected by the 
examiner to whom the application is assigned. 
 Applicants whose computer readable forms are damaged in the mail, are not 
 readable, or are missing mandatory elements will be notified shortly 
after  receipt of the application by the Office.  Other errors or 
inconsistencies  will be noted by the examiner early in the examination 
process.  Upon detection  of damage or a deficiency, a notice will be sent 
to the applicant detailing  the damage or deficiency and setting at least 
a one month period for response. 
 The period for response will usually be one month.  However, if the 
notice  is sent out with an Office communication having a longer period 
for response,  the period for response may be longer than one month, e.g. 
where the notice is  sent with an Office action on the merits setting a 
three month period for response. 
 Extensions of time in which to reply will be available pursuant to 37 CFR 
1.136.  When an action by the applicant, such as a response to a notice 
to comply from the Office, is determined to be a bona fide attempt to 
comply  with the rules and it is apparent that compliance with some 
requirement has  inadvertently been omitted, the opportunity to explain 
and supply the omission  will be given before the question of abandonment 
will be considered.  See 37 CFR  1.135(c).  The relevant form paragraphs 
and a copy of the Notice to  Comply to be used in applications subject to 
the sequence rules are included  in MPEP 
w 2427 Form Paragraphs and Notice to Comply. 

A notification of a failure to comply with the sequence rules will usually 
 be accompanied by an analysis of a submitted computer readable form.  Any 
inquiries  regarding a specific computer readable form that has been 
processed by the  Office should be directed to the Systems Branch of the 
Biotechnology Division  of the Scientific and Technical Information 
Center. 


2421.04       Future Changes to the Sequence Rules 


With general regard to the symbols and format to be used for nucleotide 
and/or  amino acid sequence data set forth in 37 CFR 1.822 and the form 
and format  for sequence submissions in computer readable form set forth 
in 37 CFR 1.824,  the Office intends to accommodate progress in the areas 
of both standardization  and computerization as they relate to sequence 
data by subsequently amending  the rules to take into account any such 
progress.  This progress will probably  be reflected in the refinement of 
or liberalization of the rules.  For example,  progress in the area of the 
standardization of sequence data will likely result  in a more 
comprehensive rule.  For example, the D-amino acids and  branched 
sequences that are currently excluded from the rule may, in the future, be 
 brought within the scope of the rule once the necessary standardization 
technology  becomes available.   As a further example, the computer 
readable form is currently  limited to diskettes and tapes, but it can 
readily be seen that progress in  the technology for developing databases 
of the type the Office has envisioned  will likely permit a broadening of 
the permissible types of computer readable  forms that may be submitted. 
The same can be said for the computer/operating-system  configurations 
that are currently permitted by the rules.  As the Office becomes  able to 
provide greater refinement and liberality in these areas, the Office  will 
do so by the publication of notices in the Official Gazette or formal 
rulemaking proposals, as appropriate. 


2422    Nucleotide and/or Amino Acid Sequence Disclosures in Patent 
Applications 

37 CFR 1.821.       Nucleotide and/or amino acid sequence disclosures in 
patent  applications. 

(a)         "Nucleotide and/or amino acid sequences" as used in ww 1.821 
through  1.825 is interpreted to mean an unbranched sequence of four or 
more amino acids  or an unbranched sequence of ten or more nucleotides. 
Branched sequences are  specifically excluded from this definition. 
Nucleotides and amino acids are  further defined as follows: 

(1)         "Nucleotides" are intended to embrace only those nucleotides 
that  can be represented using the symbols set forth in w 1.822(b)(1). 
Modifications,  e.g., methylated bases, may be described as set forth in w 
1.822(b), but shall  not be shown explicitly in the nucleotide sequence. 

(2)         "Amino acids" are those L-amino acids commonly found in 
naturally  occurring proteins and are listed in w 1.822(b)(2).  Those 
amino acid sequences  containing D-amino acids are not intended to be 
embraced by this definition. 
 Any amino acid sequence that contains post-translationally modified amino 
 acids may be described as the amino acid sequence that is initially 
translated  using the symbols shown in w 1.822(b)(2) with the modified 
positions, e.g.,  hydroxylations or glycosylations, being described as set 
forth in w 1. 822(b),  but these modifications shall not be shown 
explicitly in the amino acid sequence. 
 Any peptide or protein that can be expressed as a sequence using the 
symbols  in w 1.822(b)(2) in conjunction with a description elsewhere in 
the "Sequence  Listing" to describe, for example, modified linkages, cross 
links and end caps,  non-peptidyl bonds, etc., is embraced by this definition. 

(b)         Patent applications which contain disclosures of nucleotide 
and/or  amino acid sequences, in accordance with the definition in 
paragraph (a) of  this section, shall, with regard to the manner in which 
the nucleotide and/or  amino acid sequences are presented and described, 
conform exclusively to the  requirements of ww  1.821 through 1.825. 

(c)         Patent applications which contain disclosures of nucleotide 
and/or  amino acid sequences must contain, as a separate part of the 
disclosure on  paper copy, hereinafter referred to as the "Sequence 
Listing," a disclosure  of 

the nucleotide and/or amino acid sequences and associated information 
using  the symbols and format in accordance with the requirements of ww 
1.822 and  1.823.   Each sequence  disclosed must appear separately in the 
"Sequence Listing." 
 Each sequence set forth in the "Sequence Listing" shall be assigned a 
separate  identifier written as SEQ ID NO:1, SEQ ID NO:2, SEQ ID NO:3, 
etc. 
  (d)  Where the description or claims of a patent application discuss a 
sequence  listing that is set forth in the "Sequence Listing" in 
accordance with paragraph 
(c) of this section, reference must be made to the sequence by use of the 
assigned  identifier, in the text of the description or claims, even if 
the sequence  is also embedded in the text of the description or claims of 
the patent application. 
(e)  A copy of the "Sequence Listing" referred to in paragraph (c) of this 
 section must also be submitted in computer readable form in accordance 
with the requirements of w  1.824.  The computer readable form is  a copy 
of the  "Sequence Listing" and will not necessarily be retained as part 
of the patent application file.  If the computer readable form of a new 
application  is to be identical with the computer readable form of another 
application of  the applicant on file in the Office, reference may be made 
to the other application  and computer readable form in lieu of filing a 
duplicate computer readable  form in the new application.  The new 
application shall be accompanied by a  letter making such reference to the 
other application and computer readable  form, both of which shall be 
completely identified. 

(f)   In addition to the paper copy required by paragraph (c) of this 
section  and the computer readable form required by  paragraph (e) of this 
section,  a statement that the content of the paper and computer readable 
copies are  the same must be submitted with the computer readable form. 
Such a statement  must be a verified statement if made by a person not 
registered to practice  before the Office. 

(g)   If any of the requirements of paragraphs (b) through (f) of this 
section  are not satisfied at the time of filing under 35 U.S.C. 111 or at 
the time  of entering the national stage under 35 U.S.C. 371, applicant 
has one month  from the date of a notice which will be sent requiring 
compliance with the  requirements in order to prevent abandonment of the 
application.  Any submission  in response to a requirement under this 
paragraph must be accompanied by a  statement that the submission includes 
no new matter.  Such a statement must  be a verified statement if made by 
a person not registered to practice before  the Office. 

(h)   If any of the requirements of paragraphs (b) through (f) of this 
section  are not satisfied at the time of filing, in the United States 
Receiving Office,  an international application under the Patent 
Cooperation Treaty (PCT) applicant  has one month from the date of a 
notice which will be sent requiring compliance  with the requirements, or 
such other time as may be set by the Commissioner,  in which to comply. 
Any submission in response to a requirement under this  paragraph must be 
accompanied by a statement that the submission does not include  new 
matter or go beyond the disclosure in the international application as 
filed.  Such a statement must be a verified statement if made by a person 
not  registered to practice before the Office. 

(i)   Neither the presence nor the absence of information which is not 
required  under ww 1.821 through 1.825, in an application shall create any 
presumption  that such information is necessary to satisfy one or more of 
the requirements  of 35 U.S.C.112.  Further, the grant of a patent on an 
application that is  subject to the requirements of ww 1.821 through 1.825 
shall constitute a conclusive  presumption that said patent complies with 
the requirements of ww 1.821 through  1.825. 

(j)   Envelopes containing only application papers, computer readable 
forms  and fees filed under this section should be marked "Box SEQUENCE." 

2422.01       Definitions of Nucleotide and/or Amino Acids for Purpose of 
Sequence Rules 

37 CFR 1.821(a) presents a definition for "nucleotide and/or amino acid 
sequences." 
 This definition sets forth limits, in terms of numbers of amino acids 
and/or  numbers of nucleotides, at or above which compliance with the 
sequence rules  is required.  Further, compliance with the sequence rules 
is only required  for unbranched sequences. Branched sequences are 
explicitly excluded from the  scope of the sequence rules.  The limit of 
four or more amino acids was established  for consistency with limits in 
place for industry database collections whereas  the limit of ten or more 
nucleotides, while lower than certain industry database  limits, was 
established to encompass those nucleotide sequences to which the  smallest 
probe will bind in a stable manner.  The limits for amino acids and 
nucleotides are also consistent with those established for sequence data 
exchange  with the 
Japanese Patent Office and the European Patent Office. 

37 CFR  1.821(a)(1) and 37 CFR 1.821(a)(2) present further definitions for 
 those nucleotide and amino acid sequences that are intended to be 
embraced  by the sequence rules.  Situations in which the applicability of 
the rules  are in issue will be resolved on a case-by-case 
basis. 

Nucleotide sequences are further limited to those that can be represented 
by  the symbols set forth in 
37 CFR 1.822(b)(1).  The presence of other than typical 5' to 3' 
phosphodiester  linkages in a nucleotide sequence does not  render the 
rules inapplicable.  The Office does not want to exclude linkages of the 
type commonly found in  naturally occurring nucleotides, e.g., eukaryotic 
end capped sequences. 
Amino acid sequences are further limited to those listed in 37 CFR 
1.822(b)(2)  and those L-amino acids that are commonly found in naturally 
occurring proteins. 
 The limitation to L-amino acids is based upon the fact that there 
currently  exists no widely accepted standard nomenclature for 
representing the scope  of amino acids encompassed by non-L-amino acids, 
and, as such, the process  of meaningfully encoding these other amino 
acids for computerized searching  and printing is not currently feasible. 
The presence of one or more D-amino  acids in a sequence will exclude that 
sequence from the scope of the rules. 
 (Voluntary compliance is, however, encouraged in these situations; the 
symbol  "Xaa" can be used to represent D-amino acids.)  The sequence rules 
embrace  "[a]ny peptide or protein that can be expressed as a sequence 
using the symbols  in 37 CFR 1.822(b)(2) in conjunction with a description 
elsewhere in the "Sequence  Listing"  to  describe, e.g.,  modified 
linkages, cross links, end caps, non-peptidyl  bonds, etc." 37 CFR 
1.821(a)(2). 

With regard to amino acid sequences, the use of the terms "peptide or 
protein"  implies, however, that the amino acids in a given sequence are 
linked by at  least three consecutive peptide bonds.  Accordingly, an 
amino acid sequence  is not excluded from the scope of the rules merely 
due to the presence of a  single non-peptidyl bond.  If an amino acid 
sequence can be represented by  a string of amino acid abbreviations, with 
reference, where necessary, to a  features table to explain modifications 
in the sequence, the sequence comes  within the scope of the rules. 
However, the rules are not intended to encompass  the subject matter that 
is generally referred to as synthetic resins. 

2422.02       The Requirement for Exclusive Conformance; Sequences 
Presented in Drawing Figures 

37 CFR 1.821(b) requires exclusive conformance, with regard to the manner 
in  which the nucleotide and/or amino acid sequences are presented and 
described,  with the sequence rules for all applications that include 
nucleotide and amino  acid sequences that fall within the definitions. 
This requirement is necessary  to minimize any confusion that could result 
if more than one format for representing  sequence data was employed in a 
given application.  It is also expected that  the required standard format 
will be more readily and widely accepted and adopted  if its use is 
exclusive, as well as mandatory. 

In view of the fact that many significant sequence characteristics may 
only  be demonstrated by  a figure, the exclusive conformance requirement 
of this  section may be relaxed for drawing figures.  This is especially 
true in  view  of the fact  that the representation of double stranded 
nucleotides is not  permitted in the "Sequence Listing" and many 
significant nucleotide features,  such as "sticky ends" and the like, will 
only be shown effectively by reference  to a drawing figure.  Further, the 
 similarity or homology  between/among sequences  can only be depicted in 
an effective manner in a drawing figure.  Similarly,  drawing figures are 
recommended for use with amino acid sequences to depict  structural 
features of the corresponding protein, such as finger regions and  Kringle 
regions.  The  situations  discussed herein are given by way of example 
only and there may be many other reasons for 
relaxing the requirements of this section for the drawing figures.  It 
should  be noted, though, that when a sequence  is presented in a drawing, 
regardless 
 of  the format  or  the  manner  of  presentation  of  that sequence  in 
 the  drawing,  the  sequence must  still be  included   in  the  Sequence 

 Listing  and the  sequence indentifer  ("SEQ ID NO:X") must be used, 
either,  in the drawing or in the Brief Description of the Drawings. 


2422.03       The Requirements for a Sequence Listing and Sequence 
Identifiers; Sequences  Embedded in Application Text; Variants of a 
Presented Sequence 

37 CFR 1.821(c) requires that applications containing nucleotide and/or 
amino  acid sequences that fall within the above definitions, contain, as 
a separate  part of the disclosure on paper copy, a disclosure of the 
nucleotide and/or  amino acid sequences, and associated information, using 
the format and symbols  that are set forth in 37 CFR 1.822 and 37 CFR 
1.823.  This separate part of  the disclosure, beginning on a new page 
within the specification, is referred  to as the "Sequence Listing," and 
requires that each sequence disclosed in  the application appear 
separately in the "Sequence Listing,"  with each sequence  further being 
assigned a sequence identification number, referred to as "SEQ  ID NO."  A 
plurality of sequences may, if feasible, be presented on a single  page, 
and this may be extended to the separate presentation of both nucleotide 
and amino acid sequences on the same page.  The requirement for sequence 
identification  numbers, at a minimum, requires that each sequence be 
assigned a different  number for purposes of identification.  However, 
where practical and for ease  of reference, sequences should be presented 
in the separate part of the application  in numerical order and in the 
order in which they are discussed in the application. 
The requirement for compliance in 37 CFR 1.821(c) is directed to 
"disclosures  of nucleotide and/or amino acid sequences."  (Emphasis 
added.)  All sequence  information, whether claimed or not, that meets the 
length thresholds in 37  CFR 1.821(a) is subject to the rules.  The goal 
of the Office is to build a  comprehensive database that can be used for, 
inter alia, the purpose of assessing  the prior art.  It  is therefore 
essential that all sequence information, whether  only disclosed or also 
claimed, be included in the database.  In those instances  in which prior 
art sequences are only referred to in a given application by  name and a 
publication or accession reference, they need not be included as  part of 
the "Sequence Listing," unless an examiner considers the referred-to 
sequence to be "essential material," per MPEP 
w 608.01(p).  However, if the applicant presents the sequence as a string 
of  particular bases or amino acids, it is necessary to include the 
sequence in  the "Sequence Listing," regardless of whether the applicant 
considers the sequence  to be prior art.  In general, any sequence that is 
disclosed and/or claimed  as a sequence, i.e., as a string of particular 
bases or amino acids, and that  otherwise meets the criteria of 37 CFR 
1.821(a), must be set forth in the  "Sequence Listing." 

It is generally acceptable to present a single, general sequence in 
accordance  with the sequence rules and to discuss and/or claim variants 
of that general  sequence without presenting each variant as a separate 
sequence in the "Sequence  Listing."  By way of example only, the 
following types of sequence disclosures  would be treated as noted herein 
by the Office.  With respect to "conservatively  modified variants 
thereof" of a  sequence,  the  sequences  may  be described  as SEQ ID 
NO:X and "conservatively modified variants thereof," if desired. 
 With respect to a sequence that "may be deleted at the C-terminus by 1, 
2,  3, 4, or 5 residues," all of the implied variations do not need to be 
included  in the "Sequence Listing."  If such a situation were encompassed 
by the rules,  it would introduce far too much complexity into the 
"Sequence Listing" and  the Office's database.  The possible mathematical 
variations that could result  from this type of language could reasonably 
require a "Sequence Listing" that  would be thousands of pages in length. 
In this latter example, only the undeleted  sequence needs to be included 
in the "Sequence Listing," and the sequences  may be described as SEQ ID 
NO:X from which deletions have been made at the  C-terminus by 1, 2, 3, 4, 
or 5 residues.  The Office's database will only contain  the undeleted 
sequence. 

37 CFR 1.821(d) requires the use of the assigned sequence identifier in 
all  instances where the description or claims of a patent application 
discuss sequences  regardless of whether a given sequence is also embedded 
in the text of the  description or claims of an application.  This 
requirement is also intended  to permit references, in both the 
description and claims, to sequences set  forth in the "Sequence Listing" 
by the use of assigned sequence identifiers  without repeating the 
sequence in the text of the description or claims.  Sequence  identifiers 
can also be used to discuss and/or claim parts or fragments of  a properly 
presented sequence.  For example, language such as "residues 14  to 243 of 
SEQ ID NO:23" is permissible and the fragment need not be separately 
presented in the "Sequence Listing."  Where a sequence is embedded in the 
text  of an  application, it must be presented in a manner that complies 
with the  requirements of the sequence rules. 

The rules do not alter, in any way, the requirements of 35 U.S.C. 112. 
The  implementation of the rules has had no effect on disclosure and/or 
claiming  requirements.  The rules, in general, or the use of sequence 
identifiers throughout  the specification and claims, specifically, should 
not raise any issues under  35 U.S.C. 112, first or second paragraphs. 
The use of sequence identification  numbers (SEQ ID NO:X) only provides a 
shorthand way for applicants to discuss  and claim their inventions. 
These identification numbers do not in any way  restrict the manner in 
which an invention can be claimed. 


2422.04       The Requirement for a Computer Readable Copy of the Official 
Paper Copy of the Sequence Listing 

37 CFR 1.821(e) requires the submission of a copy of the  "Sequence 
Listing" 
 in  computer  readable  form.  The  infor   mation on the computer 
readable  form will be entered into the Office's database for searching 
and printing  nucleotide and amino acid sequences.  This electronic 
database will also enable  the Office to exchange patented sequence data, 
in electronic form,  with the  Japanese Patent Office and the European 
Patent Office.  It should be noted  that the Office's database complies 
with the confidentiality requirement imposed  by 35 U.S.C. 122.  Pending 
application sequences are maintained in the database  separately from 
published or patented sequences.  That is, the Office will  not exchange 
or make public any information on any sequence until the patent 
application containing that information is published or matures into a 
patent,  or as otherwise allowed by 35 U.S.C. 122. 

The second sentence of 37 CFR 1.821(e) indicates that, as  between the 
paper  copy of the "Sequence Listing" and the computer readable copy 
thereof, the  paper copy serves as the official copy.  However, the Office 
may permit correction  of the paper copy, at the least, during the 
pendency of a given application  by reference to the computer readable 
copy thereof if both the paper and computer  readable forms were submitted 
at the time of filing of the application and  the totality of the 
circumstances otherwise substantiate the proposed correction 
A mere discrepancy between the paper copy and the computer readable form 
may  not, in and of itself, be sufficient to justify a proposed 
correction.  In  this regard, the Office will assume that the computer 
readable form has been  incorporated by reference into the application 
when the paper and computer  readable forms were submitted at the time of 
filing of the application.  The  Office will attempt to accommodate or 
address all correction issues, but it  must be kept in mind that the real 
burden rests with the applicant to ensure  that any discrepancies between 
the paper copy and the computer readable form  are eliminated or 
minimized. Applicants should be aware that  there will be  instances where 
the applicant may have to suffer the conserquences of any discrepancies 
between the two.  All corrections will be made by appropriate fee-paid 
petitions.  The paper  copy  also  serves  as  the  official copy for 
priority purposes. 
 The Office does not desire to be bound by a requirement to permanently 
preserve  computer readable forms for support, priority or correction 
purposes.  For  example, the  Office will make corrections, where 
appropriate, by reference  to the computer readable form as long as the 
computer readable form is still  available to the Office. However, once 
use to the Office for processing has  ended, i.e., once the Office has 
entered the data contained on the computer  readable form into the 
appropriate database, the Office does  not intend to  further preserve the 
computer readable form submitted by the applicant. 

2422.05       Reference to Previously Filed Identical Computer Readable 
Form;                          Continuing or Derivative Applications; 
Request for Transfer of Computer Readable Form 

The last two sentences of 37 CFR 1.821(e) set forth the procedure to be 
followed  when a computer readable form of a given application is 
identical with a computer  readable form of another application.  In that 
situation, an applicant may  make reference to the other application and 
computer readable form therein  in lieu of filing a duplicate computer 
readable form in the given application. 
 That is, additional computer readable forms will not be required in 
derivative  or continuing applications if the sequence information is 
exactly the same,  i.e., with no additions or deletions, as that in a 
parent or previously filed  application in which a complying computer 
readable form had been filed.  If  sequence information is deleted from or 
added to that submitted in a previously  filed application, the procedure 
in this paragraph is not available and a new  computer readable form is 
required.  To take advantage of the procedure outlined  in this section, 
applicants must request that the previously submitted sequence 
information be used in the given application in much the same manner as 
applicants  must now request the transfer of drawings in derivative or 
continuing applications. 
 A letter must be submitted in the given application requesting use of the 
 previously filed sequence information.  The letter must completely 
identify  the other application, by application number, and the computer 
readable form,  by indicating whether it was the only computer readable 
form filed in that  application or whether it was the second, or 
subsequent, computer readable  form filed. 


2422.06       Requirement for Statement Regarding Content of Paper and 
Computer Readable Copies of Sequence Listing 

37 CFR 1.821(f) requires that the paper and computer readable copies of 
the  "Sequence Listing" be accompanied by a statement that the content of 
the paper  and computer readable copies are the same, at the time when the 
computer readable  form is submitted.  This statement must be a verified 
statement if it is made  by a person not registered to practice before the 
Office.  Such a statement  may be made by the applicant. See MPEP w 2428 
for further information and Sample  Statements. 


2422.07       Requirements for Compliance, Statements Regarding New 
Matter, and Sanctions for Failure to Comply [R-1] 

37 CFR 1.821(g) requires compliance with the requirements of 37 CFR 
1.821(b)  through (f), as discussed above, if they are not satisfied at 
the time of filing  under 35 U.S.C. 111  >(a)< or at the time of entering 
the national stage of  an international application under 35 U.S.C. 371, 
within one month from the  date of a notice requiring compliance.  > 
Applications  filed under 35 U.S.C. 
 111(b)  need not comply with 37 CFR 1.821 through 1.825,  however, 
applicants 
 are encouraged  to file  a  Sequence Listing as  defined in  37 CFR 
1.821(c)  for ease of identification of the sequence information contained 
in the provisional  application. <  Failure to comply will result  in the 
abandonment of the application.  The time period for response may be 
longer than one month if coupled with a different Office requirement. 
Submissions  in response to requirements under this paragraph must be 
accompanied by a statement  that the submission includes no new matter. 
This statement must be a verified  statement if made by a person not 
registered to practice before the Office. 
 Again, such a statement may be made by the applicant.  Extensions of time 
 in which to reply to a requirement under this paragraph are available 
pursuant  to 37 CFR 1.136.  When an action by the applicant is a bona fide 
attempt to  comply with these rules and it is apparent that compliance 
with some requirement  has inadvertently been omitted, the opportunity to 
explain and supply the omission  will be given before the question of 
abandonment is considered.  See 37 CFR 1.135(c). 

37 CFR 1.821(h) requires compliance with the requirements of 37 CFR 
1.821(b)  through (f), as discussed above, within one month from the date 
of a notice  requiring compliance in an international application filed in 
the United States  Receiving Office under the Patent Cooperation Treaty 
(PCT), if the above noted  requirements are not satisfied at the time of 
filing.  Submissions in response  to requirements under this paragraph 
must be accompanied by a statement that  the submission does not include 
new matter or go beyond the disclosure in the  international application 
as filed. This statement must be a verified statement  if made by a person 
not registered to practice before the Office.  Such a statement  may be 
made by an applicant.  International applications that fail to comply 
with any of the requirements of 
37 CFR 1.821(b) - (f) will be searched to the extent possible without the 
benefit  of the information in computer readable form. 

The requirement to submit a statement that a submission in  response to 
the  requirements of this section does not include new matter or go beyond 
the disclosure  in the application as filed is not the first instance in 
which the applicant  has been required to ensure that there is not new 
matter upon amendment.  The  requirement is analogous to that found in 37 
CFR 1.125 regarding substitute  specifications.  When a substitute 
specification is required because the number  or nature of amendments 
would make it difficult to examine the application,  the applicant must 
include a statement that the substitute specification includes  no new 
matter.  The necessity of requiring a substitute "Sequence Listing,"  or 
pages thereof, is similar to the necessity of requiring a substitute 
specification  and, likewise, the burden is on the applicant to ensure 
that no new matter  is added.  Applicants have a duty to comply with the 
statutory prohibition 
(35 U.S.C. 132 and 35 U.S.C. 251) against the introduction of new matter. 
It should be noted that the treatment accorded errors in sequencing or any 
 other errors prior to the implementation date of the sequence rules will 
be  no different for those applications filed on or after the 
implementation date  of these rules. The correction of errors in 
sequencing or any other errors  that are made in describing an invention 
are, as they have always been, subject  to the statutory prohibition (35 
U.S.C. 132 and 35 U.S.C. 251) against the  introduction of new matter. 


2422.08       Presumptions Regarding Compliance 


37 CFR 1.821(i) makes clear that neither the presence nor absence of 
information  which is not required under the sequence rules will create a 
presumption that  such information is necessary to satisfy any of the 
requirements of 35 U.S.C.  112.  Further, this paragraph states that the 
grant of a patent on an application  that is subject to 37 CFR 1.821 
through 37 CFR 1.825 constitutes a conclusive  presumption that the 
granted patent complies with the requirements of these  rules.  This 
paragraph addresses the concerns with respect to the weight that  may 
ultimately be accorded an omission of an item of information which is not 
required under the rule, regardless of whether that item has been 
designated  as  "recommended" or "optional." 


2422.09       Box Sequence; Hand Delivery of Sequence Listings and 
Computer Readable Forms 

37 CFR 1.821(j) was included to facilitate administrative processing of 
all  application papers, computer readable forms and fees filed under this 
section.  Accordingly, all such application papers, computer readable 
forms and fees  filed in the Office should be marked "Box SEQUENCE." 

Correspondence relating to the Sequence Rules may also be hand-delivered 
to  the Group.  In cases of hand delivery to the Mail Window or to the 
Group, the floppy disk should be placed in a protective mailer labeled 
with at least  the application number, if available.  The labeling 
requirements of 37 CFR  1.824(h) must also be complied with.  The use of 
staples and clips, if any,  should be confined to carefully attaching the 
mailer to the submitted papers  without contact or compression of the 
magnetic media which may cause the disk  to be unreadable.  In no 
situations, should additional or complimentary copies  of diskettes be 
delivered to Examiners or other Office personnel. 


2423    Symbols and Format to be Used for Nucleotide and/or Amino Acid 
Sequence Data 

37 CFR 1.822  Symbols and format to be used for nucleotide and/or amino 
acid  sequence data. 

(a)  The symbols and format to be used for nucleotide and/or amino acid 
sequence  data shall conform to the requirements of paragraphs (b) through 
(p) of this  section. 

(b) The code for representing the nucleotide and/or amino acid sequence 
characters  shall conform to the code set forth in the tables in 
paragraphs (b)(1) and 
(b)(2) of this section.  No code other than that specified in this section 
 shall be used in nucleotide and amino acid sequences.  A modified base or 
amino  acid may be presented in a given sequence as the corresponding 
unmodified base  or amino acid if the modified base or amino acid is one 
of those listed in  paragraphs (p)(1) or (p)(2) of this section and the 
modification is also set  forth elsewhere in the Sequence Listing (for 
example, FEATURES  w1.823(b)(2)(ix)). 
 Otherwise, all bases or amino acids not appearing in paragraphs (b)(1) or 
(b)(2) of this section shall be listed in a given sequence as "N" or 
"Xaa,"  respectively, with further information, as appropriate, given 
elsewhere in  the Sequence Listing. 

                (1) Base codes: 

                Symbol      Meaning 

                A A; adenine 

                C C; cytosine 

                G G; guanine 

                T T; thymine 

                U U; uracil 

                M A or C 

                R A or G 

                W A or T/U 

                S C or G 

                Y   C or T/U 

                K   G or T/U 

                V A or C or G; not T/U 

                H   A or C or T/U; not G 

                D A or G or T/U; not C 

                B C or G or T/U; not A 

                N (A or C or G or T/U) or 
(unknown  or other) 

                (2) Amino acid three-letter abbreviations: 

                Abbreviation    Amino acid name 

                Ala   Alanine 

                Arg   Arginine 

                Asn   Asparagine 

                Asp   Aspartic Acid 

                Asx   Aspartic Acid or 
Asparagine 
                Cys   Cysteine 

                Glu   Glutamic Acid 

                Gln   Glutamine 

                Glx   Glutamine or 

                        Glutamic Acid                           Gly 
Glycine 
                His   Histidine 

                Ile   Isoleucine 

                Leu   Leucine 

                Lys   Lysine 

                Met   Methionine 

                Phe   Phenylalanine 

                Pro   Proline 

                Ser   Serine 

                Thr   Threonine 

                Trp   Tryptophan 

                Tyr   Tyrosine 

                Val   Valine 

                Xaa   Unknown or other 

(c) A nucleotide sequence shall be listed using the one-letter code for 
the  nucleotide bases, as in paragraph (b)(1) of this section. 

(d) The amino acids corresponding to the codons in the coding parts of a 
nucleotide  sequence shall be typed immediately below the corresponding 
codons.  Where  a codon spans an intron, the amino acid symbol shall be 
typed below the portion  of the codon containing two nucleotides. 

(e) The amino acids in a protein or peptide sequence shall be listed using 
 the three-letter abbreviation with the first letter as an upper case 
character,  as in paragraph (b)(2) of this section. 

(f) The bases in a nucleotide sequence (including introns) shall be listed 
 in groups of 10 bases except in the coding parts of a sequence.  Leftover 
bases,  fewer than 10 in number, at the end of noncoding parts of a 
sequence shall  be grouped together and separated from adjacent groups of 
10 or 3 bases by  a space. 

(g) The bases in the coding parts of a nucleotide sequence shall be listed 
 as triplets (codons). 

(h) A protein or peptide sequence shall be listed with a maximum of 16 
amino  acids per line, with a space provided between each amino acid. 

(i) A nucleotide sequence shall be listed with a maximum of 16 codons or 
60  bases per line, with a space provided between each codon or group of 
10 bases. 
(j) A nucleotide sequence shall be presented, only by a single strand, in 
the  5' to 3' direction, from left to right. 

(k) An amino acid sequence shall be presented in the amino to carboxy 
direction,  from left to right, and the amino and carboxy groups shall not 
be presented  in the sequence. 

(l) The enumeration of nucleotide bases shall start at the first base of 
the  sequence with number 1.  The enumeration shall be continuous through 
the whole  sequence in the direction 5' to 3'.  The enumeration shall be 
marked in the  right margin, next to the line containing the one-letter 
codes for the bases, and giving the number of the last base of that  line. 

(m) The enumeration of amino acids may start at the first amino acid of 
the  first mature protein, with number 1.  The amino acids preceding the 
mature  protein, e.g., pre-sequences, pro-sequences, pre-pro-sequences and 
signal sequences,  when presented, shall have negative numbers, counting 
backwards starting with  the amino acid next to number 1.  Otherwise, the 
enumeration of amino acids  shall start at the first amino acid at the 
amino terminal as number 1.  It  shall be marked below the sequence every 
5 amino acids. 

 (n) For those nucleotide sequences that are circular in configuration, 
the  enumeration method set forth in paragraph (l) of this section remains 
applicable  with the exception that the designation of the first base of 
the nucleotide  sequence may be made at the option of the applicant.  The 
enumeration method  for amino acid sequences that is set forth in 
paragraph (m) of this section  remains applicable for amino acid sequences 
that are circular in configuration. 
(o) A sequence with a gap or gaps shall be presented as a plurality of 
separate  sequences, with separate sequence identifiers,  with the number 
of separate  sequences being equal in number to the number of continuous 
strings of sequence  data.  A sequence that is made up of one or more 
noncontiguous segments of  a larger sequence or segments from different 
sequences shall be presented as  a separate sequence. 

(p)  The code for representing modified nucleotide bases and modified and 
unusual  amino acids shall conform to the code set forth in the tables in 
paragraphs 
(p)(1) and (p)(2) of this section.  The modified base controlled 
vocabulary  in paragraph (p)(1) of this section and the modified and 
unusual amino acids  in paragraph (p)(2) of this section shall not be used 
in the nucleotide and/or  amino acid sequences; but may be used in the 
description and/or the "Sequence  Listing" corresponding to, but not 
including, the nucleotide and/or amino acid  sequence. 

                (1) Modified base controlled vocabulary: 

        Abbreviation    Modified base description 

        ac4c    4-acetylcytidine 

        chm5u     5-(carboxyhydroxylmethyl)uridine 

        cm      2'-O-methylcytidine 

        cmnm5s2u        5-carboxymethylaminomethyl-2- 
     thioridine 
        cmnm5u      5-carboxymethylaminomethyluri- 
     dine 
        d   dihydrouridine 

        fm      2'-O-methylpseudouridine 

        gal q     beta,D-galactosylqueosine 

        gm      2'-O-methylguanosine 

        i   inosine 

        i6a         N6-isopentenyladenosine 

        m1a   1-methyladenosine 

        m1f         1-methylpseudouridine 

        m1g   1-methylguanosine 

        m1i         1-methylinosine 

        m22g    2,2-dimethylguanosine 

        m2a   2-methyladenosine 

        m2g   2-methylguanosine 

        m3c         3-methylcytidine 

        m5c         5-methylcytidine 

        m6a   N6-methyladenosine 

        m7g   7-methylguanosine 

        mam5u     5-methylaminomethyluridine 

        mam5s2u       5-methoxyaminomethyl-2-thiou- 
     ridine 
        man q     beta,D-mannosylqueosine 

        mcm5s2u       5-methoxycarbonylmethyl-2- 
             thiouridine 
        mcm5u     5-methoxycarbonylmethyluridine 

        mo5u    5-methoxyuridine 

        ms2i6a      2-methylthio-N6- 
     isopentenyladenosine 
        ms2t6a      N-((9-beta-D-ribofuranosyl-2- 
methylthiopurine-6-yl) 
                        carbamoyl)threonine 

        mt6a    N-((9-beta-D-ribofuranosylpu 
     rine-                                   6-yl)N-methyl- 
                          carbamoyl)threonine 
        mv      uridine-5-oxyacetic acid 
methylester 
        o5u         uridine-5-oxyacetic acid (v) 

        osyw    wybutoxosine 

        p   pseudouridine 

        q   queosine 

        s2c         2-thiocytidine 

        s2t         5-methyl-2-thiouridine 

        s2u         2-thiouridine 

        s4u         4-thiouridine 

        t   5-methyluridine 

        t6a         N-((9-beta-D-ribofuranosylpu- 
rine-                                   6-yl)  carbamoyl) threonine 

        tm      2'-O-methyl-5-methyluridine 

        um      2'-O-methyluridine 

        yw      wybutosine 

        x   3-(3-amino-3-carboxypropyl)uri- 
dine, 
                                                (acp3)u 

        (2) Modified and unusual amino acids: 

        Abbreviation    Modified and unusual amino acid 

        Aad         2-Aminoadipic acid 

        bAad    3-aminoadipic acid 

        bAla    beta-Alanine,beta-Amino- 
             propionic                               acid 
        Abu   2-Aminobutyric acid 

        4Abu    4-Aminobutyric acid, piperidinic 
acid 
        Acp         6-Aminocaproic acid 

        Ahe         2-Aminoheptanoic acid 

        Aib         2-Aminoisobutyric acid 

        bAib    3-Aminoisobutyric acid 

        Apm   2-Aminopimelic acid 

        Dbu   2,4-Diaminobutyric acid 

        Des         Desmosine 

        Dpm   2,2'-Diaminopimelic acid 

  Dpr       2,3-Diaminopropionic acid 

        EtGly     N-Ethylglycine 

        EtAsn     N-Ethylasparagine 

        Hyl         Hydroxylysine 

        aHyl    allo-Hydroxylysine 

        3Hyp    3-Hydroxyproline 

        4Hyp    4-Hydroxyproline 

        Ide         Isodesmosine 

        aIle            allo-Isoleucine 

        MeGly     N-Methylglycine, sarcosine 

        MeIle     N-Methylisoleucine 

        MeLys     6-N-Methyllysine 

        MeVal     N-Methylvaline 

        Nva         Norvaline 

        Nle         Norleucine 

        Orn         Ornithine 


2423.01       Format and Symbols to be Used in Sequence Listings 

37 CFR 1.822 sets forth the format and symbols to be used for listing 
nucleotide  and/or amino acid sequence data.  The codes for representing 
the nucleotide  and/or amino acid characters in the sequences are set 
forth in the tables of  37 CFR 1.822 (b) (1) and37 CFR 1.822 (b) (2).  For 
the purpose of setting forth  the sequence in the "Sequence Listing," only 
those symbols in 37 CFR 1.822(b)(1)  for "Base codes" and in 37 CFR 
1.822(b) (2) for "Amino acids" are to be used,  as further set forth in 
37 CFR 1.822 (c) and 37 CFR 1.822(e).  No other symbols shall be used in 
nucleotide  and amino acid sequences.  The "Modified base controlled 
vocabulary" in 37 CFR 1.822 (p) (1) and the "Modified and unusual amino 
acids" in 37 CFR 1.822 
(p) (2) are not to be used in setting forth the sequences; but, they may 
be  used in the description and/or the "Sequence Listing" corresponding 
to, but  not including, the sequence itself.   A modified base or amino 
acid may be  presented in a given sequence as the corresponding unmodified 
base or amino  acid if the modified base or amino acid is one of those 
listed in 37 CFR 1.822 
(p) (1) or 37 CFR 1.822 (p) (2) and the modification is also set forth 
elsewhere  in the "Sequence Listing;" for example, in the features table. 
Otherwise,  all bases or amino acids not appearing in 37 CFR 1.822 
( b) (1) or 37 CFR 1.822 (b) (2) must be listed in a given sequence as "N" 
 or "Xaa,"  respectively, with further information given elsewhere in the 
"Sequence  Listing."  This  further information can generally be provided 
under the "Feature"  information item in 37 CFR 1.823(b)(2)(ix). 

In 37 CFR 1.822(b)(2) and 37 CFR 1.822(e), the use of three-letter codes 
for  amino acids is required.  The use of the three-letter codes for amino 
acids  is preferred over the one-letter codes from the perspective of 
facilitating  the examiner's review of the application papers, including 
the"Sequence Listing",  and the public's, as well as the examiner's, use 
of the printed patents.  The  three-letter codes can be presented using 
the upper case for the first character  and lower case for the remaining 
two characters or all upper case characters. 
 The PatentIn program has the capability of converting from one-letter to 
three-letter  amino acid codes and printing the amino acid sequence in 
three-letter codes  regardless of input. 

37 CFR 1.822(d) through (p) set forth the format for presenting sequence 
data. 
 These paragraphs set forth the manner in which the characters in 
sequences  are to be grouped, spaced, presented and numbered. 


2423.02       Depiction of Coding Regions 


37 CFR 1.822 (d) requires, in the event that an applicant chooses to 
depict  coding regions, the depiction of amino acids corresponding to 
codons in the  coding parts of a nucleotide sequence immediately below the 
corresponding codons.  Further, in 37 CFR 1.822 (d), the situation in 
which a codon spans an intron  has been addressed.  In those situations, 
the "amino acid symbol shall be typed  below the portion of the codon 
containing two nucleotides."  This requirement  clarifies the 
representation of an amino acid that corresponds to a codon that  spans an 
intron. 

It should be noted that the sequence rules do not, in any way, require the 
 depiction of coding regions or the amino acids corresponding to the 
codons  in those coding regions.  37 CFR 1.822 (d)  only requires that 
where amino  acids corresponding  to the codons in the coding parts of a 
nucleotide sequence  are depicted, they must be depicted below the 
corresponding codons.   There  is absolutely no requirement in the rules 
to depict coding regions.   Nor is  there a requirement to separately list 
the amino acids corresponding to the  codons in the coding parts of a 
nucleotide sequence unless the applicant desires  to discuss the amino 
acids as a separate sequence.  That is, when the coding  parts of a 
nucleotide sequence and their corresponding amino acids have been 
identified, if applicant desires to discuss those amino acids in the 
coding  parts of the nucleotide as a separate sequence, those amino acids 
must also  be set forth as a separate sequence.  The separate submission 
of the amino  acid sequence that corresponds to the coding parts of a 
nucleotide sequence  is, however, recommended and encouraged because the 
amino acid sequence may not be captured in the sequence  database if it is 
only presented in the "Sequence Listing" as a mixed nucleotide  and amino 
acid sequence. 


2423.03       Presentation and Enumeration of Sequences 


37 CFR 1.822(j) provides that nucleotide sequences shall only be 
represented  by a single strand, in the 5' to 3'  direction, from left to 
right.  That is,  double stranded nucleotides shall not be represented in 
the "Sequence Listing." 
 A double stranded nucleotide may be represented as two single stranded 
nucleotides,  and any relationship between the two may be shown in the 
drawings. 
The procedures for presenting and numbering amino acid sequences are set 
forth  in 37 CFR 1.822(k) and 37 CFR 1.822 (m). Two alternatives are 
presented for  numbering amino acid sequences. Amino acid sequences may be 
numbered with respect  to the identification of the first amino acid of 
the first mature protein or  with respect to the first amino acid 
appearing at the amino terminal.  The  enumeration procedure for 
nucleotides is set forth in 37 CFR 1.822 (i).  Sequences  that are 
circular in configuration are intended to be encompassed by these  rules, 
and numbering procedures for them are provided in 37 CFR 1.822 (n). 
 The numbering procedures set forth in 37 CFR 1.822 (k) through (n) are 
not  necessarily intended to be consistent with all currently employed 
numbering  procedures. The objective here is to establish a reasonable 
numbering procedure  that can readily be followed and adhered to.  These 
formatting procedures also  reflect those that have been agreed to for 
electronic data exchange with the  JPO and the EPO. 

In 37 CFR 1.822 (o) the procedures for presenting and numbering hybrid and 
 gapped sequences are set forth.  A sequence that is made up of one or 
more  noncontiguous segments of a larger sequence or segments from 
different sequences,  i.e., a hybrid sequence, shall be presented as a 
separate sequence.  A "gap"  for the purpose of this section is not 
intended to embrace a gap or gaps that  is/are introduced into the 
presentation of otherwise continuous sequence information  in, e.g., a 
drawing figure, to show alignments or similarities with other sequences. 
 The "gaps" referred to in this section are gaps representing unknown or 
undisclosed  regions in a sequence between regions that are known or 
disclosed.  In the  situation where a contiguous fragment of a sequence 
that has already been properly  set forth in a "Sequence Listing" is 
discussed and/or claimed, the fragment  does not need to be separately 
included in the "Sequence Listing."  It may  be referred to in the 
specification, claims or drawings as, e.g., "residues  2 through 33 of SEQ 
ID NO:12," assuming that SEQ ID NO:12 has been properly  included in the 
"Sequence Listing." 


2424    Requirements for Nucleotide and/or Amino Acid Sequences as Part of 
the Application Papers 

37 CFR 1.823.       Requirements for nucleotide and/or amino acid 
sequences  as part of the application papers. 

(a)   The "Sequence Listing," required by w 1.821(c), setting forth the 
nucleotide  and/or amino acid sequences, and associated information in 
accordance with  paragraph (b) of this section, must begin on a new page 
and be titled  "Sequence  Listing" and appear immediately prior to the 
claims.  Each page of the "Sequence  Listing" shall contain no more than 
66 lines and each line shall contain no  more than 72 characters.  A 
fixed-width font shall be used exclusively throughout  the "Sequence 
Listing." 

(b)   The "Sequence Listing" shall, except as otherwise indicated, 
include,  in addition to and immediately preceding the actual nucleotide 
and/or amino  acid sequence, the following items of information.  The 
order and presentation  of the items of information in the "Sequence 
Listing" shall conform to the  arrangement given below, except that 
parenthetical explanatory information  following the headings 
(identifiers) is to be omitted.  Each item of information  shall begin on 
a new line, enumerated with the number/numeral/letter in parentheses  as 
shown below, with the heading (identifier) in upper case characters, 
followed  by a colon, and then followed by the information provided. 
Except as allowed  below, no item of information shall occupy more than 
one line.  Those items  of information that are applicable for all 
sequences shall only be set forth  once in the "Sequence Listing."  The 
submission of those items of information  designated with an "M" is 
mandatory.  The submission of those items of information  designated with 
an "R" is recommended, but not required.  The submission of  those items 
of information designated with an "O" is optional.  Those items 
designated with "rep" may have multiple responses and, as such, the item 
may  be repeated in the "Sequence Listing." 

(1) GENERAL INFORMATION (Application, diskette/tape and publication 
information): 
(i) APPLICANT (maximum of first ten named applicants; specify one name per 
 line: SURNAME comma OTHER NAMES and/or INITIALS - M/rep): 

(ii) TITLE OF INVENTION (title of the invention, as elsewhere in 
application,  four lines maximum - M): 

(iii) NUMBER OF SEQUENCES (number of sequences in the  "Sequence Listing" 
-  M): 

(iv) CORRESPONDENCE ADDRESS (M): 

(A)   ADDRESSEE (name of applicant, firm, company or institution, as may 
be  appropriate): 

(B)   STREET (correspondence street address, as elsewhere in application, 
four  lines maximum): 

(C)   CITY (correspondence city address, as elsewhere in application): 
(D)   STATE (correspondence state, as elsewhere in application): 

(E)   COUNTRY (correspondence country, as elsewhere in application): 
(F)   ZIP (correspondence zip or postal code, as elsewhere in 
application): 
(v) COMPUTER READABLE FORM (M): 

(A)   MEDIUM TYPE (type of diskette/tape submitted): 

(B)   COMPUTER (type of computer used with diskette/tape  submitted): 
(C)   OPERATING SYSTEM (type of operating system used): 

(D)   SOFTWARE (type of software used to create computer readable form): 
(vi) CURRENT APPLICATION DATA (M, if available): 

(A)   APPLICATION NUMBER (U.S application number, including a series code, 
 a slash and a serial number, or U.S. PCT application number, including 
the  letters PCT, a slash, a two letter code indicating the U.S. as the 
Receiving  Office, a two digit indication of the year, a slash and a five 
digit number,  if available): 

(B)   FILING DATE (U.S. or PCT application filing date, if available; 
specify  as dd-MMM-yyyy): 

(C)   CLASSIFICATION (IPC/US classification or F-term designation, where 
F-terms  have been developed, if assigned, specify each designation, left 
justified,  within an eighteen position alpha numeric field-rep, to a 
maximum of ten classification  designations): 

(vii) PRIOR APPLICATION DATA (prior domestic, foreign priority or 
international  application data, if applicable - M/rep): 

(A)   APPLICATION NUMBER  (application number; specify as two letter 
country  code and an eight digit application number; or if a PCT 
application, specify  as the letters PCT, a slash, a two letter code 
indicating the Receiving Office,  a two digit indication of the year, a 
slash and a five digit number): 
(B)   FILING DATE (document filing date, specify as dd-MMM-yyyy): 
(viii) ATTORNEY/AGENT INFORMATION (O): 

(A)   NAME (attorney/agent name; SURNAME comma OTHER NAMES and/or 
INITIALS): 
(B)   REGISTRATION NUMBER (attorney/agent registration number): 

(C)   REFERENCE/DOCKET NUMBER (attorney/agent reference or docket number): 
(ix) TELECOMMUNICATION INFORMATION (O): 

(A)   TELEPHONE (telephone number of applicant or attorney/agent): 
(B)   TELEFAX (telefax number of applicant or attorney/agent): 

(C)   TELEX (telex number of applicant or attorney/agent): 

(2) INFORMATION FOR SEQ ID NO: X (rep): 

(i) SEQUENCE CHARACTERISTICS (M): 

(A)   LENGTH (sequence length, expressed as number of base pairs or amino 
acid  residues): 

(B)   TYPE (sequence type, i.e., whether nucleic acid or amino acid): 
(C)   STRANDEDNESS (if nucleic acid, number of strands of source organism 
molecule,  i.e., whether single stranded, double stranded, both or unknown 
to applicant): 
(D)   TOPOLOGY (whether source organism molecule is circular, linear, both 
 or unknown to applicant): 

(ii) MOLECULE TYPE (type of molecule sequenced in SEQ ID NO:X (at least 
one  of the following should be included with subheadings, if any, in 
Sequence Listing  - R)): 

- Genomic RNA; 

- Genomic DNA; 

- mRNA 

- tRNA; 

- rRNA; 

- snRNA; 

- scRNA; 

- preRNA; 

- cDNA to genomic RNA; 

- cDNA to mRNA; 

- cDNA to tRNA; 

- cDNA to rRNA; 

- cDNA to snRNA; 

- cDNA to scRNA; 

- Other nucleic acid; 

                (A) DESCRIPTION                                 (four 
lines  maximum): 

- protein and 

- peptide. 

(iii) HYPOTHETICAL (yes/no - R): 

(iv) ANTI-SENSE (yes/no - R): 

(v)   FRAGMENT TYPE (for proteins and peptides only, at least one of the 
following  should be included in the Sequence Listing - R): 

- N-terminal fragment; 

- C-terminal fragment and 

- internal fragment. 

(vi) ORIGINAL SOURCE (original source of molecule sequenced in SEQ ID NO:X 
 - R): 

(A)   ORGANISM (scientific name of source organism): 

(B)   STRAIN: 

(C)   INDIVIDUAL ISOLATE (name/number of individual/isolate): 

(D)   DEVELOPMENTAL STAGE (give developmental stage of source organism and 
 indicate whether derived from germ-line or rearranged developmental 
pattern): 
(E)   HAPLOTYPE: 

(F)   TISSUE TYPE: 

(G)   CELL TYPE: 

(H)   CELL LINE: 

(I)   ORGANELLE: 

(vii) IMMEDIATE SOURCE (immediate experimental source of the sequence in 
SEQ  ID NO:X - R): 

(A)   LIBRARY (library -type,name): 

(B)   CLONE (clone(s)): 

(viii) POSITION IN GENOME (position of sequence in SEQ ID NO:X in genome - 
 R): 

(A)   CHROMOSOME/SEGMENT (chromosome/segment - name/number): 

(B)   MAP POSITION: 

(C)   UNITS (units for map position, i.e., whether units are genome 
percent,  nucleotide number or other/specify): 

(ix) FEATURE (description of points of biological significance in the 
sequence  in SEQ ID NO:X -R/rep): 

(A)   NAME/KEY (provide appropriate identifier for feature - four lines 
maximum): 
(B)   LOCATION (specify location according to syntax of DDBJ/EMBL/GenBank 
Feature  Tables Definition, including whether feature is on complement of 
presented  sequence; where appropriate state number of first and last 
bases/amino acids  in feature - four lines maximum): 

(C)   IDENTIFICATION METHOD (method by which the feature was identified, 
i.e.,  by experiment, by similarity with known sequence or to an 
established consensus  sequence, or by similarity to some other pattern - 
four lines maximum): 
(D)   OTHER INFORMATION (include information on phenotype conferred, 
biological  activity of sequence or its product, macromolecules which bind 
to sequence  or its product, or other relevant information - four lines 
maximum): 
(x) PUBLICATION INFORMATION (Repeat section for each relevant publication 
-  O/rep): 

(A)   AUTHORS (maximum of first ten named authors of publication; specify 
one  name per line: SURNAME comma OTHER NAMES and/or INITIALS - rep): 

(B)   TITLE (title of publication): 

(C)   JOURNAL (journal name in which data published): 

(D)   VOLUME (journal volume in which data published): 

(E)   ISSUE (journal issue number in which data published): 

(F)   PAGES (journal page numbers in which data published): 

(G)   DATE (journal date in which data published; specify as dd-MMM-yyyy, 
MMM-yyyy  or Season-yyyy): 

(H)   DOCUMENT NUMBER  (document number, for patent type citations only; 
specify  as two letter country code, eight digit document number (right 
justified),  one letter and, as appropriate, one number or a space as a 
document type code;  or if a PCT application, specify as the letters PCT, 
a slash, a two letter  code indicating the Receiving Office, a two digit 
indication of the year, a  slash and a five digit number; or if a PCT 
publication, specify as the two  letters WO, a two digit indication of the 
year, a slash and a five digit publication  number): 

(I)   FILING DATE (document filing date, for patent-type citations only; 
specify  as dd-MMM- yyyy): 

(J)   PUBLICATION DATE (document publication date; for patent-type 
citations  only, specify as dd-MMM-yyyy): 

(K)   RELEVANT RESIDUES IN SEQ ID NO:X (rep): FROM (position) TO 
(position) 
(xi) SEQUENCE DESCRIPTION: SEQ ID NO:X: 


2424.01        Informational Requirements for the Sequence Listing 

37 CFR 1.823 sets forth the informational requirements for inclusion in 
the  separate part of the disclosure on paper copy (the "Sequence 
Listing") that  must be submitted in accordance with 37 CFR 1.821(c). 
This section lists the  items of information that are to be included in 
the "Sequence Listing,"  which  constitutes the separate part of the 
disclosure on paper copy.  The items of  information are to be presented 
in the  "Sequence Listing," immediately preceding  the actual nucleotide 
and/or amino acid sequence, in the order in which those  items are listed 
in this section.  Page and line length requirements are set  forth.  The 
requirement to use a fixed width font to present sequence data  is also 
set forth.  This latter requirement is made to ensure that the desired 
sequence character spacing and numbering is maintained upon printing.  The 
 heading for each item of information shall not include the parenthetical 
explanatory  information included in this section. 


2424.02       Categories of Information Items 


In 37 CFR 1.823, the items of information are broken down into two 
categories. 
 The first category is directed to  "GENERAL INFORMATION" and includes 
information  relating to the application being filed and the diskette/tape 
being submitted. 
 This information will be applicable for all sequences and, as such, will 
need  to be set forth only once in a given "Sequence Listing."  The second 
category  is directed to  "INFORMATION FOR SEQ ID NO:X" and includes 
information that  will be specific for each sequence disclosed.  Where 
more than one sequence  is disclosed, this category will be repeated and 
subsequent headings should  be set forth as:  "(2) INFORMATION FOR SEQ ID 
NO:2:," "(2) INFORMATION FOR  SEQ ID NO:3:," etc. 

Throughout the above two categories, the items of information are further 
broken  down into categories relating to whether their submission is 
mandatory (M),  recommended (R) or optional (O).  Certain items are also 
designated as those  that may repeat (rep) in a given "Sequence Listing." 
The numbering of repeated  items should remain constant so that the 
overall numbering scheme of the "Sequence  Listing"  conforms to that 
specified in this section.  The first category includes  those items for 
which inclusion in the "Sequence Listing" is mandatory.  These  mandatory 
items of information relate to the patent application, the computer 
readable form, basic sequence data and the applicable priority or PCT 
data. 
 The reference in 37 CFR 1.823(b)(1)(vi)(C) to "F-terms" relates to the 
key-word  indexing of patents that is being undertaken by the JPO in 
conjunction with  their automation plans.  The second category includes 
those items for which  inclusion in the "Sequence Listing" is recommended, 
but not required.  These  recommended items of information provide further 
information relating to the  sequence listed.  These additional items of 
information are of interest to  examiners and will create a more 
comprehensive database; as a result, the items  would serve to facilitate 
sequence searching.  The third category includes  items of information 
that are primarily for the purpose of providing more complete  information 
upon dissemination, for which inclusion in the "Sequence Listing"  is also 
optional. 


2424.03       Additional Miscellaneous Requirements 


Throughout 37 CFR 1.823(b)(1) and 37 CFR 1.823(b)(2), the items of 
information  relating to patent applications and patent publications 
should be provided  keeping in mind the appropriate standards that have 
been established by the  World Intellectual Property Organization (WIPO). 
In general, an application  should be identified by a country code, a 
number and a filing date, while a  published patent document should be 
identified by a country code, a number  and kind code.  Proper citation of 
priority patent applications is covered  in MPEP 
w 201.14(d).  For published patent documents, the country code, number and 
 kind code will appear on the front page of the document.  Unpublished PCT 
applications  are identified by the letters PCT, the country code of the 
Receiving Office,  the last two digits of the year of filing and a number, 
e.g., PCT/AT81/00033,  PCT/FR88/00100.  A published PCT application is 
identified by the letters WO,  the last two digits of the year of 
publication, a 
number and a kind code, e.g., WO82/02827A, WO88/06811A.  Country codes 
from  WIPO Standard ST.3 are reproduced in MPEP w 1870 Annex B and kind 
codes from  WIPO Standard ST.16 are reproduced in MPEP w 1871 as Appendix 
II.  Questions  on proper citation of patent documents should be directed 
to the Search and  Information Resources Administration, International 
Liaison Staff. 
In 37 CFR 1.823(b)(1)(i), the item of information relating to "APPLICANT" 
should  be limited to a maximum of the first ten named applicants in the 
application. 
 Similarly, in 37 CFR 1.823(b)(2)(x), the item of information relating to 
"AUTHORS"  should be limited to to a maximum of the first ten named 
authors in the publication. 

In 37  CFR 1.823(b)(1)(v)(B), 37 CFR 1.823(b)(1)(vi)(C) and 37 CFR 
1.823(b)(1)(vi)(D),  "dd-MMM-yyyy" is  the format for the presentation of 
date information in the  "Sequence Listing."  The lower case letters 
designate numeric responses and  the upper  case  letters  designate 
alphabetical responses.  As such, March  2, 1988, would be presented as 
02-MAR-1988. In 37 CFR 1.823(b)(2)(x)(G), "dd-MMM-yyyy,  MMM-yyyy or 
Season-yyyy" encompass all variations in date designations that  may be 
encountered. 

In 37 CFR 1.823(b)(2)(ix), relating to "FEATURES" or  the  description of 
 the points of biological significance in a given sequence, it is 
recommended, but not required, that 
 the information that is provided by the applicant conform to the 
controlled  vocabulary that is set forth in GenBank's "Feature 
Representation in Nucleotide  Sequence Data Libraries," Release 57.0, as 
may be amended.  Further, the feature  "LOCATION" should be specified 
using the syntax of the DDBJ/EMBL/GenBank Feature  Table Definition. 

In 37 CFR 1.823(b)(2)(x), publication information for a given sequence is 
collected. 
 The publication information encompasses both patent-type publications and 
 non-patent literature publications. Information item "(K) RELEVANT 
RESIDUES  IN SEQ ID NO: X" is intended to collect information relating to 
the correspondence  between a sequence set forth in the "Sequence Listing" 
and published sequence  information.  The starting (FROM) and end (TO) 
positions in the listed sequence  that correspond to the published 
sequence information should be set forth. 

2425    Form and Format for Nucleotide and/or Amino Acid Sequence 
Submissions in Computer Readable Form 

37 CFR 1.824  Form and format for nucleotide and/or amino acid sequence 
submissions  in computer readable form. 

(a)  The computer readable form required by w 1.821(e) shall contain a 
printable  copy of the "Sequence Listing," as defined in 
ww 1.821(c), 1.822 and 1.823, recorded as a single file on either a 
diskette  or a magnetic tape.  The computer readable form shall be encoded 
and formatted  such that a printed copy of the "Sequence Listing" may be 
recreated using the  print commands of the computer/operating-system 
configurations specified in  paragraph (f) of this section. 

(b)  The file in paragraph (a) of this section shall be encoded in a 
subset  of the American Standard Code for Information Interchange (ASCII). 
 This subset  shall consist of all the printable ASCII characters 
including the ASCII space  character plus line-termination, pagination and 
end-of-file characters associated  with the computer/operating-system 
configurations specified in paragraph (f)  of this section.  No other 
characters shall be allowed. 

(c)  The computer readable form may be created by any means, such as word 
processors,  nucleotide/amino acid sequence editors or other custom 
computer programs; however,  it shall be readable by one of the 
computer/operating-system configurations  specified in paragraph (f) of 
this section, and shall conform to the specifications  in paragraphs (a) 
and (b) of this section. 

(d)  The entire printable copy of the "Sequence Listing" shall be 
contained  within one file on a single diskette or magnetic tape unless it 
is shown to  the satisfaction of the Commissioner that it is not practical 
or possible to  submit the entire printable copy of the "Sequence Listing" 
within one file  on a single diskette or magnetic tape. 

(e)  The submitted diskette or tape shall be  write-protected such as by 
covering  or uncovering diskette holes, removing diskette write tabs or 
removing tape  write rings. 

(f)  As set forth in paragraph (c), above, any means may be used to create 
 the computer readable form, as long as the following conditions are 
satisfied. 
 A submitted diskette shall be readable on one of the 
computer/operating-system  configurations described in paragraphs (1) 
through (3), below.  A submitted  tape shall satisfy the format 
specifications described in paragraph (4), below. 
(1)  Computer:  IBM PC/XT/AT, IBM PS/2 or compatibles; 

Operating system:  PC-DOS or MS-DOS (Versions 2.1 or above); 

Line Terminator:  ASCII Carriage Return plus ASCII Line Feed; 

Pagination:  ASCII Form Feed or Series of Line Terminators; 

End-of-File:  ASCII SUB (Ctrl-Z); 

Media:  Diskette - 5.25 inch, 360 Kb storage; 

Diskette - 5.25 inch, 1.2 Mb storage; 

Diskette - 3.50 inch, 720 Kb storage; 

Diskette - 3.50 inch, 1.44 Mb storage; 

Print Command:  PRINT filename.extension; 

(2) Computer:  IBM PC/XT/AT, IBM PS/2 or compatibles; 

Operating system:  Xenix; 

Line Terminator:  ASCII Carriage Return; 

Pagination:  ASCII Form Feed or Series of Line Terminators; 

End-of-File:  None; 

Media:          Diskette - 5.25 inch, 360 Kb storage; 

Diskette - 5.25 inch, 1.2 Mb storage; 

Diskette - 3.50 inch, 720 Kb storage; 

Diskette - 3.50 inch, 1.44 Mb storage; 

Print Command:  lpr filename; 

(3) Computer:  Apple Macintosh; 

Operating System:  Macintosh; 

Macintosh File Type:  text with line termination 

Line Terminator:  Pre-defined by text type file; 

Pagination:  Pre-defined by text type file; 

End-of-file:  Pre-defined by text type file; 

Media:  Diskette - 3.50 inch, 400 Kb storage; 

Diskette - 3.50 inch, 800 Kb storage; 

Diskette - 3.50 inch, 1.4 Mb storage; 

Print Command:  Use PRINT command from any Macintosh Application that 
processes  text files, such as MacWrite or TeachText; 

(4) Magnetic tape:  0.5 inch, up to 2400 feet; 

Density:  1600 or 6250 bits per inch, 9 track; 

Format:  raw, unblocked; 

Line Terminator:  ASCII Carriage Return plus optional ASCII  Line Feed; 
Pagination:  ASCII Form Feed or Series of Line Terminators; 

Print Command (Unix shell version given here as sample response - 
mt/dev/rmt0;  lpr</dev/rmt0): 

(g)  Computer readable forms that are submitted to the Office will not be 
returned  to the applicant. 

(h)  All computer readable forms shall have a label permanently affixed 
thereto  on which has been hand printed or typed, a description of the 
format of the  computer readable form as well as the name of the 
applicant, the title of the  invention, the date on which the data were 
recorded on the computer readable  form and the name and type of computer 
and operating system which generated  the files on the computer readable 
form.  If all of this information can not  be printed on a label affixed 
to the computer readable form, by reason of size  or otherwise, the label 
shall include the name of the applicant and the title  of the invention 
and a reference number, and the additional information may  be provided on 
a container for the computer readable form with the name of  the 
applicant, the title of the invention, the reference number and the 
additional  information affixed to the container.  If the computer 
readable form is submitted  after the date of filing under 35 U.S.C. 111, 
after the date of entry in the  national stage under 35 U.S.C. 371 or 
after the time of filing, in the United  States Receiving Office, an 
international application under the PCT, the labels  mentioned herein must 
also include the date of the application and the application  number, 
including series code and serial number. 

37 CFR 1.824 sets forth the requirements for sequence submissions in 
computer  readable form.  Any computer operating system may be utilized to 
produce a  sequence submission, provided that the system is capable of 
producing a file  having the characteristics specified in 37 CFR  1.824, 
and is capable of writing  the properly formatted file to one of the 
acceptable diskettes or tapes.    Currently, the computer readable form is 
limited to diskettes or tapes.  However,  as noted above, it is 
contemplated that this may be broadened in the future  in light of 
progress in the technology for developing and establishing databases  of 
this type.  That is, it is possible that this may be broadened in the 
future  to encompass other media and formats.  If a given sequence and its 
associated  information cannot practically or possibly fit on a single 
diskette or tape,  as is required in 37 CFR 1.824(d), an exception via a 
non-fee petition to waive  this provision will normally be granted.  As 
set forth in 
37 CFR  1.824(g), the computer readable forms that are submitted in 
accordance  with these rules will not be returned to the applicant.  37 
CFR  1.824(h) requires  the labeling, with appropriate identifying 
information, of the computer readable  forms that are submitted in 
accordance  with these rules. 


2426    Amendments to or Replacement of Sequence Listing and Computer 
Readable Copy Thereof 

37 CFR 1.825 Amendments to or replacement of sequence listing and computer 
 readable copy thereof. 

(a) Any amendment to the paper copy of the "Sequence Listing" 
(w 1.821(c)) must be made by the submission of substitute sheets. 
Amendments  must be accompanied by a statement that indicates support for 
the amendment  in the application, as filed, and a statement that the 
substitute sheets include  no new matter.  Such a statement must be a 
verified statement if made by a  person not registered to practice before 
the Office. 

(b) Any amendment to the paper copy of the "Sequence Listing," in 
accordance  with paragraph (a) of this section, must be accompanied by a 
substitute copy  of the computer readable form (w 1.821(e)) including all 
previously submitted  data with the amendment incorporated therein, 
accompanied by a statement that  the copy in computer readable form is the 
same as the substitute copy of the  "Sequence Listing."  Such a statement 
must be a verified statement if made  by a person not registered to 
practice before the Office. 

(c) Any appropriate amendments to the "Sequence Listing" in a patent, 
e.g.,  by reason of reissue or certificate of correction, must comply with 
the requirements  of paragraphs (a) and (b) of this section. 

(d) If, upon receipt, the computer readable form is found to be damaged or 
 unreadable, 

applicant must provide, within such time as set by the Commissioner, a 
substitute  copy of the data in computer readable form accompanied by a 
statement that  the substitute data is identical to that originally filed. 
 Such a statement  must be a verified statement if made by a person not 
registered to practice  before the Office. 

37 CFR 1.825 sets forth the procedures for amending the  "Sequence 
Listing"  and the computer readable copy thereof.  The procedures that 
have been defined  in this section involve the submission of either 
substitute sheets of the "Sequence  Listing" or substitute copies of the 
computer readable form, in conjunction  with statements that indicate 
support for the amendment in the application,  as filed, and that the 
substitute sheets or copies include no new matter. 
(See MPEP 
w 2428 for further information and Sample Statements.) The requirement for 
 statements regarding the absence of new matter follows current practice 
relating  to the submission of substitute specifications, as set forth in 
37 CFR 1.125. 37 CFR 1.825 (c) addresses the situation where  amendments 
to  the  "Sequence Listing" are made after a patent has been granted, 
e.g., by  a certificate of correction, reissue or reexamination.  37 CFR 
1.825 (d) addresses  the possibility and presents a remedy for the 
situation where the computer  readable form may be found by the Office to 
be damaged or unreadable. 

2427    Form Paragraphs and Notice to Comply 



2427.01       Form Paragraphs 


In order to minimize the extension of pendency due to the implementation 
of  the sequence rules, all compliance issues should be addressed in a 
single communication  with the applicant.  That communication should set a 
1-month period for response  that may be extended in accordance with the 
provisions of 37 CFR 1.136.  However,  depending upon the nature of 
applicant's response, a followup communication  regarding the sequence 
rules may be necessary.  The form paragraphs that follow  are to be used 
in these communications. The form paragraphs should be used  as follows: 

7.200 - This form paragraph should be used for the first mailing of a 
Notice  to Comply. 

7.201 - This form paragraph should be used for the first mailing of a CRF 
Diskette  Problem Report. 

7.202 - This form paragraph should be used when an applicant has made a 
bona  fide attempt to comply but the response generates an error listing 
from the  Scientific and Technical Information Center (STIC).  This should 
be used for  a second mailing to applicant unless it is evident that there 
has been a deliberate  omission; this form paragraph may also be used to 
extend the period for response  for the initially mailed notice. 

7.203 - This form paragraph should be used when there has been a 
deliberate  omission in the response or where the reason the response is 
incomplete cannot  be characterized as an apparent oversight or instance 
of inadvertence. 
W 7.200       Cover Letter for Use with Notice to Comply with Sequence 
Rules 
This application contains sequence disclosures that are  encompassed by 
the  definitions for nucleotide and/or amino acid  sequences set forth in 
37 CFR  1.821(a)(1) and (a)(2).  However,  this application fails to 
comply with the  requirements of 37 CFR  1.821 through 1.825 for the 
reason(s) set forth on  the attached Notice To Comply With Requirements 
For Patent Applications Containing  Nucleotide Sequence And/Or Amino Acid 
Sequence  Disclosures. 

Any inquiry concerning this communication should be directed  to Examiner 
[1],  Art Unit [2], whose telephone number is (703)  308-[3].  Any inquiry 
of a general  nature or relating to the status of  this application should 
be directed to  the Group receptionist  whose telephone number is (703) 
308-0196. 
APPLICANT IS GIVEN ONE MONTH FROM THE DATE OF THIS LETTER WITHIN  WHICH TO 
 COMPLY WITH THE SEQUENCE RULES, 37 CFR 1.821 - 1.825.  Failure to comply 
with  these requirements will result in  ABANDONMENT of the application 
under 37  CFR 1.821(g).  Extensions  of time may be obtained by filing a 
petition accompanied  by the  extension fee under the provisions of 37 CFR 
1.136.  In no case  may  an applicant extend the period for response 
beyond the six  month statutory  period.  Direct the response to the 
undersigned.  Applicant is requested to  return a copy of the attached 
Notice to  Comply with the response. 
Examiner notes: 

1.  Use this form paragraph only for the initial communication to the 
applicant. 
 Use either 7.202 or 7.203 for subsequent communications. 

2.  Insert appropriate information in brackets. 

3.  Print this paragraph on a PTOL-90 and attach a Notice to Comply With 
Requirements  for Patent Applications Containing Nucleotide Sequence 
And/Or  Amino Acid Sequence  Disclosures, along with a  marked-up copy of 
the Raw Sequence Listing, if   any.  If the PTOL-90 has a pre-printed 
response  period heading, it should  be blocked out. 

W 7.201       Cover Letter for Use with CRF Diskette Problem Report 
This application contains sequence disclosures that are  encompassed by 
the  definitions for nucleotide and/or amino acid  sequences set forth in 
37 CFR  1.821(a)(1) and (a)(2).  A computer readable form (CRF) of the 
sequence listing  was submitted.  However, the CRF could not be processed 
by the Scientific and 
 Technical Information Center (STIC) for the reason(s) set forth  on the 
attached  CRF Diskette Problem Report. 

Any inquiry concerning this communication should be directed  to Examiner 
[1],  Art Unit [2], whose telephone number is (703)  308-[3]. 

Any inquiry of a general nature or relating to the status of  this 
application  should be directed to the Group receptionist  whose telephone 
number is (703)  308-0196. 

APPLICANT IS GIVEN ONE MONTH FROM THE DATE OF THIS LETTER WITHIN  WHICH TO 
 COMPLY WITH THE SEQUENCE RULES, 37 CFR 1.821 - 1.825.  Failure to comply 
with  these requirements will result in  ABANDONMENT of the application 
under 37  CFR 1.821(g).  Extensions  of time may be obtained by filing a 
petition accompanied  by the  extension fee under the  provisions of 37 
CFR 1.136.  In no case  may  an applicant extend the period for response 
beyond the six  month statutory  period.  Direct the response to the 
undersigned.  Applicant is requested to  return a copy of the attached CRF 
Diskette Problem Report with the response. 
Examiner notes: 

1.  Use this form paragraph only for the initial communication to the 
applicant. 
 Use either 7.202 or 7.203 for subsequent communications. 

2.  Insert appropriate information in brackets. 

3.  Print this paragraph on a PTOL-90 and attach the CRF Diskette Problem 
Report. 
 If the PTOL-90  has a preprinted response period heading, it should be 
blocked  out. 

W 7.202   CRF Submission Is Not Fully Responsive, Bona Fide Attempt 
The communication filed on [1] is not fully responsive to  the 
communication  mailed [2] for the reason(s) set forth on the  attached 
Notice to Comply With  the Sequence Rules or CRF Diskette  Problem Report. 

Since the response appears to be bona fide, but through an  apparent 
oversight  or  inadvertence  failed  to  provide  a  complete response, 
applicant is required to complete the response within a  time limit  of 
one (1) month from the date of this letter or  within the time remaining 
in the response period of the  communication mailed [3], whichever is the 
longer. 
 37 CFR  1.135(c). 

NO EXTENSION OF THIS TIME LIMIT MAY BE GRANTED UNDER EITHER 37  C.F.R. 
1.136(a)  OR (b), BUT THE STATUTORY PERIOD FOR RESPONSE SET  IN THE 
COMMUNICATION MAILED  [4] MAY BE EXTENDED UP TO A MAXIMUM  OF SIX (6) 
MONTHS UNDER 37 CFR 1.136. 
Examiner notes: 

1.  This form paragraph may be used whether or not the six-month period 
for  response has expired. 

It is intended for use whenever a bona fide response  has been submitted. 
 This practice does not apply where there has been a deliberate omission 
of  some necessary part of a complete response or where the reason the 
response  is incomplete  cannot be characterized as an apparent oversight 
or  apparent  inadvertence.  Under such cases the  examiner has no 
authority to grant an  extension if  the six-month period for response has 
expired.  Use  form paragraph  7.203 under such circumstances. 

2.  In bracket 1 insert the date of the response and in brackets 2, 3 and 
4  insert the mail date of  the communication requiring compliance. 

3.  Print this paragraph on a PTOL-90 and attach a Notice to Comply With 
Requirements  for Patent Applications Containing Nucleotide Sequence 
And/Or  Amino Acid Sequence  Disclosures, along with a  marked-up copy of 
the Raw Sequence Listing, or CRF  Diskette Problem Report.  If the PTOL-90 
has a  pre-printed response period  heading, it should be  blocked out. 

4.  See 37 CFR 1.135(c), 1.821(g);  MPEP 710.02(c), 711.02(a), 714.02, 
714.03. 
W 7.203       CRF Submission Is Not Fully Responsive 

The communication filed on [1] is not fully responsive to the 
communication  mailed [2] for the reason(s) set forth on the  attached 
Notice to Comply With  the Sequence Rules or CRF Diskette  Problem Report. 

If a complete response has not been submitted by the time  the shortened 
statutory  period for response set in the communication mailed [3] has 
expired, this application  will become abandoned unless applicant corrects 
the deficiency and  obtains  an extension of time under 37 C.F.R. 1.136. 
In no case  may an applicant extend  the period for response beyond the 
six month statutory period. 

Examiner notes: 

1.  This form paragraph may not be used when the six-month period for 
response  has expired.  Use this form paragraph in the situation where in 
the response 
(within the six-months) there has been a deliberate omission of some 
necessary  part of a complete response.  When the response appears to be 
bona fide, but  through an apparent oversight or inadvertence failed to 
provide a complete  response, use form paragraph 7.202. 

2.  In bracket 1 insert the date of the response and in brackets 2 and 3 
insert  the mail date of the communication requiring compliance. 

3.  Print this paragraph on a PTOL-90 and attach a Notice to Comply With 
Requirements  for Patent Applications Containing Nucleotide Sequence 
And/Or  Amino Acid Sequence  Disclosures, along with a  marked-up copy of 
the Raw Sequence Listing, or CRF  Diskette Problem Report.  If the PTOL-90 
has a  pre-printed response period  heading, it should be  blocked out. 


2427.02       Notice To Comply 


The text of the Notice to Comply with the requirements of the sequence 
rules  follows.  The appropriate box on the notice should be checked 
depending upon  the particular deficiencies that have been identified.  A 
copy of the "Raw  Sequence Listing," where available, should also be sent 
to the applicant.   The "Raw Sequence Listing" should also be entered into 
the application file  upon receipt from STIC. 

Application No.  ___________________________ 

NOTICE TO COMPLY WITH REQUIREMENTS FOR PATENT APPLICATIONS CONTAINING 
NUCLEOTIDE  SEQUENCE AND/OR AMINO ACID SEQUENCE DISCLOSURES 

The nucleotide and/or amino acid sequence disclosure contained in this 
application  does not comply with the requirements for such a disclosure 
as  set forth in  37 CFR 1.821 -1.825 for the following reason(s): 

1.  This application clearly fails to comply with the requirements of 37 
CFR 1.821 -1.825.  Applicant's attention is directed to these regulations, 
 published at 1114 O.G. 29, May 15, 1990 and at 55 FR 18230, May 1, 1990. 
2.  This application does not contain, as a separate part of the 
disclosure  on paper copy, a "Sequence Listing" as required by 37 CFR 
1.821(c). 
3.  A copy of the "Sequence Listing" in computer readable form has not 
been  submitted as required by 37 CFR 1.821(e). 

4.  A copy of the "Sequence Listing" in computer readable form has been 
submitted.  However, the content of the computer readable form does not 
comply with the  requirements of 37 CFR 1.822 and/or 1.823, as indicated 
on  the attached copy  of the marked-up "Raw Sequence Listing." 

5.  The computer readable form that has been filed with this application 
has  been found to be damaged and/or unreadable as indicated on the 
attached  CRF  Diskette Problem Report.  A substitute computer readable 
form must be  submitted  as required by 37 CFR 1.825(d). 

6.  The paper copy of the "Sequence Listing" is not the same as the 
computer  readable form of the "Sequence Listing" as required by 
37 CFR  1.821(e). 

7.  Other:____________________________________ 

Applicant must provide: 

_  An initial or substitute computer readable form (CRF) copy of the 
"Sequence  Listing" 

_  An initial or substitute paper copy of the "Sequence Listing", as well 
 as an amendment directing its entry into the specification 

_  A statement that the content of the paper and computer readable copies 
 are the same and, where applicable, include no new matter, as  required 
by  37 CFR 1.821(e) or 37 CFR 1.821(f) or 37 CFR 1.821(g) or 37 CFR 
1.825(b)  or 
 37 CFR 1.825(d). 

For questions regarding compliance with these requirements, please 
contact: 
For Rules Interpretation, call (703) 308-1123 

For CRF submission help, call (703) 308-4212 

For PatentIn software help, call (703) 557-0400 

Please return a copy of this notice with your response. 


2428    Sample Statements 


Sample language for the statements required to support sequence rule 
submissions  is provided below.  These  statements are given by way of 
example only, other  language may, of course, be used.  For the statements 
that relate to the assertion  that the content of the paper and computer 
readable copies are the "same,"  it is acknowledged that there may be some 
non-substantive differences between  the two, e.g., page numbers and page 
breaks may be present in the paper copy  but not in the computer readable 
copy thereof.  This requirement for sameness  relates to the informational 
content of the paper and computer readable copies  relevant to the 
requirements of the sequence rules. 

37 CFR 1.821(f) -  I hereby state that the content of the paper and 
computer  readable copies of the Sequence Listing, submitted in accordance 
with 37 CFR 
 1.821(c) and (e), respectively, are the same. 

37 CFR 1.821(g) [or (h)] - I hereby state that the submission, filed in 
accordance  with 37 CFR 1.821(g) [or (h)], herein does not include new 
matter [or go beyond  the disclosure in the international application]. 

37 CFR 1.825(a) - I hereby state that the amendments, made in accordance 
with  37 CFR 1.825(a), included in the substitute sheet(s) of the Sequence 
Listing  are supported in the application, as filed, at _____________.  I 
hereby state  that the substitute sheet(s) of the Sequence Listing does 
(do) not include  new matter. 

37 CFR 1.825(b) - I hereby state that the substitute copy of the computer 
readable  form, submitted in accordance with 37 CFR 1.825(b), is the same 
as the amended  Sequence Listing. 

37 CFR 1.825(d) - I hereby state that the substitute copy of the computer 
readable  form, submitted in accordance with 37 CFR 1.825(d), is identical 
to that originally  filed. 

  A sample verification, see also 37 CFR 1.68, follows: 

  I hereby declare that all statements made herein of my own knowledge are 
 true and that all statements made on information and belief are believed 
to  be true; and further that these statements were made with the 
knowledge that  willful false statements and the like so made are 
punishable by fine or imprisonment,  or both, under Section 1001 of Title 
18 of the United States Code and that  such willful false statements may 
jeopardize the validity of the application  or any patent issued thereon. 


2429    Helpful Hints for Compliance 


The Office has now had a good deal of experience in the implementation of 
the  sequence rules.  The following list sets forth helpful hints, for 
both examiners  and applicants,  for compliance.  For the most part, the 
list is a compilation  of frequently asked questions. 

- Compliance is not a filing date issue. 

- Compliance is not a 35 U.S.C. 112 issue. 

- Compliance is not a 35 U.S.C. 119/120 issue. 

- Compliance is not a new matter issue.  The standard for resolution of 
inconsistencies  between the paper and the electronic copies and/or errors 
in the paper copy  of sequence information is based on the new matter 
standard. 

-   Compliance can be achieved via amendment. 

- The paper copy of Sequence Listing is an integral part of the 
application. 
 The Sequence Listing should begin on a new page immediately prior to the 
claims,  with pages numbered consecutively with the rest of the 
application.  The new  page that begins the "Sequence Listing" should be 
entitled "Sequence Listing."  If not submitted as such at filing, the 
Sequence Listing must be inserted into  the application via amendment, 
e.g., by preliminary amendment. 

-   Substitute pages must be used for changes to the Sequence Listing. 
- Punctuation, information item headings and parentheses listed in 37 CFR 
1.823  are very important for our database.  Extra colons and parentheses 
should not  be used in Sequence Listings. 

- The computer readable form cannot contain page numbers.  Page numbers 
should  only be placed on the paper copy of the Sequence Listing. 

-   The PatentIn computer program is not the only means by which to comply 
 with the rules.  Any word processing program can be used to generate a 
Sequence  Listing if it has the capability to convert a file into ASCII 
text. 
-     If a word processing program is used to generate a  "Sequence 
Listing,"  hard page break controls should not be used and margins should 
be adjusted  to the smallest setting. 

- However, word processing files should not be submitted to the Office; 
the  Sequence Listing generated by a word processing file should be saved 
as an  ASCII text file for submission.  Most word processing programs 
provide this  feature. 

- Statements in accordance with 37 CFR 1.821(f), (g), (h) and 37 CFR 1.825 
 and proper labeling in accordance with 37 CFR 1.824(h) should be noted. 
Sample  statements to support filings and submissions in accordance with 
37 CFR 1.821  through 1.825 are provided in MPEP w 2428 Sample Statements. 

- Use Box Sequence - 37 CFR 1.821(j). 

- Three and a half inch disks are less fragile than five and a quarter 
inch  disks. 

- On nucleotide sequences, since only single strands may be depicted in 
the  "Sequence Listing," please remember to show strands in 5' to 3' 
direction. 
- The single stranded nucleotide depicted in the "Sequence Listing" may 
represent  a strand of a nucleotide sequence that may be single or double 
stranded which  may be, further, linear or circular.  An amino acid 
sequence or peptide may  be linear or circular.  In some instances, a 
sequence may be both single stranded  and double stranded and/or both 
linear and circular.  The response "not relevant"  is also an acceptable 
response for both "Strandedness" and "Topology." 
- Current Application Data and Prior Application Data fields should always 
 be supplied even if left blank. The Current Application Data headings 
should  appear in the "Sequence Listing" in all cases.  If the information 
about the  current application is not known or is unavailable at the time 
of completing  the Sequence Listing, then the line following each heading 
should be left blank.  This would normally be the case when the "Sequence 
Listing" is included in  a newly filed application. Similarly, if 
information regarding prior applications  is inapplicable or not known at 
the time of completing the "Sequence Listing"  but will be later filed, 
then the Prior Application Data field headings should  appear with the 
line following the heading left blank. 

- Margin requirements and minimum character size for the Sequence Listing 
must  be complied with and can usually be satisfied by using 10 point, 
12 pitch type. 

- If you receive a Notice to Comply that should not have been sent to you, 
 a simple letter, in the form of a request for reconsideration of the 
notice,  to the organization sending the notice should suffice to clarify 
the matter. 
- There are a limited number of Mandatory Items of Information.  They are 
listed  in MPEP w 2433 Sequence Listing Headings for Mandatory Items. 

- Figures can be used to convey information not readily conveyed by the 
Sequence  Listing.  The exclusive conformance requirement of 37 
CFR1.821(b) will be relaxed  for drawing figures.  However, the sequence 
information so conveyed must still  be included in a "Sequence Listing" 
and the sequence identifier ("SEQ ID NO:X")  must be used, either, in the 
drawing or in the "Brief Description of the Drawings." 

- Extra copies of computer readable forms should not be sent to examiners. 
 -  Inosine should be represented by the use of "N". 

 -  Stop codons, represented by an asterisk, are not permitted in amino 
acid  sequences. 

 -  Punctuation should not be used in a sequence to indicate unknown 
nucleotide  bases or amino acid residues nor should punctuation be used to 
delimit active  or functional regions of a sequence.  These regions should 
be noted as Features  of the sequence per 37 CFR 1.823(b)(2)(ix). 

- The presence of an unnatural amino acid in a sequence does not have the 
same  effect as the presence of a D-amino acid.  The sequence may still be 
subject  to the rules even though one or more of the amino acids is not 
naturally occurring. 
- Cyclic and branched peptides are causing some confusion  in the 
application  of the rules.  Specific questions should be directed to Group 
1800 personnel. 

- A cyclic peptide with a tail is regarded as a branched sequence, and 
thereby  exempt from the rules, if all bonds adjacent to the amino acid 
from which the  tail emanates are normal peptide bonds. 

- Representations of amino acid sequences, such as XY(AA)nZ where X, Y and 
 Z can be various amino acids (properly formatted as Xaas) and (AA)n is a 
spacer  where AA can be any amino acid and n can be 0, 1, 2 or 3, are 
exempt from the  rules.  In the specific example given, the sequence is 
exempt due to the presence  of the spacer in which the variable AA, which 
would properly be represented  as Xaa, can be zero, one, two or three 
amino acids. In general, at a given  position in a sequence, that position 
must be occupied by a single constituent,  even though that single 
constituent might be a variable, such as an Xaa or  an N. 

- Single letter amino acid abbreviations are not acceptable anywhere in 
the  application, including the "Sequence Listing." 

- Zero (0) is not used when the numbering of amino acids uses negative 
numbers  to distinguish the mature protein. 

- Subscripts or superscripts are not permitted in "Sequence Listings." 
- If a "Sequence Listing" is amended, an entirely new computer readable 
form  is required regardless of the triviality of the amendment. 
Amendments to the  paper copy of the  "Sequence Listing" must be made by 
substitute sheets. 
- Note field length limitations.  For specific instances, they may be 
waived,  but compliance is encouraged. 

- The exclusive conformance requirement of 
37 CFR 1.821(b) requires that any amendment of the sequence information in 
 a "Sequence Listing" be accompanied by an amendment to the corresponding 
information,  if any, embedded in the text of the specification or 
presented in a drawing  figure. 

- Any inquiries regarding a specific computer readable form that has been 
processed  by the Office should be directed to the Systems Branch of the 
Biotechnology  Division of the Scientific and Technical Information Center. 


2430    Patent In Information; Utilities Programs; Training 



In those areas of biotechnology in which nucleotide and/or amino acid 
sequence  information is significant, many patent applicants are 
accustomed to, or familiar  with, the submission of such sequence 
information, in electronic form, to various  sequence databases, such as 
GenBank, which is produced by the National Institutes  of Health. In order 
to facilitate such submissions, or merely for the purpose  of researching 
and developing sequence information, many eventual patent applicants  also 
generate or encode sequence information in computer readable form. In 
order to further facilitate compliance with the sequence rules, the Office 
 has made available to the public an input program that is based on the 
AuthorIn  program produced by GenBank. This input program is specifically 
tailored to  the requirements of the sequence rules and will generate both 
the paper and  electronic copies of a Sequence Listing that comply with 
the requirements of  the rules.  The input program is called PatentIn.  It 
is available from the  Office for $480.00 and can be paid for by check 
made out to the Commissioner  of Patents and Trademarks or by debit to a 
deposit account.  Copies can be  obtained by written request to: 
Commissioner of Patents and Trademarks, Patent  and Trademark Office, 
Washington, D.C.  20231, Attention - Lois E. Boland,  Special Program 
Examiner, Office of the Assistant Commissioner for Patents,  Crystal Park 
2 - Suite 919.  Additional information regarding PatentIn orders  can be 
obtained from the Search and Information Resources Administration, Crystal 
 Park 3 - Suite 702 at (703) 557-0400.  Copies can be obtained by 
facsimile  request if the authorization to debit a deposit account is 
included.  Facsimile  requests should be directed to:  (703) 557-0668 or 
(703) 305-8825. 
PatentIn is available for IBM PC XT, AT, PS/2 and compatible computers. 
It  runs only on a system with a hard disk drive.  MS-DOS or PC-DOS 
Version 3.0  or higher is recommended.  Installation of PatentIn on a hard 
disk requires  a minimum of 1.2 megabytes free disk space. The program 
requires a PC with  550 kilobytes free in RAM (random access memory).  A 
MacIntosh version of PatentIn  is not available. 

The PatentIn program materials include four program diskettes (3 1/2 or 5 
1/4  inch), a PatentIn User Manual, a PatentIn Quick Reference Card, and 
Supplemental  Instructions for the PatentIn Program.  The Supplemental 
Instructions address,  among other things, known bugs and operational 
difficulties, common editing  problems, asterisks in peptide sequences and 
the use of ASCII text editors  or word processors.  For those purchasing 
the program, software support is  also provided by the Office through the 
Search and Information Resources Administration. 
The Office, in cooperation with the European Patent Office, has developed 
a  group of utilities programs that facilitate sequence manipulation and 
aid in  the conversion of a PatentIn Sequence Listing to a format that 
complies with  the European Patent Office submission rules. Copies of the 
utilities programs  can be obtained through the Search and Information 
Resources Administration. 
While use of the PatentIn program is not required for compliance with the 
sequence  rules, its use is highly recommended as Office experience has 
shown that  submissions developed with PatentIn are far less likely to 
include errors than  those developed without the program The many 
automatic features of the PatentIn  program also greatly ease the 
generation of Sequence Listings when compared  to generating them by hand 
in a word processing environment.  This is especially  true for Sequence 
Listings that include many sequences and/or sequences having  great 
lengths. 

The Office provides hands-on training in the use of the PatentIn and 
associated  utilities programs.  The classes are held in Washington D.C. 
as demand warrants. 
 In addition, on site training may be arranged at locations outside 
Washington,  D.C.  To express interest in such classes, please contact the 
Search and Information  Resources Administration. 


2431    Sample Sequence Listing 


A sample "Sequence Listing" is included below.  As indicated, it is only 
necessary  to list information that is applicable to a given sequence in 
the "Sequence  Listing."  The sample  "Sequence Listing" also serves to 
illustrate that when  the coding parts of a nucleotide sequence and their 
corresponding amino acids  have been identified, if applicant desires to 
discuss those amino acids in  the coding parts of the nucleotide as a 
separate sequence, those amino acids  must also be set forth as a separate 
sequence.  In the given sample, it can  be assumed that the applicant 
desired to discuss the amino acids as a separate  sequence.  This 
convention will minimize ambiguities that may result in those  instances 
where the amino acids corresponding to the coding parts of a nucleotide 
sequence constitute two separate amino acid sequences.  In those 
instances,  if an applicant desires to discuss the two separate amino acid 
sequences, they  must be separately presented in the "Sequence Listing." 
Further, in those  instances when applicant desires to discuss, as 
separate sequences, all three  reading frames of the coding regions of a 
nucleotide sequence, six separate  sequences should be set forth in the 
"Sequence Listing" to minimize confusion. 
 These six sequences, each having a different sequence identifier, would 
include  three nucleotide sequences separately showing each of the three 
reading frames  of the coding regions of the sequence and three separate 
amino acid sequences  corresponding to the translation of the three 
reading frames of the nucleotide  sequence. 

SAMPLE SEQUENCE LISTING 

(1) GENERAL INFORMATION: 

(i) APPLICANT:      Doe, Joan X 

                              Doe, John Q 

(ii) TITLE OF INVENTION: Isolation and Characterization of a Gene Encoding 
 a Protease from Paramecium sp. 

(iii) NUMBER OF SEQUENCES: 2 

(iv) CORRESPONDENCE ADDRESS: 

(A)   ADDRESSEE: Smith and Jones 

(B)   STREET: 123 Main Street 

(C)   CITY: Smalltown 

(D)   STATE: Anystate 

(E)   COUNTRY: USA 

(F)   ZIP: 12345 

(v) COMPUTER READABLE FORM: 

(A)   MEDIUM TYPE: Diskette,        3.50 inch, 800 Kb storage 

(B)   COMPUTER: Apple Macintosh 

(C)   OPERATING   SYSTEM:               Macintosh 5.0 

(D)   SOFTWARE: MacWrite 

(vi) CURRENT APPLICATION DATA: 

(A) APPLICATION NUMBER: 09/999,999 

(B)   FILING DATE: 28-FEB-1989 

(C)   CLASSIFICATION: 999/99 

(vii) PRIOR APPLICATION DATA: 

(A)   APPLICATION NUMBER: PCT/US88/99999 

(B)   FILING DATE: 01-MAR-1988 

(viii) ATTORNEY/AGENT INFORMATION: 

(A)   NAME: Smith, John A 

(B)   REGISTRATION NUMBER: 00001 

(C)   REFERENCE/DOCKET NUMBER: 

01-0001 

(ix) TELECOMMUNICATION INFORMA                  TION: 

(A)   TELEPHONE: (909) 999-0001 

(B)   TELEFAX: (909) 999-0002 

(2) INFORMATION FOR SEQ ID NO:1: 

(i) SEQUENCE CHARACTERISTICS: 

(A)   LENGTH: 954 base pairs 

(B)   TYPE: nucleic acid 

(C)   STRANDEDNESS: single 

(D)   TOPOLOGY: linear 

(ii)MOLECULE TYPE: genomic DNA 

(iii) HYPOTHETICAL: yes 

(iv) ANTI-SENSE: no 

(vi) ORIGINAL SOURCE: 

(A)   ORGANISM: Paramecium sp 

(C)   INDIVIDUAL/ISOLATE:XYZ2 

(G)   CELL TYPE: unicellular organism 

(vii) IMMEDIATE SOURCE: 

(A)   LIBRARY: genomic 

(B)   CLONE: Para-XYZ2/36 

(x) PUBLICATION INFORMATION: 

(A)   AUTHORS:  Doe, Joan X 

    Doe, John Q 

(B)   TITLE:  Isolation and Characterization of a Gene Encoding a Protease 
 from Paramecium sp. 

(C)   JOURNAL: Fictional Genes 

(D)   VOLUME: I 

(E)   ISSUE: 1 

(F)   PAGES: 1-20 

(G)   DATE: 02-MAR-1988 

(K)   RELEVANT RESIDUES IN SEQ ID NO:1: FROM 1 TO 954 

        (xi)  SEQUENCE DESCRIPTION:  SEQ        ID  NO:1: 

        ATCGGGATAG  TACTGGTCAA      GACCGGTGGA      CACCGGTTAA 
CCCCGGTTAA      GTACCGGTTA      60 
        TAGGCCATTT  CAGGCCAAAT      GTGCCCAACT      ACGCCAATTG 
TTTTGCCAAC      GGCCAACGTT      120 
        ACGTTCGTAC  GCACGTATGT      ACCTAGGTAC      TTACGGACGT 
GACTACGGAC      ACTTCCGTAC      180 
        GTACGTACGT  TTACGTACCC      ATCCCAACGT      AACCACAGTG 
TGGTCGCAGT      GTCCCAGTGT      240 
        ACACAGACTG  CCAGACATTC      TTCACAGACA      CCCC        ATG   ACA 
CCA     CCT     GAA     CGC     CTC     295 
                                Met   Thr Pro     Pro     Glu     Arg 
Leu 

-30 
        TTC   CTC CCA     AGG     GTG     TGT     GGC     ACC     ACC 
CTA     CAC     CTC     CTC     CTT     CTG     GGG     343 
        Phe   Leu Pro     Arg     Val     Cys     Gly     Thr     Thr 
Leu     His     Leu     Leu     Leu     Leu     Gly 
                -25   -20 -15 

        CTG   CTG CTG     GTT     CTG     CTG     CCT     GGG     GCC 
CAT     GTGAGGCAGC    AGGAGAATGG  393 
        Leu   Leu Leu     Val     Leu     Leu     Pro     Gly     Ala 
His 
        -10   -5 

        GGTGGCTCAG CCAAACCTTG AGCCCTAGAG CCCCCCTCAA CTCTGTTCTC CTAG GGG 
         450 
                                                        Gly 

        CTC   ATG CAT     CTT     GCC     CAC     AGC     AAC     CTC 
AAA     CCT     GCT     GCT     CAC     CTC     ATT     498 
        Leu   Met His     Leu     Ala     His     Ser     Asn     Leu 
Lys     Pro     Ala     Ala     His     Leu     Ile 
        1   5     10    15 

        GTAAACATCC  ACCTGACCTC      CCAGACATGT      CCCCACCAGC 
TCTCCTCCTA      CCCCTGCCTC      558 
        AGGAACCCAA  GCATCCACCC      CTCTCCCCCA      ACTTCCCCCA 
CGCTAAAAAA      AACAGAGGGA      618 
        GCCCACTCCT  ATGCCTCCCC      CTGCCATCCC      CCAGGAACTC 
AGTTGTTCAG      TGCCCACTTC      678 
        TAC   CCC AGC     AAG     CAG     AAC     TCA     CTG     CTC 
TGG     AGA     GCA     AAC     ACG     GAC     CGT     726 
        Tyr   Pro Ser     Lys     Gln     Asn     Ser     Leu     Leu 
Trp     Arg     Ala     Asn     Thr     Asp     Arg 
                20  25      30 

        GCC   TTC CTC     CAG     GAT     GGT     TTC     TCC     TTG 
AGC     AAC     AAT     TCT     CTC     CTG     GTC     774 
        Ala   Phe Leu     Gln     Asp     Gly     Phe     Ser     Leu 
Ser     Asn     Asn     Ser     Leu     Leu     Val 
                35  40      45 

        TAGAAAAAAT  AATTGATTTC      AAGACCTTCT      CCCCATTCTG 
CCTCCATTCT      GACCATTTCA      834 
        GGGGTCGTCA  CCACCTCTCC      TTTGGCCATT      CCAACAGCTC 
AAGTCTTCCC      TGATCAAGTC      894 
        ACCGGAGCTT  TCAAAGAAGG      AATTCTAGGC      ATCCCAGGGG 
ACCCACACCT      CCCTGAACCA      954 

(2) INFORMATION FOR SEQ ID NO:2: 

(i) SEQUENCE CHARACTERISTICS: 

(A)   LENGTH: 82 amino acids 

(B)   TYPE: amino acid 

(D)   TOPOLOGY: linear 

(ii) MOLECULE TYPE: protein 

(ix) FEATURE: 

(A)   NAME/KEY: signal sequence 

(B)   LOCATION: -34 to -1 

(C)   IDENTIFICATION METHOD: 
similarity to other signal sequences, 
hydrophobic 

(D)   OTHER INFORMATION: expresses 
protease 

(x) PUBLICATION INFORMATION: 

(A)   AUTHORS:  Doe, Joan X 

    Doe, John Q 

(B)   TITLE:  Isolation and Characterization of a Gene Encoding a Protease 
 from Paramecium sp. 

(C)   JOURNAL: Fictional Genes 

(D)   VOLUME: I 

(E)   ISSUE: 1 

(F)   PAGES: 1-20 

(G)   DATE: 02-MAR-1988 

(K)   RELEVANT RESIDUES IN SEQ ID   NO:2: FROM -34 TO 48 

(xi) SEQUENCE DESCRIPTION: SEQ ID NO:2: 

Met   Thr Pro     Pro     Glu     Arg     Leu     Phe     Leu     Pro 
Arg     Val     Cys     Gly     Thr     Thr 
        -30                                -25 
 -20 

Leu   His Leu     Leu     Leu     Leu     Gly     Leu     Leu     Leu 
Val     Leu     Leu     Pro     Gly     Ala 

        -15                                  -10 
 -5 

His   Gly Leu     Met     His     Leu     Ala     His     Ser     Asn 
Leu     Lys     Pro     Ala     Ala     His 


        1                             5 
   10 

Leu   Ile Tyr     Pro     Ser     Lys     Gln     Asn     Ser     Leu 
Leu     Trp     Arg     Ala     Asn     Thr 
15  20                                  25 
   30 

Asp   Arg Ala     Phe     Leu     Gln     Asp     Gly     Phe     Ser 
Leu     Ser     Asn     Asn     Ser     Leu 


        35                                   40 
    45 

Leu   Val 


2432    Sequence Listing Headings 


A complete listing of abbreviated headings for all items of information is 
 provided below.  After the heading for each item in the "Sequence 
Listing,"  the appropriate information or a yes/no answer should be 
provided.  Where "SEQ  ID NO:X" appears, the appropriate sequence 
identification number should be  provided for X. 

(1) GENERAL INFORMATION: 

(i) APPLICANT: 

(ii) TITLE OF INVENTION: 

(iii) NUMBER OF SEQUENCES: 

(iv) CORRESPONDENCE ADDRESS: 

(A)   ADDRESSEE: 

(B)   STREET: 

(C)   CITY: 

(D)   STATE: 

(E)   COUNTRY: 

(F)   ZIP: 

(v) COMPUTER READABLE FORM: 

(A)   MEDIUM TYPE: 

(B)   COMPUTER: 

(C)   OPERATING SYSTEM: 

(D)   SOFTWARE: 

(vi) CURRENT APPLICATION DATA : 

(A)   APPLICATION NUMBER: 

(B)   FILING DATE: 

(C)   CLASSIFICATION: 

(vii) PRIOR APPLICATION DATA: 

(A)   APPLICATION NUMBER: 

(B)   FILING DATE: 

(viii) ATTORNEY/AGENT INFORMATION: 

(A)   NAME: 

(B)   REGISTRATION NUMBER: 

(C)   REFERENCE/DOCKET NUMBER: 

(ix) TELECOMMUNICATION INFORMATION: 

(A)   TELEPHONE: 

(B)   TELEFAX: 

(C)   TELEX: 

2) INFORMATION FOR SEQ ID NO: X: 

(i) SEQUENCE CHARACTERISTICS: 

(A)   LENGTH: 

(B)   TYPE: 

(C)   STRANDEDNESS: 

(D)   TOPOLOGY: 

(ii) MOLECULE TYPE: 

(iii) HYPOTHETICAL: 

(iv) ANTI-SENSE: 

(v) FRAGMENT TYPE: 

(vi) ORIGINAL SOURCE: 

(A)   ORGANISM: 

(B)   STRAIN: 

(C)   INDIVIDUAL ISOLATE: 

(D)   DEVELOPMENTAL STAGE: 

(E)   HAPLOTYPE: 

(F)   TISSUE TYPE: 

(G)   CELL TYPE: 

(H)   CELL LINE: 

(I)   ORGANELLE: 

(vii) IMMEDIATE SOURCE: 

(A)   LIBRARY: 

(B)   CLONE: 

(viii) POSITION IN GENOME: 

(A)   CHROMOSOME/SEGMENT: 

(B)   MAP POSITION: 

(C)   UNITS: 

(ix) FEATURE: 

(A)   NAME/KEY: 

(B)   LOCATION: 

(C)   IDENTIFICATION METHOD: 

(D)   OTHER INFORMATION: 

(x) PUBLICATION INFORMATION: 

(A)   AUTHORS: 

(B)   TITLE: 

(C)   JOURNAL: 

(D)   VOLUME: 

(E)   ISSUE: 

(F)   PAGES: 

(G)   DATE: 

(H)   DOCUMENT NUMBER: 

(I)   FILING DATE: 

(J)   PUBLICATION DATE: 

(K)   RELEVANT RESIDUES : 

(xi) SEQUENCE DESCRIPTION: SEQ ID NO:X: 


2433    Sequence Listing Headings for Mandatory Items 


The Sequence Listing headings for all mandatory items are  listed below. 
It  can be seen from this somewhat limited list of information items that 
full  copliance with the rules can be readily achieved by focusing on the 
mandatory  information items. 

(1) GENERAL INFORMATION: 

(i) APPLICANT: 

(ii) TITLE OF INVENTION: 

(iii) NUMBER OF SEQUENCES: 

(i) APPLICANT:      Doe, Joan X 

(iv) CORRESPONDENCE ADDRESS: 

(A)   ADDRESSEE: 

(B)   STREET: 

(C)   CITY: 

(D)   STATE: 

(E)   COUNTRY: 

(F)   ZIP: 

(v) COMPUTER READABLE FORM: 

(A)   MEDIUM TYPE: 

(B)   COMPUTER: 

(C)   OPERATING SYSTEM: 

(D)   SOFTWARE: 

(vi) CURRENT APPLICATION DATA (If otherwise, heading should still be 
supplied): 
(A)   APPLICATION NUMBER: 

(B)   FILING DATE: 

(C)   CLASSIFICATION: 

(vii) PRIOR APPLICATION DATA (If applicable): 

(A)   APPLICATION NUMBER: 

(B)   FILING DATE: 

2) INFORMATION FOR SEQ ID NO: X: 

(i) SEQUENCE CHARACTERISTICS: 

(A)   LENGTH: 

(B)   TYPE: 

(C)   STRANDEDNESS: 

(D)   TOPOLOGY: 

(xi) SEQUENCE DESCRIPTION: SEQ ID NO:X: 



Contents 

2501        Introduction 

2504        Patents Subject to Maintenance Fees 

2506        Times for Submitting Maintenance Fee Payments 

2510        Mailing Address for Maintenance Fee Documents 

2511        Submission of Maintenance Fee Documents by 
            Facsimile 

2515        Information Required for Submission of Maintenance Fee 
            Payment 

2520        Maintenance Fee Amounts 

2522        Methods of Payment 

2530        Informalities 

2540        Fee Address for Maintenance Fee Purposes 

2542        Change of Correspondence Address 

2550        Small Entity Status 

2560        Revocation of Power of Attorney and Withdrawal of 
            Attorney 

2570        Status Requests 

2575        Notices 

2580        Review of Decision Refusing to Accept and Record 
            Payment of a Maintenance Fee Filed Prior to Expiration 
            of Patent 

2590        Acceptance of Delayed Payment of Maintenance Fee in 
            Expired Patent to Reinstate Patent 

2591        Intervening Rights in Reinstated Patents 


2501    Introduction [R-1] 


 35 U.S.C. 41.      Patent fees; patent and trademark search systems. 
**** 

**>(b)      The Commissioner shall charge the following fees for 
maintaining  in force all patents based on applications filed on or after 
December 12, 1980: 
(1)   3 years and 6 months after grant, $650 [$990]. 

(2)   7 years and 6 months after grant, $1,310 [$1,990]. 

(3)   11 years and 6 months after grant, $1,980 [$2,990]. 

Unless payment of the applicable maintenance fee is received in the Patent 
 and Trademark Office on or before the date the fee is due or within a 
grace  period of six months thereafter, the patent will expire as of the 
end of such  grace period. The Commissioner may require the payment of a 
surcharge as a  condition of accepting within such six-month grace period 
the late payment  of the applicable maintenance fee. No fee will be 
established for maintaining  a design or plant patent in force.< 

Note:  Under 35 U. S. C. 41 (f), the amounts of the fees have been 
increased  by rule effective October 1, *>1995< to the bracketed amounts; 
see 37 CFR 1.20 
(e) - (g) for current fee amounts. 

**>(c)(1) The Commissioner may accept the payment of any maintenance fee 
required  by subsection (b) of this section which is made within 
twenty-four months after  the six-month grace period if the delay is shown 
to the satisfaction of the  Commissioner to have been unintentional, or at 
any time after the six-month  grace period if the delay is shown to the 
satisfaction of the Commissioner  to have been unavoidable. The 
Commissioner may require the payment of a sur- charge as a condition of 
accepting payment of any maintenance fee 
after the six-month grace period. If the Commissioner accepts payment of a 
 maintenance fee after the six-month grace period, the patent shall be 
considered  as not having expired at the end of the grace period. 

(2)   A patent, the term of which has been maintained as a result of the 
acceptance of a payment of a maintenance fee under this subsection,  shall 
not abridge or affect the right of any person or that person's successors 
in business who made, purchased, offered to sell, or used anything 
protected  by the patent within the United States, or imported anything 
protected by the  patent into the United States after the 6-month grace 
period but prior to the  acceptance of a maintenance fee under this 
subsection, to continue the use  of, to offer for sale, or to 
sell to others to be used, offered for sale, or sold, the specific thing 
so  made, purchased, offered for sale, used, or imported.  The court 
before which  such  matter is in question may provide for the continued 
manufacture, use,  offer for sale, or sale of the thing made, purchased, 
offered for sale, or  used within the United States, or imported into the 
United States, as specified,  or for the manufacture, use, offer for sale, 
or sale in the United States of which substantial  preparation was made 
after the 6-month grace period but before the acceptance of a maintenance 
fee under this subsection, and the court may also pro- 
vide for the continued practice of any process that is practiced, or for 
the practice of which substantial preparation was made, after the 6-month 
grace  period but before the acceptance of a maintenance 
fee under this subsection, to the extent and under such terms as the court 
deems equitable for the protection of investments made or business 
commenced  after the 6-month grace period but before the acceptance of a 
maintenance fee  under this subsection.< 

Public Law 96-517, enacted December 12, 1980, 
established the requirement to pay maintenance fees for applications filed 
 on or after that date. The statutory provisions regarding maintenance 
fees  have been subsequently modified by Public Law 97-247, enacted August 
27, 1982;  Public Law 98-622, enacted November 8, 1984; Public Law 
102-204, enacted December  10, 1991; and Public Law 102-444, enacted 
October 23, 1992. 

Patent Maintenance Division 

The Patent Maintenance Division provides specialized advice and guidance 
to  the public on maintenance fee matters, sets policy and provides 
guidelines  to the Entity and Status Branch. 

The Entity and Status Branch determines the proper status of issued 
patents  which are subject to payment 
of maintenance fees; receives and processes fee 
transmittals; determines small entity status; responds to public inquiries 
 on post-issuance status and maintenance fees; determines if patents have 
expired  and/or can be revived; and determines if maintenance fees are 
timely and properly  computed. This Branch also 
produces Official Gazette notices of maintenance fees  due  and  of 
expiration  of  patents due to failure to pay maintenance fee addresses in 
a patent post-issuance automated file. 
Office of Public Records Dissemination Support Division 
Records Maintenance Branch 

The Records Maintenance Branch updates patent post issuance automated 
files  using the following information: 

(1)   Change of Address 

(2)   Powers of Attorney and Revocations Thereof 

(3)   Withdrawals of Attorneys and Agents 

(4)   Small Entity Status 

The official mailing address for submitting requests to update all 
post-issuance  patent information is: 

Commissioner of Patents and Trademarks 

ATTN:  Office of Public Records 

Dissemination Support Division 

North Tower 10B10 

Washington, D.C. 20231 


2504    Patents Subject to Maintenance Fees 


37 CFR 1.362. Time for payment of maintenance fees. 

(a)   Maintenance fees as set forth in w 1.20(e) through (g) are required 
to  be paid in all patents based on applications filed on or after 
December 12,  1980, except as noted in paragraph (b) of this section, to 
maintain a patent  in force beyond 4, 8, and 12 years after the date of grant. 

(b)   Maintenance fees are not required for any plant patents or any 
design  patents. Maintenance fees are not required for a reissue patent if 
the patent  being reissued did not require maintenance fees. 

(c)   The application filing dates for purposes of payment of maintenance 
fees  are as follows: 

(1)   For an application not claiming benefit of an earlier application, 
the  actual United States filing date of the application. 

(2)   For an application claiming benefit of an earlier foreign 
application  under 35 U.S.C. 119, the United States filing date of the 
application. 
(3)   For a continuing (continuation, division, continuation-in-part) 
application  claiming the benefit of a prior patent application under 35 
U.S.C. 120, the  actual United States filing date of the continuing 
application. 

(4)   For a reissue application, the United States filing date of the 
original  non-reissue application on which the patent reissued is based. 

(5)   For an international application which has entered the United States 
 as a Designated Office under 35 U.S.C. 371, the international filing date 
granted  under Article 11 (1) of the Patent Cooperation Treaty which is 
considered to  be the United States filing date under 35 U.S.C. 363. 

(d)   Maintenance fees may be paid in patents without surcharge during the 
 periods extending respectively from: 

(1)   3 years through 3 years and 6- months after grant for the first 
maintenance  fee, 

(2)   7 years through 7 years and 6 months after grant for the second 
maintenance  fee, and 

(3)   11 years through 11 years and 6 months after grant for the third 
maintenance  fee. 

(e) Maintenance fees may be paid with the surcharge set forth in w 1.20(h) 
 during the respective grace periods after: 

(1)   3 years and 6 months and through the day of the 4th anniversary of 
the  grant for the first maintenance fee, 

(2)   7 years and 6 months and through the day of the 8th anniversary of 
the  grant for the second maintenance fee, and 

(3)   11 years and 6 months and through the day of the 12th anniversary of 
 the grant for the third maintenance fee. 

(f)   If the last day for paying a maintenance fee without surcharge set 
forth  in paragraph (d) of this section, or the last day for paying a 
maintenance  fee with surcharge set forth in paragraph (e) of this 
section, falls on a Saturday,  Sunday, or a federal holiday within the 
District of Columbia, the maintenance  fee and any necessary surcharge may 
be paid under paragraph (d) or paragraph 
(e) respectively on the next succeeding day which is not a Saturday, 
Sunday,  or federal holiday. 

(g)   Unless the maintenance fee and any applicable surcharge is paid 
within  the time periods set forth in paragraphs (d), (e), or (f) of this 
section,  the patent will expire as of the end of the grace period set 
forth in paragraph 
(e) of this section. A patent which expires for the failure to pay the 
maintenance  fee will expire at the end of the same date (anniversary 
date) the patent was  granted in the 4th, 8th, or 12th year after grant. 

Maintenance fees are required to be paid on all patents based on 
applications  filed on or after December 12, 1980, except for plant 
patents and design patents.  Furthermore, maintenance fees are not 
required for a 
reissue patent if the patent being reissued did not require maintenance 
fees. 
Application filing dates for purposes of determining whether or not a 
patent  is subject to payment of maintenance fees are as follows: 

(1) For an application not claiming benefit of an earlier application, the 
 actual United States filing date of the application. 

(2) For an application claiming benefit of an earlier foreign application 
under  35 U.S.C. 119, the actual United States filing date of the 
application. 
(3) For a continuing (continuation, division, continuation-in-part) 
application  claiming the benefit of a prior patent application under 35 
U.S.C. 120, the  actual United States filing date of the continuing 
application. 

(4) For a reissue application, including a continuing reissue application 
claiming  the benefit of a reissue 
application under 35 U.S.C. 120, the United States filing date of the 
original  nonreissue application on which the patent reissued is based. 

(5) For an international application that has entered the United States as 
 a Designated Office under 
35 U.S.C.  371,  the  international  filing   date   granted 
under Article 11(1) of the Patent Cooperation Treaty which is considered 
to  be the United States filing date under 35 U.S.C. 363. 


2506    Times for Submitting Maintenance Fee Payments 


37 CFR 1.362(d) sets forth the time periods when the maintenance fees for 
a  utility patent can be paid without surcharge.  Those periods, referred 
to generally  as the "window period," are the 6-month periods preceding 
each due date. The  "due dates" are defined in 35 U.S.C. 41(b).  The 
window periods are (1) 3 years  to 3 1/2 years after the date of issue for 
the first maintenance fee payment, 
(2) 7 years to 7 1/2 years after the date of issue for the second 
maintenance  fee payment, and (3) 11 years to 11 1/2 years after the date 
of issue for the  third and final maintenance fee payment.   A maintenance 
fee paid on the last  day of a window period can be paid without 
surcharge.  The last day of a window  period is the same day of the month 
the patent was granted 3 years and 6- months,  7 years and 6 months, or 11 
years and 6 months after grant of the patent. 
37 CFR 1.362(e) sets forth the time periods when the maintenance fees for 
a  utility patent can be paid with surcharge.  Those periods, referred to 
generally  as the "grace period," are the 6-month periods immediately 
following each due  date.  The grace periods are (1) 3 1/2 years and 
through the day of the 4th  anniversary of the grant of the patent, (2) 7 
1/2 years and through the day  of the 8th anniversary of the grant of the 
patent and, (3) 11 1/2 years and  through the day of the 12th anniversary 
of the grant of the patent. A maintenance  fee may be paid with the 
surcharge on the same date (anniversary date) the  patent was granted in 
the 4th, 8th, or 12th year after grant to prevent the  patent from expiring. 

Maintenance fees for a reissue patent are due based upon the schedule 
established  for the original utility 
patent. 

If the day for paying a maintenance fee falls on a 
Saturday, Sunday, or a Federal holiday within the 
District of Columbia, the maintenance fee may be paid on the next 
succeeding  day that is not a Saturday, Sunday, or Federal holiday.   For 
example, if the  window period for paying a maintenance fee without a 
surcharge ended on a Saturday,  Sunday, or a Federal holiday within the 
District of Columbia, the maintenance  fee can be paid without surcharge 
on the next succeeding day that is not a  Saturday, Sunday, or a Federal 
holiday within the District ofColumbia.  Likewise,  if the grace period 
for paying a maintenance fee with a surcharge ended on  a Saturday, 
Sunday, or a Federal holiday within the 
District of Columbia, the maintenance fee can be paid with surcharge on 
the  next succeeding day that is not a Saturday, Sunday, or a Federal 
holiday within  the District of Columbia.  In the latter situation, the 
failure to pay the  maintenance fee and surcharge on the next succeeding 
day that is not a Saturday,  Sunday, or a Federal holiday within the 
District of Columbia will result in  the patent expiring on a date (4, 8, 
or 12 years after the date of grant) earlier  than the last date on which 
the maintenance fee and surcharge could be paid. 
 This situation results from the provisions of 35 U.S.C. 21, but 
thoseprovisions  do not extend the expiration date of the patent if the 
maintenance fee and  any required surcharge are not paid when required. 
For example, if the grace  period for paying a maintenance fee with a 
surcharge ended on a Saturday, the  maintenance fee and surcharge could be 
paid on the next succeeding business  day; e.g., Monday, but the patent 
will have expired at midnight on Saturday  if the maintenance fee and 
surcharge were not paid on the following Monday. 
 Therefor, if the maintenance fee and any applicable surcharge are not 
paid,  the patent will expire as of the end of the grace period as listed 
above.   A patent that expires for failure of payment will expire on the 
anniversary  date the patent was granted in the 4th, 8th, or 12th year 
after the grant. 

2510    Mailing Address for Maintenance Fee Documents 


The mailing address for all communications concerning maintenance fee 
payments  is: 

Commissioner of Patents and Trademarks 

Box M Fee 

Washington, D.C.  20231 

37 CFR 1.366(b) provides that the certificate of mailing procedures of 37 
CFR  1.8 or the mailing by 
"Express Mail" provisions of 37 CFR 1.10 may be utilized in paying 
maintenance  fees.  The specific requirements of either 37 CFR 1.8 or 1.10 
must be fully  complied with if the benefits of either are desired.  See MPEP 
w 512 and w 513. 


2511    Submission of Maintenance Fee Documents by Facsimile 


Payment of a maintenance fee is accepted via facsimile, when charged to a 
deposit  account.  In addition, 
requests pertaining to post-issuance documents, such as change of 
correspondence  address, assignment of fee address, etc., may be submitted 
by facsimile. 
37 CFR 1.366(b) provides that the certificate of transmission procedure of 
 37 CFR 1.8 may be utilized in paying maintenance fees.  The specific 
requirements  of 37 CFR 1.8 must be fully complied with if the benefits 
thereof are desired. 

2515    Information Required for Submission of Maintenance Fee Payment 

37 CFR 1.366. Submission of maintenance fees. 

(a)   The patentee may pay maintenance fees and any necessary surcharges, 
or  any person or organization may pay maintenance fees and any necessary 
surcharges  on behalf of a patentee.  Authorization by the patentee need 
not be filed in  the Patent and Trademark Office to pay maintenance fees 
and any necessary surcharges  on behalf of the patentee. 

(b)   A maintenance fee and any necessary surcharge submitted for a patent 
 must be submitted in the amount due on the date the maintenance fee and 
any  necessary surcharge are paid and may be paid in the manner set forth 
in w 1.23  or by an authorization to charge a deposit account established 
pursuant to  w 1.25. Payment of a maintenance fee and any necessary 
surcharge or the authorization  to charge a deposit account must be 
submitted within the periods set forth  in w 1.362(d), (e), or (f). Any 
payment or authorization of maintenance fees  and surcharges filed at any 
other time will not be accepted and will not serve  as a payment of the 
maintenance fee except insofar as a delayed payment of  the maintenance 
fee is accepted by the Commissioner in an expired patent pursuant  to a 
petition filed under w 1.378. Any authorization to charge a deposit 
account  must authorize the immediate charging of the maintenance fee and 
any necessary  surcharge to the deposit account. Payment of less than the 
required amount,  payment in a manner other than that set forth in w 1.23, 
or the filing of an  authorization to charge a deposit account having 
insufficient funds will not  constitute payment of a maintenance fee or 
surcharge on a patent.  The certificate  procedures of either w 1.8 or w 
1.10 may be utilized in paying maintenance  fees and any necessary surcharges. 

(c)   In submitting maintenance fees and any necessary surcharges, 
identification  of the patents for which maintenance fees are being paid 
must include the following: 

(1)   The patent number, and 

(2)   The serial number of the United States application for the patent on 
 which the maintenance fee is being paid. 

(d)   Payments of maintenance fees and any surcharges should identify the 
fee  being paid for each patent as to whether it is the 3 1/2, 7 1/2, or 
11 1/2  year fee, whether small entity status is being changed or claimed, 
the amount  of the maintenance fee and any surcharge being paid, any 
assigned payor number,  the patent issue date, and the United States 
application filing date. If the  maintenance fee and any necessary 
surcharge is being paid on a reissue patent,  the payment must identify 
the reissue patent by reissue patent number and reissue  application 
serial number as required by paragraph (c) of this section and  should 
also include the original patent number, the original patent issue date 
and the original United States application filing date. 

(e)   Maintenance fee payments and surcharge payments relating thereto 
must  be submitted separate from any other payments for fees or charges, 
whether  submitted in the manner set forth in  w 1.23 or by an 
authorization to charge  a deposit account. If maintenance fee and 
surcharge payments for more than  one patent are submitted together, they 
should be submitted on as few sheets  as possible with the patent numbers 
listed in increasing patent number order.  If the payment submitted is 
insufficient to cover the main- tenance fees and  surcharges for all the 
listed patents, the payment will be applied in the order  the patents are 
listed, beginning at the top of the listing. 

(f)   Notification of any change in status resulting in loss of 
entitlement  to small entity status must be filed in a patent prior to 
paying, or at the  time of paying, the earliest maintenance fee due after 
the date on which status  as a small entity is no longer appropriate. See 
w 1.28(b). 

(g)   Maintenance fees and surcharges relating thereto will not be 
refunded  except in accordance with ww 1.26 and 1.28(a). 

37 CFR 1.366 establishes the guidelines and procedures for submission of 
maintenance  fees, including any necessary surcharges. The patentee may 
pay maintenance  fees and any necessary surcharges or any person or 
organization may pay maintenance  fees and any necessary surcharges on 
behalf of the patentee without filing  in the Office evidence of 
authorization by the patentee to pay maintenance  fees.  This will enable 
patentees to pay the maintenance fees and any necessary  surcharges 
themselves or authorize some person or organization to  pay maintenance 
fees and any necessary surcharges on their behalf. No verification of the 
authority  to pay maintenance fees and any necessary surcharges in a 
particular patent  will be made by the Office. While anyone may pay the 
maintenance fees and any  necessary surcharges on a patent, any Office 
notices relating to maintenance  fees will be mailed to the "fee address" 
set forth in 37 CFR 1.363. 
A maintenance fee and any necessary surcharge for a patent must be 
submitted  in the amount due on the date the maintenance fee and any 
necessary surcharge  are paid, and at the proper time; i.e., within the 
periods set forth in 37  CFR 1.362.   If the amount of the maintenance fee 
is correct on the date it  is paid and credited to the patent, a later 
change in the maintenance fees  to reflect a new fee amount will not 
require a modification in the amount paid.  However, in order for the 
maintenance fee to be considered paid, it must be submitted in accordance 
with 37 CFR 1.366. 
Maintenance fee payments and any necessary surcharges must include the 
Patent  Number and the Application/Serial Number as required by 37 CFR 
1.366(c).  The  serial number required to be submitted is not that of a 
prior parent application,  but rather the actual application that matured 
into the patent for which maintenance  fees are to be paid.  If the 
maintenance fee is being paid on a reissue patent,  the serial number 
required is that of the reissue application. Since this required 
information will be used as a cross-check to ensure that the maintenance 
fee  is properly credited, the application serial number must correspond 
to the  patent that issued therefrom.  If less than the required 
information is submitted,  the Office will not credit the payment. 
Additionally, if notice is required  that the proper identifying data has 
not been submitted, it would result in  requiring the payment of a 
surcharge if the necessary data is submitted after  the window period 
closes. If the required information is not submitted until  after the end 
of the grace period, the patent would have expired  because of  the 
failure to properly identify the patent to which the maintenance fee 
payment  is to be credited prior to the expiration of the grace period. 
The patentee  in such circumstance could proceed under 37 CFR 1.378 (see 
MPEP w 2590), if  appropriate, or could file a petition under 37 CFR 1.377 
(see MPEP w 2580)  within the period set therein seeking to have the 
maintenance fee accepted  as timely even though all of the required 
identifying data was not present  prior to expiration of the grace period. 

Under 37 CFR 1.366(d), the following information should also be submitted 
for  each patent on which a maintenance fee or surcharge is paid (37 CFR 
1.366(d)): 
(1) the United States Application Filing Date, (2) the 
Issue Date, (3) the Fee Year (e.g., 3#, 7#, or 11# year fee), (4) the 
amount  of the maintenance fee and any 
surcharge being submitted, (5) any assigned payor number, and (6) whether 
small  entity  status  is  being  changed or claimed with the payment. 
Where the payment  is a maintenance fee and any necessary surcharge on a 
reissue patent, in addition  to the information 
requested for all payments, it is requested that the original patent 
number,  original issue date, and the original U.S. application filing 
date be furnished. 
 The reason for requesting this additional information is that the 
original issue date and the original U.S. application filing date  are the 
 dates that control if and when maintenance fees must be paid to prevent 
the  reissue patent from 
expiring.  Although the submission of the information requested under 37 
CFR  1.366(d) is not mandatory, it would expedite the processing of 
maintenance  fee payments.  In addition, the indication of the fee code 
used by the Office  would assist in proper financial crediting of the 
maintenance fee within the  Office.  It is also 
suggested that the telephone number of the person submitting the 
maintenance  fee be supplied. 

The required information is considered to be the least that can be 
required  to make a cross-check and thus ensure that the maintenance fee 
is being credited  to the proper patent.  An error in either the patent 
issue date or the application  filing date, or both, by the person paying 
the maintenance fee would not result  in a refusal to accept the 
maintenance fee and to credit the payment thereof  to the patent, if the 
patent number and the U.S. application serial number  were correct; i.e., 
in agreement. However, if any error included either the  patent number or 
the U.S. application serial number such that they were not  in agreement, 
the payment would not be accepted and credited until correction  was made. 
 The date of the correction would be the date the maintenance fee  payment 
is credited as being made. 

The    Maintenance    Fee Transmittal Form, PTO/SB/45, is suggested when 
submitting  maintenance fees. This form is available, upon request, from 
the Patent Maintenance  Division. 

The Office processes fees in the order in which they are presented. If 
payment  submitted is insufficient to cover the maintenance fees and 
surcharges for  all 
patents listed, and there is no authorization to charge a deposit account, 
 the payment will be applied in the order the patents are listed, 
beginning  at the top of the listing. 


2520    Maintenance Fee Amounts 


37 CFR 1.20(e)-(h) sets the fee amounts for the maintenance fees and the 
grace  period surcharge.  The maintenance fee amounts are subject to 
adjustment to  reflect fluctuations occurring in the Consumer Price 
Index pursuant to 35 U.S.C. 41(f).  The maintenance fee amounts (37 CFR 
1.20(e)-(h))  are subject to a 50% 
reduction for small entities pursuant to 35 U.S.C. 41(h).  The Patent 
Maintenance  Division may be contacted for the current maintenance fee 
amounts. 
37 CFR 1.366(g) provides that maintenance fees and surcharges relating 
thereto  will not be refunded except  in accordance with 37 CFR 1.26 and 
1.28(a).  A  patentee cannot obtain a refund of a maintenance fee which 
was due and payable  on the patent.  Any duplicate payment will be 
refunded to the fee address. 

2522    Methods of Payment 


The maintenance fee and any necessary surcharge may be paid in the manner 
set  forth in 37 CFR 1.23; i.e., it should be in United States specie 
(e.g., cash),  Treasury notes, national bank notes, post office money 
orders, or by certified  check As indicated in 37 CFR 1.23, if the 
maintenance fee and any necessary  surcharge is sent in any other form, 
the Office may delay or cancel the credit  until collection is made.  For 
example, a personal or other uncertified check  drawn on a U.S. bank that 
is not immediately negotiable; e.g., because of a  lack of a signature or 
insufficient funds, will not constitute payment of a  maintenance fee 
and/or surcharge. Any remittance from a foreign country must  be payable 
and immediately negotiable in the United States for the full amount  of 
the maintenance fee and/or surcharge required. 

37 CFR 1.366(b) provides that maintenance fees and any necessary surcharge 
 may be paid by authorization to charge a deposit account established 
pursuant  to 37 CFR 1.25.  The authorization to charge the deposit account 
must be submitted  within an appropriate window or grace period and must 
be limited to maintenance  fees and surcharges payable on the date of 
submission.  The authorization to  charge the deposit account cannot be 
submitted prior to the third, seventh,  or eleventh year after grant of 
the patent.  If an authorization to charge  a deposit account were 
submitted to pay the maintenance due at 3 years and  6 months after grant, 
a new authorization to charge a deposit account or other  form of payment 
will have to be submitted at the appropriate time for each  of the 
maintenance fees due at 7 years and 6 months and 11 years and 6 months. 
 Any payment or authorization filed at any time other than that set forth 
in  37 CFR 1.362(d), (e), or (f) will not serve as a payment of the 
maintenance  fee, except insofar as a delayed payment of the maintenance 
fee is accepted  by the Commissioner pursuant to 37 CFR 1.378.   See MPEP 
w 2590. A payment  of less than the required amount, a payment in a manner 
other than that set  forth in 37 CFR 1.23, or the filing of an 
authorization to charge a deposit  account having insufficient funds, will 
not constitute payment of a maintenance  fee on a patent.  The 
authorization is required to authorize the immediate  charging of the 
maintenance fee to the deposit account.  An authorization would  be 
improper if it only authorized the maintenance  fee to be charged at a 
later  date; e.g., on the last pos-sible day of payment without surcharge. 
 Such an  authorization would not serve as payment of the maintenance fee. 
 Any payment  which fails to result in the entire proper amount of the 
maintenance fee being  present on the due date will not constitute payment 
of the maintenance fee. 
Maintenance fee payments and any surcharges relating thereto must be 
submitted  separate from any other payments for fees or charges, whether 
submitted in  the manner set forth in 37 CFR 1.23 or by authorization to 
charge a deposit  account, 37 CFR 1.366(e). Maintenance fee payments and 
surcharge payments relating  thereto that are comingled with payments for 
other fees or charges; e.g., application  filing fees, issue fees, 
document supply fees, etc., will not be accepted. 
 Maintenance fees require processing by a separate area of the Office and 
are  not processed in the same manner as other fees and charges. 
Maintenance fees  for a number of patents can be submitted together in one 
submission and one  payment.  37 CFR 1.366(e) specifies  that if 
maintenance fee payments for more  than one patent are submitted together, 
they should be submitted on as few  sheets as possible, listing the patent 
numbers in increasing patent number  order.  If the payment submitted is 
insufficient to cover the maintenance fees  and any surcharges for all the 
listed patents, the payment will be applied  in the order the patents are 
listed. In such a circumstance where the fees  are insufficient, the 
maintenance fee and any surcharge for one or more of  the last listed 
patents will not be paid. 

Money orders and checks must be made payable to the Commissioner of 
Patents  and Trademarks.  Remittances from foreign countries must be 
payable and immediately  negotiable in the United States for the full 
amount required. 

It is not suggested that cash be sent by mail.  However, if cash is sent 
it  will be at the risk of the sender and should be sent via registered 
mail. 

2530    Informalities 


Informalities in the payment of maintenance fees occur when: 

(1) Payment was received without the patent and 
application serial number, (2) Payment was received with an incorrect 
patent  or application serial number, (3) Payment for a reissue patent was 
received  and the reissue patent number and/or the reissue application 
serial number  was not provided, (4) Payment was received; however, 
additional funds are required  due to surcharge or fee increase, (5) 
Payment was received in an amount for  small entity; however, records do 
not indicate a statement claiming small entity  was received, or (6) 
Payment was received after the patent expired. 
If an informality occurs, notice will be sent to the party submitting the 
maintenance  fee provided the grace period provided by 37 CFR 1.362(e) has 
not expired. 
  Response to the informality is required prior to expiration of the grace 
 period in order to avoid the expiration of the patent.  If a response is 
not  received prior to expiration of the patent, then an appropriate 
petition under  37 CFR 1.377 or 1.378 is  required.  See MPEP w 2580 and w 
2590. 


2540    Fee Address for Maintenance Fee  Purposes 


37 CFR 1.363. Fee address for maintenance fee purposes. 

(a)   All notices, receipts, refunds, and other communications relating to 
 payment or refund of maintenance fees will be directed to the 
correspondence  address used during prosecution of the application as 
indicated in w 1.33(a)  unless: 

(1)   A "fee address" for purposes of payment of maintenance fees is set 
forth  when submitting the issue fee, or 

(2)   A change in the correspondence address for all purposes is filed 
after  payment of the issue fee, or 

(3)   A "fee address" or a change in the "fee address" is filed for 
purposes  of receiving notices, receipts and other correspondence relating 
to the payment  of maintenance fees after the payment of the issue fee, in 
which instance,  the latest such address will be used. 

(b)   An assignment of a patent application or patent does not result in a 
 change of the "correspondence address" or "fee address" for maintenance 
fee  purposes. 

All notices, receipts, refunds and other communications relating to the 
payment  or refund of a maintenance fee will be directed to the 
correspondence address  used during the prosecution of the application, 
unless a "fee address" for  the purpose of payment of the maintenance fee 
has been designated or a change  in the correspondence address has been 
made (see MPEP w 2542). 
37 CFR 1.33(d) allows a correspondence address or change thereto to be 
filed  during the enforceable life of the patent.  Due to the possible 
expiration  of a patent for failure to timely pay a required maintenance 
fee, patentees  should ensure that the Office is properly notified of the 
proper "fee address"  to which all maintenance fee communications are to 
be directed. 

Under the statutes and regulations, the Office has no duty to notify 
patentee  of the requirement to pay maintenance fees or to notify patentee 
when the maintenance  fee is due.  It is solely the responsibility of the 
patentee to ensure that  the maintenance fee is paid timely to prevent 
expiration of the patent.  The  failure to receive the reminder notice 
will not shift the burden of monitoring  the time for paying a maintenance 
fee from the patentee to the Office.  The  Office will attempt to assist 
patentees through the mailing of a Maintenance  Fee Reminder in the grace 
period.  However, the failure to receive a Maintenance  Fee Reminder will 
not relieve the patentee of the obligation to timely pay  the appropriate 
maintenance  fee to prevent expiration of the patent, nor will 

it constitute unavoidable delay if the patentee seeks to reinstate the 
patent  under 37 CFR 1.378(b); see In re Patent No. 4,409,763, 7 USPQ2d 
1798 (Comm'r  Pat. 1988), aff'd Rydeen v. Quigg, 748 F. Supp. 900, 16 
USPQ2d 1876 (D.D.C.  1990), aff'd without opinion (Rule 36), 937 F.2d 623 
(Fed. Cir. 1991), cert.  denied 60 U.S.L.W. 3520 
(January 27, 1992).   Maintenance fee correspondence will not be directed 
to  more than one address. 

When a request to designate a fee address is received, it will be assigned 
 a "Payor Number," if the requester currently has no "Payor Number" 
assigned. 
 Requests for the creation of a "Payor Number" should include the name 
(company  or individual), an attention line if applicable, street address, 
city, state,  zip code, and the area code and telephone number.  A "Payor 
Number" is assigned  to each "fee address" in order to facilitate data 
input and subsequent changes in the location of the "fee address." 
The "Fee Address" Indication Form, PTO/SB/47, and the Request for Payor 
Number  Form, PTO/SB/46, are suggested when requesting establishment of a 
"Fee Address"  or the assignment of a "Payor Number." These 

forms are available,upon request, from the Patent Maintenance Division. 
Requests  for the establishment of a "Fee Address" or the  assignment of a 
patent to  a "Payor Number" should be submitted to the Patent Maintenance 
Division prior  to or at the time of payment of maintenance fees in order 
to ensure that receipt  of payment is directed to the fee address. 

Additional patent numbers may be assigned to a "Payor Number" at any time, 
 with a written request. 

The "Payor Number" of the Fee Address should be referred to on all future 
maintenance  fee payments in 
order to expedite the payment. 


2542    Change of Correspondence Address 


Unless a fee address has been designated, all notices, receipts, refunds, 
and  other communications relating to the patent will be directed to the 
correspondence  address used during the prosecution of the application. 
Practitioners of record  when the patent issues who do not wish to receive 
correspondence relating to  maintenance fees must change the 
correspondence address in the patented file  or provide a fee address to 
which such correspondence should be sent.  It is  not required that a 
practitioner file a request for permission to withdraw  pursuant to 37 CFR 
1.36 solely for the purpose of changing the correspondence  address in a 
patented file, even though a withdrawal of a practitioner would  change 
the correspondence address. 

The correspondence address should be updated or changed as necessary to 
ensure  that all communications are received in a timely manner.  A change 
of correspondence  address may be made by the inventors named in the 
patent, an attorney or agent  of record, or by the 
assignee complying with 37 CFR 3.73(b). 

Requests for a change of the correspondence address may be sent to the 
Office  of Public Records, Dissemination Support Division, Records 
Maintenance Branch  during the enforceable life of the patent.  To ensure 
accuracy and to expedite  requests for change to the correspondence 
address, it is suggested that the  request include both the patent number 
and the application serial number. 

2550    Small Entity Status 


In order to claim small entity status for the purpose of paying a 
maintenance  fee, a verified statement must be filed prior to or with the 
maintenance fee  paid as a small entity.  A verified statement is only 
required to be filed  once and will remain effective until changed. 

37 CFR 1.366(f) serves as a reminder to patentees of the necessity to 
check  for the loss of small entity status prior to paying each 
maintenance fee on  a patent.  This is also a requirement of 37 CFR 
1.28(b).  The notification  of any change in status resulting in loss of 
entitlement to small entity status  must be filed in a patent prior to 
paying, or at the time of paying, the earliest  maintenance fee due after 
the date on which status as a small entity is no  longer appropriate.  If 
status as a small entity has been previously established  by filing a 
statement and such status is checked and found to be proper, no 
notification is required.  It is not necessary to file new verified 
statements  claiming small entity status at this point if the status as a 
small entity  has been established and is still proper even if rights have 
been transferred  to a small entity who has not previously filed a 
verified statement. The requirement  is to notify the Office of the loss 
of entitlement and to pay the maintenance  fee in the proper amount for 
other than a small entity where appropriate. The  refund provisions of 37 
CFR 1.28(a) for later submitted small entity statements  does apply to 
maintenance fees. 


2560    Revocation of Power of Attorney and Withdrawal of Attorney 

The revocation or withdrawal of an attorney may be submitted at any time; 
however,  it is recommended that it be done well prior to the date a 
maintenance fee  is due. 

When processing a revocation of a power of attorney, the Office of Public 
Records,  Dissemination Support Division, Records Maintenance Branch 
forwards copies  of the completed action to the requester and the attorney 
being removed.  Also,  a  copy  is  placed  in  the  patent  file wrapper. 

When processing a withdrawal of an attorney, the Office of Public Records, 
 Dissemination Support Division, Records Maintenance Branch forwards 
copies  of the completed action to the attorney and the patent owner. 
Also, a copy  is placed in the patent file wrapper. 

It should be noted that an assignment does not act as a revocation of 
power  of attorney for authorization previously given.  However, the 
assignee of the  entire interest may revoke a previous power of attorney.  See 
37 CFR 3.71 and 3.73. 


2570    Status Requests 


The Patent Maintenance Division will respond to requests for the status of 
 patents.  Status can be requested in person, by telephone, or by 
facsimile.  Telephone status requests are limited  to five patent numbers 
per telephone call.  In-person and facsimile requests  are limited to 30 
patent numbers. 

When requesting status of a patent, the patent and 
application serial number must be provided to the Patent Maintenance 
Division. 
The Patent Maintenance Division has a form available, for the user's 
convenience,  when submitting 
requests in person or via facsimile. 


2575    Notices 


Under the statutes and the regulations, the Office has no duty to notify 
patentees  when their maintenance fees are due.  It is the responsibility 
of the patentee  to ensure that the maintenance fees are paid to prevent 
expiration of the patent. 
 The Office will, however, provide some notices asreminders that 
maintenance  fees are due, but the notices, errors in the notices, or the 
lack of notices  will in no way relieve a patentee from the responsibility 
to make timely payment  of each maintenance fee to prevent the patent from 
expiring by operation of  law.  The notices provided by the Office will be 
merely 
courtesy in nature and intended to aid patentees.  These notices, errors 
in  these notices, or the lack of notices will in no way shift the burden 
of monitoring  the time for paying maintenance fees on patents from the 
patentee to the Office. 
Preprinted Standard Notices 

The patent grant currently includes a reminder notice that maintenance 
fees  may be due.  The Notice of Allowance currently includes a reminder 
notice that  maintenance fees may be due. 

Official Gazette Notice 

A notice will appear in each issue of the Official 
Gazette which will indicate which patents have been granted 3, 7, and 11 
years  earlier, that the window period has opened, and that maintenance 
fee payments  will now be accepted for those patents. 

Another Official Gazette notice published after expiration of the grace 
period  will indicate any patent which has expired due to nonpayment of 
maintenance  fees and any patents which have been reinstated.  An annual 
compilation of  such expirations and reinstatements will also be published. 

Maintenance Fee Reminders 

Since patentees are expected to maintain their own record and docketing 
systems  and since most patentees are expected to pay their maintenance 
fees during  the window period to prevent payment of a surcharge, the 
Office will not send  any reminder notices to the patentee until after the 
grace period has begun. 
 This will reduce and simplify the mailing of notices but still give 
patentees  an opportunity to pay their maintenance fee with surcharge 
during the grace  period before expiration of their patents.  The Office 
will mail any Maintenance  Fee Reminder to the fee address as set forth in 
37 CFR 1.363.  See MPEP w 2540. 
Receipt Notices 

The Office will issue a receipt for payment of maintenance fees after 
entry  of the maintenance fee payment.  Such a receipt will provide an 
opportunity  for the patentee to check if the Office has properly credited 
the payment. 
 The original document submitted by the patentee when paying the 
maintenance  fee will also be appropriately marked and returned to the fee 
address. 
Expiration Notices 

The Office will mail a Notice of Patent Expiration to the fee address when 
 Office records indicate that a 
patent has expired for failure to pay a required maintenance fee. 

2580    Review of Decision Refusing to Accept and Record Payment of a 
Maintenance Fee Filed Prior to Expiration of Patent 

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

(a)   Any patentee who is dissatisfied with the refusal of the Patent and 
Trademark  Office to accept and record a maintenance fee which was filed 
prior to the  expiration of the patent may petition the Commissioner to 
accept and record  the maintenance fee. 

(b)   Any petition under this section must be filed within 2- months of 
the  action complained of, or within such other time as may be set in the 
action  complained of, and must be accompanied by the fee set forth in 
w 1.17(h). The petition may include a request that the petition fee be 
refunded  if the refusal to accept and record the maintenance fee is 
determined to result  from an error by the Patent and Trademark Office. 

(c)   Any petition filed under this section must comply with the 
requirements 
 of paragraph  (b) of w 1.181 and  must be  signed by an 

attorney or agent registered to practice before the Patent and Trademark 
Office,  or by the patentee, the assignee, or other party in interest. 
Such  petition must be in the form of a verified statement if made by a 
person not  registered to practice before the Patent and Trademark Office. 

37 CFR 1.377 provides a mechanism for review of a decision refusing to 
accept  and record payment of a maintenance fee filed prior to the 
expiration of a  patent.  37 CFR 1.377(a) permits a patentee who is 
dissatisfied with the refusal  of the Office to accept and record a 
maintenance fee which was filed prior  to the expiration of the patent to 
petition the Commissioner to accept and  record the maintenance fee.  This 
petition may be used, for example, in situations  where an error is 
present in the identifying data required by 37 CFR 1.366(c)  with the 
maintenance fee payment; i.e., either the patent number or the application 
 serial number are incorrect.  See MPEP w 2515.  A petition under 37 CFR 
1.377  would not be appropriate where there is a complete failure to 
include at least one correct mandatory identifier as required by 37 CFR 
1.366(c)  for the patent since no evidence would be present as to the 
patent on which  the maintenance fee was intended to be paid.  If the 
maintenance fee payment  with an incorrect mandatory identifier was made 
near the end of the grace period,  the patent might expire since the 
Office would not credit the fee to a patent. 
 A petition under 37 CFR 1.377 would not be 
appropriate where the patentee paid a maintenance fee on one patent when 
the  patentee intended to pay the maintenance fee on a different patent 
but through  error identified the wrong patent number and application 
serial number. Likewise,  a petition under 37 CFR 1.377 would not be 
appropriate where the entire maintenance  fee payment, including any 
necessary surcharge, was not filed prior to expiration  of the patent. 

Any petition filed under 37 CFR 1.377 must be filed within 2- months of 
the  action complained of, or within such other time as may be set in the 
action  complained of. The petition must be accompanied by the proper 
petition fee.  The petition may include a request that the petition fee be 
refunded if the  refusal to accept and record the maintenance fee is 
determined to have resulted  from an error by the Office. 

Any petition filed under 37 CFR 1.377 must comply with the requirements of 
 37 CFR 1.181(b) and must be signed by an attorney or agent registered to 
practice before the Office, or by the patentee, the assignee, or other 
party in interest. 
 A person or organization whose only responsibility insofar as the patent 
is  concerned is the payment of a maintenance fee is not a party in 
interest for  purposes 37 CFR 1.377.  The petition must be in the form of 
verified statement  if made by a person not registered to practice before 
the Office. If the petition  is signed by a person not registered to 
practice before the Office, the petition  must indicate whether the person 
signing the petition is the patentee, assignee,  or other party in 
interest.  An assignee must comply with the requirements  of 37 CFR 
3.73(b) which is discussed in MPEP w 324. 

Any petition under 37 CFR 1.377 should be marked on the front page of the 
communication  to the attention of the Office of Petitions and addressed 
as follows: 
By mail:        Commissioner of Patents and 
                Trademarks 

        Box DAC 

        Washington, D.C. 20231 


2590    Acceptance of Delayed Payment of Maintenance Fee in Expired Patent 
to Reinstate Patent 

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

(a)   The Commissioner may accept the payment of any maintenance fee due 
on  a patent after expiration of the patent if, upon petition, the delay 
in payment  of the maintenance fee is shown to the satisfaction of the 
Commissioner to  have been unavoidable (paragraph (b) of this section) or 
unintentional (paragraph 
(c) of this section) and if the surcharge required by w 1.20(i) is paid as 
 a condition of accepting payment of the maintenance fee.  If the 
Commissioner  accepts payment of the maintenance fee upon petition, the 
patent shall be considered  as not having expired, but will be subject to 
the conditions set forth in 35 U.S.C. 41(c)(2). 

(b)   Any petition to accept an unavoidably delayed payment of a 
maintenance  fee filed under paragraph (a) of this section must include: 

(1)   the required maintenance fee set forth in w 1.20 (e)-(g); 

(2)   the surcharge set forth in w 1.20(i)(1); and 

(3)   a showing that the delay was unavoidable since reasonable care was 
taken  to ensure that the maintenance fee would be paid timely and that 
the petition  was filed promptly after the patentee was notified of, or 
otherwise became  aware of, the expiration of the patent.  The showing 
must enumerate the steps  taken to ensure timely payment of the 
maintenance fee, the date and the manner  in which patentee became aware 
of the expiration of the patent, and the steps  taken to file the petition 
promptly. 

(c)   Any petition to accept an unintentionally delayed payment of a 
maintenance  fee filed under paragraph (a) of this section must be filed 
within twenty-four  months after the six-month grace period provided in w 
1.362(e) and must include: 
(1)   the required maintenance fee set forth in w 1.20 (e)-(g); 

(2)   the surcharge set forth in w 1.20(i)(2); and 

(3)   a statement that the delay in payment of the maintenance fee  was 
unintentional. 
(d)   Any petition under this section must be signed by an attorney or 
agent  registered to practice before the Patent and Trademark Office, or 
by the patentee,  the assignee, or other party in interest. Such petition 
must be in the form  of a verified statement if made by a person not 
registered to practice before  the Patent and Trademark Office. 

(e)   Reconsideration of a decision refusing to accept a maintenance fee 
upon  petition filed pursuant to paragraph (a) of this section may be 
obtained  by  filing a petition for reconsideration within two- months of, 
or such other  time as set in, the decision refusing to accept the delayed 
payment of the  maintenance fee.  Any such petition for reconsideration 
must be accompanied  by the petition fee set forth in w 1.17(h).  After 
decision on the petition  for reconsideration, no further reconsideration 
or review of the matter will  be undertaken by the Commissioner. If the 
delayed payment of the maintenance  fee is not accepted,, the maintenance 
fee and the surcharge set forth in w  1.20(i) will be refunded following 
the decision on the petition for reconsideration,  or after the expiration 
of the time for filing such a petition for reconsideration,  if none is 
filed.  Any petition fee under this section will not be refunded  unless 
the refusal to accept and record the maintenance fee is determined to 
result from an error by the Patent and Trademark Office. 

37 CFR 1.378(a) provides that the Commissioner may accept the payment of 
any  maintenance fee due on a patent based on an expiration of the patent 
if, upon  petition, the delay in payment of the maintenance fee is shown 
to the satisfaction  of the Commissioner to have been unavoidable or 
unintentional.  The appropriate  surcharge set forth in w1.20(i) must be 
paid as a condition of accepting payment  of the maintenance fee.  The 
surcharges set at 37 CFR 1.20(i) are established  pursuant to 35 U.S.C. 
41(c) and, therefore, are not subject to small entity  provisions of 35 
U.S.C. 41(h).  No separate petition fee is required for this  petition. 
If the Commissioner accepts payment of the maintenance fee upon  petition, 
the patent shall be considered as not having expired but will be  subject 
to the intervening rights and provisions of 35 U.S.C. 41(c)(2). 
Any petition under 37 CFR 1.378(b) or (c) should be marked on the front 
page  of the communication to the attention of the Office of Petitions and 
addressed  as follows: 

By mail: 

        Commissioner of Patents and Trademarks 

        Box DAC 

        Washington, D.C. 20231 

Any petition under 37 CFR 1.378 must be signed by an attorney or agent 
registered  to practice before the Patent and Trademark Office, or by the 
patentee, the  assignee, or other party in interest. A person or 
organization whose only responsibility  insofar as the patent is concerned 
is the payment of a maintenance fee is not  a party in interest for 
purposes of 37 CFR 1.378. The petition must be in the  form of a verified 
statement if made by a person not registered to practice  before the 
Patent and Trademark Office.  If the petition is signed by a person  not 
registered to practice  before the Office, the petition must indicate that 
 the person signing the petition is the patentee, assignee, or other party 
in  interest. An assignee must comply with the requirements of 
37 CFR 3.73(b) which is discussed in MPEP w 324. 

37 CFR 1.378(e) provides a mechanism for obtaining reconsideration of a 
decision  refusing to accept a maintenance fee upon petition filed 
pursuant to paragraph 
(a). This mechanism is a petition for reconsideration which may be filed 
within  2 months of, or such other time as set in the decision refusing to 
accept the  delayed payment of the maintenance fee.  In contrast to 
petitions filed under  paragraph (a), the petition for reconsideration 
requires the petition fee  set forth in 37 CFR 1.17(h).  After a decision 
on the petition for reconsideration,  no further reconsideration or review 
of the matter will be undertaken by the  Commissioner.  The maintenance 
fee and the surcharge submitted will be refunded  if the delayed payment 
of the maintenance fee is not 
accepted.  The refund will be made following the decision on the petition 
for  reconsideration, or after the expiration of the time for filing such 
a petition  for reconsideration, if none is filed.  The petition fee for 
filing the petition  for reconsideration will not be refunded unless the 
refusal to accept and record  the maintenance fee is determined to result 
from an error by the Office. 
Unavoidable Delay 

37 CFR 1.378(b) provides that a patent may be reinstated at any time 
following  expiration of the patent for failure to timely pay a 
maintenance fee.  A petition  to 
accept late payment of a maintenance fee, where the delay was unavoidable, 
 must include (1) the required maintenance fee set forth in w 1.20 
(e)-(g), 
(2) the surcharge set forth in w 1.20(i) (1), and (3) a showing that the 
delay  was unavoidable since reasonable care was taken to ensure that the 
maintenance  fee would be paid timely and that the petition was filed 
promptly after the  patentee was notified of, or otherwise became aware 
of, the expiration of the  patent. 

The required showing must enumerate the steps taken to ensure timely 
payment  of the maintenance fee, the date and the manner in which patentee 
became aware  of the expiration of the patent, and the steps taken to file 
the petition promptly. Furthermore, an adequate showing requires a 
statement  by all persons with direct knowledge of the cause of the delay, 
setting forth  the facts as they know them.  Such a statement must be 
verified if made by  a person not registered to practice before the Patent 
and Trademark Office.  Copies of all documentary evidence referred to in a 
statement should be furnished  as exhibits to the statement. 

Acceptance of late payment of a maintenance fee under 37 CFR 1.378(b) is 
considered  under the same standard as that for reviving an abandoned 
application under  35 U.S.C. 133 because 35 U.S.C. 41(c)(1) uses the 
identical language; i.e.  unavoidable delay.  Decisions on reviving 
abandoned applications have adopted  the "reasonably prudent person" 
standard in determining if the delay in responding  to an Office action 
was unavoidable, Ex parte Pratt, 1887 C.D. 31, 32-33 (Comm'r  Pat. 1887); 
In re Mattullath, 38 App. D.C.  497, 514-515 (C.D. Cir. 1912);  and Ex 
parte Henrich, 1913 C.D. 139, 141 (Comm'r Pat. 1913).  In addition, 
decisions on revival are made on a "case-by-case basis, taking all the 
facts  and circumstances into account,"  Smith v. Mossinghoff, 671 F.2d 
533, 538,  213 USPQ 977, 982 (D.C. Cir. 1982). 

In view of the requirement to enumerate the steps taken to ensure timely 
payment  of the maintenance fee, the patentee's lack of knowledge of the 
need to pay  the maintenance fee does not constitute unavoidable delay; 
see In re Patent  No. 4,409,763, 7 USPQ2d 1798 (Comm'r Pat. 1988), aff'd 
Rydeen v. Quigg, 748  F. Supp. 900, 
16 USPQ2d 1876 (D.D.C. 1990), aff'd without opinion (Rule 36), 937 F.2d 
623 
(Fed. Cir. 1991), cert. denied, 
60 U.S.L.W. 3520 (January 27, 1992).  Under the statutes and regulations, 
the  Office has no duty to notify patentees of the requirement to pay 
maintenance  fees or to notify patentees when the maintenance fees are 
due.  It is solely  the responsibility of the patentee to ensure that the 
maintenance fee is timely  paid to prevent expiration of the patent. The 
lack of knowledge of the requirement  to pay a maintenance fee will not 
shift the burden of monitoring the time for  paying a maintenance fee from 
the patentee to the PTO.  Evidence that despite  reasonable care on behalf 
of the patentee and/or the patentee's agents, and  reasonable steps to 
ensure timely payment, the maintenance fee was unavoidably  not paid, 
could be submitted in support of an argument that the delay in payment 
was unavoidable. For example, an error in a docketing system could 
possibly  result in a finding that a delay in payment was unavoidable if 
it were shown  that reasonable care was exercised in designing and 
operating the system and  if it were shown that the patentee took 
reasonable steps to ensure that the  patent was entered into the system to 
ensure timely payment of the maintenance  fees. 

Unintentional Delay 

Public Law 102-444 amended 35 U.S.C. 41(c)(1) to permit the Commissioner 
to  accept late payment of any maintenance fee filed within 24 months 
after the  6-month grace period, if the delay in payment is shown to the 
satisfaction  of the Commissioner to have been unintentional. 

In addition to the timeliness deadline set forth in the preceding 
paragraph,  a petition filed under the unintentional standard of 37 CFR 
1.378(c) must include 
(1) the required maintenance fee set forth in 37 CFR 1.20 (e) through (g), 
(2) the surcharge for an unintentionally expired patent as set forth in 37 
 CFR 1.20(i)(2), and (3) a statement that the delay in payment of the 
maintenance  fee was unintentional.   Such statement must be verified if 
made by a person  not registered to practice before the Patent and 
Trademark Office. 
A person seeking reinstatement of an expired patent should not make a 
statement  that the delay in payment of the maintenance fee was 
unintentional unless the  entire delay was unintentional, including the 
period from discovery that the  maintenance fee was not timely paid until 
payment of the maintenance fee.   For example, a statement that the delay 
in payment of the maintenance fee was  unintentional would not be proper 
when the patentee becomes aware of an unintentional  failure to timely pay 
the maintenance fee and then intentionally delays filing  a petition for 
reinstatement of the patent under 
37 CFR 1.378. 

Public Law 102-444 and 37 CFR 1.378(c) are effective as to any patent that 
 would be covered by the literal language of the sections.  Public Law 
102-444  and interim rule 37 CFR 1.378(c) were effective October 23, 1992. 
 Since Public  Law 102-444 provides up to a 24-month period after the 
6-month grace period  provided in 
35 U.S.C. 41(c) to seek reinstatement of an expired patent where the delay 
 was unintentional, any patent that expired on or after October 23, 1990, 
for  failure to timely pay a maintenance fee is eligible for relief under 
37 CFR  1.378(c).  However, it should be noted that a petition to 
reinstate an unintentionally expired patent, the required maintenance fee, 
 and the surcharge required under the unintentional standard (37 CFR 1.20 
(i) 
(2)) must be filed within 24 months after the 6-month grace period to be 
eligible  for relief under the unintentional standard. 


2591    Intervening Rights in Reinstated Patents 


Intervening rights in reinstated patents are provided by 35 U.S.C. 41(c) 
(2)  which is reproduced in MPEP 
w 2501.  No patent, the term of which has been maintained as a result of 
the  acceptance of a late payment of a maintenance fee, shall abridge or 
affect  the right of any person or his successors in business who made, 
purchased,  or used after the 6-month grace period but prior to the 
acceptance of the late  maintenance fee anything protected by the patent, 
to continue the use of, or to  sell to  others to be  used or sold, the 
specific thing s made, purchased,  or used. A court before which such 
matter is in question may provide for the  continued manufacture, use, or 
sale of the thing made, purchased, or used as  specified, or for the 
manufacture, use, or sale of which substantial preparation  was made after the 
6- month grace period but before the acceptance of the late maintenance 
fee,  and it may also provide for the continued practice of any process, 
practiced,  or for the practice of which substantial preparation was made, 
after the 6-month  grace period but prior to the acceptance of the late 
maintenance fee, to the  extent and under such terms as the court deems 
equitable for the protection  of investments made or business commenced 
after the 6-month grace period but  before the acceptance of the late 
maintenance fee. 


A25910001.bmp 



A25910001.end 



A25910002.bmp 



A25910002.end 



A25910003.bmp 





A25910003.end 




        The following is a partial list of trademarks which may appear 
from  time to time in patent applications. Proper usage of trademarks 
requires that  they be capitalized at all times. See MPEP w 608.01(v). 

        Any questions by the examiners as to whether an apparent trademark 
 is in fact a registered trademark or not, and to what particular goods it 
applies,  should be referred to the Trademark Search Branch (308-9800) for 
determination. 
                Particular goods on or in connection with which the 
Trademark       trademark is used 

ACE             Assorted bandages, adherent compounds, 
                and bandage fastening clips 

ADRENALIN       Blood-pressure raising and stimulating preparations 
AEROJET         Thrust motors, internal combustion 
                engines, and marine engines 

AEROSOL         Wetting agents 

AIRSLIDE        Gravity conveyors 

AIRVEYOR        Conveyors for conveying and handling materials 

ALEMITE         Automotive lubricants, additives, and equipment 

ALUMEL          Alloys containing nickel and aluminum 

ALUNDUM         Abrasive, polishing, and heat refractory materials 
AMBERLITE       Ion exchange resins, insulation, resinous materials 
AMERIPOL        Rubberlike materials 

ANCHOR          Fence 

AQUADAG         Colloidal graphited water 

AQUA PIK        Oral hygiene appliance 

ARESKAP         Wetting, spreading, and related materials 

ARRESTED        Wetting, spreading, and related materials 

ARESKLENE       Wetting, spreading, and related materials 

ATRAUMATIC      Surgical and dental needles 

BAGGIES         Bags made of flexible transparent sheeting 

BAKELITE        Plastics, adhesives, varnishes, etc. 

BALLBUSHING     Bearings 

BANBURY         Mixers 

BAND-AID        Bandages and spray antiseptic 

BATHINETTE      Infant furniture 

BENDIX          Starters, brakes, communications systems, 
                oils, tools, etc. 

BENZEDRINE      Medicinal preparation 

BETALIGHT       Self-powered light sources 

BITUMASTIC      Paints and joint compounds 

BLUE ROCK       Clay pigeon targets 

BOBBIE          Cigars 

BREATHALYZER    Alcoholic-content measuring apparatus, 
                bottled chemical preparation used for 
                absorbing and oxidizing alcohol 

BUSS            Electrical fuses and holders 

BUSS FUSES      Electrical fuses 

BUTTERFLY       Medical infusion sets 




                Particular goods on or in connection with which the 
Trademark       trademark is used 

CALGON          Water softening chemicals, cleaning agents 

CALROD          Electric heating units 

CARBITOL        Solvents 

CARBOFRAX       Furnace-linings, fire bricks & blocks, 
                and bulk materials for making same 

CARBORUNDUM     Abrasives, refractory materials, related equipment 
CAROUSEL        Photographic projectors and related items 

CATERPILLAR     Tractors, engines, treads, etc. 

CELASTIC        Fabrics, softeners 

CELLOSOLVE      Solvents 

CELLUCOTTON     Surgical dressing 

CELOTEX         Wallboard and other building materials 

CHAP STICK      Medicinal preparation for chapped skin 

CHEVRON         Machinery packing, petroleum products, 
                and other items 

CHLOROMYCETIN   Antibiotic preparations and sensitivity discs 

CHROMAX         Low conductivity wire, lacquers, castings, 
                and other items 

CHROMEL         Alloy 

CLOROX          Household cleaning and laundry products 

COCA-COLA       Beverages 

COKE            Beverages 

COREX           Glass paints, seats, tops, and other items 

CUMAR           Resin 

CYCLONE         Seeders and other items 

DACRON          Synthetic fibers 

DANFORTH        Marine waterproof and weather- 
                proof adhesive tapes, fog bells & rod 
                holders, etc. 

DECALIN         Decahydronaphthalene 

DEEPFREEZE      Home freezers 

DE-ION          Electrical equipment 

DICTAPHONE      Sound-recording equipment and related apparatus 

DRY ICE         Clothes, T-shirts, scuba diving equipment, 
                synthetic fabrics 

DUAL-SEAL       Covers, strips, and insulated glass 

DULUX           Resins, paints, and other items 




                Particular goods on or in connection with which the 
Trademark       trademark is used 

DUMPSTER        Containers & hoisting units for receiving, 
                transporting, and dumping refuse 

DURALOY         Metal alloys 

DURAPLEX        Synthetic alloys 

EIDOPHOR        Electrical apparatus 

ELECTRONIC-SECRETARY    Telephone-answering apparatus 

ELECTRO-SILICON          Cleaning and polishing preparations 

ELON            Photographic developer, sunwear 

EMULPHOR        Emulsifying agent 

FATHOMETER      Depth-measuring apparatus 

FIBERGLASS      Glass fibers and products made therefrom 

FLEXOWRITER     Power-operated typewriters, tape, and ribbons 

FLEXWOOD        Fabric-backed wood veneer 

FLYING SAUCER   Aerodynamic discs for toss games 

FOAMITE         Fire extinguishing devices and compositions and cups 
FOOTLETS        Socks and hosiery 

FORMICA         Flakeboard, adhesives, wall tile, and other items 
FREON           Fluorinated hydrocarbons 

FRISBEE         Aerodynamic disc toss toys 

FUDGSICLE       Frozen confections on sticks 

GANTRISIN       Chemotherapeutic agent 

GEON            Polyvinyl resins and automobile parts 

GLYPTAL         Synthetic resins and paints 

GYROPILOT       Automatic steering mechanism 

GYROSYN         Compass equipment 

HEAD            Snow skis and ski clothing 

HEIMLICH MANEUVER    Educational services, namedly 
                     the dissemination of instruction 
                     information related to an antichoking 
                     first aid technique 

HELANCA         Yarns and threads and clothing made therefrom 

HERCOLYN        Ester of rosin 

HIPERSIL        Magnetic metal alloys 

HULA-HOOP       Plastic toy hoops 

HYDROSEAL       Plastic cement and other items 

IGEPON          Washing and scouring agent 

INDUCTOSYN      Electrical apparatus 




                Particular goods on or in connection with which the 
Trademark       trademark is used 

INTERTYPE       Typesetting 

INVAR           Alloy 

IRONCLAD        Batteries, bags, and other items 

JACOBS          Coffee and instant coffee 

JEEP            Automobiles, valves, and other items 

JET LINE        Hardware, compressed gas equipment, 
                and other items 

KALTRON         Pharmaceutical preparations and fertilizer 

KITTY LITTER    Ground clay used for litters for small animals 

KODAK           Photographic and related equipment and other items 
KODAPAK         Solvents, sheets, and film cartridges 

KOVAR           Alloyed metal 

LAUNDROMAT      Renting of washers in self-service laundries 

LEXIDE          Sheet material made of fabric and rubber 

LINK            Pilot training equipment, computers, servomechanisms 
LINOTYPE        Machines for producing type bars 

LIQUID PAPER    Correction fluid and other office supply products 
LUCITE          Plastics and paints 

LUX             Aircraft flotation, fire extinguishers, and 
                other items 

MACE            Volatile liquid preparation for 
                temporarily incapacitating persons 

MASONITE        Fiberboard and plastics 

MC              Polymeric materials 

METHOCEL        Methyl cellulose 

MICARTA         Various molded products 

MICROBALLOON(S) Hollow synthetic resin particles 

MODUTROL        Medicinal preparations and electric 
                motor controls 

MONEL           Alloys 

MONOTYPE        Typecasting equipment and insulated wire 

MULTIGRAPH      Printing and duplicating machines and 
                related parts 

MUZAK           Programmed music services for 
                industrial and business establishments, 
                prerecorded musical audio tapes and 
                discs, and other related goods 

MYCALEX         Electrical insulating material 

MYCLAR          Plastic film 





                Particular goods on or in connection with which the 
Trademark       trademark is used 

NEKAL           Solvents, wetting agents, and other items 

NICHROME        Resistance wire, alloys, metal castings 

NICO-FUME       Insecticide and fumigants 

NONEX           Glass lantern and lamp globes and chimneys 

O               Silicate of soda 

OILGEAR         Valves, pumps, and hydraulic devices 

ONE A DAY       Vitamin tablets 

ORLON           Synthetic fibers 

ORTHOMODE       Hybrid mixers 

PARAPLEX        Synthetic chemical compositions 

PARA-SAIL       Parachutes 

PARKERIZING     Corrosion resistant coatings, castings, 
                and chemical compositions 

PERBUNAN        Rubber and rubber substitute materials 

PERF-A-TYPE     Joint tape for wallboard 

PERMUTIT        Water purifying materials 

PHOTOSTAT       Cameras and photographic developing equipment 

PHOTRONIC       Light sensitive cells 

PHYTIN          Pharmaceutical product 

PING-PONG       Game apparatus 

PITOCIN         Pharmaceutical preparation 

PLASMATRON      Electrical plasma-flame or plasma-jet apparatus 

PLEXIGLAS       Synthetic resin materials 

PLIOFILM        Rubber derivative films, sheets, or strips 

PLIOLITE        Latex, resinous materials, and paints 

PLIOWAY         Resinous material for use in paints 

PLURONIC        Polyoxyalkylene ether 

POLANE          Polyurethane coatings 

POLAROID        Photographic equipment and other items 

POLYFOAM        Polyurethane foam sheets and electrical lines 

POLYNOSIC       Synthetic textile fibers 

POP             Rivets and rivet tools, chemicals, and other items 
POROCEL         Absorbent materials 

PRIMACORD       Detonating fuse 

PRISCOLINE      Preparation having an action on blood 
                circulation 

PROFILOMETER    Instruments for measuring surface 
                roughness 

PUSHER          Polymeric compositions and fresh 
                grapes 

PYRALIN         Pyroxylin enamels, paints, adhesives, and 
                other items 

PYREX           Glass, cooking ware, lenses, and other items 



                Particular goods on or in connection with which the 
Trademark       trademark is used 

PYROCERAM       Crystalline materials made from glass 

Q-TIPS          Absorbent cotton swabs 

REFINITE        Pool equipment, water softening equipment 

RESINOX         Synthetic resins 

REVERTEX        Rubber and rubber substitutes 

RICE KRISPIES   Cereal breakfast food 

RIPPLE          Soles, colognes, knives, wines, and other items 

ROCKLATH        Plasterboard 

ROCKWELL        Hardness tester, tools, and other items 

ROLL-BOND       Heat exchangers and refrigerator 
                evaporators 

ROOTS           Blowers, pumps, and meters 

ROQUEFORT       Cheese 

ROTARY UNION    Rotary joints 

SCINTILLOMETER  Gamma ray spectrometers 

SCOTCH          Pressure-sensitive tape, paper, films, and other items 
SHAKEPROOF      Electrical terminals, screws, screwdrivers, and gears 
SHEETROCK       Plaster wallboard, plaster, and other items 

SILASTIC        Compounds, insulating tape, coatings, 
                and silicone dental material 

SNAP-ON         Wrenches, dental polishers, and other items 

SNOOZ-ALARM     Clocks 

SOLVESSO        Hydrocarbon solvents 

SONAR           Fish lures, insecticides, and hairdressing 

SPEED-NUT       Fasteners 

STEEL-FLEX      Plastic bags 

STELLITE        Metal alloys, textile machine parts, and machinery 
STENOGRAPH      Shorthand machines and ribbons, paper 
                tapes, tripods, and instruction materials 

STERI-PAD       Surgical dressing 

STIFLEX         Fiber reinforced rubber compositions 

STORM CHOKE     Subsurface safety valves 

STRADDLE TRUCK  Vehicles adapted to move piled lumber 

STYROFOAM       Expanded synthetic resinous material 

S.U.            Carburetors and fuel pumps for engines 

SYLPHON         Hollow expansible and contractible 
                corrugated tubular device 

SYNCHROTESTER   Photographic flash synchronization testers 

SYNTRON         Hydraulic and pneumatic vibrators, etc. 





                Particular goods on or in connection with which the 
Trademark       trademark is used 

TALON           Fasteners, threads and yarns, and other items 

TECHNICOLOR     Motion picture films and other items 

TEFLON          Synthetic resin polymers and products 

TELETYPE        Printing-telegraph apparatus 

TELETYPESETTER  Typesetting and typecasting apparatus 

TENDERAY        Meat and meat products 

TETRALIN        Tetrahydronaphthalene 

TETRONIC        Nonionic polymerized alkylene oxide compound 

TEXTOLITE       Paper base plastic laminate for use 
                on table tops, furniture, and wall paneling 

THENFADIL       Anthistaminic preparation 

THERMIT         Metal compounds for welding 

THERMOS         Vacuum bottles and other items 

THIOKOL         Sulfur containing plastics, rocket motors, 
                and other items 

TOUCH-TONE      Musical instruments 

TRANSITE        Asbestos cement pipe and other items 

TRAV-O-LATOR    Endless conveyor 

TRIGGER         Indicating and tripping fuses 

TRITON          Synthetic organic compounds and other items 

TROMBONE        Sprayers 

TWIST-LOCK      Photoelectric controls for outdoor 
                lighting fixtures 

TROUT CHOW      Feed for fish 

UFORMITE        Synthetic resins 

UROTROPIN       Hexamethylenetetramine or hexameth- 
                ethylenamine 

VACUMATIC       Fountain pens, pencils, and desk sets 

VASELINE        Petroleum jelly, medicinal preparations, 
                and other items 



                Particular goods on or in connection with which the 
Trademark       trademark is used 

VELCRO          Synthetic materials which adhere when 
                pressed together 

VICTROLA        Talking machines, audio cassettes, etc. 

VIDEOFILE       Document storage systems 

VISE-GRIP       Wrenches, pliers, closures, clamps, etc. 

VISTAC          Synthetic hydrocarbon polymers and oils 

VISTANEX        Compounding agents, adhesives, and 
                other items 

VOTATOR         Machines for processing fluid, plastic, 
                or other materials 

VULTEX          Rubber latex 

VYCOR           Glassware and seal rings 

WATER PIK       Oral hygiene appliance 

WEATHER-OMETER  Apparatus for testing the effect of 
                weather on objects 

WEED EATER      Weed and grass cutting machinery for 
                edging and trimming lawns 

WIFFLE          Simulated/auxiliary pliable plastic 
                baseballs and game played therewith 

WINDBREAKER     Assorted clothing 

WIRE-NUT        Connecting members for joining the ends of wires 

WIRE-WRAP       Tools for effecting electrical connections 

XEROX           Electrophotographic copying machines and related goods 
YOUNG ERECTOR   Toys 

ZYTEL           Resinous virgin plastic in the form of 
                powders and granules 




A, Ex parte, 17 USPQ2d 1716 (Bd. Pat. App. & 
Inter. 1990)            716.02, 2131.02 

Abele, In re, 684 F. 2d 902, 214 USPQ 682 
(CCPA 1982)         2106, 2184 

Abseck et al., Ex parte, 133 USPQ 411 
 (P.O. Super. Exam. 1960) 1208.03 

Adidas Fabrique v. Andsmore Sportswear Corp., 
223 USPQ 1109 (S.D. N.Y. 1984)      1504.06 

Adler v. Kluver, 159 USPQ 511 (Bd. Pat. Inter. 1968)    715.05 

Aelony v. Arni, 547 F. 2d 566, 192 USPQ 486 
(CCPA 1977)         2306, 2309.01 

Affidavit Filed After Final Registration, In re, 
152 USPQ 292, 1966 C.D. 53 (Comm'r Pat. 1966)     2265 

Ahlert, In re, 424 F2d 1088, 165 USPQ 418 
(CCPA 1970)         2144.03 

Ahrens v. Grey, 1931 C.D. 9; 402 O.G. 261 
(Bd. App. 1929)             201.13 

Akron Brass Co. v. Elkhart Brass Mfg. Co., 
147 USPQ 301 (7th Cir. 1965)    2133.03(e)(1) 

Akzo N.V. v. International Trade Comm'n, 
808 F.2d 1471, 1 USPQ2d 1241 (Fed. Cir. 1986)     2131.02 

Alappat, In re, 33 F.3d 1526, 31 USPQ 2d 1545 
(Fed. Cir. 1994)                2106 

Albertson, In re, 332 F.2d 379, 141 USPQ 730 
(CCPA 1964)         2116.01 

Albrecht, In re, 514 F.2d 1389, 185 USPQ 585 
(CCPA 1975)         2144.09 

Allen, Ex parte, 2 USPQ 2d 1425 
(Bd. Pat. App. & Inter. 1987)     2105 

Aller, In re, 220 F.2d 454, 105 USPQ 233 
(CCPA 1955)         2144.05 

Alpert v. Slatin, 305 F. 2d 891, 134 USPQ 296 
(CCPA 1962)         2138.04, 2371 

Alpine Eng'g,  Inc. v. Automated Building 
Components, Inc., BNA/PTCJ 367: A-12 
(S.D. Fla. 1978)                1442.05 

Alsenz v. Hargraves, 13 USPQ2d 1371 
(Bd. Pat. App. & Inter. 1989)     2138.05 

Altoona Publix Theatres v. American Tri-Ergon Corp., 
294 U.S. 477, 24 USPQ 308 (1935)        1490 

American Fruit Growers, Inc. v. Brogdex Co., 
283 U.S. 1 (1931)   2106 

American Infra-Red Radiant Co., Inc., et al. v. 

    Lambert Indus. Inc. et al., 149 USPQ 722 
 (8th Cir. 1966)                901.05, 2135.01 

Amgen Inc. v. Chugai Pharmaceutical Co., Ltd., 
927 F. 2d 1200, 18 USPQ 2d 1016 (Fed. Cir. 1991)        2138.04, 

 2143.02, 2165.04, 

2173.05(a), 2411.01 

AMI Indus., Inc. v. E.A. Indus., Inc., 
204 USPQ 568 (W.D.N.C. 1978)    1442.05(a) 

Amos, In re, 953 F.2d 613, 21 USPQ2d 
1271 (Fed. Cir. 1991)     1412.01 

Amp. Inc., In re, 212 USPQ 826 (Comm'r Pat. 1981) 2225 

Amphenol Corp. v. Gen'l Time Corp., 
158 USPQ 113 (7th Cir. 1968)    2133.03(e)(1) 

Anderson, Ex parte, 21 USPQ2d 1241 
(Bd. Pat. App. & Inter. 1991)     2173.05(a) 

Anderson, In re, 471 F.2d 1237, 176 USPQ 331 
(CCPA 1973)         601.01(d), 2163.07 

Anderson's-Black Rock Inc. v. Pavement Salvage Co., 
396 U.S. 57, 163 USPQ 673 (1969)        716.01(a), 2141 

Anderson v. Crowther, 152 USPQ 504 
(Bd. Pat. Inter. 1965)      2138.06 

Andresen, Ex parte, 212 USPQ 100, 102 
(Bd. Pat. App. & Inter. 1981)     2137, 2141.01 

Andrew Corp. v. Gabriel Electronics, 847 F.2d 819, 
6 USPQ2d 2010 (Fed. Cir. 1988)      2173.05(a) 

Andrews v. Wickenden, 194 F. 2d 729, 93 USPQ 27 
 (CCPA 1952)            2307.02 

Angstadt, In re, 537 F.2d 498, 190 USPQ 214 
(CCPA 1976)         2164.01, 

2164.08(b) 

Anthony, Ex parte, 230 USPQ 467 (Bd. App. 1982), 
aff'd No. 84-1357 (Fed. Cir. 1985)  1490 

Anthony, In re, 414 F. 2d 1383, 162 USPQ 594 
(CCPA 1969)         2107, 2107.02 

Antonie, In re, 559 F.2d 618, 195 USPQ 6 
(CCPA 1977)         2141.02, 2144.05 

Antonious v. Kamata-Ri & Co. Ltd., 204 USPQ 294 
(D. Md. 1979)       1442.05 

A&P Tea Co. v. Supermarket Corp., 340 U.S. 147, 
87 USPQ 303 (1950)      716.01(a) 

Appeal, Decided 9/3/68, Ex parte, 866 O.G. 16 
 (Bd. App. 1968)                1504.02 

Appeal No. 194-38, 152 USPQ 70, 1955 C.D. 31 
(Bd. App. 1965)             901.05(b) 

Appeal No 239-48, 151 USPQ 711, 1966 C.D. 22, 
833, O.G. 10 (Bd. App. 1965)    1504.02 

Appeal No. 242-47, 196 USPQ 828 
(Bd. App. 1976)             901.05(b), 2135.01 

Applied Materials Inc. v. Gemini Research Corp., 
835 F.2d 279, 15 USPQ2d 1816 (Fed. Cir. 1988)     2136.05, 

2137.01 

Application Filed July 13, 1950, In re, 105 USPQ 154, 
1955 C.D. 3, 693 O.G. 136, (Comm'r Pat. 1955)     1214.01 

Application Filed Nov. 16, 1945, In re, 89 USPQ 280, 
1951 C.D. 1, 646 O.G. 5 (Comm'r Pat. 1951)   904.01(a) 

Application Papers Filed Jan. 20, 1956, In re, 
706 O.G. 4 (Comm'r Pat. 1956)     714.07 

Application Papers Filed Sept. 10, 1954, In re, 
108 USPQ 340  (Comm'r Pat. 1955)         409.03(c) 

Argoudelis, In re, 434 F. 2d 1390, 168 USPQ 99 
(CCPA 1970)         2164.06, 2402 

Armbruster, In re, 512 F. 2d 676, 185 USPQ 152 
(CCPA 1975)          608.01(b), 2161 

Armour & Co. v. Swift & Co., 466 F. 2d 767, 
175 USPQ 70 (7th Cir. 1972)    2001.06(b), 2004 

Armstrong, In re, 280 F. 2d 132, 126 USPQ 281 
(CCPA 1960)         716.02(e) 

Arnott, In re, 19 USPQ2d 1049 (Comm'r Pats. 1991) 804.02 

Arrhythmia Research Tech. v. Corazonix Corp., 
458 F. 2d 1053, 22 USPQ 2d 1033 (Fed. Cir. 1992)        2106 

Arzberger, In re, 112 F. 2d 834, 46 USPQ 32 
(CCPA 1940)         1601 

Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 
776 F.2d 281, 227 USPQ 657 (Fed. Cir. 1985)   716.01(b), 

716.01(c) 

Aslanian, In re, 590 F.2d 911, 200 USPQ 500 
(CCPA 1979)         2125 

Atlantic Thermoplastics Co. v. Faytex Corp., 
970 F.2d 834, 23 USPQ2d 1481 
(Fed. Cir. 1992)                2133.03(b), 2133.03(c) 

Atlas Powder Co. v. E.I. duPont de Nemours & Co., 
750 F.2d 1569, 224 USPQ 409 (Fed. Cir. 1984)    2111.03, 2164.01 

Attig, Ex parte, 7 USPQ2d 1092 
(Bd. Pat. App. & Inter. 1986)     2173.05(a) 

Automatic Weighing Mech. Co. v. Pneumetic Scale 
Corp. Ltd.,  166 F. 2d 288, 1909 C.D. 498, 
139 O.G. 991 (1st Cir. 1909)    715.07 

Avery v. Chase, 101 F. 2d 205, 40 USPQ 343, 
(CCPA 1939) cert. denied, 307 U.S. 638 (1939)     2333 

Ayers, Ex parte, 108 USPQ 444 (Bd. App. 1955)      608.04(a) 

Azar v. Burns, 188 USPQ 601 (Bd. Pat. 
 Inter. 1975)       2138.05, 2308.02 

Badger, Ex parte, 1901 C.D. 195, 97 O.G. 1596 
(Comm'r Pat. 1901)      608.02(f) 

Baird, In re, 16 F.3d 380, 29 USPQ2d 1550 
(Fed. Cir. 1994)                2144.08 

Ball Corp., In re, 925 F.2d 1480, 18 USPQ2d 1491 
(Fed. Cir. 1991)                2145 

Ball Corp. v. United States, 729 F. 2d 1429, 
221 USPQ 289 (Fed. Cir. 1984)     1412.02, 1490 

Balzarini, Ex parte, 21 USPQ2d 1892 
(Bd. Pat. App. & Inter. 1991) . . . . . . . . . . . . . . . . . . . . . . 
.  . . . . . 2107.02 

Bandel, In re, 348 F. 2d 563, 146 USPQ 389 
(CCPA 1965)         715, 2305.01 

Barber, Ex parte, 187 USPQ 244 (Bd. App. 1974)      2173.05(j) 

Barber, In re, 81 F. 2d 231, 28 USPQ 187 
(CCPA 1936)         804 

Barker, In re, 559 F.2d 588, 194 USPQ 470 
(CCPA 1977), cert. denied, Barker v. Parker 
434 w5 1064 (1978)      2106, 2161 

Barmag Barmer Maschinenfabrik v. Murata Mach. Ltd., 
731 F. 2d 831, 221 USPQ 561 (Fed. Cir. 1984)    2133.03(b) 

Barr, In re, 444 F2d 588, 170 USPQ 330 
(CCPA 1971)         2111.01, 

   2144.03, 2173.05(a), 

2173.05(g), 2173.05(i) 

Bartfeld, Ex parte, 16 USPQ2d 1714 
(Bd. Pat. App. & Inter. 1990)     2136.01 

Bartfeld, In re, 925 F. 2d 1450, 17 USPQ 2d 1885 
 (Fed. Cir. 1991)   804, 2136.01, 

2136.05, 2141.01 

Bass, In re, 474 F. 2d 1276, 177 USPQ 178 
(CCPA 1973)         715, 2004, 

2138, 2138.03 

Bausch & Lomb v. Barnes-Hind/Hydrocurve, Inc., 
796 F.2d 443, 230 USPQ 416 (Fed. Cir. 1986)   2141.02 

Baxter, In re, 656 F.2d 679, 210 USPQ 795 
(CCPA 1987)         2111.03 

Baxter Travenol Labs., In re, 952 F.2d 388, 
21 USPQ2d 1281 (Fed. Cir. 1991)       2131.01, 2145 

Bayer, In re, 568 F.2d 1357, 196 USPQ 670 
(CCPA 1978)         2128.01 

Beattie, In re, 974 F.2d 1309, 24 USPQ2d 1040 
(Fed. Cir. 1992)                716.01(c) 

Beck, In re, 155 F. 2d 398, 69 USPQ 520 
(CCPA 1946)         715.01(b) 

Becker v. Patrick, 47 USPQ 314 (Comm'r Pat. 1939)  2309.01 

Beckman Instruments v. LKB Produkter AB, 
892 F. 2d 1547, 13 USPQ2d 1301 (Fed. Cir. 1989)       2121.01 

Belk, et al., Ex parte, 161 USPQ 795 
(Bd. Pat. App. 1968)             901.05, 

901.05(b), 2135.01 

Bell, In re, 991 F.2d 781, 26 USPQ2d 1529 
(Fed. Cir. 1993)                2144.08, 2144.09 

Bendix Corp. et al. v. Balax Inc., et al., 
 164 USPQ 485 (7th Cir. 1970)     901.05 

Benger Laboratories Ltd. v. R.K. Laros Co., 
209F Supp. 639, 135 USPQ 11 (E.D. Pa. 1966)   2165 

Benke, Ex parte, 1904 C.D. 63, 108 O.G. 1588 
(Comm'r Pat. 1904)      811.02 

Bennet, In re, 766 F. 2d 524, 226 USPQ 413 
(Fed. Cir. 1985)                1403, 1412.03 

Benno, In re, 768 F.2d 1340, 226 USPQ 683 
(Fed. Cir. 1985)                2163.06 

Benson, In re, 122 USPQ 279, 1959 C.D. 5, 
744 O.G. 353 (Comm'r Pat. 1959)       608.01, 714.07 

Bergstrom, In re, 427 F.2d 1394, 166 USPQ 256 
(CCPA 1970)         2144.04 

Berkman, In re, 642 F.2d 427, 209 USPQ 45 
(CCPA 1981)         1504.20 

Bernhart, In re, 417 F.2d 1395, 163 USPQ 611 
(CCPA 1969)         2106, 2173.05(j) 

Best, In re, 562 F.2d 1252, 195 USPQ 430 
(CCPA 1977)         2112, 2112.01, 

2112.02 

Bey v. Kollonitsch, 806 F.2d 1024, 231 USPQ 967 
(Fed. Cir. 1986)                2138.06 

Bielomatik Lueze & Co., v. Southwest Tablet 
Mfg. Co., 204 USPQ 226 (N.D. Texas 1979)        1442.05, 

1442.05(b) 

Biesecker, Ex parte, 144 USPQ 129 
(Bd. App. 1964)             715.02, 715.03 

Bigham v. Godtfredsen, 857 F.2d 1415, 
8 USPQ2d 1266 (Fed. Cir. 1988)      2138.01, 2138.05 

Billottet, Ex parte, 192 USPQ 413 (Bd. App. 1976) 2137 

Bindra v. Kelly, 206 USPQ 570 (Bd. Pat. Inter. 1979)    2138.05 

Bird Provisions Co. v. Owens Country Sausage, 

        197 USPQ 134 (5th Cir. 1978)    2133.03(a) 

Blaisdell, In re, 242 F. 2d 779, 113 USPQ 289 
(CCPA 1957)         2133.03(a), 2133.03(b), 

 2133.03(e)(3), 2133.03(e)(5) 

Blake, In re, 358 F.2d 750, 149 USPQ 217 
(CCPA 1966)         715.07 

Blanc, Ex parte, 13 USPQ2d 1383 
(Bd. Pat. App. & Inter. 1989)     716.02(c), 

2142, 2143.02 

Bland, Ex parte, 3 USPQ2d 1103 (Bd. Pat App. & 
Inter. 1986)            2141.01(a) 

Blattner, Ex parte, 2 USPQ2d 2047 (Bd. Pat. App. & 
Inter. 1987)            2144.09 

Blondel, In re, 499 F.2d 1311, 182 USPQ 294 
(CCPA 1974)         716.02(b) 

Blonder-Tongue Labs., Inc. v. Univ. of Ill., 
Foundation, 402 U.S. 313, 169 USPQ 513 (1971)      2012.01 

Blout, In re, 333 F.2d 928, 142 USPQ 173 
(CCPA 1964)         715 

Blum, In re, 374 F. 2d 904, 153 USPQ 177, 
(CCPA 1967)         1503.01, 1503.02, 1503.03 

Blumcraft of Pittsburgh v. Ladd, Comm'r Pat., 
144 USPQ 562 (D.D.C. 1965)  1504.05 

Boeing Co. v. Comm'r, 853 F. 2d 878, 
7 USPQ 2d 1487 (Fed. Cir. 1988)       2279 

Boesch, In re, 617 F.2d 272, 205 USPQ 215 
(CCPA 1980)         716.02(b), 716.02(d), 

 716.02(e), 2144.05 

Bogoslowsky v. Huse, 142 F.2d 75, 61 USPQ 349 
(CCPA 1944)         2138.03 

Bolkcom v. Carborundum Co., 523 F. 2d 492, 
187 USPQ 446 (6th Cir. 1975)     2003 

Bond, In re, 910 F.2d 831, 15 USPQ2d 1566 
(Fed. Cir. 1990)                2131, 2184 

Bondiou, Ex parte, 132 USPQ 356 (Bd. App. 1961)       2163.07 

Bonito Boats Inc. v. Thunder Craft Boats Inc, 
489 U.S. 141, 9 USPQ 2d 1847 (1989)   2133.02 

Bonnle-B Co. Inc., Ex parte, 1923 C.D. 42, 
313 O.G. 453 (Comm'r Pat. 1922)       104 

Boon, In re, 439 F.2d 724, 169 USPQ 231 
(CCPA 1971)         2144.03 

Borkowski, In re, 422 F.2d 904, 164 USPQ 642 
(CCPA 1970)         2164.02, 2174 

Borkowski, In re, 505 F. 2d 713, 184 USPQ 29 
(CCPA 1974)         715.07, 2371 

Bose Corp., In re, 687 F. 432, 772 F. 2d 866, 
227 USPQ 1 (Fed. Cir. 1985)   1203 

Bosies v. Benedict, 27 F.3d 539, 30 USPQ2d 1862 
(Fed. Cir. 1994)                2138.04 

Bosy, In re, 360 F.2d 972, 149 USPQ 789 
(CCPA 1966)         2165.01 

Bourne v. Jones, 98 USPQ 206 (S.D. Fla. 1951)     2133.03(e)(7) 

Bowen, In re, 492 F.2d 859, 181 USPQ 48 
(CCPA 1974)         2164.04 

Bowers, In re, 359 F2d 886, 149 USPQ 57 
(CCPA 1966)         706.02(l) 804 

Bowser Inc. v. United States, 388 F. 2d 346, 
156 USPQ 406 (Ct. Cl. 1967)   2141 

Bowyer, Ex parte, 42 USPQ 526, 1939 C.D. 5, 
505 O.G. 759 (Comm'r Pat. 1939)       715.07(b) 

Boylan, In re, 392 F. 2d 1017, 157 USPQ 370 
(CCPA 1968)         804 

Braat, In re, 937 F. 2d 589, 19 USPQ2d 1289 
(Fed. Cir. 1991)                804 

Brader v. Schaeffer, 193 USPQ 627 
(Bd. Pat. Inter. 1976)      2137.01 

Bradley and Franklin, In re, 600 F. 2d 807, 
202 USPQ 480 (CCPA 1979)        2106.02 

Braithwaite, In re, 379 F. 2d 594, 154 USPQ 29 
(CCPA 1967)         804, 804.02, 

806.04(i), 806.04(j) 

Brana et al., In re, 51 F.3d 1560, 
34 USPQ2d 1436 (Fed. Cir. 1995)       2107, 2107.01, 

2107.02, 2164.04, 2164.07 

Brandstadter, In re, 
484 F.2d 1395, 179 USPQ 286 (CCPA 1973)       716.01(c), 716.09, 

2106, 2106.02, 2164.05 

Brecker v. Jennings, 204 USPQ 663 
(Bd. Pat. Int. 1978)            2371 

Brenner v. Manson, 383 U.S. 519, 
148 USPQ 689 (1966)   2106, 2107, 2107.01 

Brenner v. State of Israel, 862 O.G. 661, 
158 USPQ 584 (D.C. Cir. 1968)     201.14, 201.16, 1402 

Breuer v. DeMarinis, 558 F. 2d 22, 194 USPQ 308 
(CCPA 1977)         2317, 2324 

Brian et al., Ex parte, 118 USPQ 242 (Bd. App. 1958)    2173.05(t) 
Bridgeford, In re, 357 F. 2d 679, 149 USPQ 55 
(CCPA 1966)         806.05(f) 

Brooktree Corp. v. Advanced Micro Devices, Inc., 
977 F. 2d 1555,  24 USPQ2d 1401 (Fed. Cir. 1992)        2107 

Broos v. Barton, 142 F.2d 690, 61 USPQ 447 
(CCPA 1944)         2138.06 

Brouwer, In re, 77 F.3d 422, 37 USPQ 2d 1663 
(Fed. Cir. 1996)                706.02(n), 2116.01 

Brower, In re, 433 F.2d 813, 167 USPQ 684 
(CCPA 1970)         2172 

Brown, In re, 459 F. 2d 531, 173 USPQ 685 
(CCPA 1972)         2112, 2113 

Brown, In re, 450 F.2d 531, 173 USPQ 685 
(CCPA 1972)         2183 

Brown, In re, 477 F. 2d 946, 177 USPQ 691 
(CCPA 1973)         2106.02 

Brown v. Braddick, 595 F. 2d 961, 203 USPQ 95 
(5th Cir. 1979)             2300.02 

Brummer, Ex parte, 12 USPQ2d 1653 
(Bd. Pat. App. & Inter. 1989)     2173.05(a) 

Buchner, In re, 929 F. 2d 660, 18 USPQ2d 1331 
(Fed. Cir. 1991)                716.09, 2107.01 

Budnick, In re, 537 F. 2d 535, 190 USPQ 422 
(CCPA 1976)         2106.02 

Buildex v. Kason Indus, 849 F.2d 1461, 
7 USPQ2d 1325 (Fed. Cir. 1988)      2133.03(b) 

Bullier, Ex parte, 1899 C.D. 155 (Comm'r Pat. 1899)   709.01 

Bundy, In re, 642 F.2d 430, 209 USPQ 48 
(CCPA 1981)         2107.01, 2164.04, 

 2164.07, 2165.04 

Burckel, In re, 592 F.2d 1175, 201 USPQ 67 
(CCPA 1979)         716.02(e) 

Burhans, In re, 154 F.2d 690, 69 USPQ 330 
(CCPA 1946)         2144.04 

Burlington Industries Inc. v. Quigg, 822 F.2d 1581, 
3 USPQ2d 1436 (Fed. Cir. 1987)      716.04 

Burr. v. Duryee, 68 U.S. (1 Wall.) 531 (1863)     2106 

Burroughs Wellcome Co. v. Barr Labs. Inc., 
32 USPQ2d 1915 (Fed. Cir. 1994)       2138.04 

Burrowes, Ex parte, 1904 C.D. 155, 110 O.G. 599 
(Comm'r Pat. 1904)      1214.01 

Burson v. Carmichael, 731 F. 2d 849, 221 USPQ 664 
(Fed. Cir. 1984)                2337 

Busse, Ex parte, 1 USPQ 2d 1908 
(Bd. Pat. App. & Inter. 1986)     2107.02 

Butera, In re, 1 F.3d 1252, 28 USPQ2d 1399 
(Fed. Cir. 1993)                2141.01(a) 

Buting, In re, 418 F. 2d 540, 163 USPQ 689 
(CCPA 1969)          2107.02 

C, Ex parte, 27 USPQ2d 1492 
(Bd. Pat. App. & Inter. 1992)     2133.03(a) 





Cable Electric Products, Inc. v. Genmark, Inc., 
770 F.2d 1015, 226 USPQ 881 (Fed. Cir. 1985)    716.03(b), 716.06 
Caldwell, Ex parte, 1906 Comm'r Dec. 58 
(Comm'r Pat. 1906)      2173.05(a) 

California Research Corp. v. Ladd, 356 F. 2d 813, 

148 USPQ 404 (D.C. Cir. 1966)     1216.02 

Campbell, In re, 212 F. 2d 606, 101 USPQ 406 
(CCPA 1954)         1504.20 

Card and Card, Ex parte, 1904 C.D. 383 
(Comm'r Pat. 1904)      2309.01 

Carella v. Starlight Archery, 804 F.2d 135, 
231 USPQ 644 (Fed. Cir. 1986)     2128, 2132 

Carl Zeiss Stiftung v. Renishaw PLC, 945 F. 2d 1173, 
20 USPQ2d 1094 (Fed. Cir. 1991)       2107, 2107.01 

Carletti et al, In re, 328 F. 2d 1020, 140 USPQ 653 
(CCPA 1964)         1504 

Carlson, In re, 79 F.2d 900, 27 USPQ 400 (CCPA 1935)    715.04 

Carlson, In re, 983 F.2d 1032, 25 USPQ2d 1207 
(Fed. Cir. 1992)                2126 

Carman Indus. Inc. v. Wahl et al., 724 F. 2d 932, 
220 USPQ 481 (Fed. Cir. 1983)     804, 1504.06 

Carreira, In re, 532 F.2d 1356, 189 USPQ 461 
(CCPA 1976)         716.09, 2136.05 

Carroll, In re, 601 F.2d 1184, 202 USPQ 571 
(CCPA 1979)         716.01(c) 

Carter, In re, 673 F. 2d 1378, 213 USPQ 625 
(CCPA 1982)         1504 

Carter-Wallace, Inc. v. Riverton Laboratories, Inc., 
433 F.2d 1034, 167 USPQ 656 (2d Cir. 1970)  2165.01 

Case v. CPC Int'l Inc., 730 F. 2d 745, 221 USPQ 196 
(Fed. Cir. 1984) cert. denied 469 U.S. 872 (1984) 2309.01 

Casey, In re, 370 F.2d 576, 152 USPQ 235 
(CCPA 1967)         2111.02, 2115 

Cataphote Corp. v. Desoto Chem. Coatings, 
143 USPQ 292 (N.D. Cal. 1964), aff'd, 148 USPQ 
229 (9th Cir.); mod. on other grounds 149 USPQ 
159 (9th Cir.), cert. denied, 385 U.S. 832 (1966) 2133.03(e)(1) 

Caterpillar Tractor Co. v. Commissioner of Patents 
and Trademarks, 231 USPQ 590 (E.D. Va. 1986)    1850 

Cavallito, In re, 282 F. 2d 363, 127 USPQ 206 
(CCPA 1960)         2164.07 

Cavallito, In re, 306 F. 2d 505, 134 USPQ 370 
(CCPA 1962)         2164.07 

Cavanagh, In re, 436 F.2d 491, 168 USPQ 466 
(CCPA 1971)         716.04 

Caveney, In re, 761 F.2d 671, 226 USPQ 1 
(Fed. Cir. 1985)                2133.03(b) 

Certain Ceramic Tile Setters, In re, No. 337-TA-41, 
BNA/PTJC 385: A-21 (Int'l Trade Comm'n. 1978)     1442.05(b) 

Certain High-Voltage Circuit Interrupters and 
Components Thereof, In re, 204 USPQ 50 
(Int'l Trade Comm'n. 1979)  1442.05(a) 

Chan v. Akiba v. Clayton, 189 USPQ 621 
(Comm'r Pat. 1975)      2317 

Chandler, In re, 254 F. 2d 396, 117 USPQ 361 
(CCPA 1958)         2173.05(n) 

Chandler, In re, 319 F. 2d 211, 138 USPQ 138 
(CCPA 1963)         2173.05(n) 

Chandler v. Mock, 150 F. 2d 563, 66 USPQ 209 
(CCPA 1945)         2371 

Chapman, In re, 357 F.2d 418, 148 USPQ 711 
(CCPA 1966)         716.02(e) 

Chemcast Corp. v. Acro Indus. Corp., 913 F. 2d 923, 
16 USPQ2d 1033 (Fed. Cir. 1990)       2107, 

2165.03, 2411.01 

Chemithon Corp. v. Procter & Gamble Co., 
159 USPQ 139 (D. Md. 1968) affd. 165 USPQ 678 
(4th Cir. 1970)             2133.03(a) 

Chevenard, In re, 139 F.2d 71, 60 USPQ 239 (CCPA 1943)      2144.03 
Chicago Rawhide, Ex parte, 223 USPQ 351 
(Bd. Pat. App. & Inter. 1984)      2144.04, 2242 

Chicopee Mfg. Corp. v. Columbus Fiber Mills Co., 
118 USPQ 53 (M.D. Ga. 1958)   2133.03(e)(1) 

Chiddix, In re, 209 USPQ 78 (Comm'r Pat. 1980)      1206 

Chillas v. Weisberg, 1928 C.D. 24 (Comm'r Pat. 1928)    2302 

Chilowski, In re, 229 F. 2d 457, 108 USPQ 321 
 (CCPA 1956)            2107, 

2107.01, 2107.02 

Chilowsky, In re, 306 F.2d 908, 134 USPQ 515 
(CCPA 1962)         716.01(c) 

Choat v. Rome Indus. Inc. et al., 462 F Supp. 728, 
203 USPQ 549 (N.D. Ga. 1979)    1442.05, 1442.05(b) 

Chore-Time Equipment, Inc. v. Cumberland Corp., 
713 F.2d 774, 218 USPQ 673 (Fed. Cir. 1983)   2141.03 

Christensen, In re, 330 F. 2d 652, 141 USPQ 295 
(CCPA 1964)          804.03 

Christie v. Seybold, 1893 C.D. 515, 64 O.G. 1650 
(6th Cir. 1893)             715.07(a) 

Chromalloy American Corp. v. Alloy Surfaces Co., 
339 F. Supp 859, 173 USPQ 295 (D. Del. 1972)    201.11, 

2004, 2012, 2016, 

2133.03(e)(1) 

Chu, In re, 66 F.3d 292, 36 USPQ2d 1089 
(Fed. Cir. 1995)                201.11 

Chupp, In re, 816 F.2d 643, 2 USPQ2d 1437 
(Fed. Cir. 1987)                716.01(d), 716.02 

Ciric v. Flanigen, 511 F.2d 1182, 185 USPQ 103 
(CCPA 1975)         2138.05 

Citron, In re, 325 F. 2d 248, 139 USPQ 516 
(CCPA 1963)         2107, 2107.01, 

2107.02, 2164.07 

City of Elizabeth v. American Nicholson Paving Co., 
97 U.S. 126  (1878)         2133.03(e)(4), 

2133.03(e)(5) 

Clamp, In re, 151 USPQ 423 (Comm'r Pat. 1966)      201.13 

Clapp, Ex parte, 227 USPQ 972 (Bd. Pat. App 
 & Inter. 1985)             706.02(j), 2142, 2144 

Clark, Ex parte, 174 USPQ 40 (Bd. App. 1971)    2173.05(o) 

Clark, In re, 522 F.2d 623, 187 USPQ 209 (CCPA 1975)    2012, 

2012.01, 2016 

Clark, In re, 457 F. 2d 1004, 173 USPQ 359 
(CCPA 1972)         715.05, 2308.01 

Clarke, In re, 356 F.2d 987, 148 USPQ 665 
(CCPA 1966)         715.03 

Clay, In re, 966 F.2d 656, 23 USPQ2d 1058 
(Fed. Cir. 1992)                2141.01(a) 

Clemens, In re, 622 F.2d 1029, 206 USPQ 289 
(CCPA 1980)         716.02(d) 

Clifford, Ex parte, 49 USPQ 152 (Bd. App. 1940)       901.02 

Clinical Products Ltd. v. Brenner, 255 F.Supp. 131, 
149 USPQ 475 (D.D.C. 1966)  706.03(d), 2173.05(q) 

Cloud v. Standard Packaging Corp., 153 USPQ 317 
(7th Cir. 1967)             2133.03(e)(1) 

Coca-Cola Co. v. Gemini Rising Inc., 175 USPQ 56 
(E.D.N.Y. 1972)              1512 

Cofer, In re, 354 F.2d 664, 148 USPQ 268 (CCPA 1966)    2144.04 

Cogar v. Schuyler, 173 USPQ 389 (D.C. Cir. 1972)         409.03(i) 
Cohn, In re, 438 F.2d 984, 169 USPQ 95 (CCPA 1971)   2173.03 

Colbert v. Lofdahl, 21 USPQ2d 1068 (Bd. Pat. App. 
& Inter. 1991)          2138.02 

Cole, In re, 326 F. 2d 769, 140 USPQ 230 (CCPA 1964)    2106.02 

Coleman v. Dines, 754 F.2d 353, 224 USPQ 857 
(Fed. Cir. 1985)                2138.04 

Collier, In re, 397 F.2d 1003, 158 USPQ 266 
(CCPA 1968)         2173.05(l) 

Comstock and Gilmer, In re, 481 F. 2d 905, 
178 USPQ 616 (CCPA 1973)        2106.02 

Comstock, Ex parte, 1923 C.D. 82, 317 O.G. 4 
(Comm'r Pat. 1923)      1214.01 

Comstock v. Kroeked, 200 USPQ 548 (Comm'r Pat. 1978)    2337 

Consolidated Aluminum Corp. v. Foseco Inc., 
910 F.2d 804, 15 USPQ2d 1481 (Fed. Cir. 1990)     2165 

Consolidated Fruit Jar Co. v. Wright, 94 U.S. 92 (1876)       2133.03(b) 
Constant, In re, 827 F. 2d 728, 3 USPQ 2d 1479, 
(Fed. Cir. 1987) cert. denied, 484 U.S. 894 (1987)  1444 

Constant v. Advanced Micro-Devices, Inc., 
 848 F.2d 1560, 7 USPQ2d 1057 (Fed. Cir.) 2128.02, 2145 

Continental Can Co., Inc. et al. v. Schuyler, 
326 F. Supp. 283, 168 USPQ 625  (D.D.C. 1970)       201.06(a), 

201.11, 1216.01 

Continental Can Co. USA v. Monsanto Co., 
948 F.2d 1264, 20 USPQ2d 1746 (Fed. Cir. 1991)      2131.01 

Cook and Merigold, In re, 439 F.2d 730, 
169 USPQ 298 (CCPA 1971)        2164.03, 2164.08(b) 

Cooper et al., In re, 230 USPQ 638 
(Dep. Assist. Comm'r Pat. 1986)         201.03 

Copenhaver, Ex parte, 109 USPQ 118 (Bd. App. 1955)  2173.05(a) 

Corba, In re, 212 USPQ 825 (Comm'r Pat. 1981)     1504.20 

Corbett v. Chisholm, 568 F. 2d 759, 196 USPQ 337 
(CCPA 1977)         2307.02 

Cordova, Ex parte, 10 USPQ2d 1949 
(Bd. Pat. App. & Inter. 1989)     2173.05(h) 

Corkill, In re, 711 F. 2d 1496, 226 USPQ 1005 
(Fed. Cir. 1985)                 716.02, 2107.01 

Cormany, In re, 476 F.2d 998, 177 USPQ 450 
(CCPA 1973)         2172 

Corneil, In re, 347 F.2d 563, 145 USPQ 702 
(CCPA 1965)         2124 

Corning Glass Works v. Schuyler, 169 USPQ 193 
(D.C. Cir. 1971) aff'd 175 USPQ 516 (D.C. Cir. 1975)    2004 

Cornwall, In re, 230 F. 2d 457, 109 USPQ 57 
(CCPA 1956)         1504.03 

Corona v. Dovan, 273 U.S. 692, 1928 CD 252 (1928) 2138.05 

Correge v. Murphy, 705 F. 2d 1326, 217 USPQ 753 
(Fed. Cir. 1983)                2138.03, 2332 

Costello, In re, 717 F.2d 1346, 219 USPQ 389 
(Fed. Cir. 1983)                716.09, 2136.05, 2137, 

2138, 2138.04, 2138.05 

Crockett, In re, 279 F.2d 274, 126 USPQ 186 
(CCPA 1960)         2144.06 

Cronyn, In re, 890 F.2d 1158, 13 USPQ2d 1070 
(Fed. Cir.1989)             2128.01 

Crosby, In re, 157 F.2d 198, 71 USPQ 73, 
1947 C.D. 35, 595 O.G. 5 (CCPA 1946)    716.07 

Cross v. Iizuka, 753 F. 2d 1040, 224 USPQ 739 
(Fed. Cir. 1985)                2107, 2107.02 

C.T.S. Corp. v. Electro Mat'ls, 202 USPQ 22 
(S.D. N.Y. 1979)    2133.03(b) 

C.T.S. Corp. v. Piher Int'l Corp., 201 USPQ 649 
(7th Cir. 1979)             2133.03(d) 

Cutter Co. v. Metropolitan Elec. Mfg. Co., 
 275 F. 158 (2d Cir. 1921)     603.01 

Dailey, In re, 357 F.2d 669, 149 USPQ 47 
(CCPA 1966)         2144.04 

Dale Electronics Inc. v. R.C.L. Electronics, 
488 F. 2d 382, 180 USPQ 225  (1st Cir. 1973)     608.01(h), 2004 

Dallas Cowboys Cheerleaders, Inc. v. Pussycat 
Cinema, Ltd., 203 USPQ 161 (2nd Cir. 1979)   1512 

Dana Corp. v. IPC Ltd. Partnership, 860 F.2d 415, 
8 USPQ2d 1692 (Fed. Cir. 1988)      2165.04 

Danly, In re, 263 F.2d 844, 120 USPQ 528 
(CCPA 1959)         2114 

Dann v. Johnston, 425 U.S. 219, 189 USPQ 
257 (1976)      716.01(a) 

Dart Indus. v. E.I. du Pont de Nemours & Co., 
179 USPQ 392 (7th Cir. 1973)    2133.03, 2133.03(c) 

Data Line Corp. v. Micro Technologies, Inc., 
813 F.2d 1196, 1 USPQ2d 2052 (Fed. Cir. 1987)     2184 

Davies, In re, 475 F.2d 667, 177 USPQ 381 
(CCPA 1973)         716.02(f) 

Davis, Ex parte, 80 USPQ 448 (Bd. App. 1948)    2111.03 

Davis Harvester Co., Inc. v. Long Mfg. Co., 
149 USPQ 420 (E.D. N.C. 1966)     2134 

Davis v. Carrier, 81 F.2d 250, 28 USPQ 227 
(CCPA 1936)         2137.01 

DeBaun, In re, 687 F.2d 459, 214 USPQ 933 
(CCPA 1982)         715.01(a), 716.09, 
                2136.05, 2137.01 

De Blauwe, In re, 736 F.2d 699, 222 USPQ 191 
(Fed. Cir. 1984)                716.01(c) 

DeCastelet, In re, 562 F.2d 1236, 195 USPQ 439 
(CCPA 1977)         2106 

Deckler, In re, 977 F.2d 1449, 24 USPQ2d 1448 
(Fed. Cir. 1992)                715, 2138.01 

Deep Welding, Inc. v. Sciaky Bros., 163 USPQ 144 
(7th Cir. 1969)             2128.01 

Defano, In re, 392 F.2d 280, 157 USPQ 192 
(CCPA 1968)         715.02, 715.03 

DeGeorge v. Bernier, 768 F.2d 1318, 226 USPQ 758 
(Fed. Cir. 1985)                2106 

De Graffenried v. U.S., 16 USPQ2d 1321 
(Ct. Cl. 1990)          2133.02, 2181 

De Lajarte, In re, 337 F.2d 870, 143 USPQ 256 
(CCPA 1964)         2111.03 

Delavoye, Ex parte, 1906 C.D. 320, 124 O.G. 626 
(Comm'r Pat. 1906)      604.02 

Delgar Inc. v. Schuyler, 172 USPQ 513 
(D.D.C. 1970)       711.02,  711.03(c) 

Demaco Corp. v. Von Langsdorff Licensing Ltd., 
851 F. 2d 1387, 7 USPQ 2d 1222 (Fed. Cir. 1988) 
cert. denied, 488 U.S. 956 (1988) 716.01(b), 

716.01(d), 716.03, 

716.03(a), 716.03(b) 

Deminski, In re, 796 F.2d 436, 230 USPQ 313 
(Fed. Cir. 1986)                2141.01(a) 

DeSeversky v. Brenner, 424 F. 2d 857, 
164 USPQ 495 (D.C.. Cir. 1970)      1216.02 

Des Granges, Ex parte, 864 O.G. 712 (Bd. App. 1968)   707.07(d) 

De Solms v. Schoenwald, 15 USPQ2d 1507 
(Bd. Pat. App. & Inter. 1990)     2138.05, 2138.06 

DesOrmeaux, Ex parte, 25 USPQ2d 2040 
(Bd. Pat. App. & Inter. 1992)     2136.04, 2137.01 

Deuel, In re, 94-1202 (Fed. Cir. 1995)      2144.09 

Diamond v. Chakrabarty, 447 U.S. 303, 206 
USPQ 193 (1980)             2106, 2107 

Diamond v. Diehr, 450 U.S. 175, 209 
USPQ 1 (1981)                2106, 2107 

Dickinson, In re, 299 F. 2d 954, 133 USPQ 39 
(CCPA 1962)         2344 

Digital Magnetic Sys., Inc. v. Ansley, 213 USPQ 290 
(W.D. Okla. 1982)   2286 

DiLeone, In re, 436 F.2d 1404 168 USPQ 592 
 (CCPA 1971)            2106 

Dillon, In re, 919 F.2d 688, 16 USPQ2d 1897 
(Fed. Cir. 1990)                2144, 2144.09, 2145 

Dilnot, In re, 319 F.2d 188, 138 USPQ 248 
(CCPA 1963)         2144.04 

D.M.I., Inc. v. Deere & Co., 755 F.2d 1570, 
225 USPQ 236 (Fed. Cir. 1985)     2184 

Doll, In re, 419 F. 2d 925, 164 USPQ 218 (CCPA 1970)    1412.03 

Donaldson, In re, 16 F.3d 1189, 
29 USPQ2d 1845 (Fed. Cir. 1994)       2106, 2111.01, 2114, 

2181, 2182 

Donaldson, Ex parte, 26 USPQ2d 1250 
 (Bd. Pat. App. & Inter. 1992)       1504.01 

Donnell, Ex parte, 1923 C.D. 54, 315 O.G. 398 
(Comm'r Pat. 1923)      806.05(b), 820.01 

Donohue, In re, 550 F.2d 1269, 193 USPQ 136 
(CCPA 1977)         2106, 2164.06 

Donohue, In re, 766 F.2d 531, 226 USPQ 619 
(Fed. Cir. 1985)                2121.01, 

2121.02, 2131.01 

Donovan, Ex parte, 1890 C.D. 109, 52 O.G. 309 
(Comm'r Pat. 1890)      715.07 

Dotter, Ex parte, 12 USPQ 382 (Bd. App. 1931)     2173.05(h) 

Dow Chemical Co., In re, 837 F.2d 469, 5 USPQ2d 1529 
(Fed. Cir. 1988)                716.04 

Dow Chemical Co. v. American Cyanamid Co., 
 816 F.2d 617, 2 USPQ2d 1350 (Fed. Cir. 1987)     716.06 

Doyle, In re, 482 F. 2d 1385, 179 USPQ 227 
(CCPA 1973)         1445, 2106.01 

Dreshfield, In re,  110 F.2d 235, 45 USPQ 36, 
(CCPA 1940)         2164.03 

Dresser Indus. Inc. v. Ford Motor Co., et al., 
211 USPQ 1114 (N.D. Texas, 1981)        2286 

Dreyfus, 137 USPQ 475 (Comm'r Pat. 1935)        103 

Driscoll v. Cebalo, 5 USPQ2d 1477 
(Bd. Pat. Inter. 1982)      2137.01 

DSL Dynamic Sciences Ltd. v. Union Switch & Signal, 
928 F.2d 1122, 18 USPQ2d 1152 (Fed. Cir. 1991)      2138.05 

Dulberg, In re, 289 F.2d 522, 129 USPQ 348 
(CCPA 1961)         2144.04 

Dunki, Ex parte, 153 USPQ 678 (Bd. App. 1967)     706.03(d), 

2173.05(q) 

Dunlop Holdings v. Ram Golf Corp., 
188 USPQ 481 (7th Cir. 1975)    2133.03(a) 

Dunne, Ex parte, 20 USPQ2d 1479 
(Bd. Pat. App. & Inter. 1991)     2134 

Dunn, In re, 349 F. 2d 433, 146 USPQ 479 
(CCPA 1965)         804.02 

Dunn v. Ragin, 50 USPQ 472 
(Bd. Pat. Inter. 1941)      2138.02, 

2138.04, 2138.05 

Dupont v. Phillips, 849 F.2d 1430, 7 USPQ2d 1129, 
(Fed. Cir. 1988)                2138, 2217, 2258 

Durden, In re, 763 F.2d 1406, 226 USPQ 359 
(Fed Cir. 1985)             2116.01 

Dybel, In re, 524 F. 2d 1393, 187 USPQ 593 
(CCPA 1975)         2133.03(b), 2133.03(c), 

 2133.03(e)(3), 2133.03(e)(4) 





East Chicago Machine Tool Corp. v. Stone 
Container Corp., 181 USPQ 744 (N.D. Ill. 1974) 
modified 185 USPQ 210 (N.D. Ill. 1974)      2012 

Eastwood, Ex parte, 163 USPQ 316 (Bd. App. 1968)        2173.05(a) 
Ebata, Ex parte, 19 USPQ2d 1952 
(Bd. Pat. App. & Inter. 1991)     2136.03 

E.C.H. Will v. Freundlich-Gomez Machinery Corp., 
201 USPQ 476 (S.D. N.Y. 1978)      1442.05(b) 

Eckel, In re, 393 F. 2d 848, 157 USPQ 415 
(CCPA 1968)         804.02 

Edge, In re, 359 F.2d 896, 149 USPQ 556 
(CCPA 1966)         2144.04 

Egbers, In re, 6 USPQ 2d 1869 (Comm'r Pat. 1988)        2268 

Egbert v. Lippmann, 104 U.S. 333 (1881)       2133.03(a), 

2133.03(e)(4) 

Eggan, Ex parte, 1911 C.D. 213, 172 O.G. 1091 
(Comm'r Pat. 1911)      403.01, 403.02 

Ehrreich, In re, 590 F. 2d 902, 200 USPQ 504 
(CCPA 1979)         2129, 2172, 2411.01 

E.I. du Pont De Nemours and Co. v. Berkley and Co., 
620 F. 2d 1247, 205 USPQ 1 (8th Cir. 1980)        2107 

Eickmeyer, In re, 602 F. 2d 974, 202 USPQ 655 
(CCPA 1979)         715.05, 715.07 

Ekenstam, In re, 256 F. 2d 321, 118 USPQ 349, 
(CCPA 1958)         901.05, 901.05(b), 

2126, 2126.01, 2132 

Electric Storage Battery Co. v. Shimadzu, 
307 U.S. 5, 41 USPQ 155 (1938)      2133.03(b) 

Eli Lilly, In re, 902 F.2d 943, 14 USPQ2d 1741 
(Fed. Cir. 1990)                716.01(d), 716.02(b), 

716.02(c), 2142, 2144, 2145 

Elliott, Ex parte, 1904 C.D.103, 109 O.G. 1337 
(Comm'r Pat. 1904)      608.02(g) 

Elliott v. Barker, 481 F. 2d 1337, 179 USPQ 100 
(CCPA 1973)          2317 

Ellis, In re, 476 F.2d 1370, 177 USPQ 526 
(CCPA 1973)         2141.01(a) 

Elmwood Liquid Prod. Inc. v. Singleton 
Packing Corp., 170 USPQ 398 (M.D. Fla. 1970)    2004 

Elrich, Ex parte, 3 USPQ2d 1009 
(Bd. Pat. App. & Inter. 1987)     2136.03 

Eltgroth, In re, 419 F.2d 918, 164 USPQ 221 
(CCPA 1970)         2107 

Emerson v. Beach, 215 F. 2d 290, 103 USPQ 45 
(CCPA 1954)         2307.02 

1101.02(f) 

Emery v. Ronden, 188 USPQ 264 (Bd. Pat. Inter. 1974)    2138.06 

Engelhardt v. Judd, 369 F.2d 408, 151 USPQ 732 
(CCPA 1966)         2138.03, 2138.05 

Environmental Designs, Ltd. v. Union Oil Co., 
713 F.2d 693, 218 USPQ 865 (Fed. Cir. 1983)   716.04, 

2141.03 

Envirotech Corp. v. Westech Eng'g Inc., 
904 F.2d 1571, 15 USPQ2d 1230 (Fed. Cir. 1990)      2133.03(b) 

Epstein, In re, 32 F.3d 1559, 31 USPQ2d 1817 
(Fed. Cir. 1994)                716.07, 2133.03(b) 

Erlich, Ex parte, 3 USPQ2d 1011 
(Bd. Pat. App. & Inter. 1986)     2143.02, 2173.05(q) 

Erlich, Ex parte, 22 USPQ 1463 
(Bd. Pat. App. & Inter. 1992)     2141.03 

Ernsthausen v. Nakayama, 1 USPQ2d 1539 
(Bd. Pat. App. & Inter. 1985)     2165.01 

Ethicon v. Quigg, 849 F. 2d 1422, 7 USPQ 2d 1152 
(Fed. Cir. 1988)                2242, 2286 

Etter, In re, 756 F. 2d 852, 225 USPQ 1 
(Fed. Cir. 1985)                2242, 2258, 2279 

Evans v. Eaton, 20 U.S. (7 Wheat.) 356 (1822)     2163 

EWP Corp. v. Reliance Universal, Inc., 755 F.2d 898, 
225 USPQ 20 (Fed. Cir. 1985)    716.03(b) 

Eynde, In re, 480 F.2d 470, 178 USPQ 470 (CCPA 1973)    2144.03 

Facius, In re, 408 F2d 1396, 161 USPQ 294 
(CCPA 1969)         715.01(a), 

715.01(c), 2132.01, 2136.04, 

2136.05, 2137, 2137.01 

Fairchild and Co. Inc. v. Richmond, F and P.R. Co., 
516 F. Supp. 1305 (D.D.C. 1981)       2390 

Farrenkopf, In re, 713 F.2d 714, 219 USPQ 1 
(Fed. Cir. 1983)                2145 

Fas-Line Sales & Rentals Inc. v. E.Z. Lay Pipe Corp., 
203 USPQ 497 (W.D. Okla. 1979)      1442.05(a) 

Fassett, 1877 C.D. 317, 11 O.G. 420 
(Comm'r Pat. 1871)      1410.01, 1420 

Faulkner v. Baldwin Piano and Organ Co., 
195 USPQ 410  (7th Cir. 1977)     2004 

Feldman v. Aunstrup, 517 F. 2d 1351, 186 USPQ 108 
(CCPA 1975), cert. denied, 424 U.S. 912 (1976)      2406.01 

Ferag AG v. Quipp Inc., 45 F.3d 1562, 
33 USPQ2d 1512 (Fed. Cir. 1995)       2133.03(b) 

Ferens, In re, 417 F. 2d 1072, 163 USPQ 609 
(CCPA 1969)         2107 

Ferguson, Ex parte, 117 USPQ 229 (Bd. App. 1957)        2107.01, 

2107.02, 2164.07 

Fessmann, In re, 489 F. 2d 742, 180 USPQ 324 
(CCPA 1974)         2113 

Field v. Knowles, 183 F. 2d 593, 86 USPQ 373 
(CCPA 1950)         2133.03(c) 

Fielder, In re, 471 F. 2d 640, 176 USPQ 300 
(CCPA 1973)         716.03(b) 

Fielder and Underwood, In re, 471 F.2d 640, 
176 USPQ 300 (CCPA 1973)        716.01(a) 

Fields v Conover, 443 F.2d 1386, 170 USPQ 276 
(CCPA 1970)         2163.03 

Fiers v. Revel, 984 F.2d 1164, 25 USPQ2d 1601 
(Fed. Cir. 1993)                2137.01, 2138.04 

Fiers v. Sugano, 984 F.2d 164, 25 USPQ2d 1601 
(Fed. Cir. 1993)                2164.08(a) 

Fine, Ex parte, 217 USPQ 76 (Bd. App. 1981)    2307.02 

Fine, In re, 837 F.2d 1071, 5 USPQ2d 1596 
(Fed. Cir. 1988)                2143.01, 

2143.03, 2144 

Finley, In re, 174 F. 2d 130, 81 USPQ 383 (CCPA 1949)     716.02(e) 
Fischer, In re, 125 F.2d 725, 52 USPQ 473 
(CCPA 1942)         2144.03 

Fischer & Porter Co. v. Corning Glass Works, 
61 F.R.D. 321, 181 USPQ 329 (E.D. Pa. 1974)   1701.01 

Fisher, In re, 427 F.2d 833, 166 USPQ 18 
(CCPA 1970)         2164.03; 2164.08, 

 2173.05(a), 2173.05(t) 

Fisher Controls Co., v. Control Components, Inc., 
196 USPQ 817 (S.D. Iowa 1977)      1442.05(a) 

Fitzgerald, In re, 619 F.2d 67, 205 USPQ 594 
(CCPA 1980)         2122, 2183 

Fitzgerald v. Arbib, 268 F.2d 763, 122 USPQ 530 
(CCPA 1959)         2138.05, 2138.06, 

Flick Reedy Corp. v. Hydro Line Manfg. Co., 
351 F. 2d 546, 146 USPQ 694(7th Cir. 1965) 
cert. denied, 383 U.S. 958 (1966)   608.01(h) 

Flint, In re, 411 F.2d 1353, 162 USPQ 228 (CCPA 1969)     2173.05(n) 
Floyd, In re, Appeal No. 94-1071, slip op. at page 4 
(Fed. Cir. July 20, 1994) 2144.07 

Folkers, In re, 344 F.2d 970, 145 USPQ 390 
(CCPA 1965)         2107.01 

Fong, In re, 288 F.2d 932, 129 USPQ 264 
(CCPA 1961)         715.02, 715.03 

Fong et al., In re, 378 F.2d 977, 154 USPQ 25 
(CCPA 1967)         804 

Forman, In re, 463 F. 2d 1125, 175 USPQ 12 
(CCPA 1972)         2106.02 

Forsyth v. Richards, 1905 C.D. 115 O.G. 1327 
(Comm'r Pat. 1905)      1105.02 

Fortal Corp. v. Phone-Mate, 825 F. 2d 1577, 
3 USPQ 2d 1771 (Fed. Cir. 1987)       2293 

Foster, Ex parte, 1903 C.D. 213, 105 Q.G. 261 
(Comm'r Pat. 1903)      715.04 

Foster, In re, 343 F. 2d 980, 145 USPQ 166 
(CCPA 1965)         2132.01, 2133, 

  2133.02, 2133.03(c) 

Fotland, In re, 779 F. 2d 31, 228 USPQ 193 
(Fed. Cir. 1985)                1403, 1412.03 

Fouche, In re, 439 F. 2d 1237, 169 USPQ 429 
(CCPA 1971)         716.02(b), 2107 

Fout, In re, 675 F. 2d 297, 213 USPQ 532 
(CCPA 1982)         706.02(l), 

2129, 2144.06 

Fox, Ex parte, 128 USPQ 157, 1960 C.D. 28, 
761 O.G. 906 (Bd. App. 1957)    608.04(a) 

Fredericksen, In re, 213 F.2d 547, 102 USPQ 35 
(CCPA 1954)         2173.05(c) 

Fredkin v. Irasek, 397 F.2d 342, 158 USPQ 280 
(CCPA 1968)         2138.05 

Freeman, In re, 573 F.2d 1237, 197 USPQ 464 
(CCPA 1978)         2106, 2184 

Freeman, In re, 30 F.3d 1459, 31 USPQ2d 1444 
 (Fed. Cir. 1994)       706.03(w) 

Fregeau v. Mossinghoff, 776 F. 2d 1034, 227 USPQ 
 848 (Fed. Cir. 1985)       2107, 2107.01 

Fressola, Ex parte, 27 USPQ2d 1608 (Bd. Pat. App. & 
Inter. 1993)            2173.05(r), 2173.05(s) 

Frey, In re, 182 F. 2d 184, 86 USPQ 99 (CCPA 1950)  2307.02 

Fried, In re, 329 F. 2d 323, 141 USPQ 27, 
(CCPA 1964)         608.01(p) 

Frilette and Weisz, In re, 412 F.2d 164, 162 USPQ 163 
(CCPA 1969)         715.01(b) 

Fritch, In re, 972 F.2d 1260, 23 USPQ2d 1780 
(Fed. Cir. 1992)                2143.01 

Fritsch v. Lin, 21 USPQ2d 1731 (Bd. Pat. App. & 
Inter. 1991)            2137.01, 2138.06 

Fuge, In re, 272 F. 2d 954, 124 USPQ 105 
(CCPA 1959)         901.05, 2126.02 

Fujishiro et al., Ex parte, 199 USPQ 36 
(Bd. App. 1977)             901.05, 2135.01 

Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 
76 USPQ 280   (1948)    2105, 2106 

Gallo, In re, 231 USPQ 496 (Comm'r Pat. 1986)     103 

Gandy v. Main Belting Co., 143 U.S. 587 (1892)      2133.03(d) 

Garbo, In re, 287 F.2d 192, 129 USPQ 72 (CCPA 1961)   1504 

Gardner, In re, 475 F. 2d 1389, 177 USPQ 396 
(CCPA 1973), reh'g denied, 480 F. 2d 879 
(CCPA 1973)         2107, 2107.02 

Gardner v. TEC Systems, Inc., 725 F. 2d 1338, 
220 USPQ 777 (Fed. Cir. 1984)     2144.04 

Garfinkel, In re, 437 F.2d 1000, 168 USPQ 659 
(CCPA 1971)         715 

Garret Corp. v. U.S., 422 F.2d 874, 164 USPQ 521 
(Ct. Cl. 1970)          2128.01 

Garrett v. Cox, 110 USPQ 52, (CCPA 1956)        1302.04 

Gaubert, In re, 524 F. 2d 1222, 187 USPQ 664 
(CCPA 1975)         2107.02 

Gaubert, In re, 530 F.2d 1402, 189 USPQ 432 
(CCPA 1975)         2107.02 

Gay, In re, 309 F.2d 708, 135 USPQ 311 
(CCPA 1962)         608.01(h), 2165.01 

Gazave, In re, 379 F. 2d 973, 154 USPQ 92 
(CCPA 1967)         2107, 2107.01, 2107.02 

Gazda, In re, 219 F.2d 449, 104 USPQ 400 
(CCPA 1955)         2144.04 

Gearon v. United States, 121 F.Supp. 652, 
101 USPQ 460 (ct. cl. 1954), cert. denied, 
348 U.S. 942, 104 USPQ 409 (1955) 601.01(e) 

Gebauer-Fuelnegg, In re, 121 F.2d 505, 
 50 USPQ 125 (CCPA 1941)        608.01(v) 

Geiger, In re, 815 F.2d 686, 2 USPQ2d 1276 
(Fed. Cir. 1987)                716.02(e), 2144.06 

Geiger et al., In re, 425 F. 2d 1276, 165 USPQ 572 
(CCPA 1970)         1504.06 

Gellert v. Wanberg, 495 F.2d 779, 181 USPQ 648 
(CCPA 1974)         2138.05 

Gelles, Ex parte, 22 USPQ2d 1318 (Bd. Pat. App. 
& Inter. 1992)          716.02, 716.02(b) 

Gelnovatch, In re, 595 F. 2d 32, 201 USPQ 136 
 (CCPA 1979)            2106 

Gemveto Jewelry Co., Inc. v. Lambert Bros. Inc., 
542 F. Supp. 933, 216 USPQ 976 (S.D. N.Y. 1982)       2001.06(a), 
2004, 2016 

General Electric v. United States, 206 USPQ 260 
(Ct. CI. 1979)          2133.03(e)(1) 

General Foods Corp. v. Studiengesellschaft 
Kohle mbH, 972 F. 2d 1272, 23 USPQ2d 
1839 (Fed. Cir. 1992)     804 

General Motors Corp. v. Bendix Aviation Corp., 

       102 USPQ 58 (N.D. Ind. 1954)   2133.03(e)(6) 

General Tire and Rubber Co. v. Watson-Bowman 
Assoc., Inc., 193 USPQ 479 (D. Del. 1977) 1442.05(b) 

George, Ex parte, 21 USPQ2d 1058 (Bd. Pat. App. 
& Inter. 1991)          716.01(c) 

George, In re, 2 USPQ2d 1880 (Bd. Pat. App. & 
Inter. 1987)            2128.01 

Gerber Garment Technology, Inc. v. Lectra 
Systems, Inc., 916 F. 2d 683, 16 USPQ2d 
1436 (Fed. Cir. 1990)     804 

Gershon, In re, 372 F.2d 535, 152 USPQ 602 
(CCPA 1967)         716.02(c), 716.04 

Ghiron, In re, 442 F.2d 985, 169 USPQ 723 
(CCPA 1971)         2106, 2164.06, 2185 

Gibbs, In re, 437 F.2d 486, 168 USPQ 578 
(CCPA 1971)         715, 2134 

Gibson, In re, 39 F.2d 975, 5 USPQ 230 (CCPA 1930)  2144.04 

Gilderdale, Ex parte, 1990 Pat. App. LEXIS 25 
(Bd. Pat. App. & Inter. Appeal no. 89-0352)   2136.03 

Gillman v. Stern, 46 USPQ 430 (2d Cir. 1940)    2133.03(a) 

Ginos v. Nedelec, 220 USPQ 831 (Bd. Pat. 
Inter. 1983)            2138.05, 2138.06 

Glaser v. Strickland, 220 USPQ 446 
(Bd. Pat. Inter. 1983)      716.09 

Glass, In re, 492 F.2d 1228, 181 USPQ 31 
(CCPA 1974)         608.01(h), 

2124, 2165.02 

Glavas, In re, 230 F. 2d 447, 109 USPQ 50 
(CCPA 1956)         1504.02, 1504.03 

Glaxo Inc. v. Novopharm Ltd., 52 F.3d 1043, 
 34 USPQ2d 1565 (Fed. Cir. 1995)        2107 

Goffe, In re, 542 F.2d 564, 191 USPQ 429 
(CCPA 1976)         2164.08(c) 

Goldman, In re, 205 USPQ 1086 (Comm'r Pat. 1980)        2126.01 

Goldstein, In re, 16 USPQ2d 1963 
(Dep. Assist. Comm'r Pat. 1988)       402.10 

Golota v. Strom, 489 F. 2d 1287, 180 USPQ 396 
(CCPA 1974)         2308.02 

Good, Ex parte, 1911 C.D. 43, 164 O.G. 789 
(Comm'r Pat. 1911)      608.02(d) 

Goodman, In re, 11 F. 3d 1046, 29 USPQ2d 2010 
(Fed. Cir. 1993)                804 

Goodyear Tire & Rubber Co., Ex parte, 230 USPQ 357 
(Bd. Pat. App. & Inter. 1985)     2141.01(a) 

Gordon, In re, 733 F.2d 900, 221 USPQ 1125 
(Fed. Cir. 1984)                2143.01 

Gorman, In re, 933 F.2d 982, 18 USPQ2d 1885 
(Fed. Cir. 1991)                2145 

Gosteli, In re, 872 F. 2d 1008, 10 USPQ 2d 1614 
 (Fed. Cir. 1989)   715.03, 2131.02, 2136.05, 

2163.02, 2163.03, 2163.05 

Gottlieb et al., In re, 51 CCPA 1114, 
328 F. 2d 1016, 140 USPQ 665 (CCPA 1964)        2107.01 

Gottschalk v. Benson, 409 U.S. 63, 175 USPQ 
673 (1972)      2106 

Gould, Ex parte, 231 USPQ 943, 
(Bd. Pat. App. & Inter. 1986)     2242 

Gould v. Control Laser Corp., 705 F. 2d 1340, 
217 USPQ 985 (Fed. Cir. 1983)     2286 

Gould v. Quigg, 822 F.2d 1074, 3 USPQ2d 1302 
(Fed. Cir. 1987)                2164.02, 2164.05(a) 

Gould v. Schawlow, 363 F.2d 908, 150 USPQ 634 
(CCPA 1966)         2138.06 

Gourtoff, Ex parte, 1924 C.D. 153, 329 O.G. 536 
(Comm'r Pat. 1924)      707.13, 710.06 

Grabiak, In re, 769 F.2d 729, 226 USPQ 871 
(Fed. Cir. 1985)                2144.09 

Graham et al. v. John Deere, 383 U.S. 1, 
148 USPQ 459 (1966)      706.02(j), 716.01(a), 804, 

1504.03, 2106, 2141 

Grall, Ex parte, 202 USPQ 701 (Bd. App. 1978)      2308.02 

Gramme Elec. Co. v. Arnoux and Hochhausen 
Elec. Co., et al., 17 Fed. 838, 1883 C.D.418 
(S.D. N.Y., 1883)   901.05, 2135.01 

Grasselli, Ex parte, 231 USPQ 393 
(Bd. App. 1983)             2143.03, 2173.05(i) 

Grasselli, In re, 713 F.2d 731, 218 USPQ 769 
(Fed. Cir. 1983)                716.02(d), 2145 

Graver Tank & Mfg. Co. v. Linde Air Products, 
339 U.S. 605, 85 USPQ 328 (1950)        2184, 2186 

Gray, Ex parte, 10 USPQ2d 1922 
(Bd. Pat. App. & Inter. 1989)     716.01(c), 716.02(g), 

2113, 2144.04 

Gray, In re, 115 USPQ 80 (Comm'r Pat. 1956)     409.03(f) 

Gray, In re 53 F.2d 520, 11 USPQ 225 
(CCPA 1931)         2111.03 

Grayson, Ex parte, 51 USPQ 413 (Bd. App. 1941)      706.03(a) 

Greenewalt v. Stanley, 12 USPQ 122 (3d Cir. 1931) 2133.03(e)(1) 

Greenfield, In re, 40 F. 2d 775, 5 USPQ 474 
(CCPA 1930)         1214.01 

Greenwood v. Seiko Instruments, 8 USPQ 2d 1455 
(D.D.C. 1988)       2273 

Grier, Ex parte, 1923 C.D. 27, 309 O.G. 223 
(Comm'r Pat. 1923)       820 

Griffith v. Kanamaru, 816 F.2d 624, 2 USPQ2d 1361 
(Fed. Cir. 1987)                2138.06 

Griswold, In re, 365 F. 2d 834, 150 USPQ 804 
(CCPA 1966)         804.02 

Grose, In re, 592 F.2d 1161, 201 USPQ 57 
(CCPA 1979)         2144.02 

Groz & Sohne v. Quigg, 10 USPQ 2d 1787 
(D.D. C. 1988)           2265, 2272 

Grunwell, In re, 609 F. 2d 486, 203 USPQ 1055 
(CCPA 1979)         2107.01 

Gruschwitz et al., Ex parte, 138 USPQ 505, 
1963 C.D. 859, 138 USPQ 505 (Bd. App. 1961)   901.05, 901.05(b) 

Gulack, In re, 703 F.2d 1381, 217 USPQ 401 
(Fed. Cir. 1983)                2106 

Gulliksen v. Halberg, 75 USPQ 252 (Bd. App. 1937) 2128.01 

Gunn, In re, 537 F. 2d 1123, 190 USPQ 402 
(CCPA 1976)         2106, 2106.02, 

2164.05(a), 2164.06 

Gunn v. Bosch, 181 USPQ 758 (Bd. Pat. 
Inter. 1973)            2138.06 

Gunter v. Stream, 573 F.2d 77, 197 USPQ 482 
(CCPA 1978)         2138.04 

Gurley, In re, 27 F.3d 551, 31 USPQ2d 1130 
(Fed. Cir. 1994)                2123, 2145 

Gutman v. Beriger, 200 USPQ 596 (Comm'r Pat. 1978)  1105 

Gustafson, In re, 331 F.2d 905, 141 USPQ 585 
(CCPA 1964)         2173.05(k) 

Gwinn, Ex parte, 112 USPQ 439 (Bd App. 1955)    706.03(a) 





Haas, In re, 580 F. 2d 461, 198 USPQ 334 (CCPA 1978)    803 

Hack, In re, 245 F.2d 246, 114 USPQ 161 (CCPA 1957)   2112.02 

Hafner, In re, 410 F. 2d 1403, 161 USPQ 783 
(CCPA 1969)         201.11 

Hageman, Ex parte, 179 USPQ 747 (Bd. App. 1971)       201.11 

Hale, Ex parte, 49 USPQ 209 (Bd. App. 1941)   715.09 

Hall, Ex parte, 83 USPQ 38 (Bd. App. 1949)  2173.05(d) 

Hall, In re, 208 F.2d 370, 100 USPQ 46 (CCPA 1953)  2173.05(j) 

Hall, In re, 781 F.2d 897, 228 USPQ 453 
(Fed. Cir. 1986)                2128, 

2128.01, 2128.02 

Hall v. Macneale, 107 U.S. 90 (1882)       2133.03(a), 2133.03(e)(4) 
Halleck, In re, 422 F.2d 911, 164 USPQ 647 
(CCPA 1970)         2173.05(c) 

Halliburton v. Dow Chemical, 182 USPO 178 
(N.D. Okla. 1970)   2004 

Haller, Ex parte, 103 USPQ 332 (Bd. App. 1953)      901.05, 2127 

Hamilton, In re, 882 F.2d 1576, 11 USPQ2d 1890 
(Fed. Cir. 1989)                2133.03(c) 

Hammack, In re, 427 F.2d 1378, 166 USPQ 204 
(CCPA 1970)         2173.03 

Hammack, In re, 427 F2d 1384, 166 USPQ 209 
(CCPA 1970)         2173.05(e) 

Hammell, In re, 332 F. 2d 796, 141 USPQ 832, 
(CCPA 1964)         709.01 

Hardee, In re, 223 USPQ 1122 
(Comm'r Pat. 1984)      803.02, 2137.01 

Hargraves, In re, 53 F. 2d 900, 11 USPQ 240 
(CCPA 1931)         804 

Harnish, In re, 631 F. 2d 716, 206 USPQ 300 
(CCPA 1980)         803.02, 2173.05(h) 

Harrington Mfg. v. Co. v. Powell Mfg. Co., 
815 F.2d 1478, 2 USPQ2d 1364 (Fed. Cir. 1986)     2133.03(e)(2) 

Harris, Ex parte, 79 USPQ 439 (Comm'r Pat. 1948)        707.05(f) 
Harry, In re, 333 F.2d 920, 142 USPQ 164 
(CCPA 1964)         715.07, 2138.06 

Hartley, Ex parte, 1908 C.D. 224 (Comm'r Pat.1908)  720.05 

Hartop, In re,  311 F. 2d 249, 135 USPQ 419 
(CCPA 1962)         2107, 2107.02 

Harwood, In re, 390 F. 2d 985, 156 USPQ 673 
(CCPA 1968) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 
.  . 2107 

Harza, In re, 274 F.2d 669, 124 USPQ 378 
(CCPA 1960)         2144.04 

Hasche, Ex parte, 86 USPQ 481 (Bd. App. 1949)     2173.05(d) 

Haskell v. Colebourne, 671 F.2d 1362, 213 USPQ 192 
(CCPA 1982)         2138.06 

Hata, Ex parte, 6 USPQ2d 1652 (Bd Pat. App. & 
Int. 1987)      2404.02 

Hawkins, In re, 179 USPQ 157, 486 F. 2d 569 
(CCPA 1973)         608.01(p) 

Hawkins, In re, 179 USPQ 163, 486 F. 2d 579 
(CCPA 1973)         608.01(p) 

Hawkins, In re, 179 USPQ 167, 486 F. 2d 577 
(CCPA 1973)         608.01(p) 

Hay, In re, 534 F. 2d 917, 189 USPQ 790 
(CCPA 1976)         608.01(h), 

2165.01, 2411.04 

Hazeltine Research Inc. v. Brenner, 
147 USPQ 429 (U.S. 1965)        2136.02 

Head, Ex parte, 214 USPQ 551 (Bd. App. 1981)    2173.05(h) 

Healy, Ex parte, 1898 C.D. 157, 84 Q.G. 1281 
(Comm'r Pat. 1898)      806.04(b) 

Heany, In re, 1911 C.D. 138 (Comm'r Pat. 1911)      2012, 2012.01 
Heck, In re, 699 F.2d 1331, 216 USPQ 1038 
(CCPA 1982)         2123 

Heckman, Ex parte, 135 USPQ 229 
(P.O. Super. Exam. 1960)         1504.05 

Hedges, In re, 783 F.2d 1038, 228 USPQ 685 
(Fed. Cir. 1986)                2145 

Hellsund, In re, 474 F.2d 1307, 177 USPQ 170 
(CCPA 1973)         715 

Hengehold, In re, 440 F. 2d 1395 169 USPQ 473, 
(CCPA 1971)         821 

Henriksen, In re, 399 F. 2d 253, 158 USPQ 224 
(CCPA 1968)         201.11 

Heritage, In re, 182 F. 2d 639, 
86 USPQ 160 (CCPA 1950)       901.02 

Heritage Pat. No. 2,375,414, Ex parte, 
decided Jan. 26, 1944     819.01 

Herman v. Huddleston, 459 U.S. 375 (1983) 2107.01 

Herrmann et al., In re, 261 F. 2d 598, 120 USPQ 182 
(CCPA 1949)          707.07(f) 

Hershberger, Ex parte, 96 USPQ 54 (Bd. App. 1952) 2128.01 

Herschler, In re, 591 F. 2D 693, 200 USPQ 711 
(CCPA 1979)         2106.01 

Herz, In re, 537 F.2d 549, 190 USPQ 461 
(CCPA 1976)         2111.03 

Hewlett-Packard Co. v. Bausch & Lomb Inc., 
 882 F. 2d 1556 11 USPQ2d 1750,  (Fed. Cir. 1989) 1414.03 

Hewlett-Packard Co. v. Bausch & Lomb Inc., 
909 F.2d 1464, 15 USPQ2d 1525 (Fed. Cir. 1990)      2114 

Hiatt v. Ziegler, 179 USPQ 757 (Bd. Pat. Inter. 1973)     2138.04 
Hibberd, Ex parte, 227 USPQ 443 
(Bd. Pat. App. & Inter. 1985)      1206, 1601, 2105 

Hidy, In re, 303 F. 2d 954, 133 USPQ 650 
(CCPA 1962)         715.05, 

804.02, 2308.01 

Hilborn v. Dann, 546 F. 2d 401, 192 USPQ 132 
(CCPA 1976)         2308.02 

Hildebrand, Ex parte, 15 USPQ 2d 1662 
(Bd. Pat. App. & Inter. 1990)     2404.01, 2410.01 

Hill, In re, 161 F.2d 367, 73 USPQ 482 
(CCPA 1947)         2111.01, 2173.05(a) 

Hill, In re, 284 F.2d 955, 128 USPQ 197 
(CCPA 1960)         716.02(d) 

Hilmer, In re, 359 F. 2d 859, 149 USPQ 480, 
(CCPA 1966)         715, 2136.03, 2308.01 

Hilton, Ex parte, 148 USPQ 356 (Bd. App. 1965)      2144.04 

Hirschler, Ex parte 110 USPQ 384 (Bd. App. 1952)        2136.01 

Hirao, In re, 535 F.2d 67, 190 USPQ 15 
(CCPA 1976)         2111.02, 2141.02 

Hiyamizu, Ex parte, 10 USPQ2d 1393 
(Bd. Pat. App. & Inter. 1988)     2141.03 

Hobbs v. United States, 171 USPQ 713 
(5th Cir. 1971)             2133.03, 2133.03(b) 

Hoch, In re, 428 F2d 1341, 166 USPQ 406 (CCPA 1970)   706.02(j) 

Hodge v. Rostker, 501 F. Supp. 332 (D. D.C. 1980) 1216.02 

Hodosh v. Block Drug Co., Inc., 786 F.2d 1136, 
 229 USPQ 182 (Fed. Cir. 1986)      2141 

Hoeksema, In re, 399 F.2d 269, 158 USPQ 597 
(CCPA 1968)         2121.01, 

2121.02, 2144.09 

Hoeschele, In re, 406 F.2d 1403, 160 USPQ 809 
(CCPA 1969)         2144.05 

Hoffman, Ex parte, 12 USPQ2d 1061 
(Bd. Pat. App. & Inter. 1989)     2111.03 

Hoffman v. Klaus, 9 USPQ2d 1657  (Bd. Pat. App. 
& Inter. 1988)          2107.01 

Hogan, In re, 559 F.2d 595, 194 USPQ 527 
(CCPA 1977)         2124, 2164.05(a) 

Holladay, In re, 584 F.2d 384, 199 USPQ 516 
(CCPA 1978)         716.02(e) 

Hollingsworth, In re, 253 F.2d 238, 117 USPQ 182 
(CCPA 1958)         716.03(a) 

Holmes v. Kelly, 586 F. 2d 234, 199 USPQ 778 
(CCPA 1978)         2371 

Holmwood v. Cherpeck, 2 USPQ2d 1942 (Bd. Pat. 
App. & Inter. 1986)         2138.03 

Homan, Ex parte, 1905 C.D. 288 (Comm'r Pat. 1905) 715.07 

Honeywell v. Diamond, 208 USPQ 452 (D.D.C. 1980)        2165.04 

Honn, In re, 364 F. 2d 454, 150 USPQ 652 
(CCPA 1966)         608.01(h), 2165.01 

Hook, Ex parte, 102 USPQ 130 (Bd. App. 1953)    715.07 

Hoover Co., In re, 134 F. 2d 624, 57 USPQ 111 
(CCPA 1943)         2363.02 

Hormone Research Foundation Inc. v. Genentech Inc., 
904 F.2d 1558, 15 USPQ2d 1039 (Fed. Cir. 1990)      2173.05(a) 

Horton, Ex parte, 226 USPQ 697 
(Bd. Pat. App. & Inter. 1985)     2258 

Horvitz v. Pritchard, 182 USPQ 505 
(Bd. Pat. & Int. 1974)      2308.02 

Horwath v. Lee, 564 F. 2d 948, 195 USPQ 701 
(CCPA 1977)         2332 

Hostettler, In re, 356 F.2d 562, 148 USPQ 514 
(CCPA 1966)         715.03 

Hough, In re, 108 USPQ 89, 703 O.G.200 
(Comm'r Pat. 1955)      409.03(i) 

Houghton, In re, 433 F.2d 820, 167 USPQ 687 
(CCPA 1970)         2107 

Hovlid v. Asari, 305 F. 2d 747, 134 USPQ 162 
(9th Cir. 1962)             201.11 

Howarth, In re, 654 F.2d 103, 210 USPQ 689 
(CCPA 1981)         716.09 

Hozumi, Ex parte, 3 USPQ 2d 1059 
(Bd. Pat. App. & Inter. 1984)     803.02 

Hruby, In re, 153 USPQ 61 (CCPA 1967)     1504.01 

Huelster v. Reiter,  168 F.2d 542, 78 USPQ 82 
(CCPA 1948)         2138.06 

Hull v. Bonis, 214 USPQ 731 (Bd. Pat. Inter. 1982)  2138.05 

Hull v. Davenport, 90 F.2d 103, 33 USPQ 506 
(CCPA 1937)         2138.01, 2138.06 

Humber, Ex parte, 217 USPQ 265 (Bd. App. 1961)      716.02(e) 

Humphrey v. Fickert, 1904 C.D. 447 
(Comm'r Pat. 1904)      2390 

Humphreys, Ex parte, 24 USPQ2d 1255 
(Bd. Pat. App. & Inter. 1992)      2404.01, 2405 

Hunt Co. v. Mallinckrodt Chem.Works, 
177 F. 2d 583, 83 USPQ 277, (2d Cir. 1949)  201.11, 1504.20 

Hunter, Ex parte, 1889 C.D. 218, 49 Q.G. 733 
(Comm'r Pat. 1889)      715.07(a) 

Hunter v. Biessbarth, 15 USPQ 2d 1343 
(Comm'r Pat. 1990)      2361 

Hyatt, In re, 708 F.2d 712, 218 USPQ 195 
(Fed. Cir. 1983)                2164.08(a), 2181 

Hybritech Inc. v. Monoclonal Antibodies, Inc., 
802 F.2d 1367, 231 USPQ 81 (Fed. Cir. 1986)   716.03(b), 2138.04, 
2141, 2173.05(a), 2182 

Iagan, Ex parte, 1911 C.D. 10, 162 O.G. 538 
(Comm'r Pat. 1910)      2173.05(m) 

I.C.E. Corp. v. Armco Steel Corp., 250 F.Supp. 738, 
148 USPQ 537 (SDNY 1966)        2128 

Indiana General Corp. v. Krystinel Corp., 
297 F. Supp. 427,  161 USPQ 82 (S.D. N.Y. 1969) 
aff'd, 421 F. 2d 1033, 164 USPQ 321 (2d Cir. 1970)  608.01(h) 

Information Research and Engineering Co., Inc. 
v. Hercules Inc., 171 USPQ 577 (C.D. Cal. 1971)       2012 

Intellicall Inc. v. Phonometrics, Inc., 952 F.2d 1384, 
21 USPQ2d 1383 (Fed. Cir. 1992)       2106, 2181 

International Glass Co. v. United States, 
408 F.2d 395, 159 USPQ 434 (Ct. Cl. 1969) 2138.03 

Int'l Tooth Crown Co. v. Gaylord, 140 U.S. 55 (1891)    2133.03(e)(4) 
Interroyal Corp. v. Simmons Co., 204 USPQ 562 
(S.D. N.Y. 1979)                2133.03(e)(1), 2133.03(e)(3) 

Ionescu, Ex parte, 222 USPQ 537 (Bd. App. 1984)       2143.03, 

2171, 2173.06 

Irish, In re, 433 F.2d 1342, 167 USPQ 764 
(CCPA 1970)         2136.01 

Irons, In re, 340 F. 2d 974, 144 USPQ 351 (CCPA 1965)     2107.01 
Irwin, Ex parte, 1928 C.D. 13, 367 O.G. 701j 
(Comm'r Pat. 1928)      604.02 

Isaacs, In re, 347 F. 2d 889, 146 USPQ 193 
(CCPA 1963)         2107.01, 2107.02 

Ishizaka, Ex parte, 24 USPQ2d 1621 (Bd. Pat. App. 
& Inter. 1992)          716.02(b) 

Iwahashi, In re, 888 F.2d 1370, 12 USPQ2d 1908 
(Fed. Cir. 1989)                2106 

Jackson, Ex parte, 217 USPQ 804 
(Bd. Pat. App. & Inter. 1982)     2164.06, 2404.02 

Jaffe, Ex parte, 147 USPQ 45 (Bd. of App. 1964)       1504 

J. A. La Porte, Inc. v. Norfolk Dredging Co., 
787 F.2d 1577, 229 USPQ 435 (Fed. Cir. 1986)    2133.03(b) 

Janakirama-Rao, In re, 317 F.2d 951, 137 USPQ 
893 (CCPA 1963)             2111.03 

Japikse, In re, 181 F.2d 1019, 86 USPQ 70 
(CCPA 1950)         2144.04 

Jentoft, In re, 392 F. 2d 633, 157 USPQ 363 
(CCPA 1968)         1490 

Jessell v. Newland, 195 USPQ 678, 
(Dep. Comm'r Pat. 1977)       1605 

Jockmus v. Leviton, 28 F.2d 812 (2d Cir. 1928)      2121.04, 2125 
John O. Butler Co. v. Block Drug Co. Inc., 
226 USPQ 855 (D. Ill. 1985)   1504 

Johns-Manville Corp. v. Guardian Industries Corp., 
586 F.Supp. 1034, 221 USPQ 319 (E.D. Mich. 1983)        2165.01 

Johnson et al., In re, 589 F.2d 1070, 200 USPQ 199, 
(CCPA 1978)         2106, 2184 

Johnson, In re, 747 F.2d 1456, 223 USPQ 1260 
(Fed. Cir. 1984)                716.02(e) 

Jolles, In re, 628 F. 2d 1322, 206 USPQ 885 
(CCPA 1980)         2107, 2107.01, 

 2107.02, 2164.07 

Joly, In re, 376 F.2d 906, 153 USPQ 45 
(CCPA 1967)         608.01(p) 

Jones, Ex parte, 1924 C.D. 59, 327 Q.G. 681 
(Comm'r Pat. 1924)      709.01 

Jones, In re, 373 F. 2d 1007, 153 USPQ 77 
(CCPA 1967)         706.03(a) 

Jones, In re, 542 F. 2d 65, 191 USPQ 24 
(CCPA 1976)         1109(b) 

Jones, In re, 958 F.2d 347, 21 USPQ2d 1941 
(Fed. Cir. 1992)                2143.01, 2144, 2144.08 

Jones v. Hardy, 727 F.2d 1524, 220 USPQ 1021 
(Fed. Cir. 1984)                2141.02 

Joy Technologies nc. v. Manbeck, 751 F. Supp. 225, 
17 USPQ2d 1257 (D.D.C. 1990)    716.03(a) 

J. P. Stevens & Co. v. Lex Tex Ltd., Inc., 
747 F. 2d 1553, 223 USPQ 1089 (Fed. Cir. 1984)      201.6 

Josserand, In re, 188 F. 2d 486, 89 USPQ 371 
(CCPA 1951)         2133.03(e)(1) 

Jovanovics, Ex parte, 211 USPQ 907 
(Bd. Pat. App. & Inter. 1981) . . . . . . . . . . . . . . . . . . . . . . 
.  . . . . . 2107.02 

Justus v. Appenzeller, 177 USPQ 332, (Bd. Pat. 
Inter. 1971)            2138.06 

Kaghan, In re, 387 F. 2d 398, 156 USPQ 130 
(CCPA 1967)         706.03(w) 

Kahl v. Scoville, 609 F. 2d 991, 203 USPQ 652 
(CCPA 1979)         2317 

Kahn, In re, 202 USPQ 772 (Comm'r Pat. 1979)     2012.01, 

2040.02 

Kaiser Industries Corp. v. Jones & Laughlin Steel Corp., 
185 USPQ 343 (3d Cir. 1975)   2012.01 

KangaROOS USA, Inc., v. Caldor Inc., 778 F. 2d 1571, 
228 USPQ 32 (Fed. Cir. 1985)    1504.20 

Kanter, In re, 399 F.2d 249, 158 USPQ 331 
(CCPA 1968)         2116.01 

Kantor, Ex parte, 177 USPQ 455 (Bd. App. 1958)      715.07(a) 

Kaplan, In re, 789 F. 2d 1574,229 USPQ 678 
(Fed. Cir. 1986)                804 

Kaslow, In re, 707 F.2d 1366, 217 USPQ 1089 
(Fed. Cir. 1983)                2106.01, 2141.02, 2163.02 

Kathawala, In re, 9 F.3d 942, 28 USPQ2d 1785 
(Fed. Cir. 1993)                2126, 2126.02, 2135.01 

Katrapat, In re, 6 USPQ 2d 1863 (Comm'r Pat. 1988)  2268 

Kattwinkle, Ex parte, 12 USPQ 11 (Bd. App. 1931       608.01(v) 

Kaufman v. Lantech, 807 F. 2d 1970, USPQ 2d 1202, 
(Fed. Cir. 1986)                2293 

Katz, In re, 687 F.2d 450, 215 USPQ 14 
(CCPA 1982)         715.01(c), 716.09, 

2132, 2132.01, 2133, 

2136.05, 2137, 2138.02 

Kawai v. Metlesics, 480 F.2d 880, 
178 USPQ 158 (CCPA 1973)        2107.01, 2138, 

2138.05, 2163.03 

Kaye, In re, 332 F.2d 816, 141 USPQ 829 
(CCPA 1964)         706.02(k) 

Keizer v. Bradley, 270 F.2d 396, 123 USPQ 215 
(CCPA 1959)         2138.06 

Keller, In re, 642 F.2d 413, 208 USPQ 871 
(CCPA 1981)         2145 

Kellogg Switchboard & Supply Co., The, In re, 
1906 C.D. 274 (Comm'r Pat. 1906)        106 

Kelly, In re, 200 USPQ 560 (Comm'r Pat. 1978)     1504.05 

Kelly, In re, 305 F.2d 909, 134 USPQ 397 
(CCPA 1962)         2173.05(o) 

Kendall v. Searles, 173 F.2d 986, 81 USPQ 363 
(CCPA 1949)         2138.06 

Kerkhoven, In re, 626 F.2d 846, 205 USPQ 1069 
(CCPA 1980)         2144.06 

Key Mfg. Group Inc. v. Microdot, 4 USPQ 2d 
(E.D. Mich. 1987)   2293 

Keyes, Ex parte, 214 USPQ 579 (Bd. App. 1982)     716.01(c) 

Keystone Driller Co. v. Gen'l Excavator Co., 
290 U.S. 240, 19 USPQ 228 (1933)        2012 

KeyStone Retaining Wall Sys. Inc. v. Westrock Inc., 
997 F.2d 1444, 27 USPQ2d 1297 (Fed. Cir. 1993)      2133.03(c) 

Khusid, Ex parte, 174 USPQ 59 (Bd. App. 1971)     2173.05(c) 

Kilbey v. Thiele, 199 USPQ 290 (Bd. Pat. Inter. 1978)     2137 

Killian v. Watson, 121 USPQ 507 (D.D.C. 1958)     1216.02 

Kimbell, Ex parte, 226 USPQ 688 (Bd. App. 1985)       2217, 2258 

King Instrument Corp. v. Otari Corp., 767 F.2d 853, 
226 USPQ 402 (Fed Cir. 1985)    2133.03(a), 2138.05 

Kings, In re, 801 F. 2d 1324, 231 USPQ 136 
(Fed. Cir.1986)             1206, 2112.02 

Kingsland v. Carter Carburetor Corp., 168 F. 2d 565, 
77 USPQ 499 (D.C. Cir. 1948)    2344 

Kirk, In re, 376 F. 2d 936, 153 USPQ 48 
(CCPA 1967)         2107, 2107.01 

Kirsch, In re, 498 F.2d 1389, 182 USPQ 286 
(CCPA 1974)         2173.05(c) 

Kistler v. Weber, 412 F. 2d 280, 162 USPQ 214 
(CCPA 1969)         2308.02 

Klein, In re,  5 USPQ 259, 1930 C.D. 2, 
393 O.G. 519 (Comm'r Pat. 1930)       201.08 

Klug v. Wood, 212 USPQ 767 (Bd. Pat. Int. 1981)       2332 

Kluis, Ex parte, 70 USPQ 165 (Bd. App. 1945)    1604 

Klumb, Ex parte, 159 USPQ 694 (Bd. App. 1967)     2181 

Knapp v. Anderson, 477 F.2d 588, 177 USPQ 688 
(CCPA 1973)         2107 

Knell v. Mueller, 174 USPQ 460 
(Comm'r Pat. 1971)      804.02 

Knight, In re, 217 USPQ 294 (Comm'r Pat. 1982)      2225, 2258 

Knohl et al., In re, 386 F. 2d 476, 155 USPQ 586 
(CCPA 1967)         804.02 

Knowlton, In re, 481 F.2d 1357, 178 USPQ 486 
(CCPA 1973)         2106, 2106.02, 2185 

Kochan, Ex parte, 131 USPQ 204 (Bd. App. 1961)      2173.05(n) 

Kokaji, In re, 2 USPQ 2d 1309 (Comm'r Pat. 1987)        201.06(b) 
Koller, In re, 613 F.2d 819, 204 USPQ 702 
(CCPA 1980)         2124, 2163.03 

Kollman, In re, 595 F.2d 48, 201 USPQ 193 
(CCPA 1979)         716.02(d) 

Kondo v. Martel, 220 USPQ 47 (Bd. Pat. Inter. 1983)   2138.02 

Komenak, Ex parte, 45 USPQ 186, 1940 C.D. 1, 
512 O.G. 739 (Comm'r Pat. 1940)       201.09 

Kotler, Ex parte, 1901 C.D.62, 95 O.G. 2684 
(Comm'r Pat. 1901)      608.01(o) 

Krepelka, Ex parte, 231 USPQ 746 
(Bd. Pat. App. & Inter. 1986)     2107.02 

Krimmel, In re, 292 F. 2d 948, 130 USPQ 215 
(CCPA 1961)         2107.01, 2107.02 

Kristensen, Ex parte, 10 USPQ2d 1701 
(Bd. Pat. App. & Inter. 1989)     2173.05(a), 2173.05(o) 

Kroekel, In re, 504 F.2d 1143, 183 USPQ 610 
(CCPA 1974)         2173.05(c) 

Kroekel, In re, 803 F.2d 705, 231 USPQ 640 
(Fed. Cir. 1986)                715 

Kroger, Ex parte, 218 USPQ 370 (Bd. App. 1982)      716.09, 2132.01 
Kropa v. Robie, 187 F.2d 150, 88 USPQ 478 
(CCPA 1951)         2111.02 

Kuehl, In re,  425 F.2d 658, 177 USPQ 250 
(CCPA 1973)         2116.01 

Kuhle, In re, 526 F.2d 553, 188 USPQ 7 (CCPA 1975)  2144.04 

Kuklo, Ex parte, 25 USPQ2d 1387 (Bd. Pat. App. & 
Inter. 1992)            2133.03(a) 

Kulling, In re, 897 F.2d 1147, 14 USPQ2d 1056 
(Fed. Cir. 1990)                2144.05 

Kusko, Ex parte, 215 USPQ 972 
(Bd. App. 1981)             2137, 2138.01 

Kuttwinkle, Ex parte, 12 USPQ 11, (Bd. App. 1931) 608.01 





Labounty Mfg., Inc. v. U.S. Int'l Trade Comm, 
958 F. 2d 1066, 22 USPQ 2d 1025 
(Fed. Cir. 1992)                2004, 2133.03, 
                2133.03(e), 2133.03(e)(2) 

Lafferty, Ex parte, 190 USPQ 202 (Bd. App. 1975)        1403 

Laffland Bros. Co. v. Mid Western Energy Corp. 
225 USPQ 886 (W.D. Okla. 1985)      2286 

Lalu, In re, 747 F.2d 703, 223 USPQ 1257 
(Fed. Cir. 1984)                2144.09 

Lamberti, In re, 545 F.2d 747, 192 USPQ 278 
(CCPA 1976)         2144.01 

Lancaster et al., Ex parte, 151 USPQ 713, 
1966 C.D. 20, 833 O.G. 8,(Bd. App. 1965)        1504.02 

Land and Rogers, In re, 368 F. 2d 866, 
151 USPQ 621 (CCPA 1966)        2136.04, 2136.05 

Lander, Ex parte, 223 USPQ 687 (Bd. App. 1983)      1504.02 

Lange v. Comm'r, 352 F. Supp. 166, 176 USPQ 162 
(D.D. C. 1972)          1701.01 

Langer, In re, 465 F.2d 896, 465 F.2d 915, 
175 USPQ 169 (CCPA 1972)        2144.09 

Langer, In re, 503 F. 2d 1380, 183 USPQ 288 
(CCPA 1974)         2107.01, 

2107.02, 2124 

Langer v. Kaufman, 465 F.2d 915, 175 USPQ 172 
(CCPA 1972)         2138.04 

Langsett v. Marmet Corp., 141 USPQ 903, 
(W.D. Wisc .1964)   2133.03(c) 

Lanham, Ex parte, 135 USPQ 106, (Bd. App. 1961)       608.01(p) 

Lanham, In re, 1 USPQ 2d 1877 (Comm'r Pat. 1986)        2258 

Lantzke, Ex parte, 1910 C.D. 100, 156 O.G. 257 
(Comm'r Pat. 1910)      810.01 

Lantech Inc. v. Kaufman Co. of Ohio Inc., 878 F.2d 1446, 
12 USPQ2d 1076 (Fed. Cir. 1989)       2145 

Lapworth, In re, 451 F. 2d 1094, 172 USPQ 129 
(CCPA 1971)         1504 

Larson, In re, 340 F.2d 965, 144 USPQ 347 
(CCPA 1965)         2144.04 

Lasscell, Ex parte, 1884 C.D. 66, 29 O.G. 861 
(Comm'r Pat. 1884)      711.01 

Lawrence, Ex parte, 70 USPQ 326, 1946 C.D. 1 
(Comm'r Pat. 1946)      1509 

Lee, Ex parte, 31 USPQ2d 1105 (Bd. Pat. App. & 
Inter. 1993)            2131.03 

Lee Pharmaceutical v. Kreps, 577 F.2d 610, 
198 USPQ 601 (9th Cir. 1978)    2127 

Lee v. Dayton-Hudson Corp., 838 F. 2d 1186, 
5 USPQ 2d 1625 (Fed. Cir. 1988)       1504 

Lee et al., In re, 199 USPQ 108 (Comm'r Pat. 1978)  803 

Lee-Boy Mfg. Co. v. Puckett, 202 USPQ 573 
(D. Ga. 1978)       1442.05 

Leggett v. Avery, 101 U.S. 256 (1879)       1490 

LeGrice, In re, 301 F.2d 929, 133 USPQ 365 
(CCPA 1962)         2121.03 

Lemelson, In re, 397 F.2d 1006, 158 USPQ 275 
(CCPA 1968)         2123 

Lemieux, Ex parte, 115 USPQ 148, 1957 C.D. 47, 
725 O.G. (Bd. App. 1957)        715.01(c) 

Lemin, In re, 332 F.2d 839, 141 USPQ 814 
(CCPA 1964)         2144.08 

Leonard, Ex parte, 187 USPQ 122 (Bd. App. 1974)       2116 

Le Roy v. Tatham, 55 U.S. (14 How.) 
156 (1852)      2106 

Leshin, In re, 227 F.2d 197, 125 USPQ 416 
(CCPA 1960)         2144.07 

Levengood, Ex parte, 28 USPQ2d 1300 
(Bd. Pat. App. & Inter. 1993)     2143.01, 2144 

Levy, Ex parte, 17 USPQ2d 1461 (Bd. Pat. App. & 
Inter. 1990)            2112 

Lincoln Engineering Co. v. Stewart-Warner Corp., 
303 U.S. 545, 37 USPQ 1 (1938)      2173.05(j) 

Lindberg, In re, 194 F.2d 732, 93 USPQ 23 
(CCPA 1952)         2144.04 

Lindell, In re, 385 F.2d 453, 155 USPQ 521 
(CCPA 1967)         716.01(c) 

Lindemann Maschinenfabrik GMBH v. 
American Hoist & Derrick Co., 730 F.2d 1452, 
221 USPQ 481 (Fed. Cir. 1984)     716.03 

Lindner, In re, 457 F.2d 506, 173 USPQ 356 
(CCPA 1972)         716.01(c), 716.02(d) 

Links, Ex parte, 184 USPQ 429 (Bd. App. 1974)     901.05(b), 

2135.01 

Lintner, In re, 458 F. 2d 1013, 173 USPQ 560 
(CCPA 1972)         2142, 2143.01, 

2144, 2145 

Litchfield v. Eigen, 535 F.2d 72, 190 USPQ 113 
(CCPA 1976)         2138.06 

Litton Systems Inc. v. Whirlpool Corp., 728 F. 2d 
1423, 221 USPQ 97 (Fed. Cir. 1984)  601.01(e), 716.03(b) 

Ljungstrom, Ex parte, 1905 C.D. 541, 119 O.G. 2335 
(Comm'r Pat. 1905)      814 

Lockheed Aircraft Corporation v. United States, 
193 USPQ 449 (Ct. Cl. 1977)   2184 

Loewenbach, Ex parte, 1904 C.D. 170, 110 O.G. 857 
(Comm'r Pat. 1904)      819 

Lohman, Ex parte, 1912 C.D. 336, 184 O.G. 287 
(Comm'r Pat. 1912)      1503.02 

Longi, In re, 759 F. 2d 887, 225 USPQ 645 
(Fed. Cir. 1985)                804 

Lopresti, In re, 333 F.2d 932, 142 USPQ 177 
(CCPA 1964)         715 

Loreniam v. Winstead, 127 USPQ 501 
(Bd. Pat. App. Int. 1959) 2337 

Lowry, In re, 32 F. 3d 1579, 32 USPQ 2d 1031 
(Fed. Cir. 1994)                2106 

Luck, In re, 476 F. 2d 650, 177 USPQ 523 
(CCPA 1973)         2173.05(o) 

Ludtke, In re, 441 F.2d 660, 169 USPQ 563 
(CCPA 1971)         2112.01 

Ludwick, In re, 4 F.2d 959, 339 O.G. 393 
(D.C. Cir. 1925)                2173.05(m) 

Lukach, In re, 442 F. 2d 967, 169 USPQ 795 
(CCPA 1971)         201.11, 2163.05 

Lund et al., In re, 376 F. 2d 982, 153 USPQ 625 
(CCPA 1967)         901.02, 2127, 

2136.02, 2136.03 

Lundak, In re, 773 F. 2d 1216, 227 USPQ 90 
(Fed. Cir. 1985)                2164.06, 2406.01 

Lutzker v. Plet, 843 F.2d 1364, 6 USPQ2d 1370 
(Fed. Cir. 1988)                2138.03 

Lyell, Ex parte, 17 USPQ2d 1548 (Bd. Pat. App. & 
Inter. 1990)            2173.05(o) 

Lyon, Ex parte, 146 USPQ 222, 1965 C.D. 362, 
 (Bd. App. 1964)                201.03 

Maas, Ex parte, 9 USPQ2d 1746 
(Bd. Pat. App. & Inter. 1987)     2107.02 

Mackay Radio & Telegraph Co. v. Radio Corp. 
of America, 306 U.S. 86, 40 USPQ 199 (1939)   2106 

MacKay v. Quigg, 641 F. Supp 567, 231 USPQ 90 
(D.D.C. 1986)       1216.02 

MacMillan v. Moffett, 432 F.2d 1237, 167 USPQ 550 
(CCPA 1970)         2138.04 

Mageli et al., In re, 470 F. 2d 1380, 176 USPQ 305 
(CCPA 1973)         716.03(b) 

Magerlein, In re, 602 F.2d 366, 202 USPQ 473 
(CCPA 1979)         716.02(b) 

Magnetics v. Arnold Eng'g Co., 168 USPQ 392 
(7th Cir. 1971)             2133.03(e)(7) 

Malachowski, In re, 530 F. 2d 1402, 189 USPQ 432 
(CCPA 1976)         2107.02 

Malcolm, In re,  129 F.2d 529, 54 USPQ 235, 
1942 C.D. 589 543 O.G. 440 (CCPA 1942)      2144.03 

Malone v. Toth, 202 USPQ 397 (Comm'r Pat. 1978)       2302 

Mancy, In re, 499 F.2d 1289, 182 USPQ 303 
(CCPA 1974)         2116.01 

Mann, In re, 861 F. 2d 1581, 8 USPQ2d 2030 
(Fed. Cir. 1988)                1504.02, 

2133.03(e)(6) 

Mannesmann Demag Corp. v. Engineered Metal 
Products Co., Inc., 793 F.2d 1279, 230 USPQ 
45 (Fed. Cir. 1986)         2111.03 

Mantell, In re, 454 F.2d 1398, 172 USPQ 530 
(CCPA 1073)         715.03 

Manville Sales Corp. v. Paramount Sys. Inc., 
917 F.2d 544, 16 USPQ2d 1587 (Fed. Cir. 1990)     2133.03, 

2133.03(a) 

Margolis, In re, 785 F.2d 1029, 228 USPQ 940 
(Fed. Cir. 1986)                716.01(a) 

Margolis et al. v Banner, 599 F. 2d 435, 202 USPQ 365 
(CCPA 1979)         804.03 

Marinissen, Ex parte, 155 USPQ 528, 842 O.G. 528 
(Bd. App. 1966)             1504.02 

Markman v. Westview Instruments, 52 F. 3d 967, 
34 USPQ2d 1321, (Fed. Cir.) (in banc), aff'd 
**US**, 116 S.Ct. 1384 (1996)     2106 

Markush, Ex parte, 1925 C.D. 126, 340 O.G. 839 
(Comm'r Pat. 1924)      2173.05(h) 

Marosi, In re, 710 F.2d 799, 218 USPQ 289 
(CCPA 1983)         2111.01, 2113, 

2173.05(a) 

Marsh Eng. Co., 1913 C.D. 183 (Comm'r Pat. 1913)        103 

Martin, In re, 154 F. 2d 126, 69 USPQ 75 (CCPA 1946)    1212 

Martin v. Johnson, 454 F.2d 746, 172 USPQ 391 
(CCPA 1972)         2173.05(t) 

Marzocchi, In re, 439 F. 2d 220, 169 USPQ 367 
 (CCPA 1971) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 
 .   2107, 2107.01, 

2124, 2164.04, 2164.08 

Masham, Ex parte, 2 USPQ2d 1647 (Bd. Pat. App. & 
Inter. 1987)            2114 

Massachusetts Institute of Technology v. A.B. Fortia, 
774 F.2d 1104, 227 USPQ 428 (Fed. Cir. 1985)    2128.01 

Mathews, In re, 408 F. 2d 1393, 161 USPQ 276 
(CCPA 1969)         715.01(c), 

2136.04, 2136.05 

Mattison, In re, 509 F.2d 563, 184 USPQ 484 
(CCPA 1975)         2173.05(a), 

2173.05(c) 

Mattson, In re, 208 USPQ 168 (Comm'r Pat. 1980)       601.01(e) 

Mattor v. Coolegem, 530 F.2d 1391, 189 USPQ 201 
(CCPA 1976)         2137.01 

Maucorps, In re, 609 F.2d 481, 203 USPQ 812 
(CCPA 1979)         2184 

May, In re, 574 F.2d 1082, 197 USPQ 601 
(CCPA 1978)         716.02(c), 2112.02, 2144.09 

Mayewsky, In re, 860 F. 2d 430, 162 USPQ 86 
(E.D. Va. 1969)             1701.01 

Mayhew, In re, 527 F.2d 1229, 188 USPQ 356 
(CCPA 1976)         2164.08(c), 

2173.05(l), 2174 

Mazer v. Stein, 347 US 201, 100 USPQ 325 (1954)       1512 

McCormick, Ex parte, 1904 C.D. 575 
113 O.G. 2508 (Assist Comm'r 1924)  709.01 

McCulloch Gas Processing Co. v. Dept. of Energy, 
650 F. 2d 1216 (Temp. Emer. Ct. App. 1981)  1701.01 

McCullough, Ex parte, 7 USPQ2d 1889 
(Bd. Pat. App. & Inter. 1987)     2145 

McGaughey, Ex parte, 6 USPQ 2d 1334, 
(Bd. Pat. App. & Inter. 1988)     2217, 2258 

McGrady v. Aspenglas Corp.. et al., 487 F. Supp. 859, 
208 USPQ 242 (S.D. N.Y. 1981)     1503.01, 1504.01 

McKellin, In re, 529 F.2d 1342, 188 USPQ 428 
(CCPA 1976)         715 

McKenna et al., In re, 203 F. 2d 717, 97 USPQ 348 
(CCPA 1953)         716.01(c) 

McLaughlin, In re,  443 F.2d 1392, 170 USPQ 209 
(CCPA 1971)         2145 

Mead, In re, 581 F. 2d 257, 198 USPQ 412 
(CCPA 1978)         1402, 1412.01, 1450 

Mead Johnson & Co. Ex parte, 227 USPQ 78 
(Bd. Pat. App. & Inter. 1985)     716.02 

Meden v. Curtis, 1905 C.D. 272: 117 O.G. 1795 
(Comm'r Pat. 1905)      819.01 

Medtronic, Inc. v. Cardiac Pacemakers, 721 F.2d 1563, 
220 USPQ 97 (Fed. Cir. 1983)    2141.01(a) 

Meitzner v. Corte, 537 F.2d 524, 190 USPQ 407 
(CCPA 1976)         2138.05 

Mendenhall v. Cedarapids Inc., 5 F.3d 1557, 
28 USPQ2d 1081 (Fed. Cir. 1993)       201.11 

Merchant, In re, 575 F.2d 865, 197 USPQ 785 
(CCPA 1978)         716.02(e) 

Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 
10 USPQ2d 1843 (Fed. Cir. 1989)       716.02, 2123, 

2144.05, 2144.08 

Merck & Co., Inc., In re, 800 F.2d 1091, 
231 USPQ 375 (Fed. Cir. 1986)     716.02, 2143.02, 

2144.09, 2145 

Merck and Co., Inc. v. Chase Chem. Co., 
273 F. Supp. 68, 155 USPQ 139 (D.N.J. 1967)   2402 

Mercoid Corp. v. Milwaukee as Specialty Co., 
46 USPQ 23 (E.D. Wis. 1940)   401.08 

Mergenthaler v. Scudder, 1897 C.D. 724, 
81 O.G. 1417 (D.C. Cir. 1897)     706.02(l), 715.07 

Merz, Ex parte, 75 USPQ 296 (Bd. App. 1947)    715.07(a) 

Messlck, Ex parte, 7 USPQ 57, 1930 C.D. 6, 
400 O.G. 3 (Comm'r Pat.1930)    710.01(a) 

Metcalfe, In re, 410 F. 2d 1378, 161 USPQ 789 
(CCPA 1969)         2404.01 

Metcalfe and Lowe, In re, 410 F.2d 1378, 
161 USPQ 789 (CCPA 1969)        608.01(v) 

Metropolitan Eng. Co. v. Coe, 78 F.2d 199, 
25 USPQ 216 (D.C. Cir. 1935)    716.07 

Meyer, Ex parte, 6 USPQ2d 1966 (Bd. Pat. App. & 
Inter. 1988)            2145 

Meyer, In re, 599 F.2d 1026, 202 USPQ 175 
(CCPA 1979)         2131.02 

Meyer, In re, 688 F.2d 789, 215 USPQ 193 
(CCPA 1982)         2106, 2184 

Michalek, In re, 162 F2d 229, 74 USPQ 107 
(CCPA 1947)         716.07 

Milburn Go. v. Davls Bournonville Co., 270 U.S. 390, 
46 S. Ct. 324, 1926 C.D. 303, 344 O.G. 817 (1926) 2136.04 

Miles Labs. Inc. v. Shandon Inc., 997 F.2d 870, 
27 USPQ2d 1123 (Fed. Cir. 1993)       716.01(a) 

Miller, Ex parte, 1922 C.D. 36, 305 O.G. 419 
(Comm'r Pat. 1922)      714.15 

Miller, In re, 418 F. 2d 1392, 164 USPQ 46 (CCPA 1969)      706.03(a) 
Miller, In re, 441 F.2d 689, 169 USPQ 597 
(CCPA 1971)         2173.04 

Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894)     804 

Mills, In re, 281 F.2d 218, 126 USPQ 513 
(CCPA 1960)         2144.09 

Mills, In re, 916 F.2d 680, 16 USPQ2d 1430 
(Fed. Cir. 1990)                2143.01 

Milton, Ex parte, 164 Ms D. 1, 63 USPQ 132 
(P.O. Super. Exam. 1938)        710.04(a) 

M.I.T. v. A.B. Fortia, 774 F.2d 1104, 227 USPQ 428 
(Fed. Cir. 1985)                2164.01 

Mlot-Fijalkowski, In re, 676 F.2d 666, 213 USPQ 713 
(CCPA 1982)         2141.01(a) 

Mochel, In re, 470 F.2d 638, 176 USPQ 194 
(CCPA 1974)         2173.05(c) 

Moeller, In re, 117 F. 2d 565, 
48 USPQ 542 (CCPA 1941)       2173.05(o) 

Mogen David Wine Corp., In re, 328 F. 2d 925, 
140 USPQ 575 (CCPA 1964)        1512 

Moleculon Research Corp. v. CBS, Inc., 
793 F.2D 1261, 229 USPQ 805 (Fed. Cir. 1986)    2111.03, 

2133.03(a), 2133.03(b) 

Moler v. Purdy, 131 USPQ 276 (Bd. Pat. Inter. 1960)   2137.01 

Monaco v. Watson,  270 F. 2d, 335, 122 USPQ 564 
(D.C. Cir. 1959)                2358 

Monks, In re, 588 F.2d 308, 200 USPQ 129 
(CCPA 1978)         901.05, 901.05(b), 1504, 

2126.01, 2135.01 

Monogram Mfg. v. F & H Mfg., 62 USPQ 409 
(9th Cir. 1944)             2133.03(e)(1) 

Monsanto Co. v. Kamp, 269 F. Supp. 818, 
154 USPQ 259 (D.D.C. 1967)  1216.02 

Moore, In re, 439 F.2d 1232, 169 USPQ 236 
(CCPA 1971)         2164.08, 2172 

Moore, In re, 444 F.2d 572, 170 USPQ 260 
(CCPA 1971)         715.07 

Moore v. U.S., 194 USPQ 423 (Ct. Cl. 1977)  2134 

Moorman v. Martin, 103 USPQ 273(Comm'r Pat. 1950) 2312 

Morehouse and Bolton, In re, 545 F. 2d 162, 
192 USPQ 29 (CCPA 1976)       2106.02 

Morehouse v. Armbruster, 209 USPQ 514 
(Comm'r Pat. 1980)      2302 

Moreton, In re, 288 F.2D 708, 129 USPQ 227 
(CCPA 1961)         2121 

Morse v. Porter, 155 USPQ 280 (Bd. Pat. 
Inter. 1965)            2137.01, 2138.04 

Morton et al., Ex parte, 134 USPQ 407 
(Bd. App. 1961)             2173.05(t) 

Morway v. Bondi, 203 F.2d 742, 97 USPQ 318 
(CCPA 1953)         2138.06 

Mosher, In re, 248 F. 2d 956, 115 USPQ 140 
(CCPA 1957)         1216.01 

Mott, In re, 539 F. 2d 1291, 190 USPQ 536 
(CCPA 1976)         706.02(k), 804 

Mowry, Ex parte, 91 USPQ 219 (Bd. App. 1950)    2144.09 

Mowry v. Whitney, 81 U.S. (14 Wall.) 620 (1871)       2164.07 

Mraz, In re, 455 F.2d 1069, 173 USPQ 25 
(CCPA 1972)         2125 

Mulder, In re, 716 F.2d 1542, 219 USPQ 189 
(Fed. Cir. 1983)                2138.06, 2183 

Multiple Litigation Involving Frost Patent, In re, 
540 F. 2d 601, 185 USPQ 729 (3d Cir. 1976)  2016 

Murphy v. Eiseman, 166 USPQ 149 (Bd. Pat. Int. 1970)      2308.02 
Musgrave, In re, 431 F.2d 882, 167 USPQ 280 
(CCPA 1970)         2106 

Myers, In re,  120 USPQ 225, 1959 C.D. 1, 738 O.G. 947 
(Comm'r Pat. 1958)      608.02 

Myers v. Feigelman, 455 F. 2d 596, 172 USPQ 580 
(CCPA 1972)         2344 





Naber v. Cricchi, 567 F.2d 382, 196 USPQ 294 
(CCPA 1977)         2138.06 

Nalbandian, In re, 661 F. 2d 1214; 211 USPQ 782 
(CCPA 1981)         1504.03 

Naquin, In re, 398 F.2d 863, 158 USPQ 317 
(CCPA 1968)         2106, 2106.02, 2164.05(a) 

Nat'l Biscuit Co. v. Crown Baking Co., 
42 USPQ 214 (1st Cir. 1939)   2133.03(c) 

Nehrenberg, In re, 280 F.2d 161, 126 USPQ 383 
(CCPA 1960)         2173.05(a) 

Nelson, Ex parte, 164 Ms. D. 361, 26 J.P.O.S. 564  710.04(a) 

Nelson, In re, 280 F.2d 172, 126 USPQ 242 
(CCPA 1960)         2165 

Nelson, In re, 420 F.2d 1079, 164 USPQ 458 
(CCPA 1970)         715.07(a) 

Nelson v. Bowler, 212 USPQ 760 (Comm'r Pat. 1981) 2361, 2366 

Nelson v. Bowler, 626 F. 2d 853, 206 USPQ 881 
(CCPA 1980)         2107, 2107.01, 

2107.02, 2138.05 

New England Braiding Co., Inc. v. A.W. Chesterton 
Co., 970 F.2d 878, 23 USPQ2d 1622 
(Fed. Cir. 1992)                2137, 2137.01 

New Idea Farm Equipment Corp. v. Sperry Corp., 
916 F.2d 1561, 16 USPQ2d 1424 (Fed. Cir. 1990)      2138 

Newell Companies v. Kenney Manufacturing Co., 
864 F.2d 757, 9 USPQ2d 1417 (Fed. Cir. 1988)    716.01(d), 

716.04 

Newman v. Quigg, 681 F.Supp. 16, 5 USPQ2d 1880 
(D.D.C. 1988)       2164.07 

Newman v. Quigg, 877 F. 2d 1575, 11 USPQ2d 1340 
(Fed. Cir. 1989)                2107 

Newton, In re, 414 F.2d 1400, 163 USPQ 34 
(CCPA 1969)         2161, 2165.02 

Nievelt, In re, 482 F.2d 965, 179 USPQ 224 
(CCPA 1973)         2145 

Nilssen, In re, 851 F. 2d 1401, 7 USPQ 2d 1500 
 (Fed. Cir. 1988)   1701.01, 2144 

Nitz v. Ehrenreich, 537 F. 2d 539, 190 USPQ 413 
(CCPA 1976)         2309.01 

Nolan, In re, 553 F.2d 1261, 193 USPQ 641 
(CCPA 1977)         716.02(b), 716.02(c) 

Nomiya, In re, 509 F. 2d 566, 184 USPQ 607 
(CCPA 1975)         2129, 2217, 2258 

Norlund, Ex parte, 1913 C.D. 161, 192 O.G. 989 
(Comm'r Pat. 1913)      1213.01 

Northam Warren Corp. v. D. F. Newfield Co., 
7 F.Supp. 773, 22 USPQ 313 (E.D.N.Y. 1934)  2112.01 

Northern Telecom Inc. v. Datapoint Corp., 908 F.2d 931, 
15 USPQ2d 1321 (Fed. Cir. 1990)       2106, 2128.01 

Norton v. Curtiss, 433 F. 2d 779, 167 USPQ 532 
(CCPA 1970)         2012 

Novak, In re,  306 F. 2d 924, 134 USPQ 335 
(CCPA 1962)         2107.01 

Novitski, Ex parte, 26 USPQ2d 1389 (Bd. Pat. App. 
& Inter. 1993)          2112.02 

Noznick et al., In re, 478 F. 2d 1260, 178 USPQ 43 
(CCPA 1973)         716.03(b) 

Obiaya, Ex parte, 227 USPQ 58 (Bd. Pat. App. 
& Inter. 1985)           2145 

Ochiai, In re, 71 F.3d 1565, 37 USPQ2d 1127 
(Fed. Cir. 1995)                706.02(n), 2116.01 

Ockert, In re, 245 F. 2d 467, 114 USPQ 330 
(CCPA 1957)         804 

Oda, In re, 443 F.2d 1200, 170 USPQ 260 
(CCPA 1971)         2163.07 

Oelrich, In re, 579 F.2d 86, 198 USPQ 210 
(CCPA 1978)         716.01(c) 

Oetiker, Ex parte, 23 USPQ2d 641 (Bd. Pat. App. 
& Inter. 1992)          2173.05(a) 

Oetiker, In re, 977 F. 2d 1443, 24 USPQ2d 1443 
(Fed. Cir. 1992)                716.01(d), 1504.01, 2107.01, 

2141, 2141.01(a), 2142, 2145 

O'Farrell, In re, 853 F.2d 894, 7 USPQ2d 1673 
(Fed. Cir. 1988)                2143.02, 2145 

Oguie, In re, 517 F. 2d 1382, 186 USPO 227 
(CCPA 1975)         2305.01, 2305.04 

Ohshiro, Ex parte, 14 USPQ2d 1750 (Bd. Pat. App. 
& Inter. 1989)          2163.05 

Ohsumi, Ex parte, 21 USPQ 2d 1020 
(Bd. Pat. App. & Inter. 1991)     1206 

Oka v. Youssefyeh, 849 F.2d 581, 7 USPQ2d 1169 
(Fed. Cir. 1988)                2138.04 

Okuzawa, In re, 537 F.2d 545, 190 USPQ 464 
(CCPA 1976)         2111.01 

Olah, Ex parte, 131 USPQ 41 (Bd. App. 1960)   201.13, 706.02(a) 

901.05, 2133, 2135.01 

Omark Indus. v. Carlton Co., 201 USPQ 825 
(D. Ore. 1978)          2133.03(e)(4) 

Onda, In re, 229 USPQ 235 (Comm'r Pat. 1985)    706.02(l), 2285 

Oppenauer, In re, 143 F. 2d 974, 62 USPQ 297 
(CCPA 1944)         716.09 

O'Reilly v. Morse, 56 U.S. (15 How.) 62       706.03(a), 2106 

Orita, et al., In re, 550 F. 2d 1277, 193 USPQ 145 
(CCPA 1977)         1402, 1450 

Orthokinetics, Inc. v. Safety Travel Chairs Inc., 
 806 F.2d 1565, 1 USPQ2d 1081 (Fed. Cir. 1986)      2173.05(a) 

Orthopedic Equipment Co., Inc. v. All Orthopedic 
Appliances, Inc., 707 F.2d 1376, 217 USPQ 1281 
(Fed. Cir. 1983)                716.04 

Osmond, Ex parte, 191 USPQ 334 (Bd. App. 1973)      2136 

Otto, In re, 312 F.2d 937, 136 USPQ 458 
(CCPA 1963)         2111.02, 2115 

Ovist et al., Ex parte, 152 USPQ 709 
(Bd. App. 1963)             901.05, 2126.02 

Ovshinsky, Ex parte, 10 USPQ2d 1075 (Bd. Pat. App. 
& Inter. 1989)          715.07 

Pabst-Motoren, In re, 1 USPQ 2d 1659 
(Bd. Pat. App. & Inter. 1986)     2258 

Paine, Webber, Jackson & Curtis, Inc. v. Merrill Lynch, 
Pierce, Fenner, & Smith, Inc., 564 F. Supp. 1358, 218, 
USPQ 212 (D. Del. 1983)       2106 

Palmer, In re, 451 F. 2d 1100, 172 USPQ 126 
(CCPA 1971)         716.01(a) 

Panagrossi, In re, 277 F.2d 181, 125 USPQ 410 
(CCPA 1960)         2174 

Panduit Corp. v. Dennison Manufacturing Co., 
774 F.2d 1082, 227 USPQ 337 (Fed. Cir. 1985)    716.06, 2134 

Panduit Corp. v. Dennison Manufacturing Co., 
810 F.2d 1561, 1 USPQ2d 1593 (Fed. Cir. 1987)     2141.01, 2141.02 
Pantzer and Feier, Ex parte, 176 USPO 141 
 (Bd App. 1972)             2173.05(o) 

Paperless Accounting v. Bay Area Rapid Transit System, 
804 F.2d 659, 231 USPQ 649 (Fed. Cir. 1986)   2133.01 

Papesch, In re, 315 F.2d 381, 137 USPQ 42 
(CCPA 1963)         716.02, 

2141.02, 2144.09 

Pappas, Ex parte, 23 USPQ2d 1636 (Bd. Pat. 
App. & Inter. 1992)         2141.01(a), 2173.05(a) 

Paragon Podiatry Laboratory Inc. v. 
KLM Labs., Inc., 984 F.2d 1182, 25 USPQ2d 
1561 (Fed. Cir. 1993)     2133.03(e)(2) 

Parker v. Flook, 437 U.S. 584, 198 USPQ 193 (1978)  2106 

Parker v. Frilette, 462 F.2d 544, 174 USPQ 321 
(CCPA 1972)         2138.05 

Parks, Ex parte, 30 USPQ2d 1234 (Bd. Pat. App. & 
Inter. 1993)            2173.05(i) 

Patlex Corp. v. Mossinghoff, 771 F. 2d 480, 
226 USPQ 985 (Fed. Cir. 1985)     2225, 2240, 

2244, 2249 

Patlex Corp. v. Mossinghoff, 758 F. 2d 594, 
225 USPQ 243, 249 (Fed. Cir. 1988)  2211 

Paulik v. Rizkalla, 760 F.2d 1270, 226 USPQ 224 
(Fed. Cir. 1985)                2138.01, 2138.03 

Paulsen, In re, 30 F. 3d 1475, 31 USPQ2d 
1671 (Fed. Cir. 1994)     2106 

Payne, Ex parte, 1904 C.D. 42, 108 O.G. 1049 
(Comm'r Pat. 1903)      707.07(g) 

Payne, In re, 606 F.2d 303, 203 USPQ 245 
(CCPA 1979)         716.02, 716.02(e) 

2144.09 

Peeler v. Miller, 535 F. 2d 647, 190 USPQ 117 
(CCPA 1976)         2138.03, 2332 

Peck, Ex parte, 1901 C.D. 136, 96 O.G. 2409 
(Comm'r Pat. 1901)      608.02(f) 

Penn Yan Boats, Inc. v. Sea Lark Boats Inc., 
354 F. Supp. 948, 175 USPQ 260, (S.D. Fla. 1972), 
aff'd, 479 F. 2d 1338, 178 USPQ 577 (5th Cir. 1973), 
cert. denied, 414 USPQ 874 (1974) 2004 

Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931, 
 4 USPQ2d 1737 (Fed. Cir. 1987)       2184 

Pentec, Inc. v. Graphic Controls Corp., 
776 F.2d 309, 227 USPQ 766 (Fed. Cir. 1985)   716.03(b), 

716.06, 2141.01(a) 

Perkin-Elmer Corp. v. Westinghouse Elec. Corp., 
BNA/PTCJ 376; A-11 (Int'l E.D. N.Y. 1978) 1442.05(b) 

Petering, In re, 301 F.2d 676, 133 USPQ 275 
(CCPA 1962)         2131.02, 2131.03 

Peters, In re, 723 F.2d 891, 221 USPQ 952 
(Fed. Cir. 1983)                2163.05 

Petersen v. Fee Int'l, Ltd., 381 F.Supp. 1071, 
182 USPQ 264 (W.D. Okla. 1974)      2134 

Peterson, Ex parte, 49 USPQ 119, 1941 C.D. 8 
(Comm'r Pat. 1941)      710.02(b), 

2307.01, 2363 

Peterson, Ex parte, 63 USPQ 99 
(Bd. App. 1944)             901.02 

Phelan, In re, 205 F. 2d 183, 98 USPQ 156 
(CCPA 1953)         804 

Philco Corp. v. Admiral Corp., 131 USPQ 413 
(O. Del. 1961)          2133.03(c), 2133.03(e)(1) 

Phillips, In re, 608 F.2d 879, 203 USPQ 971 
(CCPA 1979)         2106 

Piasecki, In re, 745 F. 2d 1468, 223 USPQ 785 
(Fed. Cir. 1984)                716.01(d), 

2107.01, 2142 

PIC Inc. v. Prescon Corp., 195 USPQ 525 
(D. Del. 1975)          1442.05(a) 

Pickles, Ex parte, 1904 C.D. 126, 109 O.G. 1888 
(Comm'r Pat. 1904)      810.02 

Pierce v. Allen B. DuMont Laboratories, Inc., 
297 F. 2d 323, 131 USPQ 340 (3rd Cir. 1961)   804 

Pierce v. Watson, 124 USPQ 356 (D.C. Cir. 1960)       715.01(b) 

Pilkington, In re, 411 F. 2d 1345, 162 USPQ 145 
(CCPA 1969)         2173.05(o) 

Pio, In re, 217 F. 2d 956, 104 USPQ 177 
(CCPA 1954)         716.07 

Platner, In re, 155 USPQ 222 (Comm'r Pat. 1967)       1504.05 

Pleuddemann, In re, 910 F.2d 823, 15 USPQ2d 
1738 (Fed. Cir. 1990)     2116.01 

Plockinger, In re, 481 F. 2d 1327, 179 USPQ 103 
(CCPA 1973)         2317 

Plumb, In re, 470 F.2d 1403, 176 USPQ 323 
(CCPA 1973)         715.03 

Polumbo v. Don-Joy Co., 762 F.2d 969, 226 USPQ 5 
(Fed. Cir. 1985)                2184 

Popoff v. Orchin, 144 USPQ 762 (Bd. Pat. Int. 1963)   2371 

Porter, Ex parte, 25 USPQ2d 1144 (Bd. Pat. App. & 
Inter. 1992)            2173.05(e), 

2173.05(f), 2173.05(q) 

Porter Co., Inc. v. Gates Rubber Co., 
187 USPQ 692 (D. Colo. 1975)    608.01(h) 

Pottier, In re, 376 F. 2d 328, 153 USPQ 407 
(CCPA 1967)         2107.01 

Powell, Ex parte, 37 USPQ 285, 1938 C.D. 15, 
489 O.G. 231 (Bd. App. 1938)    715.01(c) 

Power Controls Corp., v. Hybrinetics, Inc., 
806 F. 2d 234, 231 USPQ 774 (Fed. Cir. 1986)    1504 

Prater, In re, 415 F. 2d 1393, 162 USPQ 541 
(CCPA 1969)         2111, 2172, 2173.05(a), 

2173.05(q), 2411.01 

Preda, In re, 401 F.2d 825, 159 USPQ 342 
(CCPA 1968)         2144.01 

Price v. Symsek, 988 F.2d 1187, 26 USPQ2d 1031 
(Fed. Cir. 1993)                2137, 2138.01 

Pritchard v. Loughin, 361 F. 2d 483, 149 USPQ 841 
(CCPA 1966)         2390 

Protein Found. Inc. v. Brenner, 260 F. Supp. 519, 
151 USPQ 561 (D.D.C. 1966)  706.02(a) 

Quad Environmental Technologies Corp. v. 
Union Sanitary District, 946 F. 2d 870, 
20 USPQ2d 1392 (Fed. Cir. 1991)       804.02 

Quadranti, Ex parte, 25 USPQ2d 1071 (Bd. Pat. App. & 
Inter. 1992)            2144.06 

Quayle, Ex parte, 25 USPQ 74, 1935 C.D. 11, 
453 O.G. 213 (Comm'r Pat. 1935)       710.02(b) 

713.04, 714.14, 714.15 

Rackham, Ex parte, 1923 C.D. 4 (Comm'r Pat. 1922) 901.05 

Radio Corporation of America v. Radio Engineering 
Laboratories, Inc., 54 S. Ct. 752, 21 USPQ 353 (1934)     2138.01 




Radio Steel and Mfg. Co. v. MTD Products, Inc., 
731 F.2d 840, 221 USPQ 657 (Fed. Cir. 1984)   2173.05(j) 

Rainer, In re, 305 F.2d 505, 134 USPQ 343 
(CCPA 1962)         2124 

Rainer, In re, 390 F.2d 771, 156 USPQ 334 
(CCPA 1968)         715.03 

Ralston Purina Co. v. Far-Mar-Co., Inc., 
772 F.2d 1570, 227 USPQ 177 (Fed. Cir. 1985)    2163.02 

Rasmussen, In re, 650 F.2d 1212, 211 USPQ 323 
(CCPA 1981)         706.03(o), 1504.04, 

2163.01, 2163.06 

Ratny, In re, 24 USPQ2d 1713 (Comm'r Pat. 1992)       323 

Ratti, In re, 270 F.2d 810, 123 USPQ 349 
(CCPA 1959)         2143.01 

Ray Bellet v. Englehard, 493 F.2d 1380, 181 USPQ 453 
(CCPA 1974)         2107.01 

Raytek, Inc. v. Solfan Systems, Inc., 211 USPQ 405 
(N.D. Cal., 1981)   2286 

Raytheon v. Roper, 724 F. 2d 951, 220 USPQ 592 
(Fed. Cir. 1983)                 2107.01 

RCA v. Applied Digital Data Sys. Inc., 
467 F. Supp. 99, 201 USPQ 451 (D. Del. 1979)    1442.05, 

1442.05(b) 

RCA Corp. v. Data Gen. Corp., 887 F.2d 1056, 
12 USPQ2d 1449, (Fed. Cir. 1989)        2133.03, 

2133.03(b), 2133.03 (e)(3) 

Read v. Quigg 230 USPQ 2 (D.D.C. 1986)      2279 

Reading & Bates Construction Co. v. Baker Energy, 
748 F.2d 645, 223 USPQ 1168 (Fed. Cir. 1984)    2129 

Rebstock v. Flouret, 191 USPQ 342 (Bd. Pat. Inter. 1975)        2138.06 
Recreative Technologies, In re, 83 F.3d 1394, 
38 USPQ2d 1776 (Fed. Cir. 1996)       2242, 2258 

Reddy v. Davis, 187 USPQ 386 (Comm'r Pat. 1975)       2328 

Red Cross Mfg. v. Toro Sales Co., 188 USPQ 241 
(7th Cir. 1975)             2133.03(e)(1) 

Reeves Bros. Inc. v. U.S. Laminating Corp., 
157 USPQ 235 (E.D. N.Y. 1968)     901.05 

Reid, In re, 179 F.2d 998, 84 USPQ 478 
(CCPA 1950)         716.07 

Rekers et al., In re, 203 USPQ 1034 (Comm'r Pat. 1979)      804.03 
Remark, Ex parte, 15 USPQ2d 1498 ((Bd. Pat. App. & 
Inter. 1990)            716.03(b) 

Remington, Ex parte, 1905 C.D. 28, 114 O.G. 694 
(Comm'r Pat. 1904)      1503.01 

Republic Indus. Inc. v. Schlage Lock Co. 
593 F. 2d 963, 200 USPQ 769 (7th Cir. 1979)   2141 

Reuge, Ex parte, 115 USPQ 51 
(Bd. Pat. App. & Inter. 1957)     901.05, 901.05(b) 

Rey-Bellet v. Engelhardt, 493 F.2d 1380, 
181 USPQ 453 (CCPA 1974)        2138.05 

Reynolds, In re, 443 F.2d 384, 170 USPQ 94 
(CCPA 1971)         2163.07(a) 

Reynolds Metal Co. v. Acorn Building Components, Inc., 
548 F. 2d 155, 192 USPQ 737 (6th Cir. 1977)   608.01(h) 

Reynolds Metal Co. v. Aluminum Co. of America, 
198 USPQ 529 (N.D. Ind. 1978)     1442.05(a) 

Richardson v. Suzuki Motor Co., 868 F.2d 1226, 
9 USPQ2d 1913 (Fed. Cir. 1989)      2131 

Richman, In re, 409 F. 2d 269, 161 USPQ 359 
(CCPA 1969)         1412.02 

Riegger v. Beierl, 1910 C.D. 12, 150 O.G. 826 
(Comm'r Pat. 1909)      604.06 

Rieser v. Williams, 225 F. 2d 419, 118 USPQ 96 
(CCPA 1958)         2138.06, 2307.02 

Rijckaert, In re, 9 F.3d 1531, 28 USPQ2d 1955 
(Fed. Cir. 1993)                2141.02 

Rinehart, Ex parte, 10 USPQ2d 1719 
(Bd. Pat. App. & Inter. 1985)     2404.01 

Rinehart, In re, 531 F. 2d 1048, 189 USPQ 143 
(CCPA 1976)         2107.01, 2142, 

2143.02, 2144.04 

Robbins Co. v. Lawrence Mfg. Co., 482 F.2d 426, 
178 USPQ 577 (9th Cir. 1973)      2133.03(d), 

2133.03(e)(1), 2133.03(e)(4) 

Robeson, In re, 331 F. 2d 610, 141 USPQ 485 
(CCPA 1964)         706.02(k) 

Roberts, In re, 470 F.2d 1399, 176 USPQ 313 
(CCPA 1973)         2181 

Rohm & Haas Co. v. Roberts Chem. Inc., 142 F. Supp. 499, 
110 USPQ 93 (S.W. Va. 1956) rev'd on other grounds 
245 F. 2d 693,  113 USPQ 423 (4th Cir. 1957)    1403 

Rohm and Haas Co. v. Mobil Oil Corp., 201 USPQ 80 
 (D. Del. 1978)             1442.05(a) 

Rogoff, In re, 261 F. 2d 601, 120 USPQ 185 
(CCPA 1958)         1412.03 

Rose, In re, 220 F.2d 459, 105 USPQ 237 
(CCPA 1955)         2144.04 

Rosen, In re, 673 F.2d 388, 213 USPQ 347 
(CCPA 1982)         1504.03, 2141.01(a) 

Rosenberg, Ex parte, 46 USPQ 393 
(Bd. App. 1939)             1610 

Rosenblum v. Hiroshima, 220 USPQ 383 
(Comm'r Pat. 1983)      1206 

Rosemount Inc. v. Beckman Instruments, Inc., 
727 F. 2d 1540, 221 USPQ 1 (Fed. Cir. 1984)   2345 

Rosicky, In re, 276 F.2d 656, 125 USPQ 341 
(CCPA 1960)         2144.08 

Rothermel, In re, 276 F. 2d 393, 125 USPQ 328 
(CCPA 1960)         716.01 

Rowand, In re, 526 F. 2d 558, 187 USPQ 487, 
(CCPA 1975)         1412.01, 1450 

Royka, In re, 490 F.2d 981, 180 USPQ 580 
(CCPA 1974)         2143.03 

Rubber-Tip Pencil Co. v. Howard, 
87 U.S. 498 (1874)      2106 

Rubin, Ex parte, 128 USPQ 440 (Bd. App. 1959)     2144.04 

Rubinfield, In re, 270 F. 2d 391, 123 USPQ 210 
(CCPA 1959)         1504.05 

Ruff, In re, 256 F.2d 590, 118 USPQ 340 
(CCPA 1958)         2144.06 

Ruscetta & Jenny,  In re, 255 F. 2d 687, 
118 USPQ 101 (CCPA 1958)        201.11, 2004, 

2217, 2218 

Ruskin, In re, 347 F.2d 843, 146 USPQ 211 
(CCPA 1965)         2114 

Ruskin, In re, 354 F. 2d 395, 148 USPQ 221 
(CCPA 1966)         2107 

Russell, In re, 239 F. 2d 387, 112 USPQ 58 
(CCPA 1956)         1504.05 

Rutan, In re, 231 USPQ 864 (Comm'r Pat. 1986)     150 

Ruth, In re, 278, F. 2d 729, 126 USPQ 155 
(CCPA 1960)         1412.03 

Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 
8 USPQ2d 1323 (Fed. Cir. 1988)      2144.07 

Ryko Manufacturing Co. v. Nu-Star Inc., 
950 F.2d 714, 21 USPQ2d 1053 (Fed. Cir. 1991)     2141.03 

Sakraida v. Ag. Pro. Inc., 425 U.S. 273, 
189 USPQ 449 (1979)   716.01(a), 2141 

Salmon et al., In re, 705 F. 2d 1579, 
217 USPQ 981 (Fed. Cir. 1983)     1504.20 

Samour, In re, 571 F.2d 559, 197 USPQ 1 
(CCPA 1978)         2131.01 

Sampson v. Comm'r Pat. 195 USPQ 136, 
137 (D.D.C. 1976)   1402 

Sandford, Ex parte 1914  C.D. 69,104  O.G. 1346 
(Comm'r Pat. 1914)      1504.05 

Sarett, In re, 327 F. 2d 1005, 140 USPQ 474 
(CCPA 1964)         804 

Sarkar, In re, 575 F. 2d 870, 197 USPQ 788 
(CCPA 1978)         724 

Sarkar, In re, 588 F. 2d 1330, 200 USPQ 132 
(CCPA 1978)         2106 

Sasajima, Ex parte, 212 USPQ 103 (Bd. App. 1981)        716.02(f) 
Sasse, In re, 629 F.2d 675, 207 USPQ 107 
(CCPA 1980)         716.07, 

2121, 2121.02 

Sassin, Ex parte, 1906 C.D. 205 (Comm'r Pat. 1906)  409.03(d) 

Saunder Indus., Inc. v. Carborundum Co., 
201 USPQ 204 (N.D. Ohio 1978)     1442.05(a) 

Saunders, Ex parte, 1883 C.D. 23, 23 O.G. 1224 
(Comm'r Pat. 1883)      715.07 

Saunders, In re, 444 F.2d 599, 170 USPQ 213 
(CCPA 1971)         716.02(f), 2142, 2172 

Scarborough, In re, 500 F. 2d 560, 182 USPQ 298 
(CCPA 1974)         2106, 2106.01, 

2106.02, 2164.06 

Schaub, In re, 537 F.2d 509, 190 USPQ 324 
(CCPA 1976)         715.03 

Schauman, In re, 572 F.2d 312, 197 USPQ 5 
(CCPA 1978)         2131.02 

Schechter, In re, 205 F.2d 185, 98 USPQ 144 
(CCPA 1953)         2144.09, 2173.05(i) 

Scheiber, In re, 587 F.2d 59, 199 USPQ 782 
(CCPA 1978)         2163.03 

Schenck v. Nortron Corp., 713 F.2d 782, 
218 USPQ 698 (Fed. Cir. 1983)     2141.02, 2144.04 

Schier, Ex parte, 21 USPQ2d 1016 
(Bd. Pat. App. & Inter. 1991)     1206 

Schlittler, In re, 234 F.2d 882, 110 USPQ 304 
(CCPA 1956)         2128.02 

Schnell, In re, 46 F. 2d 203, 8 USPQ 19 
(CCPA 1931)         1504.01 

Schneller, In re, 397 F. 2d 350, 158 USPQ 210 
(CCPA 1968)         804 

Schoenwald, In re, 964 F.2d 1122, 22 USPQ2d 1671 
(Fed. Cir. 1992)                2122 

Schrader, In re, 22 F.3d 290, 30 USPQ2d 1445 
(Fed. Cir. 1994)                2106 

Schulze, In re, 346 F.2d 600, 145 USPQ 716 
(CCPA 1965)         716.01(c), 

2106.02, 2145 

Schwab v. Pittman, 451 F. 2d 637, 172 USPQ 69 
 (CCPA 1971)            2308.02, 2317 

Schwarz, In re, 147 USPQ 394 (Comm'r Pat. 1960)       409.03(c) 

Schwarze, Ex parte, 151 USPQ 426 (Bd. App. 1966)        608.01(p) 
Scott, In re, 323 F.2d 1016, 139 USPQ 297 
(CCPA 1963)         2144.06 

Scott v. Brandenburger, 216 USPQ 326 
(Bd. App. 1982)             2137 

Scott v. Finney, 34 F.3d 1058, 32 USPQ2d 1115 
(Fed. Cir. 1994)                2107, 2107.02 

Scragg, In re, 215 USPQ 715 (Comm'r Pat. 1982)      2285 

Scripps Clinic and Res. Found. v. Genentech Inc., 
927 F. 2d 1565, 18 USPQ2d 1001 (Fed. Cir. 1991)       2165.04, 

2411.01 

Scudder, Ex parte, 169 USPQ 814 (Bd. App. 1971)       1402 

Scully Signal Co. v. Electronics Corp. of America, 
        196 USPQ 657 (1st. Cir. 1977)     716.04 

Searles, In re, 422 F. 2d 431, 164 USPQ 623 
(CCPA 1970)         602.03, 2132.01 

Seattle Box Co. v. Industrial Crating & Packing, Inc., 
731 F.2d 818, 221 USPQ 568 (Fed. Cir. 1984)   2173.05(a) 

Seebach, In re, 88 F. 2d 722, 33 USPQ 149, 
(CCPA 1937)         709.01 

Seid, In re, 161 F.2d 229, 73 USPQ 431 
(CCPA 1947)         2144.04 

Seifreid, In re, 407 F.2d 897, 160 USPQ 804 
(CCPA 1969)         2144.03 

Seiko Koko Kubushiki Kaisha, Ex parte, 
225 USPQ 1260 (Bd. App. 1984)     2217, 2258 

Self, In re, 671 F.2d 1344, 213 USPQ 1 
(CCPA 1982)         2131.05 

Selmi, In re, 156 F. 2d 96, 70 USPQ 197 
(CCPA 1946)         2144.03 

Sernaker, In re, 702 F. 2d 989, 217 USPQ 1 
(Fed. Cir. 1983)                1206, 2144 

Shaffer Tool Works v. Joy Mfg. Co., 687 F. Supp. 80, 

    167 USPQ 170 (S.D. Tex. 1970) 1701.01 

Sharp, Ex parte, Pat. No. 2,232,739   820 

Shatterproof Glass Corp. v. Libbey Owens Ford Co., 
758 F.2d 613, 225 USPQ 634 (Fed. Cir. 1985)   2133.03(b), 

2133.03(c), 2173.05(a) 

Sheehan v. Doyle, 513 F. 2d 895, 185 USPQ 489, 
(1st Cir.) cert. denied, 423 U.S. 874; (1975); 
529 F. 2d 38, 188 USPQ 545 (1st Cir.), 
cert. denied, 429 U.S. 987 (1976) 2300.02, 2374 

Shell Development Co. v. Watson, 
149 F. Supp. 279, 113 USPQ 265 
(D. D.C. 1957), aff'd per curiam, 252 
F. 2d 861, 116 USPQ 428 (D.C. Cir. 1958)        2106 

Shepherd, In re, 172 F.2d 560, 80 USPQ 495 
(CCPA 1949)         716.07 

Sherwood, In re, 613 F. 2d 809, 204 USPQ 537 
(CCPA 1980)         608.01(h), 

2106.01, 2165.04 

Shimer, In re, 69 F. 2d 556, 21 USPQ 161 
(CCPA 1934)         2333 

Shindelar v. Holdeman, 628 F. 2d 1337, 
207 USPQ 112 (CCPA 1980)        2138.03, 2332 

Shohan, Ex parte, 1941 C.D. 1 (Comm'r Pat. 1940)        2307.03 

Shokal, In re, 242 F.2d 771, 113 USPQ 283 
(CCPA 1957)         715.03 

Sichert, In re, 566 F. 2d 1154, 196 USPQ 209 
(CCPA 1977)         2107, 

2107.01, 2107.02 

Silvestri v. Grant, 496 F.2d 593, 181 USPQ 706 
(CCPA 1974)         2138.04 

Simon, In re, 302 F.2d 737, 133 USPQ 524 
(CCPA 1962)         2174 

Simpson, Ex parte, 218 USPQ 1020 (Bd. App. 1982)        706.03(d), 
2173.05(u) 

Sinclair & Carroll Co., Inc. v. Interchemical Corp., 
325 U.S. 327, 65 USPQ 297 (1945)        2144.07 

Sivaramakrishnan, In re, 673 F.2d 1383, 213 USPQ 441 
(CCPA 1982)         2131.02 

Skill Corp. v. Lucerne Products, 178 USPQ 562 
(N.D. Ill. 1973), aff'd, USPQ 396, (7th Cir. 1979), 
cert. denied, 183 USPQ 65 (1975)        2133.03(e)(3) 

Skinner, Ex parte, 2 USPQ2d 1788 
(Bd. Pat. App. & Inter. 1986)     2142 

Skrivan, In re, 427 F.2d 801, 166 USPQ 85 
(CCPA 1970)         2164.08 

Skuballa, Ex parte, 12 USPQ2d 1570 (Bd. Pat. App. & 
Inter. 1989)            2173.05(c) 

Slayter, In re, 276 F.2d 408, 125 USPQ 345 
(CCPA 1960)         715.03, 2131.02 

Smernoff, Ex parte, 215 USPQ 545 (Bd. App. 1982)        2137.01 

2133.03(e) 

Smith, Ex parte, 1888 C.D. 131, 44 O.G. 1183 
(Comm'r Pat. 1888)      806.04(c) 

Smith, In re, 458 F.2d 1389, 173 USPQ 679 
(CCPA 1972)         2163.05 

Smith v. Bousquet, 111 F. 2d 157, 45 USPQ 347 
(CCPA 1940)         2371 

Smith v. Hayashi, 209 USPQ 754 (Bd. of Pat. 
Inter. 1980)            2144.06 

Smith and Mclaughlin, In re, 714 F. 2d 1127, 
218 USPQ 976 (Fed. Cir., 1983)      2133.03(a), 2133.03(b) 

Smith Davis Mfg. Co. v. Mellon, 58 F.705 
(8th Cir.1893)          2133.03(e)(6) 

Smolka, Ex parte, 207 USPQ 232 (Bd. App. 1980)      2136, 2136.01 
Smyth, In re, 189 F. 2d 982, 90 USPQ 106 
(CCPA 1951)         716.09 

Smythe, In re, 480 F. 2d 1376, 178 USPQ 279 
(CCPA 1973)         2163.07(a) 

Sneed and Young, In re, 710 F. 2d 1594, 
218 USPQ 385 (Fed. Cir. 1983)     1445, 

2111.01, 2145 

Snyder, Ex parte, 1904 C.D. 242, 110 O.G. 2636 
(Comm'r Pat. 1904)      810.02 

Sobin et al., Ex parte, 139 USPQ 528 (Bd. App. 1962)    2173.05(t) 
Soli, In re, 317 F.2d 941, 127 USPQ 797 
(CCPA 1963)         2144.02 

Soll, In re, 97 F.2d 623, 38 USPQ 189 
(CCPA 1938)         2164.03 

Soni, In re, 54 F.3d 746, 34 USPQ2d 1684 (Fed. Cir. 1995) 707.07(f) 
Sorenson, Ex parte, 3 USPQ2d 1462 
(Bd. Pat. App. & Inter. 1987)     2163.04, 2163.05 

Spada, In re, 911 F.2d 705, 15 USPQ2d 1655 
(Fed. Cir. 1990)                2112.01 

Spectra-Physics, Inc. v. Coherent, Inc., 
827 F.2d 1524, 3 USPQ2d 1737 (Fed. Cir. 1987)     2164.01, 

2165.02, 2165.04 

Spiller, In re, 500 F.2d 1170, 182 USPQ 614 
(CCPA 1974)         715.02, 715.03 

Sponnoble, In re, 405 F.2d 578, 160 USPQ 237 
(CCPA 1969)         2141.02 

Staeger, In re, 189 USPQ 284 (Comm'r Pat. 1974)       2344 

Staeger v. Commissioner, 189 USPQ 272 (D.D.C. 1976)   409.03(b) 

Staehelin v. Secher, 24 USPQ2d 1513 (Bd. Pat. App. 
& Inter. 1992)          2138.04 

Stalego, Ex parte, 154 USPQ 52 (Bd. App. 1966)      901.01, 

2127, 2136.02 

Stalego v. Heymes, 263 F. 2d 334, 120 USPQ 473 
(CCPA 1959)         2307.02 

Standard Oil Co. v. Montedison, S.p.A., 
494 F.Supp. 370, 206 USPQ 676 (D.Del. 1980)   2165.01 

Standish, Ex parte, 10 USPQ2d 1454 (Bd. Pat. App. 
& Inter. 1988)          716.03(a), 

716.03(b), 2138.01 

Stanley, Ex parte, 121 USPQ 621 (Bd. App. 1958)       2181 

Steele, In re, 305 F. 2d 859, 134 USPQ 292 
(CCPA 1959)         2143.03, 2173.06 

Steenbock, In re, 83 F. 2d 912, 30 USPQ 45 
(CCPA 1936)         201.11 

Steierman v. Connelly, 197 USPQ 288 
(Comm'r Pat. 1976)      2138.03 

Steigerwald, Ex parte, 131 USPQ 74 (Bd. App. 1961)  2173.05(d) 

Steinberg v. Seitz, 517 F. 2d 1359, 186 USPQ 209 
(CCPA 1975)         2133.03(c) 

Stemniski, In re, 444 F.2d 581, 170 USPQ 343 
(CCPA 1971)         2144.09 

Stempel, In re, 113 USPQ 77, 1957 C.D. 200, 
717 O.G. 886 (CCPA 1957)        715.03 

Stencel, In re, 828 F.2d 751, 4 USPQ2d 1071 
(Fed. Cir. 1987)                2111.02 

Stephens, In re, 529 F.2d 1343, 188 USPQ 659 
(CCPA 1976)         2164.01 

Steppan, In re, 394 F. 2d 1013, 156 USPQ 143 
(CCPA 1967)         2173.05(o) 

Stern, Ex parte, 13 USPQ2d 1379 (Bd. Pat. App. & 
Inter. 1987)            2144.04 

Stevens, Ex parte, 16 USPQ2d 1379 
(Bd. Pat. App. & Inter. 1990)     2107.02 

Stevens, In re, 173 F. 2d 1015, 81 USPQ 362 
(CCPA 1949)         1504.01 

Stevens, In re, 212 F.2d 197, 101 USPQ 284 
(CCPA 1954)         2144.04 

Stevenson v. International Trade Commission, 
612 F.2d 546, 204 USPQ 276 (CCPA 1979)      2141.01(a) 

Stewart Sys. v. Comm'r of Pat. and Trademarks 
1 USPQ 2d 1879 (E.D. Va. 1986)      2258 

Sticker Indus. Supply Corp. v. Blaw Knox Co., 
        160 USPQ 177 (7th Cir. 1968)    201.11 

Stoddard, In re, 213 USPQ 386 (Comm'r Pat. 1982)        2285 

Stratoflex, Inc. v. Aeroquip Corp., 713 F. 2d 1530, 
218 USPQ 871 (Fed. Cir. 1983)     716.01(a), 2141, 

2141.01(a), 2141.02 

Strickland v. Glaser, 214 USPQ 549 
(Comm'r Pat. 1980)          2311 

Strijland, Ex parte, 26 USPQ2d 1259 
(Bd. Pat. App. & Inter. 1992)     1504.01 

Striker, In re, 182 USPQ 507, (Comm'r Pat. 1973)        409.03(b) 
Strong v. Gen'l Electric Co., 162 USPQ 141 
(N.D. Ga. 1969) aff'd,  168 USPQ 8 (5th Cir. 1970) 
168 USPQ 8 (5th Cir. 1970)  2133.03(b) 

Stryker, In re, 435 F.2d 1340, 168 USPQ 372 
(CCPA 1971)         715.02 

Studiengesellschaft Kohle mbH v. Northern 
Petrochemical Co., 784 F. 2d 351, 228 USPQ 837 
(Fed. Cir. 1986)                804.01 

Suh v. Hoefle, 23 USPQ2d 1321 (Bd. Pat. App. & 
Inter. 1992)            2138.05 

Sun Studs, Inc. v. ATA Equipment Leasing, 872 
F.2d 978, 10 USPQ2d 1338 (Fed. Cir. 1989) 2136.02, 2136.03 

Susi, In re, 440 F.2d 442, 169 USPQ 423 
(CCPA 1971)         2123, 2144.08 

Suska, In re, 589 F.2d 527, 200 USPQ 497 
(CCPA 1979)         2138.03 

Sutter Products Co. v. Pettibone Milliken Corp., 
428 F. 2d 639, 166 USPQ 100 (7th Cir. 1970)   2333 

Swanberg, In re, 129 USPQ 364 (Comm'r Pat. 1960)        608.01 

Sweet, In re, 136 F. 2d 722, 58 USPQ 327 
(CCPA 1943)         1211.01 

Swinehart, In re, 439 F. 2d 210, 169 USPQ 226 
(CCPA 1971)         2173.01, 

2173.05(g), 2183 

Switzer et al., In re, 166 F. 2d 827, 77 USPQ 156 
(CCPA 1948)         901.02 

Switzer v. Sockman, 333 F. 2d 935, 142 USPQ 226 
(CCPA 1964)         1403, 

1412.03, 2307.02 

Sylgab Steel & Wire Corp. v. Imoco-Gateway Corp., 
357 F. Supp 657, 178 USPQ 22 (N.D. Ill. 1973)     608.01(h), 

2165.01 

Symbol Technologies, Inc. v. Opticon, Inc., 
935 F. 2d 1569, 19 USPQ2d (Fed. Cir. 1991)  804, 2121.01 





Tabuchi v. Nubel, 559 F. 2d 1183, 194 USPQ 521 
(CCPA 1977)         2404.02 

Taggart, In re, 115 USPQ 413, 1957 C.D. 6, 
725 O.G. 397 (Comm'r Pat. 1957)       608.02 

Talbott, In re, 443 F. 2d 1397, 170 USPQ 281 
(CCPA 1971)         901.05, 1504.02, 

2135.01 

Tallent v. Lemoine, 204 USPQ 1058 
(Comm'r Pat. 1979)      2361 

Tanczyn, In re, 347 F.2d 830, 146 USPQ 298 
(CCPA 1965)         715.02 

Taner, In re, 681 F. 2d 787, 214 USPQ 678 
(CCPA 1982)         2106 

Tangsrid, In re, 184 USPQ 746 
(Comm'r Pat. 1973)      201.14(b) 

Tanke, In re, 213 F. 2d 551, 102 USPQ 93 
(CCPA 1954)         2307.02 

Tansel, In re, 253 F. 2d 241, 117 USPQ 188 
(CCPA 1958)         706.02(l) 

Tarczy-Hornoch, In re, 397 F. 2d 856, 
158 USPQ 141 (CCPA 1955)        2173.05(v) 

Teague, In re, 254 F. 2d 145, 117 USPQ 284 
 (CCPA 1958)            715.05, 804.02 

Technicon Instruments Corp. v. Alpkem Corp., 
664 F.Supp. 1558, 2 USPQ2d 1729 
(D.Ore 1986)            2164.05(a) 

Tennant v. Hako Minuteman, 4 USPQ 2d 1167 
(N.D. Ill. 1987)                2293 

Tenney, In re, 254 F.2d 619, 117 USPQ 348 
(CCPA 1958)         2128.01 

Texas Instruments Inc. v. Int'l Trade Comm'n, 
988 F.2d 1165, 26 USPQ2d 1018 (Fed. Cir. 1993)      716.04 

Tezel v. Bellantoni, 188 USPQ 688 (Bd. Pat. 
Inter. 1975)            2316 

Theis, In re, 610 F. 2d 786, 204 USPQ 188 
(CCPA 1979)         2133.03(b), 2133.03(c), 

2133.03(e)(1), 2133.03(e)(3), 2133.03(e)(6) 

The NutraSweet Co., Ex parte, 19 USPQ2d 1586 
(Bd. Pat. App. & Inter. 1991)     716.02 

Thibault, Ex parte, 164 USPQ 666 
(Bd. App. 1969)             2115 

Thompson, Ex parte, 24 USPQ2d 1618 (Bd. Pat. App. 
& Inter. 1992)          2121.03 

Thompson v. Hamilton, 152 F. 2d 994, 68 USPQ 161 
(CCPA 1946)         2307.02 

Thorington et al., In re, 418 F. 2d 528, 
163 USPQ 644 (CCPA 1969)        804, 1504.06 

Thorpe, In re, 777 F.2d 695, 227 USPQ 964 
(Fed. Cir. 1985)                2113 

Thumm, Ex parte, 132 USPQ 66 (Bd. App. 1961)    716.02 

Tiffin, In re, 443 F.2d 394, 170 USPQ 88 
(CCPA 1971)         716.04 

Tiffin, In re, 443 F.2d 394, 170 USPQ 80 
(CCPA 1971)         2142 

Tiffin, In re, 448 F. 2d 791, 171 USPQ 294 (1971) 
(CCPA 1971)         716.03(a) 

Tillotson, Ltd. v. Walbro Corp., 831 F.2d 1033, 
4 USPQ2d 1450 (Fed. Cir. 1987)      1412.03 

Titanium Metals Corp. v. Banner, 778 F.2d 775, 
227 USPQ 773 (Fed. Cir. 1985)     2112.01, 

2131.03, 2144.05 

Tol-O-Matic Inc. v. Proma Produkt-Und Mktg. 
Gesellschaft  m.b.h., 945 F. 2d 1546, 
20 USPQ2d 1332 (Fed. Cir. 1991)       2107.01 

Toma, In re, 575 F. 2d 872, 197 USPQ 852 
(CCPA 1978)         2106 

Tomlinson, In re, 363 F.2d 928, 150 USPQ 623 
(CCPA 1966)         2112.02 

Tone Brothers, Inc. v. Sysco Corp., 28 F.3d 1192, 
31 USPQ2d 1321 (Fed. Cir. 1994)       2133.03(e)(6) 

Toro Co. v. L.R. Nelson Corp., 223 USPQ 636 
(C.D. Ill. 1984)                2286 

Touval v. Newcombe, 194 USPQ 509 
(Comm'r Pat. 1976)          2301.02 

Townsend, In re, 1913 C.D. 55 (Comm'r Pat. 1929)        720.05 

Townsend v. Smith, 36 F.2d 292, 4 USPQ 269 
(CCPA 1929)         2138.04 

T.P. Lab. v. Professional Positions, Inc., 724 F.2d 965, 
220 USPQ 577 (Fed. Cir. 1984)     2133.03(a), 

2133.03(e)(4) 

Transco Products, Inc. v. Performance Contracting Inc., 
38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994)    201.11, 2107, 

2165.01 

Transmatic, Inc. v. Gulton Indus. Inc., 202 USPQ 559 
(6th Cir. 1979)             1504.06 

Trevette, Ex parte, 1901 C.D. 170, 97 O.G. 1173 
(Comm'r Pat. 1901)      820 

Triplett v. Steinmayer, 129 F. 2d 869 54 USPQ 409 
(CCPA 1942)         2371 

Tucker v. Naito, 188 USPQ 260 (Bd. Pat. Inter. 1975)    2137.01 

Tucker v. Natta, 171 USPQ 494 (Bd. Pat. Inter. 1971)    2138.06 

Tucker Aluminum Prod. v. Grossman, 136 USPQ 244 
(9th Cir. 1963)             2133.03(e)(1) 

Twin Disc, Inc. v. U.S., 231 USPQ 417 (Cl. Ct. 1986)    2131.05 

Tytgat, Ex parte, 225 USPQ 907 (Bd. App. 1985)      2363.03 

UMC Elec. Co. v. United States, 816 F. 2d 647, 
2 USPQ2d 1465 (Fed. Cir. 1987)      804, 2133.03(b), 

2133.03(c) 

Union Carbide Corp. v. Borg-Warner Corp., 
550 F. 2d 355, 193 USPQ 1 (6th Cir. 1977) 608.01(h), 2165 

United States v. Adams, 383 U.S. 39, 
148 USPQ 479 (1966)   716.01(b), 

716.04, 2145 

United States v. Morgan, 313 U.S. 409, 
61 S. Ct. 999 (1941)            1701.01 

United States v. Telectronics, Inc., 857 F.2d 778, 
8 USPQ2d 1217 (Fed. Cir. 1988)      2164.01 

United States ex rel. Touhy v. Ragen, 340 U.S. 462, 
71 S. Ct. 416 (1951)            1701.01 

United States Indus. Chem. Inc. v. Carbide and 
Carbon Chem. Corp., 315 U.S. 668, 
 53 USPQ 6 (1942)    1411.02 

U.S. Industries v. Norton Co., 210 USPQ 107 
(N.D.  N.Y. 1980)   2004 

Ushakoff v. United States, 140 USPQ 341 
(CT. Cl. 1964)          2133.03(e)(1) 

Utschig, Ex parte, 156 USPQ 156 (Bd. App. 1966)       2137.01 

Vaeck, In re, 947 F.2d 448, 20 USPQ2d 1438 
(Fed. Cir. 1991)                706.02(j), 2107, 2142, 

2143, 2164.01, 2164.03, 2164.08 

Valmont Industries Inc. v. Reinke Manufacturing 
Co., Ind., 983 F.2d 1039, 25 USPQ2d 1451 
(Fed. Cir. 1993)                2184, 2186 

Vamco Machine and Tool Inc., In re, 752 F. 2d 1564, 
224 USPQ 617 (Fed. Cir. 1985)     716.03(b), 2286 

Vandenberg v. Dairy Equipment Co., 740 F.2d 1560, 
224 USPQ 195 (Fed. Cir. 1984)     716.06 

Vander Wal., Ex parte, 109 USPQ 119, 1956 C.D. 11, 
705 O.G. 5 (Bd. Pat. App. 1955)       608.04(a) 

Van Esdonk, In re, 187 USPQ 671 
(Comm'r Pat. 1975)      201.06(a), 201.16 

Van Geuns, In re, 988 F.2d 1181, 26 USPQ2d 1057 
(Fed. Cir. 1993)                2145 

Van Ornum and Stang, In re, 686 F. 2d 937, 
214 USPQ 761 (CCPA 1982)        804 

Van Otteren v. Hafner, 278 F. 2d 738, 
126 USPQ 151 (CCPA 1960)        201.03, 2336 

Varga, Ex Parte, 189 USPQ 209 (Bd. App. 1973)       2012.01 

Vas-Cath, Inc. v. Makurkar, 935 F. 2d 1555, 
19 USPQ 2d 1111 (Fed. Cir. 1991)        1504.20, 2161, 

2163, 2163.02 

Venezia, In re, 530 F.2d 956, 189 USPQ 149 
(CCPA 1976)         2173.05(g) 

Venner, In re, 262 F.2d 91, 120 USPQ 193 
(CCPA 1958)         2144.04 

Verdegaal Bros. v. Union Oil Co. of California, 
814 F.2d 1051, 2 USPQ2d 1051 (Fed. Cir. 1987)     2131 

Vickers, In re, 141 F. 2d 522, 61 USPQ 122 
(CCPA 1944)         2164.03 

Vogel et al., In re, 422 F.2d 438, 164 USPQ 619 
(CCPA 1970)         804, 804.02, 

1504.06, 2111.01 

Von Brimer v. Whirlpool Corp., 536 F. 2d 838, 
190 USPQ 528 (9th Cir. 1976)    1208.03 

Von Lagenhoven,  In re, 458 F. 2d 132, 
173 USPQ 426 (CCPA 1972)  201.11, 2004 

Wadlinger et al., In re, 496 F. 2d 1200, 
181 USPQ 826 (CCPA 1974)        1412.02 

Wagenorst, In re, 62 F. 2d 831, 16 USPQ 126, 
20 CCPA 829 (CCPA 1933)       715.05 

Wagner, In re, 103 F. 2d 414, 41 USPQ 504, 
(CCPA 1936)         716.02 

Wahl et al. v. Rexnord, Inc., 206 USPQ 865 
(3rd Cir. 1980)             1504.06 

Wakefield, In re, 422 F. 2d 897, 164 USPQ 636 
(CCPA 1970)         715.02, 2173.05(i), 

2173.05(n) 

Waldemar Link, GmbH & Co. v. Osteonics Corp., 
32 F.3d 556, 31 USPQ2d 1855 (Fed. Cir. 1994)    706.03(o) 

Walsdorf v. Comm., 229 USPQ 559 (D.D.C. 1986)     1216.02 

Walsh v. Sakai, 167 USPQ 465 (Comm'r Pat. 1970)       2337 

Walter, In re, 618 F. 2d 758, 205 USPQ 397 
(CCPA 1980)         2106, 2183, 2184 

Wands, In re, 858 F.2d 731, 8 USPQ2d 1400 
(Fed. Cir. 1988)                2164.01 

Wang Laboratories Inc. v. Toshiba Corp., 993 F.2d 858, 
26 USPQ2d 1767 (Fed. Cir. 1993)       2141.01(a) 

Ward, In re, 236 F. 2d 428, 111 USPQ 101 
(CCPA 1956)         715.05, 804.02 

Warmerdam, In re, 33 F.3d 1354, 31 USPQ2d 
1754 (Fed. Cir. 1994)     2106 

Warner, In re, 379 F.2d 1011, 154 USPQ 173 
(CCPA 1967)         2142 

Water Technologies Corp. v. Calco, Ltd., 
850 F.2d 660, 7 USPQ2d 1097 (Fed. Cir. 1988)    2111.03 

Watkinson, In re, 900 F. 2d 230, 14 USPQ2d 1407 
(Fed. Cir. 1990)                1201, 1402, 1450 

Watson, In re, 517 F.2d 465, 186 USPQ 11 
(CCPA 1975)         2107, 2107.02 

Watson v. Allen, 117 USPQ 68 
(D.C. Cir. 1957)                2133.03(e)(3), 2133.03(e)(7) 

Waugh, In re, 135 F. 2d 627, 57 USPQ 371 
(CCPA 1943)         819 

Waymouth, In re, 499 F.2d 1273, 182 USPQ 290 
(CCPA 1974)         716.02 

Webb, In re, 916 F. 2d 1553, 16 USPQ2d 1433 
(Fed. Cir. 1990)                1504.01 

Weber, In re, 405 F.2d 1403, 160 USPQ 549 
(CCPA 1969)         716.07 

Weber et al., In re, 580 F. 2d 455, 198 USPQ 328 
(CCPA 1978)         803 

Weiler et al., In re, 790 F. 2d 1576, 229 USPQ 673 
(Fed. Cir. 1986)                1414.03 

Weiss, Ex parte, 159 USPQ I22, 852 O.G. 255, 
(Bd. App. 1967)             901.05, 1504.02 

Weiss, In re, 989 F.2d 1202, 26 USPQ2d 1885 
(Fed. Cir. 1993)                2111.01 

Weldeck v. Lewis, 120 USPQ 88 (Comm'r Pat. 1955)          2309.01 
Wells v. Fremont, 177 USPQ 22 (Bd. Pat. Inter. 1972)    2138.05 

Wende v. Horine, 225 F. 501 (7th Cir. 1915)    2133.03(b) 

Wertheim, In re, 541 F.2d 257, 191 USPQ 90 
(CCPA 1976)         2144.05, 

2163.04, 2163.05 

Wertheim, In re, 646 F.2d 527, 209 USPQ 554 
(CCPA 1981)         2136.03 

Western Elec. Co. v. Piezo Technology, Inc., 
        860 F. 2d 428, 8 USPQ 2d 1853 (Fed. Cir 1988)     1701.01 
Weston, Ex parte, 1911 C.D. 218, 173 Q.G. 285 
(Comm'r Pat. 1911)      810.02 

Wetmore v. Quick, 536 F. 2d 631, 190 USPQ 223 
(CCPA 1976)         2138.05, 2308.02 

Wetterau, In re, 356 F.2d 556, 148 USPQ 499 
(CCPA 1966)         804 

White, Ex parte, 759 O.G. 783 (Bd. App. 1958)     2173.05(o) 

White et al., In re, 405 F. 2d 904, 160 USPQ 417 
(CCPA 1969)         804 

White Consolidated Industries v. Vega Servo-Control, 
 Inc., 713 F. 2d 788,218 USPQ 961 (Fed. Cir. 1983); 
 214 USPQ 796 (S.D. Mich. 1982)       608.01(p), 2106.02 

Woods v. Tsuchiya, 207 USPQ 228 (Comm'r Pat. 1979)  2316 

Whitelaw, Ex parte, 1915 C.D. 18, 219 O.G. 1237 
(Comm'r Pat. 1914)      2173.05(n) 

Whittle, In re, 454 F.2d 1193, 172 USPQ 535 
(CCPA 1972)         2136.05 

Wiechert, In re, 370 F.2d 927, 152 USPQ 247 
(CCPA 1967)         2144.09 

Wiesner v. Weigert, 666 F.2d 582, 212 USPQ 721 
(CCPA 1981)         2138.05 

Wiggins, In re, 488 F.2d 538, 179 USPQ 421 
(CCPA 1973)         2121.02, 2131.04, 

2173.02, 2173.05(a) 

Wilder, In re, 563 F.2d 457, 195 USPQ 426 
(CCPA 1977)         2144.09 

Wilder, In re, 736 F. 2d 1516, 222 USPQ 369 
(Fed. Cir. 1984)                1402, 2163.05 

Wilkinson, In re, 304 F.2d 673, 134 USPQ 171 
(CCPA 1962)         715.07 

Willien, In re, 74 F. 2d 550, 24 USPQ 210 
(CCPA 1935)         715 

Willingham, In re, 282 F. 2d 353, 127 USPQ 211 
(CCPA 1960)          714.19, 1302.04, 1412.02 

Wilson, In re, 311 F.2d 266, 135 USPQ 442 
(CCPA 1962)         2124 

Wilson, In re, 424 F. 2d 1382, 165 USPQ 494, 
(CCPA 1970)         2143.03, 2173.06 

Wilson v. Yakel, 1876 C.D. 245 (Comm'r Pat. 1876) 2301.02 

Winkhaus, In re, 527 F.2d 637, 188 USPQ 129 
(CCPA 1975)         2173.05(q) 

Winkler v. Guglielmino, Appeal No., 89-1571 
        (Fed. Cir. May 9, 1990) (unpublished)      2333 

Wirt, Ex parte, 1905 C.D. 247, 117 O.G. 599 
 (Comm'r Pat. 1905)         714.13 

Wiseman, In re, 596 F. 2d 1019, 201 USPQ 658 
(CCPA 1979)         2106.02, 

2141.02, 2145 

Wittry, In re, 489 F. 2d 1299, 180 USPQ 320 
(CCPA 1974)         1414.01 

W.L. Gore & Associates, Inc. v. Garlock, Inc., 
721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983), 
cert. denied, 469 U.S. 851 (1984) 2132, 2133.03(a), 

2141.01, 2141.02, 

2165.04, 2173.05(a) 

Wooddy, In re, 331 F. 2d 636, 141 USPQ 518 
(CCPA 1964)         2107.02 

Woodruff, In re, 919 F.2d 1575, 16 USPQ2d 1934 
(Fed. Cir. 1990)                2144.05 

Worrest, In re, 201 F. 2d 930, 96 USPQ 381 
(CCPA 1953)         2173.05(k) 

Wright, 1876 C.D. 217, 10 O.G. 587 (Comm'r Pat. 1876)     1410.01 
Wright, In re, 569 F.2d 1124, 193 USPQ 332 
(CCPA 1977)         2125, 2145 

Wright, In re, 866 F.2d 422, 9 USPQ2d 1649 
(Fed. Cir. 1989)                2163.03 

Wright, In re, 999 F.2d 1557, 27 USPQ2d 1510 
(Fed. Cir. 1993)                2107, 2164.03, 

2164.04, 2164.05(a) 

Wu, Ex parte, 10 USPQ 2031 (Bd. Pat. App. & 
Inter. 1989)            2144.04, 2173.05(h) 

Wu v. Jucker, 167 USPQ 467 (Bd. Pat. 
Inter. 1968)            2138.05, 2138.06 

Wyer, In re, 655 F. 2d 221, 210 USPQ 790 
(CCPA 1981)         901.05, 2127, 2128 

Yale, In re, 434 F.2d 66, 168 USPQ 46 
(CCPA 1970)         716.07 

Yamamoto et al., In re, 740 F. 2d 1569, 
222 USPQ 934 (Fed. Cir. 1984)     2258 

Yardley, In re, 181 F. 2d 331, 181 USPQ 331 
(CCPA 1974)         1512 

Yarn Processing Patent Validity Litigation, 
183 USPQ 65 (5th Cir. 1974)   2128.01 

Yoshino, Ex parte, 227 USPQ 52 (Bd. Pat. App. & 
Inter. 1985)            2141.01 

Young, Ex parte, 18 Gour. 24    1213.01 

Young, In re, 75 F.2d 966, 25 USPQ 69 (CCPA 1935) 2115 

Young, In re, 927 F.2d 588, 18 USPQ2d 1089 
(Fed. Cir. 1991)                2143.01 

Young v. Dworkin, 489 F.2d 1277, 180 USPQ 388 
(CCPA 1974)         2138.03 

Yuasa Battery v. Comm'r, 3 USPQ 2d 1143 
(D.D.C. 1987)       2279 

Zahn, In re, 617 F. 2d 261, 204 USPQ 988 
(CCPA 1980)         1503.02 

Zechnall, Ex parte, 194 USPQ 461 (Bd. App. 1973)        2106, 
2164.05(a) 

Zenitz, In re, 333 F.2d 924, 142 USPQ 158 
(CCPA 1964)         716.02(f) 

Zickendraht, In re, 319 F. 2d 225, 138 USPQ 22 
(CCPA 1963)         804, 804.03 

Ziegler, In re, 443 F. 2d 1211, 170 USPQ 129 
 (CCPA 1971)            804 

Ziegler, In re, 992 F.2d 1197, 26 USPQ2d 1600 
(Fed. Cir. 1993)                2106, 2107, 

2107.01, 2163.03 

Zimmerley, Ex parte, 153 USPQ 367 
(Bd. App. 1966)             2181 

Zletz, In re, 893 F.2d 319, 13 USPQ2d 1320 
(Fed. Cir. 1989)                715, 2106, 2111.01, 

2171, 2173.05(a) 




Contents 

PATENT LAWS 

United States Code 

Title 35 - Patents 

PART I - PATENT AND TRADEMARK OFFICE 

CHAPTER 1 - ESTABLISHMENT, OFFICERS, FUNCTIONS 

Sec. 

1 Establishment. 

2 Seal. 

3 Officers and employees. 

4 Restrictions on officers and employees as to interest in patents. 
5 [Repealed.] 

6 Duties of Commissioner. 

7 Board of Patent Appeals and Interferences. 

8 Library. 

9 Classification of patents. 

10  Certified copies of records. 

11  Publications. 

12  Exchange of copies of patents with foreign countries. 

13  Copies of patents for public libraries. 

14  Annual report to Congress. 

CHAPTER 2 - PROCEEDINGS IN THE PATENT AND TRADEMARK OFFICE 

21  Filing date and day for taking action. 

22  Printing of papers filed. 

23  Testimony in Patent and Trademark Office cases. 

24  Subpoenas, witnesses. 

25  Declaration in lieu of oath. 

26  Effect of defective execution. 

CHAPTER 3 - PRACTICE BEFORE PATENT AND TRADEMARK OFFICE 

31  Regulations for agents and attorneys. 

32  Suspension or exclusion from practice. 

33  Unauthorized representation as practitioner. 

CHAPTER 4 - PATENT FEES' FUNDING, SEARCH SYSTEMS 

41  Patent fees; patent and trademark search systems. 

42  Patent and Trademark Office funding. 

PART II - PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS 

CHAPTER 10 - PATENTABILITY OF INVENTIONS 

100   Definitions. 

101   Inventions patentable. 

102   Conditions for patentability; novelty and loss of right to patent. 
103   Conditions for patentability; non-obvious subject matter. 

104   Invention made abroad. 

105   Inventions in outer space. 

CHAPTER 11 - APPLICATION FOR PATENT 

111   Application. 

112   Specification. 

113   Drawings. 

114   Models, specimens. 

115   Oath of applicant. 

116   Inventors. 

117   Death or incapacity of inventor. 

118   Filing by other than inventor. 

119   Benefit of earlier filing date; right of priority. 

120   Benefit of earlier filing date in the United States. 

121   Divisional applications. 

122   Confidential status of applications. 

CHAPTER 12 - EXAMINATION OF APPLICATION 

131   Examination of application. 

132   Notice of rejection; reexamination. 

133   Time for prosecuting application. 

134   Appeal to the Board of Patent Appeals and Interferences. 

135   Interferences. 

CHAPTER 13 - REVIEW OF PATENT AND TRADEMARK OFFICE DECISION 

141   Appeal to Court of Appeals for the Federal Circuit. 

142   Notice of appeal. 

143   Proceedings on appeal. 

144   Decision on appeal. 

145   Civil action to obtain patent. 

146   Civil action in case of interference. 

CHAPTER 14 - ISSUE OF PATENT 

151   Issue of patent. 

152   Issue of patent to assignee. 

153   How issued. 

154   Contents and term of patent. 

155   Patent term extension. 

155   A patent term restoration. 

156   Extension of patent term. 

157   Statutory invention registration. 

CHAPTER 15 - PLANT PATENTS 

161   Patents for plants. 

162   Description, claim. 

163   Grant. 

164   Assistance of the Department of Agriculture. 

CHAPTER 16 - DESIGNS 

171   Patents for designs. 

172   Right of priority. 

173   Term of design patent. 

CHAPTER 17 - SECRECY OF CERTAIN INVENTIONS AND FILING APPLICATIONS IN 
FOREIGN COUNTRIES 

181   Secrecy of certain inventions and withholding of patent. 

182   Abandonment of invention for unauthorized disclosure. 

183   Right to compensation. 

184   Filing of application in foreign country. 

185   Patent barred for filing without license. 

186   Penalty. 

187   Nonapplicability to certain persons. 

188   Rules and regulations, delegation of power. 

CHAPTER [18] 38 - PATENT RIGHTS IN INVENTIONS MADE WITH FEDERAL 
ASSISTANCE 

200   Policy and objective. 

201   Definitions. 

202   Disposition of rights. 

203   March-in rights. 

204   Preference for United States industry. 

205   Confidentiality. 

206   Uniform clauses and regulations. 

207   Domestic and foreign protection of federally owned inventions. 
208   Regulations governing Federal licensing. 

209   Restrictions on licensing of federally owned inventions. 

210   Precedence of chapter. 

211   Relationship to antitrust laws. 

212   Disposition of rights in educational awards. 

PART III - PATENTS AND PROTECTION OF PATENT RIGHTS 

CHAPTER 25 - AMENDMENT AND CORRECTION OF PATENTS 

251   Reissue of defective patents. 

252   Effect of reissue. 

253   Disclaimer. 

254   Certificate of correction of Patent and Trademark Office mistake. 
255   Certificate of correction of applicant's mistake. 

256   Correction of named inventor. 

CHAPTER 26 - OWNERSHIP AND ASSIGNMENT 

261   Ownership; assignment. 

262   Joint owners. 

CHAPTER 27 - GOVERNMENT INTERESTS IN PATENTS 

266   [Repealed.] 

267   Time for taking action in Government applications. 

CHAPTER 28 - INFRINGEMENT OF PATENTS 

271   Infringement of patent. 

272   Temporary presence in the United States. 

CHAPTER 29 - REMEDIES FOR INFRINGEMENT OF PATENT, AND OTHER ACTIONS 
281   Remedy for infringement of patent. 

282   Presumption of validity; defenses. 

283   Injunction. 

284   Damages. 

285   Attorney fees. 

286   Time limitation on damages. 

287   Limitation on damages and other remedies; marking and notice. 
288   Action for infringement of a patent containing an invalid claim. 
289   Additional remedy for infringement of design patent. 

290   Notice of patent suits. 

291   Interfering patents. 

292   False marking. 

293   Nonresident patentee; service and notice. 

294   Voluntary arbitration. 

295   Presumptions: Product made by patented process. 
296   Liability of States, instrumentalities of States, and State 
officials 
        for infringement of patents. 

CHAPTER 30 - PRIOR ART CITATIONS TO OFFICE AND REEXAMINATION OF PATENTS 
301   Citation of prior art. 

302   Request for reexamination. 

303   Determination of issue by Commissioner. 

304   Reexamination order by Commissioner. 

305   Conduct of reexamination proceedings. 

306   Appeal. 

307   Certificate of patentability, unpatentability, and claim 
        cancellation. 

PART IV - PATENT COOPERATION TREATY 

CHAPTER 35 - DEFINITIONS 

351   Definitions. 

CHAPTER 36 - INTERNATIONAL STAGE 

361   Receiving Office. 

362   International Searching Authority and International Preliminary 
            Examining Authority. 

363   International application designating the United States: Effect. 
364   International stage: Procedure. 

365   Right of priority; benefit of the filing date of a prior 
application. 

366   Withdrawn international application. 

367   Actions of other authorities: Review. 

368   Secrecy of certain inventions; filing international applications in 
                    foreign countries. 

CHAPTER 37 - NATIONAL STAGE 

371   National stage: Commencement. 

372   National stage: Requirements and procedure. 

373   Improper applicant. 

374   Publication of international application: Effect. 

375   Patent issued on international application: Effect. 

376   Fees. 

LAWS NOT IN TITLE 35, UNITED STATES CODE 

18 U.S.C. 1008      Statements or entries generally. 

18 U.S.C. 2071      Concealment, removal, or mutilation generally. 

PART I - PATENT AND TRADEMARK OFFICE 


CHAPTER 1 - ESTABLISHMENT, OFFICERS, FUNCTIONS 

Sec. 

1 Establishment. 

2 Seal. 

3 Officers and employees. 

4 Restrictions on officers and employees as to interest in patents. 
5 [Repealed.] 

6 Duties of Commissioner. 

7 Board of Patent Appeals and Interferences. 

8 Library. 

9 Classification of patents. 

10  Certified copies of records. 

11  Publications. 

12  Exchange of copies of patents with foreign countries. 

13  Copies of patents for public libraries. 

14  Annual report to Congress. 


35 U.S.C. 1   Establishment. 


        The Patent and Trademark Office shall continue as an office in the 
 Department of Commerce, where records, books, drawings, specifications, 
and  other papers and things pertaining to patents and to trademark 
registrations  shall be kept and preserved, except as otherwise provided 
by law. 

        (Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949.) 

35 U.S.C. 2   Seal. 


        The Patent and Trademark Office shall have a seal with which 
letters  patent, certificates of trademark registrations, and papers 
issued from the  Office shall be authenticated. 

        (Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949.) 

35 U.S.C. 3   Officers and employees. 


        (a)   There shall be in the Patent and Trademark Office a 
Commissioner  of Patents and Trademarks, a Deputy Commissioner, two 
Assistant Commissioners,  and examiners-in-chief appointed under section 7 
of this title. The Deputy  Commissioner, or, in the event of a vacancy in 
that office, the Assistant Commissioner  senior in date of appointment, 
shall fill the office of Commissioner during  a vacancy in that office 
until the Commissioner is appointed and takes office.  The Commissioner of 
Patents and Trademarks, the Deputy Commissioner, and the  Assistant 
Commissioners shall be appointed by the President, by and with the  advice 
and consent of the Senate. The Secretary of Commerce, upon the nomination 
of the Commissioner, in accordance with law shall appoint all other 
officers  and employees. 

        (b)   The Secretary of Commerce may vest in himself the functions 
of  the Patent and Trademark Office and its officers and employees 
specified in  this title and may from time to time authorize their 
performance by any other  officer or employee. 

        (c)   The Secretary of Commerce is authorized to fix the per annum 
 rate of basic compensation of each examiner-in-chief in the Patent and 
Trademark  Office at not in excess of the maximum scheduled rate provided 
for positions  in grade 17 of the General Schedule of the Classification 
Act of 1949, as amended. 
        (d)   The Commissioner of Patents and Trademarks shall be an 
Assistant  Secretary of Commerce and shall receive compensation at the 
rate prescribed  by law for Assistant Secretaries of Commerce. 

        (e)   The members of the Trademark Trial and Appeal Board of the 
Patent  and Trademark Office shall each be paid at a rate not to exceed 
the maximum  rate of basic pay payable for GS-16 of the General Schedule 
under section 5332  of title 5. 

        (Subsection (c) amended Sept. 6, 1958, Public Law 85-933, sec. 1, 
72  Stat. 1793; Sept. 23, 1959, Public Law 85-370, sec. 1(a), 73 Stat. 
650; Aug.  14, 1964, Public Law 88-426, sec. 305(26), 78 Stat. 425; Jan. 
2, 1975, Public  Law 93-596, sec. 1, 88 Stat. 1949; Jan. 2, 1975, Public 
Law 93-601, sec. 1,  88 Stat. 1956; Aug. 27, 1982, Public Law 97-247, sec. 
4, 96 Stat. 319.) 
        (Subsection (d) added Oct. 25, 1982, Public Law 97-366, 96 Stat. 
1760.) 
        (Subsection (e) added Nov. 8, 1984, Public Law 98-622, sec. 405, 
98  Stat. 3392.) 


35 U.S.C. 4   Restrictions on officers and employees as to 
interest 


in patents. 

        Officers and employees of the Patent and Trademark Office shall be 
 incapable, during the period of their appointments and for one year 
thereafter,  of applying for a patent and of acquiring, directly or 
indirectly, except by  inheritance or bequest, any patent or any right or 
interest in any patent,  issued or to be issued by the Office. In patents 
applied for thereafter they  shall not be entitled to any priority date 
earlier than one year after the  termination of their appointment. 

        (Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949.) 

35 U.S.C. 5   [Repealed] 


        (June 6, 1972, Public Law 92-310, Title II, sec. 208(a), 86 Stat. 
203.) 

35 U.S.C. 6   Duties of Commissioner. 


        (a)   The Commissioner, under the direction of the Secretary of 
Commerce,  shall superintend or perform all duties required by law 
respecting the granting  and issuing of patents and the registration of 
trademarks; shall have the authority  to carry on studies, programs, or 
exchanges of items or services regarding  domestic and international 
patent and trademark law or the administration of  the Patent and 
Trademark Office, including programs to recognize, identify,  assess, and 
forecast the technology of patented inventions and their utility  to 
industry; and shall have charge of property belonging to the Patent and 
Trademark Office. He may, subject to the approval of the Secretary of 
Commerce,  establish regulations, not inconsistent with law, for the 
conduct of proceedings  in the Patent and Trademark Office. 

        (b)   The Commissioner, under the direction of the Secretary of 
Commerce,  may, in coordination with the Department of State, carry on 
programs and studies  cooperatively with foreign patent offices and 
international intergovernmental  organizations, or may authorize such 
programs and studies to be carried on,  in connection with the performance 
of duties stated in subsection (a) of this  section. 

        (c)   The Commissioner, under the direction of the Secretary of 
Commerce,  may, with the concurrence of the Secretary of State, transfer 
funds appropriated  to the Patent and Trademark Office, not to exceed $100,000 
in any year, to the Department of State for the purpose of making special 
payments  to international intergovernmental organizations for studies and 
programs for  advancing international cooperation concerning patents, 
trademarks, and related  matters. These special payments may be in in 
addition to any other payments  or contributions to the international 
organization and shall not be subject  to any limitations imposed by law 
on the amounts of such other payments or  contributions by the Government 
of the United States. 

        (Subsection (c) amended Oct. 5, 1971, Public Law 92-132, 
85 Stat. 364; Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949; Aug. 
 27, 1982, Public Law 97-247, sec. 13, 96 Stat. 321.) 

        (Subsection (d) repealed Aug. 27, 1982, Public Law 97-247, sec. 7, 
 96 Stat. 320.) 

        (Subsection (a) amended Dec. 10, 1991, Public Law 102-204, sec. 8, 
 105 Stat. 1641.) 


35 U.S.C. 7   Board of Patent Appeals and Interferences. 


        (a)   The examiners-in-chief shall be persons of competent legal 
knowledge  and scientific ability, who shall be appointed to the 
competitive service.  The Commissioner, the Deputy Commissioner, the 
Assistant Commissioners, and  the examiners-in-chief shall constitute the 
Board of Patent Appeals and Interferences. 
        (b)   The Board of Patent Appeals and Interferences shall, on 
written  appeal of an applicant, review adverse decisions of examiners 
upon applications  for patents and shall determine priority and 
patentability of invention in  interferences declared under section 135(a) 
of this title. Each appeal and  interference shall be heard by at least 
three members of the Board of Patent  Appeals and Interferences, who shall 
be designated by the Commissioner. Only  the Board of Patent Appeals and 
Interferences has the authority to grant rehearings. 
        (c)   Whenever the Commissioner considers it necessary, in order 
to  keep current the work of the Board of Patent Appeals and 
Interferences, the  Commissioner may designate any patent examiner of the 
primary examiner grade  or higher, having the requisite ability, to serve 
as examiner-in-chief for  periods not exceeding six months each. An 
examiner so designated shall be qualified  to act as a member of the Board 
of Patent Appeals and Interferences. Not more  than one of the members of 
the Board of Patent Appeals and Interferences hearing  an appeal or 
determining an interference may be an examiner so designated. The 
Secretary of Commerce is authorized to  fix the pay of each designated 
examiner-in-chief in the Patent and Trademark  Office at not to exceed the 
maximum rate of basic pay payable for grade GS-16  of the General Schedule 
under section 5332 of title 5. The rate of basic pay  of each individual 
designated examiner-in-chief shall be adjusted, at the close  of the 
period for which that individual was designated to act examiner-in-chief, 
to the rate of basic pay that individual would have been receiving at the 
close  of such period if such designation had not been made. 

        (Amended Nov. 8, 1984, Public Law 98-622, sec. 201(a), 98 Stat. 
3386.) 

35 U.S.C. 8   Library. 


        The Commissioner shall maintain a library of scientific and other 
works  and periodicals, both foreign and domestic, in the Patent and 
Trademark Office  to aid the officers in the discharge of their duties. 

        (Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949.) 

35 U.S.C. 9   Classification of patents. 


        The Commissioner may revise and maintain the classification by 
subject  matter of United States letters patent, and such other patents 
and printed  publications as may be necessary or practicable, for the 
purpose of determining  with readiness and accuracy the novelty of 
inventions for which applications  for patent are filed. 


35 U.S.C. 10            Certified copies of records. 


        The Commissioner may furnish certified copies of specifications 
and  drawings of patents issued by the Patent and Trademark Office, and of 
other  records available either to the public or to the person applying 
therefor. 
        (Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949.) 

35 U.S.C. 11            Publications. 


        (a)   The Commissioner may print, or cause to be printed, the 
following: 
        1.  Patents, including specifications and drawings, together with 
copies  of the same.  The Patent and Trademark Office may print the 
headings of the  drawings for patents for the purpose of photolithography. 

        2.  Certificates of trademark registrations, including statements 
and  drawings, together with copies of the same. 

        3.  The Official Gazette of the United States Patent and Trademark 
 Office. 

        4.  Annual indexes of patents and patentees, and of trademarks and 
 registrants. 

        5.  Annual volumes of decisions in patent and trade-mark cases. 
        6.  Pamphlet copies of the patent laws and rules of practice, laws 
 and rules relating to trademarks, and circulars or other publications 
relating  to the business of the Office. 

        (b)   The Commissioner may exchange any of the publications 
specified  in items 3, 4, 5, and 6 of subsection (a) of this section for 
publications  desirable for the use of the Patent and Trademark Office. 

        (Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949.) 

35 U.S.C. 12            Exchange of copies of patents with foreign 
                     countries. 

        The Commissioner may exchange copies of specifications and 
drawings  of United States patents for those of foreign countries. 


35 U.S.C. 13            Copies of patents for public libraries. 


        The Commissioner may supply printed copies of specifications and 
drawings  of patents to public libraries in the United States which shall 
maintain such  copies for the use of the public, at the rate for each 
year's issue established  for this purpose in section 41(d) of this title. 

        (Amended Aug. 27, 1982, Public Law 97-247, sec. 15, 96 Stat. 321.) 

35 U.S.C. 14            Annual report to Congress. 


        The Commissioner shall report to Congress annually the moneys 
received  and expended, statistics concerning the work of the Office, and 
other information  relating to the Office as may be useful to the Congress 
or the public. 

CHAPTER 2 - PROCEEDINGS IN THE PATENTS AND TRADEMARK OFFICE 


Sec. 

21  Filing date and day for taking action. 

22  Printing of papers filed. 

23  Testimony in Patent and Trademark Office cases. 

24  Subpoenas, witnesses. 

25  Declaration in lieu of oath. 

26  Effect of defective execution. 


35 U.S.C. 21            Filing date and day for taking action. 


        (a)   The Commissioner may by rule prescribe that any paper or fee 
 required to be filed in the Patent and Trademark Office will be 
considered  filed in the Office on the date on which it was deposited with 
the United States  Postal Service or would have been deposited with the 
United States Postal Service  but for postal service interruptions or 
emergencies designated by the Commissioner. 
        (b)   When the day, or the last day, for taking any action or 
paying  any fee in the United States Patent and Trademark Office falls on 
Saturday,  Sunday, or a Federal holiday within the District of Columbia, 
the action may  be taken, or fee paid, on the next succeeding secular or 
business day. 
        (Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949; 
Aug.  27, 1982, Public Law 97-247, sec. 12, 96 Stat. 321.) 


35 U.S.C. 22            Printing of papers filed. 


        The Commissioner may require papers filed in the Patent and 
Trademark  Office to be printed or typewritten. 

        (Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949.) 

35 U.S.C. 23            Testimony in Patent and Trademark Office 
cases 

        The Commissioner may establish rules for taking affidavits and 
depositions  required in cases in the Patent and Trademark Office. Any 
officer authorized  by law to take depositions to be used in the courts of 
the United States, or  of the State where he resides, may take such 
affidavits and depositions. 
        (Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949.) 

35 U.S.C. 24            Subpoenas, witnesses 


        The clerk of any United States court for the district wherein 
testimony  is to be taken for use in any contested case in the Patent and 
Trademark Office,  shall, upon the application of any party thereto, issue 
a subpoena for any  witness residing or being within such district, 
commanding him to appear and  testify before an officer in such district 
authorized to take depositions and  affidavits, at the time and place 
stated in the subpoena. The provisions of  the Federal Rules of Civil 
Procedure relating to the attendance of witnesses  and to the production 
of documents and things shall apply to contested cases  in the Patent and 
Trademark Office. 

        Every witness subpoenaed and in attendance shall be allowed the 
fees  and traveling expenses allowed to witnesses attending the United 
States district  courts. 

        A judge of a court whose clerk issued a subpoena may enforce 
obedience  to the process or punish disobedience as in other like cases, 
on proof that  a witness, served with such subpoena, neglected or refused 
to appear or to  testify.  No witness shall be deemed guilty of contempt 
for disobeying such  subpoena unless his fees and traveling expenses in 
going to, and returning  from, and one day's attendance at the place of 
examination, are paid or tendered  him at the time of the service of the 
subpoena; nor for refusing to disclose  any secret matter except upon 
appropriate order of the court which issued the  subpoena. 

        (Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949.) 

35 U.S.C. 25            Declaration in lieu of oath. 


        (a)   The Commissioner may by rule prescribe that any document to 
be  filed in the Patent and Trademark Office and which is required by any 
law,  rule, or other regulation to be under oath may be subscribed to by a 
written  declaration in such form as the Commissioner may prescribe, such 
declaration  to be in lieu of the oath otherwise required. 

        (b)   Whenever such written declaration is used, the document must 
 warn the declarant that willful false statements and the like are 
punishable  by fine or imprisonment, or both (18 U.S.C. 1001). 

        (Added Mar. 26, 1964, Public Law 88-292, sec. 1, 78 Stat. 171; 
amended  Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949.) 


35 U.S.C. 26            Effect of defective execution. 


        Any document to be filed in the Patent and Trademark Office and 
which  is required by any law, rule, or other regulation to be executed in 
a specified  manner may be provisionally accepted by the Commissioner 
despite a defective  execution, provided a properly executed document is 
submitted within such time  as may be prescribed. 

        (Added Mar. 26, 1964, Public Law 88-292, sec. 1, 78 Stat. 171; 
amended  Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949.) 



CHAPTER 3 - PRACTICE BEFORE PATENT AND TRADEMARK OFFICE 


Sec. 

31  Regulations for agents and attorneys. 

32  Suspension or exclusion from practice. 

33  Unauthorized representation as practitioner. 


35 U.S.C. 31            Regulations for agents and attorneys. 


        The Commissioner, subject to the approval of the Secretary of 
Commerce,  may prescribe regulations governing the recognition and conduct 
of agents,  attorneys, or other persons representing applicants or other 
parties before  the Patent and Trademark Office, and may require them, 
before being recognized  as representatives of applicants or other 
persons, to show that they are of  good moral character and reputation and 
are possessed of the necessary qualifications  to render to applicants or 
other persons, valuable service, advice, and assistance  in the 
presentation or prosecution of their applications or other business 
before the Office. 

        (Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949.) 

35 U.S.C. 32            Suspension or exclusion from practice. 


        The Commissioner may, after notice and opportunity for a hearing, 
suspend  or exclude, either generally or in any particular case, from 
further practice  before the Patent and Trademark Office, any person, 
agent, or attorney shown  to be incompetent or disreputable, or guilty of 
gross misconduct, or who does  not comply with the regulations established 
under section 31 of this title,  or who shall, by word, circular, letter, 
or advertising, with intent to defraud  in any manner, deceive, mislead, 
or threaten any applicant or prospective applicant,  or other person 
having immediate or prospective business before the Office.  The reasons 
for any such suspension or exclusion shall be duly recorded. The  United 
States District Court for the District of Columbia, under such conditions 
and upon such proceedings as it by its rules determines, may review the 
action  of the Commissioner upon the petition of the person so refused 
recognition  or so suspended or excluded. 

        (Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat.1949.) 

35 U.S.C. 33            Unauthorized representation as 

                        practitioner. 

        Whoever, not being recognized to practice before the Patent and 
Trademark  Office, holds himself out or permits himself to be held out as 
so recognized,  or as being qualified to prepare or prosecute applications 
for patent, shall  be fined not more than $1,000 for each offense. 

        (Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949.) 

CHAPTER 4 - PATENT FEES; FUNDING; SEARCH SYSTEMS 


Sec. 

41  Patent fees; patent and trademark search systems. 

42  Patent and Trademark Office funding. 


35 U.S.C. 41            Patent fees; patent and trademark search 

            systems. 

        (a)   The Commissioner shall charge the following fees: 

        (1)(A)      On filing each application for an original patent, 
except  in design or plant cases, $500 [$750]. 

        (B)   In addition, on filing or on presentation at any other time, 
 $52 [$78] for each claim in independent form which is in excess of 3, $14 
[$22]  for each claim (whether independent or dependent) which is in 
excess of 20,  and $160 [$250] for each application containing a multiple 
dependent claim. 

        (C)   On filing each provisional application for an original 
patent,  $150. 

        (2)   For issuing each original or reissue patent, except in 
design  or plant cases, $820 [$1,250]. 

        (3)   In design and plant cases: 

        (A)   on filing each design application, $200 [$310]; 

        (B)   on filing each plant application, $330 [$510]; 

        (C)   on issuing each design patent, $290 [$430]; and 

        (D)   on issuing each plant patent, $410 [$630]; 

        (4)(A)      On filing each application for the reissue of a 
patent,  $500 [$750]. 

        (B)   In addition, on filing or on presentation at any other time, 
 $52 [$78] for each claim in independent form which is in excess of the 
number  of independent claims of the original patent, and $14 [$22] for 
each claim 
(whether independent or dependent) which is in excess of 20 and also in 
excess of the number of claims of the original patent. 
        (5)   On filing each disclaimer, $78 [$110]. 

        (6)(A)          On filing an appeal from the examiner to the Board 
 of Patent Appeals and Interferences, $190 [$290]. 

        (B)   In addition, on filing a brief in support of the appeal, 
$190  [$290], and on requesting an oral hearing in the appeal before the 
Board of  Patent Appeals and Interferences, $160 [$250]. 

        (7)         On filing each petition for the revival of an 
unintentionally  abandoned application for a patent or for the 
unintentionally delayed payment  of the fee for issuing each patent, $820 
[$1,210], unless the petition is filed  under section 133 or 151 of this 
title, in which case the fee shall be $78  [$110]. 

        (8)   For petitions for 1-month extensions of time to take actions 
 required by the Commissioner in an application: 

        (A)   on filing a first petition, $78 [$110]; 

        (B)   on filing a second petition, $172 [$380]; and 

        (C)   on filing a third or subsequent petition, $340 [$900]. 
        (9)   Basic national fee for an international application where 
the  Patent and Trademark Office was the International Preliminary 
Examining Authority  and the International Searching Authority, $450 [$680]. 

        (10)    Basic national fee for an international application where 
the  Patent and Trademark Office was the International Searching Authority 
but not  the Interna-tional Preliminary Examining Authority, $500 [$750]. 

        (11)    Basic national fee for an international application where 
the  Patent and Trademark Office was neither the International Searching 
Authority  nor the International Preliminary Examining Authority, $670 
[$1,010]. 
        (12)    Basic national fee for an international application where 
the  international preliminary examination has been paid to the Patent and 
Trademark  Office, and the international preliminary examination report 
states that the  provisions of Article 33(2), (3), and (4) of the Patent 
Cooperation Treaty  have been satisfied for all claims in the application 
entering the national  stage, $66 [$94]. 

        (13)    For filing or later presentation of each independent claim 
 in the national stage of an international application in excess of 3, $52 
[$78]. 
  (14)      For filing or later presentation of each claim (whether 
independent  or dependent) in a national stage of an international 
application in excess  of 20, $14 [$22]. 

  (15)      For each national stage of an international application 
containing  a multiple dependent claim, $160 [$250]. 

        For the purpose of computing fees, a multiple dependent claim as 
referred  to in section 112 of this title or any claim depending therefrom 
shall be considered  as separate dependent claims in accordance with the 
number of claims to which  reference is made. Errors in payment of the 
additional fees may be rectified  in accordance with regulations of the 
Commissioner. 

        (b)   The Commissioner shall charge the following fees for 
maintaining  in force all patents based on applications filed on or after 
December 12, 1980: 
        (1)   3 years and 6 months after grant, $650 [$990]. 

        (2)   7 years and 6 months after grant, $1,310 [$1,990]. 

        (3)   11 years and 6 months after grant, $1,980 [$2,990]. 
        Unless payment of the applicable maintenance fee is received in 
the  Patent and Trademark Office on or before the date the fee is due or 
within  a grace period of six months thereafter, the patent will expire as 
of the end  of such grace period. The Commissioner may require the payment 
of a surcharge  as a condition of accepting within such 6-month grace 
period the late payment  of the applicable maintenance fee. No fee will be 
established for maintaining  a design or plant patent in force. 

        (c)(1)      The Commissioner may accept the payment of any 
maintenance  fee required by subsection (b) of this section which is made 
within 24 months  after the 6-month grace period if the delay is shown to 
the satisfaction of  the Commissioner to have been unintentional, or at 
any time after the 6-month  grace period if the delay is shown to the 
satisfaction of the Commis-sioner  to have been unavoidable. The 
Commissioner may require the payment of a surcharge  as a condition of 
accepting payment of any maintenance fee after the 6-month  grace period. 
If the Commissioner accepts payment of a maintenance fee after  the 
6-month grace period, the patent shall be considered as not having expired 
 at the end of the grace period. 

        (2)   A patent, the term of which has been maintained as a result 
of  the acceptance of a payment of a maintenance fee under this 
subsection, shall  not abridge or affect the right of any person or that 
person's successors in business who  made, purchased, offered to sell, or 
used anything protected by the patent  within the United States, or 
imported anything protected by the patent into  the United States after 
the 6-month grace period but prior to the acceptance  of a maintenance fee 
under this subsection, to continue the use of, to offer  for sale, or to 
sell to others to be used, offered for sale, or sold, the specific  thing 
so made, purchased, offered for sale, used, or imported. The court before 
which such  matter is in question may provide for the continued 
manufacture,  use, offer for sale, or sale of the thing made, purchased, 
offered for sale,  or used within the United States, or imported into the 
United States, as specified,  or for the manufacture, use, offer for sale, 
or sale in the United States of  which substantial preparation was made 
after the 6-month grace period but before  the acceptance of a maintenance 
fee under this subsection, and the court may  also provide for the 
continued practice of any process that is practiced, or  for the practice 
of which substantial preparation was made, after the 6-month  grace period 
but before the acceptance of a maintenance fee under this subsection,  to 
the extent and under such terms as the court deems equitable for the 
protection  of investments made or business commenced after the 6-month 
grace period but  before the acceptance of a maintenance fee under this 
subsection. 
        (d)   The Commissioner shall establish fees for all other 
processing,  services, or materials relating to patents not specified in 
this section to  recover the estimated average cost to the Office of such 
processing, services,  or materials, except that the Commissioner shall 
charge the following fees  for the following services: 

        (1)   For recording a document affecting title, $40, per property. 


        (2)   For each photocopy, $.25 per page. 

        (3)   For each black and white copy of a patent, $3. 

        The yearly fee for providing a library specified in section 13 of 
this  title with uncertified printed copies of the specifications and 
drawings for  all patents issued in that year shall be $50. 

        (e)   The Commissioner may waive the payment of any fee for any 
service  or material related to patents in connection with an occasional 
or incidental  request made by a department or agency of the Government, 
or any officer thereof.  The Commissioner may provide any applicant issued 
a notice under section 132  of this title with a copy of the 
specifications and drawings for all patents  referred to in that notice 
without charge. 

        (f)   The fees established in subsections (a) and (b) of this 
section  may be adjusted by the Commissioner on October 1, 1992, and every 
year thereafter,  to reflect any fluctuations occurring during the 
previous 12 months in the  Consumer Price Index, as determined by the 
Secretary of Labor. Changes of less  than 1 per centum may be ignored. 

        (g)   No fee established by the Commissioner under this section 
shall  take effect until at least 30 days after notice of the fee has been 
published  in the Federal Register and in the Official Gazette of the 
Patent and Trademark  Office. 

        Note: Fees established by the Commissioner of Patents and 
Trademarks  under section 41(d) of title 35, United States Code, during 
fiscal year 1992  may take effect on or after 1 day after such fees are 
published in the Federal  Register. Section 41(g) of title 35, United 
States Code, and section 553 of  title 5, United States Code, shall not 
apply to the establishment of such fees  during fiscal year 1992. 

        (h)(1)      Fees charged under subsection (a) or (b) shall be 
reduced  by 50 percent with respect to their application to any small 
business concern  as defined under section 3 of the Small Business Act, 
and to any independent  inventor or nonprofit organization as defined in 
regulations issued by the  Commissioner of Patents and Trademarks. 

        (2)   With respect to its application to any entity described in 
paragraph 
(1), any surcharge or fee charged under subsection (c) or (d) shall not be 
 higher than the surcharge or fee required of any other entity under the 
same  or substantially similar circumstances. 

        (i)(1)      The Commissioner shall maintain, for use by the 
public,  paper or microform collections of United States patents, foreign 
patent documents,  and United States trademark registrations arranged to 
permit search for and  retrieval of information. The Commissioner may not 
impose fees directly for  the use of such collections, or for the use of 
the public patent and trademark  search rooms or libraries. 

        (2)   The Commissioner shall provide for the full deployment of 
the  automated search systems of the Patent and Trademark Office so that 
such systems are available for use by the  public, and shall assure full 
access by the public to, and dissemination of,  patent and trademark 
information, using a variety of automated methods, including  electronic 
bulletin boards and remote access by users to mass storage and retrieval 
systems. 

        (3)   The Commissioner may establish reasonable fees for access by 
 the public to the automated search systems of the Patent and Trademark 
Office.  If such fees are established, a limited amount of free access 
shall be made  available to users of the systems for purposes of education 
and training. The  Commissioner may waive the payment by an individual of 
fees authorized by this  subsection upon a showing of need or hardship, 
and if such waiver is in the  public interest. 

        (4)   The Commissioner shall submit to the Congress an annual 
report  on the automated search systems of the Patent and Trademark Office 
and the  access by the public to such systems. The Commissioner shall also 
publish such  report in the Federal Register. The Commissioner shall 
provide an opportunity  for the submission of comments by interested 
persons on each such report. 
        (Subsection (a)(6) amended Nov. 8, 1984, Public Law 98-622, sec. 
204(a),  98 Stat. 3388.) 

        (Subsection (g) amended Dec. 12, 1980, Public Law 96-517, sec. 2, 
94  Stat. 3017; Aug. 27, 1982, Public Law 97-247, sec. 3, 96 Stat. 317.) 
        (Subsection (h) added Nov. 6, 1986, Public Law 99-607, 
sec. 1(b)(2).) 

        (Subsections (a), (b), (d), (f), and (g) amended Dec. 10, 1991, 
Public  Law 102-204, sec. 5, 105 Stat. 1637.) 

        (Subsections (a)(9) - (15) and (i) added Dec. 10, 1991, Public Law 
 102-204, sec. 5, 105 Stat. 1637.) 

        (Subsection (c)(1) amended Oct. 23, 1992, Public Law 102-444, sec. 
 1, 106 Stat. 2245) 

        (Subsection (a)(1)(C) added Dec. 8, 1994, Public Law 103-465, sec. 
 532, 108 Stat. 4809, effective June 8, 1995.) 

        (Subsection (c)(2) amended, Dec. 8, 1994, Public Law 103-465, sec. 
 533, 108 Stat. 4809, effective Jan. 1, 1996.) 


35 U.S.C. 42            Patent and Trademark Office funding. 


        (a)   All fees for services performed by or materials furnished by 
 the Patent and Trademark Office will be payable to the Commissioner. 
        (b)   All fees paid to the Commissioner and all appropriations for 
 defraying the costs of the activities of the Patent and Trademark Office 
will  be credited to the Patent and Trademark Office Appropriation Account 
in the  Treasury of the United States, the provisions of section 725e of 
title 31,  United States Code, notwithstanding. 

        (c)   Revenues from fees shall be available to the Commissioner to 
 carry out, to the extent provided in appropriation Acts, the activities 
of  the Patent and Trademark Office. Fees available to the Commissioner 
under section  31 of the Trademark Act of 1946 may be used only for the 
processing of trademark  registrations and for other activities, services 
and materials relating to  trademarks and to cover a proportionate share 
of the administrative costs of  the Patent and Trademark Office. 

        (d)   The Commissioner may refund any fee paid by mistake or any 
amount  paid in excess of that required. 

        (e)   The Secretary of Commerce shall, on the day each year on 
which  the President submits the annual budget to the Congress, provide to 
the Committees  on the Judiciary of the Senate and the House of 
Representatives: 

        (1)   a list of patent and trademark fee collections by the Patent 
 and Trademark Office during the preceding fiscal year; 

        (2)   a list of activities of the Patent and Trademark Office 
during  the preceding fiscal year which were supported by patent fee 
expenditures,  trademark fee expenditures, and appropriations; 

        (3)   budget plans for significant programs, projects, and 
activities  of the Office, including out-year funding estimates; 

        (4)   any proposed disposition of surplus fees by the Office; and 
        (5)   such other information as the committees consider necessary. 


        (Amended Nov. 14, 1975, Public Law 94-131, sec. 4, 89 Stat. 690; 
Dec.  12, 1980, Public Law 96-517, sec. 3, 94 Stat. 3018; Aug. 27, 1982, 
Public Law  97-247, sec. 3(g), 96 Stat. 319.) 

        (Subsection (c) amended Dec. 10, 1991, Public Law 102-204, sec. 5, 
 105 Stat. 1640.) 

        (Subsection (e) added Dec. 10, 1991, Public Law 102-204, sec. 4, 
105  Stat. 1637.) 


PART II - PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS 



CHAPTER 10 - PATENTABILITY OF INVENTIONS 


Sec. 

100   Definitions. 

101   Inventions patentable. 

102   Conditions for patentability; novelty and loss of right to 
patent. 
103   Conditions for patentability; non-obvious subject matter. 

104   Invention made abroad. 

105   Inventions in outer space. 


35 U.S.C. 100     Definitions. 


        When used in this title unless the context otherwise indicates --- 


        (a)   The term "invention" means invention or discovery. 

        (b)   The term "process" means process, art, or method, and 
includes  a new use of a known process, machine, manufacture, composition 
of matter,  or material. 

        (c)   The terms "United States" and "this country" mean the United 
 States of America, its territories and  possessions. 

        (d)   The word "patentee" includes not only the patentee to whom 
the  patent was issued but also the successors in title to the patentee. 

35 U.S.C. 101     Inventions patentable. 


        Whoever invents or discovers any new and useful process, machine, 
manufacture,  or composition of matter, or any new and useful improvement 
thereof, may obtain  a patent therefor, subject to the conditions and 
requirements of this title. 


35 U.S.C. 102     Conditions for patentability; novelty 
                             and 


loss of right to patent. 

        A person shall be entitled to a patent unless - 

        (a)   the invention was known or used by others in this country, 
or  patented or described in a printed publication in this or a foreign 
country,  before the invention thereof by the applicant for patent, or 

        (b)   the invention was patented or described in a printed 
publication  in this or a foreign country or in public use or on sale in 
this country, more  than one year prior to the date of the application for 
patent in the United  States, or 

        (c)   he has abandoned the invention, or 

        (d)   the invention was first patented or caused to be patented, 
or  was the subject of an inventor's certificate, by the applicant or his 
legal  representatives or assigns in a foreign country prior to the date 
of the application  for patent in this country on an application for 
patent or inventor's certificate  filed more than twelve months before the 
filing of the application in the United  States, or 

        (e)   the invention was described in a patent granted on an 
application  for patent by another filed in the United States before the 
invention thereof  by the applicant for patent, or on an international 
application by another  who has fulfilled the requirements of paragraphs 
(1), (2), and (4) of section  371(c) of this title before the invention 
thereof by applicant for patent,  or 

        (f)   he did not himself invent the subject matter sought to be 
patented,  or 

        (g)   before the applicant's invention thereof the invention was 
made  in this country by another who had not abandoned, suppressed, or 
concealed  it. In determining priority of invention there shall be 
considered not only  the respective dates of conception and reduction to 
practice of the invention,  but also the reasonable diligence of one who 
was first to conceive and last  to reduce to practice, from a time prior 
to conception by the other. 
        (Amended July 28, 1972, Public Law 92-358, sec. 2, 86 Stat. 501; 
Nov.  14, 1975, Public Law 94-131, sec. 3, 89 Stat. 691.) 


35 U.S.C. 103       Conditions for patentability; 

                                non-obvious subject matter. 

(a)   A patent may not be obtained though the invention is not identically 
 disclosed or described as set forth in section 102 of this title, if the 
differences  between the subject matter sought to be patented and the 
prior art are such  that the subject matter as a whole would have been 
obvious at the time the  invention was made to a person having ordinary 
skill in the art to which said  subject matter pertains. Patentability 
shall not be negatived by the manner  in which the invention was made. 

(b)(1)      Notwithstanding subsection (a), and upon timely election by 
the  applicant for patent to proceed under this subsection, a 
biotechnological process  using or resulting in a composition of matter 
that is novel under section 102  and nonobvious under subsection (a) of 
this section shall be considered nonobvious  if- 

                (A) claims to the process and the composition of matter 
are  contained in either the same application for patent or in separate 
applications  having the same effective filing date; and 

                (B) the composition of matter, and the process at the time 
 it was invented, were owned by the same person or subject to an 
obligation  of assignment to the same person. 

        (2) A patent issued on a process under paragraph (1)- 

                (A) shall also contain the claims to the composition of 
matter  used in or made by that process, or 

                (B) shall, if such composition of matter is claimed in 
another  patent, be set to expire on the same date as such other patent, 
notwithstanding  section 154. 

        (3) For purposes of paragraph (1), the term "biotechnological 
process"  means- 

                (A) a process of genetically altering or otherwise 
inducing  a single- or multi-celled organism to- 
                        (i) express an exogenous nucleotide sequence, 
                        (ii) inhibit, eliminate, augment, or alter 
expression  of an endogenous nucleotide sequence, or 

                        (iii) express a specific physiological 
characteristic  not naturally associated with said organism; 

                (B) cell fusion procedures yielding a cell line that 
expresses  a specific protein, such as a monoclonal antibody; and 

                (C) a method of using a product produced by a process 
defined  by subparagraph (A) or (B), or a combination of subparagraphs (A) 
and (B). 
(c)   Subject matter developed by another person, which qualifies as prior 
 art only under subsection (f) or (g) of section 102 of this title, shall 
not  preclude patentability under this section where the subject matter 
and the  claimed invention were, at the time the invention was made, owned 
by the same  person or subject to an obligation of assignment to the same 
person. 
        (Second paragraph added Nov. 8, 1984, Public Law 98-622, 
sec. 103, 98 Stat. 3384; amended Nov. 1, 1995, Public Law 104-41, sec.1, 
109  stat. 351.) 


35 U.S.C. 104     Invention made abroad. 


        (a)   IN GENERAL.- 

        (1)   PROCEEDINGS.-In proceedings in the Patent and Trademark 
Office,  in the courts, and before any other competent authority, an 
applicant for a  patent, or a patentee, may not establish a date of 
invention by reference to  knowledge or use thereof, or other activity 
with respect thereto, in a foreign  country other than a NAFTA country or 
a WTO member country, except as provided  in sections 119 and 365 of this 
title. 

        (2)   RIGHTS.-If an invention was made by a person, civil or 
military- 
(A)   while domiciled in the United States, and serving in any other 
country  in connection with operations by or on behalf of the United 
States, 
(B)   while domiciled in a NAFTA country and serving in another country in 
 connection with operations by or on behalf of that NAFTA country, or 
(C)   while domiciled in a WTO member country and serving in another 
country  in connection with operations by or on behalf of that WTO member 
country, 
that person shall be entitled to the same rights of priority in the United 
 States with respect to such invention as if such invention had been made 
in  the United States, that NAFTA country, or that WTO member country, as 
the case  may be. 

        (3)   USE OF INFORMATION.-To the extent that any information in a 
NAFTA  country or a WTO member country concerning knowledge, use, or other 
activity  relevant to proving or disproving a date of invention has not 
been made available  for use in a proceeding in the Patent and Trademark 
Office, a court, or any  other competent authority to the same extent as 
such information could be made  available in the United States, the 
Commissioner, court, or such other authority  shall draw appropriate 
inferences, or take other action permitted by statute,  rule, or 
regulation, in favor of the party that requested the information in  the 
proceeding. 

        (b) DEFINITIONS.-As used in this section- 

        (1)   The term ``NAFTA country" has the meaning given that term in 
 section 2(4) of the North American Free Trade Agreement Implementation 
Act;  and 

        (2)   The term ``WTO member country" has the meaning given that 
term  in section 2(10) of the Uruguay Round Agreements Act. 

        (Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949; 
Nov.  14, 1975, Public Law 94-131, sec. 6, 89 Stat. 691; Dec. 8, 1993, 
Public Law  103-182, sec. 331, 107 Stat. 2057 (as to NAFTAcountry); 
amended Dec. 8, 1994,  Public Law 103-465, sec. 531,108 Stat. 4809, 
effective Jan. 1, 1996 as to WTO  member country.) 


35 U.S.C. 105     Inventions in outer space. 


        (a)   Any invention made, used, or sold in outer space on a space 
object  or component thereof under the jurisdiction or control of the 
United States  shall be considered to be made, used or sold within the 
United States for the  purposes of this title, except with respect to any 
space object or component  thereof that is specifically identified and 
otherwise provided for by an international  agreement to which the United 
States is a party, or with respect to any space  object or component 
thereof that is carried on the registry of a foreign state  in accordance 
with the Convention on Registration of Objects Launched into  Outer Space. 

        (b)   Any invention made, used, or sold in outer space on a space 
object  or component thereof that is carried on the registry of a foreign 
state in  accordance with the Convention on Registration of Objects 
Launched into Outer  Space, shall be considered to be made, used, or sold 
within the United States  for the purposes of this title if specifically 
so agreed in an international  agreement between the United States and the 
state of registry. 

        (Added Nov. 15, 1990, Public Law 101-580, sec. 1, 104 Stat. 2863; 
Dec.  8, 1993, Public Law 103-182, Stat 331, 107 Stat. 2057.) 


CHAPTER 11 - APPLICATION FOR PATENT 


Sec. 

111   Application. 

112   Specification. 

113   Drawings. 

114   Models, specimens. 

115   Oath of applicant. 

116   Inventors. 

117   Death or incapacity of inventor. 

118   Filing by other than inventor. 

119   Benefit of earlier filing date in foreign country; right of 
     priority. 
120   Benefit of earlier filing date in the United States. 

121   Divisional applications. 

122   Confidential status of applications. 


35 U.S.C. 111     Application. 


        (a) IN GENERAL.- 

        (1)   WRITTEN APPLICATION.-An application for patent shall be 
made,  or authorized to be made, by the inventor, except as otherwise 
provided in  this title, in writing to the Commissioner. 

        (2)   CONTENTS.-Such application shall include- 

(A)   a specification as prescribed by section 112 of this title; 
(B)   a drawing as prescribed by section 113 of this title; and 

(C)   an oath by the applicant as prescribed by section 115 of this title. 
        (3)   FEE AND OATH.-The application must be accompanied by the fee 
 required by law. The fee and oath may be submitted after the 
specification  and any required drawing are submitted, within such period 
and under such conditions,  including the payment of a surcharge, as may 
be prescribed by the Commissioner. 

        (4)   FAILURE TO SUBMIT.-Upon failure to submit the fee and oath 
within  such prescribed period, the application shall be regarded as 
abandoned, unless  it is shown to the satisfaction of the Commissioner 
that the delay in submitting  the fee and oath was unavoidable or 
unintentional. The filing date of an application  shall be the date on 
which the specification and any required drawing are received  in the 
Patent and Trademark Office. 

        (b)   PROVISIONAL APPLICATION.- 

        (1)   AUTHORIZATION.-A provisional application for patent shall be 
 made or authorized to be made by the inventor, except as otherwise 
provided  in this title, in writing to the Commissioner. Such application 
shall include- 
(A)   a specification as prescribed by the first paragraph of section 112 
of  this title; and 

(B)   a drawing as prescribed by section 113 of this title. 

        (2)   CLAIM.-A claim, as required by the second through fifth 
paragraphs  of section 112, shall not be required in a provisional 
application. 
        (3)   FEE.-(A) The application must be accompanied by the fee 
required  by law. 

(B)   The fee may be submitted after the specification and any required 
drawing  are submitted, within such period and under such conditions, 
including the  payment of a surcharge, as may be prescribed by the 
Commissioner. 
(C)   Upon failure to submit the fee within such prescribed period, the 
application  shall be regarded as abandoned, unless it is shown to the 
satisfaction of the  Commissioner that the delay in submitting the fee was 
unavoidable or unintentional. 
        (4)   FILING DATE.-The filing date of a provisional application 
shall  be the date on which the specification and any required drawing are 
received  in the Patent and Trademark Office. 

        (5)   ABANDONMENT.-The provisional application shall be regarded 
as  abandoned 12 months after the filing date of such application and 
shall not  be subject to revival thereafter. 

        (6)   OTHER BASIS FOR PROVISIONAL APPLICATION.-Subject to all the 
conditions  in this sub- section and section 119(e) of this title, and as 
prescribed by  the Commissioner, an application for patent filed under 
subsection (a) may  be treated as a provisional application for patent. 

        (7)   NO RIGHT OF PRIORITY OR BENEFIT OF EARLIEST FILING DATE.-A 
provisional  application shall not be entitled to the right of priority of 
any other application  under section 119 or 365(a) of this title or to the 
benefit of an earlier filing  date in the United States under section 120, 
121, or 365(c) of this title. 
        (8)   APPLICABLE PROVISIONS.-The provisions of this title relating 
 to applications for patent shall apply to provisional applications for 
patent,  except as otherwise provided, and except that provisional 
applications for  patent shall not be subject to sections 115, 131, 135, 
and 157 of this title. 
        (Amended Aug. 27, 1982, Public Law 97-247, sec. 5, 96 Stat. 319; 
amended  Dec. 8, 1994, Public Law 103-465, sec. 532, 108 Stat. 4809, 
effective June  8, 1995.) 


35 U.S.C. 112      Specification. 


        The specification shall contain a written description of the 
invention,  and of the manner and process of making and using it, in such 
full, clear,  concise, and exact terms as to enable any person skilled in 
the art to which  it pertains, or with which it is most nearly connected, 
to make and use the  same, and shall set forth the best mode 

contemplated by the inventor of carrying out his invention. 

        The specification shall conclude with one or more claims 
particularly  pointing out and distinctly claiming the subject matter 
which the applicant  regards as his invention. 

        A claim may be written in independent or, if the nature of the 
case  admits, in dependent or multiple dependent form. 

        Subject to the following paragraph, a claim in dependent form 
shall  contain a reference to a claim previously set forth and then 
specify a further  limitation of the subject matter claimed. A claim in 
dependent form shall be  construed to incorporate by reference all the 
limitations of the claim to which  it refers. 

        A claim in multiple dependent form shall contain a reference, in 
the  alternative only, to more than one claim previously set forth and 
then specify  a further limitation of the subject matter claimed. A 
multiple dependent claim  shall not serve as a basis for any other 
multiple dependent claim. A multiple  dependent claim shall be construed 
to incorporate by reference all the limitations  of the particular claim 
in relation to which it is being considered. 
        An element in a claim for a combination may be expressed as a 
means  or step for performing a specified function without the recital of 
structure,  material, or acts in support thereof, and such claim shall be 
construed to  cover the corresponding structure, material, or acts 
described in the specification  and equivalents thereof. 

         (Amended July 24, 1965, Public Law 89-83, sec. 9, 79 Stat. 261; 
Nov.  14, 1975, Public Law 94-131, sec. 7, 89 Stat. 691.) 


35 U.S.C. 113     Drawings. 


        The applicant shall furnish a drawing where necessary for the 
understanding  of the subject matter sought to be patented. When the 
nature of such subject  matter admits of illustration by a drawing and the 
applicant has not furnished  such a drawing, the Commissioner may require 
its submission within a time period  of not less than two months from the 
sending of a notice thereof. Drawings  submitted after the filing date of 
the application may not be used (i) to overcome  any insufficiency of the 
specification due to lack of an enabling disclosure  or otherwise 
inadequate disclosure therein, or (ii) to supplement the original 
disclosure thereof for the purpose of interpretation of the scope of any 
claim. 
        (Amended Nov. 14, 1975, Public Law 94-131, sec. 8, 89 Stat. 691.) 

35 U.S.C. 114     Models, specimens. 


        The Commissioner may require the applicant to furnish a model of 
convenient  size to exhibit advantageously the several parts of his 
invention. 
        When the invention relates to a composition of matter, the 
Commissioner  may require the applicant to furnish specimens or 
ingredients for the purpose  of inspection or experiment. 


35 U.S.C. 115      Oath of applicant. 


        The applicant shall make oath that he believes himself to be the 
original  and first inventor of the process, machine, manufacture, or 
composition of  matter, or improvement thereof, for which he solicits a 
patent; and shall state  of what country he is a citizen. Such oath may be 
made before any person within  the United States authorized by law to 
administer oaths, or, when made in a  foreign country, before any 
diplomatic or consular officer of the United States  authorized to 
administer oaths, or before any officer having an official seal  and 
authorized to administer oaths in the foreign country in which the 
applicant  may be, whose authority is proved by certificate of a 
diplomatic or consular  officer of the United States, or apostille of an 
official designated by a foreign  country which, by treaty or convention, 
accords like effect to apostilles of  designated officials in the United 
States. Such oath is valid if it complies  with the laws of the state or 
country where made. When the application is made  as provided in this 
title by a person other than the inventor, the oath may  be so varied in 
form that it can be made by him. 

        (Amended Aug. 27, 1982, Public Law 97-247, sec. 14(a), 96 Stat. 
321.) 

35 U.S.C. 116     Inventors. 


        When an invention is made by two or more persons jointly, they 
shall  apply for patent jointly and each make the required oath, except as 
otherwise  provided in this title. Inventors may apply for a patent 
jointly even though 
(1) they did not physically work together or at the same time, (2) each 
did  not make the same type or amount of contribution, or (3) each did not 
make  a contribution to the subject matter of every claim of the patent. 
        If a joint inventor refuses to join in an application for patent 
or  cannot be found or reached after diligent effort, the application may 
be made  by the other inventor on behalf of himself and the omitted 
inventor. The Commissioner,  on proof of the pertinent facts and after 
such notice to the omitted inventor  as he prescribes, may grant a patent 
to the inventor making the application,  subject to the same rights which 
the omitted inventor would have had if he  had been joined. The omitted 
inventor may subsequently join in the application. 
        Whenever through error a person is named in an application for 
patent  as the inventor, or through an error an inventor is not named in 
an application,  and such error arose without any deceptive intention on 
his part, the Commissioner  may permit the application to be amended 
accordingly, under such terms as he  prescribes. 

        (Amended Aug. 27, 1982, Public Law 97-247, sec. 6(a), 96 Stat. 
320;  Nov. 8, 1984, Public Law 98-622, sec. 104(a), 98 Stat. 3384.) 


35 U.S.C. 117     Death or incapacity of inventor. 


        Legal representatives of deceased inventors and of those under 
legal  incapacity may make application for patent upon compliance with the 
requirements  and on the same terms and conditions applicable to the inventor. 


35 U.S.C. 118     Filing by other than inventor. 


        Whenever an inventor refuses to execute an application for patent, 
 or cannot be found or reached after diligent effort, a person to whom the 
inventor  has assigned or agreed in writing to assign the invention or who 
otherwise  shows sufficient proprietary interest in the matter justifying 
such action,  may make application for patent on behalf of and as agent 
for the inventor  on proof of the pertinent facts and a showing that such 
action is necessary  to preserve the rights of the parties or to prevent 
irreparable damage; and  the Commissioner may grant a patent to such 
inventor upon such notice to him  as the Commissioner deems sufficient, 
and on compliance with such regulations  as he prescribes. 


35 U.S.C. 119     Benefit of earlier filing date; right 

                                of priority. 

        (a)   An application for patent for an invention filed in this 
country  by any person who has, or whose legal representatives or assigns 
have, previously  regularly filed an application for a patent for the same 
invention in a foreign  country which affords similar privileges in the 
case of applications filed  in the United States or to citizens of the 
United States, shall have the same  effect as the same application would 
have if filed in this country on the date on  which the application for 
patent for the same invention was first filed in  such foreign country, if 
the application in this country is filed within twelve  months from the 
earliest date on which such foreign application was filed;  but no patent 
shall be granted on any application for patent for an invention  which had 
been patented or described in a printed publication in any country  more 
than one year before the date of the actual filing of the application  in 
this country, or which had been in public use or on sale in this country 
more than one year prior to such filing. 

        (b)   No application for patent shall be entitled to this right of 
 priority unless a claim therefor and a certified copy of the original 
foreign  application, specification, and drawings upon which it is based 
are filed in  the Patent and Trademark Office before the patent is 
granted, or at such time  during the pendency of the application as 
required by the Commissioner not  earlier than six months after the filing 
of the application in this country.  Such certification shall be made by 
the patent office of the foreign country  in which filed and show the date 
of the application and of the filing of the  specification and other 
papers. The Commissioner may require a translation  of the papers filed if 
not in the English language and such other information  as he deems 
necessary. 

        (c)   In like manner and subject to the same conditions and 
requirements,  the right provided in this section may be based upon a 
subsequent regularly  filed application in the same foreign country 
instead of the first filed foreign  application, provided that any foreign 
application filed prior to such subsequent  application has been 
withdrawn, abandoned, or otherwise disposed of, without  having been laid 
open to public inspection and without leaving any rights outstanding,  and 
has not served, nor thereafter shall serve, as a basis for claiming a 
right  of priority. 

        (d)   Applications for inventors' certificates filed in a foreign 
country  in which applicants have a right to apply, at their discretion, 
either for  a patent or for an inventor's certificate shall be treated in 
this country  in the same manner and have the same effect for purpose of 
the right of priority  under this section as applications for patents, 
subject to the same conditions  and requirements of this section as apply 
to applications for patents, provided  such applicants are entitled to the 
benefits of the Stockholm Revision of the  Paris Convention at the time of 
such filing. 

        (e) (1) An application for patent filed under section 111(a) or 
section  363 of this title for an invention disclosed in the manner 
provided by the  first paragraph of section 112 of this title in a 
provisional application filed  under section 111(b) of this title, by an 
inventor or inventors named in the  provisional application, shall have 
the same effect, as to such invention,  as though filed on the date of the 
provisional application filed under section  111(b) of this title, if the 
application for patent filed under section 111(a)  or section 363 of this 
title is filed not later than 12 months after the date  on which the 
provisional application was filed and if it contains or is amended  to 
contain a specific reference to the provisional application. 

        (2) A provisional application filed under section 111(b) of this 
title  may not be relied upon in any proceeding in the Patent and 
Trademark Office  unless the fee set forth in subparagraph (A) or (C) of 
section 41(a)(1) of  this title has been paid and the provisional 
application was pending on the  filing date of the application for patent 
under section 111(a) or section 363  of this title. 

        (Amended Oct. 3, 1961, Public Law 87-333, sec. 1, 75 Stat. 748; 
July  28, 1972, Public Law 92-358, sec. 1, 86 Stat. 502; Jan. 2, 1975, 
Public Law  93-596, sec. 1, 88 Stat. 1949; amended Dec. 8, 1994, Public 
Law 103-465, sec.  532, 108 Stat. 4809, effective June 8, 1995.) 


35 U.S.C. 120     Benefit of earlier filing date in the 
                             United 


States. 

        An application for patent for an invention disclosed in the manner 
 provided by the first paragraph of section 112 of this title in an 
application  previously filed in the United States, or as provided by 
section 363 of this  title, which is filed by an inventor or inventors 
named in the previously filed  application shall have the same effect, as 
to such invention, as though filed  on the date of the prior application, 
if filed before the patenting or abandonment  of or termination of 
proceedings on the first application or on an application  similarly 
entitled to the benefit of the filing date of the first application  and 
if it contains or is amended to contain a specific reference to the 
earlier  filed application. 

        (Amended Nov. 14, 1075, Public Law 94-131, sec. 9, 89 Stat. 691; 
Nov.  8, 1984, Public Law 98-622, sec. 104(b), 98 Stat. 3385.) 


35 U.S.C. 121     Divisional applications. 


        If two or more independent and distinct inventions are claimed in 
one  application, the Commissioner may require the application to be 
restricted  to one of the inventions.  If the other invention is made the 
subject of a  divisional application which complies with the requirements 
of section 120  of this title it shall be entitled to the benefit of the 
filing date of the  original application.  A patent issuing on an 
application with respect to which  a requirement for restriction under 
this section has been made, or on an application  filed as a result of 
such a requirement, shall not be used as a reference either  in the Patent 
and Trademark Office or in the courts against a divisional application  or 
against the original application or any patent issued on either of them, 
if the divisional application is filed before the issuance of the patent 
on  the other application. If a divisional application is directed solely 
to subject  matter described and claimed in the original application as 
filed, the Commissioner  may dispense with signing and execution by the 
inventor. The validity of a  patent shall not be questioned for failure of 
the Commissioner to require the  application to be restricted to one 
invention. 

        (Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949.) 

35 U.S.C. 122     Confidential status of applications. 


        Applications for patents shall be kept in confidence by the Patent 
 and Trademark Office and no information concerning the same given without 
authority  of the applicant or owner unless necessary to carry out the 
provisions of any  Act of Congress or in such special circumstances as may 
be determined by the  Commissioner. 

        (Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949.) 

CHAPTER 12 - EXAMINATION OF APPLICATION 


Sec. 

131   Examination of application. 

132   Notice of rejection; reexamination. 

133   Time for prosecuting application. 

134   Appeal to the Board of Patent Appeals and Interferences. 

135   Interferences. 


35 U.S.C. 131     Examination of application. 


        The Commissioner shall cause an examination to be made of the 
application  and the alleged new invention; and if on such examination it 
appears that the  applicant is entitled to a patent under the law, the 
Commissioner shall issue  a patent therefor. 


35 U.S.C. 132     Notice of rejection; reexamination. 


        Whenever, on examination, any claim for a patent is rejected, or 
any  objection or requirement made, the Commissioner shall notify the 
applicant  thereof, stating the reasons for such rejection, or objection 
or requirement,  together with such information and references as may be 
useful in judging of  the propriety of continuing the prosecution of his 
application; and if after  receiving such notice, the applicant persists 
in his claim for a patent, with  or without amendment, the application 
shall be reexamined. No amendment shall  introduce new matter into the 
disclosure of the invention. 


35 U.S.C. 133     Time for prosecuting application. 


        Upon failure of the applicant to prosecute the application within 
six  months after any action therein, of which notice has been given or 
mailed to  the applicant, or within such shorter time, not less than 
thirty days, as fixed  by the Commissioner in such action, the application 
shall be regarded as abandoned  by the parties thereto, unless it be shown 
to the satisfaction of the Commissioner  that such delay was unavoidable. 


35 U.S.C 134            Appeal to the Board of Patent Appeals and 
Interferences. 

        An applicant for a patent, any of whose claims has been twice 
rejected,  may appeal from the decision of the primary examiner to the 
Board of Patent  Appeals and Interferences, having once paid the fee for 
such appeal. 
        (Amended Nov. 8, 1984, Public Law 98-622, sec. 204(c), 98 Stat. 
3388.) 

35 U.S.C. 135     Interferences. 


        (a)   Whenever an application is made for a patent which, in the 
opinion  of the Commissioner, would interfere with any pending 
application, or with  any unexpired patent, an interference may be 
declared and the Commissioner  shall give notice of such declaration to 
the applicants, or applicant and patentee,  as the case may be. The Board 
of Patent Appeals and Interferences shall determine  questions of priority 
of the inventions and may  determine  questions  of   patentability.  Any 
final decision, if adverse to the claim of an applicant, shall constitute 
the final  refusal by the Patent and Trademark Office of the claims 
involved, and the  Commissioner may issue a patent to the applicant who is 
adjudged the prior  inventor. A final judgment adverse to a patentee from 
which no appeal or other  review has been or can be taken or had shall 
constitute cancellation of the  claims involved in the patent, and notice 
of such cancellation shall be endorsed  on copies of the patent 
distributed after such cancellation by the Patent and  Trademark Office. 

        (b)   A claim which is the same as, or for the same or 
substantially  the same subject matter as, a claim of an issued patent may 
not be made in  any application unless such a claim is made prior to one 
year from the date  on which the patent was granted. 

        (c)   Any agreement or understanding between parties to an 
interference,  including any collateral agreements referred to therein, 
made in connection  with or in contemplation of the termination of the 
interference, shall be in  writing and a true copy thereof filed in the 
Patent and Trademark Office before  the termination of the interference as 
between the said parties to the agreement  or understanding.  If any party 
filing the same so requests, the copy shall  be kept separate from the 
file of the interference, and made available only  to Government agencies 
on written request, or to any person on a showing of  good cause.  Failure 
to file the copy of such agreement or understanding shall  render 
permanently unenforceable such agreement or understanding and any patent 
of such parties involved in the interference or any patent subsequently 
issued  on any application of such parties so involved. The Commissioner 
may, however,  on a showing of good cause for failure to file within the 
time prescribed,  permit the filing of the agreement or understanding 
during the six-month period  subsequent to the termination of the 
interference as between the parties to  the agreement or understanding. 

        The Commissioner shall give notice to the parties or their 
attorneys  of record, a reasonable time prior to said termination, of the 
filing requirement  of this section. If the Commissioner gives such notice 
at a later time, irrespective  of the right to file such agreement or 
understanding within the six-month period  on a showing of good cause, the 
parties may file such agreement or understanding  within sixty days of the 
receipt of such notice. 

        Any discretionary action of the Commissioner under this subsection 
 shall be reviewable under section 10 of the Administrative Procedure Act. 
        (d)   Parties to a patent interference, within such time as may be 
 specified by the Commissioner by regulation, may determine such contest 
or  any aspect thereof by arbitration. Such arbitration shall be governed 
by the  provisions of title 9 to the extent such title is not inconsistent 
with this  section. The parties shall give notice of any arbitration award 
to the Commissioner,  and such award shall, as between the parties to the 
arbitration, be dispositive  of the issues to which it relates. The 
arbitration award shall be unenforceable  until such notice is given. 
Nothing in this subsection shall preclude the Commissioner  from 
determining patentability of the invention involved in the interference. 
        (Subsection (a) amended Nov. 8, 1984, Public Law 98-622, sec. 202, 
 98 Stat. 3386.) 

        (Subsection (c) amended Oct. 15, 1962, Public Law 87-831, 76 Stat. 
 958; Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949.) 

        (Subsection (d) added Nov. 8, 1984, Public Law 98-622, sec. 105, 
98  Stat. 3385.) 


CHAPTER 13 - REVIEW OF PATENT AND TRADEMARK OFFICE DECISION 


Sec. 

141   Appeal to Court of Appeals for the Federal Circuit. 

142   Notice of appeal. 

143   Proceedings on appeal. 

144   Decision on appeal. 

145   Civil action to obtain patent. 

146   Civil action in case of interference 


35 U.S.C. 141     Appeal to the Court of Appeals for the Federal Circuit. 

        An applicant dissatisfied with the decision in an appeal to the 
Board  of Patent Appeals and Interferences under section 134 of this title 
may appeal  the decision to the United States Court of Appeals for the 
Federal Circuit.  By filing such an appeal the applicant waives his or her 
right to proceed under  section 145 of this title. A party to an 
interference dissatisfied with the  decision of the Board of Patent 
Appeals and Interferences on the interference  may appeal the decision to 
the United States Court of Appeals for the Federal  Circuit, but such 
appeal shall be dismissed if any adverse party to such interference, 
within twenty days after the appellant has filed notice of appeal in 
accordance  with section 142 of this title, files notice with the 
Commissioner that the party elects to have all further proceedings 
conducted as provided in section  146 of this title. If the appellant does 
not, within thirty days after filing  of such notice by the adverse party, 
file a civil action under section 146,  the decision appealed from shall 
govern the further proceedings in the case. 
        (Amended Nov. 8, 1984, Public Law 98-622, sec. 203(a), 98 Stat. 
3387.) 

35 U.S.C. 142     Notice of appeal. 


        When an appeal is taken to the United States Court of Appeals for 
the  Federal Circuit, the appellant shall file in the Patent and Trademark 
Office  a written notice of appeal directed to the Commissioner, within 
such time after  the date of the decision from which the appeal is taken 
as the Commissioner  prescribes, but in no case less than 60 days after 
that date. 

        (Amended Nov. 8, 1984, Public Law 98-620, sec. 414(a), 98 Stat. 
3363.) 

35 U.S.C. 143     Proceedings on appeal. 


        With respect to an appeal described in section 142 of this title, 
the  Commissioner shall transmit to the United States Court of Appeals for 
the Federal  Circuit a certified list of the documents comprising the 
record in the Patent  and Trademark Office. The court may request that the 
Commissioner forward the  original or certified copies of such documents 
during the pendency of the appeal.  In an ex parte case, the Commissioner 
shall submit to the court in writing  the grounds for the decision of the 
Patent and Trademark Office, addressing  all the issues involved in the 
appeal. The court shall, 


before hearing an appeal, give notice of the time and place of the hearing 
 to the Commissioner and the parties in the appeal. 

        (Amended Nov. 8, 1984, Public Law 98-620, sec. 414(a), 98 Stat. 
3363.) 

35 U.S.C. 144     Decision on appeal. 


        The United States Court of Appeals for the Federal Circuit shall 
review  the decision from which an appeal is taken on the record before 
the Patent  and Trademark Office. Upon its determination the court shall 
issue its mandate  and opinion, which shall be entered of record in the 
Patent and Trademark Office  and shall govern the further proceedings in 
the case. 

        (Amended Nov. 8, 1984, Public Law 98-620, sec. 414(a), 98 Stat. 
3363.) 

35 U.S.C. 145     Civil action to obtain patent. 


        An applicant dissatisfied with the decision of the Board of Patent 
 Appeals and Interferences in an appeal under section 134 of this title 
may,  unless appeal has been taken to the United States Court of Appeals 
for the  Federal Circuit, have remedy by civil action against the 
Commissioner in the  United States District Court for the District of 
Columbia if commenced within  such time after such decision, not less than 
sixty days, as the Commissioner  appoints. The court may adjudge that such 
applicant is entitled to receive  a patent for his invention, as specified 
in any of his claims involved in the  his invention, as specified in any 
of his claims involved in the decision of  the Board of Patent Appeals and 
Interferences, as the facts in the case may  appear, and such adjudication 
shall authorize the Commissioner to issue such  patent on compliance with 
the requirements of law.  All the expenses of the  proceedings shall be 
paid by the applicant. 

        (Amended Nov. 8, 1984, Public Law 98-620, sec. 203(b), 98 Stat. 
3387.) 

35 U.S.C. 146     Civil action in case of interference. 


        Any party to an interference dissatisfied with the decision of the 
 Board of Patent Appeals and Interferences may have remedy by civil 
action,  if commenced within such time after such decision, not less than 
sixty days,  as the Commissioner appoints or as provided in section 141 of 
this title, unless  he has appealed to the United States Court of Appeals 
for the Federal Circuit,  and such appeal is pending or has been decided. 
In such suits the record in  the Patent and Trademark Office shall be 
admitted on motion of either party  upon the terms and conditions as to 
costs, expenses, and the further cross-examination  of the witnesses as 
the court imposes, without prejudice to the right of the  parties to take 
further testimony. The testimony and exhibits of the record  in the Patent 
and Trademark Office when admitted shall have the same effect  as if 
originally taken and produced in the suit. 

        Such suit may be instituted against the party in interest as shown 
 by the records of the Patent and Trademark Office at the time of the 
decision  complained of, but any party in interest may become a party to 
the action.  If there be adverse parties residing in a plurality of 
districts not embraced  within the same state, or an adverse party 
residing in a foreign country, the United States District Court  for the 
District of Columbia shall have jurisdiction and may issue summons 
against the adverse parties directed to the marshal of any district in 
which  any adverse party resides. Summons against adverse parties residing 
in foreign  countries may be served by publication or otherwise as the 
court directs. The  Commissioner shall not be a necessary party but he 
shall be notified of the  filing of the suit by the clerk of the court in 
which it is filed and shall  have the right to intervene. Judgment of the 
court in favor of the right of  an applicant to a patent shall authorize 
the Commissioner to issue such patent  on the filing in the Patent and 
Trademark Office of a certified copy of the  judgment and on compliance 
with the requirements of law. 

        (Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949; 
Apr.  2, 1982, Public Law 97-164, sec. 163, 96 Stat. 49; Nov. 8, 1984, 
Public Law  98-622, sec. 203(c), 98 Stat. 3387.) 


CHAPTER 14 - ISSUE OF PATENT 


Sec. 

151   Issue of patent. 

152   Issue of patent to assignee. 

153   How issued. 

154   Contents and term of patent. 

155   Patent term extension. 

155   A patent term restoration. 

156   Extension of patent term. 

157   Statutory invention registration. 


35 U.S.C. 151     Issue of patent. 


        If it appears that applicant is entitled to a patent under the 
law,  a written notice of allowance of the application shall be given or 
mailed to  the applicant. The notice shall specify a sum, constituting the 
issue fee or  a portion thereof, which shall be paid within three months 
thereafter. 
        Upon payment of this sum the patent shall issue, but if payment is 
 not timely made, the application shall be regarded as abandoned. 

        Any remaining balance of the issue fee shall be paid within three 
months  from the sending of a notice thereof, and, if not paid, the patent 
shall lapse  at the termination of this three-month period. In calculating 
the amount of  a remaining balance, charges for a page or less may be 
disregarded. 
        If any payment required by this section is not timely made, but is 
 submitted with the fee for delayed payment and the delay in payment is 
shown  to have been unavoidable, it may be accepted by the Commissioner as 
though  no abandonment or lapse had ever occurred. 

        (Amended July 24, 1965, Public Law 89-83, secs. 4 and 6, 79 Stat. 
260;  Jan. 2, 1975, Public Law 93-601, sec. 3, 88 Stat. 1956.) 


35 U.S.C. 152     Issue of patent to assignee. 


        Patents may be granted to the assignee of the inventor of record 
in  the Patent and Trademark Office, upon the application made and the 
specification  sworn to by the inventor, except as otherwise provided in 
this title. 
        (Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949.) 

35 U.S.C. 153     How issued. 


        Patents shall be issued in the name of the United States of 
America,  under the seal of the Patent and Trademark Office, and shall be 
signed by the  Commissioner or have his signature placed thereon and 
attested by an officer  of the Patent and Trademark Office designated by 
the Commissioner, and shall  be recorded in the Patent and Trademark Office. 

        (Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949.) 

35 U.S.C. 154       Contents and term of patent. 


        (a)   IN GENERAL.- 

        (1)   CONTENTS.-Every patent shall contain a short title of the 
invention  and a grant to the patentee, his heirs or assigns, of the right 
to exclude  others from making, using, offering for sale, or selling the 
invention throughout  the United States or importing the invention into 
the United States, and, if  the invention is a process, of the right to 
exclude others from using, offering  for sale or selling throughout the 
United States, or importing into the United  States, products made by that 
process, referring to the specification for the  particulars thereof. 

        (2) TERM.-Subject to the payment of fees under this title, such 
grant  shall be for a term beginning on the date on which the patent 
issues and ending  20 years from the date on which the application for the 
patent was filed in  the United States or, if the application contains a 
specific reference to an  earlier filed application or applications under 
section 120, 121, or 365(c)  of this title, from the date on which the 
earliest such application was filed. 
        (3) PRIORITY.-Priority under section 119, 365(a), or 365(b) of 
this  title shall not be taken into account in determining the term of a 
patent. 
        (4) SPECIFICATION AND DRAWING.-A copy of the specification and 
drawing  shall be annexed to the patent and be a part of such patent. 

        (b) TERM EXTENSION.- 

        (1)   INTERFERENCE DELAY OR SECRECY ORDERS.-If the issue of an 
original  patent is delayed due to a proceeding under section 135(a) of 
this title, or  because the application for patent is placed under an 
order pursuant to section  181 of this title, the term of the patent shall 
be extended for the period  of delay, but in no case more than 5 years. 

        (2)   EXTENSION FOR APPELLATE REVIEW.-If the issue of a patent is 
delayed  due to appellate review by the Board of Patent Appeals and 
Interferences or  by a Federal court and the patent is issued pursuant to 
a decision in the review  reversing an adverse determination of 
patentability, the term of the patent  shall be extended for a period of 
time but in no case more than 5 years. A  patent shall not be eligible for 
extension under this paragraph if it is subject  to a terminal disclaimer 
due to the issue of another patent claiming subject  matter that is not 
patentably distinct from that under appellate review. 
        (3)   LIMITATIONS.-The period of extension referred to in 
paragraph 
(2)- 

(A)   shall include any period beginning on the date on which an appeal is 
 filed under section 134 or 141 of this title, or on which an action is 
commenced  under section 145 of this title, and ending on the date of a 
final decision  in favor of the applicant; 

(B)   shall be reduced by any time attributable to appellate review before 
 the expiration of 3 years from the filing date of the application for 
patent;  and 

(C)   shall be reduced for the period of time during which the applicant 
for  patent did not act with due diligence, as determined by the 
Commissioner. 
        (4)   LENGTH OF EXTENSION.-The total duration of all extensions of 
 a patent under this subsection shall not exceed 5 years. 

        (c) CONTINUATION.- 

        (1) DETERMINATION.-The term of a patent that is in force on or 
that  results from an application filed before the date that is 6 months 
after the  date of the enactment of the Uruguay Round Agreements Act shall 
be the greater  of the 20-year term as provided in subsection (a), or 17 
years from grant subject  to any terminal disclaimers. 

        (2) REMEDIES.-The remedies of sections 283, 284, and 285 of this 
title  shall not apply to Acts which - 

(A)   were commenced or for which substantial investment was made before 
the  date that is 
6 months after the date of the enactment of the Uruguay Round Agreements 
Act;  and 

(B)   became infringing by reason of para- 
graph (1). 

        (3)   REMUNERATION.-The acts referred to in paragraph (2) may be 
continued  only upon the payment of an equitable remuneration to the 
patentee that is  determined in an action brought under chapter 28 and 
chapter 29 (other than  those provisions excluded by paragraph (2)) of 
this title. 

        (Amended July 24, 1965, Public Law 89-83, sec. 5, 79 Stat. 261; 
Dec.  12, 1980, Public Law 96-517, sec. 4, 94 Stat. 3018; amended August 
23, 1988,  Public Law 100-418, sec 9002, effective Feb. 23, 1989; amended 
Dec. 8, 1994,  Public Law 103-465, sec.  532, 108 Stat. 4809, effective 
June 8, 1995 except  subsection (a)(1) effective Jan. 1, 1996.) 


35 U.S.C. 155     Patent term extension. 


        Notwithstanding the provisions of section 154, the term of a 
patent  which encompasses within its scope a composition of matter or a 
process for  using such composition shall be extended if such composition 
or process has  been subjected to a regulatory review by the Federal Food 
and Drug Administration  pursuant to the Federal Food, Drug and Cosmetic 
Act leading to the publication  of regulation permitting the interstate 
distribution and sale of such composition  or process and for which there 
has thereafter been a stay of regulation of  approval imposed pursuant to 
section 409 of the Federal Food, Drug and Cosmetic  Act, which stay was in 
effect on January 1, 1981, by a length of time to be  measured from the 
date such stay of regulation of approval was imposed until  such 
proceedings are finally resolved and commercial marketing permitted. The 
patentee, his heirs, successors, or assigns shall notify the Commissioner 
of  Patents and Trademarks within 90 days of the date of enactment of this 
section  or the date the stay of regulation of approval has been removed, 
whichever  is later, of the number of the patent to be extended and the 
date the stay was imposed and the date commercial marketing was permitted. 
 On receipt of such notice, the Commissioner shall promptly issue to the 
owner  of record of the patent a certificate of extension, under seal, 
stating the  fact and length of the extension and identifying the 
composition of matter  or process for using such composition to which such 
extension is applicable.  Such certificate shall be recorded in the 
official file of each patent extended  and such certificate shall be 
considered as part of the original patent, and  an appropriate notice 
shall be published in the Official Gazette of the Patent  and Trademark 
Office. 

        (Amended Jan. 4, 1983, Public Law 97-414, 96 Stat. 2065.) 

35 U.S.C. 155A          Patent term restoration. 


        (a)   Notwithstanding section 154 of this title, the term of each 
of  the following patents shall be extended in accordance with this 
section: 
        (1)   Any patent which encompasses within its scope a composition 
of  matter which is a new drug product, if during the regulatory review of 
the  product by the Federal Food and Drug Administration - 

        (A)   the Federal Food and Drug Administration notified the 
patentee,  by letter dated February 20, 1976, that such product's new drug 
application  was not approvable under section 505(b)(1) of the Federal 
Food, Drug and Cosmetic  Act; 

        (B)   in 1977 the patentee submitted to the Federal Food and Drug 
Administration  the results of a health effects test to evaluate the 
carcinogenic potential  of such product; 

        (C)   the Federal Food and Drug Administration approved, by letter 
 dated December 18, 1979, the new drug application for such application; 
and 

        (D)   the Federal Food and Drug Administration approved, by letter 
 dated May 26, 1981, a supplementary application covering the facility for 
the  production of such product. 

        (2)   Any patent which encompasses within its scope a process for 
using  the composition described in paragraph (1). 

        (b)   The term of any patent described in subsection (a) shall be 
extended  for a period equal to the period beginning February 20, 1976, 
and ending May  26, 1981, and such patent shall have the effect as if 
originally issued with  such extended term. 

        (c)   The patentee of any patent described in subsection (a) of 
this  section shall, within ninety days after the date of enactment of 
this section,  notify the Commissioner of Patents and Trademarks of the 
number of any patent  so extended. On receipt of such notice, the 
Commissioner shall confirm such  extension by placing a notice thereof in 
the official file of such patent and  publishing an appropriate notice of 
such extension in the Official Gazette  of the Patent and Trademark Office. 

        (Added Oct. 13, 1983, Public Law 98-127, sec. 4(a), 97 Stat. 832.) 

35 U.S.C. 156     Extension of patent term. 


        (a)   The term of a patent which claims a product, a method of 
using  a product, or a method of manufacturing a product shall be extended 
in accordance  with this section from the original expiration date of the 
patent if - 
        (1)   the term of the patent has not expired before an application 
 is submitted under subsection (d)(i) for its extension; 

        (2)   the term of the patent has never been extended under 
subsection 
(e)(1) of this section; 

        (3)   an application for extension is submitted by the owner of 
record  of the patent or its agent and in accordance with the requirements 
of paragraphs 
(1) through (4) of subsection (d); 

        (4)   the product has been subject to a regulatory review period 
before  its commercial marketing or use; 

        (5)(A)      except as provided in subparagraph (B) or (C), the 
permission  for the commercial marketing or use of the product after such 
regulatory review  period is the first permitted commercial marketing or 
use of the product under  the provision of law under which such regulatory 
review period occurred; 
        (B)   in the case of a patent which claims a method of 
manufacturing  the product which primarily uses recombinant DNA technology 
in the manufacture  of the product, the permission for the commercial 
marketing or use of the product  after such regulatory period is the first 
permitted commercial marketing or  use of a product manufactured under the 
process claimed in the patent; or 
        (C)   for purposes of subparagraph (A), in the case of a patent 
which  -- 

        (i)   claims a new animal drug or a veterinary biological product 
which 
(I) is not covered by the claims in any other patent which has been 
extended,  and (II) has received permission for the commercial marketing 
or use in non-food-producing animals and in food-producing animals, and 
        (ii)    was not extended on the basis of the regulatory review 
period  for use in non-food-producing animals, the permission for the 
commercial marketing  or use of the drug or product after the regulatory 
review period for use in  food-producing animals is the first permitted 
commercial marketing or use of  the drug or product for administration to 
a food-producing animal. 
        The product referred to in paragraphs (4) and (5) is hereinafter 
in  this section referred to as the "approved product." 

        (b)   Except as provided in subsection (d)(5)(F), the rights 
derived  from any patent the term of which is extended under this section 
shall during  the period during which the term of the patent is extended - 

        (1)   in the case of a patent which claims a product, be limited 
to  any use approved for the product - 

        (A)   before the expiration of the term of the patent - 

        (i)   under the provision of law under which the applicable 
regulatory  review occurred, or 

        (ii)    under the provision of law under which any regulatory 
review  described in paragraph (1), (4), or (5) of subsection (g) 
occurred, and 
        (B)   on or after the expiration of the regulatory review period 
upon  which the extension of the patent was based; 

        (2)   in the case of a patent which claims a method of using a 
product,  be limited to any use claimed by the patent and approved for the 
product - 
        (A)   before the expiration of the term of the patent -- 

        (i)   under any provision of law under which an applicable 
regulatory  review occurred, and 

        (ii)    under the provision of law under which any regulatory 
review  described in paragraph (1), (4), or (5) of subsection (g) 
occurred, and 
        (B)   on or after the expiration of the regulatory review period 
upon  which the extension of the patent was based; and 

        (3)   in the case of a patent which claims a method of 
manufacturing  a product, be limited to the method of manufacturing as 
used to make - 
        (A)   the approved product, or 

        (B)   the product if it has been subject to a regulatory review 
period  described in paragraphs (1), (4), or (5) of subsection (g). 

        As used in this subsection, the term "product" includes an 
approved  product. 

        (c)   The term of a patent eligible for extension under subsection 
(a) shall be extended by the time equal to the regulatory review period 
for  the approved product which period occurs after the date the patent is 
issued,  except that- 

        (1)   each period of the regulatory review period shall be reduced 
 by any period determined under subsection (d)(2)(B) during which the 
applicant  for the patent extension did not act with due diligence during 
such period  of the regulatory review period; 

        (2)   after any reduction required by paragraph (1), the period of 
 extension shall include only one-half of the time remaining in the 
periods  described in paragraphs (1)(B)(i), (2)(B)(i), (3)(B)(i), 
(4)(B)(i), and (5)(B)(i)  of subsection (g); 

        (3)   if the period remaining in the term of a patent after the 
date  of the approval of the approved product under the provision of law 
under which  such regulatory review occurred when added to the regulatory 
review period  as revised under paragraphs (1) and (2) exceeds fourteen 
years, the period  of extension shall be reduced so that the total of both 
such periods does not  exceed fourteen years, and 

        (4)   in no event shall more than one patent be extended under 
subsection 
(e)(i) for the same regulatory review period for any product. 

        (d)(1)      To obtain an extension of the term of a patent under 
this  section, the owner of record of the patent or its agent shall submit 
an application  to the Commissioner. Except as provided in paragraph (5), 
such an application  may only be submitted within the sixty-day period 
beginning on the date the  product received permission under the provision 
of law under which the applicable  regulatory review period occurred for 
commercial marketing or use. The application  shall con- 
tain - 

        (A)   the identity of the approved product and the Federal statute 
 under which regulatory review occurred; 

        (B)   the identity of the patent for which an extension is being 
sought  and the identity of each claim of such patent; 

        (C)   information to enable the Commissioner to determine under 
subsections 
(a) and (b) the eligibility of a patent for extension and the rights that 
will  be derived from the extension and information to enable the 
Commissioner and  the Secretary of Health and Human Services or the 
Secretary of Agriculture  to determine the period of the extension under 
subsection (g); 

        (D)   a brief description of the activities undertaken by the 
applicant  during the applicable regulatory review period with respect to 
the approved  product and the significant dates applicable to such 
activities; and 
        (E)   such patent or other information as the Commissioner may 
require. 
        (2)(A)      Within 60 days of the submittal of an application for 
extension  of the term of a patent under paragraph (1), the Commissioner 
shall notify  - 

        (i)   the Secretary of Agriculture if the patent claims a drug 
product  or a method of using or manufacturing a drug product and the drug 
product is  subject to the Virus-Serum-Toxin Act, and 

        (ii)    the Secretary of Health and Human Services if the patent 
claims  any other drug product, a medical device, or a food additive or 
color additive  or a method of using or manufacturing such a product, 
device, or additive and  if the product, device, and additive are subject 
to the Federal Food, Drug  and Cosmetic Act, of the extension application 
and shall submit to the Secretary  who is so notified a copy of the 
application. Not later than 30 days after  the receipt of an application 
from the Commissioner, the Secretary reviewing  the application shall 
review the dates contained in the application pursuant  to paragraph 
(1)(C) and determine the applicable regulatory review period,  shall 
notify the Commissioner of the determination, and shall publish in the 
Federal Register a notice of such determination. 

        (B)(i)      If a petition is submitted to the Secretary making the 
 determination under subparagraph (A), not later than 180 days after the 
publication  of the determination under subparagraph (A), upon which it 
may reasonably be  determined that the applicant did not act with due 
diligence during the applicable  regulatory review period, the Secretary 
making the determination shall, in  accordance with regulations 
promulgated by the Secretary, determine if the  applicant acted with due 
diligence during the applicable regulatory review  period.  The Secretary 
making the determination shall make such determination  not later than 90 
days after the receipt of such a petition. For a drug product,  device, or 
additive subject to the Federal Food, Drug, and Cosmetic Act or  the 
Public Health Service Act, the Secretary may not delegate the authority 
to make the determination prescribed by this clause to an office below the 
 Office of the Commissioner of Food and Drugs. For a product subject to 
the  Virus-Serum-Toxin Act, the Secretary of Agriculture may not delegate 
the authority  to make the determination prescribed by this clause to an 
office below the  office of the Assistant Secretary for Marketing and 
Inspection Services. 
        (ii)    The Secretary making a determination under clause (i) 
shall  notify the Commissioner of the determination and shall publish in 
the Federal  Register a notice of such determination together with the 
factual and legal  basis for such determination. Any interested person may 
request, within the  60-day period beginning on the publication of a 
determination, the Secretary  making the determination to hold an informal 
hearing on the determination.  If such a request is made within such 
period, such Secretary shall hold such  hearing not later than 30 days 
after the date of the request, or at the request  of the person making the 
request, not later than 60 days after such date. The  Secretary who is 
holding the hearing shall provide notice of the hearing to  the owner of 
the patent involved and to any interested person and provide the  owner 
and any interested person an opportunity to participate in the hearing. 
Within 30 days after the completion of the hearing, such Secretary shall 
affirm  or revise the determination which was the subject of the hearing 
and notify  the Commissioner of any revision of the determination and 
shall publish any  such revision in the Federal Register. 

        (3)   For the purposes of paragraph (2)(B), the term "due 
diligence"  means that degree of attention, continuous directed effort, 
and timeliness  as may reasonably be expected from, and are ordinarily 
exercised by, a person  during a regulatory review period. 

        (4)   An application for the extension of the term of a patent is 
subject  to the disclosure requirements prescribed by the Commissioner. 

        (5)(A) If the owner of record of the patent or its agent 
reasonably  expects that the applicable regulatory review period described 
in paragraphs 
(1)(B)(ii), (2)(B)(ii), (3)(B)(ii), (4)(B)(ii), or (5)(B)(ii) of 
subsection 
(g) that began for a product that is the subject of 
such patent may extend beyond the expiration of the patent term in effect, 
 the owner or its agent may submit an application to the Commissioner for 
an  interim extension during the period beginning 6 months, and ending 15 
days  before such term is due to expire. The application shall contain- 
        (i) the identity of the product subject to regulating review and 
the  Federal statute under which such review is occurring; 

        (ii)    the identity of the patent for which interim extension is 
being  sought and the identity of each claim of such patent which claims 
the product  under regulatory review or a method of using or manufacturing 
the product; 
        (iii)     information to enable the Commissioner to determine 
under  subsection (a)(1), (2), and (3) the eligibility of a patent for 
extension; 
        (iv)    a brief description of the activities undertaken by the 
applicant  during the applicable regulatory review period to date with 
respect to the  product under review and the significant dates applicable 
to such activities;  and 

        (v)   such patent or other information as the Commissioner may 
require. 
        (B)   If the Commissioner determines that, except for permission 
to  market or use the product commercially, the patent would be eligible 
for an  extension of the patent term under this section, the Commissioner 
shall publish  in the Federal Register a notice of such determination, 
including the identity  of the product under regulatory review, and shall 
issue to the applicant a  certificate of interim extension for a period of 
not more than 1 year. 
        (C) The owner of record of a patent, or its agent, for which an 
interim  extension has been granted under subparagraph (B), may apply for 
not more than 4 subsequent interim extensions under this paragraph, except 
that, in the case  of a patent subject to subsection (g)(6)(C), the owner 
of record of subsequent  application shall be made during the period 
beginning 60 days before, and ending  30 days before, the expiration of 
the preceding interim extension. 
        (D)   Each certificate of interim extension under this paragraph 
shall  be recorded in the official file of the patent and shall be 
considered part  of the original patent. 

        (E)   Any interim extension granted under this paragraph shall 
terminate  at the end of the 60-day period beginning on the day on which 
the product involved  receives permission for commercial marketing or use, 
except that, if within  that 60-day period, the applicant notifies the 
Commissioner of such permission  and submits any additional information 
under paragraph (1) of this subsection  not previously contained in the 
application for interim extension, the patent  shall be further extended, 
in accordance with the provisions of this section- 

        (i)   for not to exceed 5 years from the date of expiration of the 
 original patent term; or 

        (ii)    if the patent is subject to subsection (g)(6)(C), from the 
 date on which the product involved receives approval for commercial 
marketing  or use. 

        (F)   The rights derived from any patent the term of which is 
extended  under this paragraph shall, during the period of interim 
extension- 
        (i)   in the case of a patent which claims a product, be limited 
to  any use then under regulatory review; 

        (ii)    in the case of a patent which claims a method of using a 
product,  be limited to any use claimed by the patent then under 
regulatory review; and 
        (iii)     in the case of a patent which claims a method of 
manufacturing  a product, be limited to the method of manufacturing as 
used to make the product  then under regulatory review. 

        (e)(1)      A determination that a patent is eligible for extenion 
 may be made by the Commissioner solely on the basis of the 
representations  contained in the application for the extension. If the 
Commissioner determines  that a patent is eligible for extension under 
subsection (a) and that the requirements  of paragraphs (1) through (4) of 
subsection (d) have been complied with, the  Commissioner shall issue to 
the applicant for the extension of the term of  the patent a certificate 
of extension, under seal, for the period prescribed  by subsection (c). 
Such certificate shall be recorded in the official file  of the patent and 
shall be considered as part of the original patent. 
        (2)   If the term of a patent for which an application has been 
submitted  under subsection (d)(1) would expire before a certificate of 
extension is issued  or denied under paragraph (1) respecting the 
application, the Commissioner  shall extend, until such determination is 
made, the term of the patent for periods of up to one year if he 
determines  that the patent is eligible for extension. 

        (f)   For purposes of this section: 

        (1)   The term "product" means: 

        (A)   A drug product. 

        (B)   Any medical device, food additive, or color additive subject 
 to regulation under the Federal Food, Drug, and Cosmetic Act. 

        (2)   The term "drug product" means the active ingredient of- 
        (A)   a new drug, antibiotic drug, or human biological product (as 
 those terms are used in the Federal Food, Drug, and Cosmetic Act and the 
Public  Health Service Act) or 

        (B)   a new animal drug or veterinary biological product (as those 
 terms are used in the Federal Food, Drug, and Cosmetic Act and the 
Virus-Serum-Toxin  Act) which is not primarily manufactured using 
recombinant DNA, recombinant  RNA, hybridoma technology, or other 
processes involving site specific genetic  manipulation techniques, 
including any salt or ester of the active ingredient,  as a single entity 
or in combination with another active ingredient. 
        (3)   The term "major health or environmental effects test" means 
a  test which is reasonably related to the evaluation of the health or 
environmental  effects of a product, which requires at least six months to 
conduct, and the  data from which is submitted to receive permission for 
commercial marketing  or use. Periods of analysis or evaluation of test 
results are not to be included  in determining if the conduct of a test 
required at least six months. 
        (4)(A)      Any reference to section 351 is a reference to section 
 351 of the Public Health Service Act. 

        (B)   Any reference to section 503, 505, 507, 512, or 515 is a 
reference  to section 503, 505, 507, 512, or 515 of the Federal Food, Drug 
and Cosmetic  Act. 

        (C)   Any reference to the Virus-Serum-Toxin Act is a reference to 
 the Act of March 4, 1913 (21 U.S.C. 151 - 158). 

        (5)   The term "informal hearing" has the meaning prescribed for 
such  term by section 201(y) of the Federal Food, Drug and Cosmetic Act. 
        (6)   The term "patent" means a patent issued by the United States 
 Patent and Trademark Office. 

        (7)   The term "date of enactment" as used in this section means 
September  24, 1984, for human drug product, a medical device, food 
additive, or color  additive. 

        (8)   The term "date of enactment" as used in this section means 
the  date of enactment of the Generic Animal Drug and Patent Term 
Restoration Act  for an animal drug or a veterinary biological product. 

        (g)   For purposes of this section, the term "regulatory review 
period"  has the following meanings: 

        (1)(A)      In the case of a product which is a new drug, 
antibiotic  drug, or human biological product, the term means the period 
described in subparagraph 
(B) to which the limitation described in paragraph (6) applies. 

        (B)   The regulatory review period for a new drug, antibiotic 
drug,  or human biological product is the sum of -- 

        (i)   the period beginning on the date an exemption under 
subsection 
(i) of section 505 or subsection (d) of section 507 became effective for 
the  approved product and ending on the date an application was initially 
submitted  for such drug product under section 351, 505, or 507, and 

        (ii)    the period beginning on the date the application was 
initially  submitted for the approved product under section 351, 
subsection (b) of section  505, or section 507 and ending on the date such 
application was approved under  such section. 

        (2)(A)      In the case of a product which is a food additive or 
color  additive, the term means the period described in subparagraph (B) 
to which  the limitation described in paragraph (6) applies. 

        (B)   The regulatory review period for a food or color additive is 
 the sum of - 

        (i)   the period beginning on the date a major health or 
environmental  effects test on the additive was initiated and ending on 
the date a petition  was initially submitted with respect to the product 
under the Federal Food,  Drug, and Cosmetic Act requesting the issuance of 
a regulation for use of the  product, and 

        (ii)    the period beginning on the date a petition was initially 
submitted  with respect to the product under the Federal Food, Drug, and 
Cosmetic Act  requesting the issuance of a regulation for use of the 
product, and ending  on the date such regulation became effective or, if 
objections were filed to  such regulation, ending on the date such 
objections were resolved and commercial  marketing was permitted or, if 
commercial marketing was permitted and later  revoked pending further 
proceedings as a result of such objections, ending on the date such 
proceedings  were finally resolved and commercial marketing was permitted. 

        (3)(A)      In the case of a product which is a medical device, 
the  term means the period described in subparagraph (B) to which the 
limitation  described in paragraph (6) applies. 

        (B)   The regulatory review period for a medical device is the sum 
 of - 

        (i)   the period beginning on the date a clinical investigation on 
 humans involving the device was begun and ending on the date an 
application  was initially submitted with respect to the device under 
section 515, and 
        (ii)    the period beginning on the date an application was 
initially  submitted with respect to the device under section 515 and 
ending on the date  such application was approved under such Act or the 
period beginning on the  date a notice of completion of a product 
development protocol was initially  submitted under section 515(f)(5) and 
ending on the date the protocol was declared  completed under section 
515(f)(6). 

        (4)(A)      In the case of a product which is a new animal drug, 
the  term means the period described in subparagraph (B) to which the 
limitation  described in paragraph (6) applies. 

        (B) The regulatory review period for a new animal drug product is 
the  sum of - 

        (i)   the period beginning on the earlier of the date a major 
health  or environmental effects test on the drug was initiated or the 
date an exemption  under subsection (j) of section 512 became effective 
for the approved new animal  drug product and ending on the date an 
application was initially submitted  for such animal drug product under 
section 512, and 

        (ii)    the period beginning on the date the application was 
initially  submitted for the approved animal drug product under subsection 
(b) of section  512 and ending on the date such application was approved 
under such section. 
        (5)(A)      In the case of a product which is a veterinary 
biological  product, the term means the period described in subparagraph 
(B) to which the  limitation described in paragraph (6) applies. 

        (B)   The regulatory period for a veterinary biological product is 
 the sum of - 

        (i)   the period beginning on the date the authority to prepare an 
 experimental biological product under the Virus- Serum-Toxin Act became 
effective  and ending on the date an application for a license was 
submitted under the  Virus-Serum-Toxin Act, and 

        (ii)    the period beginning on the date an application for a 
license  was initially submitted for approval under the Virus-Serum-Toxin 
Act and ending  on the date such license was issued. 

        (6)   A period determined under any of the preceding paragraphs is 
 subject to the following limitations: 

        (A)   If the patent involved was issued after the date of the 
enactment  of this section, the period of extension determined on the 
basis of the regulatory  review period determined under any such paragraph 
may not exceed five years. 
        (B)   If the patent involved was issued before the date of the 
enactment  of this section and - 

        (i)   no request for an exemption described in paragraph (1)(B) or 
(4)(B) was submitted and no request for the authority described in 
paragraph 
(5)(B) was submitted, 

        (ii) no major health or environment effects test described in 
paragraph 
(2)(B) or (4)(B) was initiated and no petition for a regulation or 
application  for registration described in such paragraph was submitted, or 

        (iii)     no clinical investigation described in paragraph (3) was 
 begun or product development protocol described in such paragraph was 
submitted,  before such date for the approved product the period of 
extension determined  on the basis of the regulatory review period 
determined under any such paragraph  may not exceed five years. 

        (C)   If the patent involved was issued before the date of the 
enactment  of this section and if an action described in subparagraph (B) 
was taken before  the date of enactment of this section with respect to 
the approved product  and the commercial marketing or use of the product 
has not been approved before  such date, the period of extension 
determined on the basis of the regulatory  review period determined under 
such paragraph may not exceed two years or in  the case of an approved 
product which is a new animal drug or veterinary biological  product (as 
those terms are used in the Federal Food, Drug, and Cosmetic Act  or the 
Virus-Serum-Toxin Act), three years. 

        (h)   The Commissioner may establish such fees as the Commissioner 
 determines appropriate to cover the costs to the Office of receiving and 
acting  upon applications under this section. 

        (Added Sept. 24, 1984, Public Law 98-417, sec. 201, 98 Stat. 1598; 
 amended Nov. 16, 1988, Public Law 100-670, sec. 201, 102 Stat. 3971; Dec. 
3,  1993, Public Law 103-179, sec. 5, 107 Stat. 2040; subsection (a)(2) 
amended,  Dec 8, 1994, Public Law 103-465, sec. 532, 108 Stat. 4809, 
effective June 8,  1995.) 


35 U.S.C. 157     Statutory invention registration. 


        (a)   Notwithstanding any other provision of this title, the 
Commissioner  is authorized to publish a statutory invention registration 
containing the  specification and drawings of a regularly filed 
application for a patent without  examination if the applicant - 

        (1)   meets the requirements of section 112 of this title; 
        (2)   has complied with the requirements for printing; as set 
forth  in regulations of the Commissioner; 

        (3)   waives the right to receive a patent on the invention within 
 such period as may be prescribed by the Commissioner; and 

        (4)   pays application, publication, and other processing fees 
established  by the Commissioner. 

        If an interference is declared with respect to such an 
application,  a statutory invention registration may not be published 
unless the issue of  priority of invention is finally determined in favor 
of the applicant. 
        (b)   The waiver under subsection (a)(3) of this section by an 
applicant  shall take effect upon publication of the statutory invention 
registration. 
        (c)   A statutory invention registration published pursuant to 
this  section shall have all of the attributes specified for patents in 
this title  except those specified in section 183 and sections 271 through 
289 of this  title. A statutory invention registration shall not have any 
of the attributes  specified for patents in any other provision of law 
other than this title.  A statutory invention registration published 
pursuant to this section shall  give appropriate notice to the public, 
pursuant to regulations which the Commissioner  shall issue, of the 
preceding provisions of this subsection. The invention  with respect to 
which a statutory invention certificate is published is not  a patented 
invention for purposes of section 292 of this title. 

        (d)   The Secretary of Commerce shall report to the Congress 
annually  on the use of statutory invention registrations. Such report 
shall include  an assessment of the degree to which agencies of the 
federal government are  making use of the statutory invention registration 
system, the degree to which  it aids the management of federally developed 
technology, and an assessment  of the cost savings to the Federal 
Government of the uses of such procedures. 
        (Added Nov. 8, 1984, Public Law 98-662, sec. 102, 98 Stat. 3383.) 

CHAPTER 15 - PLANT PATENTS 


Sec. 

161   Patents for plants. 

162   Description, claim. 

163   Grant. 

164   Assistance of the Department of Agriculture. 


35 U.S.C. 161     Patents for plants. 


        Whoever invents or discovers and asexually reproduces any distinct 
 and new variety of plant, including cultivated sports, mutants, hybrids, 
and  newly found seedlings, other than a tuber propagated plant or a plant 
found  in an uncultivated state, may obtain a patent therefor, subject to 
the conditions  and requirements of this title. 

        The provisions of this title relating to patents for inventions 
shall  apply to patents for plants, except as otherwise provided. 

        (Amended Sept. 3, 1954, 68 Stat. 1190.) 


35 U.S.C. 162     Description, claim. 


        No plant patent shall be declared invalid for noncompliance with 
section  112 of this title if the description is as complete as is 
reasonably possible. 
        The claim in the specification shall be in formal terms to the 
plant  shown and described. 


35 U.S.C. 163     Grant. 


        In the case of a plant patent the grant shall be of the right to 
exclude  others from asexually reproducing the plant or selling or using 
the plant so  reproduced. 


35 U.S.C. 164     Assistance of the Department of 

                                Agriculture. 

        The President may by Executive order direct the Secretary of 
Agriculture,  in accordance with the requests of the Commissioner, for the 
purpose of carrying  into effect the provisions of this title with respect 
to plants (1) to furnish  available information of the Department of 
Agriculture, (2) to conduct through the appropriate bureau or division of 
the  Department research upon special problems, or (3) to detail to the 
Commissioner  officers and employees of the Department. 


CHAPTER 16 - DESIGNS 


Sec. 

171   Patents for designs. 

172   Right of priority. 

173   Term of design patent. 


35 U.S.C. 171     Patents for designs. 


        Whoever invents any new, original, and ornamental design for an 
article  of manufacture may obtain a patent therefor, subject to the 
conditions and  requirements of this title. 

        The provisions of this title relating to patents for inventions 
shall  apply to patents for designs, except as otherwise provided. 


35 U.S.C. 172     Right of priority. 


        The right of priority provided for by subsections (a) through (d) 
of  section 119 of this title and the time specified in section 102(d) 
shall be  six months in the case of designs. The right of priority 
provided for by section  119(e) of this title shall not apply to designs. 

        (Amended Dec. 8, 1994, Public Law 103-465, sec. 532, 108 Stat. 
4809,  effective June 8, 1995.) 


35 U.S.C. 173     Term of design patent. 


        Patents for designs shall be granted for the term of fourteen 
years  from the date of grant. 

        (Amended Aug. 27, 1982, Public Law 97-247, sec. 16, 96 Stat. 321; 
amended  Dec. 8, 1994, Public Law 103-465, sec. 532, 108 Stat. 4809, 
effective June  8, 1995.) 


CHAPTER 17 - SECRECY OF CERTAIN INVENTIONS AND FILING APPLICATIONS IN 
FOREIGN COUNTRIES 

Sec. 

181   Secrecy of certain inventions and withholding of patent. 

182   Abandonment of invention for unauthorized disclosure. 

183   Right to compensation. 

184   Filing of application in foreign country. 

185   Patent barred for filing without license. 

186   Penalty. 

187   Nonapplicability to certain persons. 

188   Rules and regulations, delegation of power. 


35 U.S.C. 181     Secrecy of certain inventions and 

                                withholding of patent. 

        Whenever publication or disclosure by the grant of a patent on an 
invention  in which the Government has a property interest might, in the 
opinion of the  head of the interested Government agency, be detrimental 
to the national security,  the Commissioner upon being so notified shall 
order that the invention be kept  secret and shall withhold the grant of a 
patent therefor under the conditions  set forth hereinafter. 

        Whenever the publication or disclosure of an invention by the 
granting  of a patent, in which the Government does not have a property 
interest, might,  in the opinion of the Commissioner, be detrimental to 
the national security,  he shall make the application for patent in which 
such invention is disclosed  available for inspection to the Atomic Energy 
Commission, the Secretary of  Defense, and the chief officer of any other 
department or agency of the Government  designated by the President as a 
defense agency of the United States. 
        Each individual to whom the application is disclosed shall sign a 
dated  acknowledgment thereof, which acknowledgment shall be entered in 
the file of  the application. If, in the opinion of the Atomic Energy 
Commission, the Secretary  of a Defense Department, or the chief officer 
of another department or agency  so designated, the publication or 
disclosure of the invention by the granting  of a patent therefor would be 
detrimental to the national security, the Atomic  Energy Commission, the 
Secretary of a Defense Department, or such other chief  officer shall 
notify the Commissioner and the Commissioner shall order that  the 
invention be kept secret and shall withhold the grant of a patent for such 
 period as the national interest requires, and notify the applicant 
thereof.  Upon proper showing by the head of the department or agency who 
caused the  secrecy order to be issued that the examination of the 
application might jeopardize  the national interest, the Commissioner 
shall thereupon maintain the application  in a sealed condition and notify 
the applicant thereof. The owner of an application  which has been placed 
under a secrecy order shall have a right to appeal from  the order to the 
Secretary of Commerce under rules prescribed by him. 
        An invention shall not be ordered kept secret and the grant of a 
patent  withheld for a period of more than one year. The Commissioner 
shall renew the  order at the end thereof, or at the end of any renewal 
period, for additional periods of  one year upon notification by the head 
of the department or the chief officer  of the agency who caused the order 
to be issued that an affirmative determination  has been made that the 
national interest continues to so require. An order  in effect, or issued, 
during a time when the United States is at war, shall  remain in effect 
for the duration of hostilities and one year following cessation  of 
hostilities. An order in effect, or issued, during a national emergency 
declared by the President shall remain in effect for the duration of the 
national  emergency and six months thereafter. The Commissioner may 
rescind any order  upon notification by the heads of the departments and 
the chief officers of  the agencies who caused the order to be issued that 
the publication or disclosure  of the invention is no longer deemed 
detrimental to the national security. 

35 U.S.C. 182     Abandonment of invention for 

      unauthorized disclosure. 

        The invention disclosed in an application for patent subject to an 
 order made pursuant to section 181 of this title may be held abandoned 
upon  its being established by the Commissioner that in violation of said 
order the  invention has been published or disclosed or that an 
application for a patent  therefor has been filed in a foreign country by 
the inventor, his successors,  assigns, or legal representatives, or 
anyone in privity with him or them, without  the consent of the 
Commissioner. The abandonment shall be held to have occurred  as of the 
time of violation. The consent of the Commissioner shall not be given 
without the concurrence of the heads of the departments and the chief 
officers  of the agencies who caused the order to be issued. A holding of 
abandonment  shall constitute forfeiture by the applicant, his successors, 
assigns, or legal  representatives, or anyone in privity with him or them, 
of all claims against  the United States based upon such invention. 


35 U.S.C. 183     Right to compensation. 


        An applicant, his successors, assigns, or legal representatives, 
whose  patent is withheld as herein provided, shall have the right, 
beginning at the  date the applicant is notified that, except for such 
order, his application  is otherwise in condition for allowance, or 
February 1, 1952, whichever is  later, and ending six years after a patent 
is issued thereon, to apply to the  head of any department or agency who 
caused the order to be issued for compensation  for the damage caused by 
the order of secrecy and/or for the use of the invention  by the 
Government, resulting from his disclosure. The right to compensation  for 
use shall begin on the date of the first use of the invention by the 
Government.  The head of the department or agency is authorized, upon the 
presentation of  a claim, to enter into an agreement with the applicant, 
his successors, assigns,  or legal representatives, in full settlement for 
the damage and/or use. This  settlement agreement shall be conclusive for 
all purposes notwithstanding any  other provision of law to the contrary. 
If full settlement of the claim cannot  be effected, the head of the 
department or agency may award and pay to such  applicant, his successors, 
assigns, or legal representatives, a sum not exceeding  75 per centum of 
the sum which the head of the department or agency considers  just 
compensation for the damage and/or use. A claimant may bring suit against 
the United States in the United States Claims Court or in the District 
Court  of the United States for the district in which such claimant is a 
resident  for an amount which when added to the award shall constitute 
just compensation  for the damage and/or use of the invention by the 
Government. The owner of  any patent issued upon an application that was 
subject to a secrecy order issued  pursuant to section 181 of this title, 
who did not apply for compensation as  above provided, shall have the 
right, after the date of issuance of such patent,  to bring suit in the 
United States Claims Court for just compensation for the  damage caused by 
reason of the order of secrecy and/or use by the Government  of the 
invention resulting from his disclosure. The right to compensation for 
use shall begin on the date of the first use of the invention by the 
Government.  In a suit under the provisions of this section the United 
States may avail  itself of all defenses it may plead in an action under 
section 1498 of title  28. This section shall not confer a right of action 
on anyone or his successors,  assigns, or legal representatives who, while 
in the full-time employment or  service of the United States, discovered, 
invented, or developed the invention  on which the claim is based. 

        (Amended Apr. 2, 1982, Public Law 97-164, sec. 160, 96 Stat. 48.) 

35 U.S.C. 184     Filing of application in foreign country. 


        Except when authorized by a license obtained from the Commissioner 
 a person shall not file or cause or authorize to be filed in any foreign 
country  prior to six months after filing in the United States an 
application for patent or for the  registration of a utility model, 
industrial design, or model in respect of  an invention made in this 
country. A license shall not be granted with respect  to an invention 
subject to an order issued by the Commissioner pursuant to  section 181 of 
this title without the concurrence of the head of the departments  and the 
chief officers of the agencies who caused the order to be issued. The 
license may be granted retroactively where an application has been filed 
abroad  through error and without deceptive intent and the application 
does not disclose  an invention within the scope of section 181 of this title. 

        The term "application" when used in this chapter includes 
applications  and any modifications, amendments, or supplements thereto, 
or divisions thereof. 
        The scope of a license shall permit subsequent modifications, 
amendments,  and supplements containing additional subject matter if the 
application upon  which the request for the license is based is not, or 
was not, required to  be made available for inspection under section 181 
of this title and if such  modifications, amendments, and supplements do 
not change the general nature  of the invention in a manner which would 
require such application to be made  available for inspection under such 
section 181.  In any case in which a license  is not, or was not, required 
in order to file an application in any foreign  country, such subsequent 
modifications, amendments, and supplements may be  made, without a 
license, to the application filed in the foreign country if  the United 
States application was not required to be made available for inspection 
under section 181 and if such modifications, amendments, and supplements 
do  not, or did not, change the general nature of the invention in a 
manner which  would require the United States application to have been 
made available for  inspection under such section 181. 

        (Amended August 23, 1988, Public Law 100-418, sec. 9101.) 

35 U.S.C. 185     Patent barred for filing without license. 


        Notwithstanding any other provisions of law any person, and his 
successors,  assigns, or legal representatives,shall not receive a United 
States patent  for an invention if that person, or his successors, 
assigns, or legal representatives  shall, without procuring the license 
prescribed in section 184 of this title,  have made, or consented to or 
assisted another's making, application in a foreign  country for a patent 
or for the registration of a utility model, industrial  design, or model 
in respect of the invention. A United States patent issued  to such 
person, his successors assigns, or legal representatives shall be invalid 
unless the failure to procure such license was through error and without 
deceptive  intent, and the patent does not disclose subject matter within 
the scope of  section 181 of this title. 

        (Amended August 23, 1988, Public Law 100-418, sec. 9101.) 

35 U.S.C. 186     Penalty. 


        Whoever, during the period or periods of time an invention has 
been  ordered to be kept secret and the grant of a patent thereon withheld 
pursuant  to section 181 of this title, shall, with knowledge of such 
order and without  due authorization, willfully publish or disclose or 
authorize or cause to be  published or disclosed the invention, or 
material information with respect  thereto, or whoever willfully, in 
violation of the provisions of section 184  of this title, shall file or 
cause or authorize to be filed in any foreign  country an application for 
patent or for the registration of a utility model,  industrial design, or 
model in respect of any invention made in the United  States, shall, upon 
conviction, be fined not more than $10,000 or imprisoned  for not more 
than two years, or both. 

        (Amended August 23, 1988, Public Law 100-418, sec. 9101.) 

35 U.S.C. 187     Nonapplicability to certain persons. 


        The prohibitions and penalties of this chapter shall not apply to 
any  officer or agent of the United States acting within the scope of his 
authority,  nor to any person acting upon his written instructions or 
permission. 

35 U.S.C. 188     Rules and regulations, delegation of 

              power. 

        The Atomic Energy Commission, the Secretary of a defense 
department,  the chief officer of any other department or agency of the 
Government designated  by the President as a defense agency of the United 
States, and the Secretary  of Commerce, may separately issue rules and 
regulations to enable the respective  department or agency to carry out 
the provisions of this chapter, and may delegate  any power conferred by 
this chapter. 


CHAPTER [18] 38 - PATENT RIGHTS IN INVENTIONS MADE WITH FEDERAL ASSISTANCE 

Sec. 

200   Policy and objective. 

201   Definitions. 

202   Disposition of rights. 

203   March-in rights. 

204   Preference for United States industry. 

205   Confidentiality. 

206   Uniform clauses and regulations. 

207   Domestic and foreign protection of federally owned 
        inventions. 

208   Regulations governing Federal licensing. 

209   Restrictions on licensing of federally owned inventions. 

210   Precedence of chapter. 

211   Relationship to antitrust laws. 

212   Disposition of rights in educational awards. 


35 U.S.C. 200     Policy and objective. 


        It is the policy and objective of the Congress to use the patent 
system  to promote the utilization of inventions arising from federally 
supported research  or development; to encourage maximum participation of 
small business firms  in federally supported research and development 
efforts; to promote collaboration  between commercial concerns and 
nonprofit organizations, including universities;  to ensure that 
inventions made by nonprofit organizations and small business  firms are 
used in a manner to promote free competition and enterprise; to promote 
the commercialization and public availability of inventions made in the 
United  States by United States industry and labor; to ensure that the 
Government obtains  sufficient rights in federally supported inventions to 
meet the needs of the  Government and protect the public against nonuse or 
unreasonable use of inventions;  and to minimize the costs of 
administering policies in this area. 
        (Added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 94 Stat. 
3019.) 

35 U.S.C. 201     Definitions. 


        As used in this chapter - 

        (a)   The term "Federal agency" means any executive agency as 
defined  in section 105 of title 5, United States Code, and the military 
departments  as defined by section 102 of title 5, United States Code. 

        (b)   The term "funding agreement" means any contract, grant, or 
cooperative  agreement entered into between any Federal agency, other than 
the Tennessee  Valley Authority, and any contractor for the performance of 
experimental, developmental,  or research work funded in whole or in part 
by the Federal Government. Such  term includes any assignment, 
substitution of parties, or subcontract of any  type entered into for the 
performance of experimental, developmental, or research  work under a 
funding agreement as herein defined. 

        (c)   The term "contractor" means any person, small business firm, 
 or nonprofit organization that is a party to a funding agreement. 
        (d)   The term "invention" means any invention or discovery which 
is  or may be patentable or otherwise protectable under this title or any 
novel  variety of plant which is or may be protectable under the Plant 
Variety Protection  Act (7 U.S.C. 2321, et seq.). 

        (e)   The term "subject invention" means any invention of the 
contractor  conceived or first actually reduced to practice in the 
performance of work  under a funding agreement: Provided, That in the case 
of a variety of plant,  the date of determination (as defined in section 
41(d) of the Plant Variety  Protection Act (7 U.S.C. 2401(d)) must also 
occur during the period of contract  performance. 

        (f)   The term "practical application" means to manufacture in the 
 case of a composition or product, to practice in the case of a process or 
method,  or to operate in the case of a machine or system; and, in each 
case, under  such conditions as to establish that the invention is being 
utilized and that  its benefits are to the extent permitted by law or 
Government regulations available  to the public on reasonable terms. 

        (g)   The term "made" when used in relation to any invention means 
 the conception or first actual reduction to practice of such invention. 
        (h)   The term "small business firm" means a small business 
concern  as defined at section 2 of Public Law 85-536 (15 U.S.C. 632) and 
implementing  regulations of the Administrator of the Small Business 
Administration. 
        (i)   The term "nonprofit organization" means universities and 
other  institutions of higher education or an organization of the type 
described in  section 501(c)(3) of the Internal Revenue Code of 1954 (26 
U.S.C. 501(c)) and  exempt from taxation under section 501(a) of the 
Internal Revenue Code (26  U.S.C. 501(a)) or any nonprofit scientific or 
educational organization qualified under a State nonprofit  organization 
statute. 

        (Subsection (d) amended Nov. 8, 1984, Public Law 98-620, sec. 
501(1),  98 Stat. 3364.) 

        (Subsection (e) amended Nov. 8, 1984, Public Law 98-620, sec. 
501(2),  98 Stat. 3364.) 

        (Subsection (i) added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 
 94 Stat. 3019.) 


35 U.S.C. 202     Disposition of rights. 


        (a)   Each nonprofit organization or small business firm may, 
within  a reasonable time after disclosure as required by paragraph (c)(1) 
of this  section, elect to retain title to any subject invention: 
Provided, however,  That a funding agreement may provide otherwise (i) 
when the contractor is not  located in the United States or does not have 
a place of business located in  the United States or is subject to the 
control of a foreign government, (ii)  in exceptional circumstances when 
it is determined by the agency that restriction  or elimination of the 
right to retain title to any subject invention will better  promote the 
policy and objectives of this chapter, (iii) when it is determined  by a 
Government authority which is authorized by statute or Executive order  to 
conduct foreign intelligence or counterintelligence activities that the 
restriction or elimination of the right to retain title to any subject 
invention  is necessary to protect the security of such activities, or 
(iv) when the funding  agreement includes the operation of a 
Government-owned, contractor-operated  facility of the Department of 
Energy primarily dedicated to that Department's  naval nuclear propulsion 
or weapons related programs and all funding agreement  limitations under 
this subparagraph on the contractor's right to elect title  to a subject 
invention are limited to inventions occurring under the above  two 
programs of the Department of Energy. The rights of the nonprofit 
organization  or small business firm shall be subject to the provisions of 
paragraph (c)  of this section and the other provisions of this chapter. 

        (b)(1)      The rights of the Government under subsection (a) 
shall  not be exercised by a Federal agency unless it first determines 
that at least  one of the conditions identified in clauses (i) through 
(iii) of subsection 
(a) exists. Except in the case of subsection (a)(iii), the agency shall 
file  with the Secretary of Commerce, within thirty days after the award 
of the applicable  funding agreement, a copy of such determination.  In 
the case of a determination  under subsection (a)(ii), the statement shall 
include an analysis justifying  the determination.  In the case of 
determinations applicable to funding agreements  with small business 
firms, copies shall also be sent to the Chief Counsel for  Advocacy of the 
Small Business Administration. If the Secretary of Commerce  believes that 
any individual determination or pattern of determinations is  contrary to 
the policies and objectives of this chapter or otherwise not in 
conformance with this chapter, the Secretary shall so advise the head of 
the  agency concerned and the Administrator of the Office of Federal 
Procurement  Policy, and recommend corrective actions. 

        (2)   Whenever the Administrator of the Office of Federal 
Procurement  Policy has determined that one or more Federal agencies are 
utilizing the authority  of clause (i) or (ii) of subsection (a) of this 
section in a manner that is  contrary to the policies and objectives of 
this chapter the Administrator is  authorized to issue regulations 
describing classes of situations in which agencies  may not exercise the 
authorities of those clauses. 

        (3)   At least once every 5 years, the Comptroller General shall 
transmit  a report to the Committees on the Judiciary of the Senate and 
House of Representatives  on the manner in which this chapter is being 
implemented by the agencies and  on such other aspects of Government 
patent policies and practices with respect  to federally funded inventions 
as the Comptroller General believes appropriate. 
        (4)   If the contractor believes that a determination is contrary 
to  the policies and objectives of this chapter or constitutes an abuse of 
discretion  by the agency, the determination shall be subject to the last 
paragraph of  section 203(2). 

        (c)   Each funding agreement with a small business firm or 
nonprofit  organization shall contain appropriate provisions to effectuate 
the following: 
        (1)   That the contractor disclose each subject invention to the 
Federal  agency within a reasonable time after it becomes known to 
contractor personnel  responsible for the administration of patent 
matters, and that the Federal  Government may receive title to any subject 
invention not disclosed to it within  such time. 

        (2)   That the contractor make a written election within two years 
 after disclosure to the Federal agency (or such additional time as may be 
approved  by the Federal agency) whether the contractor will retain title 
to a subject invention:  Provided, That in any case where publication, on 
sale, or public use, has initiated  the one year statutory period in which 
valid patent protection can still be  obtained in the United States, the 
period for election may be shortened by  the Federal agency to a date that 
is not more than sixty days prior to the  end of the statutory period: And 
provided further, That the Federal Government  may receive title to any 
subject invention in which the contractor does not  elect to retain rights 
or fails to elect rights within such times. 
        (3)   That a contractor electing rights in a subject invention 
agrees  to file a patent application prior to any statutory bar date that 
may occur  under this title due to publication, on sale, or public use, 
and shall thereafter  file corresponding patent applications in other 
countries in which it wishes  to retain title within reasonable times, and 
that the Federal Government may  receive title to any subject inventions 
in the United States or other countries  in which the contractor has not 
filed patent applications on the subject invention  within such times. 

        (4)   With respect to any invention in which the contractor elects 
 rights, the Federal agency shall have 
a nonexclusive, nontransferable, irrevocable, paid-up license to practice 
or  have practiced for or on behalf of the United States any subject 
invention  throughout the world: Provided, That the funding agreement may 
provide for  such additional rights; including the right to assign or have 
assigned foreign  patent rights in the subject invention, as are 
determined by the agency as  necessary for meeting the obligations of the 
United States under any treaty,  international agreement, arrangement of 
cooperation, memorandum of understanding,  or similar arrangement, 
including military agreements relating to weapons development  and production. 

        (5)   The right of the Federal agency to require periodic 
reporting  on the utilization or efforts at obtaining utilization that are 
being made  by the contractor or his licensees or assignees: Provided, 
That any such information,  as well as any information on utilization or 
efforts at obtaining utilization  obtained as part of a proceeding under 
section 203 of this chapter shall be  treated by the Federal agency as 
commercial and financial information obtained  from a person and 
privileged and confidential and not subject to disclosure  under section 
552 of title 5 of the United States Code. 

        (6)   An obligation on the part of the contractor, in the event a 
United  States patent application is filed by or on its behalf or by any 
assignee of  the contractor, to include within the specification of such 
application and  any patent issuing thereon, a statement specifying that 
the invention was made  with Government support and that the Government 
has certain rights in the invention. 
        (7)   In the case of a nonprofit organization, (A) a prohibition 
upon  the assignment of rights to a subject invention in the United States 
without  the approval of the Federal agency, except where such assignment 
is made to  an organization which has as one of its primary functions the 
management of  inventions (provided that such assignee shall be subject to 
the same provisions  as the contractor); (B) a requirement that the 
contractor share royalties with  the inventor; (C) except with respect to 
a funding agreement for the operation  of a 
Government-owned-contractor-operated facility, a requirement that the 
balance of any royalties or income earned by the contractor with respect 
to  subject inventions, after payment of expenses (including payments to 
inventors)  incidental to the administration of subject inventions, be 
utilized for the  support of scientific research, or education; (D) a 
requirement that, except  where it proves infeasible after a reasonable 
inquiry, in the licensing of  subject inventions shall be given to small 
business firms; and (E) with respect  to a funding agreement for the 
operation of a Government-owned-contractor-operator  facility, 
requirements (i) that after payment of patenting costs, licensing  costs, 
payments to inventors, and other expenses incidental to the administration 
 of subject inventions, 100 percent of the balance of any royalties or 
income  earned and retained by the contractor during any fiscal year, up 
to an amount  equal to five percent of the annual budget of the facility, 
shall be used by  the contractor for scientific research, development, and 
education consistent  with the research and development mission and 
objectives of the facility, including  activities that increase the 
licensing potential of other inventions of the  facility provided that if 
said balance exceeds five percent of the annual budget  of the facility, 
that 75 percent of such excess shall be paid to the Treasury  of the 
United States and the remaining 25 percent shall be used for the same 
purposes as described above in this clause (D); and (ii) that, to the 
extent  it provides the most effective technology transfer, the licensing 
of subject inventions shall be administered by contractor employees on 
location at the  facility. 

        (8)   The requirements of sections 203 and 204 of this chapter. 
        (d)   If a contractor does not elect to retain title to a subject 
invention  in cases subject to this section, the Federal agency may 
consider and after  consultation with the contractor grant requests for 
retention of rights by  the inventor subject to the provisions of this Act 
and regulations promulgated  hereunder. 

        (e)   In any case when a Federal employee is a co-inventor of any 
invention  made under a funding agreement with a nonprofit organization or 
small business  firm, the Federal agency employing such co-inventor is 
authorized to transfer  or assign whatever rights it may acquire in the 
subject invention from its  employee to the contractor subject to the 
conditions set forth in this chapter. 
        (f)(1)      No funding agreement with a small business firm or 
nonprofit  organization shall contain a provision allowing a Federal 
agency to require  the licensing to third parties of inventions owned by 
the contractor that are  not subject inventions unless such provision has 
been approved by the head  of the agency and a written justification has 
been signed by the head of the  agency.  Any such provision shall clearly 
state whether the licensing may be  required in connection with the 
practice of a subject invention, a specifically  identified work object, 
or both. The head of the agency may not delegate the  authority to approve 
provisions or sign justifications required by this paragraph. 
        (2)   A Federal agency shall not require the licensing of third 
parties  under any such provision unless the head of the agency determines 
that the  use of the invention by others is necessary for the practice of 
a subject invention  or for the use of a work object of the funding 
agreement and that such action  is necessary to achieve the practical 
application of the subject invention  or work object. Any such 
determination shall be on the record after an opportunity  for an agency 
hearing. Any action commenced for judicial review of such determination 
shall be brought within sixty days after notification of such 
determination. 
        (Subsection (a) amended Nov. 8, 1984, Public Law 98-602, sec. 
501(3),  98 Stat. 3364.) 

        (Subsection (b)(2) amended Nov. 8, 1984, Public Law 98-620, sec. 
501(4),  98 Stat. 3365.) 

        (Subsection (b)(4) added Nov. 8, 1984, Public Law 98-620, sec. 
501(4A),  98 Stat. 3365.) 

        (Subsection (c)(4) amended Nov. 8, 1984, Public Law 98-620, sec. 
501(5),  98 Stat. 3365.) 

        (Subsection (c)(5) amended Nov. 8, 1984, Public Law 98-620, sec. 
501(6),  98 Stat. 3365.) 

        (Subsection (c)(7) amended Nov. 8, 1984, Public Law 98-620, sec. 
501(7), 
(8), 98 Stat. 3366.) 

        (Subsection (f)(2) added Dec. 12, 1980, Public Law 96-517, sec. 
6(a),  94 Stat. 3020.) 

        (Subsection (b)(3) amended Dec. 10, 1991, Public Law 102-204, sec. 
 10, 105 Stat. 1641.) 


35 U.S.C. 203     March-in rights. 


        (1)   With respect to any subject invention in which a small 
business  firm or nonprofit organization has acquired title under this 
chapter, the Federal  agency under whose funding agreement the subject 
invention was made shall have  the right, in accordance with such 
procedures as are provided in regulations  promulgated hereunder, to 
require the contractor, an assignee, or exclusive  licensee of a subject 
invention to grant a nonexclusive, partially exclusive,  or exclusive 
license in any field of use to a responsible applicant or applicants, 
upon terms that are reasonable under the circumstances, and if the 
contractor,  assignee, or exclusive licensee refuses such request, to 
grant such a license  itself, if the Federal agency determines that such - 

        (a)   action is necessary because the contractor or assignee has 
not  taken, or is not expected to take within a reasonable time, effective 
steps  to achieve practical application of the subject invention in such 
field of  use; 

        (b)   action is necessary to alleviate health or safety needs 
which  are not reasonably satisfied by the contractor, assignee, or their 
licensees; 
        (c)   action is necessary to meet requirements for public use 
specified  by Federal regulations and such requirements are not reasonably 
satisfied by  the contractor, assignee, or licensees; or 

        (d)   action is necessary because the agreement required by 
section  204 has not been obtained or waived or because a licensee of the 
exclusive  right to use or sell any subject invention in the United States 
is in breach  of its agreement obtained pursuant to section 204. 

        (2)   A determination pursuant to this section or section 
202(b)(4)  shall not be subject to the Contract Disputes Act (41 U.S.C. w 
601 et seq.).  An administrative appeals procedure shall be established by 
regulations promulgated in accordance with section 206. Additionally, any 
contractor, inventor,  assignee, or exclusive licensee adversely affected 
by a determination under  this section may, at any time within sixty days 
after the determination is  issued, file a petition in the United States 
Claims Court, which shall have  jurisdiction to determine the appeal on 
the record and to affirm, reverse,  remand or modify, as appropriate, the 
determination of the Federal agency.  In cases described in paragraphs (a) 
and (c), the agency's determination shall  be held in abeyance pending the 
exhaustion of appeals or petitions filed under  the preceding sentence. 

        (Added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 94 Stat. 3022; 
 amended Nov. 8, 1984, Public Law 98-620, sec. 501(9), 98 Stat. 3367.) 

35 U.S.C. 204     Preference for United States industry. 


        Notwithstanding any other provision of this chapter, no small 
business  firm or nonprofit organization which receives title to any 
subject invention  and no assignee of any such small business firm or 
nonprofit organization shall  grant to any person the exclusive right to 
use or sell any subject invention  in the United States unless such person 
agrees that any products embodying  the subject invention or produced 
through the use of the subject invention  will be manufactured 
substantially in the United States. However, in individual  cases, the 
require-ment for such an agreement may be waived by the Federal  agency 
under whose funding agreement the invention was made upon a showing  by 
the small business firm, nonprofit organization, or assignee that 
reasonable  but unsuccessful efforts have been made to grant licenses on 
similar terms  to potential licensees that would be likely to manufacture 
substantially in  the United States or that under the circumstances 
domestic manufacture is not  commercially feasible. 

        (Added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 94 Stat. 
3023.) 

35 U.S.C. 205     Confidentiality. 


        Federal agencies are authorized to withhold from disclosure to the 
 public information disclosing any invention in which the Federal 
Government  owns or may own a right, title, or interest (including a 
nonexclusive license)  for a reasonable time in order for a patent 
application to be filed. Furthermore,  Federal agencies shall not be 
required to release copies of any document which  is part of an 
application for patent filed with the United States Patent and  Trademark 
Office or with any foreign patent office. 

        (Added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 94 Stat. 
3023.) 

35 U.S.C. 206     Uniform clauses and regulations. 


        The Secretary of Commerce may issue regulations which may be made 
applicable  to Federal agencies implementing the provisions of sections 
202 through 204  of this chapter and shall establish standard funding 
agreement provisions required  under this chapter. The regulations and the 
standard funding agreement shall  be subject to public comment before 
their issuance. 

        (Amended Nov. 8, 1984, Public Law 98-620, sec. 501(10), 98 Stat. 
3367.) 

35 U.S.C. 207     Domestic and foreign protection of 

                                federally owned inventions. 

        (a)   Each Federal agency is authorized to - 

        (1)   apply for, obtain, and maintain patents or other forms of 
protection  in the United States and in foreign countries on inventions in 
which the Federal  Government owns a right, title, or interest; 

        (2)   grant nonexclusive, exclusive, or partially exclusive 
licenses  under federally owned patent applications, patents, or other 
forms of protection  obtained, royalty-free or for royalties or other 
consideration, and on such  terms and conditions, including the grant to 
the licensee of the right of enforcement  pursuant to the provisions of 
chapter 29 of this title as determined appropriate  in the public interest; 

        (3)   undertake all other suitable and necessary steps to protect 
and  administer rights to federally owned inventions on behalf of the 
Federal Government  either directly or through contract; and 

        (4)   transfer custody and administration, in whole or in part, to 
 another Federal agency, of the right, title, or interest in any federally 
owned  invention. 

        (b)   For the purpose of assuring the effective management of 
Government-owned  inventions, the Secretary of Commerce authorized to -- 

        (1)   assist Federal agency efforts to promote the licensing and 
utilization  of Government-owned inventions; 

        (2)   assist Federal agencies in seeking protection and 
maintaining  inventions in foreign countries, including the payment of 
fees and costs connected therewith; and 
        (3)   consult with and advise Federal agencies as to areas of 
science  and technology research and development with potential for 
commercial utilization. 
        (Added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 94 Stat. 3023, 
 Amended Nov. 8, 1984, Public Law 98-620, sec. 501(11) 98 Stat. 3367.) 

35 U.S.C. 208     Regulations governing Federal 

                                licensing. 

        The Secretary of Commerce is authorized to promulgate regulations 
specifying  the terms and conditions upon which any federally owned 
invention, other than  inventions owned by the Tennessee Valley Authority, 
may be licensed on a nonexclusive,  partially exclusive, or exclusive basis. 

        (Added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 94 Stat. 3024; 
 Amended Nov. 8, 1984, Public Law 98-620, sec. 501(12), 98 Stat. 3367.) 

35 U.S.C. 209     Restrictions on licensing of federally 

                                owned inventions. 

        (a)   No Federal agency shall grant any license under a patent or 
patent  application on a federally owned invention unless the person 
requesting the  license has supplied the agency with a plan for 
development and/or marketing  of the invention, except that any such plan 
may be treated by the Federal agency  as commercial and financial 
information obtained from a person and privileged  and confidential and 
not subject to disclosure under section 552 of title 5  of the United 
States Code. 

        (b)   A Federal agency shall normally grant the right to use or 
sell  any federally owned invention in the United States only to a 
licensee that  agrees that any products embodying the invention or 
produced through the use  of the invention will be manufactured 
substantially in the United States. 
        (c)(1)      Each Federal agency may grant exclusive or partially 
exclusive  licenses in any invention covered by a federally owned domestic 
patent or patent  application only if, after public notice and opportunity 
for filing written  objections, it is determined that - 

        (A)   the interests of the Federal Government and the public will 
best  be served by the proposed license, in view of the applicant's 
intentions, plans,  and ability to bring the invention to practical 
application or otherwise promote  the invention's utilization by the public; 

        (B)   the desired practical application has not been achieved, or 
is  not likely expeditiously to be achieved, under any nonexclusive 
license which  has been granted, or which may be granted, on the invention; 

        (C)   exclusive or partially exclusive licensing is a reasonable 
and  necessary incentive to call forth the investment of risk capital and 
expenditures  to bring the invention to practical application or otherwise 
promote the invention's  utilization by the public; and 

        (D)   the proposed terms and scope of exclusivity are not greater 
than  reasonably necessary to provide the incentive for bringing the 
invention to  practical application or otherwise promote the invention's 
utilization by the  public. 

        (2)   A Federal agency shall not grant such exclusive or partially 
 exclusive license under paragraph (1) of this subsection if it determines 
that  the grant of such license will tend substantially to lessen 
competition or  result in undue concentration in any section of the 
country in any line of  commerce to which the technology to be licensed 
relates, or to create or maintain  other situations inconsistent with the 
antitrust laws. 

        (3)   First preference in the exclusive or partially exclusive 
licensing  of federally owned inventions shall go to small business firms 
submitting plans  that are determined by the agency to be within the 
capabilities of the firms  and equally likely, if executed, to bring the 
invention to practical application  as any plans submitted by applicants 
that are not small business firms. 
        (d)   After consideration of whether the interests of the Federal 
Government  or United States industry in foreign commerce will be 
enhanced, any Federal  agency may grant exclusive or partially exclusive 
licenses in any invention  covered by a foreign patent application or 
patent, after public notice and  opportunity for filing written 
objections, except that a Federal agency shall  not grant such exclusive 
or partially exclusive license if it determines that  the grant of such 
license will tend substantially to lessen competition or  result in undue 
concentration in any section of the United States in any line  of commerce 
to which the technology to be licensed relates, or to create or  maintain 
other situations inconsistent with antitrust laws. 

        (e)   The Federal agency shall maintain a record of determinations 
 to grant exclusive or partially exclusive licenses. 

        (f)   Any grant of a license shall contain such terms and 
conditions  as the Federal agency determines appropriate for the 
protection of the interests  of the Federal Government and the public, 
including provisions for the following: 
        (1)   periodic reporting on the utilization or efforts at 
obtaining  utilization that are being made by the licensee with particular 
reference to  the plan submitted: Provided, That any such information may 
be treated by the  Federal agency as commercial and financial information 
obtained from a person  and privileged and confidential and not subject to 
disclosure under section  552 of title 5 of the United States Code; 

        (2)   the right of the Federal agency to terminate such license in 
 whole or in part if it determines that the licensee is not executing the 
plan  submitted with its request for a license and the licensee cannot 
otherwise  demonstrate to the satisfaction of the Federal agency that it 
has taken or  can be expected to take within a reasonable time, effective 
steps to achieve  practical application of the invention; 

        (3)   the right of the Federal agency to terminate such license in 
 whole or in part if the licensee is in breach of an agreement obtained 
pursuant  to paragraph (b) of this section; and 

        (4)   the right of the Federal agency to terminate the license in 
whole  or in part if the agency determines that such action is necessary 
to meet requirements  for public use specified by Federal regulations 
issued after the date of the  license and such requirements are not 
reasonably satisfied by the licensee. 

        (Added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 94 Stat. 
3024.) 

35 U.S.C. 210     Precedence of chapter. 


        (a)   This chapter shall take precedence over any other Act which 
would  require a disposition of rights in subject inventions of small 
business firms  or nonprofit organizations contractors in a manner that is 
inconsistent with  this chapter, including but not necessarily limited to 
the following: 
        (1)   section 10(a) of the Act of June 29, 1935, as added by title 
 1 of the Act of August 14, 1946 (7 U.S.C. 427i(a); 60 Stat. 1085); 
        (2)   section 205(a) of the Act of August 14, 1946 (7 U.S.C. 
1624(a);  60 Stat. 1090); 

        (3)   section 501(c) of the Federal Mine Safety and Health Act of 
1977 
(30 U.S.C. 951(c); 83 Stat. 742); 

        (4)   section 106(c) of the National Traffic and Motor Vehicle 
Safety  Act of 1966 (15 U.S.C. 1395(c); 80 Stat. 721); 

        (5)   section 12 of the National Science Foundation Act of 1950 
(42  U.S.C. 1871(a); 82 Stat. 360); 

        (6)   section 152 of the Atomic Energy Act of 1954 
(42 U.S.C. 2182; 68 Stat. 943); 

        (7)   section 305 of the National Aeronautics and Space Act of 
1958 
(42 U.S.C. 2457); 

        (8)   section 6 of the Coal Research Development Act of 1960 (30 
U.S.C.  666; 74 Stat. 337); 

        (9)   section 4 of the Helium Act Amendments of 1960 (50 U.S.C. 
167b;  74 Stat. 920); 

        (10)    section 32 of the Arms Control and Disarmament Act of 1961 
(22 U.S.C. 2572; 75 Stat. 634); 

        (11)    subsection (e) of section 302 of the Appalachian Regional 
Development  Act of 1965 (40 U.S.C. App. 302(e); 79 Stat. 5); 

        (12)    section 9 of the Federal Nonnuclear Energy Research and 
Development  Act of 1974 (42 U.S.C. 5901; 
88 Stat. 1878); 

        (13)    section 5(d) of the Consumer Product Safety Act (15 U.S.C. 
 2054(d); 86 Stat. 1211); 

        (14)    section 3 of the Act of April 5, 1944 (30 U.S.C. 323; 58 
Stat.  191); 

        (15)    section 8001(c)(3) of the Solid Waste Disposal Act (42 
U.S.C.  6981(c); 90 Stat. 2829); 

        (16)    section 219 of the Foreign Assistance Act of 1961 (22 
U.S.C.  2179; 83 Stat. 806); 

        (17)    section 427(b) of the Federal Mine Health and Safety Act 
of  1977 (30 U.S.C. 937(b); 86 Stat. 155); 

        (18)    section 306(d) of the Surface Mining and Reclamation Act 
of  1977 (30 U.S.C. 1226(d); 91 Stat. 455); 

        (19)    section 21(d) of the Federal Fire Prevention and  Control 
Act  of 1974 (15 U.S.C. 2218(d); 88 Stat. 1548); 

        (20)    section 6(b) of the Solar Photovoltaic Energy 
Research  Development and Demonstration Act of 1978 
(42 U.S.C. 5585(b); 92 Stat. 2516); 

        (21)    section 12 of the Native Latex Commer- 
cialization and Economic Development Act of 1978 
(7 U.S.C. 178(j); 92 Stat. 2533); and 

        (22)    section 408 of the Water Resources and Development Act of 
1978 
(42 U.S.C. 7879; 92 Stat. 1360). 

        The Act creating this chapter shall be construed to take 
precedence  over any future Act unless that Act specifically cites this 
Act and provides  that it shall take precedence over this Act. 

        (b)   Nothing in this chapter is intended to alter the effect of 
the  laws cited in paragraph (a) of this section or any other laws with 
respect  to the disposition of rights in inventions made in the 
performance of funding  agreements with persons other than nonprofit 
organizations or small business  firms. 

        (c)   Nothing in this chapter is intended to limit the authority 
of  agencies to agree to the disposition of rights in inventions made in 
the performance  of work under funding agreements with persons other than 
nonprofit organizations  or small business firms in accordance with the 
Statement of Government Patent  Policy issued on February 18, 1983, agency 
regulations, or other applicable  regulations or to otherwise limit the 
authority of agencies to allow such persons  to retain ownership of 
inventions, except that all funding agreements, including  those with 
other than small business firms and nonprofit organizations, shall 
include the requirements established in paragraph 202(c)(4) and section 
203  of this title. Any disposition of rights in inventions made in 
accordance with  the Statement or implementing regulations, including any 
disposition occurring  before enactment of this section, are hereby 
authorized. 

        (d)   Nothing in this chapter shall be construed to require the 
disclosure  of intelligence sources or methods or to otherwise affect the 
authority granted  to the Director of Central Intelligence by statute or 
Executive order for the  protection of intelligence sources or methods. 

        (Subsection (c) amended Nov. 8, 1984, Public Law 98-620, sec. 
501(13),  98 Stat. 3367.) 

        (Subsection (d) added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 
 94 Stat. 3026.) 


35 U.S.C. 211     Relationship to antitrust laws. 


        Nothing in this chapter shall be deemed to convey to any person 
immunity  from civil or criminal liability, or to create any defenses to 
actions, under  any antitrust law. 

        (Added Dec.12, 1980, Public Law 96-517, sec. 6(a), 94 Stat. 3027.) 

35 U.S.C. 212     Disposition of rights in educational 

                                awards. 

        No scholarship, fellowship, training grant, or other funding 
agreement  made by a Federal agency primarily to an awardee for 
educational purposes will  contain any provision giving the Federal agency 
any rights to inventions made  by the awardee. 

        (Added Nov. 8, 1984, Public Law 98-620, sec. 501(14), 98 Stat. 
3368.) 

PART III - PATENTS AND PROTECTION  OF PATENT RIGHTS 



CHAPTER 25 - AMENDMENT AND CORRECTION OF PATENTS 


Sec. 

251   Reissue of defective patents. 

252   Effect of reissue. 

253   Disclaimer. 

254   Certificate of correction of Patent and Trademark Office 
     mistake. 
255   Certificate of correction of applicant's mistake. 

256   Correction of named inventor. 


35 U.S.C. 251     Reissue of defective patents. 


        Whenever any patent is, through error without any deceptive 
intention,  deemed wholly or partly inoperative or invalid, by reason of a 
defective specification  or drawing, or by reason of the patentee claiming 
more or less then he had  a right to claim in the patent, the Commissioner 
shall, on the surrender of  such patent and the payment of the fee 
required by law, reissue the patent  for the invention disclosed in the 
original patent, and in accordance with  a new and amended application, 
for the unexpired part of the term of the original  patent. No new matter 
shall be introduced into the application for reissue. 
        The Commissioner may issue several reissued patents for distinct 
and  separate parts of the thing patented, upon demand of the applicant, 
and upon  payment of the required fee for a reissue for each of such 
reissued patents. 
        The provisions of this title relating to applications for patent 
shall  be applicable to applications for reissue of a patent, except that 
application  for reissue may be made and sworn to by the assignee of the 
entire interest  if the application does not seek to enlarge the scope of 
the claims of the  original patent. 

        No reissued patent shall be granted enlarging the scope of the 
claims  of the original patent unless applied for within two years from 
the grant of  the original patent. 


35 U.S.C. 252     Effect of reissue. 


        The surrender of the original patent shall take effect upon the 
issue  of the reissued patent, and every reissued patent shall have the 
same effect  and operation in law, on the trial of actions for causes 
thereafter arising,  as if the same had been originally granted in such 
amended form, but in so  far as the claims of the original and reissued 
patents are identical, such  surrender shall not affect any action then 
pending nor abate any cause of action  then existing, and the reissued 
patent, to the extent that its claims are identical  with the original 
patent, shall constitute a continuation thereof and have  effect 
continuously from the date of the original patent. 

        A reissued patent shall not abridge or affect the right of any 
person  or that person`s successors in business who, prior to the grant of 
a reissue,  made, purchased, offered to sell, or used within the United 
States, or imported  into the United States, anything patented by the 
reissued patent, to continue  the use of, to offer to sell, or to sell to 
others to be used, offered for  sale, or sold, the specific thing so made, 
purchased, offered for sale, used,  or imported unless the making, using, 
offering for sale, or selling of such  thing infringes a valid claim of 
the reissued patent which was in the original  patent. The court before 
which such matter is in question may provide for the  continued 
manufacture, use, offer for sale, or sale of the thing made, purchased, 
offered for sale, used, or imported as specified, or for the manufacture, 
use,  offer for sale, or sale in the United States of which substantial 
preparation  was made before the grant of the reissue, and the court may 
also provide for  the continued practice of any process patented by the 
reissue that is practiced,  or for the practice of which substantial 
preparation was made, before the grant  of the reissue, to the extent and 
under such terms as the court deems equitable  for the protection of 
investments made or business commenced before the grant  of the reissue. 

        (Amended Dec. 8, 1994, Public Law 103-465, sec. 533, 108 Stat. 
4809,  effective Jan. 1, 1996.) 


35 U.S.C. 253     Disclaimer. 


        Whenever, without any deceptive intention, a claim of a patent is 
invalid  the remaining claims shall not thereby be rendered invalid. A 
patentee, whether  of the whole or any sectional interest therein, may, on 
payment of the fee  required by law, make disclaimer of any complete 
claim, stating therein the  extent of his interest in such patent. Such 
disclaimer shall be in writing  and recorded in the Patent and Trademark 
Office, and it shall thereafter be  considered as part of the original 
patent to the extent of the interest possessed  by the disclaimant and by 
those claiming under him. 

        In like manner any patentee or applicant may disclaim or dedicate 
to  the public the entire term, or any terminal part of the term, of the 
patent  granted or to be granted. 

        (Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949.) 

35 U.S.C. 254     Certificate of correction of Patent and 
                     Trademark 


Office mistake. 

        Whenever a mistake in a patent, incurred through the fault of the 
Patent  and Trademark Office, is clearly disclosed by the records of the 
Office, the  Commissioner may issue a certificate of correction stating 
the fact and nature  of such mistake, under seal, without charge, to be 
recorded in the records  of patents. A printed copy thereof shall be 
attached to each printed copy of  the patent, and such certificate shall 
be considered as part of the original  patent. Every such patent, together 
with such certificate, shall have the same  effect and operation in law on 
the trial of actions for causes thereafter arising  as if the same had 
been originally issued in such corrected form. The Commissioner  may issue 
a corrected patent without charge in lieu of and with like effect  as a 
certificate of correction. 

        (Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949.) 

35 U.S.C. 255     Certificate of correction of applicant's 

                                mistake. 

        Whenever a mistake of a clerical or typographical nature, or of 
minor  character, which was not the fault of the Patent and Trademark 
Office, appears  in a patent and a showing has been made that such mistake 
occurred in good  faith, the Commissioner may, upon payment of the 
required fee, issue a certificate  of correction, if the correction does 
not involve such changes in the patent  as would constitute new matter or 
would require reexamination. Such patent,  together with the certificate, 
shall have the same effect and operation in  law on the trial of actions 
for causes thereafter arising as if the same had been originally  issued 
in such corrected form. 

        (Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949.) 

35 U.S.C. 256     Correction of named inventor. 


        Whenever through error a person is named in an issued patent as 
the  inventor, or through error an inventor is not named in an issued 
patent and  such error arose without any deceptive intention on his part, 
the Commissioner  may, on application of all the parties and assignees, 
with proof of the facts  and such other requirements as may be imposed, 
issue a certificate correcting  such error. 

        The error of omitting inventors or naming persons who are not 
inventors  shall not invalidate the patent in which such error occurred if 
it can be corrected  as provided in this section. The court before which 
such matter is called in  question may order correction of the patent on 
notice and hearing of all parties  concerned and the Commissioner shall 
issue a certificate accordingly. 
        (Amended Aug. 27, 1982, Public Law 97-247, sec. 6(b), 96 Stat. 
320.) 

CHAPTER 26 - OWNERSHIP AND ASSIGNMENT 


Sec. 

261   Ownership; assignment. 

262   Joint owners. 


35 U.S.C. 261     Ownership; assignment. 


        Subject to the provisions of this title, patents shall have the 
attributes  of personal property. 

        Applications for patent, patents, or any interest therein, shall 
be  assignable in law by an instrument in writing. The applicant, 
patentee, or  his assigns or legal representatives may in like manner 
grant and convey an  exclusive right under his application for patent, or 
patents, to the whole  or any specified part of the United States. 

        A certificate of acknowledgment under the hand and official seal 
of  a person authorized to administer oaths within the United States, or, 
in a  foreign country, of a diplomatic or consular officer of the United 
States or  an officer authorized to administer oaths whose authority is 
proved by a certificate  of a diplomatic or consular officer of the United 
States, or apostille of an  official designated by a foreign country 
which, by treaty or convention, accords  like effect to apostilles of 
designated officials in the United States, shall  be prima facie evidence 
of the execution of an assignment, grant, or conveyance  of a patent or 
application for patent. 

        An assignment, grant, or conveyance shall be void as against any 
subsequent  purchaser or mortgagee for a valuable consideration, without 
notice, unless  it is recorded in the Patent and Trademark Office within 
three months from  its date or prior to the date of such subsequent 
purchase or mortgage. 
        (Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949; 
Aug.  27, 1982, Public Law 97-247, sec. 14(b), 96 Stat. 321.) 


35 U.S.C. 262     Joint owners. 


        In the absence of any agreement to the contrary, each of the joint 
 owners of a patent may make, use, offer to sell, or sell the patented 
invention  within the United States, or import the patented invention into 
the United  States, without the consent of and without accounting to the 
other owners. 
        (Amended Dec. 8, 1994, Public Law 103-465 sec. 533, 108 Stat. 
4809,  effective Jan. 1, 1996.) 


CHAPTER 27 - GOVERNMENT INTERESTS IN PATENTS 


Sec. 

266   [Repealed.] 

267   Time for taking action in Government applications. 


35 U.S.C. 266      [Repealed.] 


        (Repealed July 24, 1965, Public Law 89-83, sec. 8, 79 Stat. 261.) 

35 U.S.C. 267     Time for taking action in Government applications. 

        Notwithstanding the provisions of sections 133 and 151 of this 
title,  the Commissioner may extend the time for taking any action to 
three years,  when an application has become the property of the United 
States and the head  of the appropriate department or agency of the 
Government has certified to  the Commissioner that the invention disclosed 
therein is important to the armament  or defense of the United States. 


CHAPTER 28 - INFRINGEMENT OF PATENTS 


Sec. 

271   Infringement of patent. 

272   Temporary presence in the United States. 


35 U.S.C. 271     Infringement of patent. 


        (a)   Except as otherwise provided in this title, whoever without 
authority  makes, uses, offers to sell, or sells any patented invention, 
within the United  States, or imports into the United States any patented 
invention during the  term of the patent therefor, infringes the patent. 

        (b)   Whoever actively induces infringement of a patent shall be 
liable  as an infringer. 

        (c)   Whoever offers to sell or sells within the United States or 
imports  into the United States a component of a patented machine, 
manufacture, combination,  or composition, or a material or apparatus for 
use in practicing a patented  process, constituting a material part of the 
invention, knowing the same to  be especially made or especially adapted 
for use in an infringement of such  patent, and not a staple article or 
commodity of commerce suitable for substantial  noninfringing use, shall 
be liable as a contributory infringer. 

        (d)   No patent owner otherwise entitled to relief for 
infringement  or contributory infringement of a patent shall be denied 
relief or deemed guilty  of misuse or illegal extension of the patent 
right by reason of his having  done one or more of the following: (1) 
derived revenue from acts which if performed  by another without his 
consent would constitute contributory infringement of  the patent; (2) 
licensed or authorized another to perform acts which if performed  without 
his consent would constitute contributory infringement of the patent; 
(3) sought to enforce his patent rights against infringement or 
contributory  infringement; (4) refused to license or use any rights to 
the patent; or 
(5) conditioned the license of any rights to the patent or the sale of the 
 patented product on the acquisition of a license to rights in another 
patent  or purchase of a separate product, unless, in view of the 
circumstances, the  patent owner has market power in the relevant market 
for the patent or patented  product on which the license or sale is 
conditioned. 

        (e)(1)      It shall not be an act of infringement to make, use, 
offer  to sell, or sell within the United States or import into the United 
States  a patented invention (other than a new animal drug or veterinary 
biological  product (as those terms are used in the Federal Food, Drug, 
and Cosmetic Act  and the Act of March 4, 1913) which is primarily 
manufactured using recombinant  DNA, recombinant RNA, hybridoma 
technology, or other processes involving site  specific genetic 
manipulation techniques) solely for uses reasonably related  to the 
development and submission of information under a Federal law which 
regulates the manufacture, use, or sale of drugs or veterinary biological 
products. 
        (2)   It shall be an act of infringement to submit -- 

        (A)   an application under section 505(j) of the Federal Food, 
Drug,  and Cosmetic Act or described in section 505(b)(2) of such Act for 
a drug claimed  in a patent or the use of which is claimed in a patent, or 

        (B)   an application under section 512 of such Act or under the 
Act  of March 4, 1913 (21 U.S.C. 151 - 158) for a drug or veterinary 
biological  product which is not primarily manufactured using recombinant 
DNA, recombinant  RNA, hybridoma technology, or other processes involving 
site specific genetic  manipulation techniques and which is claimed in a 
patent or the use of which  is claimed in a patent, if the purpose of such 
submission is to obtain approval  under such Act to engage in the 
commercial manufacture, use, or sale of a drug  or veterinary biological 
product claimed in a patent or the use of which is  claimed in a patent 
before the expiration of such patent. 

        (3)    In any action for patent infringement brought under this 
section,  no injunctive or other relief may be granted which would 
prohibit the making,  using, offering to sell, or selling within the 
United States or importing into  the United States of a patented invention 
under paragraph (1). 

        (4)   For an act of infringement described in para- 
graph (2)- 

        (A)   the court shall order the effective date of any approval of 
the  drug or veterinary biological product involved in the infringement to 
be a  date which is not earlier than the date of the expiration of the 
patent which  has been infringed, 

        (B)   injunctive relief may be granted against an infringer to 
prevent  the commercial manufacture, use, offer to sell, or sale within 
the United States  or importation into the United States of an approved 
drug or veterinary biological  product, and 

        (C)   damages or other monetary relief may be awarded against an 
infringer  only if there has been commercial manufacture, use, offer to 
sell, or sale  within the United States or importation into the United 
States of an approved  drug or veterinary biological product. 

        The remedies prescribed by subparagraphs (A), (B), and (C) are the 
 only remedies which may be granted by a court for an act of infringement 
described  in paragraph (2), except that a court may award attorney fees 
under section  285. 

        (f)(1)      Whoever without authority supplies or causes to be 
supplied  in or from the United States all or a substantial portion of the 
components  of a patented invention, where such components are uncombined 
in whole or in  part, in such manner as to actively induce the combination 
of such components  outside of the United States in a manner that would 
infringe the patent if  such combination occurred within the United 
States, shall be liable as an infringer. 
        (2)   Whoever without authority supplies or causes to be supplied 
in  or from the United States any component of a patented invention that 
is especially  made or especially adapted for use in the invention and not 
a staple article  or commodity of commerce suitable for substantial 
noninfringing use, where  such component is uncombined in whole or in 
part, knowing that such component  is so made or adapted and intending 
that such component will be combined outside  of the United States in a 
manner that would infringe the patent if such combination  occurred within 
the United States, shall be liable as an infringer. 
        (g)   Whoever without authority imports into the United States or 
offers  to sell, sells, or uses within the United States a product which 
is made by  a process patented in the United States shall be liable as an 
infringer, if  the importation, offer to sell, sale, or use of the product 
occurs during the  term of such process patent. In an action for 
infringement of a process patent,  no remedy may be granted for 
infringement on account of the noncommercial use  or retail sale of a 
product unless there is no adequate remedy under this title  for 
infringement on account of the importation or other use, offer to sell, 
or sale of that product. A product which is made by a patented process 
will,  for purposes of this title, not be considered to be so made after - 
        (1)   it is materially changed by subsequent processes; or 
        (2)   it becomes a trivial and nonessential component of another 
product. 
        (h)   As used in this section, the term ``whoever" includes any 
State,  any instrumentality of a State, any officer or employee of a State 
or instrumentality  of a State acting in his official capacity. Any State, 
and any such instrumentality,  officer, or employee, shall be subject to 
the provisions of this title in the  same manner and to the same extent as 
any nongovernmental entity. 

        (i)   As used in this section, an "offer for sale" or an "offer to 
 sell" by a person other than the patentee or any assignee of the 
patentee,  is that in which the sale will occur before the expiration of 
the term of the  patent. 

        (Subsection (d) amended Nov. 19, 1988, Public Law 100-703, Title 
II,  sec. 201, 102 Stat. 4676.) 

        (Subsection (e) added Sept. 24, 1984, Public Law 98-417, sec. 202, 
 98 Stat. 1603.) 

  (Subsection (f) added Nov. 8, 1984, Public Law 98-622, sec. 101, 98 
Stat.  3383.) 

        (Subsection (g) added Aug. 23, 1988, Public Law 100-418, sec. 
9003,  effective Feb. 23, 1989.) 

        (Amended Nov. 16, 1988, Public Law 100-670, sec. 201(i), 
102 Stat. 3971) 

        (Subsection (d) amended Nov. 19, 1988, Public Law 100-703, Title 
II,  sec. 201 102 Stat. 4676) 

        (Subsection (h) added Oct. 28, 1992, Public Law 102-560, sec. 2, 
106  Stat. 4230) 

        (Subsections (a), (c), (e), and (g) amended Dec. 8, 1994, Public 
Law  103-465, sec. 533, 108 Stat. 4809, effective Jan. 1 1996.) 

        (Subsection (i) added Dec. 8, 1994, Public Law 103-465, sec. 533 , 
 108 Stat. 4809, effective Jan. 1, 1996.) 


35 U.S.C. 272     Temporary presence in the United 

                                States. 

        The use of any invention in any vessel, aircraft or vehicle of any 
 country which affords similar privileges to vessels, aircraft, or 
vehicles  of the United States, entering the United States temporarily or 
accidentally,  shall not constitute infringement of any patent, if the 
invention is used exclusively  for the needs of the vessel, aircraft, or 
vehicle and is not offered for sale  or sold in or used for the 
manufacture of anything to be sold in or exported  from the United States. 

        (Amended Dec. 8, 1994, Public Law 103-465, sec. 533, 108 Stat. 
4809,  effective Jan. 1, 1996.) 


CHAPTER 29 - REMEDIES FOR INFRINGEMENT OF PATENT, AND OTHER ACTIONS 

Sec. 

281   Remedy for infringement of patent. 

282   Presumption of validity; defenses. 

283   Injunction. 

284   Damages. 

285   Attorney fees. 

286   Time limitation on damages. 

287   Limitation on damages and other remedies; marking and 
        notice. 

288   Action for infringement of a patent containing an invalid 
        claim. 

289   Additional remedy for infringement of design patent. 

290   Notice of patent suits. 

291   Interfering patents. 

292   False marking. 

293   Nonresident patentee; service and notice. 

294   Voluntary arbitration. 

295   Presumption: Product made by patented process 

296   Liability of States, instrumentalities of States, and 
        State-officials for infringement of patents 


35 U.S.C. 281     Remedy for infringement of patent. 


        A patentee shall have remedy by civil action for infringement of 
his  patent. 


35 U.S.C. 282     Presumption of validity; defenses. 


        A patent shall be presumed valid. Each claim of a patent (whether 
in  independent, dependent, or multiple dependent form) shall be presumed 
valid  independently of the validity of other claims; dependent or 
multiple dependent  claims shall be presumed valid even though dependent 
upon an invalid claim.  Notwithstanding the preceding sentence, if a claim 
to a composition of matter  is held invalid and that claim was the basis 
of a determination of nonobviousness  under section 103(b)(1), the process 
shall no longer be considered nonobvious  solely on the basis of section 
103(b)(1). The burden of establishing invalidity  of a patent or any claim 
thereof shall rest on the party asserting such invalidity. 

        The following shall be defenses in any action involving the 
validity  or infringement of a patent and shall be pleaded: 

        (1)   Noninfringement, absence of liability for infringement, or 
unenforceability, 
        (2)   Invalidity of the patent or any claim in suit on any ground 
specified  in part II of this title as a condition for patentability, 

        (3)   Invalidity of the patent or any claim in suit for failure to 
 comply with any requirement of sections 112 or 251 of this title, 
        (4)   Any other fact or act made a defense by this title. 
        In actions involving the validity or infringement of a patent the 
party  asserting invalidity or noninfringement shall give notice in the 
pleadings  or otherwise in writing to the adverse party at least thirty 
days before the  trial, of the country, number, date, and name of the 
patentee of any patent,  the title, date, and page numbers of any 
publication to be relied upon as anticipation  of the patent in suit or, 
except in actions in the United States Claims Court,  as showing the state 
of the art, and the name and address of any person who  may be relied upon 
as the prior inventor or as having prior knowledge of or  as having 
previously used or offered for sale the invention of the patent in  suit. 
In the absence of such notice proof of the said matters may not be made 
at the trial except on such terms as the court requires. 

        Invalidity of the extension of a patent term or any portion 
thereof  under section 156 of this title because of the material failure- 

        (1)   by the applicant for the extension, or 

        (2)   by the Commissioner, 

to comply with the requirements of such section shall be a defense in any 
action  involving the infringement of a patent during the period of the 
extension of  its term and shall be pleaded. A due diligence determination 
under section  156(d)(2) is not subject to review in such an action. 

        (Amended July 24, 1965, Public Law 89-83, sec. 10, 79 Stat. 261; 
Nov.  24, 1975, Public Law 94-131, sec. 10, 89 Stat. 692; Sept. 24, 1984, 
Public  Law 98-417, sec. 203, 98 Stat. 1603; amended Nov. 1, 1995, Public 
Law 104-41,  sec. 2, 109 Stat. 352.) 


35 U.S.C. 283     Injunction. 


        The several courts having jurisdiction of cases under this title 
may  grant injunctions in accordance with the principles of equity to 
prevent the  violation of any right secured by patent, on such terms as 
the court deems  reasonable. 


35 U.S.C. 284     Damages. 


        Upon finding for the claimant the court shall award the claimant 
damages  adequate to compensate for the infringement but in no event less 
that a reasonable  royalty for the use made of the invention by the 
infringer, together with interest  and costs as fixed by the court. 

        When the damages are not found by a jury, the court shall assess 
them.  In either event the court may increase the damages up to three 
times the amount  found or assessed. 

        The court may receive expert testimony as an aid to the 
determination  of damages or of what royalty would be reasonable under the 
circumstances. 

35 U.S.C. 285     Attorney fees. 


        The court in exceptional cases may award reasonable attorney fees 
to  the prevailing party. 


35 U.S.C. 286     Time limitation on damages. 


        Except as otherwise provided by law, no recovery shall be had for 
any  infringement committed more than six years prior to the filing of the 
complaint  or counterclaim for infringement in the action. 

        In the case of claims against the United States Government for use 
 of a patented invention, the period before bringing suit, up to six 
years,  between the date of receipt of a written claim for compensation by 
the department  or agency of the Government having authority to settle 
such claim, and the  date of mailing by the Government of a notice to the 
claimant that his claim  has been denied shall not be counted as a part of 
the period referred to in  the preceding paragraph. 


35 U.S.C. 287     Limitation on damages and other 

                                remedies; marking and notice. 

        (a)   Patentees, and persons making, offering for sale, or selling 
 within the United States any patented article for or under them, or 
importing  any patented article into the United States, may give notice to 
the public  that the same is patented, either by fixing thereon the word 
"patent" or the  abbreviation "pat.", together with the number of the 
patent, or when, from  the character of the article, this cannot be done, 
by fixing to it, or to the  package wherein one or more of them is 
contained, a label containing a like  notice. In the event of failure so 
to mark, no damages shall be recovered by  the patentee in any action for 
infringement, except on proof that the infringer  was notified of the 
infringement and continued to infringe thereafter, in which  event damages 
may be recovered only for infringement occurring after such notice. 
Filing of an action for infringement shall constitute such notice. 
        (b)(1)      An infringer under section 271(g) shall be subject to 
all  the provisions of this title relating to damages and injunctions 
except to  the extent those remedies are modified by this subsection or 
section 9006 of  the Process Patent Amendments Act of 1988. The 
modifications of remedies provided  in this subsection shall not be 
available to any person who - 

        (A)   practiced the patented process; 

        (B)   owns or controls, or is owned or controlled by, the person 
who  practiced the patented process; or 

        (C)   had knowledge before the infringement that a patented 
process  was used to make the product the importation, use, offer for 
sale, or sale  of which constitutes the infringement. 

        (2)   No remedies for infringement under section 271(g) of this 
title  shall be available with respect to any product in the possession 
of, or in  transit to, the person subject to liability under such section 
before that  person had notice of infringement with respect to that 
product. The person  subject to liability shall bear the burden of proving 
any such possession or  transit. 

        (3)(A)      In making a determination with respect to the remedy 
in  an action brought for infringement under section 271(g), the court 
shall consider- 
        (i)   the good faith demonstrated by the defendant with respect to 
 a request for disclosure; 

        (ii)    the good faith demonstrated by the plaintiff with respect 
to  a request for disclosure, and 

        (iii)     the need to restore the exclusive rights secured by the 
patent. 
        (B)   For purposes of subparagraph (A), the following are evidence 
 of good faith: 

        (i)   a request for disclosure made by the defendant; 

        (ii)    a response within a reasonable time by the person 
receiving  the request for disclosure; and 

        (iii)     the submission of the response by the defendant to the 
manufacturer,  or if the manufacturer is not known, to the supplier, of 
the product to be  purchased by the defendant, together with a request for 
a written statement  that the process claimed in any patent disclosed in 
the response is not used  to produce such product. 

        The failure to perform any acts described in the preceding 
sentence  is evidence of absence of good faith unless there are mitigating 
circumstances.  Mitigating circumstances include the case in which, due to 
the nature of the  product, the number of sources for the product, or like 
commercial circumstances,  a request for disclosure is not necessary or 
practicable to avoid infringement. 
        (4)(A)      For purposes of this subsection, a "request for 
disclosure"  means a written request made to a person then engaged in the 
manufacture of  a product to identify all process patents owned by or 
licensed to that person,  as of the time of the request, that the person 
then reasonably believes could  be asserted to be infringed under section 
271(g) if that product were imported into, or sold, offered for  sale, or 
used in, the United States by an unauthorized person. A request for 
disclosure is further limited to a request - 

        (i)   which is made by a person regularly engaged in the United 
States  in the sale of the type of products as those manufactured by the 
person to  whom the request is directed, or which includes facts showing 
that the person  making the request plans to engage in the sale of such 
products in the United  States; 

        (ii)    which is made by such person before the person's first 
importation,  use, offer for sale, or sale of units of the product 
produced by an infringing  process and before the person had notice of 
infringement with respect to the  product; and 

        (iii)     which includes a representation by the person making the 
 request that such person will promptly submit the patents identified 
pursuant  to the request to the manufacturer, or if the manufacturer is 
not known, to  the supplier, of the product to be purchased by the person 
making the request,  and will request from that manufacturer or supplier a 
written statement that  none of the processes claimed in those patents is 
used in the manufacture of  the product. 

        (B)   In the case of a request for disclosure received by a person 
 to whom a patent is licensed, that person shall either identify the 
patent  or promptly notify the licensor of the request for disclosure. 

        (C)   A person who has marked, in the manner prescribed by 
subsection 
(a), the number of the process patent on all products made by the patented 
 process which have been offered for sale or sold by that person in the 
United  States, or imported by the person into the United States, before a 
request  for disclosure is received is not required to respond to the 
request for disclosure.  For purposes of the preceding sentence, the term 
"all products" does not include  products made before the effective date 
of the Process Patent Amendments Act  of 1988. 

        (5)(A)      For purposes of this subsection, notice of 
infringement  means actual knowledge, or receipt by a person of a written 
notification, or  a combination thereof, of information sufficient to 
persuade a reasonable person  that it is likely that a product was made by 
a process patented in the United  States. 

        (B)   A written notification from the patent holder charging a 
person  with infringement shall specify the patented process alleged to 
have been used  and the reasons for a good faith belief that such process 
was used.  The patent  holder shall include in the notification such 
information as is reasonably  necessary to explain fairly the patent 
holder's belief, except that the patent  holder is not required to 
disclose any trade secret information. 

        (C)   A person who receives a written notification described in 
subparagraph 
(B) or a written response to a request for disclosure described in 
paragraph 
(4) shall be deemed to have notice of infringement with respect to any 
patent  referred to in such written notification or response unless that 
person, absent  mitigating circumstances- 

        (i)   promptly transmits the written notification or response to 
the  manufacturer or, if the manufacturer is not known, to the supplier, 
of the  product purchased or to be purchased by that person; and 

        (ii)    receives a written statement from the manufacturer or 
supplier  which on its face sets forth a well grounded factual basis for a 
belief that  the identified patents are not infringed. 

        (D)   For purposes of this subsection, a person who obtains a 
product  made by a process patented in the United States in a quantity 
which is abnormally  large in relation to the volume of business of such 
person or an efficient  inventory level shall be rebuttably presumed to 
have actual knowledge that  the product was made by such patented process. 

        (6)   A person who receives a response to a request for disclosure 
 under this subsection shall pay to the person to whom the request was 
made  a reasonable fee to cover actual costs incurred in complying with 
the request,  which may not exceed the cost of a commercially available 
automated patent  search of the matter involved, but in no case more than 
$500. 

        (Amended August 23, 1988, Public Law 100-418, effective date Feb. 
23,  1989; amended Dec. 8, 1994, Public Law 103-465, sec. 533, 108 Stat. 
4809, effective  Jan. 1, 1996.) 


35 U.S.C. 288     Action for infringement of a patent 

          containing an invalid claim. 

        Whenever, without deceptive intention, a claim of a patent is 
invalid,  an action may be maintained for the 


infringement of a claim of the patent which may be valid. The patentee 
shall  recover no costs unless a disclaimer of the invalid claim has been 
entered  at the Patent and Trademark Office before the commencement of the 
suit. 
        (Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949.) 

35 U.S.C. 289     Additional remedy for infringement of 
             design 


patent. 

        Whoever during the term of a patent for a design, without license 
of  the owner, (1) applies the patented design, or any colorable imitation 
thereof,  to any article of manufacture for the purpose of sale, or (2) 
sells or exposes  for sale any article of manufacture to which such design 
or colorable imitation  has been applied shall be liable to the owner to 
the extent of his total profit,  but not less than $250, recoverable in 
any United States district court having  jurisdiction of the parties. 

        Nothing in this section shall prevent, lessen, or impeach any 
other  remedy which an owner of an infringed patent has under the 
provisions of this  title, but he shall not twice recover the profit made 
from the infringement. 

35 U.S.C. 290     Notice of patent suits. 


        The clerks of the courts of the United States, within one month 
after  the filing of an action under this title, shall give notice thereof 
in writing  to the Commissioner, setting forth so far as known the names 
and addresses  of the parties, name of the inventor, and the designating 
number of the patent  upon which the action has been brought. If any other 
patent is subsequently  included in the action he shall give like notice 
thereof. Within one month  after the decision is rendered or a judgment 
issued the clerk of the court  shall give notice thereof to the 
Commissioner. The Commissioner shall, on receipt  of such notices, enter 
the same in the file of such patent. 


35 U.S.C. 291     Interfering patents. 


        The owner of an interfering patent may have relief against the 
owner  of another by civil action, and the court may adjudge the question 
of validity  of any of the interfering patents, in whole or in part. The 
provisions of the  second paragraph of section 146 of this title shall 
apply to actions brought  under this section. 


35 U.S.C. 292     False marking. 


        (a)   Whoever, without the consent of the patentee, marks upon, or 
 affixes to, or uses in advertising in connection with anything made, 
used,  offered for sale, or sold by same person within the United States, 
or imported  by the person into the United States, the name or any 
imitation of the name  of the patentee, the patent number, or the words 
"patent," "patentee," or the  like, with the intent of counterfeiting or 
imitating the mark of the patentee,  or of deceiving the public and 
inducing them to believe that the thing was  made, offered for sale, sold, 
or imported into the United States by or with  the consent of the 
patentee; or 

        Whoever marks upon, or affixes to, or uses in advertising in 
connection  with any unpatented article the word "patent" or any word or 
number importing  the same is patented, for the purpose of deceiving the 
public; or 

        Whoever marks upon, or affixes to, or uses in advertising in 
connection  with any article the words "patent applied for," "patent 
pending," or any word  importing that an application for patent has been 
made, when no application  for patent has been made, or if made, is not 
pending, for the purpose of deceiving  the public - 

        Shall be fined not more than $500 for every such offense. 
        (b)   Any person may sue for the penalty, in which event one-half 
shall  go to the person suing and the other to the use of the United 
States. 
        (Subsection (a) amended Dec. 8, 1994, Public Law 103-465, sec. 
533,  108 Stat. 4809, effective Jan. 1, 1996.) 


35 U.S.C. 293      Nonresident patentee; service and 

                                notice. 

        Every patentee not residing in the United States may file in the 
Patent  and Trademark Office a written designation stating the name and 
address of  a person residing within the United States on whom may be 
served process or  notice of proceedings affecting the patent or rights 
thereunder. If the person  designated cannot be found at the address given 
in the last designation, or  if no person has been designated, the United 
States District Court for the  District of Columbia shall have 
jurisdiction and summons shall be served by  publication or otherwise as 
the court directs. The court shall have the same  jurisdiction to take any 
action respecting the patent or rights thereunder  that it would have if 
the patentee were personally within the jurisdiction  of the court. 

        (Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949.) 

35 U.S.C. 294     Voluntary arbitration. 


        (a)   A contract involving a patent or any right under a patent 
may  contain a provision requiring arbitration of any dispute relating to 
patent  validity or infringement arising under the contract. In the 
absence of such  a provision, the parties to an existing patent validity 
or infringement dispute  may agree in writing to settle such dispute by 
arbitration. Any such provision  or agreement shall be valid, irrevocable, 
and enforceable, except for any grounds  that exist at law or in equity 
for revocation of a contract. 

        (b)   Arbitration of such disputes, awards by arbitrators, and 
confirmation  of awards shall be governed by title 9, United States Code, 
to the extent such  title is not inconsistent with this section. In any 
such arbitration proceeding,  the defenses provided for under section 282 
of this title shall be considered  by the arbitrator if raised by any 
party to the proceeding. 

        (c)   An award by an arbitrator shall be final and binding between 
 the parties to the arbitration but shall have no force or effect on any 
other  person. The parties to an arbitration may agree that in the event a 
patent  which is the subject matter of an award is subsequently determined 
to be invalid  or unenforceable in a judgment rendered by a court to 
competent jurisdiction  from which no appeal can or has been taken, such 
award may be modified by any  court of competent jurisdiction upon 
application by any party to the arbitration.  Any such modification shall 
govern the rights and obligations between such  parties from the date of 
such modification. 

        (d)   When an award is made by an arbitrator, the patentee, his 
assignee  or licensee shall give notice thereof in writing to the 
Commissioner. There  shall be a separate notice prepared for each patent 
involved in such proceeding.  Such notice shall set forth the names and 
addresses of the parties, the name  of the inventor, and the name of the 
patent owner, shall designate the number  of the patent, and shall contain 
a copy of the award. If an award is modified  by a court, the party 
requesting such modification shall give notice of such  modification to 
the Commissioner. The Commissioner shall, upon receipt of either  notice, 
enter the same in the record of the prosecution of such patent. If  the 
required notice is not filed with the Commissioner, any party to the 
proceeding  may provide such notice to the Commissioner. 

        (e)   The award shall be unenforceable until the notice required 
by  subsection (d) is received by the Commissioner. 

        (Added Aug. 27, 1982, Public Law 97-247, sec. 17(b)(1), 96 Stat. 
322.) 

35 U.S.C. 295     Presumptions: Product made by 

                                patented process. 

        In actions alleging infringement of a process patent based on the 
importation,  sale, offered for sale, or use of a product which is made 
from a process patented  in the United States, if the court finds- 

        (1)   that a substantial likelihood exists that the product was 
made  by the patented process, and 

        (2)   that the plaintiff has made a reasonable effort to determine 
 the process actually used in the production of the product and was unable 
so  to determine, the product shall be presumed to have been so made, and 
the burden  of establishing that the product was not made by the process 
shall be on the  party asserting that it was not so made. 

        (Added August 23, 1988, Public Law 100-418, sec. 9005, effective 
Feb.  23, 1989, amended Dec. 8, 1994, Public Law 103-465, sec. 533, 108 
Stat. 4809,  effective Jan. 1, 1996.) 


35 U.S.C. 296     Liability of States, instrumentalities of 
                     States, 


and State officials for 
                                infringement of patents. 

        (a)   In General - Any State, any instrumentality of a State, and 
any  officer or employee of a State or instrumentality of a State, acting 
in his  official capacity, shall not be immune, under the eleventh 
amendment of the  Constitution of the United States or under any other 
doctrine of sovereign  immunity, from suit in Federal court by any person, 
including any governmental  or nongovernmental entity, for infringement of 
a patent under section 271,  or for any other violation under this title. 

        (b)   Remedies - In a suit described in subsection (a) for a 
violation  described in that subsection, remedies (including remedies both 
at law and  in equity) are available for the violation to the same extent 
as such remedies  are available for such a violation in a suit against any 
private entity. Such  remedies include damages, interest, costs, and 
treble damages under section  284, attorney fees under section 285, and 
the additional remedy for infringement  of design patents under section 289. 

        (Added October 28, 1992, Public Law 106-560, sec.2, 106 Stat. 
4230.) 

CHAPTER 30 - PRIOR ART CITATIONS TO OFFICE AND REEXAMINATION OF PATENTS 

Sec. 

301   Citation of prior art. 

302   Request for reexamination. 

303   Determination of issue by Commissioner. 

304   Reexamination order by Commissioner. 

305   Conduct of reexamination proceedings. 

306   Appeal. 

307   Certificate of patentability, unpatentability, and claim 

          cancellation. 


35 U.S.C. 301     Citation of prior art. 


        Any person at any time may cite to the Office in writing prior art 
 consisting of patents or printed publications which that person believes 
to  have a bearing on the patentability of any claim of a particular 
patent.  If  the person explains in writing the pertinency and manner of 
applying such prior  art to at least one claim of the patent, the citation 
of such prior art and  the explanation thereof will become a part of the 
official file of the patent. 
 At the written request of the person citing the prior art, his or her 
identity  will be excluded from the patent file and kept confidential. 

        (Added Dec. 12, 1980, Public Law 96-517, sec. 1, 94 Stat. 3015.) 

35 U.S.C. 302     Request for reexamination. 


        Any person at any time may file a request for reexamination by the 
 Office of any claim of a patent on the basis of any prior art cited under 
the  provisions of section 301 of this title. The request must be in 
writing and  must be accompanied by payment of a reexamination fee 
established by the Commissioner  of Patents pursuant to the provisions of 
section 41 of this title. The request  must set forth the pertinency and 
manner of applying cited prior art to every  claim for which reexamination 
is requested. Unless the requesting person is  the owner of the patent, 
the Commissioner promptly will send a copy of the  request to the owner of 
record of the patent. 

        (Added Dec. 12, 1980, Public Law 96-517, sec. 1, 94 Stat. 3015.) 

35 U.S.C. 303     Determination of issue by 

                                Commissioner. 

        (a)   Within three months following the filing of a request for 
reexamination  under the provisions of section 302 of this title, the 
Commissioner will determine  whether a substantial new question of 
patentability affecting any claim of  the patent concerned is raised by 
the request, with or without consideration  of other patents or printed 
publications. On his own initiative, and any time,  the Commissioner may 
determine whether a substantial new question of patentability  is raised 
by patents and publications discovered by him or cited under the 
provisions of section 301 of this title. 

        (b)   A record of the Commissioner's determination under 
subsection 
(a) of this section will be placed in the official file of the patent, and 
 a copy promptly will be given or mailed to the owner of record of the 
patent  and to the person requesting reexamination, if any. 

        (c)   A determination by the Commissioner pursuant to subsection 
(a)  of this section that no substantial new question of patentability has 
been  raised will be final and nonappealable. Upon such a determination, 
the Commissioner  may refund a portion of the reexamination fee required 
under section 302 of  this title. 

        (Added Dec. 12, 1980, Public Law 96-517, sec. 1, 94 Stat. 3015.) 

35 U.S.C. 304     Reexamination order by Commissioner. 


        If, in a determination made under the provisions of subsection 
303(a)  of this title, the Commissioner finds that a substantial new 
question of patentability  affecting any claim of a patent is raised, the 
determination will include an  order for reexamination of the patent for 
resolution of the question. The patent  owner will be given a reasonable 
period, not less than two months from the  date a copy of the 
determination is given or mailed to him, within which he  may file a 
statement on such question, including any amendment to his patent  and new 
claim or claims he may wish to propose, for consideration in the 
reexamination.  If the patent owner files such a statement, he promptly 
will serve a copy of  it on the person who has requested reexamination 
under the provisions of section  302 of this title. Within a period of two 
months from the date of service,  that person may file and have considered 
in the reexamination a reply to any  statement filed by the patent owner. 
That person promptly will serve on the  patent owner a copy of any reply 
filed. 

        (Added Dec. 12, 1980, Public Law 96-517, sec. 1, 94 Stat. 3016.) 

35 U.S.C. 305     Conduct of reexamination proceedings. 


        After the times for filing the statement and reply provided for by 
 section 304 of this title have expired, reexamination will be conducted 
according  to the procedures established for initial examination under the 
provisions  of sections 132 and 133 of this title. In any reexamination 
proceeding under  this chapter, the patent owner will be permitted to 
propose any amendment to  his patent and a new claim or claims thereto, in 
order to distinguish the invention  as claimed from the prior art cited 
under the provisions of section 301 of  this title, or in response to a 
decision adverse to the patentability of a  claim of a patent. No proposed 
amended or new claim enlarging the scope of  a claim of the patent will be 
permitted in a reexamination proceeding under  this chapter. All 
reexamination proceedings under this section, including any  appeal to the 
Board of Patent Appeals and Interferences, will be conducted  with special 
dispatch within the Office. 

        (Added Dec. 12, 1980, Public Law 96-517, sec. 1, 94 Stat. 3016; 
amended  Nov. 8, 1984, Public Law 98-622, sec. 204(c), 
98 Stat. 3388.) 


35 U.S.C. 306     Appeal. 


        The patent owner involved in a reexamination proceeding under this 
 chapter may appeal under the provisions of section 134 of this title, and 
may  seek court review under the provisions of sections 141 to 145 of this 
title,  with respect to any decision adverse to the patentability of any 
original or  proposed amended or new claim of the patent. 

(Added Dec. 12, 1980, Public Law 96-517, sec. 1, 94 Stat. 3016.) 


35 U.S.C. 307     Certificate of patentability, 

                                unpatentability, and claim cancellation. 
        (a)   In a reexamination proceeding under this chapter, when the 
time  for appeal has expired or any appeal proceeding has terminated, the 
Commissioner  will issue and publish a certificate canceling any claim of 
the patent finally  determined to be unpatentable, confirming any claim of 
the patent determined  to be patentable, and incorporating in the patent 
any proposed amended or new  claim determined to be patentable. 

        (b)   Any proposed amended or new claim determined to be 
patentable  and incorporated into a patent following a reexamination 
proceeding will have  the same effect as that specified in section 252 of 
this title for reissued  patents on the right of any person who made, 
purchased, or used within the  United States, or imported into the United 
States, anything patented by such  proposed amended or new claim, or who 
made substantial preparation for the  same, prior to issuance of a 
certificate under the provisions of subsection 
(a) of this section. 

        (Added Dec. 12, 1980, Public Law 96-517, sec. 1, 94 Stat. 3016; 
amended  Dec. 8, 1994, Public Law 103-465, sec. 533, 108 Stat. 4809, 
effective Jan.  1, 1996.) 


PART IV - PATENT COOPERATION TREATY 



CHAPTER 35 - DEFINITIONS 


Sec. 

351   Definitions. 


35 U.S.C. 351     Definitions. 


        When used in this part unless the context otherwise indicates- 
        (a)   The term "treaty" means the Patent Cooperation Treaty done 
at  Washington, on June 19, 1970. 

        (b)   The term "Regulations," when capitalized, means the 
Regulations  under the treaty, done at Washington on the same date as the 
treaty. The term  "regulations," when not capitalized, means the 
regulations established by the  Commissioner under this title. 

        (c)   The term "international application" means an application 
filed  under the treaty. 

        (d)   The term "international application originating in the 
United  States" means an international application filed in the Patent and 
Trademark  Office when it is acting as a Receiving Office under the 
treaty, irrespective  of whether or not the United States has been 
designated in that international  application. 

        (e)   The term "international application designating the United 
States"  means an international application specifying the United States 
as a country  in which a patent is sought, regardless where such 
international application  is filed. 

        (f)   The term "Receiving Office" means a national patent office 
or  intergovernmental organization which receives and processes 
international applications  as prescribed by the treaty and the Regulations. 

        (g)   The terms "International Searching Authority" and 
"International  Preliminary Examining Authority" mean a national patent 
office or intergovernmental organization as appointed  under the treaty 
which processes international applications as prescribed by  the treaty 
and the Regulations. 

        (h)   The term "International Bureau" means the inter- national 
intergovernmental  organization which is recognized as the coordinating 
body under the treaty  and the Regulations. 

        (i)   Terms and expressions not defined in this part are to be 
taken  in the sense indicated by the treaty and the Regulations. 

        (Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat. 685; 
amended  Nov. 6, 1986, Public Law 99-616, sec. 
2 (a)(b)(c)(1)(2)(3), effective July 1, 1987.) 


CHAPTER 36 - INTERNATIONAL STAGE 


Sec. 

361   Receiving Office 

362   International Searching Authority and International 
        Preliminary Examining Authority. 

363   International application designating the United States: 
        Effect. 

364   International stage: Procedure. 

365   Right of priority; benefit of the filing date of a prior 
             application. 

366   Withdrawn international application. 

367   Actions of other authorities: Review. 

368   Secrecy of certain inventions; filing international 
        applications in foreign countries. 


35 U.S.C. 361     Receiving Office. 


        (a)   The Patent and Trademark Office shall act as a Receiving 
Office  for international applications filed by nationals or residents of 
the United  States. In accordance with any agreement made between the 
United States and  another country, the Patent and Trademark Office may 
also act as a Receiving  Office for international applications filed by 
residents or nationals of such  country who are entitled to file 
international applications. 

        (b)   The Patent and Trademark Office shall perform all acts 
connected  with the discharge of duties required of a Receiving Office, 
including the  collection of international fees and their transmittal to 
the International  Bureau. 

        (c)   International applications filed in the Patent and Trademark 
 Office shall be in the English language. 

        (d)   The international fee, and the transmittal and search fees 
prescribed  under section 376(a) of this part, shall either be paid on 
filing of an international  application or within such later time as may 
be fixed by the Commissioner. 
        (Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat. 686; 
amended  Nov. 8, 1984, Public Law 98-622, sec. 401(a), 98 Stat. 3391; Nov. 
6, 1986,  Public Law 99-616, sec. 2 (d), effective July 1, 1987.) 


35 U.S.C. 362     International Searching Authority and 
             International 


Preliminary Examining                                   Authority. 
        (a)   The Patent and Trademark Office may act as an International 
Searching  Authority and International Preliminary Examining Authority 
with respect to  international applications in accordance with the terms 
and conditions of an  agreement which may be concluded with the 
International Bureau, and may discharge  all duties required of such 
Authorities, including the collection of handling  fees and their 
transmittal to the International Bureau. 

        (b)   The handling fee, preliminary examination fee, and any 
additional  fees due for international preliminary examination shall be 
paid within such  time as may be fixed by the Commissioner. 

        (Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat. 686; 
amended  Nov. 6, 1986, Public Law 99-616, sec. 4, effective July 1, 1987.) 

35 U.S.C. 363     International application designating 

                                the United States: Effect. 

        An international application designating the United States shall 
have  the effect, from its international filing date under article 11 of 
the treaty,  of a national application for patent regularly filed in the 
Patent and Trademark  Office except as otherwise provided in section 
102(e) of this title. 
        (Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat. 686.) 

35 U.S.C. 364     International stage: Procedure. 


        (a)   International applications shall be processed by the Patent 
and  Trademark Office when acting as a Receiving Office, International 
Searching  Authority, or International Preliminary Examining Authority, in 
accordance with the applicable  provisions of the treaty, the Regulations, 
and this title. 

        (b)   An applicant's failure to act within prescribed time limits 
in  connection with requirements pertaining to a pending international 
application  may be excused upon a showing satisfactory to the 
Commissioner of unavoidable  delay, to the extent not precluded by the 
treaty and the Regulations, and provided  the conditions imposed by the 
treaty and the Regulations regarding the excuse  of such failure to act 
are complied with. 

        (Subsection (a) amended Nov. 6, 1986, Public Law 99-616, sec. 5, 
effective  July 1, 1987.) 

        (Subsection (b) added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 
 Stat. 686.) 


35 U.S.C. 365       Right of priority; benefit of the 

                                filing date of a prior application. 
        (a)   In accordance with the conditions and requirements of 
subsections 
(a) through (d) of section 119 of this title, a national application shall 
 be entitled to the right of priority based on a prior filed international 
application  which designated at least one country other than the United 
States. 
        (b)   In accordance with the conditions and requirements of 
section  119(a) of this title and the treaty and the Regulations, an 
international application  designating the United States shall be entitled 
to the right of priority based  on a prior foreign application, or a prior 
international application designating  at least one country other than the 
United States. 

        (c)   In accordance with the conditions and requirements of 
section  120 of this title, an international application designating the 
United States  shall be entitled to the benefit of the filing date of a 
prior national application  or a prior international application 
designating the United States, and a national  application shall be 
entitled to the benefit of the filing date of a prior  international 
application designating the United States. If any claim for the  benefit 
of an earlier filing date is based on a prior international application 
which designated but did not originate in the United States, the 
Commissioner  may require the filing in the Patent and Trademark Office of 
a certified copy  of such application together with a translation thereof 
into the English language,  if it was filed in another language. 

        (Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat. 686; 
amended  Dec. 8, 1994, Public Law 103-465, sec. 532, 108  Stat. 4809, 
effective June  8, 1995.) 


35 U.S.C. 366     Withdrawn international application. 


        Subject to section 367 of this part, if an international 
application  designating the United States is withdrawn or considered 
withdrawn, either  generally or as to the United States, under the 
conditions of the treaty and  the Regulations, before the applicant has 
complied with the applicable requirements  prescribed by section 371(c) of 
this part, the designation of the United States  shall have no effect 
after the date of withdrawal and shall be considered as  not having been 
made, unless a claim for benefit of a prior filing date under  section 
365(c) of this section was made in a national application, or an 
international  application designating the United States, filed before the 
date of such withdrawal.  However, such withdrawn international 
application may serve as the basis for  a claim of priority under section 
365 (a) and (b) of this part, if it designated  a country other than the 
United States. 

        (Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat. 687; Amended 
Nov.  8, 1984, Public Law 98-622, sec. 401(b), 98 Stat. 3391.) 


35 U.S.C. 367     Actions of other authorities: Review. 


        (a)   Where a Receiving Office other than the Patent and Trademark 
 Office has refused to accord an international filing date to an 
international  application designating the United States or where it has 
held such application  to be withdrawn either generally or as to the 
United States, the applicant  may request review of the matter by the 
Commissioner, on compliance with the  requirements of and within the time 
limits specified by the treaty and the  Regulations. Such review may 
result in a determination that such application  be considered as pending 
in the national stage. 

        (b)   The review under subsection (a) of this section, subject to 
the  same requirements and conditions, may also be requested in those 
instances  where an international application designating the United 
States is considered  withdrawn due to a finding by the International 
Bureau under article 12(3)  of the treaty. 

        (Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat. 687.) 

35 U.S.C. 368     Secrecy of certain inventions; filing international 
applications in foreign countries. 

        (a)   International applications filed in the Patent and Trademark 
 Office shall be subject to the provisions of chapter 17 of this title. 
        (b)   In accordance with article 27(8) of the treaty, the filing 
of  an international application in a country other than the United States 
on the  invention made in this country shall be considered to constitute 
the filing  of an application in a foreign country within the meaning of 
chapter 17 of  this title, whether or not the United States is designated 
in that international  application. 

        (c)   If a license to file in a foreign country is refused or if 
an  international application is ordered to be kept secret and a permit 
refused,  the Patent and Trademark Office when acting as a Receiving 
Office, International  Searching Authority, or International Preliminary 
Examining Authority, may  not disclose the contents of such application to 
anyone not authorized to receive  such disclosure. 

        (Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat. 687; 
amended  Nov. 6, 1986, Public Law 99-616, sec. 6, effective July 1, 1987.) 

CHAPTER 37 - NATIONAL STAGE 


Sec. 

371   National stage: Commencement. 

372   National stage: Requirements and procedure. 

373   Improper applicant. 

374   Publication of international application: Effect. 

375   Patent issued on international application: Effect. 

376   Fees. 


35 U.S.C. 371     National stage: Commencement. 


        (a)   Receipt from the International Bureau of copies of 
international  applications with any amendments to the claims, 
international search reports,  and international preliminary examination 
reports including any annexes thereto  may be required in the case of 
international applications designating or electing  the United States. 

        (b)   Subject to subsection (f) of this section, the national 
stage  shall commence with the expiration of the applicable time limit 
under article  22 (1) or (2), or under article 39(1)(a) of the treaty. 

        (c)   The applicant shall file in the Patent and Trademark Office 
- 
        (1) the national fee provided in section 41(a) of this title; 
        (2)   a copy of the international application, unless not required 
 under subsection (a) of this section or already communicated by the 
International  Bureau, and a translation into the English language of the 
international application,  if it was filed in another language; 

        (3)   amendments, if any, to the claims in the international 
application,  made under article 19 of the treaty, unless such amendments 
have been communicated  to the Patent and Trademark Office by the 
International Bureau, and a translation  into the English language if such 
amendments were made in another language; 
        (4)   an oath or declaration of the inventor (or other person 
authorized  under chapter 11 of this title) complying with the 
requirements of section  115 of this title and with regulations prescribed 
for oaths or declarations  of applicants; 

        (5)   a translation into the English language of any annexes to 
the  international preliminary examination report, if such annexes were 
made in  another language. 

        (d)   The requirement with respect to the national fee referred to 
 in subsection (c)(1), the translation referred to in subsection (c)(2), 
and  the oath or declaration referred to in subsection (c)(4) of this 
section shall  be complied with by the date of the commencement of the 
national stage or by  such later time as may be fixed by the Commissioner. 
The copy of the international  application referred to in subsection 
(c)(2) shall be submitted by the date  of the commencement of the national 
stage. Failure to comply with these requirements  shall be regarded as 
abandonment of the application by the parties thereof,  unless it be shown 
to the satisfaction of the Commissioner that such failure  to comply was 
unavoidable. The payment of a surcharge may be required as a  condition of 
accepting the national fee referred to in subsection (c)(1) or  the oath 
or declaration referred to in subsection (c)(4) of this section if  these 
requirements are not met by the date of the commencement of the national 
stage. The requirements of subsection (c)(3) of this section shall be 
complied  with by the date of the commencement of the national stage, and 
failure to  do so shall be regarded as a cancellation of 
the amendments to the claims in the international application made under 
article  19 of the treaty. The requirement of subsection (c)(5) shall be 
complied with at such time as may  be fixed by the Commissioner and 
failure to do so shall be regarded as cancellation  of the amendments made 
under article 34(2)(b) of the treaty. 

        (e)   After an international application has entered the national 
stage,  no patent may be granted or refused thereon before the expiration 
of the applicable  time limit under article 28 or article 41 of the 
treaty, except with the express  consent of the applicant. The applicant 
may present amendments to the specification,  claims, and drawings of the 
application after the national stage has commenced. 
        (f)   At the express request of the applicant, the national stage 
of  processing may be commenced at any time at which the application is in 
order  for such purpose and the applicable requirements of subsection (c) 
of this  section have been complied with. 

        (Subsection (a) amended Nov. 6, 1986, Public Law, 99-616, sec. 
7(a).) 
        (Subsection (b) amended Nov. 6, 1986, Public Law 99-616, sec. 
7(b).) 
        (Subsection (c) amended Nov. 6, 1986, Public Law 99-616, sec. 
7(d).) 
        (Subsection (d) amended Nov. 6, 1986, Public Law 99-616, sec. 
7(e).) 
        (Subsection (e) amended Nov. 6, 1986, Public Law 99-616, sec. 
7(f).) 
        (Subsection (f) added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 
 Stat. 688; amended Nov. 8, 1984, Public Law 98-622, sec. 402(b), 98 Stat. 
3391.) 
        (Subsection (c)(1) amended Dec. 10, 1991, Public Law 102-204, sec. 
 5, 105 Stat. 1640.) 


35 U.S.C. 372     National stage: Requirements and 
             procedure. 


        (a )    All questions of substance and, within the scope of the 
requirements  of the treaty and Regulations, procedure in an international 
application designating  the United States shall be determined as in the 
case of national applications  regularly filed in the Patent and Trademark 
Office. 

        (b)   In case of international applications designating but not 
originating  in, the United States - - 

        (1)   the Commissioner may cause to be reexamined questions 
relating  to form and contents of the application in accordance with the 
requirements  of the treaty and the Regulations; 

        (2)   the Commissioner may cause the question of unity of 
invention  to be reexamined under section 121 of this title, within the 
scope of the requirements  of the treaty and the Regulations; and 

        (3)   the Commissioner may require a verification of the 
translation  of the international application or any other document 
pertaining to the application  if the application or other document was 
filed in a language other than English. 
        (Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat. 689; 
amended  Nov. 8, 1984, Public Law 98-622, sec. 402(e), 98 Stat. 3392.) 


35 U.S.C. 373     Improper applicant. 


        An international application designating the United States, shall 
not  be accepted by the Patent and Trademark Office for the national stage 
if it  was filed by anyone not qualified under chapter 11 of this title to 
be an applicant  for the purpose of filing a national application in the 
United States. Such  international applications shall not serve as the 
basis for the benefit of  an earlier filing date under section 120 of this 
title in a subsequently filed  application, but may serve as the basis for 
a claim of the right of priority  under subsections (a) through (d) of 
section 119 of this title, if the United  States was not the sole country 
designated in such international application. 
        (Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat. 689; 
amended  Dec. 8, 1994, Public Law 103-465, sec. 532, 108 Stat. 4809, 
effective June  8, 1995.) 


35 U.S.C. 374     Publication of international 

                                application: Effect. 

        The publication under the treaty of an international application 
shall  confer no rights and shall have no effect under this title other 
than that  of a printed publication. 

        (Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat. 689.) 

35 U.S.C. 375     Patent issued on international 

                                application: Effect. 

        (a)   A patent may be issued by the Commissioner based on an 
international  application designating the United States, in accordance 
with the provisions  of this title. Subject to section 102(e) of this 
title, such patent shall have  the force and effect of a patent issued on 
a national application filed under  the provisions of chapter 11 of this 
title. 

        (b)   Where due to an incorrect translation the scope of a patent 
granted  on an international application designating the United States, 
which was not  originally filed in the English language, exceeds the scope 
of the international  application in its original language, a court of 
competent jurisdiction may  retroactively limit the scope of the patent, 
by declaring it unenforceable  to the extent that it exceeds the scope of 
the international application in  its original language. 

        (Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat. 689.) 

35 U.S.C. 376     Fees. 


        (a)   The required payment of the international fee and the 
handling  fee, which amounts are specified in the Regulations, shall be 
paid in United  States currency. The Patent and Trademark Office shall 
charge a national fee  as provided in section 41(a), and may also charge 
the following fees: 
        (1)   A transmittal fee (see section 361(d)); 

        (2)   A search fee (see section 361(d)); 

        (3)   A supplemental search fee (to be paid when required); 
        (4)   A preliminary examination fee and any additional fees (see 
section  362(b)). 

        (5)   Such other fees as established by the Commissioner. 
        (b)   The amounts of fees specified in subsection (a) of this 
section,  except the international fee and the handling fee, shall be 
prescribed by the  Commissioner. He may refund any sum paid by mistake or 
in excess of the fees  so specified, or if required under the treaty and 
the Regulations. The Commissioner  may also refund any part of the search 
fee, the national fee, the preliminary  examination fee and any additional 
fees, where he determines such refund to  be warranted. 

        (Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat. 690, 
amended  Nov. 8, 1984, Public Law 98-622, sec. 402(g), 98 Stat. 3392; Nov. 
6, 1986,  Public Law 99-616, sec. 8(a) & (b).) 

        (Amended Dec. 10, 1991, Public Law 102-204, sec. 5, 
105 Stat. 1640.) 



LAWS NOT IN TITLE 35, UNITED STATES CODE 



18 U.S.C. 1001      Statements or entries generally. 


        Whoever, in any matter within the jurisdiction 
of any department or agency of the United States 
knowingly and willfully falsifies, conceals, or covers up by any trick, 
scheme,  or device a material fact, or makes any false, fictitious or 
fraudulent statements  or representations, or makes or uses any false 
writing or document knowing  the same to contain any false, fictitious or 
fraudulent statement or entry,  shall be fined not more than $10,000 or 
imprisoned not more than five years,  or both. 


18 U.S.C. 2071      Concealment, removal, or mutilation 

                  generally. 

        (a)   Whoever willfully and unlawfully conceals, removes, 
mutilates,  obliterates, or destroys, or attempts to do so, or, with 
intent to do so takes  and carries away any record, proceeding, map, book, 
paper, document, or other  thing, filed or deposited with any clerk or 
officer of any court of the United  States, or in any public office, or 
with any judicial or public officer of  the United States, shall be fined 
not more than $2,000 or imprisoned not more  than three years, or both. 

        (b)   Whoever, having the custody of any such record, proceeding, 
map,  book, document, paper, or other thing, willfully and unlawfully 
conceals, removes,  mutilates, obliterates, falsifies, or destroys the 
same, shall be fined not  more than $2,000 or imprisoned not more than 
three years, or both; and shall  forfeit his office and be disqualified 
from holding any office under the United  States. 


INDEX OF PATENT LAWS - A 


Abandoned applications, fee on petition to revive 41(a)7 

Abandonment of application by failure to 

prosecute 133, 371 

Abandonment of invention: 

Bar to patent     102 

By violation of secrecy       182 

Administrator, executor, or guardian    117 

Affidavits and depositions in contested cases, 

rules for taking        23 

Agreement to terminate interference   135 

Agriculture, Secretary of, to furnish information, 

and detail employees to Commissioner of Patents 

and Trademarks for plant patent       164 

Allowance and issue of patents      153 

Allowance, notice of    151 

Amendment: 

Copying claim of issued patent      135 

Time for        133, 135 

Annual indexes of patents 11 

Annual report of the Commissioner 14 

Apostille on assignment       261 

Appeals to Board of Patent Appeals 

and Interferences 134 

Fee   41(a)6, 134 

Hearing of  7 

Reexamination proceedings 306 

Appeals to Court of Appeals for the Federal Circuit   141 

Certificate of decision of Court recorded in the 

Patent and Trademark Office   144 

Determination of Appeal; revision of decision     144 

From Board of Patent Appeals and Interferences      141 

Grounds of decision to be furnished court 143 

Notice of appeal        142 

Proceedings on appeal     143 

Applicant for foreign patent, license required      184 

Applicant for international application       373 

Applicant, notified of interference   135 

Application: 

Abandonment of, by failure to prosecute       133 

Assignment of     261 

Confidential while pending  122 

Continuing  120 

Description; specification and claim    112 

Divisional  121 

Drawings        113 

Effect of defective execution     26 

Effective as of date of earliest foreign application 

in certain cases        119 

Examination of invention        131 

(Application:) 

Fee on filing     41(a)1, 111 

For deceased or insane inventors        117 

May be made by legal representative of 

deceased or incapacitated inventor  117 

Must be made within specified time after 

foreign application for right of priority 119 

Oath of applicant (See Oath in patent application) 

Owned by Government   267 

Provisional   111 

Reissue       251 

Secrecy order     181 

What to contain       111 

When filed by other than inventor 118, 121 

Appointments, how made      3 

Arbitration of interferences    135 

Arbitration, voluntary      294 

Article patented marked with number of patent     287 

Assignee: 

May file application in certain cases     118 

May file divisional application       121 

May file reissue application    251 

Patent may be issued to       152 

Assignments, patent   261 

Establishing prima facie execution of     261 

Fees for recording  41(a)10 

Must be recorded in Patent and Trademark Office 

to issue patent to assignee   152 

Patent may issue to assignee    152 

Recording in Patent and Trademark Office        261 

Assistant Commissioners: 

How appointed and duties          3 

Member of Board       7 

Assistant Secretary of Commerce       3 

Attorney fees in infringement suit  285 

Attorneys and agents: 

May be refused recognition for misconduct  32 

Petition to District Court, DC       32 

Rules for recognition made by Commissioner   31 

Suspension or exclusion from practice     31, 32 

Unauthorized practitioners   33 


INDEX OF PATENT LAWS - B 


Bars to grant of a patent 102, 103 

Benefit of earlier filing date in foreign country 119 

Benefit of earlier filing date in United States       120 

Best mode required  112 

Bill in equity (See Civil action) 

Board of Patent Appeals and Interferences, 

how constituted         7 


INDEX OF PATENT LAWS - C 


Certificate of correction: 

Applicant's mistake   255 

Fee for applicant's mistake   41(a)8 

Office mistake      254 

Certified copies: 

Fee for certification     41(a)11 

Of drawings and specifications of patents issued        10 

Of records, furnished to Court of Appeals for 

the Federal Circuit in appeals      143 

Citation of prior art in patent       301 

Citizenship required in oath    115 

Civil action: 

Election of in case of interference   141 

Infringement    291 

In case of interference       146 

Jurisdiction, plurality of parties, foreign party 146 

To obtain patent        145 

Claim of patent: 

Independent or dependent        41, 112 

Independent or dependent, validity  282 

Invalid, effect of  253 

Invalid, suits on patent with     288 

Notice of rejection   132 

Too extensive or narrow, remedy       251 

What to cover     112 

Classification of patents 9 

Clerk of United States Court may summon witness in 

Interference cases  24 

Must notify Commissioner of patent suits        290 

Commerce, Department of, Patent and 

Trademark Office in   1 

Commerce, Secretary of: 

Appointments by       3 

Commissioner under direction of       6 

May vest functions  3 

To approve rules        6, 31 

Commissioner: 

Annual report to Congress 14 

Duties of 6 

How appointed     3 

May disbar attorneys    32 

May establish charges     41 

May make rules for taking affidavits and depositions    23 

Member of Board       7 

Reexamination order   304 

Shall cause examination to be made  131 

To establish regulations        6 

To furnish court with grounds of decision, 

on appeal 143 

To have charge of property  6 

(Commissioner:) 

To prescribe rules and regulations governing 

recognition of attorneys and agents   31 

To sign patents or have name printed thereon and 

attested        153 

To superintend grant of patents       6 

Vacancy in office 3 

Commonly owned invention and reference 

subject matter      103 

Compensation, right to because of secrecy order       183 

Composition of matter: 

Patentable  101 

Specimens of ingredients may be required        114 

Concealment of records      18 U.S.C. 2071 

Confidential status of application  122, 205 

Continuing application      120 

Contributory infringement 271 

Copies of records, fees       41 

Correction of inventors in patent 256 

Correction of letters patent    254, 255 


INDEX OF PATENT LAWS - D 


Damages for infringement        284 

Day of taking any action or paying any fee falling 

on Saturday, Sunday, or holiday       21 

Death or incapacity of inventor       117 

Decisions in patent cases, printing of      11 

Declaration in lieu of oath   25 

Dedication of term  253 

Defective execution of documents, effect of   26 

Defenses in action for infringement   282 

Definitions   100, 351 

Deposit with United States Postal Service 21 

Depositions, Commissioner may establish rules for 23 

Deputy Commissioner   3 

Member of Board       7 

Description of invention        112 

Design patents: 

Double recovery, not allowed    289 

Fees    41(a)3 

For what granted        171 

Liability for infringement of     289 

Penalty for unauthorized use of patented design       289 

Prior foreign applications  172 

Right of priority 172 

Subject to same provisions as other patents   171 

Term of       173 

Unauthorized use of   289 

Designated office 363, 366, 367, 371, 372 

Disbarment of attorneys and agents  32 

Disclaimer: 

Fee   41(a)5 

How filed and by whom     253 

(Disclaimer:) 

Must be filed before commencement of suit 

to recover costs        288 

Nature of 253 

District Court for District of Columbia: 

Jurisdiction    146 

Review of disbarment of attorneys and agents    32 

Division of application       121 

Division of patent on reissue     251 

Drawing: 

Attached to patent  154 

Keeping of  1 

Part of patent      154 

Printing of   11 

When necessary      113 

Duties of Commissioner      6 


INDEX OF PATENT LAWS - E 


Elected office      371, 372 

Employees of Patent and Trademark Office        3 

How appointed     3 

Restrictions on as to interest in patents 4 

English language        361 

Entry into national phase in United States  371 

Error in naming inventors 116 

Establishment of date of invention by reference 

to knowledge or use in foreign country      104 

Establishment, Patent and Trademark Office  1 

Examination: 

Applicants shall be notified of rejection on    132 

To be made of application and alleged invention       131 

Examiner-in-chief: 

Duties of 7 

How appointed     3 

Pay rate        3 

Qualifications      7 

Temporary 7 

Exchange of Patent and Trademark Office Publications 

for other publications      11 

Exchange of printed copies of patents with 

foreign countries 12 

Executors, administrators or guardians      117 

Extension of patent term        155 

Extension of time to reply fee      41(a)8 


INDEX OF PATENT LAWS - F 


Falsely making or labeling articles as patented       292 

Federal agency, defined       200 

Federal Assistance, inventions made with: 

Confidentiality       205 

(Federal assistance, inventions made with:) 

Definitions   201 

Disposition of rights     202 

Domestic and foreign protection of federally 

owned inventions        207 

Educational awards  212 

March-in rights       203 

Policy and objective of       200 

Precedence of chapter over other Acts     210 

Preference for United States industry     204 

Regulations governing Federal licensing       208 

Relationship to antitrust laws      211 

Restrictions on licensing of federally 

owned inventions        209 

Uniform clauses and regulations       206 

Fees: 

Amount of 41 

For attorney awarded by court     285 

For records, publications, and services not specified 

in statute  41 

How paid and refunded     42 

Independent inventor, 50% reduction   41(h) 

International     361, 376 

Nonprofit organization, 50% reduction     41(h) 

Payable to Commissioner       42(a) 

Small business, 50% reduction     41(h) 

Small entity, 50% reduction   41(h) 

To witness interference cases     24 

Filing application by other than inventor 118 

Filing date requirements        111 

Filing fee: Amount of     41(a)1 

Foreign applications: 

License to file required        184 

Penalty for filing without license  185, 186 

Foreign countries, exchange of printed 

 copies of patents with       12 

Foreign country, knowledge of use in, not used to 

establish date of invention   102, 104 

Foreign patentee: 

Jurisdiction    293 

Service       293 

Foreign patents: 

Copies of, exchanged for United States patents      12 

Prior, effect on United States application 

for patent  102 

Foreign priority        119(a)-(d), 365, 373 

Fraudulent statements     18 U.S.C. 1001 

Funding agreement, defined  200 


INDEX OF PATENT LAWS - G 


Government interests in patents       267 



INDEX OF PATENT LAWS - H 


Holiday, time for action expiring on    21 


INDEX OF PATENT LAWS - I 


Importation of products made by a patented process  295 

Improvements, patents may be granted for        101 

Indexes of patents and patentees, printing of     11 

Infringement, patent: 

Action for  281 

Attorney fees     285 

By United States, time limitation in suit for     286 

Clerk of court to notify Patent and 

Trademark Office of suit        290 

Contributory    271 

Damages for   284 

Defenses in suit for    282 

Defined       271 

Design patent     289 

Injunction  283 

Notice of, necessary to recovery of damages   287 

Pleading defense and special matters to be 

proved in suit      282 

Suit for, when a claim is invalid 288 

Temporary presence in United States   272 

Time limitation       286 

Injunctions may be granted by court having 

jurisdiction    283 

Insane persons, patent applications of      117 

Interference, patent: 

Agreements, between parties, relating to 

termination, to be filed in Patent and 

Trademark Office        135 

Appeal to court       141 

Arbitration   135 

Determination of priority 102, 135 

Parties to be notified of 135 

Review of decision by civil action  145, 146 

Rules for taking testimony  23 

International application 351, 365, 

366, 367, 375 

Fees    376 

National phase in United States       371 

Priority rights       365 

Interfering patent: 

How set aside     291 

Jurisdiction, plurality of parties, 

foreign party     146, 291 

Relief against      291 

International Bureau    351, 361, 362, 371 

International Preliminary Examining 

Authority 362, 364, 368 

International Searching Authority 351, 362, 364, 368 

International studies and program funds       6 

Intervening rights on reissue     252 

Invalid patent claim disclaimer       288 

Invalidity of term extension    282 

Invention date as affected by activity abroad     104 

Invention, defined  100 

Invention made abroad     104 

Inventions in outer space 105 

Inventions patentable     101 

Inventions previously patented abroad     102 

Inventive step      103 

Inventor: 

Correction of patent    256 

Death or incapacity   117 

May obtain patent 101 

Oath for joint      116 

Refuses to sign       118 

To make application   111 

Inventor's certificate as reference   102 

Inventor's certificate priority right     119 

Issue of patent       151 

Issue fee 41 

If not paid within three months, patent withheld        151 

Nonpayment  41, 151 

Payment of  151 


INDEX OF PATENT LAWS - J 


Joint inventors       116, 256 

Joint owners    262 

Jurisdiction of District Court for District of Columbia       32 


INDEX OF PATENT LAWS - K 


Knowledge or use in foreign country 

no bar to patent        102 


INDEX OF PATENT LAWS - L 


Legal representative of dead or 

incapacitated inventor      117 

Liability of States   296 

Libraries, public, copies of patents for        13, 41 

Library       8 

License for foreign filing  184 

Limitation on damages     286 


INDEX OF PATENT LAWS - M 


Machines patentable   100 

Maintenance fees        41(b) 

Late payment      41(c) 

Manufactures patentable       101 

Marking articles falsely as patented    292 

Marking articles patented 287 

Misjoinder of inventor      116, 202, 256 

Mistake in patent, certificate thereof issued     254, 255 

Model, shall be furnished if required     114 

Money: 

Paid by mistake or in excess, refunded      42 

Received for fees, etc, to be paid into Treasury        42 

Multiple dependent claim        112 

Fee   41 

Mutilation of records     18 U.S.C. 2071 


INDEX OF PATENT LAWS - N 


National stage of international application   371, 372, 373 

New matter inadmissible in reissue  251 

New matter, may not be introduced by amendment      132 

Nonjoinder of inventor      256 

Nonobviousness      103 

Nonprofit organization, defined       200 

Nonresident patentee    293 

Notice as regards patents: 

As to proof in infringement suits 282 

Of allowance of patent      151 

Of appeal to the Court of Appeals for 

the Federal Circuit   142, 143 

Of interference       135 

Of patent suit, decision to be given Patent 

and Trademark Office by clerk of court      290 

Of rejection of an application      132 

Of suit to be entered on file of patent       290 

To the public by Federal agency       209 

To the public that invention is patented        287 

Novelty       102 


INDEX OF PATENT LAWS - O 


Oath in patent application  115, 152 

Before whom taken in foreign countries      25, 115 

Before whom taken in the United States      115 

Declaration in lieu of      25 

Joint inventors       116 

Must be made by inventor, if living   115 

Requirements of       115 

To be made by legal representative if 

inventor is dead or incapacitated 117 

Obviousness   103 

Officer of Patent and Trademark Office 

may attest patents  153 

Officers and employees: 

Of Patent and Trademark Office      3 

Of Patent and Trademark Office, restrictions 

on as to interests in patents     4 

Official Gazette: 

Exchange for publications 11 

Printing and distribution of    11 

Owners, joint     262 

Ownership assignment    261 


INDEX OF PATENT LAWS - P 


Paris Convention        119 

Patent and Trademark Office: 

In Department of Commerce 1 

Library       8 

Printing        11 

Rules, authority for    6 

Seal of       2 

Patent Cooperation Treaty: 

Definitions   351 

Patent fees   41 

Disposition of      42 

Patent laws, printing of        11 

Patent pending, false marking as        292 

Patent term extension     155 

Patent term extension application 156 

Patentability, conditions for     102, 103 

Patentable inventions     101 

Patented article, marked as such        287 

Patentee: 

Defined       100 

Notified of interference        135 

Patents: 

Application for       111 

Assignment of     261 

Based on international application  375 

Certified copies of   10 

Classification of 9 

Contents and duration of        154 

Copies supplied to public libraries   13, 41 

Copying claim of        135 

Date, duration, and form        154 

Design (See Design patents) 

Effect of adverse interference decision       135 

Exchange of printed copies with foreign countries 12 

Fee on issuing      41 

Filing application in foreign country     184 

For what granted        101 

Foreign knowledge or use no bar to grant of   102 

How issued, attested, and recorded  153 

May be granted to assignee  152 

May be withheld in certain cases        181 

Obtainable by civil action  145 

Personal property 261 

Presumption of validity       282 

Price of copies       41(a)9 

Printing of   11 

Reissuing of, when defective    251 

Rights of invention made with 

federal   assistance    200 - 212 

Restrictions on officers and employees of 

Patent and Trademark Office as to interest in     4 

(Patents:) 

Surrender of, to take effect on reissue       251 

Term    154, 155, 155A, 156 

Term extension      155, 156 

Term restoration        155A 

Time of issue, payment of issue fee   151 

To be authenticated by seal of Patent 

and Trademark Office    2 

When to issue     151 

Withheld for nonpayment of issue fee    151 

Patent rights in inventions made with 

Federal assistance  200 - 212 

Confidentiality       205 

Definitions   201 

Disposition of rights     202 

Domestic and foreign protection of federally 

owned inventions        207 

Educational awards  212 

March-in rights       203 

Policy and objective of       200 

Precedence of chapter over other Acts     210 

Preference for United States industry     204 

Regulations governing federal licensing       208 

Relationship to antitrust laws      211 

Restrictions on licensing of federally 

owned inventions        209 

Uniform clauses and regulations       206 

Payment to international intergovernmental 

organizations     6 

Period for response   21, 133 

Photolithography: Headings of drawings printed      11 

Plant patents: 

Claim     162, 164 

Description   162, 163 

Fees    41 

Nature of right       163 

Plants patentable 161 

Secretary of Agriculture to furnish information 

and detail employees    164 

Pleading and proof in action for infringement     282 

Postal Service deposit      21 

Practical application, defined      200 

Presumption of product made by patented process       295 

Printed publication bar to a patent   102 

Presumption of validity of patents  282 

Printing: 

Decisions in patent cases 11 

Of papers filed       22 

Patent and Trademark Office   11 

Printing headings of drawings by Patent and 

Trademark Office        11 

Prior art, citation of      301 

Prior patenting or publication bar to patent    102 

Priority, foreign 119, 365 

Priority of invention     102 

Priority of invention, determined by Board 

of Patent Appeals and Interferences   135 

Priority, right of, under treaty or law       119 

For design applications       172 

Process defined       100 

Process Patent Amendment Act of 1988    287 

Process patentable  101 

Product made by patent process      295 

Property of Patent and Trademark Office       1, 6 

Public use or sale  102 

Of invention bar to a patent    102 

Publication of international application effect       374 

Publications regarding patents and trademarks     11 


INDEX OF PATENT LAWS - R 


Receiving Office        351, 361, 364, 367, 368 

Recording of assignments        261 

Records of Patent and Trademark Office: 

Keeping of  1 

Reexamination order by Commissioner   304 

Reexamination procedure 

Appeal      306 

Certificate of patentability, unpatentability, and 

claim cancellation  307 

Conduct of reexamination proceedings    305 

Determination of issue by Commissioner      303 

Determination of new question     303 

Request       302 

Special dispatch        305 

Reexamination to be made after 

first rejection, if desired   132 

References, to be cited on examination      132 

Refund of money paid by mistake or in excess    42 

Reissue of patents: 

Application fee       41(a)4 

Application may be made by assignee in certain cases    251 

By reason of defective claims     251 

Effect of 252 

For unexpired term of original patent     251 

Intervening rights  252 

Of defective patents    251 

To contain no new matter        251 

Rejection, applicant shall be notified of reasons for     132 

Remedy for infringement of patent 281 

Removal of records  18 U.S.C. 2071 

Report to Congress, annual  14 

Request for reexamination proceeding    302 

Restoration of patent     155A 

Restrictions on officers and employees of Patent and 

Trademark Office as to interest in patents  4 

Revival if delay unavoidable    133 

Right of foreign priority 365 

Right to compensation because of secrecy order      183 

Rules for taking testimony, Commissioner to establish     23 

Rules of practice: 

Authority for     6 

Printing of   11 


INDEX OF PATENT LAWS - S 


Saturday, time for action expiring on     21 

Seal of Patent and Trademark Office   2 

Secrecy of applications       122 

Secrecy of certain inventions     181 - 188 

Secrecy of international application    368 

Secrecy order     181 

Small business firm, defined    200 

Specification(s): 

Contents of   112 

If defective, reissue to correct        251 

Keeping of  1 

Part of patent      154 

Printing of   11, 41 

Uncertified copies, price of    41 

Specimens, may be required  114 

Statutory invention registration        157 

Subpoenas to witnesses      24 

Suit against the United States      286 

Suit in equity (See Civil action) 

Sunday, time for action expiring on   21 

Surcharge for later filing of fee or oath 111 


INDEX OF PATENT LAWS - T 


Term extension: 

For delays due to interference, secrecy orders, and/or 

appellate review        154 

Regulatory review 156 

Term of patent: 

Design      173 

Disclaimer of     253 

Extension 155, 156 

Period      154 

Restoration   155A 

Testimony, rules for taking   23 

Time: 

Expiring on Saturday, Sunday, or holiday        21 

For payment of issue fee        151 

For taking action in Government cases     267 

Limitation on damages     286 

Within which action must be taken 133 

Title of invention  154 

Trademark fees      42(c) 

Trademarks, reference to        1, 2, 6, 11 

Trademark Trial and Appeal Board pay rate 3 

Translation error in international application      375 


INDEX OF PATENT LAWS - U 


Unauthorized disclosure       182 

Unauthorized person may not lawfully assist persons in 

transaction of business before the Office 33 

United States as designated office  363 

United States, defined      100 

Unpatented article, penalty for deceptive marking 292 

Use in foreign countries, no bar to grant of patent   102 


INDEX OF PATENT LAWS - V 


Verified translation requirement        372 

Voluntary arbitration     294 


INDEX OF PATENT LAWS - W 


Withdrawal of international application       366 

Withholding of patent     181 

Witness: 

Failing to attend or refusing to testify        24 

Fees of, interference cases   24 

In interference summoned by clerk of United States 

court     24 

When in contempt, punishment    24 


Contents 

Title 37 - Code of Federal Regulations 
Patents, Trademarks, and Copyrights 

CHAPTER 1-PATENT AND TRADEMARK OFFICE, DEPARTMENT OF COMMERCE 

SUBCHAPTER A - GENERAL 

PATENTS 

Part 

1       Rules of practice in patent cases 

3       Assignment, Recording, and Rights of Assignee 

5       Secrecy of certain inventions and licenses to export and 
        file applications in foreign countries 

7       Register of Government interests in patents 

Index  I - Rules relating to patents 

PRACTICE BEFORE THE PATENT AND TRADEMARK OFFICE 

10      Representation of others before the Patent and 
        Trademark Office 

Index III -   Rules relating to practice before the Patent 
and Trademark Office 

15      Service of Process 

15a     Testimony by Employees and the Production of Documents 
        in Legal  Proceedings 

SUBCHAPTER C - PROTECTION OF FOREIGN MASK WORKS 

150     Requests for Presidential proclamations pursuant to 
        17 U.S.C. 902(a)(2) 


SUBCHAPTER A - GENERAL 

PART 1 - RULES OF PRACTICE IN PATENT CASES 

Subpart A - General Provisions 

GENERAL INFORMATION AND CORRESPONDENCE 

Sec 

1.1     All communications to be addressed to the Commissioner of 
        Patents and Trademarks. 

1.2     Business to be transacted in writing. 

1.3     Business to be conducted with decorum and courtesy. 

1.4     Nature of correspondence and signature requirements. 

1.5     Identification of application, patent, or  registration. 

1.6     Receipt of correspondence. 

1.7     Times for taking action; expiration on Saturday, Sunday, 
        or Federal holiday. 

1.8     Certificate of mailing or transmission. 

1.9     Definitions. 

1.10    Filing of papers and fees by "Express Mail" with certificate. 
RECORDS AND FILES OF THE PATENT AND TRADEMARK  OFFICE 

1.11    Files open to the public. 

1.12    Assignment records open to public inspection. 

1.13    Copies and certified copies. 

1.14    Patent applications preserved in secrecy. 

1.15    Requests for identifiable records. 

FEES AND PAYMENT OF MONEY 

1.16    National application filing fees. 

1.17    Patent application processing fees. 

1.18    Patent issue fees. 

1.19    Document supply fees. 

1.20    Post-issuance fees. 

1.21    Miscellaneous fees and charges. 

1.22    Fees payable in advance. 

1.23    Method of payment. 

1.24    Coupons. 

1.25    Deposit accounts. 

1.26    Refunds. 

1.27    Statement of status as small entity. 

1.28    Effect on fees of failure to establish status, or change 
        status, as a small entity. 

Subpart B - National Processing Provisions 

PROSECUTION OF APPLICATION AND APPOINTMENT OF ATTORNEY OR AGENT 

1.31    Applicants may be represented by a registered attorney or agent. 
1.32    [Reserved] 

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

1.34    Recognition for representation. 

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

WHO MAY APPLY FOR A PATENT 

1.41    Applicant for patent. 

1.42    When the inventor is dead. 

1.43    When the inventor is insane or legally incapacitated. 

1.44    Proof of authority. 

1.45    Joint inventors. 

1.46    Assigned inventions and patents. 

1.47    Filing when an inventor refuses to sign or cannot be reached. 
1.48    Correction of inventorship. 

THE  APPLICATION 

1.51    General requisites of an application. 

1.52    Language, paper, writing, margins. 

1.53    Application number, filing date, and completion of application. 
1.54    Parts of application to be filed together; filing receipt. 
1.55    Claim for foreign priority. 

1.56    Duty to disclose information material to patentability. 

1.57    [Reserved] 

1.58    Chemical and mathematical formulas and tables. 

1.59    Papers of application with filing date not to be returned. 
1.60    Continuation or divisional application for invention disclosed 
        in a prior nonprovisional application. 

1.61    [Reserved] 

1.62    File wrapper continuing procedure. 

OATH OR DECLARATION 

1.63    Oath or declaration. 

1.64    Person making oath or declaration. 

1.66    Officers authorized to administer oaths. 

1.67    Supplemental oath or declaration. 

1.68    Declaration in lieu of oath. 

1.69    Foreign language oaths and declarations. 

1.70    [Reserved] 

SPECIFICATION 

1.71    Detailed description and specification of the invention. 

1.72    Title and abstract. 

1.73    Summary of the invention. 

1.74    Reference to drawings. 

1.75    Claim(s). 

1.77    Arrangement of application elements. 

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

1.79    Reservation clauses not permitted. 

THE  DRAWINGS 

1.81    Drawings required in patent application. 

1.83    Content of drawing. 

1.84    Standards for drawings. 

1.85    Corrections to drawings. 

1.88    [ Removed and Reserved] 

MODELS,  EXHIBITS,  SPECIMENS 

1.91    Models not generally required as part of application or patent. 
1.92    Model or exhibit may be required. 

1.93    Specimens. 

1.94    Return of models, exhibits, or specimens. 

1.95    Copies of exhibits. 

1.96    Submission of computer program listings. 

INFORMATION DISCLOSURE STATEMENT 

1.97    Filing of information disclosure statement. 

1.98    Content of information disclosure statement. 

1.99    [Reserved] 

EXAMINATION OF APPLICATIONS 

1.101   Order of examination. 

1.102   Advancement of examination. 

1.103   Suspension of action. 

1.104   Nature of examination; examiner's action. 

1.105   Completeness of examiner's action. 

1.106   Rejection of claims. 

1.107   Citation of references. 

1.108   Abandoned applications not cited. 

1.109   Reasons for allowance. 

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

ACTION  BY APPLICANT AND FURTHER CONSIDERATION 

1.111   Reply by applicant or patent owner. 

1.112   Reconsideration. 

1.113   Final rejection or action. 

AMENDMENTS 

1.115   Amendment. 

1.116   Amendments after final action. 

1.117   Amendment and revision required. 

1.118   Amendment of disclosure. 

1.119   Amendment of claims. 

1.121   Manner of making amendments. 

1.122   Entry and consideration of amendments. 

1.123   Amendments to the drawing. 

1.124   Amendment of amendments. 

1.125   Substitute specification. 

1.126   Numbering of claims. 

1.127   Petition from refusal to admit amendment. 

TRANSITIONAL PROVISIONS 

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

AFFIDAVITS OVERCOMING REJECTIONS 

1.131   Affidavit or declaration of prior invention to overcome 
        cited patent or publication. 

1.132   Affidavits or declarations traversing grounds of rejection. 
INTERVIEWS 

1.133   Interviews. 

TIME FOR RESPONSE BY APPLICANT ABANDONMENT OF APPLICATION 

1.134   Time period for response to an Office action. 

1.135   Abandonment for failure to respond within time period. 

1.136   Filing of timely responses with petition and fee for extension 
        of time and extensions of time for cause. 

1.137   Revival of abandoned application. 

1.138   Express abandonment. 

1.139   Revival of provisional application. 

JOINDER OF INVENTIONS IN ONE APPLICATION; RESTRICTION 

1.141   Different inventions in one national application. 

1.142   Requirement for restriction. 

1.143   Reconsideration of requirement. 

1.144   Petition from requirement for restriction. 

1.145   Subsequent presentation of claims for different invention. 
1.146   Election of species. 

DESIGN PATENTS 

1.151   Rules applicable. 

1.152   Design drawings. 

1.153   Title, description and claim, oath or declaration. 

1.154   Arrangement of specification. 

1.155   Issue and term of design patents. 

PLANT PATENTS 

1.161   Rules applicable. 

1.162   Applicant, oath or declaration. 

1.163   Specification. 

1.164   Claim. 

1.165   Plant drawings. 

1.166   Specimens. 

1.167   Examination. 

REISSUES 

1.171   Application for reissue. 

1.172   Applicants, assignees. 

1.173   Specification. 

1.174   Drawings. 

1.175   Reissue oath or declaration. 

1.176  Examination of reissue. 

1.177   Reissue in divisions. 

1.178   Original patent. 

1.179   Notice of reissue application. 

PETITIONS AND ACTIONS BY THE COMMISSIONER 

1.181   Petition to the Commissioner. 

1.182   Questions not specifically provided for. 

1.183   Suspension of rules. 

1.184   Reconsideration of cases decided by former 
        Commissioners. 

APPEAL TO THE BOARD OF PATENT APPEALS AND INTERFERENCES 

1.191   Appeal to Board of Patent Appeals and Interferences. 

1.192   Appellant's brief. 

1.193   Examiner's answer. 

1.194   Oral hearing. 

1.195   Affidavits or declarations after appeal. 

1.196   Decision by the Board of Patent Appeals and Interferences. 
1.197   Action following decision. 

1.198   Reopening after decision. 

MISCELLANEOUS PROVISIONS 

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

PROTESTS AND PUBLIC USE PROCEEDINGS 

1.291   Protests by the public against pending applications. 

1.292   Public use proceedings. 

1.293   Statutory invention registration. 

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

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

1.296   Withdrawal of request for publication of statutory invention 
        registration. 

1.297   Publication of statutory invention registration. 

REVIEW OF PATENT AND TRADEMARK OFFICE DECISIONS BY COURT 

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

1.302   Notice of appeal. 

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

1.304   Time for appeal or civil action. 

ALLOWANCE AND ISSUE OF PATENT 

1.311   Notice of Allowance. 

1.312   Amendments after allowance. 

1.313   Withdrawal from issue. 

1.314   Issuance of patent. 

1.315   Delivery of patent. 

1.316   Application abandoned for failure to pay issue fee. 

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

1.318   Notification of national publication of a patent based on an 
        international application. 

DISCLAIMER 

1.321   Statutory disclaimers, including terminal disclaimers. 

CORRECTION OF ERRORS IN PATENT 

1.322   Certificate of correction of Office mistake. 

1.323   Certificate of correction of applicant's mistake. 

1.324   Correction of inventorship in patent. 

1.325   Other mistakes not corrected. 

ARBITRATION  AWARDS 

1.331   [Reserved] 

1.332   [Reserved] 

1.333   [Reserved] 

1.334   [Reserved] 

1.335   Filing of notice of arbitration awards. 

AMENDMENT OF RULES 

1.351   Amendments to rules will be published. 

1.352   Publication of notice of proposed amendments. 

MAINTENANCE  FEES 

1.362   Time for payment of maintenance fees. 

1.363   Fee address for maintenance fee purposes. 

1.366   Submission of maintenance fees. 

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

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

Subpart C - International Processing Provisions 

GENERAL INFORMATION 

1.401   Definitions of terms under the Patent Cooperation Treaty. 
1.412   The United States Receiving Office. 

1.413   The United States International Searching Authority. 

1.414   The United States Patent and Trademark Office as a Designated 
        Office or Elected Office. 

1.415   The International Bureau. 

1.416   The United States International Preliminary Examining 
        Authority. 

WHO MAY FILE AN INTERNATIONAL APPLICATION 

1.421   Applicant for international application. 

1.422   When the inventor is dead. 

1.423   When the inventor is insane or legally incapacitated. 

1.424   Joint inventors. 

1.425   Filing by other than inventor. 

THE INTERNATIONAL APPLICATION 

1.431   International application requirements. 

1.432   Designation of States and payment of designation fees. 

1.433   Physical requirements of international application. 

1.434   The request. 

1.435   The description. 

1.436   The claims. 

1.437   The drawings. 

1.438   The abstract. 

FEES 

1.445   International application filing, processing, and search fees. 
1.446   Refund of international application filing and processing fees. 
PRIORITY 

1.451   The priority claim and priority document in an international 
        application. 


REPRESENTATION 

1.455   Representation in international applications. 

TRANSMITTAL OF RECORD COPY 

1.461   Procedures for transmittal of record copy to the 
        International Bureau. 

TIMING 

1.465   Timing of application processing based on the priority date. 
1.468   Delays in meeting time limits. 

AMENDMENTS 

1.471   Corrections and amendments during international 
        processing. 

1.472   Changes in person, name, or address of applicants and 
        inventors. 

UNITY OF INVENTION 

1.475   Unity of invention before the International Searching Authority, 
        the International Preliminary Examining Authority, and during 
        the national stage. 

1.476   Determination of unity of invention before the International 
        Searching Authority. 

1.477   Protest to lack of unity of invention before the International 
        Searching Authority. 

INTERNATIONAL PRELIMINARY EXAMINATION 

1.480   Demand for international preliminary examination. 

1.482   International preliminary examination fees. 

1.484   Conduct of international preliminary examination. 

1.485   Amendments by applicant during international preliminary 
        examination. 

1.487   [Reserved] 

1.488   Determination of unity of invention before the International 
        Preliminary Examining Authority. 

1.489   Protest to lack of unity of invention before the International 
        Preliminary Examining Authority. 

NATIONAL  STAGE 

1.491   Entry into the national stage. 

1.492   National stage fees. 

1.494   Entering the national stage in the United States of America 
        as a Designated Office. 

1.495   Entering the national stage in the United States of America 
        as an Elected Office. 

1.496   Examination of international applications in the national 
        stage. 

1.497   Oath or declaration under 35 U.S.C. 371(c)(4). 

1.499   Unity of invention during the national stage. 

Subpart D - Reexamination of Patents 

CITATION OF PRIOR ART 

1.501   Citation of prior art in patent files. 

REQUEST FOR REEXAMINATION 

1.510   Request for reexamination. 

1.515   Determination of the request for reexamination. 

1.520   Reexamination at the initiative of the Commissioner. 

REEXAMINATION 

1.525   Order to reexamine. 

1.530   Statement and amendment by patent owner. 

1.535   Reply by requester. 

1.540   Consideration of responses. 

1.550   Conduct of reexamination proceedings. 

1.552   Scope of reexamination in reexamination proceedings. 

1.555   Information material to patentability in reexamination 
        proceedings. 

1.560   Interviews in reexamination proceedings. 

1.565   Concurrent office proceedings. 

CERTIFICATE 

1.570   Issuance of reexamination certificate after reexamination 
        proceedings. 

Subpart E - Interferences 

1.601   Scope of rules, definitions. 

1.602   Interest in applications and patents involved in an 
        interference. 

1.603   Interference between applications; subject matter of the 
        interference. 

1.604   Request for interference between applications by an 
        applicant. 

1.605   Suggestion of claim to applicant by examiner. 

1.606   Interference between an application and a patent; subject 
        matter of the interference. 

1.607   Request by applicant for interference with patent. 

1.608   Interference between an application and a patent prima 
        facie showing by applicant. 

1.609   Preparation of interference papers by examiner. 

1.610   Assignment of interference to examiner-in-chief, time 
        period for completing interference. 

1.611   Declaration of interference. 

1.612   Access to applications. 

1.613   Lead attorney, same attorney representing different parties 
        in an interference, withdrawal of attorney or agent. 

1.614   Jurisdiction over interference. 

1.615   Suspension of ex parte prosecution. 

1.616   Sanctions for failure to comply with rules or order. 

1.617   Summary judgment against applicant. 

1.618   Return of unauthorized papers. 

1.621   Preliminary statement, time for filing, notice of filing. 
1.622   Preliminary statement, who made invention, where invention 
        made. 

1.623   Preliminary statement; invention made in United States. 

1.624   Preliminary statement; invention made abroad. 

1.625   Preliminary statement; derivation by an opponent. 

1.626   Preliminary statement; earlier application. 

1.627   Preliminary statement; sealing before filing, opening of 
        statement. 

1.628   Preliminary statement; correction of error. 

1.629   Effect of preliminary statement. 

1.630   Reliance on earlier application. 

1.631   Access to preliminary statement, service of preliminary 
        statement. 

1.632   Notice of intent to argue abandonment, suppression, or 
        concealment by opponent. 

1.633   Preliminary motions. 

1.634   Motion to correct inventorship. 

1.635   Miscellaneous motions. 

1.636   Motions, time for filing. 

1.637   Content of motions. 

1.638   Opposition and reply, time for filing opposition and reply. 
1.639   Evidence in support of motion, opposition, or reply. 

1.640   Motions, hearing and decision, redeclaration of interference, 
        order to show cause. 

1.641   Unpatentability discovered by examiner-in-chief. 

1.642   Addition of application or patent to interference. 

1.643   Prosecution of interference by assignee. 

1.644   Petitions in interferences. 

1.645   Extension of time, late papers, stay of proceedings. 

1.646   Service of papers, proof of service. 

1.647   Translation of document in foreign language. 

1.651   Setting times for discovery and taking testimony, parties 
        entitled to take testimony. 

1.652   Judgment for failure to take testimony or file record. 

1.653   Record and exhibits. 

1.654   Final hearing. 

1.655   Matters considered in rendering a final decision. 

1.656   Briefs for final hearing. 

1.657   Burden of proof as to date of invention. 

1.658   Final decision. 

1.659   Recommendation. 

1.660   Notice of reexamination, reissue, protest, or litigation. 
1.661   Termination of interference after judgment. 

1.662   Request for entry of adverse judgment; reissue filed by 
        patentee. 

1.663   Status of claim of defeated applicant after interference. 
1.664   Action after interference. 

1.665   Second interference. 

1.666   Filing of interference settlement agreements. 

1.671   Evidence must comply with rules. 

1.672   Manner of taking testimony. 

1.673   Notice of examination of witness. 

1.674   Persons before whom depositions may be taken. 

1.675   Examination of witness, reading and signing transcript of 
        deposition. 

1.676   Certification and filing by officer, marking exhibits. 

1.677   Form of a transcript of deposition. 

1.678   Transcript of deposition must be filed. 

1.679   Inspection of transcript. 

1.682   Official records and printed publications. 

1.683   Testimony in another interference, proceeding, or action. 
1.684   Testimony in a foreign country. 

1.685   Errors and irregularities in depositions. 

1.687   Additional discovery. 

1.688   Use of discovery. 

1.690   Arbitration of interferences. 

Subpart F - Extension of Patent Term 

1.701   Extension of patent term due to prosecution delay. 

1.710   Patents subject to extension of the patent term. 

1.720   Conditions for extension of patent term. 

1.730   Applicant for extension of patent term. 

1.740   Application for extension of patent term. 

1.741   Filing date of application. 

1.750   Determination of eligibility for extension of patent term. 
1.760   Interim extension of patent term under 35 U.S.C. 156(e)(2). 
1.765   Duty of disclosure in patent term extension proceedings. 

1.770   Express withdrawal of application for extension of patent term. 
1.775   Calculation of patent term extension for a human drug, 
        antibiotic drug or human biological product. 

1.776   Calculation of patent term extension for a food additive or 
        color additive. 

1.777   Calculation of patent term extension for a medical device. 
1.778   Calculation of patent term extension for an animal drug product. 
1.779   Calculation of patent term extension for a veterinary 
        biological product. 

1.780   Certificate of extension of patent term. 

1.785   Multiple applications for extension of term of the same 
        patent or of different patents for the same regulatory ] 
        review period for a product. 

1.790   Interim extension of patent term under 35 U.S.C. 156(d)(5). 
1.791   Termination of interim extension granted prior to regulatory 
        approval of a product for commercial marketing or use. 

Subpart G - Biotechnology Invention Disclosures 

DEPOSIT OF BIOLOGICAL MATERIAL 

1.801   Biological material. 

1.802   Need or opportunity to make a deposit. 

1.803   Acceptable depository. 

1.804   Time of making an original deposit. 

1.805   Replacement or supplement of deposit. 

1.806   Term of deposit. 

1.807   Viability of deposit. 

1.808   Furnishing of samples. 

1.809   Examination procedures. 

APPLICATION DISCLOSURES CONTAINING NUCLEOTIDE AND/OR 
AMINO ACID SEQUENCES 

1.821   Nucleotide and/or amino acid sequence disclosures in 
        patent applications. 

1.822   Symbols and format to be used for nucleotide and/or amino 
        acid sequence data. 

1.823   Requirements for nucleotide and/or amino acid sequences 
        as part of the application papers. 

1.824   Form and format for nucleotide and/or amino acid sequence 
        submissions in computer readable form. 

1.825   Amendments to or replacement of sequence listing and 
        computer readable copy thereof. 

Appendix A - Sample Sequence Listing. 

Appendix B - Headings for Information Items in w 1.823. 



Subpart A - General Provisions 

GENERAL  INFORMATION  AND CORRESPONDENCE 


# 1.1   All communications to be addressed to the Commissioner of Patents 
and Trademarks. 

        (a)   All letters and other communications intended for the Patent 
 and Trademark Office must be addressed to "Commissioner of Patents and 
Trademarks,"  Washington, D.C. 20231. When appropriate, a letter should 
also be marked for  the attention of a particular officer or individual. 

        (b)   Letters and other communications relating to international 
applications  during the international stage and prior to the assignment 
of a national serial  number should be additionally marked "Box PCT." 

        (c)   Requests for reexamination should be additionally marked 
"Box  Reexam." 

        (d)   Payments of maintenance fees in patents and other 
communications  relating thereto should be additionally marked "Box M. Fee." 

        (e)   Communications relating to interferences and applications or 
 patents involved in an interference should be additionally marked "BOX 
INTERFERENCE." 
        (f)   All applications for extension of patent term and any 
communications  relating thereto intended for the Patent and Trademark 
Office should be additionally  marked "Box Patent Ext." When appropriate, 
the communication should also be  marked to the attention of a particular 
individual, as where a decision has  been rendered. 

        (g)   All communications relating to pending litigation which are 
required  by the Federal Rules of Civil or Appellate Procedure or by a 
rule or order  of a court to be served on the Solicitor shall be 
hand-delivered to the Office  of the Solicitor or shall be mailed to: 
Office of the Solicitor, P.O. Box 15667,  Arlington, Virginia 22215 or 
such other address as may be designated in writing  in the litigation. All 
other communications to the Office of the Solicitor  should be addressed 
to: Box 8, Commissioner of Patents and Trademarks, Washington,  D.C. 
20231. Any communication which does not involve pending litigation which 
is received at P.O. Box 15667 will not be filed in the Office but will be 
returned.  See ww 1.302(c) and 2.145(b)(3) for filing notice of appeal to 
the U.S. Court  of Appeals for the Federal Circuit. 

        (h)   In applications under section 1(b) of the Trademark Act, 15 
U.S.C.  1051(b), all statements of use filed under section 1(d) of the 
Act, and requests  for extensions of time therefor, should be additionally 
marked "Box ITU." 
        (i)   The filing of all provisional applications and any 
communications  relating thereto should be additionally marked "Box 
Provisional Patent Application." 
        NOTE. - Sections 1.1 to 1.26 are applicable to trademark cases as 
well  as to national and international patent cases except for provisions 
specifically  directed to patent cases. See # 1.9 for definitions of 
"national application''  and "international appli-cation.'' 

        [46 FR 29181, May 29, 1981; para. (d) added, 49 FR 34724, Aug. 31, 
 1984, effective Nov. 1, 1984; para. (e), 49 FR 48416, Dec.12, 1984, 
effective  Feb. 11, 1985, para. (f) added, 52 FR 9394, Mar. 24, 1987; 
para. (g) added,  53 FR 16413, May 9, 1988; 



para.  (h) added, 54 FR 37588, Sept. 11, 1989, effective Nov. 16, 1989; 
para. 
(i) added, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995] 


# 1.2     Business to be transacted in writing. 


        All business with the Patent and Trademark Office should be 
transacted  in writing. The personal attendance of applicants or their 
attorneys or agents  at the Patent and Trademark Office is unnecessary. 
The action of the Patent  and Trademark Office will be based exclusively 
on the written record in the  Office. No attention will be paid to any 
alleged oral promise, stipulation,  or understanding in relation to which 
there is disagreement or doubt. 

# 1.3     Business to be conducted with decorum and 

                courtesy. 

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

# 1.4     Nature of correspondence and signature 

                requirements. 

        (a)   Correspondence with the Patent and Trademark office 
comprises: 
        (1)   Correspondence relating to services and facilities of the 
Office,  such as general inquiries, requests for publications supplied by 
the Office,  orders for printed copies of patents or trademark 
registrations, orders for  copies of records, transmission of assignments 
for recording, and the like,  and 

        (2)   Correspondence in and relating to a particular application 
or  other proceeding in the Office. See particularly the rules relating to 
the  filing, processing, or other proceedings of national applications in 
Subpart  B, ww 1.31 to 1.378; of international applications in Subpart C, 
ww 1.401 to  1.499; of reexamination of patents in Subpart D, ww 1.501 to 
1.570; of interferences  in Subpart E; ww 1.601 to 1.690; of extension of 
patent term in Subpart F,  ww 1.710 to 1.785; and of trademark 
applications ww 2.11 to 2.189. 
        (b)   Since each application file should be complete in itself, a 
separate  copy of every paper to be filed in an application should be 
furnished for each  application to which the paper pertains, even though 
the contents of the papers  filed in two or more applications may be 
identical. 

        (c)   Since different matters may be considered by different 
branches  or sections of the Patent and Trademark Office, each distinct 
subject, inquiry,  or order should be contained in a separate letter to 
avoid confusion and delay  in answering letters dealing with different 
subjects. 

        (d)   Each piece of correspondence, except as provided for in 
paragraphs 
(e) and (f) of this section, filed in a patent or trademark application, 
reexamination  proceeding, patent or trademark interference proceeding, 
patent file or trademark  registration file, trademark opposition 
proceeding, trademark cancellation  proceeding, or trademark concurrent 
use proceeding, which requires a person's  signature, must either: 

        (1)   Be an original, that is, have an original signature 
personally  signed in permanent ink by that person; or 

        (2)   Be a copy, such as a photocopy or facsimile transmission (w 
1.6(d)),  of an original. In the event that a copy of the original is 
filed, the original  should be retained as evidence of authenticity. If a 
question of authenticity  arises, the Patent and Trademark Office may 
require submission of the original. 


        (e)   Correspondence requiring person's signature and relating to 
registration  practice before the Patent and Trademark Office in patent 
cases, enrollment  and disci- plinary investigations, or disciplinary 
proceedings must be submitted  with an original signature personally 
signed in permanent ink by that person. 
        (f)   When a document that is required by statute to be certified 
must  be filed, a copy, including a photocopy or facsimile transmission, 
of the certification  is not acceptable. 

        [24 FR 10332, Dec. 22, 1959; 43 FR 20461, May 11, 1978; para. (a), 
 48 FR 2707, Jan. 20, 1983, effective Feb. 27, 1983; para. (a), 49 FR 
48416,  Dec. 12, 1984, effective Feb. 11, 1985; para. (a)(2), 53 FR 47807, 
Nov. 28,  1988, effective Jan. 1, 1989; paras.   (d)-(f) added, 58 FR 
54494, Oct. 22,  1993, effective Nov. 22, 1993] 


# 1.5     Identification of application, patent, or 

                registration. 

        (a)   No correspondence relating to an application should be filed 
 prior to when notification of the application number is received from the 
Patent  and Trademark Office. When a letter directed to the Patent and 
Trade- 


mark Office concerns a previously filed application for a patent, it must 
identify  on the top page in a conspicuous location, the application 
number (consisting  of the series code and the serial number; e.g., 
07/123,456), or the serial  number and filing date assigned to that 
application by the Patent and Trademark  Office, or the international 
application number of the international application.  Any correspondence 
not containing such identification will be returned to the  sender where a 
return address is available. The  returned correspondence will  be 
accompanied with a cover letter which will indicate to the sender that if 
the returned correspondence is resubmitted to the Patent and Trademark 
Office  within two weeks of the mail date on the cover letter, the 
original date of  receipt of the correspondence will be considered by the 
Patent and Trademark  Office as the date of receipt of the correspondence. 
Applicants may use either  the Certificate of Mailing or Transmission 
procedure under w 1.8 or the Express  Mail procedure under # 1.10 for 
resubmissions of returned correspondence if  they desire to have the 
benefit of the date of deposit in the United States  Postal Service.  If 
the returned correspondence is not resubmitted within the  two-week 
period, the date of receipt of the resubmission will be considered  to be 
the date of receipt of the correspondence. The two-week period to resubmit 
 the returned correspondence will not be extended. If for some reason 
returned  correspondence is resubmitted with proper identification later 
than two weeks  after the return mailing by the Patent and Trademark 
Office, the resubmitted  correspondence will be accepted but given its 
date of receipt. In addition  to the application number, all letters 
directed to the Patent and Trademark  Office concerning applications for 
patent should also state "PATENT APPLICATION,"  the name of the applicant, 
the title of the invention, the date of filing the  same, and, if known, 
the group art unit or other unit within the Patent and  Trademark Office 
responsible for considering the letter and the name of the  examiner or 
other person to which it has been assigned. 

        (b)   When the letter concerns a patent other than for purposes of 
 paying a maintenance fee, it should state the number and date of issue of 
the  patent, the name of the patentee, and the title of the invention. For 
letters  concerning payment of a maintenance fee in a patent, see the 
provisions of  w 1.366(c). 

        (c)   A letter relating to a trademark application should identify 
 it as such and by the name of the applicant and the serial number and 
filing  date of the application. A letter relating to a registered 
trademark should  identify it by the name of the registrant and by the 
number and date of the  certificate. 

        (d)   A letter relating to a reexamination proceeding should 
identify  it as such by the number of the patent undergoing reexamination, 
the reexamination  request control number assigned to such proceeding, 
and, if known, the group  art unit and name of the examiner to which it 
been assigned. 

        (e)   When a paper concerns an interference, it should state the 
names  of the parties and the number of the interference. The name of the 
examiner-in-chief  assigned to the interference (w 1.610) and the name of 
the party filing the  paper should appear conspicuously on the first page 
of the paper. 

        [24 FR 10332, Dec 22, 1959; 46 FR 29181, May 29, 1981; para. (a) 
49  FR 552, Jan. 4, 1984, effective Apr. 1, 1984; para. (a), 49 FR 48416, 
Dec.  12, 1984, effective Feb. 11, 1985; paras. (a) & (b), 53 FR 47807, 
Nov. 28,  1988, effective Jan. 1, 1989;  para. (a) revised, 58 FR 54494, 
Oct. 22, 1993,  effective Nov. 22, 1993] 


# 1.6     Receipt of correspondence. 


        (a)   Date of receipt and Express Mail date of deposit. 
Correspondence  received in the Patent and Trademark Office is stamped 
with the date of receipt  except as follows: 

        (1)   No correspondence is received in the Patent and Trademark 
Office  on Saturdays, Sundays, or Federal holidays within the District of 
Columbia. 
        (2)   Correspondence filed in accordance with w 1.10 will be 
stamped  with the date of deposit as ``Express Mail" with the United 
States Postal Service  unless the date of deposit is a Saturday, Sunday, 
or Federal holiday within  the District of Columbia in which case the date 
stamped will be the next succeeding  day which is not a Saturday, Sunday, 
or Federal holiday within the District  of Columbia. 

        (3)   Correspondence transmitted by facsimile to the Patent and 
Trademark  Office will be stamped with the date on which the complete 
transmission is  received in the Patent and Trademark Office unless that 
date is a Saturday,  Sunday, or Federal holiday within the District of 
Columbia, in which case the  date stamped will be the 




next succeeding day which  is not a Saturday, Sunday, or Federal holiday 
within  the District of Columbia. 

        (b)   Patent and Trademark Office Post Office pouch. Mail placed 
in  the Patent and Trademark Office pouch up to midnight on any day, 
except Saturdays,  Sundays, and Federal holidays within the District of 
Columbia, by the post  office at Washington, D.C., serving the Patent and 
Trademark Office, is considered  as having been received in the Patent and 
Trademark Office on the day it was  so placed in the pouch by the U.S. 
Postal Service. 

        (c)   Correspondence delivered by hand. In addition to being 
mailed,  correspondence may be delivered by hand during hours the Office 
is open to  receive correspondence. 

        (d)   Facsimile transmission. Except in the cases enumerated 
below,  correspondence, including authorizations to charge a deposit 
account, may be  transmitted by facsimile. The receipt date accorded to 
the correspondence will  be the date on which the complete transmission is 
received in the Patent and  Trademark Office, unless that date is a 
Saturday, Sunday, or Federal holiday  within the District of Columbia. See 
w 1.6(a)(3). To facilitate proper processing,  each transmission session 
should be limited to correspondence to be filed in  a single application 
or other proceeding before the Patent and Trademark Office.  The 
application number of a patent or trademark application, the control 
number  of a reexamination proceeding, the interference number of an 
interference proceeding,  the patent number of a patent, or the 
registration number of a trademark should  be entered as a part of the 
sender's identification on a facsimile cover sheet.  Facsimile 
transmissions are not permitted and, if submitted, will not be accorded  a 
date of receipt in the following situations: 

        (1)   Correspondence as specified in w 1.4(e), 
requiring an original signature; 

        (2)   Certified documents as specified in # 1.4(f); 

        (3)   Correspondence which cannot receive the benefit of the 
certificate  of mailing or transmission as specified  in ww 
1.8(a)(2)(i)(A) through (D)  and (F); 1.8(a)(2)(ii)(A) and (D); and 
1.8(a)(2)(iii)(A); 

        (4)   Drawings submitted under ww 1.81, 1.83 through 1.85, 1.152, 
1.165,  1.174, 1.437, 2.51, 2.52, or 2.72; 

        (5)   A request for reexamination under w 1.510; 

        (6)   Correspondence to be filed in a patent application subject 
to  a secrecy order under ## 5.1 through 5.8 of this chapter and directly 
related  to the secrecy order content of the application; 

        (7)   Requests for cancellation or amendment of a registration 
under  section 7(e) of the Trademark Act, 
15 U.S.C. 1057(e); and certificates of registration surrendered for 
cancellation  or amendment under section 7(e) of the Trademark Act, 15 
U.S.C. 1057(e); 
        (8)   Correspondence to be filed with the Trademark Trial and 
Appeal  Board, except the notice of 
ex parte appeal; 

        (9)   Correspondence to be filed in an interference proceeding 
which  consists of a preliminary statement under w 1.621; a transcript of 
a deposition  under w 1.676 or of interrogatories, cross-interrogatories, 
or recorded answers 
 under w 1.684(c); or an evidentiary record and exhibits under w 1. 653. 
        (e)   Interruptions in U.S. Postal Service. 

        If interruptions or emergencies in the United States Postal 
Service  which have been so designated by the Commissioner occur, the 
Patent and Trademark  Office will consider as filed on a particular date 
in the Office any correspondence  which is: 

        (1)   Promptly filed after the ending of the designated 
interruption  or emergency; and 

        (2)   Accompanied by a statement indicating that such 
correspondence  would have been filed on that particular date if it were 
not for the designated  interruption or emergency in the United States 
Postal Service. Such statement  must be a verified statement if made by a 
person other than a practitioner  as defined in w 10.1(r) of this chapter. 

        [48 FR 2707, Jan. 20, 1983, effective Feb. 27, 1983; 48 FR 4285, 
Jan.  31, 1983; para. (a), 49 FR 552, Jan. 4, 1984, effective Apr. 1, 
1984; revised,  58 FR 54494, Oct. 22, 1993, effective Nov. 22, 1993] 


# 1.7     Times for taking action; expiration on Saturday, 
     Sunday, 


or Federal  holiday. 

        Whenever periods of time are specified in this part in days, 
calendar  days are intended. When the day, or the last day fixed by 
statute or by or  under this part for taking any action or paying any fee 
in the Patent and Trademark  Office falls on Saturday, Sunday, or on a 
Federal holiday within the District  of Columbia, the action may be taken, 
or the fee paid, on the next succeeding  day which is not a Saturday, 




Sunday, or a Federal holiday. See w 1.304 for time for appeal or for 
commencing  civil action. 

        [48 FR 2707, Jan. 20, 1983, effective Feb. 27, 1983; corrected 48 
FR  4285, Jan. 31, 1983] 


# 1.8     Certificate of mailing or transmission. 


        (a)   Except in the cases enumerated in paragraph (a)(2) of this 
section,  correspondence required to be filed filed in the Patent and 
Trademark Office  within a set period of time will be considered as being 
timely filed if the  procedure described in this section is followed. The 
actual date of receipt  will be used for all other purposes. 

        (1)   Correspondence will be considered as being timely filed if: 
        (i)   The correspondence is mailed or transmitted prior to 
expiration  of the set period of time by being: 

        (A)   Deposited with the U.S. Postal Service with sufficient 
postage  as first class mail addressed to the Commissioner of Patents and 
Trademarks,  Washington, DC 20231; or 

        (B)         Transmitted by facsimile to the Patent and Trademark 
Office  in accordance with # 1.6(d); and 

        (ii)    The correspondence includes a certificate for each piece 
of  correspondence stating the date of deposit or transmission. The person 
signing  the certificate should have reasonable basis to expect that the 
correspondence  would be mailed or transmitted on or before the date 
indicated. 

        (2)   The procedure described in paragraph (a)(1) of this section 
does  not apply to, and no benefit will be given to a Certificate of 
Mailing or Transmission  on, the following: 

        (i)   Relative to Patents and Patent  Applications- 

        (A)   The filing of a national patent application specification 
and  drawing or other correspondence for the purpose of obtaining an 
application  filing date; 

        (B)   The filing of correspondence in an interference which an 
examiner-in-chief  orders to be filed by hand or ``Express Mail"; 

        (C)   The filing of agreements between parties to an interference 
under  35 U.S.C. 135(c); 

        (D)   The filing of an international application for patent; 
        (E)   The filing of correspondence in an international application 
 before the U.S. Receiving Office, the U.S. International Searching 
Authority,  or the U.S. International Preliminary Examining Authority; 

        (F)   The filing of a copy of the international application and 
the  basic national fee necessary to enter the national stage, as 
specified in #  1.494(b) or 
# 1.495(b). 

        (ii)    Relative to Trademark Registrations and 
Trademark Applications- 

        (A)   The filing of a trademark application; 

        (B)   The filing of an affidavit showing that a mark is still in 
use  or containing an excuse for  non-use under section 8(a) or (b) or 
section 12(c)  of the Trademark Act, 15 U.S.C. 1058(a), 1058(b), 1062(c); 

        (C)   The filing of an application for renewal of 
a registration under section 9 of the Trademark Act, 
15 U.S.C. 1059; 

        (D)   The filing of a petition to cancel a registration of a mark 
under  section 14, subsection (1) or (2) of the Trademark Act, 15 U.S.C. 
1064; 
        (E)   In an application under section 1(b) of the Trademark Act, 
15  U.S.C. 1051(b), the filing of an amendment to allege use in commerce 
under  section 1(c) of the Trademark Act, 15 U.S.C. 1051(c); or the filing 
of a statement  of use under section 1(d)(1) of the Trademark Act, 15 
U.S.C. 1051(d)(1); 
        (F)   In an application under section 1(b) of the Trademark Act, 
15  U.S.C. 1051(b), the filing of a request under section 1(d)(2) of the 
Trademark  Act, 15 U.S.C. 1051(d)(2) for an extension of time to file a 
statement of use  under section 1(d)(1) of the Trademark Act, 15 U.S.C. 
1051(d)(1). 
        (iii)     Relative to Disciplinary Proceedings- 

        (A)   Correspondence filed in connection with a disciplinary 
proceeding  under part 10 of this chapter. 

        (B)   [Reserved.] 

        (b)   In the event that correspondence is considered timely filed 
by  being mailed or transmitted in accordance with paragraph (a) of this 
section,  but not received in the Patent and Trademark Office, and the 
application is  held to be abandoned or the proceeding dismissed, 
terminated, or decided with  prejudice, the correspondence will be 
considered timely if the party who forwarded  such correspondence: 

        (1)   Informs the Office of the previous mailing or trans- mission 
 of the correspondence promptly after becoming aware that the Office has 
no  evidence of receipt of the correspondence, 



        (2)   Supplies an additional copy of the previously mailed or 
transmitted  correspondence and certificate, and 

        (3)   Includes a statement which attests on a personal knowledge 
basis  or to the satisfaction of the Commissioner to the previous timely 
mailing or  transmission. Such statement must be a verified state- ment if 
made by a person  other than a practitioner as defined in # 10.1(r) of 
this chapter. If the correspondence  was sent by facsimile transmission, a 
copy of the sending unit's report confirming  transmission may be used to 
support this statement. 

        (c)   The Office may require additional evidence to determine if 
the  correspondence was timely filed. 

        [41 FR 43721, Oct. 4, 1976; 43 FR 20461, May 11, 1978; para. (a). 
47  FR 47381, Oct. 26, 1982, effective Oct. 26, 1982; para.  (a),48 FR 
2708, Jan.  20, 1983; para.  (a) 49 FR 48416, Dec. 12, 1984, effective 
Feb. 11, 1985; para. 
(a), 49 FR 5171, Feb. 6, 1985, effective Mar. 8, 1985; 52 FR 20046, May 
28,  1987; subparas. (a)(2)(xiv)-(xvi), 54 FR 37588, Sept. 11, 1989, 
effective Nov.  16, 1989; revised, 58 FR 54494, Oct. 22, 1993, effective 
Nov. 22, 1993] 

# 1.9     Definitions. 


        (a)(1)      A national application as used in this chapter means a 
 U.S. application for patent which was either filed in the Office under 35 
U.S.C.  111, or which entered the national stage from an international 
application  after compliance with 35 U.S.C. 371. 

        (2)   A provisional application as used in this chapter means a 
U.S.  national application for patent filed in the Office under 35 U.S.C. 
111(b). 


        (3)   A nonprovisional application as used in this chapter means a 
 U.S. national application for patent which was either filed in the Office 
under  35 U.S.C. 111(a), or which entered the national stage from an 
international  application after compliance with 35 U.S.C. 371. 

        (b)   An international application as used in this chapter means 
an  international application for patent filed under the Patent 
Cooperation Treaty  prior to entering national processing at the 
Designated Office stage. 
        (c)   An independent inventor as used in this chapter means any 
inventor  who (1) has not assigned, granted, conveyed, or licensed, and 
(2) is under  no obligation under contract or law to assign, grant, 
convey, or license, any  rights in the invention to any person who could 
not likewise be classified  as an independent inventor if that person had 
made the invention, or to any  concern which would not qualify as a small 
business concern or a nonprofit  organization under this section. 

  (d)     A small business concern as used in this chapter means any 
business  concern as defined by the regulations of the Small Business 
Administration  in 
13 CFR 121.1301 through 121.1305, which define a small business concern as 
 one whose number of employees, including those of its affiliates, does 
not  exceed 500 persons and which has not assigned, granted, conveyed, or 
licensed,  and is under no obligation under contract or law to assign, 
grant, convey,  or license, any rights  in the invention to any person who 
could not be classified  as an independent inventor if that person had 
made the invention, or to any  concern which would not qualify as a small 
business concern or a nonprofit  organization under this section. 
Questions related to size standards for a  small business concern may be 
directed to: Small Business Administration, Size  Standards Staff, 409 
Third Street, SW, Washington, DC 20416. 

        (e)   A nonprofit organization as used in this chapter means (1) a 
 university or other institution of higher education located in any 
country; 
(2) an organi- zation of the type described in section 501(c)(3) of the 
Internal  Revenue Code of 1954 (26 U.S.C. 501(c)(3)) and exempt from 
taxation under section  501(a) of the Internal Revenue Code (26 U.S.C. 
501(a)); (3) any nonprofit scientific  or educational organization 
qualified under a nonprofit organization statute  of a state of this 
country (35 U.S.C. 201(i)); or (4) any non-profit organization  located in 
a foreign country which would qualify as a nonprofit organization  under 
paragraphs (e) (2) or (3) of this section if it were located in this 
country. 

        (f)   A small entity as used in this chapter means an independent 
 inventor, a small business concern, or a non- profit organization. 
        (g)   For definitions in interferences see # 1.601. 

        [43 FR 20461, May 11, 1978; 47 FR 40139, Sept. 10, 1982, effective 
 Oct. 1, 1982; 47 FR 43275, Sept. 30, 1982, effective Oct. 1, 1982; para. 
(d),  49 FR 34724, Aug. 31, 1984, effective Nov. 1, 1984; para. (g), 49 FR 
48416,  Dec. 12, 1984, effective Feb. 11, 1985; para. (d) revised, 58 FR 
54504, Oct.  22, 1993, effective Jan 3, 1994; para. (a) amended, 60 FR 
20195, Apr 25, 1995,  effective June 8, 1995] 




# 1.10          Filing of papers and fees by "Express Mail" with 
     certificate. 

        (a)   Any paper or fee to be filed in the Patent and Trademark 
Office  can be filed utilizing the "Express Mail Post Office to Addressee" 
service  of the United States Postal Service and be considered as having 
been filed  in the Office on the date the paper or fee is shown to have 
been deposited  as "Express Mail" with the United States Postal Service 
unless the date of  deposit is a Saturday, Sunday, or Federal holiday 
within the District of Columbia.  See w 1.6(a). 

        (b)   Any paper or fee filed by "Express Mail" must have the 
number  of the "Express Mail" mailing label placed thereon prior to 
mailing, be addressed  to the Commissioner of Patents and Trademarks, 
Washington, D.C. 20231, and  any such paper or fee must also include a 
certificate of mailing by "Express  Mail" which states the date of mailing 
by "Express Mail" and is signed by the  person mailing the paper or fee. 

        (c)   The Patent and Trademark Office will accept the certificate 
of  mailing by "Express Mail" and accord the paper or fee the certificate 
date  under 35 U.S.C. 21(a) (unless the certificate date is a Saturday, 
Sunday, or  Federal holiday within the District of Columbia - see 
w 1.6(a)) without further proof of the date on which the mailing by 
"Express  Mail" occurred unless a question is present regarding the date 
of mailing.  If more than a reasonable time has elapsed between the 
certificate date and  the Patent and Trademark Office receipt date or if 
other questions regarding  the date of mailing are present, the person 
mailing the paper or fee may be  required to file a copy of the "Express 
Mail" receipt showing the actual date  of mailing and a statement from the 
person who mailed the paper or fee averring  to the fact that the mailing 
occurred on the date certified.  Such statement  must be a verified 
statement if made by a person not registered to practice  before the 
Patent and Trademark Office. 

        [48 FR 2708, Jan. 20, 1983, added effective Feb. 27, 1983;  48 FR 
4285, Jan. 31, 1983, paras. (a) & (c), 49 FR 552, Jan. 4, 1984, effective 
Apr. 1, 1984] 

RECORDS AND FILES OF THE PATENT AND 
TRADEMARK OFFICE 


# 1.11      Files open to the public. 


        (a)   After a patent has been issued or a statutory invention 
registration  has been published, the specification, drawings, and all 
papers relating to  the case in the file of the patent or statutory 
invention registration are  open to inspection by the public, and copies 
may be obtained upon paying the  fee therefor.  See # 2.27 for trademark 
files. 

        (b)   All reissue applications, all applications in which the 
Office  has accepted a request to open the complete application to 
inspection by the  public, and related papers in the application file, are 
open to inspection  by the public, and copies may be furnished upon paying 
the fee therefor. The  filing of reissue applications will be announced in 
the Official Gazette. The  announcement shall include at least the filing 
date, reissue application, and  original patent numbers, title, class and 
subclass, name of the inventor, name  of the owner of record, name of the 
attorney or agent of record, and examining  group to which the reissue 
application is assigned. 

        (c)   All requests for reexamination for which the fee under w 
1.20(c)  has been paid, will be announced in the Official Gazette. Any 
reexaminations  at the initiative of the Commissioner pursuant to # 1.520 
will also be announced  in the Official Gazette. The announcement shall 
include at least the date of  the request, if any, the reexamination 
request control number or the Commissioner  initiated order control 
number, patent number, title, class and subclass, name  of the inventor, 
name of the patent owner of record, and the examining group  to which the 
reexamination is assigned. 

        (d)   All papers or copies thereof relating to a reexamination 
proceeding  which have been entered of record in the patent or 
reexamination file are open  to inspection by the general public, and 
copies may be furnished upon paying  the fee therefor. 

        (e)   The file of any interference involving a patent, a statutory 
 invention registration, a reissue application, or an application on which 
a  patent has been issued or which has been published as a statutory 
invention  registration, is open to inspection by the public, and copies 
may be obtained  upon paying the fee therefor, if: 

        (1)   The interference has terminated or 

        (2)   An award of priority or judgment has been entered as to all 
parties  and all counts. 

        [42 FR 5593, Jan. 28, 1977; 43 Fr 28477, June 30, 1978; 
46 FR 29181, May 29, 1981,para. (c), 47 FR 41272, Sept. 17, 1982, 
effective  Oct. 1, 1982; para. (a), 49 FR 48416, Dec. 12, 1984, effective 
Feb. 11, 1985;  paras.  (a), (b,) and  (e),  50 FR 9278,  Mar. 7, 1985, 
effective May 8, 1985;  para. (e) revised, 60 FR 14488, Mar. 17, 1995, 
effective Mar. 17, 1995] 



# 1.12       Assignment records open to public inspection. 


        (a)(1)      Separate assignment records are maintained in the 
Patent  and Trademark Office for patents and trademarks. The assignment 
records, relating  to original or reissue patents, including digests and 
indexes, for assignments  recorded on or after May 1, 1957, and assignment 
records relating to pending  or abandoned trademark applications and to 
trademark registrations, for assignments  recorded on or after January 1, 
1955, are open to public inspection at the  Patent and Trademark Office, 
and copies of those assignment records may be  obtained upon request and 
payment of the fee set forth in w 1.19 and # 2.6  of this chapter. 

        (2)   All records of assignments of patents recorded before May 1, 
 1957, and all records of trademark assignments recorded before January 1, 
1955,  are maintained by the National Archives and Records Administration 
(NARA).  The records are open to public inspection. Certified and 
uncertified copies  of those assignment records are provided by NARA upon 
request and payment of  the fees required by NARA. 

        (b)   Assignment records, digests, and indexes relating to any 
pending  or abandoned application are not available to the public. Copies 
of any such  assignment records and  information with respect thereto 
shall be obtainable  only upon written authority of the applicant or 
applicant's assignee or attorney  or agent or upon a showing that the 
person seeking such information is a bona  fide prospective or actual 
purchaser, mortgagee, or licensee of such application,  unless it shall be 
necessary to the proper conduct of business before the Office  or as 
provided by these rules. 

        (c)   Any request by a member of the public seeking copies of any 
assignment  records of any pending or abandoned patent application 
preserved in secrecy  under # 1.14, or any information with respect 
thereto, must 

        (1)   Be in the form of a petition accompanied by the petition fee 
 set forth in # 1.17(i), or 

        (2)   Include written authority granting access to the member of 
the  public to the particular assignment records from the applicant or 
applicant's  assignee or attorney or  agent of record. 

        (d)   An order for a copy of an assignment or other document 
should  identify the reel and frame number where the assignment or 
document is recorded.  If a document is identified without specifying its 
correct reel and frame,  an extra charge as set forth in 
w 1.21(j) will be made for the time consumed in making a search for such 
assignment. 
        [47 FR 41272, Sept. 17, 1982, effective Oct. 1, 1982; paras. (a) 
and 
 (c), 54 FR 6893, Feb. 15, 1989, effective April 17, 1989; paras.  (a) and 
 (d), 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; paras. (a)(1) 
and 
 (d), 57 FR 29641, July 6, 1992, effective Sept. 4, 1992; para. (a)(2) 
added,  57 FR 29641, July 6, 1992, effective Sept. 4, 1992; para.  (c) 
amended, 60  FR 20195, Apr. 25, 1995, effective June 8, 1995] 


# 1.13      Copies and certified copies. 


        (a)   Non-certified copies of patents and trademark registrations 
and  of any records, books, papers, or drawings within the jurisdiction of 
the Patent  and Trademark Office and open to the public, will be furnished 
by the Patent  and Trademark Office to any person, and copies of other 
records or papers will  be furnished to persons entitled thereto, upon 
payment of the fee therefor. 
        (b)   Certified copies of the patents and trademark registrations 
and  of any records, books, papers, or drawings within the jurisdiction of 
the Patent  and Trademark Office and open to the public or persons 
entitled thereto will  be authenticated by the seal of the Patent and 
Trademark Office and certified  by the Commissioner, or in his name 
attested by an officer of the Patent and  Trademark Office authorized by 
the Commissioner, upon payment of the fee for  the certified copy. 

        [Revised, 58 FR 54504, Oct. 22, 1993, effective Jan 3, 1994] 

# 1.14      Patent applications preserved in secrecy. 


        (a)   Except as provided in w 1.11(b) pending patent applications 
are  preserved in secrecy. No information will be given by the Office 
respecting  the filing by any particular person of an application for a 
patent, the pendency  of any particular case before it, or the subject 
matter of any particular application,  nor will access be given to or 
copies furnished of any pending application  or papers relating thereto, 
without written authority in that particular application  from the 
applicant or his assignee or attorney or agent of record, unless the 
application has been identified by serial number in a published patent 
document  or the United States of America has been indicated as a 
Designated State in  a published international application, in which case 
status information such  as whether it is pending, abandoned, or 



patented may be supplied, or unless it shall be necessary to the proper 
conduct  of business before the Office or as provided by this part. Where 
an application  has been patented, the patent number and issue date may 
also be supplied. 
        (b)   Except as provided in w 1.11(b), abandoned applications are 
likewise  not open to public inspection, except that if an application 
referred to in  a U.S. patent, or in an application in which the 
applicants has filed an authorization  to open the complete application to 
the public, is abandoned and is available,  it may be inspected or copies 
obtained by any person on written request, without  notice to the 
applicant. Complete applications 
(# 1.51(a)) which are abandoned may be destroyed after 
20 years from their filing date, except those to which particular 
attention  has been called and which have been marked for preservation. 
Abandoned applications  will not be returned. 

        (c)   Applications for patents which disclose or which appear to 
disclose,  or which purport to disclose, inventions or discoveries 
relating to atomic  energy are reported to the Department of Energy, which 
Department will be given  access to such applications, but such reporting 
does not constitute a determination  that the subject matter of each 
application so reported is in fact useful or  an invention or discovery or 
that such application in fact discloses subject  matter in categories 
specified by sections 151(c) and 151(d) of the Atomic  Energy Act of 1954, 
68 Stat. 919; 42 U.S. C. 2181 (c) and (d). 

        (d)   Any decision of the Board of Patent Appeals and 
Interferences,  or any decision of the Commissioner on petition, not 
otherwise open to public  inspection shall be published or made available 
for public inspection if: (1)  The Commissioner believes the decision 
involves an interpretation of patent  laws or regulations that would be of 
important precedent value; and (2) the  applicant, or any party involved 
in the interference, does not within two months  after being notified of 
the intention to make the decision public, object in  writing on the 
ground that the decision discloses a trade secret or other confidential 
information.  If a decision discloses such information, the applicant or 
party  shall identify the deletions in the text of the decision considered 
necessary  to protect the information. If it is considered, the entire 
decision must be  withheld from the public to protect such information the 
applicant or party  must explain why. Applicants or parties will be given 
time, not less than twenty  days, to request reconsideration and seek 
court review before any portions  of decisions are made public over their 
objection. See 
w 2.27 for trademark applications. 

        (e)   Any request by a member of the public seeking access to, or 
copies  of, any pending or abandoned application preserved in secrecy 
pursuant to paragraphs 
(a) and (b) of this section, or any papers relating thereto, must 
        (1)   Be in the form of a petition and be accompanied by the 
petition  fee set forth in # 1.17(i), or 

        (2)   Include written authority granting access to the member of 
the  public in that particular application from the applicant or the 
applicant's  assignee or attorney or agent of record. 

        (Note, see w 1.612(a) for access by an interference party to a 
pending  or abandoned application.) 

        [42 FR 5593, Jan. 28, 1977; 43 FR 20462, May 11, 1978; para. (e) 
added,  47 FR 41273, Sept. 17, 1982, effective Oct. 1, 1982; para. (b), 49 
 FR 552,  Jan. 4, 1984, effective Apr. 1, 1984; para. (d), 49 FR 48416, 
Dec. 12, 1984,  effective Feb. 11, 1985; para.  (b), 50 FR 9378,  Mar. 7, 
1985, effective May  8, 1985: 53 FR 23733, June 23, 1988; para. (e), 54 FR 
6893, Feb. 15, 1989,  effective April 17, 1989; para.  (b) revised, 58 FR 
54504, Oct. 22, 1993, effective  Jan 3, 1994; para.  (e) amended, 60 FR 
20195,  Apr. 25, 1995, effective June  8, 1995] 


# 1.15      Requests for identifiable records. 


        (a)   Requests for records not disclosed to the public as part of 
the  regular informational activity of 
the Patent and Trademark Office and which are not otherwise dealt with in 
the  rules in this part shall be made in writing, with the envelope and 
the letter  clearly marked "Freedom of Information Request." Each such 
request, so marked,  should be submitted by mail addressed 
to the "Patent and Trademark Office, Freedom of Information Request 
Control  Desk, Box 8, Washington, D.C. 20231," or hand-delivered to the 
Office of the  Solicitor, Patent and Trademark Office, Arlington, 
Virginia. The request will  be processed in accordance with the procedures 
set forth in Part 4 of Title  15, Code of Federal Regulations. 

        (b)   Any person whose request for records has been initially 
denied  in whole or in part, or has not been timely determined, may submit 
a written  appeal as provided in 
w 4.8 of Title 15, Code of Federal Regulations. 

        (c)   Procedures applicable in the event of service of process or 
in  connection with testimony of employees on official matters and 
production of  official documents of the 




Patent and Trademark Office in civil legal proceedings not involving the 
United  States shall be those estab- 


lished in parts 15 and 15a of Title 15, Code of Federal Regulations. 
        [32 FR 13812, Oct. 4, 1967; 34 FR 18857, Nov. 26, 1969; amended 53 
 FR 47685, Nov. 25, 1988, effective Dec. 30, 1988] 

FEES AND PAYMENT OF MONEY 


# 1.16      National application filing fees. 


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

                By a small entity (# 1.9(f))         $375.00 

                By other than a small entity         750.00 

        (b)   In addition to the basic filing fee in an original 
application,  except provisional applications, for filing or later 
presentation of each independent  claim in excess 
of 3: 

    By a small entity (# 1.9(f)         39.00 

                By other than a small entity        78.00 

        (c)   In addition to the basic filing fee in an original 
application,  except provisional applications, for filing or later 
presentation of each claim 
(whether independent or dependent) in excess of 20 (Note that # 1.75(c) 

indicates how multiple dependent claims are considered for fee calculation 
 purposes.): 

                By a small entity (# 1.9(f)   11.00 

    By other than a small entity        22.00 

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


                By a small entity (# 1.9(f))            125.00 

                By other than a small entity            250.00 

        (If the additional fees required by paragraphs (b), (c), and (d) 
of  this section are not paid on filing or on later presentation of the 
claims  for which the additional fees are due, they must be paid or the 
claims canceled  by amendment, prior to the expiration of the time period 
set for response by  the Office in any notice of fee deficiency.) 

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

                By a small entity (# 1.9(f))            65.00 

    By other than a small entity                130.00 

  (f)     Basic fee for filing each design application: 

    By a small entity (# 1.9(f))    155.00 

    By other than a small entity    310.00 

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

                By a small entity (# 1.9(f))            255.00 

    By other than a small entity                510.00 

        (h)   Basic fee for filing each reissue application: 

                By a small entity (w 1.9(f))            375.00 

                By other than a small entity        750.00 

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

                By a small entity (w 1.9(f))            39.00 

                By other than a small entity            78.00 

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

                By a small entity (w 1.9(f))            11.00 

                By  other  than  a small entity       22.00 

        (k)   Basic fee for filing each provisional application: 

    By a small entity (w 1.9(f))                75.00 

                By other than a small entity        150.00 

        (l)   Surcharge for filing the basic filing fee or cover sheet (# 
1.51(a)(2)(i)))  on a date later than the filing date of the provisional 
application: 
    By a small entity (w 1.9(f))                25.00 

    By other than a small entity                50.00 

        (Note: See ## 1.445, 1.482, and 1.492 for international 
application  filing and processing fees.). 

        [Added 47 FR 41273, Sept. 17, 1982, effective date Oct. 1, 1982; 
50  FR 31824, Aug. 6, 1985, effective date Oct. 5, 1985; paras.  (a), 
(b),  (d)  - (i), 54 FR 6893, Feb. 15, 1989, effective Apr. 17, 1989; 
paras. (a)-(j),  56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; 
paras.  (a)-(d) and (f)-(j),  57 FR 38190, Aug. 21, 1992, effective Oct. 
1, 1992; paras.  (a), (b), (d) and 
(f)-(i), 59 FR 43736, Aug. 25, 1994, effective Oct. 1, 1994; paras. 
(a)-(g)  amended and paras. (k) and (l) added, 60 FR 20195, Apr. 25, 1995, 
effective  June 8, 1995; paras. (a), (b), (d), & (f)-(i) amended, 60 FR 
41018, Aug. 11,  1995, effective Oct. 1, 1995] 


# 1.17          Patent application processing fees. 


        (a)   Extension fee for response within first month pursuant to w 
1.136(a): 

                By a small entity (w 1.9(f))            $55.00 




                By other than a small entity            110.00 

        (b)   Extension fee for response within second month pursuant to w 
 1.136(a): 

                By a small entity (w 1.9(f)         190.00 

                By other than a small entity            380.00 

        (c)   Extension fee for response within third month pursuant to w 
1.136(a): 
                By a small entity (w 1.9(f))            450.00 

                By other than a small entity            900.00 

        (d)   Extension fee for response within fourth month pursuant to w 
 1.136(a): 

                By a small entity (w 1.9(f))            700.00 

                By other than a small entity             1,400.00 
        (e)   For filing a notice of appeal from the examiner to the Board 
 of Patent Appeals and Interferences: 

                By a small entity (w 1.9(f))            145.00 

                By other than a small entity            290.00 

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

                By a small entity (w 1.9(f))             145.00 

                By other than a small entity            290.00 

        (g)   For filing a request for an oral hearing before the Board of 
 Patent Appeals and Interferences in an appeal under 35 U.S.C. 134: 
                By a small entity (w 1.9(f))            125.00 

                By other than a small entity            250.00 

        (h)   For filing a petition to the Commissioner under a section 
listed  below which refers to this para- 
graph           130.00 

        # 1.47 - for filing by other than all the inventors or a 
person  not the inventor 

        # 1.48 - for correction of inventorship, except in 
                provisional applications 

        # 1.84 - for accepting color drawings or photo- 
                graphs 

        # 1.182 - for decision on questions not specifically 
        provided for 

        # 1.183 - to suspend the rules 

        # 1.295 - for review of refusal to publish a statutory 
     invention  registration 

        # 1.377 - for review of decision refusing to accept 
     and  record payment of a maintenance fee             filed prior to 
expiration of  patent 

        # 1.378(e) - for reconsideration of decision on 
                petition refusing to accept delayed 
                payment of maintenance fee in 
                expired patent 

        # 1.644(e) - for petition in an interference 

        # 1.644(f) - for request for reconsideration of a 
                decision on petition in an interference 

        # 1.666(c) - for late filing of interference settlement 
            agreement 

        ## 5.12, 5.13 and 5.14 - for expedited handling of a 
                 foreign filing license 

        # 5.15 - for changing the scope of a license 

        # 5.25 - for retroactive licens 

        (i)   For filing a petition to the Commissioner un- 
der a section listed below which refers to this 
paragraph   130.00 

        # 1.12 - for access to an assignment record 

  # 1.14 - for access to an application 

        # 1.53 - to accord a filing date, except in provisional 
             applications 


  # 1.55 - for entry of late priority papers 

        # 1.60 - to accord a filing date 

        # 1.62 - to accord a filing date 

        # 1.97(d)- to consider an information disclosure 
statement 
        # 1.102 - to make application special 

        # 1.103 - to suspend action in application 

        # 1.177 - for divisional reissues to issue separately 

        # 1.312 - for amendment after payment of issue fee 

  # 1.313 - to withdraw an application from issue 

        # 1.314 - to defer issuance of a patent 

        # 1.666(b) - for access to interference settlement 
     agreement 
        # 3.81 - for patent to issue to assignee, assignment 
submitted  after payment of the issue fee 

        (j)   For filing a petition to institute a public use proceeding 
under  # 1.292         1,430.00 


        (k)   For processing an application filed with a specification in 
a  non-English language (# 1.52(d))        130.00 

        (l)   For filing a petition: 

        (1)   For the revival of an unavoidably abandoned application 
under  35 U.S.C. 111, 133, 364, or 371 or 

        (2)   For delayed payment of the issue fee under 35 U.S.C. 151: 
                By a small entity (# 1.9(f)         55.00 

                By other than a small entity            110.00 

        (m)   For filing a petition: 

        (1)   For revival of an unintentionally abandoned application, or 
        (2)   For the unintentionally delayed payment of the fee for 
issuing  a patent: 

                By a small entity (# 1.9(f))            625.00 

                By other than a small entity            1,250.00 




        (n)   For requesting publication of a statutory invention 
registration  prior to the mailing of the first examiner's action pursuant 
to # 1.104 - $870.00  reduced by the amount of the application basic 
filing fee paid. 

        (o)   For requesting publication of a statutory invention 
registration  after the mailing of the first examiner's ac- 
tion pursuant to # 1.104 - $1,740.00 reduced by the amount of the 
application  basic filing fee paid. 

        (p)   For submission of an information disclo- 
sure statement   under # 1.97(c)                220.00 

        (q)   For filing a petition to the Commissioner under a section 
listed  below which refers to this 
paragraph   50.00 

        # 1.48 - for correction of inventorship in a 
     provisional  application 

        # 1.53 - to accord a provisional application a filing 
     date  or to convert an application filed                      under # 
1.53(b)(1)  to a provisional ap-                            plication 

  (r)     For entry of a submission after final rejection under # 
1.129(a): 
                By a small entity (# 1.9(f))            375.00 

                By other than a small entity            750.00 

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

    By a small entity (# 1.9(f))                365.00 

      By other than a small entity      730.00 

        [Added 47 FR 41273, Sept. 17, 1982, effective Oct. 1, 1982 ; para. 
(h), 48 FR 2708, Jan. 20, 1983, effective Feb. 27, 1983; para. (h), 49 FR 
13461,  Apr. 4, 1984, effective June 4, 1984; para. (h), 49 FR 34724, Aug. 
31, 1984,  effective Nov. 1, 1984; paras. (e), (g), (h) and  (i), 49 FR 
48416, Dec. 12,  1984, effective Feb. 11, 1985; paras. (h), (n) and  (c), 
50 FR 9379, Mar. 7,  1985, effective May 8, 1985;50 FR 31824, Aug. 6, 
1985, effective Oct. 5, 1985;  paras. (a)- (m), 54 FR 6893, Feb. 15, 1989, 
54 FR 9431, March 7, 1989, effective  Apr. 17, 1989; para. (i)(1), 54 FR 
47518, Nov. 15, 1989, effective Jan. 16,  1990; paras. (a)-(o), 56 FR 
65142, Dec. 13, 1991, effective Dec. 16, 1991;  para. (i)(1), 57 FR 2021, 
Jan. 17, 1992, effective March 16, 1992; para. (p)  added, 57 FR 2021, 
Jan. 17, 1992, effective March 16, 1992; para. (i)(1), 57  FR 29642, July 
6, 1992,, effective Sept. 4, 1992; corrected 57 FR 32439, July  22, 1992; 
paras. (b)-(g), (j), and (m)-(o), 57 FR 38190, Aug. .21, 1992, effective 
Oct. 1, 1992; para. (h), 58 FR 38719, July 20, 1993, effective Oct. 1, 
1993;  paras. (b)-(g), (j) and (m)-(p), 59 FR 43736, Aug. 25, 1994, 
effective Oct.  1, 1994; paras. (h) & (i) amended and paras. (q)-(s) 
added, 67 FR 20195, Apr.  25, 1995, effective June 8, 1995; paras. 
(b)-(g), (j), (m)-(p), (r), & (s)  amended, 60 FR 41018, Aug. 11, 1995, 
effective Oct. 1, 1995] 


# 1.18      Patent issue fees. 


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

                By a small entity (w 1.9(f))    $625.00 

                By other than a small entity    1,250.00 

        (b) Issue fee for issuing a design patent: 

                By a small entity (w 1.9(f))            215.00 

                By other than a small entity            430.00 

        (c)   Issue fee for issuing a plant patent: 

                By a small entity (w 1.9(f))            315.00 

                By other than a small entity            630.00 

        [Added 47 FR 41273, Sept. 17, 1982, effective Oct. 1, 1982; 50 FR 
31824,  Aug. 6, 1985, effective Oct. 5, 1985; revised 54 FR 6893, Feb. 15, 
1989, effective  Apr. 17, 1989; revised, 56 FR 65142, Dec. 13. 1991, 
effective Dec. 16, 1991;  paras. (a)-(c), 
57 FR 38190, Aug. 21, 1992, effective Oct. 1, 1992; revised, 59 FR 43736, 
Aug.  25, 1994, effective Oct. 1, 1994; amended, 60 FR 41018, Aug. 11, 
19995, effective  Oct. 1, 1995] 


# 1.19      Document supply fees. 


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

        (a) Uncertified copies of patents: 

        (1)   Printed copy of a patent, including a design patent, 
statutory  invention registration, or defensive publication document, 
except plant or  statutory invention registration containing color drawing: 

        (i)   Regular service     $3.00 

        (ii)    Overnight delivery to PTO Box or overnight fax 
                     6.00 
        (iii)     Expedited service for copy ordered by expedited mail or 
fax  delivery service and delivered to the customer within two workdays 
25.00 
        (2)   Printed copy of a plant patent in color     12.00 

        (3)   Copy of a utility patent or statutory inven- 
tion registration containing color drawing (see 
w 1.84(a)(2))     24.00 

        (b)   Certified and uncertified copies of Office documents: 
        (1)   Certified or uncertified copy of patent application as 
filed: 
        (i)   Regular    service        15.00 

        (ii)    Expedited regular service 30.00 

        (2)   Certified or uncertified copy of patent-related file wrapper 
 and  contents      150.00 

        (3)   Certified or uncertified copy of Office records, per 
document  except as otherwise provided in this section ... 25.00 



        (4)   For assignment records, abstract of title and certification, 
 per  patent            25.00 

        (c)   Library service (35 U.S.C. 13): For providing to libraries 
copies  of all patents issued annually, per annum   50.00 

        (d)   For list of all United States patents and statutory 
invention  registrations in a subclass         3.00 

        (e)   Uncertified statement as to status of the payment of 
maintenance  fees due on a patent or expiration of a patent          10.00 

        (f)   Uncertified copy of a non-United States pa- 
tent document, per document         25.00 

        (g)   To compare and certify copies made from Patent and Trademark 
 Office records but not prepared by the Pat- 
ent and Trademark Office, per copy of docu- 
ment        25.00 


        (h)   Additional filing receipts; duplicate; or corrected due to 
applicant 
                25.00 


        [Added 47 FR 41273, Sept. 17, 1982, effective date Oct. 1, 1982; 
para. 
(b), 49 FR 552, Jan. 4, 1984, effective date Apr. 1, 1984; paras. (f) and 
(g)  added, 49 FR 34724, Aug. 31, 1984, effective date Nov. 1, 1984; 
paras. (a)  and  (c), 50 FR 9379, Mar. 7, 1985, effective date May 8.1985; 
50 FR 31825,  Aug. 6, 1985, effective date Oct. 5, 1985; revised 54 FR 
6893, Feb. 15, 1989, 54 FR 9432, March 7, 1989, effective Apr. 17, 1989; 
revised 56 FR 65142, Dec.  13, 1991, effective Dec. 16, 1991; paras. 
(b)(4), (f) and (h),57 FR 38190,  Aug. 21, 1992, effective Oct.1, 1992; 
para. (a)(3), 58 FR 38719, July 20, 1993, effective Oct. 1, 1993; paras. 
(a)(1)(ii), 
(a)(1)(iii), (b)(1)(i), & (b)(1)(ii) amended, 
60 FR 41018, Aug. 11, 1995, effective Oct. 1, 1995] 


# 1.20      Post-issuance fees. 


        (a)   For providing a certificate of correction for applicant's 
mistake 
(w 1.323)   $100.00 

        (b)   Petition for correction of inventorship in 

        patent    (w 1.324)         130.00 

        (c)   For filing a request for 

        reexamination (w 1.510(a))      2,390.00 

        (d)   For filing each statutory disclaimer (w 1.321): 

                By a small entity (w 1.9(f))    55.00 

                By other than a small entity            110.00 

        (e)   For maintaining an original or reissue patent, except a 
design  or plant patent, based on an application filed on or after 
December 12, 1980,  in force beyond four years; the fee is due by three 
years and six months after  the original grant 

                By small entity (w 1.9(f))      495.00 

                By other than a small entity    990.00 

        (f)   For maintaining an original or reissue patent, except a 
design  or plant patent, based on an application filed on or after 
December 12, 1980,  in force beyond eight years; the fee is due by seven 
years and six months after  the original grant 

                By a small entity (w 1.9(f))            995.00 

                By other than a small entity    1,990.00 

        (g)   For maintaining an original or reissue patent, except a 
design  or plant patent, based on an application filed on or after 
December 12, 1980,  in force beyond twelve years; the fee is due by eleven 
years and six months  after the original grant 

                By a small entity (w 1.9(f))            1,495.00 

                By other than a small entity    2,990.00 

        (h)   Surcharge for paying a maintenance fee during the six-month 
grace  period following the expiration of three years and six months, 
seven years  and six months and eleven years and six months after the date 
of the original  grant of a patent based on an application filed on or 
after December 12, 1980 
                By a small entity (w 1.9(f))            65.00 

                By other than a small entity    130.00 

        (i)   Surcharge for accepting a maintenance fee after expiration 
of  a patent for non-timely payment of a maintenance fee where the delay 
in payment  is shown to the satisfaction of the Commissioner to have been 

                (1)   unavoidable 660.00 

                (2)   unintentional   1,550.00 


        (j)   For filing an application for extension of the term of a 
patent 
                (1)   Application for extension under 
# 1.740                 $1,060.00 

                (2)   Initial application for interim extension under # 
1.790     $400.00 
                (3)   Subsequent application for interim extension under # 
 1.790     $200.00 

        [Added 47 FR 41273, Sept. 17, 1982, effective date Oct. 1, 1982; 
paras. 
(k), (l) and  (m) added, 49 FR 34724, Aug. 31, 1984, effective date Nov. 
1,  1984; paras. (c), (f), (g) and  (m), 50 FR 9379, Mar. 7, 1985, 
effective date  May 8, 1985; 50 FR 31825, Aug. 6, 1985, effective date 
Oct. 5, 1985; 51 FR  28057, Aug. 4, 1986; 
52 FR 9394, Mar. 24, 1987; paras. (a)-(n), 54 FR 6893, Feb. 15, 1989, 54 
FR  8053, Feb. 24, 1989, effective Apr. 17, 1989; revised 56 FR 65142, 
Dec. 13,  1991, effective Dec. 16, 1991; paras. 
 (a), (c), (e)-(g) and (i), 57 FR 38190, Aug. 21, 1992, effective Oct. 1, 
1992;  para. (i), 58 FR 44277, Aug. 20, 1993, effective 
Sept. 20, 1993; paras. (c), (e)-(g), (i)(1) and (j), 59 FR 43736, Aug. 25, 
 1994, effective Oct. 1, 1994; para. (j) revised, 60 FR 25615, May 12, 
1995,  effective July 11, 1995; paras. (c), 




(e)-(g), (i)(2), & (j)(1) amended, 60 FR 41018, Aug. 11, 1995, effective 
Oct.  1, 1995] 


# 1.21      Miscellaneous fees and charges. 


        The Patent and Trademark Office has established the following fees 
 for the services indicated: 

        (a)   Registration of attorneys and agents: 

                (l)   For admission to examination for registration to 
practice:  fee payable upon        $130.00 

                (2)   On registration to practice   100.00 

                (3)   For reinstatement to practice   15.00 

                (4)   For certificate of good standing as an 


attorney or agent   10.00 

        Suitable for framing            20.00 

                (5)   For review of decision of the Director of Enrollment 
 and Discipline under w 10.2(c)      130.00 

                (6)   For requesting regrading of an examination under w 
10.7(c  )   130.00 


        (b)   Deposit accounts: 

        (1)   For establishing a deposit account        10.00 

        (2)   Service charge for each month when the balance at the end of 
 the month is below $1,000 25.00 

        (3)   Service charge for each month when the balance at the end of 
 the month is below $300 for restricted subscription deposit accounts used 
exclusively  for subscription order of patent copies as issued 25.00 

        (c)   Disclosure document: For filing a disclosure 

document        10.00 

        (d)   Delivery box: Local delivery box rental, per 

annum50.00 

        (e)   International-type search reports:: For preparing an 
international-type  search report of an international type search made at 
the time of the first  action on the merits in a national  patent 
application       40.00 
        (f)   [Reserved] 

        (g)   Self-service copy charge, per page        0.25 


        (h)   For recording each assignment, agreement, or other paper 
relating  to the property in a patent or application, per property 
       40.00 

        (i)   Publication in Official Gazette: For publication in the 
Official  Gazette of a notice of the availability of an application or a 
patent for licensing  or sale, each application or patent            25.00 

        (j)   Labor charges for services, per hour or fraction thereof 
     30.00 

        (k)   For items and services, that the Commissioner finds may be 
supplied,  for which fees are not specified by statute or by this part, 
such charges as  may be determined by the Commissioner with respect to 
each such item or service       Actual 
     cost 

        (l)   For processing and retaining any application abandoned 
pursuant  to # 1.53(d)(1) unless the required basic filing fee has been 
paid     130.00 
        (m)   For  processing  each  check  returned  "unpaid"  by a bank 
 50.00 
        (n)   For handling an incomplete or improper application under ## 
1.53(c),  1.60, or 1.62     130.00 

        (o)   Marginal cost, paid in advance, for each hour of terminal 
session  time, including print time, using Automated Patent System 
full-text search  capabilities, prorated for the actual time used. The 
Commissioner may waive  the payment by an individual for access to the 
Automated Patent System full-text  search capability (APS-Text) upon a 
showing of need or hardship and if such  waiver is in the public interest 
      40.00 

        [Added 47 FR 41274, Sept. 17, 1982, effective date Oct. 1, 1982; 
paras. 
(b) and (l), 49 FR 553, Jan. 4, 1984, effective date Apr. 1, 1984; paras. 
(a)(5)  and  (6) added, 50 FR 5171, Feb. 6, 1985, effective date Apr. 8, 
1985; 50 FR  31825, Aug. 6, 1985, effective date Oct. 5, 1985; paras. (a), 
(b)(1), (d)-(j), 
(l)-(m), 
54 FR 6893, Feb. 15, 1989, 54 FR 8053, Feb. 24, 1989, 54 FR 9432, March 7, 
 1989, effective Apr. 17, 1989; para. (n) added 
54 FR 47518, Nov. 15, 1989, effective Jan. 16, 1990; paras. (o)-(q) added 
54  FR 50942, Dec.11, 1989, effective Feb. 12, 1990; paras. (a)-(c), 
(e)-(h), (j)-(l)  & (n) amended, 56 FR 65142, Dec. 13, 1991, effective 
Dec. 16, 1991; paras. 
(p) and  (q) deleted, 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; 
 paras. (a)(1), (a)(5), (a)(6), (b)(2), (b)(3), (e) and (i), 57 FR 38190, 
Aug.  21, 1992, effective Oct. 1, 1992; para. (p) added, 
57 FR 38190, Aug. 21, 1992, effective Oct. 1, 1992; para. (p) deleted, 59 
FR  43736, Aug. 25, 1994, effective Oct. 1, 1994; para. (l) amended, 60 FR 
20195,  Apr. 25, 1995, effective June 8, 1995; para. (a)(1) amended, 60 FR 
41018, Aug.  11, 1995, effective Oct. 1, 1995] 


# 1.22      Fees payable in advance. 


        (a)   Patent and trademark fees and charges payable to the Patent 
and  Trademark Office are required to be paid in advance, that is, at the 
time of  requesting any action by the Office for which a fee or charge is 
payable with  the exception that under # 1.53 applications for patent may 
be assigned a filing  date without payment of the basic filing fee. 

        (b)   All patent and trademark fees paid to the Patent and 
Trademark  Office should be itemized in each indi- 
vidual application, patent, or other proceeding in such a manner that it 
is  clear for which purpose the fees are paid. 

        [48 FR 2708, Jan. 20, 1983, effective Feb. 27, 1983] 




# 1.23      Method of payment. 


        All payments of money required for Patent and Trademark Office 
fees,  including fees for the processing of international applications (# 
1.445),  should be made in U.S. specie, Treasury notes, national bank 
notes, post office  money orders, or by certified check. If sent in any 
other form, the Office  may delay or cancel the credit until collection is 
made. Money orders and checks  must be made payable to the Commissioner of 
Patents and Trademarks. Remittances  from foreign countries must be 
payable and immediately negotiable in the United  States for the full 
amount of the fee required. Money sent by mail to the Patent  and 
Trademark Office will be at the risk of the sender; letters containing 
money should be registered. 

        [43 FR 20462, May 11, 1978] 


# 1.24      Coupons. 


  Coupons in denominations of three dollars, for the purchase of patents, 
designs,  defensive publications, statutory invention registrations, and 
trademark registrations  are sold by the Patent and Trademark Office for 
the convenience of the general  public; these coupons may not be used for 
any other purpose. The three-dollar  coupons are sold individually and in 
books of 50 for $150.00. These coupons  are good until used; they may be 
transferred but cannot be redeemed. 
        [47 FR 41274, Sept. 17, 1982, effective Oct. 1, 1982; 48 FR 2708, 
Jan.  20, 1983, effective date Feb. 27, 1983; 50 FR 31825, Aug. 6, 1985, 
effective  Oct. 5, 1985; 51 FR 28057, Aug. 4, 1986; 
56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991] 


# 1.25      Deposit accounts. 


        (a)   For the convenience of attorneys, and the general public in 
paying  any fees due, in ordering services offered by the Office, copies 
of records,  etc. deposit ac- counts may be established in the Patent and 
Trademark Office  upon payment of the fee for establishing a deposit 
account w 1.21(b)(1)). A  minimum deposit of $1,000 is required for paying 
any fee due or in ordering  any services offered by the Office. However, a 
minimum deposit of $300 may  be paid to establish a restricted 
subscription deposit account used exclusively  for subscription order of 
patent copies as issued. At the end of each month,  a deposit account 
statement will be rendered. A remittance must be made promptly  upon 
receipt of the statement to cover the value of items or services charged 
to the account and thus restore the account to its established normal 
deposit  value. An amount sufficient to cover all fees, services, copies, 
etc., requested  must always be on deposit. Charges to accounts with 
insufficient funds will  not be accepted. A service charge (w 1.21(b)(2)) 
will be assessed for each  month that the balance at the end of the month 
is below $1,000. For restricted  subscription deposit accounts, a service 
charge (w 1.21(b)(3)) will be assessed  for each month that the balance at 
the end of the month is below $300. 
        (b)   Filing, issue, appeal, international-type search report, 
international  application processing, petition, and post-issuance fees 
may be charged against  these accounts if sufficient funds are on deposit 
to cover such fees. A general  authorization  to charge  all  fees, or 
only  certain  fees, set  forth in  ww 1.16 to 1.18 to a deposit account 
containing sufficient funds may be filed  in an individual application, 
either for the entire pendency of the application  or with respect to a 
particular paper filed. An authorization to charge to  a deposit account 
the fee for a request for reexamination pursuant to w 1.510  and any other 
fees required in a reexamination proceeding in a patent may also  be filed 
with the request for reexamination. An authorization to charge a fee  to a 
deposit account will not be considered payment of the fee on the date  the 
authorization to charge the fee is effective as to the particular fee to 
be charged unless sufficient funds are present in the account to cover the 
 fee. 

        [49 FR 553, Jan. 4, 1984, effective Apr. 1, 1984; 47 FR 41274, 
Sept.  17, 1982, effective Oct. 1,1982; 50 FR 31826, Aug. 6, 1985, 
effective Oct.  5, 1985] 


# 1.26      Refunds. 


        (a)   Money paid by actual mistake or in excess will be refunded, 
but  a mere change of purpose after the payment of money, as when a party 
desires  to withdraw an application, an appeal, or a request for oral 
hearing, will  not entitle a party to demand such a return. Amounts of 
twenty-five dollars  or  less will not be returned unless specifically 
requested within a reasonable  time, nor will the payer be notified of 
such amount; amounts over twenty-five  dollars may be returned by check 
or, if requested, by credit to a deposit account. 
        (b)   [Reserved] 

        (c)   If the Commissioner decides not to institute a reexamination 
 proceeding, a refund of $1,690 will be made to the requester of the 
proceeding.  Reexamination 



requesters should indicate whether any refund should be made by check or 
by  credit to a deposit account. 

        [47 FR 41274, Sept. 17, 1982, effective Oct. 1, 1982; 50 FR 31826 
Aug.  6, 1985, effective Oct. 5, 1985; para. (c), 54 FR 6893, Feb. 15, 
1989, effective  Apr. 17, 1989; para. (c), 56 FR 65142, Dec. 13, 1991, 
effective Dec. 16, 1991;  paras. (a) and  (c), 57 FR 38190, Aug. 21, 1992, 
effective Oct. 1,1992] 

# 1.27      Statement of status as small entity. 


        (a)   Any person seeking to establish status as a small entity (w 
1.9(f)  of this part) for purposes of paying fees in an application or a 
patent must  file a verified statement in the application or patent prior 
to or with the  first fee paid as a small entity. Such a verified 
statement need only be filed  once in an application or patent and remains 
in effect until changed. 
        (b)   Any verified statement filed pursuant to para- graph (a) of 
this  section on behalf of an indepen- 
dent inventor must be signed by the independent inventor except as 
provided  in ww 1.42, 1.43, or 1.47 of this part and must aver that the 
inventor qualifies  as an independent inventor in accordance with w 1.9(c) 
of this part. Where  there are joint inventors in an application, each 
inventor must file a verified  statement establishing status as an 
independent inventor in order to qualify  as a small entity. Where any 
rights have been assigned, granted, conveyed,  or licensed, or there is an 
obligation to assign, grant, convey, or license,  any rights to a small 
business concern, a nonprofit organization, or any other  individual, a 
verified statement must be filed by the individual, the owner  of the 
small business concern, or an official of the small business concern  or 
nonprofit organization empowered to act on behalf of the small business 
concern or nonprofit organization averring to their status. For purposes 
of  a verified statement under this paragraph, a license to a Federal 
agency resulting  from a funding agreement with that agency pursuant to 
35 U.S.C. 202(c)(4) does not constitute a license as set forth in w 1.9 of 
 this part. 

        (c)   Any verified statement filed pursuant to paragraph (a) of 
this  section on behalf of a small business concern must (1) be signed by 
the owner  or an official of the small business concern empowered to act 
on behalf of  the concern; (2) aver that the concern qualifies as a small 
business concern  as defined in w 1.9(d); and (3) aver that exclusive 
rights to the invention  have been conveyed to and remain with the small 
business concern or, if the  rights are not exclusive, that all other 
rights belong to small entities as  defined in w 1.9. Where the rights of 
the small business concern as a small  entity are not exclusive, a 
verified statement must also be filed by the other  small entities having 
rights averring to their status as such. For purposes  of a verified 
statement under this paragraph, a license to a Federal agency  resulting 
from a funding agreement with that agency pursuant to 35 U.S.C. 202(c)(4) 
does not constitute a license as set forth in w 1.9 of this part. 

        (d)   Any verified statement filed pursuant to paragraph (a) of 
this  section on behalf of a nonprofit organization must (1) be signed by 
an official  of the nonprofit organization empowered to act on behalf of 
the organization; 
(2) aver that the organization qualifies as a nonprofit organization as 
defined  in w 1.9(e) of this part specifying under which one of w 
1.9(e)(1), (2), (3),  or (4) of this part the organization qualifies; and 
(3) aver that exclusive  rights to the invention have been conveyed to and 
remain with the organization  or if the rights are not exclusive that all 
other rights belong to small entities  as defined in w 1.9 of this part. 
Where the rights of the nonprofit organization  as a small entity are not 
exclusive, a verified statement must also be filed  by the other small 
entities having rights averring to their status as such.  For purposes of 
a verified statement under this paragraph, a license to a Federal  agency 
resulting from a funding agreement with that agency pursuant to 35 U.S.C. 
202(c)(4) does not constitute a conveyance of rights as set forth in this 
paragraph. 
        [47 FR 40139, Sept. 10, 1982, added effective Oct. 1, 1982; para. 
(c)  added, 47 FR 43276, Sept. 30, 1982; paras. (b), (c), and  (d), 49 FR 
553, Jan.  4, 1984, effective Apr. 1, 1984] 


# 1.28      Effect on fees of failure to establish status, or 
             change 


status, as a small entity. 

        (a)   The failure to establish status as a small entity 
(## 1.9(f) and 1.27 of this part) in any application or patent prior to 
paying,  or at the time of paying, any fee precludes payment of the fee in 
the amount  established for small entities.  A refund pursuant to # 1.26 
of this part,  based on establishment of small entity status, of a portion 
of fees timely  paid in full prior to establishing status as a small 
entity may only be obtained  if a verified statement under # 1.27 and a 
request for a refund of the excess  amount are filed within two months of 
the date of the timely payment of the  full fee.  The two-month time 
period is not extendable under # 1.136.  Status  as a small entity is 
waived for any fee by the failure to establish the 


status prior to paying, at the time of paying, or within two months of the 
 date of payment of, the fee.  Status as a small entity must be 
specifically  established in each application or patent in which the 
status is available  and desired.  Status as a small entity in one 
application or patent does not  affect any other application or patent, 
including applications or patents which  are directly or indirectly 
dependent upon the application or patent in which  the status has been 
established.  A nonprovisional application claiming benefit  under 35 
U.S.C. 119(e), 120, 121, or 365(c) of a prior application may rely  on a 
verified statement filed in the prior application if the nonprovisional 
application includes a reference to the verified statement in the prior 
application  or includes a copy of the verified statement in the prior 
application and status  as a small entity is still proper and desired. 
Once status as a small entity  has been established in an application or 
patent, the status remains in that  application or patent without the 
filing of a further verified statement pursuant  to # 1.27 of this part 
unless the Office is notified of a change in status. 

        (b)   Once status as a small entity has been established in an 
application  or patent, fees as a small entity may thereafter be paid in 
that application  or patent without regard to a change in status until the 
issue fee is due or  any maintenance fee is due. Notification of any 
change in status resulting  in loss of entitlement to small entity status 
must be filed in the application  or patent prior to paying, or at the 
time of paying, the earliest of the issue  fee or any maintenance fee due 
after the date on which status as a small entity  is no longer appropriate 
pursuant to w 1.9 of this part. The notification of  change in status may 
be signed by the applicant, any person authorized to sign  on behalf of 
the assignee, or an attorney or agent of record or acting in a 
representative capacity pursuant to w 1.34(a) of this part. 

        (c)   If status as a small entity is established in good faith, 
and  fees as a small entity are paid in good faith, in any application or 
patent,  and it is later discovered that such status as a small entity was 
established  in error or that through error the Office was not notified of 
a change in status  as required by paragraph (b) of this section, the 
error will be excused (1)  if any deficiency between the amount paid and 
the amount due is paid within  three months after the date the error 
occurred or (2) if any deficiency between  the amount paid and the amount 
due is paid more than three months after the  date the error occurred and 
the payment is accompanied by a statement explaining  how the error in 
good faith occurred and how and when the error was discovered.  The 
statement must be a verified statement if made by a person not registered 
to practice before the Patent and Trademark Office. The deficiency is 
based  on the amount of the fee, for other than a small entity, in effect 
at the time  the deficiency is paid in full. 

        (d)(1)      Any attempt to fraudulently (i) establish status as a 
small  entity or (ii) pay fees as a small entity shall be considered as a 
fraud practiced  or attempted on the Office. 

        (2)   Improperly and with intent to deceive (i) establishing 
status  as a small entity or (ii) paying fees as a small entity shall be 
considered  as a fraud practiced or attempted on the Office. 

        [47 FR 40140, Sept. 10, 1982, added effective Oct. 1, 1982; para. 
(a),  49 FR 553, Jan. 4, 1984, effective Apr. 1, 1984; para. (d)(2), 57 FR 
2021,  Jan. 17, 1992, effective Mar. 16, 1992; para. (c) revised, 58 FR 
54504, Oct.  22, 1993, effective Jan 3, 1994; para. (a) revised, 60 FR 
20195, Apr. 25, 1995,  effective June 8, 1995] 

Subpart B - National Processing Provisions 

PROSECUTION OF APPLICATION AND 
APPOINTMENT OF ATTORNEY OR AGENT 


# 1.31          Applicants may be represented by a registered 
             attorney 


or agent. 

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

        [50 FR 5171, Feb. 6,1985, effective Mar. 8, 1985] 


# 1.32      [Reserved] 


        [Deleted 57 FR 29642, July 6, 1992, effective Sept. 4, 1992] 

# 1.33          Correspondence respecting patent 

                        applications, reexamination proceedings, and 
                     other  proceedings. 

        (a)   The residence and post office address of the applicant must 
appear  in the oath or declaration if not stated elsewhere in the 
application. The  applicant may also specify and an attorney or agent of 
record may specify a  correspondence address to which communica- 




tions about the application are to be directed. All notices, official 
letters,  and other communications in the case will be directed to the 
correspondence  address or, if no such correspondence address is 
specified, to an attor-ney  or agent of record (see w 1.34(b)), or, if no 
attorney or agent is of record,  to the applicant, or to any assignee of 
record of the entire interest if the  applicant or such assignee so 
requests, or to an assignee of an undivided part  if the applicant so 
requests, at the post office address of which the Office  has been 
notified in the case. Amendments and other papers filed in the application 
 must be signed: (1) by the applicant, or (2) if there is an assignee of 
record  of an undivided part interest, by the applicant and such assignee, 
or (3) if  there is an assignee of record of the entire interest, by such 
assignee, or 
(4) by an attorney or agent of record, or (5) by a registered attorney or 
agent  not of record who acts in a representative capacity under the 
provisions of  w 1.34(a). Double correspondence with an applicant and his 
attorney or agent,  or with more than one attorney or agent, will not be 
undertaken. If more than  one attorney or agent be made of record and a 
correspondence address has not  been specified, correspondence will be 
held with the one last made of record. 
        (b)   An applicant who has not made of record a registered 
attorney  or agent may be required to state whether he received assistance 
in the preparation  or prosecution of his application, for which any 
compensation or consideration  was given or charged, and if so, to 
disclose the name or names of the person  or persons providing such 
assistance. This includes the preparation for the  applicant of the 
specification and amendments or other papers to be filed in  the Patent 
and Trademark Office, as well as other assistance in such matters,  but 
does not include merely making drawings by draftsmen or stenographic 
services  in typing papers. 

        (c)   All notices, official letters, and other communications for 
the  patent owner or owners in a reexamination proceeding will be directed 
to the  attorney or agent of record (see w 1.34(b)) in the patent file at 
the address  listed on the register of patent attorneys and agents 
maintained pursuant to  w 10.5 and w 10.11 or, if no attorney or agent is 
of record, to the patent  owner or owners at the address or addresses of 
record. Amendments and other  papers filed in a reexamination proceeding 
on behalf of the patent owner must  be signed by the patent owner, or if 
there is more than one owner by all the  owners, or by an attorney or 
agent of record in the patent file, or by a registered  attorney or agent 
not of record who acts in a representative capacity under  the provisions 
of w 1.34(a). Double correspondence with the patent owner or  owners and 
the patent owner's attorney or agent, or with more than one attorney  or 
agent, will not be undertaken. If more than one attorney or agent is of 
record and a correspondence address has not been specified, correspondence 
 will be held with the last attorney or agent made of record. 

        (d)   A "correspondence address" or change thereto may be filed 
with  the Patent and Trademark Office during the enforceable life of the 
patent.  The "correspondence address" will be used in any correspondence 
relating to  maintenance fees unless a separate "fee address" has been 
specified. See w  1.363 for "fee address" used solely for maintenance fee 
purposes. 
        [36 FR 12617, July 2, 1971; 46 FR 29181, May 29, 1981; para. (d) 
added,  49 FR 34724, Aug. 31, 1984, effective Nov. 1, 1984; para. (c), 50 
FR 5171,  Feb. 6, 1985, effective Mar. 8, 1985] 


# 1.34      Recognition for representation. 


        (a)   When a registered attorney or agent acting in a 
representative  capacity appears in person or signs a paper in practice 
before the Patent and  Trademark Office in a patent case, his or her 
personal appearance or signature  shall constitute a representation to the 
Patent and Trademark Office that under  the provisions of this subchapter 
and the law, he or she is authorized to represent  the particular party in 
whose behalf he or she acts. In filing such a paper,  the registered 
attorney or agent should specify his or her registration number  with his 
or her signature. Further proof of authority to act in a representative 
capacity may be required. 

        (b)   When an attorney or agent shall have filed his or her power 
of  attorney, or authorization, duly executed by the person or persons 
entitled  to prosecute an application or a patent involved in a 
reexamination proceeding,  he or she is a principal attorney of record in 
the case. A principal attorney  or agent, so appointed, may appoint an 
associate attorney or agent who shall  also then be of record. 

        [46 FR 29181, May 29, 1981; para. (a), 50 FR 5171, Feb. 6, 1985, 
effective  Mar. 6, 1985] 


# 1.36          Revocation of power of attorney or 

                        authorization; withdrawal of attorney or agent. 
        A power of attorney or authorization of agent may be revoked at 
any  stage in the proceedings of a case, and 



an attorney or agent may withdraw, upon application to and approval by the 
 Commissioner. An attorney or agent, except an associate attorney or agent 
whose  address is the same as that of the principal attorney or agent, 
will be notified  of the revocation of the power of attorney or 
authorization, and the applicant  or patent owner will be notified of the 
withdrawal of the attorney or agent.  An assignment will not of itself 
operate as a revocation of a power or authorization  previously given, but 
the assignee of the entire interest may revoke previous  powers and be 
represented by an attorney or agent of the assignee's own selection.  See 
# 1.613(d) for withdrawal of an attorney or agent of record in an 
interference. 
        [49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985] 

WHO MAY APPLY FOR A PATENT 


# 1.41      Applicant for patent. 


        (a)   A patent must be applied for in the name of the actual 
inventor  or inventors. Full names must be stated, including the family 
name, and at  least one given name without abbreviation together with any 
other given name  or initial. 

        (b)   Unless the contrary is indicated the word "applicant" when 
used  in these sections refers to the inventor or joint inventors who are 
applying  for a patent, or to the person mentioned in ## 1.42, 1.43 or 
1.47 who is applying  for a patent in place of the inventor. 

        (c)   Any person authorized by the applicant may file an 
application  for patent on behalf of the inventor or inventors, but an 
oath or declaration  for the application (w 1.63) can only be made in 
accordance with 
w 1.64. 

        (d)   A showing may be required from the person filing the 
application  that the filing was authorized where such authorization comes 
into question. 
        [48 FR 2708, Jan. 20, 1983; 48 FR 4285, Jan. 31, 1983] 


# 1.42      When the inventor is dead. 


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

        [48 FR 2709, Jan. 20, 1983, effective Feb. 27, 1983] 


# 1.43          When the inventor is insane or legally 

                        incapacitated. 

        In case an inventor is insane or otherwise legally inca- 
pacitated,  the legal representative (guardian, conservator, etc.) of such 
inventor may  make the necessary oath or declaration, and apply for and 
obtain the patent. 
        [48 FR 2709, Jan. 20, 1983, effective Feb. 27, 1983] 


# 1.44      Proof of authority. 


        In the cases mentioned in ## 1.42 and 1.43, proof of the power or 
authority  of the legal representative must be recorded in the Patent and 
Trademark Office  or filed in the application before the grant of a patent. 


# 1.45      Joint inventors. 


        (a)   Joint inventors must apply for a patent jointly and each 
must  make the required oath or declaration; neither of them alone, nor 
less than  the entire number, can apply for a patent for an invention 
invented by them  jointly, except as provided in # 1.47. 

        (b)   Inventors may apply for a patent jointly even though 
        (1)   They did not physically work together or at the same time, 
        (2)   Each inventor did not make the same amount of contribution, 
or 
        (3)   Each inventor did not make a contribution to the subject 
matter  of every claim of the application. 

        (c)   If multiple inventors are named in a nonprovisional 
application,  each named inventor must have made a contribution, 
individually or jointly,  to the subject matter of at least one claim of 
the application and the application  will be considered to be a joint 
application under 35 U.S.C. 116.  If multiple  inventors are named in a 
provisional application, each named inventor must  have made a 
contribution, individually or jointly, to the subject matter disclosed  in 
the provisional application and the provisional application will be 
considered  to be a joint application under 35 U.S.C. 116. 

        [paras. (b) and  (c), 47 FR 41274, Sept. 17, 1982, effective Oct. 
1,  1982; 48 FR 2709, Jan. 20, 1983, effective Feb. 27, 1983; 
50 FR 9379, Mar. 7, 1985, effective May 8, 1985; para. (c) revised, 60 FR 
20195,  Apr. 25, 1995, effective June 8, 1995] 


# 1.46      Assigned inventions and patents. 


        In case the whole or a part interest in the invention or in the 
patent  to be issued is assigned, the application must still be made or 
authorized  to be made, and an oath 




or declaration signed, by the inventor or one of the persons mentioned in 
##  1.42, 1.43, or 1.47. However, the patent may be issued to the assignee 
or jointly  to the inventor and the assignee as provided in w 3.81. 

        [48 FR 2709, Jan. 20, 1983, effective Feb. 27, 1983; 57 FR 29642, 
July  6, 1992, effective Sept. 4, 1992] 


# 1.47          Filing when an inventor refuses to sign or 

                        cannot be reached. 

        (a)   If a joint inventor refuses to join in an application for 
patent  or cannot be found or reached after diligent effort, the 
application may be  made by the other inventor on behalf of himself or 
herself and the omitted  inventor. The oath or declaration in such an 
application must be accompanied  by a petition including proof of the 
pertinent facts and by the required fee 
(w 1.17(h)) and must state the last known address of the omitted inventor. 
 The Patent and Trademark Office shall forward notice of the filing of the 
application  to the omitted inventor at said address. Should such notice 
be returned to  the Office undelivered, or should the address of the 
omitted inventor be unknown,  notice of the filing of the application 
shall be published in the Official  Gazette. The omitted inventor may 
subsequently join in the application on filing  an oath or declaration of 
the character required by w 1.63. A patent may be  granted to the inventor 
making the application, upon a showing satisfactory  to the Commissioner, 
subject to the same rights which the omitted inventor  would have had if 
he or she had been joined. 

        (b)   Whenever an inventor refuses to execute an application for 
patent,  or cannot be found or reached after diligent effort, a person to 
whom the inventor  has assigned or agreed in writing to assign the 
invention or who otherwise  shows sufficient proprietary interest in the 
matter justifying such action  may make application for patent on behalf 
of and as agent for the inventor.  The oath or declaration in such an 
application must be accompanied by a petition  including proof of the 
pertinent facts and a showing that such action is necessary  to preserve 
the rights of the parties or to prevent irreparable damage, and  by the 
required fee (w 1.17(h)) and must state the last known address of the 
inventor. The assignment, written agreement to assign or other evidence of 
 proprietary interest, or a verified copy thereof, must be filed in the 
Patent  and Trademark Office. The Office shall forward notice of the 
filing of the  application to the inventor at the address stated in the 
application. Should  such notice be returned to the Office undelivered, or 
should the address of  the inventor be unknown, notice of the filing of 
the application shall be published  in the Official Gazette. The inventor 
may subsequently join in the application  on filing an oath or declaration 
of the character required by w 1.63. A patent  may be granted to the 
inventor upon a showing satisfactory to the Commissioner. 
        [47 FR 41275, Sept. 17, 1982, effective Oct. 1, 1982; 48 FR 2709, 
Jan.  20, 1983, effective Feb. 27, 1983] 


# 1.48      Correction of inventorship. 


        (a)   If the correct inventor or inventors are not named in a 
nonprovisional  application through error without any deceptive intention 
on the part of the  actual inventor or inventors, the application may be 
amended to name only the  actual inventor or inventors. Such amendment 
must be diligently made and must  be accompanied by: 

        (1)   a petition including a statement of facts verified by the 
original  named inventor or inventors establishing when the error without 
deceptive intention  was discovered and how it occurred; 

        (2)   an oath or declaration by each actual inventor or inventors 
as  required by # 1.63; 

        (3)   the fee set forth in # 1.17(h); and 

        (4)   the written consent of any assignee. When the application is 
 involved in an interference, the petition shall comply with the 
requirements  of this section and shall be accompanied by a motion under # 
1.634. 
        (b)   If the correct inventors are named in the nonprovisional 
application  when filed and the prosecution of the application results in 
the amendment  or cancellation of claims so that less than all of the 
originally named inventors  are the actual inventors of the invention 
being claimed in the application,  an amendment shall be filed deleting 
the names of the person or persons who  are not inventors of the invention 
being claimed.  The amendment must be diligently  made and shall be 
accompanied by: 

        (1)   A petition including a statement identifying each named 
inventor  who is being deleted and acknowledging that the inventor's 
invention is no  longer being claimed in the application; and 

        (2)   The fee set forth in # 1.17(h). 

        (c)   If a nonprovisional application discloses unclaimed subject 
matter  by an inventor or inventors not 




named in the application, the application may be amended pursuant to 
paragraph 
(a) of this section to add claims to the subject matter and name the 
correct  inventors for the application. 

        (d)   If the name or names of an inventor or inventors were 
omitted  in a provisional application through error without any deceptive 
intention  on the part of the actual inventor or inventors, the 
provisional application  may be amended to add the name or names of the 
actual inventor or inventors.  Such amendment must be accompanied by: 

        (1)   a petition including a statement that the error occurred 
without  deceptive intention on the part of the actual inventor or 
inventors, which  statement must be a verified statement if made by a 
person not registered to  practice before the Patent and Trademark Office; 
and 

        (2)   the fee set forth in # 1.17(q). 

        (e)   If a person or persons were named as an inventor or 
inventors  in a provisional application through error without any 
deceptive intention,  an amendment may be filed in the provisional 
application deleting the name  or names of the person or persons who were 
erroneously named. Such amendment  must be accompanied by: 

        (1)   a petition including a statement of facts verified by the 
person  or persons whose name or names are being deleted establishing that 
the error  occurred without deceptive intention; 

        (2)   the fee set forth in # 1.17(q); and 

        (3)   the written consent of any assignee. 
        [48 FR 270-9, Jan. 20, 1983, effective Feb. 27, 1983; 49 FR 48416, 
 Dec. 12, 1984, effective Feb. 11, 1985; 50 FR 9379, Mar. 7, 1985, 
effective  May 8, 1985; para. (a), 57 FR 56446, Nov. 30, 1992, effective 
Jan. 4, 1993;  revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995] 

THE   APPLICATION 


# 1.51      General requisites of an application. 


        (a)   Applications for patents must be made to the Commissioner of 
 Patents and Trademarks. 

        (1)   A complete application filed under # 1.53(b)(1) comprises: 


        (i)   A specification, including a claim or claims, see ## 1.71 to 
 1.77; 

        (ii)    An oath or declaration, see ## 1.63 and  1.68; 

        (iii) Drawings, when necessary, see ## 1.81 to 1.85; and 
        (iv)    The prescribed filing fee, see # 1.16. 

        (2)   A complete provisional application filed under 
# 1.53(b)(2) comprises: 

        (i)   A cover sheet identifying: 

        (A)   The application as a provisional application, 

        (B)   The name or names of the inventor or inventors, (see # 
1.41), 
        (C)   The residence of each named inventor, 

        (D)   The title of the invention, 

        (E)   The name and registration number of the attorney or agent 
(if  applicable), 

        (F)         The docket number used by the person filing the 
application  to identify the application (if applicable), 

        (G)   The correspondence address, and 

        (H)   The name of the U.S. Government agency and Government 
contract  number (if the invention was made by an agency of the U.S. 
Government or under  a contract with an agency of the U.S. Government); 

        (ii)    A specification as prescribed by 35 U.S.C. 112, first 
paragraph,  see # 1.71; 

        (iii) Drawings, when necessary, see ## 1.81 to 1.85; and 
        (iv)    The prescribed filing fee, see # 1.16. 

        (b)   Applicants are encouraged to file an information disclosure 
statement  in nonprovisional applications.  See ## 1.97 and 1.98.  No 
information disclosure  statement may be filed in a provisional application. 

        (c)   Applicants may desire and are permitted to file with, or in, 
 the application or authorization to charge, at any time during the 
pendency  of the application, any fees required under any of ## 1.16 to 
1.18 to a deposit  account established and maintained in accordance with # 
1.25. 

        [42 FR 5593, Jan. 28, 1977; paras.  (a) and  (c), 47 FR 41275, 
Sept.  17, 1982, effective Oct. 1, 1982; paras. (a) and (b), 48 FR 2709, 
Jan. 20,  1983, effective Feb. 27, 1983;  para. (b), 57 FR 2021, Jan. 17, 
1992, effective  Mar. 16, 1992; paras. (a) & (b) revised, 60 FR 20195, 
Apr. 25, 1995, effective  June 8, 1995] 


# 1.52      Language, paper, writing, margins. 


        (a)   The application, any amendments or corrections thereto, and 
the  oath or declaration must be in the English language except as 
provided for  in w 1.69 and paragraph (d) of this section, or be 
accompanied by a verified  translation of the application and a 
translation of any corrections or amendments  into the English language. 
All papers which are to become apart of the permanent  records of the 
Patent and Trademark Office must be legibly written, typed,  or printed in 
permanent ink or its equivalent in quality. All of the application 



papers must be presented in a form having sufficient clarity and contrast 
between  the paper and the writing, typing, or printing thereon to permit 
the direct  production of readily legible copies in any number by use of 
photographic,  electrostatic, photo-off-set, and microfilming processes. 
If the papers are  not of the required quality, substitute typewritten or 
printed papers of suitable  quality may be required. 

        (b)   The application papers (specification, including claims, 
abstract,  oath or declaration, and papers as provided for in ww 1.42, 
1.43, 1.47, etc.)  and also papers subsequently filed, must be plainly 
written on but one side  of the paper. The size of all sheets of paper 
should be 8 to 8 1/2 by 10 1/2 
 to 13 inches (20.3 to 21.6 cm. by 26.6 to 33.0 cm.) A margin of at least 
approximately  1 inch 
(2.5 cm.) must be reserved on the left-hand of each page. The top of each 
page  of the application, including claims must have a margin of at least 
approximately 
 3/4  inch(2 cm.). The lines must not be crowded too closely together; 
typewritten  lines should be 1 1/2  or double spaced. The pages of the 
application including  claims and abstract should be numbered 
consecutively, starting with 1, the  numbers being centrally located above 
or preferably, below, the text. 
        (c)   Any interlineation, erasure, cancellation or other 
alteration  of the application papers filed should be made before the 
signing of any accompanying  oath or declaration pursuant to w 1.63 
referring to those application papers  and should be dated and initialed 
or signed by the applicant on the same sheet  of paper. Application papers 
containing alterations made after the signing  of an oath or declaration 
referring to those application papers must be supported  by a supplemental 
oath or declaration under w 1.67(c). After the signing of  the oath or 
declaration referring to the application papers, amendments may  only be 
made in the manner provided by ww1.121 and 1.123 through 1.125. 
        (d)   An application  may be filed in a language other than 
English.  A verified English translation of the non-English language 
application and  the fee set forth in w 1.17(k) are required to be filed 
with the application  or within such time as may be set by the Office. 

        [43 FR 20462, May 11, 1978; paras. (a) and  (d), 47 FR 41275, 
Sept.  17, 1982, effective Oct. 1, 1982; para. (c), 48 FR 2709. Jan. 20, 
1983, effective  Feb. 27, 1983; para.  (d), 49 FR 554, Jan. 4, 1984, 
effective Apr. 1, 1984;  para. (c), 57 FR 2021, Jan. 17, 1992, effective 
Mar. 16, 1992] 


# 1.53      Application number, filing date, and completion 
     of 


application. 

        (a)   Any application for a patent received in the Patent and 
Trademark  Office will be assigned an application number for 
identification purposes. 


        (b)(1)      The filing date of an application for patent filed 
under  this section, except for a provisional application, is the date on 
which:   a specification containing a description pursuant to # 1.71 and 
at least one  claim pursuant to # 1.75; and any drawing required by 
# 1.81(a), are filed in the Patent and Trademark Office in the name of the 
 actual inventor or inventors as required by # 1.41. No new matter may be 
introduced  into an application after its filing date (# 1.118).  If all 
the names of the  actual inventor or inventors are not supplied when the 
specification and any  required drawing are filed, the application will 
not be given a filing date  earlier than the date upon which the names are 
supplied unless a petition with  the fee set forth in (# 1.17(i) is filed 
which sets forth the reasons the delay  in supplying the names should be 
excused. A continuation or divisional application 
(filed under the conditions specified in 35 U.S.C. 120 or 121 and # 
1.78(a))  may be filed under this section, # 1.60 or 
# 1.62. A continuation-in-part application may be filed under this section 
 or # 1.62. 

        (2)   The filing date of a provisional application is the date on 
which: 
 a specification as prescribed by 35 U.S.C. 112, first paragraph; and any 
drawing  required by 
# 1.81(a), are filed in the Patent and Trademark Office in the name of the 
 actual inventor or inventors as required by # 1.41.  No amendment, other 
than  to make the provisional application comply with all applicable 
regulations,  may be made to the provisional application after the filing 
date of the provisional  application.  If all the names of the actual 
inventor or inventors are not  supplied when the specification and any 
required drawing are filed, the provisional  application will not be given 
a filing date earlier than the date upon which  the names are supplied 
unless a petition with the fee set forth in # 1.17(q)  is filed which sets 
forth the reasons the delay in supplying the names should  be excused. 

        (i)   A provisional application must also include a cover sheet 
identifying  the application as a provisional application.  Otherwise, the 
application will  be treated as an application filed under # 1.53(b)(1). 




        (ii)    An application for patent filed under 
# 1.53(b)(1) may be treated as a provisional applicationand be accorded 
the  original filing date provided that a petition requesting the 
conversion, with  the fee set forth in # 1.17(q), is filed prior to the 
earlier of the abandonment  of the # 1.53(b)(1) application, the payment 
of the issue fee, the expiration  of 12 months after the filing date of 
the # 1.53(b)(1) application, or the  filing of a request for a statutory 
invention registration under # 1.293.   The grant of any such petition 
will not entitle applicant to a refund of the  fees which were properly 
paid in the application filed under # 1.53(b)(1). 


        (iii)     A provisional application shall not be entitled to the 
right  of priority under # 1.55 or 35 U.S.C. 119 or 365(a) or to the 
benefit of an  earlier filing date under 
# 1.78 or 35 U.S.C. 120, 121 or 365(c) of any other application.  No claim 
 for priority under # 1.78(a)(3) may 

be made in a design application based on a provisional application.  No 
request  under # 1.293 for a statutory invention registration may be filed 
in a provisional  application. The requirements of ## 1.821-1.825 
regarding application disclosures  containing nucleotide and/or amino acid 
sequences are not mandatory for provisional  applications. 

        (c)   If any application is filed without the specification, 
drawing  or name, or names, of the actual inventor or inventors required 
by paragraph 
(b)(1) or (b)(2) of this section, applicant will be so notified and given 
a  time period within which to submit the omitted specification, drawing, 
name,  or names, of the actual inventor, or inventors, in order to obtain 
a filing  date as of the date of filing of such submission. A copy of the 
"Notice of  Incomplete Application" form notifying the applicant should 
accompany any response  thereto submitted to the Office. If the omission 
is not corrected within the  time period set, the application will be 
returned or otherwise disposed of;  the fee, if submitted, will be 
refunded less the handling fee set forth in  # 1.21(n).  Any request for 
review of a refusal to accord an application a  filing date must be by way 
of a petition accompanied by the fee set forth in  # 1.17(i), if the 
application was filed under # 1.53(b)(1), or by the fee set  forth in # 
1.17(q), if the application was filed under # 1.53(b)(2). 
        (d)(1)      If an application which has been accorded a filing 
date  pursuant to paragraph (b)(1) of this section does not include the 
appropriate  filing fee or an oath or declaration by the applicant, 
applicant will be so  notified, if a correspondence address has been 
provided and given a period  of time within which to file the fee, oath, 
or declaration and to pay the surcharge  as set forth in # 1.16(e) in 
order to prevent abandonment of the application. 
 A copy of the "Notice to File Missing Parts" form mailed to applicant 
should  accompany any response thereto submitted to the Office. If the 
required filing  fee is not timely paid, or if the processing and 
retention fee set forth in  # 1.21(l) is not paid within one year of the 
date of mailing of the notification  required by this paragraph, the 
application will be disposed of. No copies  will be provided or certified 
by the Office of an application which has been  disposed of or in which 
neither the required basic filing fee nor the processing  and retention 
fee has been paid. The notification pursuant to this paragraph  may be 
made simultaneously with any notification pursuant to paragraph (c)  of 
this section.  If no correspondence address is included in the 
application,  applicant has two months from the filing date to file the 
basic filing fee,  oath or declaration and to pay the surcharge as set 
forth in # 1.16(e) in order  to prevent abandonment of the application; 
or, if no basic filing fee has been  paid, one year from the filing date 
to pay the processing and retention fee  set forth in # 1.21(l) to prevent 
disposal of the application. 

        (2)   If a provisional application which has been accorded a 
filing  date pursuant to paragraph (b)(2) of this section does not include 
the appropriate  filing fee or the cover sheet required by # 1.51(a)(2), 
applicant will be so  notified if a correspondence address has been 
provided and given a period of  time within which to file the fee, cover 
sheet and to pay the surcharge as  set forth in # 1.16(l) in order to 
prevent abandonment of the application. 
 A copy of the "Notice to File Missing Parts" form mailed to applicant 
should  accompany any response thereto submitted to the Office. If the 
required filing  fee is not timely paid, the application will be disposed 
of.  No copies will  be provided or certified by the Office of an 
application which has been disposed  of or in which the required basic 
filing fee has not been paid.  The notification  pursuant to this 
paragraph may be made simultaneously with any notification  pursuant to 
paragraph (c) of this section. If no correspondence address is  included 
in the application, applicant has two months from the filing date  to file 
the basic filing fee, cover sheet and to pay the surcharge as set forth  in 




# 1.16(l) in order to prevent abandonment of the application. 

        (e)(1)      An application for a patent filed under paragraph 
(b)(1)  of this section will not be placed upon the files for examination 
until all  its required parts, complying with the rules relating thereto, 
are received,  except that certain minor informalities may be waived 
subject to subsequent  correction whenever required. 

        (2)   A provisional application for a patent filed under paragraph 
(b)(2) of this section will not be placed upon the files for examination 
and  will become abandoned no later than twelve months after its filing 
date pursuant  to 35 U.S.C. 111(b)(1). 

        (f)   The filing date of an international application designating 
the  United States of America shall be treated as the filing date in the 
United  States of America under PCT Article 11(3), except as provided in 
35 U.S.C.  102(e). 

        [48 FR 2709, Jan. 20, 1983, effective Feb. 27, 1983; paras.  (b) 
and 
(d), 49 FR 554, Jan. 4, 1984, effective Apr. 1, 1984; para. (c), 50 FR 
31826,  Aug. 6, 1985, effective Oct. 5, 1985; paras. 
(c) and (d), 53 FR 47808, Nov. 28, 1988, effective Jan. 1, 1989; paras. 
(b)  and (c), 54 FR 47518, Nov. 15, 1989, effective Jan. 16, 1990; paras. 
(a)-(e)  revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995] 


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

        (a)   It is desirable that all parts of the complete application 
be  deposited in the Office together; otherwise a letter must accompany 
each part,  accurately and clearly connecting it with the other parts of 
the application.  See w 1.53 with regard to completion of an application. 

        (b)   Applicant will be informed of the application serial number 
and  filing date by a filing receipt. 

        [48 FR 2710, Jan. 20, 1983, effective Feb. 27, 1983] 


# 1.55      Claim for foreign priority. 


        (a)   An applicant in a nonprovisional application may claim the 
benefit  of the filing date of one or more prior foreign applications 
under the conditions  specified in 35 U.S.C. 119(a)-(d) and 172.  The 
claim to priority need be in  no special form and may be made by the 
attorney or agent if the foreign application  is referred to in the oath 
or declaration as required by # 1.63.  The claim  for priority and the 
certified copy of the foreign application specified in  35 U.S.C. 119(b) 
must be filed in the case of an interference (# 1.630), when  necessary to 
overcome the date of a reference relied upon by the examiner,  when 
specifically required by the examiner, and in all other cases, before  the 
patent is granted.  If the claim for priority or the certified copy of 
the foreign application is filed after the date the issue fee is paid, it 
must  be accompanied by a petition requesting entry and by the fee set 
forth in #  1.17(i).  If the certified copy filed is not in the English 
language, a translation  need not be filed except in the case of 
interference; or when necessary to  overcome the date of a reference 
relied upon by the examiner; or when specifically  required by the 
examiner, in which event an English language translation must  be filed 
together with a statement that the translation of the certified copy  is 
accurate. The statement must be a verified statement if made by a person 
not registered to practice before the Patent and Trademark Office. 
        (b)   An applicant in a nonprovisional application may under 
certain  circumstances claim priority on the basis of one or more 
applications for an  inventor's certificate in a country granting both 
inventor's certificates and  patents. To claim the right of priority on 
the basis of an application for  an inventor's certificate in such a 
country under 35 U.S.C. 119(d), the applicant  when submitting a claim for 
such right as specified in paragraph (a) of this  section, shall include 
an affidavit or declaration. The affidavit or declaration  must include a 
specific statement that, upon an investigation, he or she is  satisfied 
that to the best of his or her knowledge, the applicant, when filing  the 
application for the inventor's certificate, had the option to file an 
application  for either a patent or an inventor's certificate as to the 
subject matter of  the identified claim or claims forming the basis for 
the claim of priority. 
        [para. (b), 48 FR 41275, Sept. 17, 1982, effective Oct. 1 1982; 48 
 FR 2710, Jan. 20, 1983, effective Feb. 27, 1983; para. (b), 
49 FR 554, Jan. 4, 1984, effective Apr. 1, 1984; para. (a), 49 FR 48416, 
Dec.  12, 1984, effective Feb. 11, 1985; para. (a), 54 FR 6893, Feb. 15, 
1989, 54  FR 9432, March 7, 1989, effective Apr. 17, 1989; para. (a), 54 
FR 47518, Nov.  15, 1989, effective Jan. 16, 1990; para.  (a) revised, 58 
FR 54504, Oct. 22,  1993, effective Jan 3, 1994; revised, 60 FR 20195, 
Apr.25, 1995, effective  June 8, 1995] 


# 1.56      Duty to disclose information material to 

                patentability. 

        (a)   A patent by its very nature is affected with a public 
interest.  The public interest is best served, and the most effective 
patent examination  occurs when, at the time an application is being 
examined, the Office is 



aware of and evaluates the teachings of all information material to 
patentability.  Each individual associated 
with the filing and prosecution of a patent application has a duty of 
candor  and good faith in dealing with the Office, which includes a duty 
to disclose  to the Office all information known to that individual to be 
material to patentability  as defined in this section. The duty to 
disclose information exists with respect  to each pending claim until the 
claim is cancelled or withdrawn from consideration,  or the application 
becomes abandoned. Information material to the patentability  of a claim 
that is cancelled or withdrawn from consideration need not be submitted 
if the information is not material to the patentability of any claim 
remaining  under consideration in the application. There is no duty to 
submit information  which is not material to the patentability of any 
existing claim. The duty  to disclose all information known to be material 
to patentability is deemed  to be satisfied if all information known to be 
material to patentability of  any claim issued in a patent was cited by 
the Office or submitted to the Office  in the manner prescribed by ww 
1.97(b)-(d) and 1.98. However, no patent will  be granted on an 
application in connection with which fraud on the Office was  practiced or 
attempted or the duty of disclosure was violated through bad faith  or 
intentional misconduct. The Office encourages applicants to carefully 
examine: 
        (1)   prior art cited in search reports of a foreign patent office 
 in a counterpart application, and 

        (2)   the closest information over which individuals associated 
with  the filing or prosecution of a patent application believe any 
pending claim  patentably defines, to make sure that any material 
information contained therein  is disclosed to the Office. 

        (b)   Under this section, information is material to patentability 
 when it is not cumulative to information already of record or being made 
of  record in the application, and 

        (1) It establishes, by itself or in combination with other 
information,  a prima facie case of unpatentability of a claim; or 

  (2)     It refutes, or is inconsistent with, a position the applicant 
takes  in: 

        (i)   Opposing an argument of unpatentability relied on by the 
Office,  or 

        (ii)    Asserting an argument of patentability. 

        A prima facie case of unpatentability is established when the 
information  compels a conclusion that a claim is unpatentable under the 
preponderance of  evidence, burden-of-proof standard, giving each term in 
the claim its broadest  reasonable construction consistent with the 
specification, and before any consideration  is given to evidence which 
may be submitted in an attempt to establish a contrary  conclusion of 
patentability. 

        (c)   Individuals associated with the filing or prosecution of a 
patent  application within the meaning of this section are: 

        (1)   Each inventor named in the application; 

        (2)   Each attorney or agent who prepares or prosecutes the 
application;  and 

        (3)   Every other person who is substantively involved in the 
preparation  or prosecution of the application and who is associated with 
the inventor,  with the assignee or with anyone to whom there is an 
obligation to assign the  application. 

        (d)   Individuals other than the attorney, agent or  inventor may 
comply  with this section by disclosing information to the attorney, 
agent, or inventor. 
        [42 FR 5593, Jan. 28, 1977; paras. (d) & (e) - (i), 47 FR 21751, 
May  19, 1982, effective July 1, 1982; para.  (c), 48 FR 2710, Jan. 20, 
1983, effective  Feb. 27, 1983; paras. (b) and  (j), 49 FR 554, Jan. 4, 
1984, effective Apr.  1, 1984; paras. (d) and  (h), 50 FR 5171, Feb. 6, 
1985, effective Mar. 8, 1985;  para. (e), 53 FR 47808, Nov. 28, 1988, 
effective Jan. 1, 1989; 57 FR 2021,  Jan. 17, 1992, effective Mar. 16, 1992] 


# 1.57      [Reserved] 


        [48 FR 2710, Jan. 20, 1983, effective Feb. 27, 1983] 


# 1.58      Chemical and mathematical formulas and tables. 


        (a)   The specification, including the claims, may contain 
chemical  and mathematical formulas, but shall not contain drawings or 
flow diagrams.  The description portion of the specification may contain 
tables; claims may  contain tables either if necessary to conform to 35 
U.S.C. 112 or if otherwise  found to be desirable. 

        (b)   All tables and chemical and mathematical formulas in the 
specification,  including claims, and amendments thereto, must be on paper 
which is flexible,  strong, white, smooth, non-shiny, and durable in order 
to permit use as camera  copy when printing any patent which may issue. A 
good grade of bond paper is  acceptable; watermarks should not be 
prominent. India 




ink or its equivalent, or solid black typewriter, should be used to secure 
 perfectly black solid lines. 

        (c)   To facilitate camera copying when printing, the width of 
formulas  and tables as presented should be limited normally to 5 inches 
(12.7 cm.) so  that it may appear as a single column in the printed 
patent. If it is not possible  to limit the width of a formula or table to 
5 inches (12.7 cm.), it is permissible  to present the formula or table 
with a maximum width of 10 3/4 inches (27.3  cm.) and to place it sideways 
on the sheet. Typewritten characters used in  such formulas and tables 
must be from a block (nonscript) type font or lettering  style having 
capital letters which are at least 0.08 inch (2.1 mm.) high (e.g.,  elite 
type). Hand lettering must be neat, clean, and have a minimum character 
height of 0.08 inch (2.1 mm.). A space at least 1/4 inch (6.4 mm.) high 
should  be provided between complex formulas and tables and the text. 
Tables should  have the lines and columns of data closely spaced to 
conserve space, consistent  with high degree of legibility. 

        [43 FR 20463, May 11, 1978] 


# 1.59          Papers of application with filing date not to be 
                             returned. 

        Papers in an application which has received a filing date pursuant 
 to # 1.53 will not be returned for any purpose whatever. If applicants 
have  not preserved copies of the papers, the Office will furnish copies 
at the usual  cost of any application in which either the required basic 
filing fee (# 1.16)  or, if the application was filed under # 1.53(b)(1), 
the processing and retention  fee 
# 1.21(l)) has been paid. See # 1.618 for return of unauthorized and 
improper  papers in interferences. 

        [48 FR 2710, Jan. 20, 1983, effective Feb. 27, 1983; 49 FR 554, 
Jan.  4, 1984, effective Apr. 1, 1984; 49 FR 48416, Dec. 12, 1984,; 50 FR 
23123,  May 31, 1985, effective Feb. 11, 1985; revised, 60 FR 20195, Apr. 
25, 1995,  effective June 8, 1995] 


# 1.60          Continuation or divisional application for 

                        invention disclosed in a prior nonprovisional 
                        application. 

        (a)   [RESERVED] 

        (b)   An applicant may omit signing of the oath or declaration in 
a  continuation or divisional application (filed under the conditions 
specified  in 35 U.S.C.120 or 121 and # 1.78(a)) if: 

  (1)     the prior application was a nonprovisional application and a 
complete  application as set forth in 
# 1.51(a)(1); 

        (2)   applicant indicates that the application is being filed 
pursuant  to this section and files a true copy of the prior complete 
application as  filed including the specification (with claims), drawings, 
oath or declaration  showing the signature or an indication it was signed, 
and any amendments referred  to in the oath or declaration filed to 
complete the prior application; 
  (3)     the inventors named in the continuation or divisional 
application  are the same or less than all the inventors named in the 
prior application;  and 

        (4)   the application is filed before the patenting, or 
abandonment  of, or termination of proceedings on the prior application. 
The copy of the  prior application must be accompanied by a statement that 
the application papers  filed are a true copy of the prior complete 
application.  Such statement must  be by the applicant or applicant's 
attorney or agent and must be a verified  statement if made by a person 
not registered to practice before the Patent  and Trademark Office. Only 
amendments reducing the number of claims or adding  a reference to the 
prior application (# 1.78(a)) will be entered before calculating  the 
filing fee and granting the filing date. If the continuation or divisional 
 application is filed by less than all the inventors named in the prior 
application,  a statement must accompany the application when filed 
requesting deletion of  the names of the person or persons who are not 
inventors of the invention being  claimed in the continuation or 
divisional application. Except as provided in  paragraph (d) of this 
section, if a true copy of the prior application as filed  is not filed 
with the application or if the statement that the application  papers are 
a true copy is omitted, the application will not be given a filing  date 
earlier than the date upon which the copy and statement are filed, unless 
a petition with the fee set forth in # 1.17(i) is filed which 
satisfactorily  explains the delay in filing these items. 

        (c)   If an application filed pursuant to paragraph (b) of this 
section  is incomplete for reasons other than those specified in paragraph 
(d) of this  section, applicant will be notified and given a time period 
within which to  complete the application in order to obtain a filing date 
as of the date of  filing the omitted item provided the omitted item is 
filed before the patenting  or abandonment of or termination of 
proceedings on the prior 




application. If the omission is not corrected within the time period set, 
the  application will be returned or otherwise disposed of; the fee, if 
submitted,  will be refunded less the handling fee set forth in w1.21(n). 

        (d)   If an application filed pursuant to paragraph (b) of this 
section  is otherwise complete, but does not include the appropriate 
filing fee or a  true copy of the oath or declaration from the prior 
complete application, showing  the signature or an indication it was 
signed, a filing date will be granted  and applicant will be so notified 
and given a period of time within which to  file the fee, or the true copy 
of the oath or declaration and to pay the surcharge  as set forth in 
w 1.16(e) in order to prevent abandonment of the application. The 
notification  pursuant to this paragraph may be made simultaneously with 
any notification  pursuant to paragraph(c) of this section. 

        [48 FR 2710, Jan. 20, 1983, effective Feb. 27, 1983; 49 FR 554, 
Jan.  4, 1984, effective Apr. 1, 1984; 50 FR 9379, Mar. 7, 1985, effective 
May 8,  1985; paras. (a), (b) and (c), 54 FR 47519, Nov. 15, 1989, 
effective Jan. 16,  1990; paras. (b) and  (c) revised, para. (d) added, 57 
FR 56446, Nov. 30, 1992,  effective Jan. 4, 1993; para. (b) revised, 60 FR 
20195, Apr. 25, 1995, effective  June 8, 1995] 


# 1.61       [Reserved] 


        (Editor's note: Substance moved to w 1.494) 

        [52 FR 20046, May 28, 1987, effective July 1, 1987] 


# 1.62      File wrapper continuing procedure. 


        (a)   A continuation, continuation-in-part, or divisional 
application,  which uses the specification, drawings and oath or 
declaration from a prior  nonprovisional application which is complete as 
defined by # 1.51(a)(1), and  which is to be abandoned, may be filed under 
this section before the payment  of the issue fee, abandon- ment of, or 
termination of proceedings on the prior  application, or after payment of 
the issue fee if a petition under # 1.313(b)(5)  is granted in the prior 
application.  The filing date of an application filed  under this section 
is the date on which a request is filed for an application  under this 
section including identification of the application number and the  names 
of the inventors named in the prior complete application.  If the 
continuation,  continuation-in-part, or divisional application is filed by 
less than all the  inventors named in the prior application a statement 
must accompany the application  when filed requesting deletion of the 
names of the person or persons who are  not inventors of the invention 
being claimed in the continuation, continuation-in-part,  or divisional 
application. 

        (b)   The filing fee for a continuation, continuation-in-part, or 
divisional  application under this section is based on the number of 
claims remaining in  the application after entry of any preliminary 
amendment and entry of any amendments  under w 1.116 unentered in the 
prior application which applicant has requested  to be entered in the 
continuing application. 

        (c)   In the case of a continuation-in-part application which adds 
 and claims additional disclosure by amendment, an oath or declaration as 
required  by 
w 1.63 must also be filed. In those situations where a new oath or 
declaration  is required due to additional subject matter being claimed, 
additional inventors  may be named in the continuing application. In a 
continuation or divisional  application which discloses and claims only 
subject matter disclosed in a prior  application, no additional oath or 
declaration is required and the application  must name as inventors the 
same or less than all the inventors named in the  prior application. 

        (d)   If an application which has been accorded a filing date 
pursuant  to paragraph (a) of this section does not include the 
appropriate basic filing  fee pursuant to paragraph (b) of this section, 
or an oath or declaration by  the applicant in the case of a 
continuation-in-part application pursuant to  paragraph (c) of this 
section, applicant will be so notified and given a period  of time within 
which to file the fee, oath, or declaration and to pay the surcharge  as 
set forth in w 1.16(e) in order to prevent abandonment of the application. 
 The notification pursuant to this paragraph may be made simultaneously 
with  any notification of a defect pursuant to paragraph 
(a) of this section. 

        (e)   An application filed under this section will utilize the 
file  wrapper and contents of the prior application to constitute the new 
continuation,  continuation-in-part, or divisional application but will be 
assigned a new  application number. Changes to the prior application must 
be made in the form  of an amendment to the prior application as it exists 
at the time of filing  the application under this section. No copy of the 
prior application or new  specification is required.  The filing of such a 
copy or specification will  be considered improper, and a filing date as 
of the date of deposit of the  request for an application under this 
section will not be granted to the application  unless a petition with the 
fee set forth 



in # 1.17(i) is filed with instructions to cancel the copy or 
specification. 
        (f)   The filing of an application under this section will be 
construed  to include a waiver of secrecy by the applicant under 35 U.S.C. 
122 to the  extent that any member of the public who is entitled under the 
provisions of 37 CFR 1.14 to access to, or information concerning either 
the prior application  or any continuing application filed under the 
provisions of this section may  be given similar access to, or similar 
information concerning, the other application(s)  in the file wrapper. 

        (g)   The filing of a request for a continuing application under 
this  section will be considered to be a request to expressly abandon the 
prior application  as of the filing date granted the continuing application. 

        (h)   The applicant is urged to furnish the following information 
relating  to the prior and continuing applications to the best of his or 
her ability: 

        (1)   Title as originally filed and as last amended; 

        (2)   Name of applicant as originally filed and as last amended; 
        (3)   Current correspondence address of applicant; 

        (4)   Identification of prior foreign application and any priority 
 claim under 35 U.S.C. 119. 

        (5)   The title of the invention and names of applicants to be 
named  in the continuing application. 

        (i)   Envelopes containing only application papers and fees for 
filing  under this section should be marked "Box FWC". 

        (j)   If any application filed under this section is found to be 
improper,  the applicant will be notified and given a time period within 
which to correct  the filing error in order to obtain a filing date as of 
the date the filing  error is corrected provided the correction is made 
before the payment of the  issue fee, abandonment of, or termination of 
proceedings on the prior application.  If the filing error is not 
corrected within the time  period set, the application  will be returned 
or otherwise disposed of; the fee, if submitted, will be refunded  less 
the handling fee set forth in w1.21(n). 

        [47 FR 47244, Oct. 25, 1982, added effective Feb. 27, 1983; 48 FR 
2710,  Jan. 20, 1983, effective date Feb. 27, 1983; paras. (a) and (d), 49 
FR 555,  Jan. 4, 1984, effective Apr. 1, 1984; paras. (a), (c), and (h), 
50 FR 9380,  Mar. 7, 1985, effective May 8, 1985; paras. (e) and (j), 54 
FR 47519, Nov.  15, 1989, effective Jan. 16, 1990; paras. (a) and (e) 
revised, 60 FR 20195,  Apr. 25, 1995, effective June 8, 1995] 

OATH OR DECLARATION 


# 1.63      Oath or declaration. 


        (a)   An oath or declaration filed under 
# 1.51(a)(1)(ii) as a part of a nonprovisional application must: 
        (1)   Be executed in accordance with either # 1.66 or  # 1.68; 
        (2)   Identify the specification to which it is directed; 
        (3)   Identify each inventor and the residence and country of 
citizenship  of each inventor; and 

        (4)   State whether the inventor is a sole or joint inventor of 
the  invention claimed. 

        (b)   In addition to meeting the requirements of paragraph (a), 
the  oath or declaration must state that the person making the oath or 
declaration: 
        (1)   Has reviewed and understands the contents of the 
specification,  including the claims, as amended by any amendment 
specifically referred to  in the oath or declaration; 

        (2)   Believes the named inventor or inventors to be the original 
and  first inventor or inventors of the subject matter which is claimed 
and for  which a patent is sought; and 

        (3)   Acknowledges the duty to disclose to the Office all 
information  known to the person to be material to patentability as 
defined in w 1.56. 
        (c)   In addition to meeting the requirements of paragraphs (a) 
and 
(b) of this section, the oath or declaration in any application in which a 
 claim for foreign priority is made pursuant to w 1.55 must identify the 
foreign  application for patent or inventor's certificate on which 
priority is claimed  and any foreign application having a filing date 
before that of the application  on which priority is claimed, by 
specifying the application number, country,  day, month, and year of its 
filing. 

        (d)   In any continuation-in-part application filed under the 
conditions  specified in 35 U.S.C. 120 which discloses and claims subject 
matter in addition  to that disclosed in the prior copending application, 
the oath or declaration  must also state that the person making the oath 
or declaration acknowledges  the duty to disclose to the Office all 
information known to the person to be  material to patentability as 
defined in w 1.56 which became available between  the filing date of the 
prior application and the national or PCT international  filing date of 
the continuation-in-part application. 



        [48 FR 2711, Jan. 20, 1983, added effective Feb. 27, 1983; 48 FR 
4285, Jan. 31, 1983; paras. (b)(3) and (d), 57 FR 2021, Jan. 17, 1992, 
effective Mar. 16, 1992; para. (a) revised, 60 FR 20195, Apr. 25, 1995, 
effective  June 8, 1995] 


# 1.64      Person making oath or declaration. 


        (a)   The oath or declaration must be made by all of the actual 
inventors  except as provided for in 
ww 1.42, 1.43, or 1.47. 

        (b)   If the person making the oath or declaration is not the 
inventor 
(ww 1.42, 1.43, or  1.47), the oath or declaration shall state the 
relationship  of the person to the inventor and, upon information and 
belief, the facts which  the inventor is required to state. 

        [48 FR 2711, Jan. 20, 1983, added effective Feb. 27, 1983] 

# 1.66      Officers authorized to administer oaths. 


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

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

        [47 FR 41275, Sept. 17, 1982, effective Oct. 1, 1982] 


# 1.67          Supplemental oath or declaration. 


        (a)   A supplemental oath or declaration meeting the requirements 
of  w 1.63 may be required to be filed to correct any deficiencies or 
inaccuracies  present in an earlier filed oath or declaration. 

        (b)   A supplemental oath or declaration meeting the requirements 
of  # 1.63 must be filed when a claim is presented for matter originally 
shown  or described but not substantially embraced in the statement of 
invention or  claims originally presented or when an oath or declaration 
submitted in accordance  with # 1.53(d)(1) after the filing of the 
specification and any required drawings  specifically and improperly 
refers to an amendment which includes new matter. 
 No new matter may be introduced into a nonprovisional application after 
its  filing date even if a supplemental oath or declaration is filed.  In 
proper  cases, the oath or declaration here required may be made on 
information and  belief by an applicant other than inventor. 

        (c)   A supplemental oath or declaration meeting the requirements 
of  w 1.63 must also be filed if the application was altered after the 
oath or  declaration was signed or if the oath or declaration was signed: 

        (1)   In blank; 

        (2)   Without review thereof by the person making the oath or 
declaration;  or 

        (3)   Without review of the specification, including the claims, 
as  required by w 1.63(b)(1). 

        [48 FR 2711, Jan. 20, 1983, effective Feb. 27, 1983; para. (c) 
added,  57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992; para. (b) 
revised, 60 FR  20195, Apr. 25, 1995, effective June 8, 1995] 


# 1.68      Declaration in lieu of oath. 


        Any document to be filed in the Patent and Trademark Office and 
which  is required by any law, rule, or other regulation to be under oath 
may be subscribed  to by a written declaration. Such declaration may be 
used in lieu of the oath  otherwise required, if, and only if, the 
declarant is on the same document,  warned that willful false statements 
and the like are punishable by fine or  imprisonment, or both (18 U.S.C. 
1001) and may jeopardize the 




validity of the application or any patent issuing thereon. The declarant 
must  set forth in the body of the declaration that all statements made of 
the declarant's  own knowledge are true and that all statements made on 
information and belief  are believed to be true. 

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


# 1.69      Foreign language oaths and declarations. 


        (a)   Whenever an individual making an oath or declaration cannot 
understand  English, the oath or declaration must be in a language that 
such individual  can understand and shall state that such individual 
understands the content  of any documents to which the oath or declaration 
relates. 

        (b)   Unless the text of any oath or declaration in a language 
other  than English is a form provided or approved by the Patent and 
Trademark Office,  it must be accompanied by a verified English 
translation, except that in the  case of an oath or declaration filed under 
w 1.63 the translation may be filed in the Office no later than two months 
 from the date applicant is notified to file the translation. 

        [42 FR 5594, Jan. 28, 1977; para. (b), 48 FR 2711, Jan. 20, 1983, 
effective  Feb. 27, 1983] 


# 1.70      [Reserved] 


        (Editor's note: Substance moved to w 1.497) 

        [52 FR 20046, May 28, 1987, effective July 1, 1987] 

SPECIFICATION 


# 1.71      Detailed description and specification of the 
invention. 

        (a)   The specification must include a written description of the 
invention  or discovery and of the manner and process of making and using 
the same, and  is required to be in such full, clear, concise, and exact 
terms as to enable  any person skilled in the art or science to which the 
invention or discovery  appertains, or with which it is most nearly 
connected, to make and use the  same. 

        (b)   The specification must set forth the precise invention for 
which  a patent is solicited, in such manner as to distinguish it from 
other inventions  and from what is old.  It must describe completely a 
specific embodiment of  the process, machine, manufacture, composition of 
matter or improvement invented,  and must explain the mode of operation or 
principle whenever applicable. The  best mode contemplated by the inventor 
of carrying out his invention must be  set forth. 

        (c)   In the case of an improvement, the specification must 
particularly  point out the part or parts of the process, machine, 
manufacture, or composition  of matter to which the improvement relates, 
and the description should be confined  to the specific improvement and to 
such parts as necessarily cooperate with  it or as may be necessary to a 
complete understanding or description of it. 
        (d)   A copyright or mask work notice may be placed in a design or 
 utility patent application adjacent to copyright and mask work material 
contained  therein. The notice may appear at any appropriate portion of 
the patent application  disclosure. For notices in drawings, see w 
1.84(s). The content of the notice  must be limited to only those elements 
required by law. For example, "e1983  John Doe"(17 U.S.C. 401) and "*M* 
John Doe" (17 U.S.C. 909) would be properly  limited and, under current 
statutes, legally sufficient notices of copyright  and mask work, 
respectively. Inclusion of a copyright or mask work notice will  be 
permitted only if the authorization language set forth in paragraph (e) 
of this section is included at the beginning (preferably as the first 
paragraph)  of the specification. 

        (e)   The authorization shall read as follows: 

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

        [paras. (d) and  (e), 53 FR 47808, Nov. 28, 1988, effective Jan. 
1,  1989; para. (d), 58 FR 38719, July 20, 1993, effective Oct. 1, 1993] 

# 1.72      Title and abstract. 


        (a)   The title of the invention, which should be as short and 
specific  as possible, should appear as a heading on the first page of the 
specification,  if it does not otherwise appear at the beginning of the 
application. 
        (b)   A brief abstract of the technical disclosure in the 
specification  must be set forth on a separate sheet, preferably following 
the claims under  the heading "Abstract of the Disclosure". The purpose of 
the abstract 


is to enable the Patent and Trademark Office and the public generally to 
determine  quickly from a cursory inspection the nature and gist of the 
technical disclosure.  The abstract shall not be used for interpreting the 
scope of the claims. 
        [31 FR 12922, Oct. 4, 1966; 43 FR 20464, May 11, 1978] 


# 1.73      Summary of the invention. 


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


# 1.74      Reference to drawings. 


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


# 1.75      Claim(s). 


        (a)   The specification must conclude with a claim particularly 
pointing  out and distinctly claiming the subject matter which the 
applicant regards  as his invention or discovery. 

        (b)   More than one claim may be presented provided they differ 
substantially  from each other and are not unduly multiplied. 

        (c)   One or more claims may be presented in dependent form, 
referring  back to and further limiting another claim or claims in the 
same application.  Any dependent claim which refers to more than one other 
claim ("multiple dependent  claim") shall refer to such other claims in 
the alternative only. A multiple  dependent claim shall not serve as a 
basis for any other multiple dependent  claim. For fee calculation 
purposes under 
w 1.16, a multiple dependent claim will be considered to be that number of 
 claims to which direct reference is made therein. For fee calculation 
purposes,  also, any claim depending from a multiple dependent claim will 
be considered  to be that number of claims to which direct reference is 
made in that multiple  dependent claim. In addition to the other filing 
fees, any original application  which is filed with, or is amended to 
include, multiple dependent claims must  have paid therein the fee set 
forth in w 1.16(d). Claims in dependent form  shall be construed to 
include all the limitations of the claim incorporated  by reference into 
the dependent claim. A multiple dependent claim shall be  construed to 
incorporate by reference all the limitations of each of the particular 
claims in relation to which it is being considered. 

        (d)(1)      The claim or claims must conform to the invention as 
set  forth in the remainder of the specification and the terms and phrases 
used  in the claims must find clear support or antecedent basis in the 
description  so that the meaning of the terms in the claims may be 
ascertainable by reference  to the description. (See w 1.58(a).) 

        (2)   See ww 1.141 to 1.146 as to claiming different inventions in 
 one application. 

        (e)   Where the nature of the case admits, as in the case of an 
improvement,  any independent claim should contain in the following order, 
(1) a preamble  comprising a general description of all the elements or 
steps of the claimed  combination which are conventional or known, (2) a 
phrase such as "wherein  the improvement comprises," and (3) those 
elements, steps, and/or relationships  which constitute that portion of 
the claimed combination which the applicant  considers as the new or 
improved portion. 

        (f)   If there are several claims, they shall be numbered 
consecutively  in Arabic numerals. 

        (g)   All dependent claims should be grouped together with the 
claim  or claims to which they refer to the extent possible. 

        [31 FR 12922, Oct. 4, 1966; 36 FR 12690, July 3, 1971; 37 FR 
21995,  Oct. 18, 1972; 43 FR 4015, Jan. 31, 1978; para. (c), 47 FR 41276, 
Sept. 17,  1982, effective Oct. 1, 1982] 


# 1.77      Arrangement of application elements. 


        The elements of the application should appear in the following 
order: 
        (a)   Title of the invention; or an introductory portion stating 
the  name, citizenship, and residence of the applicant, and the title of 
the invention  may be used. 

        (b)   (Reserved). 

        (c)(1)      Cross-reference to related applications, if any. 
        (2)   Reference to a "microfiche appendix" if any. (See w 
1.96(b)).  The total number of microfiche and total number of frames 
should be specified. 
        (d)   Brief summary of the invention. 



        (e)   Brief description of the several views of the drawing, if 
there  are drawings. 

        (f)   Detailed description. 

        (g)   Claim or claims. 

        (h)   Abstract of the disclosure. 

        (i)   Signed oath or declaration. 

        (j)   Drawings. 

        [43 FR 20464, May 11, 1978; 46 FR 2612, Jan. 12, 1981; paras. (h) 
and 
(i), 48 FR 2712, Jan. 20, 1983, effective Feb. 27, 1983] 


# 1.78          Claiming benefit of earlier filing date and 
             cross 


references to other applications. 

        (a)(1)      A nonprovisional application may claim an invention 
disclosed  in one or more prior filed copending nonprovisional 
applications or international  applications designating the United States 
of America.  In order for a nonprovisional  application to claim the 
benefit of a prior filed copending nonprovisional  application or 
international application designating the United States of America,  each 
prior application must name as an inventor at least one inventor named  in 
the later filed nonprovisional application and disclose the named 
inventor's  invention claimed in at least one claim of the later filed 
nonprovisional application  in the manner provided by the first paragraph 
of 35 U.S.C. 112. In addition,  each prior application must be: 

        (i)   complete as set forth in # 1.51(a)(1); or 

        (ii)            entitled to a filing date as set forth in # 
1.53(b)(1), # 1.60 or # 1.62 and include the basic filing fee set forth in 
 # 1.16; or 

        (iii)     entitled to a filing date as set forth in 
# 1.53(b)(1) and have paid therein the processing and retention fee set 
forth  in # 1.21(l) within the time period set forth in # 1.53(d)(1). 

        (2)   Any nonprovisional application claiming the benefit of one 
or  more prior filed copending nonprovisional applications or 
international applications  desig- nating the United States of America 
must contain or be amended to contain  in the first sentence of the 
specification following the title a reference  to each such prior 
application, identifying it by application number (consisting  of the 
series code and serial number) or international application number and 
international filing date and indicating the relationship of the 
applications. 
 Cross-references to other related applications may be made when 
appropriate. 
(See # 1.14(b)). 

        (3)   A nonprovisional application other than for a design patent 
may  claim an invention disclosed in one or more prior filed copending 
provisional  applications.  Since a provisional application can be pending 
for no more than  twelve months, the last day of pendency may occur on a 
Saturday, Sunday, or  Federal holiday within the District of Columbia 
which for copendency would  require the nonprovisional application to be 
filed prior to the Saturday, Sunday,  or Federal holiday.  In order for a 
nonprovisional application to claim the  benefit of one or more prior 
filed copending provisional applications, each  prior provisional 
application must name as an inventor at least one inventor  named in the 
later filed nonprovisional application and disclose the named  inventor's 
invention claimed in at least one claim of the later filed nonprovisional 
application in the manner provided by the first paragraph of 35 U.S.C. 
112.  In addition, each prior provisional application must be: 

        (i)   complete as set forth in # 1.51(a)(2); or 

        (ii)            entitled to a filing date as set forth in # 
1.53(b)(2) and include the basic filing fee set forth in 
# 1.16(k). 

        (4)   Any nonprovisional application claiming the benefit of one 
or  more prior filed copending provisional applications must contain or be 
amended  to contain in the first sentence of the specification following 
the title a  reference to each such prior provisional application, 
identifying it as a provisional  application, and including  the 
provisional application number (consisting  of series  code and serial 
number). 

        (b)   Where two or more applications filed by the same applicant 
contain  conflicting claims, elimination of such claims from all but one 
application  may be required in the absence of good and sufficient reason 
for their retention  during pendency in more than one application. 

        (c)   Where two or more applications, or an application and a 
patent  naming different inventors and owned by the same party contain 
conflicting  claims, and there is no statement of record indicating that 
the claimed inventions  were commonly owned or subject to an obligation of 
assignment to the same person  at the time the later invention was made, 
the assignee may be called upon to  state whether the claimed inventions 
were commonly owned or subject to an obligation  of assignment to the same 
person at the time the later invention was made,  and if not, indicate 
which named inventor is the prior inventor. In addition  to making said 
statement, 



the assignee may also explain why an interference should or should not be 
declared. 
        (d)   Where an application claims an invention which is not 
patentably  distinct from an invention claimed in a commonly owned patent 
with the same  or a different inventive entity, a double patenting 
rejection will be made  in the application. An obviousness-type double 
patenting rejection may be obviated  by filing a terminal disclaimer in 
accordance with w 1.321(b). 

        [36 FR 7312, Apr. 17, 1971; 49 FR 555, Jan. 4, 1984; paras. (a), 
(c)  & (d), 50 FR 9380, Mar. 7, 1985, effective May 8, 1985; 50 FR 11366, 
Mar. 21,  1985; para. (a) revised 58 FR 54504, Oct 22, 1993, effective 
Jan. 3, 1994;  paras. (a)(1) and (a)(2) revised and paras. (a)(3) and 
(a)(4) added, 60 FR  20195, Apr. 25, 1995, effective June 8, 1995] 


# 1.79      Reservation clauses not permitted. 


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

THE   DRAWINGS 


# 1.81      Drawings required in patent application. 


        (a)   The applicant for a patent is required to furnish a drawing 
of  his or her invention where necessary for the understanding of the 
subject matter  sought to be patented; this drawing, or a high quality 
copy thereof, must be  filed with the application. Since corrections are 
the responsibility of the  applicant, the original drawing(s) should be 
retained by the applicant for  any necessary future correction. 

        (b)   Drawings may include illustrations which facilitate an 
understanding  of the invention (for example, flowsheets in cases of 
processes, and diagrammatic  views). 

        (c)   Whenever the nature of the subject matter sought to be 
patented  admits of illustration by a drawing without its being necessary 
for the understanding  of the subject matter and the applicant has not 
furnished such a drawing, the  examiner will require its submission within 
a time period of not less than  two months from the date of the sending of 
a notice thereof. 

        (d)   Drawings submitted after the filing date of the ap- 
plication  may not be used to overcome any insufficiency of the 
specification due to lack  of an enabl- 
ing disclosure or otherwise inadequate disclosure therein, or to 
supplement  the original disclosure thereof for the purpose of 
interpretation of the scope  of any claim. 

        [43 FR 4015, Jan. 31, 1978; para. (a), 53 FR 47809, Nov. 28, 1988, 
 effective Jan. 1, 1989] 


# 1.83      Content of drawing. 


        (a)   The drawing in a nonprovisional application must show every 
feature  of the invention specified in the claims.  However, conventional 
features disclosed  in the description and claims, where their detailed 
illustration is not essential  for a proper understanding of the 
invention, should be illustrated in the drawing  in the form of a 
graphical drawing symbol or a labeled representation (e.g.,  a labeled 
rectangular box). 

        (b)   When the invention consists of an improvement on an old 
machine  the drawing must when possible exhibit, in one or more views, the 
improved  portion itself, disconnected from the old structure, and also in 
another view,  so much only of the old structure as will suffice to show 
the connection of  the invention therewith. 

  (c) Where the drawings in a nonprovisional application do not comply 
with  the requirements of paragraphs (a) and (b) of this section, the 
examiner shall  require such additional illustration within a time period 
of not less than  two months from the date of the sending of a notice 
thereof. Such corrections  are subject to the requirements of # 1.81(d). 

        [31 FR 12923, Oct. 4, 1966; 43 FR 4015, Jan. 31, 1978; paras.  (a) 
 and (c) revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995] 

# 1.84          Standards for drawings. 


        (a)   Drawings. There are two acceptable categories for presenting 
 drawings in utility patent applications: 

        (1)   Black ink. Black and white drawings are normally required. 
India  ink, or its equivalent that secures solid black lines, must be used 
for drawings,  or 

        (2)   Color. On rare occasions, color drawings may be necessary as 
 the only practical medium by which to disclose the subject matter sought 
to  be patented in a utility patent application or the subject matter of a 
statutory  invention registration. The Patent and Trademark Office will 
accept color drawings  in utility patent applications and statutory 
invention registrations only after 



granting a petition filed under this paragraph explaining why the color 
drawings  are  necessary. Any such petition must include the following: 

        (i)   The appropriate fee set forth in w 1.17(h); 

        (ii)    Three (3) sets of color drawings; and 

        (iii)     The specification must contain the following language as 
 the first paragraph in that portion of the specification relating to the 
brief  description of the drawing: 

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

        If the language is not in the specification, a proposed amendment 
to  insert the language must accompany the petition. 

        (b)   Photographs. 

        (1)   Black and white. Photographs are not ordinarily permitted in 
 utility and design patent applications. However, the Office will accept 
photographs  in utility and design patent applications only after granting 
a petition filed  under this paragraph which requests that photographs be 
accepted. Any such  petition must include the following: 

        (i)   The appropriate fee set forth in w 1.17(h); and 

        (ii)    Three (3) sets of photographs. 

        Photographs must either be developed on double weight photographic 
 paper or be permanently mounted on Bristol board. The photographs must be 
of  sufficient 


quality so that all details in the drawing are reproducible in the printed 
 patent. 

        (2)   Color. Color photographs will be accepted in utility patent 
applications  if the conditions for accepting 

color drawings have been satisfied. See paragraph (a)(2) of this section. 
        (c)   Identification of drawings. Identifying indicia, if 
provided,  should include the application number or the title of the 
invention, inventor's  name, docket number (if any), and the name and 
telephone number of a person  to call if the Office is unable to match the 
drawings to the 

proper application.  This information should be placed on the back of each 
 sheet of drawings a minimum distance of 1.5 cm. (5/8 inch) down from the 
top  of the page. 

        (d)   Graphic forms in drawings. Chemical or mathematical 
formulae,  tables, and waveforms may be submitted as drawings and are 
subject to the same  requirements as drawings. Each chemical or 
mathematical formula must be labeled  as a separate figure, using brackets 
when necessary, to show that information  is properly integrated. Each 
group of waveforms must be presented as a single  figure, using a common 
vertical axis with time extending along the horizontal  axis. Each 
individual waveform discussed in the specification must be identified 
with a separate letter designation adjacent to the vertical axis. 
        (e)   Type of paper. Drawings submitted to the Office must be made 
 on paper which is flexible, strong, white, smooth, nonshiny, and durable. 
All  sheets must be free from  cracks, creases, and folds. Only one side 
of the  sheet shall be used for the drawing. Each sheet must be reasonably 
free from  erasures and must be free from alterations, overwritings, and 
interlineations.  Photographs must either be developed on double weight 
photographic paper or  be permanently mounted on Bristol board. See 
paragraph (b) of this section  for other requirements for photographs. 

        (f)   Size of paper. All drawing sheets in an application must be 
the  same size. One of the shorter sides of the sheet 

is regarded as its top. The size of the sheets on which drawings are made 
must  be: 

        (1)   21.6 cm. by 35.6 cm. (8 1/2 by 14 inches), 

        (2)   21.6 cm. by 33.1 cm. (8 1/2 by 13 inches), 

        (3)   21.6 cm. by 27.9 cm. (8 1/2 by 11 inches), or 

        (4)   21.0 cm. by 29.7 cm. (DIN size A4). 

        (g)   Margins. The sheets must not contain frames around the 
sight;  i.e., the usable surface. The following margins are required: 

        (1)   On 21.6 cm. by 35.6 cm. (8 1/2 by 14 inch) drawing sheets, 
each  sheet must include a top margin of 5.1 cm. (2 inches), and bottom 
and side  margins of .64 cm. (1/4 inch) from the edges, thereby leaving a 
sight no greater  than 20.3 cm. by 29.8 cm. (8 by 11 3/4 inches). 

        (2)   On 21.6 cm. by 33.1 cm. (8 1/2 by 13 inch) drawing sheets, 
each  sheet must include a top margin of 2.5 cm. (1 inch) and bottom and 
side margins  of .64 cm. (1/4 inch) from the edges, thereby leaving a 
sight no greater than  20.3 cm. by 29.8 cm. (8 by 11 3/4 inches). 

        (3)   On 21.6 cm. by 27.9 cm. (8 1/2 by 11 inch) drawing sheets, 
each  sheet must include a top margin of 2.5 cm. (1 inch) and bottom and 
side margins  of .64 cm. (1/4 inch) from the edges, thereby leaving a 
sight no greater than  20.3 cm. by 24.8 cm. (8 by 9 3/4 inches). 



        (4)   On 21.0 cm. by 29.7 cm. (DIN size A4) drawing sheets, each 
sheet  must include a top margin of at least 2.5 cm., a left side margin 
of 2.5 cm.,  a right side margin of 1.5 cm., and a bottom margin of 1.0 
cm., thereby leaving  a sight no greater than 17.0 cm. by 26.2 cm. 

        (h)   Views. The drawing must contain as many views as necessary 
to  show the invention. The views may be plan, elevation, section, or 
perspective  views. Detail views of portions of elements, on a larger 
scale if necessary,  may also be used. All views of the drawing must be 
grouped together and arranged  on the sheet(s) without wasting space, 
preferably in an upright position, clearly  separated from one another, 
and must not be included in the sheets containing  the specifications, 
claims, or abstract. Views must not be connected by projection  lines and 
must not contain center lines. Waveforms of electrical signals may  be 
connected by dashed lines to show the relative timing of the waveforms. 
        (1)   Exploded views. Exploded views, with the separated parts 
embraced  by a bracket, to show the relationship or order of assembly of 
various parts  are permissible. When an exploded view is shown in a figure 
which is on the  same  sheet as another figure, the exploded view should 
be placed in brackets. 
        (2)   Partial views. When necessary, a view of a large machine or 
device  in its entirety may be broken into partial views on a single 
sheet, or extended  over several sheets if there is no loss in facility of 
understanding the view.  Partial views drawn on separate sheets must 
always be capable of being linked  edge to edge so that no partial view 
contains parts of another partial view.  A smaller scale view should be 
included showing the whole formed by the partial  views and indicating the 
positions of the parts shown. When a portion of a  view is enlarged for 
magnification purposes, the view and the enlarged view  must each be 
labeled as separate views. 

        (i)   Where views on two or more sheets form, in effect, a single 
complete  view, the views on the several sheets must be so arranged that 
the complete  figure can 

be assembled without concealing any part of any of the views appearing on 
the  various sheets. 

        (ii)    A very long view may be divided into several parts placed 
one  above the other on a single sheet. However, the relationship between 
the different  parts must be clear and unambiguous. 

        (3)   Sectional views. The plane upon which a sectional view is 
taken  should be indicated on the view from which the section is cut by a 
broken line.  The ends of the broken line should be designated by Arabic 
or Roman numerals  corresponding to the view number of the sectional view, 
and should have arrows  to indicate the direction of sight. Hatching must 
be used to indicate section  portions of an object, and must be made by 
regularly spaced oblique parallel  lines spaced sufficiently apart to 
enable the lines to be distinguished without  difficulty. Hatching should 
not impede the clear reading of the reference characters  and lead lines. 
If it is not possible to place reference characters outside  the hatched 
area, the hatching may be broken off wherever reference characters  are 
inserted. Hatching must be at a substantial angle to the surrounding axes 
or principal lines, preferably 45_.  A cross section must be set out and 
drawn  to show all of the materials as they are shown in the view from 
which the cross  section was taken. The parts in cross section must show 
proper material(s)  by hatching with regularly spaced parallel oblique 
strokes, the space between  strokes being chosen on the basis of the total 
area to be hatched. The various  parts of a cross section of the same item 
should be hatched in the same manner  and should accurately and 
graphically indicate the nature of the material(s)  that is illustrated in 
cross section. The hatching of juxtaposed different  elements must be 
angled in a different way. In the case of large areas, hatching  may be 
confined to an edging drawn around the entire inside of the outline  of 
the area to be hatched. Different types of hatching should have different 
conventional meanings as regards the nature of a material seen in cross 
section. 
        (4)   Alternate position.  A moved position may be shown by a 
broken  line superimposed upon a suitable view if this can be done without 
crowding;  otherwise, a separate view must be used for this purpose. 

  (5)     Modified forms. Modified forms of construction must be shown in 
separate  views. 

        (i)   Arrangement of views. One view must not be placed upon 
another  or within the outline of another. All views on the same sheet 
should stand  in the same direction and, if possible, stand so that they 
can be read with  the sheet held in an upright position. If views wider 
than the width of the  sheet are necessary for the clearest illustration 
of the invention, the sheet  may be turned on its side so that the top of 
the sheet, with the appropriate  top margin to be used as the heading 
space, is on the 




right-hand side. Words must appear in a horizontal, left-to-right fashion 
when  the page is either upright or turned so that the top becomes the 
right side,  except for graphs utilizing standard scientific convention to 
denote the axis  of abscissas (of X) and the axis of ordinates (of Y). 

        (j)   View for Official Gazette. One of the views should be 
suitable  for publication in the Official Gazette as the illustration of 
the invention. 
        (k)   Scale. 

        (1)   The scale to which a drawing is made must be large enough to 
 show the mechanism without crowding when the drawing is reduced in size 
to  two-thirds in reproduction. Views of portions of the mechanism on a 
larger  scale should be used when necessary to show details clearly. Two 
or more sheets  may be used if one does not give sufficient room. The 
number of sheets should  be kept to a minimum. 

        (2)   When approved by the examiner, the scale of the drawing may 
be  graphically represented. Indications such as ``actual size" or ``scale 
1/2"  on the drawings, are not permitted, since these lose their meaning 
with reproduction 
 in a different format. 

        (3)   Elements of the same view must be in proportion to each 
other,  unless a difference in proportion is indispensable for the clarity 
of the view.  Instead of showing elements in different proportion, a 
supplementary view may  be added giving a larger-scale illustration of the 
element of the initial view.  The enlarged element shown in the second 
view should be surrounded by a finely  drawn or ``dot-dash" circle in the 
first view indicating its location without  obscuring the view. 

        (l)   Character of lines, numbers, and letters. All drawings must 
be  made by a process which will give them satisfactory reproduction 
characteristics.  Every line, number, and letter must be durable, clean, 
black (except for color  drawings), sufficiently dense and dark, and 
uniformly thick and well-defined.  The weight of all lines and letters 
must be heavy enough to permit adequate  reproduction. This requirement 
applies to all lines however fine, to shading,  and to lines representing 
cut surfaces in sectional views. Lines and strokes  of different 
thicknesses may be used in  the same drawing where different thicknesses 
have a different meaning. 

        (m)   Shading. The use of shading in views is encouraged if it 
aids  in understanding the invention and if it does not reduce legibility. 
Shading  is used to indicate the surface or shape of spherical, 
cylindrical, and conical  elements of an object. Flat parts may also be 
lightly shaded. Such shading  is preferred in the case of parts shown in 
perspective, but not for cross sections.  See paragraph (h)(3) of this 
section. Spaced lines for shading are preferred.  These lines must be 
thin, as few in number as practicable, and they must contrast  with the 
rest of the drawings.  As a substitute for shading, heavy lines on  the 
shade side of objects can be used except where they superimpose on each 
other or obscure reference characters. Light should come from the upper 
left  corner at an angle of 45_. Surface delineations should preferably be 
shown  by proper shading. Solid black shading areas are not permitted, 
except when  used to represent bar graphs or color. 

        (n)   Symbols.  Graphical drawing symbols may be used for 
conventional  elements when appropriate. The elements for which such 
symbols and labeled  representations are used must be adequately 
identified in the specification.  Known devices should be illustrated by 
symbols which have a universally recognized  conventional meaning and are 
generally accepted in the art. Other symbols which  are not universally 
recognized may be used, subject to approval by the Office,  if they are 
not likely to be confused with existing conventional symbols, and  if they 
are readily identifiable. 

        (o)   Legends.  Suitable descriptive legends may be used, or may 
be  required by the Examiner, where necessary for understanding of the 
drawing,  subject to approval by the Office. They should contain as few 
words as possible. 
        (p)   Numbers, letters, and reference characters. 

        (1)   Reference characters (numerals are preferred), sheet 
numbers,  and view numbers must be plain and legible, and must not be used 
in association  with brackets or inverted commas, or enclosed within 
outlines, e.g., encircled.  They must be oriented in the same direction as 
the view so as to avoid having  to rotate the sheet. Reference characters 
should be arranged to follow the  profile of the object depicted. 

        (2)   The English alphabet must be used for letters, except where 
another  alphabet is customarily used, such as the Greek alphabet to 
indicate angles,  wavelengths, and mathematical formulas. 

        (3)   Numbers, letters, and reference characters must measure at 
least  .32 cm. (1/8 inch) in height. They should not be placed in the 
drawing so as  to interfere 




with its comprehension. Therefore, they should not cross or mingle with 
the  lines. They should not be placed upon hatched or shaded surfaces. 
When necessary,  such as indicating a surface or cross section, a 
reference character may be  underlined and a blank space may be left in 
the hatching or  shading where  the character occurs so that it appears 
distinct. 

        (4)   The same part of an invention appearing in more than one 
view  of the drawing must always be designated by the same reference 
character, and  the same reference character must never be used to 
designate different parts. 

        (5)   Reference characters not mentioned in the description shall 
not  appear in the drawings. Reference characters mentioned in the 
description must  appear in the drawings. 

        (q)   Lead lines. Lead lines are those lines between the reference 
 characters and the details referred to. Such lines may be straight or 
curved  and should be as short as possible. They must originate in the 
immediate proximity  of the reference character and extend to the feature 
indicated. Lead lines  must not cross each other.  Lead 


lines are required for each reference character except for those which 
indicate  the surface or cross section on which they are placed. Such a 
reference character  must be underlined to make it clear that a lead line 
has not been left out  by mistake. Lead lines must be executed in the same 
way as lines in the drawing.  See paragraph (l) of this section. 

        (r)   Arrows. Arrows may be used at the ends of lines, provided 
that  their meaning is clear, as follows: 

        (1)   On a lead line, a freestanding arrow to indicate the entire 
section  towards which it points; 

        (2)   On a lead line, an arrow touching a line to indicate the 
surface  shown by the line looking along the direction of the arrow; or 

        (3  To show the direction of movement. 

        (s)   Copyright or Mask Work Notice.  A copyright or mask work 
notice  may appear in the drawing, but must be placed within the sight of 
the drawing  immediately below the figure representing the copyright or 
mask work material  and be limited to letters having a print size of 
.32 cm. to .64 cm. (1/8 to 1/4 inches) high. The content of the notice 
must  be limited to only those elements provided for by law. For example, 
`` e1983  John Doe"  (17 U.S.C. 401) and  ``*M* John Doe" (17 U.S.C. 909) 
would be properly  limited and, under current statutes, legally sufficient 
notices of copyright  and mask work, respectively. Inclusion of a 
copyright or mask work notice will  be permitted only if the authorization 
language set forth in w 1.71(e) is included  at the beginning (preferably 
as the first paragraph) of the specification. 
        (t)   Numbering of sheets of drawings. The sheets of drawings 
should  be numbered in consecutive Arabic numerals, starting with 1, 
within the sight  as defined in paragraph (g) of this section. These 
numbers, if present, must  be placed in the middle of the top of the 
sheet, but not in the margin. The  numbers can be placed on the right-hand 
side if the drawing extends too close  to the middle of the top edge of 
the usable surface. The drawing sheet numbering  must be clear and larger 
than the numbers used as reference characters to avoid  confusion. The 
number of each sheet should be shown by two Arabic numerals  placed on 
either side of an oblique line, with the first being the sheet number  and 
the second being the total number of sheets of drawings, with no other 
marking. 

        (u)   Numbering of views. 

        (1)   The different views must be numbered in consecutive Arabic 
numerals,  starting with 1, independent of the numbering of the sheets 
and, if possible,  in the order in which they appear on the drawing 
sheet(s). Partial views intended  to form one complete view, on one or 
several sheets, must be identified by  the same number followed by a 
capital letter. View numbers must be preceded  by the abbreviation ``FIG." 
Where only a single view is used in an application  to illustrate the 
claimed invention, it must not be numbered and the abbreviation  ``FIG." 
must not appear. 

        (2)   Numbers and letters identifying the views must be simple and 
 clear and must not be used in association with brackets, circles, or 
inverted  commas. The view numbers must be larger than the numbers used 
for reference  characters. 

        (v)   Security markings. Authorized security markings may be 
placed  on the drawings provided they are outside the sight, preferably 
centered in  the top margin. 

        (w)   Corrections. Any corrections on drawings submitted to the 
Office  must be durable and permanent. 

        (x)   Holes. The drawing sheets may be provided with two holes in 
the  top margin. The holes should be equally spaced from the respective 
side edges,  and their center lines should be spaced 7.0 cm. (2 3/4 
inches) apart. 



(See w 1.152 for design drawings, w 1.165 for plant drawings, and w 1.174 
for  reissue drawings.) 

        [24 FR 10332, Dec. 22, 1959; 31 FR 12923, Oct. 4, 1966; 36 FR 
9775,  May 28, 1971; 43 FR 20464, May 11, 1978; 45 FR 73657, Nov. 6,1980; 
paras. (a), 
(b), (i), (j), and  (l) amended, paras. (n), (o), and  (p) added, 53 FR 
47809,  Nov. 28, 1988, effective Jan. 1, 1989; revised, 58 FR 38719, July 
20, 1993,  effective Oct. 1, 1993] 


# 1.85      Corrections to drawings. 


        (a)   The requirements of w 1.84 relating to drawings will be 
strictly  enforced. A drawing not executed in conformity thereto, if 
suitable for reproduction,  may be admitted for examination but in such 
case a new drawing must be furnished. 

        (b)   The Patent and Trademark Office will not release drawings in 
 applications having a filing date after January 1, 1989, or any drawings 
from  any applications after January 1, 1991, for purposes of correction. 
If corrections  are necessary, new corrected drawings must be submitted 
within the time set  by the Office. 

        (c)   When corrected drawings are required to be sub- mitted at 
the  time of allowance, the applicant is required to submit acceptable 
drawings  within three months from the mailing of the "Notice of 
Allowability." Within  that three-month period, two weeks should be 
allowed for review of the drawings  by the Drafting Branch. If the Office 
finds that correction is necessary, the  applicant must submit a new 
corrected drawing to the Office within the original  three-month period to 
avoid the necessity of obtaining an extension of time  and paying the 
extension fee. Therefore, the applicant should file corrected  drawings as 
soon as possible following the receipt of the Notice of Allowability.  The 
provisions with respect to obtaining an extension of time relates only  to 
the late filing of corrected drawings. The time limit for payment of the 
issue fee is a fixed three-month period which cannot be extended as set 
forth  in 35 U.S.C. 151. 

        [47 FR 41276, Sept. 17, 1982, effective Oct. 1, 1982; 53 FR 47810, 
 Nov. 28, 1988, effective Jan. 1, 1989] 


# 1.88      [Removed  and Reserved] 


        [Deleted, 58 FR 38719, July 20, 1993, effective Oct. 1, 1993] 
MODELS,  EXHIBITS,  SPECIMENS 


# 1.91          Models not generally required as part of 

                        application or patent. 

        Models were once required in all cases admitting a model, as a 
part  of the application, and these models became a part of the record of 
the patent.  Such models are no longer generally required (the description 
of the invention  in the specification, and the drawings, must be 
sufficiently full and complete,  and capable of being understood, to 
disclose the invention without the aid  of a model), and will not be 
admitted unless specifically called for. 

# 1.92      Model or exhibit may be required. 


        A model, working model, or other physical exhibit may be required 
if  deemed necessary for any purpose on examination of the application. 

# 1.93      Specimens. 


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


# 1.94      Return of models, exhibits or specimens. 


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

# 1.95      Copies of exhibits. 


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


# 1.96      Submission of computer program listings. 


        Descriptions of the operation and general content of computer 
program  listings should appear in the description portion of the 
specification A computer  program listing for the purpose of these rules 
is defined as a printout that  lists in appropriate sequence the 
instructions, routines, and other contents  of a program for a computer. 
The program listing may be either in machine or  machine- 
independent (object or source) language which will cause a computer to 
perform  a desired procedure or task such as solve a problem, regulate the 
flow of work  in a computer, or control or monitor events. Computer 
program listings may  be submitted in patent applications in the following 
forms: 



        (a)   Material which will be printed in the patent. If the 
computer  program listing is contained on 10 printout pages or less, it 
must be submitted  either as drawings or as part of the specification. 

        (1)   Drawings. The listing may be submitted in the manner and 
complying  with the requirements for drawings as provided in w 1.84. At 
least one figure  numeral is required on each sheet of drawing. 

        (2)   Specification. (i) The listing may be submitted as part of 
the  specification in accordance with the provisions of w 1.52, at the end 
of the  description but before the claims. 

        (ii)    The listing may be submitted as part of the specification 
in  the form of computer printout sheets (commonly 14 by 11 inches in 
size) for  use as "camera ready copy" when a patent is subsequently 
printed. Such computer  printout sheets must be original copies from the 
computer with dark solid black  letters not less than 0.21 cm high, on 
white, unshaded and unlined paper, the  printing on each sheet must be 
limited to an area 9 inches high by 13 inches  wide, and the sheets should 
be submitted in a protective cover. When printed  in patents, such 
computer printout sheets will appear at the end of the description  but 
before the claims and will usually be reduced about 1/2 in size with two 
printout sheets being printed as one patent specification page. Any 
amendments  must be made by way of submission of a substitute sheet if the 
copy is to be  used for camera ready copy. 

        (b)   As an appendix which will not be printed.  If a computer 
program  listing printout is 11 or more pages long, applicants may submit 
such listing  in the form of microfiche, referred to in the specification (see 
w 1.77(c)(2)). Such microfiche filed with a patent application is to be 
referred  to as a "microfiche appendix." The "microfiche appendix" will 
not be part of  the printed patent. Reference in the application to the 
"microfiche appendix"  should be made at the beginning of the 
specification at the location indicated  in 
w 1.77(c)(2). Any amendments thereto must be made by way of revised 
microfiche.  All computer program listings submitted on paper will be 
printed as part of  the patent. 

        (1)   Availability of appendix. Such computer program listings on 
microfiche  will be available to the public for in- spection, and 
microfiche copies thereof  will be available for purchase with the file 
wrapper and contents, after a  patent based on such application is granted 
or the application is otherwise  made publicly available. 

        (2)   Submission requirements. Computer-generated information 
submitted  as an appendix to an application for patent shall be in the 
form of microfiche  in accordance with the standards set forth in the 
following American National  Standards Institute (ANSI) or National 
Micrographics Association (NMA) standards 
(Note: As new editions of these standards are published, the latest shall 
apply): 
ANSI PH 1.28-1976-Specifications for Photographic  Film for Archival 
records,  Silver-Gelatin Type, on Cellulose Ester Base. 

ANSI PH 1.41-1976 Specifications for Photographic  Film for Archival 
Records,  Silver-Gelatin Type, on Polyester Base. 

NMA-MSI (1971) Quality Standards for Computer Output Microfilm. 

ANSI/NMA MS2 (1978) Format and Coding Standards  for Computer Output 
Microfilm. 
NMA MS5 (ANSI PH 5.9-1975) Microfiche of Documents. 

ANSI PH 2.19 (1959)-Diffuse Transmission Density. 

except as modified or clarified below: 

        (i)   Either Computer-Output-Microfilm (COM) output  or copies of 
photographed  paper copy may be submitted. In the former case, NMA 
standards MS1 and MS2  apply; in the latter case, standard MS5 applies. 

        (ii)    Film submitted shall be first generation (camera film) 
negative  appearing microfiche (with emulsion on the back side of the film 
when viewed  with the images right reading). 

        (iii)     Reduction ratio of microfiche submitted should be 24:1 
or  a similar ratio where variation from said ratio is required in order 
to fit  the documents into the image area of the microfiche format used. 

        (iv)    Film submitted shall have a thickness of at least .005 
inches 
(0.13 mm) and not more than .009 inches (0.23 mm) for either cellulose 
acetate  base or polyester base type. 

        (v)   Both microfiche formats A1 (98 frames, 14 columns x 7 rows) 
and  A3 (63 frames, 9 columns x 7 rows) which are described in NMA 
standard MS2 
(A1 is also described in MS5) are acceptable for use in preparation of 
microfiche  submitted. 

        (vi)    At least the left-most 1/3 (50 mm x 12 mm) of the header 
or  title area of each microfiche submitted shall be clear or positive 
appearing  so that the Patent and 




Trademark Office can apply serial number and filing date thereto in an 
eye-readable  form. The middle portion of the header shall be used by 
applicant to apply  an eye-readable application identification such as the 
title and/or the first  inventor's name. The attorney's docket number may 
be included. The final right-hand  portion of the microfiche shall contain 
sequence in- formation for the microfiche,  such as 1 of 4, 2 of 4, etc. 

        (vii)     Additional requirements which apply specifically to 
microfiche  of filmed paper copy: 

        (A)   The first frame of each microfiche submitted shall contain a 
 standard test target which contains five NBS Microcopy Resolution Test 
Charts 
(No. 1010A), one in the center and one in each corner. See illustration on 
 page 2 of NMA Recommended Practice MS104, Inspection and Quality Control 
of  First Gener- 

ation Silver Halide Microfilm. See also paragraph 7 of NMA-MS5. 

        (B)   The second frame of each microfiche submitted must contain a 
 fully descriptive title and the inventor's name as filed. 

        (C)   The pages or lines appearing on the microfiche frames should 
 be consecutively numbered. 

        (D)   Pagination of the microfiche frames shall be from left to 
right  and from top to bottom. 

        (E)   At a reduction of 24:1 resolution of the original microfilm 
shall  be at least 120 lines per mm (5.0 target) so that reproduction 
copies may be  expected to comply with provisions of paragraph 7.1.4 of 
NMA Standard MS5. 
        (F)   Background density of negative appearing camera master 
microfiche  of filmed paper documents shall be within the range of 0.9 to 
1.2 and line  density should be no greater than 0.08.  the density shall 
be visual diffuse  than 0.08. The density shall be visual diffuse density 
as measured using the  method described in ANSI Standard PH 2.19. 

        (G)   An index, when included, should appear in the last frame 
(lower  right hand corner when data is right-reading) of each microfiche. 
See NMA-MS5,  paragraph 6.6. 

        (viii)      Microfiche generated by Computer Output Microfilm 
(COM). 
        (A)   Background density of negative-appearing COM-generated 
camera  master microfiche shall be within the range of 1.5 to 2.0 and line 
density  should be no greater than 0.2. The density shall be visual 
diffuse density  as described in ANSI PH2.19. 

        (B)   The first frame of each microfiche submitted should contain 
a  resolution test frame in conformance with NMA standard MS1. 

        (C)   The second frame of each microfiche submitted must contain a 
 fully descriptive title and the inventor's name as filed. 

        (D)   The pages or lines appearing on the microfiche frames should 
 be consecutively numbered. 

        (E)   It is preferred that pagination of the microfiche frames be 
from  left to right and top to bottom but the alternative, i.e., from top 
to bottom  and from left to right, is also acceptable. 

        (F)   An index, when included, should appear on the last frame 
(lower  right hand corner when data is right reading) of each microfiche. 
        (G)   Amendment of microfiche must be made by way of replacement 
microfiche. 
        [46 FR 2612, Jan. 12, 1981, para.  (b)(1), 54 FR 47519, Nov. 15, 
1989,  effective Jan. 16, 1990] 

INFORMATION DISCLOSURE STATEMENT 


# 1.97      Filing of information disclosure statement. 


        (a)   In order to have information considered by the Office during 
 the pendency of a patent application, an information disclosure statement 
in  compliance with 
w 1.98 should be filed in accordance with this section. 

        (b)   An information disclosure statement shall be considered by 
the  Office if filed: 

        (1)   Within three months of the filing date of a national 
application; 
        (2)   Within three months of the date of entry of the national 
stage  as set forth in w 1.491 in an international application; or 

        (3)   Before the mailing date of a first Office action on the 
merits, 

        whichever event occurs last. 

        (c)   An information disclosure statement shall be considered by 
the  Office if filed after the period specified in paragraph (b) of this 
section,  but before the mailing date of either: 

        (1)   A final action under w 1.113 or 

        (2)   A notice of allowance under w 1.311, 

        whichever occurs first, provided the statement is accompanied by 
either  a certification as specified in paragraph (e) of this section or 
the fee set  forth in 
w 1.17(p). 



        (d)   An information disclosure statement shall be considered by 
the  Office if filed after the mailing date of either a final action under 
# 1.113  or a notice of allowance under # 1.311, whichever occurs first, 
but before  payment of the issue fee,  provided the statement is 
accompanied by: 
        (1)   A certification as specified in paragraph (e) of this 
section; 
        (2)   A petition requesting consideration of the information 
disclosure  statement; and 

        (3)   The petition fee set forth in # 1.17(i). 

        (e)   A certification under this section must state either: 
        (1)   That each item of information contained in the information 
disclosure  statement was cited in a communication from a foreign patent 
office in a counterpart  foreign application not more than three months 
prior to the filing of the statement,  or 

        (2)   That no item of information contained in the information 
disclosure  statement was cited in a communication from a foreign patent 
office in a counterpart  foreign application or, to the knowledge of the 
person signing the certification  after making reasonable inquiry, was 
known to any individual designated in  # 1.56(c) more than three months 
prior to the filing of the statement. 
        (f)   No extensions of time for filing an information disclosure 
statement  are permitted under w 1.136. If a bona fide attempt is made to 
comply with  w 1.98, but part of the required content is inadvertently 
omitted, additional  time may be given to enable full compliance. 

        (g)   An information disclosure statement filed in accordance with 
 section shall not be construed as a representation that a search has been 
made. 
        (h)   The filing of an information disclosure statement shall not 
be  construed to be an admission 

that the information cited in the statement is, or is considered to be, 
material  to patentability as defined in w 1.56(b). 

        (i)   Information disclosure statements, filed be- fore the grant 
of  a patent, which do not comply with this section and w 1.98 will be 
placed in  the file, but will not be considered by the Office. 

        [48 FR 2712, Jan. 20, 1983, effective date Feb. 27, 1983; 57 FR 
2021,  Jan. 17, 1992, effective Mar. 16, 1992; para. (d) revised, 60 FR 
20195, Apr.  25, 1995, effective June 8, 1995] 


# 1.98      Content of information disclosure statement. 


        (a)   Any information disclosure statement filed under w 1.97 
shall  include: 

        (1)   list of all patents, publications or other information 
submitted  for consideration by the Office; 

        (2)   A legible copy of : 

        (i)   Each U.S. and foreign patent; 

        (ii)    Each publication or that portion which caused it to be 
listed;  and 

        (iii)     All other information or that portion which caused it to 
 be listed, except that no copy of a U.S. patent application need be 
included;  and 

        (3)   A concise explanation of the relevance, as it is presently 
understood  by the individual designated in 
w 1.56(c) most knowledgeable about the content of the information, of each 
 patent, publication, or other information listed that is not in the 
English  language. The concise explanation may be either separate from the 
specification  or incorporated therein. 

        (b)   Each U.S. patent listed in an information disclosure 
statement  shall be identified by patentee, patent number and issue date. 
Each foreign  patent or published foreign patent application shall be 
identified by the country  or patent office which issued the patent or 
published the application, an appropriate  document number, and the 
publication date indicated on the patent or published  application. Each 
publication shall be identified by author (if any), title,  relevant pages 
of the publication, date, and place of publication. 
        (c)   When the disclosures of two or more patents or publications 
listed  in an information disclosure statement are substantively 
cumulative, a copy  of one of the patents or publications may be submitted 
without copies of the  other patents or publications provided that a 
statement is made that these  other patents or publications are 
cumulative. If a written English-language  translation of a non-English 
language document, or portion thereof, is within  the possession, custody, 
or control of, or is readily available to any individual  designated in w 
1.56(c), a copy of the translation shall accompany the statement. 

        (d)   A copy of any patent, publication, or  other  infor- mation 
listed  in an information disclosure statement is not required to be 
provided if it  was previously cited by or submitted to the Office in a 
prior application,  provided that the prior application is properly 
identified in the 




statement and relied on for an earlier filing date under 
35 U.S.C. 120. 

        [42 FR 5594, Jan. 28, 1977; para. (a) 48 FR 2712, Jan. 20, 1983, 
effective  date Feb. 27, 1983; 57 FR 2021, Jan. 17, 1992, effective Mar. 
16, 1992] 

# 1.99      [Reserved] 


        [48 FR 2712, Jan. 20, 1983; effective date Feb. 27, 1983; 57 FR 
2021,  Jan. 17, 1992, effective Mar. 16, 1992] 

EXAMINATION  OF APPLICATIONS 


# 1.101       Order of examination. 


        (a)   Nonprovisional applications filed in the Patent and 
Trademark  Office and accepted as complete applications are assigned for 
examination to  the respective examining groups having the classes of 
inventions to which the  applications relate. Nonprovisional applications 
shall be taken up for examination  by the examiner to whom they have been 
assigned in the order in which they  have been filed except for those 
applications in which examination has been  advanced pursuant to 
# 1.102. See # 1.496 for order of examination of international 
applications  in the national stage. 

        (b)   Applications which have been acted upon by the examiner, and 
 which have been placed by the applicant in condition for further action 
by  the examiner (amended applications) shall be taken up for action in 
such order  as shall be determined by the Commissioner. 

        [29 FR 13470, Sept. 30, 1964; para. (a), 48 FR 2712, Jan. 20, 
1983,  effective Feb. 27, 1983; para. (a), 50 FR 9381, Mar. 7, 1985, 
effective May  8, 1985; 52 FR 20046, May 28, 1987, effective July 1, 1987; 
para. (a) revised,  60 FR 20195, Apr. 25, 1995, effective June 8, 1995] 


# 1.102       Advancement of examination. 


        (a)   Applications will not be advanced out of turn for 
examination  or for further action except as provided by this part, or 
upon order of the  Commis- sioner to expedite the business of the Office, 
or upon filing of a  request under paragraph (b) of this section or upon 
filing a petition under  paragraphs (c) or (d) of this section with a 
verified showing which, in the  opinion of the Commissioner, will justify 
so advancing it. 

        (b)   Applications wherein the inventions are deemed of peculiar 
importance  to some branch of the public service and the head of some 
department of the  Government requests immediate action for that reason, 
may be advanced for examination. 
        (c)   A petition to make an application special may be filed 
without  a fee if the basis for the petition is the applicant's age or 
health or that  the invention will materially enhance the quality of the 
environment or materially  contribute to the development or conservation 
of energy resources. 
        (d)   A petition to make an application special on grounds other 
than  those referred to in paragraph (c) of this section must be 
accompanied by the  petition fee set forth in # 1.17(i). 

        [24 FR 10332, Dec. 22, 1959; paras. (a), (c), and (d). 47 FR 
41276,  Sept.. 17, 1982, effective Oct. 1, 1982, para. (d), 54 FR 6893, 
Feb. 15, 1989,  effective Apr. 17, 1989; para. (d) revised, 60 FR 20195, 
Apr. 25, 1995, effective  June 8, 1995] 


# 1.103       Suspension of action. 


        (a)   Suspension of action by the Office will be granted for good 
and  sufficient cause and for a reasonable time specified upon petition by 
the applicant  and, if such cause is not the fault of the Office, the 
payment of the fee set  forth in # 1.17(i).  Action will not be suspended 
when a response by the applicant  to an Office action is required. 

        (b)   If action by the Office on an application is suspended when 
not  requested by the applicant, the applicant shall be notified of the 
reasons  therefor. 

        (c)   Action by the examiner may be suspended by order of the 
Commissioner  in the case of applications owned by the United States 
whenever publication  of the invention by the granting of a patent thereon 
might be detrimental to  the public safety or defense, at the request of 
the appropriate department  or agency. 

        (d)   Action on applications in which the Office has accepted a 
request  to publish a defensive publication will be suspended for the 
entire pendency  of these applications except for purposes relating to 
patent interference proceedings  under Subpart E. 

        [24 FR 10332, Dec. 22, 11959; 33 FR 5624, Apr. 11, 1968; paras. 
(a)  and (b), 47 FR 41276, Sept. 17, 1982, effective Oct. 1, 1982; para. 
(d), 49  FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; para. (d), 50 
FR 9381, Mar.  7, 1985, effective May 8, 1985; para. (a), 54 FR 6893, Feb. 
15, 1989, effective  Apr. 17, 1989; para. (a) revised, 60 FR 20195, Apr. 
25, 1995, effective June  8, 1995] 





# 1.104       Nature of examination; examiner's action. 


        (a)   On taking up an application for examination or a patent in a 
 reexamination proceeding, the examiner shall make a thorough study 
thereof  and shall make a thorough investigation of the available prior 
art relating  to the subject matter of the claimed invention. The 
examination shall be complete  with respect both to compliance of the 
application or patent under reexamination  with the applicable statutes 
and rules and to the patentability of the invention  as claimed, as well 
as with respect to matters of form, unless otherwise indicated. 
        (b)   The applicant, or in the case of a reexamination proceeding, 
 both the patent owner and the requester, will be notified of the 
examiner's  action. The reasons for any adverse action or any objection or 
requirement  will be stated and such information or references will be 
given as may be useful  in aiding the applicant, or in the case of a 
reexamination proceeding the patent  owner, to judge the propriety of 
continuing the prosecution. 

        (c)   An international-type search will be made in all national 
applications  filed on and after June 1, 1978. 

        (d)   Any national application may also have an international-type 
 search report prepared thereon at the time of the national examination on 
the  merits, upon specific written request therefor and payment of the 
international-type  search report fee. See w 1.21(e) for amount of fee for 
preparation of international-type  search report. 

        NOTE. - The Patent and Trademark Office does not require that a 
formal  report of an international-type search be prepared in order to 
obtain a search  fee refund in a later filed international application. 

        (e)   Copending applications will be considered by the examiner to 
 be owned by, or subject to an obligation of assignment to, the same 
person  if: (1) the application files refer to assignments recorded in the 
Patent and  Trademark Office in accordance with part 3 of this chapter 
which convey the  entire rights in the applications to the same person or 
organization; or (2)  copies of unrecorded assignments which convey the 
entire rights in the applications  to the same person or organization are 
filed in each of the applications; or 
(3) an affidavit or declaration by the common owner is filed which states 
that  there is common ownership and states facts which explain why the 
affiant or  declarant believes there is common ownership; or (4) other 
evidence is submitted  which establishes common ownership of the 
applications. In circumstances where  the common owner is a corporation or 
other organization an affidavit or declaration  may be signed by an 
official of the corporation or organization empowered to  act on behalf of 
the corporation or organization. 

        [43 FR 20465, May 11, 1978; 46 FR 29182, May 29, 1981; para. (d), 
47  FR 41276, Sept. 17, 1982, effective date Oct. 1, 1982; para. (e), 50 
FR 9381,  Mar. 7, 1985, effective May 8, 1985; para. (e), 57 FR 29642, 
July 6, 1992,  effective Sept. 4, 1992] 


# 1.105             Completeness of examiner's action. 


        The examiner's action will be complete as to all matters, except 
that  in appropriate circumstances, such as misjoinder of invention, 
fundamental  defects in the application, and the like, the action of the 
examiner may be  limited to such matters before further action is made. 
However, matters of  form need not be raised by the examiner until a claim 
is found allowable. 

# 1.106       Rejection of claims. 


        (a)   If the invention is not considered patentable, or not 
considered  patentable as claimed, the claims, or those considered 
unpatentable will be  rejected. 

        (b)   In rejecting claims for want of novelty or for obviousness, 
the  examiner must cite the best references at his command. When a 
reference is  complex or shows or describes inventions other than that 
claimed by the applicant,  the particular part relied on must be 
designated as nearly as practicable.  The pertinence of each reference, if 
not apparent, must be clearly explained  and each rejected claim specified. 

        (c)   In rejecting claims the examiner may rely upon admissions by 
 the applicant, or the patent owner in a reexamination proceeding, as to 
any  matter affecting patentability and, insofar as rejections in 
applications are  concerned, may also rely upon facts within his or her 
knowledge pursuant to  w 1.107. 

        (d)   Subject matter which is developed by another person which 
qualifies  as prior art only under 
35 U.S.C. 102(f) or (g) may be used as prior art under 35 U.S.C. 103 
against  a claimed invention unless the entire rights to the subject 
matter and the  claimed invention were commonly owned by the same person 
or organization or  subject to an obligation of assignment to the same 
person or organization at  the time the claimed invention was made. 



        (e)   The claims in any original application naming an inventor 
will  be rejected as being precluded by a waiver in a published statutory 
invention  registration naming that inventor if the same subject matter is 
claimed in  the application and the statutory invention registration. The 
claims in any  reissue application naming an inventor will be rejected as 
being precluded  by a waiver in a published statutory invention 
registration naming that inventor  if the reissue application seeks to 
claim subject matter (1) which was not  covered by claims issued in the 
patent prior to the date of publication of  the statutory invention 
registration and (2) which was the same subject matter  waived in the 
statutory invention registration. 

        [24 FR 10332, Dec. 22, 1959; 34 FR 18857, Nov. 26, 1969; para. (c) 
 added, 47 FR 21752, May 19, 1982, effective July 1, 1982; paras. (d) and 
(e),  50 FR 9381, Mar. 7, 1985, effective May 8, 1985] 


# 1.107       Citation of references. 


        (a)   If domestic patents are cited by the examiner, their numbers 
 and dates, and the names of the patentees, and the classes of inventions 
must  be stated. If foreign published applications or patents are cited, 
their nationality  or country, numbers and dates, and the names of the 
patentees must be stated,  and such other data must be furnished as may be 
necessary to enable the applicant,  or in the case of a reexamina- tion 
proceeding, the patent owner, to identify  the published applications or 
patents cited. In citing foreign published applications  or patents, in 
case only a part of the document is involved, the particular  pages and 
sheets containing the parts relied upon must be identified. If printed 
publications are cited, the author (if any), title, date, pages or plates, 
 and place of publication, or place where a copy can be found, shall be 
given. 
        (b)   When a rejection in an application is based on facts within 
the  personal knowledge of an employee of the Office, the data shall be as 
specific  as possible, and the reference must be supported, when called 
for by the applicant,  by the affidavit of such employee, and such 
affidavit shall be subject to contradiction  or explanation by the 
affidavits of the applicant and other persons. 
        [46 FR 29182, May 29, 1981] 


# 1.108       Abandoned applications not cited. 


        Abandoned applications as such will not be cited as references 
except  those which have been opened to inspection by the public following 
a defensive  publication. 

        [50 FR 9381, Mar. 7, 1985, effective May 8, 1985] 


# 1.109       Reasons for allowance. 


        If the examiner believes that the record of the prosecution as a 
whole  does not make clear his or her reasons for allowing a claim or 
claims, the  examiner may set forth such reasoning. The reasons shall be 
incorporated into  an Office action rejecting other claims of the 
application or patent under  reexamination or be the subject of a separate 
communication to the applicant  or patent owner. The applicant or patent 
owner may file a statement commenting  on the reasons for allowance within 
such time as may be specified by the examiner.  Failure to file such a 
statement shall not give rise to any implication that  the applicant or 
patent owner agrees with or acquiesces in the reasoning of  the examiner. 

        [46 FR 29182, May 29, 1981] 


# 1.110       Inventorship and date of invention of the 

                        subject matter of individual claims. 

        When more than one inventor is named in an ap- plication or 
patent,  the Patent and Trademark Office, when necessary for purposes of 
an Office proceeding,  may require an applicant, patentee, or owner to 
identify the inventive entity  of the subject matter of each claim in the 
application or patent. Where appropriate,  the invention dates of the 
subject matter of each claim and the ownership of  the subject matter on 
the date of invention may be required of the applicant,  patentee or 
owner. See also w 1.78(c) and # 1.78(d). 

        [50 FR 9381, Mar. 7, 1985, effective date May 8, 1985] 

ACTION BY APPLICANT AND FURTHER 
CONSIDERATION 


# 1.111       Reply by applicant or patent owner. 


        (a)   After the Office action, if adverse in any respect, the 
applicant  or patent owner, if he or she persists in his or her 
application for a patent  or reexamination proceeding, must reply thereto 
and may request reconsideration  or further examination, with or without 
amendment. 

        (b)   In order to be entitled to reconsideration or further 
examination,  the applicant or patent owner must 



make request therefor in writing. The reply by the applicant or patent 
owner  must distinctly and specifically point out the supposed errors in 
the examiner's  action and must respond to every ground of objection and 
rejection in the prior  Office action. If the reply is with respect to an 
application, a request may  be made that objections or requirements as to 
form not necessary to further  consideration of the claims be held in 
abeyance until allowable subject matter  is indicated. The applicant's or 
patent owner's reply must appear throughout  to be a bona fide attempt to 
advance the case to final action. A general allegation  that the claims 
define a patentable invention without specifically pointing  out how the 
language of the claims patentably distinguishes them from the references 
does not comply with the requirements of this section. 

        (c)   In amending in response to a rejection of claims in an 
application  or patent undergoing reexamination, the applicant or patent 
owner must clearly  point out the patentable  novelty  which  he  or  she 
thinks  the  claims 
 present in view of the state of the art disclosed by the references cited 
 or the objections made. He or she must also show how the amendments avoid 
such  references or objections. (See w 1.135 and # 1.136 for time for 
reply.) 
        [46 FR 29182, May 29, 1981] 


# 1.112       Reconsideration. 


        After response by applicant or patent owner 
w 1.111), the application or patent under reexamination will be 
reconsidered  and again examined. The applicant or patent owner will be 
notified if claims  are rejected, or objections or requirements made, in 
the same manner as after  the first examination. Applicant or patent owner 
may respond to such Office  action in the same manner provided in w 1.111, 
with or without amendment. Any  amendments after the second Office action 
must ordinarily be restricted to  the rejection or to the objections or 
requirements made. The application or  patent under reexamination will be 
again considered, and so on repeatedly,  unless the examiner has indicated 
that the action is final. 

        [46 FR 29182, May 29, 1981] 


# 1.113       Final rejection or action. 


        (a)   On the second or any subsequent examination or consideration 
 the rejection or other action may be made final whereupon applicant's or 
patent  owner's response is limited to appeal in the case of rejection of 
any claim 
(w 1.191), or to amendment as specified in 
w 1.116. Petition may be taken to the Commissioner in the case of 
objections  or requirements not involved in the rejection of any claim (w 
1.181). Response  to a final rejection or action must include cancellation 
of, or appeal from  the rejection of, each rejected claim. If any claim 
stands allowed, the response  to a final rejection or action must comply 
with any requirements or objections  to form. 

        (b)   In making such final rejection, the examiner shall repeat or 
 state all grounds of rejection then considered applicable to the claims 
in  the case, clearly stating the reasons therefor. 

        [24 FR 10332, Dec. 22, 1959; 46 FR 29182, May 29, 1981] 

AMENDMENTS 


# 1.115       Amendment. 


        The applicant may amend before or after the first ex- amination 
and  action and also after the second or subsequent examination or 
reconsideration  as specified in w 1.112 or when and as specifically 
required by the examiner.  The patent owner may amend in accordance with 
ww 1.510(e) and 1.530(b) prior  to reexamination and during reexamination 
proceedings in accordance with w  1.112 and # 1.116. 

        [46 FR 29183, May 29, 1981] 


# 1.116       Amendments after final action. 


        (a)   After final rejection or action (w 1.113) amendments may be 
made  cancelling claims or complying with any requirement of form which 
has been  made. Amendments presenting rejected claims in better form for 
consideration  on appeal may be admitted. The admission of, or refusal to 
admit, any amendment  after final rejection, and any proceedings relative 
thereto, shall not operate  to relieve the application or patent under 
reexamination from its condition  as subject to appeal or to save the 
application from abandonment under w 1.135. 
        (b)   If amendments touching the merits of the application or 
patent  under reexamination are presented after final rejection, or after 
appeal has  been taken, or when such amendment might not otherwise be 
proper, they may  be admitted upon a showing of good and sufficient 
reasons why they are necessary  and were not earlier presented. 



        (c)   No amendment can be made as a matter of right in appealed 
cases.  After decision on appeal, amendments can only be made as provided 
in w 1.198, or to carry into effect a recommendation under w 1.196. 

        [24 FR 10332, Dec. 22, 1959; 46 FR 29183, May 29, 1981] 


# 1.117       Amendment and revision required. 


        The specification, claims, and drawings must be amended and 
revised  when required to correct inaccuracies of description and 
definition or unnecessary  prolixity, and to secure correspondence between 
the claims, the specification,  and the drawing. 


# 1.118       Amendment of disclosure. 


        (a)   No amendment shall introduce new matter into the disclosure 
of  an application after the filing date of the application (w 1.53(b)). 
All amendments  to the specification, including the claims, and the 
drawings filed after the  filing date of the application must conform to 
at least one of them as it was  at the time of the filing of the 
application. Matter not found in either, involving  a departure from or an 
addition to the original disclosure, cannot be added  to the application 
after its filing date even though supported by an oath or  declaration in 
accordance with w 1.63 or w 1.67 filed after the filing date  of the 
application. 

        (b)   If it is determined that an amendment filed after the filing 
 date of the application introduces new matter, claims containing new 
matter  will be rejected and deletion of the new matter in the 
specification and drawings  will be required even if the amendment is 
accompanied by an oath or declaration  in accordance with w 1.63 or w 1.67. 

        [48 FR 2712, Jan. 20, 1983, effective Feb. 27, 1983] 


# 1.119       Amendment of claims. 


        The claims may be amended by canceling particular claims, by 
presenting  new claims, or by rewriting particular claims as indicated in 
w 1.121. The  requirements of w 1.111 must be complied with by pointing 
out the specific  distinctions believed to render the claims patentable 
over the references in  presenting arguments in support of new claims and 
amendments. 

        [32 FR 13583, Sept. 28, 1967] 


# 1.121       Manner of making amendments. 


        (a)   Erasures, additions, insertions, or alterations of the 
Office  file of papers and records must not be physically entered by the 
applicant.  Amendments to the application (excluding the claims) are made 
by filing a paper 
(which should conform to w 1.52) directing or requesting that specified 
amendments  be made. The exact word or words to be stricken out or 
inserted by said amendment  must be specified and the precise point 
indicated where the deletion or insertion  is to be made. 

        (b)   Except as otherwise provided herein, a particular claim may 
be  amended only by directions to cancel or by rewriting such claim with 
underlining  below the word or words added and brackets around the word or 
words deleted.  The rewriting of a claim in this form will be construed as 
directing the cancellation  of the original claim; however, the original 
claim number followed by the parenthetical  word "amended" must be used 
for the rewritten claim. If a previously rewritten  claim is rewritten, 
underlining and bracketing will be applied in reference  to the previously 
rewritten claim with the parenthetical expression "twice  amended," "three 
times amended," etc., following the original claim number. 
        (c)   A particular claim may be amended in the manner indicated 
for  the application in paragraph (a) of this section to the extent of 
corrections  in spelling, punctuation, and typographical errors. 
Additional amendments in  this manner will be admitted provided the 
changes are limited to (1) deletions  and/or (2) the addition of no more 
than five words in any one claim. Any amendment  submitted with 
instructions to amend particular claims but failing to conform  to the 
provisions of paragraphs (b) and (c) of this section may be considered 
nonresponsive and treated accordingly. 

        (d)   Where underlining or brackets are intended to appear in the 
printed  patent or are properly part of the claimed material and not 
intended as symbolic  of changes in the particular claim, amendment by 
rewriting in accordance with  paragraph (b) of this section shall be 
prohibited. 

        (e)   In reissue applications, both the descriptive portion and 
the  claims are to be amended by either (1) submitting a copy of a portion 
of the  description or an entire claim with all matter to be deleted from 
the patent  being placed between brackets and all matter to be added to 
the patent being  underlined, or (2) indicating the exact word or words to 
be stricken out 



or inserted and the precise point where the deletion or insertion is to be 
 made. Any word or words to be inserted must be underlined. See w 1.173. 
        (f)   Proposed amendments presented in patents involved in 
reexamination  proceedings must be presented in the form of a full copy of 
the text of: (1)  Each claim which is amended and (2) each paragraph of 
the description which  is amended. Matter deleted from the patent shall be 
placed between brackets  and matter added shall be underlined. Copies of 
the printed claims from the  patent may be used with any additions being 
indicated by carets and deleted  material being placed between brackets. 
Claims must not be renumbered and the  numbering of the claims added for 
reexamination must follow the number of the  highest numbered patent 
claim. No amendment may enlarge the scope of the claims  of the patent. No 
new matter may be introduced into the patent. 

        [32 FR 13583, Sept. 28, 1967; 46 FR 29183, May 29, 1981; para. 
(e),  49 FR 555, Jan. 4, 1984, effective Apr. 1, 1984] 


# 1.122       Entry and consideration of amendments. 


        (a)   Amendments are "entered" by the Office by making the 
proposed  deletions by drawing a line in red ink through the word or words 
cancelled  and by making the proposed substitutions or insertions in red 
ink, small insertions  being written in at the designated place and large 
insertions being indicated  by reference. 

        (b)   Ordinarily all amendments presented in a paper filed while 
the  application is open to amendment are entered and considered, 
subsequent cancellation  or correction being required of improper 
amendments. Untimely amendment papers  may be refused entry and 
consideration in whole or in part. For amendments  presented during an 
interference see w 1.664. 

        [24 FR 10332, Dec. 22, 1959; para. (b), 49 FR 48416, Dec. 12, 
1984,  effective Feb. 11, 1985] 


# 1.123       Amendments to the drawing. 


        No change in the drawing may be made except with permission of the 
 Office. Permissible changes in the construction shown in any drawing may 
be  made only by the submission of a substitute drawing by applicant. A 
sketch  in permanent ink showing proposed changes, to become part of the 
record, must  be filed for approval by the examiner and should be a 
separate paper. 
        [48 FR 2712, Jan. 20, 1983, effective Feb. 27, 1983; 49 FR 555, 
Jan.  4, 1984, effective Apr. 1, 1984; amended, 58 FR 38719, July 20, 
1993, effective  Oct. 1, 1993] 


# 1.124       Amendment of amendments. 


        When an amendatory clause is to be amended, it should be wholly 
rewritten  and the original insertion canceled so that no interlineations 
or deletions  shall appear in the clause as finally presented. Matter 
canceled by amendment  can be reinstated only by a subsequent amendment 
presenting the canceled matter  as a new insertion. 


# 1.125       Substitute specification. 


        If the number or nature of the amendments shall render it 
difficult  to consider the case, or to arrange the papers for printing or 
copying, the  examiner may require the entire specification, including the 
claims, or any  part thereof, to be rewritten. A substitute specification 
may not be accepted  unless it has been required by the examiner or unless 
it is clear to the examiner  that acceptance of a substitute specification 
would facilitate processing of  the application. Any substitute 
specification filed must be accompanied by  a statement that the 
substitute specification includes no new matter. Such  statement must be a 
verified statement if made by a person not registered to  practice before 
the Office. 

        [48 FR 2712, Jan. 20, 1983, effective Feb. 27, 1983] 


# 1.126       Numbering of claims. 


        The original numbering of the claims must be preserved throughout 
the  prosecution. When claims are canceled, the remaining claims must not 
be renumbered.  When claims are added, except when presented in accordance 
with w 1.121(b),  they must be numbered by the applicant consecutively 
beginning with the number  next following the highest numbered claim 
previously presented (whether entered  or not). When the application is 
ready for allowance, the examiner, if necessary,  will renumber the claims 
consecutively in the order in which they appear or  in such order as may 
have been requested by applicant. 

        [32 FR 13583, Sept. 28, 1967] 


# 1.127       Petition from refusal to admit amendment. 


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


TRANSITIONAL PROVISIONS 


# 1.129       Transitional procedures for limited 

                        examination after final rejection and 
                        restriction practice. 

        (a)   An applicant in an application, other than for reissue or a 
design  patent, that has been pending for at least two years as of June 8, 
1995, taking  into account any reference made in such application to any 
earlier filed application  under 35 U.S.C. 120, 121 and 365(c), is 
entitled to have a first submission  entered and considered on the merits 
after final rejection under the following  circumstances:  The Office will 
consider such a submission, if the first submission  and the fee set forth 
in # 1.17(r) are filed prior to the filing of an appeal  brief and prior 
to abandonment of the application.  The finality of the final  rejection 
is automatically withdrawn upon the timely filing of the submission  and 
payment of the fee set forth in # 1.17(r).  If a subsequent final 
rejection  is made in the application, applicant is entitled to have a 
second submission  entered and considered on the merits after the 
subsequent final rejection under  the following circumstances: The Office 
will consider such a submis- sion,  if the second submission and a second 
fee set forth in # 1.17(r) are filed  prior to the filing of an appeal 
brief   and prior to abandonment of the application.  The finality of the 
subsequent final rejection is automatically withdrawn upon  the timely 
filing of the submission and payment of the second fee set forth  in # 
1.17(r).  Any submission filed after a final rejection made in an 
application  subsequent to the fee set forth in # 1.17(r) having been 
twice paid will be  treated as set forth in 
# 1.116. A submission as used in this paragraph includes, but is not 
limited  to, an information disclosure statement, an amendment to the 
written description,  claims or drawings and a new substantive argument or 
new evidence in support  of patentability. 

        (b)(1)      In an application, other than for reissue or a design 
patent,  that has been pending for at least three years as of June 8, 
1995, taking into  account any reference made in the application to any 
earlier filed application  under 35 U.S.C. 120, 121 and 365(c), no 
requirement for restriction or for  the filing of divisional applications 
shall be made or maintained in the application  after June 8, 1995, except 
where: 

        (i)   the requirement was first made in the application or any 
earlier  filed application under 
35 U.S.C. 120, 121 and 365(c) prior to April 8, 1995; 

        (ii)    the examiner has not made a requirement for restriction in 
 the present or parent application prior to April 8, 1995, due to actions 
by  the applicant; or 

        (iii)     the required fee for examination of each additional 
invention  was not paid. 

        (2)   If the application contains more than one independent and 
distinct  invention and a requirement for restriction or for the filing of 
divisional  applications cannot be made or maintained pursuant to this 
paragraph, applicant  will be so notified and given a time period to: 

        (i)   elect the invention or inventions to be searched and 
examined,  if no election has been made prior to the notice, and pay the 
fee set forth  in  1.17(s) for each independent and distinct invention 
claimed in the application  in excess of one which applicant elects; 

        (ii)            confirm an election made prior to the notice and 
pay  the fee set forth in w 1.17(s) for each independent and distinct 
invention  claimed in the application in addition to the one invention 
which applicant  previously elected; or 

        (iii)     file a petition under this section traversing the 
requirement. 
 If the required petition is filed in a timely manner, the original time 
period  for electing and paying the fee set forth in # 1.17(s) will be 
deferred and  any decision on the petition affirming or modifying the 
requirement will set  a new time period to elect the invention or 
inventions to be searched and examined  and to pay the fee set forth in # 
1.17(s) for each independent and distinct  invention claimed in the 
application in excess of one which applicant elects. 


        (3)   The additional inventions for which the required fee has not 
 been paid will be withdrawn from consideration under # 1.142(b). An 
applicant  who desires examination of an invention so withdrawn from 
consideration can  file a divisional application under 35 U.S.C. 121. 

        (c)   The provisions of this section shall not be applicable to 
any  application filed after June 8, 1995. 

        [Added,  60 FR 20195, Apr. 25, 1995, effective June 8, 1995] 
AFFIDAVITS OVERCOMING REJECTIONS 


# 1.131       Affidavit or declaration of prior invention to 
                     overcome 


cited patent or publication. 

        (a)(1)      When any claim of an application or a pat- ent under 
reexamination  is rejected under 35 U.S.C. 




102(a) or (e), or 35 U.S.C. 103 based on a U.S. patent to another which is 
 prior art under 35 U.S.C. 102(a) or (e) and which substantially shows or 
describes  but does not claim the same patentable invention, as defined in 
37 CFR 1.601(n),  or on reference to a foreign patent or to a printed 
publication, the inventor  of the subject matter of the rejected claim, 
the owner of the patent under  reexamination, or the party qualified under 
37 CFR 1.42, 1.43, or 1.47, may submit an appropriate oath or declaration 
to  overcome the patent or publication. The oath or declaration must 
include facts  showing a completion of the invention in this country or in 
a NAFTA or WTO  member country before the filing date of the application 
on which the U.S.  patent issued, or before the date of the foreign 
patent, or before the date  of the printed publication. When an 
appropriate oath or declaration is made,  the patent or publication cited 
shall not bar the grant of a patent to the  inventor or the confirmation 
of the patentability of the claims of the patent,  unless the date of such 
patent or printed publication is more than one year  prior to the date on 
which the inventor's or patent owner's application was  filed in this country. 

        (2)   A date of completion of the invention may not be established 
 under this section before December 8, 1993, in a NAFTA country, or before 
January  1, 1996 in a WTO member country other than a NAFTA country. 

        (b)   The showing of facts shall be such, in character and weight, 
 as to establish reduction to practice prior to the effective date of the 
reference,  or conception of the invention prior to the effective date of 
the reference 
 coupled with due diligence from prior to said date to a subsequent 
reduction  to practice or to the filing of the application. Original 
exhibits of drawings  or records, or photocopies thereof, must accompany 
and form part of the affidavit  or declaration or their absence 
satisfactorily explained. 

        [24 FR 10332, Dec. 22, 1959; 34 FR 18857, Nov. 26, 1969; para. 
(a),  48 FR 2713, Jan. 20, 1983, effective Feb. 27, 1983; para. (a), 50 FR 
9381,  Mar. 7, 1985, effective May 8, 1985; 50 FR 11366, Mar. 21, 1985; 53 
FR 23733,  June 23, 1988, effective Sept. 12, 1988; para. (a)(1) revised 
and para. (a)(2)  added, 60 FR 21043, May 1, 1995, effective May 31, 1995] 


# 1.132       Affidavits or declarations traversing grounds 
                     of 


rejection. 

        When any claim of an application or a patent under reexamination 
is  rejected on reference to a domestic patent which substantially shows 
or describes  but does not claim the invention, or on reference to a 
foreign patent, or to  a printed publication, or to facts within the 
personal knowledge of an employee  of the Office, or when rejected upon a 
mode or capability of operation attributed  to a reference, or because the 
alleged invention is held to be inoperative  or lacking in utility, or 
frivolous or injurious to public health or morals,  affidavits or 
declarations traversing these references or objections may be  received. 

        [48 FR 2713, Jan. 20, 1983, effective Feb. 27, 1983] 

INTERVIEWS 


# 1.133       Interviews. 


        (a)   Interviews with examiners concerning applications and other 
matters  pending before the Office must be had in the examiners' rooms at 
such times,  within office hours, as the respective examiners may 
designate. Interviews  will not be permitted at any other time or place 
without the authority of the  Commissioner. Interviews for the discussion 
of the patentability of pending  applications will not be had before the 
first official action thereon. Interviews  should be arranged for in advance. 

        (b)   In every instance where reconsideration is requested in view 
 of an interview with an examiner, a complete written statement of the 
reasons  presented at the interview as warranting favorable action must be 
filed by  the applicant. An interview does not remove the necessity for 
response to Office  actions as specified in 
w 1.111, w 1.135. 

TIME FOR RESPONSE BY APPLICANT; 
ABANDONMENT OF APPLICATION 


# 1.134       Time period for response to an Office action. 


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

        [47 FR 41276, Sept. 17, 1982, effective Oct. 1, 1982] 




# 1.135       Abandonment for failure to respond within 
                     time 


period. 

        (a)   If an applicant of a patent application fails to respond 
within  the time period provided under 
w 1.134 and w 1.136, the application will become abandoned unless an 
Office  action indicates otherwise. 

        (b)   Prosecution of an application to save it from abandonment 
pursuant  to paragraph (a) of this section must include such complete and 
proper action  as the condition of the case may require. The admission of 
an amendment not  responsive to the last Office action, or refusal to 
admit the same, and any  proceedings relative thereto, shall not operate 
to save the application from  abandonment. 

        (c)   When action by the applicant is a bona fide attempt to 
respond  and to advance the case to final action, and is substantially a 
complete response  to the Office action, but consideration of some matter 
or compliance with some  requirement has been inadvertently omitted, 
opportunity to explain and supply  the omission may be given before the 
question of abandonment is considered. 
        [paras. (a), (b), and  (c), 47 FR 41276, Sept. 17, 1982, effective 
 Oct. 1, 1982; para. (d) deleted, 49 FR 555, Jan. 4, 1984, effective Apr. 
1,  1984] 


# 1.136       Filing of timely responses with petition and 
             fee 


for extension of time and extensions of time                    for cause. 


        (a)(1)      If an applicant is required to respond within a 
nonstatutory  or shortened statutory time period, applicant may respond up 
to four months  after the time period set if a petition for an extension 
of time and the  fee  set in w 1.17 are filed prior to or with the 
response, unless: 

        (i)   Applicant is notified otherwise in an Office action, 
        (ii)    The response is a reply brief submitted pursuant to w 
1.193(b), 
        (iii)The response is a request for an oral hearing submitted 
pursuant  to w 1.194(b), 

        (iv)    The response is to a decision by the Board of Patent 
Appeals  and Interferences pursuant to w 1.196, 
w 1.197 or w 1.304, or 

        (v)   The application is involved in an interference declared 
pursuant  to w 1.611, 

        (a)(2)      The date on which the response, the petition, and the 
fee  have been filed is the date of the response and also the date for 
purposes  of determining the period of extension and the corresponding 
amount of the  fee. The expiration of the time period is determined by the 
amount of the fee  paid. In no case may an applicant respond later than 
the maximum time period  set by statute, or be granted an extension of 
time under paragraph (b) of this  section when the provisions of this 
paragraph are available. See w 1.136(b)  for extensions of time relating 
to proceedings pursuant to ww 1.193(b), 1.194,  1.196 or  1.197.  See w 
1.304 for extension of time to appeal to the U.S. Court  of Appeals for 
the Federal Circuit or to commence a civil action. See w 1.550(c)  for 
extension of time in reexamination proceedings and 
w 1.645 for extension of time in interference proceedings. 

        (b)   When a response with petition and fee for extension of time 
cannot  be filed pursuant to paragraph (a) of this section, the time for 
response will  be extended only for sufficient cause and for a reasonable 
time specified.  Any request for such extension must be filed on or before 
the day on which  action by the applicant is due, but in no case will the 
mere filing of the  request effect any extension. In no case can any 
extension carry the date on  which response to an Office action is due 
beyond the maximum time period set  by statute or be granted when the 
provisions of paragraph (a) of this section  are available. See w 1.304 
for extension of time to appeal to the U.S. Court  of Appeals for the 
Federal Circuit or to commence a civil action, w 1.645 for  extension of 
time in interference proceedings, and 
w 1.550(c) for extenion of time in reexamination proceedings. 

        [47 FR 41277, Sept. 17, 1982, effective Oct. 1, 1982; 49 FR 555, 
Jan.  4, 1984, effective Apr. 1, 1984; 49 FR 48416, Dec. 12, 1984, 
effective Feb.  11, 1985; 54 FR 29551, July 13, 1989, effective Aug. 20, 
19893; para. (a) revised,  58 FR 54504, Oct. 22, 1993, effective Jan 3, 
1994] 


# 1.137       Revival of abandoned application. 


        (a)   An application abandoned for failure to prosecute may be 
revived  as a pending application if it is shown to the satisfaction of 
the Commissioner  that the delay was unavoidable. A petition to revive an 
abandoned application  must be promptly filed after the applicant is 
notified of, or otherwise becomes  aware of, the abandonment, and must be 
accompanied by: 



        (1)   a proposed response to continue prosecution of that 
application,  or filing of a continuing application, unless either has 
been previously filed; 
        (2)   the petition fee as set forth in w 1.17(l); and 

        (3)   a showing that the delay was unavoidable. The showing must 
be  a verified showing if made by a person not registered to practice 
before the  Patent and Trademark Office. 

        (b)   An application unintentionally abandoned for failure to 
prosecute  may be revived as a pending application if the delay was 
unintentional. A petition  to revive an unintentionally abandoned 
application must be: 

        (1)   accompanied by a proposed response to continue prosecution 
of  that application, or the filing of a continuing application, unless 
either  has been previously filed; 

        (2)   accompanied by the petition fee as set forth in #1.17(m); 
        (3)   accompanied by a statement that the delay was unintentional. 
 The statement must be a verified statement if made by a person not 
registered  to practice before the Patent and Trademark Office. The 
Commissioner may require  additional information where there is a question 
whether the delay was unintentional;  and 

        (4)   filed either: 

        (i)   within one year of the date on which the application became 
abandoned;  or 

        (ii)    within three months of the date of the first decision on a 
 petition to revive under paragraph (a) of this section which was filed 
within  one year of the date on which the application became abandoned. 

        (c)   In all applications filed before June 8, 1995, and in all 
design  applications filed on or after June 8, 1995, any petition pursuant 
to paragraph 
(a) of this section not filed within six months of the date of abandonment 
 of the application, must be accompanied by a terminal disclaimer with fee 
under  # 1.321 dedicating to the public a terminal part of the term of any 
patent  granted thereon equivalent to the period of abandonment of the 
application.  The terminal disclaimer must also apply to any patent 
granted on any continuing  application entitled under 35 U.S.C. 120 to the 
benefit of the filing date  of the application for which revival is 
sought. 

        (d)   Any request for reconsideration or review of a decision 
refusing  to revive an application upon petition filed pursuant to 
paragraphs (a) or 
(b) of this section, to be considered timely, must be filed within two 
months  of 

the decision refusing to revive or within such time as set in the 
decision. 
        (e)   The time periods set forth in this section cannot be 
extended,  except that the three-month period set forth in paragraph 
(b)(4)(ii) and the  time period set forth in paragraph (d) of this section 
may be extended under  the provisions of w 1.136. 

        [47 FR 41277, Sept. 17, 1982, effective Oct. 1, 1982; para.  (b) 
48  FR 2713, Jan. 20, 1983, effective Feb. 27, 1983; paras. 
(a) - (c), paras. (d) & (e) added, 58 FR 44277,  Aug. 20,1993, effective 
Sept.  20, 1993; para.  (c) revised, 60 FR 20195, Apr. 25, 1995, effective 
June 8,  1995] 


# 1.138       Express abandonment. 


        An application may be expressly abandoned by filing in the Patent 
and  Trademark Office a written declaration of abandonment signed by the 
applicant  and the assignee of record, if any, and identifying the 
application. An application  may also be expressly abandoned by filing a 
written declaration of abandonment  signed by the attorney or agent of 
record. A registered attorney or agent acting  under the provision of w 
1.34(a), or of record, may also expressly abandon  a prior application as 
of the filing date granted to a continuing application  when filing such a 
continuing application. Express abandonment of the application  may not be 
recognized by the Office unless it is actually received by appropriate 
officials in time to act thereon before the date of issue. 

        [47 FR 47244, Oct. 25, 1982, effective Feb. 27, 1983; 49 FR 48416, 
 Dec. 12, 1984, effective Feb. 11, 1985] 


# 1.139       Revival of provisional application. 


        (a)   A provisional application which has been accorded a filing 
date  and abandoned for failure to timely respond to an Office requirement 
may be  revived so as to be pending for a period of no longer than twelve 
months from  its filing date if it is shown to the satisfaction of the 
Commissioner that  the delay was unavoidable. Under no circumstances will 
the provisional application  be pending after twelve months from its 
filing date.  A petition to revive  an abandoned provisional application 
must be promptly filed after the applicant  is notified of, or otherwise 
becomes aware of, the abandonment, and must be  accompanied by: 



        (1)   the required response unless it has been previously filed; 
        (2)   the petition fee as set forth in # 1.17(l); and 

        (3)   a showing that the delay was unavoidable.  The showing must 
be  a verified showing if made by a person not registered to practice 
before the  Patent and Trademark Office. 

        (b)   A provisional application which has been accorded a filing 
date  and abandoned for failure to timely respond to an Office requirement 
may be  revived so as to be pending for a period of no longer than twelve 
months from  its filing date if the delay was unintentional.  Under no 
circumstances will  the provisional application be pending after twelve 
months from its filing  date. A petition to revive an abandoned 
provisional application must be: 
        (1)   accompanied by the required response unless it has been 
previously  filed; 

        (2)   accompanied by the petition fee as set forth in 
# 1.17(m); 

        (3)   accompanied by a statement that the delay was unintentional. 
 The statement must be a verified statement if made by a person not 
registered  to practice before the Patent and Trademark Office. The 
Commissioner may require  additional information where there is a question 
whether the delay was unintentional;  and 

        (4)   filed either: 

        (i)   within one year of the date on which the provisional 
application  became abandoned; or 

        (ii)    within three months of the date of the first decision on a 
 petition to revive under paragraph (a) of this section which was filed 
within  one year of the date on which the provisional application became 
abandoned. 

        (c)   Any request for reconsideration or review of a decision 
refusing  to revive a provisional application upon petition filed pursuant 
to paragraphs 
(a) or (b) of this section, to be considered timely, must be filed within 
two  months of the decision refusing to revive or within such time as set 
in the  decision. 

        (d)   The time periods set forth in this section cannot be 
extended,  except that the three-month period set forth in paragraph 
(b)(4)(ii) of this  section and the time period set forth in paragraph (c) 
of this section may  be extended under the provisions of # 1.136. 

        [Added, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995] 
JOINDER OF INVENTIONS IN ONE 
APPLICATION; RESTRICTION 


# 1.141       Different inventions in one national 

                        application. 

        (a)   Two or more independent and distinct inventions may not be 
claimed  in one national application, ex- 

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

        [52 FR 20046, May 28, 1987, effective July 1, 1987] 


# 1.142       Requirement for restriction. 


        (a)   If two or more independent and distinct inventions are 
claimed  in a single application, the examiner in his action shall require 
the applicant  in his response to that action to elect that invention to 
which his claim shall  be restricted, this official action being called a 
requirement for restriction 
(also known as a requirement for division). If the distinctness and 
independence  of the inventions be clear, such requirement will be made 
before any action  on the merits; however, it may be made at any time 
before final action in the  case at the discretion of the examiner. 

        (b)   Claims to the invention or inventions not elected, if not 
cancelled,  are nevertheless withdrawn from further consideration by the 
examiner by the  election, subject however to reinstatement in the event 
the requirement for  restriction is withdrawn or overruled. 


# 1.143       Reconsideration of requirement. 


        If the applicant disagrees with the requirement for restriction, 
he  may request reconsideration and withdrawal or modification of the 
requirement,  giving the 




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


# 1.144       Petition from requirement for restriction. 


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


# 1.145       Subsequent presentation of claims for different 
             invention. 

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


# 1.146       Election of species. 


        In the first action on an application containing a generic claim 
and  claims restricted separately to each of more than one species 
embraced thereby,  the examiner may require the applicant in his response 
to that action to elect  that species of his or her invention to which his 
or her claim shall be restricted  if no generic claim is held allowable. 
However, if such application contains  claims directed to more than a 
reasonable number of species, the examiner may  require restriction of the 
claims to not more than a reasonable number of species  before taking 
further action in the case. 

        [43 FR 20465, May 11, 1978] 

DESIGN  PATENTS 


# 1.151       Rules applicable. 


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


# 1.152       Design drawing. 


        The design must be represented by a drawing that complies with the 
 requirements of w 1.84, and must contain a sufficient number of views to 
constitute  a complete disclosure of the appearance of the article. 
Appropriate surface  shading must be used to show the character or contour 
of the surfaces represented.  Solid black surface shading is not permitted 
except when used to represent  color contrast. Broken lines may be used to 
show visible environmental structure,  but may not be used to show hidden 
planes and surfaces which cannot be seen  through opaque materials. 
Alternate positions of a design component, illustrated  by full and broken 
lines in the same view are not permitted in a design drawing.  Photographs 
and ink drawings must not be combined in one application. Photographs 
submitted in lieu of ink drawings in design patent applications must 
comply  with w 1.84(b) and must not disclose environmental structure but 
must be limited  to the design for the article claimed. Color drawings and 
color photographs  are not permitted in design patent applications. 

        [53 FR 47810, Nov. 28, 1988, effective Jan. 1, 1989; amended, 58 
FR  38719, July 20, 1993, effective Oct. 1, 1993] 


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


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

        (b)   The oath or declaration required of the applicant must 
comply  with w 1.63. 

        [24 FR 10332, Dec. 22, 1959; 29 FR 18503, Dec. 29, 1964; para. 
(b),  48 FR 2712, Jan. 20, 1983, effective Feb. 27, 1983] 


# 1.154       Arrangement of specification. 


        The following order of arrangement should be observed in framing 
design  specifications: 

        (a)   Preamble, stating name of the applicant and title of the 
design. 
        (b)   Description of the figure or figures of the drawing. 
        (c)   Description, if any. 

        (d)   Claim. 



        (e)   Signed oath or declaration (See w 1.153(b)). 

        [24 FR 10332, Dec. 22, 1959, para. (e), 48 FR 2713, Jan. 20, 1983, 
 effective date Feb. 27, 1983] 


# 1.155       Issue and term of design patents. 


        (a)   If, on examination, it shall appear that the applicant is 
entitled  to a design patent under the law, a notice of allowance will be 
sent to the  applicant, or applicant's attorney or agent, calling for the 
payment of the  issue fee (w 1.18(b)). If this issue fee is not paid 
within 3 months of the  date of the notice of allowance, the application 
shall be regarded as abandoned. 
        (b)   The Commissioner may accept the payment of the issue fee 
later  than three months after the mailing of the notice of allowance as 
though no  abandonment had ever occurred if upon petition the delay in 
payment is shown  to have been unavoidable. The petition to accept the 
delayed payment must be  promptly filed after the applicant is notified 
of, or otherwise becomes aware  of, the abandonment, and must be 
accompanied by: 

        (1)   the issue fee, unless it has been previously submitted; 
        (2)   the fee for delayed payment (w 1.17(1)); and 

        (3)   a showing that the delay was unavoidable. The showing must 
be  a verified showing if made by a person not registered to practice 
before the  Patent and Trademark Office. 

        (c)   The Commissioner may, upon petition, accept the payment of 
the  issue fee later than three months after the mailing of the notice of 
allowance  as though no abandonment had ever occurred if the delay in 
payment was unintentional.  The petition to accept the delayed payment 
must be: 

        (1)   accompanied by the issue fee, unless it has been previously 
submitted; 
        (2)   accompanied by the fee for unintentionally delayed payment 
(w  1.17(m)); 

        (3)   accompanied by a statement that the delay was unintentional. 
 The statement must be a verified statement if made by a person not 
registered  to practice before the Patent and Trademark Office. The 
Commissioner may require  additional information where there is a question 
whether the delay was unintentional;  and 

        (4)   filed either: 

        (i)   within one year of the date on which the application became 
abandoned;  or 

        (ii)    within three months of the date of the first  decision on 
a  petition under paragraph (b) of this section which was filed within one 
year  of the date on which the application became abandoned. 

        (d)   Any petition pursuant to paragraph (b) of this section not 
filed  within six months of the date of abandonment of the application, 
must be accompanied  by a terminal disclaimer with fee under w 1.321 
dedicating to the public a  terminal part of the term of any patent 
granted thereon equivalent to the period  of abandon- ment of the 
application. The terminal disclaimer must also apply  to any patent 
granted on any continuing application entitled under 35 U.S.C.  120 to the 
benefit of the filing date of the application for which revival  is sought. 

        (e)   Any request for reconsideration or review of a decision 
refusing  to accept the delayed payment upon petition filed pursuant to 
paragraphs (b)  or (c) of this section, to be considered timely, must be 
filed within two months  of the decision refusing to accept the delayed 
payment or within such time  as set in the decision. 

        (f)   The time periods set forth in this section cannot be 
extended,  except that the three-month period set forth in paragraph 
(c)(4)(ii) and the  time period set forth in paragraph (e) of this section 
may be extended under  the provisions of w 1.136. 

        [47 FR 41277, Sept. 17, 1982, effective date Oct. 1, 1982; paras. 
(b)  - (d) amended, paras. (e) and (f) added, 58 FR 44277, Aug. 20, 1993, 
effective  Sept. 20, 1993] 

PLANT  PATENTS 


# 1.161       Rules applicable. 


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


# 1.162       Applicant, oath or declaration. 


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

        [48 FR 2713, Jan. 20, 1983, effective Feb. 27, 1983] 




# 1.163         Specification. 


        (a)   The specification must contain as full and complete a 
disclosure  as possible of the plant and the characteristics thereof that 
distinguish the  same over related known varieties, and its antecedents, 
and must particularly  point out where and in what manner the variety of 
plant has been asexually  reproduced. In the case of a newly found plant, 
the specification must particularly  point out the location and character 
of the area where the plant was discovered. 
        (b)   Two copies of the specification (including the claim) must 
be  submitted, but only one signed oath or declaration is required. The 
second  copy of the specification may be a legible carbon copy of the 
original. 
        [24 FR 10332, Dec. 22, 1959; para. (b), 48 FR 2713, Jan. 20, 1983, 
 effective Feb. 27, 1983] 


# 1.164             Claim. 


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

# 1.165             Plant Drawings. 


        (a)   Plant patent drawings should be artistically and competently 
 executed and must comply with the requirements of # 1.84. View numbers 
and  reference characters need not be employed unless required by the 
examiner.  The disclose all the distinctive characteristics of the plant 
capable of visual  representation. 

        (b)   The drawing may be in color and when color is a 
distinguishing  characteristic of the new variety, the drawing must be in 
color. Two copies  of color drawings or color photographs must be 
submitted. 

        [24 FR 10332, Dec. 22, 1959; para. (b), 47 FR 41277, Sept. 17, 
1982,  effective Oct. 1, 1982; paras. (a) and (b) amended, 
58 FR 38719, July 20, 1993, effective Oct. 1, 1993] 


# 1.166       Specimens. 


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


# 1.167             Examination. 


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

        (b)   Affidavits or declarations from qualified agricultural or 
horticultural  experts regarding the novelty and distinctiveness of the 
variety of plant may  be received when the need of such affidavits or 
declarations is indicated. 
        [24 FR 10332, Dec. 22, 1959; 34 FR 18857, Nov. 26, 1969] 

REISSUES 


# 1.171             Application for reissue. 


        An application for reissue must contain the same parts required 
for  an application for an original patent, complying with all the rules 
relating  thereto except as otherwise provided, and in addition, must 
comply with the  requirements of the rules relating to reissue 
applications. The application  must be accompanied by a certified copy of 
an abstract of title or an order  for a title report accompanied by the 
fee set forth in w 1.19(b)(4), to be  placed in the file, and by an offer 
to surrender the original patent (w 1.178). 
        [47 FR 41278, Sept. 17, 1982, effective Oct. 1, 1982; revised, 54 
FR 6893, Feb. 17, 1989, 54 FR 9432, March 7, 1989, effective Apr. 17, 
1989;  56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991] 


# 1.172             Applicants,  assignees. 


        (a)   A reissue oath must be signed and sworn to or declaration 
made  by the inventor or inventors except as otherwise provided (see ww 
1.42, 1.43,  1.47), and must be accompanied by the written assent of all 
assignees, if any,  owning an undivided interest in the patent, but a 
reissue oath may be made  and sworn to or declaration made by the assignee 
of the entire interest if  the application does not seek to enlarge the 
scope of the claims of the original  patent. 

        (b)   A reissue will be granted to the original patentee, his 
legal  representative or assigns as the interest may appear. 

        [24 FR 10332, Dec. 22, 1959, para. (a), 48 FR 2713, Jan. 20, 1983, 
 effective Feb. 27, 1983] 


# 1.173             Specification. 


        The specification of the reissue application must include the 
entire  specification and claims of the patent, with the matter to be 
omitted by reissue  enclosed in square brackets; and any additions made by 
the reissue 



must be underlined, so that the old and the new specifications and claims 
may  be readily compared. Claims should not be renumbered and the 
numbering of claims  added by reissue should follow the number of the 
highest numbered patent claim.  No new matter shall be introduced into the 
specification. 


# 1.174             Drawings. 


        (a)     The drawings upon which the original patent was issued may 
 be used in reissue applications if no changes whatsoever are to be made 
in  the drawings. In such cases, when the reissue application is filed, 
the applicant  must submit a temporary drawing which may consist of a copy 
of the printed  drawings of the patent or a photoprint of the original 
drawings of the size  required for original drawing. 

        (b)   Amendments which can be made in a reissue drawing, that is, 
changes  from the drawing of the patent, are restricted. 

        [24 FR 10332, Dec. 22, 1959; para.  (a), 48 FR 2713, Jan. 20, 
1983,  effective Feb. 27, 1983] 


# 1.175             Reissue oath or declaration. 


        (a)   Applicants for reissue, in addition to complying with the 
requirements  of w 1.63, must also file with their applications a 
statement under oath or  declaration as follows: 

        (1)   When the applicant verily believes the original patent to be 
 wholly or partly inoperative or invalid, stating such belief and the 
reasons  why. 

        (2)   When it is claimed that such patent is so inoperative or 
invalid  "by reason of a defective specification or drawing" particularly 
specifying  such defects. 

        (3)   When it is claimed that such patent is inoperative or 
invalid 
 " by reason of the patentee claiming more or less than he had the right 
to  claim in the patent,"  distinctly specifying the excess or 
insufficiency in  the claims. 

        (4)   [Reserved] 

        (5)   Particularly specifying the errors relied upon, and how they 
 arose or occurred. 

        (6)   Stating that said errors arose "without any deceptive 
intention" 
 on the part of the applicant. 

        (7)   Acknowledging the duty to disclose to the Office all 
information  known to applicants to be material to patentability as 
defined in w 1.56. 
        (b)   Corroborating affidavits or declarations of others may be 
filed  and the examiner may, in any case, require additional information 
or affidavits  or declarations concerning the application for reissue and 
its object. 
        [24 FR 10332, Dec. 22, 1959; 29 FR 18503, Dec. 29, 1964; 
34 FR 18857, Nov. 26, 1969; para. (a), 47 FR 21752, May 19, 1982, 
effective  July 1,1982; para. (a), 48 FR 2713, Jan. 20, 1983, effective 
Feb. 27, 1983;  para. (a)(7), 57 FR 2021, Jan. 17, 1992, effective Mar. 
16, 1992] 


# 1.176             Examination of reissue. 


        An original claim, if re-presented in the reissue application, is 
subject  to reexamination, and the entire application will be examined in 
the same manner  as original applications, subject to the rules relating 
thereto, excepting  that division will not be required. Applications for 
reissue will be acted  on by the examiner in advance of other 
applications, but not sooner than two  months after the announcement of 
the filing of the reissue application has  appeared in the Official Gazette. 

        [42 FR 5595, Jan. 28, 1977] 


# 1.177             Reissue in divisions. 


        The Commissioner may, in his or her discretion, cause several 
patents  to be issued for distinct and separate parts of the thing 
patented, upon demand  of the applicant, and upon payment of the required 
fee for each division. Each  division of a reissue constitutes the subject 
of a separate specification descriptive  of the part or parts of the 
invention claimed in such division; and the drawing  may represent only 
such part or parts, subject to the provisions of ## 1.83  and 1.84. On 
filing divisional reissue applications, they shall be referred  to the 
Commissioner.  Unless otherwise ordered by the Commissioner upon petition 
and payment of the fee set forth in # 1.17(i), all the divisions of a 
reissue  will issue simultaneously; if there is any controversy as to one 
division,  the others will be withheld from issue until the controversy is 
ended, unless  the Commissioner orders otherwise. 

        [47 FR 41278, Sept. 17, 1982, effective date Oct. 1, 1982; 
revised,  54 FR 6893, Feb. 15, 1989, 54 FR 9432, March 7, 1989, effective 
Apr. 17, 1989;  revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995] 


# 1.178             Original  patent. 


        The application for a reissue must be accompanied by an offer to 
surrender  the original patent. The application should also be accompanied 
by the original  patent, or if the original is lost or inaccessible, by an 
affidavit or declaration  to that effect. The application may be accepted 
for examination in the absence  of the 




original patent or the affidavit or declaration, but one or the other must 
 be supplied before the case is allowed. If a reissue be refused, the 
original  patent will be returned to applicant upon his request. 

        [24 FR 10332, Dec. 22, 1959; 34 FR 18857, Nov. 26, 1969] 


# 1.179             Notice of reissue application. 


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

PETITIONS  AND ACTIONS  BY THE 
COMMISSIONER 


# 1.181             Petition to the Commissioner. 


        (a)   Petition may be taken to the Commissioner: (1) From  any 
action  or requirement of any examiner in the 
ex parte prosecution of an application which is not subject to appeal to 
the  Board of Patent Appeals and Interferences or to the court; (2) in 
cases in  which a statute or the rules specify that the matter is to be 
determined directly  by or reviewed by the Commissioner; and (3) to invoke 
the supervisory authority  of the Commissioner in appropriate 
circumstances. For petitions in interferences,  see w 1.644. 

        (b)   Any such petition must contain a statement of the facts 
involved  and the point or points to be reviewed and the action requested. 
Briefs or  memoranda, if any, in support thereof should accompany or be 
embodied in the  petition; and where facts are to be proven, the proof in 
the form of affidavits  or declarations (and exhibits, if any) must 
accompany the petition. 
        (c)   When a petition is taken from an action or requirement of an 
 examiner in the ex parte prosecution of an application, it may be 
required  that there have been a proper request for reconsideration (w 
1.111) and a repeated  action by the examiner. The examiner may be 
directed by the Commissioner to  furnish a written statement, within a 
specified time, setting forth the reasons  for his decision upon the 
matters averred in the petition, supplying a copy  thereof to the petitioner. 

        (d)   Where a fee is required for a petition to the Commissioner 
the  appropriate section of this part will so indicate. If any required 
fee does  not accompany the petition, the petition will be dismissed. 

        (e)   Oral hearing will not be granted except when considered 
necessary  by the Commissioner. 

        (f)   Except as otherwise provided in these rules, any such 
petition  not filed within 2 months from the action complained of, may be 
dismissed as  untimely. The mere filing of a petition will not stay the 
period for reply  to an Examiner's action which may be running against an 
application, nor act  as a stay of other proceedings. 

        (g)   The Commissioner may delegate to appropriate Patent and 
Trademark  Office officials the determination of petitions. 

        [24 FR 10332, Dec. 22, 1959; 34 FR 18857, Nov. 26, 1969; paras. 
(d)  and (g), 47 FR 41278, Sept. 17, 1982, effective Oct. 1, 1982; para. 
(a), 49  FR 48416, Dec. 12, 1984, effective Feb. 11, 1985] 


# 1.182       Questions not specifically  provided  for. 


        All cases not specifically provided for in the regu- 
lations of this part will be decided in accordance with 
the merits of each case by or under the authority of 
the Commissioner, and such decision will be communicated to the interested 
 parties in writing. Any petition seeking a decision under this section 
must  be accom- panied by the petition fee set forth in w 1.17(h). 

        [47 FR 41278, Sept. 17, 1982, effective date Oct. 1, 1982] 

# 1.183       Suspension of  rules. 


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

        [47 FR 41278, Sept. 17, 1982, effective Oct. 1, 1982] 


# 1.184       Reconsideration of cases decided by former 
                     Commissioners. 

        Cases which have been decided by one Commissioner will not be 
reconsidered  by his successor except in accordance with the principles 
which govern the  granting of new trials. 



APPEAL TO THE BOARD OF PATENT 
APPEALS AND INTERFERENCES 

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


# 1.191       Appeal to Board of Patent Appeals and 
             Interferences. 

        (a)   Every applicant for a patent or for reissue of a patent, or 
every  owner of a patent under reexamination, any of the claims of which 
have been  twice rejected or who has been given a final rejection (w 
1.113), may, upon  the payment of the fee set forth in w 1.17(e), appeal 
from the decision of  the examiner to the Board of Patent Appeals and 
Interferences within the time  allowed for response. 

        (b)   The appeal in an application or reexamination proceeding 
must  identify the rejected claim or claims appealed, and must be signed 
by the applicant,  patent owner, or duly authorized attorney or agent. 

        (c)   An appeal when taken must be taken from the rejection of all 
 claims under rejection which the applicant or patent owner proposes to 
contest.  Questions relating to matters not affecting the merits of the 
invention may  be required to be settled before an appeal can be considered. 

        (d)   The time periods set forth in ww 1.191 and 1.192 are subject 
 to the provisions of w 1.136 for patent applications and w 1.550(c) for 
reexamination  proceedings. The time periods  set forth in ww 1.193, 
1.194, 1.196, and 1.197  are subject to the provisions of 
w 1.136(b) for patent applications or w 1.550(c) for reexamination 
proceedings.  See w 1.304(a) for extensions of time for filing a notice of 
appeal to the  U.S. Court of Appeals for the Federal Circuit or for 
commencing a civil action. 
        (e)   Jurisdiction over the application or patent under 
reexamination  passes to the Board of Patent Appeals and Interferences 
upon transmittal of  the file, including all briefs and examiner's 
answers, to the Board. Prior  to the entry of a decision on the appeal, 
the Com- missioner may sua sponte  order the application remanded to the 
examiner. 

        [46 FR 29183, May 29, 1981; para. (a), 47 FR 41278, Sept. 17, 
1982,  effective Oct. 1, 1982; para. (d), 49 FR 555, Jan. 4, 1984, 
effective Apr.  1, 1984; 49 FR 48416, Dec. 12, 1984, effective  Feb. 11, 
1985; paras. (b) and 
(d) amended, para. (e)  added, 54 FR 29553, July 13, 1989, effective Aug. 
20,  1989;  para. (d) revised, 
58 FR 54504, Oct. 22, 1993, effective Jan 3, 1994] 


# 1.192       Appellant's brief. 


        (a)   Appellant shall, within 2 months from the date of the notice 
 of appeal under w 1.191 or within the time allowed for response to the 
action  appealed from, if such time is later, file a brief in triplicate. 
The brief  must be accompanied by the requisite fee set forth in w 1.17(f) 
and must set  forth the authorities and arguments on which appellant will 
rely to maintain  the appeal. Any arguments or authorities not included in 
the brief will be  refused consideration by the Board of Patent Appeals 
and Interferences, unless  good cause is shown. 

        (b)   On failure to file the brief, accompanied by the requisite 
fee,  within the time allowed, the appeal shall stand dismissed. 

        (c)   The brief shall contain the following items under 
appropriate  headings and in the order indicated below unless the brief is 
filed by an applicant  who is not represented by a registered practitioner: 

        (1)   Real party in interest. A statement identifying the real 
party  in interest, if the party named in the caption of the brief is not 
the real  party in interest. 

        (2)   Related appeals and interferences. A statement identifying 
by  number and filing date all other appeals or interferences known to 
appellant,  the appellant's legal representative, or assignee which will 
directly affect  or be directly affected by or have a bearing on the 
Board's decision in the  pending appeal. 

        (3)   Status of claims.  A statement of the status of all the 
claims,  pending or canceled, and identifying the claims appealed. 

        (4)   Status of amendments. A statement of the status of any 
amendment  filed subsequent to final rejection. 

        (5)   Summary of invention. A concise explanation of the invention 
 defined in the claims involved in the appeal, which shall refer to the 
specification  by page and line number, and to the drawing, if any, by 
reference characters. 
        (6)   Issues. A concise statement of the issues presented for 
review. 
        (7)         Grouping of claims. For each ground of rejection which 
 appellant contests and which applies to a group of two or more claims, 
the  Board shall select a single claim from the group and shall decide the 
appeal  as to the ground of rejection on the basis of that claim alone 
unless a statement  is included that the claims of the group do not stand 
or fall together and,  in the argument under paragraph (c)(8) of this 
section, appellant ex- 



plains why the claims of the group are believed to be separately 
patentable.  Merely pointing out differences in what the claims cover is 
not an argument  as to why the claims are separately patentable. 

        (8)   Argument. The contentions of appellant with respect to each 
of  the issues presented for review in paragraph (c)(6) of this section, 
and the  basis therefor, with citations of the authorities, statutes, and 
parts of the  record relied on. Each issue should be treated under a 
separate heading. 
        (i)   For each rejection under 35 U.S.C. 112, first paragraph, the 
 argument shall specify the errors in the rejection and how the first 
paragraph  of 35 U.S.C. 112 is complied with, including, as appropriate, 
how the specification  and drawings, if any, 

        (A)   describe the subject matter defined by each of the rejected 
claims, 
        (B)   enable any person skilled in the art to make and use the 
subject  matter defined by each of the rejected claims, and 

        (C)   set forth the best mode contemplated by the inventor of 
carrying  out his or her invention. 

        (ii)    For each rejection under 35 U.S.C. 112, second paragraph, 
the  argument shall specify the errors in the 
rejection and how the claims particularly point out and distinctly claim 
the  subject matter which applicant regards as the invention. 

        (iii)     For each rejection under 35 U.S.C. 102, the argument 
shall  specify the errors in the rejection and why the rejected claims are 
patentable  under 
35 U.S.C. 102, including any specific limitations in the rejected claims 
which  are not described in the prior art relied upon in the rejection. 

        (iv)    For each rejection under 35 U.S.C. 103, the argument shall 
 specify the errors in the rejection and, if appropriate, the specific 
limitations  in the rejected claims which are not described in the prior 
art relied on in  the rejection, and shall explain how such limitations 
render the claimed subject  matter unobvious over the prior art. If the 
rejection is based upon a combination  of references, the argument shall 
explain why the references, taken as a whole,  do not suggest the claimed 
subject matter, and shall include, as may be appropriate,  an explanation 
of why features disclosed in one reference may not properly  be combined 
with features disclosed in another reference. A general argument  that all 
the limitations are not described in a single reference does not satisfy 
the requirements of this paragraph. 

        (v)   For any rejection other than those referred to in paragraphs 
(c)(8)(i) to (iv) of this section, the argument shall specify the errors 
in  the rejection and the specific limitations in the rejected claims, if 
appropriate,  or other reasons, which cause the rejection to be in error. 

        (9)   Appendix. An appendix containing a copy of the claims 
involved  in the appeal. 

        (d)   If a brief is filed which does not comply with all the 
requirements  of paragraph (c) of this section, appellant will be notified 
of the reasons  for non-compliance and provided with a period of one month 
within which to  file an amended brief.  If appellant does not file an 
amended brief during  the one-month period, or files an amended brief 
which does not overcome all  the reasons for non-compliance stated in the 
notification, the appeal will  stand dismissed. 

        [36 FR 5850, Mar. 30, 1971; para. (a), 47 FR 41278, Sept. 17, 
1982,  effective Oct. 1, 1982; para. (a), 49 FR 556, Jan. 4, 1984, 
effective Apr.  1, 1984; 53 FR 23734, June 23, 1988, effective Sept. 12, 
1988; para. (a), (c),  and (d) revised, 58 FR 54504, Oct. 22, 1993, 
effective Jan 3, 1994; paras. 
(a)-(c) revised, 60 FR 14488, Mar 17, 1995, effective Apr. 21, 1995] 

# 1.193       Examiner's  answer. 


        (a)   The primary examiner may, within such time as may be 
directed  by the Commissioner, furnish a written statement in answer to 
the appellant's  brief including such explanation of the invention claimed 
and of the references  and grounds of rejection as may be necessary, 
supplying a copy to the appellant.  If the primary examiner shall find 
that the appeal is not regular in form or  does not relate to an 
appealable action, he shall so state and a petition from  such decision 
may be taken to the Commissioner as provided in w 1.181. 
        (b)   The appellant may file a reply brief directed only to such 
new  points of argument as may be raised in the examiner's answer, within 
two months  from the date of such answer. The new points of argument shall 
be specifically  identified in the reply brief. If the examiner determines 
that the reply brief  is not directed only to new points of argument 
raised in the examiner's answer,  the examiner may refuse entry of the 
reply brief and will so notify the appellant.  If the examiner's answer 
expressly states that it includes a new ground of  rejection, appellant 
must file a reply thereto within two months from the date  of such answer 
to avoid dismissal of the 




appeal as to the claims subject to the new ground of rejection; such reply 
 may be accompanied by any amendment or material appropriate to the new 
ground.  See w 1.136(b) for extensions of time for filing a reply brief in 
a patent  application and w 1.550(c) for extensions of time in a 
reexamination proceeding. 
        [24 FR 10332, Dec. 22, 1959; 34 FR 18858, Nov.26, 1969; para. (c), 
 47 FR 21752, May 19, 1982, added effective July 1, 1982; para. (b), 50 FR 
9382,  Mar. 7, 1985, effective May 8, 1985; 53 FR 23735, June 23, 1988, 
effective  Sept. 12, 1988; para. (c) deleted, 57 FR 2021, Jan. 17, 1992, 
effective Mar.  16, 1992; para. (b) revised, 58 FR 54504, Oct. 22, 1993, 
effective Jan 3, 1994] 

# 1.194       Oral  hearing. 


        (a)   An oral hearing should be requested only in those 
circumstances  in which the appellant considers such a hearing necessary 
or desirable for  a proper presentation of his appeal. An appeal decided 
without an oral hearing  will receive the same consideration by the Board 
of Patent Appeals and Interferences  as appeals decided after oral hearing. 

        (b)   If appellant desires an oral hearing, appellant must file a 
written  request for such hearing accompanied by the fee set forth in w 
1.17(g) within  two months after the date of the examiner's answer. If 
appellant requests an  oral hearing and submits therewith the fee set 
forth in w 1.17(g), an oral  argument may be presented by, or on behalf 
of, the primary examiner if considered  desirable by either the primary 
examiner or the Board.  See w 1.136(b) for  extensions of time for 
requesting an oral hearing in a patent application and  w 1.550(c) for 
extensions of time in a reexamination proceeding. 

        (c)   If no request and fee for oral hearing have been timely 
filed  by the appellant, the appeal will be assigned for consideration and 
decision.  If the appellant has requested an oral hearing and has 
submitted the fee set  forth in w 1.17(g), a day of hearing will be set, 
and due notice thereof given  to the appellant and to the primary 
examiner. Hearing will be held as stated  in the notice, and oral argument 
will be limited to twenty minutes for the  appellant and fifteen minutes 
for the primary 


examiner unless otherwise ordered before the hearing begins. 

        [42 FR 5595, Jan. 28, 1977; paras. (b) & (c), 47 FR 41278, Sept. 
17,  1982, effective Oct. 1, 1982; para. (a), 49 FR 48416, Dec. 12, 1984, 
effective  Feb. 11, 1985; para. (b) revised 53 FR 23735, June 23, 1988, 
effective Sept.  12, 1988; para. (b) revised, 58 FR 54504, Oct. 22, 1993, 
effective Jan 3, 1994] 

# 1.195             Affidavits or declarations after appeal. 


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

        [34 FR 18858, Nov. 26, 1969] 


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

        (a)   The Board of Patent Appeals and Interferences, in  its 
decision,  may affirm or reverse the decision of 

the examiner in whole or in part on the grounds and on the claims 
specified  by the examiner or remand the application to the examiner for 
further consideration.  The affirmance of the rejection of a claim on any 
of the grounds specified  constitutes a general affirmance of the decision 
of the examiner on that claim,  except as to any ground specifically reversed. 

        (b)   Should the Board of Patent Appeals and Interferences have 
knowledge  of any grounds not involved in the appeal for rejecting any 
appealed claim,  it may include in the decision a statement to that effect 
with its reasons  for so holding, which statement shall constitute a new 
rejection of the claims.  A new rejection shall not be considered final 
for purposes of judicial review.  When the Board of Patent Appeals and 
Interferences makes a new rejection of  an appealed claim, the appellant 
may exercise any one of the following two  options with respect to the new 
ground: 

        (1)   The appellant may submit an appropriate amendment of the 
claims  so rejected or a showing of facts, or both, and have the matter 
reconsidered  by the examiner in which event the application will be 
remanded to the examiner.  The statement shall be binding upon the 
examiner unless an amendment or showing  of facts not previously of record 
be made which, in the opinion of the examiner,  overcomes the new ground 
for rejection stated in the decision. Should the examiner  again reject 
the application, the applicant may again appeal to the Board of  Patent 
Appeals and Interferences. 

        (2)   The appellant may have the case reconsidered under w 
1.197(b)  by the Board of Patent Appeals and Interferences upon the same 
record. The  request for re- consideration shall address the new ground 
for rejection and  state with particularity the points believed to have 




been misapprehended or overlooked in rendering the decision and also state 
 all other grounds upon which reconsideration is sought. Where request for 
such  reconsideration is made the Board of Patent Appeals and 
Interferences shall  reconsider the new ground for rejection and, if 
necessary, render a new  decision  which shall include all grounds upon 
which a patent is refused. The decision  on reconsideration is deemed to 
incorporate the earlier decision, except for  those portions specifically 
withdrawn on reconsideration, and is final for  the purpose of judicial 
review. 

        (c)   Should the decision of the Board of Patent Appeals and 
Interferences  include an explicit statement that a claim may be allowed 
in amended form,  appellant shall have the right to amend in conformity 
with such statement which  shall be binding on the examiner in the absence 
of new references or grounds  of rejection. 

        (d)   Although the Board of Patent Appeals and Interferences 
normally  will confine its decision to a review of rejections made by the 
examiner, should  it have knowledge of any grounds for rejecting any 
allowed claim, it may include  in its decision a recommended rejection of 
the claim and remand the case to  the examiner.  In such event, the Board 
shall set a period, not less than one  month, within which the appellant 
may submit to the examiner an appropriate  amendment,  a showing  of 
facts  or  reasons, or  both, in order to avoid  the grounds set forth in 
the recommendation of the Board of Patent Appeals  and Interferences. The 
examiner shall be bound by the recommendation and shall  enter and 
maintain the recommended rejection unless an amendment or showing  of 
facts not previously of record is filed which, in the opinion of the 
examiner,  overcomes the recommended rejection. Should the examiner make 
the recommended  rejection final, the applicant may again appeal to the 
Board of Patent Appeals  and Interferences. 

        (e)   Whenever a decision of the Board of Patent Appeals and 
Interferences  includes a remand, that decision shall not be considered a 
final decision.  When appropriate, upon conclusion of proceedings on 
remand before the examiner,  the Board of Patent Appeals and Interferences 
may enter an order otherwise  making its decision final. 

        (f)   See w 1.136(b) for extensions of time to take action under 
this  section in a patent application and w 1.550(c) for extensions of 
time in a  reexamination proceeding. 

        [24 FR 10332, Dec. 12, 1959; 49 FR 29183, May 29, 1981; 49 FR 
48416,  Dec. 12, 1984, effective Feb. 12, 1985; para. (b) revised 53 FR 
23735, June  23, 1988, effective Sept. 12, 1988; paras. (a), (b) & (d) 
amended, paras. (e)  & (f) added, 54 FR 29552, July 13, 1989, effective 
Aug. 20, 1989; para. (f)  revised, 58 FR 54504, Oct. 22, 1993, effective 
Jan 3, 1994] 


# 1.197       Action following decision. 


        (a)   After decision by the Board of Patent Appeals and 
Interferences,  the case shall be returned to the examiner, subject to the 
appellant's right  of appeal or other review, for such further action by 
the appellant or by the  examiner, as the condition of the case may 
require, to carry into effect the  decision. 

        (b)   A single request for reconsideration or modification of the 
decision  may be made if filed within one month from the date of the 
original decision,  unless the original decision is so modified by the 
decision on reconsideration  as to become, in effect, a new decision, and 
the Board of Patent Appeals and  Interferences so states. The request for 
reconsideration shall state with particularity  the points believed to 
have been misapprehended or overlooked in rendering  the decision and also 
state all other grounds upon which reconsideration is  sought. See w 
1.136(b) for extensions of time for seeking reconsideration in  a patent 
application and # 1.550(c) for extensions of time in a reexamination 
proceeding. 

        (c)   Termination of proceedings. 

        Proceedings are considered terminated by the dismissal of an 
appeal  or the failure to timely file an appeal to the court or a civil 
action (w 1.304)  except: (1) where claims stand allowed in an application 
or (2) where the nature  of the decision requires further action by the 
examiner.  The date of termination  of proceedings is the date on which 
the appeal is dismissed or the date on  which the time for appeal to court 
or review by civil action (w 1.304) expires.  If an appeal to the court or 
a civil action has been filed, proceedings are  considered terminated when 
the appeal or civil action is terminated. An appeal  to the U.S. Court of 
Appeals for the Federal Circuit is terminated when the  mandate is 
received by the Office. A civil action is terminated when the time  to 
appeal the judgment expires. 



        [46 FR 29184, May 29, 1981; para. (a), 47 FR 41278, Sept. 17, 
1982,  effective Oct. 1, 1982; 49 FR 556, Jan. 4, 1984, effective Apr. 1, 
1984; paras. 
(a) and  (b), 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; paras. 
(b)  and (c), 54 FR 29552, July 13, 1989, effective Aug. 20, 1989; para. 
(b) revised,  58 FR 54504, Oct. 22, 1993, effective Jan 3, 1994] 


# 1.198             Reopening  after  decision. 


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

        [49 FR 48416, Dec. 12, 1984, effective date Feb. 11, 1985] 
MISCELLANEOUS   PROVISIONS 


# 1.248             Service of papers; manner of service; proof of service 



in cases other than interferences. 

        (a)   Service of papers must be on the attorney or agent of the 
party  if there be such or on the party if there is no attorney or agent, 
and may  be made in any of the following ways: 

        (1)   By delivering a copy of the paper to the person served; 
        (2)   By leaving a copy at the usual place of business of the 
person  served with someone in his employment; 

        (3)   When the person served has no usual place of business, by 
leaving  a copy at the person's residence, with some person of suitable 
age and discretion  who resides there; 

        (4)   Transmissions by first class mail. When service is by mail 
the  date of mailing will be regarded as the date of service. 

        (5)   Whenever it shall be satisfactorily shown to the 
Commissioner  that none of the above modes of obtaining or serving the 
paper is practicable,  service may be by notice published in the Official 
Gazette. 

        (b)   Papers filed in the Patent and Trademark Office which are 
required  to be served shall contain proof of service. Proof of service 
may appear on  or be affixed to papers filed. Proof of service shall 
include the date and 

manner of service. In the case of personal service, proof of service shall 
 also include the name of any person served, certified by the person who 
made  service. Proof of service may be made by: (1) an acknowledgement of 
service  by or on behalf of the person served or (2) a statement signed by 
the attorney  or agent containing the information required by this section. 

        (c)   See w 1.646 for service of papers in interferences. 
        [46 FR 29184, May 29, 1981; 49 FR 48416, Dec. 12, 1984, effective 
Feb.  11, 1985] 

PROTESTS AND PUBLIC USE PROCEEDINGS 


# 1.291       Protests by the public against pending 
                     applications. 

        (a)   Protests by a member of the public against pending 
applications  will be referred to the examiner having charge of the 
subject matter involved.  A protest specifically identifying the 
application to which the protest is  directed will be entered  in the 
application file if: 

        (1)   The protest is timely submitted; and 

        (2)   The protest is either served upon the applicant in 
accordance  with w 1.248, or filed with the Office in duplicate in the 
event service is  not possible. 

        Protests  raising  fraud or  other  inequitable  conduct  issues 
will  be entered in the application file, generally without comment on 
those issues. 
 Protests which do not adequately identify a pending patent application 
will  be disposed of and will not be considered by the Office. 

        (b)   A protest submitted in accordance with the second sentence 
of  paragraph (a) of this section will be considered by the Office if it 
includes 
(1) a listing of the patents, publications, or other information relied 
upon; 
(2) a concise explanation of the relevance of each listed item; (3) a copy 
 of each listed patent or publication or other item of information in 
written  form or at least the pertinent portions thereof; and (4) an 
English language  translation of all the necessary and pertinent parts of 
any non-English language  patent, publication, or other item of 
information in written form relied upon. 
        (c)   A member of the public filing a protest in an application 
under  paragraph (a) of this section will not receive any communications 
from the  Office relating to the protest, other than the return of a 
self-addressed postcard  which the member of the public may include with 
the protest in order to receive  an acknowledgment by the Office that the 
protest has been received. The Office  may communicate with the applicant 
regarding any protest and may require the  applicant to respond to 
specific questions raised by the protest. In the 



absence of a request by the Office, an applicant has no duty to, and need 
not,  respond to a protest. The limited involvement of the member of the 
public filing  a protest pursuant to paragraph (a) of this section ends 
with the filing of  the protest, and no further submission on behalf of 
the protestor will be considered  unless such submission raises new issues 
which could not have been earlier  presented. 

        [47 FR 21752, May 19, 1982, effective July 1, 1982; paras. (a) and 
(c), 57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992] 


# 1.292             Public use proceedings. 


        (a)   When a petition for the institution of public use 
proceedings,  supported by affidavits or declarations and the fee set 
forth in w 1.17(j),  is filed by one having information of the pendency of 
an application and is  found, on reference to the examiner, to make a 
prima facie showing that the  invention claimed in an application believed 
to be on file had been in public  use or on sale more than one year before 
the filing of the application, a hearing  may be had before the 
Commissioner to determine whether a public use proceeding  should be 
instituted. If instituted, the Commissioner may designate an appropriate 
official to conduct the public use proceeding, including the setting of 
times  for taking testimony, which shall be taken as provided by 
ww 1.671 through 1.685. The petitioner will be heard in the proceedings 
but  after decision therein will not be heard further in the prosecution 
of the  application for patent. 

        (b)   The petition and accompanying papers should either:  (1) 
Reflect  that a copy of the same has been served upon the applicant or 
upon his attorney  or agent of record; or (2) be filed with the Office in 
duplicate in the event  service is not possible. The petition and 
accompanying papers, or a notice  that such a petition has been filed, 
shall be entered in the application file. 
        (c)   A petition for institution  of public use proceedings shall 
not  be filed by a party to an interference as to an application involved 
in the  interference. Public use and on sale issues in an interference 
shall be raised  by a preliminary motion under # 1.633(a). 

        [42 FR 5595, Jan. 28, 1977; para. (a), 47 FR 41279, Sept. 17, 
1982;  paras. (a) and (c), 49 FR 48416, Dec. 12, 1984, effective Feb. 12, 
1985] 

# 1.293       Statutory invention registration. 


        (a)   An applicant for an original patent may request, at any time 
 during the pendency of applicant's pending complete application, that the 
specification  and drawings be published as a statutory invention 
registration.  Any such  request must be signed by (1) the applicant and 
any assignee of record or (2)  an attorney or agent of record in the 
application. 

        (b)   Any request for publication of a statutory invention 
registration  must include the following parts: 

        (1)   A waiver of the applicant's right to receive a patent on the 
 invention claimed effective upon the date of publication of the statutory 
invention  registration; 

        (2)   The required fee for filing a request for pub- lication of a 
 statutory invention registration as provided for in w 1.17(n) or (o); 
        (3)   A statement that in the opinion of the requester, the 
application  to which the request is directed meets the requirements of 35 
U.S.C. 112; and 
        (4)   A statement that, in the opinion of the requester, the 
application  to which the request is directed complies with the formal 
requirements of this  part for printing as a patent. 

        (c)   A waiver filed with a request for a statutory invention 
registration  will be effective, upon publication of the statutory 
invention registration,  to waive the inventor's right to receive a patent 
on the invention claimed  in the statutory invention registration, in any 
application for an original  patent which is pending on, or filed after, 
the date of publication of the  statutory invention registration. A waiver 
filed with a request for a statutory  invention registration will not 
affect the rights of any other inventor even  if the subject matter of the 
statutory invention registration and an application  of another inventor 
are commonly owned. A waiver filed with a request for a  statutory 
invention registration will not affect any  rights in a patent to  the 
inventor which issued prior to the date of publication of the statutory 
invention registration unless a reissue application is filed seeking to 
enlarge  the scope of the claims of the patent. See also w 1.106(e). 

        [50 FR 9382, Mar. 7, 1985, effective date May 8, 1985] 


# 1.294             Examination of request for publication of a 
                             statutory 


invention registration and patent 
application  to which the request is directed. 

        (a)   Any request for a statutory invention registration will be 
examined  to determine if the requirements of w 1.293 have been met. The 
application  to which the request is directed will be examined to 
determine (1) 


if the subject matter of the application is appropriate for publication, 
(2)  if the requirements for publication are met, and (3) if the 
requirements of  35 U.S.C. 112 and 
w 1.293 of this part are met. 

        (b)   Applicant will be notified of the results of the examination 
 set forth in paragraph (a) of this section. If the requirements of w 
1.293  and this section are not met by the request filed, the notification 
to applicant  will set a period of time within which to comply with the 
requirements in order  to avoid abandonment of the application. If the 
application does not meet the  requirements of 35 U.S.C. 112, the 
notification to applicant will include a  rejection under  the appropriate 
provisions of 35 U.S.C. 112. The periods for  response established 
pursuant to this section are subject to the extension  of time provisions 
of w 1.136. After response by the applicant, the application  will again 
be considered for publication of a statutory invention registration.  If 
the requirements of w 1.293 and this section are not timely met, the 
refusal  to publish will be made final. If the requirements of 35 U.S.C. 
112 are not  met, the rejection pursuant to 35 U.S.C. 112 will be made final. 

        (c)   If the examination pursuant to this section results in 
approval  of the request for a statutory invention registration the 
applicant will be  notified of the intent to publish a statutory invention 
registration. 
        [50 FR 9382, Mar. 7, 1985, effective date May 8, 1985] 


# 1.295             Review of decision finally refusing to publish a 
                     statutory 


invention registration. 

        (a)   Any requester who is dissatisfied with the final refusal to 
publish  a statutory invention registration for reasons other than 
compliance with 35  U.S.C. 112 may obtain review of the refusal to publish 
the statutory invention  registration by filing a petition to the 
Commissioner accompanied by the fee  set forth in 
w 1.17(h) within one month or such other time as is set in 

the decision refusing publication. Any such petition should comply with 
the  requirements of w 1.181(b). The petition may include a request that 
the petition  fee be refunded if the final refusal to publish a statutory 
invention registration  for reasons other than compliance with 35 U.S.C. 
112 is determined to result  from an error by the Patent and Trademark Office. 

        (b)   Any requester who is dissatisfied with a decision finally 
rejecting  claims pursuant to 35 U.S.C. 112 may obtain review of the 
decision by filing  an appeal to the Board of Patent Appeals and 
Interferences pursuant to w 1.191.  If the decision rejecting claims 
pursuant to 35 U.S.C.112 is reversed, the  request for a statutory 
invention registration will be approved and the registration  published if 
all of the other provisions of w 1.293 and this section are met. 
        [50 FR 9382, Mar. 7, 1985, effective May 8, 1985] 


# 1.296             Withdrawal of request for publication of 
                             statutory 


invention registration. 

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

        [50 FR 9382, Mar. 7, 1985, effective date May 8, 1985; revised, 54 
 FR 6893, Feb. 15, 1989, effective Apr. 17, 1989; 56 FR 65142, Dec. 13, 
1991,  effective Dec. 16, 1991] 


# 1.297             Publication of statutory invention  registration. 

        (a)   If the request for a statutory invention registration is 
approved,  the statutory invention registration will be published. The 
statutory invention  registration will be mailed to the requester at the 
correspondence address  as provided for in w 1.33(a). A notice of the 
publication of each statutory  invention registration will be published in 
the Official Gazette. 

        (b)   Each statutory invention registration published will include 
 a statement relating to the attributes of a statutory invention 
registration.  The statement will read as follows: 

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

        [50 FR 9382, Mar. 7, 1985, effective May 8, 1985; 50 FR 31826, 
Aug.  6, 1985, effective Oct. 5, 1985] 



REVIEW OF PATENT AND TRADEMARK OFFICE 
DECISIONS BY COURT 


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

        Any applicant or any owner of a patent involved in a reexamination 
 proceeding dissatisfied with the decision of the Board of Patent Appeals 
and  Interferences, and any party to an interference dissatisfied with the 
decision  of the Board of Patent Appeals and Interferences, may appeal to 
the U.S. Court  of Appeals for the Federal Circuit. The appellant must 
take the following steps  in such an appeal: (a) In the Patent and 
Trademark Office file a written notice  of appeal directed to the 
Commissioner (see w 1.302 and # 1.304); and (b) in  the Court, file a copy 
of the notice of appeal and pay the fee for appeal as  provided by the 
rules of the Court. 

        [47 FR 47381, Oct. 26, 1982, effective Oct. 26, 1982; 49 FR 48416, 
 Dec. 12, 1984, effective  Feb. 11, 1985; 50 FR 9383, Mar. 7, 1985, 
effective  May 8, 1985; 54 FR 29552, July 13, 1989, effective Aug. 20, 
1989] 

# 1.302              Notice of appeal. 


        (a)   When an appeal is taken to the U.S. Court of Appeals for the 
 Federal Circuit, the appellant shall give notice thereof to the 
Commissioner  within the time specified in  w 1.304. 

        (b)   In interferences, the notice must be served as provided in w 
 1.646. 

        (c)   A notice of appeal, if mailed to the Office, shall be 
addressed  as follows: Box 8, Commissioner of Patents and Trademarks, 
Washington, DC 20231. 
        [24 FR 10332, Dec. 22, 1959; para. (a), 47 FR 47381, Oct. 26, 
1982,  effective Oct. 26, 1982; 49 FR 48416, Dec. 12, 1984, effective Feb. 
11, 1985;  50 FR 9383, Mar. 7, 1985, effective May 8, 1985; para. (c) 
added, 53 FR 16414,  May 8, 1988] 


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


        (a)   Any applicant or any owner of a patent involved in a 
reexamination  proceeding dissatisfied with the decision of the Board of 
Patent Appeals and  Interferences, and any party dissatisfied with the 
decision of the Board of  Patent Appeals and Interferences may, instead of 
appealing to the the U.S.  Court of Appeals for the Federal Circuit (w 
1.301), have remedy by civil action  under 35 U.S.C. 145 or 146, as 
appropriate. Such civil action must be commenced  within the time 
specified in w 1.304. 

        (b)   If an applicant in an ex parte case or an owner of a patent 
involved  in a reexamination proceeding has taken an appeal to the U.S. 
Court of Appeals  for the Federal Circuit, he or she thereby waives his or 
her right to proceed  under 35 U.S.C. 145. 

        (c)   If any adverse party to an appeal taken to the U.S. Court of 
 Appeals for the Federal Circuit by a defeated party in an interference 
proceeding  files notice with the Commissioner within twenty days after 
the filing of the  defeated party's notice of appeal to the court (w 
1.302), that he or she elects  to have all further proceedings conducted 
as provided in 35 U.S.C. 146, the  notice of election must be served as 
provided in w 1.646. 

        [47 FR 47381, Oct. 26, 1982, effective Oct. 26, 1982; 49 FR 48416, 
 Dec. 12, 1984, effective Feb. 11, 1985; para. (c),  54 FR 29553, July 13, 
1989,  effective Aug. 20, 1989] 


# 1.304             Time for appeal or civil action. 


        (a)(1)      The time for filing the notice of appeal to the U.S. 
Court  of Appeals for the Federal Circuit (w 1.302) or for commencing a 
civil action 
(w 1.303) is two months from the date of the decision of the Board of 
Patent  Appeals and Interferences. If a request for reconsideration or 
modification  of the decision is filed within the time period provided 
under w 1.197(b) or  w 1.658(b), the time for filing an appeal or 
commencing a civil action shall  expire two months after action on the 
request. In interferences, the time for  filing a cross-appeal or 
cross-action expires: 

        (i)   14 days after service of the notice of appeal or the summons 
 and complaint, or 

        (ii)    Two months after the date of decision of the Board of 
Patent  Appeals and Interferences, whichever is later. 

        (a)(2)      The time periods set forth in this section are not 
subject  to the provisions of ## 1.136, 1.550(c) or 1.645 (a) or (b). 

        (a)(3)      The Commissioner may extend the time for filing an 
appeal  or commencing a civil action: 

        (i)   For good cause shown if requested in writing before the 
expiration  of the period for filing an appeal or commencing a civil 
action, or 
        (ii)    Upon written request after the expiration of the period 
for  filing an appeal or commencing a civil action upon a showing that the 
failure  to act was the result of excusable neglect. 



        (b)   The times specified in this section in days are calendar 
days.  The time specified herein in months are calendar months except that 
one day  shall be added to any two-month period which includes February 
28. If the last  day of the time specified for appeal or commencing a 
civil action falls on  a Saturday, Sunday, or Federal holiday in the 
District of Columbia, the time  is extended to the next day which is 
neither a Saturday, Sunday, nor a Federal  holiday. 

        (c)   If a defeated party to an interference has taken an appeal 
to  the U.S. Court of Appeals for 
the Federal Circuit and an adverse party has filed notice under 35 U.S.C. 
141  electing to have all further proceedings conducted under 35 U.S.C. 146 
(w 1.303(c)), the time for filing a civil action thereafter is specified 
in  35 U.S.C. 141. The time for filing a cross-action expires 14 days 
after service  of the summons and complaint. 

        [41 FR 758, Jan. 5, 1976; para. (a) and (c), 47 FR 47382, Oct. 26, 
 1982; para. (a), 49 FR 556, Jan. 4, 1984, effective Apr. 1, 1984; para. 
(a)  49 FR Dec. 12, 1984, effective Feb. 11, 1985; para. (a), 50 FR 9383, 
Mar. 7,  1985, effective May 8, 1985; 
54 FR 29553, July 13, 1989, effective Aug. 20, 1989; paras. (a) and (c) 
revised  58 FR 54494, Oct. 22, 1993, effective Nov. 22, 1993] 

ALLOWANCE  AND  ISSUE  OF  PATENT 


# 1.311       Notice of Allowance. 


        (a)   If, on examination, it shall appear that the applicant is 
entitled  to a patent under the law, a notice of allowance will be sent to 
applicant  at the correspondence address indicated in w 1.33 calling for 
the payment of  a specified sum constituting the issue fee 
(w 1.18) which shall be paid within 3 months from the date of the mailing 
of  the notice of allowance. 

        (b)   An authorization to charge the issue fee 
(w 1.18) to a deposit account may be filed in an individual application, 
either  before or after mailing of the notice of allowance. Where an 
authorization  to charge the issue fee to a deposit account has been filed 
before the mailing  of the notice of allowance, the issue fee will be 
automatically charged to  the deposit account at the time of mailing the 
notice of allowance. 
        [47 FR 41279, Sept. 17, 1982, effective date Oct. 1, 1982] 

# 1.312        Amendments after allowance. 


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

        (b)   Any amendment pursuant to paragraph (a) of this section 
filed  after the date the issue fee is paid must be accompanied by a 
petition including  the fee set forth in # 1.17(i) and a showing of good 
and sufficient reasons  why the amendment is necessary and was not earlier 
presented. 

        [Para. (b) revised, 58 FR 54504, Oct. 22, 1993, effective Jan. 3, 
1994;  para. (b) revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 
1995] 

# 1.313       Withdrawal from issue. 


        (a)   Applications may be withdrawn from issue for further action 
at  the initiative of the Office or upon petition by the applicant. Any 
such petition  by the applicant must include a showing of good and 
sufficient reasons why  withdrawal of the application is necessary and, if 
the reason for the withdrawal  is not the fault of the Office, must be 
accompanied by the fee set forth in # 1.17(i). If the application is 
withdrawn from issue, a new notice of allowance  will be sent if the 
application is again allowed. Any amendment accompanying  a petition to 
withdraw an application from issue must comply with the requirements  of w 
1.312. 

        (b)   When the issue fee has been paid, the application will not 
be  withdrawn from issue for any reason except: 

        (1)    A mistake on the part of the Office; 

        (2)   A violation of w 1.56 or illegality in the application; 
        (3)   Unpatentability of one or more claims; 

        (4)   For interference; or 

        (5)   For abandonment to permit consideration of an information 
disclosure  statement under w 1.97 in a continuing application. 

        [47 FR 41280, Sept. 17, 1982, effective Oct. 1, 1982; para. (a), 
54  FR 6893, Feb. 15, 1989, 54 FR 9432, March 7, 1989, effective Apr. 17, 
1989;  para. (b), 57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992; 
para. (a) revised,  60 FR 20195, Apr. 25, 1995, effective June 8, 1995] 




# 1.314             Issuance of patent. 


        If payment of the issue fee is timely made, the patent will issue 
in  regular course unless the application is withdrawn from issue (# 
1.313), or  issuance of the patent is deferred. Any petition by the 
applicant requesting  a deferral of the issuance of a patent must be 
accompanied by the fee set forth  in # 1.17(i) and must include a show- 

showing of good and sufficient reasons why it is necessary to defer 
issuance  of the patent. 

        [47 FR 41280, Sept. 17, 1982, effective date Oct. 1, 1982; 
revised,  54 FR 6893, Feb. 15, 1989, effective Apr. 17, 1989; revised, 60 
FR 20195, Apr.  25, 1995, effective June 8, 1995] 


# 1.315             Delivery  of  patent. 


        The patent will be delivered or mailed on the day of its date to 
the  attorney or agent of record, if there be one; or if the attorney or 
agent so  request, to the patentee or assignee of an interest therein; or, 
if there be  no attorney or agent, to the patentee or to the assignee of 
the entire interest,  if he so requests. 


# 1.316       Application abandoned for failure to pay 

                        issue fee. 

        (a)   If the issue fee is not paid within 3 months from the date 
of  the notice of allowance, the application will be regarded as 
abandoned. Such  an abandoned application will not be considered as 
pending before the Patent  and Trademark Office. 

        (b)   The Commissioner may accept the payment of the issue  fee 
later  than three months after the mailing of the notice of allowance as 
though no  abandonment had ever occurred if upon petition the delay in 
payment is shown  to have been unavoidable. The petition to accept the 
delayed payment must be  promptly filed after the applicant is notified 
of, or otherwise becomes aware  of, the abandonment and must be 
accompanied by: 

        (1)   the issue fee, unless it has been previously submitted; 
        (2)   the fee for delayed payment (w 1.17(l)); and 

        (3)   a showing that the delay was unavoidable. The showing must 
be  a verified showing if made by a person not registered to practice 
before the  Patent and Trademark Office. 

        (c)   The Commissioner may, upon petition, accept the payment of 
the  issue fee later than three months 


after the mailing of the notice of allowance as though no abandonment had 
ever  occurred if the delay in payment was unintentional. The petition to 
accept  the delayed payment must be: 

        (1)   accompanied by the issue fee, unless it has been previously 
submitted; 
        (2)   accompanied by the fee for unintentionally delayed payment 
(w  1.17(m)); 

        (3)   accompanied by a statement that the delay was unintentional. 
 The statement must be a verified statement if made by a person not 
registered  to practice be- 


fore the Patent and Trademark Office. The Commissioner may require 
additional  information where there is a question whether the delay was 
unintentional;  and 

        (4)   filed either: 

        (i)   within one year of the date on which the application became 
abandoned;  or 

        (ii)    within three months of the date of the first decision on a 
 petition under paragraph (b) of this section which was filed within one 
year  of the date on which the application became abandoned. 

        (d)   In all applications filed before June 8, 1995, any petition 
pursuant  to paragraph (b) of this section not filed within six months of 
the date of  abandonment of the application, must be accompanied by a 
terminal disclaimer  with fee under # 1.321 dedicating to the public a 
terminal part of the term  of any patent granted thereon equivalent to the 
period of abandonment of the  application. The terminal disclaimer must 
also apply to any patent granted  on any continuing application entitled 
under 35 U.S.C. 120 to the benefit of  the filing date of the application 
for which revival is sought. 

        (e)   Any request for reconsideration or review of a decision 
refusing  to accept the delayed payment upon petition filed pursuant to 
paragraphs (b)  or (c) of this section, to be considered timely, must be 
filed within two months  of the decision refusing to accept the delayed 
payment or within such time  as set in the decision. 

        (f)   The time periods set forth in this section cannot be 
extended,  except that the three-month period set forth in paragraph 
(c)(4)(ii) and the  time period set forth in paragraph (e) of this section 
may be extended under  the provisions of w 1.136. 

        [47 FR 41280, Sept. 17, 1982, effective date Oct. 1, 1982; paras. 
(b)-(d)  amended, paras. (e) and  (f) added, 58 FR 44277, Aug. 20, 1993, 
effective Sept.  20, 1993; para. (d) revised, 60 FR 20195, Apr. 25, 1995, 
effective June 8,  1995] 


# 1.317       Lapsed patents; delayed payment of balance                of 



issue fee. 

        (a)   If the issue fee paid is the amount specified in the Notice 
of  Allowance, but a higher amount is required 



at the time the issue fee is paid, any remaining balance of the issue fee 
is  to be paid within three months from the date of notice thereof and, if 
not  paid, the patent will lapse at the termination of the three month 
period. 
        (b)   The Commissioner may accept the payment of the remaining 
balance  of the issue fee later than three months after the mailing of the 
notice thereof  as though no lapse had ever occurred if upon petition the 
delay in payment  is shown to have been unavoidable. The petition to 
accept the delayed payment  must be promptly filed after the applicant is 
notified of, or otherwise becomes  aware of, the lapse, and must be 
accompanied by: 

        (1)   the remaining balance of the issue fee, unless it has been 
previously  submitted; 

  (2)     the fee for delayed payment (w 1.17(l)); and 

        (3)   a showing that the delay was unavoidable. The showing must 
be  a verified showing if made by a person not registered to practice 
before the  Patent and Trademark Office. 

        (c)   The Commissioner may, upon petition, accept the payment of 
the  remaining balance of the issue fee later than three months after the 
mailing  of the notice thereof as though no lapse had ever occurred if the 
delay in  payment was unintentional. The petition to accept the delayed 
payment must  be: 

        (1)   accompanied by the remaining balance of the issue fee, 
unless  it has been previously submitted; 

        (2)   accompanied by the fee for unintentionally delayed payment 
(w  1.17(m)); 

        (3)   accompanied by a statement that the delay was unintentional. 
 The statement must be a verified statement if made by a person not 
registered  to practice before the Patent and Trademark Office. The 
Commissioner may require  additional information where there is a question 
whether the delay was unintentional;  and 

        (4)   filed either: 

        (i)   within one year of the date on which the patent lapsed; or 
        (ii)    within three months of the date of the first decision on a 
 petition under paragraph (b) of this section which was filed within one 
year  of the date on which the patent lapsed. 

        (d)   [Reserved] 

        (e)   Any request for reconsideration or review of a decision 
refusing  to accept the delayed payment upon petition filed pursuant to 
paragraphs (b)  or (c) of this section, to be considered timely, must be 
filed within two months  of the decision refusing to accept 

the delayed payment or within such time as set in the decision. 

        (f)   The time periods set forth in this section cannot be 
extended,  except that the three-month period set forth in paragraph 
(c)(4)(ii) and the  time period set forth in paragraph (e) of this section 
may be extended under  the provisions of w 1.136. 

        [47 FR 41280, Sept. 17, 1982, effective date Oct. 1, 1982; paras. 
(a)  - (d) amended, paras. (e) & (f) added, 58 FR 44277, Aug. 20, 1993, 
effective  Sept. 20, 1993; para. (d) amended, 
60 FR 20195, Apr. 25, 1995, effective June 8, 1995] 


# 1.318       Notification of national publication of a 

                        patent based on an international 
                        application. 

        The Office will notify the International Bureau when a patent is 
issued  on an application filed under 35 U.S.C. 371 and there has been no 
previous  international publication. 

        [43 FR 20465,  May 11, 1978] 

DISCLAIMER 


# 1.321       Statutory disclaimers, including terminal 
             disclaimers. 

        (a)   A patentee owning the whole or any sectional interest in a 
patent  may disclaim any complete claim or claims in a patent. In like 
manner any patentee  may disclaimer dedicate to the public the entire 
term, or any terminal part  of the term, of the patent granted. Such 
disclaimer is binding upon the grantee  and its successors or assigns.  A 
notice of the  disclaimer is published in  the Official Gazette and 
attached to the printed copies of the specification.  The disclaimer, to 
be recorded in the Patent and Trademark Office, must: 
        (1)   Be signed by the patentee, or an attorney or agent of 
record; 
        (2)   Identify the patent and complete claim or claims, or term 
being  disclaimed.  A disclaimer which is not a disclaimer of a complete 
claim or  claims, or term, will be refused recordation; 

        (3)   State the present extent of patentee's ownership interest in 
 the patent; and 

        (4)   Be accompanied by the fee set forth in w 1.20(d). 



        (b)   An applicant or assignee may disclaim or dedicate to the 
public  the entire term, or any terminal part of the term, of a patent to 
be granted. 
 Such terminal disclaimer is binding upon the grantee and its successors 
or  assigns.  The terminal disclaimer, to be recorded in the Patent and 
Trademark  Office, must: 

        (1)   Be signed: 

        (i)   By the applicant, or 

        (ii)    If there is an assignee of record of an undivided part 
interest,  by the applicant and such assignee, or 

        (iii)     If there is an assignee of record of the entire 
interest,  by such assignee, or 

        (iv)    By an attorney or agent of record; 

        (2)   Specify the portion of the term of the patent being 
disclaimed; 
        (3)   State the present extent of applicant's or assignee's 
ownership  interest in the patent to be granted; and 

        (4)   Be accompanied by the fee set forth in w 1.20(d). 

        (c)   A terminal disclaimer, when filed to obviate a double 
patenting  rejection in a patent application or in a reexamination 
proceeding, must: 
        (1)   Comply with the provisions of paragraphs (b)(2) through 
(b)(4)  of this section; 

        (2)   Be signed in accordance with paragraph (b)(1) of this 
section  if filed in a patent application, or in accordance with paragraph 
(a)(1) of  this section if filed in a reexamination proceeding; and 

        (3)   Include a provision that any patent granted on that 
application  or any patent subject to the reexamination proceeding shall 
be enforceable  only for and during such period that said patent is 
commonly owned with the  application or patent which formed the basis for 
the rejection. 

        [47 FR 41281, Sept. 17, 1982, effective Oct. 1, 1982; section 
1.321  revised, 58 FR 54504, Oct. 22, 1993, effective Jan. 3, 1994; 
revised Nov. 16,  1993] 

CORRECTION OF ERRORS IN PATENT 


# 1.322       Certificate of correction of Office mistake. 


        (a)   A certificate of correction under 35 U.S.C. 254 may be 
issued  at the request of the patentee or the pat- 

entee's assignee. Such certificate will not be issued at the request or 
suggestion  of anyone not owning an interest in the  patent, nor on motion 
of the Office,  without first notifying the patentee (including any 
assignee of record) and  affording the patentee an opportunity to be 
heard. When the request relates  to a patent involved in an interference, 
the request shall comply with the  requirements of this section and shall 
be accompanied by a motion under w 1.635. 
        (b)   If the nature of the mistake on the part of the Office is 
such  that a certificate of correction is deemed inappropriate in form, 
the Commissioner  may issue a corrected patent in lieu thereof as a more 
appropriate form for  certificate of correction, without expense to the 
patentee. 

        [24 FR 10332, Dec. 22, 1959; 34 FR 5550, Mar. 22, 1969; para. (a), 
 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985] 


# 1.323       Certificate of correction of applicant's mistake. 


        Whenever a mistake of a clerical or typographical nature or of 
minor  character which was not the fault of the Office, appears in a 
patent and a  showing is made that such mistake occurred in good faith, 
the Commissioner  may, upon payment of the fee set forth in 
w 1.20(a), issue a certificate, if the correction does not involve such 
changes  in the patent as would constitute new matter or would require 
reexamination.  A request for a certificate of correction of a patent 
involved in an interference  shall comply with the requirements of this 
section and shall be accompanied  by a motion under 
w 1.635. 

        [34 FR 5550, Mar. 22, 1969; 49 FR 48416, Dec. 12, 1984, effective 
Feb.  11, 1985] 


# 1.324       Correction of inventorship in patent. 


        Whenever a patent is issued and it appears that the correct 
inventor  or inventors were not named through error without deceptive 
intention on the  part of the actual inventor or inventors, the 
Commissioner may, on petition  of all the parties and the assignees and 
satisfactory proof of the facts and  payment of the fee set forth in w 
1.20(b), or on order of a court before which  such matter is called in 
question, issue a certificate naming only the actual  inventor or 
inventors. A request to correct inventorship of a patent involved  in an 
interference shall comply with the requirements of this section and shall 
be accompanied by a motion under 
w 1.634. 

        [47 FR 41281, Sept. 17, 1982, effective Oct. 1, 1982; 48 FR 2713, 
Jan.  20, 1983, effective Feb. 27, 1983; 49 FR 48416, Dec. 12, 1984, 50 FR 
23123,  May 31, 1985, effective Feb. 11, 1985] 




# 1.325       Other mistakes not corrected. 


        Mistakes other than those provided for  in ww 1.322,  1.323, 
1.324,  and not affording legal grounds for reissue 

or for reexamination, will not be corrected after the date of the patent. 
        [48 FR 2714, Jan. 20, 1983, effective date Feb. 27, 1983] 
ARBITRATION AWARDS 


# 1.331       [Reserved] 


        [24 FR 10332, Dec. 22, 1959; 43 FR 20465, May 11, 1978; 47 FR 
41281,  Sept. 17, 1982; deleted, 57 FR 29642, July 6, 1992, effective 
Sept. 4, 1992] 

# 1.332       [Reserved] 


        [47 FR 41281, Sept. 17, 1982; deleted, 57 FR 29642, July 6, 1992, 
effective  Sept. 4, 1992] 


# 1.333       [Reserved] 


        [Deleted, 57 FR 29642, July 6, 1992, effective Sept. 4, 1992] 

# 1.334       [Reserved] 


        [47 FR 41281, Sept. 17, 1982, effective Oct. 1, 1982; para. (c), 
54  FR 6893,  Feb. 15, 1989, effective Apr. 17, 1989; deleted, 
57 FR 29642, July 6, 1992, effective Sept. 4, 1992] 


# 1.335       Filing of notice of arbitration awards. 


        (a)   Written notice of any award by an arbitrator pursuant to 35 
U.S.C.  294 must be filed in the Patent and Trademark Office by the 
patentee or the  patentee's assignee or licensee. If the award involves 
more than one patent  a separate notice must be filed for placement in the 
file of each patent. The  notice must set forth the patent number, the 
names of the inventor and patent  owner, and the names and addresses of 
the parties to the arbitration. The notice  must also include a copy of 
the award. 

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


(a) or (b) of this section, any party to the arbitration proceeding may 
file  such a notice. 

        [48 FR 2718, Jan. 20, 1983, effective Feb. 8, 1983] 

AMENDMENT OF RULES 


# 1.351       Amendments to rules will be published. 


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


# 1.352       Publication of notice of proposed amendments. 


        (a)   Whenever required by law, notice of proposed amendments to 
the  regulations in this part will be published in the Official Gazette 
and in the  Federal Register. If not published with the notice, copies of 
the text will  be furnished to any person requesting the same. All 
comments, suggestions,  and briefs received within a time specified in the 
notice will be considered  before adoption of the proposed amendments 
which may be modified in the light  thereof. 

        (b)   Oral hearings may be held at the discretion of the 
Commissioner. 
        [para. (a) amended, 58 FR 54504, Oct. 22, 1993, effective Jan. 3, 
1994] 
MAINTENANCE FEES 


# 1.362       Time for payment of maintenance fees. 


        (a)   Maintenance fees as set forth in w 1.20(e) through (g) are 
required  to be paid in all patents based on applications filed on or 
after December  12, 1980, except as noted in paragraph (b) of this 
section, to maintain a patent  in force beyond 4, 8, and 12 years after 
the date of grant. 

        (b)   Maintenance fees are not required for any plant patents or 
any  design patents. Maintenance fees are not required for a reissue 
patent if the  patent being reissued did not require maintenance fees. 

        (c)   The application filing dates for purposes of payment of 
maintenance  fees are as follows: 

        (1)   For an application not claiming benefit of an earlier 
application,  the actual United States filing date of the application. 

        (2)   For an application claiming benefit of an earlier foreign 
application  under 35 U.S.C. 119, the United States filing date of the 
application. 


        (3)   For a continuing (continuation, division, 
continuation-in-part)  application claiming the benefit of a prior patent 
application under 35 U.S.C.  120, the actual United States filing date of 
the continuing application. 
        (4)   For a reissue application, including a continuing reissue 
application  claiming the benefit of a reissue application under 35 U.S.C. 
120, the United  States filing date of the original non-reissue 
application on which the patent  reissued is based. 

        (5)   For an international application which has entered the 
United  States as a Designated Office under 35 U.S.C. 371, the 
international filing  date granted under Article 11(1) of the Patent 
Cooperation Treaty which is  considered to be the United States filing 
date under 35 U.S.C. 363. 
        (d)   Maintenance fees may be paid in patents without surcharge 
during  the periods extending respectively from: 

        (1)   3 years through 3 years and 6 months after grant for the 
first  maintenance fee, 

        (2)   7 years through 7 years and 6 months after grant for the 
second  maintenance fee, and 

        (3)   11 years through 11 years and 6 months after grant for the 
third  maintenance fee. 

        (e)   Maintenance fees may be paid with the surcharge set forth in 
 w 1.20(h) during the respective grace periods after: 

        (1)   3 years and 6 months and through the day of the 4th 
anniversary  of the grant for the first maintenance fee. 

        (2)   7 years and 6 months and through the day of the 8th 
anniversary  of the grant for the second maintenance fee, and 

        (3)   11 years and 6 months and through the day of the 12th 
anniversary  of the grant for the third maintenance fee. 

        (f)   If the last day for paying a maintenance fee without 
surcharge  set forth in paragraph (d) of this section, or the last day for 
paying a maintenance  fee with surcharge set forth in paragraph (e) of 
this section, falls on a Saturday,  Sunday, or a federal holiday within 
the District of Columbia, the maintenance  fee and any necessary surcharge 
may be paid under paragraph (d) or paragraph 
(e) respectively on the next succeeding day which is not a Saturday, 
Sunday,  or Federal holiday. 

        (g)   Unless the maintenance fee and any applicable surcharge is 
paid  within the time periods set forth in paragraphs (d), (e) or (f) of 
this section,  the patent will expire as of the end of the grace period 
set forth in paragraph 
(e) of this section. A patent which expires for the failure to pay the 
maintenance  fee will expire at the end of the same date (anniversary 
date) the patent was  granted in the 4th, 8th, or 12th year after grant. 

        (h)   The periods specified in ww 1.362 (d) and (e) with respect 
to  a reissue application, including a continuing reissue application 
thereof,  are counted from the date of grant of the original non-reissue 
application  on which the reissued patent is based. 

        [49 FR 34724, Aug. 31, 1984, added effective Nov. 1, 1984; paras. 
(a)  and (e), 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; paras. 
(c)(4)  and  (e) revised and  para. (h) added, 58 FR 54504, Oct. 22, 1993, 
effective  Jan. 3, 1994] 

        (Editor's note: The time periods set forth in paras. (e)(1) - (3) 
are  incorrect. The correct time periods for payment of maintenance fees 
with surcharge  are: (1) 3 years and 6 months and through the day of the 
4th anniversary of  the grant for the first maintenance fee, (2) 7 years 
and 6 months and through  the day of the 8th anniversary of the grant for 
the second maintenance fee,  and (3) 11 years and 6 months and through the 
day of the 12th anniversary of  the grant for the third maintenance fee.) 


# 1.363       Fee address for maintenance fee purposes. 


        (a)   All notices, receipts, refunds, and other communications 
relating  to payment or refund of maintenance fees will be directed to the 
correspondence  address used during prosecution of the application as 
indicated in w 1.33(a) unless: 

        (1)   A ``fee address" for purposes of payment of maintenance fees 
 is set forth when submitting the issue fee, or 

        (2)   A change in the correspondence address for all purposes is 
filed  after payment of the issue fee, or 

        (3)   A ``fee address" or a change in the ``fee address" is filed 
for  purposes of receiving notices, receipts, and other correspondence 
relating  to the payment of maintenance fees after the payment of the 
issue fee, in which  instance, the latest such address will be used. 

        (b)   An assignment of a patent application or patent does not 
result  in a change of the ``correspondence address" or  fee address for 
maintenance  fee purposes. 

        [49 FR 34725, Aug. 31, 1984, added effective Nov. 1, 1984] 

# 1.366       Submission of maintenance fees. 


        (a)   The patentee may pay maintenance fees and any necessary 
surcharges,  or any person or organization may pay maintenance fees and 
any necessary surcharges  on behalf of a patentee. Authorization by the 
patentee 




need not be filed in the Patent and Trademark Office to pay maintenance 
fees  and any necessary surcharges on behalf of the patentee. 

        (b)   A maintenance fee and any necessary surcharge submitted for 
a  patent must be submitted in the amount due on the date the maintenance 
fee  and any necessary surcharge are paid and may be paid in the manner 
set forth  in # 1.23 or by an authorization to charge a deposit account 
established pursuant  to # 1.25. Payment of a maintenance fee and any 
necessary surcharge or the  authorization to charge a deposit account must 
be submitted within the periods  set forth in # 1.362(d), (e), or (f). Any 
payment or authorization of maintenance  fees and surcharges filed at any 
other time will not be accepted and will not  serve as a payment of the 
maintenance fee except insofar as a delayed payment  of the maintenance 
fee is accepted by the Commissioner in an expired patent  pursuant to a 
petition filed under 
# 1.378. Any authorization to charge a deposit account must authorize the 
immediate  charging of the maintenance fee and any necessary surcharge to 
the deposit  account. Payment of less than the required amount, payment in 
a manner other  than that set forth in 
# 1.23, or the filing of an authorization to charge a deposit account 
having  insufficient funds will not constitute payment of a maintenance 
fee or surcharge  on a patent. The certificate procedures of either ## 1.8 
or 1.10 may be utilized  in paying maintenance fees and any necessary 
surcharges. 

        (c)   In submitting maintenance fees and any necessary surcharges, 
 identification of the patents for which maintenance fees are being paid 
must  include the following: 

        (1)   The patent number, and 

        (2)   The serial number of the United States application for the 
patent  on which the maintenance fee is being paid. 

        (d)   Payments of maintenance fees and any surcharges should 
identify  the fee being paid for each patent as to whether it is the 3 
1/2, 7 1/2, or  11 1/2 year fee, whether small entity status is being 
changed or claimed, the  amount of the maintenance fee and any surcharge 
need not be filed in the Patent  and Trademark Office to pay maintenance 
fees and any necessary surcharges on  behalf of the patentee. 

        (b)   A maintenance fee and any necessary surcharge submitted for 
a  patent must be submitted in the amount due on the date the maintenance 
fee  and any necessary surcharge are paid and may be paid in the manner 
set forth  in # 1.23 or by an authorization to charge a deposit account 
established pursuant  to # 1.25. Payment of a maintenance fee and any 
necessary surcharge or the  authorization to charge a deposit account must 
be submitted within the periods  set forth in # 1.362(d), (e), or (f). Any 
payment or authorization of maintenance  fees and surcharges filed at any 
other time will not be accepted and will not  serve as a payment of the 
maintenance fee except insofar as a delayed payment  of the maintenance 
fee is accepted by the Commissioner in an expired patent  pursuant to a 
petition filed under 
# 1.378. Any authorization to charge a deposit account must authorize the 
immediate  charging of the maintenance fee and any necessary surcharge to 
the deposit  account. Payment of less than the required amount, payment in 
a manner other  than that set forth in 
# 1.23, or the filing of an authorization to charge a deposit account 
having  insufficient funds will not constitute payment of a maintenance 
fee or surcharge  on a patent. The certificate procedures of either ## 1.8 
or 1.10 may be utilized  in paying maintenance fees and any necessary 
surcharges. 

        (c)   In submitting maintenance fees and any necessary surcharges, 
 identification of the patents for which maintenance fees are being paid 
must  include the following: 

        (1)   The patent number, and 

        (2)   The serial number of the United States application for the 
patent  on which the maintenance fee is being paid. 

        (d)   Payments of maintenance fees and any surcharges should 
identify  the fee being paid for each patent as to whether it is the 3 
1/2, 7 1/2, or  11 1/2 year fee, whether small entity status is being 
changed or claimed, the  amount of the maintenance fee and any surcharge 
being paid, any assigned payor  number, the patent issue date and the 
United States application filing date.  If the maintenance fee and any 
necessary surcharge is being paid on a reissue  patent, the payment must 
identify the reissue patent by reissue patent number  and reissue 
application serial number as required by paragraph (c) of this  section 
and should also include the original patent number, the original patent 
issue date, and the original United States application filing date. 


        (e)   Maintenance fee payments and surcharge payments relating 
thereto  must be submitted separate from any other payments for fees or 
charges, whether  submitted in the manner set forth in w 1.23 or by an 
authorization to charge  a deposit account. If maintenance fee and 
surcharge payments for more than  one patent are submitted together, they 
should be submitted on as few sheets  as possible with the patent numbers 
listed in increasing patent number order.  If the payment submitted is 
insufficient to cover the maintenance fees and  surcharges for all the 
listed patents, the payment will be applied in the order  the patents are 
listed, beginning at the top of the listing. 

        (f)   Notification of any change in status resulting in loss of 
entitlement  to small entity status must be filed in a patent prior to 
paying, or at the  time of paying, the earliest maintenance fee due after 
the date on which status  as a small entity is no longer appropriate. See 
w 1.28(b). 

        (g)   Maintenance fees and surcharges relating thereto will not be 
 refunded except in accordance with w 1.26 and # 1.28(a). 

        [49 FR 34725, Aug. 31, 1984, added effective Nov. 1, 1984; para. 
(b)  amended, 58 FR 54494, Oct 22, 1993, effective Nov. 22, 1993.] 


# 1.377       Review of decision refusing to accept and 

                        record payment of a maintenance fee filed 
                     prior  to expiration of patent. 

        (a)   Any patentee who is dissatisfied with the refusal of the 
Patent  and Trademark Office to accept and record a maintenance fee which 
was filed  prior to the expiration of the patent may petition the 
Commissioner to accept  and record the maintenance fee. 

        (b)   Any petition under this section must be filed within 2 
months  of the action complained of, or within such other time as may be 
set in the  action complained of, and must be accompanied by the fee set 
forth in w 1.17(h). The petition may include a request that the petition 
fee be refunded  if the refusal to accept and 

record the maintenance fee is determined to result from an error by the 
Patent  and Trademark Office. 

        (c)   Any petition filed under this section must comply with the 
requirements  of paragraph (b) of 
w 1.181 and must be signed by an attorney or agent registered to practice 
before  the Patent and Trademark Office, or by the patentee, the assignee, 
or other  party in interest. Such petition must be in the form of a 
verified statement  if made by a person not registered to practice before 
the Patent and Trademark  Office. 

        [49 FR 34725, Aug. 31, 1984, added effective Nov. 1, 1984] 

# 1.378       Acceptance of delayed payment of 

                        maintenance fee in expired patent to 
                        reinstate patent. 

        (a)   The Commissioner may accept the payment of any maintenance 
fee  due on a patent after expiration of the patent if, upon petition, the 
delay  in payment of the maintenance fee is shown to the satisfaction of 
the Commissioner  to have been unavoidable (paragraph (b) of this section) 
or unintentional (paragraph 
(c) of this section) and if the surcharge required by w 1.20(i) is paid as 
 a condition of accepting payment of the maintenance fee. If the 
Commissioner  accepts payment of the maintenance fee upon petition, the 
patent shall be considered  as not having expired, but will be subject to 
the conditions set forth in 35  U.S.C. 41(c)(2). 

        (b)   Any petition to accept an unavoidably delayed payment of a 
maintenance  fee filed under paragraph (a) of this section must include: 

        (1)   the required maintenance fee set forth in 
w 1.20 (e) - (g); 

        (2) the surcharge set forth in w 1.20(i)(1); and 

        (3)   a showing that the delay was unavoidable since reasonable 
care  was taken to ensure that the maintenance fee would be paid timely 
and that  the petition was filed promptly after the patentee was notified 
of, or otherwise  became aware of, the expiration of the patent. The 
showing must enumerate the  steps taken to ensure timely payment of the 
maintenance fee, the date, and  the manner in which patentee became aware 
of the expiration of the patent,  and the steps taken to file the petition 
promptly. 

        (c)   Any petition to accept an unintentionally delayed payment of 
 a maintenance fee filed under paragraph (a) of this section must be filed 
within  twenty-four months after the six-month grace period provided in w 
1.362(e)  and must include: 

        (1)   the required maintenance fee set forth in 
w 1.20 (e) - (g); 

        (2)   the surcharge set forth in w 1.20(i)(2); and 

        (3)   a statement that the delay in payment of the maintenance fee 
 was unintentional. 



        (d)   Any petition under this section must be signed by an 
attorney  or agent registered to practice before the Patent and Trademark 
Office, or  by the patentee, the assignee, or other party in interest. 
Such petition must  be in the form of a verified statement if made by a 
person not registered to  practice before the Patent and Trademark Office. 

        (e)   Reconsideration of a decision refusing to accept a 
maintenance  fee upon petition filed pursuant to paragraph (a) of this 
section may be obtained  by filing a petition for reconsideration within 
two months of, or such other  time as set in, the decision refusing to 
accept the delayed payment of the  maintenance fee. Any such petition for 
reconsideration must be accompanied  by the petition fee set forth in w 
1.17(h). After decision on the petition  for reconsideration, no fur- 
ther reconsideration or review of the matter will be undertaken by the 
Commissioner.  If the delayed pay- ment of the maintenance fee is not 
accepted, the maintenance  fee and the surcharge set forth in 
w 1.20(i) will be refunded following the decision on the petition for 
reconsideration,  or after the expiration of the time for filing such a 
petition for reconsideration,  if none is filed. Any petition fee under 
this section will not be refunded  unless the refusal to accept and record 
the maintenance fee is determined to  result from an error by the Patent 
and Trademark Office. 

        [49 FR 34726, Aug. 31, 1984, added effective Nov. 1, 1984; para. 
(a),  50 FR 9383, Mar.7, 1985, effective May 8, 1985; paras. (b) and (c), 
53 FR 47810,  Nov. 28, 1988, effective Jan. 1, 1989; paras. (a) - (c) and 
(e), 56 FR 65142,  Dec. 13, 1991, effective Dec. 16, 1991; paras. (a) - 
(c) and (e), 58 FR 44277,  Aug. 20, 1993, effective Sept. 20, 1993] 

Subpart C - International Processing 
Provisions 

GENERAL INFORMATION 


# 1.401       Definitions of terms under the Patent 

                        Cooperation Treaty. 

        (a)   The abbreviation ``PCT" and the term ``Treaty" mean the 
Patent  Cooperation Treaty. 

        (b)   ``International Bureau" means the World Intellectual 
Property  Organization located in Geneva, Switzerland. 

        (c)   ``Administrative Instructions" means that body of 
instructions  for operating under the Patent Cooperation Treaty referred 
to in PCT Rule 89. 
        (d)   ``Request," when capitalized, means that element of the 
international  application described in PCT Rules 3 and 4. 

        (e)   ``International application," as used in this subchapter is 
defined  in w 1.9(b). 

        (f)   ``Priority date" for the purpose of computing time limits 
under  the Patent Cooperation Treaty is defined in PCT Art. 2(xi). Note 
also w 1.465. 
        (g)   ``Demand," when capitalized, means that document filed with 
the  International Preliminary Examining Authority which requests an 
international  preliminary examination. 

        (h)   ``Annexes" means amendments made to the claims, description 
or  the drawings before the International Preliminary Examining Authority. 
        (i) Other terms and expressions in this Subpart C not defined in 
this  section are to be taken in the sense indicated in PCT Article 2 and 
35 U.S.C.  351. 

        [43 FR 20466, May 11, 1978; 52 FR 20047, May 28, 1987] 


# 1.412       The United States Receiving Office. 


        (a)   The United States Patent and Trademark Office is a Receiving 
 Office only for applicants who are residents or nationals of the United 
States  of America. 

        (b)   The Patent and Trademark Office, when acting as a Receiving 
Office,  will be identified by the full title ``United States Receiving 
Office" or by  the abbreviation ``RO/US." 

        (c)   The major functions of the Receiving Office include: 
        (1)   According of international filing dates to international 
applications  meeting the requirements of PCT Art. 11(1) and PCT Rule 20; 

        (2)   Assuring that international applications meet the standards 
for  format and content of PCT Art. 14(1), PCT Rule 9, 26, 29.1, 37, 38, 
91, and  portions of PCT Rules 3 through 11; 

        (3)   Collecting and, when required, transmitting fees due for 
processing  international applications (PCT Rule 14, 15, 16); 

        (4)   Transmitting the record and search copies to the 
International  Bureau and International Searching Authority, respectively 
(PCT Rules 22 and  23); and 

        (5)   Determining compliance with applicable requirements of Part 
5  of this chapter. 

        (6)   Reviewing and, where the United States Receiving Office is 
not  the competent Receiving Office under 
w 1.421(a) and PCT Rule 19.1 or 19.2, transmitting the international 
application  to the International Bureau 




for processing in its capacity as a receiving Office unless prescriptions 
concerning  national security prevent the application from being so 
transmitted (PCT Rule  19.4). 

        [Para. (c)(6) added, 60 FR 21438, May 2, 1995, effective June 1, 
1995] 

# 1.413       The United States International Searching 

                        Authority. 

        (a)   Pursuant to appointment by the Assembly, the United States 
Patent  and Trademark Office will act as an 

International Searching Authority for international applications filed in 
the  United States Receiving Office and in other Receiving Offices as may 
be agreed  upon by the Commissioner, in accordance with agreement between 
the Patent and  Trademark Office and the International Bureau (PCT Art. 
16(3)(b)). 
        (b)   The Patent and Trademark Office, when acting as an 
International  Searching Authority, will be identified by the full title 
``United States International  Searching Authority" or by the abbreviation 
``ISA/US." 

        (c)   The major functions of the International Searching Authority 
 include: 

        (1)   Approving or establishing the title and abstract; 

        (2)   Considering the matter of unity of invention; 

  (3)     Conducting international and international-type searches and 
preparing  international and international-type search reports (PCT Art. 
15, 17, and 18,  and PCT Rules 25, 33 to 45 and 47); and 

        (4)   Transmitting the international search report to the 
applicant  and the International Bureau. 


# 1.414       The United States Patent and Trademark 

                        Office as a Designated Office or Elected Office. 
        (a)   The United States Patent and Trademark Office will act as a 
Designated  Office or Elected Office for international applications in 
which the United  States of America has been designated or elected as a 
State in which patent  protection is desired. 

        (b)   The United States Patent and Trademark Office, when acting 
as  a Designated Office or Elected Office during international processing 
will  be identified by the full title ``United States Designated Office" 
or by the  abbreviation ``DO/US" or by the full title ``United States 
Elected Office"  or by the abbreviation ``EO/US." 

        (c)   The major functions of the United States Designated Office 
or  Elected Office in respect to international applications in which the 
United  States of America has been designated or elected, include: 

  (1)     Receiving various notifications throughout the international 
stage;  and 

        (2)   Accepting for national stage examination international 
applications  which satisfy the requirements of 35 U.S.C. 371. 

        [52 FR 20047, May 28, 1987, effective July 1, 1987] 


# 1.415       The International Bureau. 


        (a)   The International Bureau is the World Intellectual Property 
Organization  located at Geneva, Switzerland. It is the international 
intergovernmental organization  which acts as the coordinating body under 
the Treaty and the Regulations (PCT  Art. 2 (xix) and 35 U.S.C. 351(h)). 

        (b)   The major functions of the International Bureau include: 
        (1)   Publishing of international applications and the 
International  Gazette; 

  (2)     Transmitting copies of international applications to Designated 
Offices; 
        (3)   Storing and maintaining record copies; and 

        (4)   Transmitting information to authorities pertinent to the 
processing  of specific international applications. 


# 1.416       The United States International Preliminary 
             Examining 


Authority. 

        (a)   Pursuant to appointment by the Assembly, the United States 
Patent  and Trademark Office will act as an International Preliminary 
Examining Authority  for international applications filed in the United 
States Receiving Office  and in other Receiving Offices as may be agreed 
upon by the Commissioner, in  accordance with agreement between the Patent 
and Trademark Office and the International  Bureau. 

        (b)   The United States Patent and Trademark Office, when acting 
as  an International Preliminary Examining Authority, will be identified 
by the  full title ``United States International Preliminary Examining 
Authority" or  by the abbreviation ``IPEA/US." 

        (c)   The major functions of the International Preliminary 
Examining  Authority include: 

        (1)   Receiving and checking for defects in the Demand; 

        (2)   Collecting the handling fee for the International Bureau and 
 the preliminary examination fee for the United States International 
Preliminary  Examining Authority; 

        (3)   Informing applicant of receipt of the Demand; 




        (4)   Considering the matter of unity of invention; 

        (5)   Providing an international preliminary examination report 
which  is a non-binding opinion on the questions whether the claimed 
invention appears  to be novel, to involve an inventive step (to be 
nonobvious), and to be industrially  applicable; and 

        (6)   Transmitting the international preliminary examination 
report  to applicant and the International Bureau. 

        [Added 52 FR 20047, May 28, 1987] 

WHO MAY FILE AN INTERNATIONAL 
APPLICATION 


# 1.421       Applicant for international application. 


        (a)   Only residents or nationals of the United States of America 
may  file international applications in the United States Receiving 
Office. If an  international application does not include an applicant who 
is indicated as  being a resident or national of the United States of 
America, and at least  one applicant: 

        (1)   has indicated a residence or nationality in a PCT 
Contracting  State, or 

        (2)   has no residence or nationality indicated, applicant will be 
 so notified and, if the international application includes a fee amount 
equivalent  to that required 
by w 1.445(a)(5), the international application will be forwarded for 
processing  to the International Bureau acting as a Receiving Office. 
(See also  w 1.412(c)(6)). 
        (b)   Although the United States Receiving Office will accept 
international  applications filed by any resident or national of the 
United States of America  for international processing, an international 
application designating the  United States of America will be accepted by 
the Patent and Trademark Office  for the national stage only if filed by 
the inventor or as provided in ww 1.422,  1.423 or 1.425. 

        (c)   International applications which do not designate the United 
 States of America may be filed by the assignee or owner. 

        (d)   The attorney or agent of the applicant may sign the 
international  application Request and file the international application 
for the applicant  if the international application when filed is 
accompanied by a separate power  of attorney to that attorney or agent 
from the applicant. The separate power  of attorney from the applicant may 
be submitted after filing if sufficient  cause is shown for not submitting 
it at the time of filing. Note that paragraph 
(b) of this section requires that the applicant be the inventor if the 
United  States of America is designated. 

        (e)   Any indication of different applicants for the purpose of 
different  Designated Offices must be shown on the Request portion of the 
international  application. 

        (f)   Changes in the person, name, or address of the applicant of 
an  international application shall be made in accordance with PCT Rule 
92bis. 
        (g)   The wording of PCT Rule 92bis is as follows: 

        PCT Rule 92bis - Recording of Changes in Certain Indications in 
the  Request or the Demand 

        92bis Recording of Changes by the International Bureau 

        (a)   The International Bureau shall, on the request of the 
applicant  or the receiving Office, record changes in the following 
indications appearing  in the request or demand: 

        (i)   person name, residence, nationality or address of the 
applicant, 
        (ii)    person, name or address of the agent, the common 
representative  or the inventor. 

        (b)   The International Bureau shall not record the requested 
change  if the request for recording is received by it after the 
expiration: 
        (i)   of the time limit referred to in Article 22(1), where 
Article  39(1) is not applicable with respect to any Contracting State; 

        (ii)    of the time limit referred to in Article 39(1)(a), where 
Article  39(1) is applicable with respect to at least one Contracting 
State. 
        [Paras.  (f) and (g), 53 FR 47810, Nov. 28, 1988, effective Jan. 
1,  1989; para. (a) amended, 60 FR 21438, May 2, 1995, effective June 1, 
1995] 

# 1.422       When the inventor is dead. 


        In case of the death of the inventor, the legal representative 
(executor,  administrator, etc.) of the deceased inventor may file an 
international application  which designates the United States of America. 


# 1.423       When the inventor is insane or legally 
                     incapacitated. 

        In case an inventor is insane or otherwise legally in- 
capacitated,  the legal representative (guardian, conservator, etc.) of 
such inventor may  file an international application which designates the 
United States of America. 



# 1.424       Joint inventors. 


        Joint inventors must jointly file an international application 
which  designates the United States of America; the signature of either of 
them alone,  or less than the entire number, will be insufficient for an 
invention invented  by them jointly, except as provided in w 1.425. 


# 1.425       Filing by other than inventor. 


        (a)   If a joint inventor refuses to join in an international 
application  which designates the United States of America or cannot be 
found or reached  after diligent effort, the international application 
which designates the United  States of America may be filed by the other 
inventor on behalf of himself or  herself and the omitted inventor. Such 
an international application which designates  the United States of 
America must be accompanied by proof of the pertinent  facts and must 
state the last known address of the omitted inventor. The Patent  and 
Trademark Office shall forward notice of the filing of the international 
application to the omitted inventor at said address. 

        (b)   Whenever an inventor refuses to execute an international 
application  which designates the United States of America, or cannot be 
found or reached  after diligent effort, a person to whom the inventor has 
assigned or agreed  in writing to assign the invention or who otherwise 
shows sufficient proprietary  interest in the matter justifying such 
action may file the international application  on behalf of and as agent 
for the inventor. Such an international application  which designates the 
United States of America must be accompanied by proof  of the pertinent 
facts and a showing that such action is necessary to preserve  the rights 
of the parties or to prevent irreparable damage and must state the  last 
known address of the inventor. The assignment, written agreement to assign 
 or other evidence of proprietary interest, or a verified copy thereof, 
must  be filed in the Patent and Trademark Office. The Office shall 
forward notice  of the filing of the application to the inventor at the 
address stated in the  application. 

THE INTERNATIONAL APPLICATION 


# 1.431       International application requirements. 


        (a)   An international application shall contain, as specified in 
the  Treaty and the Regulations, a Request, a description, one or more 
claims, an  abstract, and one or more drawings (where required). (PCT Art. 
3(2) and Section  207 of the Administrative Instructions.) 

        (b)   An international filing date will be accorded by the United 
States  Receiving Office, at the time of receipt of the international 
application,  provided that: 

        (1)   At least one applicant is a United States resident or 
national  and the papers filed at the time of receipt of the international 
application  so indicate 
(35 U.S.C. 361(a), PCT Art. 11(1)(i)). 

        (2)   The international application is in the English language (35 
 U.S.C. 361(c), PCT Art. 11(1)(ii)). 

        (3)   The international application contains at least the 
following  elements (PCT Art. 11(1)(iii)): 

        (i)   An indication that it is intended as an international 
application 
(PCT Rule 4.2); 

        (ii)    The designation of at least one Contracting State of the 
International  Patent Cooperation Union 
(w 1.432); 

        (iii)     The name of the applicant, as prescribed (note ww 
1.421-1.424); 
        (iv)    A part which on the face of it appears to be a 
description;  and 

  (v)     A part which on the face of it appears to be a claim. 

        (c)   Payment of the basic portion of the international fee (PCT 
Rule  15.2) and the transmittal and search fees (w 1.445) may be made in 
full at  the time the international application papers required by 
paragraph (b) of  this section are deposited or within one month 
thereafter. If the basic, transmittal  and search fees are not paid within 
one month from the date of receipt of the  international application, 
applicant will be notified and given one month within  which to pay the 
deficient fees plus a late payment fee equal to the greater  of: 

        (1)   50% of the amount of the deficient fees up to a maximum 
amount  equal to the basic fee, or 

        (2)   an amount equal to the transmittal fee (PCT Rule 16bis). 
        The one-month time limit set in the notice to pay deficient fees 
may  not be extended. 

        (d)   If the payment needed to cover the transmittal fee, the 
basic  fee, the search fee, one designation fee and the late payment fee 
pursuant  to paragraph (c) of this section is not timely made, the 
Receiving Office will 



declare the international application withdrawn under PCT Article 
14(3)(a). 
        [43 FR 20486, May 11, 1978; paras. (b), (c), (d) and (e), 50 FR 
9383,  Mar. 7, 1985, effective May 8, 1985; para. (d) amended 52 FR 20047, 
May 28,  1987; paras. (b)(1), (b)(3)(ii), (c) and (d) amended, para. (e) 
deleted, 58  FR 4335, Jan. 14, 1993, effective May 1, 1993] 


# 1.432       Designation of States and payment of 

                        designation fees. 

        (a)   The designation of States including an indication that 
applicant  wishes to obtain a regional patent, where applicable, shall 
appear in the Request  upon filing and must be indicated as set forth in 
PCT Rule 4.9 and section  115 of the Administrative Instructions. 
Applicant must specify at least one  national or regional designation on 
filing of the international application  for a filing date to be granted. 

        (b)   If the fees necessary to cover all the national and regional 
 designations specified in the Request are not paid by the applicant 
within  one year from the priority date or within one month from the date 
of receipt  of the international application if that month expires after 
the expiration  of one year from the priority date, applicant will be 
notified and given one  month within which to pay the deficient 
designation fees plus a late payment  fee equal to the greater of 50% of 
the amount of the deficient fees up to a  maximum amount equal to the 
basic fee, or an amount equal to the transmittal  fee (PCT Rule 16bis). 
The one-month time limit set in the notification of deficient  designation 
fees may not be extended. Failure to timely pay at least one designation 
fee will result in the withdrawal of the international application. The 
one  designation fee may be paid: 

        (1)   within one year from the priority date, 

        (2)   within one month from the date of receipt of the 
international  application if that month expires after the expiration of 
one year from the  priority date, or 

        (3)   with the late payment fee defined in this paragraph within 
the  time set in the notification of the deficient designation fees. If 
after a  notification of deficient designation fees the applicant makes 
timely payment,  but the amount paid is not sufficient to cover the late 
payment fee and all  designation fees, the Receiving Office will, after 
allocating payment for the  basic, search, transmittal and late payment 
fees, allocate the amount paid  in accordance with PCT Rule 16bis.1(c) and 
withdraw the unpaid designations.  The notification of deficient 
designation fees pursuant to this paragraph may  be made simultaneously 
with any notification pursuant to w 1.431(c). 
        (c)   On filing the international application, in addition to 
specifying  at least one national or regional designation under PCT Rule 
4.9(a), applicant  may also indicate under PCT Rule 4.9(b) that all other 
designations permitted  under the Treaty are made. The latter indication 
under PCT Rule 4.9(b) must  be made in a statement on the Request that any 
designation made under this  paragraph is subject to confirmation (PCT 
Rule 4.9(c)) not later than the expiration  of 15 months from the priority 
date by: 

        (1)   Filing a written notice with the United States Receiving 
Office  specifying the national and/or regional designations being 
confirmed; 
        (2)   Paying the designation fee for each designation being 
confirmed;  and 

        (3)   Paying the confirmation fee specified in 
w 1.445(a)(4). 

        Unconfirmed designations will be considered withdrawn. If the 
amount  submitted is not sufficient to cover the designation fee and the 
confirmation  fee for each designation being confirmed, the Receiving 
Office will allocate  the amount paid in accordance with any priority of 
designations specified by  applicant. If applicant does not specify any 
priority of designations, the  allocation of the amount paid will be made 
in accordance with PCT Rule 16 bis.1(c). 


        [43 FR 20486, May 11, 1978; para. (b) amended 52 FR 20047, May 28, 
 1987; paras. (a), (b) amended and para. (c) added,  58 FR 4335, Jan. 14, 
1993,  effective May 1, 1993] 


# 1.433       Physical requirements of international 

                        application. 

        (a)   The international application and each of the documents that 
 may be referred to in the check list of the Request (PCT Rule 3.3(a)(ii)) 
shall  be filed in one copy only. 

        (b)   All sheets of the international application must be on A4 
size  paper (21.0 x 29.7 cm.). 

        (c)   Other physical requirements for international applications 
are  set forth in PCT Rule 11 and sections 201-207 of the Administrative 
Instructions. 

# 1.434       The request. 


        (a)   The request shall be made on a standardized form (PCT Rules 
3  and 4). Copies of printed Request 




forms are available from the Patent and Trademark Office. Letters 
requesting  printed forms should be marked ``Box PCT." 

        (b)   The Check List portion of the Request form should indicate 
each  document accompanying the international application on filing. 

        (c)   All information, for example, addresses, names of States and 
 dates, shall be indicated in the Request as required by PCT Rule 4 and 
Administrative  Instructions 110 and 201. 

        (d)   International applications which designate the United States 
 of America shall include: 

        (1)   The name, address and signature of the inventor, except as 
provided  by ww 1.421(d), 1.422, 1.423 and 1.425; 

        (2)   A reference to any copending national application or 
international  application designating the United States of America, if 
the benefit of the  filing date for the prior copending application is to 
be claimed. 

        [Para. (a) amended, 58 FR 4335, Jan. 14, 1993, effective May 1, 
1993] 

# 1.435       The description. 


        (a)   Requirements as to the content and form of the description 
are  set forth in PCT Rules 5, 9, 10, and 11 and Administrative 
Instruction 204  and shall be adhered to. 

        (b)   In international applications designating the United States 
the  description must contain upon filing an indication of the best mode 
contemplated  by the inventor for carrying out the claimed invention. 


# 1.436       The claims. 


        The requirements as to the content and format of claims are set 
forth  in PCT Art. 6 and PCT Rules 6, 9, 10, and 11 and shall be adhered 
to. The number  of the claims shall be reasonable, considering the nature 
of the invention  claimed. 


# 1.437       The drawings. 


        (a)   Subject to paragraph (b) of this section, when drawings are 
necessary  for the understanding of the invention, or are mentioned in the 
description,  they must be part of an international application as 
originally filed in the  United States Receiving Office in order to 
maintain the international filing  date during the national stage (PCT 
Art. 7). 

        (b)   Drawings missing from the application upon filing will be 
accepted  if such drawings are received within 30 days of the date of 
first receipt of  the incomplete papers. If the missing drawings are 
received within the 30-day  period, the international filing date shall be 
the date on which such drawings  are received. If such drawings are not 
timely received, all references to drawings  in the interannual 
application shall be considered nonexistent (PCT Art. 14(2), 
Administrative Instruction 310). 

        (c)   The physical requirements for drawings are set forth in PCT 
Rule  11 and shall be adhered to. 


# 1.438       The abstract. 


        (a)   Requirements as to the content and form of the abstract are 
set  forth in PCT Rule 8, and shall be adhered to. 

        (b)   Lack of an abstract upon filing of an international 
application  will not affect the granting of a filing date. However, 
failure to furnish  an abstract within one month from the date of the 
notification by the Receiving  Office will result in the international 
application being declared withdrawn. 
FEES 


# 1.445       International application filing, processing, 

                        and search fees. 

        (a)   The following fees and charges for international 
applications  are established by the Commissioner under the authority of 
35 U.S.C. 376: 
        (1)   A transmittal fee (see 35 U.S.C. 361(d) and PCT Rule 14 
     $220.00 
        (2)   A search fee (see 35 U.S.C. 361(d) and PCT Rule 16) where: 
        (i)   No corresponding prior United States national application 
with  basic filing fee has been filed         $660.00 

        (ii)    A corresponding prior United States na- 
tional application with basic filing fee has been 
filed                    $430.00 

        (3)   A supplemental search fee when required, per additional 
invention 
                 $190.00 

        (4)   A confirmation fee (PCT Rule 96) equal to 50% of the sum of 
designation  fees for the national and regional designations being 
confirmed (w 1.432(c)). 
        (5)   A fee equivalent to the transmittal fee in paragraph (a)(1) 
of  this section for transmittal of an international application to the 
International  Bureau for processing  in its capacity as a Receiving 
Office (PCT Rule 19.4). 




        (b)   The basic fee and designation fee portion of the 
international  fee shall be as prescribed in PCT Rule 15. 

        [43 FR 20466, May 11, 1978; para. (a), 47 FR 41282, Sept. 17, 
1982,  effective Oct. 1, 1982; para. (a)(4) - (6), 50 FR 9384, Mar. 7, 
1985, effective  May 8, 1985; 50 FR 31826, Aug. 6, 1985, effective Oct. 5, 
1985; para. (a) amended  52 FR 20047, May 28, 1987; paras. (a)(2) and (3), 
54 FR 6893, Feb. 15, 1989,  54 FR 9432, March 7, 1989, effective Apr. 17, 
1989; para. (a), 56 FR 65142,  Dec. 13, 1991, effective Dec. 27, 1991; 
para. (a), 57 FR 38190, Aug. 21, 1992,  effective Oct. 1, 1992; para. 
(a)(4) added, 58 FR 4335, Jan. 14, 1993, effective  May 1, 1993; paras. 
(a)(1)-(3), 59 FR 43736, Aug. 25, 1994, effective Oct.  1, 1994; para. 
(a)(5) added, 60 FR 21438, May 2, 1995, effective June 1, 1995;  para. (a) 
amended, 60 FR 41018, Aug. 11, 1995, effective Oct. 1, 1995] 

# 1.446       Refund of international application filing and 
     processing 


fees. 

        (a)   Money paid for international application fees, where paid by 
 actual mistake or in excess, such as a payment not required by law or 
Treaty  and its Regulations, will be refunded. 

        (b)   [Reserved] 

        (c)   Refund of the supplemental search fees will be made if such 
refund  is determined to be warranted by the Commissioner or the 
Commissioner's designee  acting under PCT Rule 40. 2(c). 

        (d)   The international and search fees will be refunded if no 
international  filing date is accorded or if the application is withdrawn 
before transmittal  of the record copy to the International Bureau (PCT 
Rules 15.6 and 16.2). The  search fee will be refunded if the 


application is withdrawn before transmittal of the search copy to the 
International  Searching Authority. The transmittal fee will not be refunded. 

        (e)   The handling fee (w 1.482(b)) will be refunded (PCT Rule 
57.6)  only if: 

        (1)   The Demand is withdrawn before the Demand has been sent by 
the  International Preliminary Examining Authority to the International 
Bureau,  or 

        (2)   The Demand is considered not to have been submitted (PCT 
Rule  54.4(a)). 

        [43 FR 20466, May 11, 1978; para. (b), 47 FR 41282, Sept. 17, 
1982,  effective Oct. 1, 1982; para.(b), 50 FR 9384, Mar. 7, 1985, 
effective May 8,  1985; 50 FR 31826, Aug. 6, 1985, effective Oct. 5, 1985; 
para. (d) amended  and para. (e) added, 58 FR 4335, Jan. 14, 1993, 
effective May 1, 1993] 
PRIORITY 


# 1.451       The priority claim and priority document in an 
     international 


application. 

        (a)   The claim for priority must be made on the Request (PCT Rule 
 4.10) in a manner complying with sections 110 and 115 of the 
Administrative  Instructions. 

        (b)   Whenever the priority of an earlier United States national 
application  is claimed in an international application, the applicant may 
request in a  letter of transmittal accompanying the international 
application upon filing  with the United States Receiving Office, or in a 
separate letter filed in the  Receiving Office not later than 16 months 
after the priority date, that the  Patent and Trademark Office prepare a 
certified copy of the national application  for transmittal to the 
International Bureau (PCT Art. 8 and PCT Rule 17). The  fee for preparing 
a certified copy is stated in w 1.19(b)(1). 

        (c)   If a certified copy of the priority document is not 
submitted  together with the international application on filing, or if 
the priority application  was filed in the United States and a request and 
appropriate payment for preparation  of such a certified copy do not 
accompany the international application on  filing or are not filed within 
16 months of the priority date, the certified  copy of the priority 
document must be furnished by the applicant to the International  Bureau 
or to the United States Receiving Office within the time limit specified 
in PCT Rule 17.1(a). 

        [43 FR 20466, May 11, 1978; 47 FR 40140, Sept. 10, 1982, effective 
 Oct. 1, 1982; para. (b), 47 FR 41282, Sept. 17, 1982, effective Oct. 1, 
1982;  paras. (b) & (c), 50 FR 9384, Mar. 7, 1985, effective May 8, 1985, 
para. (b),  54 FR 6893, Feb. 15, 1989, effective Apr. 17, 1989; para. (a) 
amended, 58 FR  4335, Jan. 14, 1993, effective May 1, 1993] 

REPRESENTATION 


# 1.455       Representation in international applications. 


        (a)   Applicants of international applications may be represented 
by  attorneys or agents registered to practice before the Patent and 
Trademark  Office or by an applicant appointed as a common representative 
(PCT Art. 49,  Rules 4.8 and 90 and w 10.10). If applicants have not 
appointed an attorney  or agent or one of the applicants to represent 
them, and there is more than  one applicant, the applicant first named in 
the request and who is entitled  to file in the U.S. Receiving Office shall 




be considered to be the common representative of all the applicants. An 
attorney  or agent having the right to practice before a national office 
with which an  international application is filed and for which the United 
States is an International  Searching Authority or International 
Preliminary Examining Authority may be  appointed to represent the 
applicants in the international application before  that authority. An 
attorney or agent may appoint an associate attorney or agent  who shall 
also then be of record (PCT Rule 90.1(d)). The appointment of an  attorney 
or agent, or of a common representative, revokes any earlier appointment 
unless otherwise indicated (PCT Rule 90.6(b) and (c)). 

        (b)   Appointment of an agent, attorney, or common representative 
(PCT  Rule 4.8) must be effected either in the Request form, signed by all 
applicants,  or in a separate power of attorney submitted either to the 
United States Receiving  Office or to the International Bureau. 

        (c)   Powers of attorney and revocations thereof should be 
submitted  to the United States Receiving Office until the issuance of the 
international  search report. 

        (d)   The addressee for correspondence will be as indicated in 
section  108 of the Administrative Instructions. 

        [43 FR 20466, May 11, 1978; 50 FR 5171, Feb. 6, 1985, effective 
Mar.  8, 1985; para. (a) amended, 58 FR 4335, Jan. 14, 1993, effective May 
1, 1993] 
TRANSMITTAL OF RECORD COPY 


# 1.461       Procedures for transmittal of record copy to 
             the 


International Bureau. 

        (a)   Transmittal of the record copy of the international 
application  to the International Bureau shall be made by the United 
States Receiving Office. 
        (b)   [Reserved] 

        (c)   No copy of an international application may 
be transmitted to the International Bureau, a foreign Designated Office, 
or  other foreign authority by the United States Receiving Office or the 
applicant,  unless the applicable requirements of Part 5 of this chapter 
have been satisfied. 
        [43 FR 20466, May 11, 1978; paras. (a) and (b), 50 FR 9384, Mar. 
7,  1985, effective May 8, 1985] 

TIMING 


# 1.465       Timing of application processing based on the 
             priority 


date. 

        (a)   For the purpose of computing time limits under the Treaty, 
the  priority date shall be defined as in PCT Art. 2(xi). 

        (b)   When a claimed priority date is cancelled under PCT Rule 
4.10(d),  or considered not to have been made under PCT Rule 4.10(b), the 
priority date  for the purposes of computing time limits will be the date 
of the earliest  valid remaining priority claim of the international 
application, or if none,  the international filing date. 

        (c)   When corrections under PCT Art. 11(2), Art. 14(2) or PCT 
Rule  20.2(a) (i) or (iii) are timely submitted, and the date of receipt 
of such  corrections falls later than one year from the claimed priority 
date or dates,  the Receiving Office shall proceed under PCT Rule 4.10(d). 


# 1.468       Delays in meeting time limits. 


        Delays in meeting time limits during international processing of 
international  applications may only be excused as provided in PCT Rule 
82. For delays in  meeting time limits in a national application, see w 1.137. 

AMENDMENTS 


# 1.471       Corrections and amendments during 

                        international processing. 

        (a)   All corrections submitted to the United States Receiving 
Office  must be in the form of replacement sheets and be accompanied by a 
letter that  draws attention to the differences between the replaced 
sheets and the replacement  sheets, except that the deletion of lines of 
text, the correction of simple  typographical errors, and one addition or 
change of not more than five words  per sheet may be stated in a letter 
and the United States Receiving Office  will make the deletion or transfer 
the correction to the international application,  provided that such 
corrections do not adversely affect the clarity and direct 
reproducibility of the application (PCT Rule 26.4). 

        (b)   Amendments of claims submitted to the International Bureau 
shall  be as prescribed by PCT Rule 46. 


# 1.472       Changes in person, name, or address of 

                        applicants and inventors. 

        All requests for a change in person, name or address of applicants 
 and inventor should be sent to the United 




States Receiving Office until the time of issuance of the international 
search  report. Thereafter requests for such changes should be submitted 
to the International  Bureau. 

        [43 FR 20466, May 11, 1978; redesignated at 52 FR 20047, May 28, 
1987] 
UNITY OF INVENTION 


# 1.475       Unity of invention before the International 

                        Searching Authority, the International 
                        Preliminary Examining Authority, and 
                             during  the national stage. 

        (a)   An international and a national stage application shall 
relate  to one invention only or to a group of inventions so linked as to 
form a single  general inventive concept ("requirement of unity of 
invention") Where a group  of inventions is claimed in an application, the 
requirement of unity of invention  shall be fulfilled only when there is a 
technical relationship among those  inventions involving one or more of 
the same or corresponding special technical  features. The expression 
"special technical features" shall mean those technical  features that 
define a contribution which each of the claimed inventions, considered  as 
a whole, makes over the prior art. 

        (b)   An international or a national stage application containing 
claims  to different categories of invention will be considered to have 
unity of invention  if the claims are drawn only to one of the following 
combinations of categories: 
        (1)   A product and a process specially adapted for the 
manufacture  of said product; or 

        (2)   A product and process of use of said product; or 

        (3)   A product, a process specially adapted for the manufacture 
of  the said product, and a use of the said product; or 

        (4)   A process and an apparatus or means specifically designed 
for  carrying out the said process; or 

        (5)   A product, a process specially adapted for the manufacture 
of  the said product, and an apparatus or means specifically designed for 
carrying  out the said process. 

        (c)   If an application contains claims to more or less than one 
of  the combinations of categories of invention set forth in paragraph (b) 
of this  section, unity of invention might not be present. 

        (d)   If multiple products, processes of manufacture, or uses are 
claimed,  the first invention of the category first mentioned in the 
claims of the application  and the first recited invention of each of the 
other categories related thereto  will be considered as the main invention 
in the claims, see PCT Article 17(3)(a)  and w 1.476(c). 

        (e)   The determination whether a group of inventions is so linked 
 as to form a single general inventive concept shall be made without 
regard  to whether the inventions are claimed in separate claims or as 
alternatives  within a single claim. 

        [Added 52 FR 20047, May 28, 1987, effective July 1, 1987; paras. 
(a)  - (e) amended and para. (f) deleted, 58 FR 4335, Jan. 14, 1993, 
effective May  1, 1993] 


# 1.476       Determination of unity of invention before the 
     International 


Searching Authority. 

        (a)   Before establishing the international search report, the 
International  Searching Authority will deter- 

mine whether the international application complies with the requirement 
of  unity of invention as set forth in w 1.475. 

        (b)   If the International Searching Authority considers that the 
international  application does not comply with the requirement of unity 
of invention, it  shall inform the applicant accordingly and invite the 
payment of additional  fees (note w 1.445 and PCT Art. 17(3)(a) and PCT 
Rule 40). The applicant will  be given a time period in accordance with 
PCT Rule 40.3 to pay the additional  fees due. 

        (c)   In the case of noncompliance with unity of invention and 
where  no additional fees are paid, the international search will be 
performed on  the invention first mentioned (main invention) in the claims. 

        (d)   Lack of unity of invention may be directly evident before 
considering  the claims in relation to any prior art, or after taking the 
prior art into  consideration, as where a document discovered during the 
search shows the invention  claimed in a generic or linking claim lacks 
novelty or is clearly obvious,  leaving two or more claims joined thereby 
without a common inventive concept.  In such a case the International 
Searching Authority may raise the objection  of lack of unity of invention. 

        [43 FR 20466, May 11, 1978; redesignated and amended at 52 FR 
20047,  May 28, 1987; para. (a) amended, 58 FR 4335, Jan. 14, 1993, 
effective May 1,  1993] 


# 1.477       Protest to lack of unity of invention before the 
             International 


Searching Authority. 

        (a)   If the applicant disagrees with the holding of lack of unity 
 of invention by the International Searching 



Authority, additional fees may be paid under protest, accompanied by a 
request  for refund and a statement setting forth reasons for disagreement 
or why the  required additional fees are considered excessive, or both 
(PCT Rule 40.2(c)). 
        (b)   Protest under paragraph (a) of this section will be examined 
 by the Commissioner or the Commissioner's designee. In the event that the 
applicant's  protest is determined to be justified, the additional fees or 
a portion thereof  will be refunded. 

        (c)   An applicant who desires that a copy of the protest and the 
decision  thereon accompany the international search report when forwarded 
to the Designated  Offices may notify the International Searching 
Authority to that effect any  time prior to the issuance of the 
international search report. Thereafter,  such notifica- 


tion should be directed to the International Bureau (PCT Rule 40.2(c)). 
        [43 FR 20466, May 11, 1978; redesignated and amended at 52 FR 
20047,  May 28, 1987] 

INTERNATIONAL PRELIMINARY 
EXAMINATION 


# 1.480       Demand for international preliminary 

                        examination. 

        (a)   On the filing of a Demand and payment of the fees for 
international  preliminary examination (w 1.482), the international 
application shall be the  subject of an international preliminary 
examination. The preliminary examination  fee (w 1.482(a)(1)) and the 
handling fee 
(w 1.482(b)) shall be due at the time of filing of the Demand. 

        (b)   The Demand shall be made on a standardized form. Copies of 
the  printed Demand forms are available from the Patent and Trademark 
Office. Letters  requesting printed Demand forms should be marked ``Box PCT." 

        (c)   If the Demand is made prior to the expiration of the 19th 
month  from the priority date and the United States of America is elected, 
the provisions  of # 1.495 shall apply rather than w 1.494. 

        (d)   Withdrawal of a proper Demand prior to the start of the 
international  preliminary examination will entitle applicant to a refund 
of the preliminary  examination fee minus the amount of the transmittal 
fee set forth in # 1.445(a)(1). 
        [52 FR 20048, May 28, 1987; para. (d), 53 FR 47810, Nov. 28, 1988, 
 effective Jan. 1, 1989; para. (b) amended, 58 FR 4335, Jan. 14, 1993, 
effective  May 1, 1993] 


# 1.482       International preliminary examination fees. 


        (a)   The following fees and charges for international preliminary 
 examination are established by the Commissioner under the authority of 35 
U.S.C.  376: 

        (1)   A preliminary examination fee is due on filing the Demand: 
        (i)   Where an international search fee as set forth in w 
1.445(a)(2)  has been paid on the international application to the United 
States Patent  and Trademark Office as an International Searching 
Authority, a preliminary  examination fee of       $470.00 

        (ii)    Where the International Searching Authority for the 
international  application was an authority other than the United States 
Patent and Trademark  Office, a preliminary examination fee of     $710.00 

        (2)   An additional preliminary examination fee when required, per 
 additional invention: 

        (i)   Where the international Searching Authority for the 
international  application was the United States Patent and Trademark 
Office           $140.00 
        (ii)    Where the International Searching Authority for the 
international  application was an authority other than the United States 
Patent and Trademark Office                   $250.00 

        (b)   The handling fee is due on filing the Demand. 

        (35 U.S.C. 6, 376) 

        [52 FR 20048, May 28, 1987; para. (a), 54 FR 6893, Feb. 15, 1989, 
effective  Apr. 17, 1989; para. (a), 56 FR 65142, Dec. 13, 1991, effective 
Dec. 27, 1991;  paras. (a)(1) and (a)(2)(ii), 57 FR 38190, Aug. 21, 1992, 
effective Oct. 1,  1992; paras. (a)(2)(i) and (b) amended, 58 FR 4335, 
Jan. 14, 1993, effective  May 1, 1993; paras. (a)(1) and (a)(2)(ii), 59 FR 
43736, Aug. 25, 1994, effective  Oct. 1, 1994; paras. (a)(1)(i), 
(a)(1)(ii), & (a)(2)(ii) amended, 
60 FR 41018, Aug. 11, 1995, effective Oct. 1, 1995] 


# 1.484       Conduct of international preliminary 

                        examination. 

        (a)   An international preliminary examination will be conducted 
to  formulate a non-binding opinion as to whether the claimed invention 
has novelty,  involves inventive step (is non-obvious) and is industrially 
applicable. 
        (b)   International preliminary examination will begin promptly 
upon  receipt of a Demand which requests examination based on the 
application as  filed or as 




amended by an amendment which has been received by the United States 
International  Preliminary Examining Authority. Where a Demand requests 
examination based  on a PCT Article 19 amendment which has not been 
received, examination may  begin at 20 months without receipt of a PCT 
Article 19 amendment. Where a Demand  requests examination based on a PCT 
Article 34 amendment which has not been  received, applicant will be 
notified and given a time period within which to  submit the amendment. 
Examination will begin after the earliest of: 
        (1)   Receipt of the amendment; 

        (2)   Receipt of applicant's statement that no amendment will be 
made;  or 

        (3)   Expiration of the time period set in the notification. 
        No international preliminary examination report will be 
established  prior to issuance of an international search report. 

        (c)   No international preliminary examination will be conducted 
on  inventions not previously searched by an International Searching 
Authority. 
        (d)   The International Preliminary Examining Authority will 
establish  a written opinion if any defect exists or if the claimed 
invention lacks novelty,  inventive step or industrial applicability and 
will set a non-extendable time  limit in the written opinion for the 
applicant to respond. 

        (e)   If no written opinion under paragraph (d) of this section is 
 necessary, or after any written opinion and the response thereto or the 
expiration  of the time limit for response to such written opinion, an 
international preliminary  examination report will be established by the 
International Preliminary Examining  Authority. One copy will be submitted 
to the International Bureau and one copy  will be submitted to the applicant. 

        (f)   An applicant will be permitted a personal or telephone 
interview  with the examiner, which must be conducted during the 
non-extendable time limit  for response by the applicant to a written 
opinion. Additional interviews may  be conducted where the examiner 
determines that such additional interviews  may be helpful to advancing 
the international preliminary examination procedure.  A summary of any 
such personal or telephone interview must be filed by the  applicant as a 
part of the response to the written opinion or, if applicant  files no 
response, be made of record in the file by the examiner. 

        [52 FR 20049, May 28, 1987; para. (b) amended, 58 FR 4335, Jan. 
14,  1993, effective May 1, 1993] 


# 1.485       Amendments by applicant during 

                        international preliminary examination. 

        (a)   The applicant may make amendments at the time of filing of 
the  Demand and within the time limit set by the International Preliminary 
Examining  Authority for response to any notification under w 1.484(b) or 
to any written  opinion. Any such amendments must: 

        (1)   Be made by submitting a replacement sheet for every sheet of 
 the application which differs from the sheet it replaces unless an entire 
sheet  is cancelled, and 

        (2)   Include a description of how the replacement sheet differs 
from  the replaced sheet. 

        (b)   If an amendment cancels an entire sheet of the international 
 application, that amendment shall be communicated in a letter. 

        [Added 52 FR 20049, May 28, 1987; amended, 58 FR 4335, Jan. 14, 
1993,  effective May 1, 1993] 


# 1.487       [Reserved] 


        [Added 52 FR 20049, May 28, 1987, effective July 1, 1987; 58 FR 
4335,  Jan. 14, 1993, effective May 1, 1993] 


# 1.488       Determination of unity of invention before 
     the 


International Preliminary Examining 
Authority. 
        (a)   Before establishing any written opinion or the international 
 preliminary examination report, the International Preliminary Examining 
Authority  will determine whether the international application complies 
with the requirement  of unity of invention as set forth in w 1.475. 

        (b)   If the International Preliminary Examining Authority 
considers  that the international application does not comply with the 
requirement of  unity of invention, it may: 

        (1)   Issue a written opinion and/or an international preliminary 
examination  report, in respect of the entire international application 
and indicate that  unity of invention is lacking and specify the reasons 
therefor without extending  an invitation to restrict or pay additional 
fees. No international preliminary  examination will be conducted on 
inventions not previously searched by an International  Searching Authority. 



        (2)   Invite the applicant to restrict the claims or pay 
additional  fees, pointing out the categories of the invention found, 
within a set time  limit which will not be extended. No international 
preliminary examination  will be conducted on inventions not previously 
searched by an International  Searching Authority, or 

        (3)   If applicant fails to restrict the claims or pay additional 
fees  within the time limit set for response, the International 
Preliminary Examining  Authority will issue a written opinion and/or 
establish an international preliminary  examination report on the main 
invention and shall indicate the relevant facts  in the said report. In 
case of any doubt as to which invention is the main  invention, the 
invention first mentioned in the claims and previously searched  by an 
International Searching Authority shall be considered the main invention. 
        (c)   Lack of unity of invention may be directly evident before 
considering  the claims in relation to any prior art, or after taking the 
prior art into  consideration, as where a document discovered during the 
search shows the invention  claimed in a generic or linking claim lacks 
novelty or is clearly obvious,  leaving two or more claims joined thereby 
without a common inventive concept.  In such a case the International 
Preliminary Examining Authority may raise  the objection of lack of unity 
of invention. 

        [52 FR 20049, May 28, 1987; para. (a) amended, 58 FR 4335, Jan. 
14,  1993, effective May 1, 1993] 


# 1.489       Protest to lack of unity of invention before the 
     International 


Preliminary Examining 
                        Authority. 

        (a)   If the applicant disagrees with the holding of lack of unity 
 of invention by the International Prelimi- nary Examining Authority, 
additional  fees may be paid under protest, accompanied by a request for 
refund and a statement  setting forth reasons for disagreement or why the 
required additional fees  are excessive, or both. 

        (b)   Protest under paragraph (a) of this section will be examined 
 by the Commissioner or the Commissioner's designee. In the event that the 
applicant's  protest is determined to be justified, the additional fees or 
a portion thereof  will be refunded. 

        (c)   An applicant who desires that a copy of the protest and the 
decision  thereon accompany the inter-national preliminary examination 
report when forwarded  to the Elected Offices, may notify the 
International Preliminary Examining  Authority to that effect any time 
prior to the issuance of the international 

preliminary examination report. Thereafter, such notification should be 
directed  to the International Bureau. 

        [Added 52 FR 20050, May 28, 1987, effective July 1, 1987] 
NATIONAL STAGE 


# 1.491       Entry into the national stage. 


        An international application enters the national stage when the 
applicant  has filed the documents and fees required by 35 U.S.C. 371(c) 
within the periods  set in ww 1.494 or 1.495. 

        [Added 52 FR 20050, May 28, 1987] 


# 1.492       National stage fees. 


        The following fees and charges are established for international 
applications  entering the national stage under 35 U.S.C. 371: 

        (a)   The basic national fee: 

        (1)   Where an international preliminary examination fee as set 
forth  in w 1.482 has been paid on the 

international application to the United States Patent and Trademark 
Office: 
By a small entity (w 1.9(f))      $340.00 

By other than a small entity      $680.00 

        (2)   Where no international preliminary examination fee        as 
 set forth in w 1.482 has been paid to the United States Patent and 
Trademark  Office, but an international search fee as set forth in w 
1.445(a)(2) has been  paid on the international application to the United 
States Patent and Trademark  Office as an International Searching Authority: 

By a small entity (w 1.9(f))      $375.00 

By other than a small entity      $750.00 

        (3)   Where no international preliminary examination fee as set 
forth  in w 1.482 has been paid and no international search fee as set 
forth in w  1.445(a)(2) has been paid on the international application to 
the United States  Patent and Trademark Office: 

By a small entity (w 1.9(f))      $505.00 

By other than a small entity    $1.010.00 

        (4)   Where the international preliminary examination fee as set 
forth  in w 1.482 has been paid to the United States Patent and Trademark 
Office and  the international preliminary examination report states that 
the criteria of  novelty, inventive step (non-obviousness), and industrial 
applicability, as  defined in PCT Article 33(1) 




to (4) have been satisfied for all the claims presented in the application 
 entering the national stage (see 
w 1.496(b)): 

By a small entity (w 1.9(f))      $47.00 

By other than a small entity      $94.00 

        (5)   Where a search report on the international application has 
been  prepared by the European Patent Office or the Japanese Patent 
Office: 
By a small entity (w 1.9(f))    $440.00 

By other than a small entity      $880.00 

        (b)   In addition to the basic national fee, for filing or later 
presentation  of each independent claim in excess of three: 

By a small entity (w 1.9(f))    $39.00 

By other than a small entity      $78.00 

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

By a small entity (w 1.9(f))      $11.00 

By other than a small entity      $22.00 

        (d)   In addition to the basic national fee, if the application 
contains,  or is amended to contain, a multiple dependent claim(s), per 
application: 
By a small entity (w 1.9(f))      $125.00 

By other than a small entity      $250.00 

  (If the additional fees required by paragraph (b), (c), and (d) are not 
paid  on presentation of the claims for which the additional fees are due, 
they must  be paid or the claims cancelled by amendment, prior to the 
expiration of the  time period set for response by the Office in any 
notice of fee deficiency.) 
        (e)   Surcharge for filing the oath or declaration later than 20 
months  from the priority date pursuant to w 1.494(c) or later than 30 
months from  the priority date pursuant to w 1.495(c): 

By a small entity (w 1.9(f))      $65.00 

By other than a small entity      $130.00 

        (f)   For filing an English translation of an international 
application  later than 20 months after the priority date (w 1.494(c)) or 
filing an English  translation of the international application or of any 
annexes to the international  preliminary examination report later than 30 
months after the priority date 
(w 1.495(c) and (e))      $130.00 

        (35 U.S.C. 6, 376) 

        [52 FR 20050, May 28, 1987, effective July 1, 1987; paras. (a)(1) 
- 
(3), (b), (d)- (f), 54 FR 6893, Feb. 15, 1989, effective Apr. 17, 1989; 
para. 
(a)(5) added, 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; 
revised,  56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; paras. 
(a)(1)-(a)(3), 
(a)(5) and (b)-(d), 57 FR 38190, Aug. 21, 1992, effective Oct. 1, 1992; para. 
(e) amended, 58 FR 4335, Jan. 14, 1993, effective May 1, 1993; paras. (a), 
(b) and (d), 59 FR 43736, Aug. 25, 1994, effective Oct. 1, 1994; paras. 
(a), 
(b), & (d) amended, 60 FR 41018, Aug 11, 1995, effective, Oct. 1, 1995] 

# 1.494       Entering the national stage in the 

                        United States of America as a Designated 
                        Office. 

        (a)   Where the United States of America has not been elected by 
the  expiration of 19 months from the priority date (see w 1.495), the 
applicant  must fulfill the requirements of PCT Article 22 and 35 U.S.C. 
371 within 
the time periods set forth in paragraph (b) and (c) of this section in 
order  to prevent the abandonment of the international application as to 
the Unites  States of America. International applications for which those 
requirements  are timely fulfilled will enter the national stage and 
obtain an examination  as to the patentability of the invention in the 
United States of America. 
        (b)   To avoid abandonment of the application, the applicant shall 
 furnish to the United States Patent and Trademark Office not later than 
the  expiration of 
20 months from the priority date: 

        (1)   A copy of the international application, unless it has been 
previously  communicated by the International Bureau or unless it was 
originally filed  in the United States Patent and Trademark Office; and 

        (2)   The basic national fee (see # 1.492(a)). The 20-month time 
limit  may not be extended. 

        (c)   If applicant complies with paragraph (b) of this section 
before  expiration of 20 months from the priority date but omits: 

        (1)   A translation of the international application, as filed, 
into  the English language, if it was originally filed in another language 
(35 U.S.C.  371(c)(2)) and/or 

        (2)   The oath or declaration of the inventor 
(35 U.S.C. 371(c)(4); see # 1.497), applicant will be so notified and 
given  a period of time within which to file the translation and/or oath 
or declaration  in order to prevent abandonment of the application. The 
payment 




of the processing fee set forth in # 1.492(f) is required for acceptance 
of  an English translation later than the expiration of 20 months after 
the priority  date. The payment of the surcharge set forth in w 1.492(e) 
is re- 
quired for acceptance of the oath or declaration of the inventor later 
than  the expiration of 20 months after the priority date. A copy of the 
notification  mailed to applicant should accompany any response thereto 
submitted to the  Office. 

        (d)   A copy of any amendments to the claims made under PCT 
Article  19, and a translation of those amendments into English, if they 
were made in  another language, must be furnished not later than the 
expiration of 20 months  from the priority date.  Amendments under PCT 
Article 19 which are not received  by the expiration of 20 months from the 
priority date will be considered to  be cancelled. The 20-month time limit 
may not be extended. 

        (e)   Verification of the translation of the international 
application  or any other document pertaining to an international 
application may be required  where it is considered necessary, if the 
international application or other  document was filed in a language other 
than English. 

        (f)   The documents and fees submitted under paragraph (b) and (c) 
 of this section must be clearly identified as a submission to enter the 
national  stage under 
35 U.S.C. 371, otherwise the submission will be considered as being made 
under  35 U.S.C.111. 

        (g)   An international application becomes abandoned as to the 
United  States 20 months from the priority date if the requirements of 
paragraph (b)  of this section have not been complied with within 20 
months from the priority  date where the United States has been designated 
but not elected by the expiration  of 
19 months from the priority date. If the requirements of paragraph (b) of 
this  section are complied with within 
20 months from the priority date but any required translation of the 
international  application as filed and/or the oath or declaration are not 
timely filed, an  international application will become abandoned as to 
the United States upon  expiration of the time period set pursuant to 
paragraph (c) of this section. 

        [Added 52 FR 20050, May 28, 1987; paras. (a) - (d) and (g) amended 
 and para. (h) deleted, 58 FR 4335, Jan. 14, 1993, effective May 1, 1993] 

# 1.495       Entering the national stage in the 

                        United States of America as an Elected Office 
        (a)   Where the United States of America has been elected by the 
expiration  of 19 months from the priority date, the applicant must 
fulfill the requirements  of 
35 U.S.C. 371 within the time periods set forth in paragraph (b) and (c) 
of  this section in order to prevent the abandonment of the international 
application  as to the Unites States of America. International 
applications for which those  requirements are timely fulfilled will enter 
the national stage and obtain  an examination as to the patentability of 
the invention in the Unites State  of America. 

        (b)   To avoid abandonment of the application, the applicant shall 
 furnish to the United States Patent and Trademark Office not later than 
the  expiration of 
 30 months from the priority date: 

        (1)   A copy of the international application, unless it has been 
previously  communicated by the International Bureau or unless it was 
originally filed  in the United States Patent and Trademark Office; and 

        (2)   The basic national fee (see # 1.492(a)). The 30-month time 
limit  may not be extended. 

        (c)   If applicant complies with paragraph (b) of this section 
before  expiration of 30 months from the priority date but omits: 

        (1)   A translation of the international application, as filed, 
into  the English language, if it was originally filed in another language 
(35 U.S.C.  371(c)(2)) and/or 

        (2)   The oath or declaration of the inventor 
(35 U.S.C. 371(c)(4); see w 1.497), applicant will be so notified and 
given  a period of time within which to file the translation and/or oath 
or declaration  in order to prevent abandonment of the application. The 
payment of the processing  fee set forth in w 1.492(f) is required for 
acceptance of an English translation  later than the expiration of 30 
months after the priority date. The payment  of the surcharge set forth in 
w 1.492(e) is required for acceptance of the  oath or declaration of the 
inventor later than the expiration of 30 months  after the priority date. 
A copy of the notification mailed to applicant should  accompany any 
response thereto submitted to the Office. 

        (d)   A copy of any amendments to the claims made under PCT 
Article  19, and a translation of those amendments into English, if they 
were made in  another language, must be furnished not later than the 
expiration 


of 30 months from the priority date. Amendments under PCT Article 19 which 
 are not received by the expiration of 30 months from the priority date 
will  be considered to be cancelled. The 30-month time limit may not be 
extended. 
        (e)   A translation into English of any annexes to the 
international  preliminary examination report, if the annexes were made in 
another language,  must be furnished not later than the expiration of 30 
months from the priority  date. Translations of the annexes which are not 
received by the expiration  of 30 months from the priority date may be 
submitted within any period set  pursuant to paragraph (c) of this section 
accompanied by the processing fee  set forth in w 1.492(f). Annexes for 
which translations are not timely received  will be considered cancelled. 
The 30-month time limit may not be extended. 
        (f)   Verification of the translation of the international 
application  or any other document pertaining to an international 
application may be required  where it is considered necessary, if the 
international application or other  document was filed in a language other 
than English. 

        (g)   The documents submitted under paragraph 
(b) and (c) of this section must be clearly identified as 
a submission to enter the national stage under 
35 U.S.C. 371, otherwise the submission will be considered as being made 
under  35 U.S.C.111. 

        (h)   An international application becomes abandoned as to the 
United  States 30 months from the priority date if the requirements of 
paragraph (b)  of this section have not been complied with within 30 
months from the priority  date where the United States has been elected by 
the expiration of 19 months  from the priority date. If the requirements 
of paragraph (b) of this section  are complied with within 30 months from 
the priority date but any required  translation of the international 
application as filed and/or the oath or declaration  are not timely filed, 
an international application will become abandoned as  to the United 
States upon expiration of the time period set pursuant to paragraph 
(c) of this section. 

        [Added 52 FR 20051, May 28, 1987, effective July 1, 1987; paras. 
(a)  -(e) & (h) amended and para. (i) deleted, 58 FR 4335, Jan. 14, 1993, 
effective  May 1, 1993] 


# 1.496       Examination of international applications 

                        in the national stage. 

        (a)   International applications which have complied with the 
requirements  of 35 U.S.C. 371(c) will be taken up for action based on the 
date on which  such requirements were met. However, unless an express 
request for early processing  has been filed under 35 U.S.C. 371(f), no 
action may be taken prior to one  month after entry into the national stage. 

        (b)   A national stage application filed under 
35 U.S.C. 371 may have paid therein the basic national fee as set forth in 
 # 1.492(a)(4) if it contains, or is amended to contain, at the time of 
entry  into the national stage, only claims which have been indicated in 
an international  preliminary examination report prepared by the United 
States Patent and Trademark  Office as satisfying the criteria of PCT 
Article 33(1)-(4) as to novelty, inventive  step and industrial 
applicability. Such national stage applications in which  the basic 
national fee as set forth in # 1.492(a)(4) has been paid may be amended 
subsequent to the date of entry into the national stage only to the extent 
 necessary to eliminate objections as to form or to cancel rejected 
claims. 
 Such national stage applications in which the basic national fee as set 
forth  in # 1.492(a)(4) has been paid will be taken up out of order. 

        [Added 52 FR 20051, May 28, 1987, effective July 1, 1987] 

# 1.497       Oath or declaration under 35 U.S.C. 371(c)(4). 


        (a)   When an applicant of an international application, if the 
inventor,  desires to enter the national stage under 35 U.S.C. 371 
pursuant to ww 1.494  or 1.495, he or she must file an oath or declaration 
in accordance with w 1.63. 
        (b)   If the international application was made as provided in ww 
1.422,  1.423 or 1.425, the applicant shall state his or her relationship 
to the inventor  and, upon information and belief, the facts which the 
inventor is required  by w 1.63 to state. 

        [Added 52 FR 20052, May 28, 1987, effective July 1, 1987] 

# 1.499       Unity of invention during the national stage. 


        If the examiner find that a national stage application lacks unity 
 of invention under w 1.475, the examiner may in an Office action require 
the  applicant in the response to that action to elect the invention to 
which the  claims shall be restricted. Such requirement may be made before 
any action  on the merits but may be made at any time before the final 
action at the discretion  of the 




examiner. Review of any such requirement is provided under ## 1.143 and 
1.144. 
        [Added 52 FR 20052, May 28, 1987, effective July 1, 1987; amended, 
 58 FR 4335, Jan. 14, 1993, effective May 1, 1993] 

Subpart D - Reexamination of Patents 

CITATION OF PRIOR ART 


# 1.501       Citation of prior art in patent files. 


        (a)   At any time during the period of enforceability of a patent, 
 any person may cite to the Patent and Trademark Office in writing prior 
art  consisting of patents or printed publications which that person 
states to be  pertinent and applicable to the patent and believes to have 
a bearing on the  patentability of any claim of a particular patent. If 
the citation is made  by the patent owner, the explanation of pertinency 
and applicability 

may include an explanation of how the claims differ from the prior art. 
Citations  by the patent owner under # 1.555 and by a reexamination 
requester under either  ## 1.510 or 1.535 will be entered in the patent 
file during a reexamination  proceeding. The entry in the patent file of 
citations submitted after the date  of an order to reexamine pursuant to # 
1.525 by persons other than the patent  owner, or a reexamination 
requester under either ## 1.510 or 1.535, will be  delayed until the 
reexamination proceedings have been terminated. 

        (b)   If the person making the citation wishes his or her identity 
 to be excluded from the patent file and kept confidential, the citation 
papers  must be submitted without any identification of the person making 
the submission. 
        (c)   Citations of patent or printed publications by the public in 
 patent files should either: (1) Reflect that a copy of the same has been 
mailed  to the patent owner at the address as provided for in # 1.33(c); 
or in the  event service is not possible (2) be filed with the Office in 
duplicate. 
        [46 FR 29185, May 29, 1981, effective July 1, 1981] 

REQUEST FOR REEXAMINATION 


# 1.510       Request for reexamination. 


        (a)   Any person may, at any time during the period of 
enforceability  of a patent, file a request for reexamination by the 
Patent and Trademark Office  of any claim of the patent on the basis of 
prior art patents or printed publications  cited under w 1.501. The 
request must be accompanied by the fee for requesting  reexamination set 
in w 1.20(c). 

        (b)   Any request for reexamination must include the following 
parts: 
        (1)   A statement pointing out each substantial new question of 
patentability  based on prior patents and printed publications. 

        (2)   An identification of every claim for which reexamination is 
requested,  and a detailed explanation of the pertinency and manner of 
applying the cited  prior art to every claim for which reexamination is 
requested. If appropriate  the party requesting reexamination may also 
point out how claims distinguish  over cited prior art. 

        (3)   A copy of every patent or printed publication relied upon or 
 referred to in paragraph (b)(1) and (2) of this section accompanied by an 
English  language translation of all the necessary and pertinent parts of 
any non-English  language patent or printed publication. 

        (4)   The entire specification (including claims) and drawings of 
the  patent for which reexamination is requested must be furnished in the 
form of  cut-up copies of the original patent with only a single column of 
the printed  patent securely mounted or reproduced in permanent form on 
one side of a separate  paper. A copy of any disclaimer, certificate of 
correction, or reexamination  certificate issued in the patent must also 
be included. 

        (5)   A certification that a copy of the request filed by a person 
 other than the patent owner has been served in its entirety on the patent 
owner  at the address as provided for in w 1.33(c). The name and address 
of the party  served must be indicated. If service was not possible, a 
duplicate copy must  be supplied to the Office. 

        (c)   If the request does not include the fee for requesting 
reexamination  or all of the parts required by paragraph (b) of this 
section, the person identified  as requesting reexamination will be so 
notified and given an opportunity to  complete the request within a 
specified time. If the fee for requesting reexamination  has been paid but 
the defect in the request is not corrected within the specified  time, the 
determination whether or not to institute reexamination will be made  on 
the request as it then exists. If the fee for requesting reexamination has 
 not been paid, no determination will be made and the request will be 
placed  in the patent file as a citation if it complies with the 
requirements of w 1.501(a). 



        (d)   The filing of the request is: (1) The date on which the 
request  including the entire fee for requesting reexamination is received 
in the Patent  and Trademark Office; or (2) the date on which the last 
portion of the fee  for requesting reexamination is received. 

        (e)   A request filed by the patent owner may include a proposed 
amendment  in accordance with 
w 1.121(f). 

        (f)   If a request is filed by an attorney or agent identifying 
another  party on whose behalf the request is being filed, the attorney or 
agent must  have a power of attorney from that party or be acting in a 
representative capacity  pursuant to w 1.34(a). 

        [46 FR 29185, May 29, 1981, effective July 1, 1981; para. (a), 47 
FR  41282, Sept. 17, 1982, effective Oct. 1, 1982] 


# 1.515       Determination of the request for 

                        reexamination. 

        (a)   Within three months following the filing date of a request 
for  reexamination, an examiner will consider the request and determine 
whether  or not a substantial new question of patentability affecting any 
claim of the  patent is raised by the request and the prior art cited 
therein, with or without  consideration of other patents or printed 
publications. The examiner's determination  will be based on the claims in 
effect at the time of the determination and  will become a part of the 
official file of the patent and will be given or  mailed to the patent 
owner at the address as provided for in w 1.33(c) and  to the person 
requesting reexamination. 

        (b)   Where no substantial new question of patentability has been 
found,  a refund of a portion of the fee for requesting reexamination will 
be made  to the requester in accordance with w 1.26(c). 

        (c)   The requester may seek review by a petition to the 
Commissioner  under w 1.181 within one month of the mailing date of the 
examiner's determination  refusing reexamination. Any such petition must 
comply with w 1.181(b). If no  petition is timely filed or if the decision 
on petition affirms that no substantial  new question of patentability has 
been raised, the determination shall be final  and non-appealable. 

        [46 FR 29185, May 29, 1981, effective July 1, 1981] 


# 1.520       Reexamination at the initiative of the 
                     Commissioner. 

        The Commissioner, at any time during the period of enforceability 
of  a patent, may determine whether or not a substantial new question of 
patentability  is raised by patents or printed publications which have 
been discovered by  the Commissioner or which have been brought to the 
Commissioner's attention  even though no request for reexamination has 
been filed in accordance with  w 1.510. The Commissioner may initiate 
reexamination without a request for  reexamination pursuant to w 1.510. 
Normally requests from outside the Patent  and Trademark Office that the 
Commissioner undertake reexamination on his own  initiative will not be 
considered. Any determination to initiate reexamination  under this 
section will become a part of the official file of the patent and  will be 
given or mailed to the patent owner at the address as provided for  in w 
1.33(c). 

        [46 FR 29186, May 29, 1981, effective July 1, 1981] 

REEXAMINATION 


# 1.525       Order to reexamine. 


        (a)   If a substantial new question of patentability is found 
pursuant  to w 1.515 or w 1.520, the determination will include an order 
for reexamination  of the patent for resolution of the question. If the 
order for reexamination  resulted from a petition pursuant to w 1.515(c), 
the reexamination will ordinarily  be conducted by an examiner other than 
the examiner responsible for the initial  determination under w 1.515(a). 

        (b)   If the order for reexamination of the patent mailed to the 
patent  owner at the address as provided for in w 1.33(c) is returned to 
the Office  undelivered, the notice published in the Official Gazette under 
w 1.11(c) will be considered to be constructive notice and reexamination 
will  proceed. 

        [46 FR 29186, May 29, 1981, effective July 1, 1981] 


# 1.530       Statement and amendment by patent owner. 


        (a)   Except as provided in w 1.510(e), no statement or other 
response  by the patent owner shall be filed prior to the determinations 
made in accordance  with ww 1.515 or 1.520. If a premature statement or 
other response is filed  by the patent owner it will not be acknowledged 
or considered in making the  determination. 

        (b)   The order for reexamination will set a period of not less 
than  two months from the date of the order within which the patent owner 
may file  a statement on the new question of patentability including any 
proposed amendments  the patent owner wishes to make. 

        (c)   Any statement filed by the patent owner shall clearly point 
out  why the subject matter as claimed is not anticipated or rendered 
obvious by  the prior art patents or printed publications, either alone or 
in any reasonable 



combinations. Any statement filed must be served upon the reexamination 
requester  in accordance with w 1.248. 

        (d)   Any proposed amendment to the description and claims must be 
 made in accordance with w 1.121(f). No amendment may enlarge the scope of 
the  claims of the patent or introduce new matter. No amended or new 
claims may  be proposed for entry in an expired patent. Moreover, no 
amended or new claims  will be incorporated into the patent by certificate 
issued after the expiration  of the patent. 

        (e)   Although the Office actions will treat proposed amendments 
as  though they have been entered, the proposed amendments will not be 
effective  until the reexamination certificate is issued. 

        [46 FR 29186, May 29, 1981, effective July 1, 1981] 


# 1.535 Reply by requester. 


        A reply to the patent owner s statement under 
w 1.530 may be filed by the reexamination requester within two months from 
 the date of service of the patent owner's statement. Any reply by the 
requester  must be served upon the patent owner in accordance with 
w 1.248. If the patent owner does not file a statement under w 1.530, no 
reply  or other submission from the reexamination requester will be 
considered. 
        [46 FR 29186, May 29, 1981, effective July 1, 1981] 


# 1.540       Consideration of responses. 


        The failure to timely file or serve the documents set forth in ww 
1.530  or in 1.535 may result in their being refused consideration. No 
submissions  other than the statement pursuant to w 1.530 and the reply by 
the requester  pursuant to w 1.535 will be considered prior to examination. 

        [46 FR 29186, May 29, 1981, effective July 1, 1981] 


# 1.550       Conduct of reexamination proceedings. 


        (a)   All reexamination proceedings, including any appeals to the 
Board  of Patent Appeals and Interferences, will be conducted with special 
dispatch  within the Office. After issuance of the reexamination order and 
expiration  of the time for submitting any responses thereto, the 
examination will be conducted  in accordance with ww 1.104 through 1.119 
and will result in the issuance of  a reexamination certificate under w 1.570. 

        (b)   The patent owner will be given at least 30 days to respond 
to  any Office action. Such response may include further statements in 
response  to any rejections and/or pro- posed amendments or new claims to 
place the patent  in a condition where all claims, if amended as proposed, 
would be patentable. 
        (c)   The time for taking any action by a patent owner in a 
reexamination  proceeding will be extended only for sufficient cause, and 
for a reasonable  time specified. Any request for such extension must be 
filed on or before the  day on which action by the patent owner is due, 
but in no case will the mere  filing of a request effect any extension. 
See w 1.304(a) for exten- sions of  time for filing a notice of appeal to 
the U.S. Court of Appeals for the Federal  Circuit or for commencing a 
civil action. 

        (d)   If the patent owner fails to file a timely and appropriate 
response  to any Office action, the reexamination proceeding will be 
terminated and the  Commissioner will proceed to issue a certificate under 
w 1.570 in accordance  with the last action of the Office. 

        (e)   The reexamination requester will be sent copies of Office 
actions  issued during the reexamination proceeding. Any document filed by 
the patent  owner must be served on the requester in the manner provided 
in w 1.248. The  document must reflect service or the document may be 
refused consideration  by the Office. The active participation of the 
reexamination requester ends  with the reply pursuant to w 1.535, and no 
further submissions on behalf of  the reexamination requester will be 
acknowledged or considered. Further, no  submissions on behalf of any 
third parties will be acknowledged or considered  unless such submissions 
are (1) in accordance with w 1.510 or (2) entered in  the patent file 
prior to the date of the order to reexamine pursuant to w 1.525. 
Submissions by third parties, filed after the date of the order to 
reexamine  pursuant to 
w 1.525, must meet the requirements of and will be treated in accordance 
with  w 1.501(a). 

        [46 FR 29186, May 29, 1981, effective July 1, 1981; para. (c), 49 
FR  556, Jan. 4, 1984, effective Apr. 1, 1984; para. (a), 49 FR 48416, 
Dec. 12,  1984, effective Feb. 11, 1985; para. (c), 54 FR 29553, July 13, 
1989, effective  Aug. 20, 1989] 


# 1.552       Scope of reexamination in reexamination 
     proceedings. 

        (a)   Patent claims will be reexamined on the basis of patents or 
printed  publications. 

        (b)   Amended or new claims presented during a reexamination 
proceeding  must not enlarge the scope of the claims of the patent and 
will be examined  on the basis of patents or printed publications and also 
for com- 




pliance with the requirements of 35 U.S.C. 112 and the new matter 
prohibition  of 35 U.S.C. 132. 

        (c)   Questions other than those indicated in paragraph (a) and 
(b)  of this section will not be resolved in a reexamination proceeding. 
If such  questions are discovered during a reexamination proceeding, the 
existence of  such questions will be noted by the examiner in an Office 
action, in which  case the patent owner may desire to consider the 
advisability of filing a reissue  application to have such questions 
considered and resolved. 

        [46 FR 29186, May 29, 1981, effective July 1, 1981] 


# 1.555       Information material to patentability in 
                     reexamination 


proceedings. 

        (a)   A patent by its very nature is affected with a public 
interest.  The public interest is best served, and the most effective 
reexamination occurs  when, at the time a reexamination proceeding is 
being conducted, the Office  is aware of and evaluates the teachings of 
all information material to patentability  in a reexamination proceeding. 
Each individual associated with the patent owner  in a reexamination 
proceeding has a duty of candor and good faith in dealing  with the 
Office, which includes a duty to disclose to the Office all information 
known to that individual to be material to patentability in a 
reexamination  proceeding. The individuals who have a duty to disclose to 
the Office all information  known to them to be material to patentability 
in a reexamination proceeding  are the patent owner, each attorney or 
agent who represents the patent owner,  and every other individual who is 
substantively involved on behalf of the patent  owner in a reexamination 
proceeding. The duty to disclose the information exists  with respect to 
each claim pending in the reex- amination proceeding until  the claim is 
cancelled. Information material to the patentability of a cancelled  claim 
need not be submitted if the information is not material to patentability 
of any claim remaining under consideration in the reexamination 
proceeding.  The duty to disclose all information known to be material to 
patentability  in a reexamination proceeding is deemed to be satisfied if 
all information  known to be material to patentability of any claim in the 
patent after issuance  of the reexamination certificate was cited by the 
Office or submitted to the  Office in an information disclosure statement. 
However, the duties of candor, 
 good faith, and disclosure have not been complied with if any fraud on 
the  Office was practiced or attempted or the duty of disclosure was 
violated through  bad faith or intentional misconduct by, or on behalf of, 
the patent owner in  the reexamination proceeding. Any information 
disclosure statement must be  filed with the items listed in w 1.98(a) as 
applied to individuals associated  with the patent owner in a 
reexamination proceeding, and should be filed within  two months of the 
date of the order for reexamination, or as soon thereafter  as possible. 

        (b)   Under this section, information is material to patentability 
 in a reexamination proceeding when it is not cumulative to information of 
record  or being made of record in the reexamination proceeding, and 

        (1)   It is a patent or printed publication that establishes, by 
itself  or in combination with other patents or printed publications, a 
prima facie  case of unpatentability of a claim; or 

        (2)   It refutes, or is inconsistent with, a position the patent 
owner  takes in: 

  (i) Opposing an argument of unpatentability relied on by the Office, or 
        (ii)    Asserting an argument of patentability. 

        A prima facie case of unpatentability of a claim pending in a 
reexamination  proceeding is established when the information compels a 
conclusion that a  claim is unpatentable under the preponderance of 
evidence, burden-of-proof  standard, giving each term in the claim its 
broadest reasonable construction  consistent with the specification, and 
before any consideration is given to  evidence which may be submitted in 
an attempt to establish a contrary conclusion  of patentability. 

        (c)   The responsibility for compliance with this section rests 
upon  the individuals designated in para-graph (a) of this section and no 
evaluation  will be made by the Office in the reexamination proceeding as 
to compliance  with this section. If questions of compliance with this 
section are discovered  during a reexamination proceeding, they will be 
noted as unresolved questions  in accordance with w 1.552(c). 

        [46 FR 29187, May 29, 1981, effective July 1, 1981; 47 FR 21752, 
May  19, 1982, effective July 1, 1982; paras. (a) and (b), 49 FR 556, Jan. 
4, 1984,  effective Apr. 1, 1984; revised 57 FR 2021, Jan. 17, 1992, 
effective Mar. 16,  1992] 


# 1.560       Interviews in reexamination proceedings. 


        (a)   Interviews in reexamination proceedings pending before the 
Office  between examiners and the owners of such patents or their 
attorneys or agents  of record must be had in the Office at such times, 
within Office 




hours, as the respective examiners may designate Interviews will not be 
permitted  at any other time or place without the authority of the 
Commissioner. Interviews  for the discussion of the patentability of 
claims in patents involved in reexamination  proceedings will not be had 
prior to the first official action thereon. Interviews  should be arranged 
for in advance. Requests that reexamination requesters participate  in 
interviews with examiners will not be granted. 

        (b)   In every instance of an interview with an examiner, a 
complete  written statement of the reasons presented at the interview as 
warranting favorable  action must be filed by the patent owner. An 
interview does not remove the  necessity for response to Office actions as 
specified in w 1.111. 

        [46 FR 29187, May 29, 1981, effective July 1, 1981] 


# 1.565       Concurrent office proceedings. 


        (a)   In any reexamination proceeding before the Office, the 
patent  owner shall call the attention of the Office to any prior or 
concurrent proceedings  in which the patent is or was involved such as 
interferences, reissue, reexaminations,  or litigation and the results of 
such proceedings. 

        (b)   If a patent in the process of reexamination is or becomes 
involved  in litigation or a reissue application for the patent is filed 
or pending,  the Commissioner shall determine whether or not to stay the 
reexamination or  reissue proceeding. 

        (c)   If reexamination is ordered while a prior reexamination 
proceeding  is pending, the reexamination proceedings will be consolidated 
and result in  the issuance of a single certificate under w 1.570. 

  (d)     If a reissue application and a reexamination proceeding on which 
 an order pursuant to w 1.525 has been mailed are pending concurrently on 
a  patent, a decision will normally be made to merge the two proceedings 
or to  stay one of the two proceedings. Where merger of a reissue 
application and  a reexamination proceeding is ordered, the merged 
examination will be conducted  in accordance with w 1.171 through w 1.179 
and the patent owner will be required  to place and maintain the same 
claims in the reissue application and the reexamination  proceeding during 
the pendency of the merged proceeding. The examiner's actions  and any 
responses by the patent owner in a merged proceeding will apply to  both 
the reissue application and the reexamination proceeding and be physically 
 entered into both files. Any reexamination proceeding merged with a 
reissue  application shall be terminated by the grant of the reissued 
patent. 
        (e)   If a patent in the process of reexamination is or becomes 
involved  in an interference, the Commissioner may stay reexamination or 
the interference.  The Commissioner will not consider a request to stay an 
interference unless  a motion (w 1.635) to stay the interference has been 
presented to, and denied  by, an examiner-in-chief and the request is 
filed within ten (10) days of a  decision by an examiner-in-chief denying 
the motion for a stay or such other  time as the examiner-in-chief may set. 

        [46 FR 29187, May 29, 1981, effective July 1, 1981; paras. (b) and 
(d),, 47 FR 21753, May 19, 1982, effective July 1, 1982; paras. (b) & (e), 
 49 FR 48416, Dec. 12, 1984, 50 FR 23123, May 31, 1985, effective Feb. 11, 
1985] 
CERTIFICATE 


# 1.570       Issuance of reexamination certificate after 
             reexamination 


proceedings. 

        (a)   Upon the conclusion of reexamination proceedings, the 
Commissioner  will issue a certificate in accordance with 35 U.S.C. 307 
setting forth the  results of the reexamination proceeding and the content 
of the patent following  the reexamination proceeding. 

        (b)   A certificate will be issued in each patent in which a 
reexamination  proceeding has been ordered under w 1.525. Any statutory 
disclaimer filed by  the patent owner will be made part of the certificate. 

        (c)   The certificate will be mailed on the day of its date to the 
 patent owner at the address as provided for in w 1.33(c). A copy of the 
certificate  will also be mailed to the requester of the reexamination 
proceeding. 
        (d)   If a certificate has been issued which cancels all of the 
claims  of the patent, no further Office proceedings will be conducted 
with regard  to that patent or any reissue applications or reexamination 
requests relating  thereto. 

        (e)   If the reexamination proceeding is terminated by the grant 
of  a reissued patent as provided in w 1.565(d) the reissued patent will 
constitute  the reexamination certificate required by this section and 35 
U.S.C. 307. 
        (f)   A notice of the issuance of each certificate under this 
section  will be published in the Official Gazette on its date of 
issuance. 
        [46 FR 29187, May 29, 1981, effective July 1, 1981; para.  (e), 47 
FR 21753, May 19, 1982, effective date July 1, 1982] 



Subpart E - Interferences 


# 1.601       Scope of rules, definitions. 


        This subpart governs the procedure in patent interferences in the 
Patent  and Trademark Office. This 


subpart shall be construed to secure the just, speedy, and inexpensive 
determination  of every interference. For the meaning of terms in the 
Federal Rules of Evidence  as applied to interferences, see w 1.671(c). 
Unless otherwise clear from the  context, the following definitions apply 
to this subpart: 

        (a)   Additional discovery is discovery to which a party may be 
entitled  under w 1.687 in addition to discovery to which the party is 
entitled as a  matter of right under w 1.673(a) and (b). 

        (b)   Affidavit means affidavit, declaration under 
w 1.68, or statutory declaration under 28 U.S.C. w 1746.  A transcript of 
an  ex parte deposition may be used as an affidavit. 

        (c)   Board means the Board of Patent Appeals and Interferences. 
        (d)     Case-in-chief means that portion of a party's case where 
the  party has the burden of going forward with evidence. 

        (e)   Case-in-rebuttal means that portion of a party's case where 
the  party presents evidence in rebuttal to the case-in-chief of another 
party. 
        (f)     A count defines the interfering subject matter between two 
 or more applications or between one or more applications and one or more 
patents.  At the time the interference is initially declared, a count 
should be broad  enough to encompass all of the claims that are patentable 
over the prior art  and designated to correspond to the count.  When there 
is more than one count,  each count shall define a separate patentable 
invention. Any claim of an application  or patent that is designated to 
correspond to a count is a claim involved in  the interference within the 
meaning of 35 U.S.C. 135(a).  A claim of a patent  or application that is 
designated to correspond to a count and is identical  to the count is said 
to correspond exactly to the count.  A claim of a patent  or application 
that is designated to correspond to a count but is not identical  to the 
count is said to correspond substantially to the count. When a count  is 
broader in scope than all claims which correspond to the count, the count 
is a phantom count. 

        (g)   The effective filing date of an application is the filing 
date  of an earlier application, benefit of which is accorded to the 
application  under 35 U.S.C. 119, 120, 121, or 365 or, if no benefit is 
accorded, the filing  date of the application. The effective filing date 
of a patent is the filing  date of an earlier application, benefit of 
which is accorded to the patent  under 35 U.S.C. 119, 120, 121, or 365 or, 
if no benefit is accorded, the filing  date of the application which 
issued as the patent. 

        (h)   In the case of an application, filing date means the filing 
date  assigned to the application. In the case of a patent, "filing date" 
means the  filing date assigned to the application which issued as the 
patent. 
        (i)   An interference is a proceeding instituted in the Patent and 
 Trademark Office before the Board to determine any question of 
patentability  and priority of invention between two or more parties 
claiming the same patentable  invention. An interference may be declared 
between two or more pending applications  naming different inventors when, 
in the opinion of an examiner, the applications  contain claims for the 
same patentable invention. An interference may be declared  between one or 
more pending applications and one or more unexpired patents  naming 
different inventors when, in the opinion of an examiner, any application 
and any unexpired patent contain claims for the same patentable invention. 
        (j)   An interference-in-fact exists when at least one claim of a 
party  that is designated to correspond to a count and at least one claim 
of an opponent  that is designated to correspond to the count define the 
same patentable invention. 


        (k)   A lead attorney or agent is a registered attorney or agent 
of  record who is primarily responsible for prosecuting an interference on 
behalf  of a party and is the attorney or agent whom an administrative 
patent judge  may contact to set times and take other action in the 
interference. 
        (l)   A party is an applicant or patentee involved in the 
interference  or a legal representative or an assignee of record in the 
Patent and Trademark  Office of an applicant or patentee involved in an 
interference.  Where acts  of a party are normally performed by an 
attorney or agent, "party" may be construed  to mean the 

attorney or agent. An inventor is the individual named as inventor in an 
application  involved in an interference or 



the individual named as inventor in a patent involved in an interference. 
        (m)   A senior party is the party with the earliest effective 
filing  date as to all counts or, if there is no party with the earliest 
effective  filing date as to all counts, the 

party with the earliest filing date. A junior party is any other party. 
        (n)   Invention "A" is the same patentable invention as an 
invention  "B" when invention "A" is the same as (35 U.S.C. 102) or is 
obvious (35 U.S.C.  103) in view of invention "B" assuming invention "B" 
is prior art with respect  to invention "A". Invention "A" is a separate 
patentable invention with respect  to invention "B" when invention "A" is 
new (35 U.S.C. 102) and non-obvious 
(35 U.S.C. 103) in view of invention "B" assuming invention "B" is prior 
art  with respect to invention "A". 

        (o)   Sworn means sworn or affirmed. 

        (p)   United States means the United States of America, its 
territories  and possessions. 

        (q)   A final decision is a decision awarding judgment as to all 
counts.  An interlocutory order is any other action taken by an 
administrative patent  judge or the Board in an interference, including 
the notice declaring an interference. 

        (r)   NAFTA country means NAFTA country as defined in section 2(4) 
 of the North American Free Trade Agreement Implementation Act, Pub. L. 
103-182,  107 Stat. 2060 (19 U.S.C. 3301). 

        (s)   WTO member country means WTO member country as defined in 
section  2(10) of the Uruguay Round Agreements Act, Pub. L. 103-465, 108 
Stat. 4813 
(19 U.S.C. 3501). 

        [49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; 50 FR 23123, 
 May 31, 1985; para. (q) added, 58 FR 49432, Sept. 23, 1993, effective 
Oct.  25, 1993; paras. (f), (g), (j)-(n), and (q) revised, paras. (r) and 
(s) added,  60 FR 14488, Mar 17, 1995, effective Apr. 21, 1995] 


# 1.602       Interest in applications and patents involved in 
     an 


interference. 

        (a)   Unless good cause is shown, an interference shall not be 
declared  or continued between (1) applications owned by a single party or 
(2) applications  and an unexpired patent owned by a single party. 

        (b)   The parties, within 20 days after an interference is 
declared,  shall notify the Board of any and all right, title, and 
interest in any application  or patent involved or relied upon in the 
interference unless the right, title,  and interest is set forth in the 
notice declaring the interference. 
        (c)   If a change of any right, title, and interest in any 
application  or patent involved or relied upon in the interference occurs 
after notice is  given declaring the interference and before the time 
expires for seeking judicial  review of a final decision of the Board, the 
parties shall notify the Board  of the change within 
20 days after the change. 

        [49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; para. 
(c)  revised, 60 FR 14488, Mar 17, 1995, effective Apr. 21, 1995] 


# 1.603       Interference between applications; subject 
                     matter 


of the interference. 

        Before an interference is declared between two or more 
applications,  the examiner must be of the opinion that there is 
interfering subject matter  claimed in the applications which is 
patentable to each applicant subject to  a judgment in the interference. 
The interfering subject matter shall be defined  by one or more counts. 
Each application must contain, or be amended to contain,  at least one 
claim that is patentable over the prior art and corresponds to  each 
count.  All claims in the applications which define the same patentable 
invention as a count shall be designated to correspond to the count. 
        [Added, 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; 
revised,  60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995] 


# 1.604       Request for interference between applications 
             by 


an applicant. 

        (a)   An applicant may seek to have an interference declared with 
an  application of another by, 

        (1)   Suggesting a proposed count and presenting at least one 
claim  corresponding to the proposed count or identifying at least one 
claim in its  application that corresponds to the proposed count, 

        (2)   Identifying the other application and, if known, a claim in 
the  other application which corresponds to the proposed count, and 

        (3)   Explaining why an interference should be declared. 

        (b)   When an applicant presents a claim known to the applicant to 
 define the same patentable invention claimed in a pending application of 
another,  the applicant shall identify that pending application, unless 
the claim is  presented in response to a suggestion by the examiner. The 
examiner shall notify  the Commissioner 




of any instance where it appears an applicant may have failed to comply 
with  the provisions of this paragraph. 

        [49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985;  para. 
(a)(1) revised,  60 FR 14488, Mar 17, 1995; effective Apr. 21, 1995] 

# 1.605       Suggestion of claim to applicant by examiner. 


        (a)   If no claim in an application is drawn to the same 
patentable  invention claimed in another application or patent, the 
examiner may suggest  that an applicant present a claim drawn to an 
invention claimed in another  application or patent for the purpose of an 
interference with another application  or a patent. The applicant to whom 
the claim is suggested shall amend the applica- 

tion by presenting the suggested claim within a time specified by the 
examiner,  not less than one month. Failure or refusal of an applicant to 
timely present  the suggested claim shall be taken without further action 
as a disclaimer by  the applicant of the invention defined by the 
suggested claim.  At the time  the suggested claim is presented, the 
applicant may also call the examiner's  attention to other claims already 
in the application or presented with the  suggested claim and explain why 
the other claims would be more appropriate  to be designated to correspond 
to a count in any interference which may be  declared. 

        (b)   The suggestion of a claim by the examiner for the purpose of 
 an interference will not stay the period for response to any outstanding 
Office  action. When a suggested claim is timely presented, ex parte 
proceedings in  the application will be stayed pending a determination of 
whether an interference  will be declared. 

        [49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; para. 
(a)  revised, 60 FR 14488, Mar 17, 1995; effective Apr. 21, 1995] 


# 1.606       Interference between an application and a 

                        patent; subject matter of the interference. 
        Before an interference is declared between an application and an 
unexpired  patent, an examiner must determine that there is interfering 
subject matter  claimed in the application and the patent which is 
patentable to the applicant  subject to a judgment in the interference. 
The interfering subject matter will  be defined by one or more counts. The 
application must contain, or be amended  to contain, at least one claim 
that is patentable over the prior art and corresponds  to each count. The 
claim in the application need not be, and most often will  not be, 
identical to a claim in the patent.  All claims in the application  and 
patent which define the same patentable invention as a count shall be 
designated  to correspond to the count.  At the time an interference is 
initially declared 
(w 1.611), a count shall not be narrower in scope than any application 
claim  that is patentable over the prior art and designated to correspond 
to the count  or any patent claim designated to correspond to the count. 
Any single patent  claim designated to correspond to the count will be 
presumed, subject to a  motion under w 1.633(c), not to contain separate 
patentable inventions. 
        [49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; 
revised,  60 FR 14488, Mar 17, 1995; effective Apr. 21, 1995] 


# 1.607       Request by applicant for interference with 

                        patent. 

        (a)   An applicant may seek to have an interference declared 
between  an application and an unexpired patent by, 

        (1)   Identifying the patent, 

        (2)   Presenting a proposed count, 

        (3)   Identifying at least one claim in the patent corresponding 
to  the proposed count, 

        (4)   Presenting at least one claim corresponding to the proposed 
count  or identifying at least one claim already pending in its 
application that corresponds  to the proposed count, and, if any claim of 
the patent or application identified  as corresponding to the proposed 
count does not correspond exactly to the proposed  count, explaining why 
each such claim corresponds to the proposed count, and 
        (5)   Applying the terms of any application claim 

        (i)   Identified as corresponding to the count and 

        (ii)    Not previously in the application to the disclosure of the 
 application. 

        (6)   Explaining how the requirements of 35 U.S.C. 135(b) are met, 
 if the claim presented or identified under paragraph (a)(4) of this 
section  was not present in the application until more than one year after 
the issue  date of the patent. 

        (b)   When an applicant seeks an interference with a patent, 
examination  of the application, including any appeal to the Board, shall 
be conducted with  special dispatch within the Patent and Trademark 
Office. The examiner shall  determine whether there is interfering subject 
matter claimed in the application  and the patent which is patentable to 
the applicant subject to a judgment in  an interference. If the examiner 
determines 



that there is any interfering subject matter, an interference will be 
declared.  If the examiner determines that there is no interfering subject 
matter, the  examiner shall state the reasons why an interference is not 
being declared  and otherwise act on the application. 

        (c)   When an applicant presents a claim which corresponds exactly 
 or substantially to a claim of a patent, the applicant shall identify the 
patent  and the number of the patent claim, unless the claim is presented 
in response  to a suggestion by the examiner. The examiner shall notify 
the Commissioner  of any instance where an applicant fails to identify the 
patent. 

        (d)   A notice that an applicant is seeking to provoke an 
interference  with a patent will be placed in the file of the patent and a 
copy of the notice  will be sent to the patentee. The identity of the 
applicant will not be disclosed  unless an interference is declared. If a 
final decision is made not to declare  an interference, a notice to that 
effect will be placed in the patent file  and will be sent to the patentee. 

        [49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985, para. 
(a)  amended 53 FR 23735, June 23, 1988, effective Sept. 12, 1988; para. 
(a)(5)(i)  revised, 58 FR 54504, Oct. 22, 1993, effect- ive Jan. 3, 1994; 
para. (a)(4)  revised, para. (a)(6) added, 
60 FR 14488, Mar 17, 1995; effective Apr. 21, 1995] 


# 1.608       Interference between an application and a 

                        patent; prima facie showing by applicant. 
        (a)   When the effective filing date of an application is three 
months  or less after the effective filing date of a patent, before an 
interference  will be declared, either the applicant or the applicant's 
attorney or agent  of record shall file a statement alleging that there is 
a basis upon which  the applicant is entitled to a judgment relative to 
the patentee. 

        (b)   When the effective filing date of an application is more 
than  three months after the effective filing date of a patent, the 
applicant, before  an interference will be declared, shall file evidence 
which may consist of  patents or printed publications, other documents, 
and one or more affidavits  which demonstrate that applicant is prima 
facie entitled to a judgment relative  to the patentee and an explanation 
stating with particularity the basis upon  which the applicant is prima 
facie entitled to the judgment. Where the basis  upon which an applicant 
is entitled to judgment relative to a patentee is priority  of invention, 
the evidence shall include affidavits by the applicant, if possible,  and 
one or more corroborating witnesses, supported by documentary evidence, 
if available, each setting out a factual description of acts and 
circumstances  performed or observed by the affiant, which collectively 
would prima facie  entitle the applicant to judgment on priority with 
respect to the effective  filing date of the patent. To facilitate 
preparation of a record w 1.653(g))  for final hearing, an applicant 
should file affidavits on paper which is 21.8  by 27.9 cm. (8# x 11 
inches). The significance of any printed publication or  other document 
which is self-authenticating within the meaning of Rule 902  of the 
Federal Rules of Evidence or w 1.671(d) and any patent shall be discussed 
in an affidavit or the explanation.  Any printed publication or other 
document  which is not self-authenticating shall be authenticated and 
discussed with  particularity in an affidavit. Upon a showing of good 
cause, an affidavit may  be based on information and belief. If an 
examiner finds an application to  be in condition for declaration of an 
interference, the examiner will consider  the evidence and explanation 
only to the extent of determining whether a basis  upon which the 
application would be entitled to a judgment relative to the  patentee is 
alleged and, if a basis is alleged, an interference may be declared. 
        [49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; 
revised,  60 FR 14488, Mar 17, 1995, effective Apr. 21, 1995] 


# 1.609       Preparation of interference papers by 

                        examiner. 

        When the examiner determines that an interference should be 
declared,  the examiner shall forward to the Board: 

        (a)   All relevant application and patent files and 

        (b)   A statement identifying: 

        (1)   The proposed count or counts and, if there is more than one 
count  proposed, explaining why the counts define different patentable 
inventions; 
        (2)   The claims of any application or patent which correspond to 
each  count, explaining why each claim designated as corresponding to a 
count is  directed to the same patentable invention as the count; 

        (3)   The claims in any application or patent which do not 
correspond  to each count and explaining why each claim designated as not 
corresponding  to any count is not directed to the same patentable 
invention as any count;  and 

        (4)   Whether an applicant or patentee is entitled to the benefit 
of  the filing date of an earlier application 




and, if so, sufficient information to identify the earlier application. 
        [49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; paras. 
(b)(1)-(b)(3) revised, 60 FR 14488, Mar 17, 1995; effective Apr. 21, 1995] 

# 1.610       Assignment of interference to administrative 
                     patent 


judge, time period for completing 
                                interference. 

        (a)   Each interference will be declared by an administrative 
patent  judge who may enter all interlocutory orders in the interference, 
except that  only the Board shall hear oral argument at final hearing, 
enter a decision  under ww 1.617, 1.640(e), 1.652, 1.656(i) or 1.658, or 
enter any other order  which terminates the interference. 

        (b)   As necessary, another administrative patent judge may act in 
 place of the one who declared the interference. At the discretion of the 
administrative  patent judge assigned to the interference, a panel 
consisting of two or more  members of the Board may enter interlocutory 
orders. 

        (c)   Unless otherwise provided in this subpart, times for taking 
action  by a party in the interference will be set on a case-by-case basis 
by the administrative  patent judge assigned to the interference. Times 
for taking action shall be  set and the administrative patent judge shall 
exercise control over the interference  such that the pendency of the 
interference before the Board does not normally  exceed two years. 

        (d)   An administrative patent judge may hold a conference with 
the  parties to consider simplification of any issues, the necessity or 
desirability  of amendments to counts, the possibility of obtaining 
admissions of fact and  genuineness of documents which will avoid 
unnecessary proof, any limitations  on the number of expert witnesses, the 
time and place for conducting a deposition 
(w 1.673(g)), and any other matter as may aid in the disposition of the 
interference.  After a conference, the administrative patent judge may 
enter any order which  may be appropriate. 

        (e)   The administrative patent judge may determine a proper 
course  of conduct in an interference for any situation not specifically 
covered by  this part. 

        [49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; 
revised,  60 FR 14488, Mar 17, 1995; effective Apr. 21, 1995] 


# 1.611       Declaration of interference. 


        (a)   Notice of declaration of an interference will be sent to 
each  party. 

        (b)   When a notice of declaration is returned to the Patent and 
Trademark  Office undelivered, or in any other circumstance where 
appropriate, an administrative  patent judge may send a copy of the notice 
to a patentee named in a patent  involved in an interference or the 
patentee's assignee of record in the Patent  and Trademark Office or order 
publication of an appropriate notice in the Official  Gazette. 

        (c)   The notice of declaration shall specify: 

        (1)   The name and residence of each party involved in the 
interference; 
        (2)   The name and address of record of any attorney or agent of 
record  in any application or patent involved in the interference; 

        (3)   The name of any assignee of record in the Patent and 
Trademark  Office; 

        (4)   The identity of any application or patent involved in the 
interference; 
        (5)   Where a party is accorded the benefit of the filing date of 
an  earlier application, the identity of the earlier application; 

        (6)   The count or counts and, if there is more than one count, 
the  examiner's explanation why the counts define different patentable 
inventions; 
        (7)   The claim or claims of any application or any patent which 
correspond  to each count; 

        (8)   The examiner's explanation as to why each claim designated 
as  corresponding to a count is directed to the same patentable invention 
as the  count and why each claim designated as not corresponding to any 
count is not  directed to the same patentable invention as any count; and 

        (9)   The order of the parties. 

        (d)   The notice of declaration may also specify the time for: 
        (1)   Filing a preliminary statement as provided in 
w 1.621(a); 

        (2)   Serving notice that a preliminary statement has been filed 
as  provided in w 1.621(b); and 

        (3)   Filing preliminary motions authorized by 
w 1.633. 

        (e)   Notice may be given in the Official Gazette that an 
interference  has been declared involving a patent. 

        [49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; 50 FR 23123, 
 May 31, 1985, paras. (b), (c)(6), (c)(7), (c)(8), (c)(9) & (d) revised, 
60  FR 14488, Mar 17, 1995; effective Apr. 21, 1995] 




# 1.612       Access to applications. 


        (a)   After an interference is declared, each party shall have 
access  to and may obtain copies of the files of any application set out 
in the notice  declaring the interference, except for affidavits filed 
under # 1.131 and any  evidence and explanation under # 1.608 filed 
separate from an amendment. A  party seeking access to any abandoned or 
pending application referred to in  the opponent's involved application or 
access to any pending application referred  to in the opponent's patent 
must file a motion under # 1.635. See # 1.11(e)  concerning public access 
to interference files. 

        (b)   After preliminary motions under w 1.633 are decided (w 
1.640(b)),  each party shall have access to and may obtain copies of any 
affidavit filed  under w 1.131 and 

any evidence and explanation filed under w 1.608 in any application set 
out  in the notice declaring the interference. 

        (c)   Any evidence and explanation filed under 
w 1.608 in the file of any application identified in the notice declaring 
the  interference shall be served when required by w 1.617(b). 

        (d)   The parties at any time may agree to exchange copies of 
papers  in the files of any application identified in the notice declaring 
the interference. 
        [49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; 50 FR 23124, 
 May 31, 1985; para. (a) amended 53 FR 23735, June 23, 1988, effective 
Sept.  12, 1988; para. (a) revised, 60 FR 14488, Mar 17, 1995, effective 
Apr. 21,  1995] 


# 1.613       Lead attorney, same attorney representing 

                        different parties in an interference, withdrawal 
     of  attorney or agent. 

        (a)   Each party may be required to designate one attorney or 
agent  of record as the lead attorney or agent. 

        (b)   The same attorney or agent or members of the same firm of 
attorneys  or agents may not represent two or more parties in an 
interference except as  may be permitted in this Chapter. 

        (c)   An administrative patent judge may make necessary inquiry to 
 determine whether an attorney or agent should be disqualified from 
representing  a party in 

an interference. If an administrative patent judge is of the opinion that 
an  attorney or agent should be disqualified, the administrative patent 
judge shall  refer the matter to the Commissioner. The Commissioner will 
make a final decision  as to whether any attorney or agent should be 
disqualified. 

        (d)   No attorney or agent of record in an interference may 
withdraw  as attorney or agent of record except with the approval of an 
administrative  patent judge and after reasonable notice to the party on 
whose behalf the attorney  or agent has appeared. A request to withdraw as 
attorney or agent of record  in an interference shall be made by motion (w 
1.635). 

        [49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; para. 
(c)  & (d) revised, 60 FR 14488, Mar 17, 1995, effective Apr. 21, 1995] 

# 1.614         Jurisdiction over interference. 


        (a)   The Board acquires jurisdiction over an interference when 
the  interference is declared under w 1.611. 

        (b)   When the interference is declared the inter- 
ference is a contested case within the meaning of 
35 U.S.C. 24. 

        (c)   The examiner shall have jurisdiction over any pending 
application  until the interference is declared.  An administrative patent 
judge may for  a limited purpose restore jurisdiction to the examiner over 
any application  involved in the interference. 

        [49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; para. 
(a)  & (c) revised, 60 FR 14488, Mar 17, 1995; effective Apr. 21, 1995] 

# 1.615       Suspension of ex parte prosecution. 


        (a)   When an interference is declared, ex parte prosecution of an 
 application involved in the interference is suspended. Amendments and 
other  papers related to the application received during pendency of the 
interference  will not be entered or considered in the interference 
without the consent of  an administrative patent judge. 

  (b)     Ex parte prosecution as to specified matters may be continued 
concurrently  with the interference with the consent of the administrative 
patent judge. 
        [49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; 50 FR 
23124,  May 31, 1985; revised, 60 FR 14488, Mar 17, 1995; effective Apr. 
21, 1995] 

# 1.616       Sanctions for failure to comply with rules or 

                        order or for taking and maintaining a frivolous 
                             position. 
        (a)   An administrative patent judge or the Board may impose an 
appropriate  sanction against a party who fails to comply with the 
regulations of this part  or any order entered by an administrative patent 
judge or the Board. An appropriate  sanction may include among others 
entry of an order: 



        (1)   Holding certain facts to have been established in the 
interference; 
        (2)   Precluding a party from filing a paper; 

        (3)   Precluding a party from presenting or contesting a 
particular  issue; 

        (4)   Precluding a party from requesting, obtaining, or opposing 
discovery; 

        (5)   Awarding compensatory expenses and/or compensatory attorney 
fees;  or 

        (6)   Granting judgment in the interference. 

        (b)   An administrative patent judge or the Board may impose a 
sanction,  including a sanction in the form of compensatory expenses 
and/or compensatory  attorney fees, against a party for taking and 
maintaining a frivolous position  in papers filed in the interference. 

        (c)   To the extent that an administrative patent judge or the 
Board  has authorized a party to compel the 

taking of testimony or the production of documents or things from an 
individual  or entity located in a NAFTA country or a WTO member country 
concerning knowledge,  use, or other activity relevant to proving or 
disproving a date of invention 
(w 1.671(h)), but the testimony, documents or things have not been 
produced  for use in the interference to the same extent as such 
information could be  made available in the United States, the 
administrative patent judge or the  Board shall draw such adverse 
inferences as may be appropriate under the circumstances,  or take such 
other action permitted by statute, rule, or regulation, in favor  of the 
party that requested the information in the interference, including 
imposition of appropriate sanctions under paragraph (a) of this section. 
        (d)   A party may file a motion (w 1.635) for entry of an order 
imposing  sanctions, the drawing of adverse inferences or other action 
under paragraph 
(a), (b) or (c) of this section. Where an administrative patent judge or 
the  Board on its own initiative determines that a sanction, adverse 
inference or  other action against a party may be appropriate under 
paragraph (a), (b) or 
(c) of this section, the administrative patent judge or the Board shall 
enter  an order for the party to show cause why the sanction, adverse 
inference or  other action is not appropriate. The Board shall take action 
in accordance  with the order unless, within 20 days after the date of the 
order, the party  files a paper which shows good cause why the sanction, 
adverse inference or  other action would not be appropriate. 

        [49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985, 50 FR 
23124,  May 31, 1985; revised, 60 FR 14488, Mar 17, 1995; effective Apr. 
21, 1995] 

# 1.617       Summary judgment against applicant. 


        (a)   An administrative patent judge shall review any evidence 
filed  by an applicant under w 1.608(b) to determine if the applicant is 
prima facie  entitled to a judgment relative to the patentee. If the 
administrative patent  judge determines that the evidence shows the 
applicant is prima facie entitled  to a judgment relative to the patentee, 
the interference shall proceed in the  normal manner under the regulations 
of this part. If in the opinion of the  administrative patent judge the 
evidence fails to show that the applicant is  prima facie entitled to a 
judgment relative to the patentee, the administrative  patent judge shall, 
concurrently with the notice declaring the interference,  enter an order 
stating the reasons for the opinion and directing the applicant,  within a 
time set in the order, to show cause why summary judgment should not  be 
entered against the applicant. 

        (b)   The applicant may file a response to the order, which may 
include  an appropriate preliminary motion under w 1.633(c), (f) or (g), 
and state any  reasons why summary judgment should not be entered. Any 
request by the applicant  for a hearing before the Board shall be made in 
the response. Additional evidence  shall not be presented by the applicant 
or considered by the Board unless the  applicant shows good cause why any 
additional evidence was not initially presented  with the evidence filed 
under # 1.608(b). At the time an applicant files a  response, the 
applicant shall serve a copy of any evidence filed under # 1.608(b)  and 
this paragraph. 

        (c)   If a response is not timely filed by the applicant, the 
Board  shall enter a final decision granting summary judgment against the 
applicant. 
        (d)   If a response is timely filed by the applicant, all 
opponents  may file a statement and may oppose any preliminary motion 
filed under # 1.633(c), 
(f) or (g) by the applicant within a time set by the administrative patent 
 judge. The statement may set forth views as to why summary judgment 
should  be granted against the applicant, but the statement shall be 
limited to discussing  why all the evidence presented by the applicant 
does not overcome the reasons  given by the administrative patent judge 
for issuing the order to show cause.  Except as required to oppose a 
motion under w 1.633(c), (f) or (g) 


by the applicant, evidence shall not be filed by any opponent. An opponent 
 may not request a hearing. 

        (e)   Within a time authorized by the administrative patent judge, 
 an applicant may file a reply to any statement or opposition filed by any 
opponent. 
        (f)     When more than two parties are involved in an 
interference,  all parties may participate in summary judgment proceedings 
under this section. 
        (g)   If a response by the applicant is timely filed, the 
administrative  patent judge or the Board shall decide whether the 
evidence submitted under 
(w 1.608(b) and any additional evidence properly submitted under 
paragraphs 
(b) and (e) of this section shows that the applicant is prima facie 
entitled  to a judgment relative to the patentee. If the applicant is not 
prima facie  entitled to a judgment relative to the patentee, the Board 
shall enter a final  decision granting summary judgment against the 
applicant. Otherwise, an interlocutory  order shall be entered authorizing 
the interference to proceed in the normal  manner under the regulations of 
this subpart. 

        (h)   Only an applicant who filed evidence under 
w 1.608(b) may request a hearing. If that applicant requests a hearing, 
the  Board may hold a hearing prior to entry of a decision under paragraph 
(g) of  this section. The administrative patent judge shall set a date and 
time for  the hearing. Unless otherwise ordered by the administrative 
patent judge or  the Board, the applicant and any opponent will each be 
entitled to no more  than 30 minutes of oral argument at the hearing. 

        [49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; 50 FR 
23124,  May 31, 1985; paras. (a), (b), (d), (e), (g), & (h) revised, 60 FR 
14488, Mar  17, 1995; effective Apr. 21, 1995] 


# 1.618       Return of unauthorized papers. 


        (a)   An administrative patent judge or the Board shall return to 
a  party any paper presented by the party when the filing of the paper is 
not  authorized by, or is not in compliance with the requirements of, this 
subpart.  Any paper returned will not thereafter be considered in the 
interference. A  party may be permitted to file a corrected paper under 
such conditions as may  be deemed appropriate by an administrative patent 
judge or the Board. 
        (b)   When presenting a paper in an interference, a party shall 
not  submit with the paper a copy of a paper previously filed in the 
interference. 
        [49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; 
amended  60 FR 14488-536, Mar 17, 1995] 


# 1.621       Preliminary statement, time for filing, notice of 
             filing. 

        (a)   Within the time set for filing preliminary motions under w 
1.633,  each party may file a preliminary statement. The preliminary 
statement may  be signed by any individual having knowledge of the facts 
recited therein or  by an attorney or agent of record. 

        (b)   When a party files a preliminary statement, the party shall 
also  simultaneously file and serve on all opponents in the interference a 
notice  stating that a preliminary statement has been filed. A copy of the 
preliminary  statement need not be served until ordered by the 
administrative patent judge. 

        [49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; 50 FR 
23124,  May 31, 1985; revised, 60 FR 14488, Mar 17, 1995; effective Apr. 
21, 1995] 

# 1.622       Preliminary statement, who made invention, 
     where 


invention made. 

        (a)   A party's preliminary statement must identify the inventor 
who  made the invention defined by each count and must state on behalf of 
the inventor  the facts required by paragraph (a) of ww 1.623, 1.624, and 
1.625 as may be  appropriate. When an inventor identified in the 
preliminary statement is not  an inventor named in the party's application 
or patent, the party shall file  a motion under w 1.634 to correct 
inventorship. 

        (b)   The preliminary statement shall state whether the invention 
was  made in the United States, a NAFTA country (and, if so, which NAFTA 
country),  a WTO member country (and if so, which WTO member country), or 
in a place other  than the United States, a NAFTA country, or a WTO member 
country. If made in  a place other than the United States, a NAFTA 
country, or a WTO member country,  the preliminary statement shall state 
whether the party is entitled to the  benefit of 35 U.S.C. 104(a)(2). 

        [49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; para. 
(b)  revised, 60 FR 14488, Mar 17, 1995; effective Apr. 21, 1995] 


# 1.623       Preliminary statement; invention made in 
             United 


States, a NAFTA country, or a WTO                       member country. 
        (a)   When the invention was made in the United States, a NAFTA 
country,  or a WTO member country, or a party is entitled to the benefit 
of 35 U.S.C.  104(a)(2), the preliminary statement must state the 
following facts as to the  invention defined by each count: 



        (1)   The date on which the first drawing of the invention was 
made. 
        (2)   The date on which the first written description of the 
invention  was made. 

        (3)   The date on which the invention was first disclosed by the 
inventor  to another person. 

        (4)   The date on which the invention was first conceived by the 
inventor. 
        (5)   The date on which the invention was first actually reduced 
to  practice. If the invention was not actually reduced to practice by or 
on behalf  of the inventor prior to the party's filing date, the 
preliminary statement  shall so state. 

        (6)   The date after the inventor's conception of the invention 
when  active exercise of reasonable diligence toward reducing the 
invention to practice  began. 

        (b)   If a party intends to prove derivation, the preliminary 
statement  must also comply with w 1.625. 

        (c)   When a party alleges under paragraph (a)(1) of this section 
that  a drawing was made, a copy of the first drawing shall be filed with 
and identified  in the preliminary statement. When a party alleges under 
paragraph (a)(2) of  this section that a written description of the 
invention was made, a copy of  the first written description shall be 
filed with and identified in the preliminary  statement. See w 1.628(b) 
when a copy of the first drawing or written description  cannot be filed 
with the preliminary statement. 

        [49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; para. 
(a)  revised, 60 FR 14488, Mar 17, 1995; effective Apr. 21, 1995] 


# 1.624       Preliminary statement; invention made in a 
     place 


other than the United States, a NAFTA 
country,  or a WTO member country. 

        (a)   When the invention was made in a place other than the United 
 States, a NAFTA country, or a WTO member country and a party intends to 
rely  on introduction of the invention into the United States, a NAFTA 
country, or  a WTO member country, the preliminary statement must state 
the following facts  as to the invention defined by each count: 

        (1)   The date on which a drawing of the invention was first 
introduced  into the United States, a NAFTA country, or a WTO member 
country. 
        (2)   The date on which a written description of the invention was 
 first introduced into the United States, a NAFTA country, or a WTO member 
country. 
        (3)   The date on which the invention was first disclosed to 
another  person in the United States, a NAFTA country, or a WTO member 
country. 
        (4)   The date on which the inventor's conception of the invention 
 was first introduced into the United States, a NAFTA country, or a WTO 
member  country. 

        (5)   The date on which an actual reduction to practice of the 
invention  was first introduced into the United States, a NAFTA country, 
or a WTO member  country. If an actual reduction to practice of the 
invention was not introduced  into the United States, a NAFTA country, or 
a WTO member country, the preliminary  amendment shall so state. 

        (6)   The date after introduction of the inventor's conception 
into  the United States, a NAFTA country, or a WTO member country when 
active exercise  of reasonable diligence in the United States, a NAFTA 
country, or a WTO member  country toward reducing the invention to 
practice began. 

        (b)   If a party intends to prove derivation, the preliminary 
statement  must also comply with w 1.625. 

        (c)   When a party alleges under paragraph (a)(1) of this section 
that  a drawing was introduced into the United States, a NAFTA country, or 
a WTO  member country, a copy of that drawing shall be filed with and 
identified in  the preliminary statement. When a party alleges under 
paragraph (a)(2) of this  section that a written description of the 
invention was introduced into the  United States, a NAFTA country, or a 
WTO member country, a copy of that written  description shall be filed 
with and identified in the preliminary statement.  See 
w 1.628(b) when a copy of the first drawing or first written description 
introduced  in the United States, a NAFTA country, or a WTO member country 
cannot be filed  with the preliminary statement. 

        [49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; 50 FR 
23124,  May 31, 1985; para. (a) & (c) revised, 60 FR 14488, Mar 17, 1995; 
effective  Apr. 21, 1995] 


# 1.625       Preliminary statement; derivation by an 
             opponent 

        (a)   When a party intends to prove derivation by an opponent from 
 the party, the preliminary statement must state the following as to the 
invention  defined by each count: 

        (1)   The name of the opponent. 

        (2)   The date on which the first drawing of the invention was 
made. 


        (3)   The date on which the first written description of the 
invention  was made. 

        (4)   The date on which the invention was first disclosed by the 
inventor  to another person. 

        (5)   The date on which the invention was first conceived by the 
inventor. 
        (6)   The date on which the invention was first communicated to 
the  opponent. 

        (b)   If a party intends to prove priority, the preliminary 
statement  must also comply with w 1.623 or w 1.624. 

        (c)   When a party alleges under paragraph (a)(2) of this section 
that  a drawing was made, a copy of the first drawing shall be filed with 
and identified  in the preliminary statement. When a party alleges under 
paragraph (a)(3) of  this section that a written description of the 
invention was made, a copy of  the first written description shall be 
filed with and identified in the preliminary  statement. See w 1.628(b) 
when a first drawing or first written description  cannot be filed with 
the preliminary statement. 

        [49 FR 48416, Dec. 12, 1984, added effective Feb. 11,1985; para. 
(a)  revised, 60 FR 14488, Mar 17, 1995; effective Apr. 21, 1995] 


# 1.626       Preliminary statement; earlier application. 


        When a party does not intend to present evidence to prove a 
conception  or an actual reduction to practice and the party intends to 
rely solely on  the filing date of an earlier filed application to prove a 
constructive reduction  to practice, the preliminary statement may so 
state and identify the earlier  filed application with particularity. 

        [49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; 
revised,  60 FR 14488, Mar 17, 1995; effective Apr. 21, 1995] 


# 1.627       Preliminary statement; sealing before filing, 
                     opening 


of statement. 

        (a)   The preliminary statement and copies of any drawing or 
written  description shall be filed in a sealed envelope bearing only the 
name of the  party filing the statement and the style (e.g., Jones v. 
Smith) and number  of the interference. The sealed envelope should contain 
only the preliminary  statement and copies of any drawing or written 
description. If the preliminary  statement is filed through the mail, the 
sealed envelope should be enclosed  in an outer envelope addressed to the 
Commissioner of Patents and Trademarks  in accordance with w 1.1(e). 

        (b)   A preliminary statement may be opened only at the direction 
of  an administrative patent judge. 

        [49 FR48416, Dec. 12, 1984, added effective Feb. 11, 1985; para. 
(b)  revised, 60 FR 14488, Mar 17, 1995; effective Apr. 21, 1995] 


# 1.628       Preliminary statement; correction of error. 


        (a)   A material error arising through inadvertence or mistake in 
connection  with a preliminary statement or drawings or a written 
description submitted  therewith or 

omitted therefrom, may be corrected by a motion 
(w 1.635) for leave to file a corrected statement. The motion shall be 
supported  by an affidavit stating the date the error was first 
discovered, shall be accompanied  by the corrected statement and shall be 
filed as soon as practical after discovery  of the error. If filed on or 
after the date set by the administrative patent  judge for service of 
preliminary statements, the motion shall also show that  correction of the 
error is essential to the interest of justice. 

        (b)   When a party cannot attach a copy of a drawing or a written 
description  to the party's preliminary statement as required by w 
1.623(c), w 1.624(c),  or 
w 1.625(c), the party shall show good cause and explain in the preliminary 
 statement why a copy of the drawing or written description cannot be 
attached  to the preliminary statement and shall attach to the preliminary 
statement  the earliest drawing or written description made in or 
introduced into the  United States, a NAFTA country, or a WTO member 
country which is available.  The party shall file a motion (w 1.635) to 
amend its preliminary statement  promptly after the first drawing, first 
written description, or drawing or  written description first introduced 
into the United States, a NAFTA country,  or a WTO member country becomes 
available. A copy of the drawing or written  description may be obtained, 
where appropriate, by a motion (w 1.635) for additional  discovery under w 
1.687 or during a testimony period. 

        [49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; 
revised,  60 FR 14488, Mar 17, 1995; effective Apr. 21, 1995] 


# 1.629       Effect of preliminary statement. 


        (a)   A party shall be strictly held to any date alleged in the 
preliminary  statement. Doubts as to definiteness or sufficiency of any 
allegation in a  preliminary statement or compliance with formal 
requirements will be resolved  against the party filing the statement by 
restricting the party to its effective  filing date or to the 




latest date of a period alleged in the preliminary statement, as may be 
appropriate.  A party may not correct a preliminary statement except as 
provided by w 1.628. 

        (b)   Evidence which shows that an act alleged in the preliminary 
statement  occurred prior to the date alleged in the statement shall 
establish only that  the act occurred as early as the date alleged in the 
statement. 

        (c)   If a party does not file a preliminary statement, the party: 
        (1)   Shall be restricted to the party's effective filing date and 
        (2)   Will not be permitted to prove that: 

        (i)   The party made the invention prior to the party's filing 
date  or 

        (ii)    Any opponent derived the invention from the party. 
        (d)   If a party files a preliminary statement which contains an 
allegation  of a date of first drawing or first written description and 
the party does  not file a copy of the first drawing or written 
description with the preliminary  statement as required by w 1.623(c), w 
1.624(c), or 
w 1.625(c), the party will be restricted to the party's effective filing 
date  as to that allegation unless the party complies with w 1.628(b). The 
content  of any drawing or written description submitted with a 
preliminary statement  will not normally be evaluated or considered by the 
Board. 

        (e)   A preliminary statement shall not be used as evidence on 
behalf  of the party filing the statement. 

        [49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; paras. 
(a), (c)(1) & (d) revised, 60 FR 14488, Mar 17, 1995; effective Apr. 21, 
1995] 

# 1.630       Reliance on earlier application. 


        A party shall not be entitled to rely on the filing date of an 
earlier  filed application unless the earlier application is identified (w 
1.611(c)(5))  in the notice declaring the interference or the party files 
a preliminary motion  under w 1.633 seeking the benefit of the filing date 
of the earlier application. 
        [49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; 
revised,  60 FR 14488, Mar 17, 1995; effective Apr. 21, 1995] 


# 1.631       Access to preliminary statement, service of 

                        preliminary statement. 

        (a)   Unless otherwise ordered by an administrative patent judge, 
concurrently  with entry of a decision on preliminary motions filed under 
w 1.633 any preliminary  statement filed under w 1.621(a) shall be opened 
to inspection by the senior  party and any junior party who filed a 
preliminary statement. Within a time  set by the administrative patent 
judge, a party shall serve a copy of its preliminary  statement on each 
opponent who served a notice under w 1.621(b). 

        (b)   A junior party who does not file a preliminary statement 
shall  not have access to the preliminary statement of any other party. 

        (c)   If an interference is terminated before the preliminary 
statements  have been opened, the preliminary statements will remain 
sealed and will be  returned to the respective parties who submitted the 
statements. 

        [49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; 50 FR 
23124, May 31, 1985; revised, 60 FR 14488, Mar 17, 1995; effective Apr. 
21, 1995] 


# 1.632       Notice of intent to argue abandonment, 

                        suppression or concealment by opponent. 

        A notice shall be filed by a party who intends to argue that an 
opponent  has abandoned, suppressed, or concealed an actual reduction to 
practice (35  U.S.C. 102(g)). A party will not be permitted to argue 
abandonment, suppression,  or concealment by an opponent unless the notice 
is timely filed. Unless authorized  otherwise by an administrative patent 
judge, a notice is timely when filed  within ten (10) days after the close 
of the testimony-in-chief of the opponent. 

        [49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; 
revised,  60 FR 14488, Mar 17, 1995; effective Apr. 21, 1995] 


# 1.633       Preliminary motions. 


        A party may file the following preliminary motions: 

        (a)   A motion for judgment against an opponent's claim designated 
 to correspond to a count on the ground that the claim is not patentable 
to  the opponent. The motion shall separately address each claim alleged 
to be  unpatentable. In deciding an issue raised in a motion filed under 
this paragraph 
(a), a claim will be construed in light of the specification of the 
application  or patent in which it appears. A motion under this paragraph 
shall not be based  on: 

        (1)   Priority of invention by the moving party as against any 
opponent  or 

        (2)   Derivation of the invention by an opponent from the moving 
party.  See w 1.637(a). 

        (b)   A motion for judgment on the ground that there is no 
interference-in-fact.  A motion under this paragraph is proper only if the 
interference involves a  design 



application or patent or a plant application or patent or no claim of a 
party  which corresponds to a count is identical to any claim of an 
opponent which  corresponds to that count. See w 1.637(a). When claims of 
different parties  are presented in "means plus function" format, it may 
be possible for the claims  of the different parties not to define the 
same patentable invention even though  the claims contain the same literal 
wording. 

        (c)   A motion to redefine the interfering subject matter by 
        (1)   adding or substituting a count, 

        (2)   amending an application claim corresponding to a count or 
adding  a claim in the moving party's application to be designated to 
correspond to  a count, 

        (3)   designating an application or patent claim to correspond to 
a  count, 

        (4)   designating an application or patent claim as not 
corresponding  to a count, or 

        (5)   requiring an opponent who is an applicant to add a claim and 
 to designate the claim to correspond to a count. See w 1.637(a) and (c). 
        (d)   A motion to substitute a different application owned by a 
party  for an application involved in the interference. See w 1.637(a) and 
(d). 
        (e)   A motion to declare an additional interference 

        (1)   between an additional application not involved in the 
interference  and owned by a party and an opponent's application or patent 
involved in the  interference or 

        (2)   when an interference involves three or more parties, between 
 less than all applications and patents involved in the interference. See 
w  1.637 (a) and (e). 

        (f)   A motion to be accorded the benefit of the fil- 
ing date of an earlier filed application. See # 1.637 (a) 
and (f). 

        (g)   A motion to attack the benefit accorded an opponent in the 
notice  declaring the interference of the filing date of an earlier filed 
application.  See # 1.637 (a) and (g). 

        (h)   When a patent is involved in an interference and the 
patentee  has on file or files an application for reissue under w 1.171, a 
motion to  add the application for reissue to the interference. See # 
1.637(a) and (h). 

        (i)   When a motion is filed under paragraph (a), (b), or (g) of 
this  section, an opponent, in addition to opposing the motion, may file a 
motion  to redefine the interfering subject matter under paragraph (c) of 
this section,  a motion to substitute a different application under 
paragraph (d) of this  section, or a motion to add a reissue application 
to the interference under  paragraph (h) of this section. 

        (j)   When a motion is filed under paragraph (c)(1) of this 
section  an opponent, in addition to opposing the motion, may file a 
motion for benefit  under paragraph (f) of this section as to the count to 
be added or substituted. 
        [49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; 50 FR 
23124, May 31, 1985; paras. (a), (b), (f), (g), & (i) revised, 60 FR 
14488, Mar 17, 1995; effective Apr. 21, 1995] 


# 1.634       Motion to correct inventorship. 


        A party may file a motion to (a) amend its application involved in 
 an interference to correct inventorship as provided by w 1.48 or (b) 
correct  inventorship of its patent involved in an interference as 
provided in w 1.324. See w 1.637(a). 

        [49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; 
revised,  60 FR 14488, Mar 17, 1995; effective Apr. 21, 1995] 


# 1.635       Miscellaneous motions. 


        A party seeking entry of an order relating to any matter other 
than  a matter which may be raised under 
ww 1.633 or 1.634 may file a motion requesting entry of the order. See w 
1.637 
(a) and (b). 

        [49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; 
revised,  60 FR 14488, Mar 17, 1995; effective Apr. 21, 1995] 


# 1.636       Motions, time for filing. 


        (a)   A preliminary motion under # 1.633 (a) through (h) shall be 
filed  within a time period set by an administrative patent judge. 

        (b)   A preliminary motion under # 1.633 (i) or (j) shall be filed 
 within 20 days of the service of the preliminary motion under # 1.633 
(a), 
(b), (c)(1), or (g) unless otherwise ordered by an administrative patent 
judge. 
        (c)   A motion under # 1.634 shall be diligently filed after an 
error  is discovered in the inventorship of an application or patent 
involved in an  interference unless otherwise ordered by an administrative 
                    Manual of Patent Examining Procedure 

Appendix R    Patent Rules 

ÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄ 
patent judge. 
        (d)   A motion under # 1.635 shall be filed as specified in this 
subpart  or when appropriate unless otherwise ordered by an administrative 
patent judge. 
        [49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; 50 FR 
23124,  May 31, 1985; revised, 60 FR 14488, Mar 17, 1995; effective Apr. 
21, 1995] 



# 1.637       Content of motions. 


        (a)   A party filing a motion has the burden of proof to show that 
 it is entitled to the relief sought in the motion. Each motion shall 
include  a statement of the precise relief requested, a statement of the 
material facts  in support of the motion, in numbered paragraphs, and a 
full statement of the  reasons why the relief requested should be granted. 
If a party files a motion  for judgment under w 1.633(a) against an 
opponent based on the ground of unpatentability  over prior art, and the 
dates of the cited prior art are such that the prior  art appears to be 
applicable to the party, it will be presumed, without regard  to the dates 
alleged in the preliminary statement of the party, that the cited  prior 
art is applicable to the party unless there is included with the motion 
an explanation, and evidence if appropriate, as to why the prior art does 
not  apply to the party. 

        (b)   Unless otherwise ordered by an administrative patent judge 
or  the Board, a motion under w 1.635 shall contain a certificate by the 
moving  party stating that the moving party has conferred with all 
opponents in an  effort in good faith to resolve by agreement the issues 
raised by the motion.  The certificate shall indicate whether any opponent 
plans to oppose the motion.  The provisions of this paragraph do not apply 
to a motion to suppress evidence 
(w 1.656(h)). 

        (c)   A preliminary motion under w 1.633(c) shall explain why the 
interfering  subject matter should be redefined. 

        (1)   A preliminary motion seeking to add or substitute a count 
shall: 

        (i)   Propose each count to be added or substituted. 

        (ii)    When the moving party is an applicant, show the 
patentability  to the applicant of all claims in, or proposed to be added 
to, the party's  application which correspond to each proposed count and 
apply the terms of  the claims to the disclosure of the party's 
application; when necessary a moving  party applicant shall file with the 
motion an amendment adding any proposed  claim to the application. 

        (iii)     Identify all claims in an opponent's application which 
should  be designated to correspond to each proposed count; if an 
opponent's application  does not contain such a claim, the moving party 
shall propose a claim to be  added to the opponent's application. The 
moving party shall show the patentability  of any proposed claims to the 
opponent and apply the terms of the claims to  the disclosure of the 
opponent's application. 

        (iv)    Designate the claims of any patent involved in the 
interference  which define the same patentable invention as each proposed 
count. 
        (v)   Show that each proposed count defines a separate patentable 
invention  from every other count proposed to remain in the interference. 

        (vi)    Be accompanied by a motion under 
w 1.633(f) requesting the benefit of the filing date of any earlier filed 
application,  if benefit of the earlier filed application is desired with 
respect to a proposed  count. 

        (vii)     If an opponent is accorded the benefit of the filing 
date  of an earlier filed application in the notice of declaration of the 
interference,  show why the opponent is not entitled to benefit of the 
earlier filed application  with respect to the proposed count. Otherwise, 
the opponent will be presumed  to be entitled to the benefit of the 
earlier filed application with respect  to the proposed count. 

        (2)   A preliminary motion seeking to amend an application claim 
corresponding  to a count or adding a claim to be designated to correspond 
to a count shall: 
        (i)   Propose an amended or added claim. 

        (ii)    Show that the claim proposed to be amended or added 
defines  the same patentable invention as the count. 

        (iii)     Show the patentability to the applicant of each claim 
proposed  to be amended or added and apply the terms of the claim proposed 
to be amended  or added to the disclosure of the application; when 
necessary a moving party  applicant shall file with the motion a proposed 
amendment to the application  amending the claim corresponding to the 
count or adding the proposed additional  claim to the application. 

        (3)   A preliminary motion seeking to designate an application or 
patent  claim to correspond to a count shall: 

        (i)   Identify the claim and the count. 

        (ii)    Show the claim defines the same patentable invention as 
another  claim whose designation as corresponding to the count the moving 
party does  not dispute. 

  (4)     A preliminary motion seeking to designate an application or 
patent  claim as not corresponding to a count shall: 

        (i)   Identify the claim and the count. 



        (ii)    Show that the claim does not define the same patentable 
invention  as any other claim whose designation in the notice declaring 
the interference  as corresponding to the count the party does not 
dispute. 

        (5)   A preliminary motion seeking to require an opponent who is 
an  applicant to add a claim and designate the claim as corresponding to a 
count  shall: 

                (i)   Propose a claim to be added by the opponent. 
        (ii)    Show the patentability to the opponent of the claim and 
apply  the terms of the claim to the disclosure of the opponent's 
application. 
        (iii)     Identify the count to which the claim shall  be 
designated  to correspond. 

        (iv)    Show the claim defines the same patentable invention as 
the  count to which it will be designated to correspond. 

        (d)   A preliminary motion under w 1.633(d) to substitute a 
different  application of the moving party shall: 

        (1)   Identify the different application. 

        (2)   Certify that a complete copy of the file of the different 
application,  except for documents filed under 
w 1.131 or w 1.608, has been served on all opponents. 

        (3)   Show the patentability to the applicant of all claims in, or 
 proposed to be added to, the different application which correspond to 
each  count and apply the terms of the claims to the disclosure of the 
different  application; when necessary the applicant shall file with the 
motion an amendment  adding a claim to the different application. 

        (e)   A preliminary motion to declare an additional interference 
under  w 1.633(e) shall explain why an additional interference is 
necessary. 
        (1)   When the preliminary motion seeks an additional interference 
 under w 1.633(e)(1), the motion shall: 

        (i)   Identify the additional application. 

        (ii)    Certify that a complete copy of the file of the additional 
 application, except for documents filed under w 1.131 or w 1.608, has 
been  served on all opponents. 

        (iii)     Propose a count for the additional interference. 
        (iv)    Show the patentability to the applicant of all claims in, 
or  proposed to be added to, the additional application which correspond 
to each  proposed count for the additional interference and apply the 
terms of the claims  to the disclosure of the additional application; when 
necessary the applicant  shall file with the motion an amendment adding 
any claim to the additional  application. 

                (v)   When the opponent is an applicant, show the 
patentability  to the opponent of any claims in, or proposed to be added 
to, the opponent's  application which correspond to the proposed count and 
apply the terms of the  claims to the disclosure of the opponent's 
application. 

        (vi)    Identify all claims in the opponent's application or 
patent  which should be designated to correspond to each proposed count; 
if the opponent's  application does not contain any such claim, the motion 
shall propose a claim  to be added to the opponent's application. 

        (vii)     Show that each proposed count for the additional 
interference  defines a separate patentable invention from all counts of 
the interference  in which the motion is filed. 

        (viii)      Be accompanied by a motion under 
w 1.633(f) requesting the benefit of the filing date of an earlier filed 
application,  if benefit is desired with respect to a proposed count. 


        (ix)    If an opponent is accorded the benefit of the filing date 
of  an earlier filed application in the notice of declaration of the 
interference,  show why the opponent is not also entitled to benefit of 
the earlier filed  application with respect to the proposed count. 
Otherwise, the opponent will  be presumed to be entitled to the benefit of 
the earlier filed application  with respect to the proposed count. 

        (2)   When the preliminary motion seeks an additional interference 
 under w 1.633(e)(2), the motion shall: 

        (i)   Identify any application or patent to be involved in the 
additional  interference. 

        (ii)    Propose a count for the additional interference. 

        (iii)     When the moving party is an applicant, show the 
patentability  to the applicant of all claims in, or proposed to be added 
to, the party's  application which correspond to each proposed count and 
apply the terms of  the claims to the disclosure of the party's 
application; when necessary a moving  party applicant shall file with the 
motion an amendment adding any proposed  claim to the application. 

        (iv)    Identify all claims in any opponent's application which 
should  be designated to correspond to 




each proposed count; if an opponent's application does not contain such a 
claim,  the moving party shall propose  a claim to be added to the 
opponent's application.  The moving party shall show the patentability of 
any proposed claim to the  opponent and apply the terms of the claim to 
the disclosure of the opponent's  application. 

        (v)   Designate the claims of any patent involved in the 
interference  which define the same patentable invention as each proposed 
count. 
        (vi)    Show that each proposed count for the additional 
interference  defines a separate patentable invention from all counts in 
the interference  in which the motion is filed. 

        (vii)     Be accompanied by a motion under 
w 1.633(f) requesting the benefit of the filing date of an earlier filed 
application,  if benefit is desired with respect to a proposed count. 

  (viii)        If an opponent is accorded the benefit of the filing date 
of  an earlier filed application in the notice of declaration of the 
interference,  show why the opponent is not also entitled to benefit of 
the earlier filed  application with respect to the proposed count. 
Otherwise, the opponent will  be presumed to be entitled to the benefit of 
the earlier filed application  with respect to the proposed count. 

        (f)   A preliminary motion for benefit under 
w 1.633(f) shall: 

        (1)   Identify the earlier application. 

        (2)   When the earlier application is an application filed in the 
United  States, certify that a complete copy of the file of the earlier 
application,  except for documents filed under w 1.131 or w 1.608, has 
been served on all  opponents. When the earlier application is an 
application filed in a foreign  country, certify that a copy of the 
application has been served on all opponents.  If the earlier filed 
application is not in English, the requirements of w 1.647  must also be met. 

                (3) Show that the earlier application constitutes a 
constructive  reduction to practice of each count. 

        (g)   A preliminary motion to attack benefit under 
w 1.633(g) shall explain, as to each count, why the opponent should not be 
 accorded the benefit of the filing date of the earlier application. 
        (h)   A preliminary motion to add an application for reissue under 
 w 1.633(h) shall: 

        (1)   Identify the application for reissue. 

        (2)   Certify that a complete copy of the file of the application 
for  reissue has been served on all opponents. 

        (3)   Show the patentability of all claims in, or proposed to be 
added  to, the application for reissue which correspond to each count and 
apply the  terms of 


the claims to the disclosure of the application for reissue; 

when necessary a moving applicant for reissue shall file with the motion 
an  amendment adding any proposed claim to the application for reissue. 
        (4)   Be accompanied by a motion under w 1.633(f) requesting the 
benefit  of the filing date of any earlier filed application, if benefit 
is desired. 


        [49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; 50 FR 
23124, May 31, 1985; para. (e)(1)(vi) revised 53 FR 23735, June 23, 1988, 
effective Sept. 12, 1988; para. (a) revised, 58 FR 49432, Sept. 23, 1993, 
effective  Oct. 25, 1993; paras. (a), (b), (c)(1)(v), (c)(1)(vi), 
(c)(20(ii), (c)(2)(iii), 
(c)(3)(ii), (c)(4)(ii), (d0, (e)(1)(viii), (e)(2)(vii), (f)(2), & (h)(4) 
revised,  paras. (c)(2)(iv), (c)(3)(iii), & (d)(4) removed, paras. 
(c)(1)(vii), (e)(1)(ix),  & (e)(2)(viii) added, 60 FR 14488. Mar 17, 1995; 
effective Apr. 21, 1995] 

# 1.638       Opposition and reply; time for filing opposition 
     and 


reply. 

        (a)   Unless otherwise ordered by an administrative patent judge, 
any  opposition to any motion shall be filed within 20 days after service 
of the  motion. An opposition shall identify any material fact set forth 
in the motion  which is in dispute and include an argument why the relief 
requested in the  motion should be denied. 

        (b)   Unless otherwise ordered by an administrative patent judge, 
any  reply shall be filed within 15 days after service of the opposition. 
A reply  shall be directed only to new points raised in the opposition. 
        [49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; 
revised,  60 FR 14488, Mar 17, 1995; effective Apr. 21, 1995] 


# 1.639       Evidence in support of motion, opposition, or 

                        reply. 

        (a)   Except as provided in paragraphs (c) through (g) of this 
section,  proof of any material fact alleged in a motion, opposition, or 
reply must be  filed and served with the motion, opposition, or reply 
unless the proof relied  upon is part of the interference file or the file 
of any patent or application  involved in the interference or any earlier 
application filed in the United  States of which a party has been accorded 
or seeks to be accorded benefit. 




        (b)   Proof may be in the form of patents, printed publications, 
and  affidavits. The pages of any affidavits filed under this paragraph 
shall, to  the extent possible, be given sequential numbers, which shall 
also serve as  the record page numbers for the affidavits in the event 
they are included in  the party's record (w 1.653).  Any patents and 
printed publications submitted  under this paragraph and any exhibits 
identified in affidavits submitted under  this paragraph shall, to the 
extent possible, be given sequential exhibit numbers,  which shall also 
serve as the exhibit numbers in the event the patents, printed 
publications and exhibits are filed with the party's record (w 1.653). 
        (c)   If a party believes that additional evidence in 
the form of testimony that is unavailable to the party 
is necessary to support or oppose a preliminary motion under w 1.633 or a 
motion  to correct inventorship und- 
er w 1.634, the party shall describe the nature of 
any proposed testimony as specified in paragraphs 
(d) through (g) of this section. If the administra- 
tive patent judge finds that testimony is needed to decide the motion, the 
 administrative patent judge may grant appropriate interlocutory relief 
and  enter an order authorizing the taking of testimony and deferring a 
decision  on the motion to final hearing. 

        (d)   When additional evidence in the form of expert-witness 
testimony  is needed in support of or opposition to a preliminary motion, 
the moving party  or opponent should: 

        (1)   Identify the person whom it expects to use as an expert; 
        (2)   State the field in which the person is alleged to be an 
expert;  and 

        (3)   State: 

                (i)   the subject matter on which the person is expected 
to  testify; 

        (ii)    the facts and opinions to which the person is expected to 
testify;  and 

        (iii)     a summary of the grounds and basis for each opinion. 
        (e)   When additional evidence in the form of fact-witness 
testimony  is necessary, state the facts to which the witness is expected 
to testify. 

        (f)   If the opponent is to be called, or if evidence in the 
possession  of the opponent is necessary, explain the evidence sought, 
what it will show,  and why it is needed. 

        (g)   When inter partes tests are expected to be performed, 
describe  the tests stating what they will be expected to show. 

        [49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; para. 
(c)  revised, 58 FR 49432, Sept. 23, 1993, effective Oct. 25, 1993; paras. 
(d)-(g)  added, 58 FR 49432, Sept. 23, 1993, effective Oct. 25, 1993; 
paras. (a)-(d)(1)  revised, 60 FR 14488, Mar 17, 1995; effective Apr. 21, 1995 
] 


# 1.640       Motions, hearing and decision, redeclaration 
             of 


interference, order to show cause. 

        (a)   A hearing on a motion may be held in the discretion of the 
administrative  patent judge. The administrative patent judge shall set 
the date and time 

for any hearing. The length of oral argument at a hearing on a motion is a 
 matter within the discretion of the administrative patent judge. An 
administrative  patent judge may direct that a hearing take place by 
telephone. 

        (b)   Unless an administrative patent judge or the Board is of the 
 opinion that an earlier decision on a preliminary motion would materially 
advance  the resolution of the interference, decision on a preliminary 
motion shall  be deferred to final hearing. Motions not deferred to final 
hearing will be  decided by an administrative patent judge. An 
administrative patent judge may  consult with an examiner in deciding 
motions. An administrative patent judge  may take up motions for decision 
in any order, may grant, deny, or dismiss  any motion, and may take such 
other action which will secure the just, speedy,  and inexpensive 
determination of the interference. A matter raised by a party  in support 
of or in opposition to a motion that is deferred to final hearing  will 
not be entitled to consideration at final hearing unless the matter is 
raised in the party's brief at final hearing. If the administrative patent 
 judge determines that the interference shall proceed to final hearing on 
the  issue of priority or derivation, a time shall be set for each party 
to file  a paper identifying any decisions on motions or on matters raised 
sua sponte  by the administrative patent judge that the party wishes to 
have reviewed at  final hearing as well as identifying any deferred 
motions that the party wishes  to have considered at final hearing. Any 
evidence that a party wishes to have  considered with respect to the 
decisions and deferred motions identified by  the party or by an opponent 
for consideration or review at final hearing shall  be filed or, if 
appropriate, noticed under w 1.671(e) during the testimony-in-chief 
period of the party. 



        (1)   When appropriate after the time expires for filing replies 
to  oppositions to preliminary motions, the administrative patent judge 
will set  a time for filing any amendment to an application involved in 
the interference  and for filing a supplemental preliminary statement as 
to any new counts which  may become involved in the interference if a 
preliminary motion to amend or  substitute a count has been filed. Failure 
or refusal of a party to timely  present an amendment required by an 
administrative patent judge shall be taken  without further action as a 
disclaimer by that party of the invention involved.  A supplemental 
preliminary statement shall meet the requirements specified  in ww 1.623, 
1.624, 1.625, or 1.626, but need not be filed if a party states  that it 
intends to rely on a preliminary statement previously filed under w 
1.621(a). At an appropriate time in the interference, and when necessary, 
an  order will be entered redeclaring the interference. 

        (2)   After the time expires for filing preliminary motions, a 
further  preliminary motion under w 1.633 will not be considered except as 
provided  by w 1.645(b). 

        (c)   When a decision on any motion under ww 1.633, 1.634, or 
1.635  or on any matter raised sua sponte by an administrative patent 
judge is entered  which does not result in the issuance of an order to 
show cause under paragraph 
(d) of this section, a party may file a request for reconsideration within 
 14 days after the date of the decision. The request for reconsideration 
shall  be filed and served by hand or Express Mail. The filing of a 
request for reconsideration  will not stay any time period set by the 
decision. The request for reconsideration  shall specify with 
particularity the points believed to have been misapprehended  or 
overlooked in rendering the decision. No opposition to a request for 
reconsideration  shall be filed unless requested by an administrative 
patent judge or the Board.  A decision ordinarily will not be modified 
unless an opposition has been requested  by an administrative patent judge 
or the Board. The request for reconsideration  normally will be acted on 
by the administrative patent judge or the panel of  the Board which issued 
the decision. 

        (d)   An administrative patent judge may issue an order to show 
cause  why judgment should not be entered against a party when: 

        (1)   A decision on a motion or on a matter raised sua sponte by 
an  administrative patent judge is entered which is dispositive of the 
interference  against the party as to any count; 

        (2)   The party is a junior party who fails to file a preliminary 
statement;  or 

        (3)   The party is a junior party whose preliminary statement 
fails  to overcome the effective filing date of another party. 

        (e)   When an order to show cause is issued under paragraph (d) of 
 this section, the Board shall enter judgment in accordance with the order 
unless,  within 
20 days after the date of the order, the party against whom the order 
issued  files a paper which shows good cause why judgment should not be 
entered in  accordance with the order. 

        (1)   If the order was issued under paragraph (d)(1) of this 
section,  the paper may: 

        (i)   Request that final hearing be set to review any decision 
which  is the basis for the order as well as any other decision of the 
administrative  patent judge that the party wishes to have reviewed by the 
Board at final hearing  or 

        (ii)    Fully explain why judgment should not be entered. 
        (2)   Any opponent may file a response to the paper within 20 days 
 of the date of service of the paper. If the order was issued under 
paragraph 
(d)(1) of this section and the party's paper includes a request for final 
hearing,  the opponent's response must identify every decision of the 
administrative  patent judge that the opponent wishes to have reviewed by 
the Board at a final  hearing. If the order was issued under paragraph 
(d)(1) of this section and  the paper does not include a request for final 
hearing, the opponent's response  may include a request for final hearing, 
which must identify every decision  of the administrative patent judge 
that the opponent wishes to have reviewed  by the Board at a final 
hearing. Where only the opponent's response includes  a request for a 
final hearing, the party filing the paper shall, within 14  days from the 
date of service of the opponent's response, file a reply identifying  any 
other decision of the administrative patent judge that the party wishes 
to have reviewed by the Board at a final hearing. 

        (3)   The paper or the response should be accompanied by a motion 
(w  1.635) requesting a testimony period if either party wishes to 
introduce any  evidence to be considered at final hearing (w 1.671). Any 
evidence that a 


party wishes to have considered with respect to the decisions and deferred 
 motions identified for consideration or review at final hearing shall be 
filed  or, if appropriate, noticed under w 1.671(e) during the testimony 
period of  the party. A request for a testimony period shall be construed 
as including  a request for final hearing. 

        (4)   If the paper contains an explanation of why judgment should 
not  be entered in accordance with the order, and if no party has 
requested a final  hearing, the decision that is the basis for the order 
shall be reviewed based  on the contents of the paper and the response. If 
the paper fails to show good  cause, the Board shall enter judgment 
against the party against whom the order  issued. 

        [49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; 50 FR 
23124,  May 31, 1985; paras. (a)-(e0 revised, 60 FR 14488, Mar 17, 1995; 
effective  Apr. 21, 1995] 


# 1.641       Unpatentability discovered by administrative 
     patent 


judge. 

        (a)   During the pendency of an interference, if the 
administrative  patent judge becomes aware of a reason 


why a claim designated to correspond to a count may not be patentable, the 
 administrative patent judge may enter an order notifying the parties of 
the  reason and set a time within which each party may present its views, 
including  any argument and any supporting evidence, and, in the case of 
the party whose  claim may be unpatentable, any appropriate preliminary 
motions under ww 1.633(c), 
(d) and (h). 

        (b)   If a party timely files a preliminary motion in response to 
the  order of the administrative patent judge, any opponent may file an 
opposition 
(w 1.638(a)). If an opponent files an opposition, the party may reply 
(w 1.638(b)). 

        (c)   After considering any timely filed views, including any 
timely  filed preliminary motions under w 1.633, oppositions and replies, 
the administrative  patent judge shall decide how the interference shall 
proceed. 

        [49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; 
revised,  60 FR 14488, Mar 17, 1995; effective Apr. 21, 1995] 


# 1.642       Addition of application or patent to 

                        interference. 

        During the pendency of an interference, if the administrative 
patent  judge becomes aware of an application or a patent not involved in 
the interference  which claims the same patentable invention as a count in 
the interference,  the administrative patent judge may add the application 
or patent to the interference  on such terms as may be fair to all parties. 

        [49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; 
revised.  60 FR 14488, Mar 17, 1995; effective Apr. 21, 1995] 


# 1.643       Prosecution of interference by assignee. 


        (a)   An assignee of record in the Patent and Trademark Office of 
the  entire interest in an application or patent involved in an 
interference is  entitled to conduct prosecution of the interference to 
the exclusion of the  inventor. 

        (b)   An assignee of a part interest in an application or patent 
involved  in an interference may file a motion 
(w 1.635) for entry of an order authorizing it to prosecute the 
interference.  The motion shall show the inability or 


refusal of the inventor to prosecute the interference or other cause why 
it  is in the interest of justice to permit the assignee of a part 
interest to  prosecute the interference. The administrative patent judge 
may allow the assignee  of a part interest to prosecute the interference 
upon such terms as may be  appropriate. 

        [49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; para. 
(b)  revised, 60 FR 14488, Mar 17, 1995; effective Apr. 21, 1995] 


# 1.644       Petitions in interferences. 


        (a)   There is no appeal to the Commissioner in an interference 
from  a decision of an administrative patent judge or the Board. The 
Commissioner  will not consider a petition in an interference unless: 

        (1)   The petition is from a decision of an administrative patent 
judge  or the Board and the administrative patent judge or the Board shall 
be of the  opinion that the decision involves a controlling question of 
procedure or an  interpretation of a rule as to which there is a 
substantial ground for a difference  of opinion and that an immediate 
decision on petition by the Commissioner may  materially advance the 
ultimate termination of the interference; 

        (2)   The petition seeks to invoke the supervisory authority of 
the  Commissioner and does not relate to the merits of priority of 
invention or  patentability or the admissibility of evidence under the 
Federal Rules of Evidence; 

        (3)   The petition seeks relief under w 1.183. 

        (b)   A petition under paragraph (a)(1) of this section filed more 
 than 15 days after the date of the decision of the administrative patent 
judge  or the Board 



may be dismissed as untimely. A petition under paragraph (a)(2) of this 
section  shall not be filed prior to the party's brief for final hearing 
(see w 1.656).  Any petition under paragraph (a)(3) of this section shall 
be timely if it is  filed simultaneously with a proper motion under 
ww 1.633, 1.634, or 1.635 when granting the motion would require waiver of 
 a rule. Any opposition to a petition under paragraphs (a)(1) or (a)(2) of 
this  section shall be filed within 20 days of the date of service of the 
petition.  Any opposition to a petition under paragraph (a)(3) of this 
section shall be  filed within 20 days of the date of service of the 
petition or the date an  opposition to the motion is due, whichever is 
earlier. 

        (c)   The filing of a petition shall not stay the proceeding 
unless  a stay is granted in the discretion of the administrative patent 
judge, the  Board, or the Commissioner. 

        (d)   Any petition must contain a statement of the facts involved, 
 in numbered paragraphs, and the point or points to be reviewed and the 
action  requested. The petition will be decided on the basis of the record 
made before  the administrative patent judge or the Board, and 

no new evidence will be considered by the Commissioner in deciding the 
petition.  Copies of documents already of record in the interference shall 
not be submitted  with the petition or opposition. 

        (e)   Any petition under paragraph (a) of this section shall be 
accompanied  by the petition fee set forth in 
w 1.17(h). 

        (f)   Any request for reconsideration of a decision by the 
Commissioner  shall be filed within 14 days of the decision of the 
Commissioner and must  be accompanied by the fee set forth in w 1.17(h). 
No opposition to a request  for reconsideration shall be filed unless 
requested by the Commissioner. The  decision will not ordinarily be 
modified unless such an opposition has been  requested by the Commissioner. 

        (g)   Where reasonably possible, service of any petition, 
opposition,  or request for reconsideration shall be such that delivery is 
accomplished  within one working day. Service by hand or Express Mail 
complies with this  paragraph. 

        (h)   An oral hearing on the petition will not be granted except 
when  considered necessary by the Commissioner. 

        (i)   The Commissioner may delegate to appropriate Patent and 
Trademark  Office employees the determination of petitions under this 
section. 
        [49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; 50 FR 
23124,  May 31, 1985; paras. (a)-(a)(2), (b)-(g) revised, 60 FR 14488, Mar 
17, 1995;  effective Apr. 21, 1995] 


# 1.645       Extension of time, late papers, stay of 

                        proceedings. 

        (a)   Except to extend the time for filing a notice of appeal to 
the  U.S. Court of Appeals for the Federal Circuit or for commencing a 
civil action,  a party may file a motion (w 1.635) seeking an extension of 
time to take action  in an interference. See w 1.304(a) for extensions of 
time for filing a notice  of appeal to the U.S. Court of Appeals for the 
Federal Circuit or for commencing  a civil action. The motion shall be 
filed within sufficient time to actually  reach the administrative patent 
judge before expiration of the time for taking  action. A moving party 
should not assume that the motion will be granted even  if there is no 
objection by any other party. The motion will be denied unless  the moving 
party shows good cause why an extension should be granted. The press  of 
other business arising after an administrative patent judge sets a time 
for taking action will not normally constitute good cause. A motion 
seeking  additional time to take testimony because a party has not been 
able to procure  the testimony of a witness shall set forth the name of 
the witness, any steps  taken to procure the testimony of the witness, the 
dates on which the steps  were taken, and the facts expected to be proved 
through the witness. 
        (b)   Any paper belatedly filed will not be considered except upon 
 motion (w 1.635) which shows good cause why the paper was not timely 
filed,  or where an administrative patent judge or the Board, sua sponte, 
is of the  opinion that it would be in the interest of justice to consider 
the paper.  See w 1.304(a) for exclusive procedures relating to belated 
filing of a notice  of appeal to the U.S. Court of Appeals for the Federal 
Circuit or belated commencement  of a civil action. 

        (c)   The provisions of w 1.136 do not apply to time periods in 
interferences. 
        (d)   An administrative patent judge may stay proceedings in an 
interference. 
        [49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; 50 FR 
23124,  May 31, 1985; paras. (a) and (b), 54 FR 29553, July 13, 1989, 
effective Aug.  20, 1989; paras. (a), (b), & (d) revised, 
60 FR 14488, Mar 17, 1995; effective Apr. 21, 1995] 




# 1.646       Service of papers, proof of service. 


        (a)   A copy of every paper filed in the Patent and Trademark 
Office  in an interference or an application or patent involved in the 
interference  shall be served upon all other parties except: 

        (1)   Preliminary statements when filed under 
w 1.621; preliminary statements shall be served when service is ordered by 
 an administrative patent judge. 

        (2)   Certified transcripts and exhibits which accompany the 
transcripts  filed under w 1.676; copies of transcripts shall be served as 
part of a party's  record under w 1.653(c). 

        (b)   Service shall be on an attorney or agent for a party. If 
there  is no attorney or agent for the party, service shall be on the 
party. An administrative  patent judge may order additional service or 
waive service where appropriate. 
        (c)   Unless otherwise ordered by an administrative patent judge, 
or  except as otherwise provided by this subpart, service of a paper shall 
be made  as follows: 

        (1)   By handing a copy of the paper or causing a copy of the 
paper  to be handed to the person served. 

        (2)   By leaving a copy of the paper with someone employed by the 
person  at the person's usual place of business. 

        (3)   When the person served has no usual place of business, by 
leaving  a copy of the paper at the person's residence with someone of 
suitable age  and discretion then residing therein. 

        (4)   By mailing a copy of the paper by first class mail; when 
service  is by first class mail the date of mailing is regarded as the 
date of service. 


        (5)   By mailing a copy of the paper by Express Mail; when service 
 is by Express Mail the date of deposit with the U.S. Postal Service is 
regarded  as the date of service. 

  (6)     When it is shown to the satisfaction of an administrative patent 
 judge that none of the above methods of obtaining or serving the copy of 
the  paper was successful, the administrative patent judge may order 
service by  publication of an appropriate notice in the Official Gazette. 

        (d)   An administrative patent judge may order that a paper be 
served  by hand or Express Mail. 

        (e)   The due date for serving a paper is the same as the due date 
 for filing the paper in the Patent and Trademark Office. Proof of service 
must  be made before a paper will be considered in an interference. Proof 
of service  may appear on or be affixed to the paper. Proof of service 
shall include the  date and manner of service. In the case of personal 
service under paragraphs 
(c)(1) through (c)(3) of this section, proof of service shall include the 
names  of any person served and the person who made the service. Proof of 
service  may be made by an acknowledgment of service by or on behalf of 
the person served  or a statement signed by the party or the party's 
attorney or agent containing  the information required by this section. A 
statement of an attorney or agent  attached to, or appearing in, the paper 
stating the date and manner of service  will be accepted as prima facie 
proof of service. 

        [49 FR 48416, Dec. 12, 1984, added effective Feb. 11,1985; 50 FR 
23124, May 31, 1985;  paras. (a)(1)-(c)(1), (c)(4)-(c)(5) revised, para. 
(c)(6) added, 60 FR 14488, Mar 17, 1995; effective Apr. 21, 1995] 

# 1.647       Translation of document in foreign language. 


        When a party relies on a document or is required to produce a 
document  in a language other than English, a translation of the document 
into English  and an affidavit attesting to the accuracy of the 
translation shall be filed  with the document. 

        [49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; paras. 
(a) and (d), 56 FR 42528, Aug. 28, 1991, effective Sept. 27, 1991; 56 FR 
46823,  Sept. 16, 1991;  revised, 60 FR 14488, Mar 17, 1995; effective 
Apr. 21, 1995] 

# 1.651       Setting times for discovery and taking 

                        testimony, parties entitled to take testimony. 
        (a)   At an appropriate stage in an interference, an 
administrative  patent judge shall set a time for fili- 
ng motions (w 1.635) for additional discovery under 
w 1.687(c) and testimony periods for taking any necessary testimony. 
        (b)   Where appropriate, testimony periods will be set to permit a 
 party to: 

        (1)   Present its case-in-chief and/or case-in-rebuttal and/or 
        (2)   Cross-examine an opponent's case-in-chief and/or a 
case-in-rebuttal. 

        (c)   A party is not entitled to take testimony to present a 
case-in-chief  unless: 

        (1)   The administrative patent judge orders the taking of 
testimony  under w 1.639(c); 

        (2)   The party alleges in its preliminary statement a date of 
invention  prior to the effective filing date of the senior party; 



        (3)   A testimony period has been set to permit an opponent to 
prove  a date of invention prior to the effective filing date of the party 
and the  party has filed a preliminary statement alleging a date of 
invention prior  to that date; or 

        (4)   A motion (w 1.635) is filed showing good cause why a 
testimony  period should be set. 

        (d)   Testimony, including any testimony to be taken in a place 
outside  the United States, shall be taken and completed during the 
testimony periods  set under paragraph (a) of this section. A party 
seeking to extend the period  for taking testimony must comply with 
ww 1.635 and 1.645(a). 

        [49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; paras. 
(a) and (d), 56 FR 42528, Aug. 28, 1991, effective Sept. 27, 1991; 56 FR 
46823,  Sept. 16, 1991; paras. (a) (c)(1)-(c)(3) & (d) revised, 60 FR 
14488, Mar 17,  1995; effective Apr. 21, 1995] 


# 1.652       Judgment for failure to take testimony or 

                        file record. 

        If a junior party fails to timely take testimony authorized under 
w  1.651, or file a record under 
w 1.653(c), an administrative patent judge, with or without a motion (w 
1.635)  by another party, may issue 


an order to show cause why judgment should not be entered against the 
junior  party. When an order is issued under this section, the Board shall 
enter judgment  in accordance with the order unless, within 15 days after 
the date of the order,  the junior party files a paper which shows good 
cause why judgment should not  be entered in accordance with the order. 
Any other party may file a response  to the paper within 15 days of the 
date of service of the paper. If the party  against whom the order was 
issued fails to show good cause, the Board shall  enter judgment against 
the party. 

        [49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; 
revised,  60 FR 14488, Mar 17, 1995; effective Apr. 21, 1995] 


# 1.653       Record and exhibits. 


        (a)   Testimony shall consist of affidavits under 
ww 1.672(b), (c) and (g), 1.682(c), 1.683(b) and 1.688(b), transcripts of 
depositions  under ww 1.671(g) and 1.672(a) when a deposition is 
authorized by an administra- tive patent judge, transcripts of depositions 
under 
ww 1.672(d), 1.682(d), 1.683(c) and 1.688(c), agreed statements under w 
1.672(h),  transcripts of interrogatories, cross-interrogatories, and 
recorded answers  and copies of written interrogatories and answers and 
written requests for  admissions and answers under 
w 1.688(a). 

        (b)   An affidavit shall be filed as set forth in w 1.677. A 
certified  transcript of a deposition, including a deposition 
cross-examining an affiant,  shall be filed as set forth in ww 1.676, 
1.677 and 1.678. An original agreed  statement shall be filed as set forth 
in w 1.672(h). 

        (c)   In addition to the items specified in paragraph (b) of this 
section  and within a time set by an administrative patent judge, each 
party shall file  three copies and serve one copy of a record consisting of: 

        (1)   An index of the names of the witnesses for the party, giving 
 the pages of the record where the direct testimony and cross-examination 
of  each witness 
begins. 

        (2)   An index of exhibits briefly describing the nature of each 
exhibit  and giving the page of the record where each exhibit is first 
identified and  offered into evidence. 

        (3)   The count or counts. 

        (4)   Each affidavit by a witness for the party, transcript, 
including  transcripts of cross-examination of any affiant who testified 
for the party  and transcripts of compelled deposition testimony by a 
witness for the party,  agreed statement relied upon by the party, and 
transcript of interrogatories,  cross-interrogatories and recorded answers. 

        (5)   [Reserved] 

        (6)   Any evidence from another interference, proceeding, or 
action  relied upon by the party under w 1.683. 

        (7)   Each request for an admission and the admission and each 
written  interrogatory and the answer upon which a party intends to rely 
under w 1.688. 
        (d)   The pages of the record shall be consecutively numbered to 
the  extent possible. 

        (e)   The name of each witness shall appear at the top of each 
page  of each affidavit or transcript. 

        (f)   [Reserved] 

        (g)   The record may be produced by standard typographical 
printing  or by any other process capable of producing a clear black 
permanent image.  All printed matter except on covers must appear in at 
least 11 point type on  opaque, unglazed paper. Footnotes may not be 
printed in type smaller than 9  point. The page size shall be 21.8 by 27.9 
cm. (8# by 11 inches) (letter size)  with printed matter 16.5 by 24.1 cm. 
(6# by 9# inches). The record shall be  bound with covers at their left 
edges in 




such manner as to lie flat when open to any page and in one or more 
volumes  of convenient size (approximately 100 pages per volume is 
suggested). When  there is more than one volume, the numbers of the pages 
contained in each volume  shall appear at the top of the cover for each 
volume. 

  (h)     [Reserved] 

        (i)   Each party shall file its exhibits with the record specified 
 in paragraph (c) of this section. Exhibits include documents and things 
identified  in affidavits or on the record during the taking of oral 
depositions as well  as official records and publications filed by the 
party under w 1.682(a). One  copy of each documentary exhibit shall be 
served. Documentary exhibits shall  be filed in an envelope or folder and 
shall not be bound as part of the record.  Physical exhibits, if not filed 
by an officer under 
w 1.676(d), shall be filed with the record. Each exhibit shall contain a 
label  which identifies the party submitting the exhibit and an exhibit 
number, the  style of the interference (e.g., Jones v. Smith), and the 
interference number.  Where possible, the label should appear at the 
bottom right-hand corner of  each documentary exhibit. Upon termination of 
an interference, an administrative  patent judge may return an exhibit to 
the party filing the exhibit. When any  exhibit is returned, an order 
shall be entered indicating that the exhibit  has been returned. 

        (j)   Any testimony, record, or exhibit which does not comply with 
 this section may be returned under 
w 1.618(a). 

        [49 FR 48466, Dec. 12, 1984, added effective Feb. 11, 1985; paras. 
(a), (b), (c), (c)(1), (c)(4), (d), (g), & (i) revised, paras. (c)(5) (f) 
& 
(h) removed, 60 FR 14488, Mar 17, 1995; effective Apr. 21, 1995] 

# 1.654       Final hearing. 


        (a)   At an appropriate stage of the interference, the parties 
will  be given an opportunity to appear before the Board to present oral 
argument  at a final hearing. An administrative patent judge may set a 
date and time  for final hearing. Unless otherwise ordered by an 
administrative patent judge  or the Board, each party will be entitled to 
no more than 30 minutes of oral  argument at final hearing. A party who 
does not file a brief for final hearing 
(w 1.656(a)) shall not be entitled to appear at final hearing. 

        (b)   The opening argument of a junior party shall include a fair 
statement  of the junior party's case and the junior party's position with 
respect to  the case presented on behalf of any other party. A junior 
party may reserve  a portion of its time for rebuttal. 

        (c)   A party shall not be entitled to argue that an opponent 
abandoned,  suppressed, or concealed an actual reduction to practice 
unless a notice under  w 1.632 was timely filed. 

        (d)   After final hearing, the interference shall be taken under 
advisement  by the Board. No further paper shall be filed except under w 
1.658(b) or as  authorized by an administrative patent judge or the Board. 
No additional oral  argument shall be had unless ordered by the Board. 

        [49 FR 48466, Dec. 12, 1984, added effective Feb. 11, 1985; paras. 
(a) & (d) revised, 60 FR 14488, Mar 17, 1995, effective April 21, 1995] 

# 1.655       Matters considered in rendering a final 

                        decision. 

        (a)   In rendering a final decision, the Board may consider any 
properly  raised issue, including priority of invention, derivation by an 
opponent from  a party who filed a preliminary statement under w 1.625, 
patenta- bility of the invention, admissibility of evidence, any 
interlocutory matter  deferred to final hearing, and any other matter 
necessary to resolve the interference.  The Board may also consider 
whether entry of any interlocutory order was an  abuse of discretion. All 
interlocutory orders shall be presumed to have been  correct, and the 
burden of showing an abuse of discretion shall be on the party  attacking 
the order. When two or more interlocutory orders involve the same  issue, 
the last entered order shall be presumed to have been correct. 
        (b)   A party shall not be entitled to raise for consideration at 
final  hearing any matter which properly could have been raised by a 
motion under  ww 1.633 or 1.634 unless the matter was properly raised in a 
motion that was  timely filed by the party under ww 1.633 or 1.634 and the 
motion was denied  or deferred to final hearing, the matter was properly 
raised by the party in  a timely filed opposition to a motion under ww 
1.633 or 1.634 and the motion  was granted over the opposition or deferred 
to final hearing, or the party  shows good cause why the issue was not 
properly raised by a timely filed motion  or opposition. A party that 
fails to contest, by way of a timely filed preliminary  motion under w 
1.633(c), the designation of a claim as corresponding to a count,  or 
fails to timely argue the separate patentability of a particular claim 
when  the ground for unpatentability is 




first raised, may not subsequently argue to an administrative patent judge 
 or the Board the separate patentability of claims designated to 
correspond  to the count with respect to that ground. 

        (c)   In the interest of justice, the Board may exercise its 
discretion  to consider an issue even though it would not otherwise be 
entitled to consideration  under this section. 

        [49 FR 48466, Dec. 12, 1984, added effective Feb. 11, 1985; para. 
(a)  revised, 58 FR 49432, Sept. 23, 1993, effective Oct. 25, 1993; 
revised 60 FR  14488, Mar 17, 1995; effective Apr. 21, 1995] 


# 1.656       Briefs for final hearing. 


        (a)   Each party shall be entitled to file briefs for final 
hearing.  The administrative patent judge shall determine the briefs 
needed and shall  set the time and order for filing briefs. 

        (b)   The opening brief of a junior party shall contain under 
appropriate  headings and in the order indicated: 

        (1)   A statement of interest indicating the full name of every 
party  represented by the attorney in the inter- 


interference and the name of the real party in interest if the party named 
 in the caption is not the real party in interest. 

        (2)   A statement of related cases indicating whether the 
interference  was previously before the Board for final hearing and the 
name and number of  any related appeal or interference which is pending 
before, or which 
has been decided by, the Board, or which is pending before, or which has 
been  decided by, the U.S. Court of Appeals for the Federal Circuit or a 
district  court in a proceeding under 35 U.S.C. 146. A related appeal or 
interference  is one which will directly affect or be directly affected by 
or have a bearing  on the Board's decision in the pending interference. 

        (3)   A table of contents, with page references, and a table of 
cases 
(alphabetically arranged), statutes, and other authorities cited, with 
references  to the pages of the brief where they are cited. 

        (4)   A statement of the issues presented for decision in the 
interference. 

        (5)   A statement of the facts, in numbered paragraphs, relevant 
to  the issues presented for decision with appropriate references to the 
record. 
        (6)   An argument, which may be preceded by a summary, which shall 
 contain the contentions of the party with respect to the issues it is 
raising  for consideration at final hearing, and the reasons therefor, 
with citations  to the cases, statutes, other authorities, and parts of 
the record relied on. 


        (7)   A short conclusion stating the precise relief requested. 
        (8)   An appendix containing a copy of the counts. 

        (c)   The opening brief of the senior party shall conform to the 
requirements  of paragraph (b) of this section except: 

        (1)   A statement of the issues and of the facts need not be made 
unless  the party is dissatisfied with the statement in the opening brief 
of the junior  party and 

        (2)   An appendix containing a copy of the counts need not be 
included  if the copy of the counts in the opening brief of the junior 
party is correct. 
        (d)   Unless ordered otherwise by an administrative patent judge, 
briefs  shall be double-spaced (except for footnotes, which may be 
single-spaced) and  shall comply with the requirements of w 1.653(g) for 
records except the requirement  for binding. 

        (e)   An original and four copies of each brief must be filed. 
        (f)   Any brief which does not comply with the requirements of 
this  section may be returned under 
w 1.618(a). 

        (g)   Any party, separate from its opening brief, but filed 
concurrently  therewith, may file an original and four copies of concise 
proposed findings  of fact and conclusions of law. Any proposed findings 
of fact shall be in numbered  paragraphs and shall be supported by 
specific references to the record. Any  proposed conclusions of law shall 
be in numbered paragraphs and shall be supported  by citation of cases, 
statutes, or other authority. Any opponent, separate  from its opening or 
reply brief, but filed concurrently therewith, may file  a paper accepting 
or objecting to any proposed findings of fact or conclusions  of law; when 
objecting, a reason must be given. The Board may adopt the proposed 
findings of fact and conclusions of law in whole or in part. 

        (h)   If a party wants the Board in rendering its final decision 
to  rule on the admissibility of any evidence, the party shall file with 
its opening  brief an original and four copies of a motion (w 1.635) to 
suppress the evidence.  The provisions of w 1.637(b) do not apply to a 
motion to suppress under this  paragraph. Any objection previously made to 
the admissibility of the evidence  of an opponent is waived unless the 
motion required by this paragraph is 



filed. A party that failed to challenge the admissibility of the evidence 
of  an opponent on a ground that could have been raised in a timely 
objection under  w 1.672(c), 1.682(c), 1.683(b) or 1.688(b) may not move 
under this paragraph  to suppress the evidence on that ground at final 
hearing. An original and four  copies of an opposition to the motion may 
be filed with an opponent's opening  brief or reply brief as may be 
appropriate. 

        (i)   When a junior party fails to timely file an opening brief, 
an  order may issue requiring the junior party to show cause why the Board 
should  not treat failure to file the brief as a concession of priority. 
If the junior  party fails to show good cause within a time period set in 
the order, judgment  may be entered against the junior party. 

        [49 FR 48466, Dec. 12, 1984, added effective Feb. 11, 1985; 
amended  60 FR 14488-536, Mar 17, 1995; paras. (a), (b)(1)-(b)(8), (d), 
(e), (g), (h),  & (i) revised, 60 FR 14488, Mar. 17, 1995; effective Apr., 
21, 1995] 

# 1.657       Burden of proof as to date of invention. 


        (a)   A rebuttable presumption shall exist that, as to each count, 
 the inventors made their invention in the chronological order of their 
effective  filing dates. The burden of proof shall be upon a party who 
contends otherwise. 
        (b)   In an interference involving copending applications or 
involving  a patent and an application having an effective filing date on 
or before the  date the patent 


issued, a junior party shall have the burden of establishing priority by a 
 preponderance of the evidence. 

        (c)   In an interference involving an application and a patent and 
 where the effective filing date of the application is after the date the 
patent  issued, a junior party shall have the burden of establishing 
priority by clear  and convincing evidence. 

        [49 FR 48466, Dec. 12, 1984, added effective Feb. 11, 1985; 
amended  60 FR 14488-536, Mar 17, 1995; revised, 60 FR 14488, Mar. 17, 
1995; effective  Apr. 21, 1995] 


# 1.658       Final decision. 


        (a)   After final hearing, the Board shall enter a decision 
resolving  the issues raised at final hearing. The decision may enter 
judgment, in whole  or in part, remand the interference to an 
administrative patent judge for further  proceedings, or take further 
action not inconsistent with law. A judgment as  to a count shall state 
whether or not each party is entitled to a patent containing  the claims 
in the party's patent or application which correspond to the count.  When 
the Board enters a decision awarding judgment as to all counts, the 
decision  shall be regarded as a final decision for the purpose of 
judicial review (35  U.S.C. 141-144, 146) unless a request for 
reconsideration under paragraph (b)  of this section is timely filed. 

        (b)   Any request for reconsideration of a decision under 
paragraph 
(a) of this section shall be filed within one month after the date of the 
decision.  The request 
for reconsideration shall specify with particularity the points believed 
to  have been misapprehended or overlooked in rendering the decision. Any 
opposition  to a request for reconsideration shall be filed within 14 days 
of the date  of service of the request for reconsideration. Service of the 
request for reconsideration  shall be by hand or Express Mail. The Board 
shall enter a decision on the request  for reconsideration. If the Board 
shall be of the opinion that the decision  on the request for 
reconsideration significantly modifies its original decision  under 
paragraph (a) of this section, the Board may designate the decision on 
the request for reconsideration as a new decision. A decision on 
reconsideration  is a final decision for the purpose of judicial review 
(35 U.S.C. 141-144, 146). 

        (c)   A judgment in an interference settles all issues which (1) 
were  raised and decided in the interference, (2) could have been properly 
raised  and decided in the interference by a motion under w 1.633 (a) 
through (d) and 
(f) through (j) or w 1.634 and (3) could have been properly raised and 
decided  in an additional interference with a motion under w 1.633(e). A 
losing party  who could have properly moved, but failed to move, under 
ww 1.633 or 1.634, shall be estopped to take ex parte or inter partes 
action  in the Patent and Trademark Office after the interference which is 
inconsistent  with that party's failure to properly move, except that a 
losing party shall  not be estopped with respect to any claims which 
correspond, or properly could  have corresponded, to a count as to which 
that party was awarded a favorable  judgment. 

        [49 FR 48467, Dec. 12, 1984, added effective Feb. 11, 1985; para. 
(b),  54 FR 29553, July 13, 1989, effective Aug. 20, 1989; paras. (a) & 
(b) revised,  60 FR 14488, Mar 17, 1995; effective Apr. 21, 1995] 


# 1.659       Recommendation. 


        (a)   Should the Board have knowledge of any ground for rejecting 
any  application claim not involved 




in the judgment of the interference, it may include in its decision a 
recommended  rejection of the claim. Upon resumption of ex parte 
prosecution of the application,  the examiner shall be bound by the 
recommendation and shall enter and maintain  the recommended rejection 
unless an amendment or showing of facts not previously  of record is filed 
which, in the opinion of the examiner, overcomes the recommended  rejection. 

        (b)   Should the Board have knowledge of any ground for 
reexamination  of a patent involved in the interference as to a patent 
claim not involved  in the judgment of the interference, it may include in 
its decision a recommendation  to the Commissioner that the patent be 
reexamined. The Commissioner will determine  whether reexamination will be 
ordered. 

        (c)   The Board may make any other recommendation to the examiner 
or  the Commissioner as may be appropriate. 

        [49 FR 48467, Dec. 12, 1984, added effective Feb. 11, 1985] 

# 1.660       Notice of reexamination, reissue, protest, 

                        or litigation. 

        (a)   When a request for reexamination of a patent involved in an 
interference  is filed, the patent owner shall notify the Board within 10 
days of receiving  notice that the request was filed. 

        (b)   When an application for reissue is filed by a patentee 
involved  in an interference, the patentee shall 

notify the Board within 10 days of the day the application for reissue is 
filed. 
        (c)   When a protest under w 1.291 is filed against an application 
 involved in an interference, the applicant shall notify the Board within 
10  days of receiving notice that the protest was filed. 

        (d)   A party in an interference shall notify the Board promptly 
of  any litigation related to any patent or application involved in an 
interference,  including any civil action commenced under 35 U.S.C. 146. 

        (e)   The notice required by this section is designed to assist 
the  administrative patent judge and the Board in efficiently handling 
interference  cases. Failure of a party to comply with the provisions of 
this section may  result in sanctions under w 1.616. Knowledge by, or 
notice to, an employee  of the Office other than an employee of the Board, 
of the existence of the  reexamination, application for reissue, protest, 
or litigation shall not be  sufficient. The notice contemplated by this 
section is notice addressed to  the administrative patent judge in charge 
of the interference in which the  application or patent is involved. 

        [49 FR 48467, Dec. 12, 1984, added effective Feb. 11, 1985; para. 
(e)  added, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995] 


# 1.661       Termination of interference after judgment. 


        After a final decision is entered by the Board, an interference is 
 considered terminated when no appeal (35 U.S.C. 141) or other review (35 
U.S.C.  146) has been or can be taken or had. 

        [49 FR 48467, Dec. 12, 1984, added effective Feb. 11, 1985] 

# 1.662       Request for entry of adverse judgment; reissue 
     filed 


by patentee. 

        (a)   A party may, at any time during an interference, request and 
 agree to entry of an adverse judgment. The filing by a party of a written 
disclaimer  of the invention defined by a count, concession of priority or 
unpatentability  of the subject matter of a count, abandonment of the 
invention defined by a  count, or abandonment of the contest as to a count 
will be treated as a request  for entry of an adverse judgment against the 
applicant or patentee as to all  claims which correspond to the count. 
Abandonment of an application, other  than an application for reissue 
having a claim of the patent sought to be reissued  involved in the 
interference, will be treated as a request for entry of an  adverse 
judgment against the applicant as to all claims corresponding to all 
counts. Upon the filing by a party of a request for entry of an adverse 
judgment,  the Board may enter judgment against the party. 

        (b)   If a patentee involved in an interference files an 
application  for reissue during the interference and the reissue 
application does not include  a claim that corresponds to a count, 
judgment may be entered against the patentee.  A patentee who files an 
application for reissue which includes a claim that  corresponds to a 
count shall, in addition to complying with the provisions  of w 1.660(b), 
timely file a preliminary motion under 
w 1.633(h) or show good cause why the motion could not have been timely 
filed  or would not be appropriate. 

        (c)   The filing of a statutory disclaimer under 
35 U.S.C. 253 by a patentee will delete any statutorily disclaimed claims 
from  being involved in the interference. A statutory disclaimer will not 
be treated  as a request for entry of an adverse judgment against the 




patentee unless it results in the deletion of all patent claims 
corresponding  to a count. 

        [49 FR 48467, Dec. 12, 1984, added effective Feb. 11, 1985; para. 
(b)  amended 53 FR 23735, June 23, 1988, effective Sept. 12, 1988; paras. 
(a) 7 
(e) revised, 60 FR 14488, Mar 17, 1995; effective Apr. 21, 1995] 


# 1.663       Status of claim of defeated applicant after 

                        interference. 

        Whenever an adverse judgment is entered as to a count against an 
applicant  from which no appeal 
(35 U.S.C. 141) or other review (35 U.S.C. 146) has been or can be taken 
or  had, the claims of the application corresponding to the count stand 
finally  disposed of without further action by the examiner. Such claims 
are not open  to further ex parte prosecution. 

        [49 FR 48467, Dec. 12, 1984, added effective Feb. 11, 1985] 

# 1.664       Action after interference. 


        (a)   After termination of an interference, the examiner will 
promptly  take such action in any application previously involved in the 
interference  as may be necessary. Unless entered by order of an 
administrative patent judge,  amendments presented during the interference 
shall not be entered, but may  be subsequently presented by the applicant 
subject to the provisions of this  subpart provided prosecution of the 
application is not otherwise closed. 
        (b)   After judgment, the application of any party may be held 
subject  to further examination, including an interference with another 
application. 
        [49 FR 48467, Dec. 12, 1984, 50 FR 23124, May 31, 1985, added 
effective  Feb. 11, 1985; revised, 60 FR 14488, Mar 17, 1995; effective 
Apr. 21, 1995] 


# 1.665         Second interference. 


        A second interference between the same parties will not be 
declared  upon an application not involved in an earlier interference for 
an invention  defined by a count of the earlier interference. See w 1.658(c). 

        [49 FR 48468, Dec. 12, 1984, added effective Feb. 11, 1985] 

# 1.666       Filing of interference settlement agreements. 


        (a)   Any agreement or understanding between parties to an 
interference,  including any collateral agreements referred to therein, 
made in connection  with or in contemplation of the termination of the 
interference, must be in  writing and a true copy thereof must be filed 
before the termination of the  interference (w 1.661) as between the 
parties to the agreement or understanding. 
        (b)   If any party filing the agreement or understanding under 
paragraph 
(a) of this section so requests, the copy will be kept separate from the 
file  of the interference, and made available only to Government agencies 
on written  request, or to any person upon petition accompanied by the fee 
set forth in  w 1.17(i) and on a showing of good cause. 

        (c)   Failure to file the copy of the agreement or understanding 
under  paragraph (a) of this section will render permanently unenforceable 
such agreement  or understanding and any patent of the parties involved in 
the interference  or any patent subsequently issued on any application of 
the parties so involved.  The Commissioner may, however, upon petition 
accompanied by the fee set forth  in # 1.17(h) and on a showing of good 
cause for failure to file within the  time prescribed, permit the filing 
of the agreement or understanding during  the six month period subsequent 
to the termination of the interference as between  the parties to the 
agreement or understanding. 

        [49 FR 48468, Dec. 12, 1984, added effective Feb. 11, 1985; 50 FR 
23124,  May 31, 1985; para. (b), 54 FR 6893, Feb. 15, 1989, 

effective Apr. 17, 1989; amended 60 FR 14488-536, Mar 17, 1995; amended 60 
 FR 14488-536, Mar 17, 1995; para. (a) amended, 60 FR 20195, Apr. 25, 
1995,  effective June 8, 1995; para. (b) amended, 60 FR 20195, Apr. 25, 
1995, efective  June 8, 1995] 


# 1.671       Evidence must comply with rules. 


        (a)   Evidence consists of testimony and referenced exhibits, 
official  records and publications filed under 
w 1.682, testimony and referenced exhibits from another interference, 
proceeding,  or action filed under w 1.683, discovery relied upon under w 
1.688, and the  specification (including claims) and drawings of any 
application or patent: 
        (1)   Involved in the interference. 

        (2)   To which a party has been accorded benefit in the notice 
declaring  the interference or by a preliminary motion granted under w 
1.633. 
        (3)   For which a party has sought, but has been denied, benefit 
by  a preliminary motion under w 1.633. 

        (4)   For which benefit was rescinded by a preliminary motion 
granted  under w 1.633. 

        (b)   Except as otherwise provided in this subpart, the Federal 
Rules  of Evidence shall apply to interference proceedings. Those portions 
of the  Federal Rules of Evidence relating to criminal actions, juries, 
and other matters  not relevant to interferences shall not apply. 



        (c)   Unless the context is otherwise clear, the following terms 
of  the Federal Rules of Evidence shall be construed as follows: 

        (1)   Courts of the United States, U.S. Magistrate, court, trial 
court,  or trier of fact means administrative patent judge or Board as may 
be appropriate. 
        (2)   Judge means administrative patent judge. 

        (3)   Judicial notice means official notice. 

        (4)   Civil action, civil proceeding, action, or trial mean 
interference. 
        (5)   Appellate court means United States Court of Appeals for the 
 Federal Circuit or a United States district court when judicial review is 
under  35 U.S.C. 146. 

        (6)   Before the hearing in Rule 703 of the Federal Rules of 
Evidence  means before giving testimony by affidavit or oral deposition. 

        (7)   The trial or hearing in Rules 803(24) and 804(5) of the 
Federal  Rules of Evidence means the taking of testimony by affidavit or 
oral deposition. 

        (d)   Certification is not necessary as a condition to 
admissibility  when the record is a record of the Patent and Trademark 
Office to which all  parties have access. 

        (e)   A party may not rely on an affidavit (including any 
exhibits),  patent or printed publication previously submitted by the 
party under # 1.639(b)  unless a copy 
of the affidavit, patent or printed publication has been served and a 
written  notice is filed prior to the close 
of the party's relevant testimony period stating that 
the party intends to rely on the affidavit, patent or printed publication. 
 When proper notice is given under this paragraph, the affidavit, patent 
or  printed publica- 


tion shall be deemed as filed under ww 1.640(b), 1.640(e)(3), 1.672(b) or 
1.682(a),  as appropriate. 

        (f)   The significance of documentary and other exhibits 
identified  by a witness in an affidavit or during oral deposition shall 
be discussed with  particularity by a witness. 

        (g)   A party must file a motion (w 1.635) seeking permission from 
 an administrative patent judge prior to compelling testimony or 
production  of documents or things under 35 U.S.C. 24 or from an opposing 
party. The motion  shall describe the general nature and the relevance of 
the testimony, document,  or thing. If permission is granted, the party 
shall notice a deposition under  w 1.673 and may proceed to take 
testimony. 

        (h)   A party must file a motion (w 1.635) seeking permission from 
 an administrative patent judge prior to 

compelling testimony or production of documents or things in a foreign 
country. 

        (1)   In the case of testimony, the motion shall: 

        (i)   Describe the general nature and relevance of the testimony; 
        (ii)    Identify the witness by name or title; 

        (iii)     Identify the foreign country and explain why the party 
believes  the witness can be compelled to testify in the foreign country, 
including a  description of the procedures that will be used to compel the 
testimony in  the foreign country and an estimate of the time it is 
expected to take to obtain  the testimony; and 

        (iv)    Demonstrate that the party has made reasonable efforts to 
secure  the agreement of the witness to testify in the United States but 
has been unsuccessful  in obtaining the agreement, even though the party 
has offered to pay the expenses  of the witness to travel to and testify 
in the United States. 

        (2)   In the case of production of a document or thing, the motion 
 shall: 

        (i)   Describe the general nature and relevance of the document or 
 thing; 

        (ii)    Identify the foreign country and explain why      the 
party  believes production of the document or thing can be compelled in 
the foreign  country, including a description of the procedures that will 
be used to compel  production of the document or thing in the foreign 
country and an estimate  of the time it is expected to take to obtain 
production of the document or  thing; and 

        (iii)     Demonstrate that the party has made reasonable efforts 
to  obtain the agreement of the individual or entity having possession, 
custody,  or control of the document to produce the document or thing in 
the United States  but has been unsuccessful in obtaining that agreement, 
even though the party  has offered to pay the expenses of producing the 
document or thing in the United  States. 

        (i)   Evidence which is not taken or sought and filed in 
accordance  with this subpart shall not be admissible. 

        (j)   The weight to be given deposition testimony taken in a 
foreign  country will be determined in view of all the circumstances, 
including the  laws of the foreign country governing the testimony. 
Little, if any, weight  may be given to deposition testimony taken in a 
foreign country unless the  party taking the testimony proves by clear and 
convincing evidence, as a matter  of fact, that 




knowingly giving false testimony in that country in connection with an 
interference  proceeding in the 

United States Patent and Trademark Office is punishable under the laws of 
that  country and that the punishment in that country for such false 
testimony is  comparable to or greater than the punishment for perjury 
committed in the United  States. The administrative patent judge and the 
Board, in determining foreign  law, may consider any relevant material or 
source, including testimony, whether  or not submitted by a party or 
admissible under the Federal Rules of Evidence. 


        [49 FR 48468, Dec. 12, 1984, added effective Feb. 11, 1985; 50 FR 
23124,  May 31, 1985; paras. (a), (c)(1), (c)(2), (c)(6), (c)(7), (e)-(j) 
revised,  60 FR 14488, Mar. 17, 1995; effective Apr. 21, 1995] 


# 1.672       Manner of taking testimony. 


        (a)   Unless testimony must be compelled under 
35 U.S.C. 24, compelled from a party, or compelled in a foreign country, 
testimony  of a witness shall be taken by affidavit in accordance with 
this subpart. Testimony  which must be compelled under 35 U.S.C. 24, 
compelled from a party, or compelled  in a foreign country shall be taken 
by oral deposition. 

        (b)   A party presenting testimony of a witness by affidavit 
shall,  within the time set by the administrative patent judge for serving 
affidavits,  file a copy of the affidavit or, if appropriate, notice under 
w 1.671(e). If  the affidavit relates to a party's case-in-chief, it shall 
be filed or noticed  no later than the date set by an administrative 
patent judge for the party  to file affidavits for its case-in-chief. If 
the affidavit relates to a party's  case-in-rebuttal, it shall be filed or 
noticed no later than the date set by  an administrative patent judge for 
than the date set by an administrative patent  judge for the party to file 
affidavits for its case-in-rebuttal. A party shall  not be entitled to 
rely on any document referred to in the affidavit unless  a copy of the 
document is filed with the affidavit. A party shall not be entitled  to 
rely on any thing mentioned in the affidavit unless the opponent is given 
reasonable access to the thing. A thing is something other than a 
document.  The pages of affidavits filed under this paragraph and of any 
other testimony  filed therewith under ww 1.683(a) and 1.688(a) shall, to 
the extent possible,  be given sequential numbers which shall also serve 
as the record page numbers  for the affidavits and other testimony in the 
party's record to be filed under  # 1.653. Exhibits identified in the 
affidavits or in any other testimony filed  under ww 1.683(a) and 1.688(a) 
and any official records and printed publica-  tions filed under w 
1.682(a) shall, to the extent possible, be given sequential  exhibit 
numbers, which shall also serve as the exhibit numbers when the exhibits 
are filed with the party's record. The affidavits, testimony filed under 
ww  1.683(a) and 1.688(a) and exhibits shall be accompanied by an index of 
the  names of the witnesses, giving the number of the page where the 
testimony of  each witness begins, and by an index of the exhibits briefly 
describing the  nature of each exhibit and giving the number of the page 
where each exhibit  is first identified and offered into evidence. 

        (c)   If an opponent objects to the admissibility of any evidence 
contained  in or submitted with an affidavit filed under paragraph (b) of 
this section,  the opponent must, no later than the date set by the 
administrative patent  judge for filing objections under this paragraph, 
file objections stating with  particularity the nature of each objection. 
An opponent that fails to object  to the admissibility of the evidence 
contained in or submitted with an affidavit  on a ground that could have 
been raised in a timely objection under this paragraph  will not be 
entitled to move under w 1.656(h) to suppress the evidence on that 
ground. If an opponent timely files objections, the party may, within 20 
days  of the due date for filing objections, file one or more supplemental 
affidavits,  official records or printed publications to overcome the 
objections. No objection  to the admissibility of the supplemental 
evidence shall be made, except as  provided by w 1.656(h). The pages of 
supplemental affidavits filed under this  paragraph shall, to the extent 
possible, be sequentially numbered beginning  with the number following 
the last page number of the party's testimony submitted  under paragraph 
(b) of this section. The page numbers assigned to the supplemental 
affidavits shall also serve as the record page numbers for the 
supplemental  affidavits in the party's record filed under # 1.653. 
Additional exhibits identified  in supplemental affidavits and any 
supplemental official records and printed  publications shall, to the 
extent possible, be given sequential numbers beginning  with the number 
following the last number of the exhibits submitted under paragraph 
(b) of this section. The exhibit numbers shall also serve as the exhibit 
numbers  when the exhibits are filed with the party's record. The 
supplemental affidavits  shall be accompanied by an index of the names 




of the witnesses and an index of exhibits of the type specified in 
paragraph 
(b) of this section. 

        (d)   After the time expires for filing objections and 
supplemental  affidavits, or earlier when appropriate, the administrative 
patent judge shall  set a time within which any opponent may file a 
request to cross-examine an  affiant on oral deposition. If any opponent 
requests cross-examination of an  affiant, the party shall notice a 
deposition at a reasonable location within  the United States under w 
1.673(e) for the purpose of cross-examination by  any opponent. Any 
redirect and recross shall take place at the deposition.  At any 
deposition for the purpose of cross-examination of a witness, the party 
shall not be entitled to rely on any document or thing not mentioned in 
one  or more of the affidavits filed under paragraphs (b) and (c) of this 
section,  except to the extent necessary to conduct proper redirect. The 
party who gives  notice of a deposition shall be responsible for providing 
a translator if the  witness does not testify in English, for obtaining a 
court reporter, and for  filing a 


certified transcript of the deposition as required by 
w 1.676. Within 45 days of the close of the period for taking 
cross-examination,  the party shall serve (but not file) a copy of each 
transcript on each opponent  together with copies of any additional 
documentary exhibits identified by the  witness during the deposition. The 
pages of the transcripts served under this  paragraph shall, to the extent 
possible, be sequentially numbered beginning  with the number following 
the last page number of the party's supplemental  affidavits submitted 
under paragraph (c) of this section. The numbers assigned  to the 
transcript pages shall also serve as the record page numbers for the 
transcripts in the party's record filed under w 1.653. Additional exhibits 
 identified in the transcripts, shall, to the extent possible, be given 
sequential  numbers beginning with the number following the last number of 
the exhibits  submitted under paragraphs (b) and (c) of this section. The 
exhibit numbers  assigned to the additional exhibits shall also serve as 
the exhibit numbers  when those exhibits are filed with the party's 
record. The deposition transcripts  shall be accompanied by an index of 
the names of the witnesses, giving the  number of the page where 
cross-examination, redirect and recross of each witness  begins, and an 
index of exhibits of the type specified in paragraph (b) of  this section. 

        (e)   [Reserved] 

        (f)   When a deposition is authorized to be taken within the 
United  States under this subpart and if the parties agree in writing, the 
deposition  may be taken in 

any place within the United States, before any person authorized to 
administer  oaths, upon any notice, and in any manner, and when so taken 
may be used like  other depositions. 

        (g)   If the parties agree in writing, the affidavit testimony of 
any  witness may be submitted without opportunity for cross-examination. 
  (h)     If the parties agree in writing, testimony may be submitted in 
the  form of an agreed statement setting forth how a particular witness 
would testify,  if called, or the facts in the case of one or more of the 
parties. The agreed  statement shall be filed in the Patent and Trademark 
Office. See w 1.653(a). 
        (i)   In an unusual circumstance and upon a showing that testimony 
 cannot be taken in accordance with the provisions of this subpart, an 
administrative  patent judge upon motion (w 1.635) may authorize testimony 
to be taken in another  manner. 

        [49 FR 48468, Dec. 12, 1984, added effective Feb. 11, 1985; 50 FR 
23124,  May 31, 1985; revised, 60 FR 14488, Mar. 17, 1995; effective Apr. 
21, 1995] 

# 1.673       Notice of examination of witness. 


        (a)   A party authorized to take testimony of a witness by 
deposition  shall, after complying with para-graphs (b) and (g) of this 
section, file and  serve a single notice of deposition stating the time 
and place of each deposition  to be taken. Depositions to be taken in the 
United States may be noticed for  a reasonable time and place in the 
United States. A deposition may not be noticed  for any other place 
without approval of an administrative patent judge The  notice shall 
specify the name and address of each witness and the general nature  of 
the testimony to be given by the witness. If the name of a witness is not 
known, a general description sufficient to identify the witness or a 
particular  class or group to which the witness belongs may be given 
instead. 
        (b)   Unless the parties agree or an administrative patent judge 
or  the Board determine otherwise, a party shall serve, but not file, at 
least  three working days prior to the conference required by paragraph 
(g) of this  section, if service is made by hand or Express Mail, or at 
least 14 days prior  to the conference if service is made by any other 
means, the following: 


        (1)   A list and copy of each document in the party's possession, 
custody,  or control and upon which the party intends to rely at any 
deposition and 
        (2)   A list of and a proffer of reasonable access to things in 
the  party's possession, custody, or control and upon which the party 
intends to  rely at any deposition. 

        (c)   A party shall not be permitted to rely on any witness not 
listed  in the notice, or any document not served or any thing not listed 
as required  by paragraph (b) of this section: 

        (1)   Unless all opponents agree in writing or on the record to 
permit  the party to rely on the witness, document or thing, or 

        (2)   Except upon a motion (w 1.635) promptly filed which is 
accompanied  by any proposed notice, additional documents, or lists and 
which shows good  cause why the notice, documents, or lists were not 
served in accordance with  this section. 

        (d)   Each opponent shall have a full opportunity to attend a 
deposition  and cross-examine. 

        (e)   A party who has presented testimony by affidavit and is 
required  to notice depositions for the purpose of cross-examination under 
w 1.672(b),  shall, after complying with paragraph (g) of this section, 
file and serve a  single notice of deposition stating the time and place 
of each cross-examination  deposition to be taken. 

        (f)   The parties shall not take depositions in more than one 
place  at the same time or so nearly at the same time that reasonable 
opportunity  to travel from one place of deposition to another cannot be had. 

        (g)   Before serving a notice of deposition and after complying 
with  paragraph (b) of this section, a party shall have an oral conference 
with all  opponents to attempt to agree on a mutually acceptable time and 
place for conducting  the deposition. A certificate shall appear in 


the notice stating that the oral conference took place or explaining why 
the  conference could not be had. If the parties cannot agree to a 
mutually acceptable  place and time for conducting the deposition at the 
conference, the parties  shall contact an administrative patent judge who 
shall then designate the time  and place for conducting the deposition. 

        (h)   A copy of the notice of deposition shall be attached to the 
certified  transcript of the deposition filed under w 1.676(a). 

        [49 FR 48469, Dec. 12, 1984, added effective Feb. 11, 1985; paras. 
(a)-(e) & (g) revised, 60 FR 14488, Mar. 17, 1995; effective Apr. 21, 
1995] 

# 1.674       Persons before whom depositions may be 

                        taken. 

        (a)   A deposition shall be taken before an officer authorized to 
administer  oaths by the laws of the United States or of the place where 
the examination  is held. 

        (b)   Unless the parties agree in writing, the following persons 
shall  not be competent to serve as an officer: 

        (1)   A relative or employee of a party, 

        (2)   a relative or employee of an attorney or agent of a party, 
or 

        (3)   a person interested, directly or indirectly, in the 
interference  either as counsel, attorney, agent, or otherwise. 

        [49 FR 48469, Dec. 12, 1984, added effective Feb. 11, 1985; para. 
(a)  revised, 60 FR 14488, Mar. 17, 1995; effective Apr. ,21, 1995] 


# 1.675       Examination of witness, reading and signing 
             transcript 


of deposition. 

        (a)   Each witness before giving an oral deposition shall be duly 
sworn  according to law by the officer before whom the deposition is to be 
taken. 
        (b)   The testimony shall be taken in answer to interrogatories 
with  any questions and answers recorded in their regular order by the 
officer or  by some other person, who shall be subject to the provisions of 
# 1.674(b), in the presence of the officer unless the 


presence of the officer is waived on the record by agreement of all 
parties. 
        (c)   All objections made at the time of the deposition to the 
qualifications  of the officer taking the deposition, the manner of taking 
it, the evidence  presented, the conduct of any party, and any other 
objection to the proceeding  shall be noted on the record by the officer. 
Evidence objected to shall be  taken subject to any objection. 

        (d)   Unless the parties agree in writing or waive reading and 
signature  by the witness on the record at the deposition, when the 
testimony has been  transcribed a transcript of the deposition shall, 
unless the witness refuses  to read and/or sign the transcript of the 
deposition, be read by the witness  and then signed by the witness in the 
form of: 

        (1)   An affidavit in the presence of any notary or 

        (2)   A declaration. 

        [49 FR 48469, Dec. 12, 1984, added effective Feb. 11, 1985; para. 
(d)  revised, 60 FR 14488, Mar 17, 1995, effective Apr. 21, 1995] 




# 1.676       Certification and filing by officer, marking 
             exhibits. 

        (a)   The officer shall prepare a certified transcript of the 
deposition  by attaching to a transcript of the deposition a copy of the 
notice of deposition,  any exhibits to be annexed to the certified 
transcript, and a certificate signed  and sealed by the officer and showing: 

        (1)   The witness was duly sworn by the officer before 
commencement  of testimony by the witness. 

        (2)   The transcript is a true record of the testimony given by 
the  witness. 

        (3)   The name of the person by whom the testimony was recorded 
and,  if not recorded by the officer, whether the testimony was recorded 
in the presence  of the officer. 

        (4)   The presence or absence of any opponent. 

        (5)   The place where the deposition was taken and the day and 
hour  when the deposition began and ended. 

        (6)   The officer is not disqualified under w 1.674. 

        (b)   If the parties waived any of the requirements of paragraph 
(a)  of this section, the certificate shall so state. 

        (c)   The officer shall note on the certificate the circumstances 
under  which a witness refuses to sign a transcript. 

        (d)   Unless the parties agree otherwise in writing or on the 
record  at the deposition, the officer shall securely seal the certified 
transcript  in an envelope endorsed with the style of the interference 
(e.g., Smith v.  Jones), the interference number, the name of the witness, 
and the date of sealing  and shall promptly forward the envelope to BOX 
INTERFERENCE, Commissioner of  Patents and Trademarks, Washington, D.C. 
20231. Documents and things produced  for inspection during the 
examination of a witness, shall, upon request of  a party, be marked for 
identification and annexed to the certified transcript,  and may be 
inspected and copied by any party, except that if the person producing 
the documents and things desires to retain them, the person may: (1) offer 
 copies to be marked for identification and annexed to the certified 
transcript  and to serve thereafter as originals if the person affords to 
all parties fair  opportunity to verify the copies by comparison with the 
originals or (2) offer  the originals to be marked for identification, 
after giving each party an opportunity  to inspect and copy them, in which 
event the documents and things may be used  in the same manner as if 
annexed to the certified 

transcript. The exhibits shall then be filed as specified in w 1.653(i). 
If  the weight or bulk of a document or thing shall reasonably prevent the 
document  or thing from being annexed to the certified transcript, it 
shall, unless waived  on the record at the deposition of all parties, be 
authenticated by the officer  and forwarded to the Commissioner in a 
separate package marked and addressed  as provided in this paragraph. 

        [49 FR 48469, Dec. 12, 1984, added effective Feb. 11, 1985; 50 FR 
23124,  May 31, 1985; para. (a)(40 revised, 60 FR 14488, Mar 17, 1995, 
effective Apr.  21, 1995] 


# 1.677       Form of an affidavit or a transcript of 
             deposition. 

        (a)   An affidavit or a transcript of a deposition must be on 
opaque,  unglazed, durable paper approximately 21.8 by 27.9 cm. (8# by 11 
inches) in  size (letter size). The printed matter shall be double-spaced 
on one side of  the paper in not smaller than 11 point type with a margin 
of 3.8 cm. (1# inches)  on the left-hand side of the page. The pages of 
each transcript must be consecutively  numbered and the name of the 
witness shall appear at the top of each page (w  1.653(e)). In transcripts 
of depositions, the questions propounded to each  witness must be 
consecutively numbered unless paper with numbered lines is  used and each 
question must be followed by its answer. 

        (b)   Exhibits must be numbered consecutively to the extent 
possible  and each must be marked as required by w 1.653(i). 

        [49 FR 48470, Dec. 12, 1984, added effective Feb. 11, 1985; 
revised,  60 FR 14488, Mar 17, 1995, effective Apr. 21, 1995] 


# 1.678       Time for filing transcript of deposition. 


        Unless otherwise ordered by an administrative patent judge, a 
certified  transcript of a deposition must be filed in the Patent and 
Trademark Office  within one month after the date of deposition. If a 
party refuses to file a  certified transcript, the administrative patent 
judge or the Board may take  appropriate action under w 1.616.  If a party 
refuses to file a certified transcript,  any opponent may move for leave 
to file the certified transcript and include  a copy of the transcript as 
part of the opponent's record. 

        [49 FR 48470, Dec. 12, 1984, added effective Feb. 11, 1985; 
revised,  60 FR 14488, Mar 17, 1995, effective Apr. 21, 1995] 


# 1.679       Inspection of transcript. 


        A certified transcript of a deposition filed in the Patent and 
Trademark  Office may be inspected by any 




party. The certified transcript may not be removed from the Patent and 
Trademark  Office unless authorized by an administrative patent judge upon 
such terms  as may be appropriate. 

        [49 FR 48470, Dec. 12, 1984, added effective Feb. 11, 1985; 
revised,  60 FR 14488, Mar 17, 1995, effective Apr. 21, 1995] 


# 1.682       Official records and printed publications. 


  (a)     A party may introduce into evidence, if otherwise admissible, an 
 official record or printed publication not identified in an affidavit or 
on  the record during an oral deposition of a witness, by filing a copy of 
the  official record or printed publication or, if appropriate, a notice 
under w  1.671(e). If the official record or printed publication relates 
to the party's  case-in-chief, it shall be filed or noticed together with 
any affidavits filed  by the party under w 1.672(b) for its case-in-chief 
or, if the party does not  serve any affidavits under w 1.672(b) for its 
case-in-chief, no later than  the date set by an administrative patent 
judge for the party to file affidavits  under w 1.672(b) for its 
case-in-chief. If the official record or printed publication  relates to 
rebuttal, it shall be filed or noticed together with any affidavits  filed by 


the party under w 1.672(b) for the its case-in-rebuttal or, if the party 
does  not file any affidavits under 
w 1.672(b) for its case-in-rebuttal, no later than the date set by an 
administrative  patent judge for the party to file affidavits under w 
1.672(b) for its case-in-rebuttal.  Official records and printed 
publications filed under this paragraph shall  be assigned sequential 
exhibit numbers by the party in the manner set forth  in w 1.672(b). The 
official record and printed publications shall be accompanied  by a paper 
which shall: 

        (1)   Identify the official record or printed publication; 
  (2)     Identify the portion thereof to be introduced in evidence; and 
        (3)   Indicate generally the relevance of the portion sought to be 
 introduced in evidence. 

        (b)   [Reserved] 

  (c)     Unless otherwise ordered by an administrative patent judge, any 
written  objection by an opponent to the paper or to the admissibility of 
the official  record or printed publication shall be filed no later than 
the date set by  the administrative patent judge for the opponent to file 
objections under w  1.672(c) to affidavits submitted by the party under w 
1.672(b). An opponent  who fails to object to the admissibility of the 
official record or printed  publication on a ground that could have been 
raised in a timely objection under  this paragraph will not be entitled to 
move under w 1.656(h) to suppress the  evidence on that ground. If an 
opponent timely files 
an objection, the party may respond by filing one or 
more supplemental affidavits, official records or printed publications, 
which  must be filed together with any supplemental evidence filed by the 
party under w 1.672(c) or, if the party does not file any supplemental 
evidence under w  1.672(c), no later than the date set by an 
administrative patent judge for  the party to file supplemental affidavits 
under w 1.672(c). No objection to  the admissibility of the supplemental 
evidence shall be made, except as provided  by w 1.656(h). The pages of 
supplemental affidavits and the exhibits filed  under this section shall 
be sequentially numbered by the party in the manner  set forth in w 
1.672(c). The supplemental affidavits and exhibits shall be  accompanied 
by an index of witnesses and an index of exhibits of the type required  by 
w 1.672(b). 

        (d)   Any request by an opponent to cross-examine on oral 
deposition  the affiant of a supplemental affidavit submitted under 
paragraph (c) of this  section shall be filed no later than the date set 
by the administrative patent  judge for the opponent to file a request to 
cross-examine an affiant with respect  to an affidavit served by the party 
under w 1.672(b) or (c). If any opponent  requests cross-examination of an 
affiant, the party shall file notice of a  deposition for a reasonable 
location within the United States under w 1.673(e)  for the purpose of 
cross-examination by any opponent. Any redirect and recross  shall take 
place at the deposition. At any deposition for the purpose of 
cross-examination  of a witness, the party shall not be entitled to rely 
on any document or thing  not mentioned in one or more of the affidavits 
filed under this paragraph,  except to the extent necessary to conduct 
proper redirect. The party who gives  notice of a deposition shall be 
responsible for providing a translator if the  witness does not testify in 
English, for obtaining a court reporter, and for  filing a certified 
transcript of the deposition as required by w 1.676. Within  45 days of 
the close of the period for taking cross-examination, the party  shall 
serve (but not file) a copy of each deposition transcript on each opponent 
 together with copies of any additional documentary exhibits identified by 
the  witness during the deposition. The pages of deposition transcripts 
and 



exhibits served under this paragraph shall be sequentially numbered by the 
 party in the manner set forth in 
w 1.672(d). The deposition transcripts shall be accompanied by an index of 
 the names of the witnesses, giving the number of the page where 
cross-examination,  redirect and recross of each witness begins, and an 
index of exhibits of the  type specified in w 1.672(b). 

        [49 FR 48470, Dec. 12, 1984, added effective Feb. 11, 1985; 
revised,  60 FR 14488, Mar 17, 1995, effective Apr. 21, 1995] 


# 1.683       Testimony in another interference, proceeding,            or 



action. 

        (a)   A party may introduce into evidence, if otherwise 
admissible,  testimony by affidavit or oral deposition and referenced 
exhibits from another  interference, proceeding, or action involving the 
same parties by filing a  copy of the affidavit or a copy of the 
transcript of the oral deposition and  the referenced exhibits. If the 
testimony and referenced exhibits relate to  the party's case-in-chief, 
they shall be filed together with any affidavits  served by the party 
under w 1.672(b) for its case-in-chief or, if the party  does not file any 
affidavits under w 1.672(b) for its case-in-chief, no later  than the date 
set by an administrative patent judge for the party to file affidavits 
under w 1.672(b) for its case-in-chief. If the testimony and referenced 
exhibits  relate to rebuttal, they shall be filed together with any 
affidavits served  by the party under w 1.672(b) for its case-in-rebuttal 
or, if the party does  not file any affidavits under w 1.672(b) for its 
case-in-rebuttal, no later  than the date set by an administrative patent 
judge for the party to file affidavits  under w 1.672(b) for its 
case-in-rebuttal. Pages of affidavits and deposition  transcripts served 
under this paragraph and any new exhibits served therewith  shall be 
assigned sequential numbers by the party in the manner set forth in  w 
1.672(b). The testimony shall be accompanied by a paper which specifies 
with  particularity the exact testimony to be used and demonstrates its 
relevance. 


        (b)   Unless otherwise ordered by an administrative patent judge, 
any  written objection by an opponent to the paper or the admissibility of 
the testimony  and referenced exhibits filed under this section shall be 
filed no later than  the date set by the administrative patent judge for 
the opponent to file any  objections under 
w 1.672(c) to affidavits submitted by the party under 
w 1.672(b). An opponent who fails to challenge the admissibility of the 
testimony  or referenced exhibits on a ground that could have been raised 
in a timely  objection under this paragraph will not be entitled to move 
under w 1.656(h) to suppress the evidence on that ground. If an opponent 
timely files  an objection, the party may respond with one or more 
supplemental affidavits,  official records or printed publications, which 
must be filed together with  any supplemental evidence filed by the party 
under w 1.672(c) or, if the party  does not file any supplemental evidence 
under w 1.672(c), no later than the  date set by an administrative patent 
judge for the party to file supplemental  evidence under w 1.672(c). No 
objection to the admissibility of the evidence  contained in or submitted 
with a supplemental affidavit shall be made, except  as provided by w 
1.656(h). The pages of supplemental affidavits and the exhibits  filed 
under this section shall be sequentially numbered by the party in the 
manner set forth in w 1.672(c). The supplemental affidavits and exhibits 
shall  be accompanied by an index of witnesses and an index of exhibits of 
the type  required by w 1.672(b). 

        (c)   Any request by an opponent to cross-examine on oral 
deposition  the affiant of an affidavit or supplemental affidavit 
submitted under paragraph 
(a) or (b) of this section shall be filed no later than the date set by 
the  administrative patent judge for the opponent to file a request to 
cross-examine  an affiant with respect to an affidavit filed by the party 
under w 1.672(b)  or (c). If any opponent requests cross-examination of an 
affiant, the party  shall file a notice of deposition for a reasonable 
location within the United  States under w 1.673(e) for the purpose of 
cross-examination by any opponent.  Any redirect and recross shall take 
place at the deposition. At any deposition  for the purpose of 
cross-examination of a witness, the party shall not be entitled  to rely 
on any document or thing not mentioned in one or more of the affidavits 
filed under this paragraph, except to the extent necessary to conduct 
proper  redirect. The party who gives notice of a deposition shall be 
responsible for  providing a translator if the witness does not testify in 
English, for obtaining  a court reporter, and for filing a certified 
transcript of the deposition as  required by w 1.676. Within 45 days of 
the close of the period for taking cross-examination,  the party shall 
serve (but not file) a copy of each deposition transcript on  each 
opponent together with copies of any additional documentary exhibits 
identified  by the witness during the deposition. The pages of deposition 
transcripts and 



exhibits served under this paragraph shall be sequentially numbered by the 
 party in the manner set forth in 
w 1.672(d). The deposition transcripts shall be accompanied by an index of 
 the names of the witnesses, giving the number of the page where 
cross-examination,  redirect and recross of each witness begins, and an 
index of exhibits of the  type specified in w 1.672(b). 

        [49 FR 48470, Dec. 12, 1984, added effective Feb. 11, 1985; 
revised,  60 FR 14488, Mar 17, 1995, effective Apr. 21, 1995] 


# 1.684       [Reserved] 



# 1.685       Errors and irregularities in depositions. 


        (a)   An error in a notice for taking a deposition is waived 
unless  a motion (w 1.635) to quash the notice is filed as soon as the 
error is, or  could have been, discovered. 

        (b)   An objection to a qualification of an officer taking a 
deposition  is waived unless: 

        (1)   The objection is made on the record of the deposition before 
 a witness begins to testify. 

        (2)   If discovered after the deposition, a motion 
(w 1.635) to suppress the deposition is filed as soon as the objection is, 
 or could have been, discovered. 

        (c)   An error or irregularity in the manner in which testimony is 
 transcribed, a certified transcript is signed by a witness, or a 
certified  transcript is prepared, signed, certified, sealed, endorsed, 
forwarded, filed,  or otherwise handled by the officer is waived unless a 
motion 
(w 1.635) to suppress the deposition is filed as soon as the error of 
irregularity  is, or could have been, discovered. 

        (d)   An objection to the deposition on any grounds, such as the 
competency  of a witness, admissibility of evidence, manner of taking the 
deposition, the  form of questions and answers, any oath or affirmation, 
or conduct of any party  at the deposition, is waived unless an objection 
is made on the record at the  deposition stating the specific ground of 
objection. Any objection which a  party wishes considered by the Board at 
final 


hearing shall be included in a motion to suppress under 
w 1.656(h). 

        (e)   Nothing in this section precludes taking notice of plain 
errors  affecting substantial rights although they were not brought to the 
attention  of an administrative patent judge or the Board. 

        [49FR 48471, Dec. 12, 1984, added effective Feb. 11, 1985; 50 FR 
23124,  May 31, 1985; amended 60 FR 14488-536, Mar 17, 1995] 


# 1.687       Additional discovery. 


        (a)   A party is not entitled to discovery except as authorized in 
 this subpart. 

        (b)   Where appropriate, a party may obtain production of 
documents  and things during cross-examination of an opponent's witness or 
during the  testimony period of the party's case-in-rebuttal. 

        (c)   Upon a motion (w 1.635) brought by a party within the time 
set  by an administrative patent judge under w 1.651 or thereafter as 
authorized  by w 1.645 and upon a showing that the interest of justice so 
requires, an  administrative patent judge may order additional discovery, 
as to matters under  the control of a party within the scope of the 
Federal Rules of Civil Procedure,  specifying the terms and conditions of 
such additional discovery. See w 1.647  concerning translations of 
documents in a foreign language. 

        (d)   The parties may agree to discovery among themselves at any 
time.  In the absence of an agreement, a motion for additional discovery 
shall not  be filed except as authorized by this subpart. 

        [49 FR 48471, Dec. 12, 1984, added effective Feb. 11, 1985; paras. 
(d) & (e) revised, 60 FR 14488, Mar 17, 1995, effective Apr. 21, 1995] 

# 1.688       Use of discovery. 


        (a)   If otherwise admissible, a party may introduce into 
evidence,  an answer to a written request for an admission or an answer to 
a written interrogatory  obtained by discovery under w 1.687 by filing a 
copy of the request for admission  or the written interrogatory and the 
answer. If the answer relates to a party's  case-in-chief, the answer 
shall be served together with any affidavits served  by the party under w 
1.672(b) for its case-in-chief or, if the party does not  serve any 
affidavits under w 1.672(b) for its case-in-chief, no later than  the date 
set by an administrative patent judge for the party to serve affidavits 
under w 1.672(b) for its case-in-chief. If the answer relates to the 
party's  rebuttal, the answer shall be served together with any affidavits 
served by  the party under w 1.672(b) for the its case-in-rebuttal or, if 
the party does  not serve any affidavits under w 1.672(b) for its 
case-in-rebuttal, no later  than the date set by an administrative patent 
judge for the party to serve  affidavits under w 1.672(b) for its 
case-in-rebuttal. 

        (b)   Unless otherwise ordered by an administrative patent judge, 
any  written objection to the admissibility of 



an answer shall be filed no later than the date set by the administrative 
patent  judge for the opponent to file any objections under w 1.672(c) to 
affidavits  submitted by the party under w 1.672(b). An opponent who fails 
to challenge  the admissibility of an answer on a ground that could have 
been raised in a  timely objection under this paragraph will not be 
entitled to move under w  1.656(h) to suppress the evidence on that 
ground. If an opponent timely files  an objection, the party may respond 
with one or more supplemental affidavits,  which must be filed together 
with any supplemental evidence filed by the party  under w 1.672(c) or, if 
the party does not file any supplemental evidence under  w 1.672(c), no 
later than the date set by an administrative patent judge for  the party 
to file supplemental affidavits under w 1.672(c). No objection to  the 
admissibility of the evidence contained in or submitted with a 
supplemental  affidavit shall be made, except as provided by w 1.656(h). 
The pages of supplemental  affidavits and the exhibits filed under this 
section shall be sequentially  numbered by the party in the manner set 
forth in w 1.672(c). The supplemental  affidavits and exhibits shall be 
accompanied by an index of witnesses and an  index of exhibits of the type 
required by w 1.672(b). 

        (c)   Any request by an opponent to cross-examine on oral 
deposition  the affiant of a supplemental affidavit submitted under 
paragraph (b) of this  section shall be filed no later than the date set 
by the administrative patent  judge for the opponent to file a request to 
cross-examine an affiant with respect  to an affidavit filed by the party 
under w 1.672(b) or (c). If any opponent  requests cross-examination of an 
affiant, the party shall file a notice of  deposition for a reasonable 
location within the United States under w 1.673(e)  for the purpose of 
cross-examination by any opponent. Any redirect and recross  shall take 
place at the deposition. At any deposition for the purpose of 
cross-examination  of a witness, the party shall not be entitled to rely 
on any document or thing  not mentioned in one or more of the affidavits 
filed under this paragraph,  except to the extent necessary to conduct 
proper redirect. The party who gives  notice of a deposition shall be 
responsible for providing a translator if the  witness does not testify in 
English, for obtaining a court reporter, and for  filing a certified 
transcript of the deposition as required by 
w 1.676. Within 45 days of the close of the period for taking 
cross-examination,  the party shall serve (but not file) a copy of each 
deposition transcript on  each opponent together with copies of any 
additional documentary exhibits identified  by the witness during 
the deposition. The pages of deposition transcripts and exhibits served 
under  this paragraph shall be sequentially numbered by the party in the 
manner set  forth in 
w 1.672(d). The deposition transcripts shall be accompanied by an index of 
 the names of the witnesses, giving the number of the page where 
cross-examination,  redirect and recross of each witness begins, and an 
index of exhibits of the  type specified in w 1.672(b). 

        (d)   A party may not rely upon any other matter obtained by 
discovery  unless it is introduced into evidence under this subpart. 

        [49 FR 48471, Dec. 12, 1984, added effective Feb.11, 1985; 
revised,  60 FR 14488, Mar 17, 1995, effective Apr. 21, 1995] 


# 1.690       Arbitration of interferences. 


        (a)   Parties to a patent interference may determine the 
interference  or any aspect thereof by arbitration. Such arbitration shall 
be governed by  the provisions of Title 9, United States Code. The parties 
must notify the  Board in writing of their intention to arbitrate. An 
agreement to arbitrate  must be in writing, specify the issues to be 
arbitrated, the name of the arbitrator  or a date not more than thirty 
(30) days after the execution of the agreement  for the selection of the 
arbitrator, and provide that the arbitrator's award  shall be binding on 
the parties and that judgment thereon can be entered by  the Board. A copy 
of the agreement must be filed within twenty (20) days after  its 
execution. The parties shall be solely responsible for the selection of 
the arbitrator and the rules for conducting proceedings before the 
arbitrator.  Issues not disposed of by the arbitration will be resolved in 
accordance with  the procedures established in this subpart, as determined 
by the administrative  patent judge. 

        (b)   An arbitration proceeding under this section shall be 
conducted  within such time as may be authorized on a case-by-case basis 
by an administrative  patent judge. 

        (c)   An arbitration award will be given no consideration unless 
it  is binding on the parties, is in writing and states in a clear and 
definite  manner the issue or issues arbitrated and the disposition of 
each issue The  award may include a statement of the grounds and reasoning 
in support thereof.  Unless otherwise ordered by an administrative patent 
judge, the parties shall  give notice to the 



Board of an arbitration award by filing within twenty (20) days from the 
date  of the award a copy of the award signed by the arbitrator or 
arbitrators. When  an award is timely filed, the award shall, as to the 
parties to the arbitration,  be dispositive of the issue or issues to 
which it relates. 

        (d)   An arbitration award shall not preclude the Office from 
determining  patentability of any invention involved in the interference. 

        (b) Proof may be in the form of patents, printed publications, and 
 affidavits. 

        [Added 52 FR 13838, Apr. 27, 1987; paras. (a)-(c) revised, 60 FR 
14488,  Mar 17, 1995, effective Apr. 21, 1995] 

Subpart F - Extension of Patent Term 


# 1.701       Extension of patent term due to prosecution 
             delay. 

        (a)   A patent, other than for designs, issued on an application 
filed  on or after June 8, 1995, is entitled to extension of the patent 
term if the  issuance of the patent was delayed due to: 

        (1)   interference proceedings under 35 U.S.C. 135(a); and/or 
        (2)   the application being placed under a secrecy order under 35 
U.S.C.  181; and/or 

        (3)   appellate review by the Board of Patent Appeals and 
Interferences  or by a Federal court under 35 U.S.C. 141 or 145, if the 
patent was issued  pursuant to a decision reversing an adverse 
determination of patentability  and if the patent is not subject to a 
terminal disclaimer due to the issuance  of another patent claiming 
subject matter that is not patentably distinct from  that under appellate 
review. 

        (b)   The term of a patent entitled to extension under paragraph 
(a)  of this section shall be extended for the sum of the periods of delay 
calculated  under paragraphs (c)(1), (c)(2), (c)(3), and (d) of this 
section, to the extent  that these periods are not overlapping, up to a 
maximum of five years. The  extension will run from the expiration date of 
the patent. 

        (c)(1)      The period of delay under paragraph (a)(1) of this 
section  for an application is the sum of the following periods, to the 
extent that  the periods are not overlapping: 

        (i)   with respect to each interference in which the application 
was  involved, the number of days, if any, in the period beginning on the 
date the  interference was declared or redeclared to involve the 
application in the interference  and ending on the date that the 
interference was terminated with respect to  the application; and 

        (ii)    the number of days, if any, in the period beginning on the 
 date prosecution in the application was suspended by the Patent and 
Trademark  Office due to interference proceedings under 35 U.S.C. 135(a) 
not involving  the application and ending on the date of the termination 
of the suspension. 
        (2)   The period of delay under paragraph (a)(2) of this section 
for  an application is the sum of the following periods, to the extent 
that the  periods are not overlapping: 

        (i)   the number of days, if any, the application was maintained 
in  a sealed condition under 35 U.S.C. 181; 

        (ii)    the number of days, if any, in the period beginning on the 
 date of mailing of an examiner's answer under # 1.193 in the application 
under  secrecy order and ending on the date the secrecy order and any 
renewal thereof  was removed; 

        (iii)     the member of days, if any, in the period beginning on 
the  date applicant was notified that an interference would be declared 
but for  the secrecy order and ending on the date the secrecy order and 
any renewal  thereof was removed; and 

        (iv)    the number of days, if any, in the period beginning on the 
 date of notification under w5.3(c) and ending on the date of mailing of 
the  notice of allowance under w 1.311. 

        (3)   The period of delay under paragraph (a)(3) of this section 
is  the sum of the number of days, if any, in the period beginning on the 
date  on which an appeal to the Board of Patent Appeals and Interferences 
was filed  under 35 U.S.C. 134 and ending on the date of a final decision 
in favor of  the applicant by the Board of Patent Appeals and 
Interferences or by a Federal  Court in an appeal under 35 U.S.C. 145. 

        (d)   The period of delay set forth in paragraph (c)(3) shall be 
reduced  by: 

        (1)   any time during the period of appellate review that occurred 
 before three years from the filing of the first national application for 
patent  presented for examination; and 

        (2)   any time during the period of appellate review, as 
determined  by the Commissioner, during which the applicant for patent did 
not act with  due diligence. In 




determining the due diligence of an applicant, the Commissioner may 
examine  the facts and circumstances of the applicant's actions during the 
period of  appellate review to determine whether the applicant exhibited 
that degree of  timeliness as may reasonably be expected from, and which 
is ordinarily exercised  by, a person during a period of appellate review. 

        [Added, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995] 

# 1.710       Patents subject to extension of the patent term. 


        (a)   A patent is eligible for extension of the patent term if the 
 patent claims a product as defined in paragraph (b) of this section, 
either  alone or in combination with other ingredients that read on a 
composition that  received permission for commercial marketing or use, or 
a method of using such  a product, or a method of manufacturing such a 
product, and meets all other  conditions and requirements of this subpart. 

        (b)   The term "product" referred to in paragraph (a) of this 
section  means -- 

        (l)   The active ingredient of a new human drug, antibiotic drug, 
or  human biological product (as those terms are used in the Federal Food, 
Drug,  and Cosmetic Act and the Public Health Service Act) including any 
salt or ester  of the active ingredient, as a single entity or in 
combination with another  active ingredient; or 

        (2)   The active ingredient of a new animal drug or veterinary 
biological  product (as those terms are used in the Federal Food, Drug, 
and Cosmetic Act  and the Virus-Serum-Toxin Act) that is not primarily manu- 
factured using recombinant DNA, recombinant RNA, hybridoma technology, or 
other  processes including site specific genetic manipulation techniques, 
including  any salt or ester of the active ingredient, as a single entity 
or in combination  with another active ingredient; or 

        (3)   Any medical device, food additive, or color additive subject 
 to regulation under the Federal Food, Drug, and Cosmetic Act. 

        [Added 52 FR 9394, Mar. 24, 1987, effective May 26, 1987; amended, 
 July 20, 1989, 54 FR 30375, effective Aug. 22, 1989] 


# 1.720       Conditions for extension of patent term. 

        The term of a patent may be extended if: 

        (a)   the patent claims a product or a method of using or 
manufacturing  a product as defined in w 1.710; 

        (b)   the term of the patent has never been previously extended 
except  for any interim extension issued pursuant to w l.760; 

        (c)   an application for extension is submitted in compliance with 
 w 1.740; 

        (d)   the product has been subject to a regulatory review period 
as  defined in 35 U.S.C. 156(g) before its commercial marketing or use; 


        (e)   the product has received permission for commercial marketing 
 or use and -- 

        (1)   The permission for the commercial marketing or use of the 
product  is the first received permission for commercial marketing or use 
under the  provision of law under which the applicable regulatory review 
occurred, or 

        (2)   In the case of a patent other than one directed 
to subject matter within w 1.710(b)(2) claiming a method of manufacturing 
the  product that primarily uses recombinant DNA technology in the 
manufacture of  the product, the permission for the commercial marketing 
or use is the first  received permission for the commercial marketing or 
use of a product manufactured  under the process claimed in the patent, 

  (3)     In the case of a patent claiming a new animal drug or a 
veterinary  biological product that is not covered by the claims in any 
other patent that  has been extended, and has received permission for the 
commercial marketing  or use in non-food-producing animals and in 
food-producing animals, and was  not extended on the basis of the 
regulatory review period for use in non-food-producing  animals, the 
permission for the commercial marketing or use of the drug or  product 
after the regulatory review period for use in food-producing animals  is 
the first permitted commercial marketing or use of the drug or product for 
 administration to a food-producing animal. 

        (f)   The application is submitted within the sixty-day period 
beginning  on the date the product first received permission for 
commercial marketing  or use under the provisions of law under which the 
applicable regulatory review  period occurred; or in the case of a patent 
claiming a method of manufacturing  the product which primarily uses 
recombinant DNA technology in the manufacture  of the product, the 
application for extension is submitted within the sixty-day  period 
beginning on the date of the first permitted commercial marketing or  use 
of a product manufactured under the process claimed in the patent; or in 
the case of a patent that claims a new animal drug or a veterinary 
biological  product that is not covered by the claims in any other patent 
that has been  extended, and said drug or product 




has received permission for the commercial marketing or use in 
non-food-producing  animals, the application for extension is submitted 
within the sixty-day period  beginning on the date of the first permitted 
commercial marketing or use of  the drug or product for administration to 
a food-producing animal; 
        (g)   The term of the patent has not expired before the submission 
 of an application in compliance with 
w 1.741; and 

        (h) No other patent term has been extended for the same regulatory 
 review period for the product. 

        [Added 52 FR 9395, Mar. 24, 1987, effective May 26, 1987; paras. 
(e)  & (f) amended, July 20, 1989, 54 FR 30375, effective Aug. 22, 1989] 

# 1.730       Applicant for extension of patent term. 


        Any application for extension of a patent term must be submitted 
by  the owner of record of the patent or its agent and must comply with 
the requirements  of w 1.740. 

        [Added 52 FR 9395, Mar. 24, 1987, effective May 26, 1987] 

# 1.740       Application for extension of patent term. 


        (a)   An application for extension of patent term must be made in 
writing  to the Commissioner of Patents and Trademarks. A formal 
application for the  extension of patent term shall include: 

        (1)   A complete identification of the approved product as by 
appropriate  chemical and generic name, physical structure or 
characteristics; 
        (2)   A complete identification of the Federal statute including 
the  applicable provision of law under which the regulatory review 
occurred; 
        (3)   An identification of the date on which the product received 
permission  for commercial marketing or use under the provision of law 
under which the  applicable regulatory review period occurred; 

        (4)   In the case of a drug product, an identification of each 
active  ingredient in the product and as to each active ingredient, a 
statement that  it has not been previously approved for commercial 
marketing or use under the  Federal Food Drug and Cosmetic Act, the Public 
Health Service Act, or the Virus-Serum-Toxin  Act, or a statement of when 
the active ingredient was approved for commercial  marketing or use 
(either alone or in combination with other active ingredients)  the use 
for which it was approved, and the provision of law under which it  was 
approved. 

        (5)   A statement that the application is being submitted within 
the  sixty day period permitted for submission pursuant to w l.720(f) and 
an identification  of the date of the last day on which the application 
could be submitted; 
        (6)   A complete identification of the patent for which an 
extension  is being sought by the name of the inventor, the patent number, 
the date of  issue, and the date of expiration; 

        (7)   A copy of the patent for which an extension is being sought, 
 including the entire specification (including claims) and drawings; 
        (8)   A copy of any disclaimer, certificate of correction, receipt 
 of maintenance fee payment, or reexamination certificate issued in the 
patent; 

        (9)   A statement that the patent claims the approved product or a 
 method of using or manufacturing the approved product, and a showing 
which  lists each applicable patent claim and demonstrates the manner in 
which each  applicable patent claim reads on the approved product or a 
method of using  or manufacturing the approved product; 

        (10)    A statement beginning on a new page, of the relevant dates 
 and information pursuant to 35 U.S.C. 156(g) in order to enable the 
Secretary  of Health and Human Services or the Secretary of Agriculture, 
as appropriate,  to determine the applicable regulatory review period as 
follows: 

        (i)   For a patent claiming a human drug, antibiotic, or human 
biological  product, the effective date of the investigational new drug 
(IND) application  and the IND number; the date on which a new drug 
application (NDA) or a Product  License Application (PLA) was initially 
submitted and the NDA or PLA number  and the date on which the NDA was 
approved or the Product License issued; 
        (ii)    For a patent claiming a new animal drug, the date a major 
health  or environmental effects test on the drug was initiated and any 
available substantiation  of the date or the date of an exemption under 
subsection (j) of section 512  of the Federal Food, Drug, and Cosmetic Act 
became effective for such animal  drug; the date on which a new animal 
drug application (NADA) was initially  submitted and the NADA number; and 
the date on which the NADA was approved; 
        (iii)     For a patent claiming a veterinary biological product, 
the  date the authority to prepare an experimental biological product 
under the  Virus-Serum-Toxin 




Act became effective; the date an application for a license was submitted 
under  the Virus-Serum-Toxin Act; and the date the license issued; 

        (iv)    For a patent claiming a food or color additive, the date a 
 major health or environmental effects test on the additive was initiated 
and  any available substantiation of that date; the date on which a 
petition for  product approval under the Federal Food, Drug and Cosmetic 
Act was initially  submitted and the petition number; and the date on 
which the FDA published  a Federal Register notice listing the additive 
for use; 

        (v)   For a patent claiming a medical device, the effective date 
of  the investigational device exemption (IDE) and the IDE number, if 
applicable,  or the date on which the applicant began the first clinical 
investigation involving  the device if no IDE was submitted and any 
available substantiation of that  date; the date on which the application 
for product approval or notice of completion  of a product development 
protocol under section 515 of the Federal Food, Drug  and Cosmetic Act was 
initially submitted and the number of the application;  and the date on 
which the application was approved or the protocol declared  to be completed. 

        (11)    A brief description beginning on a new page of the 
significant  activities undertaken by the marketing applicant during the 
applicable regulatory  review period with respect to the approved product 
and the significant dates  applicable to such activities; 

        (12)    A statement beginning on a new page that in the opinion of 
 the applicant the patent is eligible for the extension and a statement as 
to  the length of extension claimed, including how the length of extension 
was  determined; 

        (13)    A statement that applicant acknowledges a duty to disclose 
 to the Commissioner of Patents and Trademarks and the Secretary of Health 
and  Human Services or the Secretary of Agriculture any information which 
is material  to the determination of entitlement to the extension sought 
(see w 1.765); 
        (14)    The prescribed fee for receiving and acting upon the 
application  for extension (see w 1.20(j)); 

        (15)    The name, address, and telephone number of the person to 
whom  inquiries and correspondence relating to the application for patent 
term extension  are to be directed; 

        (16)    A duplicate of the application papers, certified as such; 
and 
        (17)    An oath or declaration as set forth in paragraph (b) of 
this  section. 

        (b)   Any oath or declaration submitted in compliance with 
paragraph 
(a) of this section must be signed by the owner of record of the patent or 
 its agent, specifically identify the papers and the patent for which an 
extension  is sought and aver that the person signing the oath or 
declaration: 
        (l)   Is the owner, an official of a corporate owner authorized to 
 obligate the corporation, or a patent attorney or agent authorized to 
practice  before the Patent and Trademark Office and who has general 
authority from the  owner to act on behalf of the owner in patent matters. 

        (2)   Has reviewed and understands the contents of the application 
 being submitted pursuant to this section; 

        (3)   Believes the patent is subject to extension pursuant to w 
1.710; 

        (4)   Believes an extension of the length claimed is justified 
under  35 U.S.C. 156 and the applicable regulations; and 

        (5)   Believes the patent for which the extension is being sought 
meets  the conditions for extension of the term of a patent as set forth 
in w 1.720. 
        (c)   If any application for extension of patent term submitted 
pursuant  to this section is held to be informal, applicant may seek to 
have that holding  reviewed by filing a petition with the required fee, as 
necessary, pursuant  to ww 1.181, l.182 or l.183, as appropriate, within 
such time as may be set  in the notice that the application has been held 
to be informal, or if no time  is set, within one month of the date on 
which the application was held informal.  The time periods set forth 
herein are subject to the provisions of 37 CFR 1.136. 
        [Added 52 FR 9395, Mar. 24, 1987, effective May 26, 1987; para. 
(a)  amended July 20, 1989, 54 FR 30375, effective Aug. 22, 1989; para. 
(a)(14),  56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991] 


# 1.741       Filing date of application. 


        (a)   The filing date of an application for extension of patent 
term  is the date on which a complete application is received in the 
Patent and Trademark  Office or filed pursuant to the "Certificate of 
Mailing or Transmission" provisions  of 37 CFR 1.8 or "Express Mail" 
provisions of 37 CFR 1.10. 

        A complete application shall include: 

        (1)   An identification of the approved product; 



        (2)   An identification of each Federal statute under which 
regulatory  review occurred; 

        (3)   An identification of the patent for which an extension is 
being  sought; 

        (4)   An identification of each claim of the patent which claims 
the  approved product or a method of using or manufacturing the approved 
product; 
        (5)   Sufficient information to enable the Commissioner to 
determine  under 35 U.S.C. 156 subsections (a) and (b) the eligibility of 
a patent for  extension and the rights that will be derived from the 
extension and information  to enable the Commissioner and the Secretary of 
Health and Human Services or  the Secretary of Agriculture to determine 
the length of the regulatory review  period; and 

        (6)   A brief description of the activities undertaken by the 
marketing  applicant during the applicable regulatory review period with 
respect to the  approved product and the significant dates applicable to 
such activities. 
        (b)   If any application submitted pursuant to this section is 
held  to be incomplete, applicant may seek to have this holding reviewed 
under w  1.181. 

        [Added 52 FR 9396, Mar. 24, 1987, effective May 26, 1987; para. 
(a)  amended 54 FR 30375, July 20, 1989, effective Aug. 22, 1989; para. 
(a) amended,  58 FR 54494, Oct. 22, 1993, effective Nov. 22, 1993] 


# 1.750       Determination of eligibility for extension of 
             patent 


term. 

    A determination as to whether a patent is eligible for extension may 
be  made by the Commissioner solely 
on the basis of the representations contained in the application for 
extension  filed in compliance with 
w  1.740 or w 1.790. This determination may be delegated to appropriate 
Patent  and Trademark Office officials and may be made at any time before 
the certificate  of extension is issued. The Commissioner or other 
appropriate officials may  require from applicant further information or 
make such independent inquiries  as desired before a final determination 
is made on whether a patent is eligible  for extension. In an application 
for extension filed in compliance with w 1.740,  a notice will be mailed 
to applicant containing the determination as to the  eligibility of the 
patent for extension and the period of time of the extension,  if any. 
This notice shall constitute the final determination as to the eligibility 
 and any period of extension of the patent.  A single request for 
reconsideration  of a final determination may be made if filed by the 
applicant within such  time as may be set in the notice of final 
determination or, if no time is set,  within one month from the date of 
the final determination. The time periods  set forth herein are subject to 
the provisions of w 1.136. 

        [Added 52 FR 9396, Mar. 24, 1987, effective May 26, 1987; revised, 
 60 FR 25615, May 12, 1995, effective July 11, 1995] 


# 1.760       Interim extension of patent term under 
             35 


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

        An applicant who has filed a formal application for extension in 
compliance  with w 1.740 may request one or more interim extensions for 
periods of up to  one year each pending a final determination on the 
application pursuant to  w 1.750. Any such request should be filed at 
least three months prior to the  expiration date of the patent. The 
Commissioner may issue interim extensions,  without a request by the 
applicant, for periods of up to one year each until  a final determination 
is made. The patent owner or agent will be notified when  an interim 
extension is granted and notice of the extension will be published  in the 
Official Gazette of the Patent and Trademark Office. The notice will  be 
recorded in the official file of the patent and will be considered as part 
 of the original patent. In no event will the interim extensions granted 
under  this section be longer than the maximum period for extension to 
which the applicant  would be eligible. 

        [Added 52 FR 9396, Mar. 24, 1987, effective May 26, 1987; heading 
revised,  60 FR 25615, May 12, 1995, effective July 11, 1995] 


# 1.765       Duty of disclosure in patent term extension 
             proceedings. 

        (a)   A duty of candor and good faith toward the Patent and 
Trademark  Office and the Secretary of Health and Human Services or the 
Secretary of Agriculture  rests on the patent owner or its agent, on each 
attorney or agent who represents  the patent owner and on every other 
individual who is substantively involved  on behalf of the patent owner in 
a patent term extension proceeding. All such  individuals who are aware, 
or become aware, of material information adverse  to a determination of 
entitlement to the extension sought, which has not been  previously made 
of record in the patent term extension proceeding must bring  such 
information to the attention of the Office or the Secretary, as 
appropriate,  in accordance with paragraph (b) of this section, as soon as 
it is practical  to do so after 



the individual becomes aware of the information.  Information is material 
where  there is a substantial likelihood that the Office or the Secretary 
wouldconsider  it important in determinations to be made in the patent 
term extension proceeding. 
        (b)   Disclosures pursuant to this section must be accompanied by 
a  copy of each written document which is being disclosed. The disclosure 
must  be made to the Office or the Secretary, as appropriate, unless the 
disclosure  is material to determinations to be made by both the Office 
and the Secretary,  in which case duplicate copies, certified as such, 
must be filed in the Office  and with the Secretary. Disclosures pursuant 
to this section may be made to  the Office or the Secretary, as 
appropriate, through an attorney or agent having  responsibility on behalf 
of the patent owner or its agent for the patent term  extension proceeding 
or through a patent owner acting on his or her own behalf.  Disclosure to 
such an attorney, agent or patent owner shall satisfy the duty  of any 
other individual. Such an attorney, agent or patent owner has no duty  to 
transmit information which is not material to the determination of 
entitlement  to the extension sought. 

        (c)   No patent will be determined eligible for extension and no 
extension  will be issued if it is determined that fraud on the Office or 
the Secretary  was practiced or attempted or the duty of disclosure was 
violated through bad  faith or gross negligence in connection with the 
patent term extension proceeding  If it is established by clear and 
convincing evidence that any fraud was practiced  or attempted on the 
Office or the Secretary in connection with the patent term  extension 
proceeding or that there was any violation of the duty of disclosure 
through bad faith or gross negligence in connection with the patent term 
extension  proceeding, a final determination will be made pursuant to w 
1.750 that the  patent is not eligible for extension. 

        (d)   The duty of disclosure pursuant to this section rests on the 
 individuals identified in paragraph (a) of this section and no submission 
on  behalf of third parties, in the form of protests or otherwise, will be 
considered  by the Office. Any such submissions by third parties to the 
Office will be  returned to the party making the submission, or otherwise 
disposed of, without  consideration by the Office. 

        [Added 52 FR 9396, Mar. 24 1987, effective May 26, 1987, para. (a) 
 amended 54 FR 30375, July 20, 1989, effective Aug. 22, 1989; para. (a) 
revised,  60 FR 25615, May 12, 1995, effective July 11, 1995] 


# 1.770       Express withdrawal of application for 
             extension 


of patent term. 

        An application for extension of patent term may be expressly 
withdrawn  before a determination is made pursuant to w 1.750 by filing in 
the Office,  in duplicate, a written declaration of withdrawal signed by 
the owner of record  of the patent or its agent. An application may not be 
expressly withdrawn after  the date permitted for response to the final 
determination on the application.  An express withdrawal pursuant to this 
section is effective when acknowledged  in writing by the Office. The 
filing of an express withdrawal pursuant to this  section and its 
acceptance by the Office does not entitle applicant to a refund  of the 
filing fee (w 1.20(j)) or any portion thereof. 

        [Added 52 FR 9397, Mar. 24 1987, effective May 26, 1987; 56 FR 
65142,  Dec. 13, 1991, effective Dec. 16, 1991] 


# 1.775       Calculation of patent term extension for a 
     drug, 


antibiotic drug, or human biological                            product. 
        (a)   If a determination is made pursuant to w 1.750 that a patent 
 for a human drug, antibiotic drug, or human biological product is 
eligible  for extension, the term shall be extended by the time as 
calculated in days  in the manner indicated by this section. The patent 
term extension will run  from the original expiration date of the patent 
or any earlier date set by  terminal disclaimer (w 1.321). 

        (b)   The term of the patent for a human drug, antibiotic drug or 
human  biological product will be extended by the length of the regulatory 
review  period for the product as determined by the Secretary of Health 
and Human Services,  reduced as appropriate pursuant to paragraphs (d)(1) 
through (d)(6) of this  section. 

        (c)   The length of the regulatory review period for a human drug, 
 antibiotic drug or human biological product will be determined by the 
Secretary  of Health and Human Services. Under 35 U.S.C. 156(g)(1)(B), it 
is the sum of  -- 

        (1)   The number of days in the period beginning on the date an 
exemption  under subsection (i) of section 505 or subsection (d) of 
section 507 of the  Federal Food, Drug and Cosmetic Act became effective 
for the approved human  drug product and ending on the date an application 
was initially submitted  for such product 




under those sections or under section 351 of the Public Health Service 
Act;  and 

        (2)   The number of days in the period beginning on the date the 
application  was initially submitted for the approved product under 
section 351 of the Public  Health Service Act, subsection (b) of section 
505 or section 507 of the Federal  Food, Drug, and Cosmetic Act and ending 
on the date such application was approved  under such section. 

        (d)   The term of the patent as extended for a human drug, 
antibiotic  drug or human biological product will be determined by- 

        (1)   Subtracting from the number of days determined by the 
Secretary  of Health and Human Services to be in the regulatory review 
period: 
        (i)   The number of days in the periods of paragraphs (c)(1) and 
(c)(2)  of this section which were on and before the date on which the 
patent issued; 

        (ii)    The number of days in the periods of paragraphs (c)(1) and 
(c)(2) of this section during which it is determined under 35 U.S.C. 
156(d)(2)(B)  by the Secretary of Health and Human Services that applicant 
did not act with  due diligence; 

        (iii)     One-half the number of days remaining in the period 
defined  by paragraph (c)(1) of this section after that period is reduced 
in accordance  with para- graphs (d)(1)(i) and (ii) of this section; half 
days will be ignored  for purposes of subtraction; 

        (2)   By adding the number of days determined in paragraph (d)(1) 
of  this section to the original term of the patent as shortened by any 
terminal  disclaimer; 

        (3)   By adding 14 years to the date of approval of the 
application  under section 351 of the Public Health Service Act, or 
subsection (b) of section  505 or section 507 of the Federal Food, Drug, 
and Cosmetic Act; 

        (4)   By comparing the dates for the ends of the periods obtained 
pursuant  to paragraphs (d)(2) and (d)(3) of this section with each other 
and selecting  the earlier date; 

        (5)   If the original patent was issued after September 24, 1984, 
        (i)   By adding 5 years to the original expiration date of the 
patent  or any earlier date set by terminal disclaimer; and 

        (ii)    By comparing the dates obtained pursuant to paragraphs 
(d)(4)  and (d)(5)(i) of this section with each other and selecting the 
earlier date; 
        (6)   If the original patent was issued before September 24, 1984, 
 and 

        (i)   If no request was submitted for an exemption under 
subsection 
(i) of section 505 or subsection (d) of section 507 of the Federal Food, 
Drug  and Cosmetic Act before September 24, 1984, by- 

        (A)   Adding 5 years to the original expiration date of the patent 
 or earlier date set by terminal disclaimer; and 

        (B)   By comparing the dates obtained pursuant to paragraphs 
(d)(4)  and (d)(6)(i)(A) of this section with each other and selecting the 
earlier  date; or 

        (ii)    If a request was submitted for an exemption under 
subsection 
(i) of section 505 or subsection (d) of section 507 of the Federal Food, 
Drug,  or Cosmetic Act before September 24, 1984 and the commercial 
marketing or use  of the product was not approved before September 24, 
1984, by - 

        (A)   Adding 2 years to the original expiration date of the patent 
 or earlier date set by terminal disclaimer, and 

        (B)   By comparing the dates obtained pursuant to paragraphs 
(d)(4)  and (d)(6)(ii)(A) of this section with each other and selecting 
the earlier  filing date. 

        [Added 52 FR 9397, Mar. 24 1987, effective May 26, 1987] 


# 1.776       Calculation of patent term extension for a food 
             additive 


or color additive. 

        (a)   If a determination is made pursuant to w 1.750 that a patent 
 for a food additive or color additive is eligible for extension, the term 
shall  be extended by the time as calculated in days in the manner 
indicated by this  section. The patent term extension will run from the 
original expiration date  of the patent or earlier date set by terminal 
disclaimer (w 1.321). 
        (b)   The term of the patent for a food additive or color additive 
 will be extended by the length of the regulatory review period for the 
product  as determined by the Secretary of Health and Human Services, 
reduced as appropriate  pursuant to paragraphs (d)(1) through (d)(6) of 
this section. 

        (c)   he length of the regulatory review period for a food 
additive  or color additive will be determined by the Secretary of Health 
and Human Services.  Under 
35 U.S.C. 156(g)(2)(B), it is the sum of - 

        (1)   The number of days in the period beginning on the date a 
major  health or environmental effects test on the additive was initiated 
and ending  on the date a 




petition was initially submitted with respect to the approved product 
under  the Federal Food, Drug, and 


Cosmetic Act requesting the issuance of a regulation for use of the 
product;  and 

        (2)   The number of days in the period beginning on the date a 
petition  was initially submitted with respect to the approved product 
under the Federal  Food, Drug and Cosmetic Act requesting the issuance of 
a regulation for use  of the product, and ending on the date such 
regulation became effective or,  if objections were filed to such 
regulation, ending on the date such objections  were resolved and 
commercial marketing was permitted or, if commercial marketing  was 
permitted and later revoked pending further proceedings as a result of 
such objections, ending on the date such proceedings were finally resolved 
 and commercial marketing was permitted. 

        (d)   The term of the patent as extended for a food additive or 
color  additive will be determined by 

        (1)   Subtracting from the number of days determined by the 
Secretary  of Health and Human Services to be in the regulatory review 
period: 
        (i)   The number of days in the periods of paragraphs (c)(1) and 
(c)(2)  of this section which were on and before the date on which the 
patent issued; 

        (ii)    The number of days in the periods of paragraphs (c)(1) and 
(c)(2) of this section during which it is determined under 35 U.S.C. 
156(d)(2)(B)  by the Secretary of Health and Human Services that applicant 
did not act with  due diligence; 

        (iii)     The number of days equal to one-half the number of days 
remaining  in the period defined by paragraph (c)(1) of this section after 
that period  is reduced in accordance with paragraphs (d)(1) (i) and (ii) 
of this section;  half days will be ignored for purposes of subtraction; 


        (2)   By adding the number of days determined in paragraph (d)(1) 
of  this section to the original term of the patent as shortened by any 
terminal  disclaimer; 

        (3) By adding 14 years to the date a regulation for use of the 
product  became effective or, if objections were filed to such regulation, 
to the date  such objections were resolved and commercial marketing was 
permitted or, if  commercial marketing was permitted and later revoked 
pending further proceedings  as a result of such objections, to the date 
such proceedings were finally resolved  and commercial marketing was 
permitted; 

        (4)   By comparing the dates for the ends of the periods obtained 
pursuant  to paragraphs (d)(2) and (d)(3) of this section with each other 
and selecting  the earlier date; 

        (5)   If the original patent was issued after September 24, 1984, 
        (i)   By adding 5 years to the original expiration date of the 
patent  or earlier date set by terminal disclaimer; and 

        (ii)    By comparing the dates obtained pursuant to paragraphs 
(d)(4)  and (d)(5)(i) of this section with each other and selecting the 
earlier date; 
        (6)   If the original patent was issued before September 24, 1984, 
 and 

        (i)   If no major health or environmental effects test was 
initiated  and no petition for a regulation or application for 
registration was submitted  before September 24, 1984, by 

        (A)   Adding 5 years to the original expiration date of the patent 
 or earlier date set by terminal disclaimer, and 

        (B)   By comparing the dates obtained pursuant to paragraphs 
(d)(4)  and (d)(6)(i)(A) of this section with each other and selecting the 
earlier  date; or 

        (ii)    If a major health or environmental effects test was 
initiated  or a petition for a regulation or application for registration 
was submitted  by September 24, 1984, and the commercial marketing or use 
of the product was  not approved before September 24, 1984, by -- 

        (A)   Adding 2 years to the original expiration date of the patent 
 or earlier date set by terminal disclaimer, and 

        (B)   By comparing the dates obtained pursuant to paragraphs 
(d)(4)  and (d)(6)(ii)(A) of this section with each other and selecting 
the earlier  date. 

        [Added 52 FR 9397, Mar. 24, 1987, effective May 26, 1987] 

# 1.777       Calculation of patent term extension for a 
                     medical 


device. 

        (a)   If a determination is made pursuant to w 1.750 that a patent 
 for a medical device is eligible for extension, the term shall be 
extended  by the time as calculated in days in the manner indicated by 
this section.  The patent term extension will run from the original 
expiration date of the  patent or earlier date as set by terminal 
disclaimer (w 1.321). 

        (b)   The term of the patent for a medical device will be extended 
 by the length of the regulatory review period for the product as 
determined  by the Secretary of Health 



and Human Services, reduced as appropriate pursuant to paragraphs (d)(1) 
through 
(d)(6) of this section. 

        (c)   The length of the regulatory review period for 
a medical device will be determined by the Secretary 
of Health and Human Services. Under 35 U.S.C. 156(g)(3)(B), it is the sum 
of 
        (1)   The number of days in the period beginning on the date a 
clinical  investigation on humans involving the device was begun and 
ending on the date  an application was initially submitted with respect to 
the device under section  515 of the Federal Food, Drug, and Cosmetic Act; and 

        (2)   The number of days in the period beginning on the date the 
application  was initially submitted with respect to the device under 
section 515 of the  Federal Food, Drug, and Cosmetic Act, and ending on 
the date such application  was approved under such Act or the period 
beginning on the date a notice of  completion of a product development 
protocol was initially submitted under  section 515(f)(5) of the Act and 
ending on the date the protocol was declared  completed under section 
515(f)(6) of the Act. 

        (d)   The term of the patent as extended for a medical device will 
 be determined by -- 

        (1)   Subtracting from the number of days determined by the 
Secretary  of Health and Human Services to be in the regulatory review 
period pursuant  to paragraph (c) of this section: 

        (i)   The number of days in the periods of paragraphs (c)(1) and 
(c)(2)  of this section which were on and before the date on which the 
patent issued; 

        (ii)    The number of days in the periods of paragraphs (c)(1) and 
(c)(2) of this section during which it is determined under 35 U.S.C. 
156(d)(2)(B)  by the Secretary of Health and Human Services that applicant 
did not act with  due diligence; 

        (iii)     One-half the number of days remaining in the period 
defined  by paragraph (c)(1) of this section after that period is reduced 
in accordance  with paragraphs (d)(1) (i) and (ii) of this section; half 
days will be ignored  for purposes of subtraction; 

        (2)   By adding the number of days determined in paragraph (d)(1) 
of  this section to the original term of the patent as shortened by any 
terminal  disclaimer; 

        (3)   By adding 14 years to the date of approval of 
the application under section 515 of the Federal Food, Drug, and Cosmetic 
Act  or the date a product development protocol was declared completed 
under section  515(f)(6) of the Act; 

        (4)   By comparing the dates for the ends of the periods obtained 
pursuant  to paragraphs (d)(2) and (d)(3) of this section with each other 
and selecting  the earlier date; 

        (5)   If the original patent was issued after September 24, 1984, 
        (i)   By adding 5 years to the original expiration date of the 
patent  or earlier date set by terminal disclaimer; and 

        (ii)    By comparing the dates obtained pursuant to paragraphs 
(d)(4)  and (d)(5)(i) of this section with each other and selecting the 
earlier date; 
        (6)   If the original patent was issued before September 24, 1984, 
 and 

        (i)   If no clinical investigation on humans involving the device 
was  begun or no product development protocol was submitted under section 
515(f)(5)  of the Federal Food, Drug and Cosmetic Act before September 24, 
1984, by -- 
        (A)   Adding 5 years to the original expiration date of the patent 
 or earlier date set by terminal disclaimer, and 

        (B)   By comparing the dates obtained pursuant to paragraphs 
(d)(4)  and (d)(6)(i)(A) of this section with each other and selecting the 
earlier  date; or 

        (ii)    If a clinical investigation on humans involving the device 
 was begun or a product development protocol was submitted under section 
515(f)(5)  of the Federal Food, Drug, and Cosmetic Act before September 
24, 1984 and the  commercial marketing or use of the product was not 
approved before September  24, 1984, by 

        (A)   Adding 2 years to the original expiration date of the patent 
 or earlier date set by terminal disclaimer, and 

        (B)   By comparing the dates obtained pursuant to paragraphs 
(d)(4)  and (d)(6)(ii)(A) of this section with each other and selecting 
the earlier  date. 

        [Added 52 FR 9398, Mar. 24 1987, effective May 26, 1987] 


# 1.778             Calculation of patent term extension for an 
                             animal 


drug product. 

        (a)   If a determination is made pursuant to w 1.750 that a patent 
 for an animal drug is eligible for extension, the term shall be extended 
by  the time as calculated in days in the manner indicated by this 
section. The  patent term extension will run from the original expiration date 



of the patent or any earlier date set by terminal disclaimer (w 1.321). 
        (b)   The term of the patent for an animal drug will be extended 
by  the length of the regulatory review period for the drug as determined 
by the  Secretary of Health and Human Services, reduced as appropriate 
pursuant to  paragraphs (d)(1) through (d)(6) of this section. 

        (c)   The length of the regulatory review period for an animal 
drug  will be determined by the Secretary 
of Health and Human Services. Under 35 U.S.C. 156(g)(4)(B), it is the sum 
of  -- 

        (1)   The number of days in the period beginning on the earlier of 
 the date a major health or environmental effects test on the drug was 
initiated  or the date an exemption under subsection (j) of section 512 of 
the Federal  Food, Drug, and Cosmetic Act became effective for the 
approved animal drug  and ending on the date an application was initially 
submitted for such animal  drug under section 512 of the Federal Food, 
Drug, and Cosmetic Act; and 
        (2)   The number of days in the period beginning on the date the 
application  was initially submitted for the approved animal drug under 
subsection (b) of  section 512 of the Federal Food, Drug, and Cosmetic Act 
and ending on the date  such application was approved under such section. 

        (d)   The term of the patent as extended for an animal drug will 
be  determined by -- 

        (1)   Subtracting from the number of days determined by the 
Secretary  of Health and Human Services to be in the regulatory review 
period: 
        (i)   The number of days in the periods of paragraphs (c)(1) and 
(c)(2)  of this section that were on and before the date on which the 
patent issued; 
        (ii)    The number of days in the periods of paragraphs (c)(1) and 
(c)(2) of this section during which it is determined under 35 U.S.C. 
156(d)(2)(B)  by the Secretary of Health and Human Services that applicant 
did not act with  due diligence; 

        (iii)     One-half the number of days remaining in the period 
defined  by paragraph (c)(1) of this section after that period is reduced 
in accordance  with paragraphs (d)(1)(i) and (ii) of this section; half 
days will be ignored  for purposes of subtraction; 

        (2)   By adding the number of days determined in paragraph (d)(1) 
of  this section to the original term of the patent as shortened by any 
terminal  disclaimer; 

        (3)   By adding 14 years to the date of approval of the 
application  under section 512 of the Federal Food, Drug, and Cosmetic Act; 

        (4)   By comparing the dates for the ends of the periods obtained 
pursuant  to paragraphs (d)(2) and (d)(3) of this section with each other 
and selecting  the earlier date; 

        (5)   If the original patent was issued after November 16, 1988, 
by  - 

        (i)   Adding 5 years to the original expiration date of the patent 
 or any earlier date set by terminal disclaimer; and 

        (ii)    Comparing the dates obtained pursuant to paragraphs (d)(4) 
 and (d)(5)(i) of this section with each other and selecting the earlier 
date; 
        (6)   If the original patent was issued before November 16, 1988, 
and 
        (i)   If no major health or environmental effects test on the drug 
 was initiated and no request was submitted for an exemption under 
subsection 
(j) of section 512 of the Federal Food, Drug, and Cosmetic Act before 
November  16, 1988, by - 

        (A)   Adding 5 years to the original expiration date of the patent 
 or earlier date set by terminal disclaimer; and 

        (B)   Comparing the dates obtained pursuant to paragraphs (d)(4) 
and 
(d)(6)(i)(A) of this section with each other and selecting the earlier 
date;  or 

        (ii)    If a major health or environmental effects test was 
initiated  or a request for an exemption under subsection (j) of section 
512 of the Federal  Food, Drug, and Cosmetic Act was submitted before 
November 16, 1988, and the  application for commercial marketing or use of 
the animal drug was not approved  before November 16, 1988, by - 

        (A)   Adding 3 years to the original expiration date of the patent 
 or earlier date set by terminal disclaimer, and 

        (B)   Comparing the dates obtained pursuant to paragraphs (d)(4) 
and 
(d)(6)(ii)(A) of this section with each other and selecting the earlier 
date. 
        [Added July 20, 1989, 54 FR 30375, effective Aug. 22, 1989] 

# 1.779       Calculation of patent term extension for a 
     veterinary 


biological product. 

        (a)   If a determination is made pursuant to w 1.750 that a patent 
 for a veterinary biological product is eligible for extension, the term 
shall  be extended by the 




time as calculated in days in the manner indicated by this section. The 
patent  term extension will run from the original expiration date of the 
patent or  any earlier date set by terminal disclaimer (w 1.321). 

        (b)   The term of the patent for a veterinary biological product 
will  be extended by the length of the regulatory review period for the 
product as  determined by the Secretary of Agriculture, reduced as 
appropriate pursuant  to paragraphs (d)(1) through (d)(6) of this section. 

        (c)   The length of the regulatory review period for a veterinary 
biological  product will be determined by the Secretary of Agriculture. 
Under 35 U.S.C.  156(g)(5)(B), it is the sum of - 

        (1) The number of days in the period beginning on the date the 
authority  to prepare an experimental biological product under the 
Virus-Serum-Toxin Act  became effective and ending on the date an 
application for a license was submitted  under the Virus-Serum-Toxin Act; and 

        (2)   The number of days in the period beginning on the date an 
application  for a license was initially submitted for approval under the 
Virus-Serum-Toxin  Act and ending on the date such license was issued. 

        (d)   The term of the patent as extended for a veterinary 
biological  product will be determined by - 

        (1)   Subtracting from the number of days determined by the 
Secretary  of Agriculture to be in the regulatory review period: 

        (i)   The number of days in the periods of paragraphs (c)(1) and 
(c)(2)  of this section that were on and before the date on which the 
patent issued; 
        (ii)    The number of days in the periods of paragraphs (c)(1) and 
(c)(2) of this section during which it is determined under 35 U.S.C. 
156(d)(2)(B)  by the Secretary of Agriculture that applicant did not act 
with due diligence; 
        (iii)     One-half the number of days remaining in the period 
defined  by paragraph (c)(1) of this section after that period is reduced 
in accordance  with paragraphs (d)(1)(i) and (ii) of this section; half 
days will be ignored  for purposes of subtraction; 

        (2)   By adding the number of days determined in paragraph (d)(1) 
of  this section to the original term of the patent as shortened by any 
terminal  disclaimer; 

        (3)   By adding 14 years to the date of the issuance of a license 
under  the Virus-Serum-Toxin Act; 

        (4)   By comparing the dates for the ends of the periods obtained 
pursuant  to paragraphs (d)(2) and (d)(3) of this section with each other 
and selecting  the earlier date; 

        (5)   If the original patent was issued after November 16, 1988, 
by  -- 

        (i)   Adding 5 years to the original expiration date of the patent 
 or any earlier date set by terminal disclaimer; and 

        (ii)    Comparing the dates obtained pursuant to paragraphs (d)(4) 
 and (d)(5)(i) of this section with each other and selecting the earlier 
date; 
        (6)   If the original patent was issued before November 16, 1988, 
and 
        (i)   If no request for the authority to prepare an experimental 
biological  product under the Virus-Serum-Toxin Act was submitted before 
November 16, 1988,  by -- 

        (A)   Adding 5 years to the original expiration date of the patent 
 or earlier date set by terminal disclaimer; and 

        (B)   Comparing the dates obtained pursuant to paragraphs (d)(4) 
and 
(d)(6)(i)(A) of this section with each other and selecting the earlier 
date;  or 

        (ii)    If a request for the authority to prepare an experimental 
biological  product under the Virus-Serum-Toxin Act was submitted before 
November 16, 1988,  and the commercial marketing or use of the product was 
not approved before  November 16, 1988, by -- 

        (A)   Adding 3 years to the original expiration date of the patent 
 or earlier date set by terminal disclaimer; and 

        (B)   Comparing the dates obtained pursuant to paragraphs (d)(4) 
and 
(d)(6)(ii)(A) of this section with each other and selecting the earlier 
date. 
        [Added 54 FR 30375, July 20, 1989, effective Aug. 22, 1989] 

# 1.780       Certificate of extension of patent term. 


        If a determination is made pursuant to w 1.750 that a patent is 
eligible  for extension and that the term of the patent is to be extended, 
a certificate  of extension, under seal, or certificate of interim 
extension under 35 U.S.C.  156(d)(5) will be issued to the applicant for 
the extension of the patent term.  Such certificate will be recorded in 
the official file of the patent and will  be considered as 




part of the original patent. Notification of the issuance of the 
certificate  of extension will be published in the Official Gazette of the 
Patent and Trademark  Office.  Notification of the issuance of the 
certificate of interim extension  under 35 U.S.C. 156(d)(5), including the 
identity of the product currently  under regulatory review, will be 
published in the Official Gazette of the Patent  and Trademark Office and 
in the Federal Register.  No certificate of extension  will be issued if 
the term of the patent cannot be extended, even though the  patent is 
otherwise determined to be eligible for extension. In such situations  the 
final determination made pursuant to w 1.750 will indicate that no 
certificate  will issue. 

        [Added 52 FR 9399, Mar. 24 1987, effective May 26, 1987; para. (a) 
 revised, 60 FR 25615, May 12, 1995, effective July 11, 1995] 


# 1.785       Multiple applications for extension of term of 
                     the 


same patent or of different patents for the                     same 
regulatory  review period for a product. 

  (a)     Only one patent may be extended for a regulatory review period 
for  any product w 1.720 (h)). If more than one application for extension 
of the  same patent is filed, the certificate of extension of patent term, 
if appropriate,  will be issued based upon the first filed application for 
extension. 
        (b)   If more than one application for extension is filed by a 
single  applicant which seeks the extension of the term of two or more 
patents based  upon the same regulatory review period, and the patents are 
otherwise eligible  for extension pursuant to the requirements of this 
subpart, in the absence  of an election by the applicant, the certificate 
of extension of patent term,  if appropriate, will be issued upon the 
application for extension of the patent  term having the earliest date of 
issuance of those patents for which extension  is sought. 

        (c)   If an application for extension is filed which seeks the 
extension  of the term of a patent based upon the same regulatory review 
period as that  relied upon in one or more applications for extension 
pursuant to the requirements  of this subpart, the certificate of 
extension of patent term will be issued  on the application only if the 
patent owner or its agent is the holder of the  regulatory approval 
granted with respect to the regulatory review period. 
        (d)   An application for extension shall be considered complete 
and  formal regardless of whether it contains the identification of the 
holder of  the regulatory approval granted with respect to the regulatory 
review period.  When an application contains such information, or is 
amended to contain such  information, it will be considered in determining 
whether an application is  eligible for an extension under this section. A 
request may be made of any  applicant to supply such information within a 
non-extendable period of not  less than one (1) month whenever multiple 
applications for extension of more  than one patent are received and rely 
upon the same regulatory review period.  Failure to provide such 
information within the period for response set shall  be regarded as 
conclusively establishing that the applicant is not the holder  of the 
regulatory approval. 

        (e)   Determinations made under this section shall be included in 
the  notice of final determination of eligibility for extension of the 
patent term  pursuant to w 1.750 and shall be regarded as part of that 
determination. 
        [Added 52 FR 9399, Mar. 24 1987, effective May 26, 1987; para. (b) 
 amended 54 FR 30375, July 20, 1989, effective Aug. 22, 1989; revised, 60 
FR  25615, May 12, 1995, effective July 11, 1995] 


# 1.790       Interim extension of patent term under 

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

        (a)   An owner of record of a patent or its agent 
who reasonably expects that the applicable regula- 
tory review period described in paragraph (1)(B)(ii), (2)(B)(ii), 
(3)(B)(ii), 
(4)(B)(ii), or (5)(B)(ii) of subsection (g) that began for a product that 
is  the subject of such patent may extend beyond the expiration of the 
patent term  in effect may submit one or more applications for interim 
extensions for periods  of up to one year each. The initial application 
for interim extension must  be filed during the period beginning 6 months 
and ending 15 days before the  patent term is due to expire. Each 
subsequent application for interim extension  must be filed during the 
period beginning 60 days before and ending 30 days  before the expiration 
of the preceding interim extension. In no event will  the interim 
extensions granted under this section be longer than the maximum  period 
of extension to which the applicant would be entitled under 35 U.S.C. 
156(c). 

        (b)   A complete application for interim extension under this 
section  shall include all of the information required for a formal 
application under  w 1.740 and a complete application under w 1.741. 
Sections (a)(1), 



(a)(2), (a)(4), and (a)(6) - (a)(17) of w 1.740 and w 1.741 shall be read 
in  the context of a product currently undergoing regulatory review. 
Sections (a)(3)  and (a)(5) of w 1.740 are not applicable to an 
application for interim extension  under this section. 

        (c)   The content of each subsequent interim extension application 
 may be limited to a request for a subsequent interim extension along with 
a  statement that the regulatory review period has not been completed 
along with  any materials or information required under w 1.740 and w 
1.741 that are not  present in the preceding interim extension application. 

        [Added 60 FR 25615, May 12, 1995, effective July 11, 1995} 

# 1.791       Termination of interim extension granted prior            to 



regulatory approval of a product for 
                        commercial marketing or use. 

        Any interim extension granted under 35 U.S.C. 156(d)(5) terminates 
 at the end of the 60-day period beginning on the date on which the 
product  involved receives permission for commercial marketing or use. If 
within that  60-day period the patent owner or its agent files an 
application for extension  under w 1.740 and 
w 1.741 including any additional information required under 35 U.S.C. 
156(d)(1)  not contained in the application for interim extension, the 
patent shall be  further extended in accordance with the provisions of 35 
U.S.C. 156. 
        [Added 60 FR 25615, May 12, 1995, effective July 11, 1995} 
Subpart G - Biotechnology Invention 
Disclosures 

DEPOSIT OF BIOLOGICAL MATERIAL 


# 1.801       Biological material. 


        For the purposes of these regulations pertaining to the deposit of 
 biological material for purposes of patents for inventions under 35 
U.S.C.  101, the term biological material shall include material that is 
capable of  self-replication either directly or indirectly. Representative 
examples include  bacteria, fungi including yeast, algae, protozoa, 
eukaryotic cells, cell lines,  hybridomas, plasmids, viruses, plant tissue 
cells, lichens and seeds. Viruses,  vectors, cell organelles and other 
non-living material existing in and reproducible  from a living cell may 
be deposited by deposit of the host cell capable of  reproducing the 
non-living material. 

        [Added 54 FR 34880, Aug. 22, 1989, effective Jan. 1, 1990] 

# 1.802       Need or opportunity to make a deposit. 


        (a)   Where an invention is, or relies on, a biological material, 
the  disclosure may include reference to a deposit of such biological 
material. 
        (b)   Biological material need not be deposited unless access to 
such  material is necessary for the satisfaction of the statutory 
requirements for  patentability under 35 U.S.C. 112. If a deposit is 
necessary, it shall be acceptable  if made in accordance with these 
regulations. Biological material need not  be deposited, inter alia, if it 
is known and readily available to the public  or can be made or isolated 
without undue experimentation. Once deposited in  a depository complying 
with these regulations, a biological material will be  considered to be 
readily available even though some requirement of law or regulation  of 
the United States or of the country in which the depository institution 
is located permits access to the material only under conditions imposed 
for  safety, public health or similar reasons. 

        (c)   The reference to a biological material in a specification 
disclosure  or the actual deposit of such material by an applicant or 
patent owner does  not create any presumption that such material is 
necessary to satisfy 35 U.S.C.  112 or that deposit in accordance with 
these regulations is or was required. 
        [Added 54 FR 34880, Aug. 22, 1989, effective Jan. 1, 1990] 

# 1.803       Acceptable depository. 


        (a) A deposit shall be recognized for the purposes of these 
regulations  if made in; 

        (1)   any International Depositary Authority (IDA) as established 
under  the Budapest Treaty on the International Recognition of the Deposit 
of Micro-organisms  for the Purposes of Patent Procedure, or 

        (2)   any other depository recognized to be suitable by the 
Office.  Suitability will be determined by the Commissioner on the basis 
of the administrative  and technical competence, and agreement of the 
depository to comply with the  terms and conditions applicable to deposits 
for patent purposes. The Commissioner  may seek the advice of impartial 
consultants on the suitability of a depository.  The depository must: 

        (i)   Have a continuous existence; 

        (ii)    Exist independent of the control of the depositor; 
        (iii)     Possess the staff and facilities sufficient to examine 
the  viability of a deposit and store the deposit 




in a manner which ensures that it is kept viable and uncontaminated; 
        (iv)    Provide for sufficient safety measures to minimize the 
risk  of losing biological material deposited 
with it; 

        (v)   Be impartial and objective; 

        (vi)    Furnish samples of the deposited material in an 
expeditious  and proper manner; and 

        (vii) Promptly notify depositors of its inability to furnish 
samples,  and the reasons why. 

        (b)   A depository seeking status under paragraph (a)(2) of this 
section  must direct a communication to the Commissioner which shall: 

        (1)   Indicate the name and address of the depository to which the 
 communication relates; 

        (2)   Contain detailed information as to the capacity of the 
depository  to comply with the requirements of paragraph (a)(2) of this 
section, including  information on its legal status, scientific standing, 
staff, and facilities; 
        (3)   Indicate that the depository intends to be available, for 
the  purposes of deposit, to any depositor under these same conditions; 
        (4)   Where the depository intends to accept for deposit only 
certain  kinds of biological material, specify such kinds; 

        (5)   Indicate the amount of any fees that the depository will, 
upon  acquiring the status of suitable depository under paragraph (a)(2) 
of this  section, charge for storage, viability statements and furnishings 
of samples  of the deposit. 

        (c)   A depository having status under paragraph (a)(2) of this 
section  limited to certain kinds of biological material may extend such 
status to additional  kinds of biological material by directing a 
communication to the Commissioner  in accordance with paragraph (b) of 
this section. If a previous communication  under paragraph (b) of this 
section is of record, items in common with the  previous communication may 
be incorporated by reference. 

        (d)   Once a depository is recognized to be suitable by the 
Commissioner  or has defaulted or discontinued its performance under this 
section, notice  thereof will be published in the Official Gazette of the 
Patent and Trademark  Office. 

        [Added 54 FR 34881, Aug. 22, 1989, effective Jan. 1, 1990] 

# 1.804       Time of making an original deposit. 


        (a)   Whenever a biological material is specifically identified in 
 an application for patent as filed, an original deposit thereof may be 
made  at any time before filing the application for patent or, subject to 
w 1.809, during pendency of the application for patent. 

        (b)   When the original deposit is made after the effective filing 
 date of an application for patent, the applicant shall promptly submit a 
verified  statement from a person in a position to corroborate the fact, 
and shall state,  that the biological material which is deposited is a 
biological material specifically  identified in the  application as filed, 
except if the person is an attorney  or agent registered to practice 
before the Office, in which case the statement  need not be verified. 

        [Added 54 FR 34881, Aug. 22, 1989, effective Jan. 1, 1990] 

# 1.805       Replacement or supplement of deposit. 


        (a)   A depositor, after receiving notice during the pendency of 
an  application for patent, application for reissue patent or 
reexamination proceeding,  that the depository possessing a deposit either 
cannot furnish samples thereof  or can furnish samples thereof but the 
deposit has become contaminated or has  lost its capability to function as 
described in the specification, shall notify  the Office in writing, in 
each application for patent or patent affected. In  such a case, or where 
the Office otherwise learns, during the pendency of an  application for 
patent, application for reissue patent or reexamination proceeding,  that 
the depository possessing a deposit either cannot furnish samples thereof 
or can furnish samples thereof but the deposit has become contaminated or 
has  lost its capability to function as described in the specification, 
the need  for making a replacement or supplemental deposit will be 
governed by the same  considerations governing the need for making an 
original deposit under the  provisions set forth in w 1.802(b). A 
replacement or supplemental deposit made  during the pendency of an 
application for pat- 
ent shall not be accepted unless it meets the requirements for making an 
original  deposit under these regulations, including the requirement set 
forth under w 1.804(b). A replacement or supplemental deposit made in 
connection with a  patent, whether or not made during the pendency of an 
application for reissue  patent or a reexamination proceeding or both, 
shall not be accepted unless  a certificate of correction under w 1.323 



is requested by the patent owner which meets the terms of paragraphs (b) 
and 
(c) of this section. 

        (b)   A request for certificate of correction under this section 
shall  not be granted unless the certificate identifies: 

        (1)   The accession number for the replacement or supplemental 
deposit; 
        (2)   The date of the deposit; and 

        (3)   The name and address of the depository. 

        (c)   A request for a certificate of correction under this section 
 shall not be granted unless the request is made promptly after the 
replacement  or supplemental deposit has been made and: 

        (1)   Includes a verified statement of the reason for making the 
replacement  or supplemental deposit; 

        (2)   Includes a verified statement from a person in a position to 
 corroborate the fact, and shall state, that the replacement or 
supplemental  deposit is of a biological material which is identical to 
that originally deposited; 
        (3)   Includes a verified showing that the patent owner acted 
diligently  -- 

        (i)   In the case of a replacement deposit, in making the deposit 
after  receiving notice that samples could no longer be furnished from an 
earlier  deposit, or 

        (ii)    In the case of a supplemental deposit, in making the 
deposit  after receiving notice that the earlier deposit had become 
contaminated or  had lost its capability to function as described in the 
specification; 
        (4)   Includes a verified statement that the term of the 
replacement  or supplemental deposit expires no earlier than the term of 
the deposit being  replaced or supplemented; and 

        (5)   Otherwise establishes compliance with these regulations, 
except  that if the person making one or more of the required statements 
or showing  is an attorney or agent registered to practice before the 
Office, that statement  or showing need not be verified. 

        (d)   A depositor's failure to replace a deposit, or in the case 
of  a patent, to diligently replace a deposit and promptly thereafter 
request a  certificate of correction which meets the terms of paragraphs 
(b) and (c) of  this section, after being notified that the depository 
possessing the deposit  cannot furnish samples thereof, shall cause the 
application or patent involved  to be treated in any Office proceeding as 
if no deposit were made. 
        (e)   In the event a deposit is replaced according to these 
regulations,  the Office will apply a rebuttable presumption of identity 
between the original  and the replacement deposit where a patent making 
reference to the deposit  is relied upon during any Office proceeding. 

        (f)   A replacement or supplemental deposit made during the 
pendency  of an application for patent may be made for any reason. 

        (g)   In no case is a replacement or supplemental deposit of a 
biological  material necessary where the biological material, in 
accordance with w 1.802(b),  need not be deposited. 

        (h)   No replacement deposit of a biological material is necessary 
 where a depository can furnish samples thereof but the depository for 
national  security, health or environmental safety reasons is unable to 
provide samples  to requesters outside of the jurisdiction where the 
depository is located. 
        (i)   The Office will not recognize in any Office proceeding a 
replacement  deposit of a biological material made by a patent owner where 
the depository  could furnish samples of the deposit being replaced. 

        [Added 54 FR 34881, Aug. 22, 1989, effective Jan. 1, 1990] 

# 1.806       Term of deposit. 


        A deposit made before or during pendency of an application for 
patent  shall be made for a term of at least thirty (30) years and at 
least five (5)  years after the most recent request for the furnishing of 
a sample of the deposit  was received by the depository. In any case, 
samples must be stored under agreements  that would make them available 
beyond the enforceable life of the patent for  which the deposit was made. 

        [Added 54 FR 34882, Aug. 22, 1989, effective Jan. 1, 1990] 

# 1.807       Viability of deposit. 


        (a)   A deposit of biological material that is capable of 
self-replication  either directly or indirectly must be viable at the time 
of deposit and during  the term of deposit. Viability may be tested by the 
depository. The test must  conclude only that the deposited material is 
capable of reproduction. No evidence  is necessarily required regarding 
the ability of the deposited material to  perform any function described 
in the patent application. 

        (b)   A viability statement for each deposit of a biological 
material  defined in paragraph (a) of this section not made under the 
Budapest Treaty  on the International Recognition of the Deposit of 
Microorganisms for the Purposes  of Patent Procedure must be filed in the 
application and must contain: 
        (1)   The name and address of the depository; 



        (3)   The date of deposit; 

        (2)   The name and address of the depositor; 

        (4)   The identity of the deposit and the accession number given 
by  the depository; 

        (5)   The date of the viability test; 

        (6)   The procedures used to obtain a sample if the test is not 
done  by the depository; and 

        (7)   A statement that the deposit is capable of reproduction. 
        (c)   If a viability test indicates that the deposit is 
not viable upon receipt, or the examiner cannot, for scientific or other 
valid  reasons, accept the statement 
of viability received from the applicant, the examiner shall proceed as if 
 no deposit has been made. The examiner will accept the conclusion set 
forth  in a viabil- ity statement issued by a depository recognized under 
w 1.803(a). 

        [Added 54 FR 34882, Aug. 22, 1989, effective Jan. 1, 1990] 

# 1.808       Furnishing of samples. 


        (a)   A deposit must be made under conditions that assure that: 
        (1)   Access to the deposit will be available during pendency of 
the  patent application making reference to the deposit to one determined 
by the  Commissioner to be entitled thereto under w 1.14 and 35 U.S.C. 
122, and 
        (2)   Subject to paragraph (b) of this section, all restrictions 
imposed  by the depositor on the availability to the public of the 
deposited material  will be irrevocably removed upon the granting of the 
patent. 

        (b)   The depositor may contract with the depository to require 
that  samples of a deposited biological material shall be furnished only 
if a request  for a sample, during the term of the patent: 

        (1)   Is in writing or other tangible form and dated; 

        (2)   Contains the name and address of the requesting party and 
the  accession number of the deposit; and 

        (3)   Is communicated in writing by the depository to the 
depositor  along with the date on which the sample was furnished and the 
name and address  of the party to whom the sample was furnished. 

        (c)   Upon request made to the Office, the Office will certify 
whether  a deposit has been stated to have been made under conditions 
which make it  available to the public as of the issue date of the patent 
grant provided the  request contains: 

        (1)   The name and address of the depository; 

        (2)   The accession number given to the deposit; 

        (3)   The patent number and issue date of the patent referring to 
the  deposit; and 

        (4)   The name and address of the requesting party. 

        [Added 54 FR 34882, Aug. 22, 1989, effective Jan. 1, 1990] 

# 1.809       Examination procedures. 


        (a)   The examiner shall determine pursuant to 
w 1.104 in each application for patent, application for reissue patent or 
reexamination  proceeding if a deposit 


is needed, and if needed, if a deposit actually made is acceptable for 
patent  purposes. If a deposit is needed and has not been made or replaced 
or supplemented  in accordance with these regulations, the examiner, where 
appropriate, shall  reject the affected claims under the appropriate 
provision of 35 U.S.C. 112,  explaining why a deposit is needed and/or why 
a deposit actually made cannot  be accepted. 

        (b)   The applicant for patent or patent owner shall respond to a 
rejection  under paragraph (a) of this section by -- 

        (1)   In the case of an applicant for patent, making an acceptable 
 original or replacement or supplemental deposit or assuring the Office in 
writing  that an acceptable deposit will be made on or before the date of 
payment of  the issue fee, or, in the case of a patent owner, requesting a 
certificate  of correction of the patent which meets the terms of 
paragraphs (b) and (c)  of w 1.805, or 

        (2)   Arguing why a deposit is not needed under the circumstances 
of  the application or patent considered and/or why a deposit actually 
made should  be accepted. Other replies to the examiner's action shall be 
considered nonresponsive.  The rejection will be repeated until either 
paragraph (b)(1) of this section  is satisfied or the examiner is 
convinced that a deposit is not needed. 
        (c)   If an application for patent is otherwise in condition for 
allowance  except for a needed deposit and the Office has received a 
written assurance  that an acceptable deposit will be made on or before 
payment of the issue fee,  the Office will mail to the applicant a Notice 
of Allowance and Issue Fee Due  together with a requirement that the 
needed deposit be made within three months.  The period for satisfying 
this requirement is extendable under w 1.136. Failure  to make the needed 
deposit in accordance with this requirement will result  in abandonment of 
the application for failure to prosecute. 



        (d)   For each deposit made pursuant to these regulations, the 
specification  shall contain: 

        (1)   The accession number for the deposit; 

        (2)   The date of the deposit; 

        (3)   A description of the deposited biological material 
sufficient  to specifically identify it and to permit examination; and 

        (4)   The name and address of the depository. 

        [Added 54 FR 34882, Aug. 22, 1989, effective Jan. 1, 1990] 
APPLICATION DISCLOSURES CONTAINING NUCLEOTIDE AND/OR AMINO ACID 
SEQUENCES 


# 1.821       Nucleotide and/or amino acid sequence 
             disclosures 


in patent applications. 

        (a)   Nucleotide and/or amino acid sequences as used in ww 1.821 
through  1.825 is interpreted to mean an unbranched sequence of four or 
more amino acids  or an unbranched sequence of ten or more nucleotides. 
Branched sequences are  specifically excluded from this definition. 
Nucleotides and amino acids are  further defined as follows: 

  (1)     Nucleotides are intended to embrace only those nucleotides that 
can  be represented using the symbols set forth in w 1.822(b)(1). 
Modifications,  e.g., methylated bases, may be described as set forth in w 
1.822(b), but shall  not be shown explicitly in the nucleotide sequence. 

        (2)   Amino acids are those L-amino acids commonly found in 
naturally  occurring proteins and are listed 
in w 1.822(b)(2). Those amino acid sequences con- 
taining D-amino acids are not intended to be embraced by this definition. 
Any  amino acid sequence that contains post-translationally modified amino 
acids  may be described as the amino acid sequence that is initially 
translated using  the symbols shown in w 1.822(b)(2) with the modified 
positions; e.g., hydroxylations  or glycosylations, being described as set 
forth in w 1. 822(b), but these modifications  shall not be shown 
explicitly in the amino acid sequence. Any peptide or protein  that can be 
expressed as a sequence using the symbols in 
w 1.822(b)(2) in conjunction with a description elsewhere in the "Sequence 
 Listing" to describe, for example, modified linkages, cross links and end 
caps,  non-peptidyl bonds, etc., is embraced by this definition. 

        (b)   Patent applications which contain disclosures of nucleotide 
and/or  amino acid sequences, in accordance with the definition in 
paragraph (a) of  this section, shall, with regard to the manner in which 
the nucleotide and/or  amino acid sequences are presented and described, 
conform exclusively to the  requirements of ww 1.821 through 1.825. 

        (c)   Patent applications which contain disclosures of nucleotide 
and/or  amino acid sequences must contain, as a separate part of the 
disclosure on  paper copy, hereinafter referred to as the "Sequence 
Listing," a 


disclosure of the nucleotide and/or amino acid sequences and associated 
information  using the symbols and format in accordance with the 
requirements of ww 1.822 and 1.823. Each sequence disclosed must appear 
separately in the "Sequence  Listing." Each sequence set forth in the 
"Sequence Listing" shall be assigned  a separate identifier written as SEQ 
ID NO:1, SEQ ID NO:2, SEQ ID NO:3, etc. 


        (d)   Where the description or claims of a patent application 
discuss  a sequence listing that is set forth in the "Sequence Listing" in 
accordance  with paragraph (c) of this section, reference must be made to 
the sequence  by use of the assigned identifier, in the text of the 
description or claims,  even if the sequence is also embedded in the text 
of the description or claims  of the patent application. 

        (e)   A copy of the "Sequence Listing" referred to in paragraph 
(c)  of this section must also be submitted in computer readable form in 
accordance  with the requirements of w 1.824. The computer readable form 
is a copy of the  "Sequence Listing" and will not necessarily be retained 
as part of the patent  application file. If the computer readable form of 
a new application is to  be identical with the computer readable form of 
another application of the  applicant on file in the Office, reference may 
be made to the other application  and computer readable form in lieu of 
filing a duplicate computer readable  form in the new application. The new 
application shall be accompanied by a  letter making such reference to the 
other application and computer readable  form, both of which shall be 
completely identified. 

        (f)   In addition to the paper copy required by paragraph (c) of 
this  section and the computer readable form required by paragraph (e) of 
this section,  a statement that the content of the paper and computer 
readable copies are  the same must be submitted with the computer readable 
form. Such a statement  must be a 




verified statement if made by a person not registered to practice before 
the  Office. 

        (g)   If any of the requirements of paragraphs (b) through (f) of 
this  section are not satisfied at the time of filing under 35 U.S.C. 111 
or at the  time of entering the national stage under 35 U.S.C. 371, 
applicant has one  month from the date of a notice which will be sent 
requiring compliance with  the requirements in order to prevent 
abandonment of the application. Any submis-  sion in response to a 
requirement under this paragraph must be accompanied  by a statement that 
the submission 

includes no new matter. Such a statement must be a verified statement if 
made  by a person not registered to practice before the Office. 

        (h)   If any of the requirements of paragraphs (b) through (f) of 
this  section are not satisfied at the time of filing, in the United 
States Receiving  Office, an international application under the Patent 
Cooperation Treaty (PCT)  applicant has one month from the date of a 
notice which will be sent requiring  compliance with the requirements, or 
such other time as may be set by the Commissioner,  in which to comply. 
Any submission in response to a requirement under this  paragraph must be 
accompanied by a statement that the submission does not include  new 
matter or go beyond the disclosure in the international application as 
filed. Such a statement must be a verified statement if made by a person 
not  registered to practice before the Office. If applicant fails to 
timely provide  the required computer readable form, the United States 
International Searching  Authority shall search only to the extent that a 
meaningful search can be performed. 


        (i)   Neither the presence nor the absence of information which is 
 not required under ww 1.821 through 1.825, in an application shall create 
any  presumption that such information is necessary to satisfy one or more 
of the  requirements of 35 U.S.C. 112. Further, the grant of a patent on 
an application  that is subject to the requirements of ww 1.821 through 
1.825 shall constitute  a conclusive presumption that said patent complies 
with the requirements of  ww 1.821 through 1.825. 

  (j)     Envelopes containing only application papers, computer readable 
forms  and fees filed under this section should be marked "Box SEQUENCE." 
        [Added 55 FR 18230, May 1, 1990, effective Oct. 1, 1990; para. (h) 
 amended, 58 FR 9335, Jan. 14, 1993, effective May 1, 1993] 


# 1.822       Symbols and format to be used for nucleotide 
and/or 


amino acid sequence data. 

        (a)   The symbols and format to be used for nucleotide and/or 
amino  acid sequence data shall conform to the requirements of paragraphs 
(b) through 
(p) of this section. 

        (b)   The code for representing the nucleotide and/or amino acid 
sequence  characters shall conform to the code set forth in the tables in 
paragraphs 
(b)(1) and (b)(2) of this section. No code other than that 


specified in this section shall be used in nucleotide and amino acid 
sequences.  A modified base or amino acid may be presented in a given 
sequence as the corresponding  unmodified base or amino acid if the 
modified base or amino acid is one of  those listed in paragraphs (p)(1) 
or (p)(2) of this section and the modification  is also set forth 
elsewhere in the Sequence Listing (for example, FEATURES  w 
1.823(b)(2)(ix)). Otherwise, all bases or amino acids not appearing in 
paragraphs 
(b)(1) or (b)(2) of this section shall be listed in a given sequence as 
"N"  or "Xaa," respectively, with further information, as appropriate, 
given elsewhere  in the Sequence Listing. 

        (1)   Base codes: 

Symbol          Meaning 

A   A; adenine 

C   C; cytosine 

G   G; guanine 

T   T; thymine 

U   U; uracil 

M   A or C 

R   A or G 

W   A or T/U 

S   C or G 

Y       C or T/U 

K       G or T/U 

V   A or C or G; not T/U 

H       A or C or T/U; not G 

D   A or G or T/U; not C 

B   C or G or T/U; not A 

N   (A or C or G or T/U) or 
                (unknown or other) 

        (2)   Amino acid three-letter abbreviations: 

Abbreviation    Amino acid name 

Ala         Alanine 

Arg         Arginine 

Asn         Asparagine 

Asp         Aspartic Acid 



Asx         Aspartic Acid or Aspara-                            gine 
Cys         Cysteine 

Glu         Glutamic Acid 

Gln         Glutamine 

Glx         Glutamine or Glutamic                       Acid 

Gly         Glycine 

His         Histidine 

Ile         Isoleucine 

Leu         Leucine 

Lys         Lysine 

Met         Methionine 

Phe         Phenylalanine 

Pro         Proline 

Ser         Serine 

Thr         Threonine 

Trp         Tryptophan 

Tyr         Tyrosine 

Val         Valine 

Xaa         Unknown or other 

        (c)   A nucleotide sequence shall be listed using the one-letter 
code  for the nucleotide bases, as in paragraph (b)(1) of this section. 
        (d)   The amino acids corresponding to the codons in the coding 
parts  of a nucleotide sequence shall be typed immediately below the 
corresponding  codons. Where a codon spans an intron, the amino acid 
symbol shall be typed  below the portion of the codon containing two 
nucleotides. 

        (e)   The amino acids in a protein or peptide sequence shall be 
listed  using the three-letter abbreviation with the first letter as an 
upper case  character, as in paragraph (b)(2) of this section. 

        (f)   The bases in a nucleotide sequence (including introns) shall 
 be listed in groups of 10 bases except in the coding parts of a sequence. 
Leftover  bases, fewer than 10 in number, at the end of non-coding parts 
of a sequence  shall be grouped together and separated from adjacent 
groups of 10 or 3 bases  by a space. 

        (g)   The bases in the coding parts of a nucleotide se- quence 
shall  be listed as triplets (codons). 

        (h)   A protein or peptide sequence shall be listed with a maximum 
 of 16 amino acids per line, with a space provided between each amino 
acid. 
        (i)   A nucleotide sequence shall be listed with a maximum of 16 
codons  or 60 bases per line, with a space provided between each codon or 
group of  10 bases. 

        (j)     A nucleotide sequence shall be presented, only by a single 
 strand, in the 5' to 3' direction, from left to right. 

        (k)   An amino acid sequence shall be presented in the amino to 
carboxy  direction, from left to right, and the amino and carboxy groups 
shall not be  presented in the sequence. 

        (l)     The enumeration of nucleotide bases shall start at the 
first  base of the sequence with number 1. The enumeration shall be 
continuous through  the whole sequence in the direction 5' to 3'. The 
enumeration shall 
be marked in the right margin, next to the line containing 

the one-letter codes for the bases, and giving the number of the last base 
 of that line. 

        (m)   The enumeration of amino acids may start at the first amino 
acid  of the first mature protein, with number 1. The amino acids 
preceding the mature  protein, e.g., pre-sequences, pro-sequences, 
pre-pro-sequences and signal sequences,  when presented, shall have 
negative numbers, counting backwards starting with  the amino acid next to 
number 1. Otherwise, the enumeration of amino acids  shall start at the 
first amino acid at the amino terminal as number 1. It shall  be marked 
below the sequence every 5 amino acids. 

        (n)   For those nucleotide sequences that are circular in 
configuration,  the enumeration method set forth in paragraph (l) of this 
section remains applicable  with the exception that the designation of the 
first base of the nucleotide  sequence may be made at the option of the 
applicant. The enumeration method  for amino acid sequences that is set 
forth in paragraph (m) of this section  remains applicable for amino acid 
sequences that are circular in configuration. 
        (o)   A sequence with a gap or gaps shall be presented as a 
plurality  of separate sequences, with separate sequence identifiers, with 
the number  of separate sequences being equal in number to the number of 
continuous strings  of sequence data. A sequence that is made up of one or 
more non-contiguous  segments of a larger sequence or segments from 
different sequences shall be  presented as a separate sequence. 

        (p)   The code for representing modified nucleotide bases and 
modified  and unusual amino acids shall conform to the code set forth in 
the tables in  paragraphs (p)(1) and (p)(2) of this section. The modified 
base controlled  vocabulary in paragraph (p)(1) of this section and the 
modified and unusual  amino acids in paragraph 




(p)(2) of this section shall not be used in the nucleotide and/or amino 
acid  sequences; but may be used in the description and/or the "Sequence 
Listing"  corresponding to, but not including, the nucleotide and/or amino 
acid sequence. 


        (1)   Modified base controlled vocabulary: 

Abbreviation    Modified base description 

ac4c    4-acetylcytidine 

chm5u     5-(carboxyhydroxylmethyl)uri- 

        dine 

cm  2'-O-methylcytidine 

cmnm5s2u        5-carboxymet hylaminome 


        thyl-2-thiouridine 

cmnm5u      5 carboxymethylaminomethyluri- 

        dine 

d dihydrouridine 

fm  2'-O-methylpseudouridine 

gal q     beta,D-galactosylqueosine 

gm  2'-O-methylguanosine 

i inosine 

i6a   N6-isopentenyladenosine 

m1a   1-methyladenosine 

m1f   1-methylpseudouridine 

m1g   1-methylguanosine 

ml1   1-methylinosine 

m22g    2,2-dimethylguanosine 

m2a   2-methyladenosine 

m2g   2-methylguanosine 

m3c   3-methylcytidine 

m5c   5-methylcytidine 

m6a   N6-methyladenosine 

m7g   7-methylguanosine 

mam5u     5-methylaminomethyluridine 

mam5s2u       5-methoxyaminomethyl-2-                   thiouridine 
manq    beta,D-mannosylqueosine 

mcm5s2u       5-methoxycarbonylmethyluridine 

mcm5u     5-methoxycarbonylmethyluri- 

        dine 

mo5u    5-methoxyuridine 

ms2i6a      2-methylthio-N6- 
isopentenyladenosine 
ms2t6a      N-((9-beta-D-ribofurano- 

        syl-2-methylthiopurine-6-yl) 

        carbamoyl)threonine 

mt6a    N-((9-beta-D-ribofurano- 
sylpurine-6-yl)N-methyl- 
        carbamoyl)threonine 

mv  uridine-5-oxyaceticacid-                            methylester 
o5u   uridine-5-oxyacetic acid (v) 

osyw    wybutoxosine 

p pseudouridine 

q queosine 

s2c   2-thiocytidine 

s2t   5-methyl-2-thiouridine 

s2u   2-thiouridine 

s4u   4-thiouridine 

t 5-methyluridine 

t6a   N-((9-beta-D-ribofurano- 

        sylpurine-6-yl)carbamoyl) 

        threonine 

tm  2'-O-methyl-5-methyluri- 

        dine 

um  2'-O-methyluridine 

yw  wybutosine 

x 3-(3-amino-3-carboxypro- 

        pyl)uridine, (acp3)u 

  (2)     Modified and unusual amino acids: 

Abbreviation    Modified and unusual amino acid 

Aad   2-Aminoadipic acid 

bAad    3-aminoadipic acid 

bAla    beta-Alanine,beta-                      Aminopropionic acid 
Abu   2-Aminobutyric acid 

4Abu    4-Aminobutyric acid, piperi- 

        dinic-acid 

Acp   6-Aminocaproic acid 

Ahe   2-Aminoheptanoic acid 

Aib   2-Aminoisobutyric acid 

bAib    3-Aminoisobutyric acid 

Apm   2-Aminopimelic acid 

Dbu   2,4-Diaminobutyric acid 

Des   Desmosine 

Dpm   2,2'-Diaminopimelic acid 

Dpr   2,3-Diaminopropionic acid 

EtGly     N-Ethylglycine 

EtAsn     N-Ethylasparagine 

Hyl   Hydroxylysine 

aHyl    allo-Hydroxylysine 

3Hyp    3-Hydroxyproline 



4Hyp            4-Hydroxyproline 

Ide         Isodesmosine 

aIle            allo-Isoleucine 

MeGly       N-Methylglycine, sarcosine 

MeIle       N-Methylisoleucine 

MeLys       N-Methylvaline 

Nva         Norvaline 

Nle         Norleucine 

Orn         Ornithine 

        [Added 55 FR 18230, May 1, 1990, effective Oct. 1, 1990] 


# 1.823       Requirements for nucleotide and/or amino 
             acid 


sequences as part of the application 
                        papers. 

        (a)   The "Sequence Listing," required by w 1.821(c), setting 
forth  the nucleotide and/or amino acid sequences, and associated 
information in accordance  with paragraph (b) of this section, must begin 
on a new page and be titled  "Sequence Listing" and appear immediately 
prior to the claims. Each page of  the "Sequence Listing" shall contain no 
more than 66 lines and each line shall  contain no more than 72 
characters. A fixed-width font shall be used exclusively  throughout the 
"Sequence Listing." 

        (b)   The "Sequence Listing" shall, except as otherwise indicated, 
 include, in addition to and immediately preceding the actual nucleotide 
and/or  amino acid sequence, the following items of information. The order 
and presentation  of the items of information in the "Sequence Listing" 
shall conform to the  arrangement given below, except that parenthetical 
explanatory information  following the headings (identifiers) is to be 
omitted. Each item of information  shall begin on a new line, enumerated 
with the number/numeral/letter in parentheses  as shown below, with the 
heading (identifier) in upper case characters, followed  by a colon, and 
then followed by the information provided. Except as allowed  below, no 
item of information shall occupy more than one line. Those items  of 
information that are applicable for all sequences shall only be set forth 
once in the "Sequence Listing." The submission of those items of 
information  designated with an "M" is mandatory. The submission of those 
items of information  designated with an "R" is recommended, but not 
required. The submission of  those items of information designated with an 
"O" is optional. Those items  designated with "rep" may have multiple 
responses and, as such, the item may  be repeated in the "Sequence Listing." 

        (1)   GENERAL INFORMATION (Application, diskette/tape and 
publication  information): 

        (i)   APPLICANT (maximum of first ten named applicants; specify 
one  name per line: SURNAME comma OTHER NAMES and/or INITIALS - M/rep): 
        (ii)    TITLE OF INVENTION (title of the invention, as elsewhere 
in  application, four lines maximum - M) 

        (iii)     NUMBER OF SEQUENCES (number of sequences in the 
"Sequence  Listing" - M): 

        (iv)    CORRESPONDENCE ADDRESS (M): 

        (A)   ADDRESSEE (name of applicant, firm, company or institution, 
as  may be appropriate): 

        (B)   STREET (correspondence street address, as elsewhere in 
application,  four lines maximum): 

        (C)   CITY (correspondence city address, as elsewhere in 
application): 
        (D)   STATE (correspondence state, as elsewhere in application): 
        (E)   COUNTRY (correspondence country, as elsewhere in 
application): 
        (F)   ZIP (correspondence zip or postal code, as elsewhere in 
application): 
        (v)   COMPUTER READABLE FORM (M): 

        (A)   MEDIUM TYPE (type of diskette/tape submitted): 

        (B)   COMPUTER (type of computer used with diskette/tape 
submitted): 
  (C)     OPERATING SYSTEM (type of operating system used): 

        (D)   SOFTWARE (type of software used to create computer readable 
form): 
        (vi)    CURRENT APPLICATION DATA (M, if available): 

        (A)   APPLICATION NUMBER (U.S application number, including a 
series  code, a slash and a serial number, or U.S. PCT application number, 
including  the letters PCT, a slash, a two letter code indicating the U.S. 
as the Receiving  Office, a two digit indication of the year, a slash and 
a five digit number,  if available): 

        (B)   FILING DATE (U.S. or PCT application filing date, if 
available;  specify as dd-MMM-yyyy): 

        (C)   CLASSIFICATION (IPC/US classification or F-term designation, 
 where F-terms have been developed, if assigned, specify each designation, 
left  justified, within an eighteen position alpha numeric field - rep, to 
a maximum  of ten classification designations): 



        (vii)     PRIOR APPLICATION DATA (prior domestic, foreign priority 
 or international application data, if applicable - M/rep): 

        (A)   APPLICATION NUMBER (application number; specify as two 
letter  country code and an eight digit application number; or if a PCT 
application,  specify as the letters PCT, a slash, a two letter code 
indicating the Receiving  Office, a two digit indication of the year, a 
slash and a five digit number): 
        (B)   FILING DATE (document filing date, specify as dd-MMM-yyyy): 
        (viii) ATTORNEY/AGENT INFORMATION (O): 

        (A)   NAME (attorney/agent name; SURNAME comma OTHER NAMES and/or 
INITIALS): 
        (B)   REGISTRATION NUMBER (attorney/agent registration number): 
        (C)   REFERENCE/DOCKET NUMBER (attorney/agent reference or docket 
number): 
        (ix)    TELECOMMUNICATION INFORMATION (O): 

        (A)   TELEPHONE (telephone number of applicant or attorney/agent): 
        (B)   TELEFAX (telefax number of applicant or attorney/agent): 
        (C)   TELEX (telex number of applicant or attorney/ agent): 
        (2)   INFORMATION FOR SEQ ID NO: X (rep): 

        (i)   SEQUENCE CHARACTERISTICS (M): 

        (A)   LENGTH (sequence length, expressed as number of base pairs 
or  amino acid residues): 

        (B)   TYPE (sequence type, i.e., whether nucleic acid or amino 
acid): 
        (C)   STRANDEDNESS (if nucleic acid, number of strands of source 
organism  molecule, i.e., whether single stranded, double stranded, both 
or unknown to  applicant): 

        (D)   TOPOLOGY (whether source organism molecule is circular, 
linear,  both or unknown to applicant): 

        (ii)    MOLECULE TYPE (type of molecule sequenced in SEQ ID NO:X 
(at  least one of the following should be included with subheadings, if 
any, in  Sequence Listing - R)): 

        - Genomic RNA; 

        - Genomic DNA; 

        - mRNA 

        - tRNA; 

        - rRNA; 

        - snRNA; 

        - scRNA; 

        - preRNA; 

        - cDNA to genomic RNA; 

        - cDNA to mRNA; 

        - cDNA to tRNA; 

        - cDNA to rRNA; 

        - cDNA to snRNA; 

        - cDNA to scRNA; 

        - Other nucleic acid; 

        (A)   DESCRIPTION (four lines maximum): 

        - protein and 

        - peptide. 

        (iii)     HYPOTHETICAL (yes/no - R): 

        (iv)    ANTI-SENSE (yes/no - R): 

        (v)   FRAGMENT TYPE (for proteins and peptides only, at least one 
of  the following should be included in the Sequence Listing - R): 

        - N-terminal fragment; 

        - C-terminal fragment and 

        - internal fragment. 

        (vi)    ORIGINAL SOURCE (original source of molecule sequenced in 
SEQ  ID NO:X - R): 

        (A)   ORGANISM (scientific name of source organism): 

        (B)   STRAIN: 

        (C)   INDIVIDUAL ISOLATE (name/number  of  individual/isolate): 
        (D)   DEVELOPMENTAL STAGE (give developmental stage of source 
organism  and indicate whether derived from germ-line or rearranged 
developmental pattern): 
        (E)   HAPLOTYPE: 

        (F)   TISSUE TYPE: 

        (G)   CELL TYPE: 

        (H)   CELL LINE: 

        (I)   ORGANELLE: 

        (vii)     IMMEDIATE SOURCE (immediate experimental source of the 
sequence  in SEQ ID NO:X - R): 

        (A)   LIBRARY (library -type,name): 

        (B)   CLONE (clone(s)): 

        (viii)      POSITION IN GENOME (position of sequence in SEQ ID 
NO:X  in genome - R): 

        (A)   CHROMOSOME/SEGMENT (chromosome/segment-name/number): 
        (B)   MAP POSITION: 



        (C)   UNITS (units for map position, i.e., whether units are 
genome  percent, nucleotide number or other/specify): 

        (ix)    FEATURE (description of points of biological significance 
in  the sequence in SEQ ID NO:X -R/rep): 

        (A)   NAME/KEY (provide appropriate identifier for feature - four 
lines  maximum): 

        (B)   LOCATION (specify location according to syntax of 
DDBJ/EMBL/GenBank  Feature Tables Definition, including whether feature is 
on complement 
of presented sequence; where appropriate state number of first and last 
bases/amino  acids in feature - four lines maximum): 

        (C)   IDENTIFICATION METHOD (method by which the feature was 
identified,  i.e., by experiment, by similarity with known sequence or to 
an established  consensus sequence, or by similarity to some other pattern 
- four lines maximum): 
        (D)   OTHER INFORMATION (include information on phenotype 
conferred,  biological activity of sequence or its product, macromolecules 
which bind to  sequence or its product, or other relevant information - 
four lines maximum): 
        (x)   PUBLICATION INFORMATION (Repeat section for each relevant 
publication  - O/rep): 

        (A)   AUTHORS (maximum of first ten named authors of publication; 
specify  one name per line: SURNAME comma OTHER NAMES and/or INITIALS - 
rep): 
        (B)   TITLE (title of publication): 

        (C)   JOURNAL (journal name in which data published): 

        (D)   VOLUME (journal volume in which data published): 

        (E)   ISSUE (journal issue number in which data published): 
        (F)   PAGES (journal page numbers in which data published): 
        (G)   DATE (journal date in which data published; specify as 
dd-MMM-yyyy,  MMM-yyyy or Season-yyyy): 

        (H)   DOCUMENT NUMBER (document number, for patent type citations 
only;  specify as two letter country code, eight digit document number 
(right justified),  one letter and, as appropriate, one number or a space 
as a document type code;  or if a PCT application, specify as the letters 
PCT, a slash, a two letter  code indicating the Receiving Office, a two 
digit indication of the year, a  slash and a five digit number; or if a 
PCT publication, specify as the two  letters WO, a two digit indication of 
the year, a slash and a five digit publication  number): 

        (I)   FILING DATE (document filing date, for patent-type citations 
 only; specify as dd-MMM-yyyy): 

        (J)   PUBLICATION DATE (document publication date; for patent-type 
 citations only, specify as dd-MMM-yyyy): 

        (K)   RELEVANT RESIDUES IN SEQ ID NO:X (rep): FROM (position) TO 
(position) 
  (xi)      SEQUENCE DESCRIPTION: SEQ ID NO:X: 

        [Added 55 FR 18230, May 1, 1990, effective Oct. 1, 1990] 


# 1.824       Form and format for nucleotide and/or amino 
     acid 


sequence submissions in computer 
                        readable form. 

        (a)   The computer readable form required by w1.821(e) shall 
contain  a printable copy of the "Sequence Listing," as defined in ww 
1.821(c), 1.822  and 1.823, recorded as a single file on either a diskette 
or a magnetic tape.  The computer readable form shall be encoded and 
formatted such that a printed  copy of the "Sequence Listing" may be 
recreated using the print commands of  the computer/operating-system 
configurations specified in paragraph (f) of  this section. 

        (b)   The file in paragraph (a) of this section shall be encoded 
in  a subset of the American Standard Code for Information Interchange 
(ASCII).  This subset shall consist of all the printable ASCII characters 
including the  ASCII space character plus line-termination, pagination and 
end-of-file characters  associated with the computer/operating-system 
configurations specified in paragraph 
(f) of this sec- tion. No other characters shall be allowed. 

        (c)   The computer readable form may be created by any means, such 
 as word processors, nucleotide/amino acid sequence editors or other 
custom  computer programs; however, it shall be readable by one of the 
computer/operating-system  configurations specified in paragraph (f) of 
this section, and shall conform  to the specifications in paragraphs (a) 
and (b) of this section. 

        (d)   The entire printable copy of the "Sequence Listing" shall be 
 contained within one file on a single diskette or magnetic tape unless it 
is  shown to the satisfaction of the Commissioner that it is not practical 



or possible to submit the entire printable copy of the "Sequence Listing" 
within  one file on a single diskette or magnetic tape. 

        (e)   The submitted diskette or tape shall be write-protected such 
 as by covering or uncovering diskette holes, removing diskette write tabs 
or  removing tape write rings. 

        (f)   As set forth in paragraph (c), above, any means may be used 
to  create the computer readable form, as long as the following conditions 
are  satisfied. A submitted diskette shall be readable on one of the 
computer/operating-system  configurations described in paragraphs (1) 
through (3), below. A submitted  tape shall satisfy the format 
specifications described in paragraph (4), below. 

        (1)   Computer: IBM PC/XT/AT, IBM PS/2 or compatibles; 

        (i)   Operating system: PC-DOS or MS-DOS (Versions 2.1 or above); 
        (ii)    Line Terminator: ASCII Carriage Return plus ASCII Line 
Feed; 
        (iii)     Pagination: ASCII Form Feed or Series of Line 
Terminators; 
        (iv)    End-of-File: ASCII SUB (Ctrl-Z); 

        (v)   Media: 

        (A)   Diskette - 5.25 inch, 360 Kb storage; 

        (B)   Diskette - 5.25 inch, 1.2 Mb storage; 

        (C)   Diskette - 3.50 inch, 720 Kb storage; 

        (D)   Diskette - 3.50 inch, 1.44 Mb storage; 

        (vi)    Print Command: PRINT filename.extension; 

        (2)   Computer: IBM PC/XT/AT, IBM PS/2 or compatibles; 

        (i)   Operating system: Xenix; 

        (ii)    Line Terminator: ASCII Carriage Return; 

        (iii)     Pagination: ASCII Form Feed or Series of Line 
Terminators; 
        (iv)    End-of-File: None; 

        (v)   Media: 

        (A)   Diskette - 5.25 inch, 360 Kb storage; 

        (B)   Diskette - 5.25 inch, 1.2 Mb storage; 

        (C)   Diskette - 3.50 inch, 720 Kb storage; 

        (D)   Diskette - 3.50 inch, 1.44 Mb storage; 

        (vi)    Print Command: lpr filename; 

        (3)   Computer: Apple Macintosh; 

        (i)   Operating System: Macintosh; 

        (ii)    Macintosh File Type: text with line termination 

        (iii)     Line Terminator: Pre-defined by text type file; 
        (iv)    Pagination: Pre-defined by text type file; 

        (v)   End-of-file: Pre-defined by text type file; 

        (vi)    Media: 

        (A)   Diskette - 3.50 inch, 400 Kb storage; 

        (B)   Diskette - 3.50 inch, 800 Kb storage; 

        (C)   Diskette - 3.50 inch, 1.4 Mb storage; 

        (vii)     Print Command: Use PRINT command from any Macintosh 
Application  that processes text files, such as MacWrite or TeachText; 

        (4)   Magnetic tape: 0.5 inch, up to 2400 feet; 

        (i)   Density: 1600 or 6250 bits per inch, 9 track; 

        (ii)    Format: raw, unblocked; 

        (iii)     Line Terminator: ASCII Carriage Return plus optional 
ASCII  Line Feed; 

        (iv)    Pagination: ASCII Form Feed or Series of Line Terminators; 


  (v)     Print Command (Unix shell version given here as sample response 
-mt/dev/rmt0;  lpr/dev/rmt0): 

        (g)   Computer readable forms that are submitted to the Office 
will  not be returned to the applicant. 

        (h)   All computer readable forms shall have a label permanently 
affixed  thereto on which has been hand printed or typed, a description of 
the format  of the computer readable form as well as the name of the 
applicant, the title  of the invention, the date on which the data were 
recorded on the computer  readable form and the name and type of computer 
and operating system which  generated the files on the computer readable 
form. If all of this information  can not be printed on a label affixed to 
the computer readable form, by reason  of size or otherwise, the label 
shall include the name of the applicant and  the title of the invention 
and a reference number, and the additional information  may be provided on 
a container for the computer readable form with the name  of the 
applicant, the title of the invention, the reference number and the 
additional information affixed to the container. If the computer readable 
form  is submitted after the date of filing under 35 U.S.C. 111, after the 
date of  entry in the national stage under 35 U.S.C. 371 or after the time 
of filing,  in the United States Receiving Office, an international 
application under the  PCT, the labels mentioned herein must also include 
the date of the application  and the application number, including series 
code and serial number. 
        [Added 55 FR 18230, May 1, 1990, effective Oct. 1, 1990] 





# 1.825       Amendments to or replacement of sequence 

                        listing and computer readable copy thereof. 
        (a)   Any amendment to the paper copy of the "Sequence Listing" (w 
 1.821(c)) must be made by the submission of substitute sheets. Amendments 
must  be 


accompanied by a statement that indicates support for the amendment in the 
 application, as filed, and a statement that the substitute sheets include 
no  new matter. Such a statement must be a verified statement if made by a 
person  not registered to practice before the Office. 

        (b)   Any amendment to the paper copy of the "Sequence Listing," 
in  accordance with paragraph (a) of this section must be accompanied by a 
substitute  copy of the computer readable form (w 1.821(e)) including all 
previously submitted  data with the amendment incorporated therein, 
accompanied by a statement that  the copy 

in computer readable form is the same as the substitute copy of the 
"Sequence  Listing." Such a statement must be a verified statement if made 
by a person  not registered to practice before the Office. 

        (c)   Any appropriate amendments to the "Sequence Listing" in a 
patent;  e.g., by reason of reissue or certificate of correction must 
comply with the  requirements of paragraphs (a) and (b) of this section. 

        (d)   If, upon receipt, the computer readable is found to be 
damaged  or unreadable, applicant must provide, within such time as set by 
the Commissioner,  a substitute copy of the data in computer readable form 
accompanied by a statement  that the substitute data is identical to that 
originally filed. Such a statement  must be a verified statement if made 
by a person not registered to practice  before the Office. 

        [Added 55 FR 18230, May 1, 1990, effective Oct. 1, 1990] 



Appendix A - SAMPLE SEQUENCE LISTING 

        (1) GENERAL INFORMATION: 

        (i) APPLICANT:      Doe, Joan X 

Doe, John Q 

        (ii)    TITLE OF INVENTION: Isolation and Characterization of a 
Gene  Encoding a Protease from Paramecium sp. 

        (iii)     NUMBER OF SEQUENCES: 2 

        (iv)    CORRESPONDENCE ADDRESS: 

        (A)   ADDRESSEE: Smith and Jones 

        (B)   STREET: 123 Main Street 

        (C)   CITY: Smalltown 

        (D)   STATE: Any state 

        (E)   COUNTRY: USA 

        (F)   ZIP: 12345 

        (v)   COMPUTER READABLE FORM: 

        (A)   MEDIUM TYPE: Diskette, 3.50 inch, 800 Kb storage 

        (B)   COMPUTER: Apple Macintosh 

        (C)   OPERATING SYSTEM: Macintosh 5.0 

        (D)   SOFTWARE: MacWrite 

        (vi)    CURRENT APPLICATION DATA: 

        (A)   APPLICATION NUMBER: 09/999,999 

        (B)   FILING DATE: 28-FEB-1989 

        (C)   CLASSIFICATION: 999/99 

        (vii)     PRIOR APPLICATION DATA: 

        (A)   APPLICATION NUMBER: PCT/US88/99999 

        (B)   FILING DATE: 01-MAR-1988 

        (viii)      ATTORNEY/AGENT INFORMATION: 

        (A)   NAME: Smith, John A 

        (B)   REGISTRATION NUMBER: 00001 

        (C)   REFERENCE/DOCKET NUMBER: 01-0001 

        (ix)    TELECOMMUNICATION INFORMATION: 

        (A) TELEPHONE: (909) 999-0001 

        (B) TELEFAX: (909) 999-0002 

(2)   INFORMATION FOR SEQ ID NO:1: 

        (i)   SEQUENCE CHARACTERISTICS: 

        (A)   LENGTH: 954 base pairs 

        (B)   TYPE: nucleic acid 

        (C)   STRANDEDNESS: single 

        (D)   TOPOLOGY: linear 

        (ii)    MOLECULE TYPE: genomic DNA 

        (iii)     HYPOTHETICAL: yes 

        (iv)    ANTI-SENSE: no 

        (vi)    ORIGINAL SOURCE: 

        (A)   ORGANISM: Paramecium sp 

        (C) INDIVIDUAL/ISOLATE: XYZ2 

        (G)   CELL TYPE: unicellular organism 

        (vii)     IMMEDIATE SOURCE: 

        (A)   LIBRARY: genomic 

        (B)   CLONE: Para-XYZ2/36 

        (x)   PUBLICATION INFORMATION: 

        (A)   AUTHORS:      Doe, Joan X 

                                        Doe, John Q 

        (B)   TITLE: Isolation and Characterization of a Gene Encoding a 
Protease  from Paramecium sp. 

        (C)   JOURNAL: Fictional Genes 

        (D)   VOLUME: I 

        (E)   ISSUE: 1 

        (F)   PAGES: 1-20 

        (G)   DATE: 02-MAR-1988 

        (K)   RELEVANT RESIDUES IN SEQ ID NO:1: FROM 1 TO 954 

        (xi)    SEQUENCE DESCRIPTION:     SEQ ID NO:1: 

        (xi)    SEQUENCE DESCRIPTION: SEQ ID NO:1: 



        ATCGGGATAG  TACTGGTCAA      GACCGGTGGA      CACCGGTTAA 
CCCCGGTTAA      GTACCGGTTA      60 
        TAGGCCATTT  CAGGCCAAAT      GTGCCCAACT      ACGCCAATTG 
TTTTGCCAAC      GGCCAACGTT      120 
        ACGTTCGTAC  GCACGTATGT      ACCTAGGTAC      TTACGGACGT 
GACTACGGAC      ACTTCCGTAC      180 
        GTACGTACGT  TTACGTACCC      ATCCCAACGT      AACCACAGTG 
TGGTCGCAGT      GTCCCAGTGT      240 
        ACACAGACTG  CCAGACATTC      TTCACAGACA      CCCC        ATG   ACA 
CCA     CCT     GAA     CGC     CTC     295 
                                Met   Thr Pro     Pro     Glu     Arg 
Leu 

-30 
        TTC   CTC CCA     AGG     GTG     TGT     GGC     ACC     ACC 
CTA     CAC     CTC     CTC     CTT     CTG     GGG     343 
        Phe   Leu Pro     Arg     Val     Cys     Gly     Thr     Thr 
Leu     His     Leu     Leu     Leu     Leu     Gly 
                -25   -20 -15 

        CTG   CTG CTG     GTT     CTG     CTG     CCT     GGG     GCC 
CAT     GTGAGGCAGC    AGGAGAATGG  393 
        Leu   Leu Leu     Val     Leu     Leu     Pro     Gly     Ala 
His 
        -10   -5 

        GGTGGCTCAG CCAAACCTTG AGCCCTAGAG CCCCCCTCAA CTCTGTTCTC CTAG GGG 
         450 
                                                                Gly 
        CTC   ATG CAT     CTT     GCC     CAC     AGC     AAC     CTC 
AAA     CCT     GCT     GCT     CAC     CTC     ATT     498 
        Leu   Met His     Leu     Ala     His     Ser     Asn     Leu 
Lys     Pro     Ala     Ala     His     Leu     Ile 
        1   5     10    15 

        GTAAACATCC  ACCTGACCTC      CCAGACATGT      CCCCACCAGC 
TCTCCTCCTA      CCCCTGCCTC      558 
        AGGAACCCAA  GCATCCACCC      CTCTCCCCCA      ACTTCCCCCA 
CGCTAAAAAA      AACAGAGGGA      618 
        GCCCACTCCT  ATGCCTCCCC      CTGCCATCCC      CCAGGAACTC 
AGTTGTTCAG      TGCCCACTTC      678 
        TAC   CCC AGC     AAG     CAG     AAC     TCA     CTG     CTC 
TGG     AGA     GCA     AAC     ACG     GAC     CGT     726 
        Tyr   Pro Ser     Lys     Gln     Asn     Ser     Leu     Leu 
Trp     Arg     Ala     Asn     Thr     Asp     Arg 
                20  25      30 

        GCC   TTC CTC     CAG     GAT     GGT     TTC     TCC     TTG 
AGC     AAC     AAT     TCT     CTC     CTG     GTC     774 
        Ala   Phe Leu     Gln     Asp     Gly     Phe     Ser     Leu 
Ser     Asn     Asn     Ser     Leu     Leu     Val 
                35  40      45 

        TAGAAAAAAT  AATTGATTTC      AAGACCTTCT      CCCCATTCTG 
CCTCCATTCT      GACCATTTCA      834 
        GGGGTCGTCA  CCACCTCTCC      TTTGGCCATT      CCAACAGCTC 
AAGTCTTCCC      TGATCAAGTC      894 
        ACCGGAGCTT  TCAAAGAAGG      AATTCTAGGC      ATCCCAGGGG 
ACCCACACCT      CCCTGAACCA      954 


        (2)   INFORMATION FOR SEQ ID NO:2: 

        (i)   SEQUENCE CHARACTERISTICS: 

        (A)   LENGTH: 82 amino acids 

        (B)   TYPE: amino acid 

        (D)   TOPOLOGY: linear 

        (ii)    MOLECULE TYPE: protein 

        (ix)    FEATURE: 

        (A)   NAME/KEY: signal sequence 

        (B)   LOCATION: -34 to -1 

        (C)   IDENTIFICATION METHOD: similarity to other signal sequences, 
 hydrophobic 

        (D)   OTHER INFORMATION: expresses protease 

        (x)   PUBLICATION INFORMATION: 

        (A)   AUTHORS: Doe, Joan X 

                                        Doe, John Q 

        (B)   TITLE: Isolation and Characterization of a Gene Encoding a 
Protease  from Paramecium sp. 

        (C)   JOURNAL: Fictional Genes 

        (D)   VOLUME: I 

        (E)   ISSUE: 1 

        (F)   PAGES: 1-20 

        (G)   DATE: 02-MAR-1988 

        (K)   RELEVANT RESIDUES IN SEQ ID NO:2: FROM -34 TO 48 

(xi) SEQUENCE DESCRIPTION: SEQ ID NO:2: 

Met   Thr Pro     Pro     Glu     Arg     Leu     Phe     Leu     Pro 
Arg     Val     Cys     Gly     Thr     Thr 
        -30                                   -25 
           -20 

Leu   His Leu     Leu     Leu     Leu     Gly     Leu     Leu     Leu 
Val     Leu     Leu     Pro     Gly     Ala 

        -15                                  -10 
          -5 

His   Gly Leu     Met     His     Leu     Ala     His     Ser     Asn 
Leu     Lys     Pro     Ala     Ala     His 


        1                             5 
   10 

Leu   Ile Tyr     Pro     Ser     Lys     Gln     Asn     Ser     Leu 
Leu     Trp     Arg     Ala     Asn     Thr 
15  20                                  25 
         30 

Asp   Arg Ala     Phe     Leu     Gln     Asp     Gly     Phe     Ser 
Leu     Ser     Asn     Asn     Ser     Leu 


        35                                     40 
            45 

Leu   Val 

        [Added 55 FR 18230, May 1, 1990, effective Oct. 1, 1990] 



Appendix B - HEADINGS FOR INFORMATION           ITEMS IN # 1.823 
        (1)   GENERAL    INFORMATION: 

        (i)   APPLICANT: 

        (ii)    TITLE OF INVENTION: 

        (iii)     NUMBER OF SEQUENCES: 

        (iv)    CORRESPONDENCE ADDRESS: 

        (A)   ADDRESSEE: 

        (B)   STREET: 

        (C)   CITY: 

        (D)   STATE: 

        (E)   COUNTRY: 

        (F)   ZIP: 

        (v)   COMPUTER READABLE FORM: 

        (A)   MEDIUM TYPE: 

        (B)   COMPUTER: 

        (C)   OPERATING SYSTEM: 

        (D)   SOFTWARE: 

        (vi)    CURRENT APPLICATION DATA : 

        (A)   APPLICATION NUMBER: 

        (B)   FILING DATE: 

        (C)     CLASSIFICATION: 

        (vii)     PRIOR APPLICATION DATA: 

        (A)   APPLICATION NUMBER: 

        (B)   FILING DATE: 

        (viii)      ATTORNEY/AGENT INFORMATION : 

        (A)   NAME: 

        (B)   REGISTRATION NUMBER: 

        (C)   REFERENCE/DOCKET NUMBER: 

        (ix)    TELECOMMUNICATION INFORMATION: 

        (A)   TELEPHONE: 

        (B)   TELEFAX: 

        (C)   TELEX: 

        (2)   INFORMATION FOR SEQ ID NO: X: 

        (i)   SEQUENCE CHARACTERISTICS: 

        (A)   LENGTH: 

        (B)   TYPE: 

        (C)   STRANDEDNESSS: 

        (D)   TOPOLOGY: 

        (ii)    MOLECULE TYPE: 

        - Genomic RNA; 

        - Genomic DNA; 

        - mRNA 

        - tRNA; 

        - rRNA; 

        - snRNA; 

        - scRNA; 

        - preRNA; 

        - cDNA to genomic RNA; 

        - cDNA to mRNA; 

        - cDNA to tRNA; 

        - cDNA to rRNA; 

        - cDNA to snRNA; 

        - cDNA to scRNA; 

        - Other nucleic acid; 

        (A)   DESCRIPTION: 

        - protein and 

        - peptide. 

        (iii)     HYPOTHETICAL: 

        (iv)    ANTI-SENSE: 

        (v)   FRAGMENT  TYPE: 

        (vi)     ORIGINAL   SOURCE: 

        (A)   ORGANISM: 

        (B)   STRAIN: 

        (C)   INDIVIDUAL ISOLATE: 

        (D)   DEVELOPMENTAL STAGE: 

        (E)   HAPLOTYPE: 

        (F)   TISSUE TYPE: 

        (G)   CELL TYPE: 

        (H)   CELL LINE: 

        (I)   ORGANELLE: 

        (vii)     IMMEDIATE SOURCE: 

        (A)   LIBRARY: 

        (B)   CLONE: 

        (viii)      POSITION IN GENOME: 

        (A)   CHROMOSOME/SEGMENT: 

        (B)   MAP POSITION: 

        (C)   UNITS: 

        (ix)    FEATURE: 

        (A)   NAME/KEY: 

        (B)   LOCATION: 

        (C)   IDENTIFICATION  METHOD: 

        (D)   OTHER  INFORMATION: 

        (x)   PUBLICATION   INFORMATION: 

        (A)   AUTHORS: 

        (B)   TITLE: 

        (C)   JOURNAL: 

        (D)   VOLUME: 

        (E)   ISSUE: 

        (F)   PAGES: 



        (G)   DATE: 

        (H)   DOCUMENT  NUMBER: 

        (I)   FILING DATE: 

        (J)   PUBLICATION  DATE: 

        (K)   RELEVANT RESIDUES : 

        (xi)    SEQUENCE DESCRIPTION: SEQ ID NO:X: 

        [Added 55 FR 18230, May 1, 1990, effective Oct. 1, 1990] 



PART 3 - ASSIGNMENT, RECORDING, AND RIGHTS OF ASSIGNEE 

Sec. 

3.1   Definitions. 

DOCUMENTS ELIGIBLE FOR RECORDING 

3.11    Documents which will be recorded. 

3.16    Assignability of trademarks prior to filing of use statement. 
REQUIREMENTS FOR RECORDING 

3.21    Identification of patents and patent applications. 

3.24    Formal requirements for documents and cover sheets. 

3.26    English language requirement. 

3.27    Mailing address for submitting documents to be recorded. 

3.28    Requests for recording. 

COVER SHEET REQUIREMENTS 

3.31    Cover sheet content. 

3.34    Correction of cover sheet errors. 

FEES 

3.41    Recording fees. 

DATE AND EFFECT OF RECORDING 

3.51    Recording date. 

3.54    Effect of recording. 

3.56    Conditional assignments. 

DOMESTIC REPRESENTATIVE 

3.61    Domestic representative. 

PROSECUTION BY ASSIGNEE 

3.71    Prosecution by assignee. 

3.73    Establishing right of assignee to prosecute. 

ISSUANCE TO ASSIGNEE 

3.81    Issue of patent to assignee. 

3.85    Issue of registration to assignee. 


# 3.1     Definitions. 


        For purposes of this part, the following definitions shall apply: 
        Application means a national application for pat-ent, an 
international  application that designates the United States of America, 
or an application  to register 
a trademark unless otherwise indicated. 

        Assignment means a transfer by a party of all or part of its 
right,  title and interest in a patent or patent application, or a 
transfer of its  entire right, title and interest in a registered mark or 
a mark for which an  application to register has been filed. 

        Document means a document which a party requests to be recorded in 
 the Office pursuant to w 3.11 and which affects some interest in an 
application,  patent, or registration. 

        Office means the Patent and Trademark Office. 

        Recorded document means a document which has been recorded in the 
Office  pursuant to w 3.11. 

        Registration means a trademark registration issued by the Office. 
        [Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992] 
DOCUMENTS ELIGIBLE FOR RECORDING 


# 3.11          Documents which will be recorded. 


        Assignments of applications, patents, and registrations, 
accompanied  by completed cover sheets as specified in ww 3.28 and 3.31, 
will be recorded  in the Office. Other documents, accompanied by completed 
cover sheets as specified  in ww 3.28 and 3.31, affecting title to 
applications, patents, or registrations,  will be recorded as provided in 
this Part or at the discretion of the Commissioner. 
        [Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992] 

# 3.16          Assignability of trademarks prior to filing of use 
     statement. 

        No application to register a mark under 15 U.S.C. 1051(b) is 
assignable  prior to the filing of the verified statement of use under 15 
U.S.C. 1051(d)  except to a successor to the business of the applicant, or 
portion thereof,  to which the mark pertains, if that business is ongoing 
and existing. 
        [Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992] 
REQUIREMENTS FOR RECORDING 


# 3.21          Identification of patents and patent 

                        applications. 

        An assignment relating to a patent must identify the patent by the 
 patent number. An assignment relating to a national patent application 
must  identify the national patent application by the application number 
(consisting  of the series code and the serial number, e.g., 07/123,456). 
An assignment  relating to an international patent application which 
designates the United  States of America must identify the international 
application by the international  application number (e.g., 
PCT/US90/01234). If an assign-ment of a patent application  filed under w 
1.53(b)(1) or w 1.62 is executed concurrently with, or subse-  quent to, 
the execution of the patent application, but 




before the patent application is filed, it must identify the patent 
application  by its date of execution, name of each inventor, and title of 
the invention  so that there can be no mistake as to the patent 
application intended. If an  assignment of a provisional application is 
executed before the provisional  application is filed, it must identify 
the provisional application by name  of each inventor and title of the 
invention so that there can be no mistake  as to the provisional 
application intended. 

        [Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992; 
amended,  60 FR 20195, Apr. 25, 1995, effective June 8, 1995] 


# 3.24          Formal requirements for documents and cover 
             sheets. 

        The document and cover sheet must be legible. Either the original 
document  or a true copy of the original document, may be submitted for 
recording. Only  one side of each page shall be used. The paper used 
should be flexible, strong  white, non-shiny, durable, and preferably no 
larger than 21.6 x 33.1 cm. (81/2  x 14 inches) with a 2.5 cm. (one-inch) 
margin on all sides. 

        [Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992] 

# 3.26          English language requirement. 


        The Office will accept and record non-English language documents 
only  if accompanied by a verified English translation signed by the 
individual making  the translation. 

        [Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992] 

# 3.27          Mailing address for submitting documents to be 
         recorded. 

        Documents and cover sheets to be recorded should be addressed to 
the  Commissioner of Patents and Trademarks, Box Assignments, Washington, 
D.C. 20231,  unless they are filed together with new applications or with 
a petition under  w 3.81(b). 

        [Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992] 

# 3.28          Requests for recording. 


        Each document submitted to the Office for recording must be 
accompanied  by at least one cover sheet as specified in w 3.31 referring 
either to those  patent applications and patents, or to those trademark 
applications and registrations,  against which the document is to be 
recorded. If a document to be recorded  includes interests in, or 
transactions involving, both patents and trademarks,  separate patent and 
trademark cover sheets must be submitted. Only one set  of documents and 
cover sheets to be recorded should be filed. If a document  to be recorded 
is not accompanied by a completed cover sheet, the document  and any 
incomplete cover sheet will be returned pursuant to w 3.51 for proper 
completion of a cover sheet and resubmission of the document and a 
completed  cover sheet. 

        [Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992] 
COVER SHEET REQUIREMENTS 


# 3.31          Cover sheet content. 


        (a)   Each patent or trademark cover sheet required by w 3.28 must 
 contain: 

        (1)   the name of the party conveying the interest; 

        (2)   the name and address of the party receiving the  interest; 
        (3)   a description of the interest conveyed or transaction to be 
recorded; 
        (4)   each application number, patent number or registration 
number  against which the document is to be recorded, or an indication 
that the document  is filed together with a patent application; 

        (5)   the name and address of the party to whom  correspondence 
concerning  the request to record the document should be mailed; 

        (6)   the number of applications, patents, or registrations 
identified  in the cover sheet and the total fee; 

        (7)   the date the document was executed; 

        (8)   an indication that the assignee of a trademark  application 
or  registration who is not domiciled in the United States has designated 
a domestic  representative (see w 3.61); and 

        (9)   a statement by the party submitting the document that to the 
 best of the person's knowledge and belief, the information contained on 
the  cover sheet is true and correct and any copy submitted is a true copy 
of the  original document; and 

        (10) the signature of the party submitting the document. 

        (b)   A cover sheet may not refer to both patents and  trademarks. 
        [Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992] 

# 3.34          Correction of cover sheet errors. 


        (a)   An error in a cover sheet recorded pursuant to 
w 3.11 will be corrected only if: 



        (1)   the error is apparent when the cover sheet is compared with 
the  recorded document to which it pertains and 

        (2)   a corrected cover sheet is filed for recordation. 
        (b)   The corrected cover sheet must be accompanied by the 
originally  recorded document or a copy of the originally recorded 
document and by the  recording fee as set forth in w 3.41. 

         [Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992] 
FEES 


# 3.41      Recording fees. 


        All requests to record documents must be accompanied by the 
appropriate  fee. A fee is required for each application, patent and 
registration against  which the document is recorded as identified in the 
cover sheet. The recording  fee is set in w 1.21(h) of this Chapter for 
patents and in w 2.6(q) of this  Chapter for trademarks. 

        [Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992] 
DATE AND EFFECT OF RECORDING 


# 3.51      Recording date. 


        The date of recording of a document is the date the document 
meeting  the requirements for recording set forth in this Part is filed in 
the Office.  A document which does not comply with the identification 
requirements of w  3.21 will not be recorded. Documents not meeting the 
other requirements for  recording, for example, a document submitted 
without a completed cover sheet  or without the required fee, will be 
returned for correction to the sender  where a correspondence address is 
available. The returned papers, stamped with  the original date of receipt 
by the Office, will be accompanied by a letter  which will indicate that 
if the returned papers are corrected and resubmitted  to the Office within 
the time specified in the letter, the Office will consider  the original 
date of filing of the papers as the date of recording of the document. 
The certification procedure under either w 1.8 or w 1.10 of this Chapter 
may  be used for resubmissions of returned papers to have the benefit of 
the date  of deposit in the United States Postal Service. If the returned 
papers are  not corrected and resubmitted within the specified period, the 
date of filing  of the corrected papers will be considered to be the date 
of recording of the  document. The specified period to resubmit the 
returned papers will not be  extended. 

        [Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992] 

# 3.54          Effect of recording. 


        The recording of a document pursuant to w 3.11 is not a 
determination  by the Office of the validity of the document or the effect 
that document has  on the title to an application, a patent, or a 
registration. When necessary,  the Office will determine what effect a 
document has, including whether a party  has the authority to take an 
action in a matter pending before the Office. 
        [Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992] 

# 3.56          Conditional assignments. 


        Assignments which are made conditional on the performance of 
certain  acts or events, such as the payment of money or other condition 
subsequent,  if recorded in the Office, are regarded as absolute 
assignments for Office  purposes until cancelled with the written consent 
of all parties or by the  decree of a court of competent jurisdiction. The 
Office does not determine  whether such conditions have been fulfilled. 

        [Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992] 
DOMESTIC REPRESENTATIVE 


# 3.61          Domestic representative. 


        If the assignee of a trademark application or registration is not 
domiciled  in the United States, the assignee must designate, in writing 
to the Office,  a domestic representative. An assignee of a patent 
application or patent may  designate a domestic representative if the 
assignee is not residing in the  United States. The designation shall 
state the name and address of a person  residing within the United States 
on whom may be served process or notice of  proceedings affecting the 
application, patent or registration or rights thereunder. 
        [Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992] 
PROSECUTION BY ASSIGNEE 


# 3.71          Prosecution by assignee. 


        The assignee of record of the entire right, title and interest in 
an  application for patent is entitled to conduct the prosecution of the 
patent  application to the exclusion of the named inventor or previous 
assignee. The  assignee of a registered trademark or a trademark for which 
an application  to register has been filed is entitled to conduct the 
prosecution of the trademark  application or registration to the exclusion 
of the original applicant or previous  assignee. 

        [Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992] 



# 3.73          Establishing right of assignee to prosecute. 


        (a)   The inventor is presumed to be the owner of a patent 
application,  and any patent that may issue therefrom, unless there is an 
assignment. The  original applicant is presumed to be the owner of a 
trademark application unless  there is an assignment. 

        (b)   When the assignee of the entire right, title, and  interest 
seeks  to take action in a matter before the Office with respect to a 
patent application,  trademark applica-tion, patent, registration, or 
reexamination proceeding,  the assignee must establish its ownership of 
the property to the satisfaction  of the Commissioner. Ownership is 
established by submitting to the Office documentary  evidence of a chain 
of title from the original owner to the assignee or by  specifying (e.g. 
reel and frame number, etc.) where such evidence is recorded  in the 
Office. Documents submitted to establish ownership may be required to  be 
recorded as a condition to permitting the assignee to take action in a 
matter  pending before the Office. In addition, the assignee of a patent 
application  or patent must submit a statement specifying that the 
evidentiary documents  have been reviewed and certifying that, to the best 
of assignee's knowledge  and belief, title is in the assignee seeking to 
take the action. 

        [Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992] 
ISSUANCE TO ASSIGNEE 


# 3.81          Issue of patent to assignee. 


        (a)   For a patent application, if an assignment of the entire 
right,  title, and interest is recorded before the issue fee is paid, the 
patent may  issue in the name of the assignee. If the assignee holds an 
undivided part  interest, the patent may issue jointly to the inventor and 
the assignee. At  the time the issue fee is paid, the name of the assignee 
must be provided if  the patent is to issue solely or jointly to that 
assignee. 

        (b)   If the assignment is submitted for recording after the date 
of  payment of the issue fee, but prior to issuance of the patent, the 
assignee  may petition that the patent issue to the assignee. Any such 
petition must  be accompanied by the fee set forth in w 1.17(i) of this 
Chapter. 
        [Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992; 
amended,  60 FR 20195, Apr. 25, 1995, effective June 8, 1995] 


# 3.85          Issue of registration to assignee. 


        The certificate of registration may be issued to the  assignee of 
the  applicant, or in a new name of the applicant, provided that the party 
files  a written request in the trademark application by the time the 
application  is being prepared for issuance of the certificate of 
registration, and the  appropriate document is recorded in the Office. If 
the assignment or name change  document has not been recorded in the 
Office, then the written request must  state that the document has been 
filed for recordation. The address of the  assignee must be made of record 
in the application file. 

        [Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992] 
PART 5 - SECRECY OF CERTAIN 
INVENTIONS AND LICENSES TO 
EXPORT AND FILE APPLICATIONS 
IN FOREIGN COUNTRIES 

SECRECY ORDERS 

Sec. 

5.1   Defense inspection of certain applications. 

5.2   Secrecy order. 

5.3   Prosecution of application under secrecy orders; 
        withholding patent. 

5.4   Petition for rescission of secrecy order. 

5.5   Permit to disclose or modification of secrecy order. 

5.6   General and group permits. 

5.7   Compensation. 

5.8   Appeal to Secretary. 

LICENSES FOR FOREIGN EXPORTING 
AND FILING 

5.11    License for filing in a foreign country an application on an 
     invention  made in the United States or for transmitting 
international application. 
5.12    Petition for license 

5.13    Petition for license; no corresponding application. 

5.14    Petition for license; corresponding U.S. application. 

5.15    Scope of license. 

5.16    Effect of secrecy order. 

5.17    Who may use license. 

5.18    Arms, ammunition, and implements of war. 

5.19    Export of technical data. 

5.20    Export of technical data relating to sensitive nuclear technology. 
5.25    Petition for retroactive license. 

GENERAL 

5.31    Effect of modification, rescission or license. 

5.32    Papers in English language. 

5.33    Correspondence. 



SECRECY ORDERS 


# 5.1     Defense inspection of certain applications. 


        (a)   The provisions of this part shall apply to both national and 
 international applications filed in the Patent and Trademark Office and, 
with  respect to inventions made in the United States, to applications 
filed in any  foreign country or any international authority other than 
the United States  Receiving Office. The (1) filing of a national or an 
international application  in a foreign country or with an international 
authority other than the United  States Receiving Office, or (2) 
transmittal of an international application  to a foreign agency or an 
international authority other than the United States  by the agency to 
review applications. Such representatives are required to  sign a dated 
acknowledgment of access accepting the condition that information 
obtained from the inspection will be used for no purpose other than the 
administration  of 35 U.S.C. 181-188. Copies of applications may be made 
available to such  representatives for inspection outside the Patent and 
Trademark Office under  conditions assuring that the confidentiality of 
the applications will be maintained,  including the conditions that: (1) 
All copies will be returned to the Patent  and Trademark Office promptly 
if no secrecy order is imposed, or upon rescission  of such order if one 
is imposed, and (2) no additional copies will be made  by the defense 
agencies. A record of the removal and return of copies made  available for 
defense inspection will be maintained by the Patent and Trademark  Office. 
Applications relating to atomic energy are made available to the 
Department  of Energy as specified in w 1.14 of this chapter. 

        [43 FR 20470, May 11, 1978] 


# 5.2     Secrecy order. 


        (a)   When notified by the chief officer of a defense agency that 
publication  or disclosure of the invention by the granting of a patent 
would be detrimental  to the national security, an order that the 
invention be kept secret will be  issued by the Commissioner of Patents 
and Trademarks. 

        (b)   The secrecy order is directed to the applicant, his 
successors,  any and all assignees, and their legal representatives; 
hereinafter designated  as principals. 

        (c)   A copy of the secrecy order will be forwarded to each 
principal  of record in the application and will be accompanied by a 
receipt, identifying  the particular principal, to be signed and returned. 

        (d)   The secrecy order is directed to the subject matter of the 
application.  Where any other application in which a secrecy order has not 
been issued discloses  a significant part of the subject matter of the 
application under secrecy order,  the other application and the common 
subject matter should be called to the  attention of the Patent and 
Trademark Office. Such a notice may include any  material such as would be 
urged in a petition  to rescind secrecy orders on  either of the applications. 


# 5.3     Prosecution of application under secrecy orders; 
     withholding 


patent. 

        Unless specifically ordered otherwise, action on the application 
by  the Office and prosecution by the applicant will proceed during the 
time an  application is under secrecy order to the point indicated in this 
section: 
        (a)   National applications under secrecy order which come to a 
final  rejection must be appealed or otherwise prosecuted to avoid 
abandonment. Appeals  in such cases must be completed by the applicant but 
unless otherwise specifically  ordered by the Commissioner will not be set 
for hearing until the secrecy order  is removed. 

        (b)   An interference will not be declared involving national 
applications  under secrecy order. However, if an applicant whose 
application is under secrecy  order seeks to provoke an interference with 
an issued patent, a notice of that  fact will be placed in the file 
wrapper of the patent. (See w 1.607(d)). 
        (c)   When the national application is found to be in condition 
for  allowance except for the secrecy order the applicant and the agency 
which caused  the secrecy order to be issued will be notified. This notice 
(which is not  a  notice of allowance under w 1.311 of this chapter) does 
not require response  by the applicant and places the national application 
in a condition of suspension  until the secrecy order is removed. When the 
secrecy order is removed the Patent  and Trademark Office will issue a 
notice of allowance under w 1.311 of this  chapter, or take such other 
action as may then be warranted 

        (d)   International applications under secrecy order will not be 
mailed,  delivered, or otherwise transmitted to the international 
authorities or the  applicant. International applications under secrecy 
order will be processed  up to the point where, if it were not for the 
secrecy order, 




record and search copies would be transmitted to the international 
authorities  or the applicant. 

        [43 FR 20470, May 11, 1978; amended 43 FR 28479, June 30, 1978; 
para. 
(b) amended 53 FR 23736, June 23, 1988, effective Sept. 12, 1988] 

# 5.4     Petition for rescission of secrecy order. 


        (a)   A petition for rescission or removal of a secrecy order may 
be  filed by , or on behalf of, any principal affected thereby. Such 
petition may  be in letter form, and it must be in duplicate. The petition 
must be accompanied  by one copy of the application or an order for the 
same, unless a showing is  made that such a copy has already been 
furnished to the department or agency  which caused the secrecy order to 
be issued. 

        (b)   The petition must recite any and all facts that purport to 
render  the order ineffectual or futile if this is the basis of the 
petition. When  prior publications or patents are alleged, the petition 
must give complete  data as to such publications or patents and should be 
accompanied by copies  thereof. 

        (c)   The petition must identify any contract between the 
Government  and any of the principals under which the subject matter of 
the application  or any significant part thereof was developed or to which 
the subject matter  is otherwise related. If there is no such contract, 
the petition must so state. 
        (d)   Unless based upon facts of public record, the petition must 
be  verified. 


# 5.5     Permit to disclose or modification of secrecy 
     order. 


        (a)   Consent to disclosure, or to the filing of an application 
abroad,  as provided in 35 U.S.C. 182, shall be made by a "permit" or 
"modification"  of the secrecy order. 

        (b)   Petitions for a permit or modification must fully recite the 
 reason or purpose for the proposed disclosure. Where any proposed 
disclosee  is known to be cleared by a defense agency to receive 
classified information,  adequate explanation of such clearance should be 
made in the petition including  the name of the agency or department 
granting the clearance and the date and  degree thereof. The petition must 
be filed in duplicate and be accompanied  by one copy of the application 
or an order for the same, unless a showing is  made that such a copy has 
already been furnished to the department or agency  which caused the 
secrecy order to be issued. 

        (c)   In a petition for modification of a secrecy order to permit 
filing  abroad, all countries in which it is proposed to file must be made 
known, as  well as all attorneys, agents, and others to whom the material 
will be consigned  prior to being lodged in the foreign patent office. The 
petition should include  a statement vouching for the loyalty and 
integrity of the proposed disclosees  and where their clearance status in 
this or the foreign country is known all  details should be given. 

        (d)   Consent to the disclosure of subject matter from one 
application  under secrecy order may be deemed to be consent to the 
disclosure of common  subject matter in other applications under secrecy 
order so long as the subject  matter is not taken out of context in a 
manner disclosing material beyond the  modification granted in the first 
application. 

        (e)   The permit or modification may contain conditions and 
limitations. 

# 5.6     General and group permits. 


        (a)   Organizations requiring consent for disclosure of 
applications  under secrecy order to persons or organizations in 
connection with repeated  routine operation may petition for such consent 
in the form of a general permit.  To be successful such petitions must 
ordinarily recite the security clearance  status of the disclosees as 
sufficient for the highest classification of material  that may be 
involved. 

        (b)   Where identical disclosees and circumstances are involved, 
and  consent is desired for the disclosure of each of a specific list of 
applications,  the petitions may be joined. 


# 5.7     Compensation. 


        Any request for compensation as provided in 35 U.S.C. 183 must not 
 be made to the Patent and Trademark Office but should be made directly to 
the  department or agency which caused the secrecy order to be issued. 
Upon written  request persons having a right to such information will be 
informed as to the  department or agency which caused the secrecy order to 
be issued. 


# 5.8      Appeal to Secretary. 


        Appeal to the Secretary of Commerce, as provided by 35 U.S.C.181, 
from  a secrecy order cannot be taken until after a petition for 
rescission of the  secrecy order has been made and denied. Appeal must be 
taken within 60 days  from the date of the denial, and the party 
appealing, as well as the department  or agency which 




caused the order to be issued, will be notified of the time and place of 
hearing.  The appeal will be heard and decided by the Secretary or such 
officer or officers  as he may designate. 

LICENSES FOR FOREIGN EXPORTING 
AND FILING 


# 5.11          License for filing in a foreign country an 
                     application 


on an invention made in 
the  United States or for transmitting 
  international  application. 

        (a)   A license from the Commissioner of Patents and Trademarks 
under  35 U.S.C. 184 is required before filing any application for patent 
including  any modifications, amendments, or supplements thereto or 
divisions thereof  or for the registration of a utility model, industrial 
design, or model, in  a foreign patent office or any foreign patent agency 
or any international agency  other than the United States Receiving 
Office, if the invention was made in  the United States and: 

        (1)   An application on the invention has been filed in the United 
 States less than six months prior to the date on which the application is 
to  be filed, or 

        (2)   No application on the invention has been filed in the United 
 States. 

        (b)   The license from the Commissioner of Patents and Trademarks 
referred  to in paragraph (a) would also authorize the export of technical 
data abroad  for purposes relating to the preparation, filing or possible 
filing and prosecution  of a foreign patent application without separately 
complying with the regulations  contained in 22 CFR Parts 121 through 130 
(International Traffic in Arms Regulations  of the Department of State), 
15 CFR Part 379 (Regulations of the Office of  Export Administration, 
International Trade Administration, Department of Commerce)  and 10 CFR 
Part 810 (Foreign Atomic Energy Programs of the Department of Energy). 
        (c)   Where technical data in the form of a patent application, or 
 in any form, is being exported for purposes related to the preparation, 
filing  or possible filing and prosecution of a foreign patent 
application, without  the license from the Commissioner of Patents and 
Trademarks referred to in  paragraphs (a) or (b) of this section, or on an 
invention not made in the United  States, the export regulations contained 
in 22 CFR Parts 121 through 130 ((International  Traffic in Arms 
Regulations of the Department of State), 15 CFR Part 379 (Regulations  of 
the Office of Export Administration, International Trade Administration, 
Department of Commerce) and10 CFR Part 810 (Foreign Atomic Energy Programs 
 of the Department of Energy) must be complied with unless a license is 
not  required because a United States application was on file at the time 
of export  for at least six months without a secrecy order under w 5.2 
being placed thereon.  The term "exported" means export as it is defined 
in 22 CFR Parts 121 through  130, 15 CFR Part 379 and 10 CFR Part 810. 

        (d)   If a secrecy order has been issued under w 5.2, an 
application  cannot be exported to, or filed in, a foreign country 
(including an international  agency in a foreign country), except in 
accordance with w 5.5. 

        (e)   No license pursuant to paragraph (a) of this section is 
required: 
        (1)   If the invention was not made in the United States, or 
        (2)   If the corresponding United States application is not 
subject  to a secrecy order under w 5.2, and was filed at least six months 
prior to  the date on which the application is filed in a foreign country, 
or 
        (3)   For subsequent modifications, amendments and supplements 
containing  additional subject matter to, or divisions of, a foreign 
patent application  if: 

        (i)   a license is not, or was not, required under paragraph 
(e)(2)  of this section for the foreign patent application; 

        (ii)    the corresponding United States application was not 
required  to be made available for inspection under 35 U.S.C. 181 and w 
5.1; and 
        (iii)     such modifications, amendments, and supplements do not, 
or  did not, change the general nature of the invention in a manner which 
would  require any corresponding United States application to be or have 
been available  for inspection under 35 U.S.C. 181 and 
w 5.1. 

        (f)   A license pursuant to paragraph (a) of this section can be 
revoked  at any time upon written notification by the Patent and Trademark 
Office. An  authorization to file a foreign patent application resulting 
from the passage  of six months from the date of filing of a United States 
patent application  may be revoked by the imposition of a secrecy order. 

        [49 FR 13461, Apr. 4, 1984; paras. (a) and (e), 56 FR 1924, Jan. 
18,  1991, effective Feb. 19, 1991] 




# 5.12          Petition for license. 


        (a)   Filing of an application for patent for inventions made in 
the  United States will be considered to include a petition for license 
under 35  U.S.C. 184 for the subject matter of the application. The filing 
receipt will  indicate if a license is granted. If the initial automatic 
petition is not  granted, a subsequent petition may be filed under 
paragraph (b) of this section. 
        (b)   Petitions for license should be presented in letter form and 
 must include the required fee (w 1.17(h)). If expedited handling of the 
petition  is also sought, the petitioner's address and full instructions 
for delivery  of the requested license when it is to be delivered to other 
than the petitioner. 
        [48 FR 2714, Jan. 20, 1983; amended 49 FR 13462, Apr. 4, 1984] 

# 5.13          Petition for license; no corresponding application. 

        If no corresponding national or international application has been 
 filed in the United States, the petition for license under w 5.12(b) must 
be  accompanied by the required fee (w 1.17(h)), if expedited handling of 
the petition  is sought, and a legible copy of the material upon which 
license is desired.  This copy will be retained as a measure of the 
license granted. For assistance  in the identification of the subject 
matter of each license so issued, it is  suggested that the petition be 
submitted in duplicate and provide a title and  other description of the 
material. The duplicate copy of the petition will  be returned with the 
license or other action on the petition. 

        [43 FR 20471, May 11, 1978; 49 FR 13462, Apr. 4, 1984] 


# 5.14          Petition for license; corresponding U.S. 

                        application. 

        (a)   Where there is a corresponding United States application on 
file,  a petition for license under w 5.12(b) must include the required 
fee (w 1.17(h)),  if expedited handling of the petition is also sought, 
and must identify this  application by serial number, filing date, 
inventor, and title, and a copy  of the material upon which the license is 
desired is not required. The subject  matter licensed will be measured by 
the disclosure of the United States application.  Where the title is not 
descriptive, and the subject matter is clearly of no  interest from a 
security standpoint, time may be saved by a short statement  in the 
petition as to the nature of the invention. 

        (b)   Two or more United States applications should not be 
referred  to in the same petition for license unless they are to be 
combined in the foreign  or international application, in which event the 
petition should so state and  the identification of each United States 
application should be in separate  paragraphs. 

        (c)   Where the application to be filed or exported abroad 
contains  matter not disclosed in the United States application or 
applications, including  the case where the combining of two or more 
United States applications introduces  subject matter not disclosed in any 
of them, a copy of the application as it  is to be filed in the foreign 
country or international application which is  to be transmitted to a 
foreign international or national agency for filing  in the Receiving 
Office, must be furnished with the petition. If, however,  all new matter 
in the foreign or international application to be filed is readily 
identifiable, the new matter may be submitted in detail and the remainder 
by  reference to the pertinent United States application or applications. 
        [43 FR 20471, May 11, 1978; 49 FR 13462, Apr. 4, 1984] 


# 5.15          Scope of license. 


        (a)   Applications or other materials reviewed pursuant to ww 5.12 
 through 5.14, which were not required to be made available for inspection 
by  defense agencies under 35 U.S.C. 181 and w 5.1, will be eligible for a 
license  of the scope provided in this paragraph. This license permits 
subsequent modifications,  amendments, and supplements containing 
additional subject matter to, or divisions  of, a foreign patent 
application, if such changes to the application do not  alter the general 
nature of the invention in a manner which would require the  United States 
application to have been made available for inspection under  35 U.S.C. 
181 and w 5.1. This license also covers the inventions disclosed  in 
foreign applications which had been granted a license under this part 
prior  to April 4, 1984, and which were not subject to security inspection 
under 35  U.S.C. 181 and 
# 5.1. Grant of this license authorizes the export and filing of an 
application  in a foreign country or the  transmitting of an international 
application to  any foreign patent agency or international patent agency 
when the subject matter  of the foreign or international application 
corresponds to that of the domestic  application. This license includes 
authority: 

        (1)   To export and file all duplicate and formal application 
papers  in foreign countries or with international agencies; 



        (2)   To make amendments, modifications,and supplements, including 
 divisions, changes, or supporting matter consisting of the illustration, 
exemplification,  comparison, or explanation of subject matter disclosed 
in the application;  and 

        (3)   To take any action in the prosecution of the foreign or 
international  application provided that the adding of subject matter or 
taking of any action  under paragraphs (a)(1) and (2) of this section 
which does not change the general  nature of the invention disclosed in 
the application in a manner which would  require such application to have 
been made available for inspection under 35  U.S.C. 181 and w 5.1 by 
including technical data pertaining to: 

        (i)   Defense services or articles designated in the United States 
 Munitions List applicable at the time of foreign filing, the unlicensed 
exportation  of which is prohibited pursuant to the Arms Export Control 
Act, as amended,  and 22 CFR Parts 121 through 130; or 

        (ii)    Restricted Data, sensitive nuclear technology or 
technology  useful in the production or utilization of special nuclear 
material or atomic  energy, the dissemination of which is subject to 
restrictions of the Atomic  Energy Act of 1954, as amended, and the 
Nuclear Non-Proliferation Act of 1978,  as implemented by the regulations 
for Unclassified Activities in Foreign Atomic  Energy Programs, 10 CFR 
Part 810, in effect at the time of foreign filing. 
        (b)   Applications or other materials which were required to be 
made  available for inspection under 
35 U.S.C. 181 and 5.1 will be eligible for a license of the scope provided 
 in this paragraph. Grant of this license authorizes the export and filing 
of  an application in a foreign country or the transmitting of an 
international  application to any foreign patent agency or international 
patent agency. Further,  this license includes authority to export and 
file all duplicate and formal  papers in foreign countries or with foreign 
and international patent agencies  and to make amendments, modifications, 
and supplements to, file divisions of,  and take any action in the 
prosecution of the foreign or international application,  provided subject 
matter additional to that covered by the license is not involved. 
        (c)   A license granted under w 5.12(b) pursuant to 
w 5.13 or w 5.14 shall have the scope indicated in paragraph (a) of this 
section,  if it is so specified in the license. A petition, accompanied by 
the required  fee 
(w 1.17(h)), may also be filed to change a license having the scope 
indicated  in paragraph (b) of this section to a license having the scope 
indicated in  paragraph (a) of this section. No such petition will be 
granted if the copy of the material filed pursuant to w 5.13 or any 
corresponding United States  application was required to be made available 
for inspection under 35 U.S.C.  181 and w 5.1. The change in the scope of 
a license will be effective as of  the date of the grant of the petition. 

        (d)   In those cases in which no license is required to file the 
foreign  application or transmit the international application, no license 
is required  to file papers in connection with the prosecution of the 
foreign or international  application not involving the disclosure of 
additional subject matter. 
        (e)   Any paper filed abroad or transmitted to an international 
patent  agency following the filing of a foreign or international 
application which  changes the general nature of the subject matter 
disclosed at the time of filing  in a manner which would require such 
application to have been made available  for inspection under 35 U.S.C. 
181 and w 5.1 or which involves the disclosure  of subject matter listed 
in paragraphs (a)(3)(i) or (ii) of this section must  be separately 
licensed in the same manner as a foreign or international application. 
Further, if no license has been granted under w 5.12(a) on filing the 
corresponding  United States application, any paper filed abroad or with 
an international  patent agency which involves the disclosure of 
additional subject matter must  be licensed in the same manner as a 
foreign or international application. 
        (f)   Licenses separately granted in connection with two or more 
United  States applications may be exercised by combining or dividing the 
disclosures,  as desired, provided: 

        (1)   Subject matter which changes the general nature of the 
subject  matter disclosed at the time of filing or which involves subject 
matter listed  in paragraphs (a)(3) (i) or (ii) of this section is not 
introduced and, 
        (2)   In the case where at least one of the licenses was obtained 
under  w 5.12(b), additional subject matter is not introduced. 

        (g)   A license does not apply to acts done before the license was 
 granted. See w 5.25 for petitions for retroactive licenses. 

        [49 FR 13462, Apr. 4, 1984; paras. (a) - (c), (e) and (f), 56 FR 
1924, Jan. 18, 1991, effective Feb. 19, 1991] 




# 5.16          Effect of secrecy order. 


        Any license obtained under 35 U.S.C. 184 is ineffective if the 
subject  matter is under a secrecy order, and a secrecy order prohibits 
the exercise  of or any further action under the license unless separately 
specifically authorized  by a modification of the secrecy order in 
accordance with w 5.5. 


# 5.17          Who may use license. 


        Licenses may be used by anyone interested in the export, foreign 
filing,  or international transmittal for or on behalf of the inventor or 
the inventor's  assigns. 

        [49 FR 13463, Apr. 4, 1984] 


# 5.18          Arms, ammunition, and implements of war. 


        (a)   The exportation of technical data relating to arms, 
ammunition,  and implements of war generally is subject to the 
International Traffic in  Arms Regulations of the Department of State (22 
CFR Parts 121 through 128);  the articles designated as arms, ammunition, 
and implements of war are enumerated  in the U.S. Munitions List, 22 CFR 
121.01. However, if a patent applicant complies  with regulations issued 
by the Commissioner of Patents and Trademarks under  35 U.S.C. 184, no 
separate approval from the Department of State is required  unless the 
applicant seeks to export technical data exceeding that used to  support a 
patent application in a foreign country. This exemption from Department 
 of State regulations is applicable regardless of whether 
a license from the Commissioner is required by the provisions of ww 5.11 
and  5.15 (22 CFR 125.04(b), 125.20(b)). 

        (b)   When a patent application containing subject matter on the 
Munitions  List (22 CFR 121.01) is subject to a secrecy order under w 5.2 
and a petition  is made under w 5.5 for a modification of the secrecy 
order to permit filing  abroad, a separate request to the Department of 
State for authority to export  classified information is not required (22 
CFR 125.05(d)). 

        [35 FR 6430. Apr. 22, 1970] 


# 5.19          Export of technical data. 


        (a)   Under regulations (15 CFR 770.10(j)) established by the U.S. 
 Department of Commerce, Bureau of Export Administration, Office of Export 
Licensing,  a validated export license is not required in any case to file 
a patent application  or part thereof in a foreign country if the foreign 
filing is in accordance  with the regulations (37 CFR 5.11 through 5.33) 
of the Patent and Trademark  Office. 

        (b)   A validated export license is not required for data 
contained  in a patent application prepared wholly from foreign-origin 
technical data  where such application is being sent to the foreign 
inventor to be executed  and returned to the United States for subsequent 
filing in the U.S. Patent  and Trademark Office (15 CFR 379.3(c)). 

        (c)   Inquiries concerning the export control regulations for the 
foreign  filing of technical data other than patent applications should be 
made to the  Office of Export Administration, International Trade 
Administration, Department  of Commerce, Washington, D.C. 20230. 

        [45 FR 72654, Nov. 3, 1980; para. (a) revised, 58 FR 54504, Oct. 
22,  1993, effective Jan 3, 1994] 


# 5.20          Export of technical data relating to sensitive 
                     nuclear 


technology. 

        (a)   Under regulations (10 CFR 810.7) established by the United 
States  Department of Energy, an application filed in accordance with the 
regulations 
(37 CFR 5.11 through 5.33) of the United States Patent and Trademark 
Office  and eligible for foreign filing under 35 U.S.C. 184, is considered 
to be information  available to the public in published form and a 
generally authorized activity  for the purposes of the Department of 
Energy regulations. 

        (b)   Inquiries concerning the export of sensitive nuclear 
technology  other than related to the filing or prosecution of a foreign 
patent application  should be made to the Attention: Secretary, United 
States Department of Energy,  Office of International Security Affairs, 
Washington, D.C. 20858. 

        [49 FR 13463, Apr. 4, 1984] 


# 5.25          Petition for retroactive license. 


        (a)   A petition for retroactive license under 
35 U.S.C. 184 shall be presented in accordance with 
w 5.13 or w 5.14(a), and shall include: 

        (1)   A listing of each of the foreign countries in which the 
unlicensed  patent application material was filed, 

        (2)   The dates on which the material was filed in each country, 


        (3)   A verified statement (oath or declaration) containing: 
        (i)   An averment that the subject matter in question was not 
under  a secrecy order at the time it was filed abroad, and that it is not 
currently  under a secrecy order. 

        (ii)    A showing that the license has been diligently sought 
after  discovery of the proscribed foreign filing, and 

        (iii)     An explanation of why the material was inadvertently 
filed  abroad through error and without deceptive intent without the 
required license  under # 5.11 first having been obtained, and 

        (4)   The required fee (w 1.17(h)). 

The above explanation must include a showing of facts rather than a mere 
allegation  of action through error and without deceptive intent. The 
showing of facts  as to the nature of the error should include statements 
by those persons having  personal knowledge of the acts regarding filing 
in a foreign country and should  be accompanied by copies of any necessary 
supporting documents such as letters  of transmittal or instructions for 
filing. The acts which are alleged to constitute  error without deceptive 
intent should cover the period leading up to and including  each of the 
prescribed foreign filings. 

        (b)   If a petition for a retroactive license is denied, a time 
period  of not less than thirty days shall be set, during which the 
petition may be  renewed. Failure to renew the petition within the set 
time period will result  in a final denial of the petition. A final denial 
of a petition stands unless  a petition is filed under w 1.181 within two 
months of the date of the denial.  If the petition for a retroactive 
license is denied with respect to the invention  of a pending application 
and no petition under w 1.181 has been filed, a final  rejection of the 
application under 35 U.S.C. 185 will be made 

        (c)   The granting of a retroactive license does not excuse any 
violation  of the export regulations contained in 22 CFR Parts 121 through 
130 (International  Traffic in Arms Regulations of the Department of State), 
15 CFR Part 379 (Regulations of Office of Export Administration, 
International  Trade Administration, Department of Commerce) and 10 CFR 
Part 810 (Foreign  Atomic Energy Programs of the Department of Energy) 
which may have occurred  because of the failure to obtain an appropriate 
license prior to export. 
        [49 FR 13463, Apr. 4, 1984; para. (a), 56 FR 1924, Jan. 18, 1991, 
effective  Feb. 19, 1991] 

GENERAL 


# 5.31          Effect of modification, rescission or license. 


        Any consent, rescission or license under the provisions of this 
part  does not lessen the responsibilities of the principals in respect to 
any Government  contract or the requirements of any other Government agency. 

        [24 FR 10381, Dec. 22, 1959; Redesignated at 49 FR 13463, Apr. 4, 
1984] 



# 5.32          Papers in English language. 


        All papers submitted in connection with petitions must be in the 
English  language or be accompanied by an English translation and a 
translator's certificate  as to the true, faithful, and exact character of 
the translation. 
        [24 FR 10381, Dec. 22, 1959; Redesignated at 49 FR 13463, Apr. 4, 
1984] 

# 5.33          Correspondence. 


        All correspondence in connection with this part, including 
petitions,  should be addressed to "Commissioner of Patents and Trademarks 
(Attention Licensing  and Review), Washington, D.C. 20231." 

        [49 FR 13463, Apr. 4, 1984] 

PART 7 - REGISTER OF 
GOVERNMENT INTERESTS IN 
PATENTS 

Sec. 

7.1   Requirements. 

7.2   Assignments. 

7.3   Licenses 

7.4   Abbreviated copy. 

7.5   Instruments already on record. 

7.6   Access to register. 

7.7   Secret register. 


# 7.1     Requirements. 


        (a)   Executive Order 9424 (3 CFR 1943-1948 Comp.) requires the 
several  departments and other executive agencies of the Government, 
including Government-owned  or Government-controlled corporations, to 
forward promptly to the Commissioner  of Patents and Trademarks for 
recording all licenses, assignments, or other  interests of the Government 
in or under patents or applications for patents. 
        (b)   An instrument relating to a patent must identify the patent 
by  the patent number. An instrument relating  to a national patent 
application  must identify the national patent application by the 
application number (consisting  of the series code and the serial number, 
e.g., 



07/123,456) or the serial number and filing date. An instrument relating 
to  an international patent application which designates the United States 
of America  must identify the international application by the 
international application  number (e.g., PCT/US90/01234). If an assignment 
is executed  concurrently with,  or subsequent to, the execution of the 
patent application, but before the patent  application is filed, it must 
identify the patent application by its date of  execution, name of each 
inventor, and title of the invention so that there  can be no mistake as 
to the patent application intended. 

        (c)   Each instrument submitted to the Office for recording must 
be  accompanied by at least one cover sheet as specified in paragraph (d) 
of this  section referring to those patent applications and patents 
against which the  instrument is to be recorded.  Only one set of 
instruments and cover sheets  to be recorded should be filed.  If an 
instrument to be recorded is not accompanied  by a completed cover sheet, 
the instrument and any incomplete cover sheet will  be returned for proper 
completion of a cover sheet and resubmission of the  instrument and a 
completed cover sheet. 

        (d)   Each cover sheet required by paragraph (c) of this section 
must  contain: 

        (1)   the name of the party conveying the interest; 

        (2)   the name and address of the party receiving the interest; 
        (3)   a description of the interest conveyed or transaction to be 
recorded; 
        (4)   each application number or patent number against which the 
instrument  is to be recorded, or an indication that the instrument if 
filed together with  a patent application; 

        (5)   the name and address of the party to whom correspondence 
concerning  the request to record the instrument should be mailed; 

        (6)   the number of applications or patents identified in the 
cover  sheet and the total fee; 

        (7)   the date the instrument was executed; 

        (8)   a statement by the party submitting the instrument that to 
the  best of the person's knowledge and belief, the information contained 
on the  cover sheet is true and correct and any copy submitted is a true 
copy of the  original instrument; and 

        (9)   the signature of the party submitting the instrument. 
        (e)   Each patent cover sheet required by paragraph (c) of this 
section  seeking to record a government inter- est as provided by 
paragraph (a) of this  section must: 

        (1)   indicate that the instrument is to be recorded on the 
governmental  register, and, if applicable, that the instrument is to be 
recorded on the  Secret Register. See # 7.7. 

        (2)   indicate, if applicable, that the instrument to be recorded 
is  not an instrument affecting title. See paragraph (j) of this section. 
        (f)   An error in a cover sheet recorded pursuant to this Part 
will  be corrected only if: 

        (1)   the error is apparent when the cover sheet is compared with 
the  recorded instrument to which it pertains, and 

        (2)   a corrected cover sheet accompanied by the recording fee set 
 forth in paragraph (i) of this section and either the original recorded 
instrument  or a copy of the original recorded instrument is filed for 
recordation. 
        (g)   The Office will accept and record non-English language 
instruments  only if accompanied    by a verified English translation 
signed by the individual  making the translation. 

        (h)   Instruments and cover sheets to be recorded should be 
addressed  to the Commissioner of Patents and Trademarks, Box Assignment, 
Washington,  D.C. 20231. 

        (i)   All requests to record instruments must be accompanied by 
the  appropriate fee. Except as provided in paragraph (j) of this section, 
a recording  fee set forth in # 1.21 (h) of this chapter fee is required 
for each application  and patent against  which the instrument is recorded 
as identified in the cover  sheet. 

        (j)   No fee is required for each patent application and patent 
against  which an instrument required by Executive Order 9424 (3 CFR 1943 
- 1948 Comp.)  to be filed if: 

        (1)   the instrument does not effect title and is so identified in 
 the cover sheet (see paragraph (e)  of this section); and 

        (2)   the cover sheet is filed in a format approved by the Office. 
        [Amended, 60 FR 41018, Aug. 11, 1995, effective Oct. 1, 1995] 

# 7.2     Assignments. 


        The original of an assignment or other instrument which conveys to 
 the Government only the title to a patent or to an application for patent 
shall  be forwarded to the Commissioner of Patents and Trademarks. The 
instrument  will be recorded, endorsed, and returned. 


# 7.3     Licenses. 


        A copy of any license or instrument other than an assignment which 
 conveys to or gives the Government 




any interest in or under a patent or an application for patent shall be 
forwarded  for recording. The copy will be retained by the Patent and 
Trademark Office  but, when desired, the original will be endorsed and 
returned. 


# 7.4       Abbreviated copy. 


        If an instrument deals with matters in addition to rights and 
interests  in patents or in applications for patents, or in inventions 
disclosed therein,  a copy of only those portions of the instrument 
dealing with such rights and  interests need be forwarded. In such case, a 
state- ment giving the general  nature of the entire instrument, the 
parties involved, the date of the instrument,  the place where it is 
usually filed, and any docket or identifying number,  must be attached to 
the copy. 


# 7.5     Instruments already on record. 


        Instruments which have been recorded prior to the adoption of ## 
7.1  to 7.7 and are on the general assignment records of the Patent and 
Trademark  Office need not be forwarded for recording. 


# 7.6     Access to register. 


        The register will not be open to public inspection. It will be 
available  for examination and inspection by duly authorized 
representatives of the Government,  subject 


to the provisions of # 7.7. Public examination will be restricted to those 
 instruments which the department or agency or origin has so authorized in 
writing. 

# 7.7     Secret register. 


        Any instrument to be recorded will be placed on 
a secret record or register at the request of the department or agency 
submitting  the same. No information will be given concerning any 
instrument in such record  or register, and no examination or inspection 
thereof or of the index thereto  will be permitted, except on the written 
authority of the head of the department  or agency which submitted the 
instrument and requested secrecy, and the approval  of such authority by 
the Commissioner of Patents and Trademarks. No instrument  or record other 
than the one specified may be examined, and the examination  must take 
place in the presence of a designated official of the Patent and 
Trademark Office. When the department or agency which submitted an 
instrument  no longer requires secrecy with respect to that instrument, it 
will be recorded  or registered anew in the appropriate part of the 
register which is not secret. 
D D D D D D D D D D D D D D D D D D D D D D D D D D 



INDEX - RULES RELATING 
TO PATENTS 

A 

Abandoned applications: 

Abandonment by failure to prosecute   1.135 

Abandonment during Interference       1.662(a) 

Abandonment for failure to pay issue fee        1.316 

Express abandonment   1.138 

Not cited 1.108 

Processing and retention fee    1.21(1) 

Referred to in issued patents     1.14 

Revival of  1137, 1.155, 1.316 

When open to public inspection      1.14 

Abandonment of application. (See also 

Abandoned applications.) 

Abstract of the disclosure    1.72 

Access, petition for      1.14 

Action by applicant   1.111 - 1.138 

Address for notice to Commissioner of 

appeal to Fed. Cir.   1.302(c) 

Address of Solicitor's Office     1.1(g) 

Address of the Patent and Trademark Office  1.1 

Box FWC         1.62(i) 

Box Interference  1.1(e) 

Box M Fee 1.1(d) 

Box Patent Ext        1.1(f) 

Box PCT         1.1(b) 

Box Reexam  1.1(c) 

Administrator or executor, May make application 

and receive patent  1.42 

Proof of authority  1.44 

Admission to practice (See also Attorneys 

and agents.) 

Affidavit (see also Oath in patent applications): 

After appeal    1.195 

In support of application for reissue     1.175 

To overcome cited patent or publication       1.131 

Traversing grounds of rejection       1.132 

Agents. (See also Attorneys and agents.) 

Allowance and issue of patent: 

Amendment after allowance 1.312 

Traversing grounds of rejection       1.312 

Deferral of issuance    1.314 

Delayed payment of issue fee    1.155, 1.316, 1.317 

Delivery of patent  1.315 

Forfeited application     1.155, 1.316 

Issuance of patent  1.155, 1.314 

Notice of allowance   1.155, 1311 

Patent to issue upon payment of issue fee 1.311, 1.314 

Patent to lapse if issue fee is not paid in full        1.317 

Patent withheld for nonpayment of issue fee   1.155, 1.316 

(Allowance and issue of patent:): 

Reasons for   1.109 

Withdrawal from issue     1.313 

Allowed claims statement of grounds for rejecting 

by Board of Patent Appeals and Interferences    1.196 

Amendment: 

Adding or substituting claims     1.119 

After appeal    1.116 

After decision on appeal, based on new rejection 

of Board of Patent Appeals and Interferences    1.196 

After final action  1.116 

After notice of allowance 1.312 

By patent owner       1.530 

Copying claim of another application for 

 interference     1.603 

Copying claim of issued patent      1.606, 1.607 

Drawings        1.123 

Entry and consideration of  1.122 

Erasures and insertions       1.121 

Involving a departure from original invention     1.118 

Manner of making  1.121 

May be required         1.117 

Not covered by original oath    1.67 

Numbering of claims   1.126 

Of amendments     1.124 

Of claims 1.119 

Of disclosure     1.118 

Of drawing  1.123 

Of specification        1.118 

Paper and writing   1.52 

Petition from refusal to admit        1.127 

Proposed during interference    1.615 

Reissue       121(e), 1.173, 1.174 

Requisites of       1.33, 1.111, 1.115, 1.116 

1.121, 1.123, 1.124, 1.125 

Right to amend      1.111, 1.115, 1.116, 1.127 

Signature to    1.33 

Substitute specification        1.125 

Time for        1.134 

To accompany motion to amend interference 1.633 

To applications in interference       1.633 

To correct inaccuracies or prolixity    1.117 

To correspond to original drawing or specification  1.118 

To preliminary statement in interference        1.628 

To reissues.    1.173, 1.174 

To save from abandonment        1.135 

Amino acid sequences (See also nucleotide and/or 

amino acid sequences) 

Appeal to Board of Patent Appeals and Interferences: 

Action following decision   1.197 

Affidavits after appeal       1.195 

Brief     1.192 

Decision by Board   1.196 



(Appeal to Board of Patent Appeals and Interferences): 

Examiner's answer   1.193 

Fees    1.17 

Hearing of    1.194 

New grounds for refusing a patent 1.196 

Notice of appeal  1.191 

Rehearing 1.197 

Reopening after decision        1.198 

Reply brief   1.193 

Statement of grounds for rejecting, by Board of 

Appeals       1.196 

Fee provided by rules of court      1301 

From Board of Patent Appeals and Interferences      1.301 

Notice and reasons of appeal    1.302 

Time for        1.302, 1.304 

Applicant for patent    1.41 - 1.48 

Change      1.48 

Deceased or insane inventor   1.42,1.43 

Executor or administrator 1.42 

Informed of serial number of application        1.54 

Joint changed to sole     1.48 

Letters for, sent to attorney or agent      1.33 

May be represented by an attorney or agent  1.31 

Personal attendance unnecessary       1.2 

Required to conduct business with decorum and 

courtesy        1.3 

Required to report assistance received      1.33 

Sole changed to joint     1.48 

Sole changed to another sole    1.48 

Application for patent (See also Abandoned 

applications,Claims, Drawing, Examination of 

application, Reissues, Specification): 

Accepted and filed for examination only when 

complete        1.53 

Access to   1.14 

Acknowledgment of filing        1.54 

Alteration after execution  1.56 

Alteration before execution   1.52 

Arrangement   1.77 

Continuation or division, reexecute not 

required        1.60, 1.62 

Copies of, furnished to applicants  1.59 

Cross-references of related applications        1.78 

Deceased or insane inventor   1.42,1.43 

Declaration   1.68 

Duty of disclosure  1.56 

Execution in blank  1.67 

File wrapper continuing application   1.62 

Filed by other than inventor    1.42, 1.43, 1.47 

Filing date   1.53 

Foreign language oath or declaration    1.69 

Formulas and tables   158 

General requisite 1.51 

(Application for patent::) 

Identification required in letters concerning     1.5 

Incomplete papers not accepted and filed 

for examination       1.53 

Interlineations, etc., to be indicated        1.52 

Language, paper, writing, margin        1.52 

Later filing of oath and filing fee   1.53 

Must be made by actual inventor, with 

exceptions  1.41, 1.46 

Names of all inventors required       1.41, 1.53 

Non-English language    1.52 

Owned by Government   103 

Papers having filing date not to be returned    1.59 

Parts filed separately        1.54 

Parts of application desirably filed together       1.54 

Parts of complete application     1.51 

Processing fees         1.17 

Relating to atomic energy 1.14 

Retention fee     1.53(d) 

Secrecy order     5.1-5.8 

Secret while pending      1.14 

Serial number and filing date     1.54 

Tables and formulas   1.58 

To contain but one invention unless connected     1.141 

To whom made    1.51 

Two or more by same party with conflicting claims 1.78 

Application number  1.5(a) 

Arbitration award filing        1.335 

Arbitration in interference   1.690 

Assignee: 

Correspondence held with assignee of entire 

interest        3.71, 3.73 

If of entire interest, patent may issue to him      1.46, 3.81 

If of undivided part interest, correspondence 

will be held with inventor  1.33 

If of undivided part interest, must assent to 

application for reissue of patent 1.171, 1.172 

If of undivided part interest, patent may issue 

 jointly        1.46, 3.81 

May conduct prosecution of application      3.71, 3.73 

May take action in interference       1.643 

Assignments and recording: 

Abstracts of title, fee for     1.19(b) 

Conditional assignments         3.56 

Cover sheet required    3.28, 3.31 

Corrections   3.34 

Date of receipt is date of record 3.54 

Definitions   1.332 

Effect of recording   3.54 

Fees    1.21(h) 

Formal requirements   3.21-3.28 

If recorded before payment of issue fee, patent 

will issue to assignee      3.81 



(Assignments and recording::) 

Must be recorded in Patent and Trademark Office 

 to issue patent to assignee    3.81 

Must identify patent or application   3.21 

Orders for copies of    1.12 

Patent may issue to assignee    3.81 

Recording data      3.51 

Records open to public inspection 1.12 

Requirements for recording  3.21, 3.41 

What will be accepted for recording   3.11 

Atomic energy applications reported to Department of 

Energy      1.14 

Attorneys and agents: 

Acting in representative capacity 1.33, 1.34 

Advertising   10.32 

Agents, registration of       10.6(b) 

Assignment will not operate as a revocation of 

power     1.36 

Associate 1.34 

Attorneys at law, registration of 10.6(a) 

Certificate of good standing    1.21(a) 

Code of professional responsibility     10.20 

Committee on Enrollment       10.3 

Fee on admission        1.21(a) 

Foreign patent attorneys and agents, 

registration of       10.6(c) 

Former examiners, registration of   10.6(e) 

General powers not recognized       1.34 

Government officers and employees as    10.6(d) 

Limited recognition   10.9 

Must be refused recognition for misconduct  10.15 

Oath and registration fee 10.8 

Office cannot aid in selection of 1.31 

Personal interviews with examiners  1.133 

Persons not registered or recognized    10.10 

Power of attorney or authorization of agent   1.34 

Professional conduct    10.20 

Registration of attorneys and agents    10.6 

Removing names from registers     10.11 

Representative capacity       1.33, 1.34 

Representing conflicting parties        1.613 

Required to conduct business with decorum and 

courtesy        1.3 

Requirements for registration     10.7 

Revocation of power   1.36 

Signature and certificate of attorney     10.18 

Suspension or disbarment proceedings    1.0.130-10.170 

Who may act as      10.40 

Withdrawal of     1.36 

Authorization of agents. (See also Attorneys and agents.) 

Award in arbitration    1.335 

B 

Balance in deposit account  1.25 

Basic filing fee        1.16 

Benefit of earlier application      1.78 

Bill in equity (See also Civil action.) 

Board of Appeals. (See also Appeal to Board of Patent 

 Appeals and Interferences) 

Box FWC       1.62(I) 

Box PCT       1.1(b) 

Box Reexam  1.1(c) 

Briefs: 

At final hearing in interference        1.656 

In petitions to Commissioner    1.181 

On appeal to Board  1.192 

Business to be conducted with decorum and courtesy  1.3 

Business to be transacted in writing    1.2 

C 

Certificate of correction 1.322, 1.323 

Fees    1.20 

Mistakes not corrected      1.325 

Certificate of mailing (First Class) or transmission    1.8 

Express mail      1.10 

Certificate, Reexamination  1.570 

Certified copies of records, papers, etc. 1.4(f), 1.13 

Fee for certification       1.19(b) 

Chemical and mathematical formulas and tables     1.58 

Citation of prior art in patent       1.501 

Citation of references      1.107 

Civil action    1303, 1.304 

Claims (See also Examination of applications): 

Amendment of      1.119 

Conflicting, same applicant or owner    1.78 

Date of invention of    1.110 

Dependent   1.75 

Design patent     1.153 

May be in dependent form        1.75 

More than one permitted       1.75 

Multiple dependent    1.75 

Must conform to invention and specification   175 

Notice of rejection of      1.104 

Numbering of      1.126 

Part of complete application      1.51 

Plant patent.     1.166 

Rejection of    1.106 

Required  1.75 

Twice or finally rejected before appeal       1.191 

Color drawing       1.84(p) 

Commissioner of Patents and Trademarks (See 

also Petition to Commissioner): 

Address of    1.1 



(Commissioner of Patents and Trademarks:) 

All communications to Patent and Trademark Office 

 to be addressed to   1.1 

Cases decided by Board reopened only by       1.198 

Conduct of disbarment proceedings 10.130 

Initiates reexamination         1.520 

May discipline attorneys and agents   10.130 

Reconsideration of cases decided by former  1.184 

Reissue in divisions referred to        1.177 

Return of papers in violation of rule     1.3 

Complaints against examiners, how presented   1.3 

Composition of matter, specimens of ingredients may 

be required   1.93 

Computer program listings 1.96 

Concurrent office proceedings     1.565 

Conduct of reexamination proceedings    1.550 

Conflicting claims, same applicant or owner in two 

  or more applications      1.78 

Continuing application for invention disclosed 

and claimed in prior application  1.60, 1.62 

Copies of patents, records, etc.        1.11, 1.12, 1.13 

Copies of records, fees       1.19(b), 1.59 

Copyright notice in specification 1.71(d) 

Copyright notice on drawings    1.84(o) 

Correction, certificate of  1.322, 1.323 

Correction of inventorship  1.48, 1.324 

Correspondence: 

All letters and communications to the Office to be 

addressed to the Commissioner of Patents 

 and Trademarks       1.1 

Business with the Office to be transacted by    1.2 

Discourteous communications returned    1.3 

Double, with different parties in interest not 

 allowed        1.33 

Facsimile transmission        1.6(d) 

Held with attorney or agent   1.33 

Identification of application or patent in letter 

relating to   1.5 

May be held exclusively with assignee of entire 

 interest 3.81 

Nature of 1.4 

Patent owners in reexamination      1.33(c) 

Receipt of letters and papers     1.6 

Resumed with principal, if power or authorization is 

revoked         1.36 

Rules for conducting in general         1.1-1.8 

Separate letter for each subject of inquiry   1.4 

Signature requirement     1.4(d) 

When no attorney or agent 1.33 

With attorney or agent after power or authorization 

is filed        1.33 

Coupons sold by the Office  1.24 

Court of Appeals for the Federal Circuit, appeal to (See 

also Appeal to Court of Appeals for the Federal Circuit). 

D 

Date of invention of subject matter of individual 

claims      1.110 

Day for taking any action or paying any fee falling 

on Saturday, Sunday, or Federal holiday       1.7 

Death or insanity of inventor     1.42, 1.43 

Decision by the Board of Patent Appeals and 

Interferences     1.196 

Action following decision 1.197 

Declaration (See also Oath in patent application): 

Foreign, language 1.69 

In lieu of oath       1.68 

In patent application     1.68 

Definitions: 

Independent inventor    1.9 

National and international applications         1.9 

Nonprofit organization        1.9 

Service of process  Part 15 

Small business concern        1.9 

Small entity    1.9 

Terms under Patent Cooperation Treaty     1401 

Testimony by employees      Part 15a 

Delivery of patent  1.315 

Deposit accounts        1.25 

Fees      1.21(b) 

Deposit of biological material: 

Acceptable depositary     1.803 

Deposit of computer program listings    1.96 

Depositions (See also Testimony in interferences): 

Certificate of officer to accompany   1.676 

Formalities to be observed in preparing       1.677 

Person before whom taken  1.674 

To be sealed up, addressed, and forwarded to the 

Commissioner    1.676 

When taken must be filed  1.678 

Description of invention. (See also Specification.) 

Design Patent Applications: 

Arrangement of specification    1.154 

Claim     1.153 

Drawing       1.152 

Filing fee  1.16(f) 

Issue and term        1.155 

Issue fee 1.18(b) 

Oath    1.153 

Rules applicable        1.151 

Title, description and claim    1.153 

Determination of request for reexamination  1.515 

Disbarment of attorneys and agents  10.23 



Disclaimer, statutory: 

During interference     1.662(a) 

Fee   1.20(d) 

Requirements of       1.321 

Terminal        1.321 

Disclosure, amendments to not permitted         1.118 

Disclosure document fee         1.21(c) 

Discovery in    1.672, 1.688 

Division (See also Restriction of application.) 

Division of patent on reissue     1.177 

Document supply fees    1.19 

Drawing: 

Amendment of    1.118, 1.123 

Arrangement of views    1.84(i) 

Character of lines  1.84(i) 

Color     1.84(a)(2) 

Content of drawing  1.83 

Copyright notice        1.84(s) 

Correction  184(w), 1.85(c) 

Cost of copies of 1.19 

Design application  1.152 

Figure for Official Gazette   1.84(j) 

Filed with application      1.81 

Graphics        1.84(d) 

Hatching and shading    1.84(m) 

Holes     1.84(x) 

Identification      1.84(c) 

If of an improvement, must show connection with 

old structure     1.83 

Inferior or defective drawings will be rejected       1.85 

Informal drawings 1.85 

Ink   184(a)(1), 1.84(q) 

Location of names 1.84(c) 

Mask work notice  1.84(s) 

Must be described in and referred to specification  174 

Must show every feature of the invention        1.83 

No return or release    1.85(b) 

Numbering of sheets   1.84(t) 

Numbering of views  1.84(u) 

Original may be used with application for reissue 1.174 

Original should be retained by applicant        1.81(a) 

Paper     1.84(a) 

Photographs   1.84(b) 

Plant patent application        1.81, 1.165 

Printed and published by Office when patented     184 

Reference characters    1.74, 1.84(f) 

Reissue       1.174 

Release not permitted     1.85(b) 

Required by law when necessary for understanding        1.81 

Scale     1.84(k) 

Security markings 1.84(v) 

Shading       1.84(m) 

Size of sheet and margins 1.84(f),(g) 

(Drawing::) 

Specific rules relating to preparation of drawings 

will be enforced        1.85 

Standards for drawings      1.84 

Symbols, legends        1.84(g) 

Views       1.84(h) 

When necessary, part of complete application      1.51 

Duty of disclosure  1.56, 1.555 

Patent term extension     1.765 

E 

Election of species   1.146 

Employee testimony (See also Testimony by 

Office employees) 

Establishing small entity status        1.27, 1.28 

Evidence. (See also Testimony in interferences.) 

Examination of applications: 

Abandoned and forfeited applications not cited in 1.108 

Advancement of examination  1.102 

As to form  1.104, 1.105 

Citation of references      1.107 

Completeness of examiner's action 1.105 

Examiner's action   1.104 

International-type search   1.104 

Nature of examination       1.104 

Order of examination    1.101 

Reasons for allowance     1.109 

Reexamination after rejection if requested    1.111 

Reexamination of original claims upon reissue     1.176 

Reissue       1.176 

Rejection of claims   1.106 

Suspension of     1.103 

Examination of papers by attorney or agent not 

permitted without authorization       1.34 

Examiners: 

Answers on appeal   1.193 

Complaints against  1.3 

Interviews with       1.133 

Executors 1.42, 1.44 

Exhibits. (See also Models and exhibits.) 

Export of technical data        5.19, 5.20 

Express abandonment     1.138 

"Express Mail" certificate of mailing     1.6, 1.10 

Extension of patent term: 

Applicant for     1.730 

Application for       1.740 

Calculation of term: 

Animal drug product   1.778 

Food or color additive      1.776 

Human drug product  1.775 

Veterinary biological product     1.779 

Medical device      1777 

Certificate   1.780 



(Extension of patent term:) 

Conditions for      1.720 

Determination of eligibility    1.750 

Duty of disclosure  1.765 

Filing date of application  1.741 

Interim extension under 35 U.S.C. 156(d)(5)  . . . . . . . . . .1.790 
Interim extension umder 35 U.S.C. 156(e)(2)   1.760 

Multiple applications     1.785 

Patents subject to  1.710 

Termination of interim extension granted 

under 35 U.S.C. 156(d)(5) . . . . . . . . . . . . . . . . . . . . . . . . 
1.791 
Withdrawal of application 1.770 

Extension of time 1.136 

Fees    1.17 

Interference proceedings        1.645 

Reexamination proceedings 1.550(c) 

F 

Facsimile transmission        1.6(d), 1.8 

Federal Register, publication of rules in   1351, 1.352 

Fees and payment of money: 

Deposit accounts        1.25 

Extension of time 1.17 

Fee on appeal to the Court of Appeals for the 

Federal Circuit provided by rules of court  1.301 

Fees in case of petitions 1.181 

Fees payable in advance         1.22 

Foreign filing license petition       1.17(h) 

For international-type search report      1.21(e) 

Method of payment   1.23 

Money by mail at risk of sender       1.23 

Money paid by mistake       1.26 

Petitions 1.17 

Reexamination request       120(c) 

Refunds       1.26 

Relating to international applications      1.445 

Schedule of fees and charges    1.16-1.21 

File wrapper continuing application procedure     1.62 

Files and papers of abandoned applications, 

disposition   1.34 

Files open to the public  1.11 

Filing date of application  1.53 

Filing fee part of complete application       1.51 

Filing fees   1.16 

Filing in Post Office       1.10 

Filing of interference settlement agreements    1.666 

Final rejection: 

Appeal from   1.191 

Response to   1.113, 1.116 

When and how given  1.113 

Foreign application     1.55 

License to file       5.11-5.33 

Foreign country: 

Taking oath in      1.66 

Taking testimony in   1.684 

Foreign mask work protection Part   150 

Evaluation of request     150.4 

Definition  150.1 

Duration of proclamation        150.5 

Initiation of evaluation        150.2 

Mailing address       150.6 

Submission of requests      150.3 

Foreign patent rights acquired by 

government  101.1-101.11 

Licensing 102.1-102.6 

Forfeited application, for nonpayment of issue 

fee   1.155, 1.316 

Not cited as reference      1.108 

Formulas and tables in patent applications.   1.58 

Fraud practiced or attempted on Office      1.56 

G 

Gazette (See also Official Gazette.) 

General authorization to charge deposit account         1.25 

General information and correspondence      1.1-1.8 

Government employees, as attorney or agent  10.6 

Government interest in patent, recording of   7.1-7.7 

Guardian of insane person may apply for patent      1.43 

H 

Hearings: 

Before the Board of Patents Appeals and 

Interferences       1.194 

Fee for appeal hearing        1.17 

In disbarment proceedings 10.144 

Of motions in interferences   1.640 

Holiday, time for action expiring on    1.6, 1.7 

I 

Identification of application, patent or registration     1.5 

Independent inventor: 

Definition  1.9 

Status statement        1.27 

Information disclosure statement: 

At time of filing application     1.51 

Content of    98 

Reexamination       1.555 

To comply with duty of disclosure,  197 

Information, Public   1.15 

Insane inventor, application by guardian of   1.43 

Interferences (See also Depositions, Motions in 

interferences, Preliminary statement in interferences): 

Abandonment of the contest    1.662 

Access to applications      1.612 

Access to preliminary statement         1.631 



(Interferences:) 

Action by examiner after interference     1.664 

Action if statutory bar appears       1.659 

Addition of new party by examiner-in-chief.   1.642 

Amendment during        1.615, 1.633, 1.634 

Appeal to the Court of Appeals for the 

Federal Circuit.        1.301, 1.302 

Applicant requests  1.604 

Arbitration   1.690 

Briefs at final hearing       1.656 

Burden of proof       1.657 

Civil action    1.303 

Claims copied from patent 1.606, 1.607 

Claims of defeated parties stand finally 

disposed of   1.633 

Concession of priority      1.662 

Conflicting parties having same attorney        1.613 

Copying claims from patent  1.606, 1.607 

Correspondence        1.5(e) 

Declaration of interference   1.611 

Definition  1.601 

Disclaimer to avoid interference        1.662(a) 

Discovery 1.671, 1.688 

Dissolution of      1.633 

Dissolution on motion of examiner 1.641 

Extension of time 1.645 

Failure of junior party to take testimony 1652 

Failure to prepare for      1.603-1.606 

Final decision        1.658 

Final hearing     1.654 

Final hearing briefs      1.656 

Identifying claim from 

patent      1.607(a)(3), 1.637(e)(1)(vi) 

In what cases declared      1.601 

Inspection of cases of opposing parties       1.612 

Interference with a patent  1.606-1.608 

Junior party fails to overcome filing date of 

senior party    1.640 

Jurisdiction of interference    1.614 

Manner of service of papers   1.646 

Matters considered in determining priority  1.655 

Motions       1.633-1.638 

Non-patentability argued at final hearing 1.655 

Notice and access to applications of opposing 

parties       1.612 

Notice of intent to argue abandonment     1.632 

Notice of reexamination, reissue, protest, or 

litigation  1.660 

Notice to file civil action   1.303 

Notices and statements        1.611 

Order to show cause, judgment on the record   1.640 

Ownership of applications or patents involved     1.602 

Petitions 1.644 

(Interferences:) 

Preliminary statement contents      1.622-1.625 

Preparation for       1.603-1.605 

Presumption as to order of invention    1.657 

Prosecution by assignee         1.643 

Recommendation by Board of Patent Appeals and 

Interferences       1.659 

Records of, when open to public       1.11 

Reissue filed by patentee during  1.662 

Requests by applicants        1.604 

Requests for findings of fact and conclusions 

of law      1.656 

Return of unauthorized papers     1.618 

Review of decision by civil action  1.303 

Same party    1.602 

Sanctions for failure to comply with rules of order   1.616 

Second interference between same parties        1.665 

Secrecy order cases   5.3(b) 

Service of papers 1.646 

Statement of, from examiner to Board    1.609 

Status of claims of defeated applicant after 

interference    1.663 

Statutory disclaimer by patentee during       1.662 

Suggestion of claims for interference     1.605 

Summary judgment        1.617 

Suspension of ex parte prosecution    1.615 

Termination of interference   1.661 

Testimony copies        1.653 

Time period for completion    1.610 

Times for discovery and taking testimony        1.651 

Translation of document in foreign language   1.647 

International application. (See also Patent 

Cooperation Treaty.) 

International Preliminary Examining Authority     1.416 

Interview summary 1133 

Interviews with examiner        1.133, 1.560 

Inventor (See also Applicant for patent; Oath in 

patent application): 

Death or insanity of    142, 1.43 

Refuses to sign application     1.47 

To make application   1.41 

Unavailable   1.47 

Inventor's certificate priority benefit       1.55 

Inventorship and date of invention of the subject matter 

of individual claims    1.110 

Issue fee 1.18 

Issue of patent (See also Allowance and issue of patent.) 

J 

Joinder of inventions in one application        1.141 

Joint inventors       1.45, 1.47, 1.324 

Joint patent to inventor and assignee     1.46, 3.81 



Jurisdiction: 

After decision by Board of Patent Appeals and 

Interferences     1.197, 1.198 

After notice of allowance 1.312 

Of contested case 1.614 

L 

Lapsed patents      1.317 

Legal representative of deceased or incapacitated 

inventor        1.42-1.43 

Letters to the Office. (See also Correspondence.) 

Library service fee   1.19(c) 

License and assignment of government interest in 

patent      7.1-7.3 

License for foreign filing  5.11-5.17 

List of U.S. patents classified in a subclass, cost of      1.19(d) 
Local delivery box rental 1.21(d) 

M 

Maintenance fees  1.20 

Acceptance of delayed payment of        1.378 

Fee address for         1.363 

Review of decision refusing to accept     1.377 

Submission of     1.366 

Time for payment of   1.362 

Mask work notice in specification   1.71(d) 

Mask work notice on drawing   1.84(o) 

Mask work protection, Foreign Part 150 

Microfiche deposit  1.96 

Microorganisms (See also Deposit of Biological Material) 

Minimum balance in deposit accounts   1.25 

Misjoinder of inventor      1.48, 1.324 

Mistake in patent, certificate there of issued      1.322, 1.323 

Models and exhibits: 

Copies of 1.95 

If not claimed within reasonable time, may be 

disposed of by Commissioner   1.94 

If on examination model be found necessary request 

therefor will be made       1.91 

In contested cases  1.676 

May be required         1.92 

Model not generally required in application or 

patent      1.91 

Not to be taken from the Office except in custody of 

sworn employee      1.95 

Return of 1.94 

Working model may be required     1.92 

Money (See also Fees and payment of money.) 

Motions in interference         1.633-1.637 

To take testimony in foreign country    1.684 

N 

Name of applicant.  1.41 

New matter inadmissible in application      1.118 

New matter inadmissible in 

reexamination     1.530(d), 1.552(b) 

New matter inadmissible in reissue  1.173 

Non-English language specification fee      1.17(k) 

Non-profit organization: 

Definition  1.9 

Status statement  1.27 

Notice: 

Of allowance of application     1.311 

Of appeal to the Court of Appeals for the 

Federal Circuit       1.301, 1.302 

Of arbitration award    1.335 

Of defective reexamination request    1.510(c) 

Of interference       1.611 

Of oral hearings before the Board of Patent 

Appeals and Interferences 1.194 

Of rejection of an application      1.104 

Of taking testimony   1.673 

Of use of official records as evidence      1.682 

To conflicting parties with same attorney or agent    1.613 

To parties in interference cases        1.611 

Nucleotide and/or amino acid sequences: 

Amendments to     1.825 

Disclosure in patent applications   1.821 

Format for sequence data  1.822 

Replacement of      1.825 

Requirements    1.823 

Symbols       1.822 

O 

Oath in patent application: (See also Declaration) 

Apostilles  1.66 

Before whom taken in foreign countries      1.66 

Before whom taken in United States    1.66 

By administrator or executor    1.42, 1.63 

By guardian of insane person      1.43, 1.63 

Certificate of Officer administering    1.66 

Continuation-in-part    1.63(d) 

Declaration     1.68 

Foreign language        1.69 

International application   1.497 

Inventor's Certificate      1.63 

Made by inventor        1.41, 1.63 

New oath required if original too old       1.63 

Officers authorized to administer oaths       1.66 

Part of complete application    1.51 

Person making       1.64 

Plant patent application        1.162 

Requirements of       1.63 



(Oath in patent application:) 

Ribboned to other papers        1.66 

Sealed        1.66 

Signature to    1.63 

Supplemental oath for matter disclosed but not 

originally claimed    1.67 

To acknowledge duty of disclosure 1.63 

When taken abroad to seal all papers    1.66 

Oath in reissue application     1.175 

Oath or declaration 

Plant patent application  1.162 

When international application enters national 

stage     1.497 

Object of the invention       1.73 

Office action time for response       1.134 

Office fees. (See also Fees and payment of money.) 

Officers and employees, Government, acting as 

attorneys or agents   10.6 

Official action, based exclusively upon the written 

record      1.2 

Official business, should be transacted in writing  1.2 

Official Gazette: 

Amendments to rules published in  1.351 

One view of drawing published in  1.84 

Service of notices in     1.646 

Oral statements       1.2 

Order of examination    1.101 

Order to reexamine    1.525 

P 

Papers badly written, printing or typewriting required      1.52 

Papers not received on Saturday, Sunday, or holidays    1.6 

Patent application (See also Application for patent.) 

Patent attorneys and agents. (See also 

 Attorneys and agents.) 

Patent Cooperation Treaty: 

Amendments and corrections during international 

processing  1.471 

Amendments during international preliminary 

examination   1.485 

Applicant for international application       1.421 

Changes in person, name or address, where 

filed     1.421(f), 1.472 

Conduct of international preliminary 

examination   1.484 

Definition of terms   1.401 

Delays in meeting time limits       1.468 

Demand for international preliminary 

examination   1480 

Designation of States     1.432 

Entry into national stage 1.491 

As a designated office      1.494 

As an elected office    1.495 

(Patent Cooperation Treaty:) 

Examination at national stage       1.496 

Fees: 

Designation fees        1.432 

Due on filing of international application.   1.431(c) 

Failure to pay results in withdrawal of 

application   1.431(c), 1.432 

Filing and processing fees    1.445 

International preliminary examining   1.482 

National stage      1.492 

Refunds       1.446 

Filing by other than inventor     1.425 

International application requirements      1.431 

Abstract        1.438 

Claims      1.436 

Description   1.435 

Drawings        1.437 

Physical requirements     .1.433 

Request.        1.434 

International Bureau    1.415 

International Preliminary Examining Authority       1.416 

Inventor deceased   1.422 

Inventor insane or legally incapacitated  1.423 

Inventors, joint  1.424 

National stage examination  1.496 

Oath or declaration at national stage     1.497 

Priority, claim for   1.451 

Record copy to International Bureau, transmittal 

 procedures   1.461 

Representation by attorney or agent     1.455 

Rule 13       1.475 

Time limits for processing applications       1.465, 1.468 

United States as: 

Designated Office 1.414, 1.497 

International Searching Authority 1.413 

Receiving Office        1.412 

Unity of invention: 

Before International Searching Authority        1.475, 1.476 

Before International Preliminary Examining 

Authority 1.487, 1.488 

National stage      1.475, 1499 

Protest to lack of  1.477, 1.489 

Patent policy, government 100.1-100.11 

Patentee notified of interference 1.602 

Patents (See also Allowance and issue of Patent): 

Available for license or sale, publication of notice      1.21(i) 
Certified copies of   1.13 

Copying claims of 1.606, 1.607 

Correction of errors in       1.171, 1.322, 1.323, 1.324 

Date, duration and form         1.317 

Delivery of   1.315 

Disclaimer  1.321 

Identification required in letters concerning     1.5 



(Patents:) 

Lapsed, for nonpayment of issue fee   1.317 

Obtainable by civil action  1.303 

Price of copies       1.19 

Records of, open to public    1.11 

Reissuing of, when defective    1.171-1.179 

Payment of fees         1.23 

Personal attendance unnecessary       1.2 

Petition for reissue    1.171, 1.172 

Petition to Commissioner: 

Fees    1.17 

For delayed payment of issue fee        1.155, 1.316, 1.317 

For license for foreign filing      5.12 

For the revival of an abandoned application   1.137 

From formal objections or requirements      1.113, 1.181 

From requirement for restriction        1.144 

General requirements    1.181 

In interferences        1.644 

In reexamination        1.515(c) 

On refusal of examiner to admit amendment 1.127 

Questions not specifically provided for       1.182 

Reconsideration of cases decided by former 

Commissioners     1.184 

Suspension of rules   1.183 

To exercise supervisory authority 1.181 

To make special       1.102 

Upon objection that appeal is informal.       1.193 

Photographs   1.84(b) 

Plant patent applications: 

Applicant 1.162 

Claim     1.164 

Declaration   1.162 

Description   1.162 

Drawings        1.165 

Examination   1.167 

Fee for copies      1.19 

Filing fee  1.16(g) 

Issue fee 1.18(c) 

Oath    1.162 

Rules applicable        1.161 

Specification     1.163 

Specimens 1.166 

Post issuance fees  1.20 

Post Office receipt as filing date  1.10 

Postal emergency or interruption        1.6(d) 

Power of attorney. (See also Attorneys or agents.) 

Preliminary Examining Authority, International      1.416 

Preliminary statement in interferences: 

Access to 1.631 

Contents to   1.622-1.627 

Contents of, invention made abroad  1.624 

Correction of statement on motion 1.628 

Effect of statement   1.629 

(Preliminary statement in interferences:) 

Failure to file       1.639, 1.640 

In case of motion to amend interference       1633 

May be amended if defective   1.628 

Reliance on prior application     1.630 

Requirement for       1.621 

Sealed before filing.     1.627 

Service on opposing parties   1.621 

Subsequent testimony alleging prior dates 

excluded        1.629 

When opened to inspection 1.631 

Printing testimony  1.653 

Prior art citation in patent    1.501 

Prior art may be made of record in patent file      1.501 

Prior art statement: 

Content of  1.98 

In reexamination        1.555 

To comply with duty of disclosure.  1.97 

Priority of invention (See also Interferences.) 

Priority, right of, under treaty or law       1.55 

Processing and retention fee    1.21(b), 1.53(d) 

Proclamation as to protection of foreign mask 

works     Part 150 

Production of documents in legal proceedings    Part 15a 

Protests to grants of patent    1.291 

Public Information  1.15 

Public use proceedings      1.292 

Fee   1.17(j) 

Publication: 

Of patent based on international application.     1.318 

Of reexamination certificate    1.570(f) 

R 

Reasons for allowance     1.109 

Reconsideration of cases decided by a former 

Commissioner    1.184 

Reconsideration of Office action        1.112 

Recording of assignments. (See also Assignments 

and recording.) 

Records of the Patent and Trademark Office  1.11-1.15 

Records used as evidence in interference        1.682 

Reexamination: 

Amendments, manner of making    1.121(f) 

Announcement in O.G   1.11(c) 

Appeal to Board       1.191 

Appeal to C.A.F.C.  1.301 

Certificate   1.570 

Civil action    1.303 

Concurrent office proceedings     1.565 

Conduct of proceedings.       1.550 

Correspondence address      1.33(c) 

Decision of request   1.515 

Duty of disclosure  1.555 



(Reexamination:) 

Examiner's action.  1.104 

Fee   1.20(c) 

Fee charged to deposit account      1.25 

Fee refund  1.26 

Identification in letter        1.5(d) 

Initiated by Commissioner 1.520 

Interference    1.565 

Interviews  1.560 

Open to public      1.11(c) 

Order     1.525 

Reconsideration       1.112 

Refund of fee     1.26 

Reply by requester  1.535 

Reply to action       1.111 

Request       1.510 

Response consideration      1.540 

Scope     1.552 

Service       1.248 

Statement of patent owner 1.530 

Reference characters in drawings        1.74, 1.84(f) 

References cited on examination       1.104, 1.106, 1.107 

Refund of money paid by mistake       1.26 

Register of Government interest in patents  7.1-7.7 

Rehearing: 

On appeal to Board  1.197 

Petition for, when time for appeal stayed 1.302 

Reissues: 

Applicants, assignees     1.172 

Application for reissue       1.171 

Application made and sworn to by inventor, if 

living      1.172 

Declaration   1.175 

Drawings        1.174 

Examination of reissue      1.176 

Filed during interference 1.662(b) 

Filed during reexamination  1.565 

Filing fee  1.16 

Filing of announcement in Official Gazette  1.11 

Grounds for and requirements    1.171-1.179 

Issue fee 1.18(a) 

Loss of original patent       1.178 

Notice of reissue application     1.179 

Oath    1.175 

Open to public      1.11 

Original claims subject to reexamination        1.176 

Original patent surrendered   1.178 

Reissue in divisions    1.177 

Specification     1.173 

Take precedence in order of examination       1.176 

To contain no new matter        1.173 

What must accompany application       1.171, 1.172 

When in interference    1.660 

Rejection: 

After two rejections appeal may be taken from 

examiner to Board 1.191 

Applicant will be notified of rejection with reasons 

and references      1.104 

Examiner may rely on admissions by applicant or 

patent owner, or facts within examiner's 

knowledge 1.106 

Final     1.113 

Formal objections 1.104, 1.105 

On account of invention shown by others but not 

claimed, how overcome     1.131 

References will be cited. 1.106 

Requisites of notice of       104, 1.106, 1.107 

Reply brief   1.193 

Reply by applicant or patent owner  1.111 

Reply by requester  1.535 

Representative capacity       1.34(a) 

Request for reconsideration   1.112 

Request for reexamination 1.510 

Reservation clauses not permitted 1.79 

Response time to Office action.       1.134 

Restriction of application.   1.141-1.146 

Claims to nonelected invention withdrawn        1.142 

Constructive election     1.145 

Petition from requirements for      1.144 

Provisional election    1.143 

Reconsideration of requirement      1.143 

Requirement for       1.142 

Subsequent presentation of claims for different 

invention 1.145 

Retention fee     1.21(l), 1.53(d) 

Return of correspondence        1.5(a) 

Return of papers having a filing date     1.59 

Revival of abandoned application        1.137 

Unavoidable abandonment fee   1.17(l) 

Unintentional abandonment fee     1.17(m) 

Revocation of power of attorney or authorization 

of agent        1.36 

Rules of Practice: 

Amendments to rules will be published     1.351 

Publication of notice of proposed amendments    1.352 

S 

Saturday, when last day falls on        1.7 

Scope of reexamination proceedings  1.552 

Secrecy order     5.1-5.8 

Sequences: 

Amendments to sequence listing and computer 

readable copy     1.825 

Disclosure requirements       1.821, 1.823 

Sequence data, symbols and format 1.822 

Submissions in computer readable form     1.824 



Serial number of application    1.53 

Service of notices: 

For taking testimony    1.673 

In interference cases     1.611 

Of appeal to the U.S. Court of Appeals for the 

Federal Circuit       1.303 

Service of papers 1.248 

Service of process  Part 15 

Acceptance of service of process        15.3 

Definition  15.2 

Scope and purpose 15.1 

Shortened period for response     1.134 

Signature: 

Of attorney or agent    10.18 

To amendments, etc., when no attorney     1.33 

To express abandonment      1.138 

To oath       1.63 

To reissue oath or declaration      1.172 

Small business concern: 

Definition  1.9 

Status statement        1.27 

Small entity: 

Definition  1.9 

License to Federal agency 1.27 

Statement 1.27 

Statement in parent application       1.28 

Status establishment    1.27, 1.28 

Status update     1.28 

Solicitor's address   1.1(g) 

Species of invention claimed    1.141, 1.146 

Specification (See also Application for 

patent, Claims): 

Abstract        1.72 

Amendments to     1.117, 1.118, 1.125 

Arrangement of      1.77 

Best mode 1.71 

Claim     1.75 

Contents of   1.71-1.75 

Copyright notice        1.71(d) 

Cross-references to other applications      1.78 

Description of the invention    1.71 

Erasures and insertions must not be made by 

applicant 1.121 

If defective, reissue to correct        1.171-1.179 

Mask work notice        1.71(d) 

Must conclude with specific and distinct claim      1.75 

Must point out new improvements specifically    1.71 

Must refer by figures to drawings 1.74 

Must set forth the precise invention    1.71 

Not returned after completion     1.59 

Object of the invention       1.73 

Order of arrangement in framing       1.77 

Paper, writing, margins       1.52 

(Specification:) 

Part of complete application    1.51 

Reference to drawings     1.74 

Requirements of       1.71-1.75 

Reservation clauses not permitted 1.79 

Substitute  1.125 

Summary of the invention        1.73 

Title of the invention      1.72 

To be rewritten, if necessary     1.125 

Specimens (See also Models and exhibits.) 

Specimens of composition of matter to be furnished 

when required     1.93 

Specimens of plants   1.166 

Statement of status as small entity   1.27 

Statutory disclaimer fee        1.20(d) 

Statutory invention registrations 1.293 

Examination.    1.294 

Publication of      1.297 

Review of decision finally refusing to publish      1.295 

Withdrawal of request for publication of        1.296 

Sufficient funds in deposit account   1.25 

Suit in equity (See also Civil action.) 

Summary of invention    1.73 

Sunday, when last day falls on      1.7 

Supervisory authority, petition to Commissioner to 

exercise        1.181 

Supplemental oath for amendment presenting claims 

for matter disclosed but not originally claimed       1.67 

Surcharge for oath or basic filing fee filed 

after filing date 1.16(e), 1.53(d) 

Suspension of action    1.103 

Suspension of ex parte prosecution during 

interference    1.615 

Suspension of rules   1.183 

Symbols for drawings    1.84(n) 

T 

Tables in patent applications     1.58 

Term of design patent     1.155 

Terminal disclaimer   1.321 

Testimony by Office employees     Part 15a 

Definition  15a.2 

General rule    15a.4 

Office policy     15a.3 

Private litigation  15a.6 

Proceedings involving the United States       15a.7 

Production of documents       15a.4 

Scope     15a.1 

Subpeona of Office employee   15a.7 

Testimony in interferences: 

Additional time for taking  1.645 

Assignment of times for taking      1.651 

Certification and filing by officer   1.676 



(Testimony in interferences:) 

Copies of 1.653 

Depositions must be filed 1.678 

Discovery 1.687 

Effect of errors and irregularities in deposition 1.685 

Evidence must comply with rules       1.671 

Examination of witnesses        1.675 

Failure to take       1.652 

Form of deposition  1.677 

Formal objections to    1.685 

Formalities in preparing depositions    1.674-1.677 

In foreign countries    1.684 

Inspection of testimony       1.679 

Manner of taking testimony of witnesses       1.672 

Motion to extend time for taking        1.645 

Not considered if not taken and filed in compliance 

with rules  1.671 

Notice of examination of witnesses  1.673 

Notice of intent to use records       1.682 

Objections noted in depositions       1.675 

Objections to formal matters    1.685 

Official records and printed publications 1.682 

Officer's certificate     1.676 

Persons before whom depositions may be taken    1.674 

Printing of   1.653 

Service of notice 1.673 

Stipulations or agreements concerning     1.672 

Taken by depositions    1.672 

Testimony taken in another interference or action, 

 use of       1.683 

Time for taking       1651 

To be inspected by parties to the case only   1.679 

Time expiring on Saturday, Sunday, or holiday     1.7 

Time for payment of issue fee     1.311 

Time for response by applicant      1.135, 1.136 

Time for response by patent owner 1.530 

Time for response by requester      1.535 

Time for response to Office action  1.134. 1.136 

Time, periods of        1.7 

Timely filing of correspondence       1.8, 1.10 

Title of invention  1.72 

Title reports, fee for      1.19(b)(4) 

U 

Unavoidable abandonment       1.137 

Unintentional abandonment 1.137 

United States as 

Designated Office 1.414, 1.497 

Elected Office      1.414 

International Preliminary Examining Authority     1.416 

International Searching Authority 1.413 

Receiving Office        1.412 

Unsigned continuation or divisional application       1.60, 1.62 

Use of file of parent application 1.62 

V 

Verified statement of small entity status 1.27 

W 

Waiver of secrecy 1.62 

Withdrawal from issue     1.313 

Withdrawal of attorney or agent       1.36 

Withdrawal of request for statutory invention 

registration    1.296 

D D D D D D D D D D D D D D D D D D D D D D D D D D 





PRACTICE BEFORE THE PATENT AND TRADEMARK OFFICE 

PART 10 - REPRESENTATION OF 
OTHERS BEFORE THE PATENT AND 
TRADEMARK OFFICE 

Sec. 

# 10.1      Definitions. 

# 10.2      Director of Enrollment and Discipline. 

# 10.3      Committee on Enrollment. 

# 10.4      Committee on Discipline. 

INDIVIDUALS ENTITLED TO PRACTICE BEFORE THE PATENT AND TRADEMARK OFFICE 
# 10.5      Register of attorneys and agents in patent cases. 

# 10.6      Registration of attorneys and agents. 

# 10.7      Requirements for registration. 

# 10.8      Oath and registration fee. 

# 10.9      Limited recognition in patent cases. 

# 10.10             Restrictions on practice in patent cases. 

# 10.11             Removing names from the register. 

##  10.12 - 10.13 [Reserved] 

# 10.14             Individuals who may practice before the Office in 
                                     trademark  and other nonpatent cases. 

# 10.15             Refusal to recognize a practitioner. 

##  10.16 - 10.17 [Reserved] 

# 10.18             Signature and certificate of practitioner. 

# 10.19             [Reserved] 

PATENT AND TRADEMARK OFFICE CODE OF 
PROFESSIONAL RESPONSIBILITY 

# 10.20             Canons and Disciplinary Rules. 

# 10.21             Canon 1. 

# 10.22                 Maintaining integrity and competence of the legal 
                                profession. 

# 10.23             Misconduct. 

# 10.24             Disclosure of information to authorities. 

##  10.25 - 10.29 [Reserved] 

# 10.30             Canon 2. 

# 10.31             Communications concerning a practitioner's services. 
# 10.32             Advertising. 

# 10.33             Direct contact with prospective clients. 

# 10.34             Communications of fields of practice. 

# 10.35             Firm names and letterheads. 

# 10.36             Fees for legal services. 

# 10.37             Division of fees among practitioners. 

# 10.38             Agreements restricting the practice of a practitioner. 
# 10.39             Acceptance of employment. 

# 10.40             Withdrawal from employment. 

# 10.41 - 10.45       [Reserved] 

# 10.46       Canon 3. 

# 10.47             Aiding unauthorized practice of law. 

# 10.48             Sharing legal fees. 

# 10.49             Forming a partnership with a non-practitioner. 
# 10.50 - 10.55       [Reserved] 

# 10.56             Canon 4. 

# 10.57             Preservation of confidences and secrets of a client. 
##  10.58 - 10.60  [Reserved] 

# 10.61             Canon 5. 

# 10.62                 Refusing employment when the interest of the 
practitioner                       may  impair the practitioner's 
independent professional                                      judgment. 
# 10.63             Withdrawal when the practitioner becomes a witness. 
# 10.64             Avoiding acquisition of interest in litigation or 
                                proceeding before the Office. 

# 10.65             Limiting business relations with a client. 

# 10.66                 Refusing to accept or continue employment if the 
interests 
                                        of another client may impair the 
independent  professional                                    judgment of 
the practitioner. 
# 10.67             Settling similar claims of clients. 

# 10.68             Avoiding influence by others than the client. 
# 10.69 - 10.75       [Reserved] 

# 10.76             Canon 6. 

# 10.77             Failing to act competently. 

# 10.78             Limiting liability to client. 

##  10.79 - 10.82  [Reserved] 

# 10.83             Canon 7. 

# 10.84             Representing a client zealously. 

# 10.85             Representing a client within the bounds of the law. 
# 10.86             [Reserved] 

# 10.87             Communicating with one of adverse interest. 

# 10.88             Threatening criminal prosecution. 

# 10.89             Conduct in proceedings. 

##  10.90 - 10.91 [Reserved] 

# 10.92             Contact with witnesses. 

# 10.93             Contact with officials. 

##  10.94 - 10.99 [Reserved] 

# 10.100        Canon 8. 

# 10.101        Action as a public official. 

# 10.102        Statements concerning officials. 

# 10.103        Practitioner candidate for judicial office. 

##  10.104 - 10.109    [Reserved] 

# 10.110        Canon 9. 

# 10.111        Avoiding even the appearance of impropriety. 

# 10.112        Preserving identity of funds and property of client. 
##  10.113 - 10.129   [Reserved] 

INVESTIGATIONS AND DISCIPLINARY PROCEEDINGS 

# 10.130        Reprimand, suspension or exclusion. 

# 10.131        Investigations. 

# 10.132        Initiating a disciplinary proceeding; reference to an 
             administrative  law judge. 

# 10.133        Conference between Director and practitioner; 
                 resignation. 



# 10.134        Complaint. 

# 10.135        Service of complaint. 

# 10.136        Answer to complaint. 

# 10.137        Supplemental complaint. 

# 10.138        Contested case. 

# 10.139        Administrative law judge; appointment; responsibili- 
             ties;  review of interlocutory orders; stays. 

# 10.140        Representative for Director or respondent. 

# 10.141        Filing of papers. 

# 10.142        Service of papers. 

# 10.143        Motions. 

# 10.144        Hearings. 

# 10.145        Proof; variance; amendment of pleadings. 

#   10.146 - 10.148         [Reserved] 

# 10.149        Burden of proof. 

# 10.150        Evidence. 

# 10.151        Depositions. 

# 10.152        Discovery. 

# 10.153        Proposed findings and conclusions; post-hearing 

        memorandum. 

# 10.154        Initial decision of administrative law judge. 

# 10.155        Appeal to the Commissioner. 

# 10.156        Decision of the Commissioner. 

# 10.157        Review of the Commissioner's final decision. 

# 10.158        Suspended or excluded practitioner. 

# 10.159        Notice of suspension or exclusion. 

# 10.160        Petition for reinstatement. 

# 10.161        Savings clause. 

##  10.162 - 10.169   [Reserved] 

# 10.170        Suspension of rules. 


# 10.1          Definitions. 


        This part governs solely the practice of patent, trademark, and 
other  law before the Patent and Trademark Office. Nothing in this part 
shall be construed  to preempt the authority of each State to regulate the 
practice of law, except  to the extent necessary for the Patent and 
Trademark Office to accomplish its  federal objectives. Unless otherwise 
clear from the context, the following  definitions apply to this part: 

        (a)   "Affidavit" means affidavit, declaration under 
35 U.S.C. 25 (see w 1.68 and w 2.20 of this subchapter), or statutory 
declaration  under 28 U.S.C. 1746. 

        (b)   "Application" includes an application for a design, plant, 
or  utility patent, an application to reissue any patent, and an 
application to  register a trademark. 

        (c)   "Attorney" or "lawyer" means an individual who is a member 
in  good standing of the bar of any United States court or the highest 
court of  any State. A "non-lawyer" is a person who is not an attorney or 
lawyer. 
        (d)   "Canon" is defined in w 10.20(a). 

        (e)   "Confidence" is defined in w10.57(a). 

        (f)   "Differing interests" include every interest that may 
adversely  affect either the judgment or the loyalty of a practitioner to 
a client, whether  it be a conflicting, inconsistent, diverse, or other 
interest. 

        (g)   "Director" means the Director of Enrollment and Discipline. 
        (h)   "Disciplinary Rule" is defined in w 10.20(b). 

        (i)   "Employee of a tribunal" includes all employees of courts, 
the  Office, and other adjudicatory bodies. 

        (j)     "Giving information" within the meaning of 
w 10.23(c) (2) includes making (1) a written statement or representation 
or 
(2) an oral statement or representation. 

        (k)     "Law firm" includes a professional legal corporation or a 
partnership. 
        (l)     "Legal counsel" means practitioner. 

        (m)"Legal profession" includes the individuals who are lawfully 
engaged  in practice of patent, trademark, and other law before the 
Office. 
        (n)   "Legal service" means any legal service which may lawfully 
be  performed by a practitioner before the Office. 

        (o)   "Legal System" includes the Office and courts and 
adjudicatory  bodies which review matters on which the Office has acted. 

        (p)   "Office" means Patent and Trademark Office. 

        (q)     "Person" includes a corporation, an association, a trust, 
a  partnership, and any other organization or legal entity. 

        (r)   "Practitioner" means (1) an attorney or agent registered to 
practice  before the Office in patent cases or (2) an individual 
authorized under 5 U.S.C.  500(b) or otherwise as provided by this 
subchapter, to practice before the  Office in trademark cases or other 
non-patent cases. A "suspended or excluded  practitioner" is a 
practitioner who is suspended or excluded under w 10.156. A 
"non-practitioner" is an individual who is not a practitioner. 
        (s)   A "proceeding before the Office" includes an application, a 
reexamination,  a protest, a public use proceeding, a patent interference, 
an inter partes  trademark proceeding, or any other proceeding which is 
pending before the Office. 


        (t)   "Professional legal corporation" means a corporation 
authorized  by law to practice law for profit. 

        (u)     "Registration" means registration to practice before the 
Office  in patent cases. 

        (v)     "Respondent" is defined in w 10.134(a)(1). 

        (w)   "Secret" is defined in w 10.57(a). 

        (x)   "Solicit" is defined in w 10.33. 

        (y)   "State" includes the District of Columbia, Puerto Rico, and 
other  federal territories and possessions. 

        (z)   "Tribunal" includes courts, the Office, and other 
adjudicatory  bodies. 

        (aa)    "United States" means the United States of America, its 
territories  and possessions. 

        [Added 50 FR 5172, Feb. 6, 1985, effective Mar. 8, 1985] 


# 10.2        Director of Enrollment and Discipline. 


        (a)   Appointment. The Commissioner shall appoint a Director of 
Enrollment  and Discipline. In the event of the absence of the Director or 
a vacancy in  the Office of the Director, the Commissioner may designate 
an employee of the  Office to serve as acting Director of Enrollment and 
Discipline. The Director  and any acting Director shall be an active 
member in good standing of the bar  of a State. 

        (b)   Duties. The Director shall: 

        (1)   Receive and act upon applications for registration, prepare 
and  grade the examination provided for in w 10.7(b), maintain the 
register provided  for in w 10.5, and perform such other duties in 
connection with enrollment  and recognition of attorneys and agents as may 
be necessary. 

        (2)   Conduct investigations into possible violations by 
practitioners  of Disciplinary Rules, with the consent of the Committee on 
Discipline initiate  disciplinary proceedings under w 10.132(b), and 
perform such other duties in  connection with investigations and 
disciplinary proceedings as may be necessary. 
        (c)   Review of Director's decision. Any final decision of the 
Director  refusing to register an individual under 
w 10.6, recognize an individual under w 10.9 or w 10.14(c), or reinstate a 
 suspended or excluded petitioner under 
w 10.160, may be reviewed by petition to the Commissioner upon payment of 
the  fee set forth in w 1.21(a)(5).  A petition filed more than 30 days 
after the  date of the decision of the Director may be dismissed as 
untimely. Any petition  shall contain (1) a statement of the facts 
involved and the points to be reviewed  and (2) the action requested. 
Briefs or memoranda, if any, in support of the  petition shall accompany 
or be embodied therein. The petition will be decided  on the basis of the 
record made before the Director and no new evidence will  be considered by 
the Commissioner in deciding the petition. Copies of documents  already of 
record before the Director shall not be submitted with the petition.  An 
oral hearing on the petition will not be granted except when considered 
necessary by the Commissioner. 

        [Added 50 FR 5173, Feb. 6, 1985, effective Mar. 8, 1985] 


# 10.3        Committee on Enrollment. 


        (a)   The Commissioner may establish a Committee on Enrollment 
composed  of one or more employees of the Office. 

        (b)   The Committee on Enrollment shall, as necessary, advise the 
Director  in connection with the Director's duties under w 10.2(b)(1). 

        [Added 50 FR 5173, Feb. 6, 1985, effective Mar. 8, 1985] 


# 10.4      Committee on Discipline. 


        (a)   The Commissioner shall appoint a Committee on Discipline. 
The  Committee on Discipline shall consist of at least three employees of 
the Office,  none of whom reports directly or indirectly to the Director 
or the Solicitor.  Each member of the Committee on Discipline shall be a 
member in good standing  of the bar of a State. 

        (b)   The Committee on Discipline shall meet at the request of the 
 Director and after reviewing evidence presented by the Director shall, by 
majority  vote, determine whether there is probable cause to bring charges 
under w 10.132  against a practitioner. When charges are brought against a 
practitioner, no  member of the Committee on Discipline, employee under 
the direction of the  Director, or associate solicitor or assistant 
solicitor in the Office of Solicitor  shall participate in rendering a 
decision on the charges. 

        (c)   No discovery shall be authorized of, and no member of the 
Committee  on Discipline shall be required to testify about, deliberations 
of the Committee  on Discipline. 

        [Added 50 FR 5173, Feb. 6, 1985, effective Mar. 8, 1985] 



INDIVIDUALS ENTITLED TO PRACTICE 
BEFORE THE PATENT AND TRADEMARK 
OFFICE 


# 10.5          Register of attorneys and agents in patent 
             cases. 

        A register of attorneys and agents is kept in the Office on which 
are  entered the names of all individuals recognized as entitled to 
represent applicants  before the Office in the preparation and prosecution 
of applica-tions for patent.  Registration in the Office under the 
provisions of this part shall only entitle  the individuals registered to 
practice before the Office in patent cases. 
        [Added 50 FR 5173, Feb. 6, 1985, effective Mar. 8, 1985] 


# 10.6          Registration of attorneys and agents. 


        (a)    Attorneys. Any citizen of the United States who is an 
attorney  and who fulfills the requirements of this part may be registered 
as a patent  attorney to practice before the Office. When appropriate, any 
alien who is  an attorney, who lawfully resides in the United States, and 
who fulfills the  requirements of this part may be registered as a patent 
attorney to practice  before the Office, provided: Registration is not 
inconsistent with the terms  upon which the alien was admitted to, and 
resides in, the United States and  further provided: The alien may remain 
registered only (1) if the alien continues  to lawfully reside in the 
United States and registration does not become inconsistent  with the 
terms upon which the alien continues to lawfully reside in the United 
States or (2) if the alien ceases to reside in the United States, the 
alien  is qualified to be registered under paragraph (c) of this section. 
See also  w 10.9(b). 

        (b)   Agents. Any citizen of the United States who is not an 
attorney  and who fulfills the requirements of this part may be registered 
as a patent  agent to practice before the Office. When appropriate, any 
alien who is not  an attorney, who lawfully resides in the United States, 
and who fulfills the  requirements of this part may be registered as a 
patent agent to practice before  the Office, provided: Registration is not 
inconsistent with the terms upon  which the alien was admitted to, and 
resides in, the United States, and further  provided: The alien may remain 
registered only (1) if the alien continues to  lawfully reside in the 
United States and registration does not become inconsistent  with the 
terms upon which the alien continues to lawfully reside in the United 
States or (2) if the alien ceases to reside in the United States, the 
alien  is qualified to be registered under paragraph (c) of this section. 
See also  w 10.9(b). 

        NOTE: All individuals registered prior to November 15, 1938, were 
registered  as attorneys, whether they were attorneys or not, and such 
registrations have  not been changed. 

        (c)   Foreigners. Any foreigner not a resident of the United 
States  who shall file proof to the satisfaction of the Director that he 
or she is  registered and in good standing before the patent office of the 
country in  which he or she resides and practices and who is possessed of 
the qualifications  stated in w 10.7, may be registered as a patent agent 
to practice before the  Office for the limited purpose of presenting and 
prosecuting patent applications  of applicants located in such country, 
provided: The patent office of such  country allows substantially 
reciprocal privileges to those admitted to practice  before the United 
States Patent and Trademark Office. Registration as a patent  agent under 
this paragraph shall con- tinue only during the period that the 
conditions specified in this paragraph obtain. 

        [Added 50 FR 5173, Feb. 6, 1985, effective Mar. 8, 1985; paras. 
(d)  & (e) removed 53 FR 33948, Oct. 14, 1988, effective Nov. 4, 1988] 

# 10.7          Requirements for registration. 


        (a)   No individual will be registered to practice before the 
Office  unless he or she shall: 

        (1)   Apply to the Commissioner in writing on a form supplied by 
the  Director and furnish all requested information and material and 

        (2)   Establish to the satisfaction of the Director that he or she 
 is: 

        (i)   Of good moral character and repute; 

        (ii) Possessed of the legal, scientific, and technical 
qualifications  necessary to enable him or her to render applicants 
valuable service; and 
        (iii)     Is otherwise competent to advise and assist applicants 
for  patents in the presentation and prosecution of their applications 
before the  Office. 

        (b)   In order that the Director may determine whether an 
individual  seeking to have his or her name placed upon the register has 
the qualifications  specified in paragraph (a) of this section, 
satisfactory proof of good moral  character and repute and of sufficient 
basic training in scientific and technical  matters must be submitted to 
the Director. Except as provided in this paragraph,  each applicant for 
registration must take 




and pass an examination which is held from time to time. Each application 
for  admission to take the examination for registration must be 
accompanied by the  fee set forth in w 1.21(a)(1) of this subchapter. The 
taking of an examination  may be waived in the case of any individual who 
has actively served for at  least four years in the patent examining corps 
of the Office. The examination  will not be administered as a mere 
academic exercise. 

        (c)   Within two months from the date an applicant is notified 
that  he or she failed an examination, the applicant may request regrading 
of the  examination upon payment of the fee set forth in w 1.21(a)(6). Any 
applicant  requesting regrading shall particularly point out the errors 
which the applicant  believed occurred in the grading of his or her 
examination. 

        [Added 50 FR 5174, Feb. 6, 1985, effective Mar. 8, 1985] 


# 10.8        Oath and registration fee. 


        Before an individual may have his or her name entered on the 
register  of attorneys and agents, the individual must, after his or her 
application  is approved, subscribe and swear to an oath or make a 
declaration prescribed  by the Commissioner and pay the registration fee 
set forth in w 1.21(a)(2)  of this subchapter. 

        [Added 50 FR 5174, Feb. 6, 1985, effective Mar. 8, 1985] 


# 10.9          Limited recognition in patent cases. 


        (a)     Any individual not registered under w 10.6 may, upon a 
showing  of circumstances which render it necessary or justifiable, be 
given limited  recognition by the Director to prosecute as attorney or 
agent a specified application  or specified applications, but limited 
recognition under this paragraph shall  not extend further than the 
application or applications specified. 
        (b)   When registration of a resident alien under paragraphs (a) 
or 
(b) of w 10.6 is not appropriate, the resident alien may be given limited 
recognition  as may be appropriate under paragraph (a) of this section. 

        (c)   An individual not registered under # 10.6 may, if appointed 
by  applicant to do so, prosecute an international application only before 
the  U.S. International Searching Authority and the U.S. International 
Preliminary  Examining Authority, provided: the individual has the right 
to practice before  the national office with which the international 
application is filed (PCT  Art. 49, Rule 90 and # 1.455 or before the 
International Bureau when acting  as Receiving Office pursusant to PCT 
Rules 83.1bis and 90.1). 

        [Added 50 FR 5174, Feb. 6, 1985, effective Mar. 8, 1985; para. (c) 
 added, 58 FR 4335, Jan. 14, 1993, effective May 1, 1993; para. (c) 
amended,  60 FR 21438, May 2, 1995, effective June 1, 1995] 


# 10.10       Restrictions on practice in patent cases. 


        (a)   Only practitioners who are registered under 
w 10.6 or individuals given limited recognition under 
w 10.9 will be permitted to prosecute patent applications of others before 
 the Office. 

        (b)   No individual who has served in the patent examining corps 
of  the Office may practice before the Office after termination of his or 
her service,  unless he or she signs a written undertaking. 

        (1)   Not to prosecute or aid in any manner in the prosecution of 
any  patent application pending in any patent examining group during his 
or her  period of service therein and 

        (2)   Not to prepare or prosecute or to assist in any manner in 
the  preparation or prosecution of any patent application of another (i) 
assigned  to such group for examination and (ii) filed within two years 
after the date  he or she left such group, without written authorization 
of the Director. Associated  and related classes in other patent examining 
groups may be required to be  included in the undertaking or designated 
classes may be excluded from the  undertaking. 

        When an application for registration is made after resignation 
from  the Office, the applicant will not be registered if he or she has 
prepared  or prosecuted or assisted in the preparation or prosecution of 
any patent application  as indicated in the paragraph. Knowingly preparing 
or prosecuting or providing  assistance in the preparation or prosecution 
of any patent application contrary  to the provisions of this paragraph 
shall constitute misconduct under w 10.23(c)(13)  of this part. 

        (c)   A practitioner who is an employee of the Office cannot 
prosecute  or aid in any manner in the prosecution of any patent 
application before the  Office. 

        (d)   Practice before the Office by Government employees is 
subject  to any applicable conflict of interest laws, regulations or codes 
of professional  responsibility. 

        [Added 50 FR 5175, Feb. 6, 1985, effective Mar. 8, 1985; revised 
53  FR 33950, Oct. 4, 1988, effective Nov. 4, 1988; corrected 53 FR 41278, 
Oct.  20, 1988] 




# 10.11       Removing names from the register. 


        (a)   Registered attorneys and agents shall notify the Director of 
 any change of address. Any notification to the Director of any change of 
address  shall be separate from any notice of change of address filed in 
individual  applications. 

        (b)   A letter may be addressed to any individual on the register, 
 at the address of which separate notice was last received by the 
Director,  for the purpose of ascertaining whether such individual desires 
to remain on  the register. The name of any individual failing to reply 
and give any information  requested by the Director within a time limit 
specified will be removed from  the register and the names of individuals 
so removed will be published in the  Official Gazette. The name of any 
individual so removed may be reinstated on  the register as may be 
appropriate and upon payment of the fee set forth in  w 1.21(a)(3) of this 
subchapter. 

        [Added 50 FR 5175, Feb. 6, 1985, effective Mar. 8, 1985] 

##  10.12 - 10.13 [Reserved] 


# 10.14       Individuals who may practice before the 
             Office 


in trademark and other non-patent                       cases. 

        (a)   Attorneys. Any individual who is an attorney may represent 
others  before the Office in trademark and other non-patent cases. An 
attorney is not  required to apply for registration or recognition to 
practice before the Office  in trademark and other non-patent cases. 

        (b)   Non-lawyers. Individuals who are not attorneys are not 
recognized  to practice before the Office in trademark and other 
non-patent cases, except  that individuals not attorneys who were 
recognized to practice before the Office  in trademark cases under this 
chapter prior to January 1, 1957, will be recognized  as agents to 
continue practice before the Office in trademark cases. 
        (c)   Foreigners. Any foreign attorney or agent not a resident of 
the  United States who shall prove to the satisfaction of the Director 
that he or  she is registered or in good standing before the patent or 
trademark office  of the country in which he or she resides and practices, 
may be recognized  for the limited purpose of representing parties located 
in such country before  the Office in the presentation and prosecution of 
trademark cases, provided:  The patent or trademark office of such country 
allows substantially reciprocal  privileges to those permitted to practice 
in trademark cases before the United  States Patent and Trademark Office. 
Recognition under this paragraph shall  continue only during the period 
that the conditions specified in this paragraph  obtain. 

        (d)   Recognition of any individual under this section shall not 
be  construed as sanctioning or authorizing the performance of any act 
regarded  in the jurisdiction where performed as the unauthorized practice 
of law. 
        (e)   No individual other than those specified in paragraphs (a), 
(b),  and (c) of this section will be permitted to practice before the 
Office in  trademark cases. Any individual may appear in a trademark or 
other non-patent  case in his or her own behalf. Any individual may appear 
in a trademark case  for (1) a firm of which he or she is a member or (2) 
a corporation or association  of which he or she is an officer and which 
he or she is authorized to represent,  if such firm, corporation, or 
association is a party to a trademark proceeding  pending before the Office. 

        [Added 50 FR 5175, Feb. 6, 1985, effective Mar. 8, 1985] 


# 10.15       Refusal to recognize a practitioner. 


        Any practitioner authorized to appear before the Office may be 
suspended  or excluded in accordance with the provisions of this part. Any 
practitioner  who is suspended or excluded under this subpart or removed 
under w 10.11(b)  shall not be entitled to practice before the Office. 

        [Added 50 FR 5175, Feb. 6, 1985, effective Mar. 8, 1985] 

##  10.16 - 10.17 [Reserved] 


# 10.18       Signature and certificate of practitioner. 


        (a)   Except where a copy, including a photocopy or facsimile 
transmission,  of a personally signed piece of correspondence is permitted 
to be filed pursuant  to # 1.4 of this chapter, every piece of 
correspondence filed by a practitioner  on behalf of himself or herself on 
representing an applicant or a party to  a proceeding in the Patent and 
Trademark Office must bear an original signature  personally signed in 
permanent ink by such practitioner except for correspondence  which is 
required to be signed by the applicant or party. The signature of  a 
practitioner on correspondence filed by the practitioner, regardless of 
whether  the correspondence has an original signature or is a copy, 
including a photocopy  or facsimile transmission, of correspondence 
bearing an original signature,  constitutes a certificate that: 

        (1)   The correspondence has been read by the practitioner; 


        (2)   The filing of the correspondence is authorized; 

        (3)   To the best of practitioner's knowledge, information, and 
belief,  there is good ground to support the correspondence, including any 
allegations  of improper conduct contained or alleged therein; and 

        (4)   The correspondence is not interposed for delay. 

        (b)   Any practitioner knowingly violating the provisions of this 
section  is subject to disciplinary action. See 
w 10.23(c)(15). 

        [Added 50 FR 5175, Feb. 6, 1985, effective Mar. 8, 1985; para. (a) 
 amended, 58 FR 54494, Oct 22, 1993, effective Nov. 22, 1993] 


# 10.19        [Reserved] 


PATENT AND TRADEMARK OFFICE CODE OF 
 PROFESSIONAL RESPONSIBILITY 


# 10.20       Canons and Disciplinary Rules. 


        (a)   Canons are set out in ww 10.21, 10.30, 10.46, 10.56, 10.61, 
10.76,  10.83, 10.100, and 10.110. Canons are statements of axiomatic 
norms, expressing  in general terms the standards of professional conduct 
expected of practitioners  in their relationships with the public, with 
the legal system, and with the  legal profession. 

        (b)   Disciplinary Rules are set out in ww 10.22-10.24, 
10.31-10.40,  10.47-10.57, 10.62-10.68, 10.77, 10.78, 10.84, 10.85, 
10.87-10.89, 10.92, 10.93,  10.101-10.103, 10.111, and 10.112. 
Disciplinary Rules are mandatory in character  and state the minimum level 
of conduct below which no practitioner can fall  without being subjected 
to disciplinary action. 

        [Added 50 FR 5175, Feb. 6, 1985, effective Mar. 8, 1985] 


# 10.21       Canon 1. 


        A practitioner should assist in maintaining the integrity and 
competence  of the legal profession. 

        [Added 50 FR 5175, Feb. 6, 1985, effective Mar. 8, 1985] 


# 10.22       Maintaining integrity and competence of the 
             legal 


profession. 

        (a)   A practitioner is subject to discipline if the practitioner 
has  made a materially false statement in, or if the practitioner has 
deliberately  failed to disclose a material fact requested in connection 
with, the practitioner's  application for registration or membership in 
the bar of any United States  court or any State court or his or her 
authority to otherwise practice before  the Office in trademark and other 
non-patent cases. 

        (b)   A practitioner shall not further the application for 
registration  or membership in the bar of any United States court, State 
court, or administrative  agency of another person known by the 
practitioner to be unqualified in respect  to character, education, or 
other relative attribute. 

        [Added 50 FR 5175, Feb. 6, 1985, effective Mar. 8, 1985] 


# 10.23       Misconduct. 


        (a)   A practitioner shall not engage in disreputable or gross 
misconduct. 
        (b)   A practitioner shall not: 

        (1)   Violate a Disciplinary Rule. 

        (2)   Circumvent a Disciplinary Rule through actions of another. 
        (3)   Engage in illegal conduct involving moral turpitude. 
        (4)   Engage in conduct involving dishonesty, fraud, deceit, or 
misrepresentation. 
        (5)   Engage in conduct that is prejudicial to the administration 
of  justice. 

        (6)   Engage in any other conduct that adversely reflects on the 
practitioner's  fitness to practice before the Office. 

        (c)   Conduct which constitutes a violation of paragraphs (a) and 
(b)  of this section includes, but is not limited to: 

        (1)   Conviction of a criminal offense involving moral turpitude, 
dishonesty,  or breach of trust. 

        (2)   Knowingly giving false or misleading information or 
knowingly  participating in a material way in giving false or misleading 
information,  to: 

        (i)   A client in connection with any immediate, prospective, or 
pending  business before the Office. 

        (ii)    The Office or any employee of the Office. 

        (3)   Misappropriation of, or failure to properly or timely remit, 
 funds received by a practitioner or the practitioner's firm from a client 
to  pay a fee which the client is required by law to pay to the Office. 
        (4)   Directly or indirectly improperly influencing, attempting to 
 improperly influence, offering or agreeing to improperly influence, or 
attempting  to offer or agree to improperly influence an official action 
of any employee  of the Office by: 

        (i)   Use of threats, false accusations, duress, or coercion, 
        (ii)    An offer of any special inducement or promise of 
advantage,  or 



        (iii)     Improperly bestowing of any gift, favor, or thing of 
value. 

        (5)   Suspension or disbarment from practice as an attorney or 
agent  on ethical grounds by any duly constituted authority of a State or 
the United  States or, in the case of a practitioner who resides in a 
foreign country or  is registered under w 10.6(c), by any duly constituted 
authority of: 
        (i)   A State, 

        (ii)    The United States, or 

        (iii)     The country in which the practitioner resides. 

        (6)   Knowingly aiding or abetting a practitioner suspended or 
excluded  from practice before the Office in engaging in unauthorized 
practice before  the Office under w 10.158. 

        (7)   Knowingly withholding from the Office information 
identifying  a patent or patent application of another from which one or 
more claims have  been copied. See ww 1.604(b) and 1.607(c) of this 
subchapter. 

        (8)   Failing to inform a client or former client or failing to 
timely  notify the Office of an inability to notify a client or former 
client of correspondence  received from the Office or the client's or 
former client's opponent in an  inter partes proceeding before the Office 
when the correspondence (i) could  have a significant effect on a matter 
pending before the Office, (ii) is received  by the practitioner on behalf 
of a client or former client and (iii) is correspondence  of which a 
reasonable practitioner would believe under the circumstances the  client 
or former client should be notified. 

        (9)     Knowingly misusing a ``Certificate of Mailing or 
Transmission"  under w 1.8 of this chapter or a certificate of "Express 
Mail" under w 1.10  of this chapter. 

        (10)    Knowingly violating or causing to be violated the 
requirements  of w 1.56 or w 1.555 of this subchapter. 

        (11)    Knowingly filing or causing to be filed an application 
containing  any material alteration made in the application papers after 
the signing of  the accompanying oath or declaration without identifying 
the alteration at  the time of filing the application papers. 

        (12)    Knowingly filing, or causing to be filed, a frivolous 
complaint  alleging a violation by a practitioner of the Patent and 
Trademark Office Code  of Professional Responsibility. 

        (13)    Knowingly preparing or prosecuting or providing assistance 
 in the preparation or prosecution of a patent application in violation of 
an  undertaking signed under w 10.10(b). 

        (14)    Knowingly failing to advise the Director in writing of any 
 change which would preclude continued registration under w 10.6. 

        (15)    Knowingly signing a paper filed in the Office in violation 
 of the provisions of w 10.18 or making a scandalous or indecent statement 
in  a paper filed in the Office. 

        (16)    Willfully refusing to reveal or report knowledge or 
evidence  to the Director contrary to w 10.24 or paragraph (b) of w 
10.131. 
        (17)    Representing before the Office in a patent case either a 
joint  venture comprising an inventor and an invention developer or an 
inventor referred  to the registered practitioner by an invention 
developer when (i) the registered  practitioner knows, or has been advised 
by the Office, that a formal complaint  filed by a federal or state 
agency, based on any violation of any law relating  to securities, unfair 
methods of competition, unfair or deceptive acts or practices,  mail 
fraud, or other civil or criminal conduct, is pending before a federal  or 
state court or federal or state agency, or has been resolved unfavorably 
by such court or agency, against the invention developer in connection 
with  invention development services and (ii) the registered practitioner 
fails to  fully advise the inventor of the existence of the pending 
complaint or unfavorable  resolution thereof prior to undertaking or 
continuing representation of the  joint venture or inventor. "Invention 
developer" means any person, and any  agent, employee, officer, partner, 
or independent contractor thereof, who is  not a registered practitioner 
and who advertises invention development services  in media of general 
circulation or who enters into contracts for invention  development 
services with customers as a result of such advertisement."Invention 
development services" means acts of invention development required or 
promised  to be performed, or actually performed, or both, by an invention 
developer  for a customer. "Invention development" means the evaluation, 
perfection, marketing,  brokering, or promotion of an invention on behalf 
of a customer by an invention  developer, including a patent search, 
preparation of a patent application,  or any other act done by an 
invention developer for consideration toward the  end of procuring 



or attempting to procure a license, buyer, or patent for an invention. 
"Customer"  means any individual who has made an invention and who enters 
into a contract  for invention development services with an invention 
developer with respect  to the invention by which the inventor  becomes 
obligated to pay the invention  developer less than $5,000 (not to include 
any additional sums which the invention  developer is to receive as a 
result of 
successful development of the invention). "Contract for invention 
development  services" means a contract for invention development services 
with an invention  developer with respect to an invention made by a 
customer by which the inventor  becomes obligated to pay the invention 
developer less than $5,000 (not to include  any additional sums which the 
invention developer is to receive as a result  of successful development 
of the invention). 

        (18)    In the absence of information sufficient to establish a 
reasonable  belief that fraud or inequitable conduct has occurred, 
alleging before a tribunal  that anyone has committed a fraud on the 
Office or engaged in inequitable conduct  in a proceeding before the Office. 

        (19)    Action by an employee of the Office contrary to the 
provisions  set forth in w 10.10(c). 

        (20)    Knowing practice by a Government employee contrary to 
applicable  Federal conflict of interest laws, or regulations of the 
Department, agency,  or commission employing said individual. 

        (d)   A practitioner who acts with reckless indifference to 
whether  a representation is true or false is chargeable with knowledge of 
its falsity.  Deceitful statements of half-truths or concealment of 
material facts shall  be deemed actual fraud within the meaning of this part. 

        [Added 50 FR 5175, Feb. 6, 1985, effective Mar. 8, 1985; amended 
50  FR 25073, June 17, 1985; 50 FR 25980, June 24, 1985; paras. (c)(13), 
(19) & 
(20), 53 FR 33950, Oct. 4, 1988, effective Nov. 4, 1988; corrected 53 FR 
41278,  Oct. 20, 1988; paras. (c)(10) & (c)(11), 57 FR 2021, Jan. 17, 
1992, effective  Mar. 16, 1992; para. (c)(a) amended, 58 FR 54494, Oct. 2, 
1993, effective Nov.  22, 1993] 


# 10.24       Disclosure of information to authorities. 


        (a)   A practitioner possessing unprivileged knowledge of a 
violation  of a Disciplinary Rule shall report such knowledge to the 
Director. 
        (b)   A practitioner possessing unprivileged knowledge or evidence 
 concerning another practitioner, employee of the Office, or a judge shall 
reveal  fully such knowledge or evidence upon proper request of a tribunal 
or other  authority empowered to investigate or act upon the conduct of 
practitioners,  employees of the Office, or judges. 

        [Added 50 FR 5176, Feb. 6, 1985, effective Mar. 8, 1985] 


# 10.25 - 10.29 [Reserved] 



# 10.30       Canon 2. 


        A practitioner should assist the legal profession in fulfilling 
its  duty to make legal counsel available. 

        [Added 50 FR 5177, Feb. 6, 1985, effective Mar. 8, 1985] 


# 10.31       Communications concerning a 

                        practitioner's services. 

        (a)   No practitioner shall with respect to any prospective 
business  before the Office, by word, circular, letter, or advertising, 
with intent to  defraud in any manner, deceive, mislead, or threaten any 
prospective applicant  or other person having immediate or prospective 
business before the Office. 
        (b)   A practitioner may not use the name of a Member of either 
House  of Congress or of an individual in the service of the United States 
in advertising  the practitioner's practice before the Office. 

        (c)   Unless authorized under w 10.14(b), a non-lawyer 
practitioner  shall not hold himself or herself out as authorized to 
practice before the  Office in trademark cases. 

        (d)   Unless a practitioner is an attorney, the practitioner shall 
 not hold himself or herself out: 

        (1)   To be an attorney or lawyer or 

        (2)   As authorized to practice before the Office in non-patent 
and  trademark cases. 

        [Added 50 FR 5177, Feb. 6, 1985, effective Mar. 8, 1985] 


# 10.32         Advertising. 


        (a)   Subject to w 10.31, a practitioner may advertise services 
through  public media, including a telephone directory, legal directory, 
newspaper,  or other periodical, radio, or television, or through written 
communications  not involving solicitation as defined by w 10.33. 

        (b)   A practitioner shall not give anything of value to a person 
for  recommending the practitioner's services, except that a practitioner 
may pay  the reasonable cost of 



advertising or written communication permitted by this section and may pay 
 the usual charges of a not-for-profit lawyer referral service or other 
legal  service organization. 

        (c)     Any communication made pursuant to this section shall 
include  the name of at least one practitioner responsible for its 
content. 
        [Added 50 FR 5177, Feb. 6, 1985, effective Mar. 8, 1985] 


# 10.33       Direct contact with prospective clients. 


        A practitioner may not solicit professional employment from a 
prospective  client with whom the practitioner has no family or prior 
professional relationship,  by mail, in-person, or otherwise, when a 
significant motive for the practitioner's  doing so is the practitioner's 
pecuniary gain under circumstances evidencing  undue influence, 
intimidation, or overreaching. The term "solicit" includes  contact in 
person, by telephone or telegraph, by letter or other writing, or  by 
other communication directed to a specific recipient, but does not include 
 letters addressed or advertising circulars distributed generally to 
persons  not specifically known to need legal services of the kind 
provided by the practitioner  in a particular manner, but who are so 
situated that they might in general  find such services useful. 

        [Added 50 FR 5177, Feb.6, 1985, effective Mar. 8, 1985] 


# 10.34       Communications of fields of practice. 


        A registered practitioner may state or imply that the practitioner 
 is a specialist as follows: 

        (a)   A registered practitioner who is an attorney may use the 
designation  "Patents," "Patent Attorney," "Patent Lawyer," "Registered 
Patent Attorney,"  or a substantially similar designation. 

        (b)   A registered practitioner who is not an attorney may use the 
 designation "Patents," "Patent Agent," "Registered Patent Agent," or a 
substantially  similar designation, except that any practitioner who was 
registered prior  to November 15, 1938, may refer to himself or herself as 
a "patent attorney." 
        [Added 50 FR 5177, Feb. 6, 1985, effective Mar. 8, 1985] 


# 10.35       Firm names and letterheads. 


        (a)   A practitioner shall not use a firm name, letterhead, or 
other  professional designation that violates w 10.31. A trade name may be 
used by  a practitioner in private practice if it does not imply a current 
connection  with a government agency or with a public or charitable legal 
services organization  and is not otherwise in violation of w 10.31. 

        (b)   Practitioners may state or imply that they practice in a 
partnership  or other organization only when that is the fact. 

        [Added 50 FR 5177, Feb. 6, 1985, effective Mar. 8, 1985] 


# 10.36       Fees for legal services. 


        (a)   A practitioner shall not enter into an agreement for, 
charge,  or collect an illegal or clearly excessive fee. 

        (b)   A fee is clearly excessive when, after a review of the 
facts,  a practitioner of ordinary prudence would be left with a definite 
and firm  conviction that the fee is in excess of a reasonable fee. 
Factors to be considered  as guides in determining the reasonableness of a 
fee include the following: 
        (1)   The time and labor required, the novelty and difficulty of 
the  questions involved, and the skill requisite to perform the legal 
service properly. 
        (2)   The likelihood, if apparent to the client, that the 
acceptance  of the particular employment will preclude other employment by 
the practitioner. 
        (3)   The fee customarily charged for similar legal services. 
        (4)   The amount involved and the results obtained. 

        (5)   The time limitations imposed by the client or by the 
circumstances. 
        (6)   The nature and length of the professional relationship with 
the  client. 

        (7)   The experience, reputation, and ability of the practitioner 
or  practitioners performing the services. 

        (8)   Whether the fee is fixed or contingent. 

        [Added 50 FR 5177, Feb. 6, 1985, effective Mar. 8, 1985] 


# 10.37         Division of fees among practitioners. 


        (a)   A practitioner shall not divide a fee for legal services 
with  another practitioner who is not a partner in or associate of the 
practitioner's  law firm or law office, unless: 

        (1)   The client consents to employment of the other practitioner 
after  a full disclosure that a division of fees will be made. 

        (2)   The division is made in proportion to the services performed 
 and responsibility assumed by each. 

        (3)   The total fee of the practitioners does not clearly exceed 
reasonable  compensation for all legal services rendered to the client. 



        (b)   This section does not prohibit payment to a former partner 
or  associate pursuant to a separation or retirement agreement. 

        [Added 50 FR 5177, Feb. 6, 1985, effective Mar. 8, 1985] 


# 10.38       Agreements restricting the practice of a 
                     practitioner. 

        (a) A practitioner shall not be a party to or participate in a 
partnership  or employment agreement with another practitioner that 
restricts the right  of a practitioner to practice before the Office after 
the termination of a  relationship created by the agreement, except as a 
condition to payment of  retirement benefits. 

        (b)   In connection with the settlement of a controversy or suit, 
a  practitioner shall not enter into an agreement that restricts the 
practitioner's  right to practice before the Office. 

        [Added 50 FR 5177, Feb. 6, 1985, effective Mar. 8, 1985] 


#   10.39   Acceptance of employment. 


        A practitioner shall not accept employment on behalf of a person 
if  the practitioner knows or it is obvious that such person wishes to: 
        (a)   Bring a legal action, commence a proceeding before the 
Office,  conduct a defense, assert a position in any proceeding pending 
before the Office,  or otherwise have steps taken for the person, merely 
for the purpose of harassing  or maliciously injuring any other person. 

        (b)   Present a claim or defense in litigation or any proceeding 
before  the Office that it is not warranted under existing law, unless it 
can be supported  by good faith argument for an extension, modification, 
or reversal of existing  law. 

        [Added 50 FR 5177, Feb. 6, 1985, effective Mar. 8, 1985] 


# 10.40       Withdrawal from employment. 


        (a)   A practitioner shall not withdraw from employment in a 
proceeding  before the Office without permission from the Office (see ww 
1.36 and 2.19  of this subchapter). In any event, a practitioner shall not 
withdraw from employment  until the practitioner has taken reasonable 
steps to avoid foreseeable prejudice  to the rights of the client, 
including giving due notice to his or her client,  allowing time for 
employment of another practitioner, delivering to the client  all papers 
and property to which the client is entitled, and complying with 
applicable laws and rules. A practitioner who withdraws from employment 
shall  refund promptly any part of a fee paid in advance that has not been 
earned. 
        (b)   Mandatory withdrawal. A practitioner representing a client 
before  the Office shall withdraw from employment if: 

        (1)   The practitioner knows or it is obvious that the client is 
bringing  a legal action, commencing a proceeding before the Office, 
conducting a defense,  or asserting a position in litigation or any 
proceeding pending before the  Office, or is otherwise having steps taken 
for the client, merely for the purpose  of harassing or maliciously 
injuring any person; 

        (2)   The practitioner knows or it is obvious that the 
practitioner's  continued employment will result in violation of a 
Disciplinary Rule; 
        (3)   The practitioner's mental or physical condition renders it 
unreasonably  difficult for the practitioner to carry out the employment 
effectively; or 
        (4)   The practitioner is discharged by the client. 

        (c)   Permissive withdrawal. If paragraph (b) of this section is 
not  applicable, a practitioner may not request permission to withdraw in 
matters  pending before the Office unless such request or such withdrawal 
is because: 
        (1)   The petitioner's client: 

        (i)   Insists upon presenting a claim or defense that is not 
warranted  under existing law and cannot be supported by good faith 
argument for an extension,  modification, or reversal of existing law; 

        (ii)    Personally seeks to pursue an illegal course of conduct; 
        (iii)     Insists that the practitioner pursue a course of conduct 
 that is illegal or that is prohibited under a Disciplinary Rule; 

        (iv)    By other conduct renders it unreasonably difficult for the 
 practitioner to carry out the employment effectively; 

        (v)   Insists, in a matter not pending before a tribunal, that the 
 practitioner engage in conduct that is contrary to the judgment and 
advice  of the practitioner but not prohibited under the Disciplinary 
Rule; or 
        (vi)    Has failed to pay one or more bills rendered by the 
practitioner  for an unreasonable period of time or has failed to honor an 
agreement to pay  a retainer in advance of the performance of legal services. 

        (2)   The practitioner's continued employment is likely to result 
in  a violation of a Disciplinary Rule; 

        (3) The practitioner's inability to work with co-counsel indicates 
 that the best interests of the client likely will be served by 
withdrawal; 


        (4)   The practitioner's mental or physical condition renders it 
difficult  for the practitioner to carry out the employment effectively; 

        (5)   The practitioner's client knowingly and freely assents to 
termination  of the employment; or 

        (6)   The practitioner believes in good faith, in a proceeding 
pending  before the Office, that the Office will find the existence of 
other good cause  for withdrawal. 

        [Added 50 FR 5178, Feb. 6, 1985, effective Mar. 8, 1985] 

##  10.41 - 10.45 [Reserved] 


# 10.46         Canon 3. 


        A practitioner should assist in preventing the unauthorized 
practice  of law. 

        [Added 50 FR 5178, Feb. 6, 1985, effective Mar. 8, 1985] 


# 10.47       Aiding unauthorized practice of law. 


        (a)   A practitioner shall not aid a non-practitioner in the 
unauthorized  practice of law before the Office. 

        (b)   A practitioner shall not aid a suspended or excluded 
practitioner  in the practice of law before the Office. 

        (c)   A practitioner shall not aid a non-lawyer in the 
unauthorized  practice of law. 

        [Added 50 FR 5178, Feb. 6, 1985, effective Mar. 8, 1985] 


# 10.48         Sharing legal fees. 


        A practitioner or a firm of practitioners shall not share legal 
fees  with a non-practitioner except that: 

        (a)   An agreement by a practitioner with the practitioner's firm, 
 partner, or associate may provide for the payment of money, over a 
reasonable  period of time after the practitioner's death, to the 
practitioner's estate  or to one or more specified persons. 

        (b)     A practitioner who undertakes to complete unfinished legal 
 business of a deceased practitioner may pay to the estate of the deceased 
practitioner  that proportion of the total compensation which fairly 
represents the services  rendered by the deceased practitioner. 

        (c) A practitioner or firm of practitioners may include 
non-practitioner  employees in a compensation or retirement plan, even 
though the plan is based  in whole or in part on a profit-sharing 
arrangement, providing such plan does  not circumvent another Disciplinary 
Rule. 

        [Added 50 FR 5178, Feb. 6, 1985, effective Mar. 8, 1985] 


# 10.49       Forming a partnership with a 
     non-practitioner. 

        A practitioner shall not form a partnership with a 
non-practitioner  if any of the activities of the partnership consist of 
the practice of patent,  trademark, or other law before the Office. 

        [Added 50 FR 5178, Feb. 6, 1985, effective Mar. 8, 1985] 

## 10.50 - 10.55 [Reserved] 


# 10.56       Canon 4. 


        A practitioner should preserve the confidences and secrets of a 
client. 
        [Added 50 FR 5178, Feb. 6, 1985, effective Mar. 8, 1985] 


# 10.57       Preservation of confidences and secrets of a 
             client. 

        (a) "Confidence" refers to information protected by the 
attorney-client  or agent-client privilege under applicable law. "Secret" 
refers to the other  information gained in the professional relationship 
that the client has requested  be held inviolate or the disclosure of 
which would be embarrassing or would  be likely to be detrimental to the 
client. 

        (b)   Except when permitted under paragraph (c) of this section, a 
 practitioner shall not knowingly: 

        (1)     Reveal a confidence or secret of a client. 

        (2)   Use a confidence or secret of a client to the dis- advantage 
 of the client. 

        (3)   Use a confidence or secret of a client for the advantage of 
the  practitioner or of a third person, unless the client consents after 
full disclosure. 
        (c)   A practitioner may reveal: 

        (1)   Confidences or secrets with the consent of the client 
affected  but only after a full disclosure to the client. 

        (2)   Confidences or secrets when permitted under Disciplinary 
Rules  or required by law or court order. 

        (3)   The intention of a client to commit a crime and the 
information  necessary to prevent the crime. 

        (4)   Confidences or secrets necessary to establish or collect the 
 practitioner's fee or to defend the practitioner or the practitioner's 
employees  or associates against an accusation of wrongful conduct. 

        (d)   A practitioner shall exercise reasonable care to prevent the 
 practitioner's employees, associates, and others whose services are 
utilized  by the practitioner from disclosing or using confidences or 
secrets of a client,  except that a practitioner may reveal the informa- 



tion allowed by paragraph (c) of this section through an employee. 
        [Added 50 FR 5178, Feb. 6, 1985, effective Mar. 8, 1985] 


##      10.58 - 10.60     [Reserved] 



# 10.61         Canon 5. 


        A practitioner should exercise independent professional judgment 
on  behalf of a client. 

        [Added 50 FR 5179, Feb. 6, 1985, effective Mar. 8, 1985] 


# 10.62       Refusing employment when the interest 

                        of the practitioner may impair the practi- 
                     tioner's  independent professional judgment. 

        (a)   Except with the consent of a client after full dis- closure, 
 a practitioner shall not accept employment if the exercise of the 
practitioner's  professional judgment on behalf of the client will be or 
reasonably may be  affected by the practitioner's own financial, business, 
property, or personal  interests. 

        (b)   A practitioner shall not accept employment in a proceeding 
before  the Office if the practitioner knows or it is obvious that the 
practitioner  or another practitioner in the practitioner's firm ought to 
sign an affidavit  to be filed in the Office or be called as a witness, 
except that the practitioner  may undertake the employment and the 
practitioner or another practitioner in  the practitioner's firm may testify: 

        (1)   If the testimony will relate solely to an uncontested 
matter. 
        (2)   If the testimony will relate solely to a matter of formality 
 and there is no reason to believe that substantial evidence will be 
offered  in opposition to the testimony. 

        (3)   If the testimony will relate solely to the nature and value 
of  legal services rendered in the case by the practitioner or the 
practitioner's  firm to the client. 

        (4)   As to any matter, if refusal would work a substantial 
hardship  on the client because of the distinctive value of the 
practitioner or the practitioner's  firm as counsel in the particular case. 

        [Added 50 FR 5179, Feb. 6, 1985, effective Mar. 8, 1985] 


# 10.63       Withdrawal when the practitioner becomes 
             a 


witness. 

        (a)   If, after undertaking employment in a proceeding in the 
Office,  a practitioner learns or it is obvious that the practitioner or 
another practitioner  in the practitioner's firm ought to sign an 
affidavit to be filed in the Office  or be called as a witness on behalf 
of a practitioner's client, the practitioner  shall withdraw from the 
conduct of the proceeding and the practitioner's firm,  if any, shall not 
continue representation in the proceeding, except that the  practitioner 
may continue the representation and the practitioner or another 
practitioner in the practitioner's firm may testify in the circumstances 
enumerated  in paragraphs (1) through (4) of w 10.62(b). 

        (b)   If, after undertaking employment in a proceeding before the 
Office,  a practitioner learns or it is obvious that the practitioner or 
another practitioner  in the practitioner's firm may be asked to sign an 
affidavit to be filed in  the Office or be called as a witness other than 
on behalf of the practitioner's  client, the practitioner may continue the 
representation until it is apparent  that the practitioner's affidavit or 
testimony is or may be prejudicial to  the practitioner's client. 

        [Added 50 FR 5179, Feb. 6, 1985, effective Mar. 8, 1985] 


# 10.64         Avoiding acquisition of interest in litigation or 
                     proceeding 


before the Office. 

        (a)   A practitioner shall not acquire a proprietary interest in 
the  subject matter of a proceeding before the Office which the 
practitioner is  conducting for a client, except that the practitioner may: 

        (1)   Acquire a lien granted by law to secure the practitioner's 
fee  or expenses; or 

        (2)   Contract with a client for a reasonable contingent fee; or 
        (3)   In a patent case, take an interest in the patent as part or 
all  of his or her fee. 

        (b)   While representing a client in connection with a 
contemplated  or pending proceeding before the Office, a practitioner 
shall not advance or  guarantee financial assistance to a client, except 
that a practitioner may  advance or guarantee the expenses of going 
forward in a proceeding before the  Office including fees required by law 
to be paid to the Office, expenses of  investigation, expenses of medical 
examination, and costs of obtaining and  presenting evidence, provided the 
client remains ultimately liable for such  expenses. A practitioner may, 
however, advance any fee required to prevent  or remedy an abandonment of 
a client's application by reason of an act or omission  attributable to 
the practitioner and not to the client, whether or not the  client is 
ultimately liable for such fee. 

        [Added 50 FR 5179, Feb. 6, 1985, effective Mar. 8, 1985] 





# 10.65       Limiting business relations with a client. 


        A practitioner shall not enter into a business transaction with a 
client  if they have differing interests therein and if the client expects 
the practitioner  to exercise professional judgment therein for the 
protection of the client,  unless the client has consented after full 
disclosure. 

        [Added 50 FR 5179, Feb. 6, 1985, effective Mar. 8, 1985] 


# 10.66       Refusing to accept or continue employment 

                        if the interests of another client may impair 
                     the  independent professional judgment of 
               the practitioner. 
        (a)   A practitioner shall decline proffered employment if the 
exercise  of the practitioner's independent professional judgment in 
behalf of a client  will be or is likely to be adversely affected by the 
acceptance of the proffered  employment, or if it would be likely to 
involve the practitioner in representing  differing interests, except to 
the extent permitted under paragraph (c) of  this section. 

        (b)   A practitioner shall not continue multiple employment if the 
 exercise of the practitioner's independent professional judgment in 
behalf  of a client will be or is likely to be adversely affected by the 
practitioner's  representation of another client, or if it would be likely 
to involve the practitioner  in representing differing interests, except 
to the extent permitted under paragraph 
(c) of this section. 

        (c)   In the situations covered by paragraphs (a) and (b) of this 
section,  a practitioner may represent multiple clients if it is obvious 
that the practitioner  can adequately represent the interest of each and 
if each consents to the representation  after full disclosure of the 
possible effect of such representation on the  exercise of the 
practitioner's independent professional judgment on behalf  of each. 

        (d)   If a practitioner is required to decline employment or to 
withdraw  from employment under a Disciplinary Rule, no partner, or 
associate, or any  other practitioner affiliated with the practitioner or 
the practitioner's firm,  may accept or continue such employment unless 
otherwise ordered by the Director  or Commissioner. 

        [Added 50 FR 5179, Feb. 6, 1985, effective Mar. 8, 1985] 


# 10.67       Settling similar claims of clients. 


        A practitioner who represents two or more clients shall not make 
or  participate in the making of an aggregate settlement of the claims of 
or against  the practitioner's clients, unless each client has consented 
to the settlement  after being advised of the existence and nature of all 
the claims involved  in the proposed settlement, of the total amount of 
the settlement, and of the  participation of each person in the settlement. 

        [Added 50 FR 5179, Feb. 6, 1985, effective Mar. 8, 1985] 


# 10.68         Avoiding influence by others than the client. 


        (a)   Except with the consent of the practitioner's client after 
full  disclosure, a practitioner shall not: 

        (1)   Accept compensation from one other than the practitioner's 
client  for the practitioner's legal services to or for the client. 

        (2)   Accept from one other than the practitioner's client any 
thing  of value related to the practitioner's representation of or the 
practitioner's  employment by the client. 

        (b)   A practitioner shall not permit a person who recommends, 
employs,  or pays the practitioner to render legal services for another, 
to direct or  regulate the practitioner's professional judgment in 
rendering such legal services. 
        (c)   A practitioner shall not practice with or in the form of a 
professional  corporation or association authorized to practice law for a 
profit, if a non-practitioner  has the right to direct or control the 
professional judgment of a practitioner. 
        [Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 1985] 


##   10.69 - 10.75  [Reserved] 



# 10.76       Canon 6. 


        A practitioner should represent a client competently. 

        [Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 1985] 


# 10.77       Failing to act competently. 


        A practitioner shall not: 

        (a)   Handle a legal matter which the practitioner knows or should 
 know that the practitioner is not competent to handle, without 
associating  with the practitioner another practitioner who is competent 
to handle it. 
        (b)   Handle a legal matter without preparation adequate in the 
circumstances. 
        (c)   Neglect a legal matter entrusted to the practitioner. 
        [Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 1985] 





# 10.78       Limiting liability to client. 


        A practitioner shall not attempt to exonerate himself or herself 
from,  or limit his or her liability to, a client for his or her personal 
malpractice. 
        [Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 1985] 


##  10.79 - 10.82 [Reserved] 



# 10.83       Canon 7. 


        A practitioner should represent a client zealously within the 
bounds  of the law. 

        [Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 1985] 


# 10.84         Representing a client zealously. 


        (a) A practitioner shall not intentionally: 

        (1)   Fail to seek the lawful objectives of a client through 
reasonable  available means permitted by law and the Disciplinary Rules, 
except as provided  by paragraph (b) of this section. A practitioner does 
not violate the provisions  of this section, however, by acceding to 
reasonable requests of opposing counsel  which do not prejudice the rights 
of the client, by being punctual in fulfilling  all professional 
commitments, by avoiding offensive tactics, or by treating  with courtesy 
and consideration all persons involved in the legal process. 
        (2)   Fail to carry out a contract of employment entered into with 
 a client for professional services, but a practitioner may withdraw as 
permitted  under ww 10.40, 10.63, and 10.66. 

        (3)   Prejudice or damage a client during the course of a 
professional  relationship, except as required under this part. 

        (b)   In representation of a client, a practitioner may: 

        (1)   Where permissible, exercise professional judgment to waive 
or  fail to assert a right or position of the client. 

        (2)   Refuse to aid or participate in conduct that the 
practitioner  believes to be unlawful, even though there is some support 
for an argument  that the conduct is legal. 

        [Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 1985] 


# 10.85       Representing a client within the bounds of 
                     the 


law. 

        (a)   In representation of a client, a practitioner shall not: 
        (1) Initiate or defend any proceeding before the Office, assert a 
position,  conduct a defense, delay a trial or proceeding before the 
Office, or take other  action on behalf of the practitioner's client when 
the practitioner knows or  when it is obvious that such action would serve 
merely to harass or maliciously  injure another. 

        (2)   Knowingly advance a claim or defense that is unwarranted 
under  existing law, except that a practitioner may advance such claim or 
defense  if it can be supported by good faith argument for an extension, 
modification,  or reversal of existing law. 

        (3)   Conceal or knowingly fail to disclose that which the 
practitioner  is required by law to reveal. 

        (4)   Knowingly use perjured testimony or false evidence. 
        (5)   Knowingly make a false statement of law or fact. 

        (6)   Participate in the creation or preservation of evidence when 
 the practitioner knows or it is obvious that the evidence is false. 
        (7)   Counsel or assist a client in conduct that the practitioner 
knows  to be illegal or fraudulent. 

        (8)   Knowingly engage in other illegal conduct or conduct 
contrary  to a Disciplinary Rule. 

        (b)   A practitioner who receives information clearly establishing 
 that: 

        (1)   A client has, in the course of the representation, 
perpetrated  a fraud upon a person or tribunal shall promptly call upon 
the client to rectify  the same, and if the client refuses or is unable to 
do so the practitioner  shall reveal the fraud to the affected person or 
tribunal. 

        (2)   A person other than a client has perpetrated a fraud upon a 
tribunal  shall promptly reveal the fraud to the tribunal. 

        [Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 1985] 


# 10.86       [Reserved] 



# 10.87       Communicating with one of adverse interest. 


        During the course of representation of a client, a practitioner 
shall  not: 

        (a)   Communicate or cause another to communicate on the subject 
of  the representation with a party the practitioner knows to be 
represented by  another practitioner in that matter unless the 
practitioner has the prior consent  of the other practitioner representing 
such other party or is authorized by  law to do so. It is not improper, 
however, for a practitioner to encourage  a client to meet with an 
opposing party for settlement discussions. 
        (b)   Give advice to a person who is not represented by a 
practitioner  other than the advice to secure counsel, if the interests of 
such person are  to have a reason- 




able possibility of being in conflict with the interests of the 
practitioner's  client. 

        [Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 1985] 


# 10.88         Threatening criminal prosecution. 


        A practitioner shall not present, participate in presenting, or 
threaten  to present criminal charges solely to obtain an advantage in any 
prospective  or pending proceeding before the Office. 

        [Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 1985] 


# 10.89         Conduct in proceedings. 


        (a)   A practitioner shall not disregard or advise a client to 
disregard  any provision of this Subchapter or a decision of the Office 
made in the course  of a proceeding before the Office, but the 
practitioner may take appropriate  steps in good faith to test the 
validity of such provision or decision. 
        (b)   In presenting a matter to the Office, a practitioner shall 
disclose: 
        (1)   Controlling legal authority known to the practitioner to be 
directly  adverse to the position of the client and which is not disclosed 
by opposing  counsel or an employee of the Office. 

        (2)   Unless privileged or irrelevant, the identities of the 
client  the practitioner represents and of the persons who employed the 
practitioner. 
        (c) In appearing in a professional capacity before a tribunal, a 
practitioner  shall not: 

        (1)   State or allude to any matter that the practitioner has no 
reasonable  basis to believe is relevant to the case or that will not be 
supported by admissible  evidence. 

        (2)   Ask any question that the practitioner has no reasonable 
basis  to believe is relevant to the case and that is intended to degrade 
a witness  or other person. 

        (3)   Assert the practitioner's personal knowledge of the facts in 
 issue, except when testifying as a witness. 

        (4)   Assert the practitioner's personal opinion as to the 
justness  of a cause, as to the credibility of a witness, as to the 
culpability of a  civil litigant, or as to the guilt or innocence of an 
accused; but the practitioner  may argue, on the practitioner's analysis 
of the evidence, for any position  or conclusion with respect to the 
matters stated herein. 

        (5)   Engage in undignified or discourteous conduct before the 
Office 
(see w 1.3 of the subchapter). 

        (6)   Intentionally or habitually violate any provision of this 
subchapter  or established rule of evidence. 

        [Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 1985] 


##  10.90 - 10.91 [Reserved] 



# 10.92       Contact with witnesses. 


        (a) A practitioner shall not suppress any evidence that the 
practitioner  or the practitioner's client has a legal obligation to 
reveal or produce. 
        (b)   A practitioner shall not advise or cause a person to be 
secreted  or to leave the jurisdiction of a tribunal for the purpose of 
making the person  unavailable as a witness therein. 

        (c) A practitioner shall not pay, offer to pay, or acquiesce in 
payment  of compensation to a witness contingent upon the content of the 
witness' affidavit,  testimony or the outcome of the case. But a 
practitioner may advance, guarantee,  or acquiesce in the payment of: 

        (1)   Expenses reasonably incurred by a witness in attending, 
testifying,  or making an affidavit. 

        (2)   Reasonable compensation to a witness for the witness' loss 
of  time in attending, testifying, or making an affidavit. 

        (3)   A reasonable fee for the professional services of an expert 
witness. 
        [Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 1985] 


# 10.93         Contact with officials. 


        (a)   A practitioner shall not give or lend anything of value to a 
 judge, official, or employee of a tribunal under circumstances which 
might  give the appearance that the gift or loan is made to influence 
official action. 
        (b)   In an adversary proceeding, including any inter partes 
proceeding  before the Office, a practitioner shall not communicate, or 
cause another to  communicate, as to the merits of the cause with a judge, 
official, or Office  employee before whom the proceeding is pending, except: 

        (1)   In the course of official proceedings in the cause. 
        (2)   In writing if the practitioner promptly delivers a copy of 
the  writing to opposing counsel or to the adverse party if the adverse 
party is  not represented by a practitioner. 

        (3)   Orally upon adequate notice to opposing counsel or to the 
adverse  party if the adverse party is not represented by a practitioner. 

        (4) As otherwise authorized by law. 

        [Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 1985] 





##  10.94 - 10.99 [Reserved] 



# 10.100  Canon 8. 


        A practitioner should assist in improving the legal system. 
        [Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 1985] 




# 10.101         Action as a public official. 


        (a)   A practitioner who holds public office shall not: 

        (1)   Use the practitioner's public position to obtain, or attempt 
 to obtain, a special advantage in legislative matters for the 
practitioner  or for a client under circumstances where the practitioner 
knows or it is obvious  that such action is not in the public interest. 

        (2)   Use the practitioner's public position to influence, or 
attempt  to influence, a tribunal to act in favor of the practitioner or 
of a client. 
        (3)   Accept any thing of value from any person when the 
practitioner  knows or it is obvious that the offer is for the purpose of 
influencing the  practitioner's action as a public official. 

        (b)   A practitioner who is an officer or employee of the United 
States  shall not practice before the Office in patent cases except as 
provided in  ww 10.10(c) and 10.10(d). 

        [Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 1985; para. (b) 
 amended, 54 FR 6520, Feb. 13, 1989] 


# 10.102  Statements concerning officials. 


        (a)     A practitioner shall not knowingly make false statements 
of  fact concerning the qualifications of a candidate for election or 
appointment  to a judicial office or to a position in the Office. 

        (b)   A practitioner shall not knowingly make false accusations 
against  a judge, other adjudicatory officer, or employee of the Office. 

        [Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 1985] 




# 10.103  Practitioner candidate for judicial office. 


        A practitioner who is a candidate for judicial office shall comply 
 with applicable provisions of law. 

        [Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 1985] 


##  10.104 - 10.109   [Reserved] 



# 10.110        Canon 9. 


        A practitioner should avoid even the appearance of professional 
impropriety. 
        [Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 1985] 


# 10.111         Avoiding even the appearance of 

                                impropriety. 

        (a)   A practitioner shall not accept private employment in a 
matter  upon the merits of which he or she has acted in a judicial 
capacity. 
        (b)   A practitioner shall not accept private employment in a 
matter  in which he or she had personal responsibility while a public 
employee. 
        (c)   A practitioner shall not state or imply that the 
practitioner  is able to influence improperly or upon irrelevant grounds 
any tribunal, legislative  body, or public official. 

        [Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 1985] 


# 10.112        Preserving identity of funds and property of 
             client. 

        (a)   All funds of clients paid to a practitioner or a 
practitioner's  firm, other than advances for costs and ex- penses, shall 
be deposited in one  or more identifiable bank accounts maintained in the 
United States or, in the  case of a practitioner having an office in a 
foreign country or registered  under w 10.6(c), in the United States or 
the foreign country. 

        (b)   No funds belonging to the practitioner or the practitioner's 
 firm shall be deposited in the bank accounts required by paragraph (a) of 
this  section except as follows: 

        (1)   Funds reasonably sufficient to pay bank charges may be 
deposited  therein. 

        (2)   Funds belonging in part to a client and in part presently or 
 potentially to the practitioner or the practitioner's firm must be 
deposited  therein, but the portion belonging to the practitioner or the 
practitioner's  firm may be withdrawn when due unless the right of the 
practitioner or the  practitioner's firm to receive it is disputed by the 
client, in which event  the disputed portion shall not be withdrawn until 
the dispute is finally resolved. 
        (c)   A practitioner shall: 

        (1)   Promptly notify a client of the receipt of the client's 
funds,  securities, or other properties. 

        (2)   Identify and label securities and properties of a client 
promptly  upon receipt and place them in a safe deposit box or other place 
of safekeeping  as soon as practicable. 

        (3)   Maintain complete records of all funds, securities, and 
other  properties of a client coming into the 




possession of the practitioner and render appropriate accounts to the 
client  regarding the funds, securities, or other properties. 

        (4)   Promptly pay or deliver to the client as requested by a 
client  the funds, securities, or other properties in the possession of 
the practitioner  which the client is entitled to receive. 

        [Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 1985] 


## 10.113 - 10.129 [Reserved] 


INVESTIGATIONS AND DISCIPLINARY 
PROCEEDINGS 


# 10.130  Reprimand, suspension or exclusion. 


        (a)   The Commissioner may, after notice and opportunity for a 
hearing, 
(1) reprimand or (2) suspend or exclude, either generally or in any 
particular  case, any individual, attorney, or agent shown to be 
incompetent or disreputable,  who is guilty of gross misconduct, or who 
violates a Disciplinary Rule. 
        (b)   Petitions to disqualify a practitioner in ex parte or inter 
 partes cases in the Office are not governed by ww 10.130 through 10.170 
and  will be handled on a case-by-case basis under such conditions as the 
Commissioner  deems appropriate. 

        [Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 1985] 


# 10.131  Investigations. 


        (a)   The Director is authorized to investigate possible 
violations  of Disciplinary Rules by practitioners. See w 10.2(b)(2). 

        (b)   Practitioners shall report and reveal to the Director any 
knowledge  or evidence required by 
w 10.24. A practitioner shall cooperate with the Director in connection 
with  any investigation under paragraph (a) of this section and with 
officials of  the Office in connection with any disciplinary proceeding 
instituted under  w 10.132(b). 

        (c)   Any nonpractitioner possessing knowledge or information 
concerning  a violation of a Disciplinary Rule by a practitioner may 
report the violation  to the Director. The Director may require that the 
report be presented in the  form of an affidavit. 

        [Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 1985] 


# 10.132  Initiating a disciplinary proceeding; reference 
             to 


an administrative law judge. 

        (a)   If after conducting an investigation under 
w 10.131(a) the Director is of the opinion that a practitioner has 
violated  a Disciplinary Rule, the Director shall, after complying where 
necessary with  the provisions of 5 U.S.C. 558(c), call a meeting of the 
Committee on Discipline.  The Committee on Discipline shall then determine 
as specified in w 10.4(b)  whether a disciplinary proceeding shall be 
instituted under paragraph (b) of  this section. 

        (b)   If the Committee on Discipline determines that probable 
cause  exists to believe that a practitioner has violated a Disciplinary 
Rule, the  Director shall institute a disciplinary proceeding by filing a 
complaint under w 10.134. The complaint shall be filed in the Office of 
the Director. A disciplinary  proceeding may result in: 

        (1)   A reprimand, or 

        (2)   Suspension or exclusion of a practitioner from practice 
before  the Office. 

        (c)   Upon the filing of a complaint under w 10.134, the 
Commissioner  will refer the disciplinary proceeding to an administrative 
law judge. 
        [Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 1985] 


# 10.133        Conference between Director and 

                        practitioner; resignation. 

        (a)   General. The Director may confer with a practitioner 
concerning  possible violations by the practitioner of a Disciplinary Rule 
whether or not  a disciplinary proceeding has been instituted. 

        (b)   Resignation. Any practitioner who is the subject of an 
investigation  under w 10.131 or against whom a complaint has been filed 
under w 10.134 may  resign from practice before the Office only by 
submitting with the Director  an affidavit stating his or her desire to 
resign. 

        (c)   If filed prior to the date set by the administrative law 
judge  for a hearing, the affidavit shall state that: 

        (1)   The resignation is freely and voluntarily proffered; 
        (2)   The practitioner is not acting under duress or coercion from 
 the Office; 

        (3)   The practitioner is fully aware of the implications of 
filing  the resignation; 

        (4)   The practitioner is aware (i) of a pending investigation or 
(ii)  of charges arising from the complaint alleging that he or she is 
guilty of  a violation of the Patent and Trademark Office Code of 
Professional Responsibility,  the nature of which shall be set forth by 
the practitioner to the satisfaction  of the Director; 



        (5)   The practitioner acknowledges that, if and when he or she 
applies  for reinstatement under w 10.160, the Director will conclusively 
presume, for  the limited purpose of determining the application for 
reinstatement, that: 
        (i)   The facts upon which the complaint is based are true and 
        (ii)    The practitioner could not have successfully defended 
himself  or herself against (A) charges predicated on the violation under 
investigation  or (B) charges set out in the complaint filed against the 
practitioner. 
        (d)   If filed on or after the date set by the administrative law 
judge  for a hearing, the affidavit shall make the statements required by 
paragraphs 
(b) (1) through (4) of this section and shall state that: 

        (1)   The practitioner acknowledges the facts upon which the 
complaint  is based are true; and 

        (2)   The resignation is being submitted because the practitioner 
could  not successfully defend himself or herself against (i) charges 
predicated on  the violation under investigation or (ii) charges set out 
in the complaint. 
        (e)   When an affidavit under paragraphs (b) or (c) of this 
section  is received while an investigation is pending, the Commissioner 
shall enter  an order excluding the practitioner "on consent." When an 
affidavit under paragraphs 
(b) or (c) of this section is received after a complaint under w 10.134 
has  been filed, the Director shall notify the administrative law judge. 
The administrative  law judge shall enter an order transferring the 
disciplinary proceeding to  the Commissioner and the Commissioner shall 
enter an order excluding the practitioner  "on consent." 

        (f)   Any practitioner who resigns from practice before the Office 
 under this section and who intends to reapply for admission to practice 
before  the Office must comply with the provisions of w 10.158. 

        (g)   Settlement. Before or after a complaint is filed under w 
10.134,  a settlement conference may occur between the Director and a 
practitioner for  the purpose of settling any disciplinary matter. If an 
offer of settlement  is made by the Director or the practitioner and is 
not accepted by the other,  no reference to the offer of settlement or its 
refusal shall be admissible  in evidence in the disciplinary proceeding 
unless both the Director and the  practitioner agree in writing. 

        [Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 1985] 


# 10.134  Complaint. 


        (a)     A complaint instituting a disciplinary proceeding shall: 
        (1)   Name the practitioner, who may then be referred to as the 
"respondent." 
        (2)   Give a plain and concise description of the alleged 
violations  of the Disciplinary Rules by the practitioner. 

        (3)   State the place and time for filing an answer by the 
respondent. 
        (4)   State that a decision by default may be entered against the 
respondent  if an answer is not timely filed. 

        (5)   Be signed by the Director. 

        (b)   A complaint will be deemed sufficient if it fairly informs 
the  respondent of any violation of the Disciplinary Rules which form the 
basis  for the disciplinary proceeding so that the respondent is able to 
adequately  prepare a defense. 

        [Added 50 FR 5182, Feb. 6, 1985, effective Mar. 8, 1985] 


# 10.135  Service of complaint. 


        (a)   A complaint may be served on a respondent in any of the 
following  methods: 

        (1)   By handing a copy of the complaint personally to the 
respondent,  in which case the individual handing the complaint to the 
respondent shall  file an affidavit with the Director indicating the time 
and place the complaint  was handed to the respondent. 

        (2)   By mailing a copy of the complaint by "Express Mail" or 
first-class  mail to: 

        (i)   A registered practitioner at the address for which separate 
notice  was last received by the Director or 

        (ii)    A nonregistered practitioner at the last address for the 
respondent  known to the Director. 

        (3)   By any method mutually agreeable to the Director and the 
respondent. 
        (b)   If a complaint served by mail under paragraph (a)(2) of this 
 section is returned by the U.S. Postal Service, the Director shall mail a 
second  copy of the complaint to the respondent. If the second copy of the 
complaint  is also returned by the U.S. Postal Service, the Director shall 
serve the respondent  by publishing an appropriate notice in the Official 
Gazette for four consecutive  weeks, in which case the time for answer 
shall be at least thirty days from  the fourth publication of the notice. 



        (c)   If a respondent is a registered practitioner, the Director 
may  serve simultaneously with the complaint a letter under w 10.11(b). 
The Director  may require the respondent to answer the w 10.11(b) letter 
within a period  of not less than 15 days. An answer to the 
w 10.11(b) letter shall constitute proof of service. If the respondent 
fails  to answer the w 10.11(b) letter, his or her name will be removed 
from the register  as provided by w 10.11(b). 

        (d) If the respondent is represented by an attorney under w 
10.140(a),  a copy of the complaint shall also be served on the attorney. 

        [Added 50 FR 5183, Feb. 6, 1985, effective Mar. 8, 1985] 


# 10.136        Answer to complaint. 


        (a)     Time for answer. An answer to a complaint shall be filed 
within  a time set in the complaint which shall be not less than thirty 
days. 
        (b)   With whom filed. The answer shall be filed in writing with 
the  administrative law judge. The time for filing an answer may be 
extended once  for a period of no more than thirty days by the 
administrative law judge upon  a showing of good cause provided a motion 
requesting an extension of time is  filed within thirty days after the 
date the complaint is filed by the Director.  A copy of the answer shall 
be served on the Director. 

        (c)   Content. The respondent shall include in the answer a 
statement  of the facts which constitute the grounds of defense and shall 
specifically  admit or deny each allegation set forth in the complaint. 
The respondent shall  not deny a material allegation in the complaint 
which the respondent knows  to be true or state that respondent is without 
sufficient information to form  a belief as to the truth of an allegation 
when in fact the respondent possesses  that information. The respondent 
shall also state affirmatively special matters  of defense. 

        (d)     Failure to deny allegations in complaint. Every allegation 
 in the complaint which is not denied by a respondent in the answer is 
deemed  to be admitted and may be considered proven. No further evidence 
in respect  of that allegation need be received by the administrative law 
judge at any  hearing. Failure to timely file an answer will constitute an 
admission of the  allegations in the complaint. 

        (e)    Reply by the Director. No reply to an answer is required by 
 the Director and any affirmative defense in the answer shall be deemed to 
be  denied. The Director may, however, file a reply if he or she chooses 
or if  ordered by the administrative law judge. 

        [Added 50 FR 5183, Feb. 6, 1985, effective Mar. 8, 1985; amended 
50  FR 25073, June 17, 1985, ] 


# 10.137  Supplemental complaint. 


        False statements in an answer may be made the basis of a 
supplemental  complaint. 

        [Added 50 FR 5183, Feb. 6, 1985, effective Mar. 8, 1985] 


# 10.138  Contested case. 


        Upon the filing of an answer by the respondent, a disciplinary 
proceeding  shall be regarded as a contested case within the meaning of 35 
U.S.C. 24. Evidence  obtained by a subpoena issued under 35 U.S.C. 24 
shall not be admitted into  the record or considered unless leave to 
proceed under 35 U.S.C. 24 was previously  authorized by the 
administrative law judge. 

        [Added 50 FR 5183, Feb. 6, 1985, effective Mar. 8, 1985] 


# 10.139  Administrative law judge; appointment; 

                        responsibilities; review of interlocutory 
                        orders; stays. 

        (a) Appointment. An administrative law judge, appointed under 5 
U.S.C.  3105, shall conduct disciplinary proceedings as provided by this 
part. 
        (b)   Responsibilities. The administrative law judge shall have 
authority  to: 

        (1)   Administer oaths and affirmations; 

        (2)    Make rulings upon motions and other requests; 

        (3)   Rule upon offers of proof, receive relevant evidence, and 
examine  witnesses; 

        (4)   Authorize the taking of a deposition of a witness in lieu of 
 personal appearance of the witness before the administrative law judge; 
        (5)   Determine the time and place of any hearing and regulate its 
 course and conduct; 

        (6)   Hold or provide for the holding of conferences to settle or 
simplify  the issues. 

        (7)   Receive and consider oral or written arguments on facts and 
law; 
        (8)   Adopt procedures and modify procedures from time to time as 
occasion  requires for the orderly disposition of proceedings; 

        (9)   Make initial decisions under w 10.154; and 

        (10)    Perform acts and take measures as necessary to promote the 
 efficient and timely conduct of any disciplinary proceeding. 



        (c)   Time for making initial decision. The administrative law 
judge  shall set times and exercise control over a disciplinary proceeding 
such that  an initial decision under w 10.154 is normally issued within 
six months of  the date a complaint is filed. The administrative law judge 
may, however, issue  an initial decision more than six months after a 
complaint is filed if in his  or her opinion there exist unusual 
circumstances which preclude issuance of  an initial decision within six 
months of the filing of the complaint. 
        (d)   Review of interlocutory orders. An interlocutory order of an 
 administrative law judge will not be reviewed by the Commissioner except: 
        (1)   when the administrative law judge shall be of the opinion 
(i)  that the interlocutory order involves a controlling question of 
procedure or  law as to which there is a substantial ground for a 
difference of opinion and 
(ii) that an immediate decision by the Commissioner may materially advance 
 the ultimate termination of the disciplinary proceeding; or 

        (2)   in an extraordinary situation where justice requires review. 
        (e)   Stays pending review of interlocutory order. If the Director 
 or a respondent seeks review of an interlocutory order of an 
administrative  law judge under paragraph (b)(2) of this section, any time 
period set for taking  action by the administrative law judge shall not be 
stayed unless ordered by  the Commissioner or the administrative law judge. 

        [Added 50 FR 5183, Feb. 6, 1985, effective Mar. 8, 1985;  amended 
50  FR 25073, June 17, 1985] 


# 10.140  Representative for Director or respondent. 


        (a)   A respondent may be represented before the Office in 
connection  with an investigation or disciplinary proceeding by an 
attorney. The attorney  shall file a written declaration that he or she is 
an attorney within the meaning  of w 10.1(c) and shall state: 

        (1) The address to which the attorney wants correspondence related 
 to the investigation or disciplinary proceeding sent; and 

        (2)   A telephone number where the attorney may be reached during 
normal  business hours. 

        (b)   The Commissioner shall designate at least two associate 
solicitors  in the Office of the Solicitor to act as representatives for 
the Director in  disciplinary proceedings. In prosecuting disciplinary 
proceedings, the designated  associate solicitors shall not involve the 
Solicitor or the Deputy Solicitor.  The Solicitor and the Deputy Solicitor 
shall remain insulated from the investigation  and prosecution of all 
disciplinary proceedings in order that they shall be  available as counsel 
to the Commissioner in deciding disciplinary proceedings. 
        [Added 50 FR 5183, Feb. 6, 1985, effective Mar. 8, 1985] 


# 10.141        Filing of papers. 


        (a)     The provisions of w 1.8 of this subchapter do not apply to 
 disciplinary proceedings. 

        (b)   All papers filed after the complaint and prior to entry of 
an  initial decision by the administrative law judge shall be filed with 
the administrative  law judge at an address or place designated by the 
administrative law judge.  All papers filed after entry of an initial 
decision by the administrative law  judge shall be filed with the 
Director. The Director shall promptly forward  to the Commissioner any 
paper which requires action under this part by the  Commissioner. 

        (c)   The administrative law judge or the Director may provide for 
 filing papers and other matters by hand or "Express Mail." 

        [Added 50 FR 5184, Feb. 6, 1985, effective Mar. 8, 1985] 


# 10.142        Service of papers. 


        (a)   All papers other than a complaint shall be served on a 
respondent  represented by an attorney by: 

        (1)   Delivering a copy of the paper to the office of the 
attorney;  or 

        (2)   Mailing a copy of the paper by first-class mail or "Express 
Mail"  to the attorney at the address provided by the attorney under w 
10.140(a)(1);  or 

        (3)   Any other method mutually agreeable to the attorney and a 
representative  for the Director. 

        (b)   All papers other than a complaint shall be served on a 
respondent  who is not represented by an attorney by: 

        (1)   Delivering a copy of the paper to the respondent; or 
        (2)   Mailing a copy of the paper by first-class mail or "Express 
Mail"  to the respondent at the address to which a complaint may be served 
or such  other address as may be designated in writing by the respondent; 
or 



        (3)   Any other method mutually agreeable to the respondent and a 
representative  of the Director. 

        (c)   A respondent shall serve on the representative for the 
Director  one copy of each paper filed with the ad- ministrative law judge 
or the Director.  A paper may be served on the representative of the 
Director by: 

        (1)   Delivering a copy of the paper to the representative; or 
        (2)   Mailing a copy of the paper by first-class mail or "Express 
Mail"  to an address designated in writing by the representative; or 

        (3)   Any other method mutually agreeable to the re- spondent and 
the  representative. 

        (d)   Each paper filed in a disciplinary proceeding shall contain 
therein  a certificate of service indicating: 

        (1)   The date of which service was made; and 

        (2)   The method by which service was made. 

        (e)   The administrative law judge or the Commissioner may require 
 that a paper be served by hand or by "Express Mail." 

        (f)   Service by mail is completed when the paper mailed in the 
United  States is placed into the custody of the U.S. Postal Service. 

        [Added 50 FR 5184, Feb. 6, 1985, effective Mar. 8, 1985] 


# 10.143        Motions. 


        Motions may be filed with the administrative law judge. The 
administrative  law judge will determine on a case-by-case basis the time 
period for response  to a motion and whether replies to responses will be 
authorized. No motion  shall be filed with the administrative law judge 
unless such motion is supported  by a written statement by the moving 
party that the moving party or attorney  for the moving party has 
conferred with the opposing party or attorney for  the opposing party in 
an effort in good faith to resolve by agreement the issues  raised by the 
motion and has been unable to reach agreement. If issues raised  by a 
motion are resolved by the parties prior to a decision on the motion by 
the administrative law judge, the parties shall promptly notify the 
administrative  law judge. 

        [Added 50 FR 5184, Feb. 6, 1985, effective Mar. 8, 1985] 


# 10.144        Hearings. 


        (a)   The administrative law judge shall preside at hearings in 
disciplinary  proceedings. Hearings will be stenographically recorded and 
transcribed and  the testimony of witnesses will be received under oath or 
affirmation. The  administrative law judge shall conduct hearings in 
accordance with 5 U.S.C.  556. A copy of the transcript of the hearing 
shall become part of the record.  A copy of the transcript shall be 
provided to the Director and the respondent  at the expense of the Office. 

        (b)   If the respondent to a disciplinary proceeding fails to 
appear  at the hearing after a notice of hearing has been given by the 
administrative  law judge, the administrative law judge may deem the 
respondent to have waived  the right to a hearing and may proceed with the 
hearing in the absence of the  respondent. 

        (c)   A hearing under this section will not be open to the public 
except  that the Director may grant a request by a respondent to open his 
or her hearing  to the public and make the record of the disciplinary 
proceeding available  for public inspection, provided, Agreement is 
reached in advance to exclude  from public disclosure information which is 
privileged or confidential under  applicable laws or regulations. If a 
disciplinary proceeding results in disciplinary  action against a 
practitioner, and subject to w 10.159(c), the record of the  entire 
disciplinary proceeding, including any settlement agreement, will be 
available for public inspection. 

        [Added 50 FR 5184, Feb. 6, 1985, effective Mar. 8, 1985] 


# 10.145        Proof; variance; amendment of pleadings. 


        In case of a variance between the evidence and the allegations in 
a  complaint, answer, or reply, if any, the administrative law judge may 
order  or authorize amendment of the complaint, answer, or reply to 
conform to the  evidence. Any party who would otherwise be prejudiced by 
the amendment will  be given reasonable opportunity to meet the 
allegations in the complaint, answer,  or reply, as amended, and the 
administrative law judge shall make findings  on any issue presented by 
the complaint, answer, or reply as amended. 
        [Added 50 FR 5184, Feb. 6, 1985, effective Mar. 8, 1985] 


## 10.146 - 10.148 [Reserved] 



# 10.149        Burden of proof. 


        In a disciplinary proceeding, the Director shall have the burden 
of  proving his or her case by clear and convincing evidence and a 
respondent shall  have the burden of proving any affirmative defense by 
clear and convincing  evidence. 

        [Added 50 FR 5184, Feb. 6, 1985, effective Mar. 8, 1985] 





# 10.150        Evidence. 


        (a)   Rules of evidence. The rules of evidence prevailing in 
courts  of law and equity are not controlling in hearings in disciplinary 
proceedings.  However, the ad- ministrative law judge shall exclude 
evidence which is irrelevant,  immaterial, or unduly repetitious. 

        (b)   Depositions. Depositions of witnesses taken pursuant to w 
10.151  may be admitted as evidence. 

        (c)   Government documents. Official documents, records, and 
papers  of the Office are admissible without extrinsic evidence of 
authenticity. These  documents, records, and papers may be evidenced by a 
copy certified as correct  by an employee of the Office. 

        (d)   Exhibits. If any document, record, or other paper is 
introduced  in evidence as an exhibit, the administrative law judge may 
authorize the withdrawal  of the exhibit subject to any conditions the 
administrative law judge deems  appropriate. 

        (e)   Objections. Objections to evidence will be in short form, 
stating  the grounds of objection. Objections and rulings on objections 
will be a part  of the record. No exception to the ruling is necessary to 
preserve the rights  of the parties. 

        [Added 50 FR 5184, Feb. 6, 1985, effective Mar. 8, 1985] 


# 10.151        Depositions. 


        (a)   Depositions for use at the hearing in lieu of personal 
appearance  of a witness before the administrative law judge may be taken 
by respondent  or the Director upon a showing of good cause and with the 
approval of, and  under such conditions as may be deemed appropriate by, 
the administrative law  judge.  Depositions may be taken upon oral or 
written questions, upon not less  than ten days' written notice to the 
other party, before any officer authorized  to administer an oath or 
affirmation in the place where the deposition is to  be taken. The 
requirement of ten days' notice may be waived by the parties  and 
depositions may then be taken of a witness at a time and place mutually 
agreed to by the parties. When a deposition is taken upon written 
questions,  copies of the written questions will be served upon the other 
party with the  notice and copies of any written cross-questions will be 
served by hand or  "Express Mail" not less than five days before the date 
of the taking of the  deposition unless the parties mutually agree 
otherwise. A party on whose behalf  a deposition is taken shall file a 
copy of a transcript of the deposition signed  by a court reporter with 
the administrative law judge and shall serve one copy  upon the opposing 
party. Expenses for a court reporter and preparing, serving,  and filing 
depositions shall be borne by the party at whose instance the deposition 
is taken. 

        (b)   When the Director and the respondent agree in writing, a 
deposition  of any witness who will appear voluntarily may be taken under 
such terms and  conditions as may be mutually agreeable to the Director 
and the respondent.  The deposition shall not be filed with the 
administrative law judge and may  not be admitted in evidence before the 
administrative law judge unless he or  she orders the deposition admitted 
in evidence. The admissibility of the deposition  shall lie within the 
discretion of the administrative law judge who may reject  the deposition 
on any reasonable basis including the fact that demeanor is  involved and 
that the witness should have been called to appear personally  before the 
administrative law judge. 

. [Added 50 FR 5185, Feb. 6, 1985, effective Mar. 8, 1985] 


# 10.152        Discovery. 


        Discovery shall not be authorized except as follows: 

        (a)   After an answer is filed under w 10.136 and when a party 
establishes  in a clear and convincing manner that discovery is necessary 
and relevant,  the administrative law judge, under such conditions as he 
or she deems appropriate,  may order an opposing party to: 

        (1)   Answer a reasonable number of written requests for admission 
 or interrogatories; 

        (2)   Produce for inspection and copying a reasonable number of 
documents;  and 

        (3)   Produce for inspection a reasonable number of things other 
than  documents. 

        (b)   Discovery shall not be authorized under paragraph (a) of 
this  section of any matter which: 

        (1)   Will be used by another party solely for impeachment or 
cross-examination; 
        (2)   Is not available to the party under 35 U.S.C. 
w 122; 

        (3)   Relates to any disciplinary proceeding commenced in the 
Patent  and Trademark Office prior to March 8, 1985; 

        (4)   Relates to experts except as the administrative law judge 
may  require under paragraph (e) of this section. 

        (5)   Is privileged; or 



        (6)   Relates to mental impressions, conclusions, opinions, or 
legal  theories of any attorney or other representative of a party. 

        (c)   The administrative law judge may deny discovery requested 
under  paragraph (a) of this section if the discovery sought: 

        (1)   Will unduly delay the disciplinary proceeding; 

        (2)   Will place an undue burden on the party required to produce 
the  discovery sought; or 

        (3)   Is available (i) generally to the public, (ii) equally to 
the  parties; or (iii) to the party seeking the discovery through another 
source. 
        (d)    Prior to authorizing discovery under paragraph (a) of this 
section,  the administrative law judge shall require the party seeking 
discovery to file  a motion (w 10.143) and explain in detail for each 
request made how the discovery  sought is necessary and relevant to an 
issue actually raised in the complaint  or the answer. 

        (e)   The administrative law judge may require parties to file and 
 serve, prior to any hearing, a pre-hearing statement which contains: 
        (1)   A list (together with a copy) of all proposed exhibits to be 
 used in connection with a party's case-in-chief, 

        (2)   A list of proposed witnesses, 

        (3)   As to each proposed expert witness: 

        (i)   An identification of the field in which the individual will 
be  qualified as an expert; 

        (ii)    A statement as to the subject matter on which the expert 
is  expected to testify; and 

        (iii)     A statement of the substance of the facts and opinions 
to  which the expert is expected to testify, 

        (4)   The identity of government employees who have investigated 
the  case, and 

        (5)   Copies of memoranda reflecting respondent's own statements 
to  administrative representatives. 

        (f)   After a witness testifies for a party, if the opposing party 
 requests, the party may be required to produce, prior to 
cross-examination,  any written statement made by the witness. 

        [Added 50 FR 5185, Feb. 6, 1985, effective Mar. 8, 1985] 


# 10.153        Proposed findings and conclusions; post- 

                        hearing memorandum. 

        Except in cases when the respondent has failed to answer the 
complaint,  the administrative law judge, prior to making an initial 
decision, shall afford  the parties a reasonable opportunity to submit 
proposed findings and conclusions  and a post-hearing memorandum in 
support of the proposed findings and con-  clusions. 

        [Added 50 FR 5185, Feb. 6, 1985, effective Mar. 8, 1985] 


# 10.154        Initial decision of administrative law judge. 


        (a)   The administrative law judge shall make an initial decision 
in  the case. The decision will include (1) a statement of findings and 
conclusions,  as well as the reasons or basis therefor with appropriate 
references to the  record, upon all the material issues of fact, law, or 
discretion presented  on the record, and (2) an order of suspension or 
exclusion from practice, an  order of reprimand, or an order dismissing 
the complaint. The administrative  law judge shall file the decision with 
the Director and shall transmit a copy  to the representative of the 
Director and to the respondent. In the absence  of an appeal to the 
Commissioner, the decision of the administrative law judge  will, without 
further proceedings, become the decision of the Commissioner  of Patents 
and Trademarks thirty (30) days from the date of the decision of  the 
administrative law judge. 

        (b)   The initial decision of the administrative law judge shall 
explain  the reason for any penalty or reprimand, suspension or exclusion. 
In determining  any penalty, the following should normally be considered: 

        (1)   The public interest; 

        (2)   The seriousness of the violation of the Disciplinary Rule; 
        (3)   The deterrent effects deemed necessary; 

        (4)   The integrity of the legal profession; and 

        (5)   Any extenuating circumstances. 

        [Added 50 FR 5185, Feb. 6, 1985, effective Mar. 8, 1985; amended 
50  FR 25073, June 17, 1985] 


# 10.155        Appeal to the Commissioner. 


        (a)   Within thirty (30) days from the date of the initial 
decision  of the administrative law judge under 
w 10.154, either party may appeal to the Commissioner.  If an appeal is 
taken,  the time for filing a cross-appeal expires (1) 14 days after the 
date of service  of the appeal pursuant to # 10.142 or (2) 30 days after 
the date of the initial  decision of the administrative law judge, 
whichever is later. An appeal or  cross-appeal by the respondent will be 
filed and served with the Director in  duplicate and will include 
exceptions to the decisions of the administrative  law judge and 
supporting reasons for those exceptions. If the Director files  the appeal or 




cross-appeal, the Director shall serve on the other party a copy of the 
appeal  or cross-appeal. The other party to an appeal or cross-appeal may 
file a reply  brief. A respondent's reply brief shall be filed and served 
in duplicate with  the Director. The time for filing any reply brief 
expires thirty (30) days  after the date of service pursuant to w 10.142 
of an appeal, cross-appeal or  copy thereof. If the Director files the 
reply brief, the Director shall serve  on the other party a copy of the 
reply brief. Upon the filing of an appeal,  cross-appeal, if any, and 
reply briefs, if any, the Director shall transmit  the entire record to 
the Commissioner. 

        (b)   The appeal will be decided by the Commissioner on the record 
 made before the administrative law judge. 

        (c)   The Commissioner may order reopening of a disciplinary 
proceeding  in accordance with the principles which govern the granting of 
new trials.  Any request to reopen a disciplinary proceeding on the basis 
of newly discovered  evidence must demonstrate that the newly discovered 
evidence could not have  been discovered by due diligence. 

        (d)   In the absence of an appeal by the Director, failure by the 
respondent  to appeal under the provisions of this section shall be deemed 
to be both acceptance  by the respondent of the initial decision and 
waiver by the respondent of the  right to further administrative or 
judicial review. 

        [Added 50 FR 5185, Feb. 6, 1985, effective Mar. 8, 1985; para. (d) 
 added, 54 FR 26026, June 21, 1989, effective Aug. 1, 1989; para. (a) 
amended,  60 FR 64125, Dec. 14, 1995, effective Jan. 16, 1996] 


# 10.156        Decision of the Commissioner. 


        (a)   An appeal from an initial decision of the administrative law 
 judge shall be decided by the Commissioner. The Commissioner may affirm, 
reverse,  or modify the initial decision or remand the matter to the 
administrative law  judge for such further proceedings as the Commissioner 
may deem appropriate.  Subject to paragraph (c) of this section, a 
decision by the Commissioner does  not become a final agency action in a 
disciplinary proceeding until 20 days  after it is entered. In making a 
final decision, the Commissioner shall review  the record or these 
portions of the record as may be cited by the parties in  order to limit 
the issues. The Commissioner shall transmit a copy of the final  decision 
to the Director and to the respondent. 

        (b)   A final decision of the Commissioner may dismiss a 
disciplinary  proceeding, reprimand a practitioner, or may suspend or 
exclude the practitioner  from practice before the Office. 

        (c)   A single request for reconsideration or modification of the 
Commissioner's  decision may be made by the respondent or the Director if 
filed within 20 days  from the date of entry of the decision. Such a 
request shall have the effect  of staying the effective date of the 
decision. The decision by the Commissioner  on the request is a final 
agency action in a disciplinary proceeding and is  effective on its date 
of entry. 

        [Added 50 FR 5186, Feb. 6, 1985, effective Mar. 8, 1985; para. (a) 
 amended and para. (c) added, 54 FR 6660, Feb. 14, 1989] 


# 10.157        Review of Commissioner's final decision. 


        (a)   Review of the Commissioner's final decision in a 
disciplinary  case may be had, subject to w 10.155(d), by a petition filed 
in the United  States District Court for the District of Columbia. See 35 
U.S.C. 32 and Local  Rule 213 of the United States District Court for the 
District of Columbia. 
        (b) The Commissioner may stay a final decision pending review of 
the  Commissioner's final decision. 

        [Added 50 FR 5186, Feb. 6, 1985, effective Mar. 8, 1985; amended 
53  FR 13120, Apr. 21, 1988; para. (a) amended, 54 FR 26026, June 21, 
1989, effective  Aug. 1, 1989] 


# 10.158        Suspended or excluded practitioner. 


        (a)   A practitioner who is suspended or excluded from practice 
before  the Office under w 10.156(b) shall not engage in unauthorized 
practice of patent,  trademark and other non- patent law before the Office. 

        (b)   Unless otherwise ordered by the Commissioner, any 
practitioner  who is suspended or excluded from practice before the Office 
under w 10.156(b)  shall: 

        (1)   Within 30 days of entry of the order of suspension or 
exclusion,  notify all bars of which he or she is a member and all clients 
of the practitioner  for whom he or she is handling matters before the 
Office in separate written  communications of the suspension or exclusion 
and shall file a copy of each  written communication with the Director. 

        (2)   Within 30 days of entry of the order of suspension or 
exclusion,  surrender a client's active Office case files to (i) the 
client or (ii) another  practitioner designated by the client. 

        (3)   Not hold himself or herself out as authorized to practice 
law  before the Office. 



        (4)   Promptly take any necessary and appropriate steps to remove 
from  any telephone, legal, or other directory any advertisement, 
statement, or representation  which would reasonably suggest that the 
practitioner is authorized to practice  patent, trademark, or other 
non-patent law before the Office, and within 30  days of taking those 
steps, file with the Director an affidavit describing  the precise nature 
of the steps taken. 

        (5)   Not advertise the practitioner's availability or ability to 
perform  or render legal services for any person having immediate, 
prospective, or pending  business before the Office. 

        (6)   Not render legal advice or services to any person having 
immediate,  prospective, or pending business before the Office as to that 
business. 
        (7)   Promptly take steps to change any sign identifying a 
practitioner's  or the practitioner's firm's office and practitioner's or 
the practitioner's  firm's stationery to delete therefrom any 
advertisement, statement, or representation  which would reasonably 
suggest that the practitioner is authorized to practice  law before the 
Office. 

        (8)   Within 30 days, return to any client any unearned funds, 
including  any unearned retainer fee, and any securities and property of 
the client. 
        (c)   A practitioner who is suspended or excluded from practice 
before  the Office and who aids another practitioner in any way in the 
other practitioner's  practice of law before the Office, may, under the 
direct supervision of the  other practitioner, act as a paralegal for the 
other practitioner or perform  other services for the other practitioner 
which are normally performed by lay-persons,  provided: 

        (1)   The practitioner who is suspended or excluded is: 

        (i)   A salaried employee of: 

        (A)         The other practitioner; 

        (B)         The other practitioner's law firm; or 

        (C)         A client-employer who employs the other practitioner 
as  a salaried employee; 

        (2)   The other practitioner assumes full professional 
responsibility  to any client and the Office for any work performed by the 
suspended or excluded  practitioner for the other practitioner; 

        (3)   The suspended or excluded practitioner, in connection with 
any  immediate, prospective, or pending business before the Office, does 
not: 
        (i)   Communicate directly in writing, orally, or otherwise with a 
 client of the other practitioner; 

        (ii)    Render any legal advice or any legal services to a client 
of  the other practitioner; or 

        (iii)     Meet in person or in the presence of the other 
practitioner  with: 

        (A)         Any Office official in connection with the prosecution 
 of any patent, trademark, or other case; 

        (B)         Any client of the other practitioner, the other 
practitioner's  law firm, or the client-employer of the other practitioner; 

        (C)         Any witness or potential witness which the other 
practitioner,  the other practitioner's law firm, or the other 
practitioner's client-employer  may or intends to call as a witness in any 
proceeding before the Office. The  term "witness" includes individuals who 
will testify orally in a proceeding  before, or sign an affidavit or any 
other document to be filed in, the Office. 
        (d)   When a suspended or excluded practitioner acts as a 
paralegal  or performs services under paragraph (c) of this section, the 
suspended or  excluded practitioner shall not thereafter be reinstated to 
practice before  the Office unless: 

        (1)   The suspended or excluded practitioner shall have filed with 
 the Director an affidavit which (i) explains in detail the precise nature 
of  all paralegal or other services performed by the suspended or excluded 
practitioner  and (ii) shows by clear and convincing evidence that the 
suspended or excluded  practitioner has complied with the provisions of 
this section and all Disciplinary  Rules, and 

        (2)   The other practitioner shall have filed with the Director a 
written  statement which (i) shows that the other practitioner has read 
the affidavit  required by subparagraph (d)(1) of this section and that 
the other practitioner  believes every statement in the affidavit to be 
true and (ii) states why the  other practitioner believes that the 
suspended or excluded practitioner has  complied with paragraph (c) of 
this section. 

        [Added 50 FR 5186, Feb. 6, 1985, effective Mar. 8, 1985] 


# 10.159        Notice of suspension or exclusion. 


        (a)   Upon issuance of a final decision reprimanding a 
practitioner  or suspending or excluding a practitioner from practice 
before the Office,  the Director shall give notice of the final decision 
to appropriate employees  of the Office and to interested departments, 
agencies, and courts of the United  States. The Director shall also give 




notice to appropriate authorities of any State in which a practitioner is 
known  to be a member of the bar and any appropriate bar association. 

        (b)   The Director shall cause to be published in the Official 
Gazette  the name of any practitioner suspended or excluded from practice. 
Unless otherwise  ordered by the Commissioner, the Director shall publish 
in the Official Gazette  the name of any practitioner reprimanded by the 
Commissioner. 

        (c)   The Director shall maintain records, which shall be 
available  for public inspection, of every disciplinary proceeding where 
practitioner  is reprimanded, suspended, or excluded unless the 
Commissioner orders that  the proceeding be kept confidential. 

        [Added 50 FR 5186, Feb. 6, 1985, effective Mar. 8, 1985] 


# 10.160        Petitioner for reinstatement. 


        (a)   A petition for reinstatement of a practitioner suspended for 
 a period of less than five years will not be considered until the period 
of  suspension has been passed. 

        (b)   A petition for reinstatement of a practitioner excluded from 
 practice will not be considered until five years after the effective date 
of  the exclusion. 

        (c)   An individual who has resigned under w 10.133 or who has 
been  suspended or excluded may file a petition for reinstatement. The 
Director may  grant a petition for reinstatement when the individual makes 
a clear and convincing  showing that the individual will  conduct himself 
or herself in accordance  with the regulations of this part and that 
granting a petition for reinstatement  is not contrary to the public 
interest. As a condition to reinstatement, the  Director may require the 
individual to: 

        (1)   Meet the requirements of w 10.7, including taking and 
passing  an examination under w 10.7(b) and 

        (2)   Pay all or a portion of the costs and expenses, not to 
exceed  $1,500, of the disciplinary proceeding which led to suspension or 
exclusion. 
        (d)   Any suspended or excluded practitioner who has violated the 
provisions  of w 10.158 during his or her period of suspension or 
exclusion shall not be  entitled to 

reinstatement until such time as the Director is satisfied that a period 
of  suspension equal in time to that ordered by the Commissioner or 
exclusion for  five years has passed during which the suspended or 
excluded practitioner has  complied with the provisions of w 10.158. 

        (e)   Proceedings on any petition for reinstatement shall be open 
to  the public. Before reinstating any suspended or excluded practitioner, 
the  Director shall publish in the Official Gazette a notice of the 
suspended or  excluded practitioner's petition for reinstatement and shall 
permit the public  a reasonable opportunity to comment or submit evidence 
with respect to the  petition for reinstatement. 

        [Added 50 FR 5186, Feb. 6, 1985, effective Mar. 8, 1985] 


# 10.161        Savings clause. 


        (a)   A disciplinary proceeding based on conduct engaged in prior 
to  the effective date of these regulations may be instituted subsequent 
to such  effective date, if such conduct would continue to justify 
suspension or exclusion  under the provisions of this part. 

        (b)   No practitioner shall be subject to a disciplinary 
proceeding  under this part based on conduct engaged in before the 
effective date hereof  if such conduct would not have been subject to 
disciplinary action before such  effective date. 

        [Added 50 FR 5186, Feb. 6, 1985, effective Mar. 8, 1985] 


## 10.162 - 10.169 [Reserved] 



# 10.170        Suspension of rules. 


        (a)   In an extraordinary situation, when justice requires, any 
requirement  of the regulations of this part which is not a requirement of 
the statutes  may be suspended or waived by the Commissioner or the 
Commissioner's designee,  sua sponte, or on petition of any party, 
including the Director or the Director's  representative, subject to such 
other requirements as may be imposed. 
        (b)   Any petition under this section will not stay a disciplinary 
 proceeding unless ordered by the Commissioner or an administrative law 
judge. 
        [Added 50 FR 5186, Feb. 6, 1985, effective Mar. 8, 1985] 

D D D D D D D D D D D D D D D D D D D D D D D D D D D D D D D 





INDEX - RULES RELATING TO 
PRACTICE BEFORE THE PATENT 
AND TRADEMARK OFFICE 

A 

Address change      10.11 

Advertising   10.31, 10.32 

Agreements restricting practice       10.38 

Aliens      10.6, 10.9 

Applicant for patent, Representative of       1.31, 10.10 

Applicant for trademark, Representative of  .2.11 

Attorneys, Recognition of to practice in trademark 

cases     10.14 

Attorneys, Registration of to practice in patent 

cases     10.6, 10.7 

B 

Breach of trust       10.23 

Business transactions or relations with client      10.65 

C 

Candidate for judicial office     10.103 

Canons and disciplinary rules     10.20 - 10.112 

Certificate of mailing      1.8, 10.23, 10.141 

Circumventing a disciplinary rule, amendment    10.23 

Code of Professional Responsibility   10.20 - 10.112 

Coercion, Use of        10.23 

Committee on Discipline       10.4 

Committee on Enrollment       10.3 

Communicating with person having adverse interest 10.67 

Communications concerning practitioner's service        10.31 

Compensation for legal services       10.68 

Competence  10.76, 10.77 

Complaint instituting disciplinary proceedings      10.134 

Concealment of material information   10.23 

Conduct in proceeding before Office   10.89 

Conduct prejudicial to the administration of justice    10.23 

Conflict of interest    10.66 

Conviction of criminal offense      10.23 

D 

Deceit      10.23 

Decisions of the Commissioner     10.156, 10.157 

Definitions: 

Affidavit 10.1 

Agent     10.6 

Application   10.1 

Canon     10.20 

Confidence  10.57 

Differing interests   10.1 

Director of Enrollment and Discipline     10.1 

Disciplinary rule 10.20 

(Definitions:) 

Employee of a tribunal      10.1 

Excessive legal fees    10.36 

Excluded practitioner     10.1 

Giving information  10.1 

Invention development services      10.23 

Law firm        10.1 

Lawyer      10.1 

Legal Counsel     10.1 

Legal profession        10.1 

Legal service     10.1 

Legal system    10.1 

Non-practitioner        10.1 

Office      10.1 

Person      10.1 

Practitioner    10.1 

Proceeding before the Office    10.1 

Professional legal corporation      10.1 

Registration    10.1 

Respondent  10.134 

Secret      10.33, 10.57 

State     10.1 

Suspended practitioner      10.1 

Tribunal        10.1 

United States     10.1 

Designation as registered attorney or agent   10.34 

Direct contact with prospective clients       10.33 

Director of Enrollment and Discipline: 

Appointment   10.2 

Duties      10.2 

Review of decisions of the Director   10.2 

Disbarment from practice on unethical grounds     10.130 

Discharge of attorney or agent by client        10.40 

Disciplinary proceedings and investigations: 

Administrative Law Judge        10.139 

Administrative Procedures Act     10.132, 10.144 

Review of interlocutory orders by 

Administrative Law Judge        10.139 

Amendment of complaint      10.145 

Amendment of pleadings      10.145 

Answer to complaint   10.136 

Appeal of initial decision of Administrative 

Law Judge 10.155 

Burden of proof       10.149 

Certificate of mailing      1.8, 10.141 

Complaint 10.134 

Contested case      10.138 

Deliberations of Committee on Discipline        10.4 

Discovery (see also Discovery in Disciplinary 

Proceedings)    10.152 

Exception to ruling   10.150 

Filing papers after complaint filed   10.141 

Hearings before Administrative Law Judge        10.144 



(Disciplinary proceedings and investigations:) 

Initial decision of Administrative Law 

Judge     10.139, 10.154 

Initiating disciplinary proceeding  10.132 

Investigations of violations of disciplinary rules  10.131 

Notice of suspension or exclusion of practitioner 10.159 

Objections to evidence      10.150 

Post hearing memorandum       10.153 

Pre-hearing statement     10.153 

Reinstatement of suspended or excluded 

practitioner    10.160 

Reprimand of registered attorney or 

agent     10.130, 10.132 

Resignation of practitioner   10.133 

Review of Commissioner's final decision       10.157 

Review of decision denying reinstatement of 

 practitioner     10.2 

Savings clause      10.161 

Service of complaint    10.135 

Settlement of complaint       10.133 

Stay pending review of interlocutory order  10.139 

Supplemental complaint      10.137 

Disciplinary rule violation 

Disclosure of     10.23, 10.24, 10.84, 

10.85, 10.131 

Discourteous conduct    10.89 

Discovery in disciplinary proceedings: 

Copying of documents    10.152 

Cross-examination 10.152 

Deliberations of committee on enrollment        10.4 

Depositions   10.151 

Evidence        10.150, 10.152 

Impeachment   10.152 

Inspection of documents       10.152 

Interrogatories       10.152 

Motions filed with Administrative Law 

Judge     10.143, 10.152 

Privileged information      10.152 

Undue delay in proceedings  10.152 

Division of legal fees      10.37 

Duress, Use of      10.23 

Duty to make counsel available      10.30 

E 

Employment: 

Acceptance  10.39 

Failure to carry out contract     10.84 

Refusing employment   10.62, 10.63, 10.66 

Withdrawal from employment  10.40, 10.63, 10.66 

Exception to ruling   10.151 

Excessive legal fees    10.36 

Exclusion of practitioner 10.130, 10.132, 10.158 

F 

Failure to disclose material fact with regard to 

registration    10.22 

Failure to notify client        10.23 

False accusations 10.23 

False statements concerning officials     10.102 

Favors, Improperly bestowing    10.23 

Fees: 

In general  1.21 

Petition to review decision of Director of Enrollment 

and Discipline      10.2 

Registration    10.8 

Registration examination        10.7 

Fees: 

Reinstatement     10.11 

Request regrade of examination      10.6 

Fees for legal services       10.36 

Firm name, Use of 10.35 

Fitness to practice before the Office     10.23 

Foreigners  10.6, 10.9, 10.14 

Former Patent and Trademark Office 

employees 10.10, 10.23 

Fraud or inequitable conduct    10.23, 10.85 

Frivolous complaint   10.23 

Funds of client, Preserving identity of       10.112 

 G 

Gift,. Improperly bestowing   10.23 

Government employees, Registration of to 

practice in patent cases        10.10 

I 

Illegal conduct involving moral turpitude 10.23 

Illegal fees for services 10.36 

Improper alteration of patent application 10.23 

Improper execution of oath or declaration 10.23 

Improper influence  10.23 

Improper signature  10.18, 10.23 

Improperly bestowing thing of value   10.23 

Incompetence    10.77, 10.78 

Indecent statement, Making of .       10.23 

Independent professional judgment, 

 Exercise of    10.61, 10.62, 10.66, 10.68 

Individual unqualified in respect to character, 

education, etc.       10.7, 10.22 

Influence by others than client       10.68 

Information precluding registration, Failure to 

disclose        10.22 

Initial decision of Administrative Law Judge    10.139, 10.154 

Integrity and competence of the legal profession, 

 Maintaining of       10.22 



Interest in litigation or proceeding before Office, 

Acquiring of    10.64 

Investigation of violations of disciplinary rules 10.131 

J 

Joint venture     10.23 

Judicial office, Candidate for      10.103 

L 

Legal fees: 

Division of   10.37 

Failure to pay      10.40 

Sharing of  10.48 

Legal system, Assistance in improving the 10.100 

Letterheads, Use of   10.35 

Limited recognition to practice in patent cases       10.9 

M 

Malpractice, Limiting client's liability        10.78 

Materially false statements in application for 

registration    10.22 

Misappropriation of funds 10.23 

Misconduct  10.23 

Misrepresentations  10.22, 10.23 

Multiple employment   10.66 

N 

Neglecting legal matters        10.77 

Non-practitioner, Formation of partnership with       10.49 

Notice of suspension or exclusion 10.159 

 O 

Oath requirement        10.8 

Officials, Contact with       10.93 

P 

Petitions: 

Fees in general       1.21 

Regrade of examination      10.7(c) 

Reinstatement     10.160 

Review decision of Commissioner       10.157 

Review decision of Director of Enrollment and 

Discipline  10.2 

Suspension of rules   10.170 

Preserve secrets and confidence of client 10.56, 10.57 

Pro-se applicant        1.31, 2.11 

Professional impropriety, Avoiding 

appearance of     10.110, 10.111 

Promise of advantage, Offer of      10.23 

Property of client  10.112 

Proprietary interest in subject matter      10.64 

Publication in Official Gazette       10.11, 10.159, 10.160 

R 

Recognition to practice before the Patent and 

Trademark Office: 

Agents      10.6, 10.7, 10.14 

Aliens      10.6, 10.7, 10.14 

Attorneys 10.6, 10.7, 10.14 

Change of address, Requirement to notify 

Director        10.11 

Contents of petition for reinstatement of: 

person not suspended or excluded        10.2 

suspended or excluded practitioner  10.160 

Examination of registration in patent cases   10.7 

Examination fee       10.7 

Foreigners  10.6, 10.9, 10.14 

Former Patent and Trademark Office 

employees 10.10, 10.23 

Government employees    10.10, 10.23 

Limited recognition in patent cases   10.9 

Non-lawyers, Recognition in trademark 

cases     10.10 

Patent cases    10.6 - 10.10 

Recognition for representation      1.34, 2.17, 10.14 

Recognition to practice       10.6 - 10.18 

Refusal to recognize practitioner 10.15 

Register of attorneys and agents in patent cases        10.5 

Registration fee        10.8 

Registration number   1.34 

Removal of attorneys and agents from the 

register        10.11 

Representation by registered attorney or agent 

in patent cases       1.31 

Request for regrade of examination  10.6 

Requirements for registration     10.7 

Review of Director's decision refusing registration   10.2 

Trademark cases       10.14 

Unauthorized representation by an agent       10.10, 10.31 

Records, property and funds of client, 

Maintaining of      10.112 

Reinstatement after removal from the register     10.2, 10.11 

Reinstatement of suspended or excluded 

non-practitioner        10.160 

Representing client within bounds of the law    10.85 

Reprimand of registered attorney or agent 10.130, 10.132 

Resignation   10.133 

Revocation of power of attorney in trademark case 2.19 

S 

Scandalous statements, Making of        10.23 

Secrets and confidence, Preservation of clients       10.56, 10.57 
Settlement of claims of clients       10.67 

Sharing legal fees  10.48 

Signature and certificate of practitioner 10.18 



Solicitation    10.32, 10.33 

Statement concerning officials, Making false    10.102 

Suspension of practitioner  10.23, 10.130, 10.132, 10.158 

Suspension of rules   10.170 

T 

Threats of criminal prosecution       10.88 

Threats, Use of       10.23 

U 

Unauthorized practice     10.14, 10.23, 10.31, 10.46, 10.47 

Undignified conduct   10.89 

V 

Violating duty of candor and good faith       10.23 

Violation of disciplinary rule, misconduct  10.23 

W 

Withdrawal from employment  10.40 

Withdrawal material information       10.22, 10.23 

Witnesses 10.63, 10.92 

Z 

Zealously representing the client 10.83, 10.84 

D D D D D D D D D D D D D D D D D D D D D D D D D D D D D D D D D 


PART 15 - SERVICE OF PROCESS 

Sec. 

15.1    Scope and purpose. 

15.2    Definitions. 

15.3    Acceptance of service of process. 

        Authority: 5 U.S.C. 301; 15 U.S.C. 1501, 1512, 1513, 1515, and 
1518;  Reorganization Plan No. 5 of 1950; 44 U.S.C. 3101; 15 CFR 15.2(a). 

# 15.1          Scope and purpose. 


        (a)   This part supplements 15 CFR Part 15 and sets forth the 
procedures  to be followed when a summons or complaint is served on the 
Office or the Commissioner  or an employee of the Office in his or her 
official capacity. This part is  to be construed consistent with 
15 CFR Part 15. 

        (b)   This part is intended to ensure the orderly execution of the 
 affairs of the Office and not to impede any legal proceeding. 

        (c)   This part does not apply to subpoenas. The procedures to be 
followed  with respect to subpoenas are set out in Part 15a of this Title. 

        (d)   This part does not apply to service of process made on an 
Office  employee personally on matters not related to official business of 
the Office  or to the official responsibilities of the Office employee. 


# 15.2          Definitions. 


        For the purpose of this part: 

        (a)   "Commissioner" means Assistant Secretary and Commissioner of 
 Patents and Trademarks. 

        (b)   "Legal proceeding" means a proceeding before a tribunal 
constituted  by law, including a court, an administrative body or 
commission, or an administrative  law judge or hearing officer. 

        (c)   "Office" means Patent and Trademark Office. 

        (d)   "Office employee" means any officer or employee of the 
Office. 

        (e)   "Official business" means the authorized business of the 
Office. 

        (f)   "Solicitor" means the chief legal officer of the Office or 
other  Office employee to whom the Solicitor has delegated authority to 
act under  this part. 


# 15.3          Acceptance of service of process. 


        (a)   Any summons or complaint to be served in person or by 
registered  or certified mail or as otherwise authorized by law on the 
Office or the Commissioner  or an Office employee in his or her official 
capacity, shall be served on the  Solicitor or an Office employee 
designated by the Solicitor. 

        (b)   Any summons or complaint to be served by mail may be 
addressed  to Solicitor, P.O. Box 15667, Arlington, Virginia 22215. Any 
summons or complaint  to be served by hand may be delivered to the Office 
of the Solicitor. 
        (c)   Any Office employee served with a summons or complaint shall 
 immediately notify and deliver the summons or complaint to the Office of 
the  Solicitor. 

        (d)   Any Office employee receiving a summons or complaint shall 
note  on the summons or complaint the date, hour, and place of service and 
whether  service was by personal delivery or by mail. 

        (e)   When a legal proceeding is brought to hold an Office 
employee  personally liable in connection with an action taken in the 
conduct of official  business, rather than liable in an official capacity, 
the Office employee by  law is to be served personally with process. 
Service of process in this case  is inadequate when made upon the 
Solicitor or the Solicitor's designee. Any  Office employee sued 
personally for an action taken in the conduct of official  business shall 
immediately notify and deliver a copy of the summons or complaint  to the 
Office of the Solicitor. 

        (f)   An Office employee sued personally in connection with 
official  business may be represented by the Department of Justice at its 
discretion.  See 28 CFR 50.15 and 50.16 (1987). 

        (g)   The Solicitor or Office employee designated by the 
Solicitor,  when accepting service of process for an Office employee in an 
official capacity,  shall endorse on the Marshal's or server's return of 
service form or receipt  for registered or certified mail the following 
statement: "Service accepted  in official capacity only." The statement 
may be placed on the form or receipt  with a rubber stamp. 

        (h)   Upon acceptance of service or receiving notification of 
service,  as provided in this section, the Solicitor shall take 
appropriate steps to  protect the rights of the Commissioner or Office 
employee involved. 
PART 15a - TESTIMONY BY EMPLOYEES AND THE PRODUCTION OF 
DOCUMENTS IN LEGAL PROCEEDINGS 

Sec. 

15a.1     Scope. 

15a.2     Definitions. 

15a.3     Office policy. 



15a.4     Testimony or production of documents; general 

        rule. 

15a.5     Testimony of Office employees in proceedings 

        involving  the United States. 

15a.6     Legal proceedings between private litigants. 

15a.7     Procedures when an Office employee receives a subpoena. 
        Authority:  5 U.S.C. 301; 15 U.S.C. 1501, 1512, 1513, 1515, and 
1518;  Reorganization Plan No. 5 of 1950; 44 U.S.C. 3101; 15 CFR 15a.1(e) 
and 15a.2(f). 


# 15a.1       Scope. 


        (a)   This part supplements 15 CFR Part 15a and pre- scribes the 
policies  and procedures of the Office with respect to the testimony of 
Office employees  as witnesses in legal proceedings and the production of 
documents of the Office  for use in legal proceedings pursuant to a 
request, order, or subpoena. This  part is issued pursuant to 15 CFR 
15a.l(e) and is to be construed consistent  with 15 CFR 15a. 

        (b)   This part does not apply to any legal proceeding in which an 
 Office employee is to testify, while on leave status, as to facts or 
events  that are in no way related to the official business of the Office. 

        (c)   This part is intended to ensure the orderly execution of the 
 affairs of the Office and not to impede any legal proceeding and in no 
way  affects the rights and procedures governing public access to records 
pursuant  to the Freedom of Information Act or the Privacy Act. See 15 CFR 
15a.4 and  37 CFR 1.15. 


# 15a.2       Definitions. 


        For the purpose of this part: 

        (a)   "Commissioner" means Assistant Secretary and Commissioner of 
 Patents and Trademarks. 

        (b)   "Demand" means a request, order, or subpoena for testimony 
or  documents for use in a legal proceeding. 

        (c)   "Document" means any record, paper, and other property held 
by  the Office, including without limitation official patent and trademark 
files,  official letters, telegrams, memoranda, reports, studies, calendar 
and diary  entries, maps, graphs, pamphlets, notes, charts, tabulations, 
analyses, statistical  or informational accumulations, any kind of 
summaries of meetings and conversations,  film impressions, magnetic 
tapes, and sound or mechanical reproductions. 
        (d)   "Legal proceeding" means a proceeding before a tribunal 
constituted  by law, including a court, an administrative body or 
commission, an administrative  law judge or hearing officer or any 
discovery proceeding in support thereof. 

        (e)   "Office" means Patent and Trademark Office. 

        (f)   "Office employee" means any officer or employee of the 
Office. 

        (g)   "Official business" means the authorized business of the 
Office. 

        (h)   "Solicitor" means the chief legal officer of the Office or 
other  Office employee to whom the Solicitor has delegated authority to 
act under  this part. 

        (i)   "Testimony" means a statement given in person before a 
tribunal  or by deposition for use before the tribunal or any other 
statement given for  use before a tribunal in a legal proceeding, 
including an affidavit, declaration  under 35 U.S.C. 25, or declaration under 
28 U.S.C. 1746. 

        (j)   "United States" means the Federal Government, its 
departments  and agencies, and individuals acting on behalf of the Federal 
Government. 

# 15a.3       Office policy. 


        The Office policy is that its documents will not be voluntarily 
produced  and Office employees will not voluntarily appear as witnesses or 
give testimony  in a legal proceeding. The reasons for this policy 
include: 

        (a)   To conserve the time of Office employees for conducting 
official  business. 

        (b)   To minimize the possibility of involving the Office in 
controversial  or other issues which are not related to the mission of the 
Office. 
        (c)   To prevent the possibility that the public will misconstrue 
variances  between personal opinions of Office employees and Office 
policy. 

        (d)   To avoid spending the time and money of the United States 
for  private purposes. 

        (e)   To preserve the integrity of the administrative process, 
minimize  disruption of the decision-making process, and prevent 
interference with the  Office's administrative functions. 


# 15a.4       Testimony or production of documents; 

                        general rule. 

        (a)   No Office employee shall give testimony concerning the 
official  business of the Office or produce any document in any legal 
proceeding without  the prior authorization of the Solicitor. Where 
appropriate, an Office employee  may be instructed in writing by the 
Commissioner, Solicitor, or other appropriate  Office employee not to give 
testimony or produce a document. 




Without prior approval, no Office employee shall answer inquiries from a 
person  not employed by the Department of Commerce regarding testimony or 
documents  subject to a demand or a potential demand under the provisions 
of this Part.  All inquiries involving a demand or potential demand on an 
Office employee  shall be referred to the Solicitor. 

        (b)   A certified copy of a document, not otherwise available 
under  Chapter I of this Title, will be provided for use in a legal 
proceeding upon  written request and payment of applicable fees required 
by law. 

        (c)(1) Request for testimony or document. A request for testimony 
of  an Office employee or document shall be mailed or hand-delivered to 
the Office  of the Solicitor. The mailing address of the Office of the 
Solicitor is Box  8, Patent and Trademark Office, Washington, D.C. 20231. 

        (2)   Subpoenas. A subpoena for testimony by an Office employee or 
 a document shall be served in accordance with the Federal Rules of Civil 
or  Criminal Procedure as appropriate, or applicable state procedure, and 
a copy  of the subpoena shall be sent to the Solicitor. 

        (3)   Affidavit. Every request and subpoena shall be accompanied 
by  an affidavit or declaration under 28 U.S.C. 1746 or, if an affidavit 
or declaration  is not feasible, a written statement setting forth the 
title of the legal proceeding,  the forum, the requesting party's interest 
in the legal proceeding, the reasons  for the request or subpoena, a 
showing that the desired testimony or document  is not reasonably 
available from any other source, and if testimony is requested,  the 
intended use of the testimony, a general summary of the testimony desired, 
 and a showing that no document could be provided and used in lieu of 
testimony.  The purpose of this requirement is to permit the Solicitor to 
make an informed  decision as to whether testimony or production of a 
document should be authorized. 

        (d)   Any Office employee who is served with a demand shall 
immediately  notify the Office of the Solicitor. 

        (e)   The Solicitor may consult or negotiate with an attorney for 
a  party or the party, if not represented by an attorney, to refine or 
limit a  demand so that compliance is less burdensome or obtain 
information necessary  to make the determination required by paragraph (c) 
of this section. Failure  of the attorney or party to cooperate in good 
faith to enable an informed determination  to be made under this part may 
serve as the basis for a determination not to  comply with the demand. 

        (f)   A determination under this part to comply or not to comply 
with  a demand is not an assertion or waiver of privilege, lack of 
relevance, technical  deficiencies, or any other ground for noncompliance. 
The Commissioner reserves  the right to oppose any demand on any legal 
ground independent of any determination  under this part. 


# 15a.5       Testimony of Office employees in proceedings 
             involving 


the United States. 

        (a)   An Office employee may not testify as an expert or opinion 
witness  for any party other than the United States. 

        (b)   When appropriate, the Solicitor may authorize an Office 
employee  to give testimony as an expert or opinion witness on behalf of 
the United States.  Expert or opinion testimony on behalf of the United 
States will not be authorized  in any legal proceeding involving the 
validity or enforceability of a patent  or registered trademark. 

        (c)   Whenever, in any legal proceeding involving the United 
States,  a request is made by an attorney representing or acting under the 
authority  of the United States, the Solicitor will make all necessary 
arrangements for  the Office employee to give testimony on behalf of the 
United States. Where  appropriate, the Solicitor may require reimbursement 
to the Office of the expenses  associated with an Office employee giving 
testimony on behalf of the United  States. 


# 15a.6       Legal proceedings between private litigants. 


        (a)   Testimony by an Office employee and production of documents 
in  a legal proceeding not involving the United States shall be governed 
by w 15a.4. 

        (b)   If an Office employee is authorized to give testimony in a 
legal  proceeding, the testimony, if otherwise proper, shall be limited to 
facts within  the personal knowledge of the Office employee. An Office 
employee is prohibited  from giving expert or opinion testimony, answering 
hypothetical or speculative  questions, or giving testimony with respect 
to subject matter which is privileged.  If an Office employee is 
authorized to testify in connection with the employee's  involvement or 
assistance in a quasi-judicial proceeding which took place before  the 
Office, that employee is further prohib- 





ibited from giving testimony in response to questions which seek: 
        (1)   Information about that employee's: 

        (i)   Background. 

        (ii)    Expertise. 

        (iii)     Qualifications to examine or otherwise consider a 
particular  patent or trademark application. 

        (iv)    Usual practice or whether the employee followed a 
procedure  set out in any Office manual of practice in a particular case. 

        (v)   Consultation with another Office employee. 

        (vi)    Understanding of: 

        (A)   A patented invention, an invention sought to be patented, or 
 patent application, patent, reexamination or interference file. 

        (B)   Prior art. 

        (C)   Registered subject matter, subject matter sought to be 
registered,  or a trademark application, registration, opposition, 
cancellation, interference,  or concurrent use file. 

        (D)   Any Office manual of practice. 

        (E)   Office regulations. 

        (F)   Patent, trademark, or other law. 

        (G)   The responsibilities of another Office employee. 

        (vii)     Reliance on particular facts or arguments. 

        (2)   To inquire into the manner in and extent to which the 
employee  considered or studied material in performing the quasi-judicial 
function. 
        (3)   To inquire into the bases, reasons, mental processes, 
analyses,  or conclusions of that Office employee in performing the 
quasi-judicial function. 


# 15a.7       Procedures when an Office employee receives 

                        a subpoena. 

        (a)   Any Office employee who receives a subpoena shall 
immediately  forward the subpoena to the Office of the Solicitor. The 
Solicitor will determine  the extent to which an Office employee will 
comply with the subpoena. 
        (b)   If the Office employee is not authorized to comply with the 
subpoena,  the Office employee shall appear at the time and place stated 
in the subpoena,  produce a copy of Part 15a of Title 15 and a copy of 
this part, and respectfully  refuse to provide any testimony or produce 
any document. United States ex rel.  Touhy  v. Ragen. 340 U.S. 462 (1951). 

        (c)   When necessary or appropriate, the Solicitor will request 
assistance  from the Department of Justice or a U.S. Attorney or otherwise 
assure the presence  of an attorney to represent the interests of the 
Office or an Office employee. 
D D D D D D D D D D D D D D D D D D D D D D D D D D D D D D D D D 


SUBCHAPTER C - PROTECTION OF  FOREIGN MASK WORKS 

PART 150  - REQUESTS FOR 
PRESIDENTIAL PROCLAMATIONS 
PURSUANT  TO 17 U.S.C. 902(a)(2) 

Sec. 

150.1     Definitions. 

150.2     Initiation of evaluation. 

150.3     Submission of requests. 

150.4     Evaluation. 

150.5     Duration of proclamation. 

150.6     Mailing address. 

        Authority: 35 U.S.C. 6; E.O. 12504, 50 FR 4049, 3 CFR 1985 Comp. 
p.  335. 


# 150.1       Definitions. 


        (a)   "Commissioner" means Assistant Secretary and Commissioner of 
 Patents and Trademarks. 

        (b)   "Foreign government" means the duly-constituted executive of 
 a foreign nation, or an international or regional intergovernmental 
organization  which has been empowered by its member states to request 
issuance of Presidential  proclamations on their behalf under this part. 

        (c)   "Interim order" means an order issued by the Secretary of 
Commerce  under 17 U.S.C. 914. 

        (d)   "Mask work" means a series of related images, however fixed 
or  encoded - 

        (1)   Having or representing the predetermined, three-dimensional 
pattern  of metallic, insulating, or semiconductor material present or 
removed from  the layers of a semiconductor chip product; and 

        (2)   In which series the relation of the images to one another is 
 that each image has the pattern of the surface of one form of the 
semiconductor  chip product. 

        (e)   "Presidential proclamation" means an action by the President 
 extending to foreign nationals, domiciliaries, and sovereign authorities 
the  privilege of applying for registrations for mask works pursuant to 17 
U.S.C.  902. 

        (f)   "Request" means a request by a foreign government for the 
issuance  of a Presidential proclamation. 

        (g)   "Proceeding" means a proceeding to issue an interim order 
extending  protection to foreign nationals, domiciliaries, and sovereign 
authorities under  17 U.S.C. Chapter 9. 

        (h)   "Secretary" means Secretary of Commerce. 

        [Added 53 FR 24447, June 29, 1988,  effective August 1, 1988] 

# 150.2       Initiation of evaluation. 


        (a)   The Commissioner independently or as directed by the 
Secretary,  may initiate an evaluation of the propriety of recommending 
the issuance, revision,  suspension, or revocation of a section 902 
proclamation. 

        (b)   The Commissioner shall initiate an evaluation of the 
propriety  of recommending the issuance of a section 902 proclamation upon 
receipt of  a request from a foreign government. 

        [Added 53 FR 24447, June 29, 1988,  effective August 1, 1988] 

# 150.3       Submission of requests 


        (a)   Requests for the issuance of a section 902 proclamation 
shall  be submitted by foreign governments for review by the Commissioner. 
        (b)   Requests for issuance of a proclamation shall include: 
        (1)   A copy of the foreign law or legal rulings that provide 
protection  for U.S. mask works which provide a basis for the request. 

        (2)   A copy of any regulations or administrative orders 
implementing  the protection. 

        (3)   A copy of any laws, regulations, or administrative orders 
establishing  or regulating the registration (if any) of mask works. 

        (4)   Any other relevant laws, regulations, or administrative 
orders. 
        (5)   All copies of laws, legal rulings, regulations, or 
administrative  orders submitted must be in unedited, full-text form, and 
if possible, must  be reproduced from the original document. 

        (6)   All material submitted must be in the original language, and 
 if not in English, must be accompanied by a certified English 
translation. 
        [Added 53 FR 24447,  June 29, 1988, effective August 1, 1988] 

# 150.4       Evaluation. 


        (a)   Upon submission of a request by a foreign government for the 
 issuance of a section 902 proclamation, if an interim order under section 
914  has not been issued, the Commissioner may initiate a section 914 
proceeding  if additional information is required. 

        (b)   If an interim order under section 914 has been issued, the 
information  obtained during the section 914 




proceeding will be used in evaluating the request for a section 902 
proclamation. 
        (c)   After the Commissioner receives the request of a foreign 
government  for a section 902 proclamation, or after a determination is 
made by the Commissioner  to initiate independently an evaluation pursuant to 
w 150.2(a) of this part, a notice will be published in the Federal 
Register  to request relevant and material comments on the adequacy and 
effectiveness  of the protection afforded U.S. mask works under the system 
of law described  in the notice. Comments should include detailed 
explanations of any alleged  deficiencies in the foreign law or any 
alleged deficiencies in its implementation.  If the alleged deficiencies 
include problems in administration such as registration,  the respondent 
should include as specifically as possible full detailed explanations, 
including dates for and the nature of any alleged problems. Comments shall 
 be submitted to the Commissioner within sixty (60) days of the 
publication  of the Federal Register notice. 

        (d)   The Commissioner shall notify the Register of Copyrights and 
 the Committee on the Judiciary of the Senate and the House of 
Representatives  of the initiation of an evaluation under these regulations. 

        (e)   If the written comments submitted by any party present 
relevant  and material reasons why a proclamation should not issue. The 
Commissioner  will: 

        (1)   Contact the party raising the issue for verification and any 
 needed additional information; 

        (2)   Contact the requesting foreign government to determine if 
the  issues raised by the party can be resolved; and, 

        (i)   If the issues are resolved, continue with the evaluation; 
or, 
        (ii)    If the issues cannot be resolved on this basis, hold a 
public  hearing to gather additional information. 

        (f)   The comments, the section 902 request, information obtained 
from  a section 914 proceeding, if any, and information obtained in a 
hearing held  pursuant to paragraph (e)(ii) of this section, if any, will 
be evaluated by  the Commissioner. 

        (g)   The Commissioner will forward the information to the 
Secretary,  together with an evaluation and a draft recommendation. 

        (h)   The Secretary will forward a recommendation regarding the 
issuance  of a section 902 proclamation to the President. 

        [Added 53 FR 24448, June 29, 1988, effective August 1, 1988] 

# 150.5       Duration of proclamation. 


        (a)   The recommendation for the issuance of a proclamation may 
include  terms and conditions regarding the duration of the proclamation. 

        (b)   Requests for the revision, suspension, or revocation of a 
proclamation  may be submitted by any interested party. Requests for 
revision, suspension,  or revocation of a proclamation will be considered 
in substantially the same  manner as requests for the issuance of a 
section 902 proclamation. 
        [Added 53 FR 24448, June 29, 1988, effective August 1, 1988] 

# 150.6       Mailing address. 


        Requests and all correspondence pursuant to these guidelines shall 
 be addressed to: Commissioner of Patents and Trademarks, Box 4, 
Washington,  D.C. 20231. 

        [Added 53 FR 24448, June 29, 1988, effective August 1, 1988] 


Contents 

Patent Cooperation Treaty 

Done at Washington on June 19,1970, 
amended on October 2, 1979, 
and modified on February 3, 1984 

(as in force on January 1, 1986) 

TABLE OF CONTENTS 

Preamble 

Introductory Provisions 

Article 1:    Establishment of a Union 

Article 2:    Definitions 

Chapter I:    International Application and International Search 

Article 3:    The International Application 

Article 4     The Request 

Article 5     The Description 

Article 6     The Claims 

Article 7     The Drawings 

Article 8     Claiming Priority 

Article 9:    The Applicant 

Article 10    The Receiving Office 

Article 11    Filing Date and Effects of the International 
              Application 

Article 12    Transmittal of the International Application to the 
              International Bureau and the International Searching 
              Authority 

Article 13    Availability of Copy of the International Application 
              to the Designated Offices 

Article 14    Certain Defects in the International Application 

Article 15    The International Search 

Article 16    The International Searching Authority 

Article 17    Procedure Before the International Searching Authority 
Article 18    The International Search Report 

Article 19    Amendment of the Claims Before the International 
              Bureau 

Article 20    Communication to Designated Offices 

Article 21    International Publication 

Article 22    Copy, Translation, and Fee, to Designated Offices 

Article 23    Delaying of National Procedure 

Article 24    Possible Loss of Effect in Designated States 

Article 25    Review by Designated Offices 

Article 26    Opportunity to Correct Before Designated Offices 

Article 27    National Requirements 

Article 28    Amendment of the Claims, the Description, and 
              the Drawings, Before Designated Offices 

Article 29    Effects of the International Publication 

Article  30   Confidential Nature of the International Application 
Chapter II: International Preliminary Examination 

Article  31   Demand for International Preliminary Examination 

Article  32   The International Preliminary Examining Authority 

Article  33   The International Preliminary Examination 

Article  34   Procedure Before the International Preliminary 
              Examining Authority 

Article  35   The International Preliminary Examination Report 

Article  36   Transmittal, Translation, and Communication of the 
              International Preliminary Examination Report 

Article  37   Withdrawal of Demand or Election 

Article  38   Confidential Nature of the International Preliminary 
              Examination 

Article  39   Copy, Translation, and Fee to Elected Offices 

Article  40   Delaying of National Examination and Other processing 
Article  41   Amendment of the Claims, the Description, and 
              the Drawings, before Elected Offices 

Article  42   Results of National Examination in Elected Offices 

Chapter III: Common Provisions 

Article  43   Seeking Certain Kinds of Protection 

Article  44   Seeking Two Kinds of Protection 

Article  45   Regional Patent Treaties 

Article  46   Incorrect Translation of the International 
       Application 
Article  47   Time Limits 

Article  48   Delay in Meeting Certain Time Limits 

Article  49   Right to Practice Before International Authorities 

Chapter IV: Technical Services 

Article  50   Patent Information Service 

Article  51   Technical Assistance 

Article  52   Relations with Other Provisions of the Treaty 

Chapter V: Administrative Provisions 

Article  53   Assembly 

Article  54   Executive Committee 

Article  55   International Bureau 

Article  56   Committee for Technical Cooperation 

Article  57   Finances 

Article  58   Regulations 

Chapter VI: Disputes 

Article  59   Disputes 

Chapter VII: Revision and Amendments 

Article  60   Revision of the Treaty 

Article  61   Amendment of Certain Provisions of the Treaty 

Chapter VIII: Final Provisions 

Article  62   Becoming Party to the Treaty 

Article  63   Entry into Force of the Treaty 

Article  64   Reservations 

Article  65   Gradual Application 

Article  66   Denunciation 

Article  67   Signature and Languages 

Article  68   Depositary Functions 

Article  69   Notifications 





The Contracting States, 

Desiring to make a contribution to the progress of science and technology, 
Desiring to perfect the legal protection of inventions, 

Desiring to simplify and render more economical the obtaining of 
protection  for inventions where protection is sought in several countries, 

Desiring to facilitate and accelerate access by the public to the 
technical  information contained in documents describing new inventions, 

Desiring to foster and accelerate the economic development of developing 
countries  through the adoption of measures designed to increase the 
efficiency of their  legal systems, whether national or regional, 
instituted for the protection  of inventions by providing easily 
accessible information on the availability  of technological solutions 
applicable to their special needs and by facilitating  access to the ever 
expanding volume of modern technology, 

Convinced that cooperation among nations will greatly facilitate the 
attainment  of these aims, 

Have concluded the present Treaty. 

Introductory Provisions 


Article 1 


Establishment of a Union 

(1) The States party to this Treaty (hereinafter called "the Contracting 
States")  constitute a Union for cooperation in the filing, searching, and 
examination,  of applications for the protection of inventions, and for 
rendering special  technical services. The Union shall be known as the 
International Patent Cooperation  Union. 

(2) No provision of this Treaty shall be interpreted as diminishing the 
rights  under the Paris Convention for the Protection of Industrial 
Property of any  national or resident of any country party to that Convention. 

---SECTION--Article 2 

Definitions 

For the purposes of this Treaty and the Regulations and unless expressly 
stated  otherwise: 

(i) "application" means an application for the protection of an invention; 
 references to an "application" shall be construed as references to 
applications  for patents for inventions, inventors' certificates, utility 
certificates,  utility models, patents or certificates of addition, 
inventors' certificates  of addition, and utility certificates of addition; 

(ii) references to a "patent" shall be construed as references to patents 
for  inventions, inventors' certificates, utility certificates, utility 
models,  patents or certificates of addition, inventors' certificates of 
addition, and  utility certificates of addition; 

(iii) "national patent" means a patent granted by a national authority; 
(iv) "regional patent" means a patent granted by a national or an 
intergovernmental  authority having the power to grant patents effective 
in more than one State; 
(v) "regional application" means an application for a regional patent; 
(vi) references to a "national application" shall be construed as 
references  to applications for national patents and regional patents, 
other than applications  filed under this Treaty; 

(vii) "international application" means an application filed under this 
Treaty; 
(viii) references to an "application" shall be construed as references to 
international  applications and national applications; 

(ix) references to a "patent" shall be construed as references to national 
 patents and regional patents; 

(x) references to "national law" shall be construed as references to the 
national  law of a Contracting State or, where a regional application or a 
regional patent  is involved, to the treaty providing for the filing of 
regional applications  or the granting of regional patents; 

(xi) "priority date," for the purpose of computing time limits, means: 
(a) where the international application contains a priority claim under 
Article  8, the filing date of the application whose priority is so 
claimed; 
(b) where the international application contains several priority claims 
under  Article 8, the filing date of the earliest application whose 
priority is so  claimed; 

(c) where the international application does not contain any priority 
claim  under Article 8, the international filing date of such application; 
(xii) "national  Office" means the government authority of a Contracting 
State  entrusted with the granting of patents; references to a "national 
Office" shall  be construed as referring also to any intergovernmental 
authority which several  States have entrusted with the task of granting 
regional patents, provided  that at least one of those States is a 
Contracting State, and provided that  the said States have authorized that 
authority to assume the obligations and  exercise the powers which this 
Treaty and the Regulations provide for in respect  of national Offices; 

(xiii) "designated Office" means the national Office of or acting for the 
State  designated by the applicant under Chapter I of this Treaty; 



(xiv) "elected Office" means the national Office of or acting for the 
State  elected by the applicant under Chapter II of this Treaty; 

(xv) "receiving Office" means the national Office or the 

intergovernmental organization with which the international application 
has  been filed; 

(xvi) "Union" means the International Patent Cooperation Union; 

(xvii) "Assembly" means the Assembly of the Union; 

(xviii) "Organization" means the World Intellectual Property Organization; 
(xix) "International Bureau" means the International Bureau of the 
Organization  and , as long as it subsists, the United International 
Bureaux for the Protection  of Intellectual Property (BIRPI); 

(xx) "Director General" means the Director General of the Organization 
and,  as long as BIRPI subsists, the Director of BIRPI. 

Chapter I 

International Application and 
International Search 


Article 3 


The International Application 

(1) Applications for the protection of inventions in any of the 
Contracting  States may be filed as international applications under this 
Treaty. 
(2) An international application shall contain, as specified in this 
Treaty  and the Regulations, a request, a description, one or more claims, 
one or more  drawings (where required), and an abstract. 

(3) The abstract merely serves the purpose of technical information and 
cannot  be taken into account for any other purpose, particularly not for 
the purpose  of interpreting the scope of the protection sought. 

(4) The international application shall: 

(i) be in a prescribed language; 

(ii) comply with the prescribed physical requirements; 

(iii) comply with the prescribed requirement of unity of invention; 
(iv) be subject to the payment of the prescribed fees. 


Article 4 


The Request 

(1) The request shall contain: 

 (i) a petition to the effect that the international application be 
processed  according to this Treaty; 

 (ii) the designation of the Contracting State or States in which 
protection  for the invention is desired on the basis of the international 
application 
( designated States ); if for any designated State a regional patent is 
available  and the applicant wishes to obtain a regional patent rather 
than a national  patent, the request shall so indicate ; if, under a 
treaty concerning a regional  patent, the applicant cannot limit his 
application to certain of the States  party to that treaty, designation of 
one of those States and the indication  of the wish to obtain the regional 
patent shall be treated as designation of  all the States party to that 
treaty; if, under the national law of the designated  State, the 
designation of that State has the effect o fan application for a  regional 
patent, the designation of the said State shall be treated as an 
indication  of the wish to obtain the regional patent; 

(iii) the name of and other prescribed data concerning the applicant and 
the  agent (if any); 

(iv) the title of the invention; 

(v) the name of and other prescribed data concerning the inventor where 
the  national law of at least one of the designated States requires that 
these indications  be furnished at the time of filing a national 
application. Otherwise, the said  indications may be furnished either in 
the request or in separate notices addressed  to each designated Office 
whose national law requires the furnishing of the  said indications but 
allows that they be furnished at a time later than that  of the filing of 
a national application. 

(2) Every designation shall be subject to the payment of the prescribed 
fee  within the prescribed time limit. 

(3) Unless the applicant asks for any of the other kinds of protection 
referred  to in Article 43, designation shall mean that the desired 
protection consists  of the grant of a patent by or for the designated 
State. For the purposes of  this paragraph, Article 2(ii) shall not apply. 

(4) Failure to indicate in the request the name and other prescribed data 
concerning  the inventor shall have no consequence in any designated State 
whose national  law requires the furnishing of the said indications but 
allows that they be  furnished at a time later than that of the filing of 
a national application.  Failure to furnish the said indications in a 
separate notice shall have no  consequence in any designated State whose 
national law does not require the  furnishing of the said indications. 


Article 5 


The Description 

The description shall disclose the invention in a manner sufficiently 
clear  and complete for the invention to be carried out by a person 
skilled in the  art. 




Article 6 


The Claims 

The claim or claims shall define the matter for which protection is 
sought.  Claims shall be clear and concise. They shall be fully supported 
by the description. 

Article 7 


The Drawings 

(1) Subject to the provisions of paragraph (2)(ii), drawings shall be 
required  when they are necessary for the understanding of the invention. 

(2) Where, without being necessary for the understanding of the invention, 
 the nature of the invention admits of illustration by drawings: 

(i) the applicant may include such drawings in the international 
application  when filed. 

(ii) any designated Office may require that the applicant file such 
drawings  with it within the prescribed time limit. 


Article 8 


Claiming Priority 

(1) The international application may contain a declaration, as prescribed 
 in the Regulations, claiming the priority of one or more earlier 
applications  filed in or for any country party to the Paris Convention 
for the Protection  of Industrial Property. 

(2)(a) Subject to the provisions of subparagraph (b), the conditions for, 
and  the effect of, any priority claim declared under paragraph (1) shall 
be as  provided in Article 4 of the Stockholm Act of the Paris Convention 
for the  Protection of Industrial Property. 

(b) The international application for which the priority of one or more 
earlier  applications filed in or for a Contracting State is claimed may 
contain the  designation of that State. Where, in the international 
application, the priority  of one or more national applications filed in 
or for a designated State is  claimed, or where the priority of an 
international application having designated  only one State is claimed, 
the conditions for, and the effect of, the priority  claim in that State 
shall be governed by the national law of that State. 

Article 9 


The Applicant 

(1) Any resident or national of a Contracting State may file an 
international  application. 

(2) The Assembly may decide to allow the residents and the nationals of 
any  country party to the Paris Convention for the Protection of 
Industrial Property  which is not party to this Treaty to file 
international applications. 
(3) The concepts of residence and nationality, and the application of 
those  concepts in cases where there are several applicants or where the 
applicants  are not the same for all the designated States, are defined in 
the Regulations. 
NOTE: The PCT Assembly has not as yet allowed residents or nationals of 
non-PCT  member countries to file PCT international applications. 


Article 10 


The Receiving Office 

The international application shall be filed with the prescribed receiving 
 Office, which will check and process it as provided in this Treaty and 
the  Regulations. 


Article 11 


Filing Date and Effects of the International Application 

(1) The receiving Office shall accord as the international filing date the 
 date of receipt of the international application, provided that that 
Office  has found that, at the time of receipt: 

(i) the applicant does not obviously lack, for reasons of residence or 
nationality,  the right to file an international application with the 
receiving Office, 
(ii) the international application is in the prescribed language, 
(iii) the international application contains at least the following 
elements: 
(a) an indication that it is intended as an international application, 
(b) the designation of at least one Contracting State, 

(c) the name of the applicant, as prescribed, 

(d) a part which on the face of it appears to be a description, 

(e) a part which on the face of it appears to be a claim or claims. 
(2)(a) If the receiving Office finds that the international application 
did  not, at the time of receipt, fulfill the requirements listed in 
paragraph (1),  it shall, as provided in the Regulations, invite the 
applicant to file the  required correction. 

(b) If the applicant complies with the invitation, as provided in the 
Regulations,  the receiving Office shall accord as the international 
filing date the date  of receipt of the required correction. 

(3) Subject to Article 64(4), any international application fulfilling the 
 requirement listed in items (i) to (iii) of paragraph (1) and accorded an 
international  filing date shall have the effect of a regular national 
application in each  designated 



State as of the international filing date, which date shall be considered 
to  be the actual filing date in each designated State. 

(4) Any international application fulfilling the requirements listed in 
items 
(i) to (iii) of paragraph (1) shall be equivalent to a regular national 
filing  within the meaning of the Paris Convention for the Protection of 
Industrial  Property. 


Article 12 


Transmittal of the International Application 
to the International Bureau and the 
 International Searching Authority 

(1) One copy of the international application shall be kept by the 
receiving  Office ( home copy ), one copy ( record copy ) shall be 
transmitted to the  International Bureau, and another copy ( search copy ) 
shall be transmitted  to the competent International Searching Authority 
referred to in Article 16,  as provided in the Regulations. 

(2) The record copy shall be considered the true copy of the international 
 application. 

(3) The international application shall be considered withdrawn if the 
record  copy has not been received by the International Bureau within the 
prescribed  time limit. 


Article 13 


Availability of Copy of the International 
Application to the Designated Offices 

(1) Any designated Office may ask the International Bureau to transmit to 
it  a copy of the international application prior to the communication 
provided  for in Article 20, and the International Bureau shall transmit 
such copy to  the designated Office as soon as possible after the 
expiration of one year  from the priority date. 

(2)(a) The applicant may, at any time, transmit a copy of his 
international  application to any designated Office. 

(b) The applicant may, at any time, ask the International Bureau to 
transmit  a copy of his international application to any designated 
Office, and the International  Bureau shall transmit such copy to the 
designated Office as soon as possible. 
(c) Any national Office may notify the International Bureau that it does 
not  wish to receive copies as provided for in subparagraph (b), in which 
case that  subparagraph shall not be applicable in respect of that Office. 


Article 14 


Certain Defects in the International Application 

(1)(a) The receiving Office shall check whether the international 
application  contains any of the following defects, that is to say: 

(i) it is not signed as provided in the Regulations; 

(ii) it does not contain the prescribed indications concerning the 
applicant; 
(iii) it does not contain a title; 

(iv) it does not contain an abstract; 

(v) it does not comply to the extent provided in the Regulations with the 
prescribed  physical requirements. 

(b) If the receiving Office finds any of the said defects, it shall invite 
 the applicant to correct the international application within the 
prescribed  time limit, failing which that application shall be considered 
withdrawn and  the receiving Office shall so declare. 

(2) If the international application refers to drawings which, in fact, 
are  not included in that application, the receiving Office shall notify 
the applicant  accordingly and he may furnish them within the prescribed 
time limit and, if  he does, the international filing date shall be the 
date on which the drawings  are received by the receiving Office. 
Otherwise, any reference to the said  drawings shall be considered nonexistent 

(3)(a) If the receiving Office finds that, within the prescribed time 
limits,  the fees prescribed under Article 3(4)(iv) have not been paid, or 
no fee prescribed  under Article 4(2) has been paid in respect of any of 
the designated States,  the international application shall be considered 
withdrawn and the receiving  Office shall so declare. 

(b) If the receiving Office finds that the fee prescribed under Article 
4(2)  has been paid in respect of one or more (but less than all) 
designated States  within the prescribed time limit, the designation of 
those States in respect  of which it has not been paid within the 
prescribed time limit shall be considered  withdrawn and the receiving 
Office shall so declare. 

(4) If, after having accorded an international filing date to the 
international  application, the receiving Office finds, within the 
prescribed time limit,  that any of the requirements listed in items (i) 
to (iii) of Article 11(1)  was not complied with at that date, the said 
application shall be considered  withdrawn and the receiving Office shall 
so declare. 


Article 15 


The International Search 

(1) Each international application shall be the subject of international 
search. 
(2) The objective of the international search is to discover relevant 
prior  art. 

(3) International search shall be made on the basis of the claims, with 
due  regard to the description and the drawings (if any). 



(4) The International Searching Authority referred to in Article 16 shall 
endeavor  to discover as much of the relevant prior art as its facilities 
permit, and  shall, in any case, consult the documentation specified in 
the Regulations. 
(5) If the national law of the Contracting State so permits, the applicant 
 who files a national application with the national Office of or acting 
for  such State may, subject to the conditions provided for in such law, 
request  that a search 

similar to an international search (international-type search) be carried 
out  on such application. 

(b) If the national law of the Contracting State so permits, the national 
Office  of or acting for such State may subject any national application 
filed with  it to an international-type search. 

(c) The international-type search shall be carried out by the 
International  Searching Authority referred to in Article 16 which would 
be competent for  an international search if the national application were 
an international application  and were filed with the Office referred to 
in subparagraphs (a) and (b). If  the national application is in a 
language which the International Searching  Authority considers it is not 
equipped to handle, the international-type search  shall be carried out on 
a translation prepared by the applicant in a language  prescribed for 
international applications and which the International Searching 
Authority has undertaken to accept for international applications. The 
national  application and the translation, when required, shall be 
presented in the form  prescribed for international applications. 


Article 16 


The International Searching Authority 

(1) International search shall be carried out by an International 
Searching  Authority, which may be either a national Office or an 
intergovernmental organization,  such as the International Patent 
Institute, whose tasks include the establishing  of documentary search 
reports on prior art with respect to inventions which  are the subject of 
applications. 

(2) If, pending the establishment of a single International Searching 
Authority,  there are several International Searching Authorities, each 
receiving Office  shall, in accordance with the provisions of the 
applicable agreement referred  to in paragraph(3)(b), specify the 
International Searching Authority or Authorities  competent for the 
searching of international applications filed with such Office. 
(3)(a) International Searching Authorities shall be appointed by the 
Assembly.  Any national Office and any intergovernmental organization 
satisfying the requirements  referred to in subparagraph (c) may be 
appointed as International Searching  Authority. 

(b) Appointment shall be conditional on the consent of the national Office 
 or intergovernmental organization to be appointed and the conclusion of 
an  agreement, subject to approval by the Assembly, between such Office or 
organization  and the International Bureau. The agreement shall specify 
the rights and obligations  of the parties, in particular, the formal 
undertaking by the said Office or  organization to apply and observe all 
the common rules of international search. 
(c) The Regulations prescribe the minimum requirements, particularly as to 
 manpower and documentation, which any Office or organization must satisfy 
before  it can be appointed and must continue to satisfy while it remains 
appointed. 
(d) Appointment shall be for a fixed period of time and may be extended 
for  further periods. 

(e) Before the Assembly makes a decision on the appointment of any 
national  Office or intergovernmental organization, or on the extension of 
its appointment,  or before it allows any such appointment to lapse, the 
Assembly shall hear  the interested Office or organization and seek the 
advice of the Committee  for Technical Cooperation referred to in Article 
56 once that Committee has  been established. 


Article 17 


Procedure Before the International Searching Authority 

(1) Procedure before the International Searching Authority shall be 
governed  by the provisions of this Treaty, the Regulations, and the 
agreement which  the International Bureau shall conclude, subject to this 
Treaty and the Regulations,  with the said Authority. 

(2)(a) If the International Searching Authority considers: 

(i) that the international application relates to a subject matter which 
the  International Searching Authority is not required, under the 
Regulations, to  search, and in the particular case decides not to search, or 

(ii) that the description, the claims, or the drawings, fail to comply 
with  the prescribed requirements to such an extent that a meaningful 
search could  not be carried out, the said Authority shall so declare and 
shall notify the  applicant and the International Bureau that no 
international search report  will be established. 

(b) If any of the situations referred to in subparagraph (a) is found to 
exist  in connection with certain claims only, the international search 
report shall  so indicate in respect of such claims, whereas, for the 
other claims, the said  report shall be established as provided in Article 
18. 

(3)(a) If the International Searching Authority considers that the 
international  application does not comply with the requirement of unity 
of invention as set  forth in 




the Regulations, it shall invite the applicant to pay additional fees. The 
 International Searching Authority shall establish the international 
search  report on those parts of the international application which 
relate to the  invention first mentioned in the claims ("main invention") 
and, provided the  required additional fees have been paid within the 
prescribed time limit, on  those parts of the international application 
which relate to inventions in  respect of which the said fees were paid. 

(b) The national law of any designated State may provide that, where the 
national  Office of the State finds the invitation, referred to in 
subparagraph (a),  of the International Searching Authority justified and 
where the applicant  has not paid all additional fees, those parts of the 
international application  which consequently have not been searched 
shall, as far as effects in the State  are concerned, be considered with- 

drawn unless a special fee is paid by the applicant to the national Office 
 of that State. 


Article 18 


The International Search Report 

(1) The international search report shall be established within the 
prescribed  time limit and in the prescribed form. 

(2) The international search report shall, as soon as it has been 
established,  be transmitted by the International Searching Authority to 
the applicant and  the International Bureau. 

(3) The international search report or the declaration referred to in 
Article  17(2)(a) shall be translated as provided in the Regulations. The 
translations  shall be prepared by or under the responsibility of the 
International Bureau. 

Article 19 


 Amendment of the Claims Before the International Bureau 

(1) The applicant shall, after having received the international search 
report,  be entitled to one opportunity to amend the claims of the 
international application  by filing amendments with the International 
Bureau within the prescribed time  limit. He may, at the same time, file a 
brief statement, as provided in the  Regulations, explaining the 
amendments and indicating any impact that such  amendments might have on 
the description and the drawings. 

(2) The amendments shall not go beyond the disclosure in the international 
 application as filed. 

(3) If the national law of any designated State permits amendments to go 
beyond  the said disclosure, failure to comply with paragraph (2) shall 
have no consequence  in that State. 


Article 20 


Communication to Designated Offices 

(1)(a) The international application, together with the international 
search  report (including any indication referred to in Article 17(2)(b)) 
or the declaration  referred to in Article 17(2)(a), shall be communicated 
to each designated Office,  as provided in the Regulations, unless the 
designated Office waives such requirement  in its entirety or in part. 

(b) The communication shall include the translation (as prescribed) of the 
 said report or declaration. 

(2) If the claims have been amended by virtue of Article 19(1), the 
communication  shall either contain the full text of the claims both as 
filed and as amended  or shall contain the full text of the claims as 
filed and specify the amendments,  and shall include the statement, if 
any, referred to in Article 19(1). 
(3) At the request of the designated Office or the applicant, the 
International  Searching Authority shall send to the said Office or the 
applicant, respectively,  copies of the documents cited in the 
international search report, as provided  in the Regulations. 


Article 21 


International Publication 

(1) The International Bureau shall publish international applications. 
(2)(a) Subject to the exceptions provided for in subparagraph (b) and in 
Article  64(3), the international publication of the international 
application shall  be effected promptly after the expiration of 18 months 
from the priority date  of that application. 

(b) The applicant may ask the International Bureau to publish his 
international  application any time before the expiration of the time 
limit referred to in  subparagraph (a). The International Bureau shall 
proceed accordingly, as provided  in the Regulations. 

(3) The international search report or the declaration referred to in 
Article  17(2)(a) shall be published as prescribed in the Regulations. 

(4) The language and form of the international publication and other 
details  are governed by the Regulations. 

(5) There shall be no international publication if the international 
application  is withdrawn or is considered withdrawn before the technical 
preparations for  publication have been completed. 

(6) If the international application contains expressions or drawings 
which,  in the opinion of the International Bureau, are contrary to 
morality or public  order, or if, in its opinion, the international 
application contains disparaging  statements as defined in the 
Regulations, it may omit such expressions 



drawings, and statements, from its publications, indicating the place and 
number  of words or drawings omitted, and furnishing, upon request, 
individual copies  of the passages omitted. 


Article 22 


Copy, Translation, and Fee, to Designated Offices 

(1) The applicant shall furnish a copy of the international application 
(unless  the communication provided for in Article 20 has already taken 
place) and a  translation thereof (as prescribed), and pay the national 
fee (if any), to  each designated Office not later than at the expiration 
of 20 months from the  priority date. Where the national law of the 
designated State requires the  indication of the name of and other 
prescribed data concerning the inventor  but allows that these indications 
be furnished at a time later than that of  the filing of a national 
application, the applicant shall, unless they were  contained in the 
request, furnish the said indications to the national Office  of or acting 
for that State not later than at the expiration of 20 months from  the 
priority date. 

(2) Where the International Searching Authority makes a declaration, under 
 Article 17(2)(a), that no international search report will be 
established,  the time limit for performing the acts referred to in 
paragraph (1) of this  Article shall be the same as that provided for in 
paragraph (i). 

(3) Any national law may, for performing the acts referred to in 
paragraphs 
(1) or (2), fix time limits which expire later than the time limit 
provided  for in those paragraphs. 


Article 23 


Delaying of National Procedure 

(1) No designated Office shall process or examine the international 
application  prior to the expiration of the applicable time limit under 
Article 22. 
(2) Notwithstanding the provisions of paragraph (1), any designated Office 
 may, on the express request of the applicant, process or examine the 
international  application at any time. 


Article 24 


 Possible Loss of Effect in Designated States 

(1) Subject, in case (ii) below, to the provisions of Article 25, the 
effect  of the international application provided for in Article 11(3) 
shall cease  in any designated State with the same consequences as the 
withdrawal of any  national application in that State: 

(i) if the applicant withdraws his international application or the 
designation  of that State; 

(ii) if the international application is considered withdrawn by virtue of 
 Articles 12(3), 14(1)(b), 14(3)(a), or 14(4), or if the designation of 
that  State is considered withdrawn by virtue of Article 14(3)(b); 

(iii) if the applicant fails to perform the acts referred to in Article 22 
 within the applicable time limit. 

(2) Notwithstanding the provisions of paragraph (1), any designated Office 
 may maintain the effect provided for in Article 11(3) even where such 
effect  is not required to be maintained by virtue of Article 25(2). 


Article 25 


Review by Designated Offices 

(1)(a) Where the receiving Office has refused to accord an international 
filing  date or has declared that the international application is 
considered withdrawn,  or where the International Bureau has made a 
finding under Article 12(3), the  International Bureau shall promptly 
send, at the request of the applicant,  copies of any document in the file 
to any of the designated Offices named by  the applicant. 

(b) Where the receiving Office has declared that the designation of any 
given  State is considered withdrawn, the International Bureau shall 
promptly send,  at the request of the applicant, copies of any document in 
the file to the  national Office of such State. 

(c) The request under subparagraphs (a) or (b) shall be presented within 
the  prescribed time limit. 

(2)(a) Subject to the provisions of subparagraph (b), each designated 
Office  shall, provided that the national fee (if any) has been paid and 
the appropriate  translation (as prescribed) has been furnished within the 
prescribed time limit,  decide whether the refusal, declaration, or 
finding, referred to in paragraph 
(1) was justified under the provisions of this Treaty and the Regulations, 
 and, if it finds that the refusal or declaration was the result of an 
error  or omission on the part of the receiving Office or that the finding 
was the  result of an error or omission on the part of the International 
Bureau, it  shall, as far as effects in the State of the designated Office 
are concerned,  treat the international application as if such error or 
omission had not occurred. 
(b) Where the record copy has reached the International Bureau after the 
expiration  of the time limit prescribed under Article 12(3) on account of 
any error or  omission on the part of the applicant, the provisions of 
subparagraph (a) shall  apply only under the circumstances referred to in 
Article 48(2). 




Article 26 


Opportunity to Correct Before Designated Offices 

No designated Office shall reject an international application on the 
grounds  of noncompliance with the requirements of this Treaty and the 
Regulations without  first giving the applicant the opportunity to correct 
the said application  to the extent and according to the procedure 
provided by the national law for  the same or comparable situations in 
respect of national applications. 

Article 27 


National Requirements 

(1)   No national law shall require compliance with requirements relating 
to  the form or contents of the international application different from 
or additional  to those which are provided for in this Treaty and the 
Regulations. 
(2)   The provisions of paragraph (1) neither affect the application of 
the  provisions of Article 7(2) nor preclude any national law from 
requiring, once  the processing of the international application has 
started in the designated  Office, the furnishing: 

(i)   when the applicant is a legal entity, of the name of an officer 
entitled  to represent such legal entity. 

(ii) of documents not part of the international application but which 
constitute  proof of allegations or statements made in that application, 
including the  confirmation of the international application by the 
signature of the applicant  when that application, as filed, was signed by 
his representative or agent. 
(3)   Where the applicant, for the purposes of any designated State, is 
not  qualified according to the national law of that State to file a 
national application  because he is not the inventor, the international 
application may be rejected  by the designated Office. 

(4)   Where the national law provides, in respect of the form or contents 
of  national applications, for requirements which, from the viewpoint of 
applicants,  are more favorable than the requirements provided for by this 
Treaty and the  Regulations in respect of international applications, the 
national Office,  the courts and any other competent organs of or acting 
for the designated State  may apply the former requirements, instead of 
the latter requirements, to international  applications, except where the 
applicant insists that the requirements provided  for by this Treaty and 
the Regulations be applied to his international application. 
(5)   Nothing in this Treaty and the Regulations is intended to be 
construed  as prescribing anything that would limit the freedom of each 
Contracting State  to prescribe such substantive conditions of 
patentability as it desires. In  particular, any provision in this Treaty 
and the Regulations concerning the  definition of prior art is exclusively 
for the purposes of the international  procedure and, consequently, any 
Contracting State is free to apply, when determining  the patentability of 
an invention claimed in an international application,  the criteria of its 
national law in respect of prior art and other conditions  of 
patentability not constituting requirements as to the form and contents 
of applications. 

(6)   The national law may require that the applicant furnish evidence in 
respect  of any substantive condition of patentability prescribed by such 
law. 
(7)   Any receiving Office or, once the processing of the international 
application  has started in the designated Office, that Office may apply 
the national law  as far as it relates to any requirement that the 
applicant be represented by  an agent having the right to represent 
applicants before the said Office and/or  that the applicant have an 
address in the designated State for the purpose  of receiving notifications. 

(8)   Nothing in this Treaty and the Regulations is intended to be 
construed  as limiting the freedom of any Contracting State to apply 
measures deemed necessary  for the preservation of its national security 
or to limit, for the protection  of the general economic interests of that 
State, the right of its own residents  or nationals to file international 
applications. 


Article 28 


Amendment of the Claims, the Description, and the 
Drawings, Before Designated Offices 

(1)   The applicant shall be given the opportunity to amend the claims, 
the  description, and the drawings, before each designated Office within 
the prescribed  time limit. No designated Office shall grant a patent, or 
refuse the grant  of a patent, before such time limit has expired except 
with the express consent  of the applicant. 

(2)   The amendments shall not go beyond the disclosure in the 
international  application as filed unless the national law of the 
designated State permits  them to go beyond the said disclosure. 

(3)   The amendments shall be in accordance with the national law of the 
designated  State in all respects not provided for in this Treaty and the 
Regulations. 


(4)   Where the designated Office requires a translation of the 
international  application, the amendments shall be in the language of the 
translation. 

Article 29 


Effects of the International Publication 

(1)   As far as the protection of any rights of the applicant in a 
designated  State is concerned, the effects, in that State, of the 
international publication  of an international application shall, subject 
to the provisions of paragraphs 
(2) to (4), be the same as those which the national law of the designated 
State  provides for the compulsory national publication of unexamined 
national applications  as such. 

(2)   If the language in which the international publication has been 
effected  is different from the language in which publications under the 
national law  are effected in the designated State, the said national law 
may provide that  the effects provided for in paragraph (1) shall be 
applicable only from such  time as: 

(i)   a translation into the latter language has been published as 
provided  by the national law, or 

(ii)    a translation into the latter language has been made available to 
the  public, by laying open for public inspection as provided by the 
national law,  or 

(iii)     a translation into the latter language has been transmitted by 
the  applicant to the actual or prospective unauthorized user of the 
invention claimed  in the international application, or 

(iv)    both the acts described in (i) and (iii), or both the acts 
described  in (ii) and (iii), have taken place. 

(3)   The national law of any designated State may provide that, where the 
 international publication has been effected, on the request of the 
applicant,  before the expiration of 18 months from the priority date, the 
effects provided  for in paragraph (1) shall be applicable only from the 
expiration of 18 months  from the priority date. 

(4)   The national law of any designated State may provide that the 
effects  provided for in paragraph (1) shall be applicable only from the 
date on which  a copy of the international application as published under 
Article 21 has been  received in the national Office of or acting for such 
State. The said Office  shall publish the date of receipt in its gazette 
as soon as possible. 

Article 30 


Confidential Nature of the International Application 

(1)(a)      Subject to the provisions of subparagraph (b), the 
International  Bureau and the International Searching Authorities shall 
not allow access by  any person or authority to the international 
application before the international  publication of that application, 
unless requested or authorized by the applicant. 
(b)   The provisions of subparagraph (a) shall not apply to any 
transmittal  to the competent International Searching Authority, to 
transmittals provided  for under Article 13, and to communications 
provided for under Article 20. 
(2)(a)      No national Office shall allow access to the international 
application  by third parties unless requested or authorized by the 
applicant, before the  earliest of the following dates: 

(i)   date of the international publication of the international 
application, 
(ii)    date of receipt of the communication of the international 
application  under Article 20, 

(iii)     date of receipt of a copy of the international application under 
 Article 22. 

(b)   The provisions of subparagraph (a) shall not prevent any national 
Office  from informing third parties that it has been designated, or from 
publishing  that fact. Such information or publication may, however, 
contain only the following  data: identification of the receiving Office, 
name of the applicant, international  filing date, international 
application number, and title of the invention. 
(c)   The provisions of subparagraph (a) shall not prevent any designated 
Office  from allowing access to the international application for the 
purposes of the  judicial authorities. 

(3)   The provisions of paragraph (2)(a) shall apply to any receiving 
Office  except as so far as transmittals provided for under Article 12(1) 
are concerned. 
(4)   For the purposes of this Article, the term "access" covers any means 
 by which third parties may acquire cognizance, including individual 
communication  and general publication, provided, however, that no 
national Office shall generally  publish an international application or 
its translation before the international  publication or, if international 
publication has not taken place by the expiration  of 20 months from the 
priority date, before the expiration of 20 months from  the said priority 
date. 



Chapter II 

International Preliminary 
Examination 


Article 31 


Demand for International Preliminary Examination 

(1)   On the demand of the applicant, his international application shall 
be  the subject of an international preliminary examination as provided in 
the  following provisions and the Regulations. 

(2)(a)      Any applicant who is a resident or national, as defined in the 
 Regulations, of a Contracting State bound by Chapter II, and whose 
international  application has been filed with the receiving Office of or 
acting for such  State, may make a demand for international preliminary 
examination. 
(b)   The Assembly may decide to allow persons entitled to file 
international  applications to make a demand 



for international preliminary examination even if they are residents or 
nationals  of a State not party to this Treaty or not bound by Chapter II. 

(3) The demand for international preliminary examination shall be made 
separately  from the international application. The demand shall contain 
the prescribed  particulars and shall be in the prescribed language and form. 

(4)(a) The demand shall indicate the Contracting State or States in which 
the  applicant intends to use the results of the international preliminary 
examination 
(elected States). Addi- 

tional Contracting States may be elected later. Election may relate only 
to  Contracting States already designated under Article 4. 

(b) Applicants referred to in paragraph (2)(a) may elect any Contracting 
State  bound by Chapter II. Applicants referred to in paragraph (2)(b) may 
elect only  such Contracting States bound by Chapter II as have declared 
that they are  prepared to be elected by such applicants. 

(5) The demand shall be subject to the payment of the prescribed fees 
within  the prescribed time limit. 

(6)(a) The demand shall be submitted to the competent International 
Preliminary  Examining Authority referred to in Article 32. 

(b) Any later election shall be submitted to the International Bureau. 
(7) Each elected Office shall be notified of its election. 


Article 32 


The International Preliminary Examining Authority 

(1) International preliminary examination shall be carried out by the 
International  Preliminary Examining Authority. 

(2) In the case of demands referred to in Article 31(2)(a), the receiving 
Office,  and, in the case of demands referred to in Article 31(2)(b), the 
Assembly,  shall, in accordance with the applicable agreement between the 
interested International  Preliminary Examining Authority or Authorities 
and the International Bureau,  specify the International Preliminary 
Examining Authority or Authorities competent  for the preliminary examination. 

(3) The provisions of Article 16(3) shall apply, mutatis mutandis in 
respect  of the International Preliminary Examining Authorities. 


Article 33 


The International Preliminary Examination 

(1) The objective of the international preliminary examination is to 
formulate  a preliminary and non-binding opinion on the questions whether 
the claimed  inventions appears to be novel, to involve inventive step (to 
be nonobvious),  and to be industrially applicable. 

(2) For the purposes of the international preliminary examination, a 
claimed  invention shall be considered novel if it is not anticipated by 
the prior art  as defined in the Regulations. 

(3) For purposes of the international preliminary examination, a claimed 
invention  shall be considered to involve an inventive step if, having 
regard to the prior  art as defined in the Regulations, it is not, at the 
prescribed relevant date,  obvious to a person skilled in the art. 

(4) For the purposes of the international preliminary examination, a 
claimed  invention shall be considered industrially applicable if, 
according to its  nature, it can be made or used (in the technological 
sense) in any kind of  industry.  Industry 

shall be understood in its broadest sense, as in the Paris Convention for 
the  Protection of Industrial Property. 

(5) The criteria described above merely serve the purposes of 
international  preliminary examination. Any Contracting State may apply 
additional or different  criteria for the purpose of deciding whether, in 
that State, the claimed invention  is patentable or not. 

(6) The international preliminary examination shall take into 
consideration  all the documents cited in the international search report. 
It may take into  consideration any additional documents considered to be 
relevant in the particular  case. 


Article 34 


Procedure Before the International Preliminary 
Examining Authority 

(1) Procedure before the International Preliminary Examining Authority 
shall  be governed by the provisions of this Treaty, the Regulations, and 
the agreement  which the International Bureau shall conclude, subject to 
this Treaty and the  Regulations, with the said Authority. 

(2)(a) The applicant shall have a right to communicate orally and in 
writing  with the International Preliminary Examining Authority. 

(b) The applicant shall have a right to amend the claims, the description, 
 and the drawings, in the prescribed manner and within the prescribed time 
limit,  before the international preliminary examination report is 
established. The  amendment shall not go beyond the disclosure in the 
international application  as filed. 

(c) The applicant shall receive at least one written opinion from the 
International  Preliminary Examining Authority unless such Authority 
considers that all of  the following conditions are fulfilled: 

(i) the invention satisfies the criteria set forth in Article 33(1), 
(ii) the international application complies with the requirements of this 
Treaty  and the Regulations in so far as checked by that Authority, 



(iii) no observations are intended to be made under Article 35(2), last 
sentence. 
(d) The applicant may respond to the written opinion. 

(3)(a) If International Preliminary Examining Authority considers that the 
 international application does not comply with the requirement of unity 
of  invention as set forth in the Regulations, it may invite the 
applicant, at  his option, to restrict the claims so as to comply with the 
requirement or  to pay additional fees. 

(b) The national law of any elected State may provide that, where the 
applicant  chooses to restrict the claims under subparagraph (a), those 
parts of the international  application which, as a consequence of the 
restriction, are not to be the subject  of international preliminary 
examination shall, as far as effects in that State  are concerned, be 
considered withdrawn unless a special fee is paid by the  applicant to the 
national Office of that State. 

(c) If the applicant does not comply with the invitation referred to in 
subparagraph 
(a) within the prescribed time limit, the International Preliminary 
Examining  Authority shall establish an international preliminary 
examination report on  those parts of the international application which 
relate to what appears to  be the main invention and shall indicate the 
relevant facts in the said report.  The national law of any elected State 
may provide that, where its national  Office finds the invitation of the 
International Preliminary Examining Authority  justified, those parts of 
the international application which do not relate  to the main invention 
shall, as far as effects in that State are concerned,  be considered 
withdrawn unless a special fee is paid by the applicant to that  Office. 

(4)(a) If the International Preliminary Examining Authority considers 
(i) that the international application relates to a subject matter on 
which  the International Preliminary Examining Authority is not required, 
under the  Regulations, to carry out an international preliminary 
examination, and an  international preliminary examination, and in the 
particular case decides not  to carry out such examination, or 

(ii) that the description, the claims, or the drawings, are so unclear, or 
 the claims are so inadequately supported by the description, that no 
meaningful  opinion can be formed on the novelty, inventive step 
(nonobviousness), or industrial  applicability, of the claimed invention, 

the said authority shall not go into the questions referred to in Article 
33(1)  and shall inform the applicant of this opinion and the reasons 
therefor. 
(b) If any of the situations referred to in subparagraph (a) is found to 
exist  in, or in connection with, certain claims 

only, the provisions of that subparagraph shall apply only to the said 
claims. 

Article 35 


The International Preliminary Examination Report 

(1) The international preliminary examination report shall be established 
within  the prescribed time limit and in the prescribed form. 

(2) The international preliminary examination report shall not contain any 
 statement on the question whether the claimed invention is or seems to be 
patentable  or unpatentable according to any national law. It shall state, 
subject to the  provisions of paragraph (3), in relation to each claim, 
whether the claim appears  to satisfy the criteria of novelty, inventive 
step (non-obviousness), and industrial  applicability, as defined for the 
purposes of the international preliminary  examination in Article 33(1) to 
(4). The statement shall be accompanied by  the citation of the documents 
believed to support the stated conclusion with  such explanations as the 
circumstances of the case may require. The statement  shall also be 
accompanied by such other observation as the Regulations provide  for. 

(3)(a) If, at the time of establishing the international preliminary 
examination  report, the International Preliminary Examining Authority 
considers that any  of the situations referred to in Article 34(4)(a) 
exists, that report shall  state this opinion and the reasons therefor. It 
shall not contain any statement  as provided in paragraph (2). 

(b) If a situation under Article 34(4)(b) is found to exist, the 
international  preliminary examination report shall, in relation to the 
claims in question,  contain the statement as provided in subparagraph 
(a), whereas, in relation  to the other claims, it shall contain the 
statement as provided in paragraph 
(2). 


Article 36 


Transmittal, Translation, and Communication of the 
International Preliminary Examination Report 

(1) The international preliminary examination report, together with the 
prescribed  annexes, shall be transmitted to the applicant and to the 
International Bureau. 
(2)(a) The international preliminary examination report and its annexes 
shall  be translated into the prescribed languages. 

(b) Any translation of the said report shall be prepared by or under the 
responsibility  of the International Bureau, whereas any translation of 
the said annexes shall  be prepared by the applicant. 



(3)(a)      The international preliminary examination report, together 
with  its translation (as prescribed) and its annexes (in the original 
language),  shall be communicated by the International Bureau to each 
elected Office. 
(b) The prescribed translation of the annexes shall betransmitted within 
the  prescribed time limit by the applicant to the elected Office. 

(4) The provisions of Article 20(3) shall apply, mutatis , to copies of 
any  document which is cited in the international preliminary examination 
report  and which was not cited in the international search report. 


Article 37 


Withdrawal of Demand or Election 

(1) The applicant may withdraw any or all elections. 

(2) If the election of all elected States is withdrawn, the demand shall 
be  considered withdrawn. 

(3)(a) Any withdrawal shall be notified to the International Bureau. 
(b) The elected Office concerned and the International Preliminary 
Examining  Authority concerned shall be notified accordingly by the 
International Bureau. 
(4)(a) Subject to the provisions of subparagraph (b), withdrawal of the 
demand  or of the election of a Contracting State shall, unless the 
national law of  that State provides otherwise, be considered to be 
withdrawal of the international  application as far as that State is 
concerned. 

(b) Withdrawal of the demand or of the election shall not be considered to 
 be withdrawal of the international application if such withdrawal is 
effected  prior to the expiration of the applicable time limit under 
Article 22; however,  any Contracting State may provide in its national 
law that the aforesaid shall  apply only if its national Office has 
received, within the said time limit,  a copy of the international 
application, together with a translation (as prescribed),  and the 
national fee. 


Article 38 


Confidential Nature of the International Preliminary 
Examination 

(1)   Neither the International Bureau nor the International Preliminary 
Examining  Authority shall, unless requested or authorized by the 
applicant, allow access  within the meaning, and with the proviso, of 
Article 30(4) to the file of the  international preliminary examination by 
any person or authority at any time,  except by the elected Offices once 
the international preliminary examination  report has been established. 

(2) Subject to the provisions of paragraph (1) and Articles 36(1) and (3) 
and  37(3)(b), neither the International Bureau nor the International 
Preliminary  Examining Authority shall, unless requested or authorized by 
the applicant,  give information on the issuance or non-issuance of an 
international preliminary  examination report and on the withdrawal or 
non-withdrawal of the demand or  of any election. 


Article 39 


Copy, Translation, and Fee to Elected Offices 

(1)(a) If the election of any Contracting State has been effected prior to 
 the expiration of the 19th month from the priority date, the provisions 
of  Article 22 shall not apply to such State and the applicant shall 
furnish a  copy of the international application (unless the communication 
under Article  20 has already taken place) and a translation thereof (as 
prescribed), and  pay the national fee (if any), to each elected Office 
not later than at the  expiration of 30 months from the priority date. 

(b) Any national law may, for performing the acts referred to in 
subparagraph 
(a), fix time limits which expire later than the time limit provided for 
in  that subparagraph. 

(2) The effect provided for in Article 11(3) shall cease in the elected 
State  with the same consequences as the withdrawal of any national 
application in  that State if the applicant fails to perform the acts 
referred to in paragraph 
(1)(a) within the time limit applicable under paragraph (1)(a) or (b). 
(3) Any elected Office may maintain the effect provided for in Article 
11(3)  even where the applicant does not comply with the requirements 
provided for  in paragraph (1)(a) or (b). 


Article 40 


Delaying of National Examination and Other Processing 

(1) If the election of any Contracting State has been effected prior to 
the  expiration of the 19th month from the priority date, the provisions 
of Article  23 shall not apply to such State and the national Office of or 
acting for that  State shall not proceed, subject to the provisions of 
paragraph (2), to the  examination and other processing of the 
international application prior to  the expiration of the applicable time 
limit under Article 39. 

(2) Notwithstanding the provisions of paragraph (1), any elected Office 
may,  on the express request of the applicant, proceed to the examination 
and other  processing of the international application at any time. 


Article 41 


Amendment of the Claims, the Description, and the 
Drawings, before Elected Offices 

(1) The applicant shall be given the opportunity to amend the claims, the 
description,  and the drawings, before each elected Office within the 
prescribed time limit.  No elected Office shall grant a patent, or refuse 
the grant of a patent, before  such time limit has expired, except with 
the express consent of the applicant. 
(2)   The amendments shall not go beyond the disclosure in the 
international  application as filed, unless the na- 




tional law of the elected State permits them to go beyond the said 
disclosure. 
(3)   The amendments shall be in accordance with the national law of the 
elected  State in all respects not provided for in this Treaty and the 
Regulations. 
(4)   Where an elected Office requires a translation of the international 
application,  the amendments shall be in the language of the translation. 


Article 42 


Results of National Examination in Elected Offices 

No elected Office receiving the international preliminary examination 
report  may require that the applicant furnish copies, or information on 
the contents,  of any papers connected with the examination relating to 
the same international  application in any other elected Office. 

Chapter III 

Common Provisions 


Article 43 


Seeking Certain Kinds of Protection 

In respect of any designated or elected State whose law provides for the 
grant  of inventors' certificates, utility certificates, utility models, 
patents or  certificates of addition, inventors' certificates of addition, 
or utility certificates  of addition, the applicant may indicate, as 
prescribed in the Regulations,  that his international application is for 
the grant, as far as that State is  concerned, of an inventor's 
certificate, a utility certificate, or a utility  model, rather than a 
patent, or that it is for the grant of a patent or certificate  of 
addition, an inventor's certificate of addition, or a utility certificate 
of addition, and the ensuing effect shall be governed by the applicant's 
choice.  For the purposes of this Article and any Rule thereunder, Article 
2(ii) shall  not apply. 


Article 44 


Seeking Two Kinds of Protection 

In respect of any designated or elected State whose law permits an 
application,  while being for the grant of a patent or one of the other 
kinds of protection  referred to in Article 43, to be also for the grant 
of another of the said  kinds of protection, the applicant may indicate, 
as prescribed in the Regulations,  the two kinds of protection he is 
seeking, and the ensuing effect shall be  governed by the applicant's 
indications. For the purposes of this Article,  Article 2(ii) shall not apply. 


Article 45 


Regional Patent Treaties 

(1)   Any treaty providing for the grant of regional patents ("regional 
patent  treaty"), and giving to all persons who, according to Article 9, 
are entitled  to file international applications the right to file 
applications for such  patents, may provide that international 
applications designating or electing  a State party to both the regional 
patent treaty and the present Treaty may  be filed as applications for 
such patents. 

(2)   The national law of the said designated or elected State may provide 
 that any designation or election of such State in the international 
application  shall have the effect of an indication of the wish to obtain 
a regional patent  under the regional patent treaty. 


Article 46 


Incorrect Translation of the International Application 

If, because of an incorrect translation of the international application, 
the  scope of any patent granted on that application exceeds the scope of 
the international  application in its original language, the competent 
authorities of the Contracting  State concerned may accordingly and 
retroactively limit the scope of the patent,  and declare it null and void 
to the extent that its scope has exceeded the  scope of the international 
application in its original language. 


Article 47 


Time Limits 

(1)   The details for computing time limits referred to in this Treaty are 
 governed by the Regulations. 

(2)(a ) All time limits fixed in Chapters I and II of this Treaty may, 
outside  any revision under Article 60, be modified by a decision of the 
Contracting  States. 

(b)   Such decisions shall be made in the Assembly or through voting by 
correspondence  and must be unanimous. 

(c)   The details of the procedure are governed by the Regulations. 

Article 48 


Delay in Meeting Certain Time Limits 

(1)   Where any time limit fixed in this Treaty or the Regulations is not 
met  because of interruption in the mail service or unavoidable loss or 
delay in  the mail, the time limit shall be deemed to be met in the cases 
and subject  to the proof and other conditions prescribed in the Regulations. 

(2)(a) Any Contracting State shall, as far as that State is concerned, 
excuse,  for reasons admitted under its national law, any delay in meeting 
any time  limit. 

(b)   Any Contracting State may, as far as that State is concerned, 
excuse,  for reasons other than those referred to in subparagraph (a), any 
delay in  meeting any time limit. 




Article 49 


Right to Practice Before International Authorities 

Any attorney, patent agent, or other person, having the right to practice 
before  the national Office with which the international application was 
filed, shall  be entitled to practice before the International Bureau and 
the competent International  Searching Authority and competent 
International Preliminary Examining Authority  in respect of that application. 

Chapter IV 

Technical Services 


Article 50 


Patent Information Service 

(1) The International Bureau may furnish services by providing technical 
and  any other pertinent information available to it on the basis of 
published documents,  primarily patents and published applications 
(referred to in this Article as  "the information services"). 

(2) The International Bureau may provide these information services either 
 directly or through one or more International Searching Authorities or 
other  national or international specialized institutions, with which the 
International  Bureau may reach agreement. 

(3) The information services shall be operated in a way particularly 
facilitating  the acquisition by Contracting States which are developing 
countries of technical  knowledge and technology, including available 
published know-how. 

(4) The information services shall be available to Governments of 
Contracting  States and their nationals and residents. The Assembly may 
decide to make these  services available also to others. 

(5)(a) Any service to Governments of Contracting States shall be furnished 
 at cost, provided that, when the Government is that of a Contracting 
State  which is a developing country, the service shall be furnished below 
cost if  the difference can be covered from profit made on services 
furnished to others  than Governments of Contracting States or from the 
sources referred to in Article  51(4). 

(b) The cost referred to in subparagraph (a) is to be understood as cost 
over  and above costs normally incident to the performance of the services 
of a national  Office or the obligations of an International Searching 
Authority. 
(6) The details concerning the implementation of the provisions of this 
Article  shall be governed by decisions of the Assembly and, within the 
limits to be  fixed by the Assembly, such working groups as the Assembly 
may set up for that  purpose. 

(7) The Assembly shall, when it considers it necessary, recommend methods 
of  providing financing supplementary to those referred to in paragraph 
(5). 

Article 51 


Technical Assistance 

(1) The Assembly shall establish a Committee for Technical Assistance 
(referred  to in this Article as "the Committee"). 

(2)(a) The members of the Committee shall be elected among the Contracting 
 States, with due regard to the representation of developing countries. 
(b) The Director General shall, on his own initiative or at the request of 
 the Committee, invite representatives of intergovernmental organizations 
concerned  with technical assistance to developing countries to 
participate in the work  of the Committee. 

(3)(a) The task of the Committee shall be to organize and supervise 
technical  assistance for Contracting States which are developing 
countries in developing  their patent systems individually or on a 
regional basis. 

(b) The technical assistance shall comprise, among other things, the 
training  of specialists, the loaning of experts, and the supply of 
equipment both for  demonstration and for operational purposes. 

(4) The International Bureau shall seek to enter into agreements, on the 
one  hand, with international financing organizations and 
intergovernmental organizations,  particularly the United Nations, the 
agencies of the United Nations, and the  Specialized Agencies connected 
with the United Nations concerned with technical  assistance, and, on the 
other hand, with the Governments of the States receiving  the technical 
assistance, for the financing of projects pursuant to this Article. 
(5) The details concerning the implementation of the provisions of this 
Article  shall be governed by decisions of the Assembly and, within the 
limits to be  fixed by the Assembly, such working groups as the Assembly 
may set up for that  purpose. 

 Article 52 

Relations with Other Provisions of the Treaty 

Nothing in this Chapter shall affect the financial provisions contained in 
 any other Chapter of this Treaty. Such provisions are not applicable to 
the  present Chapter or to its implementation. 



Chapter V 

Administrative Provisions 


Article 53 


Assembly 

(1)(a) The Assembly shall, subject to Article 57(8), consist of the 
Contracting  States. 

(b)   The Government of each Contracting State shall be represented by one 
 delegate, who may be assisted by alternate delegates, advisors, and 
experts. 
(2)(a) The Assembly shall: 

(i)   deal with matters concerning the maintenance and development of the 
Union  and the implementation of this Treaty; 

(ii) perform such tasks as are specifically assigned to it under other 
provisions  of this Treaty; 

(iii) give directions to the International Bureau concerning the 
preparation  for revision conferences; 

(iv) review and approve the reports and activities of the Director General 
 concerning the Union, and give him all necessary instructions concerning 
matters  within the competence of the Union; 

(v) review and approve the reports and activities of the Executive 
Committee  established under paragraph (9), and give instructions to such 
Committee; 
(vi) determine the program and adopt the biennial budget of the Union, and 
 approve its final accounts; 

(vii) adopt the financial regulations of the Union; 

(viii) establish such committees and working groups as it deems 
appropriate  to achieve the objectives of the Union; 

(ix) determine which States other than the Contracting States and, subject 
 to the provisions of paragraph (8), which intergovernmental and 
international  nongovernmental organizations shall be admitted to its 
meetings as observers; 
(x) take any other appropriate action designed to further the objectives 
of  the Union and perform such other functions as are appropriate under 
the Treaty. 
(b) With respect to matters which are of interest also to other Unions 
administered  by the Organization, the Assembly shall make its decisions 
after having heard  the advise of the Coordination Committee of the 
Organization. 

(3) A delegate may represent, and vote in the name of, one State only. 
(4) Each Contracting State shall have one vote. 

(5)(a) One-half of the Contracting States shall constitute a quorum. 
(b) In the absence of a quorum, the Assembly may make decisions but, with 
the  exception of decisions concerning its own procedure, all such 
decisions shall  take effect only if the quorum and the required majority 
are attained through  voting by correspondence as provided in the Regulations. 

(6)(a) Subject to the provisions of Articles 47(2)(b), 58(2)(b), 58(3) and 
 61(2)(b), the decisions of the Assembly shall require two-thirds of the 
votes  cast. 

(b) Abstentions shall be considered as votes. 

(7) In connection with matters of exclusive interest to States bound by 
Chapter  II, any reference to Contracting States in paragraphs (4), (5), 
and (6), shall  be considered as applying only to States bound by Chapter II. 

(8) Any intergovernmental organization appointed as International 
Searching  or Preliminary Examining Authority shall be admitted as 
observer to the Assembly. 
(9) When the number of Contracting States exceeds forty, the Assembly 
shall  establish an Executive Committee. Any reference to the Executive 
Committee  in this Treaty and the Regulations shall be considered as 
references to such  Committee once it has been established, 

(10) Until the Executive Committee has been established, the Assembly 
shall  approve, within the limits of the program and triennial budget, the 
annual  programs and budgets prepared by the Director General. 

(11)(a) The Assembly shall meet in every second calendar year in ordinary 
session  upon convocation by the Director General and, in the absence of 
exceptional  circumstances, during the same period and at the same place 
as the General  Assembly of the Organization. 

(b) The Assembly shall meet in extraordinary session upon convocation by 
the  Director General, at the request of the Executive Committee, or at 
the request  of one-fourth of the Contracting States. 

(12) The Assembly shall adopt its own rules of procedure. 


Article 54 


Executive Committee 

(1)   When the Assembly has established an Executive Committee, that 
Committee  shall be subject to the provisions set forth hereinafter. 

(2)(a) The Executive Committee shall, subject to Article 57(8), consist of 
 States elected by the Assembly from among States members of the Assembly. 
(b) The Government of each State member of the Executive Committee shall 
be  represented by one delegate, who may be assisted by alternate 
delegates, advisors,  and experts. 

(3)   The number of States members of the Executive Committee shall 
correspond  to one-fourth of the number of States members of the Assembly. 
In establishing  the number of seats to be filled, remainders after 
division by four shall be  disregarded. 



(4)   In electing the members of the Executive Committee, the Assembly 
shall  have due regard to an equitable geographical distribution. 

(5)(a) Each member of the Executive Committee shall serve from the close 
of  the session of the Assembly which elected it to the close of the next 
ordinary  session of the Assembly. 

(b) Members of the Executive Committee may be re-elected but only up to a 
maximum  of two-thirds of such members. 

(c) The Assembly shall establish the details of the rules governing the 
election  and possible re-election of the members of the Executive 
Committee. 
(6)(a) The Executive Committee shall: 

(i) prepare the draft agenda of the Assembly: 

(ii) submit proposals to the Assembly in respect of the draft program and 
biennial  budget of the Union prepared by the Director General: 

(iii) [deleted] 

(iv) submit, with appropriate comments, to the Assembly the periodical 
reports  of the Director General and the yearly audit reports on the 
accounts: 
(v) take all necessary measures to ensure the execution of the program of 
the  Union by the Director General, in accordance with the decisions of 
the Assembly  and having regard to circumstances arising between two 
ordinary sessions of  the Assembly: 

(vi) perform such other functions as are allocated to it under this 
Treaty. 
(b  With respect to matters which are of interest also to other Unions 
administered  by the Organization, the Executive Committee shall make its 
decisions after  having heard the advise of the Coordinating Committee of 
the Organization. 
(7)(a) The Executive Committee shall meet once a year in ordinary session 
upon  convocation by the Director General, preferably during the same 
period and  at the same place as the Coordination Committee of the 
Organization. 
(b) The Executive Committee shall meet in extraordinary session upon 
convocation  by the Director General, either on his own initiative or at 
the request of  its Chairman or one-fourth of its members. 

(8)(a) Each State member of the Executive Committee shall have one vote. 
(b) One-half of the members of the Executive Committee shall constitute a 
quorum. 
(c) Decisions shall be made by a simple majority of the votes cast. 
(d) Abstentions shall not be considered as votes. 

(e) A delegate may represent, and vote in the name of, one State only. 
(9) Contracting States not members of the Executive Committee shall be 
admitted  to its meetings as observers, as well as any intergovernmental 
organization  appointed as International Searching or Preliminary 
Examining Authority. 
(10) The Executive Committee shall adopt its own rules of procedure. 

Article 55 


International Bureau 

(1)   Administrative tasks concerning the Union shall be performed by the 
International  Bureau. 

(2)   The International Bureau shall provide the secretariat of the 
various  organs of the Union. 

(3)   The Director General shall be the chief executive of the Union and 
shall  represent the Union. 

(4)   The International Bureau shall publish a Gazette and other 
publications  provided for by the Regulations or required by the Assembly. 

(5)   The Regulations shall specify the various services that national 
Offices  shall perform in order to assist the International Bureau and the 
International  Searching and Preliminary Examining Authorities in carrying 
out their tasks  under the Treaty. 

(6)   The Director General and any staff member designated by him shall 
participate,  without the right to vote, in all meetings of the Assembly, 
the Executive Committee  and any other committee or working group 
established under this Treaty or the  Regulations. The Director General, 
or a staff member designated by him, shall  be ex officio secretary of 
these bodies. 

(7)(a) The International Bureau shall, in accordance with the directions 
of  the Assembly and in cooperation with the Executive Committee, make the 
preparations  for the revision conferences. 

(b)   The International Bureau may consult with intergovernmental and 
international  non-governmental organizations concerning preparations for 
revision conferences. 
(c)   The Director General and persons designated by him shall take part, 
without  the right to vote, in the discussions at revision conferences. 

(8)   The International Bureau shall carry out any other tasks assigned to 
 it. 


Article 56 


Committee for Technical Cooperation 

(1)   The Assembly shall establish a Committee for Technical Cooperation 
(referred  to in this Article as "the Committee"). 



(2)(a) The Assembly shall determine the composition of the Committee and 
appoint  its members, with due regard to an equitable representation of 
developing countries. 
(b)   The International Searching and Preliminary Examining Authorities 
shall  be ex officio members of the Committee. In the case where such an 
Authority  is the national Office of a Contracting State, that State shall 
not be additionally  represented on the Committee. 

(c)   If the number of Contracting States so allows, the total number of 
members  of the Committee shall be more than double the number of ex 
officio members. 
(d)   The Director General shall, on his own initiative or at the request 
of  the Committee, invite representatives of interested organizations to 
participate  in discussions of interest to them. 

(3)   The aim of the Committee shall be to contribute, by advice and 
recommendations: 
(i)   to the constant improvement of the services provided for under the 
Treaty, 
(ii)    to the securing, so long as there are several International 
Searching  Authorities and several International Preliminary Examining 
Authorities, of  the maximum degree of uniformity in their documentation 
and working methods  and the maximum degree of uniformly high quality in 
their reports, and 
(iii) on the initiative of the Assembly or the Executive Committee, to the 
 solution of the technical problems specifically involved in the 
establishment  of a single International Searching Authority. 

(4)   Any Contracting State and any interested international organization 
may  approach the Committee in writing on questions which fall within the 
competence  of the Committee. 

(5)   The Committee may address its advice and recommendations to the 
Director  General or, through him, to the Assembly, the Executive 
Committee, all or some  of the International Searching and Preliminary 
Examining Authorities, and all  or some of the receiving Offices. 

(6)(a) In any case, the Director General shall transmit to the Executive 
Committee  the texts of all the advice and recommendations of the 
Committee. He may comment  on such texts. 

(b)   The Executive Committee may express its views on any advice, 
recommendation,  or other activity of the Committee, and may invite the 
Committee to study and  report on questions falling within its competence. 
The Executive Committee  may submit to the Assembly, with appropriate 
comments, the advice, recommendations  and report of the Committee. 

(7)   Until the Executive Committee has been established, references in 
paragraph 
(6) to the Executive Committee shall be construed as references to the 
Assembly. 
(8)   The details of the procedure of the Committee shall be governed by 
the  decisions of the Assembly. 


Article 57 


Finances 

(1)(a) The Union shall have a budget. 

(b)   The budget of the Union shall include the income and expenses proper 
 to the Union and its contribution to the budget of expenses common to the 
Unions  administered by the Organization. 

(c)   Expenses not attributable exclusively to the Union but also to one 
or  more other Unions administered by the Organization shall be considered 
as expenses  common to the Unions. The share of the Union in such common 
expenses shall  be in proportion to the interest the Union has in them. 

(2)   The budget of the Union shall be established with due regard to the 
requirements  of coordination with the budgets of the other Unions 
administered by the Organization. 
(3) Subject to the provisions of paragraph (5), the budget of the Union 
shall  be financed from the following sources: 

(i) fees and charges due for services rendered by the International Bureau 
 in relation to the Union; 

(ii) sale of, or royalties on, the publications of the International 
Bureau  concerning the Union; 

(iii) gifts, bequests, and subventions; 

(iv) rents, interests, and other miscellaneous income. 

(4) The amounts of fees and charges due to the International Bureau and 
the  prices of its publications shall be fixed that they should, under 
normal circumstances,  be sufficient to cover all the expenses of the 
International Bureau connected  with the administration of this Treaty. 

(5)(a) Should any financial year close with a deficit, the Contracting 
States  shall, subject to the provisions of subparagraphs (b) and (c), pay 
contributions  to cover such deficit. 

(b) The amount of the contribution of each Contracting State shall be 
decided  by the Assembly with due regard to the number of international 
applications  which has emanated from each of them in the relevant year. 

(c) If other means of provisionally covering any deficit or any part 
thereof  are secured, the Assembly may decide that such deficit be carried 
forward and  that the Contracting States should not be asked to pay 
contributions. 


(d) If the financial situation of the Union so permits, the Assembly may 
decide  that any contributions paid under subparagraph (a) be reimbursed 
to the Contracting  States which have paid them. 

(e) A Contracting State which has not paid, within two years of the due 
date  as established by the Assembly, its contribution under subparagraph 
(b) may  not exercise its right to vote in any of the organs of the Union. 
However,  any organ of the Union may allow such a State to continueto 
exercise its right  to vote in that organ as long as it is satisfied that 
the delay in payment  is due to exceptional and unavoidable circumstances. 

(6) If the budget is not adopted before the beginning of a new financial 
period,  it shall be at the same level as the budget of the previous year, 
as provided  in the financial regulations. 

(7)(a) The Union shall have a working capital fund which shall be 
constituted  by a single payment made by each Contracting State. If the 
fund becomes insufficient,  the Assembly shall arrange to increase it. If 
part of the fund is no longer  needed, it shall be reimbursed. 

(b) The amount of the initial payment of each Contracting State to said 
fund  or its participation in the increase thereof shall be decided by the 
Assembly  on the basis of principles similar to those provided for under 
paragraph (5)(b). 
(c) The terms of payment shall be fixed by the Assembly on the proposal of 
 the Director General and after it has heard the advice of the 
Coordinating  Committee of the Organization. 

(d) Any reimbursement shall be proportionate to the amounts paid by each 
Contracting  State, taking into account the dates at which they were paid. 

(8)(a) In the headquarters agreement concluded with the State on the 
territory  of which the Organization has its headquarters, it shall be 
provided that,  whenever the working capital fund is insufficient, such 
State shall grant advances.  The amount of these advances and the 
conditions on which they are granted shall  be the subject of separate 
agreements, in each case, between such State and  the Organization. As 
long as it remains under the obligation to grant advances,  such State 
shall have an ex officio seat in the Assembly and on the Executive  Committee. 

(b) The State referred to in subparagraph (a) and the Organization shall 
each  have the right to denounce the obligation to grant advances, by 
written notification.  Denunciation shall take effect three years after 
the end of the year in which  it has been notified. 

(9) The auditing of the accounts shall be effected by one or more of the 
Contracting  States or by external auditors, as provided in the financial 
regulations. They  shall be designated, with their agreement, by the Assembly. 


Article 58 


Regulations 

(1) The Regulations annexed to this Treaty provide Rules: 

(i) concerning matters in respect of which this Treaty expressly refers to 
 the Regulations or expressly provides that they are or shall be 
prescribed. 
(ii) concerning any administrative requirements, matters, or procedures, 
(iii) concerning any details useful in the implementation of the 
provisions  of this Treaty. 

(2)(a) The Assembly may amend the Regulations. 

(b) Subject to the provisions of paragraph (3), amendments shall require 
three-fourths  of the votes cast. 

(3)(a) The Regulations specify the Rules which may be amended 

(i) only by unanimous consent, or 

(ii) only if none of the Contracting States whose national Office acts as 
an  International Searching or Preliminary Examining Authority dissents, 
and, where  such Authority is an intergovernmental organization, if the 
Contracting State  member of the organization authorized for that purpose 
by the other member  States within the competent body of such organization 
does not dissent. 
(b) Exclusion, for the future, of any such Rules from the applicable 
requirement  shall require the fulfillment of the conditions referred to 
in subparagraph 
(a)(i) or (a)(ii), respectively. 

(c) Inclusion, for the future, of any Rule in one or the other of the 
requirements  referred to in subparagraph (a) shall require unanimous consent. 

(4) The Regulations provide for the establishment, under the control of 
the  Assembly, of Administrative Instructions by the Director General. 
(5) In the case of conflict between the provisions of the Treaty and those 
 of the Regulations, the provisions of the Treaty shall prevail. 

Chapter VI 

Disputes 


Article 59 


Disputes 

Subject to Article 64(5), any dispute between two or more Contracting 
States  concerning the interpretation or application of this Treaty or the 
Regulations,  not settled by negotiation, may, by any one of the States 
concerned, be 


brought before the International Court of Justice by application in 
conformity  with the Statute of the Court, unless the States concerned 
agree on some other  method of settlement. The Contracting State bringing 
the dispute before the  Court shall inform the International Bureau; the 
International Bureau shall  bring the matter to the attention of the other 
Contracting States. 
Chapter VII 

Revision and Amendments 


Article 60 


Revision of the Treaty 

(1) This Treaty may be revised from time to time by a special conference 
of  the Contracting States. 

(2) The convocation of any revision conference shall be decided by the 
Assembly. 
(3) Any intergovernmental organization appointed as International 
Searching  or Preliminary Examining Authority shall be admitted as 
observer to any revision  conference. 

(4)Article 53(5), (9) and (11), 54, 55(4) to (8), 56, and 57, may be 
amended  either by a revision conference or according to the provisions of 
Article 61. 

Article 61 


Amendment of Certain Provisions of the Treaty 

(1)(a)      Proposals for the amendment of Articles 53(5), (9) and (11), 
54,  55(4) to (8), 56, and 57, may be initiated by any State member of the 
Assembly,  by the Executive Committee, or by the Director General. 

(b) Such proposals shall be communicated by the Director General to the 
Contracting  States at least six months in advance of their consideration 
by the Assembly. 
(2)(a) Amendments to the Articles referred to in paragraph (1) shall be 
adopted  by the Assembly. 

(b)   Adoption shall require three-fourths of the votes cast. 

(3)(a)      Any amendment to the Articles referred to in paragraph (1) 
shall  enter into force one month after written notifications of 
acceptance, effected  in accordance with their respective constitutional 
processes, have been received  by the Director General from three-fourths 
of the States of the Assembly at  the time it adopted the amendment. 

(b)   Any amendment to the said Articles thus accepted shall bind all the 
States  which are members of the Assembly at the time the amendment enters 
into force,  provided that any amendment increasing the financial 
obligations of the Contracting  States shall bind only those States which 
have notified their acceptance of  such amendment. 

(c)   Any amendment accepted in accordance with the provisions of 
subparagraph 
(a) shall bind all States which become members of the Assembly after the 
date  on which the amendment entered into force in accordance with the 
provisions  of subparagraph (a). 

Chapter VIII 

Final Provisions 


Article 62 


Becoming Party to the Treaty 

(1) Any State member of the International Union for the Protection of 
Industrial  Property may become party to this Treaty by: 

(i) signature followed by the deposit of an instrument of ratification, or 
(ii) deposit of an instrument of accession. 

(2) Instruments of ratification or accession shall be deposited with the 
Director  General. 

(3) The provisions of Article 24 of the Stockholm Act of the Paris 
Convention  for the Protection of Industrial Property shall apply to this 
Treaty. 
(4) Paragraph (3) shall in no way be understood as implying the 
recognition  or tacit acceptance by a Contracting State of the factual 
situation concerning  a territory to which this Treaty is made applicable 
by another Contracting  State by virtue of the said paragraph. 


Article 63 


Entry into Force of the Treaty 

(1)(a) Subject to the provisions of paragraph (3), this Treaty shall enter 
 into force three months after eight States have deposited their 
instruments  of ratification or accession, provided that at least four of 
those States each  fulfill any of the following conditions: 

(i) the number of applications filed in the State has exceeded 40,000 
according  to the most recent annual statistics published by the 
International Bureau. 
(ii) the nationals or residents of the State have filed at least 1,000 
applications  in one foreign country according to the most recent annual 
statistics published  by the International Bureau. 

(iii) the national Office of the State has received at least 10,000 
applications  from nationals or residents of foreign countries according 
to the most recent  annual statistics published by the International Bureau. 



(b) For the purposes of this paragraph, the term "applications" does not 
include  applications for utility models. 

(2) Subject to the provisions of paragraph (3), any State which does not 
become  party too this Treaty upon entry into force under paragraph (1) 
shall be bound  by this Treaty three months after the date on which such 
State has deposited  its instrument of ratification or accession. 

(3) The provisions of Chapter II and the corresponding provisions of the 
Regulations  annexed to this Treaty shall become applicable, however, only 
on the date on  which three States each of which fulfill at least one of 
the three requirements  specified in paragraph (1) have become party to 
this Treaty without declaring,  as provided in Article 64(1), that they do 
not intend to be bound by the provisions  of Chapter II. That date shall 
not, however, be prior to that of the initial  entry into force under 
paragraph (1). 


Article 64 


Reservations 

(1)(a) Any State may declare that it shall not be bound by the provisions 
of  Chapter II. 

(b) States making a declaration under subparagraph (a) shall not be bound 
by  the provisions of Chapter II and the corresponding provisions of the 
Regulations. 
(2)(a)Any State not having made a declaration under paragraph(1)(a) may 
declare  that: 

(i) it shall not be bound by the provisions of Article 39(1) with respect 
to  the furnishing of a copy of the international application and a 
translation  thereof (as prescribed), 

(ii) the obligation to delay national processing, as provided for under 
Article  40, shall not prevent publication, by or through its national 
Office, of the  international application or a translation thereof, it 
being understood, however,  that it is not exempted from the limitations 
provided for in Articles 30 and  38. 

(b) States making such a declaration shall be bound accordingly. 

(3)(a) Any State may declare that, as far as it is concerned, 
international  publication of international applications is not required. 

(b) Where, at the expiration of 18 months from the priority date, the 
international  application contains the designation only of such States as 
have made declarations  under subparagraph (a), the international 
application shall not be published  by virtue of Article 21(2). 

(c) Where the provisions of subparagraph (b) apply, the international 
application  shall nevertheless be published by the International Bureau: 

(i) at the request of the applicant, as provided in the Regulations, 
(ii) when a national application or a patent based on the international 
application  is published by or on behalf of the national Office of any 
designated State  having made a declaration under subparagraph (a), 
promptly after such publication  but not before the expiration of 18 
months from the priority date. 
(4)(a) Any State whose national law provides for prior art effect of its 
patents  as from a date before publication, but does not equate for prior 
art purposes  the priority date claimed under the Paris Convention for the 
Protection of  Industrial Property to the actual filing date in that 
State, may declare that  the filing outside that State of an international 
application designating that  State is not equated to an actual filing in 
that State for prior art purposes. 
(b) Any State making a declaration under subparagraph (a) shall to that 
extent  not be bound by the provisions of Article 11(3). 

(c) Any State making a declaration under subparagraph (a) shall, at the 
same  time, state in writing the date from which, and the conditions under 
which,  the prior art effect of any international application designating 
that State  becomes effective in that State.  This statement may be 
modified at any time  by notification addressed to the Director General. 

(5) Each State may declare that it does not consider itself bound by 
Article  59.  With regard to any dispute between any Contracting State 
having made such  a declaration and any other Contracting State, the 
provisions of Article 59  shall not apply. 

(6)(a) Any declaration made under this Article shall be made in writing. 
It  may be made at the time of signing this Treaty, at the time of 
depositing the  instrument of ratification or accession, or, except in the 
case referred to  in paragraph (5), at any later time by notification 
addressed to the Director  General. In the case of the said notification, 
the declaration shall take effect  six months after the day on which the 
Director General has received the notification,  and shall not affect 
international applications filed prior to the expiration  of the said 
six-month period. 

(b) Any declaration made under this Article may be withdrawn at any time 
by  notification addressed to the Director General. Such withdrawal shall 
take  effect three months after the day on which the Director General has 
received  the notification and, in the case of the withdrawal of a 
declaration made under  paragraph (3), shall not affect international 
applications filed prior to the  expiration of the said three-month period. 

(7) No reservations to this Treaty other than the reservations under 
paragraphs 
(1) to (5) are permitted. 




Article 65 


Gradual Application 

(1) If the agreement with any International Searching or Preliminary 
Examining  Authority provides, transitionally, for limits on the number or 
kinds of international  applications that such Authority undertakes to 
process, the Assembly shall  adopt the measures necessary for the gradual 
application of this Treaty and  the Regulations in respect of given 
categories of international applications.  This provision shall also apply 
to requests for an international-type search  under Article 15(5). 

(2) The Assembly shall fix the dates from which, subject to the provision 
of  paragraph (1), international applications may be filed and demands for 
international  preliminary examination may be submitted. Such dates shall 
not be later than  six months after this Treaty has entered into force 
according to the provisions  of Article 63(1), or after Chapter II has 
become applicable under Article 63(3),  respectively. 


Article 66 


Denunciation 

(1) Any Contracting State may denounce this Treaty by notification 
addressed  to the Director General. 

(2) Denunciation shall take effect six months after receipt of said 
notification  by the Director General. It shall not affect the effects of 
the international  application in the denouncing State if the 
international application was filed,  and, where the denouncing State has 
been elected, the election was made, prior  to the expiration of the said 
six-month period. 


Article 67 


Signature and Languages 

(1)(a) This Treaty shall be signed in a single original in the English and 
 French languages, both texts being equally authentic. 

(b) Official texts shall be established by the Director General after 
consultation  with the interested Governments, in the German, Japanese, 
Portuguese, Russian  and Spanish languages, and such other languages as 
the Assembly may designate. 
(2) This Treaty shall remain open for signature at Washington until 
December  31, 1970. 


Article 68 


Depositary Functions 

(1) The original of this Treaty, when no longer open for signature, shall 
be  deposited with the Director General. 

(2) The Director General shall transmit two copies, certified by him, of 
this  Treaty and the Regulations annexed hereto to the Government of all 
States party  to the Paris Convention for the Protection of Industrial 
Property and, on request,  to the Government of any other State. 

(3) The Director General shall register this Treaty with the Secretariat 
of  the United Nations. 

(4) The Director General shall transmit two copies, certified by him, of 
any  amendment to this Treaty and the Regulations to the Government of all 
Contracting  States and, on request, to the Government of any other State. 


Article 69 


Notifications 

The Director General shall notify the government of all States party to 
the  Paris Convention for the Protection of Industrial Property of: 

(i) signatures under Article 62, 

(ii) deposits of instruments of ratification or accession under Article 
62, 
(iii) the date of entry into force of this Treaty and the date from which 
Chapter  II is applicable in accordance with Article 63(3), 

(iv) any declarations made under Article 64(1) to (5), 

(v) withdrawals of any declarations made under Article 64(6)(b), 

(vi) denunciations received under Article 66, and 

(vii) any declarations made under Article 31(4). 


Contents 

Regulations Under the Patent Cooperation Treaty 

(as in force from January 1, 1994) 

        Adopted on June 19, 1970, and amended on April 14, 1978, October 
3,  1978, May 1, 1979, June 16, 1980, September 26, 1980, July 3, 1981, 
September  10, 1982, October 4, 1983, February 3, 1984, September 28, 
1984, October 1,  1985, July 12, 1991, October 2, 1991, September 29, 
1992, and September 29,  1993. 

TABLE OF CONTENTS 

Part A: Introductory Rules 

Rule 1        Abbreviated Expressions 

1.1           Meaning of Abbreviated Expressions 

Rule 2        Interpretation of Certain Words 

2.1           "Applicant" 

2.2           "Agent" 

2.2bis        "Common Representative" 

2.3           "Signature" 

Part B: Rules Concerning Chapter I of the Treaty 

Rule 3        The Request (Form) 

3.1           Form of Request 

3.2           Availability of Forms 

3.3           Check List 

3.4           Particulars 

Rule 4        The Request (Contents) 

4.1           Mandatory and Optional Contents; Signature 

4.2           The Petition 

4.3           Title of the Invention 

4.4           Names and Addresses 

4.5           The Applicant 

4.6           The Inventor 

4.7           The Agent 

4.8           Common Representative 

4.9           Designation of States 

4.10          Priority Claim 

4.11          Reference to Earlier Search 

4.12          Choice of Certain Kinds of Protection 

4.13          Identification of Parent Application or Parent Grant 
4.14          Continuation or Continuation-in-Part 

4.14bis       Choice of International Searching Authority 

4.15          Signature 

4.16          Transliteration or Translation of Certain Words 

4.17          Additional Matter 

Rule 5        The Description 

5.1           Manner of the Description 

5.2           Nucleotide and/or Amino Acid Sequence Disclosure 

Rule 6        The Claims 

6.1           Number and Numbering of Claims 

6.2           References to Other Parts of the International Application 
6.3           Manner of Claiming 

6.4           Dependent Claims 

6.5           Utility Models 

Rule 7        The Drawings 

7.1           Flow Sheets and Diagrams 

7.2           Time Limit 

Rule 8        The Abstract 

8.1           Contents and Form of the Abstract 

8.2           Figure 

8.3           Guiding Principles in Drafting 

Rule 9        Expressions, etc., Not To Be Used 

9.1           Definition 

9.2           Noting of Lack of Compliance 

9.3           Reference to Article 21(6) 

Rule 10       Terminology and Signs 

10.1          Terminology and Signs 

10.2          Consistency 

Rule 11       Physical Requirements of the International 
     Application 
11.1          Number of Copies 

11.2          Fitness for Reproduction 

11.3          Material to Be Used 

11.4          Separate Sheets, Etc. 

11.5          Size of Sheets 

11.6          Margins 

11.7          Numbering of Sheets 

11.8          Numbering of Lines 

11.9          Writing of Text Matter 

11.10         Drawings, Formulae, and Tables, in Text Matter 

11.11         Words in Drawings 

11.12         Alterations, Etc. 

11.13         Special Requirements for Drawings 

11.14         Later Documents 

Rule 12       Language of the International Application 

12.1          Admitted Language 

12.2          Language of Changes in the International Application 
Rule 13       Unity of Invention 

13.1          Requirement 

13.2          Circumstances in Which the Requirement of Unity of 
              Invention Is to Be Considered Fulfilled 

Rule 13       Unity of Invention-Con. 

13.3          Determination of Unity of Invention Not Affected by 
              Manner of Claiming 

13.4          Dependent Claims 

13.5          Utility Models 

Rule 13bis    Microbiological Inventions 

13bis.1       Definition 

13bis.2       References (General) 

13bis.3       References: Contents; Failure to Include 
              Reference or Indication 

13bis.4       References: Time of Furnishing Indications 

13bis.5       References and Indications for the Purposes of One or 
              More Designated States; Different Deposits for Different 
              Designated States; Deposits with Depositary Institutions 
              Other Than Those Notified 

13bis.6       Furnishing of Samples 

13bis.7       National Requirements: Notification and Publication 
Rule 13ter    Nucleotide and/or Amino Acid Sequence Listings 

13ter .1      Sequence Listing for International Authorities 

13ter .2      Sequence Listing for Designated Office 

Rule 14       The Transmittal Fee 

14.1          The Transmittal Fee 

Rule 15       The International Fee 

15.1          Basic Fee and Designation Fee 

15.2          Amounts 

15.3          Mode of Payment 

15.4    Time of Payment 

15.5    Fees Under Rule 4.9(c) 

15.6    Refund 

Rule 16       The Search Fee 

16.1    Right to Ask for a Fee 

16.2    Refund 

16.3    Partial Refund 

Rule 16bis  Extension of Time Limits for Payment of Fees 

16bis.1       Invitation by the Receiving Office 

16bis.2       Late Payment Fee 

Rule 17       The Priority Document 

17.1    Obligation to Submit Copy of Earlier 
National Application 

17.2    Availability of Copies 

Rule 18       The Applicant 

18.1    Residence and Nationality 

18.2    [Deleted] 

18.3    Two or More Applicants 

18.4    Information on Requirements Under 
National Law as to Applicants 

Rule 19       The Competent Receiving Office 

19.1    Where to File 

19.2    Two or More Applicants 

19.3    Publication of Fact of Delegation of Duties of Receiving Office 
19.4    Transmittal to the International Bureau as Receiving Office 
Rule 20       Receipt of the International Application 

20.1    Date and Number 

20.2    Receipt on Different Days 

20.3    Corrected International Application 

20.3bis       [Deleted] 

20.4    Determination under Article 11(1) 

20.5    Positive Determination 

20.6    Invitation to Correct 

20.7    Negative Determination 

20.8    Error by the Receiving Office 

20.9    Certified Copy for the Applicant 

Rule 21       Preparation of Copies 

21.1    Responsibility of the Receiving Office 

Rule 22       Transmittal of the Record Copy 

22.1    Procedure 

22.2    [Deleted] 

22.3    Time Limit under Article 12(3) 

Rule 23       Transmittal of the Search Copy 

23.1    Procedure 

Rule 24       Receipt of the Record Copy by the International 
             Bureau 
24.1    [Deleted] 

24.2    Notification of Receipt of the Record Copy 

Rule 25       Receipt of the Search Copy by the International 
     Searching  Authority 

25.1    Notification of Receipt of the Search Copy 

Rule 26       Checking by, and Correcting before, the Receiving 
                     Office  of Certain Elements of the International 
                          Application 
26.1    Time Limit for Check 

26.2    Time Limit for Correction 

26.3    Checking of Physical Requirements under Article 14(1)(a)(v) 
26.3bis       Invitation to Correct Defects under Article 14(1)(b) 
26.3ter         Invitation to Correct Defects under Article 3(4)(i) 
26.4    Procedure 

26.5    Decision of the Receiving Office 

26.6    Missing Drawings 



Rule 27       Lack of Payment of Fees 

27.1    Fees 

Rule 28       Defects Noted by the International Bureau 

28.1    Note on Certain Defects 

Rule 29       International Applications or Designations 
                             Considered  Withdrawn under Article 14(1), 
(3)                      or (4) 

29.1    Finding by Receiving Office 

29.2    [Deleted] 

29.3    Calling Certain Facts to the Attention of the Receiving Office 
29.4    Notification of Intent to Make Declaration under Article 14(4) 
Rule 30       Time Limit under Article 14(4) 

30.1    Time Limit 

Rule 31       Copies Required under Article 13 

31.1    Request for Copies 

31.2    Preparation of Copies 

Rule 32       [Deleted] 

Rule 32bis  [Deleted] 

Rule 33       Relevant Prior Art for the International Search 

33.1    Relevant Prior Art for the International Search 

33.2    Fields to Be Covered by the International Search 

33.3    Orientation of the International Search 

Rule 34       Minimum Documentation 

34.1    Definition 

Rule 35       The Competent International Searching Authority 

35.1    When Only One International Searching Authority Is Competent 
35.2    When Several International Searching Authorities Are Competent 
35.3    When the International Bureau Is Receiving Office Under Rule 
19.1(a)(iii) 
Rule 36       Minimum Requirements for International Searching 
             Authorities 
36.1    Definition of Minimum Requirements 

Rule 37       Missing or Defective Title 

37.1    Lack of Title 

37.2    Establishment of Title 

Rule 38       Missing or Defective Abstract 

38.1    Lack of Abstract 

38.2    Establishment of Abstract 

Rule 39       Subject Matter Under Article 17(2)(a)(i) 

39.1    Definition 

Rule 40       Lack of Unity of Invention (International Search) 

40.1    Invitation to Pay 

40.2    Additional Fees 

40.3    Time Limit 

Rule 41       Earlier Search Other Than International Search 

41.1    Obligation to Use Results; Refund of Fee 

Rule 42       Time Limit for International Search 

42.1    Time Limit for International Search 

Rule 43       The International Search Report 

43.1    Identifications 

43.2    Dates 

43.3    Classification 

43.4    Language 

43.5    Citations 

43.6    Fields Searched 

43.7    Remarks Concerning Unity of Invention 

43.8    Authorized Officer 

43.9    Additional Matter 

43.10     Form 

Rule 44       Transmittal of the International Search Report, etc. 
44.1    Copies of Report or Declaration 

44.2    Title or Abstract 

44.3    Copies of Cited Documents 

Rule 45       Translation of the International Search Report 

45.1    Languages 

Rule 46       Amendment of Claims Before the International 
     Bureau 
46.1    Time Limit 

46.2    Where to File 

46.3    Language of Amendments 

46.4    Statement 

46.5    Form of Amendments 

Rule 47       Communication to Designated Offices 

47.1    Procedure 

47.2    Copies 

47.3    Languages 

47.4    Express Request under Article 23(2) 

Rule 48       International Publication 

48.1    Form 

48.2    Contents 

48.3    Languages 

48.4    Earlier Publication on the Applicant's 
Request 

48.5    Notification of National Publication 

48.6    Announcing of Certain Facts 



Rule 49       Copy, Translation and Fee under Article 22 

49.1    Notification 

49.2    Languages 

49.3    Statements under Article 19; Indications under Rule 13bis.4 
49.4    Use of National Form 

49.5    Contents of and Physical Requirements for the Translation 
Rule 50       Faculty under Article 22(3) 

50.1    Exercise of Faculty 

Rule 51       Review by Designated Offices 

51.1    Time Limit for Presenting the Request to Send Copies 

51.2    Copy of the Notice 

51.3    Time Limit for Paying National Fee and Furnishing Translation 
Rule 51bis  Certain National Requirements Allowed 
Under  Article 27(1), (2), (6) and (7) 

51bis.1       Certain National Requirements Allowed 

51bis.2       Opportunity to Comply with National 
Requirements 

Rule 52       Amendment of the Claims, the Description, and the 
             Drawings,  Before Designated Offices 

52.1    Time Limit 

Part C: Rules Concerning Chapter II of the Treaty 

Rule 53       The Demand 

53.1    Form 

53.2    Contents 

53.3    The Petition 

53.4    The Applicant 

53.5    Agent or Common Representative 

53.6    Identification of the International 
Application 

53.7    Election of States 

53.8    Signature 

53.9    Statement Concerning Amendments 

Rule 54       The Applicant Entitled to Make a Demand 

54.1    Residence and Nationality 

54.2    Two or More Applicants 

54.3    International Applications Filed with the International Bureau as 
Receiving  Office 

54.4    Applicant Not Entitled to Make a Demand 

Rule 55       Languages (International Preliminary Examination) 

55.1    Language of Demand 

55.2    Translation of International Application 

55.3    Translation of Amendments 

Rule 56       Later Elections 

56.1    Elections Submitted Later Than the 
Demand 

56.2    Identification of the International 
Application 

56.3    Identification of the Demand 

56.4    Form of Later Elections 

56.5    Language of Later Elections 

Rule 57       The Handling Fee 

57.1    Requirement to Pay 

57.2    Amount 

57.3    Time and Mode of Payment 

57.4    Failure to Pay 

57.5    [Deleted] 

57.6    Refund 

Rule 58       The Preliminary Examination Fee 

58.1    Right to Ask for a Fee 

58.2    Failure to Pay 

58.3    Refund 

Rule 59       The Competent International Preliminary Examining 
                Authority 

59.1    Demands under Article 31(2)(a) 

59.2    Demands under Article 31(2)(b) 

Rule 60       Certain Defects in the Demand or Elections 

60.1    Defects in the Demand 

60.2    Defects in Later Elections 

Rule 61       Notification of the Demand and Elections 

61.1    Notification to the International Bureau and the Applicant 
61.2    Notification to the Elected Offices 

61.3    Information for the Applicant 

61.4    Publication in the Gazette 

Rule 62       Copy of Amendments Under Article 19 for the 
International  Preliminary Examining Authority 

62.1    Amendments Made before the Demand 
 is Filed 

62.2    Amendments Made after the Demand 
 is Filed 

Rule 63       Minimum Requirements for International 
                     Preliminary  Examining Authorities 

63.1    Definition of Minimum Requirements 

Rule 64       Prior Art for International Preliminary Examination 
64.1    Prior Art 

64.2    Non-Written Disclosures 

64.3    Certain Published Documents 

Rule 65       Inventive Step or Non-Obviousness 

65.1    Approach to Prior Art 

65.2    Relevant Date 



Rule 66       Procedure Before the International Preliminary 
     Examining  Authority 

66.1    Basis of the International Preliminary 
Examination 

66.2    First Written Opinion of the International 
Preliminary Examining Authority 

66.3    Formal Response to the International 
Preliminary Examining Authority 

66.4    Additional Opportunity for Submitting 
Amendments or Arguments 

66.4bis       Consideration of Amendments and 
Arguments 

66.5    Amendment 

66.6    Informal Communications with the 
Applicant 

66.7    Priority Document 

66.8    Form of Amendments 

66.9    Language of Amendments 

Rule 67       Subject Matter Under Article 34(4)(a)(i) 

67.1    Definition 

Rule 68       Lack of Unity of Invention (International 
                Preliminary Examination) 

68.1    No Invitation to Restrict or Pay 

68.2    Invitation to Restrict or Pay 

68.3    Additional Fees 

68.4    Procedure in the Case of Insufficient 
Restriction of the Claims 

68.5    Main Invention 

Rule 69       Start of and Time Limit for International Preliminary 
             Examination 
69.1    Start of International Preliminary 
Examination 

69.2    Time Limit for International Preliminary 
Examination 

Rule 70       The International Preliminary Examination Report 

70.1    Definition 

70.2    Basis of the Report 

70.3    Identifications 

70.4    Dates 

70.5    Classification 

70.6    Statement Under Article 35(2) 

70.7    Citations Under Article 35(2) 

70.8    Explanations Under Article 35(2) 

70.9    Non-Written Disclosures 

70.10     Certain Published Documents 

70.11     Mention of Amendments 

70.12     Mention of Certain Defects and Other Matters 

70.13     Remarks Concerning Unity of Invention 

70.14     Authorized Officer 

70.15     Form 

70.16     Annexes of the Report 

70.17     Languages of the Report and the Annexes 

Rule 71       Transmittal of the International Preliminary 
             Examination  Report 

71.1    Recipients 

71.2    Copies of Cited Documents 

Rule 72       Translation of the International Preliminary 
                Examination Report 

72.1    Languages 

72.2    Copy of Translation for the Applicant 

72.3    Observations on the Translation 

Rule 73       Communication of the International 
                Preliminary Examination Report 

73.1    Preparation of Copies 

73.2    Time Limit for Communication 

Rule 74       Translations of Annexes of the International 
     Preliminary  Examination Report and Transmittal 
Thereof 

74.1    Contents of Translation and Time Limit for Transmittal Thereof 
Rule 75        [Deleted] 

Rule 76       Copy, Translation and Fee Under Article 39(1); 
                Translation of Priority Document 

76.1    [Deleted] 

76.2    [Deleted] 

76.3    [Deleted] 

76.4    Time Limit for Translation of Priority Document 

76.5    Application of Rules 22.1(g), 49 and 51bis 

76.6    Transitional Provision 

Rule 77       Faculty Under Article 39(1)(b) 

77.1    Exercise of Faculty 

Rule 78       Amendment of the Claims, the Description, 
                     and  the Drawings, Before Elected Offices 

78.1    Time Limit Where Election Is Effected Prior to Expiration of 19 
Months  from Priority Date 

78.2    Time Limit Where Election Is Effected after Expiration of 19 
Months  from Priority Date 

78.3    Utility Models 

Part D: Rules Concerning Chapter III of the Treaty 

Rule 79       Calendar 

79.1    Expressing Dates 

Rule 80       Computation of Time Limits 

80.1    Periods Expressed in Years 

80.2    Periods Expressed in Months 

80.3    Periods Expressed in Days 

80.4    Local Dates 

80.5    Expiration on a Non-Working Day 



Rule 80       Computation of Time Limits-Con. 

80.6    Date of Documents 

80.7    End of Working Day 

Rule 81       Modification of Time Limits Fixed in the Treaty 

81.1    Proposal 

81.2    Decision by the Assembly 

81.3    Voting by Correspondence 

Rule 82       Irregularities in the Mail Service 

82.1    Delay or Loss in Mail 

82.2    Interruption in the Mail Service 

Rule 82bis      Excuse by the Designated or Elected State of 
                     Delays  in Meeting Certain Time Limits 

82bis.1       Meaning of "Time Limit" in Article 48(2) 

82bis.2       Reinstatement of Rights and Other 
Provisions to Which Article 48(2) Applies 

Rule 82ter      Rectification of Errors Made by the Receiving Office 
             or  by the International Bureau 

82ter.1       Errors Concerning the International Filing Date and the 
Priority  Claim 

Rule 83       Right to Practice Before International Authorities 

83.1    Proof of Right 

83.1bis       Where the International Bureau Is the Receiving Office 
83.2    Information 

Part E: Rules Concerning Chapter V of the Treaty 

Rule 84       Expenses of Delegations 

84.1    Expenses Borne by Governments 

Rule 85       Absence of Quorum in the Assembly 

85.1    Voting by Correspondence 

Rule 86       The Gazette 

86.1    Contents 

86.2    Languages 

86.3    Frequency 

86.4    Sale 

86.5    Title 

86.6          Further Details 

Rule 87       Copies of Publications 

87.1          International Searching and Preliminary 
              Examining Authorities 

87.2          National Offices 

Rule 88       Amendment of the Regulations 

88.1          Requirement of Unanimity 

88.2          [Deleted] 

88.3          Requirement of Absence of Opposition by Certain States 
88.4          Procedure 

Rule 89       Administrative Instructions 

89.1          Scope 

89.2          Source 

89.3          Publication and Entry into Force 

Part F:       Rules Concerning Several Chapters of the Treaty 

Rule 90       Agents and Common Representatives 

90.1          Appointment as Agent 

90.2          Common Representative 

90.3          Effects of Acts by or in Relation to Agents and 
              Common Representatives 

90.4          Manner of Appointment of Agent or 
              Common Representative 

90.5          General Power of Attorney 

90.6          Revocation and Renunciation 

Rule 90bis    Withdrawals 

90bis.1       Withdrawal of the International Application 

90bis.2       Withdrawal of Designations 

90bis.3       Withdrawal of Priority Claims 

90bis.4       Withdrawal of the Demand, or of Elections 

90bis.5       Signature 

90bis.6       Effect of Withdrawal 

90bis.7       Faculty under Article 37(4)(b) 

Rule 91       Obvious Errors in Documents 

91.1          Rectification 

Rule 92       Correspondence 

92.1          Need for Letter and for Signature 

92.2          Languages 

92.3          Mailings by National Offices and Intergovernmental 
              Organizations 

92.4          Use of Telegraph, Teleprinter, Facsimile 
              Machine, Etc. 

Rule 92bis    Recording of Changes in Certain Indications in the 
              Request or the Demand 

92bis.1       Recording of Changes by the International Bureau 

Rule 93       Keeping of Records and Files 

93.1          The Receiving Office 

93.2          The International Bureau 

93.3          The International Searching and Preliminary Examining 
              Authorities 

93.4          Reproductions 

Rule 94       Furnishing of Copies by the International Bureau 
              and the International Preliminary Examining Authority 
94.1          Obligation To Furnish 

Rule 95       Availability of Translations 

95.1          Furnishing of Copies of Translations 



Rule 96       The Schedule of Fees 

96.1          Schedule of Fees Annexed to Regulations 
              Schedule of Fees 



PART  A 

Introductory Rules 


Rule 1 


Abbreviated Expressions 

1.1   Meaning of Abbreviated Expressions 

(a)   In these Regulations, the word "Treaty" means the Patent Cooperation 
 Treaty. 

(b)   In these Regulations, the words "Chapter" and "Article" refer to the 
 specified Chapter or Article of the Treaty. 

Rule 2 

Interpretation of Certain Words 

2.1    "Applicant" 

Whenever the word "applicant" is used, it shall be construed as meaning 
also  the agent or other representative of the applicant, except where the 
contrary  clearly follows from the wording or the nature of the provision, 
or the context  in which the word is used, such as, in particular, where 
the provision refers  to the residence or nationality of the applicant. 

2.2    "Agent" 

Whenever the word "agent" is used, it shall be construed as meaning an 
agent  appointed under Rule 90.1, unless the contrary clearly follows from 
the wording  or the nature of the provision, or the context in which the 
word is used. 
2.2bis      "Common Representative" 

Whenever the expression "common representative" is used, it shall be 
construed  as meaning an applicant appointed as, or considered to be, the 
common representative  under Rule 90.2. 

2.3   "Signature" 

Whenever the word "signature" is used, it shall be understood that, if the 
 national law applied by the receiving Office or the competent 
International  Searching or Preliminary Examining Authority requires the 
use of a seal instead  of a signature, the word, for the purposes of that 
Office or Authority, shall  mean seal. 

PART B 

Rules Concerning Chapter I of the Treaty 

Rule 3 

The Request (Form) 

3.1    Form of Request 

The request shall be made on a printed form or be presented as a computer 
print-out. 
3.2    Availability of Forms 

Copies of the printed form shall be furnished free of charge to the 
applicants  by the receiving Office, or, if the receiving Office so 
desires, by the International  Bureau. 

3.3   Check List 

 (a)    The request shall contain a list indicating: 

 (i)    the total number of sheets constituting the international 
application  and the number of the sheets of each element of the 
international application 
(request, description, claims, drawings, abstract); 

(ii)    whether or not the international application as filed is 
accompanied  by a power of attorney (i.e., a document appointing an agent 
or a common representative),  a copy of a general power of attorney, a 
priority document, a document relating  to the payment of fees, and any 
other document (to be specified in the check  list); 

(iii)     the number of that figure of the drawings which the applicant 
suggests  should accompany the abstract when the abstract is published; in 
exceptional  cases, the applicant may suggest more than one figure. 

(b)   The list shall be completed by the applicant, failing which the 
receiving  Office shall make the necessary indications, except that the 
number referred  to in paragraph (a)(iii) shall not be indicated by the 
receiving Office. 
3.4   Particulars 

Subject to Rule 3.3, particulars of the printed request form and of a 
request  presented as a computer printout shall be prescribed by the 
Administrative  Instructions. 

Rule 4 

The Request (Contents) 

4.1   Mandatory and Optional Contents; Signature 

(a)   The request shall contain: 

(i) a petition, 

(ii) the title of the invention, 



(iii)     indications concerning the applicant and the agent, if there is 
an  agent, 

(iv)    the designation of States, 

(v)   indications concerning the inventor where the national law of at 
least  one of the designated States requires that the name of the inventor 
be furnished  at the time of filing a national application. 

(b)   The request shall, where applicable, contain: 

(i)   a priority claim, 

(ii)    a reference to any earlier international, international-type or 
other  search, 

(iii)     choices of certain kinds of protection, 

(iv)    an indication that the applicant wishes to obtain a regional 
patent, 
(v)   a reference to a parent application or parent patent. 

(vi)    an indication of the applicant's choice of competent International 
 Searching Authority. 

(c)   The request may contain: 

(i)   indications concerning the inventor where the national law of none 
of  the designated States requires that the name of the inventor be 
furnished at  the time of filing a national application, 

(ii)    a request to the receiving Office to transmit the priority 
document  to the International Bureau where the application whose priority 
is claimed  was filed with the national Office or intergovernmental 
authority which is  the receiving Office. 

(d)   The request shall be signed. 

4.2   The Petition 

The petition shall be to the following effect and shall preferably be 
worded  as follows: "The undersigned requests that the present 
international application  be processed according to the Patent 
Cooperation Treaty." 

4.3   Title of the Invention 

The title of the invention shall be short (preferably from two to seven 
words  when in English or translated into English) and precise. 

4.4   Names and Addresses 

(a)   Names of natural persons shall be indicated by the person's family 
name  and given name(s), the family name being indicated before the given 
name(s). 
(b)   Names of legal entities shall be indicated by their full, official 
designations. 
(c)   Addresses shall be indicated in such a way as to satisfy the 
customary  requirements for prompt postal delivery at the indicated 
address and, in any  case, shall consist of all the relevant 
administrative units up to, and including,  the house number, if any. 
Where the national law of the designated State does  not require the 
indication of the house number, failure to indicate such number  shall 
have no effect in that State. In order to allow rapid communication with 
the applicant, it is recommended to indicate any teleprinter address, 
telephone  and facsimile machine numbers, or corresponding data for other 
like means of  communication, of the applicant or, where applicable, the 
agent or the common  representative. 

(d)   For each applicant, inventor, or agent, only one address may be 
indicated,  except that, if no agent has been appointed to represent the 
applicant, or  all of them if more than one, the applicant or, if there is 
more than one applicant,  the common representative, may indicate, in 
addition to any other address given  in the request, an address to which 
notifications shall be sent. 

4.5   The Applicant 

(a)   The request shall indicate the name, address, nationality and 
residence  of the applicant or, if there are several applicants, of each 
of them. 
(b)   The applicant's nationality shall be indicated by the name of the 
State  of which he is a national. 

(c)   The applicant's residence shall be indicated by the name of the 
State  of which he is a resident. 

(d)   The request may, for different designated States, indicate different 
 applicants.  In such a case, the request shall indicate the applicant or 
applicants  for each designated State or group of designated States. 

4.6   The Inventor 

(a)   Where Rule 4.1(a)(v) applies, the request shall indicate the name 
and  address of the inventor or, if there are several inventors, of each 
of them. 
(b)   If the applicant is the inventor, the request, in lieu of the 
indication  under paragraph (a), shall contain a statement to that effect. 

(c)   The request may, for different designated States, indicate different 
 persons as inventors where, in this respect, the requirements of the 
national  laws of the designated States are not the same. In such a case, 
the request  shall contain a separate statement for each designated State 
or group of States  in which a particular person, or the same person, is 
to be considered the inventor,  or in which particular persons, or the 
same persons, are to be considered the  inventors. 

4.7   The Agent 

If agents are designated, the request shall so indicate, and shall state 
their  names and addresses. 

4.8   Common Representative 

If a common representative is designated, the request shall so indicate. 


4.9   Designation of States 

(a)   Contracting States shall be designated in the request: 

(i)  in the case of designations for the purpose of obtaining national 
patents,  by an indication of each State concerned; 

(ii)  in the case of designations for the purpose of obtaining a regional 
patent,  by an indication that a regional patent is desired either for all 
Contracting  States which are party to the regional patent treaty 
concerned or only for  such Contracting States as are specified. 

(b)   The request may contain an indication that all designations which 
would  be permitted under the Treaty, other than those made under 
paragraph (a), are  also made, provided that: 

(i) at least one Contracting State is designated under paragraph (a), and 
(ii) the request also contains a statement that any designation made under 
 this paragraph is subject to confirmation as provided in paragraph (c) 
and  that any designation which is not so confirmed before the expiration 
of 15  months from the priority date is to be regarded as withdrawn by the 
applicant  at the expiration of that time limit. 

(c)   The confirmation of any designation made under paragraph (b) shall 
be  effected by 

(i) filing with the receiving Office a written notice containing an 
indication  as referred to in paragraph (a)(i) or (ii), and 

(ii) paying to the receiving Office the designation fee and the 
confirmation  fee referred to in Rule 15.5 within the time limit under 
paragraph (b)(ii). 
4.10    Priority Claim 

(a)   The declaration referred to in Article 8(1) shall be made in the 
request;  it shall consist of a statement to the effect that the priority 
of an earlier  application is claimed and shall indicate: 

(i) when the earlier application is not a regional or an international 
application,  the country in which it was filed; when the earlier 
application is a regional  or an international application, the country or 
countries for which it was  filed, 

(ii) the date on which it was filed, 

(iii) the number under which it was filed, and 

(iv) when the earlier application is a regional or an international 
application,  the national Office or intergovernmental organization with 
which it was filed. 
(b)   If the request does not indicate both 

(i) when the earlier application is not a regional or an international 
application,  the country in which such earlier application was filed; 
when the earlier application  is a regional or an international 
application, at least one country for which  such earlier application was 
filed, and 

(ii) the date on which the earlier application was filed, the priority 
claim  shall, for the purposes of the procedure under the Treaty, be 
considered not  to have been made.  However, where, resulting from an 
obvious error, the indication  of the said country or the said date is 
missing or is erroneous, the receiving  Office may, at the request of the 
applicant, make the necessary correction. 
 The error shall be considered as an obvious error whenever the correction 
 is obvious from a comparison with the earlier application.  Where the 
error  consists of the omission of the indication of the said date, the 
correction  can only be made before the transmittal of the record copy to 
the International  Bureau.  In the case of any other error relating to the 
indication of the said  date or in the case of any error relating to the 
indication of the said country,  the correction can only be made before 
the expiration of the time limit under  Rule 17.1(a) computed on the basis 
of the correct priority date. 

(c)   If the application number of the earlier application is not 
indicated  in the request but is furnished by the applicant to the 
International Bureau  or to the receiving Office prior to the expiration 
of the 16th month from the  priority date, it shall be considered by all 
designated States to have been  furnished in time. 

(d)   If the filing date of the earlier application as indicated in the 
request  does not fall within the period of one year preceding the 
international filing  date, the receiving Office, or, if the receiving 
Office has failed to do so,  the International Bureau, shall invite the 
applicant to ask either for the  cancellation of the declaration made 
under Article 8(1) or, if the date of  the earlier application was 
indicated erroneously, for the correction of the  date so indicated. If 
the applicant fails to act accordingly within one month  from the date of 
the invitation, the declaration made under Article 8(1) shall  be 
cancelled ex officio. 

(e)   Where the priorities of several earlier applications are claimed, 
the  provisions of paragraphs (a) to (d) shall apply to each of them. 

4.11    Reference to Earlier Search 

If an international or international-type search has been requested on an 
application  under Article 15(5) or if the applicant wishes the 
International Searching  Authority to base the international search report 
wholly or in part on the  results of a search, other than an international 
or international-type search,  made by the national Office or 
intergovernmental organization which is the  International Searching 
Authority competent for the international application,  the request shall 
contain a reference to that fact. Such reference shall either  identify 
the application (or its translation, as the case may be) in respect  of 
which the earlier search was made by indicating country, date and number, 


or the said search by indicating, where applicable, date and number of the 
 request for such search. 

4.12    Choice of Certain Kinds of Protection 

(a)   If the applicant wishes his international application to be treated, 
 in any designated State, as an application not for a patent but for the 
grant  of any of the other kinds of protection specified in Article 43, he 
shall so  indicate in the request. For the purposes of this paragraph, 
Article 2(ii)  shall not apply. 

(b)   In the case provided for in Article 44, the applicant shall indicate 
 the two kinds of protection sought, or, if one of two kinds of protection 
is  primarily sought, he shall indicate which kind is sought primarily and 
which  kind is sought subsidiarily. 

4.13    Identification of Parent Application or Parent Grant 

If the applicant wishes his international application to be treated, in 
any  designated State, as an application for a patent or certificate of 
addition,  inventor's certificate of addition, or utility certificate of 
addition, he  shall identifythe parent application or the parent patent, 
parent inventor's  certificate, or parent utility certificate to which the 
patent or certificate  of addition, inventor's certificate of addition, or 
utility certificate of  addition, if granted, relates. For the purposes of 
this paragraph Article 2(ii)  shall not apply. 

 4.14     Continuation or Continuation-in-Part 

If the applicant wishes his international application to be treated, in 
any  designated State, as an application for a continuation or a 
continuation-in-part  of an earlier application, he shall so indicate in 
the request and shall identify  the parent application involved. 

4.14bis       Choice of International Searching Authority 

If two or more International Searching Authorities are competent for the 
searching  of the international application, the applicant shall indicate 
his choice of  International Searching Authority in the request. 

4.15    Signature 

(a)   Subject to paragraph (b), the request shall be signed by the 
applicant  or, if there is more than one applicant, by all of them. 

(b)   Where two or more applicants file an international application which 
 designates a State whose national law requires that national applications 
be  filed by the inventor and where an applicant for that designated State 
who  is an inventor refused to sign the request or could not be found or 
reached  after diligent effort, the request need not be signed by that 
applicant if  it is signed by at least one applicant and a statement is 
furnished explaining,  to the satisfac- 

tion of the receiving Office, the lack of the signature concerned. 
4.16    Transliteration or Translation of Certain Words 

(a)   Where any name or address is written in characters other than those 
of  the Latin alphabet, the same shall also be indicated in characters of 
the Latin  alphabet either as a mere transliteration or through 
translation into English.  The applicant shall decide which words will be 
merely transliterated and which  words will be so translated. 

(b)   The name of any country written in characters other than those of 
the  Latin alphabet shall also be indicated in English. 

4.17    Additional Matter 

(a)   The request shall contain no matter other than that specified in 
Rules  4.1 to 4.16, provided that the Administrative Instructions may 
permit, but  cannot make mandatory, the inclusion in the request of any 
additional matter  specified in the Administrative Instructions. 

(b)   If the request contains matter other than that specified in Rules 
4.1  to 4.16 or permitted under paragraph (a) by the Administrative 
Instructions,  the receiving Office shall ex officio delete the additional 
matter. 
Rule 5 

The Description 

5.1   Manner of the Description 

(a)   The description shall first state the title of the invention as 
appearing  in the request and shall: 

 (i) specify the technical field to which the invention relates; 

 (ii) indicate the background art which, as far as known to the applicant, 
 can be regarded as useful for the understanding, searching and 
examination  of the invention, and, preferably, cite the documents 
reflecting such art; 
(iii)     disclose the invention, as claimed, in such terms that the 
technical  problem (even if not expressly stated as such) and its solution 
can be understood,  and state the advantageous effects, if any, of the 
invention with reference  to the background art; 

(iv) briefly describe the figures in the drawings, if any; 

(v) set forth at least the best mode contemplated by the applicant for 
carrying  out the invention claimed; this shall be done in terms of 
examples, where appropriate,  and with reference to the drawings, if any; 
where the national law of the designated  State does not require the 
description of the best mode but is satisfied with  the description of any 
mode (whether it is the best contemplated or not), failure  to describe 
the best mode contemplated shall have no effect in that State; 



(vi) indicate explicitly, when it is not obvious from the description or 
nature  of the invention, the way in which the invention is capable of 
exploitation  in industry and the way in which it can be made and used, 
or, if it can only  be used, the way in which it can be used; the term 
"industry" is to be understood  in its broadest sense as in the Paris 
Convention for the Protection of Industrial  Property. 

(b)   The manner and order specified in paragraph (a) shall be followed 
except  when, because of the nature of the invention, a different manner 
or a different  order would result in a better understanding and a more 
economic presentation. 
(c)   Subject to the provisions of paragraph (b), each of the parts 
referred  to in paragraph (a) shall preferably be preceded by an 
appropriate heading  as suggested in the Administrative Instructions. 

5.2   Nucleotide and/or Amino Acid Sequence Disclosure 

Where the international application contains disclosure of a nucleotide 
and/or  amino acid sequence, the description shall contain a listing of 
the sequence  complying with the standard prescribed by the Administrative 
Instructions. 
Rule 6 

The Claims 

6.1   Number and Numbering of Claims 

(a)   The number of the claims shall be reasonable in consideration of the 
 nature of the invention claimed. 

(b)   If there are several claims, they shall be numbered consecutively in 
 Arabic numerals. 

(c)   The method of numbering in the case of the amendment of claims shall 
 be governed by the Administrative Instructions. 

6.2   References to Other Parts of the International Application 

(a)   Claims shall not, except where absolutely necessary, rely, in 
respect  of the technical features of the invention, on references to the 
description  or drawings. In particular, they shall not rely on such 
references as:  "as  described in part ... of the description," or "as 
illustrated in figure ...  of the drawings." 

(b)   Where the international application contains drawings, the technical 
 features mentioned in the claims shall preferably be followed by the 
reference  signs relating to such features. When used, the reference signs 
shall preferably  be placed between parentheses. If inclusion of reference 
signs does not particularly  facilitate quicker understanding of a claim, 
it should not be made. Reference  signs may be removed by a designated 
Office for the purposes of publication  by such Office. 

6.3     Manner of Claiming 

(a)   The definition of the matter for which protection is sought shall be 
 in terms of the technical features of the invention. 

(b)   Whenever appropriate, claims shall contain: 

 (i) a statement indicating those technical features of the invention 
which  are necessary for the definition of the claimed subject matter but 
which, in  combination, are part of the prior art, 

(ii) a characterizing portion - preceded by the words "characterized in 
that,"  "characterized by," "wherein the improvement comprises," or any 
other words  to the same effect - stating concisely the technical features 
which, in combination  with the features stated under (i), it is desired 
to protect. 

 (c)    Where the national law of the designated State does not require 
the  manner of claiming provided for in paragraph (b), failure to use that 
manner  of claiming shall have no effect in that State provided the manner 
of claiming  actually used satisfies the national law of that State. 

6.4   Dependent Claims 

(a)   Any claim which includes all the features of one or more other 
claims 
(claim in dependent form, hereinafter referred to as "dependent claim") 
shall  do so by a reference, if possible at the beginning, to the other 
claim or claims  and shall then state the additional features claimed. Any 
dependent claim which  refers to more than one other claim ("multiple 
dependent claim") shall refer  to such claims in the alternative only. 
Multiple dependent claims shall not  serve as a basis for any other 
multiple dependent claim. Where the national  law of the national Office 
acting as International Searching Authority does  not allow multiple 
dependent claims to be drafted in a manner different from  that provided 
for in the preceding two sentences, failure to use that manner  of 
claiming may result in an indication under Article 17(2)(b) in the 
international  search report. Failure to use the said manner of claiming 
shall have no effect  in a designated State if the manner of claiming 
actually used satisfies the  national law of that State. 

(b)   Any dependent claim shall be construed as including all the 
limitations  contained in the claim to which it refers or, if the 
dependent claim is a multiple  dependent claim, all the limitations 
contained in the particular claim in relation  to which it is considered. 

(c)   All dependent claims referring back to a single previous claim, and 
all  dependent claims referring back to several previous claims, shall be 
grouped  together to the extent and in the most practical way possible. 



6.5   Utility Models 

Any designated State in which the grant of a utility model is sought on 
the  basis of an international application may, instead of Rules 6.1 to 
6.4, apply  in respect of the matters regulated in those Rules the 
provisions of its national  law concerning utility models once the 
processing of the international application  has started in that State, 
provided that the applicant shall be allowed at  least two months from the 
expiration of the time limit applicable under Article  22 to adapt his 
application to the requirements of the said provisions of the  national law. 

Rule 7 

The Drawings 

7.1   Flow Sheets and Diagrams 

Flowsheets and diagrams are considered drawings. 

7.2  Time  Limit 

The time limit referred to in Article 7(2)(ii) shall be reasonable under 
the  circumstances of the case and shall, in no case, be shorter  than two 
months  from the date of  the 

written invitation requiring the filing of drawings or additional drawings 
 under the said provision. 

Rule 8 

The Abstract 

8.1   Contents and Form of the Abstract 

(a)   The abstract shall consist of the following: 

        (i) a summary of the disclosure as contained in the description, 
the  claims, and any drawings; the summary shall indicate the technical 
field to  which the invention pertains and shall be drafted in a way which 
allows the  clear understanding of the technical problem, the gist of the 
solution of that  problem through the invention, and the principal use or 
uses of the invention; 
  (ii) where applicable, the chemical formula which, among all the 
formulae  contained in the international application, best characterizes 
the invention. 
(b)   The abstract shall be as concise as the disclosure permits 
(preferably  50 to 150 words if it is in English or when translated into 
English). 
(c)   The abstract shall not contain statements on the alleged merits or 
value  of the claimed invention or on its speculative application. 

(d)   Each main technical feature mentioned in the abstract and 
illustrated  by a drawing in the international application shall be 
followed by a reference  sign, placed between parentheses. 

8.2   Figure 

(a)   If the applicant fails to make the indication referred to in Rule 
3.3(a)(iii),  or if the International Searching Authority finds that a 
figure or figures  other than that figure or those figures suggested by 
the applicant would, among  all the figures of all the drawings, better 
characterize the invention, it  shall, subject to paragraph (b), indicate 
the figure or figures which should  accompany the abstract when the latter 
is published by the International Bureau.  In such case, the abstract 
shall be accompanied by the figure or figures so  indicated by the 
International Searching Authority. Otherwise, the abstract  shall, subject 
to paragraph (b), be accompanied by the figure or figures suggested  by 
the applicant. 

(b)   If the International Searching Authority finds that none of the 
figures  of the drawings is useful for the understanding of the abstract, 
it shall notify  the International Bureau accordingly. In such case, the 
abstract, when published  by the International Bureau, shall not be 
accompanied by any figure of the  drawings even where the applicant has 
made a suggestion under Rule 3.3(a)(iii). 
8.3   Guiding Principles in Drafting 

The abstract shall be so drafted that it can efficiently serve as a 
scanning  tool for purposes of searching in the particular art, especially 
by assisting  the scientist, engineer or researcher in formulating an 
opinion on whether  there is a need for consulting the international 
application itself. 
Rule 9 

Expressions, etc., Not To Be Used 

9.1     Definition 

The international application shall not contain: 

        (i) expressions or drawings contrary to morality; 

        (ii) expressions or drawings contrary to public order; 

        (iii) statements disparaging the products or processes of any 
particular  person other than the applicant, or the merits or validity of 
applications  or patents of any such person (mere comparisons with the 
prior art shall not  be considered disparaging, per se); 

  (iv) any statement or other matter obviously irrelevant or unnecessary 
under  the circumstances. 

9.2   Noting of Lack of Compliance 

The receiving Office and the International Searching Authority may note 
lack  of compliance with the prescriptions of Rule 9.1 and may suggest to 
the applicant  that he voluntarily correct his international application 
accordingly. If the  lack of compliance was noted by the receiving Office, 
that Office shall inform  the competent International Searching Authority 
and the International Bureau;  if the lack of compliance was noted by the 
International Searching Authority,  that Au- 




thority shall inform the receiving Office and the International Bureau. 
9.3   Reference to Article 21(6) 

 "Disparaging statements," referred to in Article 21(6), shall have the 
meaning  as defined in Rule 9.1(iii). 

Rule 10 

Terminology and Signs 

10.1    Terminology and Signs 

(a)   Units of weights and measures shall be expressed in terms of the 
metric  system, or also expressed in such terms if first expressed in 
terms of a different  system. 

(b)   Temperatures shall be expressed in degrees Celsius, or also 
expressed  in degrees Celsius, if first expressed in a different manner. 

(c)   [Deleted] 

(d)   For indications of heat, energy, light, sound, and magnetism, as 
well  as for mathematical formulae and electrical units, the rules of 
international  practice shall be observed; 

for chemical formulae, the symbols, atomic weights, and molecular 
formulae,  in general use, shall be employed. 

(e)   In general, only such technical terms, signs, and symbols should be 
used  as are generally accepted in the art. 

(f)   When the international application or its translation is in Chinese, 
 English, or Japanese, the beginning of any decimal shall be marked by a 
period,  whereas, when the international application or its translation is 
in a language  other than Chinese, English, or Japanese, it shall be 
marked by a comma. 
10.2    Consistency 

The terminology and the signs shall be consistent throughout the 
international  application. 

Rule 11 

Physical Requirements of the International 
Application 

11.1    Number of Copies 

(a)   Subject to the provisions of paragraph (b), the international 
application  and each of the documents referred to in the check list (Rule 
3.3(a)(ii)) shall  be filed in one copy. 

(b)   Any receiving Office may require that the international application 
and  any of the documents referred to in the check list (Rule 3.3(a)(ii)), 
except  the receipt for the fees paid or the check for the payment of the 
fees, be  filed in two or three copies. In that case, the receiving Office 
shall be responsible  for verifying the identity of the second and the 
third copies with the record  copy. 

11.2    Fitness for Reproduction 

(a)   All elements of the international application (i.e., the request, 
the  description, the claims, the drawings, and the abstract) shall be so 
presented  as to admit of direct reproduction by photography, 
electrostatic processes,  photo offset, and microfilming, in any number of 
copies. 

(b)   All sheets shall be free from creases and cracks; they shall not be 
folded. 
(c)   Only one side of each sheet shall be used. 

(d)   Subject to Rule 11.10(d) and Rule 11.13(j), each sheet shall be used 
 in an upright position (i.e., the short sides at the top and bottom). 
11.3    Material to Be Used 

All elements of the international application shall be on paper which 
shall  be flexible, strong, white, smooth, non-shiny, and durable. 

11.4    Separate Sheets, Etc. 

(a)   Each element (request, description, claims, drawings, abstract) of 
the  international application shall commence on a new sheet. 

(b)   All sheets of the international application shall be so connected 
that  they can be easily turned when consulted, and easily separated and 
joined again  if they have been separated for reproduction purposes. 

11.5    Size of Sheets 

The size of the sheets shall be A4 (29.7 cm x 21 cm). However, any 
receiving  Office may accept international applications on sheets of other 
sizes provided  that the record copy, as transmitted to the International 
Bureau, and, if the  competent International Searching Authority so 
desires, the search copy, shall  be of A4 size. 

11.6    Margins 

(a)   The minimum margins of the sheets containing the description, the 
claims,  and the abstract, shall be as follows: 

- top:  2 cm 

- left side:  2.5 cm 

- right side: 2 cm 

- bottom:  2 cm 

(b)   The recommended maximum, for the margins provided for in paragraph 
(a),  is as follows: 

- top: 4 cm 

- left side: 4 cm 

- right side: 3 cm 

- bottom: 3 cm 

(c)   On sheets containing drawings, the surface usable shall not exceed 
26.2  cm x 17.0 cm. The sheets shall not contain frames around the usable 
or used  surface. The minimum margins shall be as follows: 



- top: 2.5 cm 

- left side: 2.5 cm 

- right side: 1.5 cm 

- bottom: 1.0 cm 

(d)   The margins referred to in paragraphs (a) to (c) apply to A4-size 
sheets,  so that, even if the receiving Office accepts 

other sizes, the A4-size record copy and, when so required, the A4-size 
search  copy shall leave the aforesaid margins. 

(e)   Subject to paragraph (f) and to Rule 11.8(b), the margins of the 
international  application, when submitted, must be completely blank. 

(f)   The top margin may contain in the left-hand corner an indication of 
the  applicant's file reference, provided that the reference appears 
within 1.5  cm from the top of the sheet. 

The number of characters in the applicant's file reference shall not 
exceed  the maximum fixed by the Administrative Instructions. 

11.7    Numbering of Sheets 

(a)   All the sheets contained in the international application shall be 
numbered  in consecutive Arabic numerals. 

(b)   The numbers shall be centered at the top or bottom of the sheet, but 
 shall not be placed in the margin. 

11.8    Numbering of Lines 

(a)   It is strongly recommended to number every fifth line of each sheet 
of  the description, and of each sheet of claims. 

(b)   The numbers should appear in the right half of the left margin. 
11.9    Writing of Text Matter 

(a)   The request, the description, the claims and the abstract shall be 
typed  or printed. 

(b)   Only graphic symbols and characters, chemical or mathematical 
formulae,  and certain characters in the Chinese or Japanese languages 
may, when necessary,  be written by hand or drawn. 

(c)   The typing shall be 1 1/2-spaced. 

(d)   All text matter shall be in characters the capital letters of which 
are  not less than 0.21 cm high, and shall be in a dark, indelible color, 
satisfying  the requirements specified in Rule 11.2. 

(e)   As far as the spacing of the typing and the size of the characters 
are  concerned, paragraphs (c) and (d) shall not apply to texts in the 
Chinese or  Japanese languages. 

11.10     Drawings, Formulae, and Tables, in Text Matter 

(a)   The request, the description, the claims and the abstract shall not 
contain  drawings. 

(c)   The description and the abstract may contain tables; any claim may 
contain  tables only if the subject matter of the claim makes the use of 
tables desirable. 
(d)   Tables and chemical or mathematical formulae may be placed sideways 
on  the sheet if they cannot be presented satisfactorily in an upright 
position  thereon; sheets on which tables or chemical or mathematical 
formulae are presented  sideways shall be so presented that the tops of 
the tables or formulae are  at the left side of the sheet. 

11.11     Words in Drawings 

(a)   The drawings shall not contain text matter, except a single word or 
words,  when absolutely indispensable, such as "water," "steam," "open," 
"closed,"  "section on AB," and, in the case of electric circuits and 
block schematic  or flow sheet diagrams, a few short catchwords 
indispensable for understanding. 
(b)   Any words used shall be so placed that, if translated, they may be 
pasted  over without interfering with any lines of the drawings. 

11.12     Alterations, Etc. 

Each sheet shall be reasonably free from erasures and shall be free from 
alterations,  overwritings, and interlineations. Non-compliance with this 
Rule may be authorized  if the authenticity of the content is not in 
question and the requirements  for good reproduction are not in jeopardy. 

11.13     Special Requirements for Drawings 

(a)   Drawings shall be executed in durable, black, sufficiently dense and 
 dark, uniformly thick and well-defined, lines and strokes without 
colorings. 
(b)   Cross-sections shall be indicated by oblique hatching which should 
not  impede the clear reading of the reference signs and leading lines. 
(c)   The scale of the drawings and the distinctness of their graphical 
execution  shall be such that a photographic reproduction with a linear 
reduction in size  to two-thirds would enable all details to be 
distinguished without difficulty. 
(d)   When, in exceptional cases, the scale is given on a drawing, it 
shall  be represented graphically. 

(e)   All numbers, letters and reference lines, appearing on the drawings, 
 shall be simple and clear. Brackets, circles or inverted commas shall not 
be  used in association with numbers and letters. 

(f)   All lines in the drawings shall, ordinarily, be drawn with the aid 
of  drafting instruments. 

(g)   Each element of each figure shall be in proper proportion to each of 
 the other elements in the figure, except where the use of a different 
proportion  is indispensable for the clarity of the figure. 



(h)   The height of the numbers and letters shall not be  less than 0.32 
cm.  For the lettering of drawings, the Latin and, where customary, the 
Greek alphabets  shall be used. 

(i)   The same sheet of drawings may contain several figures. Where 
figures  on two or more sheets form in effect a single complete figure, 
the figures  on the several sheets shall be so arranged that the complete 
figure can be  assembled without concealing any part of any of the figures 
appearing on the  various sheets. 

(j)   The different figures shall be arranged on a sheet or sheets without 
 wasting space, preferably in an upright position, clearly separated from 
one  another. Where the figures are not arranged in an upright position, 
they shall  be presented sideways with the top of the figures at the left 
side of the sheet. 
(k)   The different figures shall be numbered in Arabic numerals 
consecutively  and independently of the numbering of the sheets. 

(l)   Reference signs not mentioned in the description shall not appear in 
 the drawings, and vice versa. 

(m)   The same features, when denoted by reference signs, shall, 
throughout  the international application, be denoted by the same signs. 

(n)   If the drawings contain a large number of reference signs, it is 
strongly  recommended to attach a separate sheet listing all reference 
signs and the  features denoted by them. 

11.14     Later Documents 

Rules 10, and 11.1 to 11.13, also apply to any document -  for example, 
corrected  pages, amended claims - submitted after the filing of the 
international application. 
Rule 12 

Language of the International Application 

12.1    Admitted Languages 

(a)   Any international application shall be filed in the language, or one 
 of the languages, specified in the agreement concluded between the 
International  Bureau and the International Searching Authority competent 
for the international  searching of that application, provided that, if 
the agreement specifies several  languages, the receiving Office may 
prescribe among the specified languages  that language in which or those 
languages in one of which the international  application must be filed. 

(b)   Notwithstanding paragraph (a), the request, any text matter of the 
drawings,  and the abstract need not be in the same language as other 
elements of the  international application, provided that: 

(i) the request is in a language admitted under paragraph (a) or in the 
language  in which the international application is to be published; 

(ii) the text matter of the drawings is in the language in which the 
international  application is to be published; 

(iii) the abstract is in the language in which the international 
application  is to be published. 

(c)   Subject to paragraph (d), where the official language of the 
receiving  Office is one of the languages referred to in Rule 48.3(a) but 
is a language  not specified in the agreement referred to in paragraph 
(a), the international  application may be filed in the said official 
language. If the international  application is filed in the said official 
language, the search copy transmitted  to the International Searching 
Authority under Rule 23.1 shall be accompanied  by a translation into the 
language, or one of the languages, specified in the  agreement referred to 
in paragraph (a); such translation shall be prepared  under the 
responsibility of the receiving Office. 

(d)   Paragraph (c) shall apply only where the International Searching 
Authority  has declared, in a notification addressed to the International 
Bureau, that  it accepts to search international applications on the basis 
of the translation  referred to in paragraph (c). 

12.2    Language of Changes in the International Application 

Any changes in the international application, such as amendments and 
corrections,  shall, subject to Rules 46.3 and 66.9, be in the same 
language as the said  application. 

Rule 13 

Unity of Invention 

13.1      Requirement 

The international application shall relate to one invention only or to a 
group  of inventions so linked as to form a single general inventive 
concept ("requirement  of unity of invention"). 

13.2    Circumstances in Which the Requirement of Unity of 
Invention  Is to Be Considered Fulfilled 

Where a group of inventions is claimed in one and the same international 
application,  the requirement of unity of invention referred to in Rule 
13.1 shall be fulfilled  only when there is a technical relationship among 
those inventions involving  one or more of the same or corresponding 
special technical features. The expression  "special technical features" 
shall mean those technical features that define  a contribution which each 
of the claimed inventions, considered as a whole,  makes over the prior art. 



13.3    Determination of Unity of Invention Not Affected  Manner of 
Claiming 
The determination whether a group of inventions is so linked as to form a 
single  general inventive concept shall be 

made without regard to whether the inventions are claimed in separate 
claims  or as alternatives within a single claim. 

13.4    Dependent Claims 

Subject to Rule 13.1, it shall be permitted to include in the same 
international  application a reasonable number of dependent claims, 
claiming specific forms  of the invention claimed in an independent claim, 
even where the features of  any dependent claim could be considered as 
constituting in themselves an invention. 
13.5    Utility Models 

Any designated State in which the grant of a utility model is sought on 
the  basis of an international application may, instead of Rules 13.1 to 
13.4, apply  in respect of the matters regulated in those Rules the 
provisions of its national  law concerning utility models once the 
processing of 

the international application has started in that State, provided that the 
 applicant shall be allowed at least two months from the expiration of the 
time  limit applicable under Article 22 to adapt his application to the 
requirements  of the said provisions of the national law. 

Rule 13bis 

Microbiological Inventions 

13bis.1       Definition 

For the purposes of this Rule, "reference to a deposited microorganism" 
means  particulars given in an international application with respect to 
the deposit  of a microorganism with a depositary institution or to the 
microorganism so  deposited. 

13bis.2       References (General) 

Any reference to a deposited microorganism shall be made in accordance 
with  this Rule and, if so made, shall be considered as satisfying the 
requirements  of the national law of each designated State. 

13bis.3       References: Contents; Failure to Include Reference 
                or   Indication 

(a)   A reference to a deposited microorganism shall indicate, 

(i) the name and address of the depositary institution with which the 
deposit  was made; 

(ii) the date of deposit of the microorganism with that institution; 
(iii) the accession number given to the deposit by that institution; and 
(iv) any additional matter of which the International Bureau has been 
notified  pursuant to Rule 13bis.7(a)(i), provided that the requirement to 
indicate that  matter was published in the Gazette in accordance with Rule 
13bis.7(c) at least  two months before the filing of the international 
application. 

(b)   Failure to include a reference to a deposited microorganism or 
failure  to include, in a reference to a deposited microorganism, an 
indication in accordance  with paragraph (a), shall have no consequence in 
any designated State whose  national law does not require such reference 
or such indication in a national  application. 

13bis.4       References: Time of Furnishing Indications 

If any of the indications referred to in Rule l3bis.3(a) is not included 
in  a reference to a deposited microorganism in the international 
application as  filed but is furnished by the applicant to the 
International Bureau within  16 months after the priority date, the 
indication shall be considered by any  designated Office to have been 
furnished in time unless its national law requires  the indication to be 
furnished at an earlier time in the case of a national  application and 
the International Bureau has been notified of such requirement  pursuant 
to Rule 13bis.7(a)(ii), provided that the International Bureau has 
published such requirement in the Gazette in accordance with Rule 
13bis.7(c)  at least two months before the filing of the international 
application. In  the event that the applicant makes a request for early 
publication under Article  21(2)(b), however, any designated Office may 
consider any indication not furnished  by the time such request is made as 
not having been furnished in time. Irrespective  of whether the applicable 
time limit under the preceding sentences has been  observed, the 
International Bureau shall notify the applicant and the designated 
Offices of the date on which it has received any indication not included 
in  the international application as filed. The International Bureau shall 
indicate  that date in the international publication of the international 
application  if the indication has been furnished to it before the 
completion of technical  preparations international publication. 

13bis.5       References and Indications for the Purposes of One 
    or More Designated States; Different Deposits for 
     Different  Designated States; Deposits with Depositary 
             Institutions  Other Than Those Notified 

(a)   A reference to a deposited microorganism shall be considered to be 
made  for the purposes of all designated States, unless it is expressly 
made for 

the purposes of certain of the designated States only; the same applies to 
 the indications included in the reference. 

(b)   References to different deposits of the microorganism may be made 
for  different designated States. 



(c)   Any designated Office shall be entitled to disregard a deposit made 
with  a depositary institution other than one notified by it under Rule 
13bis.7(b). 
13bis.6       Furnishing of Samples 

(a)   Where the international application contains a reference to a 
deposited  microorganism, the applicant shall, upon the request of the 
International Searching  Authority or the International Preliminary 
Examining Authority, authorize and  assure the furnishing of a sample of 
that microorganism by the depositary institution  to the said Authority, 
provided that the said Authority has notified the International  Bureau 
that it may require the furnishing of samples and that such samples  will 
be used solely for the purposes of international search or international 
preliminary examination, as the case may be, and such notification has 
been  published in the Gazette. 

(b)   Pursuant to Articles 23 and 40, no furnishing of samples of the 
deposited  microorganism to which a referenceis made in an international 
application shall,  except with the authorization of the applicant, take 
place before the expiration  of the applicable time limits after which 
national processing may start under  the said Articles. However, where the 
applicant performs the acts referred  to in Articles 22 or 39 after 
international publication but before the expiration  of the said time 
limits, the furnishing of samples of the deposited microorganism  may take 
place, once the said acts have been performed. Notwithstanding the 
previous provision, the furnishing of samples from the deposited 
microorganism  may take place under the national law applicable for any 
designated Office  as soon as, under that law, the international 
publication has the effects of  the compulsory national publication of an 
unexamined national application. 
13bis.7       National Requirements: Notification and Publication 
(a)   Any national Office may notify the International Bureau of any 
requirement  of the national law, 

(i)   that any matter specified in the notification, in addition to those 
referred  to in Rule 13bis.3(a)(i), (ii) and (iii), is required to be 
included in a reference  to a deposited microorganism in a national 
application; 

(ii)    that one or more of the indications referred to in Rule 13bis.3(a) 
 are required to be included in a national application as filed or are 
required  to be furnished at a time specified in the notification which is 
earlier than  16 months after the priority date. 

(b)   Each national Office shall notify the International Bureau of the 
depositary  institutions with which the national law permits deposits of 
microorganisms  to be made for the purposes of patent procedure before 
that Office or, if the  national law does not provide for or permit such 
deposits, of that fact. 
(c)   The International Bureau shall promptly publish in the Gazette 
requirements  notified to it under paragraph (a) and information notified 
to it under paragraph 
(b). 

Rule 13ter 

Nucleotide and/or Amino Acid Sequence Listings 

13ter.1       Sequence Listing for International Authorities 

(a)   If the International Searching Authority finds that a nucleotide 
and/or  amino acid sequence listing does not comply with the standard 
prescribed in  the Administrative Instructions under Rule 5.2, and/or is 
not in a machine  readable form provided for in those Instructions, it may 
invite the applicant,  within a time limit fixed in the invitation, as the 
case may be: 

(i) to furnish to it a listing of the sequence complying with the 
prescribed  standard, and/or 

(ii)    to furnish to it a listing of the sequence in a machine readable 
form  provided for in the Administrative Instructions or, if that 
Authority is prepared  to transcribe the sequence listing into such a 
form, to pay for the cost of  such transcription. 

(b)   Any sequence listing furnished under paragraph (a) shall be 
accompanied  by a statement to the effect that the listing does not 
include matter which  goes beyond the disclosure in the international 
application as filed. 
(c)   If the applicant does not comply with the invitation within the time 
 limit fixed in the invitation, the International Searching Authority 
shall  not be required to search the international application to the 
extent that  such noncompliance has the result that a meaningful search 
cannot be carried  out. 

(d)   If the International Searching Authority chooses, under paragraph 
(a)(ii),  to transcribe the sequence listing into a machine readable form, 
it shall send  a copy of such transcription in machine readable form to 
the applicant. 
(e)   The International Searching Authority shall, upon  request, make 
available  to the International Preliminary Examining Authority a copy of 
any sequence  listing furnished to it, or as transcribed by it, under 
paragraph (a). 
(f)   A sequence listing furnished to the International Searching 
Authority,  or as transcribed by it, under paragraph (a) shall not form 
part of the international  application. 

13ter.2  Sequence Listing for Designated Office 

(a)   Once the processing of the international application has started 
before  a designated Office, that Office may require the applicant to 
furnish to it  a copy of any sequence listing furnished to the 
International Searching Authority,  or as transcribed by that Authority, 
under Rule 13ter.1(a). 



(b)   If a designated Office finds that a nucleotide and/or amino acid 
sequence  listing does not comply with the standard prescribed in the 
Administrative  Instructions under Rule 5.2, and/or is not in a machine 
readable form provided  for in those Instructions, and/or no listing of 
the sequence was furnished  to the International Searching Authority, or 
transcribed by that Authority,  under Rule 13ter.1(a), that Office may 
require the applicant: 

(i)   to furnish to it a listing of the sequence complying with the 
prescribed  standard, and/or 

(ii)    to furnish to it a listing of the sequence in a machine readable 
form  provided for in the Administrative Instructions or, if that Office 
is prepared  to transcribe the sequence listing into such a form, to pay 
for the cost of  such transcription. 

Rule 14 

The Transmittal Fee 

14.1    The Transmittal Fee 

(a)   Any receiving Office may require that the applicant pay a fee to it, 
 for its own benefit, for receiving the international application, 
transmitting  copies to the International Bureau and the competent 
International Searching  Authority, and performing all the other tasks 
which it must perform in connection  with the international application in 
its capacity of receiving Office ("transmittal  fee"). 

(b)   The amount and the due date of the transmittal fee, if any, shall be 
 fixed by the receiving Office. 

Rule 15 

The International Fee 

15.1    Basic Fee and Designation Fee 

Each international application shall be subject to the payment of a fee 
for  the benefit of the International Bureau ("international fee") to be 
collected  by the receiving Office and consisting of, 

(i) a "basic fee," and 

(ii) as many "designation fees" as there are national patents and regional 
 patents sought under Rule 4.9(a) by the applicant in the international 
application,  except that, where Article 44 applies in respect of a 
designation, only one  designation fee shall be due for that designation. 

15.2      Amounts 

(a)   The amounts of the basic fee and of the designation fee are as set 
out  in the Schedule of Fees. 

(b)   The amounts of the basic fee and of the designation fee shall be 
established,  for each receiving Office which, under Rule 15.3, prescribes 
the payment of  those fees in a currency or currencies other than Swiss 
currency, by the Director  General after consultation with that Office and 
in the currency or currencies  prescribed by that Office ("prescribed 
currency"). The amounts in each prescribed  currency shall be the 
equivalent, in round figures, of the amounts in Swiss  currency set out in 
the Schedule of Fees. They shall be published in the Gazette. 
(c)   Where the amounts of the fees set out in the Schedule of Fees are 
changed,  the corresponding amounts in the prescribed currencies shall be 
applied from  the same date as the amounts set out in the amended Schedule 
of Fees. 
(d)   Where the exchange rate between Swiss currency and any prescribed 
currency  becomes different from the exchange rate last applied, the 
Director General  shall establish new amounts in the prescribed currency 
according to directives  given by the Assembly. The newly established 
amounts shall become applicable  two months after the date of their 
publication in the Gazette, provided that  the interested Office and the 
Director General may agree on a date falling  during the said two-month 
period in which case the said amounts shall become  applicable for that 
Office from that date. 

15.3    Mode of Payment 

The international fee shall be payable in the currency or currencies 
prescribed  by the receiving Office, it being understood that, when 
transferred by the  receiving Office to the International Bureau, the 
amount transferred shall  be freely convertible into Swiss currency. 

15.4      Time of Payment 

(a)   The basic fee shall be paid within one month from the date of 
receipt  of the international application. 

(b)   The designation fee shall be paid: 

(i) where the international application does not contain a priority claim 
under  Article 8, within one year from the date of receipt of the 
international application, 
(ii) where the international application contains a priority claim under 
Article  8, within one year from the priority date or within one month 
from the date  of receipt of the international application if that month 
expires after the  expiration of one year from the priority date. 

(c)   Where the basic fee or the designation fee is paid later than the 
date  on which the international application was received and where the 
amount of  that fee is, in the currency in which it is payable, higher on 
the date of  payment ("the higher amount") than it was on the date on 
which the international  application was received ("the lower amount"), 

(i) the lower amount shall be due if the fee is paid within one month from 
 the date of receipt of the international application, 



(ii) the higher amount shall be due if the fee is paid later than one 
month  from the date of receipt of the international application. 

(d)   [Deleted] 

15.5    Fees Under Rule 4.9(c) 

(a)   Notwithstanding Rule 15.4(b), the confirmation under Rule 4.9(c) of 
any  designations made under Rule 4.9(b) shall be subject to the payment 
to the  receiving Office of as many designation fees (for the benefit of 
the International  Bureau) as there are national patents and regional 
patents sought by the applicant  by virtue of the confirmation, together 
with a confirmation fee (for the benefit  of the receiving Office), as set 
out in the Schedule of Fees. 

(b)   Where moneys paid by the applicant within the time limit under Rule 
4.9(b)(ii)  are not sufficient to cover the fees due under paragraph (a), 
the receiving  Office shall allocate any moneys paid as specified by the 
applicant or, in  the absence of such specification, as prescribed by the 
Administrative Instructions. 
15.6     Refund 

The receiving Office shall refund the international fee to the applicant: 
(i)   if the determination under Article 11(1) is negative, or 

(ii)    if, before the transmittal of the record copy to the International 
 Bureau, the international application is withdrawn or considered 
withdrawn. 
Rule 16 

The Search Fee 

16.1    Right to Ask for a Fee 

(a)   Each International Searching Authority may require that the 
applicant  pay a fee ("search fee") for its own benefit for carrying out 
the international  search and for performing all other tasks entrusted to 
International Searching  Authorities by the Treaty and these Regulations. 

(b)   The search fee shall be collected by the receiving Office. The said 
fee  shall be payable in the currency or currencies prescribed by that 
Office ("the  receiving Office currency"), it being understood that, if 
any receiving Office  currency is not that, or one of those, in which the 
International Searching  Authority has fixed the said fee ("the fixed 
currency or currencies"), it shall,  when transferred by the receiving 
Office to the International Searching Authority,  be freely convertible 
into the currency of the State in which the International  Searching 
Authority has its headquarters ("the headquarters currency"). The  amount 
of the search fee in any receiving Office currency, other than the fixed 
currency or currencies, shall be established by the Director General after 
 consultation with that Office. The amounts so established shall be the 
equivalents,  in round figures, of the amount established by the 
International Searching  Authority in the headquarters currency. They 
shall be published in the Gazette. 
(c)   Where the amount of the search fee in the headquarters currency is 
changed,  the corresponding amounts in the receiving Office currencies, 
other than the  fixed currency or currencies, shall be applied from the 
same date as the changed  amount in the headquarters currency. 

(d)   Where the exchange rate between the headquarters currency and any 
receiving  Office currency, other than the fixed currency or currencies, 
becomes different  from the exchange rate last applied, the Director 
General shall establish the  new amount in the said receiving Office 
currency according to directives given  by the Assembly. The newly 
established amount shall become applicable two months  after its 
publication in the Gazette, provided that any interested receiving  Office 
and the Director General may agree on a date falling during the said 
two-month period in which case the said amount shall become applicable for 
 that Office from that date. 

(e)   Where, in respect of the payment of the search fee in a receiving 
Office  currency, other than the fixed currency or currencies, the amount 
actually  received by the International Searching Authority in the 
headquarters currency  is less than that fixed by it, the difference will 
be paid to the International  Searching Authority by the International 
Bureau, whereas, if the amount actually  received is more, the difference 
will belong to the International Bureau. 
(f)   As to the time of payment of the search fee, the provisions of Rule 
15.4  relating to the basic fee shall apply. 

16.2      Refund 

The receiving Office shall refund the search fee to the applicant: 
(i) if the determination under Article 11(1) is negative, or 

(ii) if, before the transmittal of the search copy to the International 
Searching  Authority, the international application is withdrawn or 
considered withdrawn. 
16.3    Partial Refund 

Where the international application claims the priority of an earlier 
international  application which has been the subject of an international 
search by the same  International Searching Authority, that Authority 
shall refund the search fee  paid in connection with the later 
international application to the extent and  under the conditions provided 
for in the agreement under Article 16(3)(b),  if the international search 
report on the later international application could 


wholly or partly be based on the results of the international search 
effected  on the earlier international application. 

Rule 16bis 

 Extension of Time Limits for Payment of Fees 

16bis.1        Invitation by the Receiving Office 

(a)   Where, by the time they are due under Rule 14.1(b), Rule 15.4(a) and 
 Rule 16.1(f), the receiving Office finds that in respect of an 
international  application no fees were paid to it by the applicant, or 
that the amount paid  to it by the applicant is less than what is 
necessary to cover the transmittal  fee, the basic fee and the search fee, 
the receiving Office shall invite the  applicant to pay to it 

the amount required to cover those fees, together with, where applicable, 
the  late payment fee under Rule 16bis.2, within one month from the date 
of the  invitation. 

(b)   Where, by the time they are due under Rule 15.4(b), the receiving 
Office  finds that in respect of an international application the payment 
made by the  applicant is insufficient to cover the designation fees 
necessary to cover  all the designations under Rule 4.9(a), the receiving 
Office shall invite the  applicant to pay to it the amount required to 
cover those fees, together with,  where applicable, the late payment fee 
under Rule 16bis.2, within one month  from the date of the invitation. 

(c)   Where the receiving Office has sent to the applicant an invitation 
under  paragraph (a) or (b) and the applicant has not, within one month 
from the date  of the invitation, paid in full the amount due, including, 
where applicable,  the late payment fee under Rule 16bis.2, the receiving 
Office shall: 
(i) allocate any moneys paid as specified by the applicant or, in the 
absence  of such specification, as prescribed by the Administrative 
Instructions, 
(ii) make the applicable declaration under Article 14(3), and 

(iii) proceed as provided in Rule 29. 

16bis.2  Late Payment Fee 

(a)   The payment of fees in response to an invitation under Rule 
16bis.1(a)  or (b) may be subjected by the receiving Office to the payment 
to it of a late  payment fee. The amount of that fee shall be: 

(i) 50% of the amount of unpaid fees which is specified in the invitation, 
 or, 

(ii) if the amount calculated under item (i) is less than the transmittal 
fee,  an amount equal to the transmittal fee. 

(b)   The amount of the late payment fee shall not, however, exceed the 
amount  of the basic fee. 

(c)   [Deleted] 

Rule 17 

The Priority Document 

  17.1      Obligation to Submit Copy of Earlier National Appli- 
                     cation 
(a)   Where the priority of an earlier national application is claimed 
under  Article 8 in the international application, a copy of the said 
national application,  certified by the authority with which it was filed 
("the priority document"),  shall, unless already filed with the receiving 
Office together with the international  application, be submitted by the 
applicant to the International Bureau or to  the receiving Office not 
later than 16 months after the priority date or, in  the case referred to 
in Article 23(2), not later than at the time the processing  or 
examination is requested. 

(b)   Where the priority document is issued by the receiving Office, the 
applicant  may, instead of submitting the priority document, request the 
receiving Office  to transmit the priority document to the International 
Bureau. Such request  shall be made not later than the expiration of the 
applicable time limit referred  to under paragraph (a) and may be 
subjected by the receiving Office to the  payment of a fee. 

(c)   If the requirements of neither of the two preceding paragraphs are 
complied  with, any designated State may disregard the priority claim. 

17.2     Availability of Copies 

(a)   The International Bureau shall, at the specific request of the 
designated  Office, promptly but not before the expiration of the time 
limit fixed in Rule  17.1(a), furnish a copy of the priority document to 
that Office. No such Office  shall ask the applicant himself to furnish it 
with a copy, except where it  requires the furnishing of a copy of the 
priority document together with a  certified translation thereof. The 
applicant shall not be required to furnish  a certified translation to the 
designated Office before the expiration of the  applicable time limit 
under Article 22. 

(b)   The International Bureau shall not make copies of the priority 
document  available to the public prior to the international publication 
of the international  application. 

(c)   Where the international application has been published under Article 
 21, the International Bureau shall furnish a copy of the priority 
document  to any person upon request and subject to reimbursement of the 
cost unless,  prior to that publication: 

(i) the international application was withdrawn, 

(ii) the relevant priority claim was withdrawn or was considered, under 
Rule  4.10(b), not to have been made, or 

(iii) the relevant declaration under Article 8(1) was cancelled under Rule 
 4.10(d). 



(d)   Paragraphs (a) to (c) shall apply also to any earlier international 
application  whose priority is claimed in the subsequent international 
application. 
Rule 18 

The Applicant 

18.1    Residence and Nationality 

(a)   Subject to the provisions of paragraphs (b) and (c), the question 
whether  an applicant is a resident or national of the Contracting State 
of which he  claims to be a resident or national shall depend on the 
national law of that  State and shall be decided by the receiving Office. 

(b)   In any case, 

(i)   possession of a real and effective industrial or commercial 
establishment  in a Contracting State shall be considered residence in 
that State, and 
(ii)    a legal entity constituted according to the national law of a 
Contracting  State shall be considered a national of that State. 

(c)   Where the international application is filed with the International 
Bureau  as receiving Office, the International Bureau shall, in the 
circumstances specified  in the Administrative Instructions, request the 
national Office of, or acting  for, the Contracting State concerned to 
decide the question referred to in  paragraph (a). The International 
Bureau shall inform the applicant of any such  request. The applicant 
shall have an opportunity to submit arguments directly  to the national 
Office. The national Office shall decide the said question  promptly. 

18.2    [Deleted] 

18.3    Two or More Applicants 

If there are two or more applicants, the right to file an international 
application  shall exist if at least one of them is entitled to file an 
international application  according to Article 9. 

18.4    Information on Requirements Under National Law as to 
Applicants 
(a) and (b) [Deleted] 

(c)   The International Bureau shall, from time to time, publish 
information  on the various national laws in respect of the question who 
is qualified (inventor,  successor in title of the inventor, owner of the 
invention, or other) to file  a national application and shall accompany 
such information by a warning that  the effect of the international 
application in any designated State may depend  on whether the person 
designated in the international application as applicant  for the purposes 
of that State is a person who, under the national law of that  State, is 
qualified to file a national application. 

Rule 19 

The Competent Receiving Office 

19.1    Where to File 

(a)   Subject to the provisions of paragraph (b), the international 
application  shall be filed, at the option of the applicant, 

(i)   with the national Office of or acting for the Contracting State of 
which  the applicant is a resident, 

(ii)    or with the national Office of or acting for the Contracting State 
 of which the applicant is a national, or 

(iii)     irrespective of the Contracting State of which the applicant is 
a  resident or national, with the International Bureau. 

(b)   Any Contracting State may agree with another Contracting State or 
any  intergovernmental organization that the national Office of the latter 
State  or the intergovernmental organization shall, for all or some 
purposes, act  instead of the national Office of the former State as 
receiving Office for  applicants who are residents or nationals of that 
former State. Notwithstanding  such agreement, the national Office of the 
former State shall be considered  the competent receiving Office for the 
purposes of Article 15(5). 

(c)   In connection with any decision made under Article 9(2), the 
Assembly  shall appoint the national Office or the intergovernmental 
organization which  will act as receiving Office for applications of 
residents or nationals of  States specified by the Assembly. Such 
appointment shall require the previous  consent of the said national 
Office or intergovernmental organization. 
19.2    Two or More Applicants 

If there are two or more applicants, 

(i)   the requirements of Rule 19.1 shall be considered to be met if the 
national  Office with which the international application is filed is the 
national Office  of or acting for a Contracting State of which at least 
one of the applicants  is a resident or national; 

(ii)    the international application may be filed with the International 
Bureau  under Rule 19.1(a)(iii) if at least one of the applicants is a 
resident or  national of a Contracting State. 

19.3    Publication of Fact of Delegation of Duties of Receiving 
        Office 

(a)   Any agreement referred to in Rule 19.1(b) shall be promptly notified 
 to the International Bureau by the Contracting State which delegates the 
duties  of the receiving Office to the national Office of or acting for 
another Contracting  State or an intergovernmental organization. 

(b)   The International Bureau shall, promptly upon receipt, publish the 
notification  in the Gazette. 



19.4    Transmittal to the International Bureau as Receiving Office 
(a)   Where an international application is filed with a national Office 
which  acts as a  receiving Ofice under the Treaty by an applicant who is 
a resident  or national of a Contracting State, but that national Office 
is not competent  under Rule 19.1 or 19.2 to receive that international 
application, that international  application shall, subject to paragraph 
(b), be considered to have been received  by that Office on behalf of the 
International Bureau as receiving Office under  Rule 19.1(a)(iii). 

(b)   Where, pursuant to paragraph (a), an  international  application is 
received  by a national Office on behalf of the International Bureau as 
receiving Office  under Rule 19.1(a)(iii), that national Office shall, 
unless prescriptions concerning  national security prevent the 
international application from being so transmitted,  promptly transmit it 
to the International  Bureau. Such transmittal may be  subjected by the 
national Office to the payment of a fee, for its own benefit,  equal to 
the transmittal fee charged by that Office under Rule 14. The 
international  application so transmitted shall be considered to have been 
received by the  International Bureau as receiving Office under Rule 
19.1(a)(iii) on the date  of receipt of the international application by 
that national Office. 
Rule 20 

Receipt of the International Application 

20.1    Date and Number 

(a)   Upon receipt of papers purporting to be an international 
application,  the receiving Office shall indelibly mark 

mark the date of actual receipt on the request of each copy received and 
the  international application number on each sheet of each copy received. 

(b)   The place on each sheet where the date or number shall be marked, 
and  other details, shall be specified in the Administrative Instructions. 
20.2    Receipt on Different Days 

(a)   In cases where all the sheets pertaining to the same purported 
international  application are not received on the same day by the 
receiving Office, that  Office shall correct the date marked on the 
request (still leaving legible,  however, the earlier date or dates 
already marked) so that it indicates the  day on which the papers 
completing the international application were received,  provided that 

(i) where no invitation under Article 11(2)(a) to correct was sent to the 
applicant,  the said papers are received within 30 days from the date on 
which sheets were  first received; 

(ii) where an invitation under Article 11(2)(a) to correct was sent to the 
 applicant, the said papers are received within the applicable time limit 
under  Rule 20.6; 

(iii) in the case of Article 14(2), the missing drawings are received 
within  30 days from the date on which the incomplete papers were filed; 

 (iv) the absence or later receipt of any sheet containing the abstract or 
 part thereof shall not, in itself, require any correction of the date 
marked  on the request. 

(b)   Any sheet received on a date later than the date on which sheets 
were  first received shall be marked by the receiving Office with the date 
on which  it was received. 

20.3    Corrected International Application 

In the case referred to in Article 11(2)(b), the receiving Office shall 
correct  the date marked on the request (still leaving legible, however, 
the earlier  date or dates already marked) so that it indicates the day on 
which the last  required correction was received. 

20.3bis       [Deleted] 

20.4    Determination under Article 11(1) 

(a)   Promptly after receipt of the papers purporting to be an 
international  application, the receiving Office shall determine whether 
the papers comply  with the requirements of Article 11(1). 

(b)   For the purposes of Article 11(1)(iii)(c), it shall be sufficient to 
 indicate the name of the applicant in a way which allows his identity to 
be  established even if the name is misspelled, the given names are not 
fully indicated,  or, in the case of legal entities, the indication of the 
name is abbreviated  or incomplete. 

(c)   For the purposes of Article 11(1)(ii), it shall be sufficient that 
the  elements referred to in Article 11(1)(iii)(d) and (e) be in a 
language admitted  under Rule 12.1(a) or (c). 

(d)   If, on July 12, 1991, paragraph (c) is not compatible with the 
national  law applied by the receiving Office, paragraph (c) shall not 
apply to that  receiving Office for as long as it continues not to be 
compatible with that  law, provided that the said Office informs the 
International Bureau accordingly  by December 31, 1991.  The information 
received shall be promptly published  by the International Bureau in the 
Gazette. 

20.5    Positive Determination 

 (a)    If the determination under Article 11(1) is positive, the 
receiving  Office shall stamp on the request the name of the receiving 
Office and the  words "PCT International Application," or "Demande 
internationale PCT." If  the official  language of the receiving Office is 
neither English nor French,  the words "International Application" or 
"Demande internationale" may be accompanied  by a translation of these 
words in the official language of the receiving Office. 


(b)   The copy whose request has been so stamped shall be the record copy 
of  the international application. 

(c)   The receiving Office shall promptly notify the applicant of the 
international  application number and the 

international filing date. At the same time, it shall send to the 
International  Bureau a copy of the notification sent to the applicant, 
except where it has  already sent, or is sending at the same time, the 
record copy to the International  Bureau under Rule 22.1(a). 

20.6    Invitation to Correct 

(a)   The invitation to correct under Article 11(2) shall specify the 
requirement  provided for under Article 11(1) which, in the opinion of the 
receiving Office,  has not been fulfilled. 

(b)   The receiving Office shall promptly mail the invitation to the 
applicant  and shall fix a time limit, reasonable under the circumstances 
of the case,  for filing the correction. The time limit shall not be less 
than 10 days, and  shall not exceed one month, from the date of the 
invitation. If such time limit  expires after the expiration of one year 
from the filing date of any application  whose priority is claimed, the 
receiving Office may call this circumstance  to the attention of the 
applicant. 

20.7    Negative Determination 

If the receiving Office does not, within the prescribed time limit, 
receive  a reply to its invitation to correct, or if the correction 
offered by the applicant  still does not fulfill the requirements provided 
for under Article 11(1), it  shall: 

(i) promptly notify the applicant that his application is not and will not 
 be treated as an international application and shall indicate the reasons 
therefor, 
(ii) notify the International Bureau that the number it has marked on the 
papers  will not be used as an international application number, 

(iii) keep the papers constituting the purported international application 
 and any correspondence relating thereto as provided in Rule 93.1, and 
(iv) send a copy of the said papers to the International Bureau where, 
pursuant  to a request by the applicant under Article 25(1), the 
International Bureau  needs such a copy and specially asks for it. 

20.8    Error by the Receiving Office 

  If the receiving Office later discovers, or on the basis of the 
applicant's  reply realizes, that it has erred in issuing an invitation to 
correct since  the requirements provided for 

under Article 11(1) were fulfilled when the papers were received, it shall 
 proceed as provided in Rule 20.5. 

20.9    Certified Copy for the Applicant 

Against payment of a fee, the receiving Office shall furnish to the 
applicant,  on request, certified copies of the international application 
as filed and  of any corrections thereto. 

Rule 21 

Preparation of Copies 

21.1    Responsibility of the Receiving Office 

(a)   Where the international application is required to be filed in one 
copy,  the receiving Office shall be responsible for preparing the home 
copy and the  search copy required under Article 12(1). 

(b)   Where the international application is required to be filed in two 
copies,  the receiving Office shall be responsible for preparing the home 
copy. 
(c)   If the international application is filed in less than the number of 
 copies required under Rule 11.1(b), the receiving Office shall be 
responsible  for the prompt preparation of the number of copies required, 
and shall have  the right to fix a fee for performing that task and to 
collect such fee from  the applicant. 

Rule 22 

Transmittal of the Record Copy 

22.1  Procedure 

(a)   If the determination under Article 11(1) is positive, and unless 
prescriptions  concerning national security prevent the international 
application from being  treated as such, the receiving Office shall 
transmit the record copy to the  International Bureau. Such transmittal 
shall be effected promptly after receipt  of the international application 
or, if a check to preserve national security  must be performed, as soon 
as the necessary clearance has been obtained. In  any case, the receiving 
Office shall transmit the record copy in time for it  to reach the 
International Bureau by the expiration of the 13th month from  the 
priority date. If the transmittal is effected by mail, the receiving 
Office  shall mail the record copy not later than five days prior to the 
expiration  of the 13th month from the priority date. 

(b)   If the International Bureau has received a copy of the notification 
under  Rule 20.5(c) but is not, by the expiration of 13 months from the 
priority date,  in possession of the record copy, it shall remind the 
receiving Office that  it should transmit the record copy to the 
International Bureau promptly. 
(c)   If the International Bureau has received a copy of the notification 
under  Rule 20.5(c) but is not, by the expiration of 14 months from the 
priority date,  in possession of the 




record copy, it shall notify the applicant and the receiving Office 
accordingly. 
(d)   After the expiration of 14 months from the priority date, the 
applicant  may request the receiving Office to certify a copy of his 
international application  as being identical with the international 
application as filed and may transmit  such certified copy to the 
International Bureau. 

(e)   Any certification under paragraph (d) shall be free of charge and 
may  be refused only on any of the following grounds: 

(i) the copy which the receiving Office has been requested to certify is 
not  identical with the international application as filed; 

(ii) prescriptions concerning national security prevent the international 
application  from being treated as such; 

(iii) the receiving Office has already transmitted the record copy to the 
International  Bureau and that Bureau has informed the receiving Office 
that it has received  the record copy. 

(f)   Unless the International Bureau has received the record copy, or 
until  it receives the record copy, the copy certified under paragraph (e) 
and received  by the International Bureau shall be considered to be the 
record copy. 
(g)   If, by the expiration of the time limit applicable under Article 22, 
 the applicant has performed the acts referred to in that Article but the 
designated  Office has not been informed by the International Bureau of 
the receipt of  the record copy, the designated Office shall inform the 
International Bureau.  If the International Bureau is not in possession of 
the record copy, it shall  promptly notify the applicant and the receiving 
Office unless it has already  notified them under paragraph (c). 

22.2  [Deleted] 

22.3    Time Limit under Article 12(3) 

The time limit referred to in Article 12(3) shall be three months from the 
 date of the notification sent by the International Bureau to the 
applicant  under Rule 22.1(c) or (g). 

Rule 23 

Transmittal of the Search Copy 

23.1    Procedure 

(a)    The search copy shall be transmitted by the receiving Office to the 
 International Searching Authority at the latest on the same day as the 
record  copy is transmitted to the International Bureau unless no search 
fee has been  paid.  In the 

latter case, it shall be transmitted promptly after payment of the search 
fee. 
(b)   [Deleted] 

Rule 24 

Receipt of the Record Copy by the International Bureau 

24.1    [Deleted] 

24.2      Notification of Receipt of the Record Copy 

(a)   The International Bureau shall promptly notify: 

(i) the applicant, 

(ii) the receiving Office, and 

(iii) the International Searching Authority (unless it has informed the 
International  Bureau that it wishes not to be so notified), of the fact 
and the date of receipt  of the record copy. The notification shall 
identify the international application  by its number, the international 
filing date and the name of the applicant,  and shall indicate the filing 
date of any earlier application whose priority  is claimed. The 
notification sent to the applicant shall also contain a list  of the 
States designated under Rule 4.9(a) and, where applicable, of those 
States whose designations have been confirmed under Rule 4.9(c). 

(b)   Each designated Office which has informed the International Bureau 
that  it wishes to receive the notification under paragraph (a) prior to 
the communication  under Rule 47.1 shall be so notified by the 
International Bureau: 

(i) if the designation concerned was made under Rule 4.9(a), promptly 
after  the receipt of the record copy; 

(ii) if the designation concerned was made under Rule 4.9(b), promptly 
after  the International Bureau has been informed by the receiving Office 
of the confirmation  of that designation. 

(c)   If the record copy is received after the expiration of the time 
limit  fixed in Rule 22.3, the International Bureau shall promptly notify 
the applicant,  the receiving Office, and the International Searching 
Authority, accordingly. 
Rule 25 

Receipt of the Search Copy by the International 
 Searching Authority 

25.1  Notification of Receipt of the Search Copy 

The International Searching Authority shall promptly notify the 
International  Bureau, the applicant, and - unless the International 
Searching Authority is  the same as the receiving Office - the receiving 
Office, of the fact and the  date of receipt of the search copy. 

Rule 26 

Checking by, and Correcting before, the Receiving Office of Certain 
Elements  of the International Application 

26.1  Time Limit for Check 

(a)   The receiving Office shall issue the invitation to correct provided 
for  in Article 14(1)(b) as soon as possible, pref- 




erably within one month from the receipt of the international application. 
(b)   If the receiving Office issues an invitation to correct the defect 
referred  to in Article 14(1)(a)(iii) or (iv) (missing title or missing 
abstract), it  shall notify the International Searching Authority accordingly. 

26.2  Time Limit for Correction 

The time limit referred to in Article 14(1)(b) shall be reasonable under 
the  circumstances and shall be fixed in each case by the receiving 
Office. It shall  not be less than one month from the date of the 
invitation to correct. It may  be extended by the receiving Office at any 
time before a decision is taken. 
26.3    Checking of Physical Requirements under Article 
14(1)(a)(v) 
The physical requirements referred to in Rule 11 shall be checked only to 
the  extent that compliance therewith is necessary for the purpose of 
reasonably  uniform international publication. 

26.3bis       Invitation to Correct Defects under Article 14(1)(b) 
The receiving Office shall not be required to issue the invitation to 
correct  a defect under Article 14(1)(a)(v) where the physical 
requirements referred  to in Rule 11 are complied with to the extent 
necessary for the purpose of  reasonably uniform international publication. 

26.3ter       Invitation to Correct Defects under Article 3(4)(i) 
(a)   Where any element of the international application, other than those 
 referred to in Article 11(1)(iii)(d) and (e), does not comply with Rule 
12.1,  the receiving Office shall invite the applicant to file the 
required correction.  Rules 26.1(a), 26.2, 26.5 and 29.1 shall apply 
mutatis mutandis. 

(b)   If, on July 12, 1991, paragraph (a) is not compatible with the 
national  law applied by the receiving Office, paragraph (a) shall not 
apply to that  receiving Office for as long as it continues not to be 
compatible with that  law, provided that the said Office informs the 
International Bureau accordingly  by December 31, 1991. The information 
received shall be promptly published  by the International Bureau in the 
Gazette. 

26.4    Procedure 

(a)   Any correction offered to the receiving Office may be stated in a 
letter  addressed to that Office if the correction is of such a nature 
that it can  be transferred from the letter to the record copy without 
adversely affecting  the clarity and the direct reproducibility of the 
sheet on to which the correction  is to be transferred; otherwise, the 
applicant shall be required to submit  a replacement sheet embodying the 
correction and the letter accompanying the  replacement sheet shall draw 
attention to the differences between the replaced  sheet and the 
replacement sheet. 

(b)   to (d) [Deleted] 

26.5    Decision of the Receiving Office 

(a)   The receiving Office shall decide whether the applicant has 
submitted  the correction within the time limit under Rule 26.2 and, if 
the correction  has been submitted within that time limit, whether the 
international application  so corrected is or is not to be considered 
withdrawn, provided that no international  application shall be considered 
withdrawn for lack of compliance with the physical  requirements referred 
to in Rule 11 if it complies with those requirements  to the extent 
necessary for the purpose of reasonably uniform international  publication. 

(b)   [Deleted] 

26.6    Missing Drawings 

(a)   If, as provided in Article 14(2), the international application 
refers  to drawings which in fact are not included in that application, 
the receiving  Office shall so indicate in the said application. 

(b)   The date on which the applicant receives the notification provided 
for  in Article 14(2) shall have no effect on the time limit fixed under 
Rule 20.2(a)(iii). 
Rule 27 

Lack of Payment of Fees 

27.1    Fees 

(a)   For the purposes of Article 14(3)(a), "fees prescribed under Article 
 3(4)(iv)" means:  the transmittal fee (Rule 14), the basic fee part of 
the  international fee (Rule 15.1(i)), the search fee (Rule 16), and, 
where required,  the late payment fee (Rule 16bis.2). 

(b)   For the purposes of Article 14(3)(a) and (b), "the fee prescribed 
under  Article 4(2)" means the designation fee part of the international 
fee (Rule  15.1(ii)) and, where required, the late payment fee (Rule 
16bis.2). 
 Rule 28 

Defects Noted by the International Bureau 

28.1  Note on Certain Defects 

(a)   If, in the opinion of the International Bureau, the international 
application  contains any of the defects referred to in Article 
14(1)(a)(i), (ii), or (v),  the International Bureau shall bring such 
defects to the attention of the receiving  Office. 

(b)   The receiving Office shall, unless it disagrees with the said 
opinion,  proceed as provided in Article 14(1)(b) and Rule 26. 



Rule 29 

International Applications or Designations Considered Withdrawn under 
Article  14(1), (3), or (4) 

29.1    Finding by Receiving Office 

(a)   If the receiving Office declares, under Article 14(1)(b) and Rule 
26.5 
(failure to correct certain defects), or under Article 14(3)(a) (failure 
to  pay the prescribed fees under Rule 27.1(a)), or under Article 14(4) 
(later  finding of noncompliance with the requirements listed in items (i) 
to (iii)  of Article 11(1)), that the international application is 
considered withdrawn: 
(i)   the receiving Office shall transmit the record copy (unless already 
transmitted),  and any correction offered by the applicant, to the 
International Bureau; 
(ii)    the receiving Office shall promptly notify both the applicant and 
the  International Bureau of the said declaration, and the International 
Bureau  shall in turn notify each designated Office which has already been 
notified  of its designation; 

(iii)     the receiving Office shall not transmit the search copy as 
provided  in Rule 23, or, if such copy has already been transmitted, it 
shall notify  the International Searching Authority of the said declaration; 

(iv)    the International Bureau shall not be required to notify the 
applicant  of the receipt of the record copy. 

(b)   If the receiving Office declares under Article 14(3)(b) (failure to 
pay  the prescribed designation fee under Rule 27.1(b)) that the 
designation of  any given State is considered withdrawn, the receiving 
Office shall promptly  notify both the applicant and the International 
Bureau of the said declaration.  The International Bureau shall in turn 
notify each designated Office which  has already been notified of its 
designation. 

29.2  [Deleted] 

29.3    Calling Certain Facts to the Attention of the Receiving 
             Office 
If the International Bureau or the International Searching Authority 
considers  that the receiving Office should make a finding under Article 
14(4), it shall  call the relevant facts to the attention of the receiving 
Office. 
29.4    Notification of Intent to Make Declaration under 
        Article 14(4) 

Before the receiving Office issues any declaration under Article 14(4), it 
 shall notify the applicant of its intent to issue such declaration and 
the  reasons therefor. The applicant may, if he disagrees with the 
tentative finding  of the receiving Office, submit arguments to that 
effect within one month from  the notification. 

Rule 30 

Time Limit under Article 14(4) 

30.1  Time Limit 

The time limit referred to in Article 14(4) shall be four months from the 
international  filing date. 

Rule 31 

Copies Required under Article 13 

31.1  Request for Copies 

(a)   Requests under Article 13(1) may relate to all, some kinds of, or 
individual  international applications in which the national Office making 
the request  is designated. Requests for all or some kinds of such 
international applications  must be renewed for each year by means of a 
notification addressed by that  Office before November 30 of the preceding 
year to the International Bureau. 
(b)   Requests under Article 13(2)(b) shall be subject to the payment of a 
 fee covering the cost of preparing and mailing the copy. 

31.2  Preparation of Copies 

The preparation of copies required under Article 13 shall be the 
responsibility  of the International Bureau. 

Rule 32 [Deleted] 

Rule 32bis [Deleted] 

Rule 33 

Relevant Prior Art for the International Search 

33.1  Relevant Prior Art for the International Search 

(a)   For the purposes of Article 15(2), relevant prior art shall consist 
of  everything which has been made available to the public anywhere in the 
world  by means of written disclosure (including drawings and other 
illustrations)  and which is capable of being of assistance in determining 
that the claimed  invention is or is not new and that it does or does not 
involve an inventive  step (i.e., that it is or is not obvious), provided 
that the making available  to the public occurred prior to the 
international filing date. 

(b)   When any written disclosure refers to an oral disclosure, use, 
exhibition,  or other means whereby the contents of the written disclosure 
were made available  to the public, and such making available to the 
public occurred on a date prior  to the international filing date, the 
international search report shall separately  mention that fact and the 
date on which it occurred if the making available  to the public of the 
written disclosure occurred on a date which is the same  as, or later 
than, the international filing date. 



(c)   Any published application or any patent whose publication date is 
the  same as, or later than, but whose filing date, or, where applicable, 
claimed  priority date, is earlier than the international filing date of 
the international  application searched, and which would constitute 
relevant prior art for the  purposes of Article 15(2) had it been 
published prior to the international  filing date, shall be specially 
mentioned in the international search report. 
33.2    Fields to Be Covered by the International Search 

(a)   The international search shall cover all those technical fields, and 
 shall be carried out on the basis of all those search files, which may 
contain  material pertinent to the invention. 

(b)   Consequently, not only shall the art in which the invention is 
classifiable  be searched but also analogous arts regardless of where 
classified. 
(c)   The question what arts are, in any given case, to be regarded as 
analogous  shall be considered in the light of what appears to be the 
necessary essential  function or use of the invention and not only the 
specific functions expressly  indicated in the international application. 

(d)   The international search shall embrace all subject matter that is 
generally  recognized as equivalent to the subject matter of the claimed 
invention for  all or certain of its features, even though, in its 
specifics, the invention  as described in the international application is 
different. 

33.3    Orientation of the International Search 

(a)   International search shall be made on the basis of the claims, with 
due  regard to the description and the drawings (if any) and with 
particular emphasis  on the inventive concept towards which the claims are 
directed. 

(b)   In so far as possible and reasonable, the international search shall 
 cover the entire subject matter to which the claims are directed or to 
which  they might reasonably be expected to be directed after they have 
been amended. 
 Rule 34 

Minimum Documentation 

34.1      Definition 

(a)   The definitions contained in Article 2(i) and (ii) shall not apply 
for  the purposes of this Rule. 

(b)   The documentation referred to in Article 15(4) ("minimum 
documentation")  shall consist of: 

(i) the "national patent documents" as specified in paragraph (c), 
(ii)    the published international (PCT) applications, the published 
regional  applications for patents and inventors' certifi- 

cates, and the published regional patents and inventors' certificates, 
(iii) such other published items of nonpatent literature as the 
International  Searching Authorities shall agree upon and which shall be 
published in a list  by the International Bureau when agreed upon for the 
first time and whenever  changed. 

(c)   Subject to paragraphs (d) and (e), the "national patent documents" 
shall  be the following: 

(i)   the patents issued in and after 1920 by France, the former 
Reichspatentamt  of Germany, Japan, the Soviet Union, Switzerland (in 
French and German languages  only), the United Kingdom, and the United 
States of America, 

(ii)    the patents issued by the Federal Republic of Germany, 

(iii)     the patent applications, if any, published in and after 1920 in 
the  countries referred to in items (i) and (ii), 

(iv)    the inventors' certificates issued by the Soviet Union, 

(v)   the utility certificates issued by, and the published applications 
for  utility certificates of, France, 

(vi)    such patents issued by, and such patent applications published in, 
 any other country after 1920 as are in the English, French, German, or 
Spanish  language and in which no priority is claimed, provided that the 
national Office  of the interested country sorts out these documents and 
places them at the  disposal of each International Searching Authority. 

(d)   Where an application is republished once (for example, an 
Offenlegungsschrift  as an Auslegeschrift) or more than once, no 
International Searching Authority  shall be obliged to keep all versions 
in its documentation; consequently, each  such Authority shall be entitled 
not to keep more than one version. Furthermore,  where an application is 
granted and is issued in the form of a patent or a  utility certificate 
(France), no International Searching Authority shall be  obliged to keep 
both the application and the patent or utility certificate 
(France) in its documentation; consequently, each such Authority shall be 
entitled  to keep either the application only or the patent or utility 
certificate (France)  only. 

(e)   Any International Searching Authority whose official language, or 
one  of whose official languages, is not Japanese, Russian, or Spanish is 
entitled  not to include in its documentation those patent documents of 
Japan and the  Soviet Union as well as those patent documents in the 
Spanish language, respectively,  for which no abstracts in the English 
language are generally available. English  abstracts becoming generally 
available after the date of entry into force of  these Regulations shall 
require the inclusion of the patent documents to which  the abstracts 
refer no later than six months after such abstracts become generally 
available. In case of the in- 



terruption of abstracting services in English in technical fields in which 
 English abstracts were formerly generally available, the Assembly shall 
take  appropriate measures to provide for the prompt restoration of such 
services  in the said fields. 

(f)   For the purposes of this Rule, applications which have only been 
laid  open for public inspection are not considered published 
applications. 
Rule 35 

The Competent International Searching Authority 

35.1    When Only One International Searching Authority Is 
Competent 
Each receiving Office shall, in accordance with the terms of the 
applicable  agreement referred to in Article 16(3)(b), inform the 
International Bureau  which International Searching Authority is competent 
for the searching of the  international applications filed with it, and 
the International Bureau shall  promptly publish such information. 

35.2    When Several International Searching Authorities Are 
Competent 
(a)   Any receiving Office may, in accordance with the terms of the 
applicable  agreement referred to in Article 16(3)(b), specify several 
International Searching  Authorities: 

(i)   by declaring all of them competent for any international application 
 filed with it, and leaving the choice to the applicant, or 

 (ii) by declaring one or more competent for certain kinds of 
international  applications filed with it, and declaring one or more 
others competent for  other kinds of international applications filed with 
it, provided that, for  those kinds of international applications for 
which several International Searching  Authori-  ties are declared to be 
competent, the choice shall be left to the  applicant. 

(b)   Any receiving Office availing itself of the faculty provided in 
paragraph 
(a) shall promptly inform the International Bureau, and the International 
Bureau  shall promptly publish such  information. 

35.3    When the International Bureau Is Receiving Office Under 
             Rule  19.1(a)(iii) 

(a)   Where the international application is filed with the International 
Bureau  as receiving Office under Rule 19.1(a)(iii), an International 
Searching Authority  shall be competent for the searching of that 
international application if it  would have been competent had that 
international application been filed with  a receiving Office competent 
under Rule 19.1(a)(i) or (ii), (b) or (c), or  Rule 19.2(i). 

(b)   Where two or more International Searching Authorities are competent 
under  paragraph (a), the choice shall be left to the applicant. 

(c)   Rules 35.1 and 35.2 shall not apply to the International Bureau as 
receiving  Office under Rule 19.1(a)(iii). 

Rule 36 

Minimum Requirements for International Searching 
 Authorities 

36.1    Definition of Minimum Requirements 

The minimum requirements referred to in Article 16(3)(c) shall be the 
following: 
(i) the national Office or intergovernmental organization must have at 
least  100 full-time employees with sufficient technical qualifications to 
carry out  searches; 

(ii) that Office or organization must have in its possession, or have 
access  to, at least the minimum documentation referred to in Rule 34, 
properly arranged  for search purposes, on paper, in microform or stored 
on electronic media; 
(iii) that Office or organization must have a staff which is capable of 
searching  the required technical fields and which has the language 
facilities to understand  at least those languages in which the minimum 
documentation referred to in  Rule 34 is written or is translated. 

Rule 37 

Missing or Defective Title 

37.1    Lack of Title 

If the international application does not contain a title and the 
receiving  Office has notified the International Searching Authority that 
it has invited  the applicant to correct such defect, the International 
Searching Authority  shall proceed with the international search unless 
and until it receives notification  that the said application is 
considered withdrawn. 

37.2    Establishment of Title 

If the international application does not contain a title and the 
International  Searching Authority has not received a notification from 
the receiving Office  to the effect that the applicant has been invited to 
furnish a title, or if  the said Authority finds that the title does not 
comply with Rule 4.3, it shall  itself establish a title. Such title shall 
be established in the language in  which the international application is 
published or, if a translation was transmitted  under Rule 12.1(c) and the 
International Searching Authority so wishes, in  the language of that 
translation. 

Rule 38 

Missing or Defective Abstract 

38.1    Lack of Abstract 

If the international application does not contain an abstract and the 
receiving  Office has notified the International Searching Authority that 
it has invited  the applicant to correct 



such defect, the International Searching Authority shall proceed with the 
international  search unless and until it receives notification that the 
said application  is considered withdrawn. 

38.2    Establishment of Abstract 

(a)   If the international application does not contain an abstract and 
the  International Searching Authority has not received a notification 
from the  receiving Office to the effect that the applicant has been 
invited to furnish  an abstract, or if the said Authority finds that the 
abstract does not comply  with Rule 8, it shall itself establish an 
abstract. Such abstract shall be  established in the language in which the 
international application is published  or, if a translation was 
transmitted under Rule 12.1(c) and the International  Searching Authority 
so wishes, in the language of that translation. 
(b)   The applicant may, within one month from the date of mailing of the 
international  search report, submit comments on the abstract established 
by the International  Searching Authority. Where that Authority amends the 
abstract established by  it, it shall notify the amendment to the 
International Bureau. 

Rule 39 

Subject Matter Under Article 17(2)(a)(i) 

39.1      Definition 

No International Searching Authority shall be required to search an 
international  application if, and to the extent to which, its subject 
matter is any of the  following: 

(i) scientific and mathematical theories, 

(ii) plant or animal varieties or essentially biological processes for the 
 production of plants and animals, other than microbiological processes 
and  the products of such processes, 

(iii) schemes, rules, or methods of doing business, performing purely 
mental  acts or playing games, 

(iv) methods for treatment of the human or animal body by surgery or 
therapy,  as well as diagnostic methods, 

(v) mere presentations of information, 

(vi) computer programs to the extent that the International Searching 
Authority  is not equipped to search prior art concerning such programs. 

Rule 40 

Lack of Unity of Invention (International Search) 

40.1    Invitation to Pay 

The invitation to pay additional fees provided for in Article 17(3)(a) 
shall  specify the reasons for which the inter- national application is 
not considered  as complying with the 

requirement of unity of invention and shall indicate the amount to be 
paid. 
40.2  Additional Fees 

(a)   The amount of the additional fee due for searching under Article 
17(3)(a)  shall be determined by the competentInternational Searching 
Authority. 
(b)   The additional fee due for searching under Article 17(3)(a) shall be 
 payable direct to the International Searching Authority. 

(c)   Any applicant may pay the additional fee under protest, that is, 
accompanied  by a reasoned statement to the effect that the international 
application complies  with the requirement of unity of invention or that 
the amount of the required  additional fee is excessive. Such protest 
shall be examined by a three-member  board or other special instance of 
the International Searching Authority or  any competent higher authority, 
which, to the extent that it finds the protest  justified, shall order the 
total or partial reimbursement to the applicant  of the additional fee. On 
the request of the applicant, the text of both the  protest and the 
decision thereon shall be notified to the designated Offices  together 
with the international search report. The applicant shall submit any 
translation thereof with the furnishing of the translation of the 
international  application required under Article 22. 

(d)   The three-member board, special instance or competent higher 
authority,  referred to in paragraph (c), shall not comprise any person 
who made the decision  which is the subject of the protest. 

(e)   Where the applicant has, under paragraph (c), paid an additional fee 
 under protest, the International Searching Authority may, after a prior 
review  of the justification for the invitation to pay an additional fee, 
require that  the applicant pay a fee for the examination of the protest 
("protest fee").  The protest fee shall be paid within one month from the 
date of the notification  to the applicant of the result of the review. If 
the protest fee is not so  paid, the protest shall be considered 
withdrawn. The protest fee shall be refunded  to the applicant where the 
three-member board, special instance or higher authority  referred to in 
paragraph (c) finds that the protest was entirely justified. 
40.3    Time  Limit 

The time limit provided for in Article 17(3)(a) shall be fixed, in each 
case,  according to the circumstances of the case, by the International 
Searching  Authority; it shall not be shorter than 15 or 30 days, 
respectively, depending  on whether the applicant's address is in the same 
country as or in a different  country from that in which the International 
Searching Authority is located,  and it shall not be longer than 45 days, 
from the date of the invitation. 


Rule 41 

Earlier Search Other Than International Search 

41.1    Obligation to Use Results; Refund of Fee 

If reference has been made in the request, in the form provided for in 
Rule  4.11, to an international-type search carried out under the 
conditions set  out in Article 15(5) or to a search other than an 
international or international-type  search, the International Searching 
Authority shall, to the extent possible,  use the results of the said 
search in establishing the international search  report on the 
international application. The International Searching Authority  shall 
refund the search fee, to the extent and under the conditions provided 
for in the agreement under Article 16(3)(b) or in a communication 
addressed  to and published in the Gazette by the International Bureau, if 
the international  search report could wholly or partly be based on the 
results of the said search. 
Rule 42 

Time Limit for International Search 

42.1    Time Limit for International Search 

The time limit for establishing the international search report or the 
declaration  referred to in Article 17(2)(a) shall be three months from 
the receipt of the  search copy by the International Searching Authority, 
or nine months from the  priority date, whichever time limit expires later. 

Rule 43 

The International Search Report 

43.1    Identifications 

The international search report shall identify the International Searching 
 Authority which established it by indicating the name of such Authority, 
and  the international application by indicating the international 
application number,  the name of the applicant, and the international 
filing date. 

43.2    Dates 

The international search report shall be dated and shall indicate the date 
 on which the international search was actually completed. It shall also 
indicate  the filing date of any earlier application whose priority is 
claimed or, if  the priority of more than one earlier application is 
claimed, the filing date  of the earliest among them. 

43.3    Classification 

(a)   The international search report shall contain the classification of 
the  subject matter at least according to the International Patent 
Classification. 
(b)   Such classification shall be effected by the International Searching 
 Authority. 

43.4    Language 

Every international search report and any declaration made under Article 
17(2)(a)  shall be in the language in which the international application 
to which it  relates is published or, if a translation was transmitted 
under Rule 12.1(c)  and the  International Searching Authority so wishes,, 
in the language of that  translation. 

43.5    Citations 

 (a)    The international search report shall contain the citations of the 
 documents considered to be relevant. 

(b)   The method of identifying any cited document shall be regulated by 
the  Administrative Instructions. 

(c)   Citations of particular relevance shall be specially indicated. 
(d)   Citations which are not relevant to all the claims shall be cited in 
 relation to the claim or claims to which they are relevant. 

(e)   If only certain passages of the cited document are relevant or 
particularly  relevant, they shall be identified, for example, by 
indicating the page, the  column, or the lines, where the passage appears. 
 If the entire document is  relevant but some passages are of particular 
relevance, such passages shall  be identified unless such identification 
is not practicable. 

43.6    Fields Searched 

(a)   The international search report shall list the classification 
identification  of the fields searched. If that identification is effected 
on the basis of  a classification other than the International Patent 
Classification, the International  Searching Authority shall publish the 
classification used. 

(b)   If the international search extended to patents, inventors' 
certificates,  utility certificates, utility models, patents or 
certificates of addition,  inventors' certificates of addition, utility 
certificates of addition, or published  applications for any of those 
kinds of protection, of States, periods, or languages,  not included in 
the minimum documentation as defined in Rule 34, the international  search 
report shall, when practicable, identify the kinds of documents, the 
States, the periods, and the languages to which it extended. For the 
purposes  of this paragraph, Article 2(ii) shall not apply. 

(c)   If the international search was based on, or was extended to, any 
electronic  data base, the international search report may indicate the 
name of the data  base and, where considered useful to others and 
practicable, the search terms  used. 

43.7    Remarks Concerning Unity of Invention 

If the applicant paid additional fees for the international search, the 
international  search report shall so indicate. Fur- 



thermore, where the international search was made on the main invention 
only  or on less than all the inventions (Article 17(3)(a)), the 
international search  report shall indicate what parts of the 
international application were and  what parts were not searched. 

43.8  Authorized Officer 

The international search report shall indicate the name of the officer of 
the  International Searching Authority responsible for that report. 

43.9  Additional Matter 

 The international search report shall contain no matter other than that 
specified  in Rules 33.1(b) and (c), 43.1 to 43.3, 43.5 to 43.8, and 
44.2(a), and the  indication referred to in Article 17(2)(b), provided 
that the Administrative  Instructions may permit the inclusion in the 
international search report of  any additional matter specified in the 
Administrative Instructions.  The international  search report shall not 
contain, and the Administrative Instructions shall  not permit the 
inclusion of, any expressions of opinion, reasoning, arguments,  or 
explanations. 

43.10  Form 

The physical requirements as to the form of the international search 
report  shall be prescribed by the Administrative Instructions. 

Rule 44 

Transmittal of the International Search Report, etc. 

44.1  Copies of Report or Declaration 

The International Searching Authority shall, on the same day, transmit one 
 copy of the international search report or the declaration referred to in 
Article  17(2)(a) to the International Bureau and one copy to the 
applicant. 
44.2  Title or Abstract 

(a)   The international search report shall either state that the 
International  Searching Authority approves the title and the abstract as 
submitted by the  applicant or be accompanied by the text of the title 
and/or abstract as established  by the International Searching Authority 
under Rules 37 and 38. 

(b) and (c) [Deleted] 

44.3  Copies of Cited Documents 

(a)   The request referred to in Article 20(3) may be presented any time 
during  seven years from the international filing date of the 
international application  to which the international search report relates. 

(b)   The International Searching Authority may require that the party 
(applicant  or designated Office) presenting the request pay to it the 
cost of preparing  and mailing the copies. The level of the cost of 
preparing copies shall be  provided for in the agreements referred to in 
Article 16(3)(b) between the 
International Searching Authorities and the International Bureau. 
(c)   [Deleted] 

(d)   Any International Searching Authority may perform the obligations 
referred  to in paragraphs (a) and (b) through another agency responsible 
to it. 
Rule 45 

Translation of the International Search Report 

45.1  Languages 

International search reports and declarations referred to in Article 
17(2)(a)  shall, when not in English, be translated into English. 

Rule 46 

Amendment of Claims Before the International Bureau 

46.1  Time Limit 

The time limit referred to in Article 19 shall be two months from the date 
 of transmittal of the international search report to the International 
Bureau  and to the applicant by the International Searching Authority or 
16 months  from the priority date, whichever time limit expires later, 
provided that any  amendment made under Article 19 which is received by 
the International Bureau  after the expiration of the applicable time 
limit shall be considered to have  been received by that Bureau on the 
last day of that time limit if it reaches  it before the technical 
preparations for international publication have been  completed. 

46.2  Where to File 

Amendments made under Article 19 shall be filed directly with the 
International  Bureau. 

46.3  Language of Amendments 

If the international application has been filed in a language other than 
the  language in which it is published, any amendment made under Article 
19 shall  be in the language of publication. 

46.4  Statement 

(a)   The statement referred to in Article 19(1) shall be in the language 
in  which the international application is published and shall not exceed 
500 words  if in the English language or if translated into that language. 
The statement  shall be identified as such by a heading, preferably by 
using the words "Statement  under Article 19(1)" or their equivalent in 
the language of the statement. 
(b)   The statement shall contain no disparaging comments on the 
international  search report or the relevance of 




of citations contained in that report. Reference to citations, relevant to 
 a given claim, contained in the international search report may be made 
only  in connection with an amendment of that claim. 

46.5  Form of Amendments 

(a)   The applicant shall be required to submit a replacement sheet for 
every  sheet of the claims which, on account of an amendment or amendments 
under Article  19, differs from the sheet originally filed. The letter 
accompanying the replacement  sheets shall draw attention to the 
differences between the replaced sheets  and the replacement sheets. To 
the extent that any amendment results in the  cancellation of an entire 
sheet, that amendment shall be communicated in a  letter. 

(b)   and (c) [Deleted] 

Rule 47 

Communication to Designated Offices 

47.1  Procedure 

(a)   The communication provided for in Article 20 shall be effected by 
the  International Bureau. 

(abis) The International Bureau shall notify each designated Office, at 
the  time of the communication provided for in Article 20, of the fact and 
date  of receipt of the record copy and of the fact and date of receipt of 
any priority  document.  Such notification shall also be sent to any 
designated Office which  has waived the communication provided for in 
Article 20, unless such Office  has also waived the notification of its 
designation. 

(b)   Such communication shall be effected promptly after the 
international  publication of the international application and, in any 
event, by the end  of the 19th month after the priority date. Any 
amendment received by the International  Bureau within the time limit 
under Rule 46.1 which was not included in the  communication shall be 
communicated promptly to the designated Offices by the  International 
Bureau, and the latter shall notify the applicant accordingly. 
(c)   The International Bureau shall send a notice to the applicant 
indicating  the designated Offices to which the 

communication has been effected and the date of such communication. Such 
notice  shall be sent on the same day as the communication. Each 
designated Office  shall be informed, separately from the communication, 
about the sending and  the date of mailing of the notice. The notice shall 
be accepted by all designated  Offices as conclusive evidence that the 
communication has duly taken place  on the date specified in the notice. 

(d)   Each designated Office shall, when it so requires, receive the 
international  search reports and the declarations referred to in Article 
17(2)(a) also in  the translation referred to in Rule 45.1. 

(e)   Where any designated Office has waived the requirement provided 
under  Article 20, the copies of the documents which otherwise would have 
been sent  to that Office shall, at the request of that Office or the 
applicant, be sent  to the applicant at the time of the notice referred to 
in paragraph (c). 
47.2  Copies 

(a)   The copies required for communication shall be prepared by the 
International  Bureau. 

(b)   They shall be on sheets of A4 size. 

(c)   Except to the extent that any designated Office notifies the 
International  Bureau otherwise, copies of the pamphlet under Rule 48 may 
be used for the  purposes of the communication of the international 
application under Article  20. 

47.3  Languages 

The international application communicated under Article 20 shall be in 
the  language in which it is published provided that if that language is 
different  from the language in which it was filed it shall, on the 
request of the designated  Office, be communicated in either or both of 
these languages. 

47.4  Express Request under Article 23(2) 

Where the applicant makes an express request to a designated Office under 
Article  23(2) before the communication provided for in Article 20 has 
taken place,  the International Bureau shall, upon request of the 
applicant or the designated  Office, promptly effect that communication to 
that Office. 

Rule 48 

International Publication 

48.1  Form 

(a) The international application shall be published in the form of a 
pamphlet. 
(b) The particulars regarding the form of the pamphlet and the method of 
reproduction  shall be governed by the Administrative Instructions. 

48.2  Contents 

(a)   The pamphlet shall contain: 

(i) a standardized front page, 

(ii) the description, 

(iii) the claims, 

(iv) the drawings, if any, 

(v) subject to paragraph (g), the international search report or the 
declaration  under Article 17(2)(a); the publication of the international 
search report  in the pamphlet shall, however, not be required to include 
the part of the  international 



search report which contains only matter referred to in Rule 43 already 
appearing  on the front page of the pamphlet, 

(vi) any statement filed under Article 19(1), unless the International 
Bureau  finds that the statement does not comply with the provisions of 
Rule 46.4, 
(vii) any request for rectification referred to in the third sentence of 
Rule  91.1(f), 

(viii) any indications in relation to a deposited microorganism furnished 
under  Rule 13bis separately from the description, together with an 
indication of  the date on which the International Bureau received such 
indications. 
(b)   Subject to paragraph (c), the front page shall include: 

(i) data taken from the request sheet and such other data as are 
prescribed  by the Administrative Instructions, 

(ii) a figure or figures where the international application contains 
drawings,  unless Rule 8.2(b) applies, 

(iii) the abstract; if the abstract is both in English and in another 
language,  the English text shall appear first. 

(c)   Where a declaration under Article 17(2)(a) has issued, the front 
page  shall conspicuously refer to that fact and need include neither a 
drawing nor  an abstract. 

(d)   The figure or figures referred to in paragraph (b)(ii) shall be 
selected  as provided in Rule 8.2. Reproduction of such figure or figures 
on the front  page may be in a reduced form. 

(e)   If there is not enough room on the front page for the totality of 
the  abstract referred to in paragraph (b)(iii), the said abstract shall 
appear  on the back of the front page. The same shall apply to the 
translation of the  abstract when such translation is required to be 
published under Rule 48.3(c). 
(f)   If the claims have been amended under Article 19, the publication 
shall  contain either the full text of the claims both as filed and as 
amended or  the full text of the claims as filed and specify the 
amendments. Any statement  referred to in Article 19(1) shall be included 
as well, unless the International  Bureau finds that the statement does 
not comply with the provisions of Rule  46.4. The date of receipt of the 
amended claims by the International Bureau  shall be indicated. 

(g)   If, at the time of the completion of the technical preparations for 
international  publication, the international search report is not yet 
available (for example,  because of publication on the request of the 
applicant as provided in Articles  21(2)(b) and 64(3)(c)(i)), the pamphlet 
shall contain, in place of the international  search report, an indication 
to the effect that that report was not available  and that either the 
pamphlet (then also including the international search 
report) will be republished or the international search report (when it 
becomes  available) will be separately published. 

(h)   If, at the time of the completion of the technical preparations for 
international  publication, the time limit for amending the claims under 
Article 19 has not  expired, the pamphlet shall refer to that fact and 
indicate that, should the  claims be amended under Article 19, then, 
promptly after such amendments, either  the pamphlet (containing the 
claims as amended) will be republished or astatement  reflecting all the 
amendments will be published. In the latter case, at least  the front page 
and the claims shall be republished and, if a statement under  Article 
19(1) has been filed, that statement shall be published as well, unless 
the International Bureau finds that the statement does not comply with the 
 provisions of Rule 46.4. 

(i)   The Administrative Instructions shall determine the cases in which 
the  various alternatives referred to in paragraphs (g) and (h) shall 
apply. Such  determination shall depend on the volume and complexity of 
the amendments and/or  the volume of the international application and the 
cost factors. 

48.3  Languages 

(a)   If the international application is filed in Chinese,  English, 
French,  German, Japanese, Russian, or Spanish, that application shall be 
published  in the language in which it was filed. 

(b)   If the international application is filed in a language other than 
Chinese,  English, French, German, Japanese, Russian, or Spanish, that 
application shall  be published in English translation. The translation 
shall be prepared under  the responsibility of the International Searching 
Authority, which shall be  obliged to have it ready in time to permit 
international publication by the  prescribed date, or, where Article 
64(3)(b) applies, to permit the communication  under Article 20 by the end 
of the 19th month after the priority date. Notwithstanding  Rule 16.1(a), 
the International Searching Authority may charge a fee for the 
translation to the applicant. The International Searching Authority shall 
give  the applicant an opportunity to comment on the draft translation. 
The International  Searching Authority shall fix a time limit reasonable 
under the circumstances  of the case for such comments. If there is no 
time to take the comments of  the applicant into account before the 
translation is communicated or if there  is a difference of opinion 
between the applicant and the said Authority as  to the correct 
translation, the applicant may send a copy of his comments,  or what 
remains of them, to the 



International Bureau and each designated Office to which the translation 
was  communicated. The International Bureau shall publish the essence of 
the comments  together with the translation of the International Searching 
Authority or subsequently  to the publication of such translation. 

(c)   If the international application is published in a language other 
than  English, the international search report to the extent that it is 
published  under Rule 48.2(a)(v), or the declaration referred to in 
Article 17(2)(a),  the title of the invention, the abstract and any text 
matter pertaining to  the figure or figures accompanying the abstract 
shall be published both in  that language and in English. The translations 
shall be prepared under the  responsibility of the International Bureau. 

48.4      Earlier Publication on the Applicant's Request 

(a)   Where the applicant asks for publication under Articles 21(2)(b) and 
 64(3)(c)(i) and the international search report, or the declaration 
referred  to in Article 17(2)(a), is not yet available for publication 
together with  the international application, the International Bureau 
shall collect a special  publication fee whose amount shall be fixed in 
the Administrative Instructions. 
(b)   Publication under Articles 21(2)(b) and 64(3)(c)(i) shall be 
effected  by the International Bureau promptly after the applicant has 
asked for it and,  where a special fee is due under paragraph (a), after 
receipt of such fee. 
48.5  Notification of National Publication 

Where the publication of the international application by the 
International  Bureau is governed by Article 64(3)(c)(ii), the national 
Office concerned shall,  promptly after effecting the national publication 
referred to in the said provision,  notify the International Bureau of the 
fact of such national publication. 
48.6  Announcing of Certain Facts 

(a)   If any notification under Rule 29.1(a)(ii) reaches the International 
 Bureau at a time later than that at which it was able to prevent the 
international  publication of the in- international application, the 
International Bureau  shall promptly publish a notice in the Gazette 
reproducing the essence of such  notification. 

(b)   [Deleted] 

(c)   If the international application, the designation of any designated 
State  or the priority claim is withdrawn under Rule 90bis after the 
technical preparations  for international publication have been completed, 
notice of the withdrawal  shall be published in the Gazette. 

Rule 49 

Copy, Translation and Fee under Article 22 

49.1  Notification 

(a)   Any Contracting State requiring the furnishing of a translation or 
the  payment of a national fee, or both, under Article 22, shall notify 
the International  Bureau of: 

(i) the languages from which and the language into which it requires 
translation, 
(ii) the amount of the national fee. 

(abis) Any Contracting State not requiring the furnishing, under Article 
22,  by the applicant of a copy of the international application (even 
though the  communication of the copy of the international application by 
the International  Bureau under Rule 47 has not taken place by the 
expiration of the time limit  applicable under Article 22) shall notify 
the International Bureau accordingly. 
(ater) Any Contracting State which, pursuant to Article 24(2), maintains, 
if  it is a designated State, the effect provided for in Article 11(3) 
even though  a copy of the international application is not furnished by 
the applicant by  the expiration of the time limit applicable under 
Article 22 shall notify the  International Bureau accordingly. 

(b)   Any notification received by the International Bureau under 
paragraphs 
(a), (abis) or (ater) shall be promptly published by the International 
Bureau  in the Gazette. 

(c)   If the requirements under paragraph (a) change later, such changes 
shall  be notified by the Contracting State to the International Bureau 
and that Bureau  shall promptly publish the notification in the Gazette. 
If the change means  that translation is required into a language which, 
before the change, was  not required, such change shall be effective only 
with respect to international  applications filed later than two months 
after the publication of the notification  in the Gazette. Otherwise, the 
effective date of any change shall be determined  by the Contracting State. 

49.2  Languages 

The language into which translation may be required must be an official 
language  of the designated Office. If there are several of such 
languages, no translation  may be required if the international 
application is in one of them. If there  are several official languages 
and a translation must be furnished, the applicant  may choose any of 
those languages. Notwithstanding the foregoing provisions  of this 
paragraph, if there are several official languages but the national  law 
prescribes the use of one such language for foreigners, a translation into 
 that language may be required. 

49.3    Statements under Article 19; Indications under Rule 13bis.4 
For the purposes of Article 22 and the present Rule, any statement made 
under  Article 19(1) and any indication fur- 



nished under Rule 13bis.4 shall, subject to Rule 49.5(c) and (h), be 
considered  part of the international application. 

49.4  Use of National Form 

No applicant shall be required to use a national form when performing the 
acts  referred to in Article 22. 

49.5    Contents of and Physical Requirements for the Translation 
(a) For the purposes of Article 22, the translation of the international 
application  shall contain the description, the claims, any text matter of 
the drawings,  and the abstract. If required by the designated Office, the 
translation shall  also, subject to paragraphs (b), (cbis) and (e), 

(i) contain the request, 

(ii) if the claims have been amended under Article 19, contain both the 
claims  as filed and the claims as amended, and 

(iii) be accompanied by a copy of the drawings. 

(b)   Any designated Office requiring the furnishing of a translation of 
the  request shall furnish copies of the request form in the language of 
the translation  free of charge to the applicants. The form and contents 
of the request form  in the language of the translation shall not be 
different from those of the  request under Rules 3 and 4; in particular, 
the request form in the language  of the translation shall not ask for any 
information that is not in the request  as filed. The use of the request 
form in the language of the translation shall  be optional. 

(c)   Where the applicant did not furnish a translation of any statement 
made  under Article 19(1), the designated Office may disregard such 
statement. 
(cbis) Where the applicant furnishes, to a designated Office which 
requires  under paragraph (a)(ii) a translation of both the claims as 
filed and the claims  as amended, only one of the required two 
translations, the designated Office  may disregard the claims of which a 
translation has not been furnished or invite  the applicant to furnish the 
missing translation within a time limit which  shall be reasonable under 
the circumstances and shall be fixed in the invitation. 
 Where the designated Office chooses to invite the applicant to furnish 
the  missing translation and the latter is not furnished within the time 
limit fixed  in the invitation, the designated Office may disregard those 
claims of which  a translation has not been furnished or consider the 
international application  withdrawn. 

(d)   If any drawing contains text matter, the translation of that text 
matter  shall be furnished either in the form of a copy of the original 
drawing with  the translation pasted on the original text matter or in the 
form of a drawing  executed anew. 

(e)   Any designated Office requiring under paragraph (a) the furnishing 
of  a copy of the drawings shall, where the applicant failed to furnish 
such copy  within the time limit applicable under Article 22, invite the 
applicant to  furnish such copy within a time limit which shall be 
reasonable under the circumstances  and shall be fixed in the invitation. 

(f)   The expression "Fig." does not require translation into any 
language. 
(g)   Where any copy of the drawings or any drawing executed anew which 
has  been furnished under paragraph (d) or (e) does not comply with the 
physical  require-referred to in Rule 11, the designated Office may invite 
the applicant  to correct the defect within a time limit which shall be 
reasonable under the  circumstances and shall be fixed in the invitation. 

(h)   Where the applicant did not furnish a translation of the abstract or 
 of any indication furnished under Rule 13bis.4, the designated Office 
shall  invite the applicant to furnish such translation, if it deems it to 
be necessary,  within a time limit which shall be reasonable under the 
circumstances and shall  be fixed in the invitation. 

(i)   Information on any requirement and practice of designated Offices 
under  the second sentence of paragraph (a) shall be published by the 
International  Bureau in the Gazette. 

(j)   No designated Office shall require that the translation of the 
international  application comply with physical requirements other than 
those prescribed for  the international application as filed. 

(k)   Where a title has been established by the International Searching 
Authority  pursuant to Rule 37.2, the translation shall contain the title 
as established  by that Authority. 

(l)   If, on July 12, 1991, paragraph (cbis) or paragraph (k) is not 
compatible  with the national law applied by the designated Office, the 
paragraph concerned  shall not apply to that designated Office for as long 
as it continues not to  be compatible with that law, provided that the 
said Office informs the International  Bureau accordingly by December 31, 
1991.  The information received shall be  promptly published by the 
International Bureau in the Gazette. 

Rule 50 

Faculty under Article 22(3) 

50.1  Exercise of Faculty 

(a)   Any Contracting State allowing a time limit expiring later than the 
time  limits provided for in Article 22(1) or (2) shall notify the 
International 

Bureau of the time limits so fixed. 



(b)   Any notification received by the International Bureau under 
paragraph 
(a) shall be promptly published by the International Bureau in the 
Gazette. 
(c)   Notifications concerning the shortening of the previously fixed time 
 limit shall be effective in relation to international applications filed 
after  the expiration of three months computed from the date on which the 
notification  was published by the International Bureau. 

(d)   Notifications concerning the lengthening of the previously fixed 
time  limit shall become effective upon publication by the International 
Bureau in  the Gazette in respect of international applications pending at 
the time or  filed after the date of such publication, or, if the 
Contracting State effecting  the notification fixes some later date, as 
from the latter date. 

Rule 51 

Review by Designated Offices 

51.1 Time Limit for Presenting the Request to Send Copies 

The time limit referred to in Article 25(1)(c) shall be two months 
computed  from the date of the notification sent to the applicant under 
Rules 20.7(i),  24.2(c), 29.1(a)(ii), or 29.1(b). 

51.2  Copy of the Notice 

Where the applicant, after having received a negative determination under 
Article  11(1), requests the International Bureau, under Article 25(1), to 
send copies  of the file of the purported international application to any 
of the named  Offices he has attempted to designate, he shall attach to 
his request a copy  of the notice referred to in Rule 20.7(i). 

51.3    Time Limit for Paying National Fee and Furnishing 
Translation 
The time limit referred to in Article 25(2)(a) shall expire at the same 
time  as the time limit prescribed in Rule 51.1. 

Rule 51bis 

Certain National Requirements Allowed Under 
Article 27(1), (2), (6) and (7) 

51bis.1  Certain National Requirements Allowed 

(a) The documents referred to in Article 27(2)(ii), or the evidence 
referred  to in Article 27(6), which the applicant may be required to 
furnish under the  national law applicable by the designated Office 
include, in particular: 
(i) any document relating to the identity of the inventor, 

(ii) any document relating to any transfer or assignment of the right to 
the  application, 

(iii) any document containing an oath or declaration by the inventor 
alleging  his inventorship, 

(iv) any document containing a declaration by the applicant designating 
the  inventor or alleging the right to the application, 

(v) any document containing any proof of the right of the applicant to 
claim  priority where he is different from the appli- 

cant having filed the earlier application the priority of which is 
claimed, 
(vi) any evidence concerning non-prejudicial disclosures or exceptions to 
lack  of novelty, such as disclosures resulting from abuse, disclosures at 
certain  exhibitions, and disclosures by the applicant during a certain 
period of time. 
(b)   The national law applicable by the designated Office may, in 
accordance  with Article 27(7), require that 

(i) the applicant be represented by an agent having the right to represent 
 applicants before that Office and/or have an address in the designated 
State  for the purpose of receiving notifications, 

(ii) the agent, if any, representing the applicant be duly appointed by 
the  applicant. 

(c)   The national law applicable by the designated Office may, in 
accordance  with Article 27(1), require that the international 
application, the translation  thereof or any document relating thereto be 
furnished in more than one copy. 
(d)   The national law applicable by the designated Office may, in 
accordance  with Article 27(2)(ii), require that the translation of the 
international application  furnished by the applicant under Article 22 be 
verified by the applicant or  the person having translated the 
international application in a statement to  the effect that, to the best 
of his knowledge, the translation is complete  and faithful. 

51bis.2  Opportunity to Comply with National Requirements 

(a)   Where any of the requirements referred to in Rule 51bis.1, or any 
other  requirement of the national  law applicable by the designated 
Office which  that Office may apply under Article 27(1), (2), (6), or (7), 
is not already  fulfilled during the same period within which the 
requirements under Article  22 must be complied with, the applicant shall 
have an opportunity to comply  with the requirement after the expiration 
of that period. 

(b)   The national law applicable by the designated Office may, in 
accordance  with Article 27(2)(ii), require that the applicant, upon 
invitation by the  designated Office, furnish a certification of the 
translation of the international  application by a public authority or a 
sworn translator, if the designated  Office deems such certification to be 
necessary under the circumstances, within  a time limit which shall be 
reasonable under the circumstances and shall be  fixed in the invitation. 

(c)   [Deleted] 



Rule 52 

Amendment of the Claims, the Description, and the 
Drawings, Before Designated Offices 

52.1  Time Limit 

(a) In any designated State in which processing or examination starts 
without  special request, the applicant shall, if he so wishes, exercise 
the right under  Article 28 within one month from the fulfillment of the 
requirements under  Article 22, provided that, if the communication under 
Rule 47.1 has not been  effected by the expiration of the time limit 
applicable under Article 22, he  shall exercise the said right not later 
than four months after such expiration  date. In either case, the 
applicant may exercise the said right at any other  time if so permitted 
by the national law of the said State. 

(b)   In any designated State in which the national law provides that 
examination  starts only on special request, the time limit within or the 
time at which  the applicant may exercise the right under Article 28 shall 
be the same as  that provided by the national law for the filing of 
amendments in the case  of the examination, on special request, of 
national applications, provided  that such time limit shall not expire 
prior to, or such time shall not come  before, the expiration of the time 
limit applicable under paragraph (a). 
PART  C 

Rules Concerning Chapter II of the Treaty 

Rule 53 

The Demand 

53.1    Form 

(a)   The demand shall be made on a printed form or be presented as a 
computer  printout. The particulars of the printed form and of a demand 
presented as  a computer printout shall be prescribed by the 
Administrative Instructions. 
(b)   Copies of printed demand forms shall be furnished free of charge by 
the  receiving Office or by the International Preliminary Examining 
Authority. 
(c)   [Deleted] 

53.2    Contents 

(a)   The demand shall contain: 

(i)   a petition, 

(ii)    indications concerning the applicant and the agent if there is an 
agent, 
(iii)     indications concerning the international application to which it 
 relates, 

(iv)    election of States, 

(v)   where applicable, a statement concerning amendments. 

(b)   The demand shall be signed. 

53.3    The  Petition 

The petition shall be to the following effect and shall preferably be 
worded  as follows: Demand under Article 31 of the Patent Cooperation 
Treaty: The undersigned 
 requests that the international application specified below be the 
subject  of 

international preliminary examination according to the Patent Cooperation 
Treaty. 
53.4    The Applicant 

As to the indications concerning the applicant, Rules 4.4 and 4.16 shall 
apply,  and Rule 4.5 shall apply mutatis mutandis. Only applicants for the 
elected  States are required to be indicated in the demand. 

53.5    Agent or Common Representative 

If an agent or common representative is designated, the demand shall so 
indicate. 
 Rules 4.4 and 4.16 shall apply, and Rule 4.7 shall apply mutatis 
mutandis. 
53.6      Identification of the International Application 

The international application shall be identified by the name and address 
of  the applicant, the title of the invention, the international filing 
date (if  known to the applicant) and the international application number 
or, where  such number is not known to the applicant, the name of the 
receiving Office  with which the international application was filed. 

53.7    Election of States 

(a)   The demand shall indicate at least one Contracting State, from among 
 those States which are designated and are bound by Chapter II of the 
Treaty 
("eligible States"), as an elected State. 

(b)   Election of Contracting States in the demand shall be made: 
(i)   by an indication that all eligible States are elected, or, 

(ii) in the case of States which have been designated for the purpose of 
obtaining  national patents, by an indication of those eligible States 
that are elected,  and, in the case of States which have been designated 
for the purpose of obtaining  a regional patent, by an indication of the 
regional patent concerned together  with either an indication that all 
eligible States party to the regional patent  treaty concerned are elected 
or an indication of those among the said States  that are elected. 

53.8    Signature 

(a)   Subject to paragraph (b), the demand shall be signed by the 
applicant  or, if there is more than one applicant, by all applicants 
making the demand. 


(b)   Where two or more applicants file a demand which elects a State 
whose  national law requires that national applications be filed by the 
inventor and  where an applicant for that elected State who is an inventor 
refused to sign  the demand or could not be found or reached after 
diligent effort, the demand  need not be signed by that applicant ("the 
applicant concerned") if it is signed  by at least one applicant and 

(i) a statement is furnished explaining, to the satisfaction of the 
International  Preliminary Examining Authority, the lack of signature of 
the applicant concerned,  or 

(ii) the applicant concerned did not sign the request but the requirements 
 of Rule 4.15(b) were complied with. 

53.9    Statement Concerning Amendments 

(a)   If amendments under Article 19 have been made, the statement 
concerning  amendments shall indicate whether, for the purposes of the 
international preliminary  examination, the applicant wishes those amendments 

(i) to be taken into account, in which case a copy of the amendments shall 
 preferably be submitted with the demand, or 

(ii) to be considered as reversed by an amendment under Article 34. 
(b)   If no amendments under Article 19 have been made and the time limit 
for  filing such amendments has not expired, the statement may indicate 
that the  applicant wishes the start of the international preliminary 
examination to  be postponed in accordance with Rule 69.1(d). 

(c)   If any amendments under Article 34 are submitted with the demand, 
the  statement shall so indicate. 

Rule 54 

The Applicant Entitled to Make a Demand 

54.1    Residence and Nationality 

(a)   Subject to the provisions of paragraph (b), the residence or 
nationality  of the applicant shall, for the purposes of Article 31(2), be 
determined according  to Rule 18.1(a) and (b). 

(b)   The  International Preliminary Examining Authority shall, in the 
circumstances  specified in the  Administrative Instructions, request the 
receiving Office  or, where the international application was filed with 
the International Bureau  as receiving Office, the national Office of, or 
acting for, the Contracting  State concerned to decide the question 
whether the applicant is a resident  or national of  the Contracting State 
of which he claims to be a resident or  national. The International 
Preliminary Examining Authority shall inform the  applicant of any such 
request. The applicant shall have an opportunity to submit  arguments 
directly to the Office concerned. The Office concerned shall decide  the 
said question promptly. 

54.2    Two or More Applicants 

If there are two or more applicants, the right to make a demand under 
Article  31(2) shall exist if at least one of the applicants making the 
demand is 
(i) a resident or national of a Contracting State bound by Chapter II and 
the  international application has been filed with a receiving Office of 
or acting  for a Contracting State bound by Chapter II, or 

(ii) a person entitled to make a demand under Article 31(2)(b) and the 
international  application has been filed as provided in the decision of 
the Assembly. 
54.3    International Applications Filed with the International 
             Bureau  as Receiving Office 

        Where the international application is filed with the 
International  Bureau as receiving Office under Rule 19.1(a)(iii), the 
International Bureau  shall, for the purposes of Article 31(2)(a), be 
considered to be acting for  the Contracting State of which the applicant 
is a resident or national. 
54.4     Applicant Not Entitled to Make a Demand 

(a)   If the applicant does not have the right to make a demand or, in the 
 case of two or more applicants, if none of them has the right to make a 
demand  under Rule 54.2, the demand shall be considered not to have been 
submitted. 
(b)   [Deleted] 

Rule 55 

Languages (International Preliminary Examination) 

55.1    Language of Demand 

The demand shall be in the language of the international application or, 
if  the international application has been filed in a language other than 
the language  in which it is published, in the language of publication. 
However, if a translation  of the international application is required 
under Rule 55.2, the demand shall  be in the language of that translation. 

55.2    Translation of International Application 

(a)   Where the international application is neither filed nor published 
in  the language, or one of the languages, specified in the agreement 
concluded  between the International Bureau and the International 
Preliminary Examination  Authority competent for the international 
preliminary examination of that application,  that Authority may require 
that, subject to paragraph (b), the applicant furnish  with the demand a 
translation of the international application into the language,  or one of 
the languages, specified in the said agreement. 



(b)   Where a translation of the international application into a language 
 referred to in paragraph (a) was transmitted to the International 
Searching  Authority under Rule 12.1(c) and the International Preliminary 
Examining Authority  is part of the same national Office or 
intergovernmental organization as the  International Searching Authority, 
the applicant need not furnish a translation  under paragraph (a). In such 
a case, unless the applicant furnishes a translation  under paragraph (a), 
the international preliminary examination shall be carried  out on the 
basis of the translation transmitted under Rule 12.1(c). 
(c)   If the requirement of paragraph (a) is not complied with and 
paragraph 
(b) does not apply, the International Preliminary Examining Authority 
shall  invite the applicant to furnish the required translation within a 
time limit  which shall be reasonable under the circumstances. That time 
limit shall not  be less than one month from the date of the invitation. 
It may be extended  by the International Preliminary Examining Authority 
at any time before a decision  is taken. 

(d)   If the applicant complies with the invitation within the time limit 
under  paragraph (c), the said requirement shall be considered to have 
been complied  with. If the applicant fails to do so, the demand shall be 
considered not to  have been submitted. 

(e)   Paragraphs (a) to (d) shall apply only where the International 
Preliminary  Examining Authority has declared, in a notification addressed 
to the International  Bureau, that it accepts to carry out international 
preliminary examination  on the basis of the translation referred to in 
those paragraphs. 

55.3    Translation of Amendments 

(a)   Where a translation of the international application is required 
under  Rule 55.2, any amendments which are referred to in the statement 
concerning  amendments under Rule 53.9 and which the applicant wishes to 
be taken into  account for the purposes of the international preliminary 
examination, and  any amendments under Article 19 which are to be taken 
into account under Rule  66.1(c), shall be in the language of that 
translation. Where such amendments  have been or are filed in another 
language, a translation shall also be furnished. 

(b)   Where the required translation of an amendment referred to in 
paragraph 
(a) is not furnished, the International Preliminary Examining Authority 
shall  invite the applicant to furnish the missing translation within a 
time limit  which shall be reasonable under the circumstances. That time 
limit shall not  be less than one month from the date of the invitation. 
It may be extended  by the International Preliminary Examining Authority 
at any time before a decision  is taken. 

(c)   If the applicant fails to comply with the invention within the time 
limit  under paragraph (b), the amendment shall not be taken into account 
for the  purposes of of the international preliminary examination. 

Rule 56 

Later Elections 

56.1    Elections Submitted Later Than the Demand 

(a)   The election of States subsequent to the submission of the demand 
("later  election") shall be effected by a notice submitted to the 
International Bureau.  The notice shall identify the international 
application and the demand, and  shall include an indication as referred 
to in Rule 53.7(b)(ii). 

(b)   Subject to paragraph (c), the notice referred to in paragraph (a) 
shall  be signed by the applicant for the elected States concerned or, if 
there is  more than one applicant for those States, by all of them. 

(c)   Where two or more applicants file a notice effecting a later 
election  of a State whose national law requires that national 
applications be filed  by the inventor and where an applicant for that 
elected State who is an inventor  refused to sign the notice or could not 
be found or reached after diligent  effort, the notice need not be signed 
by that applicant ("the applicant concerned")  if it is signed by at least 
one applicant and 

(i)   a statement is furnished explaining, to the satisfaction of the 
International  Bureau, the lack of signature of the applicant concerned, or 

(ii)    the applicant concerned did not sign the request but the 
requirements  of Rule 4.15(b) were complied with, or did not sign the 
demand but the requirements  of Rule 53.8(b) were complied with. 

(d)   An applicant for a State elected by a later election need not have 
been  indicated as an applicant in the demand. 

(e)   If a notice effecting a later election is submitted after the 
expiration  of 19 months from the priority date, the International Bureau 
shall notify  the applicant that the election does not have the effect 
provided for under  Article 39(1)(a) and that the acts referred to in 
Article 22 must be performed  in respect of the elected Office concerned 
within the time limit applicable  under Article 22. 

(f)   If, notwithstanding paragraph (a), a notice effecting a later 
election  is submitted by the applicant to the International Preliminary 
Examining Authority  rather than the International Bureau, that Authority 
shall mark the date of  receipton the notice and transmit it promptly to 
the International Bureau.  The notice shall be considered to have been 
submitted to the International  Bureau on the date marked. 

56.2    Identification of the International Application 

The international application shall be identified as provided in Rule 
53.6. 


56.3    Identification of the Demand 

The demand shall be identified by the date on which it was submitted and 
by  the name of the International Preliminary Examining Authority to which 
it was  submitted. 

56.4  Form of Later Elections 

The notice effecting the later election shall preferably be worded as 
follows: 
 "In relation to the international application filed with ... on ... under 
 No. ... by ...(applicant) (and the demand for international preliminary 
examination  submitted on ... to ...), the undersigned elects the 
following additional State(s)  under Article 31 of the Patent Cooperation 
Treaty: ..." 

56.5    Language of Later Elections 

The later election shall be in the language of the demand. 

Rule 57 

The Handling Fee 

57.1     Requirement to Pay 

(a)   Each demand for international preliminary examination shall be 
subject  to the payment of a fee for the bene- 

fit of the International Bureau ("handling fee") to be collected by the 
International  Preliminary Examining Authority to which the demand is 
submitted. 
(b)   [Deleted] 

57.2      Amount 

(a)   The amount of the handling fee is as set out in the Schedule of 
Fees. 
(b)   [Deleted] 

(c)   The amount of the handling fee shall be established, for each 
International  Preliminary Examining Authority which, under Rule 57.3(c), 
prescribes the payment  of the handling fee in a currency or currencies 
other than Swiss currency,  by the Director General after consultation 

with that Authority and in the currency or currencies prescribed by that 
Authority 
("prescribed currency"). The amount in each prescribed currency shall be 
the  equivalent, in round figures, of the amount of the handling fee in 
Swiss cur- 
rency set out in the Schedule of Fees. The amounts in the prescribed 
currencies  shall be published in the Gazette. 

(d)   Where the amount of the handling fee set out in the Schedule of Fees 
 is changed, the corresponding amounts in the prescribed currencies shall 
be  applied from the same date as the amount set out in the amended 
Schedule of  Fees. 

(e)   Where the exchange rate between Swiss currency and any prescribed 
currency  becomes different from the exchange rate last applied, the 
Director General  shall establish the new amount in the prescribed 
currency according to directives  given by the Assembly. The newly 
established amount shall become applicable  two months after its 
publication in the Gazette, provided that the interested  International 
Preliminary Examining Authority and the Director General may  agree on a 
date falling during the said two-month period in which case the  said 
amount shall become applicable for that Authority from that date. 
57.3    Time and Mode of Payment 

(a)   The handling fee shall be due at the time the demand is submitted. 
(b)   [Deleted] 

(c)   The handling fee shall be payable in the currency or currencies 
prescribed  by the International Preliminary Examining Authority to which 
the demand is  submitted, it being understood that, when transferred by 
that Authority to  the International Bureau, it shall be freely 
convertible into Swiss currency. 
(d)   [Deleted] 

57.4    Failure to Pay 

(a)   Where the handling fee is not paid as required, the International 
Preliminary  Examining Authority shall invite the applicant to pay the fee 
within one month  from the date of the invitation. 

(b)   If the applicant complies with the invitation within the one-month 
time  limit, the handling fee shall be considered as if it had been paid 
on the due  date. 

(c)   If the applicant does not comply with the invitation within the 
prescribed  time limit, the demand shall be considered as if it had not 
been submitted. 
57.5    [Deleted] 

57.6    Refund 

The International Preliminary Examining Authority shall refund the 
handling  fee to the applicant: 

(i)   if the demand is withdrawn before the demand has been sent by that 
Authority  to the International Bureau, or 

(ii)    if the demand is considered, under Rule 54.4(a), not to have been 
submitted. 
Rule 58 

The Preliminary Examination Fee 

58.1    Right to Ask for a Fee 

(a)   Each International Preliminary Examining Authority may require that 
the  applicant pay a fee ("preliminary examination fee") for its own 
benefit for  carrying out the international preliminary examination and 
for performing all  other tasks entrusted to International Preliminary 
Examining Authorities under  the Treaty and these Regulations. 

(b)   The amount and the due date of the preliminary examination fee, if 
any,  shall be fixed by the International Pre- 



liminary Examining Authority, provided that the said due date shall not be 
 earlier than the due date of the handling fee. 

(c)   The preliminary examination fee shall be payable directly to the 
International  Preliminary Examining Authority. Where that Authority is a 
national Office,  it shall be payable in the currency prescribed by that 
Office, and where the  Authority is an intergovernmental organization, it 
shall be payable in the  currency of the State in which the 
intergovernmental organization is located  or in any other currency which 
is freely convertible into the currency of the  said State. 

58.2    Failure to Pay 

(a)   Where the preliminary examination fee fixed by the International 
Preliminary  Examining Authority under Rule 58.1(b) is not paid as 
required under that Rule,  the International Preliminary Examining 
Authority shall invite the applicant  to pay the fee or the missing part 
thereof within one month from the date of  the invitation. 

(b)   If the applicant complies with the invitation within the prescribed 
time  limit, the preliminary examination fee will be considered as if it 
had been  paid on the due date. 

(c) If the applicant does not comply with the invitation within the 
prescribed  time limit, the demand shall be considered as if it had not 
been submitted. 
58.3    Refund 

The International Preliminary Examining Authorities shall inform the 
International  Bureau of the extent, if any, to which, and the conditions, 
if any, under which,  they will refund any amount paid as a preliminary 
examination fee where the  demand is considered as if it had not been 
submitted, and the International  Bureau shall promptly publish such 
information. 

Rule 59 

The Competent International Preliminary 
Examining Authority 

59.1    Demands under Article 31(2)(a) 

(a)   For demands made under Article 31(2)(a), each receiving Office of or 
 acting for a Contracting State bound by the provisions of Chapter II 
shall,  in accordance with the terms of the applicable agreement referred 
to in Article  32(2) and (3), inform the International Bureau which 
International Preliminary  Examining Authority is or which International 
Preliminary Examining Authorities  are competent for the international 
preliminary examination of international  applications filed with it. The 
International Bureau shall promptly publish  such information. Where 
several International Preliminary Examining Authorities  are competent, 
the provisions of Rule 35.2 shall apply mutatis mutandis. 
(b)   Where the international application was filed with the International 
 Bureau as receiving Office under Rule 19.1(a)(iii), Rule 35.3(a) and (b) 
shall  apply mutatis mutandis.  Paragraph (a) of this Rule shall not apply 
to the  International Bureau as receiving Office under Rule 19.1(a)(iii). 
59.2    Demands under Article 31(2)(b) 

As to demands made under Article 31(2)(b), the Assembly, in specifying the 
 International Preliminary Examining Authority competent for international 
applications  filed with a national Office which is an International 
Preliminary Examining  Authority, shall give preference to that Authority; 
if the national Office  is not an International Preliminary Examining 
Authority, the Assembly shall  give preference to the International 
Preliminary Examining Authority recommended  by that Office. 

Rule 60 

Certain Defects in the Demand or Elections 

60.1    Defects in the Demand 

(a)   If the demand does not comply with the requirements specified in 
Rules  53.1, 53.2(a)(i) to (iv), 53.2(b), 53.3 to 53.8, and 55.1, the 
International  Preliminary Examining Authority shall invite the applicant 
to correct the defects  within a time limit which shall be reasonable 
under the circumstances. That  time limit shall not be less than one month 
from the date of the invitation. 
 It may be extended by the International Preliminary Examining Authority 
at  any time before a decision is taken. 

(b)   If the applicant complies with the invitation within the time limit 
under  paragraph (a), the demand shall be considered as if it had been 
received on  the actual filing date, provided that the demand as submitted 
contained at  least one election and permitted the international 
application to be identified; 
 otherwise, the demand shall be considered as if it had been received on 
the  date on which the International Preliminary Examining Authority 
receives the  correction. 

(c)   Subject to paragraph (d), if the applicant does not comply with the 
invitation  within the time limit under paragraph (a), the demand shall be 
considered as  if it had not been submitted. 

(d)   Where, after the expiration of the time limit under paragraph (a), a 
 signature required under Rule 53.8 or a prescribed indication is lacking 
in  respect of an applicant for a certain elected State, the election of 
that State  considered as if it had not been made. 

(e)   If the defect is noticed by the International Bureau, it shall bring 
 the defect to the attention of the International Preliminary Examining 
Authority,  which shall then proceed as provided in paragraphs (a) to (d). 



(f)   If the demand does not contain a statement concerning amendments, 
the  International Preliminary Examining Authority shall proceed as 
provided for  in Rules 66.1 and 69.1(a) or (b). 

(g)   Where the statement concerning amendments contains an indication 
that  amendments under Article 34 are submitted with the demand (Rule 
53.9(c)) but  no such amendments are, in fact, submitted, the 
International Preliminary Examining  Authority shall invite the applicant 
to submit the amendments within a time  limit fixed in the invitation and 
shall proceed as provided for in Rule 69.1(e). 
60.2  Defects in Later Elections 

(a)   If the notice effecting a later election does not comply with the 
requirements  of Rule 56, the International Bureau shall invite the 
applicant to correct  the defects within a time limit which shall be 
reasonable under the circumstances.  That time limit shall not be less 
than one month from the date of the invitation.  It may be extended by the 
International Bureau at any time before a decision  is taken. 

(b)   If the applicant complies with the invitation within the time limit 
under  paragraph (a), the notice shall be considered as if it had been 
received on  the actual filing date, provided that the notice as submitted 
contained at  least one election and permitted the international 
application to be identified; 
 otherwise, the notice shall be considered as if it had been received on 
the  date on which the International Bureau receives the correction. 

(c)   Subject to paragraph (d), if the applicant does not comply with the 
invitation  within the time limit under paragraph (a), the notice shall be 
considered as  if it had not been submitted. 

(d)   Where, in respect of an applicant for a certain elected State, the 
signature  required under Rule 56.1(b) and (c) or the name or address is 
lacking after  the expiration of the time limit under paragraph (a), the 
later election of  that State shall be considered as if it had not been made. 

Rule 61 

Notification of the Demand and Elections 

61.1    Notification to the International Bureau and the 
   Applicant 

(a)   The International Preliminary Examining Authority shall indicate on 
the  demand the date of receipt or, where 

applicable, the date referred to in Rule 60.1(b). The International 
Preliminary  Examining Authority shall promptly send the demand to the 
International Bureau,  and shall prepare and keep a copy in its files. 

(b)   The International Preliminary Examining Authority shall promptly 
inform  the applicant in writing of the date of receipt of the demand. 
Where the demand  has been considered under Rules 54.4(a), 57.4(c), 
58.2(c) or 60.1(c) as if  it had not been submitted or where an election 
has been considered under Rule  60.1(d) as if it had not been made, the 
International Preliminary Examining  Authority shall notify the applicant 
and the International Bureau accordingly. 
(c)   The International Bureau shall promptly notify the applicant of the 
receipt,  and the date of receipt, of any notice effecting a later 
election.  That date  shall be the actual date of receipt by the 
International Bureau or, where applicable,  the date referred to in Rule 
56.1(f) or 60.2(b).  Where the notice has been  considered under Rule 
60.2(c) as if it had not been submitted or where a later  election has 
been considered under Rule 60.2(d) as if it had not been made,  the 
International Bureau shall notify the applicant accordingly. 

61.2    Notification to the Elected Offices 

(a)   The notification provided for in Article 31(7) shall be effected by 
the  International Bureau. 

(b)   The notification shall indicate the number and filing date of the 
international  application, the name of the applicant, the filing date of 
the application  whose priority is claimed (where priority is claimed), 
the date of receipt  by the International Preliminary Examining Authority 
of the demand, and - in  the case of a later election - the date of 
receipt of the notice effecting  the later election.  The latter date 
shall be the actual date of receipt by  the International Bureau or, where 
applicable, the date referred to in Rule  56.1(f) or 60.2(b). 

(c)   The notification shall be sent to the elected Office together with 
the  communication provided for in Article 20.  Elections effected after 
such communication  shall be notified promptly after they have been made. 

(d)   Where the applicant makes an express request to an elected Office 
under  Article 40(2) before the communication provided for in Article 20 
has taken  place, the International Bureau shall, upon request of the 
applicant or the  elected Office, promptly effect that communication to 
that Office. 
61.3    Information for the Applicant 

The International Bureau shall inform the applicant in writing of the 
notification  referred to in Rule 61.2 and of the elected Offices notified 
under Article  31(7). 

61.4    Publication in the Gazette 

Where a demand has been filed prior to the expiration of the 19th month 
from  the priority date, the International Bureau shall publish a notice 
of that  fact in the Gazette promptly after the filing of the demand, but 
not before  the international publication of the international 
application. The notice  shall indicate all designated States bound by 
Chapter II which have not been  elected. 



Rule 62 

Copy of Amendments Under Article 19 for the 
International Preliminary Examining Authority 

62.1    Amendments Made before the Demand is Filed 

Upon receipt of a demand from the International Preliminary Examining 
Authority,  the International Bureau shall promptly transmit a copy of any 
amendments under  Article 19 to that Authority, unless that Authority has 
indicated that it has  already received such a copy. 

62.2     Amendments Made after the Demand is Filed 

(a)   If, at the time of filing any amendments under Article 19, a demand 
has  already been submitted, the applicant shall preferably, at the same 
time as  he files the amendments with the International Bureau, also file 
a copy of  such amendments with the International Preliminary Examining 
Authority. In  any case, the International Bureau shall promptly transmit 
a copy of such amendments  to that Authority. 

(b)   [Deleted] 

Rule 63 

Minimum Requirements for International 
Preliminary Examining Authorities 

63.1    Definition of Minimum Requirements 

The minimum requirements referred to in Article 32(3) shall be the 
following: 
(i)   the national Office or intergovernmental organization must have at 
least  100 full-time employees with sufficient technical qualifications to 
carry out  examinations; 

(ii)    that Office or organization must have at its ready disposal at 
least  the minimum documentation referred to in Rule 34, properly arranged 
for examination  purposes; 

(iii)     that Office or organization must have a staff which is capable 
of  examining in the required technical fields and which has the language 
facilities  to understand at least those languages in which the minimum 
documentation referred  to in Rule 34 is written or is translated. 

Rule 64 

Prior Art for International Preliminary Examination 

64.1    Prior Art 

(a)   For the purposes of Article 33(2) and (3), everything made available 
 to the public anywhere in the world by means of written disclosure 
(including  drawings and other illustrations) shall be considered prior 
art provided that  such making available occurred prior to the relevant date. 

(b)   For the purposes of paragraph (a), the relevant date will be: 
(i)   subject to item (ii), the international filing date of the 
international  application under international preliminary examination; 

(ii)    where the international application under international 
preliminary  examination validly claims the priority of an earlier 
application, the filing  date of such earlier application. 

64.2    Non-Written Disclosures 

In cases where the making available to the public occurred by means of an 
oral  disclosure, use, exhibition or other non-written means ("non-written 
disclosure")  before the relevant date as defined in Rule 64.1(b) and the 
date of such non-written  disclosure is indicated in a written disclosure 
which has been made available  to the public on a date which is the same 
as, or later than, the relevant date,  the non-written disclosure shall 
not be considered part of the prior art for  the purposes of Article 33(2) 
and (3).  Nevertheless, the international preliminary  examination report 
shall call attention to such non-written disclosure in the  manner 
provided for in Rule 70.9. 

64.3    Certain Published Documents 

In cases where any application or any patent which would constitute prior 
art  for the purposes of Article 33(2) and (3) had it been published prior 
to the  relevant date referred to in Rule 64.1 was published on a date 
which is the  same as, or later than, the relevant date but was filed 
earlier than the relevant  date or claimed the priority of an earlier 
application which had been filed  prior to the relevant date, such 
published application or patent shall not  be considered part of the prior 
art for the purposes of Article 33(2) and (3).  Nevertheless, the 
international preliminary examination report shall call attention  to such 
application or patent in the manner provided for in Rule 70.10. 
Rule 65 

Inventive Step or Non-Obviousness 

65.1    Approach to Prior Art 

For the purposes of Article 33(3), the international preliminary 
examination  shall take into consideration the relation of any particular 
claim to the prior  art as a whole. It shall take into consideration the 
claim's relation not only  to individual documents or parts thereof taken 
separately but also its relation  to combinations of such documents or 
parts of documents, where such combinations  are obvious to a person 
skilled in the art. 



65.2    Relevant Date 

For the purposes of Article 33(3), the relevant date for the consideration 
 of inventive step (non-obviousness) is the date prescribed in Rule 64.1. 
Rule 66 

Procedure Before the International Preliminary 
Examining Authority 

66.1    Basis of the International Preliminary Examination 

(a)   Subject to paragraphs (b) to (d), the international preliminary 
examination  shall be based on the international application as filed. 

(b)   The applicant may submit amendments under Article 34 at the time of 
filing  the demand or, subject to Rule 66.4bis, until the international 
preliminary  examination report is established. 

(c)   Any amendments under Article 19 made before the demand was filed 
shall  be taken into account for the purposes of the international 
preliminary examination  unless superseded, or considered as reversed, by 
an amendment under Article  34. 

(d)   Any amendments under Article 19 made after the demand was filed and 
any  amendments under Article 34 submitted to the International 
Preliminary Examining  Authority shall, subject to Rule 66.4bis, be taken 
into account for the purposes  of the international preliminary examination. 

(e)   Claims relating to inventions in respect of which no international 
search  report has been established need not be the subject of 
international preliminary  examination. 

66.2      First  Written Opinion of the International Preliminary 
     Examining 
 Authority 

(a)   If the International Preliminary Examining Authority 

(i)   considers that any of the situations referred to in Article 34(4) 
exists, 
(ii)    considers that the international preliminary examination report 
should  be negative in respect of any of the claims because the invention 
claimed therein  does not appear to be novel, does not appear to involve 
an inventive step (does  not appear to be non-obvious), or does not appear 
to be industrially applicable, 
(iii) notices that there is some defect in the form or        contents of 
the  international application under the Treaty or these Regulations, 

(iv) considers that any amendment goes beyond the   disclosure in the 
international  application as filed, 

(v) wishes to accompany the international preliminary examination report 
by  observations on the clarity of the claims, the description, and the 
drawings,  or the question whether the claims are fully supported by the 
description, 
(vi) considers that a claim relates to an invention in respect of which no 
 international search report has been established and has decided not to 
carry  out the international preliminary examination in respect of that 
claim, or 
(vii) considers that a nucleotide and/or amino acid sequence listing is 
not  available to it in such a form that a meaningful international 
preliminary  examination can be carried out, the said Authority shall 
notify the applicant  accordingly in writing.  Where the national law of 
the national Office acting  as International Preliminary Examining 
Authority does not allow multiple dependent  claims to be drafted in a 
manner different from that provided for in the second  and third sentences 
of Rule 6.4(a), the International Preliminary Examining  Authority may, in 
case of failure to use that manner of claiming, apply Article  34(4)(b). 
In such case, it shall notify the applicant accordingly in writing. 
(b)   The notification shall fully state the reasons for the opinion of 
the  International Preliminary Examining Authority. 

(c)   The notification shall invite the applicant to submit a written 
reply  together, where appropriate, with amendments. 

(d)   The notification shall fix a time limit for the reply.  The time 
limit  shall be reasonable under the circumstances.  It shall normally be 
two months  after the date of notification.  In no case shall it be 
shorter than one month  after the said date. It shall be at least two 
months after the said date where  the international search report is 
transmitted at the same time as the notification. 
 It shall not be more than three months after the said date but may be 
extended  if the applicant so requests before its expiration. 

66.3    Formal Response to the International Preliminary 
        Examining Authority 

(a)   The applicant may respond to the invitation referred to in Rule 
66.2(c)  of the International Preliminary Examining Authority by making 
amendments or  - if he disagrees with the opinion of that Authority - by 
submitting arguments,  as the case may be, or do both. 

(b)   Any response shall be submitted directly to the International 
Preliminary  Examining Authority. 

66.4    Additional Opportunity for Submitting Amendments 
        or  Arguments 

(a)   If the International Preliminary Examining Authority wishes to issue 
 one or more additional written opinions, it may do so, and Rules 66.2 and 
66.3  shall apply. 

(b)   On the request of the applicant, the International Preliminary 
Examining  Authority may give him one or more 



additional opportunities to submit amendments or arguments. 

66.4bis       Consideration of Amendments and Arguments 

Amendments or arguments need not be taken into account by the 
International  Preliminary Examining Authority for the purposes of a 
written opinion or the  international preliminary examination report if 
they are received after that  Authority has begun to draw up that opinion 
or report. 

66.5      Amendment 

Any change, other than the rectification of obvious errors, in the claims, 
 the description, or the drawings, including cancellation of claims, 
omission  of passages in the description, or omission of certain drawings, 
shall be considered  an amendment. 

66.6    Informal Communications with the Applicant 

The International Preliminary Examining Authority may, at any time, 
communicate  informally, over the telephone, in writing, or through 
personal interviews,  with the applicant. The said Authority shall, at its 
discretion, decide whether  it wishes to grant more than one personal 
interview if so requested by the  applicant, or whether it wishes to reply 
to any informal written communication  from the applicant. 

66.7    Priority Document 

(a)   If the International Preliminary Examining Authority needs a copy of 
 the application whose priority is claimed in the international 
application,  the International Bureau shall, on request, promptly furnish 
such copy. If  that copy is not furnished to the International Preliminary 
Examining Authority  because the applicant failed to comply with the 
requirements of Rule 17.1,  the international preliminary examination 
report may be established as if the  priority had not been claimed. 

(b)   If the application whose priority is claimed in the international 
application  is in a language other than the language or one of the 
languages of the International  Preliminary Examining Authority, that 
Authority may in- 

vite the the applicant to furnish a translation in the said language or 
one  of the said languages within two months from the date of the 
invitation. If  the translation is not furnished within that time limit, 
the international  preliminary examination report may be established as if 
the priority had not  been claimed. 

66.8    Form of Amendments 

(a)   The applicant shall be required to submit a replacement sheet for 
every  sheet of the international application which, on account of an 
amendment, differs  from the sheet previously filed. The letter 
accompanying the replacement sheets  shall draw attention to the 
differences between the replaced sheets and the  replacement sheets. Where 
the amendment consists in the deletion of passages  or in minor 
alterations or additions, it may be made on a copy of the relevant 

sheet of the international application, provided that the clarity and 
direct  reproducibility of that sheet are not adversely affected. To the 
extent that  any amendment results in the cancellation of an entire sheet, 
that amendment  shall be communicated in a letter. 

(b)   [Deleted] 

66.9    Language of Amendments 

(a)   Subject to paragraphs (b) and (c), if the international application 
has  been filed in a language other than the language in which it is 
published,  any amendment, as well as any letter referred to in Rule 
66.8(a), shall be  submitted in the language of the publication. 

(b)   If the international preliminary examination is carried out, 
pursuant  to rule 55.2, on the basis of a translation of the international 
application,  any amendment, as well as any letter referred to in 
paragraph (a), shall be  submitted in the language of that translation. 

(c)   Subject to Rule 55.3, if an amendment or letter is not submitted in 
a  language as required under paragraph (a) or (b), the International 
Preliminary  Examining Authority shall, if practicable, having regard to 
the time limit  for establishing the international preliminary examination 
report, invite the  applicant to furnish the amendment or letter in the 
required language within  a time limit which shall be reasonable under the 
circumstances. 

(d)   If the applicant fails to comply, within the time limit under 
paragraph 
(c), with the invitation to furnish an amendment in the required language, 
 the amendment shall not be taken into account for the purposes of the 
international  preliminary examination. If the applicant fails to comply, 
within the time  limit under paragraph (c), with the invitation to furnish 
a letter referred  to in paragraph (a) in the required language, the 
amendment concerned need  not be taken into account for  the purposes of 
the international preliminary  examination. 

Rule 67 

Subject Matter Under Article 34(4)(a)(i) 

67.1      Definition 

No International Preliminary Examining Authority shall be required to 
carry  out an international preliminary examination on an international 
application  if, and to the extent to which, its subject matter is any of 
the following: 
(i)   scientific and mathematical theories, 

(ii)    plant or animal varieties or essentially biological processes for 
the  production of plants and animals, other than microbiological 
processes and  the products of such processes, 



(iii)     schemes, rules, or methods of doing business, performing purely 
mental  acts, or playing games, 

(iv    methods for treatment of the human or animal body by surgery or 
therapy,  as well as diagnostic methods, 

(v)   mere presentations of information, 

(vi)    computer programs to the extent that the International Preliminary 
 Examining Authority is not equipped to carry out an international 
preliminary  examination concerning such programs. 

Rule 68 

Lack of Unity of Invention 
 (International Preliminary Examination) 

68.1    No Invitation to Restrict or Pay 

Where the International Preliminary Examining Authority finds that the 
requirement  of unity of invention is not complied with and chooses not to 
invite the applicant  to restrict the claims or to pay additional fees, it 
shall proceed with the  international preliminary examination, subject to 
Article 34(4)(b) and Rule  66.1(e), in respect of the entire international 
application, but shall indicate,  in any written opinion and in the 
international preliminary examination report,  that it considers that the 
requirement of unity of invention is not fulfilled  and it shall specify 
the reasons therefor. 

68.2    Invitation to Restrict or Pay 

Where the International Preliminary Examining Authority finds that the 
requirement  of unity of invention is not complied with and chooses to 
invite the applicant,  at his option, to restrict the claims or to pay 
additional fees, it shall specify  at least one possibility of restriction 
which, in the opinion of the International  Preliminary Examining 
Authority, would be in compliance with the applicable  requirement, and 
shall specify the amount of the additional fees and the reasons  for which 
the international application is not considered as complying with  the 
requirement of unity of invention. It shall, at the same time, fix a time 
limit, with regard to the circumstances of the case, for complying with 
the  invitation; such time limit shall not be shorter than one month, and 
it shall  not be longer than two months, from the date of the invitation. 

68.3    Additional Fees 

(a)   The amount of the additional fee due for international preliminary 
examination  under Article 34(3)(a) shall be determined by the competent 
International Preliminary  Examining Authority. 

(b)   The additional fee due for international preliminary examination 
under  Article 34(3)(a) shall be payable direct to the International 
Preliminary Examining  Authority. 

(c)   Any applicant may pay the additional fee under protest, that is, 
accompanied  by a reasoned statement to the effect that the international 
application complies  with the requirement of unity of invention or that 
the amount of the required  additional fee is excessive. Such protest 
shall be examined by a three-member  board or other special instance of 
the International Preliminary Examining  Authority, or any competent 
higher authority, which, to the extent that it  finds the protest 
justified, shall order the total or partial reimbursement  to the 
applicant of the additional fee. On the re- 

quest of the applicant, the text of both the protest and the decision 
thereon  shall be notified to the elected Offices as an annex to the 
international preliminary  examination report. 

(d)   The three-member board, special instance or competent higher 
authority,  referred to in paragraph (c), shall not comprise any person 
who made the decision  which is the subject of the protest. 

(e)   Where the applicant has, under paragraph (c), paid an additional fee 
 under protest, the International Preliminary Examining Authority may, 
after  a prior review of the justification for the invitation to pay an 
additional  fee, require that the applicant pay a fee for the examination 
of the protest 
("protest fee"). The protest fee shall be paid within one month from the 
date  of the notification to the applicant of the result of the review. If 
the protest  fee is not so paid, the protest shall be considered 
withdrawn. The protest  fee shall be refunded to the applicant where the 
three-member board, special  instance or higher authority referred to in 
paragraph (c) finds that the protest  was entirely justified. 

68.4     Procedure in the Case of Insufficient Restriction of the 
Claims 
If the applicant restricts the claims but not sufficiently to comply with 
the  requirement of unity of invention, the International Preliminary 
Examining  Authority shall proceed as provided in Article 34(3)(c). 

 68.5       Main Invention 

In case of doubt which invention is the main invention for the purposes of 
 Article 34(3)(c), the invention first mentioned in the claims shall be 
considered  the main invention. 

Rule 69 

Start of and Time Limit for International 
Preliminary Examination 

69.1    Start of International Preliminary Examination 

(a)   Subject to paragraphs (b) to (e), the International Preliminary 
Examining  Authority shall start the international preliminary examination 
when it is  in possession both of the demand and of either the 
international search report  or a notice of the declaration by the 
International Searching 



Authority under Article 17(2)(a) that no international search report will 
be  established. 

(b)   If the competent International Preliminary Examining Authority is 
part  of the same national Office or intergovernmental organization as the 
competent  International Searching Authority, the international 
preliminary examination  may, if the International Preliminary Examining 
Authority so wishes and subject  to paragraph (d), start at the same time 
as the international search. 
(c)   Where the statement concerning amendments contains an indication 
that  amendments under Article 19 are to be taken into account (Rule 
53.9(a)(i)),  the International Preliminary Examining Authority shall not 
start the international  preliminary examination before it has received a 
copy of the amendments concerned. 
(d)   Where the statement concerning amendments contains an indication 
that  the start of the international preliminary examination is to be 
postponed (Rule  53.9(b)), the International Preliminary Examining 
Authority shall not start  the international preliminary examination before 

(i)     it has received a copy of any amendments made under Article 19, 
(ii) it has received a notice from the applicant that he does not wish to 
make  amendments under Article 19, or 

(iii) the expiration of 20 months from the priority date, whichever occurs 
 first. 

(e)   Where the statement concerning amendments contains an indication 
that  amendments under Article 34 are submitted with the demand (Rule 
53.9(c)) but  no such amendments are, in fact, submitted, the 
International Preliminary Examining  Authority shall not start the 
international preliminary examination before  it has received the 
amendments or before the time limit fixed in the invitation  referred to 
in Rule 60.1(g) has expired, whichever occurs first. 

69.2      Time Limit for International Preliminary Examination 

The time limit for establishing the international preliminary examination 
report  shall be: 

(i) 28 months from the priority date if the demand was filed prior to the 
expiration  of 19 months from the priority date; 

(ii) nine months from the start of the international preliminary 
examination  if the demand was filed after the expiration of 19 months 
from the priority  date. 

Rule 70 

The International Preliminary Examination Report 

70.1    Definition 

For the purposes of this Rule, "report" shall mean international 
preliminary  examination report. 

70.2    Basis of the Report 

(a)   If the claims have been amended, the report shall issue on the 
claims  as amended. 

(b)   If, pursuant to Rule 66.7(a) or (b), the report is established as if 
 the priority had not been claimed, the report shall so indicate. 

(c)   If the International Preliminary Examining Authority considers that 
any  amendment goes beyond the dis- 

closure in the international application as filed, the report shall be 
established  as if such amendment had not been made, and the report shall 
so indicate. It  shall also indicate the reasons why it considers that the 
amendment goes beyond  the said disclosure. 

(d)   Where claims relate to inventions in respect of which no 
international  search report has been established and have therefore not 
been the subject  of international preliminary examination, the 
international preliminary examination  report shall so indicate. 

70.3    Identifications 

The report shall identify the International Preliminary Examining 
Authority  which established it by indicating the name of such Authority, 
and the international  application by indicating the international 
application number, the name of  the applicant, and the international 
filing date. 

70.4    Dates 

The report shall indicate: 

(i)   the date on which the demand was submitted, and 

(ii)    the date of the report; that date shall be the date on which the 
report  is completed. 

70.5    Classification 

(a)   The report shall repeat the classification given under Rule 43.3 if 
the  International Preliminary Examining Authority agrees with such 
classification. 
(b)   Otherwise, the International Preliminary Examining Authority shall 
indicate  in the report the classification, at least according to the 
International Patent  Classification, which it considers correct. 

70.6    Statement Under Article 35(2) 

(a)   The statement referred to in Article 35(2) shall consist of the 
words  "YES" or "NO," or their equivalent in the language of the report, 
or some appropriate  sign provided for in the Administrative Instructions, 
and shall be accompanied  by the citations, explanations, and 
observations, if any, referred to in the  last sentence of Article 35(2). 

(b)   If any of the three criteria referred to in Article 35(2) (that is, 
novelty,  inventive step (nonobviousness), industrial applicability) is 
not satisfied,  the statement shall be negative. If, in such a case, any 
of the criteria, taken  separately, is satisfied, the report shall specify 
the criterion or criteria  so satisfied. 



70.7    Citations Under Article 35(2) 

(a)   The report shall cite the documents considered to be relevant for 
supporting  the statements made under Article 35(2). 

(b)   The provisions of Rule 43.5(b) and (e) shall apply also to the 
report. 
70.8    Explanations Under Article 35(2) 

The Administrative Instructions shall contain guidelines for cases in 
which  the explanations referred to in Article 35(2) should or should not 
be given  and the form of such explanations. Such guidelines shall be 
based on the following  principles: 

(i)   explanations shall be given whenever the statement in relation to 
any  claim is negative; 

(ii)    explanations shall be given whenever the statement is positive 
unless  the reason for citing any document is easy to imagine on the basis 
of consultation  of the cited document; 

(iii)     generally, explanations shall be given if the case provided for 
in  the last sentence of Rule 70.6(b) obtains. 

70.9    Non-Written Disclosures 

Any non-written disclosure referred to in the report by virtue of Rule 
64.2  shall be mentioned by indicating its kind, the date on which the 
written disclosure  referring to the non-written disclosure was made 
available to the public, and  the date on which the non-written disclosure 
occurred in public. 

70.10     Certain Published Documents 

Any published application or any patent referred to in the report by 
virtue  of Rule 64.3 shall be mentioned as such and shall be accompanied 
by an indication  of its date of publica- 

tion, of its filing date, and its claimed priority date (if any). In 
respect  of the priority date of any such document, the report may 
indicate that, in  the opinion of the International Preliminary Examining 
Authority, such date  has not been validly claimed. 

70.11       Mention of Amendments 

If, before the International Preliminary Examining Authority, amendments 
have  been made, this fact shall be indicated in the report. Where any 
amendment  has resulted in the cancellation of an entire sheet, this fact 
shall also be  specified in the report. 

70.12     Mention of Certain Defects and Other Matters 

If the International Preliminary Examining Authority considers that, at 
the  time it prepares the report: 

(i)   the international application contains any of the defects referred 
to  in Rule 66.2(a)(iii), it shall include this opinion and the reasons 
therefor  in the report; 

(ii)    the international application calls for any of the observations 
referred  to in Rule 66.2(a)(v), it may include this opinion in the report 
and, if it  does, it shall also indicate in the report the reasons for 
such opinion; 
(iii)     any of the situations referred to in Article 34(4) exists, it 
shall  state this opinion and the reasons therefor in the reports; 

(iv)    a nucleotide and/or amino acid sequence listing is not available 
to  it in such a form that a meaningful international preliminary 
examination can  be carried out, it shall so state in the report. 

70.13  Remarks Concerning Unity of Invention 

If the applicant paid additional fees for the international preliminary 
examination,  or if the international application or the international 
preliminary examination  was restricted under Article 34(3), the report 
shall so indicate.  Furthermore,  where the international preliminary 
examination was carried out on restricted  claims (Article 34(3)(a)), or 
on the main invention only (Article 34(3)(c)),  the report shall indicate 
what parts of the international application were  and what parts were not 
the subject of international preliminary examination. 
 The report shall contain the indications provided for in Rule 68.1, where 
 the International Preliminary Examining Authority chose not to invite the 
applicant  to restrict the claims or to pay additional fees. 

70.14  Authorized Officer 

The report shall indicate the name of the officer of the International 
Preliminary  Examining Authority responsible for that report. 

70.15  Form 

The physical requirements as to the form of the report shall be prescribed 
 by the Administrative Instructions. 

70.16      Annexes of the Report 

Each replacement sheet under Rule 66.8(a) and each replacement sheet 
containing  amendments under Article 19 shall, unless superseded by later 
replacement sheets,  be annexed to the report. Amendments under Article 19 
which have been considered  as reversed by an amendment under Article 34 
and letters under Rule 66.8(a)  shall not be annexed. 

70.17     Languages of the Report and the Annexes 

(a)   The report and any annex shall be in the language in which the 
international  application to which they relate is published, or, if the 
international preliminary  examination is carried out, pursuant to Rule 
55.2, on the basis of a translation  of the international application in 
the language of that translation. 
(b)   [Deleted] 



Rule 71 

Transmittal of the International Preliminary 
Examination Report 

71.1    Recipients 

The International Preliminary Examining Authority shall, on the same day, 
transmit  one copy of the international preliminary examination report and 
its annexes,  if any, to the International Bureau, and one copy to the 
applicant. 
71.2    Copies of Cited Documents 

(a)   The request under Article 36(4) may be presented any time during 
seven  years from the international filing date of the international 
application to  which the report relates. 

(b)   The International Preliminary Examining Authority may require that 
the  party (applicant or elected Office) presenting the request pay to it 
the cost  of preparing and mailing the copies. The level of the cost of 
preparing copies  shall be provided for in the agreements referred to in 
Article 32(2) between  the International Preliminary Examining Authorities 
and the International Bureau. 
(c)   [Deleted] 

(d)   Any International Preliminary Examining Authority may perform the 
obligations  referred to in paragraphs (a) and (b) through another agency 
responsible to  it. 

Rule 72 

Translation of the International Preliminary 
Examination Report 

72.1    Languages 

(a)   Any elected State may require that the international preliminary 
examination  report, established in any language other than the official 
language, or one  of the official languages, of its national Office, be 
translated into English. 
(b)   Any such requirement shall be notified to the International Bureau, 
which  shall promptly publish it in the Gazette. 

72.2    Copy of Translation for the Applicant 

  The International Bureau shall transmit a copy of the translation 
referred  to in Rule 72.1(a) of the international preliminary examination 
report to the  applicant at the same time as it communicates such 
translation to the interested  elected Office or Offices. 

72.3    Observations on the Translation 

The applicant may make written observations on what, in his opinion, are 
errors  of translation in the translation of the international preliminary 
examination  report and shall send a copy of any such observations to each 
of the interested  elected Offices and a copy to the International Bureau. 

Rule 73 

Communication of the International Preliminary 
Examination Report 

73.1    Preparation of Copies 

The International Bureau shall prepare the copies of the documents to be 
communicated  under Article 36(3)(a). 

73.2    Time Limit for Communication 

The communication provided for in Article 36(3)(a) shall be effected as 
promptly  as possible but not earlier than the communication under Article 
20. 
Rule 74 

Translations of Annexes of the International Preliminary Examination 
Report  and Transmittal Thereof 

74.1    Contents of Translation and Time Limit for Transmittal 
        Thereof 

(a)   Where the furnishing of a translation of the international 
application  is required by the elected Office under Article 39(1), the 
applicant shall,  within the time limit applicable under Article 39(1), 
transmit a translation  of any replacement sheet referred to in Rule 70.16 
which is annexed to the  international preliminary examination report 
unless such sheet is in the language  of the required translation of the 
international application. The same time  limit shall apply where the 
furnishing of a translation of the international  application to the 
elected Office must, because of a declaration made under  Article 
64(2)(a)(i), be effected within the time limit applicable under Article  22. 

(b)   Where the furnishing under Article 39(1) of a translation of the 
international  application is not required by the elected Office, that 
Ofice may require the  applicant to furnish, within the time limit 
applicable under that Article,  a translation into the language in which 
the international application was  published of any replacement sheet 
referred to in Rule 70.16 which is annexed  to the international 
preliminary examination report and is not in that language. 
Rule 75 [Deleted] 

Rule 76 

Copy, Translation, and Fee Under Article 39(1); 
Translation of Priority Document 

76.1, 76.2, and 76.3    [Deleted] 

76.4    Time Limit for Translation of Priority Document 

The applicant shall not be required to furnish to any elected Office a 
certified  translation of the priority document 



before the expiration of the applicable time limit under Article 39. 
76.5    Application of Rules 22.1(g), 49 and 51bis 

Rules 22.1(g), 49 and 51bis shall apply, provided that: 

(i)   any reference in the said Rules to the designated Office or to the 
designated  State shall be construed as a reference to the elected Office 
or to the elected  State, respectively; 

(ii)    any reference in the said Rules to Article 22 or Article 24(2) 
shall  be construed as a reference to Article 39(1) or Article 39(3), 
respectively; 
(iii)     the words "international applications filed" in Rule 49.1(c) 
shall  be replaced by the words "a demand submitted;" 

(iv)    for the purposes of Article 39(1), where an international 
preliminary  examination report has been established, a translation of any 
amendment under  Article 19 shall only be required if that amendment is 
annexed to that report. 
76.6    Transitional Provision 

If, on July 12, 1991, Rule 76.5(iv) is not compatible with the national 
law  applied by the elected Office in respect of claims amended under 
Article 19,  Rule 76.5(iv) shall not apply in that respect to that elected 
Office for as  long as it continues not to be compatible with that law, 
provided that the  said Office informs the International Bureau 
accordingly by December 31, 1991.  The information received shall be 
promptly published by the International Bureau  in the Gazette. 

Rule 77 

Faculty Under Article 39(1)(b) 

77.1    Exercise of Faculty 

(a)   Any Contracting State allowing a time limit expiring later than the 
time  limit provided for in Article 39(1)(a) shall notify the 
International Bureau  of the time limit so fixed. 

(b)   Any notification received by the International Bureau under 
paragraph 
(a) shall be promptly published by the International Bureau in the 
Gazette. 
(c)   Notifications concerning the shortening of the previously fixed time 
 limit shall be effective in relation to demands submitted after the 
expiration  of three months computed from the date on which the 
notification was published  by the International Bureau. 

(d)   Notifications concerning the lengthening of the previously fixed 
time  limit shall become effective upon publication by the International 
Bureau in  the Gazette in respect of demands pending at the time or 
submitted after the  date of such publication, or, if the Contracting 
State effecting the notification  fixes some later date, as from the 
latter date. 

Rule 78 

Amendment of the Claims, the Description, 
and the Drawings, Before Elected Offices 

78.1    Time Limit Where Election Is Effected Prior To Expira- 
     tion  of 19 Months from Priority Date 

(a)   Where the election of any Contracting State is effected prior to the 
 expiration of the 19th month from the priority date, the applicant shall, 
if  he so wishes, exercise the right under Article 41 to amend the claims, 
the  description and the drawings, before the elected Office concerned 
within one  month from the fulfillment of the requirements under Article 
39(1)(a), provided  that, if the transmittal of the international 
preliminary examination report  under Article 36(1) has not taken place by 
the expiration of the time limit  applicable under Article 39, he shall 
exercise the said right not later than  four months after such expiration 
date. In either case, the applicant may exercise  the said right at any 
other time if so permitted by the national law of the  said State. 

(b)   In any elected State in which the national law provides that 
examination  starts only on special request, the national law may provide 
that the time  limit within or the time at which the applicant may 
exercise the right under  Article 41 shall, where the election of any 
Contracting State is effected prior  to the expiration of the 19th month 
from the priority date, be the same as  that provided by the national law 
for the filing of amendments in the case  of the examination, on special 
request, of national applications, provided  that such time limit shall 
not expire prior to, or such time shall not come  before, the expiration 
of the time limit applicable under paragraph (a). 
78.2    Time Limit Where Election is Effected after Expiration 
     of  19 Months from Priority Date 

Where the election of any Contracting State has been effected after the 
expiration  of the 19th month from the priority date and the applicant 
wishes to make amendments  under Article 41, the time limit for making 
amendments under Article 28 shall  apply. 

78.3    Utility Models 

The provisions of Rules 6.5 and 13.5 shall apply, mutatis mutandis, before 
 elected Offices. If the election was made before the expiration of the 
19th  month from the priority date, the reference to the time limit 
applicable under  Article 22 is replaced by a reference to the time limit 
applicable under Article  39. 



PART  D 

Rules Concerning Chapter III of the Treaty 
Rule 79 Calendar 

79.1    Expressing Dates 

Applicants, national Offices, receiving Offices, International Searching 
and  Preliminary Examining Authorities, and the International Bureau, 
shall, for  the purposes of the Treaty and the Regulations, express any 
date in terms of  the Christian era and the Gregorian calendar, or, if 
they use other eras and  calendars, they shall also express any date in 
terms of the Christian era and  the Gregorian calendar. 

Rule 80 

Computation of Time Limits 

80.1    Periods Expressed in Years 

When a period is expressed as one year or a certain number of years, 
computation  shall start on the day following the day on which the 
relevant event occurred,  and the period shall expire in the relevant 
subsequent year in the month having  the same name and on the day having 
the same number as the month and the day  on which the said event 
occurred, provided that if the relevant subsequent  month has no day with 
the same number the period shall expire on the last day  of that month. 

80.2    Periods Expressed in Months 

When a period is expressed as one month or a certain number of months, 
computation  shall start on the day following the day on which the 
relevant event occurred,  and the period shall expire in the relevant 
subsequent month on the day which  has the same number as the day on which 
the said event occurred, provided that  if the relevant subsequent month 
has no day with the same number the period  shall expire on the last day 
of that month. 

80.3    Periods Expressed in Days 

When a period is expressed as a certain number of days, computation shall 
start  on the day following the day on which the relevant event occurred, 
and the  period shall expire on the day on which the last day of the count 
has been  reached. 

80.4    Local Dates 

(a)   The date which is taken into consideration as the starting date of 
the  computation of any period shall be the date which prevails in the 
locality  at the time when the relevant event occurred. 

(b)   The date on which any period expires shall be the date which 
prevails  in the locality in which the required document must be filed or 
the required  fee must be paid. 

80.5    Expiration on a Non-Working Day 

If the expiration of any period during which any document or fee must 
reach  a national Office or intergovernmental organization falls on a day 
on which  such Office or organization is not open to the public for the 
purposes of the  transaction of official business, or on which ordinary 
mail is not delivered  in the locality in which such Office or 
organization is situated, the period  shall expire on the next subsequent 
day on which neither of the said two circumstances  exists. 

80.6    Date of Documents 

(a)   Where a period starts on the day of the date of a document or letter 
 emanating from a national Office or intergovernmental organization, any 
interested  party may prove that the said document or letter was mailed on 
a day later  than the date it bears, in which case the date of actual 
mailing shall, for  the purposes of computing the period, be considered to 
be the date on which  the period starts. Irrespective of the date on which 
such a document or letter  was mailed, if the applicant offers to the 
national Office or intergovernmental  organization evidence which 
satisfies the national Office or intergovernmental  organization that the 
document or letter was re- 

ceived more than seven days after the date it bears, the national Office 
or  intergovernmental organization shall treat the period starting from 
the date  of the document or letter as expiring later by an additional 
number of days  which is equal to the number of days which the document or 
letter was received  later than seven days after the date it bears. 

(b)   [Deleted] 

80.7    End of Working Day 

(a)   A period expiring on a given day shall expire at the moment the 
national  Office or intergovernmental organization with which the document 
must be filed  or to which the fee must be paid closes for business on 
that day. 

(b)   Any Office or organization may depart from the provisions of 
paragraph 
(a) up to midnight on the relevant day. 

(c)   [Deleted] 

Rule 81 

Modification of Time Limits Fixed in the Treaty 

81.1    Proposal 

(a)   Any Contracting State or the Director General may propose a 
modification  under Article 47(2). 

(b)   Proposals made by a Contracting State shall be presented to the 
Director  General. 

81.2    Decision by the Assembly 

(a)   When the proposal is made to the Assembly, its text shall be sent by 
 the Director General to all Contracting States at least two months in 
advance  of that session of the Assembly whose agenda includes the 
proposal. 


(b)   During the discussion of the proposal in the Assembly, the proposal 
may  be amended or consequential amendments proposed. 

(c)   The proposal shall be considered adopted if none of the Contracting 
States  present at the time of voting votes against the proposal. 

81.3    Voting by Correspondence 

(a)   When voting by correspondence is chosen, the proposal shall be 
included  in a written communication from the Director General to the 
Contracting States,  inviting them to express their vote in writing. 

(b)   The invitation shall fix the time limit within which the reply 
containing  the vote expressed in writing must reach the International 
Bureau. That time  limit shall not be less than three months from the date 
of the invitation. 
(c)   Replies must be either positive or negative. Proposals for 
amendments  or mere observations shall not be regarded as votes. 

(d)   The proposal shall be considered adopted if none of the Contracting 
States  opposes the amendment and if at least one-half of the Contracting 
States express  either approval or indifference or abstention. 

Rule 82 

Irregularities in the Mail Service 

82.1  Delay or Loss in Mail 

(a)   Any interested party may offer evidence that he has mailed the 
document  or letter five days prior to the expiration of the time limit. 
Except in cases  where surface mail normally arrives at its destination 
within two days of mailing,  or where no airmail service is available, 
such evidence may be offered only  if the mailing was by airmail. In any 
case, evidence may be offered only if  the mailing was by mail registered 
by the postal authorities. 

(b)   If the mailing, in accordance with paragraph (a), of a document or 
letter  is proven to the satisfaction of the national Office or 
intergovernmental organization  which is the addressee, delay in arrival 
shall be excused, or, if the document  or letter is lost in the mail, 
substitution for it of a new copy shall be permitted,  provided that the 
interested party proves to the satisfaction of the said Office  or 
organization that the document or letter offered in substitution is 
identical  with the document or letter lost. 

(c)   In the cases provided for in paragraph (b), evidence of mailing 
within  the prescribed time limit, and, where the document or letter was 
lost, the  substitute document or letter as well as the evidence 
concerning its identity  with the document or letter lost shall be 
submitted within one month after  the date on which the interested party 
noticed - or with due diligence should  have noticed - the delay or the 
loss, and in no case later than six months  after the expiration of the 
time limit applicable in the given case. 
(d)   Any national Office or intergovernmental organization which has 
notified  the International Bureau that it will do so shall, where a 
delivery service  other than the postal authorities is used to mail a 
document or letter, apply  the provisions of paragraphs (a) to (c) as if 
the delivery service was a postal  authority.  In such a case, the last 
sentence of paragraph (a) shall not apply  but evidence may be offered 
only if details of the mailing were recorded by  the delivery service at 
the time of mailing. The notification may contain an  indication that it 
applies only to mailings using specified delivery services  or delivery 
services which satisfy specified criteria. The International Bureau  shall 
publish the information so notified in the Gazette. 

(e)   Any national Office or intergovernmental organization may proceed 
under  paragraph (d): 

(i)   even if, where applicable, the delivery service used was not one of 
those  specified, or did not satisfy the criteria specified, in the 
relevant notification  under paragraph (d), or 

(ii)    even if that Office or organization has not sent to the 
International  Bureau a notification under paragraph (d). 

82.2    Interruption in the Mail Service 

(a)   Any interested party may offer evidence that on any of the 10 days 
preceding  the day of expiration of the time limit the postal service was 
interrupted  on account of war, revolution, civil disorder, strike, 
natural calamity, or  other like reason, in the locality where the 
interested party resides or has  his place of business or is staying. 

(b)   If such circumstances are proven to the satisfaction of the national 
 Office or intergovernmental organization which is the addressee, delay in 
arrival  shall be excused, provided that the interested party proves to 
the satisfaction  of the said Office or organization that he effected the 
mailing within five  days after the mail service was resumed. The 
provisions of Rule 82.1(c) shall  apply mutatis mutandis. 

Rule 82bis 

Excuse by the Designated or Elected State 
of Delays in Meeting Certain Time Limits 

82bis.1   Meaning of "Time Limit" in Article 48(2) 

The reference to "any time limit" in Article 48(2) shall be construed as 
comprising  a reference: 

(i) to any time limit fixed in the Treaty or these Regulations; 

(ii) to any time limit fixed by the receiving Office, the International 
Searching  Authority, the International Preliminary Examining Authority or 
the International  Bureau or applicable by the receiving Office under its 
national law; 


(iii) to any time limit fixed by, or in the national law applicable by, 
the  designated or elected Office, for the performance of any act by the 
applicant  before that Office. 

82bis.2       Reinstatement of Rights and Other Provisions to Which 
     Article  48(2) Applies 

The provisions of the national law which is referred to in Article 48(2) 
concerning  the excusing, by the designated or elected State, of any delay 
in meeting any  time limit are those provisions which provide for 
reinstatement of rights,  restoration, restitutio in integrum or further 
processing in spite of noncompliance  with a time limit, and any other 
provision providing for the extension of time  limits or for excusing 
delays in meeting time limits. 

Rule 82ter 

Rectification of Errors Made by the Receiving 
Office or by the International Bureau 

82ter.1       Errors Concerning the International Filing Date and 
             the  Priority Claim 

If the applicant proves to the satisfaction of any designated or elected 
Office  that the international filing date is incorrect due to an error 
made by the  receiving Office or that the declaration made under Article 
8(1) has been erroneously  cancelled or corrected by the receiving Office 
or the International Bureau,  and if the error is an error such that, had 
it been made by the designated  or elected Office itself, that Office 
would rectify it under the national law  or national practice, the said 
Office shall rectify the error and shall treat  the international 
application as if it had been accorded the rectified international  filing 
date or as if the declaration under Article 8(1) had not been cancelled 
or corrected, as the case may be. 

Rule 83 

Right to Practice Before International Authorities 

83.1      Proof of Right 

The International Bureau, the competent International Searching Authority, 
 and the competent International Preliminary Examining Authority may 
require  the production of proof of the right to practice referred to in 
Article 49. 
83.1bis Where the International Bureau Is the Receiving Office 

(a) Any person who has the right to practice before the national Office 
of,  or acting for, a Contracting state of which the applicant or, if 
there are  two or more applicants, any of the applicants is a resident or 
national shall  be entitled to practice in respect of the international 
application before  the International Bureau in its capacity as receiving 
Office under Rule 19.1(a)(iii). 


(b) Any person having the right to practice before the International 
Bureau  in its capacity as receiving Office in respect of an international 
application  shall be entitled to practice in respect of that application 
before the International  Bureau in any other capacity and before the 
competent International Searching  Authority and competent International 
Preliminary Examining Authority. 
83.2      Information 

(a)   The national Office or the intergovernmental organization which the 
interested  person is alleged to have a right to practice before shall, 
upon request, inform  the International Bureau, the competent 
International Searching Authority,  or the competent International 
Preliminary Examining Authority, whether such  person has the right to 
practice before it. 

(b)   Such information shall be binding upon the International Bureau, the 
 International Searching Authority, or the International Preliminary 
Examining  Authority, as the case may be. 

PART  E 

Rules Concerning Chapter V of the Treaty 

Rule 84 

Expenses of Delegations 

84.1    Expenses Borne by Governments 

The expenses of each Delegation participating in any organ established by 
or  under the Treaty shall be borne by the Government which has appointed 
it. 
Rule 85 

Absence of Quorum in the Assembly 

85.1    Voting by Correspondence 

In the case provided for in Article 53(5)(b), the International Bureau 
shall  communicate the decisions of the Assembly (other than those 
concerning the  Assembly's own procedure) to the Contracting States which 
were not represented  and shall invite them to express in writing their 
vote or abstention within  a period of three months from the date of the 
communication. If, at the expiration  of that period, the number of 
Contracting States having thus expressed their  vote or abstention attains 
the number of Contracting States which was lacking  for attaining the 
quorum in the session itself, such decisions shall take effect  provided 
that at the same time the required majority still obtains. 


Rule 86 

The Gazette 

86.1    Contents 

The Gazette referred to in Article 55(4) shall contain: 

(i)   for each published international application, data specified by the 
Administrative  Instructions taken from the front page of the pamphlet 
published under Rule  48, the drawing (if any) appearing on the said front 
page, and the abstract, 
(ii)    the schedule of all fees payable to the receiving Offices, the 
International  Bureau, and the International Searching and Preliminary 
Examining Authorities, 
(iii)     notices the publication of which is required under the Treaty or 
 these Regulations, 

(iv)    information, if and to the extent furnished to the International 
Bureau  by the designated or elected Offices, on the question whether the 
requirements  provided for in Articles 22 or 39 have been complied with in 
respect of the  international applications designating or electing the 
Office concerned, 
(v)   any other useful information prescribed by the Administrative 
Instructions,  provided access to such information is not prohibited under 
the Treaty or these  Regulations. 

86.2    Languages 

(a)   The Gazette shall be published in an English-language edition and a 
French-language  edition. It shall also be published in editions in any 
other language, provided  the cost of publication is assured through sales 
or subventions. 

(b)   The Assembly may order the publication of the Gazette in languages 
other  than those referred to in paragraph (a). 

86.3    Frequency 

The frequency of publication of the Gazette shall be determined by the 
Director  General. 

86.4    Sale 

The subscription and other sale prices of the Gazette shall be determined 
by  the Director General. 

86.5    Title 

The title of the Gazette shall be determined by the Director General. 
86.6    Further Details 

Further details concerning the Gazette may be provided for in the 
Administrative  Instructions. 

Rule 87 

Copies of Publications 

87.1    International Searching and Preliminary Examining 
Authorities 
Any International Searching or Preliminary Examining Authority shall have 
the  right to receive, free of charge, two copies of every published 
international  application, of the Gazette, and of any other publication 
of general interest  published by the International Bureau in connection 
with the Treaty or these  Regulations. 

87.2    National Offices 

(a)   Any national Office shall have the right to receive, free of charge, 
 one copy of every published international application, of the Gazette, 
and  of any other publication of general interest published by the 
International  Bureau in connection with the Treaty or these Regulations. 

(b)   The publications referred to in paragraph (a) shall be sent on 
special  request.  If any publication is available in more than one 
language, the request  shall specify the language or languages in which it 
is desired. 

Rule 88 

Amendment of the Regulations 

88.1    Requirement  of  Unanimity 

Amendment of the following provisions of these Regulations shall require 
that  no State having the right to vote in the Assembly vote against the 
proposed  amendment: 

(i)   Rule 14.1 (Transmittal Fee), 

(ii)    [Deleted] 

(iii)     Rule 22.3 (Time Limit under Article 12(3)), 

(iv)    Rule 33 (Relevant Prior Art for International Search), 

(v)   Rule 64 (Prior Art for International Preliminary Examination), 
(vi)    Rule 81 (Modification of Time Limits Fixed in the Treaty), 
(vii)     the present paragraph (i.e., Rule 88.1). 

88.2    [Deleted] 

88.3    Requirement of Absence of Opposition by Certain States 

Amendment of the following provisions of these Regulations shall require 
that  no State referred to in Article 58(3)(a)(ii) and having the right to 
vote in  the Assembly vote against the proposed amendment: 

(i)   Rule 34 (Minimum Documentation), 

(ii)    Rule 39 (Subject Matter under Article 17(2)(a)(i)), 

(iii)     Rule 67 (Subject Matter under Article 34(4)(a)(i)), 

(iv)    the present paragraph (i.e., Rule 88.3). 

88.4    Procedure 

Any proposal for amending a provision referred to in Rules 88.1 or 88.3 
shall,  if the proposal is to be decided upon in the Assembly, be 
communicated to all  Contracting States at least two months prior to the 
opening of that session  of the Assembly which is called upon to make a 
decision on the proposal. 


Rule 89 

Administrative Instructions 

89.1    Scope 

(a)   The Administrative Instructions shall contain provisions: 

(i)   concerning matters in respect of which these Regulations expressly 
refer  to such Instructions, 

(ii)    concerning any details in respect of the application of these 
Regulations. 
(b)   The Administrative Instructions shall not be in conflict with the 
provisions  of the Treaty, these Regulations, or any agreement concluded 
by the International  Bureau with an International Searching Authority, or 
an International Preliminary  Examining Authority. 

89.2    Source 

(a)   The Administrative Instructions shall be drawn up and promulgated by 
 the Director General after consultation with the receiving Offices and 
the  International Searching and Preliminary Examining Authorities. 

(b)   They may be modified by the Director General after consultation with 
 the Offices or Authorities which have a direct interest in the proposed 
modification. 
(c)   The Assembly may invite the Director General to modify the 
Administrative  Instructions, and the Director General shall proceed 
accordingly. 
89.3    Publication and Entry into Force 

(a)   The Administrative Instructions and any modification thereof shall 
be  published in the Gazette. 

(b)   Each publication shall specify the date on which the published 
provisions 

come into effect. The dates may be different for different provisions, 
provided  that no provision may be declared effective prior to its 
publication in the  Gazette. 

PART  F 

Rules Concerning Several Chapters of the Treaty 

Rule 90 

Agents and Common Representatives 

90.1    Appointment as Agent 

(a)   A person having the right to practice before the national Office 
with  which the international application is filed or, where the 
international application  is filed with the International Bureau, having 
the right to practice in respect  of the international application before 
the International Bureau as receiving  Office may be appointed by the 
applicant as his agent to represent him before  the receiving Office, the 
Inter- 

national Bureau, the International Searching Authority, and the 
International  Preliminary Examining Authority. 

(b)   A person having the right to practice before the national Office or 
intergovernmental  organization which acts as the International Searching 
Authority may be appointed  by the applicant as his agent to represent him 
specifically before that Authority. 
(c)   A person having the right to practice before the national Office or 
intergovernmental  organization which acts as the International 
Preliminary Examining Authority  may be appointed by the applicant as his 
agent to represent him specifically  before that Authority. 

(d)   An agent appointed under paragraph (a) may, unless otherwise 
indicated  in the document appointing him, appoint one or more subagents 
to represent  the applicant as the applicant's agent: 

(i)   before the receiving Office, the International Bureau, the 
International  Searching Authority, and the International Preliminary 
Examining Authority,  provided that any person so appointed as sub-agent 
has the right to practice  before the national Office with which the 
international application was filed  or to practice in respect of the 
international application before the International  Bureau as receiving 
Office, as the case may be; 

(ii)    specifically before the International Searching Authority or the 
International  Preliminary Examining Authority, provided that any person 
so appointed as sub-agent  has the right to practice before the national 
Office or intergovernmental organization  which acts as the International 
Searching Authority or International Preliminary  Examining Authority, as 
the case may be. 

90.2    Common Representative 

(a)   Where there are two or more applicants and the applicants have not 
appointed  an agent representing all of them (a "common agent") under Rule 
90.1(a), one  of the applicants who is entitled to file an international 
application according  to Article 9 may be appointed by the other 
applicants as their common representative. 
(b)   Where there are two or more applicants and all the applicants have 
not  appointed a common agent under Rule 90.1(a) or a common 
representative under  paragraph (a), the applicant first named in the 
request who is entitled according  to Rule 19.1 to file an international 
application with the receiving Office  shall be considered to be the 
common representative of all the applicants. 
90.3    Effects of Acts by or in Relation to Agents and Common 
     Representatives 
(a)   Any act by or in relation to an agent shall have the effect of an 
act  by or in relation to the applicant or applicants concerned. 



(b)   If there are two or more agents representing the same applicant or 
applicants,  any act by or in relation to any of those agents shall have 
the effect of an  act by or in relation to the said applicant or applicants. 

(c)   Subject to Rule 90bis.5(a), second sentence, any act by or in 
relation  to a common representative or his agent shall have the effect of 
an act by  or in relation to all the applicants. 

90.4    Manner of Appointment of Agent or Common 
        Representative 

(a)   The appointment of an agent shall be effected by the applicant 
signing  the request, the demand, or a separate power of attorney. Where 
there are two  or more applicants, the appointment of a common agent or 
common representative  shall be effected by each applicant signing, at his 
choice, the request, the  demand or a separate power of attorney. 

(b)   Subject to Rule 90.5, a separate power of attorney shall be 
submitted  to either the receiving Office or the International Bureau, 
provided that,  where a power of attorney appoints an agent under Rule 
90.1(b), (c), or (d)(ii),  it shall be submitted to the International 
Searching Authority or the International  Preliminary Examining Authority, 
as the case may be. 

(c)   If the separate power of attorney is not signed, or if the required 
separate  power of attorney is missing, or if the indication of the name 
or address of  the appointed person does not comply with Rule 4.4, the 
power of attorney shall  be considered nonexistent unless the defect is 
corrected. 

90.5  General Power of Attorney 

(a)   Appointment of an agent in relation to a particular international 
application  may be effected by referring in the request, the demand, or a 
separate notice  to an existing separate power of attorney appointing that 
agent to represent  the applicant in relation to any international 
application which may be filed  by that applicant (i.e., a "general power 
of attorney"), provided that: 
(i)   the general power of attorney has been deposited in accordance with 
paragraph 
(b), and 

(ii)    a copy of it is attached to the request, the demand or the 
separate  notice, as the case may be;  that copy need not be signed. 

(b)   The general power of attorney shall be deposited with the receiving 
Office,  provided that, where it appoints an agent under Rule 90.1(b), 
(c), or (d)(ii),  it shall be deposited with the International Searching 
Authority or the International  Preliminary Examining Authority, as the 
case may be. 

90.6    Revocation and Renunciation 

(a)   Any appointment of an agent or common representative may be revoked 
by  the persons who made the appointment or by their successors in title, 
in which  case any appointment of a sub-agent under Rule 90.1(d) by that 
agent shall  also be considered as revoked. Any appointment of a subagent 
under Rule 90.1(d)  may also be revoked by the applicant concerned. 

(b)   The appointment of an agent under Rule 90.1(a) shall, unless 
otherwise  indicated, have the effect of revoking any earlier appointment 
of an agent  made under that Rule. 

(c)   The appointment of a common representative shall, unless otherwise 
indicated,  have the effect of revoking any earlier appointment of a 
common representative. 
(d)   An agent or a common representative may renounce his appointment by 
a  notification signed by him. 

(e)   Rule 90.4(b) and (c) shall apply, mutatis mutandis, to a document 
containing  a revocation or renunciation under this Rule. 

Rule 90bis 

Withdrawals 

90bis.1       Withdrawal of the International Application 

(a)   The applicant may withdraw the international application at any time 
 prior to the expiration of 20 months from the priority date or, where 
Article  39(1) applies, prior to the expiration of 30 months from the 
priority date. 
(b)   Withdrawal shall be effective on receipt of a notice addressed by 
the  applicant, at his option, to the International Bureau, to the 
receiving Office  or, where Article 39(1) applies, to the International 
Preliminary Examining  Authority. 

(c)   No international publication of the international application shall 
be  effected if the notice of withdrawal sent by the applicant or 
transmitted by  the receiving Office or the 

International Preliminary Examining Authority reaches the International 
Bureau  before the technical preparations for international publication 
have been completed. 
90bis.2       Withdrawal of Designations 

(a)   The applicant may withdraw the designation of any designated State 
at  any time prior to the expiration of 20 months from the priority date 
or, where  Article 39(1) applies in respect of that State, prior to the 
expiration of  30 months from the priority date. Withdrawal of the 
designation of a 
State which has been elected shall entail withdrawal of the corresponding 
election  under Rule 90bis.4. 

(b)   Where a State has been designated for the purpose of obtaining both 
a  national patent and a regional patent, withdrawal of the designation of 
that  State shall be taken to mean withdrawal of only the designation for 
the purpose  of obtaining a national patent, except where otherwise 
indicated. 
(c)   Withdrawal of the designations of all designated States shall be 
treated  as withdrawal of the international application under Rule 
90bis.1. 


(d)   Withdrawal shall be effective on receipt of a notice addressed by 
the  applicant, at his option, to the International Bureau, to the 
receiving Office  or, where Article 39(1) applies, to the International 
Preliminary Examining  Authority. 

(e)   No international publication of the designation shall be effected if 
 the notice of withdrawal sent by the applicant or transmitted by the 
receiving  Office or the International Preliminary Examining Authority 
reaches the International  Bureau before the technical preparations for 
international publication have  been completed. 

90bis.3       Withdrawal of Priority Claims 

(a)   The applicant may withdraw a priority claim, made in the 
international  application under Article 8(1), at any time prior to the 
expiration of 20 months  from the priority date or, where Article 39(1) 
applies, 30 months from the  priority date. 

(b)   Where the international application contains more than one priority 
claim,  the applicant may exercise the right provided for in paragraph (a) 
in respect  of one or more or all of the priority claims. 

(c)   Withdrawal shall be effective on receipt of a notice addressed by 
the  applicant, at his option, to the International Bureau, to the 
receiving Office  or, where Article 39(1) applies, to the International 
Preliminary Examining  Authority. 

(d)   Where the withdrawal of a priority claim causes a change in the 
priority  date, any time limit which is computed from the original 
priority date and  which has not already expired shall, subject to 
paragraph (e), be computed  from the priority date resulting from that change. 

(e)   In the case of the time limit referred to in Article 21(2)(a), the 
International  Bureau may nevertheless proceed with the international 
publication on the basis  of the said time limit as computed from the 
original priority date if the notice  of withdrawal sent by the applicant 
or transmitted by the receiving Office  or the International Preliminary 
Examining Authority reaches the International  Bureau after the completion 
of the technical preparations for international  publication. 

90bis.4       Withdrawal of the Demand, or of Elections 

(a)   The applicant may withdraw the demand or any or all elections at any 
 time prior to the expiration of 30 months from the priority date. 
(b)   Withdrawal shall be effective upon receipt of a notice addressed by 
the  applicant to the International Bureau. 

(c)   If the notice of withdrawal is submitted by the applicant to the 
International  Preliminary Examining Authority, that Authority shall mark 
the date of receipt  on the notice and transmit it promptly to the 
International Bureau.  The notice  shall be considered to have been 
submitted to the International Bureau on the  date marked. 

90bis.5       Signature 

(a)   Any notice of withdrawal referred to in Rules 90bis.1 to 90bis.4 
shall,  subject to paragraph (b), be signed by the applicant. Where one of 
the applicants  is considered to be the common representative under Rule 
90.2(b), such notice  shall, subject to paragraph (b), require the 
signature of all the applicants. 
(b)   Where two or more applicants file an international application which 
 designates a State whose national law requires that national applications 
be  filed by the inventor and where an applicant for that designated State 
who  is an inventor could not be found or reached after diligent effort, a 
notice  of withdrawal referred to in Rules 90bis.1 to 90bis.4 need not be 
signed by  that applicant ("the applicant concerned") if it is signed by 
at least one  applicant and 

(i) a statement is furnished explaining, to the satisfaction of the 
receiving  Office, the International Bureau, or the International 
Preliminary Examining  Authority, as the case may be, the lack of 
signature of the applicant concerned,  or 

(ii) in the case of a notice of withdrawal referred to in Rule 90bis.1(b), 
 90bis.2(d), or 90bis.3(c), the applicant concerned did not sign the 
request  but the requirements of Rule 4.15(b) were complied with, or 

(iii) in the case of a notice of withdrawal referred to in Rule 
90bis.4(b),  the applicant concerned did not sign the demand but the 
requirements of Rule  53.8(b) were complied with, or did not sign the 
later election concerned but  the requirements of Rule 56.1(c) were 
complied with. 

90bis.6       Effect of Withdrawal 

(a)   Withdrawal under Rule 90bis of the international application, any 
designation,  any priority claim, the demand or any election shall have no 
effect in any  designated or elected Office where the processing or 
examination of the international  application has already started under 
Article 23(2) or Article 40(2). 
(b)   Where the international application is withdrawn under Rule 90bis.1, 
 the international processing of the international application shall be 
discontinued. 
(c)   Where the demand or all elections are withdrawn under Rule 90bis.4, 
the  processing of the international application by the International 
Preliminary  Examining Authority shall be discontinued. 

90bis.7       Faculty under Article 37(4)(b) 

(a)   Any Contracting State whose national law provides for what is 
described  in the second part of Article 37(4)(b) shall notify the 
International Bureau  in writing. 

(b)   The notification referred to in paragraph (a) shall be promptly 
published  by the International Bureau in the Gazette, and shall have 
effect in respect  of international applications filed more than one month 
after the date of such  publication. 



Rule 91 

Obvious Errors in Documents 

91.1    Rectification 

(a)   Subject to paragraphs (b) to (gquater), obvious errors in the 
international  application or other papers submitted by the applicant may 
be rectified. 
(b)   Errors which are due to the fact that something other than what was 
obviously  intended was written in the international application or other 
paper shall  be regarded as obvious errors. The rectification itself shall 
be obvious in  the sense that anyone would immediately realize that 
nothing else could have  been intended than what is offered as rectification. 

(c)   Omissions of entire elements or sheets of the international 
application,  even if clearly resulting from inattention, at the stage, 
for example, of copying  or assembling sheets, shall not be rectifiable. 

(d)   Rectification may be made on the request of the applicant. The 
authority  having discovered what appears to be an obvious error may 
invite the applicant  to present a request for rectification as provided 
in paragraphs (e) to (g-quater).  Rule 26.4(a) shall apply mutatis 
mutandis to the manner in which rectifications  shall be requested. 

(e)   No rectification shall be made except with the express 
authorization: 
(i)   of the receiving Office if the error is in the request, 

(ii)    of the International Searching Authority if the error is in any 
part  of the international application other than the request or in any 
paper submitted  to that Authority, 

(iii) of the International Preliminary Examining Authority if the error is 
 in any part of the international application other than the request or in 
any  paper submitted to that Authority, and 

(iv) of the International Bureau if the error is in any paper, other than 
the  international application or amendments or corrections to that 
application,  submitted to the International Bureau. 

(f)   Any authority which authorizes or refuses any rectification shall 
promptly  notify the applicant of the authorization or refusal and, in the 
case of refusal,  of the reasons therefor. The authority which authorizes 
a rectification shall  promptly notify the International Bureau 
accordingly. Where the authorization  of the rectification was refused, 
the International Bureau shall, upon request  made by the applicant prior 
to the time relevant under paragraph (gbis), (gter),  or (gquater) and 
subject to the payment of a special fee whose amount shall  be fixed in 
the Administrative Instructions, publish the request for rectification 
together with the international application. A copy of the request for 
rectification  shall be included in the communication under Article 20 
where a copy of the  pamphlet is not used for that communication or where 
the international application  is not published by virtue of Article 64(3). 

(g)   The authorization for rectification referred to in paragraph (e) 
shall,  subject to paragraphs (gbis), (gter), and (gquater), be effective: 
(i) where it is given by the receiving Office or by the International 
Searching  Authority, if its notification to the International Bureau 
reaches that Bureau  before the expiration of 17 months from the priority 
date; 

(ii) where it is given by the International Preliminary Examining 
Authority,  if it is given before the establishment of the international 
preliminary examination  report; 

(iii) where it is given by the International Bureau, if it is given before 
 the expiration of 17 months from the priority date. 

(gbis)      If the notification made under paragraph (g)(i) reaches the 
International  Bureau, or if the rectification made under paragraph 
(g)(iii) is authorized  by the International Bureau, after the expiration 
of 17 months from the priority  date but before the technical preparations 
for international publication have  been completed, the authorization 
shall be effective and the rectification  shall be incorporated in the 
said publication. 

(gter)      Where the applicant has asked the International Bureau to 
publish  his international application before the ex- 

piration of 18 months from the priority date, any notification made under 
paragraph 
(g)(i) must reach, and any rectification made under paragraph (g)(iii) 
must  be authorized by, the International Bureau, in order for the 
authorization  to be effective, not later than at the time of the 
completion of the technical  preparations for international publication. 

(gquater) Where the international application is not published by virtue 
of  Article 64(3), any notification made under paragraph (g)(i) must 
reach, and  any rectification made under paragraph (g)(iii) must be 
authorized by, the  International Bureau, in order for the authorization 
to be effective, not later  than at the time of the communication of the 
international application under  Article 20. 

Rule 92 

Correspondence 

92.1    Need for Letter and for Signature 

(a)   Any paper submitted by the applicant in the course of the 
international  procedure provided for in the Treaty and these Regulations, 
other than the  international application itself, shall, if not itself in 
the form of a letter,  be accompanied by a letter identifying the 
international application to which  it relates. The letter shall be signed 
by the applicant. 

(b)   If the requirements provided for in paragraph (a) are not complied 
with,  the applicant shall be informed as to 



the noncompliance and invited to remedy the omission within a time limit 
fixed  in the invitation. The time limit so fixed shall be reasonable in 
the circumstances;  even where the time limit so fixed expires later than 
the time limit applying  to the furnishing of the paper (or even if the 
latter time limit has already  expired), it shall not be less than 10 days 
and not more than one month from  the mailing of the invitation. If the 
omission is remedied within the time  limit fixed in the invitation, the 
omission shall be disregarded; otherwise,  the applicant shall be informed 
that the paper has been disregarded. 
(c)   Where noncompliance with the requirements provided for in paragraph 
(a)  has been overlooked and the paper taken into account in the 
international procedure,  the non-compliance shall be disregarded. 

92.2  Languages 

(a)   Subject to Rules 55.1 and 66.9 and to paragraph (b) of this Rule, 
any  letter or document submitted by the applicant to the International 
Searching  Authority or the International Preliminary Examining Authority 
shall be in  the same language as the international application to which 
it relates. However,  where a translation of the international application 
has been transmitted under  Rule 12.1(c) or furnished under Rule 55.2(a) 
or (c), the language of such translation  shall be used. 

(b)   Any letter from the applicant to the International Searching 
Authority  or the International Preliminary Examining Authority may be in 
a language other  than that of the international application, provided the 
said Authority authorizes  the use of such language. 

(c)     [Deleted] 

(d)   Any letter from the applicant to the International Bureau shall be 
in  English or French. 

(e)   Any letter or notification from the International Bureau to the 
applicant  or to any national Office shall be in English or French. 

92.3    Mailings by National Offices and Intergovernmental 
Organizations 
Any document or letter emanating from or transmitted by a national Office 
or  an intergovernmental organization and constituting an event from the 
date of  which any time limit under the Treaty or these Regulations 
commences to run  shall be sent by air mail, provided that surface mail 
may be used instead of  air mail in cases where surface mail normally 
arrives at its destination within  two days from mailing or where air mail 
service is not available. 

92.4  Use of Telegraph, Teleprinter, Facsimile Machine, Etc. 

(a)   A document making up the international application, and any later 
document  or correspondence relating thereto, may, notwithstanding the 
provisions of  Rules 11.14 and 92.1(a), but subject to paragraph (h), be 
transmitted, to the  extent feasible, by telegraph, teleprinter, facsimile 
machine, or other like  means of communication producing a printed or 
written document. 

(b)   A signature appearing on a document transmitted by facsimile machine 
 shall be recognized for the purposes of the Treaty and these Regulations 
as  a proper signature. 

(c)   Where the applicant has attempted to transmit a document by any of 
the  means referred to in paragraph (a) but part or all of the received 
document  is illegible or part of the document is not received, the 
document shall be  treated as not having been received to the extent that 
the received document  is illegible or that the attempted transmission 
failed.  The national Office  or  intergovernmental organization shall 
promptly notify the applicant accordingly. 
(d)   Any national Office or intergovernmental organization may require 
that  the original of any document transmitted by any of the means 
referred to in  paragraph (a) and an accompanying letter identifying that 
earlier transmission  be furnished within 14 days from the date of the 
transmission, provided that  such requirement has been notified to the 
International Bureau and the International  Bureau has published 
information thereon in the Gazette.  The notification  shall specify 
whether such requirement concerns all or only certain kinds of  documents. 

(e)   Where the applicant fails to furnish the original of a document as 
required  under paragraph (d), the national Of- 

fice or intergovernmental organization concerned may, depending on the 
kind  of document transmitted and having regard to Rules 11 and 26.3, 

(i)   waive the requirement under paragraph (d), or 

(ii)    invite the applicant to furnish, within a time limit which shall 
be  reasonable under the circumstances and shall be fixed in the 
invitation, the  original of the document transmitted, provided that, 
where the document transmitted  contains defects, or shows that the 
original contains defects, in respect of  which the national Office or 
intergovernmental organization may issue an invitation  to correct, that 
Office or organization may issue such an invitation in addition  to, or 
instead of, proceeding under item (i) or (ii). 

(f)   Where the furnishing of the original of a document is not required 
under  paragraph (d) but the national Office or intergovernmental 
organization considers  it necessary to receive the original of the said 
document, it may issue an  invitation as provided for under paragraph (e)(ii). 



(g)   If the applicant fails to comply with an invitation under paragraph 
(e)(ii)  or (f): 

(i)   where the document concerned is the international application, the 
latter  shall be considered withdrawn and the receiving Office shall so 
declare; 
(ii)    where the document concerned is a document subsequent to the 
international  application, the document shall be considered as not having 
been submitted. 
(h)   No national Office or intergovernmental organization shall be 
obliged  to receive any document submitted by a means referred to in 
paragraph (a) unless  it has notified the International Bureau that it is 
prepared to receive such  a document by that means and the International 
Bureau has published information  thereon in the Gazette. 

Rule 92bis 

Recording of Changes in Certain Indications 
in the Request or the Demand 

92bis.1       Recording of Changes by the International Bureau 

(a)   The International Bureau shall, on the request of the applicant or 
the  receiving Office, record changes in the following indications 
appearing in  the request or demand: 

(i)   person, name, residence, nationality, or address of  the applicant, 
(ii)    person, name, or address of the agent, the common representative, 
or  the inventor. 

(b)   The International Bureau shall not record the requested change if 
the  request for recording is received by it after the expiration: 

(i)   of the time limit referred to in Article 22(1), where Article 39(1) 
is  not applicable with respect to any Contracting State; 

(ii)    of the time limit referred to in Article 39(1)(a), where Article 
39(1)  is applicable with respect to at least one Contracting State. 

Rule 93 

Keeping of Records and Files 

93.1      The Receiving Office 

Each receiving Office shall keep the records relating to each 
international  application or purported international application, 
including the home copy,  for at least 10 years from the international 
filing date or, where no international  filing date is accorded, from the 
date of receipt. 

93.2      The International Bureau 

(a)   The International Bureau shall keep the file, including the record 
copy,  of any international application for at least 30 years from the 
date of receipt  of the record copy. 

(b)   The basic records of the International Bureau shall be kept 
indefinitely. 
93.3    The International Searching and Preliminary Examining 
     Authorities 
Each International Searching Authority and each International Preliminary 
Examining  Authority shall keep the file of each international application 
it receives  for at least 10 years from the international filing date. 

93.4    Reproductions 

For the purposes of this Rule, records, copies, and files shall also mean 
photographic  reproductions of records, copies, and files, whatever may be 
the form of such  reproductions (microfilms or other). 

Rule 94 

Furnishing of Copies by the International Bureau and the International 
Preliminary  Examining Authority 

94.1    Obligation To Furnish 

At the request of the applicant or any person authorized by the applicant, 
 the International Bureau and the International Preliminary Examining 
Authority  shall furnish, subject to reimbursement of the cost of the 
service, copies  of any document contained in the file of the applicant's 
international application  or purported international application. 

Rule 95 

Availability of Translations 

95.1  Furnishing of Copies of Translations 

(a)   At the request of the International Bureau, any designated or 
elected  Office shall provide it with a copy of the 

translation of the international application furnished by the applicant to 
 that Office. 

(b)   The International Bureau may, upon request and subject to 
reimbursement  of the cost, furnish to any person copies of the 
translations received under  paragraph (a). 

Rule 96 

The Schedule of Fees 

96.1    Schedule of Fees Annexed to Regulations 

The amounts of the fees referred to in Rules 15 and 57 shall be expressed 
in  Swiss currency. They shall be specified in the Schedule of Fees which 
is annexed  to these Regulations and forms an integral part thereof. 









                SCHEDULE OF FEES 

Fees                                    Amounts 

1.  Basic Fee: 
        (Rule 15.2(a)) 


(a)   if the international application 
contains not more than 30 sheets                762     Swiss francs 
(b)   in the international application 
contains more than 30 sheets            762   Swiss francs plus 14 Swiss 
francs  for 
                                        each sheet in excess of 30 sheets 
2.  Designation Fee: 
        (Rule 15.2(a)) 


(a)   for designations made under 
Rule 4.9(a)         185       Swiss francs per designation, provided that any 
                                        designation made under Rule 4.9(a) 
 in excess of 10 
                                        shall not require the payment of a 
 designation fee 

(b)   for designations made under 
Rule 4.9(b) and confirmed under 
Rule 4.9(c)         185       Swiss francs per designation 

3.  Confirmation Fee: 
        (Rule 15.5(a))                  50%   of the sum of the 
designation  fees payable under item 2(b) 


4.  Handling Fee: 
        (Rule 57.2(a))                  233   Swiss francs 













A 

Abandonment of IA as to USPTO       37 CFR 1.494(g) 

37 CFR 1.495(h) 

Abbreviated expressions used in IA 

Meaning of  A.I. 101 

37 CFR 1.401 

Codes/Indications               A.I. 115 

Abstract                        Rule 8 

Amendment by ISA in response to applicant's 
        comments                                        A.I. 515 

Missing or defective            Rule 38 

U.S. Rule regarding   37 CFR 1.438 

Absence of quorum in assembly, voting       Rule 25 

Additional (new) matter in request, 
        deletion of         A.I. 303 

Addresses of applicants, inventors and agents      Rule 4.4 

Administrative instructions - scope, source, entry 
        into force      Rule 89 

Administrative provisions of the PCT 

Assembly                        Art. 53 

Committee for technical cooperation         Art. 56 

Executive committee         Art. 54 

Finances                        Art. 57 

International bureau            Art. 55 

Regulations         Art. 58 

Agent 

See also Common representative 

See also Representative 

``Applicant" encompasses the term ``agent" in 
        certain situations      Rule 2.1 

Appointment of          Rule 90.1 

Changes, recording of by IB         Rule 93bis.1 

In general      Rule 2.2 

Rule 4.7 

Rule 90 

Indications concerning, 
        In demand   Rule 53.2 

Rule 53.5 

        In request      Art. 4 

Rule 4.1 

Rule 4.7 

National law requirements   Art. 27 

Rule 51bis.1b 

Notice of change of agent sent to IB            A.I. 328 

Notice of change of agent sent from IB  to ISA 
        and IPEA                A.I. 425 

Notice of change of agent sent from ISA to IB. . .A.I. 512 

Notice of change of agent sent from IPEA to IB . . A.I. 608 

Agent-Con. 

Right of agent to practice before international 
        authorities         Art. 49 

Amendment 

Copy of amendment  under Article 19  for IPEA . . Rule 62 

Copy of amendment under Article 19 sent 
        (communicated) to DO            Art. 20 

Rule 47.1(b) 

Definition of, before IPEA      Rule 66.5 

Form of, before IPEA            Rule 66.8 

Language of, before IPEA                Rule 66.9 

Processing of Article 19 amendment by IB        A.I. 417 

Processing of by IPEA       A.I. 602 

Of abstract by ISA      A.I. 515 

Of claims, description, and drawing before DO     Rule 52 

Of claims before IB         Art. 19 

Rule 46 

Of claims before IPEA       Art. 34 

37 CFR 1.485 

Of claims before the elected Office         Art. 41 

Rule 78 

Of claims 
        Numbering and identification in amendment . .A.I. 205 

Of description before IPEA      Art. 34 

37 CFR 1.485 

Of description before elected Office            Art. 41 

Rule 78 

Of drawing before elected Office                Art. 41 

Rule 78 

Of drawing before IPEA          Art. 34 

37 CFR 1.485 

Of certain PCT provisions   Art. 61 

        See also Revision of PCT 

Of PCT regulations      Rule 88 

Art. 58 

Sheet(s) - processing of by receiving Office      A.I. 309 

Applicant 

Different applicants for different designated states . .Rule 4.5 

A.I. 203 

Entitled to make a demand   Art. 31(2) 

Rule 54 

First named used to identify international 
        application         A.I. 105 

Improper, in U.S. national stage                35 USC 373 

In general      Art. 9 

Rule 2.1 

Rule 4.5 

Rule 18 

Recording by IB of changes regarding applicant . .Rule 92bis 



Applicant-Con. 

U.S. regulation regarding   37 CFR 1.421 

Application - See also International application 

Assembly of PCT contracting states      Art 53 

Executive committee established by      Art. 54 

Assignment 

Of IA, possible requirement to furnish to a 
        national Office       Rule 51bis.1 

Recording by USPTO if U.S. is a designated 
        country in the IA . . . . . .37 CFR 3.21 

Authorized officer      Rule 43,8 

 Rule 70.14 

 A.I. 514 

  A.I. 612 

Availability of translation of IA to IB             Rule 95 

B 

Biological invention, See also 

Microbiological invention 

Nucleotide or amino acid sequence listing 

Sequence listing 

C 

Calendar (Gregorian to express dates)     Rule 79 

See also Dates 

Changes in person, name or address of applicants 
        and inventors (U.S. requirements) 37 CFR 1.472 

Check list (In request) 

Re documents filed with IA      Rule 3.3 

Necessary annotations by RO         A.I. 313 

Citations (proper) of documents in the ISR  A.I. 503 

Claims 

Amendment before EO         Art. 41 

Amendment before IB         Art. 19 

  Rule 46 

Amendment before IPEA       Art. 34 

Rule 66.4 

Rule 66.8 

In general      Art. 6 

   Rule 6 

Numbering and identification upon amendment . . A.I. 205 

United States regulation regarding      37 CFR 1.436 

Classification of IA subject matter         A.I. 504 

Committee established by assembly of states   Art. 56 

Common representative       Rule 2.2bis 

Rule 90.2 

Change of A.I. 106 

Notice of change sent from RO to IB         A.I. 328 

Notice of change sent from IB to RO, 

ISA, & IPEA   A.I. 425 

Common representative-Con. 

Notice of change sent by ISA to IB      A.I. 512 

Notice of change sent by IPEA to IB         A.I. 608 

Communication 

From IB, of IA, ISR, or any Article 17(2)(a) 
        determination and indication that no search 
        will be established, to each DO       Art. 20 

  Rule 47 

Communication transmitted electronically        A.I. 114 

Competent international preliminary examining 
        authority   Rule 59 

Competent international searching authority   Art. 16 

 Rule 35 

Competent receiving Office  Art. 11(1)(i) 

 Rule 19 

Confidential nature 
        Of IA       Art. 30 

        Of IPE          Art. 38 

Confirmation copy of facsimile transmission 
        (N/A in US)         Rule 92.4 

 A.I. 331 

Confirmation by RO of designation 
        necessary annotations by RO         Rule 4.9(b) 

Rule 4.9(c) 

A.I. 315 

Continuation or continuation-in-part, IA treated 
        as in any designated state      Rule 4.14 

Copies 
        In general, by IB or IPEA, upon request       Rule 94 

        Making home copy and search copy from 
                original IA (record copy) by RO             Rule 21 
        Identifying RC, SC, and HC by RO        A.I. 305 

Correction of request by RO ex officio      A.I. 327 

Corrections and amendments during international 
        processing.   Rule 26.4 

Rule 46 

37 CFR 1.471 

Correspondence 
        For applicant, to whom sent         A.I. 108 

        In general  Rule 92 

D 

Dates (using Gregorian calendar)                Rule 79 

Format of, in IA                A.I. 110 

Deadlines (See also Time limit) 

Applicable to Applicants 

(1) Before the RO 

After which applicant can request RO to  certify 
copy of IA as identical with IA as filed and 
applicant can send certified copy to IB 
(14 months from PD)   Rule 22.1 



Deadlines (See also Time limit)-Con. 

To correct Article 14(1) defects in IA      Art. 14(1)b 

(e.g., IA is not properly signed, does not 
contain proper indications re applicant, 
has no title, has no abstract, does not 
comply with physical requirements 
in Rule 11)         Rule 26.2 

Extensions of time available    Rule 26.2 

Sanction: RO declares IA withdrawn 
under Rule 29 

To correct defects under Article 11 to 
obtain an international filing date   Art. 11(2) 

Rule 20.6 

Sanctions: International filing date given IA 
when Article 11(1) defect is corrected in 
time set by RO; but RO declares IA 
withdrawn if not corrected within time set. 

To provide missing drawings (30 days)     Art. 14(2) 

Rule 26.2 

37 CFR 1.437 

Extensions of time available    Rule 26.2 

Sanction: Drawings considered nonexistent 

To pay deficiencies in transmittal fee 
(Rule 14), international basic fee 
(Rule 15.1(i)), search fee (Rule 16), 
late payment fee (Rule 16bis.2)         Art. 14(3) 

Rule 16bis.1 

37 CFR 1.431 

 Extension of time - One month set by RO 
when RO finds deficiency        Rule 16bis.1 

Sanction: RO declares IA withdrawn 
under Rule 29. 

To pay deficiencies in the transmittal fee, 
basic fee (incl. suppl. for over 30 pages) 
or search fee when RO finds discrepancies 
before fees are due   A.I. 304(b) 

To pay deficiencies in designation fees       Art. 14(3) 

Rule 26.2 

37 CFR 1.432 

Extensions of time available    Rule 26.2 

Sanction:  Appropriate  designations  withdrawn 

To pay deficiencies in designation fees when 
RO finds discrepancies before fees are 
due         A.I. 304(b) 

  Rule 30 

  (2) Before the ISA 

To amend claims under Article 19 before IB 
within two months of date of transmittal 
 of ISR to IB, or 16 months from priority 
 date           Rule 46.1 

Deadlines (See also Time limit)-Con. 

To amend claims under Article 19 - latest 
of 2 months from date ISR sent to IB 
 and Applicant or 16 months from PD 
or if amendment reaches IB before 
completion of technical preparations 
for international publication     Rule 46.1 

To submit priority document, unless 
already filed with RO together with IA, 
to IB or  RO not later than 16 months 
after PD, or where DO processes IA at 
any time on express request of 
applicant (Art. 23(2)), not later than 
date processing or  examination is 
requested       Rule 17.1 

Where lack of unity of invention is held, 
time limit of between 15 and 45 days 
set to pay additional fees to have 
additional inventions searched      Art. 17(3) 

Rule 40.3 

37 CFR 1.476 

  (3) Before the IPEA 

To amend claims, description, or drawings 
 under Article 34 before the IPE        Rule 66 

37 CFR 1.485 

To amend claims, description, or 
drawings under Article 34 before the 
IPEA at time of filing demand or, subject to 
Rule 66.4bis, until IPER is established . . . Rule 66.1 

Rule 66.4bis 

To correct defects in demand upon 
invitation within a time limit not less 
than 1 month and which may be 
extended by IPEA before a decision 
is made                 Rule 60.1 

To correct later elections not complying 
 with Rule 56 within a time limit not 
less than 1 month and which may be 
extended by  IPEA before a decision 
is made                 Rule 60.2 

To provide translation of priority 
document upon invitation by IPEA 
within 2 months  of invitation date   Rule 66.7 

To respond (including Article 34 
amendments) to a written opinion 
within time set therein  (not less 
than 1 month)       Rule 66.2 



Deadlines (See also Time limit)-Con. 

Rule 66.2 permits response time 
set in written opinion to be from 
1 month to 3 months (plus 
extensions)         Rule 66.2 

37 CFR 1.484 permits response time 
set in written opinion to be from 1 
 to 2  months with no extensions 
possible                37 CFR 1.484 

Where lack of unity of invention is 
held by IPEA, time limit of 
between 1 and 2 months set to pay 
additional fees to have additional 
inventions searched   Art. 34(3) 

Rule 68.2 

37 CFR 1.488 

When filing a demand for IPE, 
must pay handling fee at time 
demand filed or within the 1 month 
deadline set when IPEA invites 
applicant to pay the fee        Rule 57 

Sanction: IPEA considers IA withdrawn 

When seeking IPE, preliminary 
examination fee must be paid at 
time demand filed or within the 1 
month deadline set when IPEA invites 
applicant to pay the fee        Rule 58.2 

Sanction: IPEA considers IA withdrawn 

(4) Before the DO/EO 

To enter the national stage under 
35 USC 371 where U.S.A. is DO     37 CFR 1.494 

To enter the National Stage under 
 35 USC 371 where the U.S.A. 
 is EO                  37 CFR 1.495 

To amend claims, description, or drawing 
under Article 28 before the DO      Rule 52 

For amendment of claims, description, 
or drawings before EO (varies)      Rule 78 

Applicable to the RO 

For RO to check certain elements (request 
is signed, has indications re applicant, 
has an abstract, meets physical 
requirements of Rule 11) of IA      Rule 26.1 

For RO to transmit record copy to IB 
 (normally 13 months or earlier, unless 
  failure to obtain national security 
  clearance obtained)     Rule 22 

For RO to transmit search copy 
to ISA                  Rule 23 

Deadlines (See also Time limit)-Con. 

Applicable to the IB 

IB shall promptly notify each EO of 
receipt and date of receipt, of any 
later election, and will be sent along 
with the Article 20 communication 
(of the IA, ISR, Article 19 amendments), 
if possible             Rule 61.2 

For IB to notify applicant, RO, ISA 
(unless it declined to be notified) and 
DO (if it asked to be notified) of fact 
and date  receipt of record copy of IA      Rule 24 

International publication of IA promptly 
after expiration of 18 months from PD, 
unless earlier publication requested 
under Articles 21(2)(b) and 64(3)(c)(i)       Art. 21 

 Rule 48 

Applicable to the ISA 

For ISA to establish the ISR 
(or declaration that the subject 
 matter  is not required to be searched 
or is unsearchable as per Article 
17(2)) - the later of 3 months from date 
of  receipt of SC by ISA or 9 months 
from priority date  Rule 42 

Applicable to the IPEA 

For IPEA to establish the IPER (28 
months from PD if demand was filed 
prior to expiration of 19 months from 
PD; or 9 months from start of IPE if 
demand filed after expiration of 19 
months from PD      Rule 69.2 

For IPEA to start IPE (may start as 
early as international search but no later 
than 20 months from PD)       Rule 69.1 

IPEA shall promptly notify applicant 
of  receipt of the demand Rule 61.1 

Deceased inventor (U.S. Rule)       37 CFR 1.422 

Defects 

Correction 

Processing by IB        A.I. 413 

Of indications re applicant's residence 
or nationality      A.I. 329 

Of request, ex officio, by RO     A.I. 327 

Of obvious defects, by RO A.I. 325 

IA held withdrawn because of failure to correct 
certain defects       Rule 29.1 



Deadlines (See also Time limit)-Con. 

In abstract         Rule 38 

In certain original documents submitted to 
national Office       Rule 92.4 

In demand   Rule 60.1 

In drawings furnished to DO under Rule 49.5, 
possibly permitting correction by invitation . . Rule 49.5(g) 

In later election Rule 60.2 

In power of attorney - consequences         Rule 90.4(c) 

In the title            Rule 37 

Invitation to correct Article 14(1)(b) defects . . Rule 26.3bis 

Invitation to correct Article 3(4)(i) 
defects             Rule 26.3ter 

Mentioned in IPER Rule 90.12 

Noted by IB             Rule 28 

Definition of PCT terms                 Art. 2 


    37 CFR 1.401 

Delays in meeting time limits, excuse of        Rule 82 

37 CFR 1,468 

Demand for international preliminary 
        examination 

Applicant entitled to make demand   Rule 54 

Copy sent by IPEA to IB             Rule 61.1 

Defects in  Rule 60.1 

Evidence of right to file demand                A.I. 614 

In general  Art. 31 

Rule 53 

Not considered to have been made: 
        Notification by IB to elected offices     A.I. 418 

Notice sent by IPEA re filing after 19 months 
from priority date      A.I. 601 

Publication of notice of demand filed prior to 
19 months from priority date            Rule 61.4 

Recording by IB of changes:         Rule 92bis 

        Notifications regarding this sent by IB       A.I. 422 

United States regulation regarding      37 CFR 1.480 

Deposited microorganism 

Indications on separate sheet     Rule 13bis 

A.I. 209 

Description 

Amendment before IPEA       Art. 34 

Amendment before EO         Art. 41 

 Rule 78 

Headings for parts of       A.I. 204 

In general      Art. 5 

   Rule 5 

Of nucleotide/amino acid sequence   Rule 5.2 

Rule 13ter 

37 CFR 1.821 

United States regulations regarding         37 CFR 1.435 

Design  -  not mentioned as subject matter 
        for IA          Art. 2(i) 

  A.I. 202 

Designated Office 

Amendment of claims, description, and drawings 
before DO   Art. 28 

Communication of IA, ISR, or declaration under 
Article 17(2)(a)                Art. 20 

  Rule 47 

Notification by DO to IB of number of IAs that 
did not enter the national stage timely       A.I. 112 

Opportunity to correct IA before DO         Art. 26 

Review by   Art. 25 

United States regulation regarding      37 CFR 1.415 

Designated states 

Possible loss of effect in      Art. 24 

Withdrawal of/held withdrawn            Art. 24 

  Rule 29 

Designation of States 

Cancellation, ex officio, by IB             A.I. 423 

Cancellation of designations of noncontracting 
States by RO, ex officio        A.I. 318 

Confirmation of precautionary, after expiration 
 of 15 months from priority date - considered               withdrawn 
 Rule  4.9(b) 

Confirmation of precautionary, before expiration 
 of 15 months from priority date                Rule 4.9(b) 

Rule 4.9(c) 

37 CFR 1.432(c) 

Confirmation of precautionary, notification by RO 
 to IB and applicant    A.I. 315 

Considered withdrawn    Rule 29.1(b) 

Notice of designation sent by IB to DO          Rule 24.2(b) 

 A.I. 426 

Publication of notice of confirmation of 
 precautionary designation      A.I. 427 

United States regulation regarding      37 CFR 1.432 

Designation fee             Rule 15 

U.S. regulation regarding payment of    37 CFR 1.432 

Designation fee calculation         A.I. 210 

Diagrams, considered as drawings                Rule 7.1 

Disputes                        Art. 59 

Docket reference (applicant's IA file reference)        A.I. 109 

Documents cited in ISR          A.I. 503 

Documents filed with IA 

Manner of marking necessary annotations 
 in checklist sent to IB by RO with RC of IA    .A.I. 313 

Drawing(s) 

Amendment of, before DO             Art. 34 

Amendment of, before EO             Art. 41 



Drawing(s)-Con. 

Flowsheets and diagrams considered as     Rule 7.1 

In general      Art. 7 

   Rule 7 

Invitation by RO to correct informal drawings     Rule 26 

Missing - RO procedure concerning   A.I. 310 

Time set to file where not necessary to 
understanding of invention      Rule 7.2 

Referred to, but not included in IA         Art. 14(2) 

United States regulation regarding      37 CFR 1.437 


E 

Elected Office 

Notification to IB of number of applications 
filed after national stage deadline         A.I. 112 

United States as                37 CFR 1.414 

Election(s) 

Cancelation of ex officio by IB             A.I. 423(b) 

Cancelation of ex officio by IPEA   A.I. 606 

Later than demand   Rule 56 

Defects in later elections  Rule 60.2 

Not considered made 

Notification by IB to EO        A.I. 418 

Indication of in demand by IPEA       A.I. 606bis 

Errors 

By RO or IB, rectification of     Rule 82ter 

Correction of obvious 

Ex officio by RO        A.I. 325 

 A.I. 327 

Processing by IB        A.I. 413 

Authorization of by IPEA        A.I. 607 

In documents    Rule 91 

In request, ex officio, by RO     A.I. 327 

Ex Officio correction of request by RO      A.I. 327 

Expenses of delegations             Rule 84 

Expressions and language, not to be used        Rule 9 

See also Language prohibited 

Correction of     A.I. 501 

Extension of time (one month) to pay basic fee, 
search fee, designation fee, and transmittal 
fee - under Rules 14, 15, and 16        Rule 16bis 

F 

Fee(s) 

Additional fees per invention where lack of 
unity is found by 

ISA             Art. 17(3) 

  Rule 40 

Fee(s)-Con. 

IPEA                    Art. 34(3) 

  Rule 68 

Application of money received by RO in certain 
cases       A.I. 321 

Associated with request 

Transmittal fee       Rule 14 

United States rule  37 CFR 1.445(a)(1) 

PCT search fee      Rule 16 

No prior U.S. 
application         37 CFR 1.445 (a)(2)(i) 

Prior U.S. national 
application         37 CFR 1.445 (a)(2)(ii) 

International fee Rule 15 

Basic fee (first thirty pages)      Rule 15 

Basic supplemental fee (per page over 30). . . Rule 15 

Designation fee per country (maximum fee 
is ten times single country designation 
fee)                    Rule 96 

37 CFR 1.496(a)(3) 

United States regulation regarding.   37 CFR 1.445 

(Where lack of unity of invention held by 
  ISA, there is a fee for each additional 
  claimed invention)    Art. 17(3) 

  Rule 40 

Associated with demand 

Handling  fee       Rule 57 

(Where lack of unity of invention held 
  by IPEA, there is a fee for each 
  additional claimed invention)             Art. 34(3) 

  Rule 68 

Preliminary examination fee   Rule 58 

ISA was U.S.                    37 CFR 1. 482(a)(2) 

ISA was not U.S             37 CFR 1.482(a)(3) 

United States regulation regarding  37 CFR 1.482 

Confirmation of precautionary 
designation fee             Rule 4.9(c) 

 Rule 15.5 

 Rule 96 

37 CFR 1.445(a)(4) 

Designation fee             Rule 15 

Calculation for national and regional 
        patents       A.I. 210 

Extension of time to pay        Rule 16bis 

U.S. regulation regarding payment of    37 CFR 1.432 

Extension of time (one month) to pay basic fee, 
search fee, designation fee, and transmittal 
fee - under Rules 14, 15, and 16                Rule 16bis 

Handling fee (re demand)                Rule 57 



Fee(s)-Con. 

IA filing, processing, and search fees, 
U.S. regulation       37 CFR 1.445 

International fee (basic and designation)   Rule 15 

International search fee        Rule 16 

37 CFR 1.445(a)(2) 

Invitation by RO to pay before date due             A.I. 304 

Invitation by RO to request search fee refund.      A.I. 322 

Invitation to pay fees          A.I. 320 

Invitation to request refund of fees before 
IPEA                    A.I. 613 

Lack of payment of      Rule 27 

Late payment fee re basic fee, search fee, 

designation fee, and transmittal 
fee - under Rules 14, 15, and 16        Rule 16bis.2 

National stage fee to DO        Art. 22 

U.S. statute regarding      35 USC 376 

U.S. regulation regarding 37 CFR 1.492 

National stage fee to EO        Art. 39 

U.S. statute regarding      35 USC 376 

U.S. regulation regarding 37 CFR 1.492 

Preliminary examination fee   Rule 58 

Refund of IA filing and processing fees             Rule 15.6 

Rule 16.2 

 Rule 40.2(c) 

United States regulation regarding  37 CFR 1.446 

Schedule of fees        Rule 96 

Special fees for publication, payable to the IB        A.I. 113 

Surcharge for filing oath or declaration later 
than 20 months from PD under 37 CFR 1.494(c) 
or later than 30 months from PD under 
37 CfR 1.495(c)       37 CFR 1.492(e) 

Transmittal fee             Rule 14 

37 CFR 1.445(a)(1) 

File (IA) reference (IA docket no. of applicant)        A.I. 109 

On IA sheets            Rule 11.6(f) 

Filing date 

Certificate of US Postal Service 
Express Mail            Rule 20.1 

   37 CFR 1.10 

Of IA           Art. 11 

   35 USC 363 

35 USC 371 

35 USC 102(e) 

37 CFR 1.496 

Finances (budget) of union of PCT states        Art. 57 

Flowsheets, considered as drawings      Rule 7.1 

Form(s) 

Computer generated      A.I. 102 (h) & (i) 

Request             Rule 3.7 

Form(s)-Con. 

Demand          Rule 53.1(a) 

PCT             .A.I. Annex A 

PCT, use of         A.I. 102 

G 

Gazette, PCT            Rule 86 

  A.I. 407 

A.I. Annexes D and E 

Free copies of, to ISA, IPEA, national Office     Rule 87 

H 

Handling fee for IPE (re demand)                Rule 57 

Home copy of IA, preparation of             Rule 21 

  A.I. 305 

I 

Identification 

Of designated Office            A.I. 107 

Of elected Office   A.I. 107 

Of IA having two or  more applicants            A.I. 105 

Of IA file (docket reference by applicant)  A.I. 109 

Of international authorities    A.I. 107 

Indications (two letter codes identifying countries 
   and other entities)          A.I. 115 

Industrial applicability                Art. 34(4) 

Art. 35(2) 

Rule 70.6(b) 

Rule 66.2 

Intellectual property protected under PCT Art. 2(i) 

 A.I. 202 

International application 

Arrangement of contents/elements                A.I. 207 

Availability of, to DO      Art. 13 

Certain defects in      Art. 14 

Checking by RO and correcting parts of 
before RO   Rule 26 

Communicated (sent) to each DO by IB            Art. 20 

 Rule 47 

Confidential nature of IA   Rule 30 

Considered withdrawn            Rule 29 

 Rule 30 

 Rule 49 

Copy of IA sent from IB to IPEA             A.I.  420 

Copy, translation and national fee to EO        Art. 39 


Effect of IA designation of U.S             35 USC 364 

Filing date and effects of      Art. 11 


In general      Art. 3 


International publication number of         A.I. 404 




International application-Con. 

Language of         Rule 12 


Numbering - three sets: one for request, another 
for description, and a third for drawings A.I. 207 

Physical requirements of                Rule 11 

37 CFR 1.433 

Purported IA, notification of receipt of, 
by RO           A.I. 301 

Requirements, U.S. regulation 
regarding       37 CFR 1.431 

Numbering system of IA.       .A.I. 307 

Marking each sheet of IA with     A.I. 308 

Copy of notification of IA number and IA 
 filing and priority date(s) sent to IB . . A.I. 324 

Sheet numbering (separate sets for request, 

description, and drawings)  A.I. 207 

For international publication     A.I. 410 

Sheet(s) 

Cancellation, substitution, addition, 
 renumbering by RO  A.I. 311 

Translation of IA sent by applicant to DO Art. 22 

Transmittal of IA to IB and ISA             Art. 12 

Treated as continuation or continuation-in-part       Rule 4.14 

Withdrawn IA, U.S. statute regarding            35 USC 366 

International Bureau (IB) 

In general      Art. 55 

Patent information services provided by       Art. 50 

U.S. regulation regarding 37 CFR 1.415 

International fee   Rule 15 

International preliminary examination 

Conduct of, in United States            37 CFR 1.484 

Confidential nature of      Art. 38 

Copy, translation and fee for, furnished to 
elected Office          Art. 39 

Delay to enter national stage       Art. 39(1)(a) 

Demand for      Art. 31 

Withdrawal of     Art. 37 

In general      Art. 33 

IPEA                    Art. 32 

IPER                    Art. 35 

 Rule 70 

Communication of IPER     Rule 73 

Guidelines for explanations in      A.I. 604 

Method of identifying documents cited in        A.I. 611 

Start of, and time limit for    Rule 69 

Transmittal, translation, and communication 
 of IPER to applicant and IB    Art. 36 

  Rule 71 

Translation of      Rule 72 

Translation of annexes and transmittal      Rule 74 

International preliminary examination-Con. 

Inventive step          Rule 65 

Art. 33(3) 

Prior art for     Rule 64 

Use of same file for ISA and IPEA A.I. 604 

Written opinion by IPEA       Art. 34 

 Rule 66 

Amendment of claims, description, and 
drawing under Article 34 in response to       Art. 34 

International preliminary examination authority 

Competent IPEA      Rule 59 

In general  Art. 32 

Lack of unity determination   Rule 68 

Minimum requirements for        Rule 63 

Nonexaminable subject matter            Rule 67 

Notification by IPEA of date of receipt of demand 
and of election to IB and applicant   Rule 61.1 

Procedure before        Art. 34 

 Rule 66 

United States statute regarding       35 USC 362 

United States regulation regarding  37 CFR 1.416 

International publication 

By IB of IA   Art. 21 

 Rule 48 

Copies of publications to ISA, IPEA, 
national offices                Rule 87 

Effect of, in United States   35 USC 374 

Number          A.I. 404 

Of IA, effects of Art. 29 

Publication number (WO _________)   A.I. 404 

United States statute regarding       35 USC 362 

United States regulation regarding      37 CFR 1.413 

International search            Art. 15 

Time limit for accomplishing            Rule 42 

International search authority          Art. 16 

Competent Rule 35 

Minimum requirements    Rule 36 

Procedure before        Art. 17 

International search fee                Rule 16 

International search report 

Communicated (sent) from IB to DO Art. 20 

   Rule 47 

Copy of IA provided by IB for ISA   A.I. 420 

Indication of citations of relevance in             A.I. 505 

Indications of special categories of documents 
cited in                A.I. 507 

Indication of claims to which documents are 
relevant                        A.I. 508 

In general      Art. 18 



International search report-Con. 

Method of Identifying documents cited in        A.I. 503 

Subject matter not required to be searched  Rule 39 

Time limit for establishing         Rule 42 

Transmittal of, from ISA to IB          Rule 44 

Translation of ISR      Rule 45 

International-type search   Rule 41.1 

Inventive step          Rule 65 

Art. 33(3) 

Inventions 

Protection available under PCT      Art. 43 

  Art. 44 

  A.I. 202 

Indications of kinds of protection  Rule 4.12 

Inventor(s) 

Correction of     Rule 92bis 

Deceased                        37 CFR 1.422 

Filing of IA designating US by someone 
other than the inventor(s)  37 CFR 1.425 

Incapacitated or insane       37 CFR 1.423 

Joint       37 CFR 1.424 

L 

Lack of unity of invention 

Examples                A.I. Annex B 

In international preliminary examination        Rule 68 

37 CFR 1.488 

37 CFR 1.489 

In international search       Rule 40 

37 CFR 1.475 

37 CFR 1.476 

37 CFR 1.477 

In national stage 37 CFR 1.499 

Unity of invention in IA, in general            Rule 13 

Examples                A.I. Annex B 

Language 

Of correspondence by applicant to IB and RO   A.I. 104 

Of demand for IPE Rule 55 

Of forms used by international authorities  A.I. 103 

Of IA       Art. 11(1)(ii) 

 Rule 12 

Of international publication of IA      Rule 48.3 

Of IPER                 Rule 72 

Of ISA          Rule 43.4 

Of translation of IA            Rule 49.2 

Prohibited expressions      Rule 9 

Correction of     A.I. 501 

Later elections (elections submitted after 
        the demand) 

Defects in  Rule 60.2 

Later elections (elections submitted after 
        the demand)-Con. 

In general  Rule 56 

Publication of notice of later elections by IB 
in Gazette      A.I. 428 

Later indication of priority application number 
        by RO to IB         A.I. 319 

Later submitted sheets, RO procedure    A.I. 309 

Loss of effect of IA in designated states Article 24 

(Same consequences as withdrawal of IA) 

M 

Mail service 

Irregularities in Rule 82 

Microbiological inventions      Rule 13bis 

See also Nucleotide/amino acid sequence 
                listings 

Micro-organisms 

Deposited 

Indications as to A.I. 209 

Minimum documentation in ISA            Art. 15(4) 

  Rule 34 

Missing drawings, RO procedure          Art. 14(2) 

  Rule 26.6 

  A.I. 310 

 N 

National Office 

Right to practice before                Art. 49 

 Rule 83 

Rule 90.1 

National stage 

Amendment of claims, description, and 
drawings before designated offices      Art. 28 

  Rule 52 

        Before elected offices          Art. 41 

  Rule 78 

Certain national requirements allowed under 
Article 27(1),(2),(6),(7)   Art. 27 

 Rule 51bis 

Copy of IA, translation and fee to DO       Art. 22 

Delaying of national examination and other 
processing      Art. 23 

   Art. 40 

Protection available 

Other than patent protection    Art. 43 

As well as patent protection    Art. 44 

Requirements            Art. 27 

Results of national examination in different 
countries       Art. 42 



National stage-Con. 

United States 

Commencement in       35 USC 371 

Entering U.S. as designated Office      37 CFR 1.494 

Entering U.S. as elected Office       37 CFR 1.495 

Entry into U.S., time of        37 CFR 1.491 

Examination in      37 CFR 1.496 

Improper applicant  35 USC 373 

National U.S. patent issued on IA, effect   35 USC 375 

National security prescriptions       Art. 27(8) 

Delay or prevention of transmittal of record 
copy to IB      A.I. 330 

Nationality 

Qualifications      Rule 18.2 

 In demand      Rule 54.1 

Recording of changes to by the IB   Rule 92bis.1 

Nationality or residence of applicant, 
        correction of       A.I. 329 

 A.I. 614 

New (additional) matter 

In request, deletion of ex officio      A.I. 303 

Nomenclature - See also Terminology and signs     Rule 10 

Notification by IPEA of date of receipt of 
        demand to IB and applicant      Rule 61 

Nucleotide and/or amino acid sequence listings      Rule 13ter 

Transmitted by RO to ISA                A.I. 313(c) 

Number and numbering of claims          Rule 6.1 

Number of (accorded to) IA      Rule 20.1 

Number of copies of IA to be filed      Rule 11.1 

Numbering of amendments             Rule 6.1 

  A.I. 205 

  A.I. 207 

  A.I. 311 

Numbering of lines on a page of IA      Rule 11.8 

Numbering of sheets of IA   Rule 11.7 

Numbering of sheets for international publication A.I. 410 

O 

Oath or declaration in U.S. national stage 
        application         35 USC 371 (c)(4) 

37 CFR 1.497 

Obvious errors in documents         Rule 91 

Rectification of        A.I. 511 

Obviousness/nonobviousness      Art. 33(3) 

  Rule 65 

See also Inventive step 

Opportunity to correct IA before designated Office  Art. 26 


   P 

Pamphlets (form of publishing the IA)     Rule 48 

Patent Cooperation Treaty 

Administrative provisions   Arts. 53 - 58 

Amendment of certain provisions             Art. 61 

Assembly of contracting states              Art. 53 

Becoming a party to         Art. 62 

Committee for technical cooperation         Art. 56 

Denunciation            Art. 66 

Depositary functions            Art. 68 

Disputes                        Art. 59 

Entry into force of PCT             Art. 63 

Executive committee of assembly             Art. 54 

Final provisions (becoming party to treaty, entry 
into force of treaty, reservations, gradual 
application, denunciation, signature and 
languages, depositary functions, notifications)       Art. 62 

Finances                        Art. 57 

Gradual application of PCT in a state       Art. 65 

International Bureau            Art. 55 

Notifications to states/governments re PCT issues Art. 69 

Reservations by any state re Application of PCT 

provisions      Art. 64 

Revision of PCT             Art. 60 

Patent information services furnished by IB   Art. 50 

Physical requirements of IA         Rule 11 

Power of attorney 

Definition      Rule 3.3a 

General                 Rule 90.5 

Practice before international authorities 

Right to do so              Art. 49 

  Rule 83 

  Rule 90 

Precautionary designations      Rule 4.9(b) 

Rule 4.9(c) 

Fees for                        Rule 15.5 

Form (optional) for making precautionary 
designations    PCT/DO 

   Form 144 

Preliminary examination fee         Rule 58 

Prior art 

Citation of (proper method)         A.I. 503 

For international preliminary examination Rule 64 

Indications         A.I. 505 

Of special categories of documents  A.I. 507 

Relevant to international search                Rule 33.1 

Priority application serial number      A.I. 408 

Later indication of         A.I. 319 



Priority claim in IA            Rule 4.10 

Correction or cancellation by RO                A.I. 314 

Correction or cancellation by IB                A.I. 402 

Not considered to have been made                A.I. 302 

Notice to that effect by IB, if not by RO A.I. 409 

U.S. regulation regarding   37 CFR 1.451 

Withdrawal of, by applicant         Rule 90bis.3 

Priority, right of (in U.S.)            35 USC 365 

Benefit of filing date of a prior application     35 USC 365 

Priority document   Rule 17 

Benefit of filing date of a prior application     35 USC 365 

Copy, translation, and fee furnished to EO 
under Article 39(1)   Rule 76 

Fee for certified copy of, from 
U.S. PTO                37 CFR1.19(b)(1) 

In proceedings before IPEA  Rule 66.7 

Invitation by IB to furnish         A.I. 421 

Receipt of by IB                A.I. 411 

Translation and time limit to furnish to EO   Rule 76 

Transmittal by RO to IB             A.I. 323 

U.S. regulation regarding   37 CFR 1.451 

Protection available under PCT          Art. 43 

  Art. 44 

  Art. 45 

  A.I. 202 

Indications of kinds of protection in request     Rule 4.12 

Protest against payment of additional fees 
        re holding of lack of unity         Rule 68 

  Rule 40 

 A.I. 403 

 A.I. 502 

Before United States IPEA   37 CFR 1.489 

Before United States ISA        37 CFR 1.477 

Publication - See International publication 

Q 

Quorum, absence of 

Voting by correspondence                Rule 85 

 R 

Receipt of IA by RO         Rule 20 

Notification of by RO to IB         Rule 20.5(b) 

Notification of by RO to applicant      A.I. 301 

Receiving Office 

In general      Art. 10 

Competent   Rule 19 

United States RO                35 USC 361 

37 CFR 1.412 

Record copy (originally filed IA) 

Definition      Rule 20.5(b) 

Transmittal to IB by RO             Rule 22 

37 CFR 1.461 

Receipt by IB     Rule 24 

Marking sheets of, by IB                A.I. 401 

Rectification of obvious errors             Rule 91 

Authorized or not by the ISA            A.I. 511 

Authorized by IPEA      A.I. 607 

Handling of, by RO      A.I. 325 

Limitations/restrictions on         Rules 91.1(b) 

to (gquater) 

Refund 

If search is based in part on earlier search    Rule 41 

Invitation by RO to request search fee refund . . . . A.I. 322 

Invitation to request refund of fees 
before IPEA         A.I. 613 

Of handling fee             Rule 57.6 

Of international fee            Rule 15.6 

Of international preliminary examination fee    Rule 58.3 

Of international search fee         Rule 16 

Regional patent treaties                Art. 45 

Regulations of the PCT          Art. 58 

Representation/representative 
        See also Common representative 

Appointment of          Rule 90.4 

Notice by IB to ISA and IPEA    A.I. 425 

Notice by IPEA to IB    A.I. 608 

Notice by ISA to IB   A.I. 512 

Notice by RO to IB  A.I. 328 

Common (definition)   Rule 2.2bis 

General power of attorney Rule 90.5 

Limited recognition in patent cases  . . .  37 CFR Part 10, # 10.9 
Revocation and renunciation of representative     Rule 90.6 

U.S. regulation regarding 37 CFR 1.455 

Request (Part of IA) 

Contents                        Art. 4 

   Rule 4 

Deletion of additional materIal             I.A. 303 

Form                    Rule 3 

In general      Art. 4 

Recording of changes in, by IB          Rule 92bis 

Notification by IB  A.I. 422 

Request (Part of IA)-Continued 

Rectification of, including limitations on 
 ability to rectify         Rule 91.1 

U.S. regulation regarding 37 CFR 1.434 

Residence 

Corrections to 

Invitation by RO        A.I. 329 



Residence-Con. 

Qualifications          Rule 18 

In demand   Rule 54.1 

Recording of changes to by the IB   Rule 92bis.1 

Results of national examination in elected Office . . Art. 42 

Restriction:    See also Lack of unity of invention 
                        See also Unity of invention 

Revival of U.S. national stage application  37 CFR 1.137 

Right to practice before international authorities  Rule 83 

   Art. 49 

Review of RO determinations by other 
        international authorities re 

Failure to accord an international filing date      Art. 25 

Review by U.S. PTO  35 USC 367 

Declared an IA to be withdrawn          Art. 25 

Review by U.S. PTO  35 USC 367 

Designation of a state is withdrawn         Art. 25 

Review by U.S. PTO  35 USC 367 

Review by designated offices of 

Refusal to accord filing date to IA         Art. 25 

Declaration that an IA is withdrawn         Art. 25 

IB decided the IA is withdrawn under Article 12(3) . . Art. 25 

Revision of PCT             Art. 60 

See also Amendment of PCT provisions 

S 

Search - See also international search report 

Search other than international search      Rule 41 

Search copy of IA 

Preparation of by RO            Rule 21 

Transmittal of to IB            Rule 23 

Receipt of by ISA   Rule 25.1 

Notification of lack of transmittal of SC by IB       A.I. 412 

Security measures of national Office delaying or 

preventing transmittal of RC to IB      A.I. 330 

United States statute regarding             35 USC 368 

Sequence listings in machine readable form  Rule 13ter 

Considered by ISA A.I. 513 

Considered by IPEA  A.I. 610 

Serial no. (of international application) A.I. 307 

A.I. Annex C 

Indelibly marked on each sheet of IA            A.I. 308 

Sheets 

Later submitted - RO handling of                A.I. 309 

Deletion, addition, substitution, and renumbering 
of by RO                A.I. 311 

Size of IA  Rule 11.5 

Signature 

By parties to the PCT       Art. 62 


Notification by director general re   Art. 69 


Signature-Con. 

Defective, in IA        Art.14(1) 

IA lacking prescribed signature - RO 

procedure       A.I. 316 

Definition (includes ``seal")       Rule 2.3 

Lacking, in demand      Rule 60.1(d) 

Lacking, in later election      Rule 60.2(d) 

National requirements       Art. 27 

Of PCT in English and French            Art. 67 

Requirements re correspondence          Rule 92 

Requirements re demand          Rule 53.8 

Requirements re later elections             Rule 56.1 

Requirements re request       Rule 4.15 

Requirements re withdrawals   Rule 90bis.5 

Signs (terminology)   Rule 10 

Size of IA sheets Rule 11.5 

Subject matter that is proper in IA         Rule 67 

Successor states        Rule 32 

Surcharge - See also Fees: Late payment fee 

  T 

Technical Services 

Patent information services furnished by IB   Art. 50 

Technical assistance committee          Art. 51 

Relation to other PCT provisions                Art. 52 

Terminology and signs       Rule 10 

Time limit 

Computation of          Rule 80 

Delay in meeting certain                Art. 48 

Delays due to mail service      Rule 82 

Excuse by the designated or elected state of 
delays in meeting certain time limits       Rule 82bis 

Extended beyond or shortened with respect to 

Article 39 deadline for copy, translation, 
and fee filed with EO     Rule 77 

Extensions of, for payment of fees      Rule 16bis 

For amendments before elected Office    Rule 78 

For amendment of claims before the IB     Art. 19 

Rule 46.1 

For amendment of claims, description, and 
drawings before DO      Rule 52.1 

For applicant to request IB to send files to 
 any DO pursuant to Article 25(1)(c) so DO 
 can review adverse holding by RO or IB       Rule 51.1 

For check by RO of certain defects in the IA    Rule 26.1 

For communication by the IB of IPER (with its 
 translation and annexes to each EO)            Rule 73.2 

For considering IA withdrawn re Article 12(3)     Rule 22.3 

For considering IA withdrawn re Article 14(4)     Rule 30 

For correcting priority claim     Rule 4.10 



Time limit-Con. 

For correction by applicant of certain defects 
 found by and invited by RO to correct      Rule 26.2 

For establishing the international search   Rule 42 

For establishing the IPE                Rule 69.2 

For paying national fee and furnishing translation 
before DO pursuant to Article 25(2)(a) so 
DO can review adverse holding by RO 
or IB           Rule 51.3 

For presenting request by applicant for IB to 
send copies of IA to DO after receiving 
determination that IA is withdrawn  Rule 51 

For start of, and establishment of, IPE             Rule 69 

For submitting priority document                Rule 17 

For translation of priority document before EO      Rule 76.4 

For transmittal by applicant of translation of 
any replacement sheet referred to in Rule 
70.16 that is attached to the IPER      Rule 74.1 

In general              Art. 47 

Meaning of term "Time Limit" in Article 48(2)     Rule 82bis 

Modification of time limit fixed in PCT             Rule 81 

Of application processing based on priority 
date                    Rule 4.10 

37 CFR 1.465 

Timing of IA processing based on priority 
date            37 CFR 1.465 

To confirm precautionary designations       Rule 4.9 

To furnish drawings which are not necessary for 
 the understanding of the invention         Art. 7.2 


Rule 7.2 

To furnish IA copy, translation, and fee to DO 
beyond time limit allowed by Article 22       Rule 50 

To pay fees before ISA in response to a holding 
 of lack of unity of invention          Rule 40.3 

To request review by DO of failure to accord 
international filing date   Art. 25 

Utility models          Rule 6.5 

Title of invention in IA 

Content                 Rule 4.3 

Missing or defective            Rule 37 

Translation 

Availability of translations            Rule 95 

By applicant, international search based on   Art. 15 


Defective/incorrect of IA   Art. 46 


Draft, of IA, prepared by ISA for publication, 
        comments on by applicant                A.I. 506 

Of certain words not in Latin alphabet, 
 in request         Rule 4.16 

Of IA, availability to IB   Rule 95 


Of IA, transmittal by IB to designated offices      Art. 22 


Translation-Con. 

Of IA, transmittal by IB to elected offices   Art. 39 

Of international preliminary examination report       Art. 36 

Of international preliminary examination report       Rule 72 

Of IPER annexes, and transmittal of to elected 
offices by applicant            Rule 74 

Of international publication, affecting protection 
 of rights in any designated state      Art. 29 

Of international search report          Art. 18 

  Rule 45 

Of priority document before EO          Rule 76 

Transmittal 

Fee                     Rule 14 

Of record copy to IB by RO      Rule 22 

37 CFR 1.461 

Of search copy to ISA by RO         Rule 23 

Delayed       A.I. 306 

Treaty - See also Patent Cooperation Treaty, above 

  U 

Unity of invention 

During U.S. national stage      37 CFR 1.499 

Examples and guidelines             A.I. Annex B 

In general      Rule 13 

37 CFR 1.475 

Lack of unity before IPEA   Art. 34(3) 

 Rule 68 

37 CFR 1.488 

37 CFR 1.489 

Lack of unity before ISA                Art. 17(3) 

  Rule 40 

37 CFR 1.476 

37 CFR 1.477 

Compliance with Rule 13       A.I. 206 

Transmittal of protest to pay fees for additional 
        claimed inventions 

Transmittal by IB   A.I. 403 

Transmittal by IPEA         A.I. 603 

Transmittal by ISA      A.I. 502 

  W 

WO - See also International publication number 

Withdrawals (by applicant), in general      Rule 90bis 

 A.I. 326 

Of demand or election       Art. 37 

Rule 90bis.4 

Withdrawn 

Application, U.S. statute regarding         35 USC 366 

Determination by RO re IA or designation        Rule 29 




Withdrawn 

Decision by RO not to hold withdrawn after 
notifying applicant of intent to so hold        A.I. 312 

Notification to IPEA by IB  A.I. 414 


Review of by designated Office      Art. 25 


  Rule 51 


Determination by IB under Article 12(3) 

Withdrawn-Con. 

Review by designated Office   Art. 25 

 Rule 51 

Written opinion by IPEA             Art. 34 

 Rule 66 

Amendment of claims, description, and drawing 
under Article 34 in response to             Art. 34 


D D D D D D D D D D D D D D D D D D D D D D D D D D 


Contents 

ADMINISTRATIVE INSTRUCTIONS UNDER THE PCT 

(as in force from April 1, 1995) 

TABLE OF CONTENTS 

Part 1:       Instructions Relating to General Matters 

Section 101   Abbreviated Expressions and Interpretation 

Section 102   Use of the Forms 

Section 103   Languages of the Forms Used by International 
              Authorities 

Section 104   Language of Correspondence in Cases Not 
              Covered by Rule 92.2 

Section 105   Identification of International Application with 
              Two or More Applicants 

Section 106   Change of Common Representative 

Section 107   Identification of International Authorities and of 
              Designated and Elected Offices 

Section 108   Correspondence Intended for the Applicant 

Section 109   File Reference 

Section 110   Dates 

Section 111   [Deleted] 

Section 112   Ceasing of Effect under Articles 24(1)(iii) and 
              39(2), Review under Article 25(2) and 
              Maintaining of Effect under Articles 
              24(2) and 39(3) 

Section 113   Special Fees Payable to the International Bureau 

Section 114   Electronic Transmission of Notices 

Section 115   Indications of States, Territories, and 
              Intergovernmental Organizations 

Part 2:       Instructions Relating to the International 
               Application 

Section 201   [Deleted] 

Section 202   Kind of Protection 

Section 203   Different Applicants for Different Designated 
              States 

Section 204   Headings of the Parts of the Description 

Section 205   Numbering and Identification of Claims Upon 
              Amendment 

Section 206   Unity of Invention 

Section 207   Arrangement of Elements and Numbering of 
              Sheets of the International Application 

Section 208   Symbols and Machine Readable Format for 
              Listings of Nucleotide and/or Amino Acid 
              Sequences 


Section 209   Indications as to Deposited Microorganisms on a 
              Separate Sheet 

Section 210   Calculation of Designation Fee for the Purposes 
              of National and Regional Patents 

Part 3:       Instructions Relating to the Receiving Office 

Section 301   Notification of Receipt of Purported 
              International Application 

Section 302   Priority Claim Considered Not To Have Been 
              Made 

Section 303   Deletion of Additional Matter in the Request 

Section 304   Invitation to Pay Fees Before Date on Which 
              They Are Due 

Section 305   Identifying the Copies of the International 
              Application 

Section 306   Delayed Transmittal of Search Copy 

Section 307   System of Numbering International Applications 

Section 308   Marking of the Sheets of the International 
              Application 

Section 309   Procedure in the Case of Later Submitted Sheets 

Section 310   Procedure in the Case of Missing Drawings 

Section 311   Renumbering in the Case of Deletion, 
              Substitution or Addition of Sheets of the 
              International Application 

Section 312   Notification of Decision Not To Issue 
              Declaration that the International Application Is 
              Considered Withdrawn 

Section 313   Documents Filed with the International 
              Application; Manner of Marking the Necessary 
              Annotations in the Check List 

Section 314   Correction or Cancellation of a Priority Claim 
              under Rule 4.10 

Section 315   Notification Concerning Confirmation of 
              Designation 

Section 316   Procedure in the Case Where the International 
              Application Lacks the Prescribed Signature 

Section 317   [Deleted] 

Section 318   Cancellation of Designations of 
              Non-Contracting States 

Section 319   Later Indication of Priority Application Number 

Section 320   Invitation to Pay Fees under Rule 16bis.1(a) 
              and (b) 

Section 321   Application of Moneys Received by the 
              Receiving Office in Certain Cases 

Section 322   Invitation to Submit a Request for Refund of the 
              Search Fee 

Section 323   Transmittal of Priority Documents 

Section 324   Copy of Notification of the International 
              Application Number and the International Filing 
              Date under Rule 20.5(c) 

Section 325   Corrections of Defects under Rule 26.4(a), 
              Rectifications of Obvious Errors under 
              Rules 4.10(b) and 91.1, and Corrections 
              under Rule 9.2 

Section 326   Withdrawal by Applicant under Rule 90bis.1, 
              90bis.2, or 90bis.3 

Section 327   Ex Officio Correction of Request by the 
              Receiving Office 

Section 328   Notifications Concerning Representation 

Section 329   Correction of Indications Concerning the 
              Applicant's Residence or Nationality 

Section 330   Transmittal of Record Copy Prevented or 
              Delayed by National Security Prescriptions 

Section 331   Receipt of Confirmation Copy 

Part 4:       Instructions Relating to the International 
              Bureau 

Section 401   Marking of the Sheets of the Record Copy 

Section 402   Correction or Cancellation of a Priority Claim 
              under Rule 4.10(d) 

Section 403   Transmittal of Protest Against Payment of 
              Additional Fee and Decision Thereon Where 
              International Application Is Considered To Lack 
              Unity of Invention 

Section 404   International Publication Number of 
              International Application 

Section 405   [Deleted] 

Section 406   Pamphlets 

Section 407   The Gazette 

Section 408   Priority Application Number 

Section 409   Notification of Priority Claim Considered Not To 
              Have Been Made 

Section 410   Numbering of Sheets for the Purposes of 
              International Publication; Procedure in Case of 
              Missing Sheets or Drawings 

Section 411   Receipt of Priority Document 

Section 412   Notification of Lack of Transmittal of 
              Search Copy 

Section 413   Corrections of Defects under Rule 26.4(a), 
              Rectifications of Obvious Errors under 
              Rules 4.10(b) and 91.1 and Corrections under 
              Rule 9.2 

Section 414   Notification to the International Preliminary 
              Examining Authority Where the International 
              Application or the Designations of all Elected 
              States Are Considered Withdrawn 

Section 415   Notification of Withdrawal under Rules 90bis1, 
              90bis.2, 90bis.3, or 90bis.4 

Section 416   Correction of Request in Record Copy 

Section 417   Processing of Amendments under Article 19 

Section 418   Notifications to Elected Offices Where the 
              Demand or an Election Is Considered Not To 
              Have Been Submitted or Made 

Section 419   [Deleted] 

Section 420   Copy of International Application and 
              International Search Report for the 
              International Preliminary Examining Authority 

Section 421   Invitation To Furnish a Copy of the Priority 
              Document 

Section 422   Notifications Concerning Changes Recorded 
              under Rule 92bis.1 

Section 423   Cancellation of Designations and Elections 

Section 424   [Deleted] 

Section 425   Notifications Concerning Representation 

Section 426   Notification of Designation under Rule 24.2(b) 

Section 427   Publication of Notice of Confirmation of 
              Designation 

Section 428   Publication of Notice of Later Election 

Section 429   Notice of Extension 

Section 430   Notification of Designations under Rule 32 
              (Extensions) 

Part 5:       Instructions Relating to the International 
              Searching Authority 

Section 501   Corrections Submitted to the International 
              Searching Authority Concerning Expressions, 
              etc., Not To Be Used in the International 
              Application 

Section 502   Transmittal of Protest Against Payment of 
              Additional Fee and Decision Thereon Where 
              International Application Is Considered To Lack 
              Unity of Invention 

Section 503   Method of Identifying Documents Cited in the 
              International Search Report 

Section 504   Classification of the Subject Matter of the 
              International Application 

Section 505   Indication of Citations of Particular Relevance in 
              the International Search Report 

Section 506   Comments on Draft Translation of the 
              International Application 

Section 507   Manner of Indicating Certain Special Categories 
              of Documents Cited in the International Search 
              Report 

Section 508   Manner of Indicating the Claims to Which the 
              Documents Cited in the International Search 
              Report Are Relevant 

Section 509   [Deleted] 

Section 510   Refund of Search Fee in Case of Withdrawal of 
              International Application 

Section 511   Rectifications of Obvious Errors under 
              Rule 91.1 

Section 512   Notifications Concerning Representation 

Section 513   Sequence Listings 

Section 514   Authorized Officer 

Section 515   Amendment of Established Abstract in 
              Response to Applicant's Comments 

Part 6:       Instructions Relating to the International 
              Preliminary Examining Authority 

Section 601   Notice to Applicant of Filing of Demand After 
              the Expiration of 19 Months From the Priority 
              Date 

Section 602   Processing of Amendments by the International 
              Preliminary Examining Authority 

Section 603   Transmittal of Protest Against Payment of 
              Additional Fee and Decision Thereon Where 
              International Application Is Considered To Lack 
              Unity of Invention 

Section 604   Guidelines for Explanations Contained in the 
              International Preliminary Examination Report 

Section 605   File To Be Used for International Preliminary 
              Examination 

Section 606   Cancellation of Elections 

Section 606bis      Procedure Where Election of a State Considered 
              Not To Have Been Made 

Section 607   Rectifications of Obvious Errors under 
              Rule 91.1 

Section 608   Notifications Concerning Representation 

Section 609   Withdrawal by Applicant under 
              Rule 90bis.1, 90bis.2, or 90bis.3 

Section 610   Sequence Listings in Machine Readable Form 

Section 611   Method of Identification of Documents in the 
              International Preliminary Examination Report 

Section 612   Authorized Officer 

Section 613   Invitation to Submit a Request for Refund of 
              Fees under Rule 57.6 or 58.3 

Section 614   Evidence of Right to File Demand 

Annexes 

Annex A       Forms 

Part I:       Forms Relating to the Receiving Office 

Part II:      Forms Relating to the International Searching 
              Authority 

Part III:     Forms Relating to the International Bureau 

Part IV:      Forms Relating to the International Preliminary 
              Examining Authority 

Part V:       Request and Demand Forms 

Annex B       Unity of Invention 

Annex C       Format for Nucleotide and/or Amino Acid Sequence 
              Listings in Machine Readable Form 

Annex D       Information from Pamphlet Front Page To Be 
              Included in the Gazette under Rule 86.1(i) 

Annex E       Information To Be Published in the Gazette under 
              Rule 86.1(v) 



PART 1 

INSTRUCTIONS RELATING TO GENERAL MATTERS 


Section 101 


Abbreviated Expressions and Interpretation 

(a)   In these Administrative Instructions: 

(i)   "Treaty" means the Patent Cooperation Treaty; 

(ii)    "Regulations" means the Regulations under the Treaty; 

(iii)      "Article" means an Article of the Treaty; 

(iv)    "Rule" means a Rule of the Regulations; 

(v)   "International Bureau" means the International Bureau as defined in 
Article 2(xix)  of the Treaty; 

(vi)    "International Authorities" means the receiving Offices, the 
International  Searching Authorities, the International Preliminary 
Examining Authorities,  and the International Bureau; 

(vii)       "Annex" means an Annex to these Administrative Instructions, 
unless  the contrary clearly follows from the wording or the nature of the 
provision,  or the context in which the word is used; 

(viii)      "Form" means a Form contained in Annex A;@ 

(ix)    "WIPO Standard" means a Standard established by the World 
Intellectual  Property Organization; 

(x)   "Director General" means the Director General as defined in Article 
2(xx)  of the Treaty. 

(b)   The Annexes are part of these Administrative Instructions. 



Section 102 


Use of the Forms 

(a)   Subject to paragraphs (b) to (i) and Sections 103 and 114, the 
International  Authorities shall use, or require the use of, the mandatory 
Forms specified  below: 

        (i)   Forms for use by the applicant: 

        PCT/RO/101 (request Form) 
        PCT/IPEA/401 (demand Form) 

        (ii)    Forms for use by the receiving Offices: 

PCT/RO/103  PCT/RO/113      PCT/RO/133 
PCT/RO/104  PCT/RO/115      PCT/RO/136 
PCT/RO/105  PCT/RO/116      PCT/RO/137 
PCT/RO/106  PCT/RO/117      PCT/RO/139 
PCT/RO/107  PCT/RO/118      PCT/RO/143 
PCT/RO/109  PCT/RO/121      PCT/RO/147 
PCT/RO/111  PCT/RO/123 
PCT/RO/112  PCT/RO/126 

        (iii)     Forms for use by the International Searching 
Authorities: 
PCT/ISA/201   PCT/ISA/209 PCT/ISA/219 
PCT/ISA/202   PCT/ISA/210 PCT/ISA/220 
PCT/ISA/203   PCT/ISA/212 PCT/ISA/225 
PCT/ISA/205   PCT/ISA/217 PCT/ISA/228 
PCT/ISA/206   PCT/ISA/218 

        (iv)    Forms for use by the International Bureau: 

PCT/IB/301  PCT/IB/320      PCT/IB/344 
PCT/IB/302  PCT/IB/321      PCT/IB/345 
PCT/IB/304  PCT/IB/323      PCT/IB/346 
PCT/IB/305  PCT/IB/324      PCT/IB/349 
PCT/IB/306  PCT/IB/325      PCT/IB/350 
PCT/IB/307  PCT/IB/329      PCT/IB/351 
PCT/IB/308  PCT/IB/331      PCT/IB/352 
PCT/IB/310  PCT/IB/332      PCT/IB/353 
PCT/IB/313  PCT/IB/333      PCT/IB/354 
PCT/IB/314  PCT/IB/334      PCT/IB/355 
PCT/IB/315  PCT/IB/335      PCT/IB/356 
PCT/IB/316  PCT/IB/336      PCT/IB/357 
PCT/IB/317  PCT/IB/337      PCT/IB/358 
PCT/IB/318  PCT/IB/338      PCT/IB/359 
PCT/IB/319  PCT/IB/339      PCT/IB/360 


(v)   Forms for use by the International Preliminary Examining 
Authorities: 
PCT/IPEA/402    PCT/IPEA/409    PCT/IPEA/420 
PCT/IPEA/404    PCT/IPEA/412    PCT/IPEA/425 
PCT/IPEA/405    PCT/IPEA/414    PCT/IPEA/431 
PCT/IPEA/407    PCT/IPEA/415    PCT/IPEA/437 
PCT/IPEA/408    PCT/IPEA/416    PCT/IPEA/439. 

(b)   Slight variations in layout necessary in view of the printing of the 
 Forms referred to in paragraph (a) in various languages are permitted. 
(c)   Slight variations in layout in the Forms referred to in paragraph 
(a)(ii)  to (v) are permitted to the extent necessary to meet the 
particular office  requirements of the International Authorities, in 
particular, in view of the  production of the Forms by computer or of the 
use of window envelopes. 
(d)   Where the receiving Office, the International Searching Authority 
and/or  the International Preliminary Examining Authority are each part of 
the same  Office, the obligation to use the Forms referred to in paragraph 
(a) does not  extend to communications within that same Office. 

(e)   The annexes to Forms PCT/RO/106, PCT/RO/118, PCT/ISA/201, 
PCT/ISA/205,  PCT/ISA/206, PCT/ISA/210, PCT/ISA/219, PCT/IB/313, 
PCT/IB/336, PCT/IPEA/404,  PCT/IPEA/405, and PCT/IPEA/415 may be omitted 
in cases where they are not used. 
(f)   The notes attached to Forms PCT/RO/101 (request Form) and 
PCT/IPEA/401 
(demand Form) shall be distributed by the International Authorities 
concerned  together with the printed versions of those Forms. The notes 
attached to Form PCT/ISA/220  shall accompany the Form when sent to the 
applicant. 

(g)   The use of Forms other than those referred to in paragraph (a) is 
optional. 
(h)   Where the request or the demand is presented as a computer 
print-out,  such print-out shall be prepared as follows: 

(i)   the layout and contents of the request and the demand when presented 
 as computer print-outs shall correspond to the format of Forms PCT/RO/101 
(request  Form) and PCT/IPEA/401 (demand Form) (the printed Forms), with 
the same information  being presented on the corresponding pages; 

(ii)    all boxes shall be drawn by solid lines; double lines may be 
presented  as single lines; 

(iii)     the box numbers and box titles shall be included even where no 
information  is supplied therein; 

(iv)    the boxes for use by the International Authorities shall be at 
least  as large as those on the printed Forms; 

(v)   all other boxes shall be within one cm in size of those on the 
printed  Forms; 

(vi)    all text shall be 9 points or larger in size; 

(vii)     titles and other information shall be clearly distinguished; 
(viii)      explanatory notes presented in italics on the printed Forms 
may  be omitted. 

(i)   Other formats permitted for the presentation of the request and the 
demand  as computer print-outs may be determined by the Director General. 
Any such  format shall be published in the Gazette. 


Section 103 


Languages of the Forms Used 
by International Authorities 

(a)   The language of the Forms used by any receiving Office shall be the 
same  as the language in which the international application is filed, 
provided that  the receiving Office may, in its communications to the 
applicant, use the Forms  in any other language being one of its official 
languages. 

(b)   Subject to Section 104(b), the language or languages of the Forms to 
 be used by any International Searching Authority shall be specified in 
the  applicable agreement referred to in Article 16(3)(b). 

(c)   Subject to Section 104(b), the language or languages of the Forms to 
 be used by any International Preliminary Examining Authority shall be 
specified  in the applicable agreement referred to in Article 32(3). 

(d)   The language of any Form used by the International Bureau shall be 
English  where the language of the international application is English, 
and it shall  be French where the language of the international 
applica-tion is French. Where  the language of the international 
application is neither English nor French, the language of any Form used 
by  the International Bureau in its communications to any other 
International Authority  shall be English or French according to the 
wishes of such Authority, and in  its communications to the applicant it 
shall be English or French according  to the wishes of the applicant. 


Section 104 


Language of Correspondence in 
Cases Not Covered by Rule 92.2 

(a)   The language of any letter from the applicant to the receiving 
Office  shall be the same as the language of the international application 
to which  such letter relates. However, the receiving Office may expressly 
authorize  the use of any other language. 

(b)   The language of any letter to the International Bureau shall be 
English  where the language of the international application is English, 
and it shall  be French where the language of the international 
application is French. Where  the language of the international 
application is neither English nor French,  the language of any letter to 
the International Bureau shall be English or  French, provided that any 
copy, sent to the International Bureau as a notification  addressed to it, 
of a Form sent to the applicant by the receiving Office, the 
International Searching Authority or the International Preliminary 
Examining  Authority, does not require translation into English or French. 


Section 105 


 Identification of International Application 
with Two or More Applicants 

Where any international application indicates two or more applicants, it 
shall  be sufficient, for the purpose of identifying that application, to 
indicate,  in any Form or correspondence relating to such application, the 
name of the  applicant first named in the request. The provisions of the 
first sentence  of this Section do not apply to the demand or to a notice 
effecting later elections. 

Section 106 


Change of Common Representative 

        Where a change is recorded under Rule 92bis.1(a) in the person of 
an  applicant who was considered to be the common representative under 
Rule 90.2(b),  the new applicant shall be considered to be the common 
representative under  Rule 90.2(b) if he is entitled according to Rule 
19.1 to file an international  application with the receiving Office. 


Section 107 


Identification of International Authorities 
and of Designated and Elected Offices 

(a)   Whenever the nature of any communication from or to the applicant, 
from  or to any International Authority or, before national processing or 
examination  has started, from or to any designated or elected Office so 
permits, any International  Authority or any designated or elected Office 
may be indicated in the communication  by the two-letter code referred to 
in Section 115. 

(b)   The indication of a receiving Office, an International Searching 
Authority,  an International Preliminary Examining Authority or a 
designated or elected  Office shall be preceded by the letters "RO," 
"ISA", "IPEA," "DO," or "EO,"  respectively, followed by a slant (e.g., 
"RO/JP," "ISA/US", "IPEA/SE," "DO/EP,"  "EO/AU"). 


Section 108 


Correspondence Intended for the Applicant 

(a)   For the purpose of this Section, where there are two or more agents 
whose  appointments are in force, "first mentioned agent" means the agent 
first mentioned  in the document containing the appointments or, where the 
appointments are  contained in two or more documents, in that which was 
filed first. 
(b)   Where a sole applicant has appointed an agent or agents under Rule 
90.1(a),  correspondence intended for the applicant from the International 
Authorities  shall, subject to paragraph (d), be addressed to the agent 
or, where applicable,  to the first mentioned agent. 

(c)   Where there are two or more applicants, correspondence intended for 
the  applicants from the International Authorities shall, subject to 
paragraph (d),  be addressed: 

(i)   if no common agent has been appointed under Rule 90.1-to the common 
representative  or, where applicable, to his agent or first mentioned 
agent; or 

(ii)    if the applicants have appointed a common agent or common agents 
under  Rule 90.1(a)-to that common agent or, where applicable, to the 
first mentioned  common agent. 

(d)   Where an agent has or agents have been appointed under Rule 90.1(b), 
(c) or (d)(ii), paragraphs (b) and (c) shall apply to correspondence 
intended  for the applicant relating to the procedure before the 
International Searching  Authority or the International Preliminary 
Examining Authority, as the case  may be, as if those paragraphs referred 
to the agent or agents so appointed. 

Section 109 


File Reference 

(a)   Where any document submitted by the applicant contains an indication 
 of a file reference, that reference shall not exceed twelve characters in 
length  and may be composed of either letters of the Latin alphabet or 
Arabic numerals,  or both. 

(b)   Correspondence from International Authorities intended for the 
applicant  shall indicate any such file reference. 


Section 110 


Dates 

Any date in the international application, or used in any correspondence 
emanating  from International Authorities relating to the international 
application, shall  be indicated by the Arabic number of the day, by the 
name of the month, and  by the Arabic number of the year. The receiving 
Office, where the applicant  has not done so, or the International Bureau, 
where the applicant has not done  so and the receiving Office fails to do 
so, shall, after, above, or below any  date indicated by the applicant in 
the request, repeat the date, in parenthesis,  by indicating it by 
two-digit Arabic numerals each for the number of the day,  for the number 
of the month and for the last two numbers of the year, in that  order and 
with a period, slant, or hyphen after the digit pairs of the day  and of 
the month (for example, "05 March 1992 (05.03.92)", "05 March 1992 
(05/03/92)",  or "05 March 1992 (05-03-92)" ). 


Section 111 


[Deleted] 


Section 112 


Ceasing of Effect under Articles 24(1)(iii) and 39(2), 
Review under Article 25(2) and Maintaining of Effect under Articles 24(2) 
and  39(3) 

(a)   Each national Office shall, in its capacity as designated Office, 
notify  the International Bureau once a year of: 

(i)   the number of international applications in respect of which, during 
 the preceding calendar year, the time limit applicable under Article 22 
has  expired; 

(ii)    the number of international applications in respect of which, 
during  the preceding calendar year, the requirements provided for in 
Article 22 have  not been complied with before the expiration of the time 
limit applicable under  that Article, with the consequence that the 
effects of the international applications  concerned have ceased under 
Article 24(1)(iii). 

(b)   Each national Office shall, in its capacity as elected Office, 
notify  the International Bureau once a year of: 

(i)   the number of international applications in respect of which, during 
 the preceding calendar year, the time limit applicable under Article 
39(1)  has expired; 

(ii)    the number of international applications in respect of which, 
during  the preceding calendar year, the requirements provided for in 
Article 39(1)  have not been complied with before the expiration of the 
time limit applicable  under that Article, with the consequence that the 
effects of the international  applications concerned have ceased under 
Article 39(3). 

(c)   Where, under Article 25(2), the designated Office decides that the 
refusal,  declaration, or finding referred to in Article 25(1) was not 
justified, it  shall promptly notify the International Bureau that it will 
treat the international  application as if the error or omission referred 
to in Article 25(2) had not  occurred. The notification shall preferably 
contain the reasons for the decision  of the designated Office. 

(d)   Where, under Article 24(2) or under Article 39(3), the designated or 
 elected Office maintains the effect provided for in Article 11(3), it 
shall  promptly notify the International Bureau accordingly. The 
notification shall  preferably contain the reasons for the decision of the 
designated or elected  Office. 


Section 113 


Special Fees Payable to the International Bureau 

(a)   The special publication fee provided for in Rule 48.4 shall be 200 
Swiss  francs. 

(b)   The special fee provided for in Rule 91.1(f) shall be payable to the 
 International Bureau and shall be 50 Swiss francs plus 12 Swiss francs 
for  each sheet in excess of one. Where that fee has not been paid before 
the time  of the completion of the technical preparations for 
international publication,  the request for rectification shall not be 
published. Where the last sentence  of Rule 91.1(f) applies and the said 
fee has not been paid before the time  of the communication of the 
international application under Article 20, a copy  of the request for 
rectification shall not be included in that communication. 

Section 114 


Electronic Transmission of Notices 

Where the Treaty, the Regulations, or these Administrative Instructions 
provide  for a notification or other communication to be transmitted by 
one national 
Office or intergovernmental organization to another, that notification or 
communication,  except where otherwise provided, may, where so agreed by 
both the sender and  the receiver, be transmitted by electronic means or 
in electronic form. 

Section 115 


Indications of States, Territories, and 
Intergovernmental Organizations 

The indication of a State, territory, or intergovernmental organization 
shall  be made either by its full name, by a generally accepted short 
title which,  if the indications are in English or French, shall be as 
appears in WIPO Standard ST.3 
(Recommended Standard Two-Letter Code for the Representation of Countries, 
 and of Other Entities and International Organizations Issuing or 
Registering  Industrial Property Titles), or by the two-letter code as 
appears in that Standard.# 


PART 2 

INSTRUCTIONS RELATING TO THE INTERNATIONAL APPLICATION 


Section 201 


[Deleted] 


Section 202 


Kind of Protection 

        (a)   Where the applicant wishes his application to be treated in 
any  designated State as an application not for a patent but for the grant 
of another  kind of protection referred to in Article 43, he shall make 
the indication  in the request referred to in Rule 4.12(a) by inserting 
the words "inventor's  certificate," "utility certificate," "utility 
model" (or "petty patent" for  Australia), "patent of addition," 
"certificate of addition", "inventor's certificate  of addition" or 
"utility certificate of addition," or their equivalent in the  language of 
the international application, immediately after the indication  of the 
said State. 

        (b)   Where, in respect of a designated State which provides for 
the  granting of a patent and of a utility model, the applicant is seeking 
two kinds  of protection under Article 44, he shall make the indication 
referred to in  Rule 4.12(b) by inserting, immediately after the 
indication of that State and  in the language of the international 
application, the words "and utility model." 


Section 203 


Different Applicants for Different Designated States 

  (a)     Different applicants may be indicated for different States 
designated  for a regional patent. 

        (b)   Where a particular State has been designated for both a 
national  patent and a regional patent, the same applicant or applicants 
shall be indicated  for both designations. 


Section 204 


Headings of the Parts of the Description 

        The headings referred to in Rule 5.1(c) should be as follows: 
        (i)   for matter referred to in Rule 5.1(a)(i), "Technical Field"; 
        (ii)    for matter referred to in Rule 5.1(a)(ii), "Background Art 
 "; 

        (iii)     for matter referred to in Rule 5.1(a)(iii), "Disclosure 
of  Invention"; 

        (iv)    for matter referred to in Rule 5.1(a)(iv), "Brief 
Description  of Drawings"; 

        (v)   for matter referred to in Rule 5.1(a)(v), "Best Mode for 
Carrying  Out the Invention," or, where appropriate, "Mode (s) for 
Carrying Out the Invention"; 
        (vi)    for matter referred to in Rule 5.1(a)(vi), "Industrial 
Applicability." 


Section 205 


Numbering and Identification 

of Claims Upon Amendment 

        (a)   Amendments to the claims under Article 19 or Article 
34(2)(b)  may be made either by cancelling one or more entire claims, by 
adding one or  more new claims or by amending the text of one or more of 
the claims as filed.  All the claims appearing on a replacement sheet 
shall be numbered in Arabic  numerals. Where a claim is cancelled, no 
renumbering of the other claims shall  be required. In all cases where 
claims are renumbered, they shall be renumbered  consecutively. 

        (b)   The applicant shall, in the letter referred to in the second 
 and third sentences of Rule 46.5(a) or in the second and fourth sentences 
of  Rule 66.8(a), indicate the differences between the claims as filed and 
the  claims as amended. He shall, in particular, indicate in the 
said letter, in connection with each claim appearing in the international 
application 
(it being understood that identical indications concerning several claims 
may  be grouped), whether: 

        (i)   the claim is unchanged; 

        (ii)    the claim is cancelled; 

        (iii)     the claim is new; 

        (iv)    the claim replaces one or more claims as filed; 

        (v)   the claim is the result of the division of a claim as filed. 

Section 206 


Unity of Invention 

        The determination by the International Searching Authority, the 
International  Preliminary Examining Authority and the designated and 
elected Offices whether  an international application complies with the 
requirement of unity of invention  under Rule 13 shall be made in 
accordance with Annex B. 


Section 207 


Arrangement of Elements and Numbering of Sheets of the International 
Application 
        (a)   In effecting the sequential numbering of the sheets of the 
international  application in accordance with Rule 11.7, the elements of 
the international  application shall be placed in the following order: the 
request, the description,  the claims, the abstract, the drawings. 

        (b)   The sequential numbering of the sheets shall be effected by 
using  three separate series of numbering: 

                (i)   the first series applying to the request only and 
commencing  with the first sheet of the request, 

                (ii)    the second series commencing with the first sheet 
of  the description and continuing through the claims until the last sheet 
of the  abstract, and 

                (iii)     the third series being applicable to the sheets 
of  the drawings only and commencing with the first sheet of the drawings; 
the  number of each sheet of the drawings shall consist of two Arabic 
numerals separated  by a slant, the first being the sheet number and the 
second being the total  number of sheets of drawings (for example, 1/3, 
2/3, 3/3). 


Section 208 


Sequence Listings 

        (a) Any nucleotide and/or amino acid sequence listing ("sequence 
listing")  shall be presented in a format complying with WIPO Standard 
ST.23 (Recommendation  for the Presentation of Nucleotide and Amino Acid 
Sequence Listings in Patent  Applications and in Published Patent Documents).4 

        (b) Any machine readable form of a sequence listing shall comply 
with  the required format in accordance with Annex C. 

        (c) Any sequence listing not forming part of the international 
application  shall, when furnished, be accompanied by a statement to the 
effect that the  listing does not include matter which goes beyond the 
disclosure in the international  application as filed. 

        (d) Sheets of a sequence listing in printed form not forming part 
of  the international application shall be sequentially numbered in a 
series separate  from that used in numbering the sheets of the 
international application; the  number of each sheet shall preferably 
consist of two Arabic numerals separated  by a slant, the first being the 
sheet number and the second being the total  number of such sheets (for 
example, 1/3, 2/3, 3/3). 


Section 209 


Indications as to Deposited Microorganisms 

on a Separate Sheet 

        (a)   To the extent that any indication with respect to a 
deposited  microorganism is not contained in the description, it may be 
given on a separate sheet. Where any such indication is  so given, it 
shall preferably be on Form PCT/RO/134 and, if furnished at the  time of 
filing, the said Form shall, subject to paragraph (b), preferably be 
attached to the request and referred to in the check list referred to in 
Rule 3.3(a)(ii). 
        (b)   For the purposes of the Japanese Patent Office when Japan is 
 designated, paragraph (a) applies only to the extent that the said Form 
or  sheet is included as one of the sheets of the description of the 
international  application at the time of filing. 


Section 210 


Calculation of Designation Fee for the Purposes 

of National and Regional Patents 

designation of the same Contracting State with an indication of the wish 
to  obtain a regional patent and the national law of the Contracting State 
does  not contain a provision referred to in Article 45(2), the 
designation fees  shall be calculated on the basis that a separate fee is 
payable in respect  of the designation of the Contracting State in 
addition to the designation  fee payable in respect of that Contracting 
State as a Contracting State or  as one of a group of Contracting States 
for which a regional patent is sought. 
PART 3 

INSTRUCTIONS RELATING TO THE RECEIVING OFFICE 


Section 301 


Notification of Receipt of Purported 

International Application 

        Before the determination under Article 11(1), the receiving Office 
 may notify the applicant of the receipt of the purported international 
application.  The notification should indicate the date of actual receipt 
and the international  application number of the purported international 
application referred to in  Section 307 as well as, where useful for 
purposes of identification, the title  of the invention. 


Section 302 


Priority Claim Considered Not To Have Been Made 

        Where, owing to failure to meet the requirements of Rule 4.10(b), 
the  priority claim is, for the purposes of the procedure under the 
Treaty, considered  not to have been made, the receiving Office shall 
indicate that fact in the  international application by enclosing the 
portion of the request which provides  for the information concerning the 
priority claim (or, where the priorities  of several earlier applications 
are claimed and not all those priority claims  are considered not to have 
been made, the relevant portion) within square brackets  and entering, in 
the margin, the words "NOT TO BE CONSIDERED FOR PCT PROCEDURE"  or their 
equivalent in the language of publication of the international 
application,  and shall notify the applicant accordingly. If copies of the 
international  application have already been sent to the International 
Bureau and the International  Searching Authority, the receiving Office 
shall also notify that Bureau and  that Authority. 


Section 303 


Deletion of Additional Matter in the Request 

        Where, under Rule 4.17(b), the receiving Office deletes ex officio 
 any matter contained in the request, it shall do so by enclosing such 
matter  within square brackets and entering, in the margin, the words 
"DELETED BY RO"  or their equivalent in the language of publication of the 
international application,  and shall notify the applicant accordingly. If 
copies of the international  application have already been sent to the 
International Bureau and the International  Searching Authority, the 
receiving Office shall also notify that Bureau and  that Authority. 


Section 304 


Invitation to Pay Fees Before Date 

on Which They Are Due 

        (a)   If the receiving Office finds, before the date on which they 
 are due, that the transmittal fee, the basic fee (including any 
supplement  per sheet over 30) or the search fee are lacking in whole or 
in part, it may  invite the applicant to pay the missing amounts within 
one month from the date  of receipt of the international application. 

        (b)   If the receiving Office finds, before the date on which they 
 are due, that the designation fees for designations made under Rule 
4.9(a)  are lacking in whole or in part, it may invite the applicant to 
pay the missing  amount within one year from the priority date or within 
one month from the  date of receipt of the international application, 
whichever expires later. 
        (c)   If the receiving Office finds that the applicant filed a 
written  notice under Rule 4.9(b), but failed to pay the designation fees 
and/or the  confirmation fee under Rule 4.9(c)(ii) or that the amount paid 
is not sufficient,  it may invite the applicant to pay the missing amount 
within 15 months from  the priority date. 


Section 305 


Identifying the Copies of the 

International Application 

        (a)   Where, under Rule 11.1(a), the international application has 
 been filed in one copy, the receiving Office shall, after preparing under 
Rule 21.1(a)  the additional copies required under Article 12(1), mark, 

        (i)   the words "RECORD COPY" in the upper left-hand corner of the 
 first page of the original copy, 

        (ii)    in the same space on one additional copy, the words 
"SEARCH  COPY", and 

        (iii)     in the same space on the other such copy, the words 
"HOME  COPY," 

or their equivalent in the language of publication of the international 
application. 
        (b)   Where, under Rule 11.1(b), the international application has 
 been filed in more than one copy, the receiving Office shall choose the 
copy  most suitable for reproduction purposes, and mark the words "RECORD 
COPY,"  or their equivalent in the language of publication of the 
international application,  in the upper left-hand corner of its first 
page. After verifying the identity  of any additional copies and, if 
applicable, preparing under Rule 21.1(b) the  home copy, it shall mark, in 
the upper left-hand corner of the first page of  one such copy, the words 
"SEARCH COPY, " and, in the same space on the other  such copy, the words 
"HOME COPY," or their equivalent in the language of publication  of the 
international application. 


Section 306 


Delayed Transmittal of Search Copy 

        Where the search copy will be transmitted to the International 
Searching  Authority after the date on which the record copy is 
transmitted to the International  Bureau, the receiving Office shall 
notify the International Bureau. The notification  may be made by marking 
a check-box provided for this purpose on the request. 

Section 307 


System of Numbering International Applications 

        (a)   Papers purporting to be an international application under 
Rule 20.1(a)  shall be marked with the international application number, 
consisting of the  letters "PCT," a slant, the two-letter code referred to 
in Section 115, indicating  the receiving Office, a two-digit indication 
of the last two numbers of the  year in which such papers were first 
received, a slant, and a five-digit number,  allotted in sequential order 
corresponding to the order in which the international  applications are 
received (e.g., "PCT/SE78/00001" ). Where the International  Bureau acts, 
pursuant to Rule 19.1(b), as receiving Office for a national Office,  the 
two-letter code indicating the national Office for which the International 
 Bureau acts as receiving Office shall be used. 

        (b)   If a negative determination is made under Rule 20.7 or a 
declaration  is made under Article 14(4), the letters "PCT" shall be 
deleted by the receiving  Office from the indication of the international 
application number on any papers  marked previously with that number, and 
the said number shall be used without  such letters in any future 
correspondence relating to the purported international  application. 


Section 308 


 Marking of the Sheets of the International 
Application 

        The receiving Office shall indelibly mark the international 
application  number referred to in Section 307 in the upper right-hand 
corner of each sheet  of each copy of the purported international application. 


Section 309 


Procedure in the Case of Later Submitted Sheets 

        (a)   The receiving Office shall indelibly mark any sheet received 
 on a date later than the date on which sheets were first received with 
the  date on which it received that sheet, inserted immediately below the 
international  application number referred to in Section 307. 

        (b)   The receiving Office shall, in the case of later submitted 
sheets  received within the time limits referred to in Rule 20.2(a)(i) and 
(ii): 
                (i)   effect the required correction of the international 
filing  date, or, where no international filing date has yet been 
accorded, of the  date of receipt of the purported international application; 

                (ii)    notify the applicant of the correction effected 
under  item (i), above; 

                (iii)     where transmittals under Article 12(1) have 
already  been made, notify the International Bureau and the International 
Searching  Authority of any correction effected under item (i), above, by 
transmitting  a copy of the corrected first and last sheets of the 
request, and forward the  later submitted sheets to the said Bureau and a 
copy thereof to the said Authority; 
                (iv)    where transmittals under Article 12(1) have not 
yet  been made, attach the later submitted sheets to the record copy and a 
copy  thereof to the search copy. 

        (c)   The receiving Office shall, in the case of later submitted 
sheets  received after the expiration of the time limit referred to in 
Rule 20.2(a)(i): 
                (i)   notify the applicant of that fact and of the date of 
 receipt of the later submitted sheets; 

                (ii)    where transmittals under Article 12(1) have 
already  been made, forward the later submitted sheets to the 
International Bureau with  the indication on the bottom of each sheet of 
the words: "NOT TO BE TAKEN INTO  CONSIDERATION FOR THE PURPOSES OF 
INTERNATIONAL PROCESSING" or their equivalent  in the language of 
publication of the international application; 

                (iii)     where transmittals under Article 12(1) have not 
yet  been made, attach the later submitted sheets to the record copy with 
the indication  referred to in item (ii). 

        (d)   The receiving Office shall, in the case of later submitted 
sheets  received after the expiration of the time limit referred to in 
Rule 20.2(a)(ii),  proceed as provided in Rule 20.7, unless the applicant 
has, within the said  time limit, complied with the invitation under 
Article 11(2)(a) so that an  international filing date can be accorded; in 
the latter case, the receiving  Office shall proceed as provided in 
paragraph (c)(i) to (iii). 


Section 310 


Procedure in the Case of Missing Drawings 

        (a)   Where the international application refers to drawings which 
 in fact are not included in that application, the receiving Office shall 
make  the indication referred to in Rule 26.6(a) by marking a check-box 
provided  for this purpose on the request. 

        (b)   Section 309(a) shall apply also in the case of drawings 
received  by the receiving Office on a date later than the date on which 
sheets were  first received by that Office. 

        (c)   The receiving Office shall, in the case of missing drawings 
received  within the time limit referred to in Rule 20.2(a)(iii): 

                (i)   effect the required correction of the international 
filing  date, or, where no international filing date has yet been 
accorded, of the  date of receipt of the purported international 
application, and delete the  indication made under paragraph (a), above; 

                (ii)    notify the applicant of the correction effected 
under  item (i), above; 

                (iii)     where transmittals under Article 12(1) have 
already  been made, notify the International Bureau and the International 
Searching  Authority of any correction effected under item (i), above, by 
transmitting  a copy of the corrected first and last sheets of the 
request, and forward the  later submitted drawings to the said Bureau and 
a copy thereof to the said  Authority; 

                (iv)    where transmittals under Article 12(1) have not 
yet  been made, attach the later submitted drawings to the record copy and 
a copy  thereof to the search copy. 

        (d)   The receiving Office shall, in the case of missing drawings 
received  after the expiration of the time limit referred to in Rule 
20.2(a)(iii): 
                (i)   notify the applicant of the fact and of the date of 
receipt  of the later submitted drawings; 

                (ii)    where transmittals under Article 12(1) have 
already  been made, forward the later submitted drawings to the 
International Bureau  with the indication on the bottom of each drawing of 
the words: "NOT TO BE  TAKEN INTO CONSIDERATION (PCT Art. 14(2), 2nd 
sentence)" or their equivalent  in the language of publication of the 
international application; 

                (iii)     where transmittals under Article 12(1) have not 
yet  been made, attach the later submitted drawings to the record copy 
with the  indication referred to in item (ii). 


Section 311 


Renumbering in the Case of Deletion, Substitution or 
Addition of Sheets of the International Application 

        (a)   The receiving Office shall, subject to Section 207, 
sequentially  renumber the sheets of the international application when 
necessitated by the  addition of any new sheet, the deletion of entire 
sheets, a change in the order  of the sheets, or any other reason. 

        (b)    The sheets of the international application shall be 
provisionally  renumbered in the following manner: 

                (i)   when a sheet is deleted, the receiving Office shall 
either  include a blank sheet with the same number and with the word 
"DELETED," or  its equivalent in the language of publication of the 
international application,  below the number, or insert, in brackets, 
below the number of the following  sheet, the number of the deleted sheet 
with the word "DELETED" or its equivalent  in the language of publication 
of the international application; 

                (ii)    when one or more sheets are added, each sheet 
shall  be identified by the number of the preceding sheet followed by a 
slant and  then by another Arabic numeral such that the additional sheets 
are numbered  consecutively, starting always with number one for the first 
sheet added after  an unchanged sheet (e.g., 10/1, 15/1, 15/2, 15/3, 
etc.); when later additions  of sheets to an existing series of added 
sheets are necessary, an extra numeral  shall be used for identifying the 
further additions (e.g., 15/1, 15/1/1, 15/1/2,  15/2, etc.). 

        (iii)     [Deleted] 

        (c)   In the cases mentioned in paragraph (b), it is recommended 
that  the receiving Office should write, below the number of the last 
sheet, the  total number of the sheets of the international application 
followed by the  words "TOTAL OF SHEETS" or their equivalent in the 
language of publication  of the international application. It is further 
recommended that, at the bottom  of any last sheet added, the words "LAST 
ADDED SHEET" or their equivalent in  the language of publication of the 
international application should be inserted. 

Section 312 


Notification of Decision Not To Issue Declaration 
that the International Application Is 
Considered Withdrawn 

        Where the receiving Office, after having notified the applicant 
under  Rule 29.4 of its intent to issue a declaration under Article 14(4), 
decides  not to issue such a declaration, it shall notify the applicant 
accordingly. 

Section 313 


Documents Filed with the International Application; 

Manner of Marking the Necessary Annotations in 

 the Check List 

        (a)   Any power of attorney, any priority document, any fee 
calculation  sheet, and any separate sheet referred to in Section 209(a) 
containing indications  as to deposited microorganisms, filed with the 
international application shall  accompany the record copy; any other 
document referred to in Rule 3.3(a)(ii)  shall be sent only at the 
specific request of the International Bureau. If  any document which is 
indicated in the check list as accompanying the international  application 
is not, in fact, filed at the latest by the time the record copy  leaves 
the receiving Office, that Office shall so note on the check list and  the 
said indication shall be considered as if it had not been made. 
        (b)   Where, under Rule 3.3(b), the receiving Office itself 
completes  the check list, that Office shall enter, in the margin, the 
words "COMPLETED  BY RO" or their equivalent in the language of 
publication of the international  application. Where only some of the 
indications are completed by the receiving  Office, the said words and 
each indication completed by that Office shall be  identified by an asterisk. 

        (c) Where a sequence listing in machine readable form, or a 
sequence  listing in printed form not forming part of the international 
application,  is furnished to the receiving Office, it shall be 
transmitted to the International Searching Authority  together with the 
search copy.  Where such a sequence listing is received by  the receiving 
Office after the transmittal of the search copy, the sequence  listing 
shall be promptly transmitted to the International Searching Authority. 

Section 314 


Correction or Cancellation of a 

Priority Claim under Rule 4.10 

        (a)   Where, in reply to an invitation by the receiving Office to 
correct  or cancel a priority claim under Rule 4.10(d), the applicant 
corrects the erroneously  indicated filing date of any earlier 
application, the receiving Office shall  enter the corrected date in the 
request, draw a line through the previously  entered date while still 
leaving it legible, and enter, in the margin, the  letters "RO." 

        (b)   Where, under Rule 4.10(d), the receiving Office cancels the 
declaration  claiming priority made under Article 8(1), that Office shall 
enclose the indication  on the request which contains the information 
concerning the priority claim 
(or, where the priorities of several earlier applications are claimed and 
not  all those priority claims are cancelled, the relevant part of the 
indication)  within square brackets, shall draw a line between the square 
brackets while  still leaving the indication or the relevant part legible 
and shall enter,  in the margin, the words "CANCELLED ON REQUEST OF 
APPLICANT" or "CANCELLED  EX OFFICIO BY RO", as the case may be, or their 
equivalent in the language  of publication of the international application. 

        (c)   The applicant and, if copies of the international 
application  have already been sent to the International Bureau and the 
International Searching  Authority, that Bureau and that Authority shall 
be notified by the receiving  Office of any correction or cancellation of 
a priority claim effected under  Rule 4.10(d) by the receiving Office. 

        (d)   Paragraphs (a) and (c) shall apply mutatis mutandis to the 
correction  of an obvious error under Rule 4.10(b). 


Section 315 


Notification Concerning Confirmation of Designation 

        Where a designation made under Rule 4.9(b) has been confirmed 
under  Rule 4.9(c), the receiving Office shall promptly notify the 
applicant and the  International Bureau. 


Section 316 


Procedure in the Case Where the International 

Application Lacks the Prescribed Signature 

        Where, under Article 14(1)(a)(i), the receiving Office finds that 
the  international application is defective in that it lacks the 
prescribed signature,  that Office shall send to the applicant, together 
with the invitation to correct  under Article 14(1)(b), a copy of the 
relevant sheet of the request part of  the international application. The 
applicant shall, within the prescribed time  limit, return said copy after 
affixing thereto the prescribed signature. 

Section 317 


[Deleted] 


Section 318 


Cancellation of Designations of 
Non-Contracting States 

        The receiving Office shall cancel ex officio the designation of 
any  State which is not a Contracting State, shall enclose that 
designation within  square brackets, shall draw a line between the square 
brackets while still  leaving the designation legible, shall enter, in the 
margin, the words "CANCELLED  EX OFFICIO BY RO" or their equivalent in the 
language of publication of the  international application, and shall 
promptly notify the applicant accordingly.  If the record copy has already 
been sent to the International Bureau, the receiving  Office shall also 
notify that Bureau. 


Section 319 


Later Indication of Priority Application Number 

        Where the application number of the earlier application referred 
to  in Rule 4.10(c) (priority application number) is furnished to the 
receiving  Office, that Office shall enter the said number on the request 
or, where the  record copy has already been sent to the International 
Bureau, promptly notify  that Bureau of the said number, and shall notify 
the International Bureau of  the date on which it received the said number. 


Section 320 


Invitation to Pay Fees under Rule 16bis.1(a) and (b) 

        (a)   If invitations to pay fees are required to be issued by the 
receiving  Office under both paragraph (a) and paragraph (b) of Rule 
16bis.1, those invitations  may be issued as separate invitations unless 
the due dates for the fees concerned  are less than 15 days apart, in 
which case those invitations shall preferably  be issued as a single 
invitation. 

        (b)   Where the receiving Office requires the payment of the late 
payment  fee under Rule 16bis.2, it shall calculate the amount of that fee 
on the basis  of the total amount of the fees due referred to in the 
invitation under paragraph 
(a). 

        (c)   When issuing an invitation under paragraph (a),the receiving 
 Office shall, if it received moneys from the applicant before the due 
date,  inform the applicant of the fees to which those moneys have been 
applied. 

Section 321 


Application of Moneys Received by the 

Receiving Office in Certain Cases 

        (a)   The receiving Office shall, to the extent that it has 
received  instructions from the applicant as to the fees to which it shall 
apply moneys  received by it from the applicant, apply those moneys 
accordingly. 
        (b)   Where the receiving Office receives moneys from the 
applicant  which, together with any other moneys so received, are not 
sufficient to cover  in full the transmittal fee (if any), the 
international fee and the search  fee (if any), the receiving Office 
shall, to the extent that it has not received  instructions from the 
applicant as to the fees to which it shall apply the  moneys which are 
available for the purpose, apply those moneys in payment,  successively, 
of the fees set out below to the extent that they are due and  unpaid and 
in the order in which they appear below: 

                (i)   the transmittal fee; 

                (ii)    the basic fee part of the international fee; 
                (iii)     the search fee; 

                (iv)    the designation fee part of the international fee 
for  designations made under Rule 4.9(a). 

        (c)   Where, pursuant to paragraph (b), the receiving Office 
allocates  moneys in payment of the designation fees to cover designations 
made under  Rule 4.9(a), it shall apply them to those fees as follows: 

                (i)   where the applicant indicates to which designation 
or  designations the amount is to be applied, it shall be applied 
accordingly but,  if the amount received is insufficient to cover the 
designations indicated,  it shall be applied in the order chosen by the 
applicant in indicating the  designations; 

                (ii)    to the extent that the applicant has not given the 
 indications referred to in item (i), the amount, or the balance thereof, 
shall  be applied to the designations in the order in which they appear in 
the request  part of the international application; 

                (iii)     where the designation of a State is for the 
purposes  of a regional patent, and provided that the required designation 
fee is, under  the preceding provisions, available for that designation, 
the designation of  any further States for which the same regional patent 
is sought shall be considered  as covered by that fee. 

        (d)   Where the receiving Office receives moneys from the 
applicant  in response to an invitation under Rule 16bis.1 which are not 
sufficient to  cover all the unpaid fees, including, where required, the 
late payment fee  under Rule 16bis.2, the moneys shall be applied in the 
order referred to in  paragraphs (b) and (c) to as many of the fees due, 
including any late payment  fee, as can be covered. 

        (e)   Where, pursuant to Rule 15.5(b), the receiving Office 
allocates  moneys in payment of fees under Rule 15.5(a) in respect of the 
confirmation  under Rule 4.9(c) of designations made under Rule 4.9(b), 
the receiving Office  shall apply those moneys as follows: 

                (i)   where the applicant indicates to which designation 
or  designations the amount is to be applied, it shall be applied 
accordingly,  but, if the amount is insufficient to cover the designations 
indicated, it  shall be applied to the designations in the order chosen by 
the applicant in  indicating the designations; 

                (ii)    to the extent that the applicant has not given the 
 indications referred to in item (i), the amount, or the balance thereof, 
shall  be applied to the designations in the order in which they appear in 
the notice  containing the confirmation; 

                (iii)     where the designation of a State is for the 
purposes  of a regional patent, and provided that the required designation 
fee is, under  the preceding provisions, available for that designation, 
the designation of  any further States for which the same regional patent 
is sought shall be considered  as covered by that fee. 

        (f)   When allocating moneys as provided in paragraph (e), both 
the  designation fee and the confirmation fee must be covered in respect 
of each  designation. 

        (g)   Where moneys have been applied by the receiving Office in 
accordance  with indications given by the applicant as mentioned in 
paragraph (c)(i) or (e)(i),  the receiving Office shall inform the 
International Bureau as to the effect  of the said indications, preferably 
by sending the International Bureau a copy  of any relevant written 
communication received from the applicant. 

Section 322 


Invitation to Submit a Request 

for Refund of the Search Fee 

        The receiving Office may, before making a refund of the search fee 
 under Rule 16.2, first invite the applicant to submit a request for the 
refund. 

Section 323 


Transmittal of Priority Documents 

        (a)   Any priority document which is submitted to the receiving 
Office  shall be transmitted by that Office to the International Bureau 
together with  the record copy or, if received after the record copy has 
been sent to the  International Bureau, promptly after having been 
received by that Office. 
        (b)   Where the applicant has requested the receiving Office to 
transmit  a priority document under Rule 17.1(b), the receiving Office 
shall, promptly  after receipt of a request for transmittal of the 
priority document and, where  applicable, the payment of the fee referred 
to in that Rule, transmit the priority  document to the International 
Bureau. Where such request for transmittal has  been made but the required 
fee has not been paid, the receiving Office shall  promptly notify the 
applicant that the request under Rule 17.1(b) will be considered  not to 
have been made unless the fee is paid within 16 months from the priority 
date or, in the case referred to in Article 23(2), not later than at the 
time  the processing or examination of the international application is 
requested. 
        (c)   When transmitting a priority document, the receiving Office 
shall  notify the International Bureau of the date on which it received 
the priority  document or the request for transmittal thereof under Rule 
17.1(b). 
        (d)   Where a request under Rule 17.1(b) to transmit the priority 
document  has been considered not to have been made, the receiving Office 
shall promptly  inform the International Bureau. Where the receiving 
Office fails to inform  the International Bureau accordingly within 17 
months from the priority date,  the receiving Office shall prepare and 
transmit the priority document to the  International Bureau even though 
the required fee has not been paid by the  applicant. 


Section 324 


Copy of Notification of the International 

Application Number and the International 

Filing Date under Rule 20.5(c) 

        The copy, sent to the International Bureau, of the notification of 
 the international application number and the international filing date 
under  Rule 20.5(c) shall also include, if the priority of an earlier 
application  is claimed in the international application, the date of 
filing-as indicated  in the international application-of that earlier 
application. If the priority  of several earlier applications is claimed, 
the earliest filing date shall  be indicated. 


Section 325 


Corrections of Defects under Rule 26.4(a), Rectifications of Obvious 
Errors  under Rules 4.10(b) and 91.1, and Corrections under Rule 9.2 

        (a)   Where the receiving Office receives a correction of defects 
under  Rule 26.4(a), makes a correction of an obvious error under Rule 
4.10(b) or  authorizes a rectification of an obvious error under Rule 
91.1, it shall: 
                (i) indelibly mark, in the upper right-hand corner of each 
 replacement sheet, the international application number and the date on 
which  that sheet was received; 

                (ii) indelibly mark, in the middle of the bottom margin of 
 each replacement sheet, the words "SUBSTITUTE SHEET (RULE 26)" (where the 
replacement  sheet contains a correction of defects under Rule 26) or 
"RECTIFIED SHEET" 
(where the replacement sheet contains the rectification of an obvious 
error)  or their equivalent in the language of publication of the 
international application; 
                (iii) indelibly mark on the letter containing the 
correction  or rectification, or accompanying any replacement sheet, the 
date on which  that letter was received; 

                (iv)    keep in its files a copy of the letter containing 
the  correction or rectification or, when the correction or rectification 
is contained  in a replacement sheet, the replaced sheet, a copy of the 
letter accompanying  the replacement sheet, and a copy of the replacement 
sheet; 

                (v)   subject to item (vi), promptly transmit any letter 
and  any replacement sheet to the International Bureau, and a copy thereof 
to the  International Searching Authority; 

                (vi)    where transmittals under Article 12(1) have not 
yet  been made, transmit any letter and any replacement sheet to the 
International  Bureau together with the record copy and, except where the 
international application  is considered withdrawn and Rule 29.1(a)(iii) 
applies, a copy of the said letter  or replacement sheet to the 
International Searching Authority together with  the search copy. The 
record copy and the search copy shall contain any replaced  sheet. 

        (b)   Where the receiving Office refuses to authorize the 
rectification  of an obvious error under Rule 91.1 or correction of an 
obvious error under  Rule 4.10(b), it shall proceed as indicated under 
paragraph (a)(i), (iii) and 
(iv) and promptly transmit any letter and any proposed replacement sheet 
to  the International Bureau. If the record copy has not yet been sent to 
the International  Bureau, any letter and any proposed replacement sheet 
shall be transmitted  together with the record copy. 

        (c) Where the receiving Office receives corrections aimed at 
complying  with Rule 9.1, paragraphs (a) and (b) shall apply mutatis 
mutandis, provided  that, where a sheet is marked as indicated in 
paragraph (a) (ii), the words  "SUBSTITUTE SHEET (RULE 9.2)" shall be used. 


Section 326 


Withdrawal by Applicant Under 

Rule 90bis.1, 90bis.2 or 90bis.3 

        (a)   The receiving Office shall promptly transmit to the 
International  Bureau any notice from the applicant effecting withdrawal 
of the international  application under Rule 90bis.1, of a designation 
under Rule 90bis.2 or of a  priority claim under Rule 90bis.3 which has 
been filed with it together with  an indication of the date of receipt of 
the notice. If the record copy has  not yet been sent to the International 
Bureau, the receiving Office shall transmit the said  notice together with 
the record copy. 

        (b)   If the search copy has already been sent to the 
International  Searching Authority and the international application is 
withdrawn under Rule 90bis.1  or a priority claim is withdrawn under Rule 
90bis.3, the receiving Office shall  promptly transmit a copy of the 
notice effecting withdrawal to the International  Searching Authority. 

        (c)   If the search copy has not yet been sent to the 
International  Searching Authority and the international application is 
withdrawn under Rule 90bis.1,  the receiving Office shall not send the 
search copy to the International Searching  Authority and shall, subject 
to Section 322, refund the search fee to the applicant  unless it has 
already been transferred to the International Searching Authority.  If the 
search fee has already been transferred to the International Searching 
Authority, the receiving Office shall send a copy of the request and of 
the  notice effecting withdrawal to that Authority. 

        (d)   If the search copy has not yet been sent to the 
International  Searching Authority and a priority claim is withdrawn under 
Rule 90bis.3, the  receiving Office shall transmit a copy of the notice 
effecting withdrawal to  the International Searching Authority together 
with the search copy. 

Section 327 


Ex Officio Correction of Request 

by the Receiving Office 

        (a)   Where the record copy has not yet been sent to the 
International  Bureau and the request requires correction because it 
contains an inconsistency  or a minor defect such as noncompliance with 
the requirement for indications  under Section 115, the receiving Office 
may correct the request ex officio.  If the receiving Office does so, it 
shall notify the applicant accordingly. 
        (b)   When making a correction under paragraph (a), the receiving 
Office  shall enter, in the margin, the letters "RO."  Where any matter is 
to be deleted,  the receiving Office shall enclose such matter within 
square brackets and shall  draw a line between the square brackets while 
still leaving the deleted matter  legible. Where any matter is to be 
replaced, both the first and second sentences  of this paragraph shall apply. 

        (c)   The receiving Office shall check the number of characters of 
 the file reference, if any, and shall delete any characters beyond the 
number  permitted by Section 109. 


Section 328 


Notifications Concerning Representation 

        (a)   Where a power of attorney or a document containing the 
revocation  or renunciation of an appointment is submitted to the 
receiving Office and  the record and search copies have already been 
transmitted, the receiving Office  shall immediately notify the 
International Bureau and the International Searching  Authority by sending 
them a copy of the power of attorney or document and request  the 
International Bureau to record a change in the indications concerning the 
agent or common representative under Rule 92bis.1(a)(ii). 

        (b)   If the record copy and/or search copy have not yet been 
transmitted  by the receiving Office, a copy of the power of attorney or 
document containing  the revocation or renunciation of an appointment 
shall be transmitted by the  receiving Office with the record copy and/or 
search copy. 


Section 329 


Correction of Indications Concerning the Applicant's Residence or 
Nationality 
Where, in response to an invitation to correct a defect under Article 
11(1)(i),  evidence is submitted indicating to the satisfaction of the 
receiving Office  that, in fact, the applicant had, on the date on which 
the international application  was actually received, the right to file an 
international application with  that receiving Office, the invitation 
shall be considered to be an invitation  to correct a defect under Article 
14(1)(a)(ii) and Rule 4.5 in the prescribed  indications concerning the 
applicant`s residence and/or nationality, and the  applicant may correct 
those indications accordingly. If such correction is  made, no defect 
shall be considered to exist under Article 11(1)(i). 

Section 330 


Transmittal of Record Copy Prevented or 
Delayed by National Security Prescriptions 

        (a)   Where prescriptions concerning national security prevent the 
 transmittal of the record copy by the receiving Office to the 
International  Bureau under Rule 22.1(a), the receiving Office shall 
notify the applicant  and the International Bureau accordingly. 

        (b)   The notifications under paragraph (a) shall be sent before 
the  expiration of 13 months from the priority date. Where the receiving 
Office  believes that national security clearance is imminent, it may 
postpone the  sending of the notifications, but shall send them before the 
expiration of  17 months from the priority date if no clearance has been 
given by that time. 

Section 331 


Receipt of Confirmation Copy 

Where, subject to Rule 92.4, the receiving Office receives an 
international  application by facsimile machine transmission and 
subsequently receives the  original ofthat international application, it 
shall mark such original with  the words "CONFIRMATION COPY" or their 
equivalent in the language of publication  of the international 
application on the bottom of the first page of the request  and on the 
first page of the description. The marking under Section 325 is  not 
required in such a case. The international application as received by 
facsimile  machine transmission shall constitute the record copy. The 
confirmation copy  shall be transmitted to the International Bureau in 
addition to the record  copy. 

PART 4 

INSTRUCTIONS RELATING TO THE INTERNATIONAL BUREAU 


Section 401 


Marking of the Sheets of the Record Copy 

        (a)   The International Bureau shall, upon receipt of the record 
copy,  mark the date of receipt of the record copy in the appropriate 
space on the  request. 

        (b)   If the receiving Office has failed to mark any sheet as 
provided  in Sections 311 and 325, the marking which has not been made may 
be inserted  by the International Bureau. 


Section 402 


Correction or Cancellation of a Priority 
 Claim under Rule 4.10(d) 

        (a)   Where, in reply to an invitation issued by the International 
 Bureau to cancel or correct a priority claim under Rule 4.10(d), the 
applicant  corrects the erroneously indicated filing date of any earlier 
application,  the International Bureau shall enter the corrected date in 
the request, draw  a line through the previously entered date while still 
leaving it legible,  and enter, in the margin, the letters IB. 

        (b)   Where, under Rule 4.10(d), the International Bureau cancels 
the  declaration claiming priority made under Article 8(1), that Bureau 
shall enclose  the indication on the request which contains the 
information concerning the  priority claim (or, where the priorities of 
several earlier applications are  claimed and not all those priority 
claims are cancelled, the relevant part  of the indication) within square 
brackets, shall draw a line between the square  brackets while still 
leaving the indication (or its relevant part) legible,  and shall enter, 
in the margin, the words "CANCELLED ON REQUEST OF APPLICANT"  or 
"CANCELLED EX OFFICIO BY IB," as the case may be, or their equivalent in 
French. 

        (c)   The applicant, the receiving Office, and the International 
Searching  Authority shall be notified by the International Bureau of any 
correction or  cancellation of a priority claim effected under Rule 
4.10(d) by the International  Bureau. 

        (d)   Any designated Office which has been notified under Rule 
24.2(b)  of the receipt of the record copy shall be notified by the 
International Bureau  of any correction or cancellation of a priority 
claim effected under Rule 4.10(d)  by the receiving Office or the 
International Bureau. 


Section 403 


Transmittal of Protest Against Payment of Additional Fee and Decision 
Thereon  Where International 
Application Is Considered To Lack Unity of Invention 

Where, under Rules 40.2(c) or 68.3(c), the International Bureau receives a 
 request from the applicant to forward to any designated or elected Office 
the  texts of both the protest against payment of an additional fee as 
provided  for in Articles 17(3)(a) and 34(3)(a) where the international 
application is  considered to lack unity of invention and the decision 
thereon by the International  Searching Authority or the International 
Preliminary Examining Authority, as  the case may be, it shall proceed 
according to such request. 


Section 404 


International Publication Number 
 of International Application 

The International Bureau shall assign to each published international 
application  an international publication number which shall be different 
from the international  application number. The international publication 
number shall be used on the  pamphlet and in the Gazette entry. It shall 
consist of the two-letter code  WO followed by a two-digit designation of 
the last two numbers of the year  of publication, a slant, and a serial 
number consisting of five digits (e.g.,  "WO78/12345"). 


Section 405 


[Deleted] 


Section 406 


Pamphlets 

        (a)   Pamphlets referred to in Rule 48.1 shall be published on a 
given  day of the week. 

        (b)   All pamphlets shall be of A4 size and shall be reproduced 
recto  verso, except that drawings shall be reproduced recto only. 

        (c)   The form and particulars of the front page of each pamphlet 
shall  be decided by the Director General. 


Section 407 


The Gazette 

        (a)   The Gazette referred to in Rule 86 shall be of A4 size and 
shall  be reproduced recto verso. 

        (b)   In addition to the contents specified in Rule 86, the 
Gazette  shall contain, in respect of each published international 
application, the  data indicated in Annex D. 

        (c)   The information referred to in Rule 86.1(v) shall be that 
which  is indicated in Annex E. 


Section 408 


Priority Application Number 

        (a)   If the application number of the earlier application 
referred  to in Rule 4.10(c) (priority application number) is furnished 
within the prescribed  time limit, the International Bureau shall enter 
the said number on the request,  unless already done by the receiving 
Office under Section 319. 

        (b)   If the priority application number is furnished after the 
expiration  of the prescribed time limit, the International Bureau shall 
inform the applicant  and the designated Offices of the date on which the 
said number was furnished.  It shall indicate the said date in the 
international publication by including  on the front page of the pamphlet 
next to the priority application number the  words "FURNISHED LATE ON ... 
(date)," and the equivalent of such words in the  language in which the 
international application is published if that language  is other than 
English. 

        (c)   If the priority application number has not been furnished at 
 the time of the completion of the technical preparations for 
international  publication, the International Bureau shall indicate that 
fact by including  on the front page of the pamphlet in the space provided 
for the priority application  number the words "NOT FURNISHED"  and the 
equivalent of such words in the language  in which the international 
application is published if that language is other  than English. 


Section 409 


Notification of Priority Claim Considered 
 Not To Have Been Made 

Where the International Bureau notes that the receiving Office has failed 
to  notify the applicant as provided in Section 302, it shall send a 
notification  to the same effect to the applicant, the receiving Office, 
and the International  Searching Authority. 


Section 410 


Numbering of Sheets for the Purposes of International Publication; 
Procedure  in Case of Missing Sheets or Drawings 

        (a)   In the course of preparing the international application for 
 international publication, the International Bureau shall sequentially 
renumber  the sheets of the international application only when 
necessitated by the addition  of any new sheet, the deletion of entire 
sheets or a change in the order of  the sheets. Otherwise, the numbering 
provided under Section 207 shall be maintained. 
        (b)   Where a sheet or a drawing has not been filed or is not to 
be  taken into consideration for the purposes of international processing 
under  Section 309(c) or Section 310(d), the International Bureau shall 
include an  indication to that effect in the pamphlet. 


Section 411 


Receipt of Priority Document 

        (a)   Subject to paragraph (b), the International Bureau shall 
record  the date on which the priority document has been received by it 
and shall notify  the applicant accordingly. 

        (b)   Where the priority document has been received by the 
International  Bureau from the receiving Office after the expiration of 16 
months from the  priority date, the date of receipt by the receiving 
Office of the priority  document or of a request under Rule 17.1(b), as 
the case may be, shall be recorded  as the date of receipt of the priority 
document. 

        (c)   Where the date of receipt of the priority document is later 
than  the expiration of 16 months from the priority date, the 
International Bureau  shall promptly notify the applicant. The designated 
Offices shall be so notified  together with the notification under Rule 
47.1(abis). 

        (d)   Where the International Bureau has not received, before the 
expiration  of 16 months from the priority date, the priority document or 
information that  the applicant has made a request under Rule 17.1(b) for 
the receiving Office  to transmit the priority document, the International 
Bureau shall promptly  notify the applicant. The designated Offices shall 
be so notified together  with the notification under Rule 47.1(abis). 


Section 412 


Notification of Lack of Transmittal of Search Copy 

If the International Bureau does not receive from the International 
Searching  Authority a notification under Rule 25.1 within two months from 
the date of  receipt of the record copy, the International Bureau shall 
remind the receiving  Office to transmit the search copy to the 
International Searching Authority.  A copy of the reminder shall be sent 
to the International Searching Authority. 

Section 413 


Corrections of Defects under Rule 26.4(a), 
Rectifications of Obvious Errors under Rules 4.10(b) and 91.1 and 
Corrections  under Rule 9.2 

        (a)   Where the International Bureau receives from the receiving 
Office  a letter containing a correction of any defects under Rule 
26.4(a), or a replacement  sheet and the letter accompanying it, the 
International Bureau shall transfer  the correction to the record copy, 
together with the indication of the date  on which the receiving Office 
received the letter, or shall insert the replacement  sheet in the record 
copy. Any letter and any replaced sheet shall be kept in  the file of the 
international application. 

        (b)   Paragraph (a) shall apply mutatis mutandis to rectifications 
 of obvious errors authorized by the receiving Office or by the 
International  Searching Authority under Rule 91.1, to corrections of 
obvious errors made  by the receiving Office under Rule 4.10(b) and to 
corrections submitted by  the applicant to the receiving Office or the 
International Searching Authority  aimed at complying with the 
prescription of Rule 9.1 concerning certain expressions,  drawings, 
statements, or other matter. 

 Section 414 

 Notification to the International Preliminary 
Examining Authority Where the International 
Application or the Designations of All Elected States Are Considered 
Withdrawn 
If a demand has been submitted and the international application or the 
designations  of all designated States which have been elected are 
considered withdrawn under  Article 14(1), (3), or (4), the International 
Bureau shall promptly notify  the International Preliminary Examining 
Authority, unless the international  preliminary examination report has 
already issued. 


Section 415 


Notification of Withdrawal under 
Rule 90bis.1, 90bis.2, 90bis.3 or 90bis.4 

        (a)   The fact of withdrawal by the applicant of the international 
 application under Rule 90bis.1, of designations under Rule 90bis.2, or of 
a  priority claim under Rule 90bis.3, together with the date on which the 
notice  effecting withdrawal reached the International Bureau, 
the International Preliminary Examining Authority or the receiving Office, 
 shall be recorded by the International Bureau and promptly notified by it 
to  the receiving Office, the applicant, the designated Offices affected 
by the  withdrawal if they have already been notified of their designation 
and, where  the withdrawal concerns the international application or a 
priority claim and  where the international search report or the 
declaration referred to in Article 17(2)(a)  has not yet issued, the 
International Searching Authority. However, where the  withdrawal concerns 
the international application and where the notice effecting  withdrawal 
was filed with the receiving Office before the sending of the record  copy 
to the International Bureau, that Bureau shall send the notifications 
referred to in the preceding sentence and in Rule 24.2(a) to the receiving 
 Office and the applicant only. 

        (b)   If, at the time of the withdrawal of the international 
application  under Rule 90bis.1, or of a priority claim under Rule 
90bis.3, a demand has  already been submitted and the international 
preliminary examination report  has not yet issued, the International 
Bureau shall, unless the notice effecting  withdrawal was submitted to the 
International Preliminary Examining Authority,  promptly notify the fact 
of withdrawal to that Authority, together with the  date on which the 
notice effecting withdrawal has reached the International  Bureau or the 
receiving Office. 

        (c)   The fact of withdrawal by the applicant of the demand or of 
one  or more elections under Rule 90bis.4, together with the date on which 
the notice  effecting withdrawal was, or was considered to have been, 
submitted to the  International Bureau, shall be promptly notified by that 
Bureau: 

        (i)   to the applicant, 

        (ii)    to each elected Office affected by the withdrawal, except 
where  it has not yet been notified of its election, and 

        (iii) in the case of withdrawal of the demand or of all elections, 
 to the International Preliminary Examining Authority, unless the notice 
effecting  withdrawal was submitted to that Authority. 


Section 416 


Correction of Request in Record Copy 

        (a)   Where the request requires correction as a consequence of 
the  withdrawal of a designation or of a change made under Rule 92bis, the 
International  Bureau shall make the necessary correction in the record 
copy and shall notify  the applicant and the receiving Office accordingly. 

        (b)   When making a correction under paragraph (a), the 
International  Bureau shall enter, in the margin, the letters "IB." Where 
the correction involves  the deletion or replacement of some matter, the 
International Bureau shall  enclose such matter within square brackets and 
shall draw a line between the  square brackets while still leaving the 
deleted or replaced matter legible. 

Section 417 


Processing of Amendments under Article 19 

        (a)   The International Bureau shall record the date on which, 
under  Rule 46.1, any amendment made under Article 19 was received, shall 
notify the  applicant of that date and indicate it in any publication or 
copy issued by  it. 

        (b) The International Bureau shall mark, in the upper right-hand 
corner  of each replacement sheet submitted under Rule 46.5(a), the 
international application  number the date on which that sheet was 
received under Rule 46.1 and, in the  middle of the bottom margin, the 
words "AMENDED SHEET (ARTICLE 19)." It shall  keep in its files any 
replaced sheet, the letter accompanying the replacement  sheet or sheets, 
and any letter referred to in the last sentence of Rule 46.5(a). 
        (c)   The International Bureau shall insert any replacement sheet 
in  the record copy and, in the case referred to in the last sentence of 
Rule 46.5(a),  shall indicate the cancellations in the record copy. 

        (d) If, at the time when the demand is received by the 
International  Bureau, the international search report has been 
established and no amendments  under Article 19 have been made, the 
International Bureau shall inform the  International Preliminary Examining 
Authority accordingly. 


Section 418 


Notifications to Elected Offices Where the 
Demand or an Election Is Considered Not 
To Have Been Submitted or Made 

Where, after any elected Office has been notified of its election under 
Article 31(7),  the demand or the election is considered not to have been 
submitted or made,  the International Bureau shall notify the said Office 
accordingly. 

Section 419 


[Deleted] 


Section 420 


Copy of International Application and International Search Report for the 
International  Preliminary 
Examining Authority 

Where the International Preliminary Examining Authority is not part of the 
 same national Office or intergovernmental organization as the 
International  Searching Authority, the International Bureau shall, 
promptly upon receipt  of the international search report or, if the 
demand was received after the  international search report, promptly upon 
receipt of the demand, send a copy  of the international application and 
the international search report to the  International Preliminary 
Examining Authority. In cases where, instead of the  international search 
report, a declaration under Article 17(2)(a) was issued,  references in 
the preceding sentence to the international search report shall  be 
considered references to the said declaration. 


Section 421 


Invitation To Furnish a Copy 
of the Priority Document 

Where a request for a copy of the application whose priority is claimed in 
 the international application is made under Rule 66.7(a) by the 
International  Preliminary Examining Authority before the International 
Bureau has received  the priority document under Rule 17.1, the 
International Bureau shall, unless  the applicable time limit referred to 
in Rule 17.1(a) has already expired,  inform the applicant of such request 
and remind him of the requirements of  Rule 17.1. 


Section 422 


Notifications Concerning Changes 
Recorded under Rule 92bis.1 

        (a)   The International Bureau shall give notifications concerning 
 changes recorded by it under Rule 92bis.1(a), except changes which are 
the  subject of notifications under Section 425: 

                (i)   to the receiving Office; 

                (ii)    as long as the international search report has not 
 been established, to the International Searching Authority; 

                (iii) to the designated Offices, unless the change has 
been  recorded after the expiration of the time limit referred to in 
Article 22(1)  or unless the change can be duly reflected in the pamphlet 
used for the purposes  of the communication of the international 
application under Article 20; 
                (iv) as long as the international preliminary examination 
report  has not been established, to the International Preliminary 
Examining Authority; 
                (v)   to the elected Offices, unless the change can be 
duly  reflected in the pamphlet used for the purposes of the communication 
of the  international application under Article 20; 

                (vi) to the applicant; where the change consists of a 
change  in the person of the applicant, the notification shall be sent to 
the earlier  applicant and the new applicant, provided that, where the 
earlier applicant  and the new applicant are represented by the same 
agent, one notification only  shall be sent to the said agent. 

        (b)   Where Rule 92bis.1(b) applies, the International Bureau 
shall  notify the applicant accordingly and, if the change was requested 
by the receiving  Office, that Office. 


Section 423 


Cancellation of Designations and Elections 

        (a)   The International Bureau shall, if the receiving Office has 
failed  to do so, cancel ex officio the designation of any State which is 
not a Contracting  State, shall enclose that designation within square 
brackets, draw a line between  the square brackets while still leaving the 
designation legible, enter, in the margin, the words "CANCELLED EX 
OFFICIO"  BY IB or their equivalent in French, and notify the applicant 
and the receiving  Office accordingly. 

        (b) The International Bureau shall cancel ex officio: 

        (i) the election, in the demand or in a notice effecting a later 
election,  of any State which is not a designated State; 

        (ii) the election, in the demand, of any State not bound by 
Chapter  II of the Treaty, if the International Preliminary Examining 
Authority has  failed to do so; 

        (iii) the election, in a notice effecting a later election, of any 
 State not bound by Chapter II of the Treaty. 

        (c) The International Bureau shall enclose the cancelled election 
within  square brackets, draw a line between the square brackets while 
still leaving  the election legible, enter, in the margin, the words 
"CANCELLED EX OFFICIO  BY IB" or their equivalent in French, and notify 
the applicant and, if the  election is in the demand, the International 
Preliminary Examining Authoring  accordingly. 


Section 424 


[Deleted] 


Section 425 


Notifications Concerning Representation 

Where a power of attorney or a document containing the revocation or 
renunciation  of an appointment is submitted to the International Bureau, 
the International  Bureau shall immediately notify the receiving Office, 
the International Searching  Authority and the International Preliminary 
Examining Authority by sending  them a copy of the power of attorney or 
document and shall record a change  in the indications concerning the 
agent or common representative under Rule 92bis.  In the case of a 
renunciation of an appointment, the International Bureau shall  also 
notify the applicant. Where the International Bureau receives a 
notification  concerning representation under Section 328, it shall 
immediately notify the  International Preliminary Examining Authority 
accordingly. 


Section 426 


Notification of Designation under Rule 24.2(b) 

Each designated Office having notified the International Bureau under Rule 
24.2(b)  that it wishes to receive the notification under Rule 24.2(a) 
shall receive  periodically, but at least once a month, a listing of the 
international applications  containing the designation(s) of the State(s) 
for which that Office acts as  a designated Office, including designations 
made under Rule 4.9(a) and those  made under Rule 4.9(b) which have been 
confirmed under Rule 4.9(c). Such listing  shall contain, in respect of 
each designation: 

(i)   the international application number, 

(ii)    the international filing date, 

(iii)     the name of the applicant, and 

(iv)    the earliest priority date claimed. 


Section 427 


Publication of Notice of Confirmation of Designation 

Where an international application has been published under Article 
21(2)(b)  before the confirmation of a designation under Rule 4.9(c), a 
notice of that  confirmation shall be published in the Gazette. 


Section 428 


Publication of Notice of Later Election 

Where a later election is made before the expiration of 19 months from the 
 priority date, a notice of that fact shall be published in the Gazette. 

Section 429 


Notice of Extension 

Where a request for extension of the effects of an international 
application  to a successor State, made in accordance with Rule 32.1(c), 
is received by  the International Bureau after technical preparations for 
international publication  have been completed, a notice of this fact 
shall be published in the Gazette. 

Section 430 


Notification of Designations under Rule 32 
(Extensions) 

Where the request for extension is made under Rule 32.1(c), the 
International  Bureau shall promptly, but not before the international 
publication of the  international application, effect the communication 
under Article 20 to the  designated Office concerned, notify that Office 
under Rule 47.1(abis), and  notify it of the date of the receipt of the 
request for extension. 
PART 5 

INSTRUCTIONS RELATING TO THE INTERNATIONAL SEARCHING AUTHORITY 


Section 501 


Corrections Submitted to the International Searching 
Authority Concerning Expressions, etc., Not To Be Used in the 
International  Application 

        Where the International Searching Authority receives corrections 
aimed  at complying with Rule 9.1, Section 511 shall apply mutatis 
mutandis, provided  that, where a sheet is marked as indicated in Section 
511(a)(ii), the words  ``SUBSTITUTE SHEET (RULE 9.2)" shall be used. 


Section 502 


Transmittal of Protest Against Payment of Additional Fee and Decision 
Thereon  Where International 
Application Is Considered To Lack Unity of Invention 

        The International Searching Authority shall transmit to the 
applicant,  preferably at the latest together with the international 
search report, any  decision which it has taken under Rule 40.2(c) on the 
protest of the applicant  against payment of an additional fee where the 
international application is  considered to lack unity of invention. At 
the same time, it shall transmit  to the International Bureau a copy of 
both the protest and the decision thereon,  as well as any request by the 
applicant to forward the texts of both the protest  and the decision 
thereon to the designated Offices. 


Section 503 


Method of Identifying Documents Cited in the 
International Search Report 

        Identification of any document cited in the international search 
report  shall be as provided in WIPO Standard ST.14 (Recommendation for 
the Inclusions  of References Cited in Patent Documents).5 


Section 504 


Classification of the Subject Matter of the 
International Application 

        (a)   Where the subject matter of the international application is 
 such that classification thereof requires more than one classification 
symbol  according to the principles to be followed in the application of 
the International  Patent Classification to any given patent document, the 
international search  report shall indicate all such symbols. 

        (b)   Where any national classification system is used, the 
international  search report may indicate all the applicable 
classification symbols also according  to that system. 

        (c)   Where the subject matter of the international application is 
 classified both according to the International Patent Classification and 
to  any national classification system, the international search report 
shall,  wherever possible, indicate the corresponding symbols of both 
classifications  opposite each other. 

        (d)   The version of the International Patent Classification 
applicable  at the time the international application is published under 
Article 21 shall  be used whenever feasible. 


Section 505 


Indication of Citations of Particular Relevance in the International 
Search  Report 

        (a)   Where any document cited in the international search report 
is  of particular relevance, the special indication required by Rule 
43.5(c) shall  consist of the letter(s) "X" and/or "Y" placed next to the 
citation of the  said document. 

        (b)   Category "X" is applicable where a document is such that 
when  taken alone, a claimed invention cannot be considered novel or 
cannot be considered  to involve an inventive step. 

        (c)   Category "Y" is applicable where a document is such that a 
claimed  invention cannot be considered to involve an inventive step when 
the document  is combined with one or more other such documents, such 
combination being obvious  to a person skilled in the art. 


Section 506 


Comments on Draft Translation of the 
International Application 

  (a)     Where the applicant has made comments, within the time limits 
fixed  by the International Searching Authority, on the draft translation 
prepared  under the responsibility of the International Searching 
Authority as provided  in Rule 48.3(b), that Authority shall notify the 
applicant whether it has changed  the draft translation and, if so, of the 
changes it has made therein. 
        (b)   Where the applicant submits comments on the draft 
translation  prepared under the responsibility of the International 
Searching Authority  after the expiration of the time limits fixed by the 
International Searching  Authority, and that Authority changes the draft 
translation, it shall notify  the applicant accordingly. 


Section 507 


Manner of Indicating Certain Special Categories of 
Documents Cited in the International Search Report 

        (a)   Where any document cited in the international search report 
refers  to an oral disclosure, use, exhibition, or other means referred to 
in Rule 33.1(b),  the separate indication required by that Rule shall 
consist of the letter   "O" placed next to the citation of the said document. 

        (b)   Where any document cited in the international search report 
is  a published application or patent as defined in Rule 33.1(c), the 
special mention  required by that Rule shall consist of the letter  "E" 
placed next to the citation  of the said document. 

        (c)   Where any document cited in the international search report 
is  not considered to be of particular relevance requiring the use of 
categories  "X" and/or "Y" as provided in Section 505 but defines the 
general state of  the art, it shall be indicated by the letter  "A" placed 
next to the citation  of the said document.^ 

        (d)   Where any document cited in the international search report 
is  a document whose publication date occurred earlier than the 
international filing  date of the international application, but later 
than the priority date claimed  in that application, it shall be indicated 
by the letter "P" next to the citation  of the said document. 

        (e)   Where any document cited in the international search report 
is  a document whose publication date occurred after the filing date or 
the priority  date of the international application and is not in conflict 
with the said  application, but is cited for the principle or theory 
underlying the invention,  which may be useful for a better understanding 
of the invention, or is cited  to show that the reasoning or the facts 
underlying the invention are incorrect,  it shall be indicated by the 
letter  "T" next to the citation of the document. 
        (f)   Where in the international search report any document is 
cited  for reasons other than those referred to in paragraphs (a) to (e), 
for example: 
  - a document which may throw doubt on a priority claim,& 

  - a document cited to establish the publication date of another 
citation,* 
such document shall be indicated by the letter  "L" next to the citation 
of  the document and the reason for citing the document shall be given. 
        (g)   Where a document is a member of a patent family,( it shall, 
whenever  feasible, be mentioned in the international search report in 
addition to the  one cited belonging as well to this family and should be 
preceded by the sign  ampersand (&). Members of a patent family may also 
be mentioned on a separate  sheet, provided that the family to which they 
belong shall be clearly identified and that any text matter on that sheet, 
if not in the English language,  shall also be furnished to the 
International Bureau in English translation. 
        (h)   A document whose contents have not been verified by the 
search  examiner but are believed to be substantially identical with those 
of another  document which the search examiner has inspected, may be cited 
in the international  search report in the manner indicated for patent 
family members in the first  sentence of paragraph (g).10 


Section 508 


Manner of Indicating the Claims to Which the 
Documents Cited in the International Search Report Are Relevant 

        (a)   The claims to which cited documents are relevant shall be 
indicated  by placing in the appropriate column of the international 
search report: 
(i)   where the cited document is relevant to one claim, the number of 
that  claim; for example, "2" or "17" ; 

(ii)    where the cited document is relevant to two or more claims 
numbered  in consecutiveorder, the number of the first and last claims of 
the series  connected by a hyphen; for example, "1-15" or "2-3"; 

(iii)     where the cited document is relevant to two or more claims that 
are  not numbered in consecutive order, the number of each claim placed in 
ascending  order and separated by a comma or commas; for example, "1, 6" 
or "1, 7, 10"; 

(iv)    where the cited document is relevant to more than one series of 
claims  under (ii), above, or to claims of both categories (ii) and (iii), 
above, the  series or individual claim numbers and series placed in 
ascending order using commas  to separate the several series, or 
toseparate the numbers of individual claims  and each series of claims; 
for example, "1-6, 9-10, 12-15 or 1, 3-4, 6, 9-11"  . 

        (b)   Where different categories apply to the same document cited 
in  an international search report in respect of different claims or 
groups of  claims, each relevant claim or group of claims shall be listed 
separately opposite  each indicated category of relevance. Each category 
and each relevant claim  or group of claims may be separated by a line. 

The following example illustrates the situation where a document is of 
particular  relevance under Section 505(b) as to claims 1 to 3 and under 
Section 505(c)  as to claim 4, and indicates the general state of the art 
under Section 507(c)  as to claims 11 and 12: 

Category        Citation        Relevant to claim No. 

        GB, A 392,415 (JONES) 
        18 May 1933 (18.05.33) 

X Fig.1       1-3 

Y page 3, lines 5-7     4 

A Fig.5, support 36   11-12 

                        [End of example] 


Section 509 


[Deleted] 


Section 510 


Refund of Search Fee in Case of Withdrawal of 
 International Application 

        (a)   Where the international application is withdrawn or is 
considered  withdrawn before the International Searching Authority has 
started the international  search, that Authority shall, subject to 
paragraphs (b) and (c), refund the  search fee to the applicant. 

        (b)   If the refund referred to in paragraph (a) is not compatible 
 with the national law of the national Office acting as International 
Searching  Authority and as long as it continues to be not compatible with 
that law, the  International Searching Authority may abstain from 
refunding the search fee. 
  (c)     The International Searching Authority may, before making a 
refund  under paragraph (a), first invite the applicant to submit a 
request for the  refund. 


Section 511 


Rectifications of Obvious Errors under Rule 91.1 

        (a)   Where the International Searching Authority authorizes a 
rectification  under Rule 91.1, it shall: 

        (i)   indelibly mark, in the upper right-hand corner of each 
replacement  sheet, the international application number and the date on 
which that sheet  was received; 

        (ii)    indelibly mark, in the middle of the bottom margin of each 
 replacement sheet, the words ``RECTIFIED SHEET (RULE 91)'' or their 
equivalent  in the language of publication of the international 
application as well as  an indication of the International Searching 
Authority as provided for in Section  107(b); 

        (iii)     indelibly mark on the letter containing the 
rectification  or accompanying any replacement sheet the date on which 
that letter was received; 
        (iv)    keep in its files a copy of the letter containing the 
rectification  or, when the rectification is contained in a replacement 
sheet, the replaced  sheet, a copy of the letter accompanying the 
replacement sheet, and a copy  of the replacement sheet; 

        (v)   promptly transmit any letter and any replacement sheet to 
the  International Bureau and a copy thereof to the receiving Office. 

        (b)   Where the International Searching Authority refuses to 
authorize  a rectification under Rule 91.1, it shall proceed as indicated 
under paragraph (a)(i), 
(iii), and (iv) and promptly transmit any letter and any proposed 
replacement  sheet to the International Bureau. 


Section 512 


Notifications Concerning Representation 

        Where a power of attorney or a document containing the revocation 
or  renunciation of an appointment is submitted to the International 
Searching  Authority, that Authority shall immediately notify the 
International Bureau  by sending it a copy of the power of attorney or 
document and request the International  Bureau to record a change in the 
indications concerning the agent or common  representative under Rule 
92bis.1(a)(ii). 


Section 513 


Sequence Listings 

        (a)   Where the International Searching Authority finds that an 
international  application contains a disclosure of a nucleotide and/or 
amino acid sequence  but the international application does not contain a 
listing of that sequence,  that Authority may invite the applicant to 
furnish it with a sequence listing  which is in compliance with Section 208. 

        (b)   Where a sequence listing has been furnished separately from 
the  international application to the International Searching Authority or 
transcribed  by that Authority, the international search report shall so 
indicate. 
        (c)   Where a meaningful international search cannot be carried 
out  because a sequence listing is not available to the International 
Searching  Authority in the required form, that Authority shall so state 
in the international  search report. 

        (d)   The International Searching Authority shall indelibly mark, 
in  the upper right-hand corner of the first sheet, and preferably of all 
sheets,  of any sequence listing in printed form not forming part of the 
international  application, the words "SEPARATELY FURNISHED SEQUENCE LISTING." 



Section 514 


Authorized Officer 

        The officer of the International Searching Authority responsible 
for  the international search report, as referred to in Rule 43.8 means 
the person  who actually performed the search work and prepared the search 
report or another  person who was responsible for supervising the search. 


Section 515 


Amendment of Established Abstract in 
Response to Applicant's Comments 

        The International Searching Authority shall inform the applicant 
and  the International Bureau of any amendments made under Rule 38.2(b) to 
an abstract  established by it under Rule 38.2(a). 


PART 6 

INSTRUCTIONS RELATING TO THE INTERNATIONAL 
PRELIMINARY EXAMINING AUTHORITY 


Section 601 


Notice to Applicant of Filing of Demand After the 
Expiration of 19 Months From the Priority Date 

        Where the demand is filed after the expiration of 19 months from 
the  priority date, the International Preliminary Examining Authority 
shall promptly  notify the applicant accordingly and direct his attention 
to the fact that  the time limit under Article 39(1)(a) does not apply. 


Section 602 


Processing of Amendments by the International 
Preliminary Examining Authority 

        (a)   The International Preliminary Examining Authority shall: 
        (i)   indelibly mark, in the upper right-hand corner of each 
replacement  sheet submitted under Rule 66.8(a), the international 
application number and  the date on which that sheet was received; 

        (ii)    indelibly mark, in the middle of the bottom margin of each 
 replacement sheet, the words ``AMENDED SHEET" or their equivalent in the 
language  of the demand as well as an indication of the International 
Preliminary Examining  Authority as provided for in Section 107(b); 

        (iii)     keep in its files any replaced sheet, the letter 
accompanying  any replacement sheet, and any superseded replacement sheet 
or any letter referred  to in the last sentence of Rule 66.8(a) as well as 
a copy of any replacement  sheet which is annexed to the international 
preliminary examination report; 
        (iv)    annex to the copy of the international preliminary 
examination  report which is transmitted to the International Bureau any 
replacement sheet  as provided for under Rule 70.16; 

        (v)   annex to the copy of the international preliminary 
examination  report which is transmitted to the applicant a copy of each 
replacement sheet  as provided for under Rule 70.16. 

        (b)   Section 311(b)(ii) relating to the numbering of replacement 
sheets  shall apply when one or more sheets are added under Rule 66.8(a). 
        (c)   Where the International Preliminary Examining Authority 
receives  from the applicant a copy of a purported amendment under Article 
19 submitted  after the time limit set forth in Rule 46.1, the 
International Preliminary  Examining Authority may consider such an 
amendment as an amendment under Article 34  in which case it shall inform 
the applicant accordingly. 

        (d)   Where the International Preliminary Examining Authority 
receives  a copy of an amendment under Article 19, paragraphs (a) and (b) 
shall apply  mutatis mutandis. 


Section 603 


Transmittal of Protest Against Payment of Additional Fee and Decision 
Thereon  Where International 
Application Is Considered To Lack Unity of Invention 

        The International Preliminary Examining Authority shall transmit 
to  the applicant, preferably at the latest together with the 
international preliminary  examination report, any decision which it has 
taken under Rule 68.3(c) on the  protest of the applicant against payment 
of an additional fee where the international  application is considered to 
lack unity of invention. At the same time, it  shall transmit to the 
International Bureau a copy of both the protest and the  decision thereon, 
as well as any request by the applicant to forward the texts  of both the 
protest and the decision thereon to the elected Offices. 

Section 604 


Guidelines for Explanations Contained in the 
International Preliminary Examination Report 

        (a)   Explanations under Rule 70.8 shall clearly point out to 
which  of the three criteria of novelty, inventive step (nonobviousness) 
and industrial applicability referred to in Article 35(2),  taken 
separately, any cited document is applicable and shall clearly describe, 
with reference to the cited documents, the reasons supporting the 
conclusion  that any of the said criteria is or is not satisfied. 

        (b)   Explanations under Article 35(2) shall be concise and 
preferably  in the form of short sentences. 


Section 605 


File To Be Used for International 
Preliminary Examination 

        Where the International Preliminary Examining Authority is part of 
 the same national Office or intergovernmental organization as the 
International  Searching Authority, the same file shall serve the purposes 
of international  search and international preliminary examination. 


Section 606 


Cancellation of Elections 

        The International Preliminary Examining Authority shall, if the 
election  is in the demand, cancel ex officio the election of any State* 
which is not  bound by Chapter II of the Treaty, shall enclose that 
election within square  brackets, shall draw a line between the square 
brackets while shill leaving  the election legible and shall enter, in the 
margin, the words ``CANCELLED  EX OFFICIO BY IPEA'' or their equivalent in 
the language of the demand, and  shall notify the applicant accordingly. 


Section 606bis 


Procedure Where Election of a State Considered 
Not To Have Been Made 

        Where under Rule 60.1(d), the election of a State is to be 
considered  as if it had not been made, the International Preliminary 
Examining Authority  shall indicate that fact in the demand by enclosing 
the election of that State  within square brackets, drawing a line between 
the square brackets while still  leaving the election legible, and 
entering in the margin the words "CONSIDERED  NOT TO HAVE BEEN MADE" or 
their equivalent in the language of the demand. 

Section 607 


Rectifications of Obvious Errors under Rule 91.1 

        Where the International Preliminary Examining Authority authorizes 
 a rectification of an obvious error under Rule 91.1, Rule 70.16 and 
Section  602(a) and (b) shall apply mutatis mutandis, provided that, where 
a sheet is  marked as indicated in Section 602, the words ``RECTIFIED 
SHEET (RULE 91)''  shall be used. 

        Where the International Preliminary Examining Authority authorizes 
 a rectification of an obvious error under Rule 91.1, Rule 70.16 and 
Section 602(a)  and (b) shall apply mutatis mutandis. 


Section 608 


Notifications Concerning Representation 

        Where a power of attorney or a document containing the revocation 
or  renunciation of an appointment is submitted to the International 
Preliminary  Examining Authority, that Authority shall immediately notify 
the International  Bureau by sending it a copy of the power of attorney or 
document and request  the International Bureau to record a change in the 
indications concerning the  agent or common representative under Rule 
92bis.1(a)(ii). 


Section 609 


Withdrawal by Applicant under 
Rule 90bis.1, 90bis.2, or 90bis.3 

        The International Preliminary Examining Authority shall promptly 
transmit  to the International Bureau any notice from the applicant 
effecting withdrawal  of the international application under Rule 
90bis.1(b), of a designation under  Rule 90bis.2(d), or of a priority 
claim under Rule 90bis.3(c) which has been  filed with it. The 
International Preliminary Examining Authority shall mark  the notice with 
the date on which it was received. 


Section 610 


Sequence Listings in Machine Readable Form 

        Where a nucleotide and/or amino acid sequence listing in machine 
readable  form is not available from the International Searching 
Authority, the International Preliminary Examining Authority may request 
the applicant to supply it with  such listing in a format acceptable to 
the International Preliminary Examining  Authority in accordance with 
Annex C. 


Section 611 


Method of Identification of Documents in the 
International Preliminary Examination Report 

        Any document cited in the international preliminary examination 
report  which was not cited in the international search report shall be 
cited in the  same form as required under Section 503 for international 
search reports. Any  document cited in the international preliminary 
examination report which was  previously cited in the international search 
report may be cited in a shortened  form, provided that the document is 
unambiguous. 


Section 612 


Authorized Officer 

        The officer of the International Preliminary Examining Authority 
responsible  for the international preliminary examination report, as 
referred to in Rule  70.14, means the person who actually performed the 
examination work and prepared  the international preliminary examination 
report or another person who was  responsible for supervising the examination. 


Section 613 


Invitation to Submit a Request for Refund 
of Fees under Rule 57.6 or 58.3 

        The International Preliminary Examining Authority may, before 
making  a refund under Rule 57.6 or 58.3, first invite the applicant to 
submit a request  for the refund. 


Section 614 


Evidence of Right to File Demand 

        Where a demand is considered as not having been made under Rule 
61.1(b)  by the International Preliminary Examining Authority because the 
applicant  appeared, on the basis of the indication made in the demand, 
not to have the  right to file a demand with that Authority under Rule 54 
but evidence is submitted  indicating to the satisfaction of the 
International Preliminary Examining Authority  that in fact, an applicant 
had, on the date on which the demand was received,  the right to file the 
demand with that Authority, the International Preliminary  Examining 
Authority shall regard the requirements under Article 31(2)(a) as  having 
been fulfilled on the date of actual receipt of the demand. 
[Annexes follow] 


ANNEX A11 

FORMS 

                [This Annex contains all the Forms for use by applicants 
and  by the International Authorities, including those referred to in 
Section 102  of these Administrative Instructions; it consists of five 
Parts as follows: 
        Part I:       Forms Relating to the Receiving Office 

        Part II:        Forms Relating to the International Searching 
Authority 
        Part III: Forms Relating to the International Bureau 

        Part IV:        Forms Relating to the International Preliminary 
Examining  Authority 

        Part V:       Request and Demand Forms] 

[Annex B follows] 



ANNEX B 

UNITY OF INVENTION 

PART 1 

INSTRUCTIONS CONCERNING UNITY OF INVENTION 

        (a)   Unity of Invention. Rule 13.1 deals with the requirement of 
unity  of invention and states the principle that an international 
application should  relate to only one invention or, if there is more than 
one invention, that  the inclusion of those inventions in one 
international application is only  permitted if all inventions are so 
linked as to form a single general inventive  concept. 

        (b)   Technical Relationship. Rule 13.2 defines the method for 
determining  whether the requirement of unity of invention is satisfied in 
respect of a  group of inventions claimed in an international application. 
Unity of invention  exists only when there is a technical relationship 
among the claimed inventions  involving one or more of the same or 
corresponding special technical features.  The expression "special 
technical features" is defined in Rule 13.2 as meaning  those technical 
features that define a contribution which each of the inventions, 
considered as a whole, makes over the prior art. The determination is made 
 on the contents of the claims as interpreted in light of the description 
and  drawings (if any). 

        (c)   Independent and Dependent Claims. Unity of invention has to 
be  considered in the first place only in relation to the independent 
claims in  an international application and not the dependent claims. By 
"dependent" claim  is meant a claim which contains all the features of 
another claim and is in  the same category of claim as that other claim 
(the expression "category of  claim" referring to the classification of 
claims according to the subject matter  of the invention claimed for 
example, product, process, use or apparatus or  means, etc.). 

        (i)   If the independent claims avoid the prior art and satisfy 
the  requirement of unity of invention, no problem of lack of unity arises 
in respect  of any claims that depend on the independent claims. In 
particular, it does  not matter if a dependent claim itself contains a 
further invention. Equally,  no problem arises in the case of a 
genus/species situation where the genus  claim avoids the prior art. 
Moreover, no problem arises in the case of a combination/subcombination 
situation where the subcombination claim avoids the prior art and the 
combination  claim includes all the features of the subcombination. 

        (ii)    If, however, an independent claim does not avoid the prior 
 art, then the question whether there is still an inventive link between 
all  the claims dependent on that claim needs to be carefully considered. 
If there  is no link remaining, an objection of lack of unity a posteriori 
(that is,  arising only after assessment of the prior art) may be raised. 
Similar considerations  apply in the case of a genus/species or 
combination/subcombination situation. 
        (iii)     This method for determining whether unity of invention 
exists  is intended to be applied even before the commencement of the 
international  search. Where a search of the prior art is made, an initial 
determination of  unity of invention, based on the assumption that the 
claims avoid the prior  art, may be reconsidered on the basis of the 
results of the search of the prior  art. 

        (d)   Illustrations of Particular Situations. There are three 
particular  situations for which the method for determining unity of 
invention contained  in Rule 13.2 is explained in greater detail: 

        (i)   combinations of different categories of claims; 

        (ii)    so-called "Markush practice"; and 

        (iii)     intermediate and final products. 

        Principles for the interpretation of the method contained in Rule 
13.2,  in the context of each of those situations are set out below. It is 
understood  that the principles set out below are, in all instances, 
interpretations of  and not exceptions to the requirements of Rule 13.2. 

        Examples to assist in understanding the interpretation on the 
three  areas of special concern referred to in the preceding paragraph are 
set out  below. 

        (e)   Combinations of Different Categories of Claims. The method 
for  determining unity of invention under Rule 13 shall be construed as 
permitting,  in particular, the inclusion of any one of the following 
combinations of claims  of different categories in the same international 
application: 

(i)   in addition to an independent claim for a given product, an 
independent  claim for a process specially adapted for the manufacture of 
the said product,  and an independent claim for a use of the said product, or 

(ii)    in addition to an independent claim for a given process, an 
independent  claim for an apparatus or means specifically designed for 
carrying out the  said process, or 

(iii)     in addition to an independent claim for a given product, an 
independent  claim for a process specially adapted for the manufacture of 
the said product  and an independent claim for an apparatus or means 
specifically designed for  carrying out the said process, 

it being understood that a process is specially adapted for the 
manufacture  of a product if it inherently results in the product and that 
an apparatus  or means is specifically designed for carrying out a process 
if the contribution  over the prior art of the apparatus or means 
corresponds to the contribution  the process makes over the prior art. 

        Thus, a process shall be considered to be specially adapted for 
the  manufacture of a product if the claimed process inherently results in 
the claimed  product with the technical relationship being present between 
the claimed product  and claimed process. The words "specially adapted" 
are not intended to imply  that the product could not also be manufactured 
by a different process. 
        Also an apparatus or means shall be considered to be "specifically 
 designed for carrying out" a claimed process if the contribution over the 
prior  art of the apparatus or means corresponds to the contribution the 
process makes  over the prior art. Consequently, it would not be 
sufficient that the apparatus  or means is merely capable of being used in 
carrying out the claimed process.  However, the expression "specifically 
designed" does not imply that the apparatus  or means could not be used 
for carrying out another process, nor that the process  could not be 
carried out using an alternative apparatus or means. 

        (f)   "Markush Practice. " The situation involving the so-called 
"Markush  practice" wherein a single claim defines alternatives (chemical 
or non-chemical)  is also governed by Rule 13.2. In this special 
situation, the requirement of  a technical interrelationship and the same 
or corresponding special technical  features as defined in Rule 13.2, 
shall be considered to be met when the alternatives  are of a similar nature. 

        (i)   When the Markush grouping is for alternatives of chemical 
compounds,  they shall be regarded as being of a similar nature where the 
following criteria  are fulfilled: 

        (A)   all alternatives have a common property or activity, and 
        (B)(1)      a common structure is present, i.e., a significant 
structural  element is shared by all of the alternatives, or 

        (B)(2)      in cases where the common structure cannot be the 
unifying  criteria, all alternatives belong to a recognized class of 
chemical compounds  in the art to which the invention pertains. 

        (ii)    In paragraph (f)(i)(B)(1), above, the words "significant 
structural  element is shared by all of the alternatives" refer to cases 
where the compounds  share a common chemical structure which occupies a 
large portion of their structures,  or in case the compounds have in 
common only a small portion of their structures,  the commonly shared 
structure constitutes a structurally distinctive portion  in view of 
existing prior art. The structural element may be a single component  or a 
combination of individual components linked together. 

        (iii)     In paragraph (f)(i)(B)(2), above, the words "recognized 
class  of chemical compounds" mean that there is an expectation from the 
knowledge  in the art that members of the class will behave in the same 
way in the context of the  claimed invention. In other words, each member 
could be substituted one for  the other, with the expectation that the 
same intended result would be achieved. 
        (iv)    The fact that the alternatives of a Markush grouping can 
be  differently classified shall not, taken alone, be considered to be 
justification  for a finding of a lack of unity of invention. 

        (v)   When dealing with alternatives, if it can be shown that at 
least  one Markush alternative is not novel over the prior art, the 
question of unity  of invention shall be reconsidered by the examiner. 
Reconsideration does not  necessarily imply that an objection of lack of 
unity shall be raised. 
        (g)   Intermediate and Final Products. The situation involving 
intermediate  and final products is also governed by Rule 13.2. 

        (i)   The term "intermediate" is intended to mean intermediate or 
starting  products. Such products have the ability to be used to produce 
final products  through a physical or chemical change in which the 
intermediate loses its identity. 
        (ii)    Unity of invention shall be considered to be present in 
the  context of intermediate and final products where the following two 
conditions  are fulfilled: 

        (A)   the intermediate and final products have the same essential 
structural  element, in that: 

(1)   the basic chemical structures of the intermediate and the final 
products  are the same, or 

(2)   the chemical structures of the two products are technically closely 
interrelated,  the intermediate incorporating an essential structural 
element into the final  product, and 

        (B)   the intermediate and final products are technically 
interrelated,  this meaning that the final product is manufactured 
directly from the intermediate  or is separated from it by a small number 
of intermediates all containing the  same essential structural element. 

        (iii)     Unity of invention may also be considered to be present 
between  intermediate and final products of which the structures are not 
known-for example,  as between an intermediate having a known structure 
and a final product the  structure of which is not known, or as between an 
intermediate of unknown structure  and a final product of unknown 
structure. In order to satisfy unity in such  cases, there shall be 
sufficient evidence to lead one to conclude that the  intermediate and 
final products are technically closely interrelated as, for  example, when 
the intermediate contains the same essential element as the final  product 
or incorporates an essential element into the final product. 
        (iv)    It is possible to accept in a single international 
application  different intermediate products used in different processes 
for the preparation  of the final product, provided that they have the 
same essential structural  element. 

        (v)   The intermediate and final products shall not be separated, 
in  the process leading from one to the other, by an intermediate which is 
not  new. 

        (vi)    If the same international application claims different 
intermediates  for different structural parts of the final product, unity 
shall not be regarded  as being present between the intermediates. 

        (vii)     If the intermediate and final products are families of 
compounds,  each intermediate compound shall correspond to a compound 
claimed in the family  of the final products. However, some of the final 
products may have no corresponding  compound in the family of the 
intermediate products so that the two families  need not be absolutely 
congruent. 

        (h)   As long as unity of invention can be recognized applying the 
 above interpretations, the fact that, besides the ability to be used to 
produce  final products, the intermediates also exhibit other possible 
effects or activities  shall not affect the decision on unity of invention. 

        (i)   Rule 13.3 requires that the determination of the existence 
of  unity of invention be made without regard to whether the inventions 
are claimed  in separate claims or as alternatives within a single claim. 

        (j)   Rule 13.3 is not intended to constitute an encouragement to 
the  use of alternatives within a single claim, but is intended to clarify 
that  the criterion for the determination of unity of invention (namely, 
the method  contained in Rule 13.2) remains the same regardless of the 
form of claim used. 
        (k)   Rule 13.3 does not prevent an International Searching or 
Preliminary  Examining Authority or an Office from objecting to 
alternatives being contained  within a single claim on the basis of 
considerations such as clarity, the conciseness  of claims or the claims 
fee system applicable in that Authority or Office. 
[Annex B, Part 2, follows] 



ANNEX B 

PART 2 

EXAMPLES CONCERNING UNITY OF INVENTION 

The application of the principles of unity of invention is illustrated by 
the  following examples for guidance in particular cases. 


I.  CLAIMS IN DIFFERENT CATEGORIES 



Example 1 

Claim 1:        A method of manufacturing chemical substance X. 

Claim 2:        Substance X. 

Claim 3:        The use of substance X as an insecticide. 

Unity exists between claims 1, 2 and 3. The special technical feature 
common  to all the claims is substance X. 



Example 2 

Claim 1:        A process of manufacture comprising steps A and B. 
Claim 2:        Apparatus specifically designed for carrying out step A. 
Claim 3:        Apparatus specifically designed for carrying out step B. 
Unity exists between claims 1 and 2 or between claims 1 and 3. There is no 
 unity between claims 2 and 3 since there exists no common special 
technical  feature between the two claims. 



Example 3 

Claim 1:        A process for painting an article in which the paint 
contains  a new rust inhibiting substance X including the steps of 
atomizing the paint  using compressed air, electrostatically charging the 
atomized paint using a  novel electrode arrangement A and directing the 
paint to the article. 
Claim 2:        A paint containing substance X. 

Claim 3:        An apparatus including electrode arrangement A. 

Unity exists between claims 1 and 2 where the common special technical 
feature  is the paint containing substance X or between claims 1 and 3 
where the common  special technical feature is the electrode arrangement A. 

However, unity is lacking between claims 2 and 3 since there exists no 
common  special technical feature between them. 



Example 4 

Claim 1:        Use of a family of compounds X as insecticides. 

Claim 2:        Compound X1 belonging to family X. 

Provided X1 has the insecticidal activity and the special technical 
feature  in claim 1 is the insecticidal use, unity is present. 



Example 5 

Claim 1:        A process for treating textiles comprising spraying the 
material  with a particular coating composition under special conditions 
(e.g., as to  temperature, irradiation). 

Claim 2:        A textile material coated according to the process of 
claim 1. 
Claim 3:        A spraying machine for use in the process of claim 1 and 
characterized  by a new nozzle arrangement providing a better distribution 
of the composition  being sprayed. 

The process according to claim 1 imparts unexpected properties to the 
product  of claim 2. 

The special technical feature in claim 1 is the use of special process 
conditions  corresponding to what is made necessary by the choice of the 
particular coating.  Unity exists between claims 1 and 2. 

The spraying machine in claim 3 does not correspond to the above 
identified  special technical feature. Unity does not exist between claim 
3 and claims 1  and 2. 



Example 6 

Claim 1:        A fuel burner with tangential fuel inlets into a mixing 
chamber. 
Claim 2:        A process for making a fuel burner including the step of 
forming  tangential fuel inlets into a mixing chamber. 

Claim 3:        A process for making a fuel burner including casting step 
A. 
Claim 4:        An apparatus for carrying out a process for making a fuel 
burner  including feature X resulting in the formation of tangential fuel 
inlets. 
Claim 5:        An apparatus for carrying out a process for making a fuel 
burner  including a protective housing B. 

Claim 6:        A process of manufacturing carbon black including the step 
 of tangentially introducing fuel into a mixing chamber of a fuel burner. 
Unity exists between claims 1, 2, 4, and 6. The special technical feature 
common  to all the claims is the tangential fuel inlets. Claims 3 and 5 
lack unity  with claims 1, 2, 4, and 6 since claims 3 and 5 do not include 
the same or  corresponding special technical feature as set forth in 
claims 1, 2, 4, and  6. Claims 3 and 5 would also lack unity with one another. 



Example 7 

Claim 1:        A high corrosion resistant and high strength ferritic 
stainless  steel strip consisting essentially of, in percent by weight: 
Ni=2.0-5.0; Cr=15-19;  Mo=1-2; and the balance Fe having a thickness of 
between 0.5 and 2.0 mm and  a 0.2% yield strength in excess of 50 kg/mm 
squared. 

Claim 2:        A method of producing a high corrosion resistant and high 
strength  ferritic stainless steel strip consisting essentially of, in 
percent by weight:  Ni=2.0-5.0; Cr=15-19; Mo=1-2; and the balance Fe, 
comprising the steps of: 
hot rolling to a thickness between 2.0 and 5.0 mm; 

annealing the hot rolled strip at 800-1000_C under substantially no 
oxidizing  conditions; 

cold rolling the strip to a thickness of between 0.5 and 2.0 mm; and final 
 annealing the cold rolled strip at between 1120 and 1200_C for a period 
of  2-5 minutes. 

Unity exists between product claim 1 and process claim 2. The special 
technical  feature in the product claim is the 0.2% yield strength in 
excess of 50 kg/mm  squared. The process steps in claim 2 inherently 
produce a ferritic stainless  steel strip with a 0.2% yield strength in 
excess of 50 kg/mm squared. Even  if this feature is not apparent from the 
wording of claim 2, it is clearly  disclosed in the description. Therefore 
said process steps are the special  technical feature which correspond to 
the limitation in the product claim directed  to the same ferritic 
stainless steel with the claimed strength characteristics. 

II. CLAIMS IN THE SAME CATEGORY 

Example 8 

Claim 1:        Plug characterized by feature A. 

Claim 2:        Socket characterized by corresponding feature A. 

Feature A is a special technical feature which is included in both claims 
1  and 2 and therefore unity is present. 

Example 9 

Claim 1:        Transmitter provided with time axis expander for video 
signals. 
Claim 2:        Receiver provided with time axis compressor for video 
signals  received. 

Claim 3:        Transmission equipment for video signals comprising a 
transmitter  provided with time axis expander for video signals and a 
receiver provided  with time axis compressor for video signals received. 

The special technical features are in claim 1 the time axis expander, and 
in  claim 2 the time axis compressor, which are corresponding technical 
features.  Unity exists between claims 1 and 2. Claim 3 includes both 
special technical  features and has unity with claims 1 and 2. The 
requirement for unity would  still be met in the absence of the 
combination claim (claim 3). 


Example 10 

Claim 1:        Conveyor belt with feature A. 

Claim 2:        Conveyor belt with feature B. 

Claim 3:        Conveyor belt with features A + B. 

Feature A is a special technical feature and feature B is another 
unrelated  special technical feature. Unity exists between claims 1 and 3 
or between claims 2  and 3, but not between claims 1 and 2. 


Example 11 

Claim 1:        Control circuit A for a d.c. motor. 

Claim 2:        Control circuit B for a d.c. motor. 

Claim 3:        An apparatus including a d.c. motor with control circuit 
A. 
Claim 4:        An apparatus including a d.c. motor with control circuit 
B. 
Control circuit A is a special technical feature and control circuit B is 
another  unrelated special technical feature. Unity exists between claims 
1 and 3 or  between claims 2 and 4, but not between claims 1 and 2 or 3 
and 4. 

Example 12 

Claim 1:        A display with features A + B. 

Claim 2:        A display according to claim 1 with additional feature C. 
Claim 3:        A display with features A + B with additional feature D. 
Unity exists between claims 1, 2, and 3. The special technical feature 
common  to all the claims is features A + B. 


Example 13 

Claim 1:        Filament A for a lamp. 

Claim 2:        Lamp B having filament A. 

Claim 3:        Searchlight provided with lamp B having filament A and a 
swivel  arrangement C. 

Unity exists between claims 1, 2, and 3. The special technical feature 
common  to all the claims is the filament A. 


Example 14 

Claim 1:        A marking device for marking animals, comprising a 
disc-shaped  element with a stem extending normally therefrom, the tip of 
which is designed  to be driven through the skin of the animal to be 
marked, and a securing disk  element to be fastened to the protruding tip 
of the stem on the other side  of skin. 

Claim 2:        An apparatus for applying the marking device of claim 1, 
constructed  as a pneumatically actuated gun for driving the stem of the 
disc-shaped element  through the skin, and provided with a supporting 
surface adapted for taking  up a securing disc element, to be placed at 
the other side of the body portion  in question of the animal to be marked. 

The special technical feature in claim 1 is the marking device having a 
disc-shaped  element with a stem and a securing disc element to be 
fastened to the tip of  the stem. The corresponding special technical 
feature in claim 2 is the pneumatically  actuated gun for driving the 
marking device and having a supporting surface  for the securing disc 
element. Unity exists between claims 1 and 2. 

Example 15 

Claim 1:        Compound A. 

Claim 2:        An insecticide composition comprising compound A and a 
carrier. 
Unity exists between claims 1 and 2. The special technical feature common 
to  all the claims is compound A. 


Example 16 

Claim 1:        An insecticide composition comprising compound A 
(consisting  of a1, a2 ...) and a carrier. 

Claim 2:        Compound a1. 

All compounds A are not claimed in the product claim 2 for reasons of lack 
 of novelty of some of them for instance. There is nevertheless still 
unity  between the subject matter of claims 1 and 2 provided a1 has the 
insecticidal  activity which is also the special technical feature for 
compound A in claim 1. 

Example 17 

Claim 1:        Protein X 

Claim 2:        DNA sequence encoding protein X. 

Expression of the DNA sequence in a host results in the production of a 
protein  which is determined by the DNA sequence. The protein and the DNA 
sequence exhibit  corresponding special technical features. Unity between 
claims 1 and 2 is accepted. 

III. MARKUSH PRACTICE 

Example 18 - common structure: 

Claim 1:        A compound of the formula:FAIEX1801.bmp 

FAIEX1801.end 

wherein R1 is selected from the group consisting of phenyl, pyridyl, 
thiazolyl,  triazinyl, alkylthio, alkoxy, and methyl; R2-R2 are methyl, 
benzyl, or phenyl.  The compounds are useful as pharmaceuticals for the 
purpose of enhancing the  capacity of the blood to absorb oxygen. 

In this case the indolyl moiety is the significant structural element 
which  is shared by all of the alternatives. Since all the claimed 
compounds are alleged  to possess the same utility, unity is present. 


Example 19 - common structure: 

Claim 1:        A compound of the formula:FAIEX1901.bmp 

FAIEX1901.end 

wherein R1 is selected from the group consisting of phenyl, pyridyl, 
thiazolyl,  triazinyl, alkylthio, alkoxy, and methyl; Z is selected from 
the group consisting  of oxygen (O), sulfur (S), imino (NH), and methylene 
(-CH2-). The compounds  are alleged to be useful as pharmaceuticals for 
relieving lower back pain. 

In this particular case the iminothioether group -N=C-SCH3 linked to a six 
 atom ring is the significant structural element which is shared by all 
the  alternatives. Thus, since all the claimed compounds are alleged to 
possess  the same use, unity would be present. A six membered heterocyclic 
ring would  not have been of sufficient similarity to allow a Markush 
grouping exhibiting  unity, absent some teaching of equivalence in the 
prior art. 


Example 20 - common structure 

Claim 1:        A compound of the formula:FAIEX2001.bmp 

FAIEX2001.end 


wherein R1 is methyl or phenyl, X and Z are selected from oxygen (O) and 
sulfur 
(S). 

The compounds are useful as pharmaceuticals and contain the 1,3-thiazolyl 
substituent  which provides greater penetrability of mammalian tissue 
which fact makes the  compounds useful as relievers for headaches and as 
topical anti-inflammatory  agents. 

All compounds share a common chemical structure, the thiazole ring and the 
 six atom heterocyclic compound bound to an imino group, which occupy a 
large  portion of their structure. A six-membered heterocyclic ring would 
not have  been of sufficient similarity to allow a Markush grouping 
exhibiting unity,  absent some teaching of equivalence in the prior art. 



Example 21 - common structure:EAIEX2101.bmp 

EAIEX2101.end 



All of the above copolymers have in common a thermal degradation 
resistance  property, due to the reduced number of free COOH radicals by 
esterification  with X of the end COOH radicals which cause thermal 
degradation. The chemical  structures of the alternatives are considered 
to be technically closely interrelated  to one another. A grouping in one 
claim is therefore allowed. 


Example 22 - common structure:EAIEX2201.bmp 

EAIEX2201.end 

The compound obtained by esterifying the end COOH radical of known 
polyhexamethyleneterephthalate  with   CH2O- has a thermal degradation 
resistant property, due to the reduced  number of free COOH radicals which 
cause thermal degradation. In contrast,  the compound obtained by 
esterifying the end COOH radical of known polyhexamethyleneterephthalate 
with a vinyl compound containing a CH2 = CH-CH2O- moiety serves as a raw 
material  for a setting resin when mixed with unsaturated monomer and 
cured (addition  reaction). 

All esters covered by the claim do not have a property or activity in 
common.  For example, the product obtained through esterification with the 
"CH2= CH"  vinyl compound does not have a thermal degradation resistant 
property. The  grouping in a single application is not allowed. 


Example 23 - No common structure: 

Claim 1:        A herbicidal composition consisting essentially of an 
effective  amount of the mixture of A 2,4-D(2,4-dichloro-phenoxy acetic 
acid) and B a  second herbicide selected from the group consisting of 
copper sulfate, sodium  chlorate, ammonium sulfamate, sodium 
trichloroacetate, dichloropropionic acid,  3-amino-2,5-dichlorobenzoic 
acid, diphenamid (an amide), ioxynil (nitrile),  dinoseb (phenol), 
trifluralin (dinitroaniline), EPTC (thiocarbamate), and simazine 
(triazine) along with an inert carrier or diluent. 

The different components under B must be members of a recognized class of 
compounds.  Consequently in the present case a unity objection would be 
raised because  the members of B are not recognized as a class of 
compounds, but, in fact,  represent a plurality of classes which may be 
identified as follows: 
a)  inorganic salts: 

        copper sulfate 

        sodium chlorate 

        ammonium sulfamate 

b)  organic salts and carboxylic acids: 

        sodium trichloroacetate 

        dichloropropionic acid 

        3-amino-2,5-dichlorobenzoic acid 



c)  amides: 

        diphenamid 

d)  nitriles: 

        ioxynil 

e)  phenols: 

        dinoseb 

f)  amines: 

        trifluralin 

g)  heterocyclic: 

        simazine 


Example 24 

Claim 1:        Catalyst for vapor phase oxidation of hydrocarbons, which 
consists  of (X) or (X + a). 

In this example (X) oxidizes RCH3 into RCH2OH and (X+a) oxidizes RCH3 
further  into RCOOH. 

Both catalysts share a common component and a common activity as oxidation 
 catalyst for RCH3 With (X+a) the 
oxidation is more complete and goes until the carboxylic acid is formed 
but  the activity still remains the same. 

A Markush grouping is acceptable. 


IV.   INTERMEDIATE/FINAL PRODUCTS 



Example 25 

Claim 1: 

FAIEX2501.bmp 

FAIEX2501.end 



Claim 2:EAIEX2502.bmp 

EAIEX2502.end 

The chemical structures of the intermediate and final product are 
technically  closely interrelated. The essential structural element 
incorporated into the  final product is:EAIEX2503.bmp 

EAIEX2503.end 

Therefore, unity exists between claims 1 and 2. 

Example 26 

Claim 1:EAIEX2601.bmp 

EAIEX2601.end 

Claim 2:EAIEX2602.bmp 



EAIEX2602.end 

(II) is described as an intermediate to make (I). The closure mechanism is 
 one well known in the art. Though the basic structures of compound (I) 
(final  product) and compound (II) (intermediate) differ considerably, 
compound (II)  is an open ring precursor to compound (I). Both compounds 
share a common essential  structural element which is the linkage 
comprising the two phenyl rings and  the triazole ring. The chemical 
structures of the two compounds are therefore  considered to be 
technically closely interrelated. 

The example therefore satisfies the requirement for unity of invention. 

Example 27 

Claim 1: Amorphous polymer A (intermediate). 

Claim 2: Crystalline polymer A (final product). 

In this example a film of the amorphous polymer A is stretched to make it 
crystalline.  Here unity exists because there is an intermediate final 
product relation in  that amorphous polymer A is used as a starting 
product to prepare crystalline  polymer A. 

For purposes of further illustration, assume that the polymer A in this 
example  is polyisoprene. Here the intermediate, amorphous polyisoprene, 
and the final  product, crystalline polyisoprene, have the same chemical 
structure. 

Example 28 

Claim 1:        Polymeric compound useful as fiber material identified by 
the  following general formula: 

[repeating unit (X)]EAIEX2801.bmp 

EAIEX2801.end 

Claim 2:        Compound identified by the following general formula: 
(useful as intermediate for polymeric compound I)EAIEX2802.bmp 

EAIEX2802.end 

                                         (primary condensation product) 

The two inventions are in an intermediate and final product relationship. 
Substance (II) is a raw material for substance (I). 

Meanwhile, both compounds share an essential structural element (repeating 
 unit (X)) and are technically closely interrelated. The intermediate and 
final  products therefore satisfy the requirements for unity. 


Example 29 

Claim 1:        Novel compound having structure A (Intermediate). 
Claim 2:        Product prepared by reacting A with a substance X (Final 
Product). 

Example 30 

Claim 1:        Reaction product of A and B (Intermediate). 

Claim 2:        Product prepared by reacting the reaction product of A and 
 B with substances X and Y (Final Product). 

In examples 29 and 30 the chemical structure(s) of the intermediate and/or 
 the final product is not known. In (29) the structure of the product of 
claim 2 
(the final product) is not known. In (30) the structures of the products 
of  claim 1 (the intermediate) and claim 2 (the final product) are 
unknown. Unity  exists if there is evidence which would lead one to 
conclude that the characteristic  of the final product which is the 
inventive feature in the case is due to the  intermediate. For example, 
the purpose for using the intermediates in (29)  or (30) is to modify 
certain properties of the final product. The evidence  may be in the form 
of test data in the specification showing the effect of  the intermediate 
on the final product. If no such evidence exists then there  is no unity 
on the basis of an intermediate-final product relationship. 
[Annex C follows] 


ANNEX C 

FORMAT FOR NUCLEOTIDE AND /OR AMINO ACID 
SEQUENCE LISTINGS IN MACHINE READABLE FORM 

Australian Patent Office 

Machine readable form is not required. 

OCR format is accepted and must comply with WIPO Standard ST.22.12 
No requirement for electronic form but acceptable as follows: 

(a)   Medium: 

        Diskette: 

        5.25 inch, 360 Kb storage 

        5.25 inch, 1.2 Mb storage 

        3.5 inch, 720 Kb storage 

        3.5 inch, 1.44 Mb storage 

        Magnetic tape: 0.5 inch, up to 2400 feet 

        Density: 1600 or 6250 bits per inch, 9 track 

        Format: raw, unblocked 

(b)   Character codes 

          ASCII 

(c)   Computer hardware and operating systems configuration 

          Computer: IBM PC/XT/AT, IBM PS/2, or compatibles 

          Operating system: PC-DOS or MS-DOS (Versions 2.1 or above) 
Austrian Patent Office 

Machine readable form is not required. 

OCR format is accepted and must comply with WIPO Standard ST.22.12 
European Patent Office 

Machine readable form is not required but is recommended until January 
1993,  when it is expected to become mandatory. 

Any printed form of a sequence listing is accepted; in addition to paper, 
diskettes  are welcome. Diskettes shall be in ASCII character code in DOS 
operating system.  "Patentin" software program may be used. 


12 Published in the WIPO Handbook on Industrial Property Information and 
Documentation. 

Japanese Patent Office 

The Japanese Patent Office (JPO) recommends that a listing of sequence in 
an  electronic form application shall be recorded as code data complying 
with WIPO  Standard ST.2313, but the recommendation is not a statutory 
requirement. 
Requirements for electronic form: 

(a)   Medium: 

        Floppy disk: 

                8 inches both-sided double density (2d) (JIS X6201) 
                5.25 inches high density (2HD) (JIS X6211) 

                3.5 inches high density (2HD)  (JIS 6223) 

        On-line: 

                ISDN (64kb/s) 

                Digital Data Exchange of Packet (9600b/s) 

(b)   Character codes: 

          Code of Japanese graphic character set for information 
interchange 
(JIS X 0208-1983) 

(c)   Computer hardware and operating systems configuration: 

          Not specified, but in accordance with the JPO's electronic 
application  standards 

(d)   Computer software: 

          Not specified, but in accordance with the JPO's electronic 
application  standards 

(e)   Other requirements: 

         floppy disk application: 

                File specification for Japanese Documents Interchange (JIS 
 X4004-1988) 

         On-line application: 

                OSI & CCITT T.73 

Russian Patent Office 

Machine readable form is not required. 

Swedish Patent Office 

Machine readable form is not required. 


13 Published in the WIPO Handbook on Industrial Property Information and 
Documentation. 
United Kingdom Patent Office 

Machine readable form is not required. 

United States Patent and Trademark Office (USPTO) 

A sequence listing is required for all disclosures of sequence information 
 in which the sequence has four or more amino acids or ten or more 
nucleotides.  Branched sequences and those including D-amino acids are 
excluded from the  rules. 

The USPTO has not adopted the use of an OCR format and it is not expected 
that  such a format will be adopted by the USPTO. 

Sections 1.821 to 1.825 of title 37, Code of Federal Regulations (37 CFR) 
relate  to sequence listings submitted to the USPTO. Sections 1.824 and 
1.825 which  set forth the requirements for sequence listings in machine 
(computer) readable  form are reproduced below: 

37 CFR 1.824 Form and format for nucleotide and/or amino acid sequence 
submissions  in computer readable form. 

(a)   The computer readable form required by Section 1.821(e) shall 
contain  a printable copy of the "Sequence Listing," as defined in 
Sections 1.821(c),  1.822, and 1.823, recorded as a single file on either 
a diskette or a magnetic  tape. The computer readable form shall be 
encoded and formatted such that a  printed copy of the "Sequence Listing" 
may be recreated using the print commands  of the 
computer/operating-system configuration specified in paragraph (f) of 
this section. 

(b)   The file in paragraph (a) of this section shall be encoded in a 
subset  of the American Standard Code for Information Interchange (ASCII). 
This subset  shall consist of all the printable ASCII characters including 
the ASCII space  character plus line termination, pagination, and 
end-of-file characters associated  with the computer/operating-system 
configurations specified in paragraph (f)  of this section. No other 
characters shall be allowed. 

(c)   The computer readable form may be created by any means, such as word 
 processors, nucleotide/amino acid sequence editors, or other custom 
computer  programs, however, it shall be readable by one of the 
computer/operating-system  configurations specified in paragraph (f) of 
this section, and shall conform  to the specifications in paragraphs (a) 
and (b) of this section. 

(d)   The entire printable copy of the "Sequence Listing" shall be 
contained  within one file on a single diskette or magnetic tape unless it 
is shown to  the satisfaction of the Commissioner that it is not practical 
or possible to  submit the entire printable copy of the "Sequence Listing" 
within one file  on a single diskette or magnetic tape. 

(e)   The submitted diskette or tape shall be write-protected such as by 
covering  or uncovering diskette holes, removing diskette write tabs, or 
removing tape  write rings. 

(f)   As set forth in paragraph (c), above, any means may be used to 
create  the computer readable form, as long as the following conditions 
are satisfied.  A submitted diskette shall be readable on one of the 
computer/operating-system  configurations described in paragraphs (1) 
through (3), below. A submitted  tape shall satisfy the format 
specifications described in paragraph (4), below 
(1)   Computer: IBM PC/XT/AT, IBM PS/2, or compatibles: 

Operating system: PC-DOS or MS-DOS (Versions 2.1 or above): 

Line Terminator: ASCII Carriage Return plus ASCII Line Feed: 

Pagination: ASCII Form Feed or Series of Line Terminators: 

End-of-File: ASCII SUB (Ctrl-Z): 

        Media: 

                Diskette - 5.25 inch, 360 Kb storage: 

                Diskette - 5.25 inch, 1.2 Mb storage: 

                Diskette - 3.50 inch, 720 Kb storage: 

                Diskette - 3.50 inch, 1.44 Mb storage; 

        Print Command: PRINT filename.extension; 

(2)   Computer: IBM PC/XT/AT, IBM PS/2, or compatibles; 

        Operating system: Xenix; 

        Line Terminator: ASCII Carriage Return 

        Pagination: ASCII Form Feed or Series of Line Terminators; 
        End of-File: None; 

        Media: 

                Diskette - 5.25 inch, 360 Kb storage; 

                Diskette - 5.25 inch, 1.2 Mb storage: 

                Diskette - 3.50 inch, 720 Kb storage; 

                Diskette - 3.50 inch, 1.44 Mb storage; 

        Print Command; lpr filename; 

(3)   Computer: Apple Macintosh; 

        Operating System: Macintosh; 

        Macintosh File Type: text with line termination 

        Line Terminator: Pre-defined by text type file 

        Pagination: Pre-defined by text type file 

        End-of-file: Pre-defined by text type file: 

        Media 

                Diskette - 3.50 inch, 400 Kb storage 

                Diskette - 3.50 inch, 800 Kb storage: 

                Diskette - 3.50 inch, 1.4 Mb storage 

        Print Command: Use PRINT command from any Macintosh 

        Application that processes text files, such as MacWrite or 
TeachText; 
(4)   Magnetic tape: 0.5 inch, up to 2400 feet 

                Density: 1600 or 6250 bits per inch, 9 track; 

                Format: raw, unblocked; 

                Line Terminator: ASCII Carriage Return plus optional ASCII 
 Line Feed; 

                Pagination: ASCII Form Feed or Series of Line Terminators 
                Print Command (Unix shell version given here as sample 
response  - mt/dev/rmtO;lpr</dev/rmt0): 

        (g)   Computer readable forms that are submitted to the Office 
will  not be returned to the applicant. 

        (h)   All computer readable forms shall have a label permanently 
affixed  thereto on which has been handprinted or typed, a description of 
the format  of the computer readable form as well as the name of the 
applicant, the title  of the invention, the date on which the data were 
recorded on the computer  readable form, and the name and type of computer 
and operating system which  generated the files on the computer readable 
form. If all of this information  can not be printed on a label affixed to 
the computer readable form, by reason  of size or otherwise, the label 
shall include the name of the applicant and  the title of the invention 
and a reference number, and the additional information  may be provided on 
a container for the computer readable form with the name  of the 
applicant, the title of the invention, the reference number, and the 
additional information affixed to the container. If the computer readable 
form  is submitted after the date of filing under 35 U.S.C. 111, after the 
date of  entry in the national stage under 35 U.S.C. 371, or after the 
time of filing,  in the United States Receiving Office, an international 
application under the  PCT, the labels mentioned herein must also include 
the date of the application  and the application number, including series 
code and serial number. 
37 CFR 1.825 Amendments to or replacement of sequence listing and computer 
 readable copy thereof. 

        (a)   Any amendment to the paper copy of the "Sequence Listing" 
(Section 1.821(c))  must be made by the submission of substitute sheets. 
Amendments must be accompanied  by a statement that indicates support for 
the amendment in the application,  as filed, and a statement that the 
substitute sheets include no new matter.  Such a statement must be a 
verified statement if made by a person not registered  to practice before 
the Office. 

        (b)   Any amendment to the paper copy of the "Sequence Listing," 
in  accordance with paragraph (a) of this section, must be accompanied by 
a substitute  copy of the computer readable form (Section 1.821(e)) 
including all previously  submitted data with the amendment incorporated 
therein, accompanied by a statement  that the copy in computer readable 
form is the same as the substitute copy  of the "Sequence Listing." Such a 
statement must be a verified statement if  made by a person not registered 
to practice before the Office. 

        (c)   Any appropriate amendments to the "Sequence Listing" in a 
patent,  e.g., by reason of reissue or certificate of correction, must 
comply with the  requirements of paragraphs (a) and (b) of this section. 

        (d)   If, upon receipt, the computer readable form is found to be 
damaged  or unreadable, applicant must provide, within such time as set by 
the Commissioner,  a substitute copy of the data in computer readable form 
accompanied by a statement  that the substitute data is identical to that 
originally filed. Such a statement  must be a verified statement if made 
by a person not registered to practice  before the Office. 

[Annex D follows] 

ANNEX D 

INFORMATION FROM PAMPHLET FRONT PAGE TO BE INCLUDED IN THE 
GAZETTE UNDER RULE 86.1(i) 

The following information shall be extracted from the front page of the 
pamphlet  of each published international application and shall, in 
accordance with Rule 86.1(i),  appear in the corresponding entry of the 
Gazette: 

1. as to the international publication: 

1.1   the international publication number 

1.2   the date of the international publication 

1.3   an indication whether the following items were published in the 
pamphlet: 
1.31    international search report 

1.32    declaration under Article 17(2) 

1.33    claims amended under Article 19(1) 

1.34    statement under Article 19(1) 

1.35    the essence of the comments by the applicant on the translation of 
 the international application as referred to in Rule 48.3(b) 

1.36    request for rectification under the third sentence of Rule 91.1(f) 
1.4   the language of publication of the international application 
2. as to the international application: 

2.1   the title of the invention 

2.2   the symbol(s) of the International Patent Classification (IPC) 
2.3   the international application number 

2.4   the international filing date 

3. as to any priority claim: 

3.1   the application number of the earlier application 

3.2   the date of the earlier application 

3.3   the country in or for which the earlier application was filed 
4. as to the applicant, inventor and agent: 

4.1   their name(s) 

4.2   their mailing address(es) 

5. as to the designated States: 

5.1   their names 

5.2   the indication of any wish for a regional patent 

5.3   the indication of kind of protection sought, unless a patent is 
sought 
6. as to a statement concerning nonprejudicial disclosure or exception to 
lack  of novelty: 

6.1   the date of the disclosure 

6.2   the place of the disclosure 

6.3   the kind of the disclosure (e.g., exhibition, scientific 
publication,  conference reports, etc.) 

6.4   the title of the exhibition, publication or conference 

7. as to any indication in relation to a deposited microorganism furnished 
 under Rule 13bis separately from the description: 

7.1   the fact that such indication is published 

7.2   the date on which the International Bureau received such indication. 
[Annex E follows] 

ANNEX E 

INFORMATION TO BE PUBLISHED IN THE 

GAZETTE UNDER RULE 86.1(v) 

1.  The time limits applicable under Articles 22 and 39 in respect of each 
 Contracting State. 

2.  The list of the nonpatent literature agreed upon by the International 
Searching  Authorities for inclusion in the minimum documentation. 

3.  The names of the national Offices which do not wish to receive copies 
under  Article 13(2)(c). 

4.  The provisions of the national laws of Contracting States concerning 
international-type  search. 

5.  The text of the agreements entered into between the International 
Bureau  and the International Searching Authorities or the International 
Preliminary  Examining Authorities. 

6.  The names of the national Offices which entirely or in part waived 
their  rights to any communication under Article 20. 

7.  The names of the Contracting States which are bound by Chapter II of 
the  PCT. 

8.  Index of concordance of international application numbers and 
international  publication numbers, listed according to international 
application numbers. 
9.  Index of international publication numbers grouped according to 
designated  States, including an indication of those States for which a 
"regional patent"  is sought. 

10.   Index of applicants' names giving, for each name, the corresponding 
international  publication number(s). 

11.   Index of international publication numbers, grouped according to the 
 International Patent Classification 
symbols. 

12.   Indication of any subject matter that will not be searched or 
examined  by the various International Searching and Preliminary Examining 
Authorities  under Rules 39 and 67. 

13.   Requirements of designated and elected Offices under Rules 49.5 and 
76.5  in relation to the furnishing of translations. 

14.   The names of those designated Offices wishing to receive 
notifications  under Rule 24.2(b). 

15.   The dates defining the period referred to in Rule 32.1(b) during 
which  the international application, whose effects may be extended to a 
successor  State under Rule 32.1, must have been filed. 



Contents 

       Paris Convention for the Protection of Industrial Property 
                          of March 20, 1883 

                              as revised 

at Brussels on December 14, 1900, at Washington on June 2, 1911, at The 
Hague  on November 6, 1925, at London on June 2, 1934, at Lisbon on 
October 31, 1958,  and at Stockholm on July 14, 1967, and as amended on 
October 2, 1979. 
TABLE OF CONTENTS 

Article 1:          Establishment of the Union; Scope of Industrial 
Property 
Article 2:          National Treatment for Nationals of Countries of the 
                    Union 

Article 3:          Same Treatment for Certain Categories of Persons as for 
                    Nationals of Countries of the Union 

Article 4:          A. to I. Patents, Utility Models, Industrial Designs, 
Marks, 
                    Inventors' Certificates;  Right of Priority. 
                    G. Patents:   Division of the Application 

Article 4bis:       Patents:  Independence of Patents Obtained for the 
Same 
                    Invention in Different Countries 

Article 4ter:       Patents: Mention of the Inventor in the Patent 
Article 4quater:    Patents:  Patentability in Case of Restrictions of 
                    Sale by Law 

Article 5:          A. Patents:  Importation of Articles; Failure to Work or 
                       Insufficient Working; Compulsory Licenses. 
                    B. Industrial Designs:  Failure to Work ; Importation 
                       of Articles. 

                    C. Marks:  Failure to Use; Different Forms; Use by 
                       Co-proprietors. 

                    D. Patents, Utility Models, Marks, Industrial 
                       Designs: Marking 

Article 5bis        All Industrial Property Rights:  Period of Grace for 
                    the Payment of Fees for the Maintenance of Rights; 
                    Patents:  Restoration 

Article 5ter:       Patents:  Patented Devices Forming Part of Vessels, 
                    Aircraft, or Land Vehicles 

Article 5quater:    Patents:  Importation of Products Manufactured by a 
                    Process Patented in the Importing Country 

Article 5quinquies:   Industrial Designs 

Article 6:          Marks:  Conditions of Registration; Independence of 
                    Protection of Same Mark in Different Countries 
Article 6bis:       Marks:  Well Known Marks 

Article 6ter        Marks:  Prohibitions concerning State Emblems, 
Official 
                    Hallmarks, and Emblems of Intergovernmental 
                    Organizations 

Article 6quater:    Marks:  Assignment of Marks 

Article 6quinquies;   Marks:  Protection of Marks Registered in One 
                    Country of the Union in the Other Countries of the 
                    Union 

Article 6sexies:    Marks: Service Marks 

Article 6septies: Marks: Registration in the Name of the Agent or 
                    Representative of the Proprietor Without the Latter's 
                    Authorization 

Article 7:          Marks:  Nature of the Goods to which the Mark is 
Applied 
Article 7bis:       Marks:  Collective Marks 

Article 8:          Trade Names 

Article 9:          Marks, Trade Names:  Seizure, on Importation, etc., of 
                    Goods Unlawfully Bearing a Mark or Trade Name 
Article 10:         False Indications:  Seizure, on Importation, etc., 
                    of Goods Bearing False Indications as to their 
                    Source or the Identity of the Producer 

Article 10bis:      Unfair Competition 

Article 10ter:      Marks, Trade Names, False Indications, Unfair 
                    Competition: Remedies, Right to Sue 

Article 11:         Inventions, Utility Models, Industrial Designs, Marks: 
                    Temporary Protection at Certain International 
Exhibitions 
Article 12:         Special National Industrial Property Services 
Article 13:         Assembly of the Union 

Article 14:         Executive Committee 

Article 15:         International  Bureau 

Article 16:         Finances 

Article 17:         Amendment of Articles 13 to 17 

Article 18:         Revision of Articles 1 to 12 and 18 to 30 

Article 19:         Special Agreements 

Article 20:         Ratification or Accession by Countries of the Union; 
                    Entry Into Force 

Article 21:         Accession by Countries Outside the Union; Entry 
                    Into Force 

Article 22:         Consequences of Ratification or Accession 

Article 23:         Accession to Earlier Acts 

Article 24:         Territories 

Article 25:         Implementation of the Convention on the Domestic Level 
Article 26:         Denunciation 

Article 27:         Application of Earlier Acts 

Article 28:         Disputes 

Article 29:         Signature, Languages, Depositary Functions 

Article 30:         Transitional Provisions 


Article 1 


[Establishment of the Union; Scope of Industrial Property] 

(1)   The countries to which this Convention applies constitute a Union 
for  the protection of industrial property. 

(2)   The protection of industrial property has as its object patents, 
utility  models, industrial designs, trademarks, service marks, trade 
names, indications  of source or appellations of origin, and the 
repression of unfair competition. 
(3)   Industrial property shall be understood in the broadest sense and 
shall  apply not only to industry and commerce proper, but likewise to 
agricultural  and extractive industries and  to all manufactured or 
natural products, for  example, wines, grain, tobacco leaf, fruit, cattle, 
minerals, mineral waters,  beer, flowers, and flour. 

(4)   Patents shall include the various kinds of industrial patents 
recognized  by the laws of the countries of the Union, such as patents of 
importation,  patents of improvement, patents and certificates of 
addition, etc. 

Article 2 


[National Treatment for Nationals of Countries of the Union] 

(1)   Nationals of any country of the Union shall, as regards the 
protection  of industrial property, enjoy in all the other countries of 
the Union the advantages  that their respective laws now grant, or may 
hereafter grant, to nationals; all without prejudice  to the rights 
specially provided for by this Convention. Consequently, they  shall have 
the same protection as the later, and the same legal remedy against  any 
infringement of their rights, provided that the conditions and formalities 
 imposed upon nationals are complied with. 

(2)   However, no requirement as to domicile or establishment in the 
country  where protection is claimed may be imposed upon nationals of 
countries of the  Union for the  enjoyment of any industrial property rights. 

(3)   The provisions of the laws of each of the countries of the Union 
relating  to judicial and administrative procedure and to jurisdiction, 
and to the designation  of an address for service or the appointment of an 
agent, which may be required  by the laws on industrial property are 
expressly reserved. 


Article 3 


[Same Treatment for Certain Categories of Persons as for Nationals of 
Countries  of the Union] 

Nationals of countries outside the Union who are domiciled or who have 
real  and effective industrial or commercial establishments in the 
territory of one  of the countries of the Union shall be treated in the 
same manner as nationals  of the countries of the Union. 


Article 4 


[A. to I. Patents, Utility Models, Industrial Designs, Marks, Inventors 
Certificates; 
 Right of Priority. - G. Patents: Division of 
the Application] 

A. - (1)        Any person who has duly filed an application for a patent, 
 or for the registration of a utility model, or of an industrial design, 
or  of a trademark, in one of the countries of the Union, or his successor 
in title,  shall enjoy, for the purpose of filing in the other countries, 
a right of priority  during the periods hereinafter fixed. 

(2)   Any filing that is equivalent to a regular national filing under the 
 domestic legislation of any country of the Union or under bilateral or 
multilateral  treaties concluded between countries of the Union shall be 
recognized as giving  rise to the right of priority. 

(3)   By a regular national filing is meant any filing that is adequate to 
 establish the date on which the application was filed in the country 
concerned,  whatever may be the subsequent fate of the application. 

  B. -  Consequently, any subsequent filing in any of the other countries 
of  the Union before the expiration of the periods referred to above shall 
not  be invalidated by reason of any acts accomplished in the interval, in 
particular,  another filing, the publication or exploitation of the 
invention, the putting  on sale of copies of the design, or the use of the 
mark, and such acts cannot  give rise to any third-party right or any 
right of personal possession. Rights  acquired by third parties before the 
date of the first application that serves  as the basis for the right of 
priority are reserved in accordance with the  domestic legislation of each 
country of the Union. 

C. - (1)        The periods of priority referred to above shall be twelve 
months  for patents and utility models, and six months for industrial 
designs and trademarks. 
(2)   These periods shall start from the date of filing of the first 
application;  the day of filing shall not be included in the period. 

(3)   If the last day of the period is an official holiday, or a day when 
the  Office is not open for the filing of applications in the country 
where protection  is claimed, the period shall be extended until the first 
following working  day. 

(4)   A subsequent application concerning the same subject as a previous 
first  application within the meaning of paragraph (2), above, filed in 
the same country  of the Union. shall be considered as the first 
application, of which the filing  date shall be the starting point of the 
period of priority, if, at the time  of filing the subsequent application, 
the said previous application has been  withdrawn, abandoned, or refused, 
without having been laid open to public inspection  and without leaving 
any rights outstanding, and if it has not yet served as  a basis for 
claiming a right of priority. The previous application may not  thereafter 
serve as a basis for claiming a right of priority. 

D. - (1)        Any person desiring to take advantage of the priority of a 
 previous filing shall be required to make a declaration indicating the 
date  of such filing and the country in which it was made. Each country 
shall determine  the latest date on which such declaration must be made. 

(2)   These particulars shall be mentioned in the publications issued by 
the  competent authority, and in particular in the patents and the 
specifications  relating thereto. 

(3)   The countries of the Union may require any person making a 
declaration  of priority to produce a copy of the a application 
(description. drawings,  etc.) previously filed. The copy, certified as 
correct by the authority which  received such application, shall not 
require any authentication, and may in  any case be filed, without fee, at 
any time within three months 
of the filing of the subsequent application. They may require it to be 
accompanied  by a certificate from the same authority showing the date of 
filing, and by  a translation. 

(4)   No other formalities may be required for the declaration of priority 
 at the time of filing the application. Each country of the Union shall 
determine  the consequences of failure to comply with the formalities 
prescribed by this  Article, but such consequences shall in no case go 
beyond the loss of the right  of priority. 

(5)   Subsequently, further proof may be required. 

Any person who avails himself of the priority of a previous application 
shall  be required to specify the number of that application; this number 
shall be  published as provided for by paragraph (2), above. 

E. - (l)        Where an industrial design is filed in a country by virtue 
 of a right of priority based on the filing of a utility model, the period 
of  priority shall be the same as that fixed for industrial designs. 

(2)   Furthermore, it is permissible to file a utility model in a country 
by  virtue of a right of priority based on the filing of a patent 
application,  and vice versa. 

F. - No country of the Union may refuse a priority or a patent application 
 on the ground that the applicant claims multiple priorities, even if they 
originate  in different countries, or on the ground that an application 
claiming one or  more priorities contains one or more elements that were 
not included in the  application or applications whose priority is 
claimed, provided that, in both  cases, there is unity of invention within 
the meaning of the law of the country. 
With respect to the elements not included in the application or 
applications  whose priority is claimed, the filing of the subsequent 
application shall give  rise to a right of priority under ordinary conditions. 

G. - (1)        If the examination reveals that an application for a 
patent  contains more than one invention, the applicant may divide the 
application  into a certain number of divisional applications and preserve 
as the date of  each the date of the initial application and the benefit 
of the right of priority,  if any. 

(2)   The applicant may also, on his own initiative, divide a patent 
application  and preserve as the date of each divisional application the 
date of the initial  application and the benefit of the right of priority, 
if any. Each country  of the Union shall have the right to determine the 
conditions under which such  division shall be authorized. 

 H.- Priority may not be refused on the ground that certain elements of 
the  invention for which priority is claimed do not appear among the 
claims formulated  in the application in the country of origin, provided 
that the application  documents as a whole specifically disclose such 
elements. 

I. - (l)        Applications for inventors' certificates filed in a 
country  in which applicants have the right to apply at their own option 
either for  a patent or for an inventor's certificate shall give rise to 
the right of priority  provided for by this Article, under the same 
conditions and with the same effects  as applications for patents. 

(2)   In a country in which applicants have the right to apply at their 
own  option either for a patent or for an inventor s certificate, an 
applicant for  an inventor s certificate shall, in accordance with the 
provisions of this  Article relating to patent applications, enjoy a right 
of priority based on  an application for a patent, a utility model, or an 
inventor's certificate. 

Article 4bis 


[Patents:  Independence of Patents Obtained for the Same Invention in 
Different Countries] 

(1)   Patents applied for in the various countries of the Union by 
nationals  of countries of the Union shall be independent of patents 
obtained for the  same invention in other countries, whether members of 
the Union or not. 
(2)   The foregoing provision is to be understood in an unrestricted 
sense,  in particular, in the sense that patents applied for during the 
period of priority  are independent. both as regards the grounds for 
nullity and forfeiture, and  as regards their normal duration. 

(3)   The provision shall apply to all patents existing at the time when 
it  comes into effect. 

(4)   Similarly, it shall apply, in the case of the accession of new 
countries,  to patents in existence on either side at the time of accession. 

(5)   Patents obtained with the benefit of priority shall, in the various 
countries  of the Union, have a duration equal to that which they would 
have, had they  been applied for or granted without the benefit of priority. 


Article 4ter 


[Patents:  Mention of the Inventor in the Patent] 

The inventor shall have the right to be mentioned as such in the patent. 

Article 4quater 


[Patents:  Patentability in Case of Restrictions of Sale by Law] 

The grant of a patent shall not be refused and a patent shall not be 
invalidated  on the ground that the sale of the patented product or of a 
product obtained  by means of a patented process is subject to 
restrictions or limitations resulting  from the domestic law. 

 Article 5 

[A. Patents:  Importation of Articles; Failure to Work or Insufficient 
Working;  Compulsory Licenses. - B. Industrial Designs: Failure to Work; 
Importation  of Articles.  - C. Marks:  Failure to Use; Different Forms; 
Use by Co-proprietors. - D. Patents, Utility Models, Marks, Industrial 
Designs:  Marking] 

A. - (1)        Importation by the patentee into the country where the 
patent  has been granted of articles manufactured in any of the countries 
of the Union  shall not entail forfeiture of the patent. 

(2)   Each country of the Union shall have the right to take legislative 
measures  providing for the grant of compulsory licenses to prevent the 
abuses which  might result from the exercise of the exclusive rights 
conferred by the patent,  for example, failure to work. 

(3)   Forfeiture of the patent shall not be provided for except in cases 
where  the grant of compulsory licenses would not have been sufficient to 
prevent  the said abuses. No proceedings for the forfeiture or revocation 
of a patent  may be instituted before the expiration of two years from the 
grant of the  first compulsory license. 

(4)   A compulsory license may not be applied for on the ground of failure 
 to work or insufficient working before the expiration of a period of four 
years  from the date of filing of the patent application or three years 
from the date  of the grant of the patent, whichever period expires last; 
it shall be refused  if the patentee justifies his inaction by legitimate 
reasons. Such a compulsory  license shall be non-exclusive and shall not 
be transferable, even in the form  of the grant of a sub-license, except 
with that part of the enterprise or goodwill  which exploits such license. 

(5) The foregoing provisions shall be applicable, mutatis mutandis, to 
utility  models. 

B. - The protection of industrial design shall not, under any 
circumstance,  be subject to any forfeiture, either by reason of failure 
to work or by reason  of the importation of articles corresponding to 
those which are protected. 
C. - (1)        If, in any country, use of the registered mark is 
compulsory,  the registration may be cancelled only after a reasonable 
period, and then  only if the person concerned does not justify his inaction. 

(2) Use of a trademark by the proprietor in a form differing in elements 
which  do not alter the distinctive character of the mark in the form in 
which it  was registered in one of the countries of the Union shall not 
entail invalidation  of the registration and shall not diminish the 
protection granted to the mark. 
(3) Concurrent use of the same mark on identical or similar goods by 
industrial  or commercial establishments considered as co-proprietors of 
the mark according  to the provisions of the domestic law of the country 
where protection is claimed  shall not prevent registration or diminish in 
any way the protection granted  to the said mark in any country of the 
Union, provided that such use does not  result in misleading the public 
and is not contrary to the public interest. 
 D. - No indication or mention of the patent, of the utility model, of the 
 registration of the trademark, or of the deposit of the industrial 
design,  shall be required upon the goods as a condition of recognition of 
the right  to protection. 


Article 5bis 


[All Industrial Property Rights: .Period of Grace for the Payment of Fees 
for  the Maintenance of Rights; Patents:  Restoration] 

(1)   A period of grace of not less than six months shall be allowed for 
the  payment of the fees prescribed for the maintenance of industrial 
property rights,  subject, if the domestic legislation so provides, to the 
payment of a surcharge. 
(2)   The countries of the Union shall have the right to provide for the 
restoration  of patents which have lapsed by reason of non-payment of fees. 


Article 5ter 


[Patents:  Patented Devices Forming Part of Vessels, Aircraft, or Land 
Vehicles] 
In any country of the Union the following shall not be considered as 
infringements  of the rights of a patentee: 

 l. the use on board vessels of other countries of the Union of devices 
forming  the subject of his patent in the body of the vessel, in the 
machinery, tackle,  gear and other accessories, when such vessels 
temporarily or accidentally enter  the waters of the said country, 
provided that such devices are used there exclusively  for the needs of 
the vessel; 

2. the use of devices forming the subject of the patent in the 
construction  or operation of aircraft or land vehicles of other countries 
of the Union, or of accessories of such aircraft or land vehicles,  when 
those aircraft or land vehicles temporarily or accidentally enter the 
said country. 

 Article 5quater 

[Patents:  Importation of Products Manufactured by a Process Patented in 
the  Importing Country] 

When a product is imported into a country of the Union where there exists 
a  patent protecting a process of manufacture of the said product, the 
patentee  shall have all the rights, with regard to the imported product, 
that are accorded  to him by the legislation of the country of 
importation, on the basis of the  process patent, with respect to products 
manufactured in that country. 

Article 5quinquies 


[Industrial Designs] 

Industrial designs shall be protected in all the countries of the Union. 

Article 6 


[Marks:  Conditions of Registration; Independence of Protection of  Same 
Mark in Different Countries] 

(1) The conditions for the filing and registration of trademarks shall be 
determined  in each country of the Union by its domestic legislation. 

(2) However, an application for the registration of a mark filed by a 
national  of a country of the Union in any country of the Union may not be 
refused, nor  may a registration be invalidated, on the ground that 
filing, registration,  or renewal, has not been effected in the country of 
origin. 

(3) A mark duly registered in a country of the Union shall be regarded as 
independent  of marks registered in the other countries of the Union, 
including the country  of origin. 


Article 6bis 


[Marks:  Well Known Marks] 

(l)   The countries of the Union undertake, ex officio if their 
legislation  so permits, or at the request of an interested party, to 
refuse or to cancel  the registration, and to prohibit the use, of a 
trademark which constitutes  a reproduction, an imitation, or a 
translation, liable to create confusion,  of a mark considered by the 
competent authority of the country of registration  or use to be well 
known in that country as being already the mark of a person  entitled to 
the benefits of this Convention and used for identical or similar  goods. 

These provisions shall also apply when the essential part of the mark 
constitutes  a reproduction of any such well-known mark or an imitation 
liable to create  confusion therewith. 

(2)   A period of at least five years from the date of  registration shall 
 be allowed for requesting the cancellation of such a mark. The countries 
of  the Union may provide for a period within which the prohibition of use 
must  be requested. 

(3)   No time limit shall be fixed for requesting the cancellation or the 
prohibition  of the use of marks registered or used in had faith. 


Article 6ter 


[Marks:  Prohibitions concerning State Emblems, Official Hallmarks, and 
Emblems  of Intergovernmental Organizations] 

(1)(a)      The countries of the Union agree to refuse or to invalidate 
the  registration, and to prohibit by appropriate measures the use, 
without authorization  by the competent authorities, either as trademarks 
or as elements of trademarks,  of armorial bearings, flags, and other 
State emblems, of the countries of the  Union, official signs and 
hallmarks indicating control and warranty adopted  by them, and any 
imitation from a heraldic point of view. 

(b)   The provisions of subparagraph (a), above, shall apply equally to 
armorial  bearings, flags, other emblems, abbreviations, and names, of 
international  intergovernmental organizations of which one or more 
countries of the Union  are members, with the exception of armorial 
bearings, flags, other emblems,  abbreviations, and names, that are 
already the subject of international agreements  in force, intended to 
ensure their protection. 

(c)   No country of the Union shall be required to apply the provisions of 
 subparagraph (b), above, to the prejudice of the owners of rights 
acquired  in good faith before the entry into force, in that country, of 
this Convention.  The countries of the Union shall not be required to 
apply the said provisions  when the use or registration referred to in 
subparagraph (a), above, is not  of such a nature as to suggest to the 
public that a connection exists between  the organization concerned and 
the armorial bearings, flags, emblems, abbreviations,  and names, or if 
such use or registration is probably not of such a nature  as to mislead 
the public as to the existence of a connection between the user  and the 
organization. 

(2) Prohibition of the use of official signs and hallmarks indicating 
control  and warranty shall apply solely in cases where the marks in which 
they are  incorporated are intended to be used on goods of the same or a 
similar kind. 
(3)(a)      For the application of these provisions, the countries of the 
Union  agree to communicate reciprocally, through the intermediary of the 
International Bureau, the list of State emblems,  and official signs and 
hallmarks indicating control and warranty, which they  desire, or may 
hereafter desire, to place wholly or within certain limits   under the 
protection of this Article, and all subsequent modifications of such 
list. Each country of the Union shall in due course make available to the 
public  the lists so communicated. 

Nevertheless such communication is not obligatory in respect of flags of 
States. 
(b)   The provisions of subparagraph (b) of paragraph (1) of this Article 
shall  apply only to such armorial bearings, flags, other emblems, 
abbreviations,  and names, of international intergovernmental 
organizations as the latter have  communicated to the countries of the 
Union through the intermediary of the  International Bureau. 

(4)   Any country of the Union may, within a period of twelve months from 
the  receipt of the notification, transmit its objections, if any, through 
the intermediary  of the International Bureau, to the country or 
international intergovernmental  organization concerned. 

(5)   In the case of State flags, the measures prescribed by paragraph 
(1),  above, shall apply solely to marks registered after November 6, 
1925. 
(6)   In the case of State emblems other than flags, and of official signs 
 and hallmarks of the countries of the Union, and in the case of armorial 
bearings,  flags, other emblems, abbreviations, and names, of 
international intergovernmental  organizations, these provisions shall 
apply only to marks registered more than  two months after receipt of the 
communication provided for in paragraph (3),  above. 

(7)   In cases of bad faith, the countries shall have the right to cancel 
even  those marks incorporating State emblems, signs, and hallmarks, which 
were registered  before November 6, 1925. 

(8)   Nationals of any country who are authorized to make use of the State 
 emblems, signs, and hallmarks, of their country may use them even if they 
are  similar to those of another country. 

(9)   The countries of the Union undertake to prohibit the unauthorized 
use  in trade of the State armorial bearings of the other countries of the 
Union,  when the use is of such a nature as to be misleading as to the 
origin of the  goods. 

(10)     The above provisions shall not prevent the countries from 
exercising  the right given in paragraph (3) of Article 6quinquies, 
Section B, to refuse  or to invalidate the registration of marks 
incorporating, without authorization,  armorial hearings, flags, other 
State emblems, or official signs and hallmarks  adopted by a country of 
the Union, as well as the distinctive signs of international 
intergovernmental organizations referred to in paragraph  (1), above. 

Article 6quater 


[Marks: Assignment of Marks] 

(1)   When, in accordance with the law of a country of the Union, the 
assignment  of a mark is valid only if it takes place at the same time as 
the transfer  of the business or goodwill to which the mark belongs, it 
shall suffice for  the recognition of such validity that the portion of 
the business or goodwill  located in that country be transferred to the 
assignee, together with the exclusive  right to manufacture in the said 
country, or to sell therein, the goods bearing  the mark assigned. 

(2)   The foregoing provision does not impose upon the countries of the 
Union  any obligation to regard as valid the assignment of any mark the 
use of which  by the assignee would, in fact, be of such a nature as to 
mislead the public,  particularly as regards the origin, nature, or 
essential qualities, of the  goods to which the mark is applied. 


Article 6quinquies 


[Marks:  Protection of Marks Registered in One Country of the Union in the 
 Other Countries of the Union] 

A. - (1) Every trademark duly registered in the country of origin shall be 
 accepted for filing and protected as is in the other countries of the 
Union,  subject to the reservations indicated in this Article. Such 
countries may,  before proceeding to final registration, require the 
production of a certificate  of registration in the country of origin, 
issued by the competent authority.  No authentication shall be required 
for this certificate. 

 (2)    Shall be considered the country of origin the country of the Union 
 where the applicant has a real and effective industrial or commercial 
establishment,  or, if he has no such establishment within the Union, the 
country of the Union  where he has his domicile, or, if he has no domicile 
within the Union but is  a national of a country of the Union, the country 
of which he is a national. 
B. - Trademarks covered by this Article may be neither denied registration 
 nor invalidated except in the following cases: 

1.  when they are of such a nature as to infringe rights acquired by third 
 parties in the country where protection is claimed; 

2.  when they are devoid of any distinctive character, or consist 
exclusively  of signs or indications which may serve, in trade, to 
designate the kind, quality,  quantity, intended  purpose, value, place of 
origin, of the goods, or the time  of production, or have become 
customary. in the current language or in the  bona fide and established 
practices of the trade of the country where protection  is claimed; 

3.  when they are contrary to morality or public order and, in particular, 
 of such a nature as to deceive the public. It is understood that a mark 
may  not be considered contrary to public order for the sole reason that 
it does  not conform to a provision of the legislation on marks, except if 
such provision  itself relates to public order. 

This provision is subject, however, to the application of Article 10bis. 
C. - (1) In determining whether a mark is eligible for protection, all the 
 factual circumstances must be taken into consideration, particularly the 
length  of time the mark has been in use. 

(2)   No trademark shall be refused in the other countries of the Union 
for  the sole reason that it differs from the mark protected in the 
country of origin  only in respect of elements that do not alter its 
distinctive character and  do not affect its identity in the form in which 
it has been registered in the  said country of origin. 

D. - No person may benefit from the provisions of this Article if the mark 
 for which he claims protection is not registered in the country of 
origin. 
E. - However, in no case shall the renewal of the registration of the mark 
 in the country of origin involve an obligation to renew the registration 
in  the other countries of the Union in which the mark has been 
registered. 
F. - The benefit of priority shall remain unaffected for applications for 
the  registration of marks filed within the period fixed by Article 4, 
even if registration  in the country of origin is effected after the 
expiration of such period. 

Article 6sexies 


[Marks:  Service Marks] 

The countries of the Union undertake to protect service marks. They shall 
not  be required to provide for the registration of such marks. 


Article 6septies 


[Marks:  Registration in the Name of the Agent or Representative of the 
Proprietor  Without the Latter's Authorization] 

(1) If the agent or representative of the person who is the proprietor of 
a  mark in one of the countries of the  Union applies, without such 
proprietor  s authorization, for the registration of the mark in his own 
name, in one or  more countries of the Union, the proprietor shall be 
entitled to oppose the  registration applied for or demand its 
cancellation or, if the law of the country  so allows, the assignment in 
his favor of the said registration, unless such  agent or representative 
justifies his action. 

(2)   The proprietor of the mark shall, subject to the provisions of 
paragraph 
(1), above, be entitled to oppose the use of his mark by his agent or 
representative  if he has not authorized such use. 

(3)   Domestic legislation may provide an equitable time limit within 
which  the proprietor of a mark must exercise the rights provided for in 
this Article. 

Article 7 


[Marks:  Nature of the Goods to which the Mark is Applied] 

The nature of the goods to which a trademark is to be applied shall in no 
case  form an obstacle to the registration of the mark. 


Article 7bis 


[Marks:  Collective Marks] 

(1)   The countries of the Union undertake to accept for filing and to 
protect  collective marks belonging to associations the existence of which 
is not contrary  to the law of the country of origin even if such 
associations do not possess  an industrial or commercial establishment. 

(2)   Each country shall be the judge of the particular conditions under 
which  a collective mark shall be protected and may refuse protection if 
the mark  is contrary to the public interest. 

(3)   Nevertheless, the protection of these marks shall not be refused to 
any  association the existence of which is not contrary to the law of the 
country  of origin, on the ground that such association is not established 
in the country  where protection is sought or is not constituted according 
to the law of the  latter country. 


Article 8 


[Trade Names] 

A trade name shall be protected in all the countries of the Union without 
the  obligation of filing or registration, whether or not it forms part of 
a trademark. 

Article 9 


[Marks, Trade Names:  Seizure, on Importation, etc., of Goods Unlawfully 
Bearing  a Mark or Trade Name] 

(1)   All goods unlawfully bearing a trademark or trade name shall be 
seized  on importation into those countries of the Union where such mark 
or trade name  is entitled to legal protection. 

(2)   Seizure shall likewise be effected in the country where the unlawful 
 affixation occurred or in the country in to which the goods were 
imported. 
(3)   Seizure shall take place at the request of the public prosecutor, or 
 any other competent authority, or any interested party, whether a natural 
person  or a legal entity, in conformity with the domestic legislation of 
each country. 
(4)   The authorities shall not be bound to effect seizure of goods in 
transit. 
(5)   If the legislation of a country does not permit seizure on 
importation,  seizure shall be replaced by prohibition of importation or 
by seizure inside  the country. 

(6)   If the legislation of a country permits neither seizure on 
importation  nor prohibition of importation nor seizure inside the 
country, then, until  such time as the legislation is modified 
accordingly, these measures shall  be replaced by the actions and remedies 
available in such cases to nationals  under the law of such country. 

 Article 10 

[False Indications:  Seizure, on Importation, etc., of Goods Bearing False 
 Indications as to their Source or the Identity of the Producer] 

(1)   The provisions of the preceding Article shall apply in cases of 
direct  or indirect use of a false indication of the source of the goods 
or the identity  of the producer, manufacturer, or merchant. 

(2)   Any producer, manufacturer, or merchant, whether a natural person or 
 a legal entity, engaged in the production or manufacture of or trade in 
such  goods and established either in the locality falsely indicated as 
the source,  or in the region where such locality is situated, or in the 
country falsely  indicated, or in the country where the false indication 
of source is used,  shall in any case be deemed an interested party. 


Article 10bis 


[Unfair Competition ] 

(1)   The countries of the Union are bound to assure to nationals of such 
countries  effective protection against unfair competition. 

(2)   Any act of competition contrary to honest practices in industrial or 
 commercial matters constitutes an act of unfair competition. 

(3)   The following in particular shall be prohibited: 

l.  all acts of such a nature as to create confusion by any means whatever 
 with the establishment, the goods, or the industrial or commercial 
activities,  of a competitor; 

2.  false allegations in the course of trade of such a nature as to 
discredit  the establishment, the goods, or the industrial or commercial 
activities, of  a competitor; 

3.  indications or allegations the use of which in the course of trade is 
liable  to mislead the public as to the nature, the manufacturing process, 
the characteristics,  the suitability for their purpose, or the quantity, 
of the goods. 


Article l0ter 


[Marks, Trade Names, False Indications, Unfair Competition:  Remedies, 
Right  to Sue] 

(l)   The countries of the Union undertake to assure to nationals of the 
other  countries of the Union appropriate legal remedies effectively to 
repress all  the acts referred to in Articles 9, 10, and 10bis. 

(2)   They undertake, further, to provide measures to permit federations 
and  associations representing interested industrialists, producers, or 
merchants,  provided that the existence of such federations and 
associations is not contrary  to the laws of their countries, to take 
action in the courts or before the  administrative authorities, with a 
view to the repression of the acts referred  to in Articles 9, 10, and 
10bis, in so far as the law of the country in which  protection is claimed 
allows such action by federations and associations of  that country. 


Article 11 


[Inventions, Utility Models, Industrial Designs, Marks:  Temporary 
Protection  at Certain International Exhibitions] 

(1)   The countries of the Union shall, in conformity with their domestic 
legislation,  grant temporary protection to patentable inventions, utility 
models, industrial  designs, and trademarks, in respect of goods exhibited 
at official or officially  recognized international exhibitions held in 
the territory of any of them. 
(2)   Such temporary protection shall not extend the periods provided by 
Article  4. If, later, the right of priority is invoked, the authorities 
of any country may provide that the period shall start  from the date of 
introduction of the goods into the exhibition. 

(3)   Each country may require, as proof of the identity of the article 
exhibited  and of the date of its introduction, such documentary evidence 
as it considers  necessary. 


Article 12 


[Special National Industrial Property Services] 

(1)   Each country of the Union undertakes to establish a special 
industrial  property service and a central office for the communication to 
the public of  patents, utility models, industrial designs, and trademarks. 

(2)   This service shall publish an official periodical journal. It shall 
publish  regularly: 

(a)   the names of the proprietors of patents granted, with a brief 
designation  of the inventions patented; 

(b)   the reproductions of registered trademarks. 


Article 13 


[Assembly of the Union] 

(1)(a)      The Union shall have an Assembly consisting of those countries 
 of the Union which are bound by Articles 13 to 17. 

(b)   The Government of each country shall be represented by one delegate, 
 who may be assisted by alternate delegates, advisors, and experts. 
(c)   The expenses of each delegation shall be borne by the Government 
which  has appointed it. 

(2)(a)      The Assembly shall: 

(i)   deal with all matters concerning the maintenance and development of 
the  Union and the implementation of this Convention; 

(ii)    give directions concerning the preparation for conferences of 
revision  to the International Bureau of Intellectual Property 
(hereinafter designated  as  the International Bureau) referred to in the 
Convention establishing the  World Intellectual Property Organization 
(hereinafter designated as  the Organization),  due account being taken of 
any comments made by those countries of the Union  which are not bound by 
Articles 13 to 17; 

(iii)     review and approve the reports and activities of the Director 
General  of the Organization concerning the Union, and give him all 
necessary instructions  concerning matters with in the competence of the 
Union; 

(iv)    elect the members of the Executive Committee of the Assembly;  (v) 
 review and approve the reports and activities of its Executive Committee, 
and  give instructions to such Committee; 

(vi)    determine the program and adopt the biennial budget of the Union, 
and  approve its final accounts; 

(vii)     adopt the financial regulations of the Union; 

(viii) establish such committees of experts and working groups as it deems 
 appropriate to achieve the objectives of the Union; 

(ix)    determine which countries not members of the Union and which 
intergovernmental  and international nongovernmental organizations shall 
be admitted to its meetings  as observers; 

(x)   adopt amendments to Articles 13 to 17; 

(xi)    take any other appropriate action designed to further the 
objectives  of the Union; 

(xii)     perform such other functions as are appropriate under this 
Convention; 
(xiii) subject to its acceptance, exercise such rights as are given to it 
in  the Convention establishing the Organization. 

(b)   With respect to matters which are of interest also to other Unions 
administered  by the Organization, the Assembly shall make its decisions 
after having heard  the advice of the Coordination Committee of the 
Organization. 

(3)(a)      Subject to the provisions of subparagraph (b), a delegate may 
re  present one country only. 

(b)   Countries of the Union grouped under the terms of a special 
agreement  in a common office possessing for each of them the character of 
a special national  service of industrial property as referred to in 
Article 12 may be jointly  represented during discussions by one of their 
number. 

(4)(a)      Each country member of the Assembly shall have one vote. 
(b)   One.half of the countries members of the Assembly shall constitute a 
 quorum. 

(c)   Notwithstanding the provisions of subparagraph (b), if, in any 
session,  the number of countries represented is less than one-half but 
equal to or more  than one-third of the countries members of the Assembly, 
the Assembly may make  decisions but, with the exception of decisions 
concerning its own procedure,  all such decisions shall take effect only 
if the conditions set forth hereinafter  are fulfilled. The International 
Bureau shall communicate the said decisions  to the countries members of 
the Assembly which were not represented and shall  invite them to express 
in writing their vote or abstention within a period  of three months from 
the date of the communication. If, at the expiration of this period, the 
number of countries having  thus expressed their vote or abstention 
attains the number of countries which  was lacking for attaining the 
quorum in the session itself, such decisions  shall take effect provided 
that at the same time the required majority still  obtains. 

(d)   Subject to the provisions of Article 17(2), the  decisions of the 
Assembly  shall require two-thirds of the votes cast. 

(e)   Abstentions shall not be considered as votes. 

(5)(a)      Subject to the provisions of subparagraph (b), a delegate may 
vote  in the name of one country only. 

(b)   The countries of the Union referred to in paragraph (3)(b) shall, as 
 a general rule, endeavor to send their own delegations to the sessions of 
the  Assembly. If, however, for exceptional reasons, any such country 
cannot send  its own delegation, it may give to the delegation of another 
such country the  power to vote in its name, provided that each delegation 
may vote by proxy  for one country only. Such power to vote shall be 
granted in a document signed  by the Head of State or the competent Minister. 

(6)   Countries of the Union not members of the Assembly shall be admitted 
 to the meetings of the latter as observers. 

(7)(a)      The Assembly shall meet once in every second calendar year in 
ordinary  session up on convocation by the Director General and, in the 
absence of exceptional  circumstances, during the same period and at the 
same place as the General  Assembly of the Organization. 

(b)   The Assembly shall meet in extraordinary session upon convocation by 
 the Director General, at the request of the Executive Committee or at the 
request  of one-fourth of the countries members of the Assembly. 

(8)   The Assembly shall adopt its own rules of procedure. 


Article 14 


[Executive Committee] 

(1)   The Assembly shall have an Executive Committee. 

(2)(a)      The Executive Committee shall consist of countries elected by 
the  Assembly from among countries members of the Assembly. Furthermore, 
the country  on whose territory the Organization has its headquarters 
shall, subject to  the provisions of Article 16 (7)(b), have an ex officio 
seat on the Committee. 
(b)  The Government of each country member of the Executive Committee 
shall  be represented by one delegate, who may be assisted by alternate 
delegates,  advisors, and experts. 

(c)   The expenses of each delegation shall be borne by the Government 
which  has appointed it. 

(3) The number of countries members of the Executive Committee shall 
correspond  to one-fourth of the number of countries members of the 
Assembly. In establishing  the number of seats to be filled, remainders 
after division by four shall be  disregarded. 

(4)   In electing the members of the Executive Committee, the Assembly 
shall  have due regard to an equitable geographical distribution and to 
the need for  countries party to the Special Agreements established in 
relation with the  Union to be among the countries constituting the 
Executive Committee. 
(5)(a)      Each member of the Executive Committee shall serve from the 
close  of the session of the Assembly which elected it to the close of the 
next ordinary  session of the Assembly. 

(b)   Members of the Executive Committee may be reelected but only up to a 
 maximum of two-thirds of such members. 

(c)   The Assembly shall establish the details of the rules governing the 
election  and possible reelection of the members of the Executive 
Committee. 
(6)(a)      The Executive Committee shall: 

(i)   prepare the draft agenda of the Assembly; 

(ii)    submit proposals to the Assembly in respect of the draft program 
and  biennial budget of the Union prepared by the Director General; 

(iii)     [deleted] 

(iv)    submit, with appropriate comments, to the Assembly the periodical 
reports  of the Director General and the yearly audit reports on the 
accounts; 
(v)   take all necessary measures to ensure the execution of the program 
of  the Union by the Director General, in accordance with the decisions of 
the  Assembly and having regard to circumstances arising between two 
ordinary sessions  of the Assembly; 

(vi)    perform such other functions as are allocated to it under this 
Convention. 
(b)   With respect to matters which are of interest also to other Unions 
administered  by the Organization, the Executive Committee shall make its 
decisions after  having heard the advice of the Coordination Committee of 
the Organization. 
(7)(a)      The Executive Committee shall meet once a year in ordinary 
session  upon convocation by the Director General, preferably during the 
same period  and at the same place as the Coordination Committee of the 
Organization. 
(b)   The Executive Committee shall meet in extraordinary session upon 
convocation  by the Director General, either on his own initiative, or at 
the request of  its Chairman or one-fourth of its members. 

(8)(a)      Each country member of the Executive Committee shall have one 
vote. 
(b)   One-half of the members of the Executive Committee shall constitute 
a  quorum. 

(c)   Decisions shall be made by a simple majority of the votes cast. 
(d)   Abstentions shall not be considered as votes. 

(e)   A delegate may represent, and vote in the name of, one country only. 
(9)   Countries of the Union not members of the Executive Committee shall 
be  admitted to its meetings as observers. 

(10)    The Executive Committee shall adopt its own rules of procedure. 

Article 15 


[International Bureau] 

(1)(a)      Administrative tasks concerning the Union shall be performed 
by  the International Bureau, which is a continuation of the Bureau of the 
Union  united with the Bureau of the Union established by the 
International Convention  for the Protection of Literary and Artistic Works. 

(b)   In particular, the International Bureau shall provide the 
secretariat  of the various organs of the Union. 

(c)   The Director General of the Organization shall be the chief 
executive  of the Union and shall represent the Union. 

(2)   The International Bureau shall assemble and publish information 
concerning  the protection of industrial property. Each country of the 
Union shall promptly  communicate to the International Bureau all new laws 
and official texts concerning  the protection of industrial property. 
Furthermore, it shall furnish the International  Bureau with all the 
publications of its industrial property service of direct  concern to the 
protection of industrial property which the International Bureau  may find 
useful in its work. 

(3)   The International Bureau shall publish a monthly periodical. 
(4)   The International Bureau shall, on request, furnish any country of 
the  Union with information on matters concerning the protection of 
industrial property. 
(5)   The International Bureau shall conduct studies, and shall provide 
services,  designed to facilitate the protection of industrial property. 

(6) The Director General and any staff member designated by him shall 
participate,  without the right to vote, in all meetings of the Assembly, 
the Executive Committee,  and any other committee of experts or working 
group. The Director General,  or a staff member designated by him, shall 
be ex officio secretary of these  bodies. 

(7)(a)      The International Bureau shall, in accordance with the 
directions  of the Assembly and in cooperation with the  Executive 
Committee, make the  preparations for the conferences of revision of the 
provisions of the Convention  other than Articles 13 to 17. 

(b)   The International Bureau may consult with intergovernmental and 
international  non-governmental organizations concerning preparations for 
conferences of revision. 
(c)   The Director General and persons designated by him shall take part, 
without  the right to vote, in the discussions at these conferences. 

(8)   The International Bureau shall carry out any other tasks assigned to 
 it. 


Article 16 


[Finances] 

  (1)(a)        The Union shall have a budget. 

(b)   The budget of the Union shall include the income and expenses proper 
 to the Union, its contribution to the budget of expenses common to the 
Unions,  and, where applicable, the sum made available to the budget of 
the Conference  of the Organization. 

(c)   Expenses not attributable exclusively to the Union but also to one 
or  more other Unions administered by the Organization shall be considered 
as expenses  common to the Unions. The share of the Union in such common 
expenses shall  be in proportion to the interest the Union has in them. 

(2)   The budget of the Union shall be established with due regard to the 
requirements  of coordination with the budgets of the other Unions 
administered by the Organization. 
(3)   The budget of the Union shall be financed from the following 
sources: 
(i)   contributions of the countries of the Union; 

(ii)    fees and charges due for services rendered by the International 
Bureau  in relation to the Union; 

(iii)     sale of, or royalties on, the publications of the International 
Bureau  concerning the Union; 

(iv)    gifts, bequests, and subventions; 

(v)   rents, interests, and other miscellaneous income. 

(4)(a)      For the purpose of establishing its contribution towards the 
budget,  each country of the Union shall belong to a class, and shall pay 
its annual  contributions on the basis of a number of units fixed as 
follows: 
Class I       25 

Class II        15 

Class III 15 

Class IV        10 

Class V       5 

Class VI        3 

Class VII 1 

(b)   Unless it has already done so, each country shall indicate, 
concurrently  with depositing its instrument of ratification or accession, 
the class to which  it wishes to belong. Any country may change class. If 
it chooses a lower class,  the country must announce such change to the 
Assembly at one of its ordinary  sessions. Any such change shall take 
effect at the beginning of the calendar  year following the said session. 

(c)   The annual contribution of each country shall be an amount in the 
same  proportion to the total sum to be contributed to the budget of the 
Union by  all countries as the number of its units is to the total of the 
units of all  contributing countries. 

(d)   Contributions shall become due on the first of January of each year. 
(e)   A country which is in arrears in the payment of its contributions 
may  not exercise its right to vote in any of the organs of the Union of 
which it  is a member if the amount of its arrears equals or exceeds the 
amount of the  contributions due from it for the preceding two full years. 
However, any organ  of the Union may allow such a country to continue to 
exercise its right to  vote in that organ if, and as long as, it is 
satisfied that the delay in payment  is due to exceptional and unavoidable 
circumstances. 

(f)   If the budget is not adopted before the beginning of a new financial 
 period, it shall be at the same level as the budget of the previous year, 
as  provided in the financial regulations. 

(5)   The amount of the fees and charges due for services rendered by the 
International  Bureau in relation to the Union shall be established, and 
shall be reported  to the Assembly and the Executive Committee, by the 
Director General. 
(6)(a)      The Union shall have a working capital fund which shall be 
constituted  by a single payment made by each country of the Union. If the 
fund becomes  insufficient, the Assembly shall decide to increase it. 

(b)   The amount of the initial payment of each country to the said fund 
or  of its participation in the increase thereof shall be a proportion of 
the contribution  of that country for the year in which the fund is 
established or the decision  to increase it is made. 

 (c)    The proportion and the terms of payment shall be fixed by the 
Assembly  on the proposal of the Director General and after it has heard 
the advice of  the Coordination Committee of the organization. 

(7)(a)      In the headquarters agreement concluded with the country on 
the  territory of which the Organization has its headquarters, it shall be 
provided  that, whenever the working capital fund is insufficient, such 
country shall  grant advances. The amount of these advances and the 
conditions on which they  are granted shall be the subject of separate 
agreements, in each case, between  such country and the Organization. As 
long as it remains under the obligation  to grant advances, such country 
shall have an ex officio seat on the Executive  Committee. 

(b)   The country referred to in subparagraph(a) and the Organization 
shall  each have the right to denounce the obligation to grant advances, 
by written  notification. Denunciation shall take effect three years after 
the end of the  year in which it has been notified. 

(8)   The auditing of the accounts shall be effected by one or more of the 
 countries of the Union or by external auditors, as provided in the 
financial  regulations. They shall be designated, with their agreement, by 
the Assembly. 


Article 17 


[Amendment of Articles 13 to 17] 

(1)   Proposals for the amendment of Articles 13, 14, 15, 16, and the 
present  Article, may be initiated by any country member of the Assembly, 
by the Executive  Committee, or by the Director General. Such proposals 
shall be communicated  by the Director General to the member countries of 
the Assembly at least six  months in advance of their consideration by the 
Assembly. 

(2)   Amendments to the Articles referred to in paragraph (1) shall be 
adopted  by the Assembly. Adoption shall require three-fourths of the 
votes cast, provided  that any amendment to Article 13, and to the present 
paragraph, shall require  four-fifths of the votes cast. 

(3) Any amendment to the Articles referred to in paragraph (1) shall enter 
 into force one month after written notifications of acceptance, effected 
in  accordance with their respective constitutional processes, have been 
received  by the Director General from three-fourths of the countries 
members of the  Assembly at the time it adopted the amendment. Any 
amendment to the said Articles  thus accepted shall bind all the countries 
which are members of the Assembly at the time the amendment  enters into 
force, or which become members thereof at a subsequent date, provided 
that any amendment increasing the financial obligations of countries of 
the  Union shall bind only those countries which have notified their 
acceptance  of such amendment. 


Article 18 


[Revision of Articles 1 to 12 and 18 to 30] 

(1)   This Convention shall be submitted to revision with a view to the 
introduction  of amendments designed to improve the system of the Union. 

(2)   For that purpose, conferences shall be held successively in one of 
the  countries of the Union among the delegates of the said countries. 
(3) Amendments to Articles 13 to 17 are governed by the provisions of 
Article  17. 


Article 19 


[Special Agreements] 

It is understood that the countries of the Union reserve the right to make 
 separately between themselves special agreements for the protection of 
industrial  property, in so far as these agreements do not contravene the 
provisions of  this Convention. 


Article 20 


[Ratification or Accession by Countries of the Union; Entry Into Force] 
(1)(a)      Any country of the Union which has signed this Act may ratify 
it,  and, if it has not signed it, may accede to it. Instruments of 
ratification  and accession shall be deposited with the Director General. 

(b)   Any country of the Union may declare in its instrument of 
ratification  or accession that its ratification or accession shall not apply: 

(i)         to Articles 1 to 12, or 

(ii)    to Articles 13 to 17. 

(c)   Any country of the Union which, in accordance with subparagraph (b), 
 has excluded from the effects of its ratification or accession one of the 
two  groups of Articles referred to in that subparagraph may at any later 
time declare  that it extends the effects of its ratification or accession 
to that group  of Articles. Such declaration shall be deposited with the 
Director General. 
(2)(a)      Articles 1 to 12 shall enter into force, with respect to the 
first  ten countries of the Union which have deposited instruments of 
ratification  or accession without making the declaration permitted under 
paragraph (1)(b)(i),  three months after the deposit of the tenth such 
instrument of ratification  or accession. 

(b)   Articles 13 to 17 shall enter into force, with respect to the first 
ten  countries of the Union which have deposited instruments of 
ratification or  accession without making the declaration permitted under 
paragraph (1)(b)(ii),  three months after the deposit of the tenth such 
instrument of ratification  or accession. 

(c)   Subject to the initial entry into force, pursuant to the provisions 
of  subparagraphs (a) and (b), of each of the two groups of Articles 
referred to  in paragraph (1)(b)(i) and (ii), and subject to the 
provisions of paragraph 
(l)(b), Articles 1 to 17 shall, with respect to any country of the  Union, 
 other than those referred to in subparagraphs (a) and (b), which deposits 
an  instrument of ratification or accession or any country of the Union 
which deposits  a declaration pursuant to paragraph (1)(c), enter into 
force three months after  the date of notification by the Director General 
of such deposit, unless a  subsequent date has been indicated in the 
instrument or declaration deposited.  In the latter case, this Act shall 
enter into force with respect to that country  on the date thus indicated. 

 (3) With respect to any country of the Union which deposits an instrument 
 of ratification or accession, Articles 18 to 30 shall enter into force on 
the  earlier of the dates on which any of the groups of Articles referred 
to in  paragraph (1)(b) enters into force with respect to that country 
pursuant to  paragraph (2)(a), (b), or (c). 


Article 21 


[Accession by Countries Outside the Union; Entry Into Force] 

 (1)    Any country outside the Union may accede to this Act and thereby 
become  a member of the Union. Instruments of accession shall be deposited 
with the  Director General. 

(2)(a)      With respect to any country outside the Union which deposits 
its  instrument of accession one month or more before the date of entry 
into force  of any provisions of the present Act, this Act shall enter 
into force, unless  a subsequent date has been indicated in the instrument 
of accession, on the  date upon which provisions first enter into force 
pursuant to Article 20(2)(a)  or (b); provided that: 

(i)   if Articles 1 to 12 do not enter into force on that date, such 
country  shall, during the interim period before the entry into force of 
such provisions,  and in substitution therefor, be bound by Articles 1 to 
12 of the Lisbon Act, 
(ii)    if Articles 13 to 17 do not enter into force on that date, such 
country  shall, during the interim period before the entry into force of 
such provisions,  and in substitution therefor, be bound by Articles 13 
and 14 (3), (4), and (5), of the Lisbon Act. 
If a country indicates a subsequent date in its instrument of accession, 
this  Act shall enter into force with respect to that country on the date 
thus indicated. 
(b)   With respect to any country outside the Union which deposits its 
instrument  of accession on a date which is subsequent to, or precedes by 
less than one  month, the entry into force of one group of Articles of the 
present Act, this  Act shall, subject to the proviso of subparagraph (a), 
enter into force three  months after the date on which its accession has 
been notified by the Director  General, unless a subsequent date has been 
indicated in the instrument of accession.  In the latter case, this Act 
shall enter into force with respect to that country  on the date thus 
indicated. 

(3)   With respect to any country outside the Union which deposits its 
instrument  of accession after the date of entry into force of the present 
Act in its entirety,  or less than one month before such date, this Act 
shall enter into force three  months after the date on which its accession 
has been notified by the Director  General, unless a subsequent date has 
been indicated in the instrument of accession.  In the latter case, this 
Act shall enter into force with respect to that country  on the date thus 
indicated. 


Article 22 


[Consequences of Ratification or Accession] 

Subject to the possibilities of exceptions provided for in Articles 20(1) 
(b)  and 28(2), ratification or accession shall automatically entail 
acceptance  of all the clauses and admission to all the advantages of this 
Act. 

Article 23 


[Accession to Earlier Acts] 

After the entry into force of this Act in its entirety, a country may not 
accede  to earlier Acts of this Convention. 


Article 24 


[Territories] 

(1)   Any country may declare in its instrument of ratification or 
accession,  or may inform the Director General by written notification any 
time thereafter,  that this Convention shall be applicable to all or part 
of those territories,  designated in the declaration or notification, for 
the external relations of  which it is responsible. 

(2)   Any country which has made such a declaration or given such a 
notification  may, at any time, notify the Director General that this 
Convention shall cease  to be applicable to all or part of such 
territories. 

(3)(a)      Any declaration made under paragraph (l) shall take effect on 
the  same date as the ratification or accession in the instrument of which 
it was  included, and any notification given under such paragraph shall 
take effect  three months after its notification by the Director General. 


(b)   Any notification given under paragraph (2) shall take effect twelve 
months  after its receipt by the Director General. 


Article 25 


[Implementation of the Convention on the Domestic Level] 

(1) Any country party to this Convention undertakes to adopt, in 
accordance  with its constitution, the measures  necessary to ensure the 
application of  this Convention. 

(2) It is understood that, at the time a country deposits its instrument 
of  ratification or accession, it will be in a position under its domestic 
law  to give effect to the provisions of this Convention. 


Article 26 


[Denunciation] 

(1)   This Convention shall remain in force without limitation as to time. 
(2)   Any country may denounce this Act by notification addressed to the 
Director  General. Such denunciation shall constitute also denunciation of 
all earlier  Acts and shall affect only the country making it, the 
Convention remaining  in full force and effect as regards the other 
countries of the Union. 
(3)   Denunciation shall take effect one year after the day on which the 
Director  General has received the notification. 

(4)   The right of denunciation provided by this Article shall not be 
exercised  by any country before the expiration of five years from the 
date upon which  it becomes a member of the Union. 


Article 27 


[Application of Earlier Acts] 

(l)   The present Act shall, as regards the relations between the 
countries  to which it applies, and to the extent that it applies, replace 
the Convention  of Paris of March 20, 1883. and the subsequent Acts of 
revision. 

(2)(a)      As regards the countries to which the present Act does not 
apply,  or does not apply in its entirety, but to which the Lisbon Act of 
October 31,  1958, applies, the latter shall remain in force in its 
entirety or to the extent  that the present Act does not replace it by 
virtue of paragraph (1). 
(b)   Similarly, as regards the countries to which neither the present 
Act,  nor portions thereof, nor the Lisbon Act applies, the London Act of 
June 2,  1934, shall remain in force in its entirety or to the extent that 
the present  Act does not replace it by virtue of paragraph (1). 

(c)   Similarly, as regards the countries to which neither the present 
Act,  nor portions thereof, nor the Lisbon Act, nor the London Act 
applies, The Hague  Act of November 6, 1925, shall remain in force in its 
entirety or to the extent  that the present Act does not replace it by 
virtue of paragraph (1). 
(3)   Countries outside the Union which become party to this Act shall 
apply  it with respect to any country of the Union not party to this Act 
or which,  although party to this Act, has made a declaration pursuant to 
Article 20(1)(b)(i).  Such countries recognize that the said country of 
the Union may apply, in its  relations with them, the provisions of the 
most recent Act to which it is party. 

Article 28 


[Disputes] 

(1)   Any dispute between two or more countries of the Union concerning 
the  interpretation or application of this Convention, not settled by 
negotiation,  may, by any one of the countries concerned, be brought 
before the International  Court of Justice by application in conformity 
with the Statute of the Court,  unless the countries concerned agree on 
some other method of settlement. The  country bringing the dispute before 
the Court shall inform the International  Bureau; the International Bureau 
shall bring the matter to the attention of  the other countries of the Union. 

(2)   Each country may, at the time it signs this Act or deposits its 
instrument  of ratification or accession, declare that it does not 
consider itself bound  by the provisions of paragraph (1). With regard to 
any dispute between such  country and any other country of the Union, the 
provisions of paragraph (l)  shall not apply. 

(3)   Any country having made a declaration in accordance with the 
provisions  of paragraph (2) may, at any time, withdraw its declaration by 
notification  addressed to the Director General. 


Article 29 


[Signature, Languages, Depositary Functions] 

(1)(a)      This Act shall be signed in a single copy in the French 
language  and shall be deposited with the Government of Sweden. 

(b)   Official texts shall be established by the Director General, after 
consultation  with the interested Governments, in the English, German, 
Italian, Portuguese,  Russian and Spanish languages, and such other 
languages as the Assembly may  designate. 

(c)   In case of differences of opinion on the interpretation of the 
various  texts, the French text shall prevail. 

(2)   This Act shall remain open for signature at Stockholm until January 
13,  1968. 

(3)   The Director General shall transmit two copies, certified by the 
Government  of Sweden, of the signed text of this Act to the Governments 
of all countries  of the Union  and, on request, to the government of any 
other country. 
(4)   The Director General shall register this Act with the Secretariat of 
 the United Nations. 

(5)   The Director General shall notify the Governments of all countries 
of  the Union of signatures, deposits of instruments of ratification or 
accession  and any declarations included in such instruments or made 
pursuant to Article  20(l)(c), entry into force of any provisions of this 
Act, notifications of  denunciation, and  notifications pursuant to 
Article 24. 


Article 30 


[Transitional Provisions] 

(1)   Until the first Director General assumes office, references in this 
Act  to the International Bureau of the Organization or to the Director 
General  shall be deemed to be references to the Bureau of the Union or 
its Director,  respectively. 

(2)   Countries of the Union not bound by Articles 13 to 17 may, until 
five  years after the entry into force of the Convention establishing the 
Organization,  exercise, if they so desire, the rights provided under 
Articles 13 to 17 of  this Act as if they were bound by those Articles. 
Any country desiring to exercise  such rights shall give written 
notification to that effect to the Director  General; such notification 
shall be effective from the date of its receipt.  Such countries shall be 
deemed to be members of the Assembly until the expiration  of the said period. 

(3)   As long as all the countries of the Union have not become Members of 
 the Organization, the International Bureau of the Organization shall also 
function  as the Bureau of the Union, and the Director General as the 
Director of the  said Bureau. 

(4)   Once all the countries of the Union have become Members of the 
Organization,  the rights, obligations, and property, of the Bureau of the 
Union shall devolve  on the International Bureau of the Organization. 



A 


                Sec. No. 

A4 size paper       608.02, 1825 

A.I. series of patents      901.04 

Abandoned Application. (See also Abandonment.) 

Accessability to public       103 

Counting, when processed        711.04 (a) 

Definition  203.05 

Destruction of      711.04 

Disposal        103, 711.04 

Fee on petition to revive 711.03(c) 

Issue fee, failure to pay 203.07, 712 

Listed          1302.04 

Matter reproduced in substitute       201.09 

Ordering        711.04(b), 905.03 

Papers received, handling 508.02 

Petition, Period for response after   1002 

Provisional application       201.04(b), 201.11 

Reference use     901.02, 2127 

Referred to in issued patent    103, 1302.04 

Retention label       1302.07 

Revival             711.03(c), 1893.02 

Provisional application       711.03(e) 

Storage             711.04(b) 

When open to the public       103 

Abandoned file. (See Abandoned Application; 
Abandonment.)       1302.07 

Abandoned Files Repository  608.02(c), 707.13, 

 711.01, 711.03(c), 711.04(a), 

711.04(b), 1302.07 

Abandonment (see also Abandoned application)    711 

After allowance         711.05 

Amendment late        711.02, 714.17, 2305.03 

Appeal dismissal. 1215.04 

Appeal withdrawal   1215.01 to 1215.03 

Assignee must consent     711 

Change of address   711.03(c) 

Court case  1216 

Date of         711.04(a) 

Destroys continuity   201.11 

Express             711, 711.01 

        Counted as action 1705 

File wrapper continuation (FWC) 
Rule 1.62 201.06(b) 

Issue fee not paid  712 

Issue fee paid      711.05 

Failure to file property rights statement 150 

Failure to pay Issue fee        712 

Abandonment--Continued 

Failure to prosecute     711.02 

Formal          711, 711.01 

Forwarding  711.04(a) 

Incomplete response   711.03(a) 

Incomplete response, Review by Primary      1004 

Invention abandoned   706.02(d) 

No response   711, 711.02 

Notification of       711.02, 711.04(c) 

Of appeal 1210 

Of invention    706.02(d), 2138.03 

Papers received after     508.02 

Petition to revive  711.03(c), 711.04(c) 

Petition to withdraw holding of 

Examiner's statement    711.03(c), 711.03(d) 

Prior application   201.06(a) 

Provisional application       201.04(b), 201.11 

Pulling                 711.04(a) 

Reconsideration       711.03, 711.03(c) 

Failure to respond    711.03(b) 

Insufficiency of response 711.03(a) 

Reissue             1416 

Revival             711.03, 711.03(c), 712 

Rule 1.60   201.06(a) 

Shortened statutory period 

expired             710.02(d),711.04(a) 

Special situations  711.02(b) 

Termination of proceedings  201.11, 

711.02(c), 712 

Undelivered action  707.13 

Unintentional     711.03(c) 

Withdrawal of holding.      711.03(c), 711.04(c) 

Abbreviation, Periodical citation 707.05(e) 

Abbreviature and Abstract publication       711.06 

Citation        711.06(a) 

Publication opens file to inspection    103 

Abstract for Defensive Publication  711.06 

Abstract of international application     1826 

Abstract of the disclosure  608.01(b), 

1302.01,1302.04 

Abstract publication    711.06 

Accelerated Examination       708.02 

Access (see also Inspection; Power of attorney): 

Attorney not of record      402, 405 

Authorized by Commissioner  104 

Disbarred attorney  105 

International application 110 

Pending application   101, 103, 104, 106 

Petition                103 

Access--Continued 

Protested application     1901.07 

Provisional application       103, 104 

Accident or inadvertence 
(see also Reissue application)      1401, 1414 

Accounts, Deposit 509.01 

Acknowledgment of protest 1901.05 

Act. (See Statutes; Statutes, revised.) 

Action (see also Letter, Examiner's): 

Advisory action       706.07(f), 714.13 

After another examiner's action       706.04 

After Board decision    1214.01 to 1214.07 

After Board decision reversing Examiner       1214.04 

After Board decision sustaining Examiner        1214.06 

After interference  2363 

Amendment after final rejection       706.07(f), 

714.12, 714.13 

Citation of references      705.05, 710.06 

Claim summary     707.07(i) 

Claims in excess of filing fee      714.10 

Completeness    707.07, 707.07(a) 

Copy to applicant 707.12 

Copies of references.     707.05(a) 

Correctness, Period for response        710.06 

Counted       1705 

Crosses amendment 714.05 

Date            707.11 

Examiner's  707 

File wrapper endorsement        707.10, 717.01 

File wrapper entry  707.10 

Final rejection       706.07 to 706.07(f), 713.09 

Foreign priority determination      201.13 to 201.16 

Formal matter     707.07(a), 707.07(e), 

707.07(j), 714.02 

Forms used  707 

Incorrect citation of references        710.06 

Informal Application    702.01 

Initial sentence        707.04 

Mailing             707.12 

Original in file wrapper        707.10, 707.12 

Patentability report    705, 705.01(c) 

Piecemeal examination.      707.07(a), 707.07(g) 

Primary Examiner's personal attention     707.01, 1004 

Priority determination, foreign       201.13-201.1 

Reopening prosecution     1003 

Response time computation 710.01(a), 710.05 

Restriction requirement       Chapter 800 

Action--Continued 

Returned        707.13 

Review          Introduction 

Shortened statutory period  710.02, 710.02(b) 

SPE's personal attention        707.02(a) 

Supplemental    710.06, 714.05 

Suspension  709 

Suspension, Primary's Attention       1004 

Suspension, Group Director's attention      1003 

Third, SPE reviews.   707.02(a) 

Time limit  710.02, 710.02(c) 

Additional Improvement series of patents        901.04 

Address, Change of 
Correspondence      601.03, 711.03(c) 

Address, Correspondence       403 

Address of applicant    605.03 

Address of Patent and Trademark Office      501, 502 

Address of patent owner       2222 

Address of unavailable inventor       409.03(e) 

Address to file reexamination     2224 

Administration, Letters of  409.01(b), 409.01(c), 

409.01(e) 

Administration of oath      604 

Administrative Instructions, PCT        App. AI 

Administrator or executor 409.01 

Allowance and Issue     409.01(f) 

Application by, After discharge         409.01(c) 

Assigned application, Inventor dies    409.01(e) 

Authority  409.01(b) 

Consular certificate     409.01(d) 

Foreign country        409.01(d) 

Heir.       409.01, 409.01(a), 409.01(d) 

Prosecution by       409.01(a) 

Intervention not required 409.01(f) 

Refuses to sign       409.03(c) 

Specification form  605.05 

Admissions by applicant       706.02(c), 2129, 

 2133.03(c) 

Jepson Claim    2129 

Admissions in Reexamination   2217, 2258 

Advantages over prior art 707.07(f), 1302.14 

Adverse recommendation under 
37 CFR 1.312            714.16(d), 714.16(e), 714.19 

Advisory action             706.07(f), 714.13 

Affidavit. (See Oath.) 

Affidavit, swearing back of reference (37 CFR 1.131) 

706.02(k), 715, 2133.01, 2133.02, 2133.03(c) 

Acts relied upon        715.07(c) 

NAFTA/WTO/this country      706.02(c), 715.07(c) 

Best mode, failure to disclose      715.10 

Coauthorship    715.01(c) 

Common assignee, reference and 
application   715.01(b) 

Compared to Rule 132 Affidavit      715.01 

Completion of invention       715, 2133.03(c) 

Conception (see also Conception)        2138.01 

Copies from prior applications      201.06(a) 

Dedication to public    715 

Derivation  715.07(c) 

Diligence (see also Diligence)      715.07(a), 2138.01 

Effective filing date     715 

Exhibit, Disposition    715.07(d) 

Formal requirements   715.04 

Facts and documentary evidence      715.07 

Timely presented        715.09 

Genus-species     715.03 

Generic claim     715.02 

Interference testimony equivalent to    715.07(b) 

NAFTA/WTO/this country      715.07(c) 

Misrepresentation 2011 

Overcome patent       715 

Prior public use/sale     715.10 

Priority time charts    2138.01 

Proper use of     715 

Reduction to practice (see also Reduction 
to Practice)    2138.01 

Reference date to be overcome     715 

Reference is: 

Common assignee       715.01(b) 

Joint patent to applicant and another     715.01(a) 

Patent claiming same invention      715.05, 2138.01 

Publication of applicant's own 
invention 715.01(c) 

Sufficiency of      715.08 

Uruguay Round Agreements Act (URAA)   715 

When used 706.02(b), 706.02(k), 715, 2132.01 

Who may make affidavit      706.02(b), 

 706.02(k), 715.04 

Withdrawn rejection   715 

Affidavits, traversing rejections 
(37 CFR 1.132)          716 

Attorney arguments  716.01(c) 

Affidavits, traversing rejections--Continued 

Inoperability of references   716.07, 2145 

Reference attributed to applicant 716.10 

Attribution, of reference to applicant      716.10 

Commercial success, evidence    716.03 

Commensurate in scope with claimed 
invention 716.03(a) 

Derived from claimed invention      716.03(b) 

Design applications   716.03(b) 

Sales figures     716.03(b) 

Comparison with closest prior art 716.02(e) 

Copying, evidence 716.06 

Computer programming cases  2106.02 

Disclosure, sufficiency       716.09 

Disclosure, utility and operability   716.08 

Evidence: 

Consideration of        716.01 

Publications    716.02(g) 

Objective   716.01(a) 

Compared to opinion evidence    716.01(c) 

Probative value       716.01(c) 

Weighing against prima facie case 716.01(d), 

716.05 

Secondary 716.01(b) 

Timeliness  716.01 

Failure of others (see Long-felt need) 

Long-felt need      716.04 

Reference attributed to applicant 716.10 

Sufficiency of      716.09 

Synergism 716.02(a) 

Skepticism of experts     716.05 

Timeliness  716.01 

Unexpected Results, allegations       716.02 

Unexpected Results, evidence    716.02(a) 

Advantages not disclosed or inherent    716.02(f) 

Burden on applicant   716.02(b) 

Commensurate in scope with claimed 
invention 716.02(d) 

Genus or species        716.02(d) 

Range, claimed      716.02(d) 

Weighing evidence of    716.02(c) 

Affidavits in prior art citations 2205 

After final practice in reexamination     2272 

Affirmation. (See Oath.) 

Affirmative fraud 2010.01 

After final practice    706.07(f) 

In transitional application   706.07(g) 

After final practice--Continued 

In reexamination        2272 

Agent. (See Attorney; Power of attorney.) 

Agent for international application   1807, 1864.04 

Aggregation         2173.05(k) 

Aggregation, Design application       1504 

Aggregation and old combination       2173.05(k), 

 2173.05(j) 

Agriculture, Department of, Plant patents 1608 

Agriculture Research Service    1609 

Algorithms      706.03(a), 2106, 2106.02 

Alien Property Custodian publication    901.06(c) 

Allowance and issue (see also Allowed 
application)            1300 

Abandonment after 711.05 

All claims allowed, Shortened period    710.02(b) 

Amendment, Examiner's     1302.04 

Amendment, Examiner's, Case in issue, 

Rule 312                714.06, 1305 

Amendment, Examiner's, 
Printer Waiting       1309.01, 1302.04 

Amendment after 

(See Amendment: After allowance.) 

Amendment after allowance of 
all claims  714.14, 1303.01 

Amendment after D-10 notice   107.02, 1304.01 

Amendment at time of    714.15 

Amendment crossing  714.15 

Assigned application    307 

Assignment Division   409.01(b), 1302.11 

Blue Slip 903.07, 903.07(b) 

Cancellation of claims after appeal   1302.04(e) 

Cancellation of claim lost in interference  1302.04(d) 

Cancellation on nonelected claim by 

Examiner's amendment    821.01, 821.02 

Cancellation of nonstatutory claim  1302.04(b) 

Claim copied from patent        2307.03 

Claim for Official Gazette  1203.10, 1302.09 

Claim renumbering 608.01(j), 1302.01, 1302.04(g) 

Claim renumbering, Dependent claim  608.01(n), 

 1302.01 

Classification      903.07, 903.07(b) 

Classification change after allowance     903.07 

Classification in other Group     .903.07(b) 

Classification slip notation    1302.10 

Companion application referred to 1302.04, 

1302.07 

Allowance and issue--Continued 

Copending Application: 

File wrapper notations      202.02, 1302.09 

Parent case data        1302.04(f) 

Retention label       1302.07 

Correction of error after allowance   714.16 

Cross-reference       903.07(a) 

D-10 notice   130, 1304 

D-10 notice, Amendment after    1304.01 

Deceased inventor, Notice of allowance      1303.03 

Definition  203.04 

Design application  1505 

Disclosure restriction      1302.01 

Drawing, class & subclass notation  903.07 

Drawing, Draftsman's stamp  608.02(o) 

Drawing correction  608.02(z), 1302.04 

Drawing in patented file  608.02(i), 905.03 

Drawing notations 1302.10 

Erasure of markings   1302.01 

Examiner's amendment. 

(See Examiner's amendment.) 

File wrapper notation     1302.09 

Final review    1302 

First action-cite pertinent art       1302.12 

Foreign application   1302.06 

Forfeited application     712 

Formal matters      714.16, 1302.01 

Formal matters, Examiner's amendment 
 and changes    714.16, 1302.04 

Formal matters, Specification rewritten       1302.02 

Fraud issue present   2022.02 

Full first or middle name required  605.04(b) 

General review      1302.01 

Interference    2305.04, 2307.03 

Interference, Notation      2301.01(b), 2305.04 

Interference search   1302.08 

International classification    903.09 

Intervention by executor. 409.01(f) 

Issue Division      1309 

Issue Division, Jurisdiction of case    1305 

Issue in another Group without transfer       903.07(b) 

Jurisdiction of case    1305 

Letter of allowability      714.13 

Listing of references     1302.12 

Nonelected claims, Canceled by 
Examiner's amendment    821.01, 821.026 

Allowance and issue--Continued 

Notice of allowance (see also Notice 

of allowance    1303 

Patentability report, 
Print disposal      608.02(n), 705.01(d) 

Plant application 1611 

"Printer Waiting" 1302.04, 1309.01 

Pro se          707.07(j) 

Protest against issue     1901 

Record room   905.03 

Reference listing 1302.12 

Reissue application   1455 

Rejection after allowance 706.04, 706.05, 

 1308.01 

Related applications File wrapper notations   202.02, 

1302.09 

Related applications, Parent case data      1302.04(f) 

Related applications, retention label     1302.07 

Reopening prosecution     1303.01, 1308.01 

Retention labels        1302.07 

Review by Examiner  1302.01, 1302.13 

Review by Primary 903.07 

Rewritten specification requirement   1302.02 

Secret case   130, 1304 

Signature inconsistent      605.04(b) 

Signing file wrapper    1302.13 

Slip            903.07 

Special             908.01, 710.02(b), 1301 

Specification, Clean copy required  1302.02 

Statement of invention      1302.01 

Status letter of allowability     1302.03 

Suggestion of claims    2305.04 

Supplemental oath after       603.01 

Terminology correspondence of 
specification and claims        1302.01 

Title of invention  1302.01, 1302.04(a) 

Title change by Examiner        606.01, 1302.04(a) 

Title search, Continuing application    306 

Transfer        903.08 

Undelivered notice of allowance       1303.02 

Withdrawal from issue. (See Withdrawal from issue.) 

Withholding from issue, Secrecy order case  1304 

Allowance, Reasons for      1302.14 

Allowed application (see also Allowance and issue): 

Custody of Patent Issue Division        203.04 

Definition  203.04 

File wrapper data 1302.09, 1303 

Allowed application:--Continued 

Rejection 1101.01(i), 1308.01 

Suggesting claim for reference      1003, 2305.04 

Allowed claim, rejection        706.04 

By Board of Patent Appeals and Interferences    1213.02 

Alpha subclass          903.02(c) 

Alteration of application after execution 605.04 

Alteration of application before execution  506, 

601.01(a), 608.01 

Alteration of patent application        506 

Alternative phrase in claim   2173.05(h) 

Amended application (definition)        203.03 

Amended application, Inspection for 
transfer                903.08(c) 

Amendment (see also Response)     714 

Accidental entry        714.21 

Adding excess claims    714.10 

After abandonment 711.02, 714.17 

After all claims allowed        714.14 

After allowance: 

Approval                714.16 

Canceling claim       714.16 

Claim copied from patent        714.16(a), 2307.03 

Entry in part     714.16(e) 

Examiner's action 714.16, 714.16(d), 714.16(e) 

Excess claims     714.16(c) 

Formal matters      714.16, 714.16(d) 

Handling                714.16(d) 

Mailed before allowance       714.15 

Motion under w 1.633(c)(2)  714.16(b), 

2333, 2363.03 

Order 3311  714.16(d) 

Patentability pointed out 714.16 

Petition as to refusal      1102.02(c) 

Reason for adverse action 714.16, 714.16(d) 

Renumbering claims  714.16(e) 

"Secrecy order" case    130 

Supplemental oath 603.01, 714.16 

After Examiner's answer       1210 

After appeal, Before Examiner's answer      1207 

After Board decision    1204.01-1214.07 

After death of attorney       406 

After final rejection     706.07(f), 714.12, 714.13 

After final rejection, Entered in part      714.20 

Amendment of    714.24 

Appeal, After Examiner's answer       1210 

Amendment--Continued 

Appeal before or with     1207 

Applicants must sign    714.01(a) 

At allowance    714.15 

Attorney not of record      405 

Basis in disclosure     608, 706.03(c), 

2163.03, 2163.07 

Before first action   608.04(b), 707.04, 714.09 

Board rejection avoided       1214.01 

Brackets required 714.22 

Canceled matter restored        608.01(s) 

Canceling all claims    711.01, 714.19 

Canceling appealed claims 1215.01 to 1215.03 

Claim added, Terminology basis      608.01(o), 

2163.03, 2163.07 

Claim numbering       608.01(j), 1302.01, 1302.04(g) 

Claims added in excess of filing fee    714.10, 

 714.16(c) 

Complete response required  714.02, 714.04 

Conditional   1302.04 

"Copier" copies       714.07 

Copying patent claim. (See Claim 
copied from patent.) 

Crossing allowance  714.15 

D-10 notice preceding     130, 1304 

Date of receipt       505, 710.01(a), 714.18 

Date stamp: 

Group receipt     714.18 

Office date   505, 710.01(a), 714.18 

Declaration   602.01 

Defective directions for entry      714.20, 714.23 

Delivered to wrong group        508.01 

Depositing  502 

Directions for entry    714.22, 714.23 

Discharged attorney   714.19 

Discourteous    714.19, 714.25 

Drawing       608.02(p), 608.02(q), 1302.05 

Drawing, Disposition    608.02(x) 

Drawing, New matter   608.04, 714.19 

Duplicate 717.01(a) 

Easily erasable paper forbidden       714.07, 714.19 

Entered in part       714.20 

Entered in part, After allowance, 
37 CFR 1.312    714.16(e) 

Entry       714.18, 717.01(a), 1303.01 

Entry denied    714.17, 714.19, 714.21 

Appeal case   1207, 1214.07 

Amendment--Continued 

Defective directions    714.23 

Drawing correction  608.02(x) 

Drawing new matter  608.04 

List            714.19 

Paper number    714.21 

Period for response expired   714.17 

Substitute specification 

unnecessary   714.19, 714.20 

Entry directions        714.22, 714.23 

Entry inadvertent 714.21 

Entry in reexamination      2234 

Entry of amendment filed in connection 
with motions in interference    2364 

Examiner's (see also 
Examiner's amendment)     706.07(f), 1302.04 

Excess claims added   714.10, 714.16(c) 

Facsimile 502.01 

Fees, additional        710.02(c) 

File wrapper endorsement        714.18, 717.01 

Formal matters, compliance with       714.02 

Fully responsive        714.02 

Heading       502 

Immediate inspection    714.05 

Improper signature  502.02, 714.01(a) to 714.01(d) 

Ratification    714.01(a), 714.08 

Inaccurate  707.07(h), 714.23 

Incomplete response   711.02(a), 711.03(a), 

714.02 to 714.04 

Time for completing   710.02(c), 714.03 

Increasing claims in excess of fee 
under 37 CFR 1.312  714.10, 714.16(c) 

Ink, Not permanent  714.07 

Inspection by examiner      714.05 

Interference    2364.01 

Inventorship (See Inventor-Change of) 

Joint to sole, Interference   2334 

Jurisdiction of case not with Examiner      714.16, 

714.19, 1305 

Late            710.02(d), 711, 714.17 

Literature citation in specification    608.01(p) 

Motion under 37 CFR 1.633(c)(2), 

Case in issue     714.16(b) 

Name change on file wrapper   605.04(c), 717.02(b) 

New matter  608.04, 706.03(o), 2163.06 

Nonentry (see also Amendment, 

entry denied)     607, 714.19 

Amendment--Continued 

Nonresponsive     714.02 to 714.04 

Nonresponsive, Time to 

perfect response        710.02(c), 714.03 

"Not entered"       714.19, 714.21 

Oath, Original      602.01 

Objectionable remarks     714.19, 714.25 

Office date stamp 505, 710.01(a), 714.18, 1303 

Paper number    714.18 

Patentability pointed out 714.02, 714.04 

Period for response ends Sunday 

or holiday  505, 710.01(a), 710.05 

Permanent ink required      714.07, 714.19 

Plant application 1610 

Post Office address, Applicant      605.03 

Preliminary   506, 714.09 

Excess claims     506, 714.10 

New matter  608.04(b) 

Ratification: 

Signature defective   714.01(a) 

Telegram                714.08 

Receipt             501 to 505, 511, 512 

Received after allowance        714.15, 1303.01 

Recommendation by Board       1213.01 

Reexamination     2250 

Reinstatement of canceled matter        714.24 

Reissue             1453 

Request by patent owner       2221 

Requirements of       714.02 

Residence change        717.02(b) 

Responsive  714.02, 714.04 

Return, After entry on file wrapper   717.01 

Ribbon copy   717.01(a) 

Rule 1.312 (see also Amendment 

after allowance)        714.16, 1303.01 

Several same day        714.18 

Signature improper  714.01(a) to 714.01(d) 

Signature missing 714.01(a) 

Signature required  605.04 to 605.05, 714.01 

Signed by applicant, Not by 

attorney of record  714.01(d) 

Signed by attorney not of record        405, 714.01(c) 

Supervisory primary examiner    714.13, 714.16, 714.18 

Support by original claim 608.01(l) 

Telegram        714.08 

Telephone number        713.01, 714.01 

Unsigned        714.01(a) 

Amendment--Continued 

Ratification of       710.02(c), 714.01(a) 

Wrong Group   508.01 

Analogous art       904.01(c), 1302.14, 2131.05 

Analysis of claims  904.01 

Answer all matters traversed    707.07(f) 

Answer on remand        1212 

Antecedent lacking  706.03(d), 1302.01 

Anticipation            706.02(a), 707.07(d), 2131, 2133.06 

Affidavit to overcome     2132.01 

Analogous art     2131.05 

Definition of     2131 

Genus-species     2131.02 

Generic chemical formula        2131.02 

Meaning of: 

"By others"   2132 

"In this country" 2132 

"Known or used"       2132, 2133.03(a) 

"Patented in this or a foreign country"       2132 

Multiple references, circumstances where 

permitted   2131.01 

One-year grace period     2133 

On sale (see On Sale) 

Ranges          2131.03 

Rejections based on publications and 
patents       2133.02 

Prima facie case        2132.01 

Public Use (see Public Use) 

Secondary considerations, evidence of     2131.04 

Apostille   602.04(a) 

Apparatus, Process or product 
and         806.05(e) to 806.05(g) 

Appeal          Chapter 1200 

Abandonment   1210 

Actions subsequent to Examiner's answer       1210 

Administrative handling       1204 

Affidavit after appeal      1212 

Affidavit after Board decision      1214.01, 1214.07 

Amendment after Examiner's answer 1210, 

1211,1211.01 

Amendment before Examiner's answer  1207 

Amendment for purpose of        714.12, 714.13 

Amendment makes case allowable      1207 

Answer, Examiner's  1208 

Better reference before brief     1208.01 

Board remands case to Examiner      1200, 1210, 

1211, 1212, 1302.14 

Appeal--Continued 

Brief       1206 

Brief in reexamination      2274 

Cancellation of withdrawn claims        1214.05 

Civil Suits   1216.02 

Claims copied from patent, Time limit     710.02(c) 

Claims included       1205 

Clerk, Group    1204 

Concurrently with Interference      1210, 2315 

Concurrently with prosecution 
before Examiner       1210 

Conference  1208, 1302.14 

Constitution of the Board 1203 

Court       1216 

Court, C.A.F.C      1216.01 

Decision by Board 1213 

Dismissal 1215.04 

Examiner reversed 1214.04 

Examiner sustained  1214.06 

Examiner's answer 1208 

Failure to prosecute appeal   1215.04 

Fee         1205 

From Board Decision   1216 to 1216.02 

Hearing       1209 

Introduction    1201 

Jurisdiction    1210 

Matter subject to Introduction, 706.01 

Multiplicity rejection      2173.05(n) 

New ground of rejection by Board        1214.01 

New ground of rejection by Examiner 
in Examiner's answer    1207, 1208.01 

New matter affecting claim  608.04(c) 

New rejection by Board      1214.01 

Notice of 1205 

Oral hearing    1209 

Reexam      2276 

Patentability report case 705.01(a) 

Prerequisite    1205 

Primary Examiner's attention    1004 

Procedure after decision        1214.01 

Protestor participation       1904 

Publication of decision       1213.03 

Real Party in Interest      1206, 1208 

Recommendation of Board       1213.01 

Reconsideration by Board        1212, 1214.01, 1214.03 

Reexamination     2273 

Appeal--Continued 

Remand by Board       1208, 1210, 1211, 

1211.01, 1212, 1302.14 

Remand by CAFC      1216.01 

Remanded case special     708.01 

Reopening of prosecution        1214.07 

Reply brief to Examiner's answer        1208.03 

"Secrecy order" case    130 

Supplemental examiner's answer      1208.04 

Suspension pending civil action or CAFC 
appeal in related case      1213 

Suspension pursuant to 37 CFR 1.56(d)     1213 

Time for filing brief     512, 1206 

Withdrawal  711.02(b), 1215.01, 1215.02 

Withdrawal of final rejection     1208.02 

Withdrawal, Partial   1214.05, 1215.03 

Appealable matter not petitionable  1002, 1201 

Appendix, computer program listing  608.05 

Applicant (see also Inventor)     605 

Abandonment notification        711.04(c) 

Administrator or executor 409-409.01(f), 605.05 

Age, Special Status   708.02 

Citizenship   605.01 

Common, at least one    201.06, 

706.02(f), 706.02(k) 

Discourtesy   714.19, 714.25 

Health, Special Status      708.02 

Heir        409.01(a), 409.01(d) 

International application 1820.02, 1820.09, 

1820.10 

Joint       201.02, 201.03, 605, 2137.01 

Name change   605.04(c), 717.02(b) 

Other than inventor   409-409.01(f), 409.03(b) 

Post Office address   605.03 

Power to inspect        104, 106 

Reply. (See Amendment, Response) 

Requirements    2137.01 

Residence 605.02 

Self prosecuted case    707.07(j), 713.01 

Signature 605.04 

Small entity    509.02 

Sole            201.01 

Application: 

Abandoned. (See Abandoned application.) 

Abstract of the disclosure  608.01(b) 

Acceptance of w 1.47    409.03(h) 

Allowable except as to form   706, 710.02(b) 

Application--Continued 

Allowed: 

Custody of Patent Issue Division        203.04 

Definition  203.04 

File wrapper data 1302.09 

Rejection   706.05, 1308 

Suggesting claim for interference 2305.04 

Amended (definition)    203.03 

APS         902.03(e) 

Arrangement   608.01(a) 

Assigned. (see also Assignee; Assignment.) 

Access          106 

Allowance 307 

Conflicting subject matter  706.02(f), 706.02(k), 

706.02(l), 706.03(k), 822, 2302 

Inventor applies for    605 

Inventor deceased 409.01(e) 

Assignment for Examination, 

Application Division    504 

Assignment to Examiner for 
 examination    903.08(b) 

Assignment to Group 
for examination       504, 903.08, 903.08(e) 

Background of the invention   608.01(c) 

Best mode 608.01(h), 706.03(c) 

Brief description of the drawings 608.01(f) 

Brief summary of the invention      608.01(d) 

Claim terminology 608.01(o) 

Claims          608.01(i)-608.01(n), 706.03(k) 

Clarity and completeness, Examiner's 
action      707.07 

Classification in examining Group 903.08(b) 

Common ownership        305, 706.02(f), 706.02(k), 

 706.02(l), 709.01, 822, 2302 

Completeness    201.03, 506, 601.01, 

601.01(g), 608.01(p) 

Conflicting, same applicant   709.01, 804, 

822, 822.01 

Content       601 

Continuation (see also Continuation)    201.07 

Continuation-in-part 

(see also Continuation-in-part)       201.08 

Continuity between applications       201.11 

Control of access 101, 103, 106 

Copendency  201.11 

Copending, Design 1504 

Correction of inventorship  201.03 

Application--Continued 

Cross-noting: 

Data of parent application 
on file wrapper       202.02, 1302.09 

Data of related application 
brought up to date  1302.04(f) 

Data of related application 
in specification        201.11, 202.01 

Foreign application, Application oath     202.04 

Foreign application, File wrapper 202.03 

Depositing   502 

Description of the related art      608.01(c) 

Design (see also Design application)    201, 1503 

Detailed description    608.01(g) 

Distribution    508 

Division (see also Divisional application)  201.06 

Drawings, necessary   601.01(f) 

Missing figures       601.01(g) 

Effective filing date     706.02, 706.02(a) 

English language        608.01 

Examples        707.07(l) 

Facsimile 605.04 

Fee, filing   607 

Field of the invention      608.01(c) 

File wrapper continuing (FWC)     201.06(b) 

Filing date   201.11, 503, 505, 511 

Filing receipt      503 

Five-year pendency  707.02(a), 708.01 

Foreign (see also Foreign 

application)    201.13-201.15 

Form            601 

Government-owned: 

Completed 506 

Drawing             507 

Return          506.01 

Return of filing fee    503 

Special             708.01 

Incomplete  203.06, 506, 601.01(d), 

(e), and (f), 608.01(u) 

Definition  203.06, 506 

Informal        506, 702.01 

Definition  203.06, 506 

Primary's attention required    1004 

Search          702.01, 704 

Special             708.01 

Inspection  103 

International. (See International application.) 

Application--Continued 

International Convention (35 U.S.C. 119)        201.13 

Invalid oath    604.06 

Issue, Definition 203.04 

Issue fee not paid (abandoned)      203.07, 712 

Issue simultaneously with another application     1306.02 

Joint       201.02 

Joint to sole     201.03 

Joint to sole, Interference   1111.07, 2334 

Jurisdiction    1305 

Mode of operation 608.01(h) 

National application    201 

National stage application  201 

New definition      203.01 

Nonprovisional      201.04(a), 506, 601 

Old (definition)        203.03 

Omitted Items     601.01(d), (f), and (g) 

Ordered examination   707.02, 708, 708.01 

Original        201.04(a), 506, 601 

Overlapping, 
Common ownership        706.02(f),706.02(k), 

706.02(l), 709.01, 715.01(b), 

804.03, 822, 2302, 2315.01 

Overlapping, 
Same applicant      709.01, 804, 

822, 822.01, 2315.01 

Pages missing     601.01(d) 

Papers, Arrangement   717.01(a) 

Parent          904 

Parts       Chapter 600 

Pending five years  707.02(a) 

Plant (see also Plant application)  201, 

Chapter 1600 

Prior art 2121 to 2129 

Priority 

Foreign application   201.13, 706.02 

US application      201.11, 706.02 

Protest             1901 

Provisional (see also Provisional 

Application)    201.04(b), 601, 601.01, 

601.01(b), 706.02 

Warning             505, 510 

Public inspection 103 

Publication of abstract       711.06, 711.06(a) 

Receipt and handling    Chapter 500 

Recording in examining Group    1704 

Application--Continued 

Referred to in Patent, Information as to 
status      102 

Refile          201.10 

Reissue (see also Reissue 

application)    Chapter 1400 

Rejected definition   203.02 

Relating to atomic energy 115, 150, 151 

Requisites  702 

Returning papers        506.01, 601 

Review          506 

Right to inspect        103 

Right of priority, foreign application      201.13 

Rule 1.60 201.06(a) 

Rule 1.62 201.06(b) 

"Secrecy order"       120, 130 

Serial number     503 

Signed in blank       2006 

Sole            201.01 

Sole to joint     201.03 

Special             707.02(a), 708 to 708.03 

List            708.01 

Status          102, 203 

Inquiries   203.08 

Substitute: 

Definition  202.09 

Does not carry ownership 
from parent   201.12, 306 

File wrapper notation     202.02 

Reference to parent application       201.09 

Refile          201.10 

Terminology, Claim  608.01(o) 

Title of invention  606 

Title of invention, Change  606.01, 1302.01, 

1302.04 

Transitional (see also Transitional 

Application)    706.07(g), 803.03 

Types       201 

Utility             201 

Wrong Group   508.01 

Application Division    201.03, 201.06(a), 402, 

402.01, 409.03, 409.03(h), 

502-506.01, 508.03, 601.01, 

605.04(b), 605.04(c), 605.04(g), 

607, 608.01(f), 608.02, 

608.02(h), 608.02(i), 702.01, 707.07(a), 

717.02, 7.02(b) 903.08(a), 1431 

Application Division--Continued 

Status inquiries        203.08 

Arbitration awards notice 311 

Arbitration, interference 2390 

Argument for allowability lacking in 
amendment   714.04 

Arrangement of application  608.01(a) 

Arrangement of art in examining groups      901.07 

Arrangement, Papers in file wrapper   717.01(a) 

Art Unit number on papers 502 

Asexual Plants          Chapter 1600 

Assigned application: 

Access          104, 106 

Allowance 307 

Conflicting subject matter  706.03(k), 822, 

2302, 2315.01 

Endorsing assignments     303 

Inventor applies for    605 

Inventor deceased 409.01(e) 

Nonprovisional claiming benefit of 
provisional   306.01 

Provisional application       302.03 

Assignee. (See also Assigned application, Assignment.) 

Address       302.05 

Affidavits under 37 CFR 1.131     715.04 

Certificate of correction 307, 1480 

Change of inventorship, consent       201.03 

Common      706.02(f), 706.02(k), 706.02(l), 

709.01, 822, 2302, 2315.01 

Double patenting, Same assignee       706.03(k), 

804, 822 

Duty of disclosure  2001.01 

Entire interest, Control        106, 324, 402.07 

Foreign             302.04 

Interfering cases, 

Same assignee     709.01, 2302, 2315.01 

Intervention    106, 324, 402.07 

Part interest     106.01 

Patent issues to        307 

Power to inspect        104 

Reissue application   1420 

Revocation of power of attorney       324, 402.07 

Small entity    509.02 

Assignment      Chapter 300 

Access          301.01 

Allowance of application        307 

Assignment identification requirements      302.03 

Assignment--Continued 

Change of name      314 

Continuing application      201.12, 306 

Copy            302.01 

Corrections in recorded assignment  323 

Cover sheet   302.07 

Corrections   317.02, 323.01 

Date of recording 317.01 

Effect of recording   317.03 

File wrapper endorsement        303, 318 

Foreign language translation    302.02 

Indexing        315 

International application 301 

Licenses        313 

Mailing address       302.08 

Mergers       314 

Nonprovisional claiming benefit of 
provisional   306.01 

One of several overlapping 
applications    709.01, 715.01(b) 

Parent application  201.12, 306 

Part interest     106.01, 706.02(l) 

Patent          301, 302.03 

Pending applications    301, 302.03, 706.02(l) 

Plural items    301.01 

Printing on patent  307, 1309 

Proof of        706.02(l) 

Provisional application       302.03 

Recording 302, 313, 314, 706.02(l) 

Recording fee     302.06 

Security Interests  313 

Transfer of rights 
from/to small entity    509.02 

Translation   302.02 

Assignment Division   605.04(c), 717.02 

Administrator and executor authority 
checked       409.01(b) 

Allowance and issue   307, 1302.11 

File wrapper endorsement        303 

Title search    319, 320 

Assignment of Application for Examination, 
Application Division    504 

Assignment of reexamination   2236 

Assignment to Examiner for examination      903.08(b) 

Assistant Commissioner for Patents 
(see also Office of Assistant Commissioner 
for Patents)            201.06(a), 409.01(b), 409.03, 

409.03(h), 409.03(i),409.03(j), 708.01, 

720.01, 720.02, 720.03, 1002.02 

Petitions decided by    1002.02(a) 

Assistant Commissioner for Trademarks, 
Petition decided by   1002.02(i) 

Associate attorney  402.02, 406 

Associate attorney, Correspondence with       403.01 

Associate of unregistered attorney  402 

Atomic Energy Act of 1954 120, 706.03(a) and (b) 

Atomic energy application 150 

Attorney: 

Appointment by assignee of entire interest  106 

Associate 402, 402.02, 406 

Associate of unregistered 402 

Conduct in fraud case     2052 

Conflicting parties have same     404 

Correspondence with   402, 403, 403.1 

Correspondence with associate     403.01 

Death       406 

Disbarred 105, 407, 714.01(a) 

Disbarred, Inspection by        105 

Disbarred, Interview    105, 713.05 

Discourtesy   714.25 

Duty of disclosure  2001.01 

Excluded from practice      105 

Inspection  104 

Interfering cases 402.08, 

2305, 2309.02, 2313 

International Application 402.09, 1807, 

1808, 1820 

Interview 408, 713 to 713.10, 1302.14 

Limited recognition   402.01 

More than one for same applicant        403.02 

Name on patent      1309 

Name on reexamination certificate 2287 

Not of record     402, 405 

Notarizing oath       604.06 

Office cannot aid in selection      401 

Post Office address   601.02 

Power (see also Power of attorney)  402, 406 

Reexamination     2222 

Registration    401, 402 

Roster of attorneys   601.03, 2205 

Same in conflicting cases 2305, 2309.02 

Attorney--Continued 

Selection 401 

Signature of    402 

Suggested 401 

Suspended 105 

Telephone number on letters   713.01, 714.01 

Telephoned by Examiner      408, 713.01, 1302.14 

Unregistered    402 

Washington representative 408 

Withdrawal  402.06 

Withdrawal after patent granted       2223, 2560 

Withdrawal in patent    2223 

Authentication of oath      604.04(a) 

Authority of Administrator or Executor      409.01(b) 

Authority of Commissioner, Delegation     1001.01 

Authority of Commissioner, Statutory    1001 

Authority to inspect pending application        103 

Authorization       402 

Authorization, Deposit Accounts       509.01 

Authorship      715.01(c), 716.10 

Avoiding double patenting rejection   706.02(k), 

 804.02, 2129 


B 


Background of the invention   608.01(c) 

Bacteria                1601 

Bar, Statutory          706.02(a), 2133 to 2133.03(e)(7) 

Overcoming  706.02(b) 

Base claim canceled   608.01(n) 

Base claim rejected   608.01(n) 

Batch Number, Issue   203.04, 503, 1303.01 

Benefit of foreign priority (see 
Foreign application)    201.13 

Benelux Designs Convention  201.13 

Best mode   608.01(h), 2165 to 2165.04 

Affidavit or declaration        715.10 

Compared to Enablement      2165.02 

Computer cases      2106.01 

Considerations relevant to  2165.01 

Evidence of concealment       2165, 2165.04 

Form paragraphs used to reject      706.03(c) 

Requirements for rejection for lack of      2165.03 

Biological material   2164.06, 2402, 2403 

Biotechnology       2164.06, 2400 

Biotechnology process claims    706.02(n) 

Blue slip   903.07, 1302.10 

Blue slip, Digests on     903.07 

Blue slip, Signatures     903.07(b) 

Board of Patent Appeals and Interferences 
(see also Appeal, Interference)       706.03(v), 

706.03(w), 707.07(f), 707.06, 708.01, 

711.02(b), 2284, 2300.01 

Allowed claim rejection statement 1213.02 

Appeal from   1216 to 1216.02 

Constitution and duties       1203 

Decision, Appeal        1213 

Decision, Dissemination of  1720 

Decision, Treatment of      1721 

Duty of disclosure to     2001.03 

Hearing       1209, 2354 

Interference    2355, 2358 

Jurisdiction    706.01, 706.07(c), 

1210, 2300.02 

New ground of rejection by  1214.01 

Petitions 1002(f), 1002.02(j), 2344 

Protestor participation       1904 

Recommendation by 1213.01, 2359 

Reconsideration and rehearing by        1214.01, 

1214.03, 2358 

Service Branch      103, 104 

Books in library                901.06(a) 

Borderline classification 903.08(a) 

Borrowed publications     901.06(a), 901.06(b) 

Borrowing references from Examining 
 Group          901.08 

Box at Office for depositing papers   502 

Box FWC             201.06(b), 501 

Box Interference        501 

Box M. Fee      501, 2510 

Box Patent Ext.             501 

Box PCT             501, 1845 

Box Reexam      501, 2225 

Box 7       1404, 1901.03 

Box 8       501 

Breadth, Undue          2163.05, 2173.04 

Brief, Filed on appeal      1206 

Extension of time 1215.04 

Reexamination     2274 

Brief description of the drawings 608.01(f) 

Brief on motion             2300.02, 2356 

Brief summary of invention  608.01(d), 1302.01 

Briefs for final hearing        2356 

British patent with exponent, Citing    901.05(b) 

British specification, Provisional, Complete    201.15 

Broadening claims in reissue    1412.03 

Budapest Treaty depositories    2405 

Bulletin, Classification        902.04 

Burden of Proof             2112, 2112.01, 2113 

Business hours          510 


C 


C.A.F.C., Appeal to   1216, 1216.01 

Canadian patent agent     402 

Canceled matter, Before papers executed       608.01 

Canceled matter, cannot be recaptured in 
 reissue                1412.02 

Canceled matter, Restoring  608.01(s), 714.24 

Canceled matter in patented file        901.01 

Canceling claim after issue   714.16, 1302.04(b) 

Canceling claim withdrawn after appeal      1214.05 

Canceling drawing 608.02(t) 

Cancellation of drawing figures       608.02(t) 

Candor, Duty of       2000, 2001 

Carbon copy, Application papers       608.01, 1302.10 

Carbon copy of amendment        714.07 

Card catalog in library       901.06(a) 

Caricatures, Offensive      608, 1504 

Case action record worksheets     1705 

Cashier's window        502 

CASSIS          902.03(d) 

Catalog and circulars     901.06(a) 

CCMSS       717.05 

Certificate, Reexamination  2288 

Certificate format in reexamination   2290 

Certificate of correction 1480 

Applicant's mistake   1481 

Assignee's name       307 

Copy required in reexamination      2214 

Foreign priority        201.16 

Form            1485 

Handling        1485 

Reissue             1411.01, 1480, 1481, 1485 

Report by Examiner  1485 

Certificate of Mailing or Transmission 
(Rule 1.8)      512, 513,711.03(c) 

Certificate of Mailing by Express Mail      513 

Certificate of Mailing in reexamination       2224 

Certificate of service      2220 

Certified copies of assignment documents        303 

Certified copy of foreign application     201.14 

Certiorari      1202 

Change from small entity status       509.03 

Change of Correspondence 
Address             601.03, 711.03(c) 

Changing joint to sole      201.03 

In interference       2334 

Reissue             1402 

Charge for pending applications 
(PALM)          101, 905.05 

Check, accompanying hand-delivered paper        502 

Chemical abstracts  708.02 

Chemical compound 608.01(p) 

Chemical practice: 

Generic chemical formula        2131.02 

Markush       2173.05(h), 2173.05(o) 

Nonchemical   2173.05(i) 

Undue breadth     2163.05, 2173.04, 2173.05(h) 

Circulars, Purpose  Introduction 

Citation: 

A.P.C. publication  901.06(c) 

Abbreviatures     711.06, 711.06(a) 

Abstract        711.06, 711.06(a) 

Allowance, Listing at     1302.12 

Applicant's   707.05(b), 707.05(d), 1302.12 

Complete data     707.05(e) 

Correction  707.05(g) 

Correction, Period for response       710.06 

Cross references        707.05(e) 

Data used 706.02(a), 707.05(e) 

Decisions, Orders, Notices, Memorandums       707.06 

Defensive publications      711.06, 711.06(a) 

Examiner's answer 1208 

Foreign patent data   707.05(e), 901.05(a) 

Foreign printed applications    901.05(b) 

Form 892        707.05 

Incorrect 707.05(g), 710.06, 1302.04 

Literature, In specification    608.01(p) 

Mailing copy to patent owner    2202, 2206, 2208 

Memorandum  707.06 

Notices             707.06 

Order of listing        707.05(c) 

Orders          707.06 

Patents, U.S.     901.04 

Periodical  707.05(e), 901.06 

Prior Art 1302.12 

Handling                2206 

Time for filing       2204 

Prior Art by applicant      707.05(b) 

Citation--Continued 

Prior art in patent   1920 

Publications    707.05(e) 

References  707.05 

Allowance in first action 1302.12 

By applicant    707.05(b), 1302.12 

Reexamination: 

Citation of prior art     2202 

Confidential    2202, 2203 

Handling                2206 

Sample letter     2205 

Service             2208 

Time for handling 2204 

U.S. patent data        901.04, 1302.04 

Citizenship of applicant        605.01 

Civil action under 35 U.S.C. 145        1214.01, 1215.05, 

1216.02 

Civil action under 35 U.S.C. 146        1216, 2357, 2358, 

2360, 2361 

Claim       608.01(i), 608.01(k) 

Added by amendment  608.01(o) 

Results in change of inventorship 201.03 

Added in excess of filing fee     714.10 

After prosecution closed        714.16, 714.19 

After prosecution closed, 

 Near end of time period        714.20 

Aggregative   2173.05(k) 

All allowed   710.02(b) 

All canceled    711.01 

Allowable except as to form    706, 707.07(a), 

707.07(j) 

Allowed, Rejection of     706.04, 706.05 

Allowed, Withdrawn appeal 1215.02 

Alternative phrase  2173.01, 2173.05(h) 

Analysis        904.01 

Antecedent Basis        2173.05(e) 

Basis in description    608.01(o), 2171 

Basis in disclosure   608, 2163.03 

Breadth       2163.05, 2164.08, 2173.04 

Cancelation by Examiner after appeal    1214.05 

Cancelation results in change of inventorship     201.03 

Change After Board recommendation 1213.01 

Combination, old        2173.05(j) 

Combination and 
subcombination      806.04(c), 806.05(a) 

Comprising  2111.03, 2173.05(h) 

Claim--Continued 

Considered in deciding reexamination 
request       2243 

Consisting essentially of 2111.03 

Consisting of     2111.03, 2173.05(h) 

Construed in light of specification   608.01(o) 

Copied from Patent. (See Claim presented 

corresponding to claim of patent.) 

Correspondence with disclosure      2173.03 

Dependent 608.01(n) 

Dependent, Objected to when improper    706.01 

Dependent on canceled or 
rejected claim      706.01, 707.07(j) 

Design application  1503.01 

Differing only by functional statement      2173.05 

Diminishing scope 2173.05(h) 

Disclaimer  706.03(u), 710.02(d) 

Double inclusion        2173.05(o) 

Duplicate 706.03(k), 2173.05(o) 

Each mentioned in letter        707.07(i) 

Equivalence   2183 

Excess over fee added by 
preliminary amendment     714.10 

Excess over fee after notice of allowance 714.16(c) 

Fees, dependent       608.01(n) 

File wrapper notation     1302.09 

Filing fee insufficient       506 

For priority (see Foreign application)      201.13, 201.14 

Form            608.01(m) 

Function of machine   2173.05(v) 

Functional  2114, 2173.05(g) 

Generic (see also Generic Claim)        806.04(d), 

2173.05(h) 

Illustrated by drawing      608.02(d), 2173.05(s) 

Improvement (i.e., Jepson claim)        2129 

Inaccurate  2173.03 

Incomplete  707.07(j), 2173.05(l) 

Indefinite  706.03(d), 2173.06 

Independent   608.01(n) 

Index       717.04 

Indirect limitation   706.03(d), 2173.05(f) 

Informal        702.01 

Interference, Construed       2301.01 

International application 1824 

Interpretation      2111, 2111.01, 2111.02, 2111.03 

Jepson          2129 

Linking             809, 809.02, 809.03, 809.04 

Claim--Continued 

Linking, Generic        809.02 

Linking, Traverse of rejection      818.03(d) 

"Markush" 2173.05(h), 2173.05(o) 

"Markush," Generic  803.02 

"Markush," Support  608.01(p) 

Means (see also Means)      2181 

Multiple dependent  608.01(n) 

Multiplicity    2173.05(h), 2173.05(n) 

Negative limitation   2173.05(i) 

New matter  608.04, 706.03(o), 2163.06 

Nonelected invention    706.03(m), 809.02(c), 

809.04, 821.01, 821.02 

Nonelected invention, Added   821.03 

Nonstatutory    706.03(a), 706.03(a)(1), 

2105 to 2107 

Nonstatutory, Cancellation  1302.4(b) 

Numbering 608.01(j) 

Objection contrasted with rejection   706.01 

"O.G."          1302.09 

Omnibus claim     2173.05(r) 

Original        608.01(l) 

Patentably distinct   706.03(k) 

Plant application 1605, 1610 

Plural          706.03(k) 

Priority (see Foreign application)  201.13, 

 201.14(b) 

Product, Functional   2114 

Product by process  2113, 2173.05(p) 

Prolix          2173.05(m) 

Reference numerals included   608.01(m), 2173.05(s) 

Reissue application: 

Numbering 1411 

Original claim subject to reexamination       1440 

Printed             1455 

Same invention as original patent 1412.01 

Rejection 706, 2121 to 2186 

Relative terminology    2173.05(b) 

Renumbering at issue    608.01(j), 1302.01 

Renumbering dependent     608.01(n), 1302.01 

Single means    2164.08(a), 2181 

Single sentence       608.01(m) 

Species, How recognized       806.04(e), 806.04(f) 

Species        (Plural) added     809.02(d), 818.02(b) 

Statutory requirement     608.01(k) 

Subgenus ("Markush" type) 2173.05(h) 

Suggested for interference  2305 to 2305.04 

Claim--Continued 

Failure to make       706.03(u) 

Time limit  710.02(c) 

Summary of invention, consistent        608.01(d) 

Terminology basis in description        608.01(o), 

2173.01, 2173.05(a) 

Unsupported   2163.01, 2173.03 

"Use" claims    2173.05(q) 

Vague       706.03, 2171 to 2173 

Varying scope     608.01(m) 

With motion granted in part   714.20 

Withdrawal of appealed claim    1214.05, 1215.03 

Claim presented corresponding to 
claim of patent             710.04(a), 2306 to 2308.03 

After allowance       2307.03 

Appeal of rejection   1205, 1210 

Commissioner's approval if outside time limit     1003 

Disclaimer rejection    706.03(u) 

Interference pending    2364.01 

Late amendment      714.19 

Not a response to Office action       711.02(b), 

2307.01 

Origin must be stated     2307.05 

Patent filing date later than that of 
application   2308.03 

Patent in different Group 2306 

Period for response   710.02(c), 710.04(a) 

Prosecution closed  714.19, 2307.03 

Rejection 2307.02 

Rejection Failure to respond to       706.03(u) 

Rejection, Primary's attention      1004 

Special             708.01 

Time limit for response       710.02(c) 

Claiming same invention       706.02(f), 706.02(k), 

706.02(l), 715 

Class, Scope            903.02(b), 1302.14 

Class, Transfer             903.05 

Class definitions 902.02 

Classification: 

Application (See Classification of application.) 

Basis       903.02 

Bulletin        902.04 

Definitions   902.02, 902.02(a) 

Examiner (See Classification examiner.) 

Foreign patents       903.03 

Index to U.S. Patent Classification   902.01(a) 

Classification, International     903.09 

Classification--Continued 

Indices             902.03 

Information   902.03(a) 

International     903.09 

Mandatory 903.07 

Manual          902.01 

MCF         902.03(a) 

Nonpatent literature    901.06 

Numerical index       902.03(c) 

Orders          902.04 

Patent, Change of 903.05 

Patent Index    902.03(b) 

Principles  903.02 

Revision        903.02(a), 903.02(b) 

Rules governing applications    903.08(e) 

Slip            903.07, 1302.10 

Statutory authority   903.01 

Subclass lists      902.03(c) 

Classification examiner: 

Decision on classification  903.08(d) to 903.08(f) 

Patentability report    705.01(a) 

Classification of application: 

Allowed application   903.07 to 903.07(b), 

 1004, 1302.10 

Amendment affecting   903.08(c) 

Borderline  903.08(a) 

By applicant    601 

Cross-referencing 903.07(a) 

Decision of classification Examiner   903.08(f) 

Disputed        903.08(a), 903.08(d), 

903.08(f), 903.08(g) 

File wrapper data 717.03 

Improperly classified     903.08(a) 

In another Group at allowance     903.07(b), 

903.08(a) 

New application, By Application Division        903.08, 

903.08(e) 

New application, By Primary   903.08(b) 

Post classifier       903.10 

Preliminary   601 

Rules governing       903.08(e) 

Transfer to another Group 803.08(a), 803.08(g), 

903.08(d) 

Classifier, Post                903.10 

Clean copy      608.01(q), 1302.02 

Clearance for new law interpretation    1208 

Clerk, Duties. (See the Manual of Clerical Procedure.) 

Clerk of the Board of Appeals, 
Petitions decided 1002.02(n) 

Close of prosecution    130 

Closed prosecution except for formal 
matters             710.02(b), 714.14 

Prosecution not closed      707.07(j) 

Closing of Patent and Trademark Office      201.13 

Code of Federal Regulations   Introduction 

Title 13 CFR 121.12   509.02 

Title 15 CFR 4.8        103 

Title 37. (See Rules of Practice.)  Appendix R 

Title 41 CFR subpart 101-20.3 cited   510 

Coinventor, Power of attorney     402.01 

Collateral estoppel   2012.01 

Collateral estoppel in reexamination    2259 

Combination, Old (Restriction)      806.05(b), 820.01 

Combination and aggregation   2173.05(j), 2173.05(k) 

Combination and subcombination      806.04(c), 

806.05(a) to 806.05(c), 903.02(b) 

Comments on tests or examples     707.07(l), 1302.14 

Commercial activity as on sale 
(see also On Sale)  706.02(c), 2133.03 to 2133.03(e) 

Commercial exploitation as on sale 
(See also On Sale)  706.02(c), 2133.03(e)(1) 

Commercial success of invention, affidavit alleging 
(see also Affidavits, traversing rejections)    716.03 

Commissioner, action requiring attention of: 

Failure to identify claim as copied 
from a patent     2307.05 

Petition for access   103 

Reissue application of patent in 
interference    1449 

Commissioner initiates reexamination    2239 

Commissioner's: 

Approval of power to inspect    104 

Authority and functions       706.03(b), 708.01, 709, 

711.02, 714, 717.01, 1001, 1002 

Decisions Introduction 

Notices, Purpose        Introduction, 707.06 

Orders, Purpose       Introduction, 707.06 

Committee on Enrollment, Petition to    1002.02(m) 

Common applicants 715.01(a), 706.02(f), 706.02(k), 

 706.02(l), 709.01, 2137 

Common disclosure, Parent and continuing 
applications            120, 201.11 

Common ownership        706.02(k), 706.02(l), 2137 

Conflicting applications        303, 706.02(f), 

706.03(k), 709.01, 822, 2302 

Common Representative for international 
application         1807 

Communication with disbarred attorney     105 

Communications, official mailing address for      501 

Companion case, Retention label       1302.07 

Comparative tests (see also Unexpected 
Results)                716.02(b) 

Comparison of new drawings  608.02(b) 

Complete application    201.03, 506, 

601.01-601.01(g) 

"Complete" specification, British 201.15 

"Comprising" as transitional phrase   2111.03 

"Comprising" in Markush claim     2173.05(h) 

Computer Programs 608.05, 706.03(a), 2106, 

2106.01, 2106.02 

Concealment         608.01(h), 2138.03 

Conception      715.07, 2138, 2138.04 

Concordance, International and United States 
classification          903.09 

Concurrent Office proceedings     2282 

Conditional petition to revive      711.03(c) 

Conduct of reexamination proceedings    2254 

Confidential citation of prior art  2202, 2203 

Confidential material     121, 724 to 724.05 

Confidential material submission        121, 724.02 

Confidential party of interest      2202, 2203 

Confidential status of application  101, 706.02(f) 

Same applicant      706.02, 706.02(c), 706.03(k), 

709.01, 804, 822, 822.01 

Conflicting applications, Same assignee       303, 

706.02(f), 706.02(k), 709.01, 

715.01(b), 804.03, 822, 2302 

Conflicting applications, Same attorney       2309.02, 

2305 

Congress, Inquiry on status of application 
by member of            203.08(a) 

Conservator, Authority recorded       409.02 

Conservator, Insane inventor    409.02 

"Consisting essentially of" as transitional 
 phrase             2111.03 

"Consisting of" as transitional phrase      2111.03 

"Consisting of" in Markush claim        2173.05(h) 

Constitutional basis for patents        Introduction 

Constructive election     818.02(a), 818.02(c) 

Constructive notice to patent owner   2230 

Constructive reduction to practice  715.07 

Consular certificate    604.04 

Consular certificate, Executor or 
administrator, Foreign      409.01(b), 409.01(d) 

Consular certificate, Omission      604.04(a) 

Consular officer                604.04 

Content of reexamination request        2214 

Continuation            201.07 

Assignment carried from parent      201.12, 306 

Copendency  201.11 

Definition  201.07 

Effective date      201.11 

File wrapper continuing (FWC)     201.06(b) 

File wrapper notation     202.02 

Final rejection on first action       706.07(b) 

Identification on letter of transmittal       506 

Inspection of parent    103 

International application 1817.02 

International application as parent   201.11(a), 1895 

Inventor, at least one in common        201.11 

New matter  201.07, 608.04(b) 

Oath, Delayed filing    602.05(a) 

Ownership 201.12 

Parent case data in specification 202.01 

Parent case data noted on file 

wrapper             202.02, 1302.04 

Reference to parent case        201.11 

Rule 60 application   201.06(a) 

Rule 62 application   201.06(b) 

Secrecy order in parent case    120 

Sole from joint       201.07 

Streamlined   201.07 

Time for filing       201.11 

Title       201.12 

When patented, Opens parent application 
to public inspection    103 

Continuation-in-part    201.08 

Assignment check        306 

Copendency  201.11 

Definition  201.08 

Effective date      201.11, 706.02, 2133.01 

File wrapper continuing (FWC)     201.06(b) 

File Wrapper Notation     202.02 

Identification on letter of transmittal       506 

Inspection of parent    103 

International application 1817.02 

Continuation-in-part--Continued 

International application as parent   201.11(a) 

Inventor, at least one in common        201.11 

Ownership 306 

Reference to parent case        201.11 

Rejection over published priority 
document        2133.01 

Rule 62             201.06(b) 

Sole from joint       201.08 

Time for filing       201.11 

Title       201.12 

When patented, Opens parent application 
to public inspection    103 

Continuing application      120, 201.11, 

 1302.12, 1302.04 

Continuing data (see cross-noting)  202.02 

Continuity between applications       201.11 

Control of inspection by assignee 106 

Convention, International 201.13 

Converting inventorship joint to sole     201.03, 201.06, 

201.07, 201.08 

Converting inventorship sole to joint     201.03 

Converting nonprovisional application to 
provisional         201.04(b), 601.01(c) 

Copendency      201.11 

Copending application, Reference brought 
up to date      1302.04(f) 

Copending U.S. application, 
Duty of disclosure in     2001.06(b) 

Common ownership        706.02(l) 

Different inventive entities    706.02(f), 706.02(k) 

Copied patent claim. (See Claim copied from patent.) 

"Copier" copies             714.07 

Copies of prior art in reexamination request    2218 

Copy of foreign application, Certified      201.14 

Copy of printed patent in reexamination       2219 

Copy Orders         905.01 

Copyrights      608.01(v) 

Correction of drawing     608.02(p) 

Approval by Examiner    608.02(x), 1302.05 

"Corrected" stamp 608.02(o) 

Deferrable  608.02(b), 608.02(p) 

New matter  608.04 

Not approved    608.02(x) 

Order for 608.02(x) 

Required by draftsman     707.07(c) 

Separate letter       608.02(r) 

Correction of drawing--Continued 

Sketch          608.02(v) 

Correction of inventorship  201.03 

in patent 1481 

Correction of name  605.04(b), 605.04(c) 

Correction of patent    Chapter 1400 

Certificate of correction 1480 

Reissue (see reissue application.)  1401 

Statutory disclaimer    1490 

Correction of printer's proof     1309.01 

Correction of reference citation        707.05(g), 710.06 

Correspondence: 

Address of PTO      501, 502 

Address in secrecy order cases      120 

Address, official mailing 501 

Address, When power is to a firm        403 

Associate attorney  403.01 

Boxes       501 

Crossing        714.05 

Double          403, 714.01(a) 

Facsimile transmission      502.01 

In reexamination        2224 

Maintenance fee       2542 

Plural attorneys        403.02 

Receipt and handling     Chapter 500 

Signature requirements      502, 502.02 

With whom held      403 

Correspondence and Mail 
Division                203.08, 501, 503, 508.02, 

1416, 1706, 2206 

Counting actions        1705 

Countries for foreign priority      201.13 

Country codes       1851 

Coupons             509 

Court decision, certificate of      1216.01 

Court decision, Citation        707.06 

Court decision, Dissemination of        1720 

Court decision, Treatment of    1721 

Court decision entry in patent file   2207 

Court of Appeals for the Federal Circuit        711.02(b) 

Court papers, Service on Commissioner     1216 

Cover sheet - provisional application     201.04(b) 

Criteria for deciding reexamination request   2242 

Cross-noting: 

Data of parent application on file 

wrapper                 202.02, 1302.09 

Data of provisional application in 

Cross-noting--Continued 

specification     1302.04 

Data of provisional application on file 

wrapper             202.02 

Data of related application brought up 

to date             1302.04(f) 

Data of related application in 
specification     201.11, 202.01, 1302.04 

Foreign application, Application oath     202.04 

Foreign application, File wrapper 202.03 

In original patent file of reissue 

application   202.05 

Cross-reference: 

Addition of patent  905.02 

Another application 

(see cross-noting)  202.01, 608.01(p), 1302.04 

Art Collection      903.02(c) 

At allowance    903.07, 1302.04 

Citing          707.05(e) 

Establishing new        903.06(a) 

Noted during examination        903.07(a) 

Ordering        903.06 

Required for all claimed disclosure   903.07(a) 

Crossed mailings        714.05 

Customer Services Division  104, 508, 608.02(c), 

608.02(h), 707.05(a), 

 717.05(a), 717.01(b), 

905.02, 905.03, 2232 


D 


D-10 Notice         130, 1304, 1304.01 

Damage, Proof Irreparable 409.03(g) 

Data Bases for search     901.06(a) 

Date: 

Amendment 502, 505, 511, 512, 

710.01(a), 710.05, 714.18 

Citation of foreign patent  901.05(a), 901.05(b) 

Convention  201.13, 201.14 

Filing          201.11, 502, 503, 505, 

506.02, 1002.02 (h) 

Filing, refusal to accord 506.02, 605, 2133 

Foreign Application 

(priority)      201.13, 201,14, 201.15 

Group stamp   714.18 

Invention 2137, 2138 

Maintenance fees due    2506 

Office action     707.11 

Date--Continued 

Office stamp    502, 505, 506, 714.18 

Reference 706.02, 707.05(e), 707.05(f), 

715, 715.01, 715.01(c) 

Date entered on drawing       608.02(o) 

Date of execution of oath 602.05 

Date stamp, Examining Group   714.18, 1303 

Death of attorney 406 

Death of inventor (see also Administrator 
or executor)            409 to 409.01(f) 

Deceased inventor, 
Allowance not withdrawn       1303.03 

Deceased inventor, Legal representative 
refuses to sign             409.03(c) 

Deceptive intention in reissue      1414.04, 2012 

Decision: 

By Board of Patent Appeals and 

Interference    1213, 1302.14 

Dissemination of        1720 

Treatment of    1721 

By Classification Examiner  903.08(f) 

By Primary on interference motion 1004 

Citation        707.06 

Governs Examiner's action Introduction 

Listed          Appendix II 

On interference motion      2340 

Ordering reexamination      2246 

Public availability   103 

Publication of      707.06 

Reconsideration of Board        1214.03 

Reexamination request     2240 

Submission in reexamination   2282 

Decision by Certificate of Correction 
Branch          1485, 1490 

Declaration         602 

Amendment 602.01 

"Attached"  605.04(a) 

Change of inventorship      201.03 

Copies from prior application     201.06(a), 

605.04(a) 

Date of execution 602.05 

Defective 602.03 

Delayed Filing      506 

Facsimile 502.01, 502.02, 605.04(a) 

Foreign priority applications 
listed      201.14, 201.14(c), 202.04 

International application 1893.01(a)(1), 

Declaration--Continued 

1893(b)(1), 1893(e) 

Inventor refuses to sign or cannot be found   603 

Non-English   602.06 

Reissue application   706.03(x), 1414, 1414.03, 

1444, 

Rule 60 application   201.06(a) 

Substitute  602.02 

Declassified matter   707.05(f) 

Dedication      715, 1490 

Defective oath          602.03 

Defects, correction of in request 2231 

Defense, Applications affecting       115, 120, 130, 140 

Defensive publication citation      711.06(a), 1304, 

1304.01 

Defensive publication program     202.02, 711.06 

Deferral of Duty of Disclosure Issue    1448 

Deferral of Fraud Issue       1448 

Definition of class   902.02 

Delayed filing of original oath       602.05 

Delegation of Commissioner's 
authority   1001.01,1002,1002.02 

Delgar          711.03(c) 

Demonstration at interview  713.08 

Denial of request for reexamination   2247 

Department of Energy    115, 150, 157, 706.03(b) 

Department of Commerce, Organization Orders: 

30-3A cited   510 

30-3B cited   510 

Dependent claim       608.01(n) 

Reissue             1455 

Rejected when base claim 
is canceled   608.01(n), 707.07(j) 

Dependent claim, objected to when 
improper                706.01 

Deposit accounts        509.01 

Deposit of microorganisms 608.01(p),1605, 2402 

Deposit of correspondence 502 

Deposition, Examiner    1701.01 

Deposit Rules       2400, 2401, 2402 

Acceptable depository     2405 

Background information      2401 

Biological material, definition       2403 

Biological material, made or isolated without 

undue experimentation     2404.02 

Budapest Treaty       2402 

Budapest Treaty depositories    2405 

Deposit Rules--Continued 

Depositories, current list of Budapest Treaty     2405 

Effective Date      2401, 2402 

Examination procedures      2411 

After grant   2411.04 

Application in condition for allowance 

except for deposit  2411.03 

Certificate of correction 2411.04 

Content of application regarding 

deposited material  2411.05 

Need for 37 CFR 1.312 amendment       2411.03 

Reissue             2411.04 

Rejections based on deposit issue 2411.01 

Responses from applicant        2411.02 

Furnishing of samples     2410 

Access to deposits  2410.01 

Certification of accessibility of deposit 2410.02 

Conditions of deposit     2410.01 

Exception to removal of restrictions    2410.01 

Restrictions removed upon grant       2410.01 

Known and readily available biological 

material                2404.01 

Budapest Treaty deposit       2404.01 

Continuity of access    2404.01 

Deposits certified as available       2404.01 

Health, safety restrictions   2404.01 

Indicia of "known and readily available"        2404.01 

Lundak application  2404.03, 2406.01 

Material capable of self-replication    2403.01 

Direct self-replication       2403.01 

Indirect self-replication 2403.01 

Need for a deposit  2402, 2404 

Plant material      2403.02 

Plant Patent Act, relation to     2403.02 

Prior practice      2402, 608.01(p)(C) 

Reference to deposit in application   2404, 2404.03 

Implication, presumption        2404, 2404.03 

Requirements of 35 U.S.C 112    2164.06, 2404, 

 2404.03 

Replacement or supplement of deposit    2407 

After a patent has issued 2407.02 

Exemption from replacement  2407.05 

Failure to replace  2407.03 

In a pending application/reexamination 

proceeding      2407.01 

Reason for replacement      2407.04 

Replacement not recognized  2407.06 

Deposit Rules--Continued 

Treatment of replacement, presumption 
of identity   2407.04 

Seeds       2403.02 

Term of deposit       2408 

Budapest Treaty term    2408 

Enforceable life of patent  2408 

Time for making original deposit        2406 

Assurance redeposit before payment 

of issue fee            2406, 2411.03 

Corroboration     2406.02 

Description in application specification        2406.01 

During application pendency   2406 

Loss of U.S. filing date in other countries   2406.03 

New matter  2406.01 

Patent Cooperation Treaty applications      2406 

Post-issuance deposits      2406 

Viability of deposit    2409 

Viability statement   2409 

35 U.S.C. 112 requirements  2402, 2403, 2404 

Deputy Commissioner of Patents 
and Trademarks          1001, 1002.02(o), 1203 

Derogatory remark regarding prior art     608.01(r) 

Description, Basis for claim    608.01(o), 706.03(c), 

2161, 2163 

Description, Computer Programming 2106.01 

Description, Detailed     608.01(g) 

Description-International Application     1823 

Design          201, Chapter 1500 

Allowance 1505 

Analogous Art     1504.02, 1504.03 

Appearance of object    1502 

Application   1503 

Characteristic feature      1503.01 

Claim       1503,1503.01 

Computer Generated Icons        1504.01 

Convention date       201.13, 1503.03 

Copending applications      1504.06, 1504.20 

Copyright, relationship       1520 

Definition  1502 

Delay of issuance 1505 

Description   1503, 1503.01 

Disclaimer  1503.01 

Disclosure  1503.02, 1504.04 

Dominant feature        1503.01 

Double patenting        1504.06 

Drawing         1503, 1503.02, 1503.03 

Design--Continued 

Examination   1504, 1504.01, 1504.02 

1504.03, 1504.04 

Feature emphasized  1503.01 

Fee         1306, 1505 

Foreign priority        201.13, 1504.02, 1504.10 

Indicia             1503.02, 1504.01 

Indefiniteness      1504.04 

Invention 1501, 1504.01 

Library             901.06(a) 

Modification, description 1503.01 

New matter  1503, 1503.02, 1504.04 

Novelty             1504.02 

Object, Design for  1502 

Patent Cooperation Treaty 1501 

Patentability     1504.01, 1504.02, 1504.03, 1504.04 

Photograph  1503.02, 1503.03 

Preamble        1503, 1503.01 

Priority under 35 U.S.C. 119    1504.10 

Priority under 35 U.S.C. 120    1504.20 

References supplied   707.05(a),1513 

Registration abroad   1504.02, 1504.10 

Requirement for Information   1504.04 

Requirement for restriction   1504.05 

Reproducible, Article (35 U.S.C. 171)     1502, 1504.01 

Restriction   1504.05 

Rules applicable        1501 

Sample          1503.01, 1503.03 

Search          1504.02, 1504.03 

Simulation  1504 

Specification     1503.01 

Statutory bar, Foreign application   201.13, 

1504.02, 1504.10 

Subject matter      1502, 1504 

Term of             1505 

Title       1503.01 

Trademark, relationship       1520 

Type fonts  1504.01 

Unobviousness     1504.03 

Visual characteristics      1502 

Design patent series    901.04 

Designated Office 601.04, 1801, 1893.01(a) 

Designation fee - PCT     1817.01, 1827 

Designation of States     1817.01 

Determination of public use or on sale      706.02(c), 

2133.03 

Differences between: 

Chemical and other practice (see Chemical practice) 

Objection and rejection       706.01, 710.02(d) 

Shortened statutory period and time 

limit       710.02(d) 

Digest          903.02(c) 

Diligence 

Charts for Priority   2138.01 

In correcting inventorship  201.03 

In application      2138.06 

In filing reissue 1403 

In interference practice        2138.01 

Of status inquiry 203.08 

Reasonable  2138.06 

Shown in 37 CFR 1.131 oath  715.07, 715.07(a) 

To overcome a rejection       2136.05 

Director's functions    1003 

Group 2200  710 

Disbarred attorney  105, 407, 714.01(a), 714.19 

Disclaimer: 

Co-author of publication        715.01(c) 

Copy required in reexamination      2214 

Defensive Publication     711.06 

Forms       1490 

Interference    2305, 2305.04, 2307.02, 2337, 2362 

Rejection 706.02(k), 710.02(d), 

Statutory 1490, 2362 

Terminal        706.02(k), 804.02, 1490 

Disclosure (see also Specification)   608 

Abstract        608.01(b) 

Aids            2004 

Amendment 608.04, 1302.02 

Amendment, Preliminary      608.04(b) 

Best Mode (see also Best Mode)      608.01(h), 

2165 

By whom and how made    2004 

By whom made    2002.01 

Chemical compound 608.01(p) 

Claimed       901.03 

Common, Parent and continuing 

application   201.11 

Completeness    608.01(p), 2164 

Computer Programming cases  2106.02 

Correspondence with claims  2163.05, 2173.03 

Detailed description    608.01(g) 

Document        1706 

Duty of         2000, 2001 

Disclosure--Continued 

Reexamination     2280 

Enablement (see also Enablement)        2164 

Foreign application   201.15 

Implicit                2144.01 

Incomplete  608.01(p), 706.03(c), 2161 to 2165 

Incomprehensible        702.01 

Incorporation by reference  608.01(p) 

Insufficient    608.01(p), 702.01, 706.03(c) 

Later filed application       608.01(p) 

Litigation information      2001.06(c) 

Materiality   2001.05 

Operability   716.07, 2164.08(b) 

Original claim      608.01(1), 2163.06 

Preliminary amendment     608.04(b) 

Related applications    608.01(p), 1302.04 

Requirements for        2161 

Reservation clause  608.01(e) 

Restricted to claimed subject matter    1302.01 

Secrecy order, material subject to  120 

Sources of information      2001.06 

Specification (See also Specification)      608.01 

Sufficiency for continuity  201.11 

Sufficiency of, Affidavit 716 

Support for claims  2163.01 

To whom owed    2001.03 

Trade name  608.01(v) 

Trademark 608.01(v) 

Utility             608.01(p), 706.03(a) 

When made 2003 

Written        (see also Written 

Description)    2002.02, 2163 

Disclosure Document Program   1706 

Evidence under 37 CFR 1.131   715.07 

Discourtesy         714.19, 714.25, 1003 

Dismissal of Appeal   1215.04 

Disposals counted 1705 

"Distinct," Definition      802.01 

"Distinct" inventions     802, 802.01, 803, 806.05 

Apparatus and product made  806.05(g) 

Process and apparatus for its practice      806.05(e) 

Process and product made        806.05(f) 

Distribution of mail    501 

Distribution of papers      508 

Division (see Restriction; Election; Election 
of species; Divisional Application)   Chapter 800 

Divisional Application      201.06 

Applicant, one common     201.06 

Assignment carried from parent      201.12 

Assignment check        306 

Copendency  201.11 

Delayed filing of oath      602.05(a) 

Design application  201.06 

Drawing, Transfer to    608.02(i) 

Effective date      201.11 

File wrapper continuation (FWC)       201.06(b) 

File wrapper notation     202.02, 1302.04 

Inspection of parent application        103 

Inventor, at least one in common        201.11 

New matter  201.06 

Oath            201.06(a), 602.05(a) 

Ownership carried from parent     201.12 

Parent case data notation in specification  202.02 

Patented, Opens parent to inspection    103 

Reference to parent application       201.11, 1302.04 

Reissue             1451 

Rule 60 application   201.06(a), 1302.04 

Rule 62 application   201.06(b) 

Signature omitted 201.06(a) 

Sole from joint       201.06 

Time for filing       201.11 

DNA, Recombinant, related Special status        708.02 

Docket clerk            707.05(a) 

Docket Record card  2233, 2237 

Docket report       1704 

Doctrine of Equivalents       2186 

Document: 

Disclosure  1706 

Legal proceedings 1701.01 

Domestic Representative       302.04 

Double correspondence     403, 714.01(a) 

Double inclusion in claim 2173.05(o) 

Double patenting: 

Avoiding rejection  706.02(k), 804.02 

Basis       804 

Claimed subject matter      806.01 

Copending applications      706.02(k), 804 

Definition  804 

Design applications/patents   804 

Different inventive entities    706.02(k), 804.03 

Distinct and independent inventions   804.01 

Domination  804 

International applications  804 

Double patenting--Continued 

Plant cases   1601 

Reexamination     804, 2217, 2258 

Rejection 804 

Nonstatutory    804 

Nonobvious  804 

Obvious             804 

Prohibition, 35 U.S.C. 121  804.01 

Provisional   706.02(k), 804 

Specification, use of     804 

Statutory   804 

Rejection nullification       804.01 

Same assignee     706.02(k), 706.02(k), 

804.03, 822 

Same inventor     806.04(h) to 

806.04(j), 806.05, 822, 822.01 

Species and genus 806.04(h) to 806.04(j) 

Submissions to Group Director     804.04 

Terminal disclaimer effect  706.02(k), 

804.02, 1490 

Drafting Division 507, 608.02, 

608.02(h), 608.02(t), 707.07(a) 

Draftsman's notation    507, 608.02(a), 707.07(a), 

707.07(c) 

Draftsman's stamp 507, 608.02(b), 608.02(o) 

1302.10 

Drawing             507, 608.02 

Additional  608.02(h) 

Allowance, Notation on      608.02(z), 903.07, 

1302.09, 1302.10 

Amendment 608.02(p) 

Amendment, Direction for        608.02(q) 

Amendment, Disposition      608.02(x) 

Amendment support by original claim   608.04(a) 

Approval stamp      608.02, 608.02(h), 

1302.10 

Brief description 608.01(f) 

Canceled figure       608.02(t) 

Canceled sheet      608.02(t) 

Canceled sheet, Patent      608.02(i) 

Canceled sheet, transfer        608.02(i) 

Color       608.02 

Colored plant     1606 

Comparison  608.02(a) 

Complete illustration     608.02(d) 

Completeness    608.02(e) 

Computer lists      608.05 

Drawing--Continued 

Content of  608.02(d) 

Correction (see also Correction of 
Drawing)        608.02(p), 1302.05 

Corresponds with description    608.02(f) 

Date entered on back    608.02(o) 

Delivered to wrong group        508.01 

Denied admission        608.02(h) 

Design application  1503.01, 1503.02 

Disclosure  608 

Divisional application      608.02(j) 

Draftsman's criticism included in 

first Office action   707.07(a), 707.07(c) 

Draftsman's notation    507, 608.02(a) 

Draftsman's stamp 608.02(b), 608.02(o), 

1302.10 

Duplicate 608.02(h) 

Examiner determines completeness        608.02(e) 

Illustrates claim 608.02(e) 

Inartistic arrangement      608.02(t) 

Informal        507, 608.02(b) 

Informality, Determined by draftsman    608.02(a) 

International application 1825 

Kept in application   608.02(c) 

Kept in Examining Group       1302.05(a) 

Mail Section stamp  608.02(o) 

Modification illustrated        608.02(f) 

Necessary for filing date 506, 608.02 

New drawings required     608.02(a) 

New, Handling     608.02(a) 

New matter  608.04, 706.03(o) 

New, When required  608.02(a) 

Not received    608.02(h), 1825 

Not required    608.02 

Not returned    608.02(y) 

Objection 507 

O.G. figure   1302.10 

Omitted drawings        601.01(g) 

Patented case     905.03 

Photographs   608.02 

Photoprint  608.02 

Plant application 1606 

Print (see Print of drawing)    506, 508, 608.02(m) 

Prior art 608.02(g), 2125 

Provisional application       608.02 

Reference characters    608.02(e) 

Reference characters, Change    608.02(w) 

Drawing--Continued 

Reissue application   1413 

Removal from Group  608.02(c) 

Required by Examiner    608.02 

Return          608.02(y) 

Section lines     608.02(f) 

Security markings 121 

Sketch for correction     608.02(v), 608.02(w) 

Substitute  608.02(h) 

Sufficiency, Determined by Examiner   608.02(e) 

Symbols       608.02 

Transfer in Rule 60   201.06(a), 506, 608.02(i) 

Transfer to reissue   1413 

Use in reissue      1413 

Yellow tag  608.02(z) 

Drawing correction  608.02(p) 

Approval by Examiner    608.02(x), 608.02(q), 

 1302.05 

Deferrable  608.02(b) 

New matter  608.04 

Order for 608.02(x) 

Required        707.07(a), 707.07(c) 

Separate letter       608.02(r) 

Sketch          608.02(v) 

Drawings: 

Allowance, Notation on      903.07, 1302.10 

Drug disclosure guidelines  608.01(p) 

Dual correspondence   403, 714.01(d) 

DUPACS          903.02 

Duplicate amendments    717.01(a) 

Duplicate claims        706.03(k) 

Duplicate foreign patents 903.03 

Duplicate papers, 
Plant application 1603, 1605, 1606, 1609, 1610 

Duty of disclosure: 

After patent grant  2003.01 

Aids            2004 

Candor and good faith     2001 

Checklist 2004 

Litigation information      2001.06(c) 

Questionnaire     2004 

Reexamination     2280 

Reissue             1414.05 

Sources of information      2001.06 

To whom owed    2001.03 

Violation 1448 

When made 2003 

Who has       2001.01 


E 


"Easily Erasable" paper       608.01, 714.05, 714.07, 

714.19 

Edge-notched card system        717.05 

Effective date: 

Declassified matter   707.05(f) 

Reference patent        706.02, 706.02(a), 707.05(e), 

707.05(f), 715, 901.05(b) 

Effective filing date: 

Continuing application      201.11, 706.02, 708 

Continuation-in-part    2133.01 

Foreign Priority Effect       706.02 

International Convention 

(see Foreign application) 201.13, 201.14, 

 201.15 

Provisional Application       706.02 

Publication   715.01(c) 

Election (see also Restriction; 
Election of species)    Chapter 800 

Action on nonelected claims, 

Election not waived   819 

After multiplicity rejection    2173.05(n) 

After restriction 818 

After restriction, 

Treatment of nonelected claims      706.03(m), 

821 to 821.03 

Applicant must make   818.03(e) 

Between applications, Conflicting 
claims      804, 822, 822.01 

Constructive    818.02(a), 818.02(c) 

Fixed by action on merits 818.01, 818.02(a) 

Implied             818.02(a), 818.02(c) 

Interference    820.02 

Old combination       820.01 

Optional cancellation     818.02(c) 

Original presentation     818.02(a) 

Shift       819.01, 820 

Traverse         818, 818.03, 818.03(b), 818.03(c), 821.01 

Without traverse        821.02 

Election of species: 

Action after    809.02(c) 

Allowable generic claim lacking       809.02(a) 

Basis       808.01(a), 809.02 

Canceling species claims        818.02(c), 821.01, 821.02 

Election of species--Continued 

Design application  1504 

Implied             818.02(a), 818.02(c) 

Reissue application   1450 

Requirement   809.02(a), 809.02(b) 

Requirement, Prior to search    808.01(a) 

Species claims lacking      809.02(d), 818.02(b) 

Withdrawal of nonelected species        809.02(c) 

Employee No.            711.04(b) 

Employees of Patent and Trademark Office, 
Property interest in patent   309 

Enablement      706.03(c), 2164 

Burden on the examiner      2164.04 

Commensurate in scope with claims 2164.08 

Critical feature not claimed    2164.08(c) 

Inoperative subject matter  2164.08(b) 

Single means claim  2164.08(a) 

Compared to Utility   2164.07 

Evidence of   2164.05 

Examples of enablement issues     2164.06 

Form paragraphs used to reject      706.03(c) 

Reduction to practice     2164.02 

Relationship of predictability      2164.03 

Specification must be enabling: 

As of the filing date     2164.05(a) 

To persons of ordinary skill    2164.05(b) 

Test of enablement  2164.01 

Energy, Department of     706.03(b) 

Energy, related applications, Special status    708.02 

English language faulty, New specification  608.01(q) 

English language required 302.02, 140, 608.01 

Entity, small, claiming status as 509.03 

Entry of amendment (see also Amendment)       714.18 

Entry of "Contents" of file wrapper   717.01 

Entry on Face of file wrapper     717.02, 

717.02(b), 1302.09 

Environmental Quality Program     708.02, 1002.02(c) 

Equity (civil action): 

Under 35 U.S.C. 145   1216, 1216.02 

Under 35 U.S.C. 146   1109(b), 1216, 2358 

Equivalents in art  904.01(b), 2144.06 

Erasable (specially coated) paper 608.01 

Erasure in specification, Before allowance  1302.01 

Erasure in specification, Before Execution  608.01 

Error in recording title documents  323 

Error without deceptive intention 140, 2022.05 

Essential material  608.01(p) 

Establishing subclasses       903.02(c) 

Estoppel, Collateral    2012.01 

Estoppel, Defensive publication       711.06 

Estoppel, Interference      2358, 2363.03 

Evidence, for public use or on 
sale            2133.03 to 2133.03(b) 

Evidence submitted with protest       1901.02 

Examination of application: 

After fraud consideration 2022 

Fraud issue   2020 

Order of        707.02(a), 708 to 708.03 

Piecemeal 707.07(a), 707.07(g) 

Purpose       701 

Reissue             1440 

Request for SIR       1103 

Secrecy during      101 

"Secrecy order" case    130, 1304 

Statutory authority   701 

Examiner: 

Action          707 

Actions counted       1705 

Affidavit 2144.03 

Assignment of application for 

examination   903.08(b) 

Classification (see also Classification 
examiner) 903 

Disposals 1705 

Expressing Opinion of Validity      1701 

Name            503 

New, Action indicated by Primary        707.01 

Previous action by another examiner: 

Allowed claims      706.04 

Interview   713.01 

Search          704 

Primary 

Actions requiring personal attention    707.01, 

714.16, 715.08, 1004 

Name on file wrapper    1302.13 

Reasons for allowance     1302.14 

Resigns             708.03, 1702 

Resigns, old cases special  708.03 

Suggestion of allowable claims      707.07(j) 

Telephoning attorney    408, 1302.14 

Testimony as patent expert  1701.01 

Treatment of protest    1901.06 

Work Report   1705 

Examiner--Continued 

Examiner docket time, time and 
activity recording  1705 

Examiner's action (see also Action; Letter, 
Examiner's)         707 

Examiner's amendment    1302.04 

Abstract changed by   608.01(b), 1302.01, 1302.04 

By initialing     1302.04 

Claim, Nonstatutory, Canceled     1302.04(b) 

Claim, Numbers identifying  1302.01, 1302.04(g) 

Claim lost in interference, Canceled    2363.03 

Claims, Nonelected invention, Canceled      821.01, 

821.02 

Copending application data 
brought up to date  201.11, 1302.01 

Defensive Publication     711.06 

Deposit Account charge      1302.04 

Drawing correction  608.02(w), 1302.04, 1302.05 

Extension of time required for      706.07(f) 

Formal matters      1302.01, 1302.04 

Patented copending application data   1302.04(f) 

Plant patent practice     1610 

"Printer Waiting" 1302.04, 1309.01 

Reference citation corrected    707.05(g) 

Title of application    606.01, 1302.04(a) 

Examiner's answer: 

Appeal brief    1208 

New ground of rejection       1208.01 

Petition                1002 

Print of drawing        1204 

Reexamination     2275 

Reply brief   1208 

Special status      708.01 

Examiner's letter (see also Action; Letter, 
 Examiner's)            707 

Examiner's statement. (See Examiner's answer.) 

Examining Group Search Facilities Use 
Regulations         510 

Example, Comments on    707.07(l) 

Example, Operative  608.01(p), 2164.02 

Excess number of claims for fee, After 
notice of allowance   714.16(c) 

Excess number of claims for filing fee        714.10 

Execution of oath 604, 605.04 

Executive Order No. 5464        1608 

Executor or Administrator 409.01, 605.05 

Allowance and Issue   409.01(f) 

Executor or Administrator--Continued 

Application by, After discharge       409.01(c) 

Assigned application, Inventor dies   409.01(e) 

Authority 409.01(b) 

Consular certificate    409.01(b) 

Foreign country       409.01(b), 409.01(d) 

Heir            409.01, 409.01(a), 409.01(b), 409.01(d) 

Intervention not required 409.01(f) 

Joint inventors, inventor dies      409.01(f) 

Specification form  605.05 

Exhibit             608.03 

Exhibit, Affidavit under 37 CFR 1.131     715.07, 

715.07(d) 

Exhibit at interview    713.08 

Exhibit, Handling 608.03(a) 

Ex parte questions  713.06 

Experimental use (see also Public 
Use)            2133.03, 2133.03(e) 

Commercial exploitation       2133.03(e)(1) 

Completeness of the invention     2133.03(e)(3) 

Factors indicative of     2133.03(e)(4), 2133.03(e)(5) 

Intent to experiment    2133.03(e)(2) 

Reduction to practice     2133.03(e)(3) 

Testing by Third party      2133.03(e)(5), 2133.03(e)(7) 

Testing, developmental      2133.03(e)(6) 

When experimental use ends  2133.03(e)(3) 

Experimentation, Disclosure requiring     608.01(g) 

Export control of patent applications     120, 140 

Exposure of papers during interviews    101, 713.07 

Expounding patent law     713.02 

Express abandonment     711, 711.01 

Express Mail Deposit    513 

Express Mail Service    502, 506.02, 513, 711.03(c) 

Expunge trade secret material     724.05, 1002.02(a) 

Extension of shortened response period      710.02(e) 

Extension of time 710.02(e), 1002.02(c), 1302.04 

For filing brief        1206, 1208.01, 1215.04 

General fee authorization, not petition       714.17 

Hand delivered      502 

Protest interview 1902, 1902.01, 1902.01(a) 

Reexamination     2265 

Request       710.02(e), 1002.02(c) 

Extension, patent term      1309.01 


F 


Facsimile: 

Correspondence      502.01 

Facsimile--Continued 

Declaration or oath   502.02 

PCT international application     1834.01 

Maintenance fees        2511 

Federal Holiday within DC 201.04(b), 201.11, 201.13 

505 

Federal license rights      310 

Federal Telecommunications System 408, 713.01 

Fee 

Appeal          1205 

Assignment recording    302.06 

Examiner Amendments   706.07(f) 

Extensions of time  706.07(f) 

Filing          607 

Claims in excess of   506, 607, 714.10 

Dependent claims        608.01(n) 

Deposit Account       509.01 

Design application  1505 

Inadequate  506 

International application 1810, 1827 

Reduction for small entities    509.02 

Return          503, 607.02 

Small Entity     509.03 

Issue: 

Deposit Account       509.01 

Failure to pay      712 

Interfering case, Not applied     2305.04 

Petition to accept  712 

Reduction for small entities    509.02 

Reissue             1455 

Maintenance   2500 

Time for payment        2506 

After expiration of patent  2509 

Patents subject to  2504 

Fee, no requirement for in citation   2205 

Fee, Petition to revive       711.03(c) 

Fee for requesting reexamination        2215 

Fees, Insufficient payment  509 

Fees, Payment of        509 

Fees, Reduction for small entities  509.02 

Field of search             708.03, 904.01(d), 1701 

Field of search, Notation by Examiner     705.01(a), 

717.05, 904.01(d) 

File wrapper            717 

Action entered      707.10 

Allowed case data entered 1302.09 

Amendment endorsed  710.05, 714.18 

File wrapper--Continued 

Arrangement of papers     717.01(a), 1302.12 

Assignment endorsement      303 

Civil action1     216.02 

Classification data   717.03 

Completeness    724.01 

"Contents", Entry in    717.01 

Continuing Rule 62 (FWC)        201.06(b), 201.07 

Correction of error   717.02 

Data entered on       710.05, 717.02, 1302.09 

Drawings secured to   508 

Field of search       717.05 

Field of search, Patentability report     705.01(a) 

Foreign application cross-noting        202.03 

Foreign filing date entered on      717.06, 1302.06 

Index of claims       717.04 

Interference notation     2301.01(b) 

"Licensing and Review" stamp    140 

Name of applicant changed 717.02(b) 

Notation for 

continuing application      201.11, 202.02 

foreign application   202.03 

provisional application       202.02 

Notes to application of another party     101 

Papers in 717.01 

Parent case notation on       202.02, 1302.09 

Print of drawing        508, 717.01(b) 

Relation of application noted on        202.02, 717.07 

Residence changed 717.02(b) 

Return of paper entered on  717.01 

Signing and dating by Primary     1302.13 

Statutory period ends on nonworking day       710.05 

Files Repository                711.04(b) 

Filing date         502, 503, 505, 506, 506.02 

Effective, prior application    201.11, 

706.02, 2133.01 

Express Mailing date    506.02, 513 

Foreign application, Convention date 
 (see Foreign application)  201.13, 201.14, 201.15 

International application 506, 1810 

Later filed application as disclosure     608.01(p) 

Patent Cooperation Treaty 506, 1810 

Petition                506.02, 601.01, 601.01(b) 

Refusal to Accord 506.02, 605 

Review by OACP 
(Special Program Examiner)  201.06(a), 702 

Review of Refusal to Accord   506.02 

Filing date--Continued 

Subsequent publication as disclosure    608.01(p) 

Filing date of reexamination request    2215 

Filing fee      607 

Claims in excess of   506, 714.10 

Deposit Account       509.01 

Design application  1505 

Inadequate  506 

Reduction for small entities    509.02 

Reexamination     2215 

Reissue application   1415 

Return          140, 503, 607.02 

Filing receipt          502, 503 

Final action. (See Allowance and issue; 
Final rejection.) 

Final action, Special nature of       708.01 

Final fee. (See Issue fee.) 

Final rejection             706.07 

Amendment after       714.12, 714.13 

Amendment after, Entered in part        714.20 

First action    706.07(b) 

Interview 713.09 

Letter          706.07 

Patentability report    705.01(a) 

Petition to vacate  1002.02(c) 

Premature 706.07(c) 

Premature, Withdrawal     706.07(d) 

Primary's attention required    1004 

Reexamination     2271 

"Secrecy order" application   130 

Special             708.01 

Time for response 706.07(f) 

Transitional procedure      706.07(g) 

When proper   706.07, 706.07(a),706.07(b) 

Withdrawal  706.07(e) 

Withdrawal, Primary's attention       1004 

Withdrawal of premature       706.07(d) 

Withdrawal prior to hearing on appeal     1208.02 

Final restriction requirement     818.03 

First action final rejection    706.07(b) 

First action form 707 

First foreign application (see Foreign 
application)            201.13 

Fissionable material    706.03(b) 

Five year pendency  707.02(a), 708.01 

Flowchart of reexamination  2201 

Flowsheet   608.02 

Foreign application: 

As prior art    2127 

Certificate of correction to perfect 

priority                201.16 

Certified copy to avoid reference 201.14, 706.02 

Cross-noting on file wrapper    202.03 

Foreign application--Continued 

Date, Entitled to 201.13 to 201.15 

Determination of priority 201.14, 201.15 

Disclosure  201.15 

English language translation 
for benefit of date   201.15, 706.02 

Filing in foreign country 140 

First       201.13 

Form of request       201.14(b) 

German design applications  201.14(b) 

Great Britain     201.15 

Identification      201.14(d) 

License to file       140, 706.03(s) 

Listed on oath      201.14, 602 

More than one     201.14 

No claim for priority     201.14(c) 

No reference made in declaration        201.14(c) 

Noting earliest date on file wrapper    202.03, 1302.06 

Overcoming reference which is     201.15, 715 

Prior art cited in related  2001.06(a) 

Priority                201.13, 706.02 

Papers not filed        201.14(c) 

Priority document in 
parent application  201.14(b), 201.14(c) 

Ribboned        602.04(a) 

Same invention      201.15 

Seal            602.04(a) 

Statutory bar 

(See Foreign application) 201.13, 706.02(e), 

 2135.01 

Time limits to submission 201.14, 201.14(a) 

Certificate of correction 201.16 

Reissue             201.14, 201.14(b), 201.16 

Translation required    201.15 

Foreign countries recognized for priority 201.13 

Foreign executed oath     602.04 

Foreign filing, Proving for priority    201.14, 706.02 

Foreign filing date, 

Entitled to   201.13, 717.06 

On file wrapper       202.03, 1302.06 

Foreign filing license      140 

For PCT       115, 1832 

Foreign language 

Application   608.01 

Names       901.05(a) 

Oath or declaration   602.06 

Foreign patent: 

Citation        707.05(e), 901.05(a) 

Citation dates and 
information   901.05(a), 901.05(b), 1871 

Classification      903, 903.03 

Country Codes     1851 

Document cases, PCT   1851 

Duplicates  903.03 

Effective Date      901.05(b) 

Family of (INPADOC)   901.06(a) 

In prior art statement      609 

Journals        901.06(a) 

Law         901.05 

Library             901.06(a) 

Listing at allowance    1302.12 

Oppositions   901.05 

Ordering        901.05(c) 

Print of, Where obtained        901.05(c) 

Reference 901.05 

Statutory bar (see Foreign 
application)    201.13, 706.03(s) 

Transfer        903.05 

Translation of      901.05(d) 

Unlicensed, Same applicant  706.03(s) 

Foreign priority (see Foreign 
application)            201.13-201.15 

U.S. filing date computed 201.13, 706.02, 2136.03 

Foreword                III 

Forfeited application     712 

Prior art 901.02 

Retention label       1302.07 

Forfeiture (see failure to pay issue fee) 712 

Formal drawings Rule 60       201.06(a) 

Formal matter: 

Allowance and issue   1302.01, 1302.02, 1302.04 

Amendment of case in issue  714.16 

Claim allowable except for  706, 707.07(j) 

Response to objection     14.02 

Review of action involving  Introduction 

Right of priority 

Prior Foreign application 201.13-201.15 

Formal matter--Continued 

Prior U.S. application      201.11 

Specification format    608.01 

When taken up     707.07(a), 707.07(e), 

707.07(j), 714.02 

Former examiner restrictions    1702 

Forms and form letters: 

Amendment after Board decision, 
Refused       1214.07 

CD-244      103 

Certificate for 37 CFR 3.73(b)      324 

Change of address 2222 

Cover sheet, provisional application    204.01(b) 

D-10            130, 1304 

Declaration   602 

Election of species   809.02(a) 

Examiner's action PTO-326 707 

Examiner's answer 1208 

Examiner's statement on appeal      1208 

Final rejection       706.07 

Form 3.43 1490 

Form 3.54 201.06(a) 

Information disclosure statement        2214 

Interference    2309.02 

Notice of allowance, Assigned 
application   307, 1303 

Notice of references cited PTO-892  707.05(a), 

1303.12 

PCT forms (See Patent Cooperation Treaty) 

PTO-14      901.09 

PTO-14A       905.02, 2287 

PTO-14B       905.02, 2287 

PTO-14 Reproduced 905.02 

PTOL-37       203.08, 602.03, 608.02(a), 608.02(b), 

609, 707.05(g), 812.01, 1302.03, 

1302.04, 1302.12, 1302.14 

PTOL-84       1208 

PTOL-85       203.08, 307, 324, 502, 609, 1309, 1481 

PTOL-86       1608 

PTO-97      1302.04 

PTO-150       1302.07, 1706 

PTO-152       409.01(b), 506, 601.01(h) 602.03, 

604.02, 605.02,605.03, 707, 707.07(a) 

PTO-250       905.01 

PTO-262       1204 

PTO-270       902.03(b), 903.07, 1302.10, 1455, 2287 

PTO-270 Reproduced  903.09 

Forms and form letters--Continued 

PTOL-271        714.16(d), 714.16(e), 2307.03 

PTOL-303        708.02, 714.13 

PTOL-316        707.05(g) 

PTOL-319        714.03 

PTOL-326 Reproduced   707 

PTOL-326 Cited      2.01.14(b),201.14(c) 

        608.02(b), 608.02(h), 609, 

        706.07, 707.04, 710.02(b),  812.01 

PTOL-327        708.02, 

710.02(e), 711.01, 711.02 

711.03(c), 714.13, 

 714.17, 1207 

PTO-328       903.07 

PTO-333       1215.04 

PTOL-404        1485 

PTO-413       1903.01 

PTOL-413        2281 

PTO-445       1431 

PTO-447       903.08(a), 903.08(d) 

PTO-447A        2237 

PTO-457       601.01(h) 

PTO-690E        903.03, 1704, 2238 

PTO-850       1002.02(d), 1705, 

                                          2301.01, 2305.04, 

      2308.01, 2309.02, 2311 

PTO-850 Reproduced  2309.02 

PTO-875       608.01(n) 

PTO-892 Reproduced  707.05(a) 

Cited     609, 707, 707.05(a), 

        707.05(b), 707.05(c), 

        707.05(e), 707.05(g), 

        1208.01, 1302.04, 1302.12, 

        1901.06, 2246, 2257, 2290 

PTO-912       1705 

PTO-948       507, 608.02, 608.02(b), 707, 707.07(a) 

PTO-1002        201.14(b), 201.14(c) 

PTO-1050        1485 

PTOL-1101 1309 

PTO-1123        506, 601.01(h) 

PTO-1305        115 

PTO-1360        608.01(n) 

PTO-1382        1830, 1832 

PTO-1411        2238 

PTOL-1432 711.04(c) 

Forms and form letters--Continued 

PTO-1449-Reproduced   609, 2214 

Cited     609, 707, 707.05(b), 

        2246, 2257, 2290 

PTO-1462        903.03 

PTO-1472        1705 

PTO-1474        707 

PTO-1532        601.01(h) 

PTO-1533        601.01(h) 

PTO-1534        601.01(h) 

PTO-1595        324 

PTO-1607        601.01(h) 

PTO-1608        601.01(h) 

PTO-1669        601.01(h) 

PTO-1672        601.01(h) 

PTO/58/94 1101 

PTO/SB/01 602 

PTO/SB/08 609 

PTO/SB/13 201.26(a) 

PTO/SB/14 201.06(b) 

PTO/SB/16 201.04(b) 

PTO/SB/25 1490 

PTO/SB/26 1490 

PTO/SB/43 1490 

PTO/SB/45 Reproduced    2591 

PTO/SB/45 Cited       2515 

PTO/SB/46 Reproduced    2591 

PTO/SB/46 Cited       2540 

PTO/SB/47 Reproduced    2591 

PTO/SB/47 Cited       2540 

PTO/SB/56 1415 

PTO/SB/61 711.03(c) 

PTO/SB/63 711.03(c) 

PTO/SB/64 711.03(c) 

PTO/SB/83 402.06 

PTO/SB/96 Reproduced    324 

Reexamination request     2214 

Rejection of claim copied from patent     2307.02 

Restriction requirement       817 

Rule 60 filing      201.06(a) 

Small entity statements       509.03 

Form paragraphs: (Reproduced) 

2.01            201.06 

2.02            201.06(a) 

2.03            201.06(a) 

2.04            201.06(a) 

2.05            201.07 

Form paragraphs: (Reproduced)--Continued 

2.06            201.08 

2.07            201.09 

2.08            201.10 

2.09            201.11 

2.10            201.11 

2.11            201.11 

2.12            201.11 

2.13            201.03 

2.13.01             201.03 

2.13.02             201.03 

2.14            201.03 

2.15            201.11 

2.16            201.11 

2.17            201.11 

2.18            201.13 

2.19            201.15 

2.20            201.14(b) 

2.21            201.14(c) 

2.23            201.14(c) 

2.24            201.14(c) 

2.25            201.14(c) 

2.26            201.14(c) 

2.27            201.14(c) 

2.28            201.06(b) 

2.29            201.14 

4.01            403 

4.02            406 

4.03            406 

4.04            406 

4.05            409.01(b) 

4.06            407 

4.07            407 

4.08            407 

5.01            502 

5.02            512 

5.03            903.08 

5.05            512, 513 

6.01            608.01(a) 

6.02            608.01(a) 

6.02.01             605.04 

6.03            602.01 

6.04            602.05 

6.05            602.05, 604.01, 605.02 

6.05.10             602.05 

6.06            603 

6.07            604.02 

Form paragraphs: (Reproduced)--Continued 

6.08            604.04(a) 

6.09            605.03 

6.09.01             605.03 

6.10            605.04(b) 

6.11            606.01 

6.12            608.01(b) 

6.13            608.01(b) 

6.14            608.01(b) 

6.15            608.01(b) 

6.16            608.01(b) 

6.17            608.01(j) 

6.18            608.01(n) 

6.19            608.01(p) 

6.19.01             608.01(p) 

6.20            608.01(v) 

6.21            608.02 

6.22            608.02 

6.23            608.02 

6.24            608.02(b) 

6.26            608.02 

6.27            608.02 

6.28            608.01(q) 

6.28.01             608.01(q) 

6.29            608.01 

6.30            608.01 

6.31            608.01 

6.32            608.01 

6.33            608.01(m), 714.22 

6.34            608.01(m), 714.22 

6.35            714.01(a) 

6.36            608.02(d) 

6.36.01             608.02(g) 

6.37            608.02(h) 

6.38            608.02 

6.39            608.02 

6.40            608.02 

6.41            608.02 

6.42            608.02 

6.43            608.02 

6.44            608.02 

6.45            608.02(a) 

6.46            602.03 

6.47            608.03 

6.48            714.16(d) 

6.49            609 

6.50            609 

Form paragraphs: (Reproduced)--Continued 

7.01            702.01 

7.02            702.01 

7.03            702.01 

7.04            701, 706.03(a) 

7.05            706.03(a) 

7.05.01             706.03(a) 

7.05.02             706.03(a) 

7.05.03             706.03(a) 

7.07            706.02(i) 

7.08            706.02(i) 

7.09            706.02(i) 

7.10            706.02(i) 

7.11            706.02(i) 

7.12            706.02(i) 

7.13            706.02(i) 

7.14            706.02(i) 

7.15            706.02(i), 804.03 

7.15.01             706.02(f), 706.02(i), 804.03 

7.15.02             706.02(i), 804.03 

7.15.03             706.02(i) 

7.16            706.02(i) 

7.17            706.02(i) 

7.18            706.02(i) 

7.19            706.02(i) 

7.20            706.02(m) 

7.20.01             706.02(m) 

7.20.02             706.02(m) 

7.21            706.02(m), 804.03 

7.21.01             706.02(m), 804.03 

7.21.02             706.02(m), 804.03 

7.22            706.02(m) 

7.23            706.02(m) 

7.27            706.02(m) 

7.28            706.03(o) 

7.29            608.01 

7.31.01-7.31.04       706.03(c) 

7.33.01             706.03(c) 

7.34 to 7.34.06       706.03(d) 

7.35 to 7.35.01       706.03(d) 

7.37            707.07 

7.38            707.07 

7.39            706.07 

7.40            706.07(a) 

7.41            706.07(b) 

7.41.01             706.07(g) 

7.41.02             706.07(g) 

Form paragraphs: (Reproduced)--Continued 

7.42            706.07(d) 

7.42.01             706.07(g) 

7.42.02             706.07(g) 

7.42.03             706.07(g) 

7.43            608.01(n), 707.07(j) 

7.43.01             707.07(j) 

7.43.02             707.07(j) 

7.43.03             707.07(a) 

7.44            608.01(o) 

7.45            608.01(n) 

7.48            706.03(u) 

7.49            706.03(u) 

7.50            706.04 

7.51            714.14 

7.52            709 

7.53            709 

7.54            709 

7.55            709 

7.56            709 

7.57            715 

7.58            715, 715.05 

7.59            715, 715.07 

7.60            715 

7.61            715 

7.62            715, 715.07(a) 

7.63            715, 715.07 

7.64            715 

7.65            716 

7.66            716 

7.67            714.13 

7.67.01             706.07(f), 714.13 

7.67.02             706.07(f), 714.13 

7.68            714.13 

7.69            714.13 

7.70            714.13 

7.71            714.13 

7.72            714.13 

7.73            714.13 

7.75            714.13 

7.76            714.13 

7.78            714.13 

7.79            714.13 

7.80            714.13 

7.81            707.05(g) 

7.82            707.05(g) 

7.82.01             707.05(g) 

Form paragraphs: (Reproduced)--Continued 

7.83            707.05(g) 

7.84            713.04 

7.85            714.16(d) 

7.86            714.16(e) 

7.87            714.16(d) 

7.88            711.01 

7.89            711.01 

7.90            711.02 

7.91.       711.02(a) 

7.92            711.03(c) 

7.93            711.03(c) 

7.94            711.03(c) 

7.95            714.03 

7.96            707.05 

7.97            707.07(j) 

7.98            710.02(e) 

7.99            1002 

7.100       707 

7.101       707, 707.08 

7.102       707, 707.08 

7.103       707 

7.104       706.02(c) 

8.01            809.02(a) 

8.02            809.02(a) 

8.03            809.02(c) 

8.04            821.03 

8.05            821.01 

8.06            821.02 

8.07            821.02 

8.08            817 

8.09            817 

8.10            817 

8.11            817 

8.12            809.03 

8.13            806.04(b) 

8.14            806.04(b) 

8.15            806.05(c) 

8.16            806.05(d) 

8.17            806.05(e) 

8.18            806.05(f) 

8.19            806.05(g) 

8.20            806.05(g) 

8.20.01             806.05(i) 

8.20.02             808.01 

8.21            817 

8.22            818.03(b) 

Form paragraphs: (Reproduced)--Continued 

8.23            812.01 

8.23.01             812.01 

8.23.02             817 

8.24            821.01 

8.25            821.01 

8.25.01             810.03 

8.25.02             818.03(c) 

8.26            821.03 

8.27            804.03 

8.28            804.03 

8.28.01             804.03 

8.29            822 

8.30            804 

8.31            804 

8.32            804 

8.33            804 

8.34            804 

8.35            804 

8.36            804 

8.37            804 

8.38            804 

8.39            804 

8.41            803.03 

10.01       1002.02(c) 

10.02       1002.02(c) 

10.10       201.03 

10.11       201.03 

10.12       201.03 

10.13       1481 

10.14       1481 

11.02       2363 

11.03       2363.02 

11.04       2305 

11.05       2305 

11.06       2305 

11.07       2305.04 

11.08       2305.04 

11.09       2305.04 

11.10       2307.05 

11.11       2305.04 

11.12       2307.02 

11.13       2307.02 

11.14       2307.02 

11.15       2307.04 

11.16       2315.01 

11.17       2315.01 

Form paragraphs: (Reproduced)--Continued 

11.18       2305.04 

11.19       2307.06 

11.20       2307.06 

12.01       1205 

12.02       1205 

12.03       1205 

12.04       1205 

12.05       1205 

12.06       1205 

12.07       1205 

12.08       1206 

12.09 to 12.13      1206 

12.16, 12.17    1206 

12.19       1214.07 

12.20       1214.06 

12.47       1208.04 

12.48       1208 

12.50 to 12.63      1208 

12.69 to 12.78      1206 

12.79       1208 

13.01       1302.02 

13.02       1302.04 

13.02.01        1302.04 

13.02.02        706.07(f), 1302.04 

13.03       1302.14 

13.04       1308.03 

13.05       1308.03 

13.06       1302.04 

13.07       1302.01 

13.08       1302.01 

13.09       609 

13.10       714.16 

14.01       1414.01 

14.02       1414.03 

14.03       1414.03 

14.04       1414.04 

14.04.01        1444 

14.05       1416 

14.05.01        1416 

14.06       1442.01 

14.07       1442.03 

14.08       1442.02 

14.09       1442.02 

14.10       1442.02 

14.11       1442.02 

14.12       1412.03 

Form paragraphs: (Reproduced)--Continued 

14.13       1412.03 

14.14       1444 

14.15       142 

14.20       1453 

14.21       1453 

14.22.01        1411.02 

14.23       1490 

15.01 to 15.04      1504.10 

15.05, 15.05.01       1503.01 

15.08 to 15.10      1504.01 

15.11 to 15.17      1504.02 

15.18, 15.19, 15.19.01      1504.03 

15.20 to 15.22      1504.04 

15.23 to 15.25      1504.06 

15.26       1504.20 

15.27 to 15.31,15.34, 15.36, 15.37  1504.05 

15.41       1504.01 

15.43       1502 

15.44       1504.01 

15.45       1503.03 

15.47       1503.01 

15.52       1504.10 

15.56       1504.04 

15.57       1503.03 

15.78       1504.03 

15.59 to 15.61      1503.01 

15.66       1504.04 

17.01       401 

17.11       512 

18.01       1878 

18.02       1878 

18.03       1878 

18.04       1878 

18.05       1875.01 

18.06       1875.01 

18.07       1875.01 

18.08       1878 

18.09       1878 

18.10       1878 

18.11 to 18.15      1878 

18.16 to 18.17      1875.01 

19.01       1901.06 

19.02       1901.06 

22.01       2246 

22.02       2247 

Form paragraphs: (Reproduced)--Continued 

22.03       2258 

22.04       2260 

22.05       2258 

Fraud 

Argued in protest 1901.02, 1901.03,1901.05 

In reissue   1442.04, 1448, 2012 

Typical issues      2020.02 

Fraud on the Patent and Trademark Office        509.03, 

 2001.06(c) 

Fraudulent  706.03(a) 

Frivolous invention   706.03(a) 

Full faith and credit in prior Examiner's action: 

Allowed claims      706.04 

Interview 713.01 

Search          704 

Full name 605.04(b) 

Full signatory authority        1004 

Function of machine rejection       2173.05(v) 

Functional claim, Rejection   2114, 2173.05(g) 

Functional equivalents      2144.06 

FWC 

Public access     103 

Rule 62             201.06(b) 


G 


Gazette, Official 1703 

Gazette, PCT    1801, 1857 

Gebrauchsmuster       201.13, 201.14(d), 202.03, 901.05(b) 

"General Information Concerning 
Patents"  booklet   703 

General power of attorney for 
international application 1807 

Generic claim: 

Allowable 808.01(a), 809.02(b), 809.02(e) 

Transitional application        803.03(b) 

Definition  806.04(d) 

Informal        809.02(e) 

Markush group     2173.05(h) 

Patentably distinct over other  species       806.04(h) 

Presented after issue of patent       806.04(i) 

Rejection 809.02(a) 

Species claims lacking      809.02(d), 818.02(b) 

Subcombination      806.04(c) 

Support for scope of    706.03(c),  2164.08 

Traverse of rejection in lieu of election 818.03(b), 

  818.03(d) 

Generic claim--Continued 

Genetic sequence information    2420 

Genus and species 806.04(a) to 806.04(j), 

808.01(a), 809.02 

Anticipation of       2131.02 

Obviousness of      2144.08 

German priority document        901.05(10) 

Geschmacksmuster        201.14(b) 

Good faith  2000, 2001 

Government license clause 310 

Government-owned application:  Specia     708.01 

Graphic symbols       608.02 

Great Britain,  Complete  specification       201.15 

Great Britain,  Provisional  specification  201.15 

Greek letter  Phi  usage        608.01(g) 

Group Art Unit Number     502 

Group date receipt and stamp    714.18 

Group Director      201.03, 201.14(c),402.06, 

708.02, 714.01(a),714.13,714.25, 

715.08, 720.01,804.04, 1002.02(c), 

1206, 1207,1208.01, 1214.04,1448, 

 1901.06, 1901.07(b),1902.01, 1902.01(a), 

1906,  2248, 2249,2265, 2274, 

 2283-2286,2301.01(b),2303, 2305.04, 

2306, 2307.02, 2307.03, 2309.02, 

Group Director's functions  1002.02(c), 1003 

Group Director, Group 1800  1002.02(c)(2) 

Group Director, Group 2200  1002.02(c)(1) 

Group, International Classification   903.09 

Guardian, Authority recorded    409.02 

Guardian of insane inventor   409.02 

Guidelines for conducting inter partes interviews 1903 

Guidelines for drafting an application      601 

Guidelines for drug disclosures       2107, 2107.02 

Guidelines for handling of citation in patent     1922 

Guidelines, Utility   706.03(a)(1) 

Legal precedent for   2107-2107.02 


H 


Hand delivery of papers       502, 714.13 

Handling of citation of prior art 2206 

Handling of inappropriate or untimely papers    2267 

Handling of mail and papers   Chapter 500 

Handling of protest   1901.05 

Hearing on appeal 1209 

Heir as applicant (see also Administrator 
or executor)            409.01, 409.01(a),409.01(d), 1303.03 

Holiday, Effect on reference    706.02(a) 

Holiday, Papers not received    502 

Holiday, Period for response ending on      505, 710.05 

Holiday in District of Columbia       502, 505, 710.05 


I 


ICIREPAT country codes      201.14(d), 901.05(d)(f) 

ICIREPAT identification numbers       901.04, 901.05(d)(f) 

Identification of papers        502, 503 

Identification of priority application      201.14(d) 

Identity of inventors under 35 U.S.C. 119 201.13 

Idiomatic English 608.01(q) 

Implied election        818.02, 818.02(a), 818.02(c) 

Improper joinder, Effect on patent  805 

Improper multiple dependent claim 608.01(n) 

Improvement (Jepson claim)  2129 

Inaccurate claim        2173.03 

Incomplete amendments, Time 
for completing          710.02(c),714.03 

Incomplete application      506, 601.01(d), 601.01(e), 

601.01(f) 

Completed 506.01 

Definition  203.06 

Drawing       507 

Invalid oath    604.06 

Return          506 

Return of filing fee    506 

Using again   506.01, 608.01(u) 

Incomplete claim, Rejection   706.03(c), 

706.03(d), 2173.05(l) 

Incomplete protest  1901.03 

Incomplete requests for reexamination     2227 

Incomplete response   711.03(a), 714.03 

Time for completing   710.02(c), 711, 714.03 

Incorporation by reference  608.01(p), 2163.07(b), 

2173.05(s) 

Incorrect citation of reference       707.05(g), 710.06 

Indefinite claim        706.03(d),  2173.06 

Independent claim 608.01(n) 

"Independent" definition        802.01 

"Independent"  inventions 802, 802.01, 803, 803.02, 806, 

806.04, 808.01, 808.01(a) 

Index of claims       707.07(i), 717.04 

Index of patents,  Classification, Numerical    902.03(a) 

Index to the U.S. Patent Classification       902.01(a) 

Inequitable conduct   2001.06(c) 

Reissue             1443, 1446 

Informal application    506, 702.01 

Primary Examiner's attention required     1004 

Search          702.01, 704 

Informal drawing        507, 608.02(b) 

Informal requests for reexamination   2228 

Informality, Action calling attention to        707.07(a), 

707.07(j),710.02(b), 714.14 

Information Center (see Scientific Technical 
Information Center)   901.06(a) 

Information Disclosure Statements 609 

Information on status of application referred 
 to in patent       102 

Information, Requirements for     2001.04 

Information retrieval from PALM       1704 

Information sent to applicant for his guidance      703 

Information submitted with protest  1901.02 

Information which must be disclosed     2001.04 

INID codes  901.04, 2290 

Initial examiner review of reissue  1443 

Ink: 

Color, 

Black       707.10, 717.02, 717.05 

Red         714.18, 717.02 

Permanent 608.01, 714.07, 714.19 

Inoperativeness       608.01(p),  2164.07,  2164.08(b) 

Affidavit 716.07 

INPADOC       901.06(a) 

Inquiries, Official and Congressional     203.08(a) 

Inquiries regarding patent search examination 
or validity         1701 

Inquiry as to status of application   203.08 

In re Bass type rejection  2217 

Insane      409, 409.02 

Inspection: 

Amendment 714.05 

Application   103, 104 

Approval of power 104 

Assignment  301.01 

Authorization     402 

By assignee   104, 106, 106.01 

By disbarred attorney     105 

By inventor   106 

By licensee   106.01 

Control of, By assignee       106 

International application 110 

Patent file   103 

Petition                103 

Inspection--Continued 

Record Room   103 

Reissue application   103 

Right of        103, 104, 106 

Insufficient disclosure       608.01(p), 706.03(c), 2161 

Insufficient response     710.02(c), 711.02(a), 

711.03(a), 714.03 

Intent to claim       706 

Inter-American Convention 201.13 

Interference    Chapter 2300 

Abandonment, suppression or 
concealment, notice   2138, 2332 

Access to files       2312 

Action after    2363 

Action after reexamination  2284 

Action made when suggesting claims  2305.01 

Action suggesting claims        2305, 2305.04 

Addition of new party     2342 

Adverse judgment, request for entry   2362 

Affidavits, sealed by Board   2309.03 

After notice of allowance 2307.03 

All parties claiming invention to be included     2303 

Allowance of losing party's application       2363.03 

Amendment filed during      2364.01 

Applicant requests interference 
with patent   2304,2307 

Application already in interference   2305.04 

Application and patent in different groups  2306 

Applications in different groups        2301.01(a) 

Arbitration   2390 

Assignee, prosecution by        2343 

Attorney, parties have same   2305, 2309.02, 2313 

Basis of practice  2138.01, 2300.01 

Between application and patent      2306 to 2308.03 

Between applications    2303, 2304 

Briefs for final hearing  2356 

Burden of proof       2357 

Cancellation of losing party's claims     2363.03 

Change from  old  to  new  rules        2300.01 

Claim of foreign priority by patentee 
not considered      2308.01 

Claim interpretation    2301.01 

Claim presented corresponding 
to patent claim       2306 to 2308.03 

Claims, not identical     2303 

Claims, overlapping in two applications 
of same party     2315.01 

Interference--Continued 

Claims, suggesting  2305 to 2305.04 

Claims, unpatentable over suggested claim 2305.01 

Claims corresponding to count support in 
specification       2163.03 

Claims corresponding to patent claims, 
rejection 2307.02 

Common ownership        2302 

Conception  2138.01,  2138.04 

Concession of priority      2362 

Concurrent with appeal      2315 

Consultation with examiner  2340 

Consultation with Examiner-in-Chief   2309.05, 

2363.03 

Conversion of inventorship  2334 

Copending reexamination       2284 

Copied patent claim not identified  2305 

Count, defined      2301.02 

Counts, formulation of      2163.03(d),  2309.01 

Dates, difference in effective filing     2303 

"Decision Noted"        2363 

Decision on motion  2340 

Declaration   2311 

Definitions   2301.02 

Depositions   2374, 2376, 2377, 2378 

Depositions, errors in        2385 

Determining priority    2138.01 

Diligence, reasonable     2138.01,  2138.06 

Disclaimer, statutory     706.03(u), 710.02(d), 2362 

Discovery 2351, 2387, 2388 

Drawing, losing party's obtaining copy of 2363.03 

Election of invention not affected  820.02 

Entry of amendment filed in connection 
with motion   2364 

Estoppel        2358, 2363.03 

Evidence        2138.04, 2371, 2382 

Examiner's entry on interference file     2363 

Examiner-in-Chief handles 2310 

Exceptions to applicability of new rules        2300.01 

Exhibits        2353 

Extension of time 2345 

Failure to identify patent when 
claims presented        2305, 2307.05 

Failure to present suggested claim  2305.01 

Federal Rules of Evidence 2300.02, 2371 

File wrapper notation     2301.01(b) 

Filing of papers        2301.03 

Interference--Continued 

Final decision      2355, 2356, 2358 

Final hearing     2354 

Foreign application, benefit    2309.02, 2333.02 

Foreign country, testimony in     2384 

Foreign language, translation     2347 

Generic claims      2303 

Group Director approval required        2303, 2305.04, 

2306, 2307.02, 2309.02 

Identification of patent, corresponding 
claims presented        2307.05 

Initial memorandum  2309.02 

Inspection of affidavits and declarations 2309.03 

Inter partes questions not to be 
discussed ex parte  2314 

Interpretation of claims        2301.01 

Interview prohibited    2314 

Judicial review       1216, 1216.01 

Jurisdiction over interference      2314 

Lead attorney     2313 

Litigation, notice of     2360 

Losing party, may obtain copy of 
opponent's application      2363.03 

Losing party, treatment of  2363.03 

Lost counts   715,  2138.01 

Memorandum, initiating      2309.02 

Motions: 

Applications not involved in interference 2333.01 

Benefit of foreign filing date      2333.02 

Content             2337 

Correct inventorship    2334 

Decision                2340 

Declare additional interference       2337 

Evidence in support   2339 

For judgment, prior art applicable to movant    2333 

Hearing             2340 

Miscellaneous     2335 

Opposition  2338 

Preliminary   2333 to 2333.02, 2336 to 2340 

Reconsideration       2340 

Reply       2338 

Time for filing       2336 

Multiple dependent claims 2309.02 

Multiple patents involved 2306 

New reference found   2341 

New rules, applicability        2300.01 

No interference in fact       2301.02, 2363.01 

Interference--Continued 

Nonelected claims 2303 

Notation on file wrapper, allowed 
application   2305.04 

Notation on file wrapper, 
possible interference     2301.01(b) 

Notification of patentee, attempt to 
provoke interference    2307.06 

Order to show cause: 

After decision on motions 2333, 2340 

Insufficient showing under 37 CFR 1.608(b)  2317 

No opening brief for final hearing  2356 

Outline of procedure    2300.02 

Overlapping applications        2315.01 

Patent date earlier than 
application date        2308.01, 2308.02 

Patent date later than application date       2308.03 

Patent in different group 2306 

Patent Law Amendments Act of 1984 2300.01 

Petitions 2344 

Power of attorney filed       402.08 

Preliminary motions   2333 to 2333.02,  2336 to 2340 

Preliminary statement     2321 to 2329 

Preliminary statement, access to        2331 

Preparation of papers by examiner 2309, 2309.02 

Priority time charts    2138.01 

Prosecution by assignee       2343 

Protest, notice of  2360 

Public use proceeding     706.03(v) 

Publishing Division notified    2305.04 

Reconsideration of decision on motion     2340 

Reconsideration of final decision 2358 

Record in each interference complete    2309.04 

Reduction to practice     2138.01,  2138.05 

Reexamination, copending with interference  2284 

Reexamination, notice of        2360 

Reexamination, presentation of claims for 
interference with patent under      2307.04 

Reference found during interference   2341 

References pertinent to motions, 
made of record      1302.12 

Reinstatement of action       2307.01,  2363.02, 2363.03 

Reissue application   2301.01, 2358, 2360, 2362 

Reissue application, notice of      2360 

Rejection of claims corresponding to 
patent claims     2307.02 

Interference--Continued 

Rejection of claims unpatentable over 
suggested claim       2305.01, 2305.02 

Requirements for interference     2303, 2306 

Response to suggestion for claims 710.02(c), 2305, 

2305.03 

Return of papers        2318 

Revocation of power of attorney       402.08 

Rule correlation table      2300.01 

Sanctions 2316 

Search          1302.08,  2301.01(b) 

Second interference   2365 

Secrecy order case  2309.06 

Service of papers 2346 

Settlement agreements     2366 

Showing under 37 CFR 1.608(b)     2308.02 

Special dispatch        708.01, 2307, 2307.02, 2311 

Statutory basis       708.01, 2300.01 

Subpeona        2371 

Subsidiary of corporation, common ownership   2302 

Suggestion of claims    2305 to 2305.04 

Suggestion of claims, time limit        710.02(c), 2305.02 

Summary judgment        2317 

Suspension of action pending outcome 
of reexamination        2284 

Suspension of ex parte prosecution  709.01, 2315, 

2315.01 

Terminated open to public 103 

Termination   2361 

Testimony 715.07(b), 2300.02, 2351, 2352, 

 2372, 2383, 2384 

Time limit for reply    2305.02, 2307.02 

Time schedule, two-party interference     2300.02 

Title reports     2309.02 

Transcript of deposition        2378, 2379 

Transfer of application       2301.01(a), 2306 

Translation of documents        2347 

Two periods for response running        2307.02 

Unauthorized papers, return   2318 

Winning party     710.02(b), 2363.02 

Withdrawal of application from issue    2305.04, 


 2307.03 

Withdrawal of outstanding action        2307.01 

Witness, examination of         2373, 2375 

Interlibrary Loans  901.06(a) 

Interlineation in specification before execution        608.01 

International application: 

Abstract        1826 

Access          101, 110 

Agent       1807, 1864.04 

Amendment before the Designated 
        Office      1893.01(b)(2) 

Amendment of Claims before 
International Bureau    1853 

Amino acid sequence   1823.02 

Applicant 1810 

Applicants Different for Different 
Designated States 1817.01 

Assignment Document   301 

Attorney        1807 

Attorney File Number    1821 

Claims          1824 

Common Representative     1807 

Confidential Status   101, 110 

Content       1812 

Continuation    1817.02 

Continuation of       1895 

Continuation-in-part    1817.02 

Correspondence      1834 

Declaration   1893.01(e) 

Definition  201 

Deposit Accounts        509.01 

Description   1823 

Designated Office 1801, 1893.01(a) 

Designated Office Receipt 1890 

Designation fee       1817.01, 1827 

Designation of States     1817.01 

Drawings        1825, 1893.03(f) 

Drawings missing        1825 

Early Processing National Stage       1893.01 

Elements        1812 

Errors, rectification of        1836 

Fees            1827, 1893.01(c) 

Filing date   1810 

Foreign Filing License      1832 

Formal Requirements   1810 

Forms: 

PCT/ISA/210   1844 

PCT/IPEA/401    1865 

PCT/IPEA/408    1878 

PCT/IPEA/409    1879 

PCT/IPEA/416    1879 

Home copy 1842 

International application--Continued 

International Preliminary Examination     1860 

International Search    1843 

International Searching Authority 1840 

Inventor        1817.01, 1820, 1893.01(e) 

Inventors Different for Different 
Designated States 1817.01 

Kinds of Protection   1817.01 

Mail Service    1834, 1834.02 

Member States     1817 

Microorganism Deposit     1823.01 

National Stage      1893, 1896 

Numbering 1812 

Oath            1893.01(e) 

Parent to national application      201.11(a), 1817.02 

Power of Attorney 1807 

Precautionary designations  1817.01 

Prior Art Effect        1895.01,  2127 

Priority                201.13(b), 1830 

Priority Document 201.13(b), 1828 

Publication   1857 

Record Copy   1842 

Rectification of obvious errors       1836 

Refund of fees      1827,1847 

Representation      402.09 

Request       1821 

Search Copy   1842 

Search Fee  1827 

Search Report     707.05, 1844 

Secrecy Order     110, 120, 1832 

Signature of Applicant      1820 

Time Limits   1844.01, 1879.01 

Title       1821 

Translation Before the Designated Office        1893.01(d) 

Transmittal Fee       1827 

Transmittal Letter  1830 

Unity of Invention  823,, 1850, 1875, 1893.03(d) 

Withdrawal  1859, 1880 

International classification    903.09 

International Convention        201.13 

Date            201.14 

International fee 1827 

International Patent Classification   717.05 

International Searching Authority 1840 

International Trade Commission      724 

International-type search 707, 1852 

Inter partes interviews guidelines  1903 

Inter partes questions      713.06 

Interpretation of law, New  1208 

Intervening rights in reexamination   2293 

Intervention by assignee        106 

Interviews:   713 

Advance indication of issues to be discussed    713.01 

Allowed application   713.05, 713.10 

Appointment in advance      713.01 

Attorney not of record      402 

Authority to conduct    713.05 

Before filing     713.02 

Before filing amendment under 
37 CFR 1.312    713.10 

Before first action   706.07(b), 713.01, 713.02 

Demonstration     713.08 

Disbarred attorney  105, 713.05 

During working days only        713.01 

Exhibit             713.08 

Exposure of other cases during      101, 713.07 

Extension of time in protest    1902.01(d) 

Field of search       713.02 

Finally rejected application    706.07(f), 713.09 

How conducted     713.01 

Inter partes guidelines       1902.01, 1902.01(a), 1903 

Inter partes questions      713.06, 2314 

Interview Summary Form      713.04 

Local attorney      713.03, 713.05 

Made of record      713.01, 713.04 

Model       713.08 

Notice in protest 1902.01(c) 

Oral agreement not binding  713.04 

Patentability report cases  713.01 

Prior to first Office action    706.07(b), 713.02 

Prohibited  713.05 

Protestor participation       1902 

Question of patent validity   1701 

Record of, Inter partes       1903.01 

Record of substance required    713.01, 713.04 

Reexamination     2281 

Refused       713.01, 713.02, 713.05, 

713.10, 2314 

Requested in continuing application   706.07(b) 

Requested in Office action  707 

Sounding out    713.03 

Special situations  713.05 

Substance made of record        713.04 

Telephone 408, 713.01, 713.05, 812.01 

Interviews--Continued 

Time allowed    713.01 

Videotape showing 713.01 

Where held  713.01 

Introduction    I 

Invention (See Patent; Rejection.) 

Invention, Brief summary        608.01(d) 

Detailed description    608.01(g) 

Made in this country    2138.02 

Mode of operation 608.01(h) 

Invention, Not originally claimed 603 

Inventive entity, Different   706.02(l) 

Inventive entity, Same 
(overlapping subject matter)    804, 804.03, 822,822.01 

Inventor (see also Applicant)     605 

Common, at least one    201.06,  201.11, 706.02(k), 

2137.01 

Correction  201.03, 1481 

Deceased        409 to 409.01(f), 1820 

Duty of disclosure  2001.01 

Foreign priority        201.13, 2133.01 

Heirs       409.01(a), 409.01(d) 

Insane          409, 409.02 

International application 1812 

Name change   605.04(c), 717.02(b) 

Correction  201.03, 605.04(g) 

Order       605.04(f) 

Typographical, translation error        201.03 

None available      409, 409.03(b), 603 

Proof       409.03(d) 

Proof of irreparable damage   409.03(g) 

Proof of proprietary interest     409.03(f) 

Order of        201.03, 605.04(g) 

Pro se          707.07(j), 713.01 

Refuses to sign       409, 409.03(d), 603 

Representative      400, 401, 1706 

Requirements    2137.01 

Residence 605.02 

Rule    60  201.03, 201.06(a) 

Rule 62             201.03, 201.06(b) 

Self-prosecuted case    707.07(j), 713.01 

Small entity status   509.02 

Unavailable   409, 409.03, 603 

At least one joint inventor available     409.03(a) 

Last known address  409.03(e) 

Proof       409.03(d) 

Proof of irreparable damage   409.03(g) 

Inventor (see also Applicant)--Continued 

Proof of proprietary interest     409.03(f) 

Inventor's Certificate: 

Priority benefit        201.13(a) 

Rejection based on  706.02(e) 

IPC (International Patent Classification) 903.09 

Irreparable damage, Proof of      409.03(g) 

Issue  (See Allowance and issue.) 

Issue Batch Number  502, 1303.01 

Issue Fee: 

Calculation   1306 

Failure to pay      203.07, 712, 1306 

Interfering case, Not applied     2305.04 

Late payment    712 

Petition to accept  712, 1002.02(b) 

Reissue             1455 

Termination of applicant's rights 1306.03 

Issue of patent       1309 

Issue of patent to assignee   307 

Issue slip  903.07 

Issuing in another Group without transfer 903.07(b) 


J 


Jacket (see also File wrapper)      717 

Japanese year system    901.05(a) 

Jepson claim    2129 

Joinder, Linking claim allowed      809.04 

Joinder of inventors    409.03(j) 

Joint application, Definition     201.02 

Joint application, Original oath        602 

Joint application, Signatures     605.04(f) 

Joint inventor: 

Oath            602 

Power of attorney to    402.01 

Refuses to sign application   409.03, 409.03(a) 

Rights of nonsigning    409.03(i) 

Joint inventors       201.02, 201.03, 605, 605.07, 2137.01 

Change in order of names        605.04(f) 

Provisional application       605.07 

Joint owners    605 

Joint to Joint      201.03 

Joint to sole, changing       201.03, 201.06, 

201.07, 201.08, 1481 

File forwarded to Application Division      201.03 

Interference pending    2188.01, 2300 

Joint venture     706.02(l) 

Journal, Patent Office Society      707.06 

Judicial notice       2144.03 

Jumbo patents     707.05(a) 

Jurisdiction: 

Allowed application   714.16,1305 

Appealed application    1210 

Application before court        1216 

Application in interference   2314 

Interference    2314 

Jurisdiction of notary      604.03 


K 


Kinds of application    201 

Kinds of protection under the Patent 
Cooperation Treaty  1817.01 


L 


Lack of good faith  2000, 2001 

Lack of unity of invention  803, 923 

Lack of utility       608.01(p), 706.03(a) 

Language, Offensive   608, 1504 

Language of papers  608.01 

Late payment of issue fee 712 

Law, New interpretation of  1208 

Laws, Patent (see also Statutes)        Introduction 

Legal effect of amendments  2234 

Legal representative refuses to sign    409.03(c) 

Letter (see also Action; Forms and form letters; 
Letter, Examiner's): 

Abandoned after allowance 711.05 

Congressional inquiry     203.08(a) 

Drawing correction, Approval 
by Examiner   608.02(q) 

Drawing correction, Separate letter   608.02(r) 

Drawing transfer        608.02(i) 

Official inquiry        203.08(a) 

Status          203.08 

Letter, Examiner's (see also Action; Forms 
and form letters) 707 

Abandonment   711.02 

Advisory action       706.07(f), 714.13 

Amendment after final rejection       714.13 

Arguments answered  707.07(f) 

Cancellation of nonelected claim        821.01, 821.02 

Claim allowable except as to form 707.07(a), 

707.07(j), 710.02(b), 714.1 

Claim summary     707.07(i) 

Letter, Examiner's -- Continued 

Complete and clear  707.07 

Copies of references    707.05(a) 

Copy to applicant 707.12 

Correction, Period for response       707.05(g), 710.06 

Correction of citation      707.05(g) 

Date stamped    707.11 

Decisions, cited        707.06 

Draftsman's criticism in first 
Office action     608.02(a), 707.07(c) 

Election of species required, 
Concluding paragraph    809.02(a), 809.02(b) 

Examiner signature at end of letter   707.09 

Examiner's Amendments     706.07(f), 1302.04 

File wrapper entry  707.10, 717.01 

Final rejection, Clearly stated       706.07 

Final rejection, Concluding statement     706.07 

Final rejection, Patentability report     705.01(a) 

First action, Includes Draftsman's 
comments        608.02(a), 707.07(c) 

Formal drawing required       608.02(b) 

Formal matters      707.07(a),  707.07(e), 707.07(j), 

 714.02 

Full anticipation, Expressions used   706.02(c), 

706.07(d) 

Informal application    702.01 

Initial sentence        707.04 

Initialed by Examiner     707.08 

Interference forms  2300, 2309.02 

Language in rejecting     707.07(d) 

Mailing             707.12, 1303 

Memorandum cited        707.06 

New Examiner, Primary indicates       707.01 

Notices cited     707.06 

Numbering of paragraphs       707.07(k) 

Omnibus rejection 707.07(d) 

Orders cited    707.06 

Outstanding  requirements 707.07(e) 

Personal matter excluded        707.07(d) 

Piecemeal prosecution     707.07(g) 

Power of attorney invalid or lacking    402 

Preliminary amendment in new case 707.04, 714.09 

Primary signs     706.07, 707.01, 707.09 

Primary's attention required, List  1004 

References, Citation    707.05 to 707.05(g), 

901.04, 901.05(a) 

Letter, Examiner's -- Continued 

Refusing entry of amendment 
after Board decision    1214.07 

Rejection of claim corresponding 
to claim of patent  2307.02 

Remailing 707.13, 710.06, 1303.02 

Requirement for information   706.02(c) 

Restriction requirement       803, 817 

Returned        707.13 

Reviewed by Examiner    707.08 

Shortened time for reply        710.02 

Signature 707.09, 707.10, 1302.13 

Statement of rejection      707.07(d) 

Status letter reply   203.08 

Statutory basis       707.07(d) 

Summary       707.07(i) 

Supplemental    710.06 

Undelivered   707.13, 1303.02 

Letters, Receipt and handling     Chapter 500 

Letters of administration 409.01(b), 409.01(c), 

409.01(e) 

Letters testamentary    409.01(b) 

Library, Scientific (See Scientific and 

Technical Information Center)       706.02(e),  707.05(e), 

717.05, 901.06(a) 

Library Services        901.06(a) 

License agreements under patent, recording  310, 313 

License rights clause     310 

License to file Foreign Application   115, 140, 706.03(s) 

License to file international application 110, 140, 1832 

Licensee, Access        106.01 

Licensing and Review Section    115-151, 

706.03(b), 706.03(s) 

Limited time for reply      2307.02 

Linking claim     809,  809.02, 809.03, 809.04 

Transitional application        803.03(a) 

Traverse of rejection     818.03(d) 

List of countries giving right of priority  201.13 

List of decisions Appendix II 

List of forms. (See Forms and form letters.) 

List of prior art in reexamination  2257 

List of PTO mail boxes (see Box) 

Literature citation in specification    608.01(p) 

Lithographic and drafting firms, Access       101 

Litigation information, Duty to disclose        2001.06(c) 

Litigation involving patent   1442.04 

Litigation not stayed in reissue        1442.02 

Litigation-Reexamination copending  2286 

Litigation related reissue  1404, 1442.01, 1442.02 

Litigation, Stays considered in       1442.05 

Litigation, Stays denied        1442.05(b) 

Litigation, Stays granted 1442.05(a) 

Litigation, Suspension of action        2021.02 

Living matter     2105 

Local representative of attorneys 408 


M 


Machine, Process or product     806.05(e), 

806.05(f), 806.05(g) 

Mail: 

Address       501 

Boxes for PTO (see Box) 

Depositing correspondence 502 

Distribution    501 

Mail--Continued 

Express             502, 513, 711.03(c) 

Identification      502, 503 

Receipt and handling    Chapter 500 

Undelivered   707.13, 1303.02 

Zip Code        502 

Mail date as filing date        513 

Mailing action      707.12, 1303 

In reexamination        2264 

Mailing, Certificate of       512, 711.03(c) 

Maintenance Fees 

Attorney or Agent 

Handling of Requests to Withdraw        2560 

Revocation of Power of Attorney       2560 

Change of correspondence address        2541 

Due Dates for payment     2506 

Facsimile transmission      2511 

Fee address   2540 

Fee amounts   2520 

Information required with payment 2515 

Intervening rights in reinstated patents        2591 

Mailing address for maintenance fee documents     2510 

Method of payment 2522 

Notices 

Reminder, Receipt, Expiration     2575 

Patents subject to payment of     2504 

Payment Informalities     2530 

Refusal to accept and record payments, 
Review of 2580 

Reinstatement, delayed payment      2590 

Maintenance Fees--Continued 

Unavoidable delay basis       2590 

Unintentional delay basis 2590 

Small Entity Status requirements        2550 

Status Requests       2570 

Maintenance Fees (See Fees, Maintenance)        2500 

Mandatory Classification        903.07 

Manual, Authority of    page III 

Manual, Checklist of pages of     page VI 

Manual, Subscription address    title page 

Manual of Classification        902.01 

Manuscript decision   707.06 

Margin, Application papers  608.01 

Mark of applicant 605.04(d) 

Marking in application, erasing at allowance    1302.01 

Marking patent copy   905.04 

Marking, Security 121 

Markush claim     803.02, 2173.05(h), 2173.05(o) 

Antedating reference for        715.03 

Supporting disclosure     608.01(p), 2163.05, 2164.03 

Materiality of information disclosed    2001.05 

Mathematical Algorithms       706.03(a), 2106, 2110 

Matter not in original disclosure 608.04(a) 

Matter not original claimed   603 

MCF (Master Classification File)        902.03(a) 

Means     2181 

Broadest reasonable interpretation  2181 

Equivalent compared to Doctrine of 
Equivalents   2186 

Obviousness   2183 

Prima facie case of equivalence       2183, 2184 

Related issues under 35 U.S.C. 112, first 
or second paragraphs    2185 

Scope of the identification of prior art        2182 

Single means claim  2181 

Mechanical search 717.05 

Memorandum, citation    707.06 

Merger of reexamination and reissue   2285 

Merits, Appeal to Board of Patent Appeals 
and Interferences Introduction 

Method and apparatus or product       806.05(e), 

806.05(f), 820 

Metric (S.I.) system usage  608.01 

Microorganisms, Deposit of  608.01(p), 1823.01 

Microorganisms, Patentability of        706.03(a), 2105, 

2164.06 

Military Officer Notary       604.03(a) 

Misjoinder, Effect on patent    805 

Misjoinder of Inventors       201.03, 1481 

Missing patent copy, Replacement        901.09 

Mode, best  608.01(h) 

Mode of operation 608.01(h) 

Model     608.03 

Model, Return     608.03(a) 

Model at interview  713.08 

Model filed in priority country       201.14(b) 

"Months", Foreign language names        901.05(a) 

Motion (Interference): 

Add or subtract application   2333 

Amend       2333 

Burden of proof       2300 

Content       2337 

Decision requires Primary's attention     2300 

Dissolve        2300 

Motion (Interference)--Continuation 

Miscellaneous     2335 

Notice in application     2333.01 

Preliminary   2333 

Reconsideration       2340 

Substitute sole for joint 2334 

Multiple dependent claims: 

Fee calculation       607, 608.01(n) 

Handling        608.01(n) 

Restriction practice    608.01(n) 

Multiple papers on same issue in protest  . . . . 1901.07(b) 

Multiplicity of claims, Rejection 2173.05(n) 


N 


NAFTA     715.07(c) 

Name: 

Change          605.04(c), 717.02(b) 

Correction  201.03, 605.04(g) 

Order       605.04(f) 

Translation, typographical error        201.03 

Change, File sent to Application Division 605.04(c) 

Corrected by amendment      605.04(g) 

Full first or middle    605.04(a), 605.04(b) 

Mark            605.04(d) 

Order       605.04(f) 

Signature (See Signature.) 

Uniformity with signature 605.04(b) 

Names used in trade   608.01(v) 

National Aeronautics and 
Space Administration    115, 150, 151 

National application    201 

National security, Application affecting        115 to 140 

National stage application (35 U.S.C. 371)  201, 

1893.03, 1893.03(a) 

Compared with National Application  1896 

Continuation or continuation-in-part    1895, 

1895.01, 1896 

Drawings        1893.03(f) 

Filing date   1893.03(b) 

Information disclosure statement        609, 

1893.03(g) 

Petitions related to    1002.02(b), 1002.02(p) 

Priority                1893.03(c) 

Unity of Invention  1893.03(c) 

Naturally occurring article   706.03(a) 

Negative limitation   2173.05(i) 

Negotiation authority     713.05 

New application (definition)    203.01 

Assignment to assistant Examiner 
for examination       903.08(b) 

Assignment to Examining Group 
for examination       903.08, 903.08(a), 903.08(e) 

Classification by Primary 903.08(b) 

Examiner review for completeness        702 

Inspection  903.08(a) 

Transfer        903.08(a) 

Transfer refused        903.08(d) 

New Examiner, Letters of        707.01 

New ground of rejection by the 
Board of Appeals        1214.01 

New ground of rejection on appeal 1208.01 

New matter  706.03(o),  2163.06 

Amendment of disclosure       608.04,  2163.03,  2163.04 

Appealable  608.04(c) 

Claim       608.04, 706.03(o), 2163.03 

Claim, Appealable 608.04(c) 

Claim terminology   608.01(o) 

Continuing application      201.07, 2163.03 

Design application  1503.02 

Disclosure  608.04, 2163.06 

Divisional application      201.06 

Drawing       608.04, 706.03(o) 

File wrapper continuation (FWC)       201.06(b) 

Inherent characteristics        608.04(a), 2163.07(a) 

Objection 706.03(o), 2163.07 

Petitionable    608.04(c), 2163.06 

Preliminary amendment     608.04(b) 

New matter--Continued 

Priority                2163.03, 2163.05 

Reissue application   1411.02 

Rejection 608.04, 706.03(o), 2163.06 

Rule 60 application   201.06(a) 

Rule 62 application   201.06(b) 

Specification, Petitionable   608.04(c) 

Substitute specification        714.20 

Supplemental oath 603 

Trademark definition    608.01(v) 

When entered    14.19, 714.20 

Nonanalogous Art        904.01(c), 1302.14, 2131.05 

Nonelected invention: 

Claims to- 

Added       821.03 

Canceled                821.01, 821.02, 1302.04(c) 

Withdrawn 821.01, 821.02 

Interference    2303 

Nonelected species: 

Claims to- 

Canceled                821.01, 821.02, 1302.04(c) 

Withdrawn 809.02(c), 821.01, 821.02 

Non-English oath or declaration       602.06 

Nonnaturally occurring manufacture or 
composition of matter     2105 

Nonpatent literature    901.06 

Nonprofit organization, claiming status as  509.03 

Nonprofit organizations       509.02 

Nonprovisional application  201.01(a), 506, 601 

Nonreceipt of Office letter   711.03(c) 

Nonresponsive amendment       714.02 

Non sequitur    706.03(c) 

Nonsigning inventor's rights      409.03(i) 

Nonstatutory claim  706.03(a), 2107 

Nonstatutory claim, Canceled    1302.04(b) 

Nonstatutory subject matter   706.03(a), 706.03(a)(1), 

2105 to 2107 

Notary jurisdiction   604.03 

Notary jurisdiction, Military officer     604.03(a) 

Notary jurisdiction, Venue agreement    604.02 

Notary seal   604.01 

Notation of possible interference 2301.01(b) 

Notation on file wrapper: 

of foreign application      202.03 

of parent application     201.11, 202.02 

Notice, Citation        707.06 

Notice of allowability      1302.03 

Notice of allowance (see Allowance and issue)     502, 

1303 

Assigned application      308 

Deceased inventor 1303.03 

Reissue application   1455 

Secrecy order  application  120, 130, 1304 

Undelivered   1303.02 

Notice of appeal        1205 

Reexamination     2273 

"Notice of informal patent application" 
form (PTO-152)      707.07(a) 

"Notice of references cited"  form 
(PTO-892)   707.05(b), (c), (e) 

Notice of reissue application     1431 

Notices, maintenance fees 2575 

Notices, Purpose        Introduction 

Notices, maintenance fees 2575 

Nuclear material application    150, 151, 706.03(b) 

Nullification of double patenting rejection   804.01 

Number, Drawing reference character   608.01(g) 

Numbering of papers in file wrapper   717.01(a) 

Numbering paragraphs of letter      707.07(k) 


O 


Oath: 

After appeal    1212 

Antedating patent for interference 
(Rule 608)  2308 to 2308.02 

Antedating reference. (See also  Affidavit, 
Antedating reference, Rule 131.)        715 

Inspection during interference (Rules 131, 
and 608(b)  2312 

Non-English   602.06 

Original 
(see also Oath, Original, Rule 63)  602 

Plant application (Rule 62)   1604 

Reissue (Rule 175)  706.03(x), 1414, 1444 

Supplemental    603 

Supplemental and allowance  603.01 

Traversing rejection (Rule 132)       716 

Oath, Antedating reference (see also Affidavit, 

Antedating reference, Rule 131)       715 

Oath, International application       1893.01(e) 

Oath, Original, Rule 63       602 

Administering      604 

Amendment 602.01 

Attorney administers    604.06 

Oath, Original, Rule 63--Continued 

Consular certificate    604.04 

Date of execution 602.05 

Declaration in lieu of, Rule 68       602 

Defective 602.01, 602.02, 602.03 

Delayed filing      506, 602.05 

Divisional application      602.05(a) 

Execution 604 

Facsimile 605.04 

Foreign execution 602.04 

Foreign filed applications listed 201.14, 201.14(c), 

202.04 

Invalid, By attorney in case    604.06 

"Joint"             602, 605.07 

Jurisdiction of notary      604.03 

New required    602.01, 602.02 

Notary          604.03 

Notary certificate  602.01 

Notary jurisdiction   604.03 

Old at time of filing     602.05 

Seal            604.01 

Seal, Foreign application 602.04(a) 

Seal, Not required  604.01, 604.03(a) 

"Sole"          602 

Stale       602.05 

Substitute  602.02 

Venue       604.02 

Oath, Supplemental, Rule 67   603 

After allowance       603.01, 714.16 

Change of inventorship      201.03 

New matter  608.04 

Rule 60 application   201.06(a) 

Object of invention   608.01(d) 

Objection contrasted with rejection   706.01 

Objection, Dependent claims   608.01(n) 

Objection to formal matters, 
When made   707.07(a), 707.07(j), 

710.02(b), 714.14 

Obvious error, Correction 1302.04, 1305 

Obviously informal application      702.01, 704 

Obviousness   706.02,706.02(j),2141-2146 

Age of reference        2145 

Analogous prior art   2141.01(a), 2145 

Form paragraphs used for rejection  706.02(m) 

Number of references    2145 

Ordinary skill, level of        2141.03 

Prima facie case        2142-2143.03, 2144.02 

Obviousness--Continued 

Predictability      2143.02 

Rebuttal against        2145 

Process claims, nonobvious product  2116.01 

Provisional rejection     706.02(k) 

Ranges          2144.05 

Rationale for     2144-2144.09 

Adjustable, making  2144.04 

Aesthetic design changes        2144.04 

Automating manual activity  2144.04 

Duplication of parts    2144.04 

Elimination of element or step      2144.04 

Equivalence, art-recognized   2144.06 

Genus-species     2144.08 

Integral, making        2144.04 

Omission of element or step   2144.04 

Portable, making        2144.04 

Proportion changes  2144.04 

Purifying old product     2144.04 

Ranges          2144.05 

Rearrangement of parts      2144.04 

Reversal of parts 2144.04 

Separable, making 2144.04 

Sequence, change in   2144.04 

Shape changes     2144.04 

Size changes    2144.04 

Species-genus     2144.08 

Rebuttal arguments by applicant       2145 

Teaching away in prior art  2141.02, 2145 

Offenlegungsshriften    901.05(b) 

Offensive language  608, 1504 

Offer to sell     706.02(c), 2133.03(b) 

Offer to surrender original patent  1416 

Office action     707 

Office action in reexamination      2260, 2262 

Office date stamp 505, 506, 710.01(a), 714.18 

Office hours    510 

Office of Administration        1002.02(b) 

Office of Assistant Commissioner 
for Patents         409.01(b), 409.03, 

409.03(h), 409.03(i), 

 409.03(j), 506.02, 1448, 1449, 

 1451, 1901.03, 1901.05, 1901.06, 

1901.07(a), 1902.01, 2000, 2001.03, 

2013, 2283-2286 

Office of Deputy Assistant 
Commissioner for Patents        2239, 2268, 2281 

Office of Enrollment and Discipline   406, 714.01(a) 

Office of Finance 502, 2248 

Office of National and International 
Application Review  2226 

Office of Patent Classification       903, 903.05, 903.09, 

905.02 

Office of Petitions   1002.02(b) 

Office of Publications      101, 2283, 2287 

Office of Quality Review        1302.04, 1308.03 

Office of Solicitor   2220 

Office, Special Program Law   201.03, 506.02, 720, 

720.01 

Office proceedings, Concurrent      2282 

Office Services Division        608.02 

Official action       707 

Official cross-reference, Order of  903.06 

Official Gazette        103, 707.06, 1703 

Official Gazette, Claim       1302.09 

Official Gazette, Drawing figure        1302.10 

Official Gazette, Notice of certificate       2288, 2291 

Official Gazette, Notice of reexamination 2229 

Official Gazette, Status of oldest application      203.08 

Official inquiries  203.08(a) 

Official Notice       2144.03 

Old application (definition)    203.03 

Old combination       2173.05(j) 

Old combination, Restriction    806.05(b), 820.01 

Omission in response, inadvertent 710.02(c) 

Omnibus claim     706.03(d), 2173.05(r) 

Cancellation    1302.04(b) 

On Sale       706.02(c), 2133.03, 2133.03(b) 

Affidavit or declaration        715.10 

Anticipation    2133.03(b) 

Buyer       2133.03(b) 

Commercial activities     2133.03,  2133.03(c), 

2133.03(e), 2133.03(e)(1) 

Completion of the invention   2133.03, 2133.03(b), 

2133.03(c), 2133.03(e)(1), 

2133.03(e)(3) 

Admission of completion by 
37 CFR 1.131 affidavit      2133.03(c) 

Definition of     2133.03(b) 

Conditional sale        2133.03(b) 

Nonprofit sale      2133.03(b) 

Sale of rights      2133.03(b) 

Single sale   2133.03(b) 

Delivery of offered goods 2133.03(b) 

On Sale--Continued 

Evidence of (none-prior art 
publications)     2133.03(b) 

Experimental use (see also Experimental 
 Use)     2133.03, 2133.03(e) 

Goods "on hand"       2133.03(b) 

"In this country" 2133.03(d) 

Invention 2133.03(c) 

Intent to sell      2133.03(b), 2133.03(e)(2) 

Offer for sale      2133.03(b) 

Policy considerations     2133.03 

Reduction to practice     2133.03(c), 2133.03(e) 

Sale by Inventor or associate     2133.03(b) 

Sale by Third party   2133.03(b) 

Testing by Third party      2133.03(e)(5), 

2133.03(e)(7) 

Secrecy             2133.03, 2133.03(b) 

Supervision and control over 
invention 2133.03(e)(5), 2133.03(e)(7) 

Test for determining if impermissible 
sale occurred     2133.03(b) 

Operative 2164.07,  2164.08(b) 

Operative example 608.01(p) 

Operative, Showing  608.03, 716 

Opposition to issue of patent     1901 

Oral hearing in reexamination     2276 

Oral hearing on appeal      1209 

Order 3311  714.16(d) 

Order 3311 amendments     714.16, 714.16(d) 

Order, Citation of    707.06 

Order, Classification     902.04 

Order of examination    707.02, 708 to 708.03 

Patentability report    705.01(c) 

Order of papers in file wrapper       717.01(a) 

Ordering: 

Abandoned file      711.04(b), 905.03 

Cross-references        903.06 

Foreign patent      901.05(c) 

Patented file     711.04(b), 905.03 

Photocopy 905.01 

Publication   901.06(b) 

Reexamination, decision       2246, 2247 

Soft copy 905.02 

Subclass list     902.03(c) 

Orders, Purpose         Introduction 

Original application (See also 
Nonprovisional)             201.04(a), 506, 601 

Original carries title to some 
continuing applications       201.12 

Original disclosure, 
Inherent characteristics        608.04(a) 

Outstanding requirements        707.07(e) 

Overcoming a reference, Right of priority 201.15, 

706.02(b) 

Overlapping applications, 
Same applicant          709.01, 715.01(a), 804, 

 804.02, 822, 822.01, 2315.01 

Overlapping applications, 
Same assignee       706.02(f), 706.02(k), 706.02(l), 

709.01, 715.01(b), 822, 

2315.01, 2302 

Overlapping claims  804.02 

Owner's representative      Chapter 400 

Ownership and assignment        Chapter 300, 706.02(l) 

Ownership at time invention made        706.02(k), 706.02(l) 

Ownership carried over by assignment    201.12 


P 


PALM    102, 508.01, 508.03, 711.04(b), 

 1704, 1705, 2229, 2232, 2233, 2235, 2237 

Application Location    905.05 

Paper Correlating Office        508.03 

Paper, "Easily Erasable"        608.01, 714.05, 714.07, 714.19 

Paper number    714.18, 714.21 

Paper number of print     717.01(b) 

Papers: 

Associated with file    101 

Depositing  502 

Distribution    508 

File wrapper    717.01, 717.01(a) 

Identification      502, 503 

Receipt and handling    Chapter 500 

Received after patenting and handling     508.02 

Signature required  402 

Submitted in reissue litigation       1403 

Unmatched 508.03 

Wrong Group   508.01 

Parent application  201.04 

Parent application data, Cross-noting     201.11, 

202.01, 202.02 

Parent application inspected    904 

Parent carries assignment to some 
continuing applications       201.12 

Paris Convention        201.13, 509.02 

Article 4 Cited       201.13, 201.13(b), 201.14(b) 

Partial signatory authority   1005 

Patent: 

1836 (present) series     901.04 

A.I. series   901.04 

Arrangement in Group    901.07 

Assignment  301 

Borrowing from Group    901.08 

Citation handling 1922 

Citation of prior art in        1920, 2202 

Citation service on patentee    2208 

Claim copied (See Claim copied from patent.) 

Classification change     903.05 

Classification indices      902.03, 902.03(a) 

Copy, Reexamination certificate on  2292 

Copy in reexamination request     2219 

Cost of copy    905.02 

Design series     901.04 

Design vs. Utility  1502, 1508 

Effective date      706.02(a), 715, 715.01, 2133.01 

Expiration  2211, 2250 

Files       905.03 

Foreign. (See Foreign patent.) 

Index       902.03(b) 

Interference    2306 to 2308.03 

Joint to sole     1481 

Jurisdiction    1305 

Law, opinions not given       713.02 

Laws (see also Statutes; Statutes 
Revised) Introduction 

Litigation relating to reissue      1442.04 

Marking Examiner's copy       905.04 

Missing copy    901.09 

Ordering soft copy  905.02 

Owner, service of citation on     2205, 2206 

Owner's address in reexamination        2222 

Pamphlet        703 

Papers received       508.02 

Plant       901.04, Chapter 1600 

Post-issuance information 
updating        2501 

Prior art citation in     2003.01 

Printing priority 1309 

Reference (See Reference.) 

Reissue series      901.04 

Simultaneous issue  1306.02 

Patent--Continued 

Soft copy 905.02 

Sole to joint     1481 

Statutory types of subject matter 706.03(a) 

Surrender 1416 

Statutes (see also Statutes; 

Statutes Revised) Introduction 

System, Constitutional basis for         Introduction 

Terms and extensions    1309.01 

Transfe       r        903.05 

Transfer of rights in      509.02 

Type; design vs. utility         1502, 1508 

Utility series       901.04 

Utility vs. Design   1502, 1508 

X series         901.04 

Patent Academy           713.01 

Patent and Trademark Office: 

Address       501, 502 

Business hours      510 

Employees, Property Interest in patent      309 

Publications    Introduction 

Development and Use of Patent 

Classification Systems      903.02 

Directory of Attorneys and Agents 1706 

Official Gazette        1703 

Patent Classifier's decision     903.08(f) 

Patent Cooperation Treaty (see also 
 International Application): 

Administrative Instructions   App AI 

Agent       1807 

Amendment before the Designated Ofice..1893.01(b)(2) 

Amendment of claims before 

International Bureau    1853 

Applicant 1810 

Applicant for United States Receiving Office     1805 

Basic flow  1842 

Classification of Application      903.08(d) 

Classification of Subject Matter        1879 

Common Representative     1807 

Concepts, Major       1801 

Country codes      1851 

Definitions   1802 

Design patents      1501 

Designated Office  1893.01(a) 

Designation of States     1817.01 

Fees            1827, 1893.01(c) 

Filing date requirements        1810 

Patent Cooperation Treaty--Continued 

Foreign filing license      1832 

Foreign Patent Citation Codes     1851 

Form PCT/ISA/210        1844 

Form PCT/IPEA/401 1865 

Form PCT/IPEA/408 1878 

Form PCT/IPEA/409 1879 

Form PCT/IPEA/416 1879 

Gazette       1801 

International Bureau    1801 

International Preliminary Examination     1860 

International Preliminary 

Examination Report  1879 

Written opinion       1878 

International Publication 1857 

International Search Report   1844 

International Searching Authority 1840 

Member Countries        1817 

National procedure  1893 

Numbering 1812 

Priority                201.13(b), 1828, 1893.03(c), 1895 

Priority document 201.13(b)1828 

Publication   1857 

Receiving Office        1801 

Receiving Office Procedure  1801 

Record Copy Transmittal       1801 

Regular Filing in Each Designated State       1801 

Representation before the Designated Office   402 

Response to Invitation Concerning Lack 

of Unity of Invention . . . . 1850, 1875.02, 1893.03(d) 

Response to written opinion   1878.02 

Revocation of agent   1808 

Schedule of Fees        1827 

Search Report     707.05, 1844 

Sequence Listings 1823.02, 1848 

Signature missing 1820 

Unity of Invention  823, 1850, 1875, 1893.03(d) 

Patent Cooperation Treaty, 
Administrative Instructions: 

101 Cited 1802 

102 Cited 1821 

103 Cited 1862 

105 Reproduced      1834 

204 Reproduced      1823 

205 Reproduced      1824,1853 

207 Cited 1812,1826 

208 Reproduced      1823.02 

Patent Cooperation Treaty, Administrative 
Instructions--Continued 

209 Reproduced      1823, 1823.01 

303 Cited 1821 

310 Reproduced      1825 

326 Reproduced      1859 

404 Reproduced      1857 

414 Reproduced      1859 

502 Reproduced      1850 

503 Cited 1851, 1878, 1879 

505 Cited 1844 

507 Cited 1844, 1879 

508 Cited 1844, 1879 

513 Reproduced      1847 

603 Reproduced      1875.02 

604 Reproduced      1879 

605 Reproduced      1872 

606 Reproduced      1880 

607 Reproduced      1876 

610 Cited 1877 

611 Cited 1851, 1879 

Patent Cooperation Treaty Articles: 

2 Cited       1802 

3 Reproduced    1812 

Cited       1850 

5 Reproduced    1823 

6 Reproduced    1824 

7 Reproduced    1825 

Cited       1812 

8 Cited             201.13(b), 1826 

9 Cited             1805 

11 Reproduced     1810, 1825 

Cited       601.01(a)1801, 1810, 1825, 

 1893.03(b), 1896 

12 Cited        1801, 1823, 1840 

14 Cited        1801, 1820 

15 Cited        1801, 1840, 1843 

16 Cited        1801, 1840 

17 Reproduced     1843 

Cited       1840.01, 1844, 1850,1871 

18 Reproduced     1844 

Cited       1840 

19 Reproduced     1853 

Cited       1801, 1840, 1844.01, 1853, 1871 

1878, 1879, 1893.01(a)(2), 1893.01(b)(2) 

20 Cited        1801, 1810, 1857, 1893.03(f) 

21 Reproduced     1857 

Patent Cooperation Treaty Articles--Continued 

Cited       1801 

23 Cited        201.13(b) 

27 Cited        1801, 1805, 1832 

28 Cited        1801 

29 Reproduced     1857 

31 Reproduced     1864.02, 1864.03, 

1865, 1869, 1873 

Cited       1864.03 

32 Reproduced     1862 

33 Reproduced     1878.01(a), 1878.01(a)(1), 

1878.01(a)(2), 1878.01(a)(3) 

Cited       1860 

34 Reproduced     1862, 1874, 1875, 1878, 1878.02 

Cited       1847, 1860, 1864.01, 1871, 1875, 

 1878, 1878.02, 1879, 1893.01(b)(2) 

35 Reproduced     1879 

36 Reproduced     1879.02, 1879.03 

37 Reproduced     1880 

38 Reproduced     1879.04 

49 Cited        1864.04 

64 Cited        1803 

Patent Cooperation Treaty Rules: 

2 Cited             1802 

4 Cited             1817, 1821, 1864.02 

4.1 Cited 201.13(b) 

4.3 Cited 1821 

4.9 Cited 1817.01 

4.10 Cited  1893.03, 1896 

4.11 Reproduced       1819 

4.14 Reproduced       1817.02 

Cited       1893.03 

4.15 Reproduced       1820 

Cited       1820 

5 Reproduced    1823, 1823.02 

Cited       1826 

6 Reproduced    1824 

7 Reproduced    1825 

8 Reproduced    1826 

11 Cited        1812, 1893.03(f) 

13 Reproduced     1823.01, 1823.02 

Cited       1850, 1877, 1893.03(d) 

17 Reproduced     201.13(b) 

17 Cited        201.13, 1801, 1879 

18 Cited        1805 

19 Cited        1805 

20 Cited        1805 

Patent Cooperation Treaty Rules--Continued 

22 Cited        1801, 1832 

23 Cited        1801, 1840 

24 Cited        1890 

26 Cited        1820, 1876.01, 1893.01(d) 

33 Reproduced     1843 

Cited       1843 

34 Cited        1801, 1843 

35 Cited        1840 

36 Cited        1840 

37 Cited        1801 

38 Cited        1801, 1826 

39 Reproduced     1843 

40 Reproduced     1850 

41 Reproduced     1852 

42 Cited        1801, 1844, 1844.01 

43 Cited        1801, 1840, 1844, 1878, 1879 

44 Cited        1801 

46 Reproduced     1853 

Cited       1801, 1871, 1878 

47 Cited        1801, 1890, 1893.01(a)(1), 1883.01(b)(1) 

48 Cited        1801 

52 Cited        1801 

53 Cited        1860, 1868, 1871 

54 Reproduced     1864.02 

Cited       1860 

55 Cited        1860, 1868 

56 Reproduced     1873 

57 Cited        1860, 1867, 1868 

58 Cited        1860, 1862, 1867 

59 Cited        1862 

60 Reproduced     1868 

61 Reproduced     1881 

Cited       1869 

62 Reproduced     1871 

63 Cited        1862 

64 Reproduced     1878.01(a) 

Cited       1879 

65 Reproduced     1877.01(a)(2) 

66 Reproduced     1864.01, 1870, 1878.02 

Cited       1860, 1871, 1878, 1878.02, 1879 

68 Cited        1875, 1875.01 

69 Reproduced     1879.01 

70 Cited        1875, 1878.01, 1878.02 

71 Reproduced     1879.02 

72 Reproduced     1879.03 

Cited       1862 

Patent Cooperation Treaty Rules--Continued 

75 Cited        1862 

77 Cited        1862 

80 Cited        1834.02 

81 Reproduced     1834.02 

82 Reproduced     1834.02 

83 Cited        1864.04 

86 Cited        1801 

22 Cited        1801 

90 Reproduced     1808, 1880 

91 Reproduced     1836 

Cited       1876.01, 1893.01(d) 

92 Reproduced     1834 

Cited       1834, 1834.01, 1878.02 

Patentability (See Rejection.) 

Patentability report    705 to 705.01 

Allowance or abandonment        705.01(d) 

Appeal          705.01(a) 

Count       705.01(c) 

Date status   705.01(c) 

Dispute between examiners 705.01(a) 

Drawing             608.02(n) 

Final action    705.01(a) 

Forms for action        705.01(a) 

Improper                705.01(e) 

Initiate                705.01 

Interviews  713.01 

Limitation as to use    705.01(e) 

Practice suspended  705 

Primary decides propriety 1004 

Print of drawing        608.02(n), 705.01(d) 

Purpose       705.01(e) 

Recording 705.01(c) 

Restriction, Effect on      807 

Search          705.01(a), 705.01(b) 

Sequence of examination       705.01(b) 

Transfer of appeal  705.01(a) 

Patentability Statement       609, 1302.14 

Patentable novelty, pointed out       714.04 

Patentable Subject Matter 

Computer Programs 2106 

Disclosed but not claimed 706 

Living Subject Matter     2105 

Mathematical Algorithms       2106 

Patentanmeldung       901.05(b) 

Patented file       905.03 

Patented file, ordering       711.04(b) 

Patented file, Reissue application notice 1431 

PatentIn computer program 2430 

Patents of addition, foreign    901.05(b) 

Payment of fees             509 

PCT (see Patent Cooperation Treaty) 
Classification of application     903.08(d) 

Pencil notations, Erased at allowance     1302.01 

Pending application as prior art        706.02(f), 

706.02(k), 901.03 

Pending application charge location   905.05 

Pending application preserved in secrecy        101 

Pending applications as references  706.02(f) 

706.02(k), 901.03 

Period for response   710 

After Board decision    1214.01 

After final   706.07(f) 

In transitional application   706.07(g) 

After interference  710.02(b), 2363.02 

Amendment after       714.17 

Claim copied from patent        710.04(a) 

Claims all allowed  707.07(a), 710.02(b), 714.14 

Computed        710.01(a), 710.05 

Copying claim from patent does not 
extend statutory period       710.04(a) 

Correction of citation      707.05(g), 710.06 

Date of receipt of amendment    710.01(a), 710.05 

Defective Office action       707.05(g), 710.06 

Difference between shortened statutory 
period and time limit     710.02(d) 

Extension 710.02(d), 710.02(e), 1003 

Holiday, Saturday, or Sunday 
expiration of time  505, 710.05, 710.01(a) 

Incomplete response   710.02(c), 711.02(a), 714.03 

Less than six months    710.02 to 710.02(e) 

Miscellaneous factors     710.06 

Petition                1002 

Property rights under AEC and NASA Acts       150 

Remailing 707.13, 710.06 

Restarting  710.06 

Saturday, Expiration of time    505, 710.01(a), 710.05 

Secrecy order application 130 

Shortened, Approval   1003 

Shortened, Extension    710.02(d), 710.02(e) 

Shortened statutory period  710.02, 710.02(b), 

710.02(e) 

Period for response--Continued 

Shortened statutory period, 

Distinguished from time limit     710.02(d) 

Shortened statutory period, When used     710.02(b) 

Statutory period        710.01 

How computed    710.01(a) 

Suggesting claims 710.02(c), 2305.02 

Sunday, Expiration of time  505, 710.01(a), 710.05 

Supplemental action   710.06 

Time computation        710.01(a), 710.05 

Time limit action 710.02 

Time limit action, When used    710.02(c) 

Two periods running   710.04, 710.04(a) 

Withdrawal of attorney or agent during      402.06 

Periodicals         901.06, 901.06(a) 

Period of enforceability        2204, 2211 

Permanent ink       608.01, 714.07, 714.19 

Perpetual motion        608.03, 706.03(a), 2164.07 

Persons who may cite prior art in reexam        2203 

Pertinent prior art   904.02 

Petition: 

Abandonment holding   711.02, 711.03(c), 711.03(d) 

Abandonment holding, 
Examiner's statement    711.03(d) 

Accepting late issue fee        712, 1002.02(b) 

Access to application     103, 1002.02(b) 

Access to interference case   1002.02(f) 

Add inventor in provisional application       1002.02(q) 

After forfeiture        712 

Amend after appeal decision   1002.02 

Amend with appeal 1207 

Attorney withdrawal   1002.02(b) 

Biotechnology processes under 
35 U.S.C. 103(b)        706.02(n) 

Board of Patent Appeals and 
Interferences involved      1002.02(f), 1002.02(g), 

1002.02(j) 

Cancer          1002.02(c) 

Certificate of Correction 1002.02(d) 

Change in inventorship      1002.02(p) 

Commissioner's duties     Introduction, 1002 

Common ownership situation  706.02(k) 

Conditional, to revive      711.03(c) 

Converting a nonprovisional 
to provisional      1002.02(b), 1002.02(c), 

1002.02(p), 1002.02(q) 

Correction of inventorship  201.03, 1002.02(b) 

Petition--Continued 

Defer issuance      1002.02(b) 

Delegation of Commissioner's authority      1001.01 

Denial of reexamination request       2248 

Disclaimer related  1002.02(b) 

Divisional Reissue  1002.02(b) 

Entry of Amendment  1002.02(d), 1207 

Express abandonment after notice 

of allowance    1002.02(b) 

Expunge papers from file        1002.02(b) 

Expunge trade secret material     724.05, 1002.02(b) 

Extension of time 710.02(e), 714.17, 1002.02(b) 

Filing date   506.02, 601.01, 601.01(b), 1002.02(b) 

Final rejection       1002.02 

Foreign filing license      140 

HIV/AIDS        1002.02(c) 

Inspection  103 

Interference    1002.02(f) and (g), 2344 

Late paper in reexamination   2268 

Late payment of issue fee 1002.02(b) 

Late priority papers    1002.02(b) 

Maintenance fees, accept and record   1002.02(b), 

2580 

Maintenance fees, delayed 
payment/reinstatement     1002.02(b), 2590 

Make special    708.02, 1002.02(b) and (c) 

Matter subject to  Introduction, 706.01, 1002 

Merge reexaminations    2283 

Modification of secrecy order     120 

New matter  608.04(c) 

Nonsigning inventor   409.03, 1002.02(b) 

Patent term extension . . . . . . . . . . . . . . . . .1002.02(b) 
Period for filing 1002 

Premature final rejection 706.07(c) 

Procedure 1002.01 

Public use proceedings      1002.02(b) 

Recision of secrecy order 120 

Reconsideration of decision on motion     1005.07, 

 2340 

Refused assignment  313, 317 

Relating to PCT international application and/or 
national stage application  1002.02(p) 

Restriction requirement holding       821.01 

Retroactive foreign filing license  140 

Revival             711.03(c),1002.02(b) 

Revival, Conditional    711.03(c) 

Sequence rules      1002.02(c)(2) 

Petition--Continued 

Special status      708.02, 

1002.02(b) 

Strike issue deferred     2021.01 

Strike patent application 1002.02(b), 1448, 2013 

Supervisory authority     1002.02(b), (c) 

Suspend rules     1002.02(b) 

Rule 48 (inventorship)      201.03 

Trademark related 1002.02(i) 

Withdrawal from issue     1002.02(b), 1308 

Withhold from issue   1002.02(c) 

Petitionable matter   706.01 

Phi, Greek letter usage       608.01(g) 

Philippines-United States search exchange . . . . . . . 1711 

Photocopy Orders        905.01 

Photograph as drawing     608.02 

Photoprint, Ordering    905.01 

Piecemeal prosecution     707.07(g) 

Plant Convention, UPOV      1612 

Plant patent application        201, Chapter 1600 

Action          1610 

Advertising   1610 

Affidavit 1610 

Agricultural Research Service     1608, 1609 

Allowance 1611 

Asexual reproduction    1601, 1605 

Bacteria        1601 

Claim       1605, 1610 

Color drawing     1606 

Color identified        1605 

Definitions   1601 

Department of Agriculture 1608 

Deposit       1605 

Description   605 

Duplicate papers        1603, 1605, 1610 

Elements of application       1603 

Examination   1608 

Examiner's amendment    1610 

Executive Order       1608 

Issue       1611 

Laudatory expressions     1610 

Letter of transmittal     1608 

Method claim    1605 

Oath            1604 

Original and duplicate files    1603, 1610 

Parts       1603 

Plant varieties excluded        1601 

Plant patent application--Continued 

Report of Agricultural Research Service       1609, 1610 

Rules applicable        1602 

Signature 1603 

Specification     1605, 1610 

Specimens 1607 

Statutory basis       1601 

Tubers          1601 

Plant patent series   901.04 

Postcard, self-addressed        503, 717.01(a) 

Post classifier             903.02(c), 903.08(d), 903.08(e), 903.10 
Requesting consideration by   903.08(d) 

Post Office, Depositing papers in 502 

Post Office address: 

Applicant 605.03, 717.02(b) 

Attorney        601.02 

Petitioner  103 

Postal Emergency (Public Law 92-34)   511 

Postal Service Emergency Contingency Plan 511 

Power of attorney 402 

Application in interference     402.08 

Application oath or declaration includes        601.02 

Assignee revokes        402.07 

Associate attorney  402, 402.02, 406 

Attorney not of record      714.01(c) 

Canadian patent agent     402 

Change in plurality of applications or patents      402 

Coinventor  402.01 

Death of applicant  409 to 409.01(f) 

Death of principal attorney   406 

Exception as to registration    402.01 

General for international application     1807 

Invalid             402 

Joint applicant       402.01 

Limited recognition   402.01 

Notice of revocation    402.05 

Post Office address   601.02 

Revocation  402.05, 402.07, 402.08 

Secrecy order cases   120 

Unregistered attorney     402, 402.01 

Withdrawal of attorney      402.06 

Withdrawn in patent   2223 

Power to inspect        104, 402, 713.05 

Power to inspect, approval  104 

Power to inspect, Disbarred attorney    105 

Practitioner's names on patents       1309 

Preamble, Design application    1503 

Preamble, Jepson claim      2129 

Preamble, Weight given      2111.02 

Preliminary amendment     506, 707.04, 714.09 

Preliminary amendment: 

Excess claims     506, 714.10 

Initial sentence        707.04 

New matter  608.04(b) 

Preliminary handling of public use or on sale     2122 

Preliminary hearing, Public use proceeding  720.03 

Preliminary Statement     2321 to 2329, 2331 

Premature final rejection 706.07(c) 

Prima facie showing, Public use proceeding  720.02 

Primary Examiner        705.01(a), 706.07(c), 

707.01, 707.04, 710.02(b), 711.03(a), 

713.02, 713.10, 714.16(d), 1901.07(c), 

1902.01(b),1903, 1903.01, 2271 

Primary Examiner, Actions requiring 

personal attention  705.01(a), 707.01, 

707.09, 710.02(b), 713.02, 714.16(d), 1004 

Primary Examiner, name on file wrapper      1302.13 

Print of drawing                608.02(m) 

Additional  608.02(m) 

Alteration  608.02(m) 

Colored       608.02(m) 

Distribution    508 

Examiner's notation on      608.02(m) 

File wrapper    508, 717.01(b) 

Kept in examining group       608.02(c) 

Marking       608.02(m) 

New application       508 

New or substitute drawings  508 

Patentability report    705.01(d) 

Returned drawing        608.02(y) 

Sketch          608.02(v) 

Printed matter nonstatutory   706.03(a) 

Printer Waiting             708.01, 1302.04, 1305, 1309.02 

Printer's Proof, Correction   1309.01 

Printing date, declassified material    707.05(f) 

Printing practitioners names on patents       1309 

Printing priority   1309 

Prior Art (see also Reference)      901 

Admissions as     2129 

Analagous 2141.01(a) 

Equivalents   2144.06 

Foreign application as      2135.01 

Level of ordinary skill       2141.03 

Patents as  706.02(a), 2126, 2132, 2136 

Prior Art--Continued 

Scope and content of    2141.01 
for "means" limitations       2182 

Statutory Invention Registrations as    2136 

Suitability of      2144.07 

Well-known in the art     2144.03 

Prior art citation in patent:     2202 

Content       2205 

Copies of prior art   2205 

English Translations    2205 

Explanation of pertinence 2205 

Flowcharts  2206 

Handling        2206 

Sample letter     2205 

Service on patent owner       2205, 2206 

Time for filing       2204 

Prior art copies in reexamination request 2218 

Prior art filed by protestor    1901.02, 1901.03 

"Prior art" on drawing      608.02(g) 

Prior Art Statement   609, 1893.03(g) 

Prior Art Statement in provisional application      609 

Prior Art Statement in reissue application  1418 

Prior Art Statement Updating    2003.03(a) 

Prior art used in determining reexamination 
request             2244 

Prior Examiner's action       704, 706.04, 713.01 

Priority: 

Foreign application (see Foreign application)     201.13 

Proper identification     201.14(d) 

Formal requirements   201.14 

International application 1828, 1893.03(c) 

Inventor's certificate      201.13(a) 

Overcoming reference    201.15 

Patent printing       1309 

Prior U.S. application      201.11 

Provisional application       706.02 

Time charts   2138.01 

Time for filing       201.13 

Priority document, International application    1828 

Priority practice   201.14(b), 201.14(c), 706.02 

Priority right          201.13 

Private use (See also Public Use) 2133.03(a) 

Proceedings, Termination of   201.11, 711.02(c) 

Process in examining group of reexamination   2233 

Process of making and product made  806.05(f) 

Product and process of using    806.05(h), 2173.05(p) 

Product by process  2113, 2173.05(p) 

Product of human ingenuity  2105 

Product of nature 706.03(a) 

Program Management System (PMS)       2238 

Prolix claim            2173.05(m) 

Proof Burden of             2112, 2112.01, 2113 

Proof, Printer waiting      1309.01 

Proof of authority of Administrator 
or Executor         409.01(b) 

Proof of foreign filing       201.14 

Proof of irreparable damage   409.03(g) 

Proof of unavailability or refusal to sign  409.03(d) 

Proofreading of action      707.08 

Proper identification of foreign priority 201.14(d) 

Proper multiple dependent claim       608.01(n) 

Property rights statement 150 

Contents of   151 

Property rights under AEC and 
NASA Acts   115, 150, 151 

Proprietary interest, Proof of      409.03(f) 

Pro se applicant                401, 707, 707.07(j), 713.01 

Prosecution, Piecemeal      707.07(g) 

Prosecution, Reopening after allowance      1308.01 

Prosecution, Reopening after appeal decision    1214.07 

Prosecution, closed, Application 
allowable except for form 707.07(j), 

710.02(b), 714.14 

Prosecution of Secrecy Order application        130 

Prosecution reopened after court decision 1216.01 

Protective order material 724-724.05 

Protective order material submission    724.02 

Protest 

Access by protestor   1901.05 

Acknowledgment of protest 1901.05 

Against issuance of patent  1901 

Appeal by protestor   1904 

Certificate of service      1901.03 

Clarification from protestor with access        901.06 

Comments of applicant     1901.06 

Complete        1901.03 

Copies of documents   1901.03 

Examination   1901.07 

Examiner treatment  1901.06 

Filed in reissue where patent is in 
interference    1449, 1901.06 

Handling        901.05 

Improper protest        1901.03 

Information which can be relied on  1901.02 

Protest--Continued 

Interview 1902, 1902.01, 1902.01(a), 

1902.01(b), 1903.01 

Involving fraud, good faith, lack of candor or 
violation of duty of disclosure issue     2013 

Multiple papers on same issue     1901.07(c) 

New protest   1901.07(o) 

Notice of interview   1902.01(c) 

Office handling       1901.05 

Oral communication with protestor 1907 

Public filed    1901 

Reissue application   1901.04 

Reissue litigation  1901.03, 1901.04 

Requirement for Information   1901 

Review of adverse decision  1906 

Service of Copies 1901.07(a) 

Service on patentee or applicant        1901.03 

Timeliness of protest     1901.04 

Trade secret information        724, 1901.02 

Treatment by examiner     1901.06 

Under Rule   1901 

When submitted      1901.04 

Who can file    1901.01 

Protestor response  1901.07(b) 

Protestor participation in examination      1901.07 

Protestor participation in interview    1902 

Protestor-Service of copies on      1901.07(a) 

Provisional application       201.04(b), 201.11, 

 601, 601.01(b), 706.02 

Abandonment   201.04(b), 711.03(e), 201.11 

Access          103, 104 

Assignment of     302.03 

Assignment of application claiming 
 benefits of    306.01 

Completeness    506, 601.01(b) 

Conversion to     601.01(c), 201.04(b) 

Correction of inventorship  201.03 

Cover sheet for       201.04(b) 

Data, on file wrapper of        202.02, 1302.09 

Data, in specification of 1302.04 

Drawing       608.02 

Effective filing date     706.02 

Filing receipt      503 

Information disclosure statement        609 

Joint inventors in  605.07 

Ordering of abandoned     905.03 

Revival             711.03(e) 

Provisional application--Continued 

Statutory Invention Registration        1101 

Small entity    509.03 

Specification     601.01 

WARNING       505, 510 

PTO employee restrictions, assignment     309 

Public access to reexamination file   2232 

Public inspection, Application file   103 

Public inspection of assignments        301.01 

Public Law (see also Statutes) 

Public Law 92-34 (Postal Emergency)   511 

Public Law 96-517 509.02 

Public Law 97-247 509.02, 711.03(c) 

Public Law 98-622 201.03 

Public Law 103-465  201.03, 201.11 

Public policy       706.03(a) 

Public right to inspect files     103 

Public sale (See also On Sale and Public Use)     2133.03 

Public search room  2229 

Hours       510 

Regulations for Public Use  510 

Public searchers                101 

Public Use (see also On Sale)     706.02(c), 

2133.03, 2133.03(a) 

Affidavit or declaration        715.10 

Anticipation    2133.03(a) 

Commercial exploitation       2133.03(e)(1) 

Commercial use      2133.03(a) 

Completion of the invention   2133.03, 

2133.03(c), 2133.03(e)(1) 

Definition of     2133.03(a) 

Evidence        706.02(c) 

Experimental use (see also 
 Experimental Use)  2133.03, 2133.03(e) 

"In this country" 706.02(c), 2133.03(d) 

Intent to experiment    2133.03(e)(2), 2133.03(e)(3) 

Invention 2133.03(c) 

Policy considerations     2133.03 

Public knowledge or on display      2133.03(a) 

Secrecy             2133.03(a) 

Single use  2133.03(a) 

Control over invention      2133.03(a), 

2133.03(e)(5), 2133.03(e)(7) 

Testing by third party      2133.03(e)(5), 2133.03(e)(7) 

Use with expectation of privacy       2133.03(a) 

Use by inventor or associates     2133.03(a) 

Use by independent third parties        2133.03(a) 

Public use proceedings      720 

Affidavits  720.01 

Final decision      720.05 

Oral argument     720.04 

Petitions 1002.02(a) 

Preliminary handling    720.01 

Preliminary hearing   720.03 

Prima facie showing   720.02 

Rejections after        706.03(v) 

Rejections on     706.03(v), 720.05 

Testimony 720.04 

Publication, Defensive      711.06, 711.06(a), 1111 

Publication of Statutory Invention Registration       1111 

Publication date                706.02(a), 707.05(f) 

Publication of abstracts        711.06, 711.06(a) 

Publications: 

Board Decisions       1213.03 

Citing          705.05(e), 901.06 

Date of             706.02(a) 

Declassified    707.05(f) 

Own, as reference 715.01(c), 2132.01 

Patent and Trademark Office   Introduction 

Publishing Division   104, 203.04, 

 203.08, 508.01, 

508.03, 603.01, 608.02(o), 

711.01, 711.05, 714.16(d), 

724.05, 1302.09, 1302.10, 

 1303, 1308.01, 1309, 

1451, 1455, 1901.07(a), 2235 

Pulling abandonments    711.04(a) 


Q 


Quality Control Program       1308.03 

Quality review          2283, 2287 

Quality review in reexamination       2289 

Quayle practice             710.02(b), 714.14 

After final   706.07(f) 

Copies of references    707.05(a) 


R 


Ranges, anticipation of       2131.03 

Ranges, obviousness of      2144.05 

Ratification of papers filed: 

Death of attorney 406 

Death of inventor 409.01 

Signature improper or lacking     714.01(a) 

Telegram amendment  714.08 

Real Party in Interest      1206, 1208 

Reasons for allowance     1302.14 

Recapture of matter in reissue      1412.02 

Receipt, Office date stamp  502, 505, 710.01(a), 714.18 

Receipt for papers filed        502, 503, 717.01(a) 

Receipt of mail and papers  Chapter 500 

Receiving Office PCT procedure      1801 

International Bureau    1805 

Reciprocal legislation      201.13 

Reclassification 

Classes             903.02(a) 

Patents             903.05 

Subclasses  903.02(c) 

Recognized countries for foreign priority 201.13 

Recombinant DNA related, Special status       708.02 

Recommendation by Board of Patent 
Appeals & Interferences       1213.01 

Reconsideration by Board of Patent 
Appeals & Interferences       1214.01, 1214.03, 1214.04 

Reconsideration in reexamination        2269 

Reconsideration of abandonment      711.03, 711.03(c) 

Based on insufficient response      711.03(a) 

Based on failure to respond within period 711.03(b) 

Record of interview   713.01, 713.04 

Record Room         508.03, 1431, 2232, 2235 

Record Services Branch      101, 102 

Record system for reexamination       2235 

Recording assignment    302, 317 

Recording change of business name 314 

Recording license agreement   313 

Recording of other documents    313 to 317 

Recording security interest   313 

Records, Examining Group        1704 

Reduction to practice     715.07, 2133.03(c), 2138.05 

Reexamination: 

Actions following Board decision        2278 

Address of patent owner       2222 

Admissions  2217, 2258 

Affidavits in reexamination     2216, 2217, 2258, 2266 

After final practice    2272 

Amendment 2234, 2250 

Entry under Rule 312    2287 

Amendment in request    2221 

Ancillary Issues        2217, 2258 

Appeal          2273 

Appeal brief    2274 

Appeals to courts 1216, 1216.01, 2279 

Assignment  2236 

Reexamination--Continued 

Attorney or agent 2213 

Name on certificate   2287 

Basic characteristics     2209 

Certificate   2288 

Certificate attached to patent copy   2292 

Certificate distribution        2292 

Certificate format  2290 

Certificate of mailing      2224 

Certificate of prior reexamination 
in later request        2214 

Certificate of service      2220 

Charge and procedures     2232 

Citation of Prior Art     2202 

Claim numbering       2250 

Claims considered 2243 

Claims presented for interference 2307.04 

Clerical handling 2270 

Collateral estoppel   2259 

Commissioner's initiative 2239 

Conclusion  2287 

Concurrent proceedings      2282 

Conduct of proceedings      2254 

Consideration of responses  2252, 2253 

Consolidated proceedings        2283 

Constructive notice to patent owner   2230 

Content of request  2214 

Copending proceedings     2283 

Copy of patent in request 2219 

Copying of file       2232 

Correction of inventorship  2258 

Correction processing     2231 

Correspondence      2224 

Cost code 2238 

Criteria for deciding request     2242 

Decision of Board of Appeals    2277 

Decision on request   2240, 2244 

Decision ordering reexamination       2246 

Decision processing   2245 

Denied          2247 

Dependent claims        2260.01 

Double correspondence     2224 

Double patenting        804, 2258 

Drawing correction  2250.01 

Duty of disclosure  2280 

Effective date      2201 

Entry of amendments   2234 

Reexamination--Continued 

Entry of court decisions in patent file       2207 

Examiner        2255 

Examiner's answer 2275 

Expiration of patent    2250 

Explanation of prior art        2217 

Extension of time 2265 

Failure to timely respond to Office action  2266 

Fees            2215, 2233 

Final action    2271 

Flow chart  2201 

Grounds of rejection    2217 

Identity of requeste    2212 

Inappropriate papers    2267 

Incomplete request  2227 

Informal request        2228 

Initial processing  2226 

Interference copending      2284 

Intervening rights  2293 

Interviews in     2281 

Introduction    2201 

Listing of prior art    2257 

Litigation copending    2286 

Litigation review 2240, 2287 

Mailing of Office actions 2264 

Merger          2283 

New matter  2270 

Office action     2260, 2262 

Official Gazette notice of certificate      2291 

Official Gazette notice of request  2229 

Oral hearing    2276 

Patent copy in request      2219 

Patent owner's address      2222 

Patent owner's statement        2249 

Petition for entry of late papers 2268 

Petition from denial    2248 

Power of attorney, withdrawal     2223 

Preprocessing Unit  2206, 2225, 2226, 

 2228, 2229, 2232, 2239 

Printing of certificate       2288 

Prior art 2218 

Prior art considered    2244, 2256 

Proceedings   2209 

Processing in group   2233, 2245 

Clerical handling 2270 

Project code    2238 

Public access     103, 2232 

Reexamination--Continued 

Quality review      2289 

Reasons for allowance     2247, 2262 

Reconsideration of Office action        2269 

Record System     2235 

Refund of denial        2247 

Regulations   2201 

Reissue copending 2285 

Rejections  2258 

Reminders 2287 

Reply by requester  2251 

Reports       2235 

Representative of requester   2213 

Request       2210 

Request content       2214 

Request correction processing     2231 

Request decision        2240, 2244 

Request decision criteria 2242 

Request denied      2247 

Request during interference   2284 

Request filing address      2224 

Response to Office action 2266 

Return of papers        2267 

Review          2289 

Sample letter requesting reexamination      2214 

Scope       2258 

Search          2240, 2244 

Second request      2240, 2283 

Prior art considered    2240, 2242 

Special Status for action 2261 

Statement applying prior art    2217 

Statement by owner  2249 

Statutory basis       2201 

Stay            2283 

Substantial new question 
of patentability        2216, 2242, 2244 

Suspension  2283 

Terminated files        2294 

Tickler reports       2235 

Time for filing       2210 

Time for request decision 2241 

Time for requesting   2211 

Time for response to actions    2263 

Time reporting      2238 

Title report    320, 2287 

Transfer        2237 

Translation required    2218 

Reexamination--Continued 

Untimely filed paper prior to order   2225 

Untimely filed papers     2267 

Untimely responses  2252 

Use of transmittal form       2264 

Who may file request for        2212 

Withdrawal of attorney during     402.06, 2223 

Withdrawal of power of attorney       2223 

Reference: 

A.I. Series patent  901.04 

A.P.C. publication  901.06(c) 

Abandoned application     901.02, 2127 

Abbreviatures       901.06(d) 

Abstracts   901.06(d) 

Additional  707.05(d) 

Admissions  2129 

Analogous art     904.01(c), 1302.14, 2132.05 

Antedating (see also Affidavit, 
Antedating reference, Rule 131)       715, 2132.01 

Applications, domestic and foreign  2127 

Arrangement in Examining Group      901.07 

As evidence of inherency        2131.01 

As evidence in multiple reference, 
35 USC 102 rejection    2131.01 

Assigned application as         804.03 

Between applicant's priority date and 
U.S. filing date        201.15, 706.02(b) 

Borrowing from Group    901.08 

Citation        707.05 to 707.05(g), 901.04, 901.05(a) 

After allowance       1302.12, 1308.01 

After appeal    1208.01 

By applicant    707.05(b), 707.05(c),1302.12 

Correction  707.05(g) 

Period for response   710.06 

Claims foreign date   715.01 

Combination of references 706.02(j) 

Copending 706.02(f), 706.02(k), 706.02(l), 709.01 

Copies          707.05(a) 

Cross, How cited        707.05(e) 

Cross reference addition        905.02 

Date, determination of      707.05(f), 2124, 

 2126, 2128-2128.02 

Date, exception to the rule   2124 

Declassified printed matter   707.05(f) 

Defensive publications      901.06(d) 

Design application  707.05(a) 

Disclosure, broad 2123 

Reference--Continued 

Drawings as prior art     2125 

Effective date: 

Patent          707.05(f), 706.02, 706.02(a), 

707.05(e), 715 

Publication   706.02(a), 715.01(c) 

Enabled disclosure  2131.01 

Enabling, plant genetics        2121.03 

Enabling, compounds and compositions    2121.02 

Enabling, apparatus and articles        2121.04 

Equivalents   904.01(b) 

Every element rule for anticipation   2131 

Evidencing the meaning of a term 
used in the primary reference     2131.01 

Foreign patent      707.05(e), 901.05(a), 901.05(b) 

Forfeited application     901.02 

From interference 1302.12 

Incorrect citation  707.05(g), 710.06, 1302.12 

Inoperability     716 

Internal documents, Confidential        2128.01 

Joint patent to applicant 
and another   715.01(a), 715.01(c) 

Listing at allowance    1302.12, 1455 

Lost counts in interference   2138.01 

Multiple reference rejections under 
35 USC 102  2131.01 

Newly discovered after allowance        1302.14, 1308.01 

Nonanalogous art 
(See Reference: Analogous Art)      2131.05 

None cited by examiner      707.05, 707.05(a) 

Operability   2121 

Ordering official cross       903.06 

Overcome: 

Under Rule 131 (see also Affidavit, 

Antedating reference, Rule 131)       706.02(a), 

706.02(f), 706.02(k), 715, 

 1302.14, 2132.01, 2133.02 

Under Rule 132      706.02(f), 706.02(k), 

 716, 2132.01 

Overcoming under 35 U.S.C. 119 

(foreign filing)        201.15 

Paper, orally presented       2128.01 

Patent          901.04, 2126 

Patent, date available      2126.01 

Patent, Foreign       901.05, 2126.02 

Patent, Official number lacking       901.04 

Patent claiming same invention      715.05, 2308.01 

Reference--Continued 

Pending application   901.03 

Publication of applicant's invention    715.01(a) 

715.01(c), 2132.01, 2133.01 

Publication, date available   2128.02 

Publication, printed    2128 

Publications    706.02, 707.05(e), 901.06, 

2131.01, 2132.01, 2133.01 

Published abstracts of application  711.06(a), 

2131.01, 2133.01 

Rejection over broad disclosure instead 
of preferred enbodiments        2123 

Replacement of missing      901.09 

Same assignee     706.02(f), 706.02(k), 706.02(l), 

709.01, 715.01(b) 

Selection of pertinent      904.02 

Statutory bar     706.02(a), 201.13, 2133.02 

Statutory section to use        706.02(a) 

Supply procedure        707.05(a), 707.05(g), 710.06 

Swearing back (see also Affidavit, 
Antedating reference, Rule 131)       706.02(k), 

715, 2132.01, 2133.02 

Thesis          2128.01 

U.S. patent issuing from PCT application        1895.01 

Utility             2122 

"Well known in the art," Supported by     2144.03 

Reference characters    608.01(g) 

Reference to foreign application        202.03, 202.04 

Reference to prior patent 608.01(c), 608.01(p), 

 608.01(r) 

Reference to related application (See Crossnoting.) 

Reference to related application 
for disclosure          608.01(p) 

Refile application  201.10 

Refund of fees          503, 509, 607.02 

Refund of search fee    1867 

Refund section          607.02 

Refusal to publish SIR      1105 

Registration, Attorney or agent       402, 1702 

Regulations, Examining Group Search Facilities      510 

Regulations, Public Search Room       510 

Rehearing by Board of Appeals     1214.01, 1214.03 

Rehearing by C.A.F.C    1216.01 

Reinstituting interference  2300 

Reissue application   1401 

Access          103 

Acknowledgment of protest 1901.05 

Reissue application--Continued 

Additional Information Required       1447 

Additions underlined    1411 

Adjudication of Original Patent       1442.01 

Affidavit 1447 

Affidavit, Patent not available       1416 

Allowance 1455 

Allowance, Drawing transfer   1413 

Amendment 1411 

Announcement in Official Gazette        1430 

Broadened 706.03(x), 1412.03, 1414.01 

Certificate of Correction 1411.01, 1480 

Claim, Numbering        1411 

Claim, Oath requirement       1414 

Claim, Original claim subject to 
reexamination     1440 

Claim, Same invention as original patent        1412.01 

Claim format    1411, 1412 

Claiming foreign priority 201.14, 201.16 

Claim too narrow        1402 

Content       1410 

Copending application reference       1402 

Copending reexamination proceedings   2285 

Correct inadequacies    1402 

Court decision involving original patent        1442.01 

Deceptive intention   1414.04 

Declaration   1414, 1414.03, 1444 

Defective oath, Ground for rejection    706.03(x), 

 1414.01 

Dependent claim       1455 

Diligence 1403 

Divisional application      1002.02(h), 1451 

Drawing       1413 

Effect of reissue 1460 

Election of species   1450 

Error in original patent        1401, 1414.03 

Examination   1440, 1445 

Filed during interference 2358, 2360 

Filing Fee  1415 

Foreign priority claim      201.14(b), 1417 

Fraud       2012 

Grounds for filing  1402 

Inequitable conduct   1448 

Initial examiner review       1443 

Inoperative, Oath requirement     1414.01 

Inspection  103 

Interference of original patent involved        2360 

Reissue application--Continued 

Inventorship error  1402 

List of references  1455 

Litigation involved   1403, 1404, 1422, 1442.01, 

1442.02, 1442.03, 1442.04, 1442.05 

Litigation protest  1901.03 

Narrowed        1414.01 

New matter  1411.02 

Notice in original file       202.05, 1431 

Notice of allowance   1455 

Numbering of claims   1411 

Oath            1414, 1414.03, 1414.04, 1444 

Primary's decision  1004 

Rule 175(a)(1),(2), & (3) type      1414.01 

Offer to surrender patent 1416 

Official Gazette, claim to be printed     1455 

Official Gazette filing notice      1430 

Omission of feature   1411.02 

Omissions bracketed   1411 

Open to public      103, 1430 

Ordering copies       1430 

Ownership 201.12 

Patent returned       1416 

Patent series     901.04 

Print of drawing        608.02(k) 

Prior Art consideration       1402 

Prior Art Statement   1418 

Priority correction   1402 

Protest             1901 

Protest filed in reissue where patent 
is in interference  1449 

Recapture of matter   1412.02 

Reexamination     1449.01 

Reexamination proceedings copending   2285 

Rejection 706.03(x) 

Requirement for information   1447 

Restriction   1450 

Return of original patent 1416 

Same invention as original patent 1412.01 

"Special" for examination 708.01, 1441, 1442, 

 1442.03 

Specification     1411, 1451 

Statutory basis       1401 

Statutory disclaimer    1455 

Suit on original patent       1442.01 

Transfer of original drawing    608.02(k), 1413 

Treatment of protest    1901.06 

Reissue application--Continued 

Twice reissued      1411 

Two month delay period      1441 

Rejected application (definition) 203.02 

Rejection   706 

Abandonment of invention        706.02(d), 706.03(s) 

Admission by applicant      706.02(c), 2133.03(c) 

After allowance of application      706.04, 706.05 

 1308.01 

After allowance of claim        706.04 

After allowance of claim, Primary review        1004 

After appeal, New rejection   1208.01 

After termination of interference 2363.03 

Against public policy     706.03(a) 

Aggregation   2173.05(k) 

All valid grounds 707.07(g) 

Allowed claim, by Board of Appeals  1213.02 

Alternative phrases   2173.05(h) 

Anticipation (See also Anticipation)    706.02(a), 

        707.07(d), 2131, 2133.06 

Art (See also Prior Art)        706.02 

Assigned applications, Same applicant     804.03 

Atomic Energy Act 706.03(b) 

Authorship  2137 

Backup rejections 706.02 

Bar, Statutory      706.02(a), 2133 to 2133.03(e)(7) 

Overcoming  706.02(b) 

Board of Appeals introduces   1214.01 

Board of Appeals statement on 

allowed claim     1213.02 

Breadth       2173.04 

Broader than the disclosure   2173.03 

Chemical practice: 

Markush             2173.05(h), 2173.05(o) 

Nonchemical   2173.05(i) 

Undue breadth     2163.05, 2173.04, 2173.05(h) 

Claim presented corresponding to 
claim of patent       706.06, 2307.02 

Claim presented corresponding to 
claim of patent, Failure to respond   706.03(u) 

Claims          706 

Combination of references 706.02(j), 707.07(d), 

 2131.01 

Common knowledge        2144.03 

Commonly assigned 2146 

Computer programming cases  2106, 2106.01 

Rejection--Continued 

Conflicting applications        706.02(f), 706.02(k), 

706.02(l), 709.01, 

715.01(b), 804, 

804.01, 804.02, 

822, 822.01 

Contrasted to objection       706.01 

Copending applications, different 
inventive entities  706.02(k), 706.02(l) 

Cumulative  706.02, 707.07(d) 

Dedication  715, 1490 

Defective reissue oath      706.03(x), 1444 

Dependent claim       608.01(n) 

Derivation of invention       2137 

Disclaimer  706.02(k), 710.02(d) 

Double patenting (See Double patenting.) 

Duplicate claims        706.03(k) 

Estoppel, Defensive publication       711.06 

Estoppel, Interference      2363.03 

Final (see also Final rejection)        706.07 to 706.07(f) 

Foreign application, Statutory bar  706.02(e) 

Form Paragraphs used    706.02(i),706.02(m) 

Forms used  707 

Fraud upon public 706.03(a) 

Frivolous invention   706.03(a) 

Full anticipation, Expression 
recommended   706.02(i), 707.07(d) 

Function of machine   2173.05(v) 

Functional claim        2114, 2173.05(g) 

Functional equivalents      2144.06 

Generic claim     715.02, 809.02, 809.02(a), 809.02(e) 

Genus and species 806.04(h) to 806.04(j), 2131.02 

Ground clearly stated     706.02(j), 707.07(d) 

Inaccurate  2173.03 

Incomplete  706.03(c), 707.07(j) 

Indefinite  706.03(d) 

Inoperativeness       2164.08(b) 

Insufficient disclosure       706.03(c) 

Insufficient disclosure, Trademark  608.01(v) 

Interference, Estoppel      706.02(h), 2363.03 

Interference terminated       706.03(v), 2363.03 

Judicial notice       2144.03 

Language used     706.02(j), 707.07(d) 

Linking claim     809 to 809.04 

Markush, Improper 2173.05(h), 2173.05(o) 

Multiplicity    2173.05(n) 

Negative limitation   2173.05(i) 

Rejection--Continued 

New, After appeal 1208.01 

New, After appeal brief       1002.02(d) 

New, After final rejection  706.07(e) 

New matter  706.03(o), 2163.06 

Nonelected invention    706.03(m) 

Nonstatutory claim  706.03(a), 706.03(a)(1) 

Nonstatutory subject matter   706.03(a) 

Not based on prior art      706.03 

Not inventor    706.02(g) 

Not readable on disclosure  2173.03 

Oath, Defective reissue       706.03(x) 

Objection distinguished       706.01 

Obviousness (See also Obviousness)  706.02, 

 706.02(j), 707.07(d) 

Official Notice       2144.03 

Old combination       2173.05(j) 

Omnibus claim     706.03(d), 2173.05(r) 

Omnibus rejection  707.07(d) 

Overcoming 35 U.S.C. 102 rejection  706.02(b) 

Overlapping applications        706.02(f), 706.02(k), 

709.01, 715.01(b), 804, 

 804.01, 804.02 , 822, 822.01 

Perpetual motion        706.03(a) 

Personal remarks avoided        707.07(d) 

Previously allowed claim        706.04, 1004 

Prima facie case of obviousness       706.02(j) 

Printed matter      706.03(a) 

Prior art 706.02 

Prior art between applicant's foreign priority 

date and U.S. filing date 201.15, 706.02(b) 

Product by process  2113, 2173.05(p) 

Product of nature 706.03(a) 

Prolix          2173.05(m) 

Provisional rejection     706.02(f), 706.02(k) 

Public sale (See also On 
Sale and Public Use)    706.02(c) 

Public use (See also Public Use)        706.02(c) 

Public use proceeding     706.03(v), 720.05 

Ranges          706.03(c), 2131.03, 2144.05 

Reissue application, 

Broadened claims        706.03(x) , 2163.05 

Defective oath      706.03(x), 1444 

Rejected                707.07(d) 

Repeated                707.07(f) 

Res judicata    706.03(w) 

Scientific principle    706.03(a) 

Rejection--Continued 

Secondary considerations        2131.04 

Single means claim  2164.08(a) 

Species and genus . .806.04(h) to 806.04(j), 2131.02, 

2144.08 

Statement of    707.07(d) 

Statutory bar     706.02(a), 2133 to 2133.03(e)(7) 

Suggested claims not made 706.03(u) 

Technical 706.03 

Trademark or trade name       608.01(v) 

Undue breadth     2163.05, 2173.04 

Unpatentable over other claim     706.02(f), 

706.03(k), 709.01 

Utility             706.03(a) 

Vague       706.03(d) 

"Well known in the art"       2144.03 

Rejoinder   806.05(c), 806.05(e), 809, 821.04 

Related inventions  802.01, 806.04(b), 806.05, 

 808.02, 809.03 

Related inventions, Species   806.04(b) 

Remailing Office action       707.13, 710.06 

Remand by Board: 

Affidavit 1212 

Amendment 1211.01 

Special             708.01 

Removal of application from Office  101 

Renumbering claims  1302.01 

Reopening after allowance 1308.01 

Reopening after court decision      1216.01 

Reply brief         1208, 1208.03 

Representative capacity       402, 405, 714.01(c) 

Cannot expressly abandon        711, 711.01 

Representative of foreign assignee  302.04 

Representative of inventor or owner Chapter   400 

Representative of requester   2213 

Representatives of out-of-town attorneys        408 

Request for reexamination: 

Decision criteria 2242 

Notice of request in Official Gazette     2229 

Requester's representative  2243 

Time for filing       2210, 2211 

Time to decide      2241 

Request Form for international application  1820 

Requests for identifiable records 103 

Requests for reconsideration of Board 

decision        1214.01, 1214.03, 1214.04 

Requirement for information   706.02(c), 710.02(d), 

 1504, 1901.06, 2001.06(d), 

2122, 2123, 2307.05 

Requirements must be repeated     707.07(e) 

Requisites of the application     702 

Res judicata            706.03(w), 707.07(g) 

Reservation clause in application 608.01(e), 608.01(t) 

Residence, Applicant's      605.02 

Resignation of Examiner       1702 

Resignation of Examiner, Old cases special  708.03 

Response (see also Amendment; Period for response) 

After abandonment 714.17 

After Board decision    1214.01, 1214.06 

After final rejection     714.12, 714.13 

Within 2 months       706.07(f) 

Attorney arguments  716.01(c), 2145 

Complete        714.02 to 714.04 

Copying claim from patent 

 not a response       711.02(b) 

Election requirement    809.02(a), 809.02(b), 

 818.03(a), 818.03(b), 818.03(c) 

Formal matters      714.02 

Incomplete  710.02(c), 711.02, 711.02(a), 

 711.03(a),714.02 to 714.05 

In reexamination        2210, 2214, 2266 

Incomplete, Election of species lacking       809.02(a), 

818.03(b) 

Incomplete, Proceedings not stayed 
by petition   1002 

Incomplete, Time for completing       710.02(c), 711, 

 714.03 

Late            711, 711.02 

Late, Excused     710.02(d) 

Patentability pointed out 706.02(b), 714.02, 714.04 

Restart period for response   710.06 

Restoration of cancelled matter       608.01(s), 714.24 

Restriction requirement       818 to 820.02 

Signed by all applicants        714.01(a) 

Statutory period        710.01 

Restriction (see also Election: 
Election of species)     Chapter 800 

Action, Examiner's  814 to 817 

Action after, Special     708.01 

Action on the merits    810-810.03 

Apparatus and process 
 or product   806.05(e) to 806.05(g) 

Basis       802 

Restriction--Continued 

Burden, without serious       803 

Case referred to second Examiner        815 

Claimed subject matter      806.01 

Claims to divisible inventions added 
before action     818.02(a) 

Combination and subcombination      806.05(a) to 

 806.05(c), 809.03 

Definition  802.02 

"Distinct" invention    802.01, 806, 806.05 

Election other than express   818.02 

Election fixed by action on claim 818.01 

Final requirement 821.01 

Grouped in parent case      811.04 

Improper        803, 806, 808.02 

Independent embodiments       806.04, 806.05 

Independent inventions      802.01, 803, 806, 

 806.04, 808.01, 808.01(a), 818.03 

Introduction    801 

Linking claim     809, 809.02, 809.03, 809.04 

Linking claim, Traverse of rejection    818.03(d) 

Markush type claims   803, 803.02 

Nonelected claims, Treatment of       821 to 821.03 

Nonelected invention    706.03(m), 809.04 

Old combination and subcombination  806.05(b), 

820.01 

Patentability over prior art    806.02, 809, 809.03 

Patentability report, Effect    807 

Petition from requirement 809.04, 818.03(c) 

Process and product or apparatus        806.05(e), 

806.05(g), 820 

Product and process of using    806.05(h) 

Product, process of making and using      806.05(i) 

Reissue application   1450, 1451 

Rejection of nonelected claims      821 to 821.03 

Rejoinder 806.05(c), 806.05(e), 809, 821.04 

Related inventions  802.01, 803, 806, 806.04(b), 

 808.02, 809.03 

Requirement   812 to 817 

Additional  811.02 

By Group where examinable 812 

Completeness    815 

Concluding paragraph    817, 818.03(b) 

Consult other Group   812.01, 815 

Election, after       818 

Election, after; Shift of 
invention/species 819.01 

Restriction--Continued 

Election, after; With traverse      818.03(b), 821.01 

Election, after; Without traverse 21.02 

Final       810.03, 818.03 

First action    811 

Patentability     810 to 810.03 

Petition from     809.04, 818.03(c) 

Reasons for insisting upon  808 

Rejection on double patenting following       804.01 

Repeated after withdrawal 811.03 

Response to   818 to 818.03(e) 

Review by Primary Examiner  803.01 

Submission to Group Director    804.04 

Second requirement  811.02 

Single claim    803 

Single embodiment 806.03 

Species-Genus     806.04(a) 

Species may be related inventions 806.04(b) 

Species of unclaimed genus  808.01(a) 

Subcombination, 
Combination and       806.05(a) to 806.05(c) 

When made 811, 811.02 

Withdrawal  819 

Telephone 812.01 

Transitional application        803.03 

Traverse of requirement       818, 818.03(c), 821.01 

Restrictions on former examiner       1702 

Restrictions upon employees of Office     309 

Retention label             1302.07 

Retroactive foreign filing license  140 

Return of Papers: 

Discourteous matter   714.19, 714.25, 1003 

Entered on file wrapper       201.14(c), 717.01 

Return of complete application      601 

Return of drawing 608.02(y) 

Return of filing fee    506.01, 607.02 

Return of incomplete application        506.01 

Return of oath      604.04(a) 

Return of patent        1416 

Return of postcard  503 

Returned Office action      707.13 

Review at allowance   1302.01 

Review for national security    115 

Review for property rights  115 

Revised Statutes (See Statutes.) 

Revival of abandoned application        203.08, 711.03, 

 711.03(c), 1002.02(b) 

Revival of abandoned application--Continued 

Conditional petition    711.03(c) 

Delgar          711.03(c) 

Revocation of agent under PCT     1808 

Revocation of power of attorney       402.05, 402.07 

Rewritten specification       608.01(q) 

Ribboned application    602.04(a) 

Right of priority (see Foreign application)   201.13 

Form paragraphs       201.14(c) 

Formal requirements   201.14 

Overcoming a reference       201.15, 706.02(b) 

Papers required       201.14(b) 

Time for filing papers      201.14(a) 

U.S. application        201.11 

Right of priority, Determination by Examiner    201.15 

Rights, Transfer of patent or application 509.02 

Roster of attorneys   601.03, 2205 

Rules of practice: (37 CFR)   Introduction 

1.1 Reproduced      501, 2225 

1.2 Reproduced      713.04 

Cited       2002.02, 2345 

1.3 Reproduced      714.25 

Cited       608, 714.19, 714.21, 1504 

1.4 Reproduced      501, 502.02 

Cited       601.01(a), 2002.02 

1.5 Reproduced      502 

Cited       1893 

1.6 Reproduced      502, 502.01, 505, 511 

1.7 Reproduced      710.05 

Cited       512 

1.8 Reproduced      502.02, 512 

Cited     201.06(b), 317.02, 324, 502, 512, 

        513, 605.04, 609, 711.03(c), 

        714.17, 1216, 1216.01, 1805, 

         1834, 1865, 1893.01(a)(1), 

         1893.01(b)(1), 2224 

1.9 Cited 509.03 

1.9(a) Reproduced 201.04(b) 

1.9(a)-(g) Reproduced     509.02 

1.9(a) and (b) Reproduced 201, 1893 

Cited       201.06(a) 

1.9(c)-(f) Cited        509.02 

1.9(e) Cited    509.02 

1.9(f) Cited    509, 509.02, 509.03, 607, 1415 

1.10 Reproduced       513 

Rules of practice--Continued 

Cited       201.06(b), 201.13, 317.01, 317.02, 

        502, 502.02, 503, 

        505, 506.02, 510, 511, 512, 609, 

        711.03(c), 714.17, 

        1216.01, 1805, 1834, 1865 

1.11 Reproduced       103 

Cited       104, 724.04, 724.04(b)-(c), 

        901.03, 1216, 1216.01, 

        1216.02, 1430, 

        1443, 1901.05, 2254, 

        2300.02, 2387 

1.12 Reproduced       301.01 

Cited       1002.02(a) 

1.14 Cited  104, 203.08, 301.01, 502.02, 509, 

        713.05, 1002.02(a), (c)(3), and (p) 

1.14(a) Reproduced  101 

Cited       103,110, 901.03 

1.14(b) Reproduced  103 

Cited       711.04, 901.02, 901.03 

1.14(c) Reproduced  150 

Cited       706.03(b) 

1.14(d) Reproduced  103 

Cited       104, 608.01(p), 1213.03 

1.14(e) Reproduced  103,104 

1.15 Reproduced       103 

1.15(a) Reproduced  1701.01 

1.16 Reproduced       607 

Cited       201.04(b), 201.06(a), 201.06(b) 

        509.01, 509.02, 601, 601.01(a), 

        601.01(b), 608.01(i), 608.01(n), 

        609, 710.02(e), 1415, 1505, 1509, 

        1893.01(c), 1896 

1.16(e) Cited     201.06(a), 201.06(e), 403, 

        409.01(a), 502, 506, 509.01, 

        601.01(a) 1410.01 

1.17 Reproduced       509 

Cited       509.01,509.02, 601, 

        607,706.07(f), 710.02, 

 . . . .        710.02(e), 711.03(c), 712, 

  714.13, 724.02, 1205, 1206, 1209, 1505 

1.17(e) Cited     706.07(g) 

1.17(h) Cited     120, 201.03, 207, 307, 409.03, 

        503, 506.02, 509.02, 513, 

        601.01(a), (d), and (g), 

        608.01, 608.02, 724.05, 817, 

        1002, 1410.01, 1441, 1442.03, 1481 

Rules of practice--Continued 

1.17(i) Cited     201.03, 201.06(a), 201.06(b), 

        201.06(c), 201.13, 201.14(a), 

        301.01, 307, 509.02, 601.01, 

        601.01(d), (f), and (g), 609, 

        708.01, 708.02, 709, 714.16, 

        1306.01, 1308, 1451 

1.17(j) Cited     509.02, 720 

1.17(k) Cited     509.02, 608.01 

1.17(l) Cited     203.07, 711.03(c), 712 

1.17(m) Cited     203.07, 711.03(c), 712 

1.17(p) Cited     609 

1.17(q) Cited     201.03, 201.04(b), 506, 

                601.01, 601.01(b), (c), 

                (d), (f), and (g) 

1.17(r) Cited     706.07(g) 

1.17(s) Cited     821.04 

1.18 Reproduced       509 

Cited       509.01, 509.02, 601, 

        607, 1303, 1306, 1505, 1509 

1.19     Reproduced   509 

Cited       103, 201.13(b), 301.01, 303, 

        320, 409.03(i), 509.01, 509.02, 

        607, 608.05, 1410, 

1.20 Cited  509.01, 509.02, 607,804.02, 

        1481, 1490, 2209, 2215 

1.21 Cited  201.06(a), 201.06(b), 301.01, 

        302.06, 323, 506, 509.01, 509.02, 

         513, 601, 601.01(a), 601.01(b), 

        607, 707, 1490, 1606, 1706, 1852 

1.22 Reproduced       509 

1.23 Reproduced       509 

1.24 Reproduced       509 

1.25 Reproduced       509.01 

Cited       509.01, 601 

1.26 Reproduced       509, 607.02 

Cited       503, 509.03, 821.04, 2214, 2215, 2240, 

        2247, 2248 

1.27 Reproduced       509.03 

1.27 Cited  201.06(a), 201.06(b) 

1.28 Reproduced       509.03 

1.28 Cited  201.06(a) 

1.31 Reproduced       401 

1.33 Reproduced       403 

Cited       120, 403, 605.03, 714.01(d), 1303, 

        2202, 2208, 2210, 2213, 2214, 2220, 

        2224, 2239, 2240, 2267, 2288 

Rules of practice--Continued 

1.34 Reproduced       402 

Cited       201.03, 201.06(a), 201.06(b), 

        402.02, 403, 407, 711, 711.01, 

        713.05, 714.01(c), 1209, 

        1215.01, 1306, 2210, 

        2213, 2222, 2224 

1.34(a) Cited     201.03, 201.06(a), 405, 407, 408, 

        510.03,1306 

1.36 Reproduced       402.05 

Cited       402.06, 402.07, 

        1002.02(a), (b), (c), and(g), 1003 

1.41 Reproduced       605 

1.41 Cited  201.03, 201.04(b), 403, 503, 505, 506, 

        506.02, 601.01, 605.04(b), 608.01(i) 

1.41(a) Cited     201.03, 201.04(b), 403, 505, 

        506.02, 601.01(a) 

1.42 Reproduced       409.01(a) 

Cited       409 , 409.01(b), 409.03(c), 509.03, 

        605, 605.04 

        608.01(j), 715, 1002.02(c)(3), 1410.01, 

        1420, 1604, 1893.01(e) 

1.43 Reproduced       409.02 

Cited       409, 409.01(b), 509.03, 605, 

        605.04,608.01, 

        608.01(i), 715, 1410.01, 1604, 1893.01(e) 

1.44 Reproduced       409.01(b) 

Cited       409, 409.03(c), 608.01(i), 

1002.02(c)(3), 1893.01(e) 

1.45 Reproduced       605, 605.07 

Cited       409, 608.01(i), 1402 

1.46 Reproduced       605 

Cited       409 

1.47 Reproduced       409.03 

Cited       201.03, 201.06(a), 324, 409, 

        409.03(a) to (j), 

         509, 509.03, 605, 605.03, 605.04, 

         608.01, 715, 1002.02(a), 1002.02(c)(3) 

        1410.01, 1604, 1893.01(c) 

1.48 Reproduced       201.03 

Cited       201.06(a), 601.01(a), 605.04(g), 

         605.07, 620.06, 817, 

        1002, 1002.02(a), (c), (c)(3), and (e), 

        1003, 1004, 1481, 2334 

1.51 Reproduced       601 

Rules of practice--Continued 

Cited       201.03, 201.04(b), 201.06(a) 

        201.06(b), 601.01(b), 601.01(d) 

        602, 608.01, 608.02 

1.52 Reproduced       608.01 

Cited       201.06(a), 601, 602, 605.04, 

        608.01(q), 608.05, 

         714.07, 714.22 

1.53 Reproduced       506, 601.01 

Cited       201, 201.03, 201.04(b), 

        201.06, 201.06(a), 

         201.06(b), 201.07, 201.08, 201.11(a), 

         324, 503, 505, 

        506.01, 506.02, 509,601, 

        601.01-601.01(g), 603, 605, 

        605.04, 608.02, 608.02(j), 

        608.04, 608.04(b), 711.03(c), 

        715.01, 1002.02(a), 1002.02(c)(3), 

        1410.01, 1414, 1893.01(a)(1), 

  1893.01(b)(1), 1895.01 

1.53(b)(1) Cited        201.03, 201.04(b), 201.06, 

        201.06(a), 201.06(b), 201.07, 201.08, 

         201.11(a), 302.03, 403, 409.03(h), 

        506, 506.02, 601.01(a) 

1.53(b)(2) Reproduced     201.04(b), 506, 506.02 

Cited       601.01(b), (c), and (e) 

1.54 Reproduced       503 

Cited       1512 

1.55 Cited  201.14, 602, 1002.02(b) 

1.55(a) Reproduced  201.13, 201.14(a) 

Cited       201.14(c), 201.16 

1.55(b) Reproduced  201.13(a) 

Cited       201.13, 403, 509, 1002.02(b), 

  1506, 2309.02 

1.56 Reproduced       2001 

Cited       201.03, 201.11, 509.03, 602, 605.04, 

         605.07, 608.01, 

        609, 706.02(l), 707.05, 

        711.01, 724, 724.01, 724.02, 

         724.03, 724.04(a), 

        724.04(b), 724.04(c), 724.05, 

        1208, 1208.04, 1210, 1308, 

         1414, 1418, 1442.04, 1443, 

         1447, 1448, 1504, 1893.03(g) 

        1901.02, 1901.03, 1901.06, 1901.07(b), 

         2000, 2001.01, 2001.03, 

         2001.04, 2001.05, 2001.06, 

Rules of practice--Continued 

         2001.06(a)-(d), 2002, 2002.01, 

         2002.02, 2003, 2004, 

         2012, 2013, 2016, 2020.02, 

        2280, 2390 

1.58 Reproduced       608.01 

Cited       608.01(i) 

1.59 Reproduced       601 

Cited       503 

1.60 Reproduced       201.06(a) 

Cited       201, 201.03, 201.06, 

         201.06(b), 201.07, 201.11, 

        201.16, 324, 502, 502.02, 509.03, 512, 

        601.01, 602.05(a), 608.02, 620.06, 

        711.01, 711.03(c), 714.09, 

        1002.02(a), 1002.02(c)(3), 1302.04, 

        1504.20, 1895.01 

         2271, 2272, 1430 

1.62 Reproduced       201.06(b) 

Cited       103, 201, 201.03, 201.06, 

        201.06(a), 201.07, 201.08, 201.11, 

        201.14, 302.03, 324, 

        409.03(j), 502, 509.03, 512, 

        601.01(a), 602.05(a), 

         608.04(b), 609, 711.01, 711.03(c), 

        714.09, 819, 1002.02(a), 1002.02(c)(3), 

        1302.04, 1430, 

        1443, 1895.01 

1.63 Reproduced       602 

Cited       201.03, 201.06(b), 201.13, 201.14, 

        201.14(a), 201.14(c), 

         201.15, 202.04, 409.03, 

         409.03(a), 409.03(b), 409.03(i), 

        409.03(j), 502.02, 601.01(a), (d), 

        (f), and (g), 603, 605, 605.02, 

         605.04, 608.01, 608.04, 608.04(b), 

        1410, 1414, 1444, 1481, 1503.01, 1604, 

        1893.01(a)(1), 1893.01(b)(1), 

        1893.01(e), 1896, 2001 

1.64     Reproduced   605.04 

Cited       409.03(a), 409.03(b), 

                601.01(d), (f), and (g), 605 

1.66(a) Reproduced  604 

1.66(b) Reproduced  602.04(a) 

1.66 Cited  602, 602.04, 602.04(a), 604.04, 

        604.04(a), 604.06 

1.67 Reproduced       603 

Rules of practice--Continued 

Cited       201.06(a), 502.02, 601.01(a), 602, 

         602.03, 602.04, 

         602.05, 604.01, 605.01, 605.04, 608.04 

1.68 Reproduced       602 

Cited       201.03, 302.01, 512, 601, 602.04(a), 

        604.04(a), 609, 711.02, 

        711.03(c), 715.04 

1.69(b) Cited     509.03 

1.71 Reproduced       608.01 

Cited       403, 506, 506.02, 601, 601.01, 

        601.01(a), 608.01(a), 608.01(g), 

        1302.01, 1503.01, 1504.01 

1.72(a) Reproduced  606 

1.72(b) Reproduced  608.01(b) 

1.72 Cited  601, 608.01(a) 

1.73 Reproduced       608.01(d) 

Cited       601, 603, 608.01(a), 1302.01 

1.74 Reproduced       608.01(f) 

Cited       601, 608.01(a) 

1.75 Reproduced       608.01(i) 

Cited       403, 506, 506.02, 601, 

        601.01(a), 607, 608.01(a) 

        608.01(g), 608.01(m), 

         608.01(n), 608.01(o), 802 

1.76 Cited  601 

1.77 Reproduced       608.01(a) 

Cited       601, 608.05 

1.78(a)       Reproduced        202.01, 506 

Cited       201.04(b), 201.06(a), 201.11, 

        201.04(b), 310, 505, 510, 608.01(a) 

1.78(b) Reproduced  822 

1.78(c) Reproduced  804.03 

1.78(d) Reproduced  804.02, 804.05 

1.78 Cited  201.03, 201.06(a), 201.08, 201.11, 310, 

        601, 608.01, 804, 822, 822.01, 1504.10 

1.79 Reproduced       608.01(e) 

Cited       202.01, 608.01(t) 

1.81 Reproduced       608.02 

Cited        201.04(b), 403, 502.01, 

        506, 506.02, 601, 601.01(a), 

         608.01, 608.02(a), 608.02(d), 1504.01 

1.82 Cited  601, 1504.01 

1.83 Reproduced       608.02(d) 

Cited       502.01, 601, 608.02, 608.02(a), 715.05, 

        1306.03, 1504.01, 1451 

1.84 Reproduced       608.02 

Rules of practice--Continued 

Cited       121, 502, 502.01, 509, 601, 

        608.01(v), 608.02(b), 

         608.05, 1002.02(b), 1451, 

        1503.02, 1504.01, 1606 

1.85 Reproduced       502.01, 608.02(b) 

Cited       601, 1504.01 

1.86 Cited  601 

1.87 Cited  601 

1.91 Reproduced       608.03 

Cited       601 

1.92 Reproduced       608.03 

Cited       601 

1.93 Reproduced       608.03 

Cited       601 

1.94 Reproduced       608.03(a) 

1.95 Reproduced       608.03(a) 

1.96 Reproduced       608.05 

Cited       608.01(a) 

1.97 Reproduced       609 

Cited       502.02, 601, 608.01(a),608.01(c), 

         707.05, 1002.02(d), 1418, 1893.03(g), 

        2001, 2003 

1.98 Reproduced       609 

Cited       601, 608.01(a), 608.01(c), 

        707.05, 717.05, 1418, 1893.01.03(g), 

         1901.03, 

        2001, 2002.03, 2256, 

        2257, 2280 

1.101 Reproduced        708 

Cited       1504 

1.102 Reproduced        708.01, 708.02 

Cited       708, 1002.02(a) and (c), 1204 

1.103 Reproduced        709 

Cited       1002, 1002.02(c), 1002.02(c)(1), 1003 

1.104 Reproduced        706.02(l), 707, 1852 

Cited       702.01, 704, 706.02(c), 821.04, 901, 

         1504, 1819, 2122, 2123, 2254, 2260 

1.105 Reproduced        707.07 

Cited       821.04 

1.106 Reproduced        706, 706.02(l) 

Cited        707, 821.04, 904.02, 2217, 2254, 2260 

1.107 Reproduced        707.05 

Cited       706, 707.05(e), 

        1610, 2254, 2260 

1.108 Reproduced        901.02 

Cited       2254, 2260 

Rules of Practice--Continued 

1.109 Reproduced        1302.14 

Cited       1213.02, 2129, 2254, 2260 

1.111 Reproduced        714.02 

Cited       608.01(b), 608.02(b), 706, 707, 

         707.07(a), 708.02, 

        710.02(e), 711.03(c), 713.01, 

        713.04, 714.04, 

         714.16, 818, 818.03, 

        818.03(a), 1002, 1302.14, 

        1893.01(a)(2), 2254, 2260, 2266, 2269 

1.112 Reproduced        706 

Cited       714, 714.02, 2254, 2260, 2269 

1.113 Reproduced        706.07 

Cited       203.08, 609, 710.02(e), 711.03(c), 

         714.12, 1002.02(c), 1205, 

         2254, 2260 

1.115 Reproduced        714 

Cited       821.04, 2254, 2260 

1.116 Reproduced        714.12 

Cited       201.06(b), 512, 706.07, 706.07(e), 

         706.07(f), 714, 714.13, 715.09, 

        716.01, 821.04, 1207, 1214.07, 2254, 

         2260, 2272 

1.117 Cited   2254 

1.118 Reproduced        608.04 

Cited       506, 601.01, 608, 608.02, 

        1503.02, 1504, 2163.06, 2254, 2260 

1.119 Reproduced        714.02 

Cited       1302.14, 2254, 2260 

1.121 Reproduced        714.22, 

Cited       608.01(j), 714.02, 

        717.04, 1302.04 

1.121(e) Reproduced   1453 

1.121(f) Reproduced   2250 

Cited       714.22, 1206, 1302.04, 1411, 

        1893.01(a)(2), 1893.01(b)(2) 

        1893.01(d), 2210, 2221 

         2234, 2249, 2252, 2253 

1.123 Reproduced        608.02(p) 

1.124 Reproduced        714.24 

Cited       608.01(s) 

1.125 Reproduced        608.01(q) 

Cited       608.01, 714.19, 714.20, 1302.02 

1.126 Reproduced        608.01(j) 

Cited       1302.01 

1.127 Cited   1002.02(c) 

Rules of Practice--Continued 

1.129(a) Reproduced   706.07(g) 

Cited       706.07(f), 706.07(g), 714.13, 715.09, 

        716.01, 803.03 

1.129(b) Reproduced   803.03 

Cited       803.03, 821.04, 1002.02(c) 

1.129(c) Reproduced   803.03 

1.131 Reproduced        715 

Cited       201.6(a), 324, 609, 

        706.02(b), 706.02(k), 707.05(f), 

         708.02, 714.13, 715 to 715.10, 

         716.10, 724.03, 

        901.05, 904.02, 

        1002.02(c), 1004, 

        1005, 1208, 1214.01, 1302.14 

         2122, 2138, 2138.01, 2271, 2272, 2371 

1.132 Reproduced        716 

Cited       201.06(a), 608.04, 706.02(b), 

         706.02(k), 714.13, 715.01, 715.01(a), 

        715.01(c), 716.01 716.02(e), 724.03, 

         821.04, 1002.02(c), 1004, 1005, 

        1214.01, 2106.02, 2271, 2272, 2371 

        1.133 Reproduced        713.01, 713.04 

Cited       713.02, 1302.14 

1.134 Cited   710.01, 711, 1002.02(f) 

1.135 Reproduced        710.01, 711 

Cited       710.02(c), 710.02(e), 711, 

        711.02, 713.01, 

        713.04, 714.01(a), 

         714.02, 714.03, 714.12 

1.136 Reproduced        710.02, 710.02(e) 

Cited       201.03, 201.11(a), 402.06, 403, 

        409.01(a), 502, 509, 

        509.03, 601.01, 602.03, 

        605.04, 608.02, 608.02(a), 706.07, 

        706.07(a), 706.07(b), 706.07(f), 

        706.07(g), 709, 710.01, 

        710.01(a), 710.02(c), 710.02(d), 

        710.02(e), 711, 711.02, 711.02(a), 

        711.03(c), 711.04(a),712, 713.04, 

        714.01(a), 714.03, 714.08, 

        714.13, 714.17, 714.22, 720.04, 

        809.02(a) and (c), 821.03, 

        1002, 1002.02(a), (c), (c)(3), and (f), 

        1005, 1205, 1206, 1209, 1213.02, 

        1214.01, 1214.03, 1214.06, 

        1215.04, 1216, 1302.04, 1442.01, 

Rules of Practice--Continued 

        1442.02, 1442.03, 1453, 1505, 

        1893.01(a)(1), 1893.01(b)(1), 

        1893.01(d), 1893.01(e), 1895 

1.137 Reproduced        711.03(c) 

Cited       201.03, 203.08, 409.01(a), 710.02(e), 

         711.03, 711.04(c), 1002.02(b), 

        1002.02(c)(3), 1206, 1893.02 

1.138 Reproduced        711 

Cited       201.06(a), 503, 608.02(i), 711.01, 

        1215.01, 2285 

1.139 Reproduced        711.03(e) 

Cited       201.11 

1.141 Reproduced        802 

Cited       710.02(c), 802.01, 806, 

        806.04(a), 806.04(h), 

        808.01(a), 809.02, 

        809.02(a), 809.02(b), 

        809.02(c), 820, 1850, 1896 

1.141(b) Reproduced   806.05(i) 

1.142 Reproduced        802 

Cited       609, 707.07(i) , 809.02(c), 

         811, 812.01, 818.03(e), 

        821.01 to 821.04, 1504.05 

1.143 Reproduced        818.03 

Cited       810.03, 818.03(a), 818.03(b), 

        818.03(e), 821.03, 1504.05 

1.144 Reproduced        818.03(c) 

Cited       710.02(c), 809.04, 812.01, 818.03(d), 

        821, 821.01, 821.02, 

        821.03, 1002.02(c), 1201 

1.145 Reproduced        821.03 

1.146 Reproduced        809.02 

Cited       707.07(i), 1896 

1.147 Cited   201.06(a) 

1.151 Reproduced        1501 

1.152 Reproduced        502.01, 1503.02 

Cited       608.02, 1504.01 

1.153 Reproduced        1503.01 

Cited       1503, 1504.01 

1.154 Reproduced        1503.01 

Cited       601.01(f), 1503, 1504.01 

1.155 Reproduced        1505 

Cited       711.03(c), 1002.02(b), 1002.02(c)(3) 

1.161 Reproduced        1602 

Cited       1610, 1611 

1.162 Reproduced        1604 

Rules of Practice--Continued 

1.163 Reproduced        1605 

Cited       1603 

1.164 Reproduced        1605, 1608 

1.165 Reproduced        502.01, 1606 

1.165 Reproduced        502.01, 1606 

Cited       608.02, 1603 

1.166 Reproduced        1607 

1.167 Reproduced        1608 

Cited       1610 

1.167 Reproduced        1608 

Cited       1610 

1.171 Reproduced        1410 

Cited       320, 1440 

1.172 Reproduced        1410.01 

Cited       1440, 1443 

1.173 Reproduced        1411 

Cited       714.22, 1440, 1453, 1455 

1.174 Reproduced        1413 

Cited       502.01, 608.02, 608.02(i), 1440 

1.175 Reproduced        1414 

Cited       409.03(a), 409.03(b), 706.02(c), 

        1410, 1412.03, 1414.01, 

        1414.03, 1414.04, 1414.05, 

        1418, 1440, 1442.01, 1442.04, 

        1444, 1447, 1901.05, 

         2001, 2012, 2022.05 

1.176 Reproduced        1440 

Cited       708.01, 1418, 1440, 1441, 1442.03, 

         1443, 1445, 1450, 

        1901.04, 2003, 2012 

1.177 Reproduced        1451 

Cited       509, 1002.02(a), 1306.01, 1306.02, 

        1440, 1450 

1.178 Reproduced        1416 

Cited       1410, 1440 

1.179 Reproduced        1431 

Cited       202.05, 1440 

1.181 Reproduced        1002 

Cited       Introduction, 313, 317, 601.01(d), 

        601.01(g), 608.01(v), 

         608.02(a), 608.04(c), 

         706.07, 706.07(c), 711.03(c), 

         711.03(d), 714.13, 720.05, 

         818.03(c), 1001.01, 

        . .1002.01, 1002.02, 

        1002.02(b), (c), and (c)(1), 1201, 

Rules of practice--Continued 

        1206, 1208, 1208.03, 

        1906, 2240, 2248, 

        1.182 Reproduced        1002 

Cited       201.06(a), 402.10, 

                601.01(d), 601.01(g), 

         605.04(b), (c), and (f), 

        706.02(n), 724.02, 724.05, 

        1002.02(a) and (b), 1901.04 

1.183 Reproduced        1002, 1901.04 

Cited       201.03, 307, 503, 601.01(a) 

        608.02, 711.01, 

        711.03(c), 711.05, 712, 715.05, 

         1002.02, 1002.02(a), 1002.02(b), 

         1306.03, 1410.01, 1441, 

        1442.03, 1481, 1505, 

        1893.03(c), 1890, 1901.04, 2268 

1.184 Reproduced        1002 

1.191 Reproduced        1205 

Cited       Introduction, 608.04(c), 706.07, 

         714.13, 1206, 1209, 1904, 

         2001, 2201, 2233, 2273, 2315 

1.192 Reproduced        1206 

Cited       512, 706.07(g), 710.02(e), 711.03(c), 

        1204, 1205, 1207, 1208, 

        1215.01, 1215.04, 

        2233, 2273, 2274 

1.193 Reproduced        1208 

Cited       1002.02(c), 1205, 1208.03, 1208.04, 

         1209, 1211.01, 

        1448, 1901.05, 2001, 2273 

1.194 Reproduced        1209 

Cited       2233, 2273 

1.195 Reproduced        1212 

Cited       715.09, 716.01, 1208, 2273 

1.196(a) Reproduced   1213 

1.196(b) Reproduced   1214.01 

Cited       1212, 1214.06 

1.196(c) Reproduced   1213.01 

1.196(d) Reproduced   1213.02 

Cited       1214.06 

1.196(e) Reproduced   1213.02 

1.196(f) Reproduced   1214.01 

Cited       1213.02 

1.196 Cited   714.12, 1002.02(f), 1213, 1213.01, 

         1214.06, 1214.07, 

         1904, 2273 

Rules of practice--Continued 

1.197(a) Reproduced   1214 

1.197(b) Cited      1002.02(j), 1212, 1216 

1.197(c) Reproduced   1214.06 

1.197 Cited   1002.02(j), 1206, 1214.01, 

        1214.03, 1214.06, 1215.04, 

         1216, 1216.01, 1216.02, 2273 

1.198 Reproduced        1214.07 

Cited       714.12, 1002.02(c), 1214.01, 

         1214.04, 1216, 2273 

1.201 Cited   708.01, 1002.02(f), 2302 

1.202 Cited   2300.01 

1.203 Cited   2300.01 

1.204 Cited   1208, 2308, 2317 

1.205 Cited   2284, 2300.01 

1.206 Cited   1205 

1.207 Cited   2300.01 

1.212 Cited   1002.02(c), 1205 

1.215 Cited   2300.01 

1.224 Cited   2300.01 

1.227 Cited   2300.01 

1.231 Cited   2284, 2300.01,  2333 

1.238 Reproduced        2300.01 

1.243 Cited   2284 

1.244 Cited   1002.02(f), 2300.01, 2340 

1.245 Cited   2390 

1.248 Reproduced        1901 

Cited       720.01, 1216.01, 1216.02, 

        1901.04, 1901.05, 2001, 

        2249, 2254, 2267 

1.256 Cited   720.04, 1216 

1.257 Cited   1105.04, 1109(a),1109.02, 2350 

1.258 Cited   2300.01 

1.262 Cited   711.01 

1.263 Cited   2300.01 

1.265 Cited   1206, 2300.01 

1.266 Cited   2300.01 

1.291 Reproduced        1901 

Cited       724, 724.03, 1404, 1901.01 to 1901.07, 

        1901.07(a), 1901.07(b), 1902,  1904, 

        1906, 1907, 2001, 2001.04, 

        2001.05,  2013,  2360 

1.292 Reproduced        720 

Cited       509, 706.03(v), 720.01, 720.02, 

        720.04,  1002.02(a),  1901.02, 

        2360 

1.293 Reproduced        1101 

Rules of practice--Continued 

1.295 Reproduced        1105 

Cited       1002.02(c)(1) 

1.296 Reproduced        1109 

Cited       1002.02(c)(1) 

1.297 Reproduced        1111 

1.301 Reproduced        1216 

Cited       1216.01 

1.302 Reproduced        1216.01 

Cited       1216, 1216.02 

1.303 Reproduced        1216 

1.304 Reproduced        1216 

Cited       1002.02(o),  1205,  1214.03, 

        1214.06,  1216.01, 1216.02 

1.311 Reproduced        1303 

Cited       609 

1.312 Reproduced        714.16 

Cited       201.03, 603.01, 608.01(v), 608.02(z), 

        609, 706.02(n), 706.07(f), 

         711.03(c), 713.10, 714.15, 

        714.16, 714.16(a)-(e), 714.20, 1002, 

        1002.02(c), 1002.02(d), 1005, 1302.04, 

        1303.01, 1305, 1308, 1308.01, 1309.01, 

        1512, 1705, 2287 

1.313 Reproduced        1308 

Cited       201.06(a), 201.06(b), 201.08, 

        608.02(i), 609, 

        711.01, 711.05, 1002, 

        1002.02(b) and (c),1306.01 

1.314 Reproduced        1306.01 

Cited       1002.02(b), 1306.01 

1.316 Reproduced        712 

Cited       203.04, 203.07, 203.08, 

        711.03(c), 1002.02(b) 

1.317 Cited   1002.02(b) 

1.318 Reproduced        1857 

1.321 Reproduced        1490 

Cited       711.03(c),712, 804, 804.02, 

        804.03, 821.04, 1002.02(b), 

  1002.02(c)(3), 1490, 1505 

1.321(b) Reproduced   804.02 

1.322 Reproduced        1480 

Cited       1002.02(c),(d) and (l) 

1.323 Reproduced        1481 

Cited       307, 608.01(g), 

        1002.02(d)and(l), 1309, 1485 

Rules of practice--Continued 

1.324 Reproduced        1481 

Cited       201.03,1002.02(d) and (f), 1402, 

   1485, 2334 

1.335 Reproduced        311 

1.341(g) Reproduced   1702 

1.341 Cited   1002.02(m) 

1.342 Reproduced        1402.01 

Cited       1002.02(m) 

1.346 Cited   2001 

1.347 Cited   714.01(a) 

1.348 Cited   510, 714.01(a) 

1.351 Reproduced        Introduction, 1001 

1.352 Reproduced        Introduction, 1001 

1.362 Reproduced        2504 

1.362(d) Cited      2506 

1.362(e) Cited      2506, 2530 

1.363 Reproduced        2540 

1.366 Reproduced        2515 

1.366(b) Cited      2511 

1.366(f) Cited      2550 

1.366(g) Cited      2520 

1.371 Cited   509.02 

1.377 Reproduced        2580 

Cited       1002.02(b), 2530 

1.378 Reproduced        2590 

Cited       509.03, 1002.02(b), 2530 

1.378(e) Cited      509 

1.401 Cited   1802 

1.412 Cited   1805 

1.413 Reproduced        1840 

1.414 Reproduced        1885 

Cited       1890 

1.415 Reproduced        1853 

1.416 Reproduced        1862 

1.421 Cited   1805, 1817, 1817.01 

1.422 Reproduced        1820 

Cited       409.01 

1.423 Cited   409 

1.425 Cited   1002.02(a), 1805, 1820 

1.431 Reproduced        1810 

1.432 Cited   1817 

1.433 Cited   1812 

1.434 Reproduced        1821 

1.435 Reproduced        1823 

1.436 Reproduced        1824 

1.437 Reproduced        502.01, 1825 

Rules of practice--Continued 

1.438 Reproduced        502.01, 1826 

1.445 Cited   509, 509.02 

1.446 Reproduced        1847 

1.451 Reproduced        201.13(b) 

Cited       1830 

1.455 Reproduced        402.09, 1807 

1.475 Reproduced        1850, 1875.01 

Cited       324, 1850, 1875, 1875.01, 1893.03, 

        1893.03(d), 1895.01, 1896 

1.477 Reproduced        1850 

Cited       1847 

1.480 Reproduced        1864 

1.482 Cited   1867 

1.484 Reproduced        1878 

Cited       1878.02 

1.485 Reproduced        1864.01 

Cited       1871 

1.488 Reproduced        1875 

1.489 Reproduced        1875.02 

1.491 Reproduced        1893.01 

Cited       609, 1893.01(a)(1), 1893.01(b)(1) 

1.492 Cited   1893.01(c), 1896 

1.494 Reproduced        1893.01(a) 

Cited       201, 201.11(a), 502.01, 1893.01(a)(1), 

         1893.01(e), 1893.02, 1893.03(a), 1895.01 

1.495 Reproduced        1893.01(b) 

Cited       201, 201.11(a), 502.01, 

        1879.03, 1893.01(b)(1), 

        1893.01(b)(2), 1893.01(e), 1893.02, 

        1893.03(a), 1895.01 

1.496 Cited   708, 1893.01(d), 1893.03(b) 

1.497 Cited   605.04 

1.499 Reproduced        1893.03(d) 

Cited       1895.01, 1896 

1.501 Reproduced        2202 

Cited       609, 1920, 2003.01, 2201, 2204, 

        2205, 2206, 2210, 2214, 2215, 2225, 

        2227, 2244,2246, 2254, 2256, 2267 

1.502 Cited   711.03(c) 

1.510 Reproduced        2210 

Cited       324, 502.01, 509, 509.01, 714, 1105, 

        2003.01, 2201, 2202, 2204, 

        2211-2219, 2221, 2225, 2227, 

        2228,2239, 2249, 2254, 2256, 

        2257,2258, 2262,  2267, 2284 

1.515 Reproduced        2240 

Rules of practice--Continued 

Cited       1002.02(c), 2201, 2241, 

        2243, 2244,2246, 

        2248, 2249, 2255,2265, 2283-2286 

1.520 Reproduced        2239 

Cited       103, 1002.02(b) ,2201, 2212, 

        2229, 2241, 2246, 2249 

1.525 Reproduced        2246 

Cited       2201, 2202, 2254, 2268,2277, 

        2283, 2285, 2286, 2288 

1.530 Reproduced        2249 

Cited       714, 1449.01,2201, 2221, 2252, 

        2253, 2256,2257, 2260, 2261, 

        2265,2267, 2268, 2271, 2281, 

        2283-2286 

1.535 Reproduced        2251 

Cited       2201, 2202, 2204, 2249, 2252, 

        2253, 2256, 2257, 2260, 2261 

        2262, 2265, 2267, 2281, 2284-2286 

1.540 Reproduced        2252 

Cited       2201, 2267 

1.550 Reproduced        2254 

1.550 Cited   710.02, 710.02(e), 1002.02(c), 

        1205, 1206, 1216, 2201, 2221, 

        2267, 2283-2286 

1.552 Reproduced        2258 

Cited       2201, 2246, 2253, 2285 

1.555 Reproduced        2280 

Cited       724, 724.03, 2014, 

        2201, 2202, 2256, 2257 

1.560 Reproduced        2281 

Cited       2201 

1.565(a) Reproduced   2282 

1.565(b) Reproduced   2284 

1.565(c) Reproduced   2283 

1.565 Cited   1002.02(c), 1449.01,2201, 2207 

        2285, 2288 

1.570 Reproduced        2288 

Cited       1205, 1206, 2201, 2254, 2285, 2287 

1.601 Reproduced        2301.02 

Cited       509.02, 715, 1002.02(c) and (f), 

        715.05, 2138.01 2303, 

        2306, 2363.03, 2387 

1.602 Reproduced        2302 

1.603 Reproduced        2303 

Cited       1002.02(d) 

1.604 Reproduced        2304 

Rules of practice--Continued 

Cited       2305 

1.605 Reproduced        2305 

Cited       706.03(u), 710.02(c), 2305.03 

1.606 Reproduced        2306 

Cited       2309.01 

1.607 Reproduced        2307 

Cited       708.01, 2001.06(d), 2305, 2306, 

        2307.03, 2307.04, 2307.05, 2307.06 

1.608 Reproduced        2308 

Cited       715.05, 1002.02(c),1208, 2306, 

        2308.01, 2308.02, 2309.03, 

        2312, 2317, 2333.01, 2371 

1.609 Reproduced        2309 

Cited       2305 

1.610 Reproduced        2310 

Cited       502, 2300.01, 2316, 2345, 2355 

1.611 Reproduced        2311 

Cited       710.02, 710.02(e), 2390 

1.612 Reproduced        2312 

Cited       103, 720,1002.02(f), 2309.03, 2314 

1.613 Reproduced        2313 

Cited       402.09, 1002.02(g), 2309.02 

1.614 Reproduced        2314 

Cited       2300.02 

1.615 Reproduced        2315 

Cited       1002.02(g), 2307.01 

1.616 Reproduced        2316 

Cited       103, 2300.01, 2377, 2387, 2390 

1.617 Reproduced        2317 

Cited       2308.02, 2312, 2384 

1.618 Reproduced        2318 

Cited       601, 2353, 2356 

1.621 Reproduced        2321 

Cited       502.01 

1.622 Reproduced        2322 

Cited       2362 

1.623 Reproduced        2323 

1.624 Reproduced        2324 

1.625 Reproduced        2325 

Cited       2355 

1.626 Reproduced        2326 

1.627 Reproduced        2327 

1.628 Reproduced        2328 

1.629 Reproduced        2329 

1.630 Reproduced        2330 

1.630 Cited   201.13, 201.14(a) 

Rules of practice--Continued 

1.631 Reproduced        2331 

Cited       1002.02(g) 

1.632 Reproduced        2332 

Cited       2321, 2354 

1.633 Reproduced        2333 

Cited       714.16(b), 720, 2301.02, 2305.01, 

        2309.01, 2309.02, 2311, 2314, 

        2321, 2331, 2333.01, 2333.02, 

        2335, 2337, 2339, 2358, 2360, 

        2362, 2363.03, 2390, 2355 

1.634 Reproduced        2334 

Cited       201.03, 1002.02(g), 1485, 2322, 

        2335, 2339, 2355, 2363.03 

1.635 Reproduced        2335 

Cited       1002.02(g), 2312, 2316, 2352, 

        2356, 2373, 2383, 2384, 2385, 2387 

1.636 Reproduced        2336 

1.637 Reproduced        2337 

Cited       2312, 2356, 2364 

1.638 Reproduced        2338 

Cited       2344, 2384 

1.639 Reproduced        2339 

Cited       2371 

1.640 Reproduced        2340 

Cited       2312, 2337, 2355, 2385, 2390 

1.641 Reproduced        2341 

Cited       720.05, 1004, 2307.02 

1.642 Reproduced        2342 

1.643 Reproduced        2343 

1.644 Reproduced        2344 

Cited       1002, 1002.02(o), 2340, 2364 

1.644(e)(f) Cited 509 

1.645 Reproduced        2345 

Cited       710.02, 710.02(e), 720.04,1216, 

        2387, 2390 

1.646 Reproduced        2346 

Cited       720.01, 1216, 1901 

1.647 Reproduced        2347 

1.651 Reproduced        2351 

Cited       2352, 2387 

1.652 Reproduced        2352 

Cited       2390 

1.653 Reproduced        2353 

Cited       502.01, 2352, 2356, 2372, 2376, 2377 

1.654 Reproduced        2354 

Cited       720.04, 2332 

Rules of practice--Continued 

1.655 Reproduced        2355 

1.656 Reproduced        2356 

Cited       2332, 2382, 2385 

1.657 Reproduced        2357 

1.658 Reproduced        2358 

1.658 Cited   1216, 2333, 2354, 2363.03 

1.659 Reproduced        2359 

1.660 Reproduced        2360 

1.661 Reproduced        2361 

Cited       2366 

1.662 Reproduced        2362 

Cited       2358, 2360, 2364 

1.663 Reproduced        2363.03 

Cited       2364 

1.664 Reproduced        2363 

1.665 Reproduced        2365 

1.666 Reproduced        2366 

Cited       1002.02(f) 

1.671 Reproduced        2371 

Cited       2339, 2344, 2372, 2382 

1.672 Reproduced        2372 

Cited       2317, 2339, 2353, 2371, 2373, 2384, 

        2390 

1.673 Reproduced        2373 

Cited       103, 2371, 2372, 2384, 2385 

1.674 Reproduced        2374 

Cited       2376, 2384 

1.675 Reproduced        2375 

Cited       2385 

1.676 Reproduced        2376 

Cited       502.01, 2353 

1.677 Reproduced        2377 

1.678 Reproduced        2378 

1.679 Reproduced        2379 

1.682 Reproduced        2382 

Cited       2353 

1.683 Reproduced        2383 

Cited       2353 

1.684 Reproduced        2384 

Cited       502.01, 2353, 2373 

1.685 Reproduced        2385 

1.687 Reproduced        2387 

Cited       103, 2351, 2388 

1.688 Reproduced        2388 

Cited       2353 

1.690 Reproduced        2390 

Rules of practice--Continued 

1.710 Cited   1002.02(a) 

1.740 Cited   1002.02(a) 

1.801 Reproduced        2403 

Cited       2401, 2402, 2403 

1.802 Reproduced        2404 

Cited       2401, 2402, 2404, 2404.03, 2407, 

        2407.01 

1.803 Reproduced        2405 

Cited       2401, 2402, 2405, 2409 

1.804 Reproduced        2406 

Cited       2401, 2402, 2406, 2406.01, 2407, 
2407.01 
1.805 Reproduced        2407 

Cited       2401, 2402, 2407, 2407.01, 

        2407.02, 2407.03, 2407.04, 

        2407.05, 2407.06, 2411,2411.04 

1.806 Reproduced        2408 

Cited       2401, 2402, 2408. 2411.01 

1.807 Reproduced        2409 

Cited       2401, 2402, 2409 

1.808 Reproduced        2410 

Cited       2401, 2402, 2410.01, 2411.01 

1.809 Reproduced        2411 

Cited       2401, 2402, 2406, 2407.04, 

        2411.02, 2411.03, 2411.05 

1.821 Reproduced        2422 

Cited       1002.02(a), 1823.02, 

        2401, 2420, 2421.02, 2422.01, 

        2422.02, 2422.03,2422.04, 

        2422.05, 2422.06, 2422.07, 2422.08, 

        2422.09, 2424, 2424.01, 2425, 

        2422.09, 2424, 2424.01, 2425, 

        2426, 2427.01, 2427.02, 2428, 2429 

1.822 Reproduced        2423 

Cited       2401, 2420, 2421.02, 2421.04, 2422, 

        2422.01, 2422.03, 2422.07, 2423.01, 

        2423.02,2423.03, 2425, 2427.02 

        2422.01, 2422.03, 2423.01, 

        2423.02,2423.03, 2425, 2427.02 

1.823 Reproduced        2424 

Cited       2401, 2420, 2422, 2422.03, 2422.07, 

        2423, 2423.01, 2424.01, 2424.02, 

        2424.03, 2425,2427.02, 2429 

1.824 Reproduced        2425 

Cited       2401, 2420, 2421.02, 2421.04, 

        2422, 2422.07, 2422.09, 2425, 2429 

Rules of practice--Continued 

1.825 Reproduced        2426 

Cited       1823.02, 2401, 2420, 2421.02, 2422, 

        2422.07, 2422.08, 2426, 2427.01, 

        2427.02, 2428, 2429 

2.145 Cited   1002.02(o) 

2.148 Cited   1002.02 

2.6 Cited 301.01, 302.06 

3.1 Reproduced      301 

3.11 Reproduced       302 

Cited       301, 313, 317.03, 323.01 

3.21 Reproduced       302.03 

Cited       315, 317.01 

3.24 Reproduced       302.01 

3.26 Reproduced       302.02 

3.27 Reproduced       302.08 

3.28 Reproduced       302.07 

Cited       302 

3.31 Reproduced       302.07 

Cited       302 

3.34 Reproduced       323.01 

3.41 Reproduced       302.06 

Cited       323.01 

3.51 Reproduced       317.01 

Cited       302.07, 317.02 

3.54 Reproduced       317.03 

3.56 Reproduced       317.03 

3.61 Reproduced       302.04 

Cited       302.07 

3.71 Reproduced       402.07 

Cited       324 

3.73 Reproduced       402.07, 502.02, 324 

Cited       201.03, 409.03(f), 509.03, 

        706.02(l), 1490 

3.81 Reproduced       307 

Cited       302.08, 1002.02(c), 1481 

5.1 Reproduced      115 

Cited       502.01, 1832 

5.2 Reproduced      120 

Cited       502.01 

5.3 Reproduced      502.01, 120 

Cited       502.01, 1832 

5.4 Reproduced      120 

Cited       502.01, 1002.02(c)(1) 

5.5 Reproduced      120 

Cited       502.01, 1002.02(c)(1) 

5.6 Reproduced      120 

Rules of practice--Continued 

Cited       502.01 

5.7 Reproduced      120 

Cited       502.01 

5.8 Reproduced      120 

Cited       502.01 

5.11 Reproduced       140 

Cited       1832 

5.12 Reproduced       140 

Cited       115, 1002.02(c)(1), 1832 

5.13 Reproduced       140 

Cited       509 

5.14 Reproduced       140 

Cited       1832 

5.15 Reproduced       140 

Cited       509 

5.16 Reproduced       140 

5.17 Reproduced       140 

5.18 Reproduced       140 

5.19 Reproduced       140 

5.20 Reproduced       140 

5.25 Reproduced       140 

Cited       1002.02(c)(1) 

5.31 Reproduced       140 

5.32 Reproduced       140 

5.33 Reproduced       140 

Cited       120 

10.2 Cited  1002.02(o) 

10.3 Cited  1002.02(o) 

10.5 Cited  403 

10.6 Cited  402.01,1702 

10.6(c) Cited     402 

10.7 Cited  1002.02(m) 

10.9 Reproduced       402.01 

Cited       1002.02(m), 1702 

10.10 Reproduced        1702 

Cited       402.09, 1002.02(m) 

10.11 Reproduced        402 

Cited       403, 601.03 

10.18 Reproduced        402 

10.23 Cited   2333 

10.23(c)(18) Cited  402 

10.40 Cited   402.6 

10.66 Cited   404 

10.131 Cited    402 

10.160 Cited    1002.02(m) 

10.170          1002.02(m) 

Rules of practice--Continued 

15a.1-7 Reproduced  1701.01 

41 CFR 101 Cited        510 


S 


Sale, On (see On Sale) 

Same attorney, Interfering 
applications            2305, 2309.02 

Same invention, Comparing 
foreign application   201.15 

Sample letter on citation of prior art in patent        2205 

Saturday, Effect on time for response     502, 505, 

710.05, 2506 

Scientific and Technical Information 
Center (Library)        706.02(e), 707.05(e), 

717.05, 901.06(a) 

Scientific principle not patentable   706.03(a) 

Scope of claims             904.01(a), 2163.05, 2164.08 

Scope of class          903.02(b) 

Scope of reexamination      2258 

Screening new application for 
security review             115, 706.03(b) 

Seal            604.01 

Foreign application   602.04(a) 

Not required    604.01, 604.03(a) 

Venue       604.02 

Sealing oaths for interference, 
Primary's attention   1004 

Search: 

After reversal by Board of Appeals  1214.04 

Aids in Scientific and Technical 
Information Center  901.06(a) 

Analogous art areas   904.01(c) 

APS         902.03(e) 

Cards, Subclass definitions   902.02(b) 

Claim analysis      904.01 

Computer        717.05 

Fee-PCT       1827 

Field of                904.01(d), 1701 

File wrapper notation     705.01(a), 717.05, 904.01(d) 

Incomprehensible disclosure   702.01 

In Group, by member of public     713.02 

Informal application    702.01, 704 

INPADOC       901.06(a) 

Interference    2301.01(b) 

Mechanized  717.05 

Notes in classification definitions   902.02(a) 

Search--Continued 

Notes in file wrapper     705.01(a), 717.05, 903.07(a) 

Online Database       901.06(a) 

Outlining 904.01(d) 

Patentability report    705.01(a), 705.01(b) 

Prior examiner's        704 

Procedure 704, 904 

Report          1844 

Restriction requirement       808.02 

Scope       2112 

Selecting pertinent references      904.02 

Title       306 

Unduly extensive and burdensome       808.01(a), 

        809.02(d), 818.02(b) 

Search exchange, United States-Philippines  1711 

"Search Notes" box entries  717.05 

Search Room, Examiner's use   510 

Search Room hours 510 

"Searched" box entries      717.05 

Secret sale (see On Sale) 

Secrecy, Pending applications     Chapter 100 

Secrecy of international applications     110, 120 

"Secrecy Order" application   115, 120, 130 

Allowance 130, 1304 

Final rejection       130 

Interference    130, 2309.06 

Prosecution   130 

Review for Secrecy Order        115, 140 

Security, Application affecting       120 to 140 

Security Group, Cases submitted       120, 121, 

706.03(b) 

Security interest in patent, recording      313 

Security markings 121, 130, 140, 724, 

Security screening of new applications      115, 140 

Self-addressed postcard       503 

Sequence rules          2400, 2420 

Amendments to sequence listing and computer 
readable form     2426 

Amino acid definition     2424.01 

Applications affected, 
"new" applications  2421.01 

Background information      2401, 2420 

Bona fide response  2421.03 

Box sequence    2422.09 

Changes to rules        2421.04 

Coding regions, Depiction of    2423.02 

Compliance requirement      2422.07 

Sequence rules--Continued 

Computer readable form 
requirement   2422.04, 2425 

Definitions for nucleotides/amino acids       2422.01 

Effective date      2401, 2420 

Exclusive conformance requirement 2422.02 

Extensions of time  2421.03 

Format and symbols  2423, 2423.01 

Form paragraphs and notice to comply    2427 

Hand-delivery of sequence listings and 
computer readable forms       2422.09 

Headings for sequence listings      2432, 2433 

Helpful hints for compliance    2429 

Informational requirements for 
sequence listings 2424, 2424.01, 2424.02 

Mandatory information items   2433 

Miscellaneous requirements, information       2424.03 

"New" applications  2421.01 

Notification of failure to comply 2421.03, 2427 

Nucleotide definition     2422.01 

Numbering of sequences      2423.02 

Official copy of sequence listing 2422.04 

PatentIn information, training      2430 

Presumptions regarding compliance 2422.08 

Previously filed identical computer readable 
form, Reference to  2422.05 

Replacement of sequence listing and 
computer readable form      2426 

Sample sequence listing       2431 

Sample statements 2428 

Sanctions for failure to comply       2422.07 

Sequence identifier requirement       2422.03 

Sequence listing requirement    2422.03 

Patent Cooperation Treaty 1823.02, 1848 

Sequence presentation     2423.03 

Sequences embedded in application text      2422.03 

Sequences in drawings     2422.02 

Statement regarding content of paper 
and computer readable copies    2422.06, 2428 

Statement regarding new matter      2422.07, 2428 

Summary of requirements       2421.02 

Variants of a presented sequence        2422.03 

Voluntary compliance    2421.01 

Serial Number       502, 503 

Series of dependent claims  608.01(n) 

Service in reexamination        2220 

Service of citation in patent     1921 

Service of court papers on Commissioner       1216 

Shift of election   819 

Shortened statutory period  710.02 to 710.02(e) 

Distinction from time limit for reply     710.02(d), 

2307.02 

Signatory Authority, Full 1004 

Signatory Authority, Partial    1005 

Signature: 

Alteration in specification signed  608.01 

Amendment 714.01 

Signature improper  714.01(a) to 714.01(d) 

Signature missing 714.01(a) 

Signed by applicant, 
Not by attorney of record 714.01(d) 

Signed by attorney not of record        405 

Applicant 605.04 

Applicant changes name      201.03, 605.04(c), 717.02(b) 

Applicant, International application    1820 

Applicant unable to write 605.04(d) 

Application completeness        506 

Application papers  605.04 

Attorney not of record      405 

Correction of name  605.04(c) 

Divisional application, Omitted       201.06(a) 

Express abandonment   711, 711.01 

Facsimile 502.01, 502.02, 506, 605.04 

Full, first or middle name  605.04, 605.04(b) 

Joint applications  605.04(f) 

Legal representative    605.05 

Omitted from an application filed 
under Rule 60     201.06(a) 

Required on every paper       402, 502.02 

Title with  605.04(e) 

Uniformity with name    605.04(b), 1503 

Signing Examiner's letter 706.07, 707.08, 707.09 

Signing, File Wrapper     1302.13 

Simultaneous issue of patents     1306.02 

Single means claim  2164.08(a), 2181 

Single signature form, Design application 1503 

Sketch of proposed drawing change 608.02(v) 

Sketch of subject matter of claims  904.01(a) 

Small Business Act  509.02 

Small Business Administration     509.02 

Small Entity Status   509.02 

Small Entity Status, Claiming     509.03 

Small Entity Status, for maintenance fees 2550 

Soft copy, Ordering   905.02 

Sole in original oath     602 

Sole inventor application 201.01 

Changed from joint  201.03 

Changed to joint        201.03 

Changed to other sole inventor      201.03 

Continuation of joint     201.07 

Continuation-in-part of joint     201.08 

Division of joint 201.06 

Reissue application, Joint to sole  1481 

Sole patent to joint patent   1481 

Solicitor's Office  302.04, 311, 601.03, 

1216.01, 1216.02, 1701.01, 2207 

Petitions decided 1002.02(k) 

Service of court papers on  1216 

Sources of information to disclose  2001.06 

Special Assistant to the Assistant 

Commissioner for Patents        1701.01 

Special case            708 to 708.03 

Accelerated examination       708.02 

Allowable application, Except for form      707.07(j), 

710.02(b), 714.14, 1301 

Appealed case     1204 

Applicant's age, health       708.02 

Cancer          708.02 

DNA         708.02 

Energy          708.02 

Five year pendency  707.02(a) 

HIV/AIDS        708.02 

Infringement    708.02 

List            708.01 

Manufacture   708.02 

Petition to make        708.02, 1002.02(a) 

Reexamination     2261 

Reissue application   706.03(x), 1442 

Rejected patent claim     2307.02 

Remanded        708.01 

Revived applications    711.03(c) 

Superconductivity 708.02 

Special examining procedure   708.02 

Special Program Law Office  201.03, 720, 720.01, 

1002.02(b) 

Special Program Examiner        103 

Species             802.01, 806.04(a) to 806.04(j) 

Anticipation by a generic chemical formula  2131.02 

Anticipation of a genus by the species      2131.02 

Cancellation of Species claims      821.01, 821.02 

Claims restricted to    806.04(e) 

Species--Continued 

Election (See Election of species.) 

How recognized      806.04(f) 

Independent inventions      802.01, 808.01(a) 

Mutually exclusive characteristics  806.04(f) 

Obviousness of      2144.08 

Patentability distinct      806.04(h) 

Patentability over genus        806.04(h) 

Plural          706.03(k), 808.01(a),809.02 

Reissue             1450 

Rejection 806.04(h), 2131.02 

Related             806.04(b) 

With allowable generic claim    809.02(b) 

Withdrawal of species claims    809.02(c), 821.01, 

821.02 

Specification (see also Disclosure)   608.01,  2161 

Amendment, Instructions for entry 714.22, 714.23 

Arrangement   608.01(a) 

Best Mode (see also Best Mode)      2165 

British "provisional" and complete  201.15 

Changes prior to filing       601.01(a), 608.01 

Completeness    608.01(p), 2161, 2163-2165 

Computer Lists      608.05 

Confused by amendments      608.01(q), 1302.02 

Content of  608.01(a) 

Correction by Examiner's 
amendment 1302.04 to 1302.04(g) 

Correction by initialing        1302.04 

Cross-noting of related 
applications    202.01, 1302.04 

Derogatory remarks prohibited     608.01(r) 

Description   608.01(g), 2163, 2163.02 

Design application  1503.01 

Enablement (see also Enablement)        2164 

English language        608.01 

Format          608.01 

Illustrations in        608.01 

Incorporation by reference  2163.07 

Interlineation prior to filing      608.01 

Language faulty       608.01 

Missing pages     601.01(d) 

New matter  608.04, 706.03(o), 2163.06 

Omitted pages     601.01(d) 

Parts       608.01(a) 

Provisional application       601.01(b) 

Reference to copending application 
brought up to date  1302.04(f) 

Specification--Continued 

Reference to prior patent or application        202.01 

Reissue application   1411 

Requirements for        2161 

Return          608.01 

Rewritten 608.01(q), 1302.02 

Signature 605.04 

Substitute, Amendment including       714.19, 714.20 

Substitute, New matter      714.20 

Substitute specification        608.01(q),714.19, 714.20 

Summary of invention    608.01(d) 

Terminology basis for claims    608.01(o), 2163.07 

Title of invention  606 

Title of invention, Changed   606.01 

Transfer        608.01(t) 

Written description (see also Written 
Description)    2163 

Specimen, Composition of matter       608.03 

Specimen, Handling  608.03(a) 

Specimen, Plant application   1607 

Stale oath or declaration 602.05 

Stamp: 

Draftsman's   608.02(a), 608.02(o) 

Group date  714.18 

Office date   502, 505, 506, 710.01(a), 714.18 

Seal            604.01 

Starting material, Chemical compound    608.01(p) 

Statement, Examiner's: 

New ground of rejection       1208.01 

Petition                1002.02(c) 

Petition from abandonment 711.03(d) 

Reply brief   1208 

Special status      708.01 

Statement by inventors when 
changing inventorship     201.03 

Statement by owner in reexamination   2249 

Statement of invention, Coextensive 
with claims         608.01(d) 

Statement of invention, 
Review on allowance   1302.01 

Statement, Prior Art    609 

Status inquiries                203.08 

Congressional     203.08(a) 

Status letter       203.08, 1705 

Status of application     102, 203 

Abandoned 203.05 

Abandoned for failure to pay issue fee      203.07 

Statutes of application--Continued 

Allowed or in issue   203.04 

Amended       203.03 

Incomplete  203.06 

New         203.01 

Parent patent application 102, 201.11 

Referred to in foreign patent     102, 203.08 

Rejected        203.02 

Statute, Citation Introduction 

Statutes: 

Atomic Energy Act Cited       120, 706.03(a)-(b) 

Public Law 87-333 Cited       201.13 

Public Law 92-34 (Postal Emergency)   511 

Public Law 94-131 608.01(n) 

Public Law 96-517 509.02, 2201, 2209 

Public Law 97-247 509.02, 509.03, 511, 513, 

        601.01, 605.04, 706.07(e)-(f), 

        710.02(e), 711.03(c), 714.13, 2265 

Public Law 98-622 201.03, 605.07, 706.02(k) 

1504.05, 2217, 2258, 

 2300.01, 2308.02, 2501 

Public Law 100-418, Section 9101(c),(d)       140 

Public Law 103-465  201.03, 201.11, 601.01(d), 

706.07(g) 

Public Law 506 (81st Cong.) 

Article 136 Cited 604.03(a) 

Revised Statute of 1874       Introduction 

5 U.S.C. 552(a)(2)  103 

5 U.S.C. 6103 Cited (Office closings)     710.05 

9 U.S.C. 10, 11 Reproduced  2390 

10 U.S.C. 140(c)        120 

15 U.S.C. 15(b) Cited     101 

15 U.S.C. 1057 Cited    502.01 

15 U.S.C. 1058 Cited    512 

15 U.S.C. 1059 Cited    512 

15 U.S.C. 1062, 1064, 1065, 1071 Cited      512 

18 U.S.C. 207 Cited   1702 

18 U.S.C. 1001 Reproduced 602 

Cited     151, 201.06(a), 711.03(c) 

18 U.S.C. 1905 Cited    101 

18 U.S.C. 2071 Reproduced 101 

20 U.S.C. 114 Cited   509.02 

21 U.S.C. 321 Cited   608.01(p) 

21 U.S.C. 372 Cited   608.01(p) 

26 U.S.C. 501     509.02, 509.03 

28 U.S.C. 1292(b) Cited       2344 

28 U.S.C. 1745      901.05 

Statutes--Continued 

28 U.S.C. 1746 Reproduced 602 

Cited     602.03 

35 U.S.C. 1 Reproduced      Introduction 

35 U.S.C. 2 Reproduced      1309 

35 U.S.C. 3 Reproduced      1001 

35 U.S.C. 4 Reproduced      309 

35 U.S.C. 6 Reproduced      1001 

35 U.S.C. 6 Cited Introduction, 710.02,710.02(c), 

        2000 

35 U.S.C. 7 Reproduced      1201 

Cited     1002.02(f) 

35 U.S.C. 8 Reproduced      901.06(a) 

35 U.S.C. 9 Reproduced      903.01 

35 U.S.C. 21 Reproduced       710.05 

Cited     201.13, 510, 512, 1805, 2506 

35 U.S.C. 21(a) Reproduced  511, 513 

35 U.S.C. 22 Reproduced       608.01 

35 U.S.C. 24 Cited  2300.02, 2335, 2371, 2372, 2387 

35 U.S.C. 25 Reproduced       602 

Cited     602.03, 1701.01 

35 U.S.C. 26 Reproduced       602 

Cited     605.04 

35 U.S.C. 32 Cited  1002.02(o) 

35 U.S.C. 41(a)(1) Reproduced     201.11, 607 

35 U.S.C. 41(b) & (c) Reproduced        2501 

35 U.S.C. 41(a)(2) & (4)        1306, 1415 

35 U.S.C. 41 Reproduced       2501 

Cited     201.06(b), 509.02, 509.03, 

        608.01(n), 710.02, 710.02(e), 

        711.03(c), 712,714.16(c), 1205, 

        1306, 1415, 1505, 2273, 2274 

35 U.S.C. 100 Reproduced        701 

Cited     706.03(a), 1921 

35 U.S.C. 101 Reproduced        701, 706.03(a) 

Cited     201, 608.01(p), 706, 706.03(a), 

        706.03(d), 707.07(l), 

        716.08, 804, 821.04, 1206, 

        1503, 1504,1601, 1605, 1608, 

        1902.01(b), 2105, 2106, 2111, 

  2133.03(e)(6), 2138, 2138.01, 

         2217, 2258, 2403.02, 2403 

35 U.S.C. 102 Reproduced        706.02 

Cited     201.03, 201.11, 201.13, 

         201.13(b), 409.03(g), 506, 

        601.01(a), 605.04, 605.07, 701, 

        706, 706.02(a-i), 706.02(k-n) 

Statutes--Continued 

        706.03(u), 707.05(f), 707.07(d), 

        711.06(a), 715, 715.01, 715.01(b), 

        715.01(c), 715.05, 715.10, 716.10, 

        720, 720.02, 804, 804.02, 804.03, 

        821.04, 901.01, 901.04, 901.05, 

        901.05(b), 901.06(a), 1105.05, 

         1109(a), 1109.02, 1206, 1208, 

        1302.14, 1504.02, 1506, 1608,  1843, 

        1893.03 1895.01, 1896, 1896, 1897, 

        1901.02, 2004, 2105, 2106, 2111, 

        2112, 2113, 2121, 2121.01, 2121.02, 

        2126, 2126.02, 2127,2128, 2131, 

        2131.01, 2131.02, 2131.04, 2131.05, 

        2132-2133.03(e)(7), 2137, 

        2137.01, 2137.02, 2138, 2138.01, 

        2138.02, 2138.03, 2146 

        2209, 2217, 2258, 2363.03, 2390 

35 U.S.C. 103 Reproduced  706.02, 706.02(m), 

706.02(n) 

Cited     605.07, 701, 706, 706.02(c), 

        706.02(j-n), 706.03(u), 

        707, 707.07(d),711.06(a), 715, 

        715.01, 715.01(b), 715.02, 715.05, 

        716.01(a), 716.02(a), 716.02(e), 

        720, 720.02, 803, 803.02, 804, 

        804.02, 809.02(a), 804.03, 

        806.04(b), 821.04, 901.05, 901.06(a), 

        1109(a), 1109.02, 1206, 1208, 

        1302.14, 1412.01, 1412.02, 1504.03, 

        1608, 1843, 1901.02,2004, 

        2105, 2106, 2112, 2112.02, 2113, 

         2116.01, 2121, 2121.01, 

        2127, 2129, 2131.03, 2137.02, 

        2138.03, 2138.05, 2141, 2146, 2209, 

        2217, 2258, 2262, 2390 

35 U.S.C. 104 Reproduced        715.07(c) 

Cited     715, 715.01(c), 715.07(c) 

        2132, 2133.03(d), 2138.02, 

35 U.S.C. 111 Reproduced        201, 601 

Cited     201, 201.03, 201.06(b), 

         201.11(a), 403, 409.03(a), 

        409.03(b), 506, 09.02, 601, 

        601.01(a), (e), and (f), 

        605.04, 608.01, 609, 

        702, 801, 1410, 1410.01, 

        1850, 1893, 1893.03(a), 1893.03(c), 

Statutes--Continued 

        1893.03(d), 1895, 1895.01, 1896 

35 U.S.C. 111(b) Reproduced   201, 201.04(b) 

Cited     201.11, 203.05, 609 

35 U.S.C. 112 Reproduced        706.03(c) 

Cited     201.04(b), 201.06, 201.08, 

        201.11, 201.14(b), 201.15, 

        506, 601, 601.01, 601.01(d), 

        601.01(e) 608.01, 608.01(b), 

        608.01(h), 608.01(k), 608.01(n), 

        608.01(p), 608.02, 608.02(a), 

        608.04, 702.01, 706.01(c), 

        706.02(c), 706.03(d), 706.03(o), 

        706.07(a), 707.07(d), 

        707.07(l), 707.07(j), 715.10, 716.09, 

        821, 821.04, 1004, 1105.04, 

        1109(a), 1206, 1208, 1411.02, 

         1503, 1503.02, 1504.01, 

         1504.04, 1504.20, 1605, 1608, 

        1901.02, 1902.01(b), 2105, 

        2106.01, 2106.02,2111.01, 2124, 

        2133.03(e)(6), 2138, 2138.05, 2161, 

        2162, 2171, 2181, 2217, 2258, 

        2308.02, 2402, 2403, 2403.02, 2404, 

        2404.01, 2404.03, 2405, 2406, 2406.01, 

        2406.02, 2406.03, 2407.01, 2407.03, 

        2411, 2411.01, 2411.02, 2411.04, 

        2422, 2422.03, 2422.08, 2429 

35 U.S.C. 113 Reproduced        608.02 

Cited     506, 601, 

        601.01(d), (f), and (g), 608.02(a) 

35 U.S.C. 114 Reproduced        608.03 

35 U.S.C. 115 Reproduced        602 

Cited     201.06(a), 409.03(a), 409.03(b), 

        601, 604.06, 605.01, 1893.01(e) 

35 U.S.C. 116 Reproduced        409.03, 605.07 

Cited     201.03, 409.03(a),409.03(i), 

        605, 1402, 2132.01, 2137.01 

        2138.01 

35 U.S.C. 117 Reproduced        409.01(a) 

Cited     409.03(c) 

35 U.S.C. 118 Reproduced        409.03 

Cited     409.03(b), 409.03(f) and (i) 

35 U.S.C. 119 Reproduced        201.13 

Cited     201.03, 201.04(b), 201.06, 

        201.06(a), 201.06(b), 201.08, 

        201.11, 201.13, 201.13(a), 

Statutes--Continued 

        201.13(b), 201.14, 201.14(a)-(c), 

         201.16, 202.03, 409.03(d), 

          409.03(g), 502.02, 510, 601.01, 

        605.07, 706.02(a), 702.02(b), 

         706.02(l), 715, 715.01, 715.07(c), 

        720,  901.05, 1105.04, 1111.10, 

        1402, 1417, 1504, 1504.10, 

        1506, 1893.03(c), 1895.01, 1896, 

        2126.01,  2138.06, 2163.03, 2363.03 

35 U.S.C. 119(e) Reproduced   201.11 

Cited     201.03, 201.06, 201.06(a), 201.07, 

        201.08, 201.11, 306.01, 509.03 

35 U.S.C. 120 Reproduced        201.11 

Cited     103, 201.03, 201.04, 201.04(b), 

        201.06, 201.06(a)-(b), 201.07, 

        201.08, 201.11(a), 201.13, 

        201.13(b), 201.16, 306.01, 409.03(g), 

        509.03, 601.01, 602, 605.07, 609, 

        706.02, 706.02(k), 706.07(g), 

        710.02(e), 711.02(c), 711.03(c), 

        711.06, 720, 802, 1105.04, 1216.01, 

        1302.04, 1309.01, 1490, 1503.02, 

        1504.20, 1893.03(c), 1895, 

        1895.01, 1896, 2126.01, 2138.05, 

         2138.06, 2163.03, 2217 

35 U.S.C. 121 Reproduced        802 

Cited     201.04(b), 201.06(b), 201.06, 

        201.07, 201.08, 201.11, 201.06(a), 

         409.03(g), 509.03, 601.01, 605.07, 

        706.02(k), 706.07(g), 802.01, 803.01, 

        804.01, 804.04, 805, 806.04(a), 

        808.02, 809.02(a), 817, 821.04, 

        1309.01, 1504.05, 1895.01 

35 U.S.C. 122 Reproduced        101 

Cited     103, 201.06(b), 402, 405, 

        608.01(p), 706.02(f), 706.02(k), 724.04, 

        724.04(a), 1208, 1901.05 

        2410, 2410.01, 2422.04 

35 U.S.C. 131 Reproduced        701 

Cited     1504, 2001, 2125.01 

35 U.S.C. 132 Reproduced        706.03(o) 

Cited     201.06(a), 608.01, 608.01(b), 

        608.01(n), 608.02, 608.04, 

        706.02(c), 706.07(g), 707, 

         804.03, 1411.02, 1503.02, 

        1504.01, 1605, 2001, 

Statutes--Continued 

         2106.02, 2254, 2258 

        2404.03, 2406.01, 2411.01, 2422.07 

35 U.S.C. 133 Reproduced        710 

Cited     201.13, 510, 706.02(c), 710.01, 

         710.02, 710.02(b), 710.02(d), 

        711.03(c), 1002.02(b), 2254 

35 U.S.C. 134 Reproduced        1205 

Cited     720.05, 1216, 1701.01, 1904, 2273 

35 U.S.C. 135 Reproduced 1100, 2300.01 

Cited     502.01, 711.01, 715.05, 804.03, 

        1002.02(f), 1216.01, 1305, 

        2363.03, 2390, 

35 U.S.C. 137 Cited   150 

35 U.S.C. 141 Reproduced        1216 

Cited     502.01, 720.05, 1107, 1214.07, 

        1216.01, 1216.02, 2273, 2355, 

        2358, 2361, 2363.03 

35 U.S.C. 142 Reproduced        1216.01 

Cited     720.05, 1002.02(k), 1216 

35 U.S.C. 143 Reproduced        1216.01 

Cited     720.05 

35 U.S.C. 144 Reproduced        1216.01 

Cited     720.05 

35 U.S.C. 145 Reproduced        1216 

Cited     720.05, 1002.02(k), 1214.07, 

        1216, 1216.01, 1216.02, 2279 

35 U.S.C. 146 Reproduced        1216 

Cited     1002.02(k), 1107, 1109.01, 

        1109.02, 1216, 1216.01,1216.02, 

        2355, 2358,2360, 2361, 2363.03, 2371 

35 U.S.C. 151 Cited   201.13, 203.07, 510, 

        710, 710.02(e), 

        711.03(c), 1306, 1308 

35 U.S.C. 152 Reproduced        307 

35 U.S.C. 153 Reproduced        1309 

35 U.S.C. 154 Reproduced        1309.01 

Cited     201.04(b), 201.06, 201.07, 

         201.08, 201.11, 601.01(d) 

35 U.S.C. 157 Reproduced        1101 

Cited     1513 

35 U.S.C. 161 Reproduced        1601 

Cited     201, 609 

35 U.S.C. 162 Reproduced        1605 

Cited     601.01(e), 608.01 

35 U.S.C. 163 Reproduced        1601 

35 U.S.C. 164 Reproduced        1608 

Statutes--Continued 

35 U.S.C. 171 Reproduced        1501 

Cited     201, 601.01(e) 608.01, 

        609, 1504.01, 1504.05 

35 U.S.C. 172 Reproduced        1506, 1504.10 

Cited     201.13, 201.14(a), 

        901.05, 1504.02 

35 U.S.C. 173 Reproduced        1505 

35 U.S.C. 181 Cited   115, 120, 

35 U.S.C. 182 Cited   140 

35 U.S.C. 184 Reproduced        140 

Cited     1002.02(c)(1) 

35 U.S.C. 185 Reproduced        140 

35 U.S.C. 186 Reproduced        140 

35 U.S.C. 187 Reproduced        140 

35 U.S.C. 188 Reproduced        140 

35 U.S.C. 201 Cited   509.02 

35 U.S.C. 202 Cited   509.02, 509.03 

35 U.S.C. 251 Reproduced        1401 

Cited     608.04, 609, 706.03(x), 

        1305, 1402, 1403, 

        1410, 1410.01, 1411.02, 

        1412.01, 1412.03, 1414, 

        1414.03, 1444, 1450, 1490, 

        1902.01(b), 2012, 2012.01, 2422.07 

35 U.S.C. 252 Reproduced        1460 

Cited     1305, 2293 

35 U.S.C. 253 Reproduced        1490 

Cited     711.06, 1305, 2362 

35 U.S.C. 254 Reproduced        1480 

Cited     1305 

35 U.S.C. 255 Reproduced        1481 

Cited     201.16, 1305, 1490 

35 U.S.C. 256 Reproduced        1481 

Cited     201.03, 1305, 1402 

35 U.S.C. 261 Reproduced        301 

35 U.S.C. 262 Reproduced        301 

35 U.S.C. 267 Reproduced        710 

Cited     1002.02(c)(1) 

35 U.S.C. 282 Cited   706, 706.02(n), 716.07, 

1701, 2124 

35 U.S.C. 290 Cited   2207 

35 U.S.C. 293 Reproduced        302.04 

35 U.S.C. 294 Reproduced        311 

35 U.S.C. 301 Reproduced        2202 

Cited     2201, 2203, 2204, 2205, 2206, 

        2210, 2240, 2254 

Statutes--Continued 

35 U.S.C. 302 Reproduced        2210 

Cited     1305, 2201, 2212, 2217, 2240,2246 

35 U.S.C. 303 Reproduced        2240 

Cited     1305, 2201, 2209, 2241, 2242, 

        2244, 2248, 2256 

35 U.S.C. 304 Reproduced        2246 

Cited     1305, 2201, 2216, 2246, 

        2251, 2254, 2285 

35 U.S.C. 305 Reproduced        2254 

Cited     1305, 2201, 2209, 2254, 2261, 

        2265, 2272, 2284, 2286 

35 U.S.C. 306 Reproduced        1216, 2273 

Cited     1205, 1305, 2201 

35 U.S.C. 307(a) Reproduced   2288 

35 U.S.C. 307(b) Reproduced   2293 

35 U.S.C. 307 Cited   1305, 2201, 2250, 

        2285, 2287, 2293 

35 U.S.C. 351 Cited   1802 

35 U.S.C. 361 Reproduced        1805 

Cited     1801, 1862 

35 U.S.C. 362 Reproduced        1840 

Cited     1862 

35 U.S.C. 363 Reproduced        1810 

Cited     201.11(a), 605.04, 

        715, 1893.03(b), 1895, 

        1895.01, 1896 

35 U.S.C. 364 Cited   1862 

35 U.S.C. 365 Reproduced        201.13(b) 

Cited     201.04(b), 201.06, 201.07, 

         201.08, 201.11, 201.11(a), 201.13, 

        502.02, 509.03, 707.07(g), 715.07(c), 

        1893.03(c), 1895, 1895.01 

35 U.S.C. 368 Reproduced        110 

Cited     1832 

35 U.S.C. 371 Reproduced        1893.01 

Cited     120, 201, 201.03, 201.11(a), 

        509, 605.04(a), 609, 706.07(g), 

        715, 801, 802, 1828, 1832, 

        1850, 1879.03, 1893, 1893.01(a)(2), 

        1893.01(b)(1), 1893.01(b)(2), 

        1893.01(d), 1893.01(e), 1893.02, 

         1893.03(a), 1893.03(b),-(e), 

        1895, 1895.01, 1896 

35 U.S.C. 373 Reproduced        1810 

Cited     1805 

35 U.S.C. 374 Reproduced        1857 

Statutes--Continued 

40 U.S.C. 486 Cited   510 

42 U.S.C. 141 Cited   120 

42 U.S.C. 2014      108, 706.03(b) 

42 U.S.C. 2181 Cited    120, 706.03(b) 

42 U.S.C. 2182 Reproduced 150 

Cited     115, 120, 151, 

        706.03(b), 

        1002.02(c)(1), 1002.02(d) 

42 U.S.C. 2185 Cited    706.03(b) 

42 U.S.C. 2457 Reproduced 150 

Cited     115, 120, 151, 

        1002.02(c)(1), 1002.02(d) 

Statutory authority of Commissioner   1001 

Statutory bar       706.02(a), 2133 to 2133.03(e)(7) 

Statutory bar, Rule 131 not available     715 

Statutory classes of invention      706.03(a) 

Statutory disclaimer    1490 

Statutory Invention Registration, SIR     706.02(l), 

711.06, 1100 

Provisional application       1101 

Statutory period (see also Period for response)       710.01 

Stay of reexamination     2285 

Stay of reissue             2285 

Stockholm Revision, Paris Convention    201.13(a) 

Strasbourg Agreement    903.09 

Stays considered in litigation      1442.05 

Stays denied            1442.05(b) 

Stays granted       1442.05(a) 

STIC            901.05, 901.06(a) 

Streamlined continuation application    201.07 

Strike patent application 1002.02(a) 

Subclass, List of patent numbers        902.03(c) 

Subcombination: 

Aggregation and       806.05(a) 

Combination and       802.01, 806.04(c), 806.05(b) 

Not generic   806.04(c) 

Species             806.04(b) 

Subgeneric Markush claims 2173.05(h) 

Subject matter, Nonstatutory    706.03(a) 

Subject Matter Combinations   903.02(b) 

Submission to Classification Group: 

Cancellation of Figures       608.02(t) 

Classification of application     903.08(d), 903.08(e) 

Patentability report    705.01(a) 

Submission to Drafting Branch: 

Cancellation of figures       608.02(t) 

Rearrangement of Figures        608.02(t) 

Return of drawing 608.02(y) 

Submission of Prior art by applicant    707.05(b) 

Submission to Patent Security Group: 

Atomic Energy, security review      115 

Confidential application or papers  121 

Defense invention, security review  115 

Secrecy Order case  120, 130 

Secret application or papers    121 

Security determination      115, 140 

Subpoena by court, Application file   1216.02 

Subscription correspondence address   title page 

Substantial new question of patentability 2216, 2242 

Substitute application: 

Assignment  306 

Copendency lacking  201.11 

Definition  201.09 

Does not carry ownership from parent    201.11 

File wrapper notation     202.02 

Reference to parent application       201.11 

Refile          201.10 

Substitute attorney   406 

Substitute for missing hard copy        901.09 

Substitute oath             602.02 

Substitute page             714.20 

Substitute specification        608.01(q), 714.19, 714.20 

Amendment incorporating       714.19, 714.20 

New matter  714.20 

Sufficiency of disclosure affidavit   716 

Suggested claims, Failure to make 706.03(u) 

Suggested claim made after end 
of statutory period   2305.03 

Suggestion of allowable claims 
by Examiner         707.07(j), 713.01 

Suggestion of claims for interference     2305 to 2305.04 

Suggestion of claims for interference, 
Time limit      710.02(c) 

Summary of action PTOL-326  707 

Summary of interview    713.04 

Summary of invention    608.01(d) 

Sunday or holiday, Effect on time for response      502, 

505, 710.05 

Sunday or holiday, Effect on reference      706.02(a) 

Supervisory Applications Clerk      714.13 

Supervisory Patent Assistant    707, 707.02(a) 

Supervisory Primary Examiner    705.01, 707, 707.02(a), 

        713.01, 708.03, 713.08, 714.05, 714.13, 

        714.16, 714.16(d), 714.18, 903.08(b), 

        1101.02(g), 1214.07,1448, 1901.06, 1903, 

        2233, 2237, 2238, 2248 

Supervisory Primary Examiner, 
Requests decided by   1002.02(d) 

Supervisory review, Rule 181    711.03(d) 

Supplemental action   710.06, 714.05 

Supplemental examiner's answer      1208.01 

Supplemental oath or declaration        603 

After allowance       603.01, 714.16 

New matter  608.04 

Surcharge for late payment of fees 
in international application    1827 

Surrender of patent   1416 

Suspension: 

Action because of litigation    1213 

Action, By Office 709 

Applicant's request for       709 

Decided by  709, 1002.02(c), 1004 

Ex parte prosecution during interference        2315 

Not permitted if outstanding Office action  709 

Overlapping application       709.01, 1111.03, 2315.01 

Reexamination     2283, 2284, 2307.04 

Rules       1002, 1002.02(a),1002.02(b) 

"Secrecy Order" application   2309.06 

Swearing back of reference (see also Affidavit, 
Antedating Reference    706.02(b), 706.02(f), 

706.02(k), 715 

Symbols, Drawing        608.02 


T 


Technical documents   901.06(a) 

Technical rejections    706.03 

Telegraphic amendment     714.08 

Telephone call, Multiplicity rejection      2173.05(n) 

Telephone number 

For PTO closings        201.13(a) 

Of attorney   408, 713.01, 714.01 

Of Examiner   707.08 

Telephoning of attorney to Examiner   408, 713.01 

Term, extensions        1309.01 

Term, patent            1309.01 

Termatrix   717.05 

Terminal disclaimer   1490 

Avoiding double patenting rejection   706.02(k), 

804.02, 806.04(i) 

Format          711.03(c), 1490 

Required for revival    711.03(c), 712 

Routing       508.01, 1490 

Situations where not applicable       804.03 

Withdrawal of     1490 

Terminology in application  608.01(g), 608.01(o), 

706.03(d), 1302.01 

Termination of proceedings  201.11, 711.02(c), 712 

Test comments       707.07(l) 

Testamentary, Letters     409.01(b) 

Testimony, Examiner   1701.01 

Testimony, Public Use Proceeding        720.04 

Tests, comparative (see also Unexpected 
Results)                716.02(b) 

Third action cases  707.02(a) 

Time and activity report        1704 

Time for deciding Commissioner 
initiated reexamination       2241 

Time for deciding reexamination request       2241 

Time for filing papers, Right of priority 201.14(a) 

Time for requesting reexamination 2211 

Time for response (See also Period for 
response.)          702.01, 710 

Time for response to action in reexamination    2263 

Time limit action 710.02, 710.02(c), 710.02(d) 

Permanent ink copy  714.07 

Time limit for making suggested claims      710.02(c) 

Time limit for transfer of application      903.08(d) 

Time limits under the PCT 1844, 1879.01 

Time period for owner's statement 2248 

Time reporting in reexamination       2238 

Time to complete incomplete requests    2227 

Time to file citation of prior art  2204 

Time to pay maintenance fees    2506 

Timely submission of protest    1901.04 

Title (ownership) conveyed 
by assignment       201.12, Chapter 300 

Title documents, handling 317 

Title of design application   1503.01 

Title of international application  1821 

Title of invention  606 

Title of invention, change by Examiner      1302.04(a) 

Title of invention, Plant patent application    1610 

Title of invention, Reviewed at issue     606.01, 1302.01 

Title report            303, 319, 320, 2287 

Title report in decisions for consideration 
by Board                303 

Title report, Interference  2301.01 

Title report, reexamination   2287 

Title with signature    605.04(e) 

Trade secret material     724-724.05 

Completeness of file wrapper    724.01 

Materials submitted 
Covered by 35 U.S.C. 122        724.04(a) 

In reissue under 37 CFR 1.11(b)       724.04(b) 

In reexam under 37 CFR 1.11(d)      724.04(c) 

Method of submitting    724.02 

Office treatment and handling     724.04 

Petition to expunge materials     724.05 

Types of        724.03 

Trade secret submission label     724.02 

Trademark and trade name        608.01(v), 706.03(d), 

 2173.05(u) 

Trademark Manual of Examining 
Procedure   Foreword 

Trademarks, Partial listing of      Appendix I 

Transfer of application: 

After amendment       903.08(c) 

After Classification decision     903.08(g) 

Allowable application     903.07(b),1302.05, 1305 

Decision of Classification Examiner   903.08(f) 

Divisible inventions    812 

Interference    2306 

New         903.08(a) 

Notification of applicant 903.08 

Outside Group     903.08(d) 

Primary Examiner's authority    903.08 

Procedure 903.08(a), 903.08(d),903.08(g) 

Secrecy order application 130 

Submitted to Classification Examiner    903.08(d) 

Within Group    903.08(d) 

Transfer of class or subclass     903.05 

Transfer of drawing   201.06(a), 608.02(i) 

Transfer of reexamination 2237 

Transfer of rights to patent or application   509.02 

Transfer of specification prohibited    608.01(t) 

Transfer of U.S. patent       903.05 

Transitional application 

After final practice    706.07(g) 

Generic claim allowable       803.03(b) 

Linking claim allowable       803.03(a) 

Transitional application--Continued 

Restriction practice    803.03 

Rules       1309.01 

Transitional phrases    2111.03 

Translation, Foreign application or foreign 
priority document 201.15 

Translations, available, index      901.06(a) 

Translator, Patent and Trademark Office       901.05(d), 

901.06(a) 

Transmittal Fee-PCT   1827 

Traverse-Answer all matters   707.07(f) 

Traverse, Division or species requirement 818, 

818.03 to 818.03(d), 821.01, 821.02 

Traverse, Rejection of linking claim    818.03(d) 

Treaties                201.13 

Trial Voluntary Protest Program       202.02 

Tubers          1601 

Two month delay period in reissues  1441 

Two periods for response running        710.04 

Type of applications    201 


U 


Unavailable inventor    409, 409.03 

Unclaimed disclosure, Reservation 608.01(e) 

Undelivered mail        707.13, 1303.02 

Undue breadth rejection       2163.05, 2173.04 

Unexpected results (see also Affidavits, Traversing rejection) 
716.02  to 716.02(g) 

United Kingdom priority document        201.15 

United States Code (see also Statutes)      Introduction 

"United States of America" 
foreign language names      901.05(a) 

Unity of invention  803, 823, 1850, 1875, 1893.03(d) 

University or other institution of 
higher learning             509.02 

Unmatched papers        508.03 

Unofficial subclasses and digests 903.02(c) 

Unscheduled closing   201.13 

Unsigned amendment  711, 714.01(a) 

Untimely filed paper prior to Order 
for Reexamination 2225 

Untimely response to reexamination  2266 

Updating prior art statement    2003.03(a) 

UPOV Convention       612 

Uruguay Round Agreements Act    201.04(b), 715 

"Use" claims            2173.05(q) 

Use, Public (see Public Use) 

"User" pass         510 

Utility-disclosure in drug cases        608.01(p), 2164.06, 

2164.07 

Utility guidelines  706.03(a)(1) 

Legal precedent for   2107-2107.02 

Utility lacking, Rejection  706.03(a) 

Utility model       201.13, 202.03, 901.05(b) 

Utility patent          201, 901.04 

Utility required                608.01(p), 2164.07 


V 


Vague and indefinite rejection      706.03(d) 

Validity, Examiner comments   1701 

Venue       604.02 

Verification            201.03 

Verified statement of facts (Rule 48)     201.03 

Verified statement, small entity status       509.03 

Video tapes         713.01 

Violation of duty of disclosure       1901.03 

Argued in protest 1901.02, 1901.05 

Visitors to Office  510 


W 


Waived patent rights-defensive publication  711.06 

Warning to inventors    1706 

Washington representatives of attorneys       408 

West Germany priority document      901.05(b) 

When disclosure is made       2003 

Who has duty to disclose        2001.01 

WIPO            201.13, 901.04, 1801 

Withdrawal from issue     1308 

Amendment crossing allowance    714.15 

Claim presented corresponding to 
claim of patent       2307.03 

Commissioner's approval       1003, 1308 

Interference purposes     1308.02 

Petition for    1002.02(b), 1308 

Quality Review      1308.03 

Rejection 706.04, 1308.01 

Suggesting claims for interference  2305.04 

Withdrawal of appeal    1215.01 

Withdrawal of appeal claim  1214.05, 1215.03 

Withdrawal of attorney      402.05, 402.06, 

2223, 2560 

Withdrawal of claims: 

To nonelected invention       821.01, 821.02, 821.03 

To species  809.02(c), 821.01, 821.02 

Withdrawal of final rejection     706.07(e) 

Before appeal hearing     1208.02 

Premature final       706.07(d) 

Primary decides       1004 

Withdrawal of holding of abandonment    711.03(c), 

711.04(c) 

Withdrawal of power of attorney in patent 2223 

Withdrawal of SIR request 1109 

Withdrawal of terminal disclaimer 1490 

Withhold from issue petition    1002.02(a) 

Witness, Examiner as    1701.01 

Wrapper (see also File wrapper)       717 

Writing, Disclosures must be in       2002.02 

Written Description   706.03(c), 2163 

Amendments supported by original 
description   2163.07 

Inherent function, theory or advantage      2163.07(a) 

Incorporation by reference  2163.07(b) 

Burden on the examiner      2163.04 

Changes to scope of claims  2163.05 

Written Description--Continued 

Circumstances when issues arise       2163.03 

Form paragraphs used to reject      706.03(c) 

New matter  2163.06 

Requirements for compliance   2163.02 

Support for claimed subject matter  2163.01 

Written Description--Continued 

Corresponding to count in interference      2163.03 

Wrong Group, Papers sent to   508.01 


X 


X-series of patents   901.04 










































